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EPC Rule changes, some comments

A number of changes to the Implementing Regulations will enter into force on the 1st of April. In a Webinar earlier today, hosted by the EPO, an overview was presented. First part of the presentation related to amended Rules 63, 64, 137 and new Rules 62a and 70a(1). The second part related to the new time limits set for filing of divisional applications.

The entire session was recorded and can be found here*.

In general, the session was well organised. The speaker, Mr Ingwer Koch, guided the participants through a presentation. By means of the chat function of WebEx attendees could submit their questions, which in turn were collected, summarised and presented by another employe of the EPO (sorry, I can't find his name anymore) to Mr. Koch directly. Worked really well!

Concerning the contents, some remarks by Mr. Koch:

New Rule 62a(1) relates to a situation where there are multiple independent claims in one category.
Applicants should seriously pay attention to Rule 137(5) as in force from April 1st, 2010. More in particular, when the applicant receives a communication under new R62a he is strongly advised to indicate which subject matter he wants to have searched. Not doing so will result in only the first claims of a category being searched. If the applicant later on realises that he in facted wanted other claims to be searched he cannot amend his case accordingly because of Rule 137(5). The only option would be to file a divisional application. If no attention is paid to the new time limits in place, this could result in a loss of protection for certain subject matter. In the words of Mr. Koch "The applicant ends up having nothing ..."

The same goes for amended Rule 63 (the EPO refers to this Rule as being applicable to complex applications): Applicants are strongly advised to indicate and explain the subject matter they want to have searched. No search means it is impossible to later on amend the case to such subject matter.

New Rule 70a EPC forces applicants to file a response to the search opinion in case this opinion is "negative". Negative (at least that's how I understood it) means the application does not fulfill the requirements of patentability. This includes all requirements (so not only novelty/ inventive step). I have not seen a lot of cases where the opinion does not have a single objection, so in practice every opinion probably needs to be replied to. Mr. Koch explained that the EPO expects a reply similar to a reply that is expected in response to an Article 94(3) communication (which makes sense as far as I'm concerned).

In case of Euro-PCT applications where the EPO was ISA (and IPEA) a reply to the WO-ISA (or IPER) is likewise obligatory. The time limit is 1 month from the Rule 161(1) communication, so more or less about 6 weeks after expiry of the 31m period for regional entry. Applicants that use Euro-PCT route for "buying time" will probably not like this Rule very much. For example, if the decision for European entry is only taken at the end of the International Phase, applicants only have a quite limited time for preparing an answer to the WO-ISA or WO-IPER.

Finally (for this post) Rule 137 will include a new paragraph which forces applicants to indicate the basis in the application as filed. Non- compliance may result in an invitation to correct. I think such a rule makes sense as it helps applicants to check their amendments in view of Article 123(2). For most attorneys/ applicants this new paragraph will probably not change the way they work drastically.

With respect to divisionals Mr. Koch gave some examples explaining how it will work, I think the presentation (see below) speaks for itself.

The presentation can be found here.

* The link may be temporary, please let me know if it no longer works.

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  1. This comment has been removed by a blog administrator.

  2. Thank you for this very helpful link.

    I was not aware that there could be a 'gap' in the window for filing a divisional from a divisional. Very stimulating.

    A must-listen for tutors and paper D candidates, I would say.

  3. Hello Oliver, I personally think this "gap" is inconsistent with Rule 36(1). This Rule (in my opinion) only gives two conditions for filing:

    - There must be a pending earlier application
    - The divisional must be filed before expiry of 24m from the 1st communication by the ED for the earliest communication.

    So, as long as both the earlier and earliest application are pending and there has not been a 1st communication for the earliest application you can file a divisional even though the 24m period for the earlier application has expired.

    This is just my opinion by the way ...

  4. You may be right. But if I understood Mr. Koch correctly, he was among those who drafted the provision. He should know best what the legislator wanted. And when you have a look at the exact wording of R 36, his reading of the rule is not absurd.

    Anyhow, the presentation was well worth it.


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