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1 September, 2009

On 1 April 2010, a series of new rules to the European Patent Convention come into effect1 which are aimed at forcing applicants to bring patent applications into conformity with the requirements of the EPC earlier in the application process. These new rules will affect many applications that are being filed now so should be borne in mind when filing any new European patent application or when entering the European phase of an international application.

The new rules are part of the European Patent Office’s “Raising the Bar” initiative which has the goal of producing better quality patents. Under these rules, new applications are expected to meet with certain European requirements on filing, and applicants are expected to address objections earlier. For more on this initiative, please see our companion bulletins “European Patent Office announces rule changes to ‘Raise the Bar'” and “European Patent Office introduces stricter time limits on divisional applications”.

Changes aimed at newly filed applications
The existing rules of the EPC place strict limits on the number of independent claims that are allowed in an application. Specifically, even if the requirements of unity of invention are met, a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the application relates to: (a) a plurality of interrelated products; (b) different uses of a product or apparatus; or (c) alternative solutions to a particular problem. Previously this requirement did not need to be addressed until the examination stage.  A new Rule 62a and a modified Rule 137 will require applicants to comply with this requirement on filing.

New Rule 62a states that, if an application has too many independent claims, the applicant must indicate which of those independent claims should be searched or, by default, only the first claim in each category will be subject to a search. Furthermore, during subsequent examination, the claims must be restricted to the searched subject matter and, under modified Rule 137, no subject matter which was not searched may be added into the claims.

These rules may have a significant negative impact on applications having more than one independent claim in the same category. Typically, assuming there is only one invention, multiple independent claims are used to express that same invention in slightly different ways using different language. Then, once the extent of the prior art is made clear in the search report, the most appropriate form of expression is selected. A strict interpretation of new Rule 62a would prevent this approach and would put applicants in a difficult situation by making those alternative expressions of the invention unavailable for subsequent amendments.

These rules take effect for any application for which the search report is issued on or after 1 April 2010. Boult Wade Tennant therefore recommends that, with immediate effect, all new European patent applications and international applications entering the European phase are reviewed before filing to identify which independent claims are the most valuable and to submit only those claims. Other independent claims, using alternative language to express the invention, can be introduced into the summary of the invention to ensure that no subject matter is lost. This alternative language would not be automatically excluded from the search and applicants might have more flexibility to amend the claims than if multiple independent claims had been used.

Another change is to Rule 63 which deals with situations where the EPO is unable to draw up a search report due to lack of clarity or other significant failings in the claims. At present, the EPO issues a partial search report or a declaration that no meaningful search was possible. Under modified Rule 63, the applicant will first be given an opportunity to indicate the subject matter of the application that is to be searched. This change will benefit applicants in those rare cases where the claims as filed are incapable of being searched.

Changes aimed at accelerating examination
Under current European practice, an applicant receives an international search report and written opinion from the EPO acting as international searching authority or receives a European search report with an accompanying search opinion with a subsequent European patent application. The written/search opinions note deficiencies in the application, but the applicant is not required to address these deficiencies until the examination stage. The new rules will require applicants to do so before examination.

The most significant change is modified Rule 161 under which an applicant will be provided with just one month in which to respond to deficiencies noted in a written opinion or international preliminary examination report where that International Search Report was prepared by the EPO. The communication under Rule 161 will be issued shortly after an international application is brought into the European phase and the one month term will only be extendable under the further processing procedure, which entails payment of a fee. This will place European applicants under greater time pressures than those outside Europe who use their local patent office as international searching authority.

This modified rule will take effect for any application for which a communication under existing Rule 161 has not been issued before 1 April 2010. Boult Wade Tennant therefore recommends that, for all international patent applications that are due to enter the European phase in February or March 2010 and where the EPO is international searching authority, early consideration is given to how deficiencies noted in the written opinion could be addressed. Instructions for addressing these deficiencies should accompany instructions for entering the European phase, or you should liaise with your normal adviser as soon as possible to identify how best to address the deficiencies under European practice.

For European patent applications where the EPO is to draw up a search report or a supplementary search report, these are accompanied by a search opinion. Under new Rule 70a, applicants will be required to submit a response to deficiencies noted in the search opinion when requesting examination or when confirming that the applicant wishes to proceed with examination. The relevant deadlines are at least (or are extendable to at least) six months from issuance of the search opinion such that Rule 70a will not be as onerous on applicants as modified Rule 161.

More generally, for any amendments that are filed after 1 April 2010, whether by way of voluntary amendment under Rule 137 or by way of comment upon the written opinion under Rule 161 (above), it will be mandatory under new Rule 137(4) EPC to identify the amendments made and set out the basis for these amendments in the application as filed. Failure to do so will result in an invitation from the Examining Division to rectify this deficiency, with a one month deadline for response.

The new rules are expected to shorten prosecution times but will also mean that the costs of a European patent application will be compressed. In particular, the costs of entering the European phase or of requesting examination will increase due to the need to amend the application or address deficiencies at the same time. Small companies or individuals with limited cash flow may need to budget carefully.

Please contact your usual adviser if you would like to discuss the options available or to prepare amendments that bring an application in line with these new rules.

1 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)