NEW EPO RULES AS OF APRIL 2010: A GUIDE FOR APPLICANTS

Mars 2010

I. Introduction

Apart from the new rules relating to divisionals, which have been the subject of our previous newsletter, there will be a number of other significant changes in the EPO procedure which will come into force on April 1, 2010. In the following their consequences will be illustrated and recommendations will be given as to how applicants may adapt their practice to these new Rules.

II. Multiple independent Claims – Ground for Objection before Search

II.1 The new Situation

The EPO already objects to multiple independent claims in the same category based on Rule 43(2) EPC. With the new Rules, however, an objection against multiple independent claims will even be issued before starting the search. Within a two-months time limit the applicant then has to indicate on the basis of which independent claims the search should be performed. If no such indication is given, the search will be performed based on the first claim in each category. New Rule 137(5) EPC stipulates that claims which have not been searched cannot be reintroduced into the proceedings at a later stage.

II.2. Consequences and Recommendations

The new Rules will force the applicant to decide which independent claim in each category (method and apparatus) is the most important one in his view, and this will be the only claim which then can be further prosecuted.

It should be noted that there still is the possibility to have multiple independent claims in one category if the exceptions mentioned in

Rule 43 EPC are met, e.g., if the claims are directed to inter-related products like a transmitter and a receiver. However, if none of these exceptional conditions is fulfilled, the applicant has to decide which independent claim is the most important one before the EPO conducts the search.

The new Rule does not change the condition under which multiple independent claims are allowable. It just enables the EPO to raise an objection against such multiple independent claims already before the search starts, instead of raising the objection only during substantive examination.

Since the time limit for responding to such an objection is rather short (two months), we recommend to our clients to keep in mind already at the drafting stage or filing stage that such an objection may be raised, and possibly to decide already at this stage on the selection of the most important independent claims in each category.

It should further be noted that the objection against multiple independent claims can be re-examined later in the coures of the substantive examination proceedings. If it turns out that the objection was unjustified, then the objected claims can be maintained in the application. However, if the objections against multiple independent claims were justified, then those claims which have not been used as a basis for the search will have to be excised from the set of claims during substantive examination. Moreover, new Rule 137(5) EPC stipulates that such claims cannot be reintroduced into the proceedings at a later stage, they can only be prosecuted by filing a divisional application. The decision to select the claims on which the search should be based should therefore be made with care.

III. Compulsory Response to the Extended Search Report

III.1 The new Situation

With the new Rules a response to the extended Search Report will become mandatory. In case of direct EP filings the time limit for filing the response is identical to the time limit for requesting substantive examination, i.e. six months after the publication of the search report. For EP applications coming through the PCT route the time limit will be set in a separate communication.

Moreover, in the case of PCT applications where the EPO acted as the ISA, the new Rules introduce the requirement to respond to the (international) search report. The time limit is the one set in the Communication according to Rule 161/162 EPC, which is issued shortly after entering the EPO phase, and is very short (one month).

III.2. Consequences and Recommendations

Under the new Rules the applicant will be required to seriously consider the objections in the extended Search Report and to reply to them within a rather strict time frame. We therefore recommend to our clients to amend their internal procedures such that more weight and attention is paid to the extended Search Report or the international search report (where the EPO acted as ISA) so that a substantiated response can be prepared within the newly set time frame.

IV. Explicit Indication of Support for Amendments required

IV.1 The new Situation

So far it has been possible to file new claims without indicating their support in the original disclosure. If the Examiner wanted to reject them as an alleged introduction of new matter, he had to prove that a feature of the new claims was not supported by the original disclosure.

With new Rule 137(4) EPC it becomes mandatory for the applicant to indicate the basis for all amendments to the claims in the original application documents.

IV.2. Consequences and Recommendations

As a consequence of the new Rule the Examiner may reject amendments already for formal reasons if no support for the amendments in the original disclosure is indicated in the response.

We therefore recommend to only file amendments together with explanatory comments which indicate the support for the amendments in the original disclosure.

V. Summary

The new Rules, which will come into force on April 1, 2010, represent significant changes of the way how patent applications will be prosecuted before the EPO. We will advise our clients on the new time limits at all stages of the proceedings before the EPO. The new Rules may speed up prosecution before the EPO and may result in a faster grant of patents. However, on the other hand, applicants will also be required to react quicker to the objections from the EPO. We therefore recommend to our clients to adapt their internal procedures in order to take into account the new Rules, which will be stricter with respect to responses to Office Actions.

If you have any questions or if we can assist in implementing an appropriate adaptation of internal procedures, please do not hesitate to contact us.