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Recent Decisions of the Administrative Council

Procedural changes at the EPO in April 2010

Ben Muir & James Stones

May 2009

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Recent decisions of the Administrative Council

On 25th March 2009, Administrative Council issued twoDecisions to amend the EPC Implementing Regulations:

- CA/D 2/09 relating to procedure concerning divisionalapplications; and

- CA/D 3/09 relating to procedure concerning inter aliasearching/search reports and voluntary amendment ofapplications.

Both Decisions come into force on 1st April 2010

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Part 1

Divisional applications(CA/D 2/09)

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CA/D 2/09 - Divisional applications

Currently, no limitation on when divisional may be filed,provided parent is pending (R36(1) EPC).

After 1st April 2010, ALL divisionals will have to be on filewithin 24 months from 1st OA on first application(R36(1)(a) EPC)

ONE exception - where “new” non-unity issue raised inany subsequent OA (on first or divisional application)then 24 months from that OA to file divisional(R36(1)(b) EPC)

- loop hole?

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CA/D 2/09 - Divisional applications

24 month periods cannot be extended in any way.

CARE - divisionals will still have to be filed while theparent is pending.

- if 1st OA is Notice of Allowance (R71(3) EPC), parent islikely to proceed to grant within 24 month period;

- divisionals would have to be filed before grant.

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CA/D 2/09 - Divisional applications

Applicants will no longer be able to:

- file divisionals shortly before grant of parent;

- file precautionary divisional before attending Hearingin respect of parent; or

- file divisional after appealing refusal of parent toreplace refused parent,

UNLESS grant, Hearing or refusal within 24 monthperiod.

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CA/D 2/09 - Divisional applications

CA/D 2/09 applies to any divisional filed on or after1st April 2010.

Transitional provisions:

- if 24 month period has expired by 1st October 2010,would have until 1st October 2010 to file divisionals.

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Part 2

Search Procedures,Voluntary Amendments and

Responses to Opinions(CA/D 3/09)

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CA/D 3/09 - Search procedure

Currently, EPO approach to searching “problematic”subject matter is not uniform:

- if EPO considers that independent claims offendR43(2) EPC, still searches ALL independent claims(provided no non-unity issue).

- if EPO considers that a meaningful search cannot becarried out, issues Declaration or partial search report.

- if EPO considers that there is a lack of unity, issues apartial search report for first claimed invention andinvites applicant to pay, within 2-6 weeks, additionalsearch fees for other inventions.

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CA/D 3/09 - Search procedure

After 1st April 2010, EPO will, in these cases:

- invite applicant to “elect”, within 2 months, subjectmatter to be searched and/or pay additional searchfees;

- carry out a search regarding elected subject matteronly.

Claims will have to be restricted during examination tosearched subject matter UNLESS ExDiv finds objectionunjustified - further search?

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CA/D 3/09 - Search procedure

2 month period cannot be extended in any way.

If applicant fails to respond then EPO will issue partialsearch report or Declaration as appropriate.

EPO is not providing an opportunity at this stage tocomment on whether objection is justified or to amendthe claims in respect of objections.

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CA/D 3/09 - Search procedure

If claims not unified but comply with R43(2) EPC,applicant will have a little more time to pay the additionalsearch fees;

If claims offend R43(2) EPC but unified, only some claimswill be searched (but at least claims to be searched will beelected by applicant); and

If claims offend R43(2) EPC and not unified, applicantwill elect which claims are to be searched initially AND willretain opportunity to pay additional search fees.

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CA/D 3/09 - Responses to opinions

Currently, there is no obligation to respond to opinionsattached to search reports.

After 1st April 2010, EPO will set a deadline by which theapplicant is invited comment upon opinions and, whereappropriate, correct any deficiencies and amend thespecification.

Failure to respond will result in the application beingdeemed withdrawn (BUT can be rectified with no loss ofrights using Further Processing).

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CA/D 3/09 - Responses to opinions

For non-PCT European applications, response due:

- within period set for requesting examination (6 monthsfrom publication of the search report - R70(1) EPC) (R70a(1) EPC); or

- where examination requested before search reportissues, within period set by EPO for confirming applicant’swish to proceed with examination (usually, 6 monthsfrom publication of the search report - E-VIII, 1.2) (R70a(2) EPC).

