New Rules at the EPO

The European Patent Office (EPO) has announced new rule changes that will require patent applicants to provide more input at an early stage of the proceedings.
The new rules will come into force on 1 April 2010, but in many cases they will apply to applications filed before that date. This is a brief summary of some of the key rule changes and their implications.

Clarification of claims prior to search
The existing practice of the EPO is to raise an objection during examination to applications having multiple independent claims in the same category (product, process, apparatus or use), subject to a limited number of exceptions.

Under the new rules the EPO will note the presence of multiple independent claims in the same category before carrying out a search.  The applicant will be invited to nominate a single independent claim in each category, and the search will be limited to the nominated claims.  Once a nomination has been made it will not be possible to direct the claims to unsearched subject matter.

The new rules may cause problems where there are multiple independent claims, each relating to a different embodiment of the claimed invention.  If no claim is generic to all of the embodiments, then the application may be undesirably limited to a single embodiment.  For this reason, we recommend that a European application includes an independent claim that encompasses as many embodiments as possible. 

The EPO as International Searching Authority
When acting as the International Searching Authority for a PCT application, the EPO produces a Written Opinion on the patentability of the application and an International Preliminary Report on Patentability (IPRP).  Under the new rules, it will be necessary to respond to any objections in a Written Opinion or an IPRP prepared by the EPO shortly after entering the European regional phase.  The EPO will issue a communication inviting the applicant to address the issues raised by the Examiner during the international phase.  The non-extendible term for filing a response will be one month. This will give patent applicants very little time to address the objections raised in the international phase.

The above rule will only apply where the EPO was the International Search Authority. For this reason, applicants who have a choice of International Searching Authority may wish to consider using an authority other than the EPO.

Where the EPO is the International search authority, we recommend that the European patent attorneys are provided with instructions for dealing with objections raised in the Written Opinion or IPRP at the same time as the instructions to enter the European regional phase.

Mandatory response to the European search opinion
European patent applications now generally receive search opinions together with the search report.  Until now, there has been no obligation to respond to objections raised in such a search opinion. Under the new rules it will be necessary to respond to each objection raised in the search opinion before the commencement of substantive examination.