Upcoming Changes To European Patent Examination Procedures

Author:Mr William Warren
Profession:Sutherland
 
FREE EXCERPT

Originally published June 1, 2009

Recently, the European Patent Office (EPO) announced changes to

the rules of the European Patent Convention (EPC) as part of the

EPO's initiative to speed up patent examination. The new EPC

rules, which will be effective on April 1, 2010, will drastically

restrict how a patent applicant is able to file divisional patent

applications and will increase the patent applicant's

obligations to provide information to the EPO during patent

examination.

More specifically, these rule changes implement: (1) time limits

for filing divisional European patent applications; (2) compulsory

responses to European search reports and written opinions of the

EPO acting as the International Searching Authority (ISA) in

European patent applications; (3) a requirement that the basis in

the original text of a European patent application be provided for

all amendments; (4) a requirement, for European patent applications

containing more than one independent claim in the same category,

that patent applicants identify which claims are to be searched;

and (5) a requirement, for claims the EPO considers too broad or

unclear on which to carry out a meaningful search, that the patent

applicant indicate which subject matter should be searched.

Time Limits For Filing Divisional Applications

Currently, divisional European patent applications may be filed

up until the granting of a parent patent application. Cascading

divisional European patent applications may be filed indefinitely.

These current provisions are analogous to U.S.

"divisional" and "continuation" application

practice.

Under the new Rule 36 EPC, patent applicants will no longer be

able to file an unlimited number of cascading divisional patent

applications while a European patent application is pending. Under

the new rule, if there is not an objection for lack of unity of

invention in the European patent application, the time limit for a

voluntary filing of a divisional patent application is two years

from the issuance of the first examination report on the parent

application in the patent family. If there has been an objection

for lack of unity of invention, then the time limit for a mandatory

filing of a divisional application is two years from the objection

for lack of unity of invention.

Though the new rule will be introduced April 1, 2010, there will

be a six-month transitional period until October 1, 2010. During

the transitional period, divisional applications may be filed...

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