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CA/D 3/09 - Responses to opinions

For Euro-PCT applications where EPO was not ISA,response to opinion (issued with supplementary searchreport) due within 2 month period set for applicant toconfirm wish to proceed (R70a(2) EPC).

For Euro-PCT applications for which EPO acted as ISA(no Demand) or ISA & IPEA, response to IPRP or IPERdue within 1 month from invitation to amend after entry(R161(1) EPC).

NOT entirely clear what happens when EPO is ISA butnot IPEA (rare) - invitation to amend triggered?

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CA/D 3/09 - Voluntary Amendments

Currently, applicant has:

- an unfettered right to amend voluntarily thespecification after receipt of the search report butbefore receipt of the 1st OA from the ExDiv; and

- one opportunity for voluntary amendment as of rightafter receipt of the 1st OA.

Further voluntary amendments are allowable but only atthe discretion of the ExDiv.

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CA/D 3/09 - Voluntary Amendments

After 1st April 2010:

- opportunity to make voluntary amendments as of rightwill be limited to the response to opinions (R137(2)EPC); and

- NO further amendments may be made without consentof ExDiv (R137(3) EPC).

- applicant will have to identify all amendments andindicate their basis in application as filed. If he fails todo so, ExDiv may request correction of deficiency within1 month (R137(4) EPC).

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CA/D 3/09 - Applications affected

CA/D 3/09 applies to:

- European patent applications for which the Europeansearch report or the supplementary European search report is drawn up on or after 1st April 2010; and

- Euro-PCT applications where invitation to amend hasnot been issued before 1st April 2010.

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Part 3

Conclusions

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Divisional applications

Possible action would include:

- reviewing current pending applications over next fewmonths to see if divisionals required; and

- if a significant number required, then staggering filingof divisionals before 1st October 2010 to spread costs.

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Non-PCT European applications

Changes increase importance of pre-filing review ofspecification:

- check claims for unity/clarity/compliance with R43(2) (to avoid any unnecessary elections or additional searchfees);

- minimise number of claims (to avoid any unnecessary excess claims fees); and

- minimise number of pages (to avoid any unnecessaryexcess pages fees).

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Non-PCT European applications

If invitation issued by SearchDiv prior to search:

- elect subject matter to be searched and/or pay additional search fees (2 months)

After receipt of extended search report:

- file response to search opinion (6 months from publication of search report)

After receipt of examination report:

- file divisionals (24 months)

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EPO or USPTO as ISA?

Where PCT is filed claiming priority from a preliminaryUS patent application, EPO or USPTO as ISA?

EPO? - additional search results before NatPhase andexpedited grant of Euro-PCT BUT early response tosearch opinion required (within ~3 months from entry).

USPTO? - delay commenting on search results andamending Euro-PCT for up to ~12 months from entryBUT no additional search results before NatPhase andgrant of Euro-PCT may be delayed.

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Euro-PCT Applications

If EPO was not ISA, then no real change to currentpractice, viz. after entry:

- EPO will invite applicant to amend specification and topay excess claims fees in respect of amended claims;

- EPO will produce supplementary search report (withopinion) on basis of amended claims; and

- applicant will then have 2 months to (i) confirm wishto proceed with examination, and (ii) file response toopinion, including any voluntary amendments.

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Euro-PCT Applications

If EPO was ISA (no Demand) or ISA & IPEA, thenresponse to EPO opinion from International phase will need to be filed very soon after entry, e.g. within~3 months.

We would recommend providing instructions to respondto opinion at the same time as instructions to enter EPregional phase or to take over Euro-PCT case.

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Euro-PCT Applications

If EPO was ISA but not IPEA, then we would recommend: - revising claims of Euro-PCT on entry (to avoid payingunnecessary excess claims fees if not given opportunityto revise claims);

- at least until clear that EPO intends to treat suchEuro-PCTs in same manner as other Euro-PCTs whereEPO acted as ISA.

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Points to take home

As of 1st April 2010:

- 24 months from 1st OA to file divisionals;

- if invited, elect subject matter for searching;

- response to EPO search opinions will be required (deadlines depend on type of application); and

- fewer opportunities to amend voluntarily as of right.

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Overview of Recent Changes

2008/2009 - changes designed to limit size of EPAs.

- “two tier” excess claims fees; and - excess pages fees payable on filing.

2010 - changes designed to “streamline” prosecution.

- limited opportunity to file divisionals; - mandatory response to search opinions; and - limited opportunity to amend voluntarily as of right.

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Any questions?