Boult Wade Tennant

In 2007, the European Patent Office introduced their "Raising the Bar" initiative, striving for better quality patents[1]. They stressed their ongoing commitment to providing a quality search and examination process, but highlighted what they saw as failings on the part of applicants to enter quality applications into that process. With increasing globalisation, more applications were being received that failed to meet with European specific requirements of clarity and conciseness. In April 2008, a fee of €200 for each claim in excess of fifteen was introduced in an effort to ensure that applicants filed fewer claims. This was supplemented in April 2009 by a fee of €500 for each claim in excess of fifty.[2] Further significant changes to the rules have now been announced for April 2010.[3]

Steps have been taken to reduce what the European Patent Office perceives to be opportunities for applicants to abuse existing processes. Particular attention has been paid to divisional applications and the strategies of using divisionals to obtain two or more patents for effectively the same invention or to duplicate proceedings in the hope of obtaining a favourable decision a second time around. Attempts by the EPO Boards of Appeal to prevent such abuses by introducing new restrictions failed when the Enlarged Board of Appeal decided that these ran contrary to the current rules. Nevertheless, the Enlarged Board recognised that abuses were occurring and suggested that the rules themselves might be changed.⁴ It has now been announced that new rules on divisional applications are also to come into effect in April 2010.⁵

These new rules will be retrospectively applied to applications that remain pending on that date, so it is important to take them into consideration when filing any new European patent applications or bringing PCT applications into the European regional phase. This bulletin summarises the incoming rule changes. Please see the companion bulletins "European Patent Office introduces stricter time limits on divisional applications" and “European Patent Office introduces mandatory accelerated examination " for more details on the changes and their likely effects.

Changes aimed at Patent Quality

Rule 62a — Multiple independent claims in a single category (apparatus or method) are not normally allowable in Europe. Currently any application entering the European regional phase with multiple independent apparatus or

method claims will be searched, provided that the requirements for unity of invention requirements are fulfilled. Under this new rule, unless the applicant can demonstrate that one of the very few exceptions to the general ban on multiple independent claims applies to their application, the EPO will invite the applicant to specify which of the independent claims should be searched. The remaining independent claims must be deleted during examination.

Rule 63 — If the claims are too unclear to be searched, the applicant will be asked to specify the subject matter that should be searched. Rule 137(1) precludes the filing of amendments, so the comments must be restricted to arguments and explanations based upon, for example, described embodiments and so forth. In accordance with new Rule 137(5) (old Rule 137(4) EPC), only that subject matter which has been searched in accordance with Rule 63 may be the subject of the claims during subsequent substantive examination and all other claims must be excised.

Rule 70a — Currently, the Search Opinion that accompanies the European Search Report or Supplementary Search Report (where the EPO did not act as International Searching Authority) is merely advisory and no response needs to be submitted until it is formally reissued as a first Examination Report. For Search Opinions issued after 1 April 2010, a response to any objections must be submitted when paying the examination fee or when confirming that the applicant wishes to proceed with examination of the application. Separate rules govern European applications deriving from the PCT where the EPO DID act as ISA; see Rule 161 below.

Rule 137 — When amending the application, the applicant must identify the amendments and indicate where basis for those amendments is provided in the application as originally filed. No amendments may be made which introduce subject matter that was not searched as a result of rules 62a or 63 mentioned above.

Rule 161 — Where the EPO prepared the International Search Report and Written Opinion, the applicant must respond to any observations raised in the Written Opinion within one month of a communication inviting them to do so. This communication will be issued shortly after the international application enters the European regional phase and the deadline is not freely extendable.

Many of the above rule changes provide the applicant with only a short (eg 1 month) period for reply and many are neither extendable as of right nor under the “further processing” procedure.

At present, a divisional application may be filed based on any earlier pending European patent application. New rule 36 introduces a further restriction that any divisional application must be filed:

(a) within two years within a first communication from the examining division issued on the earliest application; or

(b) within two years of any communication in which the examining division first raises a specific objection that the earlier application relates to more than one invention or more than one inventive concept.

[1] See the EPO 2007 Annual report (http://www.epo.org/about-us/office/annual-reports/2007/focus.html)

[2] See our 2008 bulletin: "Important Notice to those filing European Patent Applications or entering the European Regional Phase" (http://www.boult.com/news/BulletinDetails.cfm?BulletinID=185)

[3] See the Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 3/09) (http://www.epo.org/patents/law/legal-texts/decisions/archive/20090325a.html)

⁴ See our 2007 bulletin: " European divisional applications given new lease of life by Enlarged Board " (http://www.boult.com/news/BulletinDetails.cfm?BulletinID=168)

⁵ See the Decision of the Administrative council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 2/09) (http://www.epo.org/patents/law/legal-texts/decisions/archive/20090325.html)