February 2010 Issue

EPO News

(cont’d)

Restrictions on Divisional Applications
With regard to the filing of divisional applications, the April 2010 rule changes will place new restrictions on the time period for filing divisional applications.  Currently, divisional applications may be filed at any time as long as its parent is pending.  Beginning April 1, 2010, however, all “voluntary” divisional applications must be filed within a non-extendable two-year time period from the first communication of the Examining Division in the earliest application in the family.  Thus, all such divisional applications in a patent family, whether derived from a parent, grandparent, or any other ancestral application, will have the same filing deadline.  In the event that the EPO raises a lack of unity objection, and that objection is being raised for the first time, then the objection will trigger a separate period of two years in which an applicant may file a divisional application.  In such instances, divisional applications will be restricted to the inventions raised by the lack of unity objection and thus are being referred to as “mandatory” divisional applications.  The rules will allow for the filing of a “mandatory” divisional application even if the two-year time period for filing a “voluntary” divisional application has expired.  In either case, the parent application must be pending.

The new rule applies to all divisionals filed after April 1, 2010, including divisionals of parent applications already pending.  Thus, the rule is also applicable to those applications for which the new time period for filing a divisional application has already expired.  To address the foreseeable issues with such a retroactive provision, the EPO is providing a non-extendable six-month transition period to October 1, 2010.  That is to say, the EPO will allow for the filing of a divisional application during this six-month transition period even if the time limit for filing such a divisional application has already expired.

In light of these significant changes to divisional application practice in Europe, applicants should review their portfolios to ensure all divisional applications are filed within the newly introduced time limits, or, in cases where the time limits have expired, before October 1, 2010.

Changes to Search Procedures
Turning to search procedures, the rule changes will require the EPO to raise objections to multiple independent claims within a single claim category during the search stage instead of during substantive examination.  The new rules also require applicants to respond to the EPO’s objections within two months.  If an applicant does not timely respond, the EPO will only search the first claim in each claim category.  Examination then will be restricted to only the searched subject matter. 

In addition, if the search division finds it impossible to conduct a meaningful search of the claimed subject matter, the EPO will invite the applicant to define the subject matter to be searched within a non-extendable two-month time period.  A failure to respond may result in only a partial search or no search at all.  Here again, examination will be restricted to only the searched subject matter.

Responses to Search Opinions
Search reports are issued by the EPO in either the international phase (if the EPO is the international searching authority (ISA)) or during the regional phase (if the EPO is not the ISA).  Presently, applicants have no obligation to respond to these search reports.  This, however, will change on April 1, 2010.  The new rules will require applicants to respond to objections in a search report within certain preset time periods.  For European patent applications where the EPO is the designated ISA, a response will be required within one month.  For applications where the EPO is not the designated ISA, a response to the search report will be required within two months of the EPO’s invitation to declare an applicant’s desire to proceed with examination.

Support for Amendments
Finally, the changes taking effect on April 1, 2010, make it mandatory for applicants to identify written basis in the original application for all amendments.  If an applicant fails to provide the required written basis for an amendment, the EPO will set a one-month time period within which the applicant must supply the required information.  A failure to do so will cause the EPO to withdraw the application from further consideration.

Although the April 2010 changes may be designed to further streamline the examination of patent applications before the EPO, the changes are significant and may adversely impact an applicant’s rights.  Thus, applicants must carefully review their European patent portfolio to prevent loss of patentable subject matter during prosecution due to these changes.  In particular, applicants must be aware of the new time limits for filing divisional applications.  Applicants must also take steps to ensure the most relevant subject matter is searched by the EPO or risk limiting examination to subject matter of lesser importance.  Additionally, applicants must recognize the need to respond to the search opinions issued by the EPO and ensure that amendments are fully supported by written basis in the originally filed application.