July 2010 Issue
EPO Practice Tip
In cases where the EPO acted as the International Searching Authority during the PCT stage, the amendments to Rule 161 EPC required a mandatory response to the Written Opinion or the IPER unless certain amendments were previously filed. If the required response was not filed within a one-month time period from the Rule 161 Communication, the applicant risked having its application lapse. A mandatory response is not required if amendments and/or comments were filed upon entry into the European national phase; amendments filed pursuant to Article 19 and/or 34 PCT were maintained on entry into the European national phase, provided these amendments were not considered in the issuance of an IPER; the Written Opinion or IPER was positive with respect to the claims; or a communication pursuant to Rule 161 had already issued before the rule changes became effective.
We now have the benefit of a few months of EPO practice under new Rule 161. For applications where any amended documents (e.g., claim amendments designed to reduce extra claims fees) are filed upon entry into the European national phase, the EPO typically invites the applicant to comment on the Written Opinion. A response is not mandatory and the application will not lapse if no response is submitted.
If, however, no amendments are filed upon national-phase entry, the EPO provides applicants with a one-month period to correct all deficiencies noted in the Written Opinion or IPER. If the applicant fails to comply, the application will lapse. An appropriate response may include amendments and/or arguments similar to those filed in response to an office action. Although the one-month period is not extendable, a request for further processing may be available with the payment of suitable fees.
The current EPO practice therefore typically treats applications filed with amended documents differently than those filed without any amendments. Although certain amendments, e.g., reducing claims or the inclusion of original claims at the end of a specification, may not address the deficiencies raised in a PCT Written Opinion, the EPO’s practice appears to be based on an inability to efficiently determine whether amendments filed upon national-phase entry are responsive to the PCT objections. While it is possible that the EPO may change its practice in the future, applicants—for the time being at least—may eliminate the need to file a response to a Written Opinion or IPER by filing amended documents, e.g., amendments reducing the number of claims pending upon national-phase entry or making the claims consistent with those in another jurisdiction where prosecution has matured.