EPO gets tough on applicants - Advice for applicants
For more information specifically about the changes click here.
Toughen up - Advice for applicants
Although the rule changes do not take effect until next year, we
strongly recommend that applicants ensure that they are aware of the
impact the new rules are likely to have on their existing or planned
patent applications as soon as possible, so that appropriate action may
be taken to minimise any negative repercussions.
Pending applications – Divisionals
A review of pending European applications should be undertaken to
ensure that any potentially useful divisional applications are
identified and filed within the time period specified by the new rules.
We will be happy to assist in this process by identifying
pending applications and confirming the new deadline for filing
divisional applications. If required, we are also able to assist in
identifying potentially patentable subject matter which is disclosed in
pending applications but not claimed.
In view of the
prohibition on amending the claims of a European application to recite
unsearched subject matter, applicants will need to have a reasonable
idea of what they want to protect in a divisional application at the
time of its filing.
Where pending European applications are
already undergoing examination, applicants may wish to consider filing
divisional applications as soon as possible so as to maximise the
opportunity for further dividing the application voluntarily, should
the need arise. Where examination has yet to commence, it may be
beneficial to wait for the first examination report to be issued before
filing any divisional applications. That said, it is never too early
to review the specification in order to identify any inventions that
might require divisional applications.
We would discourage
applicants from relying on a strategy of filing claims that result in a
lack of unity of invention in order to provide a fresh opportunity to
file a divisional application in the latter stages of prosecution. The
filing of non-unified claims could be objected to on grounds other than
a lack of unity, such as a lack of clarity or conciseness. Moreover,
the EPO may not allow the amendments to be entered, especially if they
feel that the amendments do not move the application sufficiently
closer to an allowable form.
Pending applications – Search opinions
Any European search opinion issued after 1 April 2010 will need to
be studied promptly. In some cases, the applicant may only have a few
months to decide how to respond.
PCT applications and EP national phase applications
Applicants need to be aware that, after 1 April 2010, a response to
any written opinion issued on a currently-pending international
application where the EPO is the ISA or IPEA will need to be filed
shortly after entering the European regional phase.
Rule 161
communications issued after 1 April 2010 will set a non-extendable
one-month period for addressing deficiencies raised by the EPO as ISA
or IPEA. In practice this is likely to apply to PCT applications
having an earliest date in or after August 2007. It may be beneficial
to ensure that written opinions issued on these applications should be
considered in detail before 1 April 2010.
In cases where the
EPO was not the ISA or IPEA, applicants should be prepared to be
required to respond to the deficiencies mentioned in the opinion
attached to the supplementary European search report within a few
months of it being issued.
Applications due to be filed imminently
If an EP application or a PCT application is about to be filed, a
review of the application should be considered to identify all
potential inventions disclosed. In addition, the claims should be
drafted to conform to the requirements of unity of invention and, for
each invention, include only one independent claim in each category
where practical.
Because the deadline for responding to
deficiencies raised in the opinion included with the extended European
search report is different depending on whether the examination fee has
been paid when the search report issues, applicants may wish to
consider deferring payment of the examination fee until after the
search report issues if a longer period in which to respond is required.
Longer term
In the long term, it may be beneficial for some applicants to
consider investing more resources into pre-filing activities, such as
searching, screening inventions and preparing specifications, to
identify and evaluate all potentially patentable inventions at an early
stage. The evaluation should ideally continue after filing until the
opportunity to file divisional applications has passed.
Applicants
should also ensure that have sufficient resources to respond quickly
and effectively to official communications issued by the European
Patent Office during the first few years of an application. Decisions
taken during these early years are critical as they will affect the
usefulness of any patent ultimately granted not least because the scope
to undo or remedy unnecessary amendments will be severely curtailed.
The
rule changes will unquestionably place an additional burden on
applicants. However, we hope to be able to help by providing proactive
and practical advice in the run up to 1 April 2010 and beyond, as the
practical implementation of the new rules becomes apparent.
Please
contact your usual contact at Venner Shipley or one of the authors for
advice as to how best to prepare for the implementation of the rule
changes.
For more information specifically about the changes click here.