Intellectual Property

New European Patent Office (EPO) Rule Changes

Those who file patent applications in Europe need to pay close attention to new rule changes that go into effect next month.  Applicants must act sooner under the new rules than under the old rules and failure to do so can result in abandonment of the European patent application. On April 1, 2010 the EPO will enforce new rules attempting to expedite prosecution by restricting 1) deadlines for responding to initial written opinions, 2) applicants’ opportunities to amend, 3) multiple independent claims, and  4) divisional applications.
Summary of Current and New EPO Rule Changes

1)  Responses to Written Opinion
Current EPO rules do not require applicants to respond to search-report objections until substantive examination, which gives applicants at least six months and normally one year to respond.
New EPO rules consider applications withdrawn unless applicants respond to search-report opinions within six months. No longer can applicants wait to respond after a first examination report issues during examination. 
2)  Applicants’ Opportunity to Amend
Under current EPO rules, applicants may amend their patent claims between receipt of a search report and a first examination report, and while responding to the first examination report.

Under new EPO rules, applicants may voluntarily amend patent claims when responding to a search-report opinion, but permission for any further amendments is at the EPO’s discretion.
3)  Multiple Independent Claims and Search Reports
Current EPO rules preclude multiple independent claims relating to the same claim category during substantive examination, which begins after applicants pay an examination fee.
Under new EPO rules, a search-report examiner may object to multiple independent claims before issuing a search report and require applicants to elect searchable claims within a two-month window.  Unless the search-report examiner objects erroneously, applicants may only maintain claims they elect.
4)  Divisional Applications
Under current EPO rules, applicants may file a divisional application before grant, abandonment, or withdrawal of a related parent application.
Under new EPO rules, applicants may only file a divisional application until the later of two years from (1) the examining division’s initial communication, or (2) from the examining division’s lack-of-unity objection.  However, applicants must still file the divisional while the parent application is pending.  This rule will apply to pending cases, but the EPO will grant a grace period until October 1, 2010 to file an appropriate divisional application.
The foregoing summary of the new EPO rules is not exhaustive, so please feel free to give us a call if you would like more information regarding the new rules.  We work regularly with foreign associates who practice in Europe and can assist you with specific information about how these rules may affect your EPO patent applications.

  - Fennemore Craig

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  - Fennemore Craig

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March 15, 2010