Rule Changes from Europe

Bill NaifehEurope

At AIPLA’s annual meeting in Washington DC, I attended a presentation by Alison Brimelow.  Alison Brimelow is the current president of the European Patent Office (the “EPO”).

Hearing her speak was somewhat reminiscent of listening to Jon Dudas (former USPTO director).  At times, it appeared they were using the same play book.  They certainly were using the same justifications for changes that will make an effective patent protection more difficult.  One of the points she made is that things are certainly changing at the EPO.  Anyone who manages a patent portfolio with European applications should be aware of the upcoming changes.

Her discussion topics are really not new.  They have been discussed in one forum or another since at least 2005.  Our European associates have been warning us of many of these changes for quite some time.  However, U.S. practitioners seem to be notoriously slow at responding to rule changes from across the pond.

The changes 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.”  Some of the changes include:

  1. Restricting the use of divisional applications;
  2. Further restrictions on the use of multiple independent claims;
  3. Mandatory response to the search opinion; and
  4. A higher requirement for inventive step.

The first three items on the above list will be implemented by rule changes which will be effective on April 1, 2010.  The last item appears to be an attitude or internal policy shift designed to reduce “trivial or unjustified” patents.   It may be in the Guidelines For Examination which is set to be published in December.  In future posts, I will discuss these items and their impact on patent owners in greater detail.  However, many details are currently available on the websites of several European patent firms.

These changes once again emphasize the need for an active and updated international patent portfolio plan and early involvement of an European attorney in the patent process (if Europe is a priority region for the portfolio).

Although the situation in the U.S. is better now, I am still surprised by the number of U.S. patent lawyers who file foreign patents in much the same way they were taught 20 years ago.  In fact, the new rule restricting multiple independent seems to be in response to applicants who continue to U.S. style claims rather than to simply draft claims according to European conventions.  U.S. patent lawyers seem to be oblivious to the rules and the importance other countries. (Often, foreign filing is thought of as a paralegal function.)   With these new rules, more thought must be given to submitting filings in accordance with the conventions of other countries, and yes, that means submitting non-U.S. style claims.

Bill Naifeh (