European Patent Convention Rule Changes

Author:Nutter McClennen & Fish LLP's Intellectual Property Practice Group
Profession:Nutter McClennen & Fish LLP

Originally published September 15, 2011. Recent European Patent Convention (EPC) rule changes were recently passed to streamline European patent prosecution. Summaries of various important aspects of these rule changes are discussed below, including how these changes may affect European patent prosecution strategy. Accelerated Prosecution Under the amended rules, applicants have six months to respond to a Rule 161 or Rule 162 communication, where the previous term was a single month. This change primarily affects clients who wish to expedite prosecution, as an applicant can only obtain accelerated prosecution by waiving the right to Rule 161 and Rule 162 communication. To qualify for accelerated prosecution, upon European regional phase entry an applicant must pay all claim fees and file a response to the Written Opinion/International Preliminary Report on Examination. Otherwise, the European Patent Office (EPO) will determine the requirements are fulfilled and then, after the six month deadline has passed, will forward the application to the Search Division for a supplemental search (where the EPO is not the International Searching Authority) or to the Examining Division (where the EPO is the International Searching Authority). This process slows down prosecution, regardless of when the response Rule 161/162 response is filed. Voluntary Amendments Where the EPO is the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), Rule 161(1) governs amendment of the application. Within six months of the Rule 161 communication, the applicant must respond to a negative Written Opinion or International Preliminary Examination Report and pay excess claim fees, and the applicant may voluntarily amend the claims. Where a jurisdiction other than the EPO is the ISA, Rule 161(2) governs, and the applicant must pay excess claim fees within 6 months of the Rule 161 communication but need not comment on the Written Opinion or International Preliminary Examination Report. Because excess claim fees are paid at this stage, applicants may choose at this time to reduce the number of claims, prioritize claims, and remove non-patentable subject matter. Divisional Applications According to Rule 36(1)a, a voluntary divisional application must be filed by the earlier of:  twenty-four months from issuance of a first communication from the Examining Division or the date of grant or refusal of the parent application, i.e. the parent must...

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