News

30/10/2009 - EPO RULE CHANGES EFFECTIVE APRIL 2010

Rules under the European Patent Convention will change in April 2010. Their main impact will be on European Patent Applications which initially contain multiple independent claims, in the American style, and where, for short-term cost saving, multiple inventions have been contained in a single Application with a view to “dividing out” later on.

At present Divisional Applications can be filed at any time up to acceptance of the parent (which in practice can be a matter of many years). As from April 2010 a Divisional Application can only be filed (a) within 24 months of a first communication from the Examining Division or (b) within 24 months of the specific raising of a non-unity objection against the “earlier” (i.e. parent) Application. (Where the parent is itself a Divisional there is some doubt whether this is the “earlier” Application or its own parent. For safety it should be assumed to be the latter.)

(b) may not be the safeguard which it at first appears because of the interaction between the Rules on Divisionals and the Rules on Searching. Claims which have not undergone search have to be removed. The only way to retain them is to file a Divisional Application. If, more than 24 months from the “first communication from the Examining Division” the objection is raised not of non-unity but that claims have not been searched it will be too late to transfer them to a Divisional Application.

If multiple independent claims are initially presented the EPO will ask which of them should be searched. If the claims are unclear (poor translations, for example) the EPO will ask for an explanation of what it to be searched. In either case if no response is received within two months the EPO will, respectively, search the first independent claim or reject the Application with a reasoned decision. The danger is that if the Examining Division requires removal of unsearched matter more than “24 months from the first communication” it will be too late to file a Divisional Application.

Those PCT Applicants who have no option but to use the EPO as ISA or IPEA have shortened deadlines compared with those who use other authorities (the Australian Patent Office for example) for the International Search and International Preliminary Examination Report. The IPER (or Extended European Search Report) issued by the EPO during the international phase is a “first communication from the Examining Division” and Applicants are obliged to respond to objections raised by the EPO during the international phase when entering the European regional phase.

Under transitional provisions, in the case of all European Patent Applications pending in April 2010 Divisional Applications can be filed up to 1st October 2010 irrespective of the new “24 months” rules. There is speculation that the EPO will be clogged up with “precautionary” Divisional Applications in September 2010.

The Rule changes present little danger to Applications clearly limited to a single inventive concept but are very antithetical to Applications containing multiple independent claims or multiple inventions. If only for cost reasons it is highly desirable to revise claims into the European format on entry into the European regional phase. If, for example, a Supplementary Search Report shows that a Divisional Application is necessary to protect subject matter it will be unsafe to wait for a non-unity objection to be raised.