Ironically, several of the European Patent Office’s (“EPO”) new rules will take effect on April 1st. The new rules are touted to be part of the EPO’s “raising the bar initiatives” which according to the EPO, are designed “to improve the quality of incoming patent applications and streamline the grant procedure.”
Many of the rules are designed to discourage behavior by some applicants – especially U.S. applicants.
By way of background, the philosophy and structure of the EPO examination process is different than the United States Patent and Trademark Office (“USPTO”) examination process. Many US applicants attempt to impose “US practice” on EPO examiners. Often such behavior is innocent and is based on almost complete ignorance of the EPO rules. Apparently, even this innocent behavior has been relatively successful. The EPO views these attempts as ways of circumventing the process. The recent rule changes are the EPO’s latest attempt at thwarting this behavior.
The EPO patent examination process consists of a formalities examination, a search phase (traditionally performed at the Hague by searchers), and a substantive examination phase based on the search (traditionally performed in Munich by examiners). Once the process passes to the substantive examination phases, the search division typically does not perform additional searches. This is in contrast to US practice, where the examiners will routinely perform additional searches in response to claim amendments and modifications.
The new rules are designed to force applicants to enter the examination phase with a single amended claim set that actually defines their invention and is based on the results of the EPO’s search. The new rules are designed to eliminate multiple searches when the claim amendments change the scope of the rules. Theoretically, the new rules should prevent claims that reach beyond the scope of the original search and claims which have scope beyond the scope of the priority document.
Some of the rule changes are:
One Independent Claim Per Category [Rule 62a]
Incomplete Search [Rule 63]
Shortened Time Limit for Filing Divisionals [Rule 36(1)]
Mandatory Response to a European Search Report [Rule 70a and 161]
One Opportunity to Voluntary Amend [Rule 161(2)]
Mandatory Basis for Amendments [Rule 137]
Mandatory Submission of Prior Art (from Regional or National Filings) [Rule 141 and 70b]
With the goal of keeping this notification brief, the rule changes will be generalized and summarized below. The reader should review the actual rules for a complete understanding of all of the nuances and exceptions to the broad generalizations listed below.
One Independent Claim per Category [Rule 62a] – Through fee increases, the EPO has tried to limit the number of independent claims before. Apparently, without muc success. The new rule mandates one claim per category. Under the EPO policy, the categories of claims are: products, process, apparatus, and use.
Incomplete Search [Rule 63] – This rule is designed to stop broad claims. It authorizes the search division to require an applicant to more narrowly define the field of search if they find that it is impossible to carry out a meaningful search based on broad or ambiguous claims.
Shortened Time Limit for Filing Divisionals [Rule 36(1)] – This rule is designed to stop on-going continuation practice. According to Allison Brimelow (the current EPO president), you only deserve on patent per invention.
Mandatory Response to Extended European Search Report (EESR) [Rule 70a] – This rule is designed to encourage claim amendments before the examination phase by requiring a substantive response to the ESSR before the examination phase is entered. Under new Rule 70a EPC, a response to the EESR is due within the time limits for requesting the examination (6 months from the EESR or 31 months, whichever is later).
Mandatory Response to the PCT IPER [Rule 161] – Rule 161 makes it compulsory to respond to the objections raised during the PCT international phase when the EPO has produced the ISR or the IPER. The applicant must now respond within a period of 1 month from the Rule 161 communication, or the application is deemed withdrawn. Again, this rule is designed to encourage claim amendments before the examination phase by requiring a substantive response to the ESSR before the examination phase is entered.
One Opportunity to Amend [Rule 161(2)] – Under rule 161(2), the application may only be voluntarily amended once: before a request for examination is filed or 1 month after a Rule 161 communication is mailed. This rule is also designed to encourage amendments before the examination phase.
Mandatory Basis for Amendments [Rule 137] – If amendments are made, the Applicant must now supply the basis for amendments. Remember that the EPO’s rules for basis of claims are much stricter than the USPTO. If the basis is determined to be insufficient, the Applicant has 1 month to respond. Amendments may not relate to any unsearched subject matter. This rule is designed to keep applicants from adding new matter and broadening claims beyond original search or priority document.
Mandatory Submission of Prior Art (from Regional or National Filings) [Rule 141 and 70b] – In what I hope is not the first step towards a US style IDS practice, the applicant is now required to file a copy of the results of any search carried out by the authority searching the priority document, when entering into Europe (either Direct or PCT) and “without delay” after such results are available to the Applicant. Furthermore, the EPO can request this information and Applicant has two months to respond to the request.
These changes once again emphasize the need for an active and updated international patent portfolio plan and early involvement of an attorney knowledgeable in the EPO patent process (if Europe is a priority region for the portfolio). With these new rules, more thought must be given to submitting filings in accordance with the conventions of other countries at the priority document filing stage.
Bill Naifeh is a patent attorney in Dallas, Texas. He consults with clients about the development of their international patent portfolios. He also works with clients on a part time “in-house” basis to assist clients with the management of their patent portfolios. His website is www.naifeh.com and his blog for patent issues is www.ip-outsource.com .