R.G.C. Jenkins & Co

Patents – Designs – Trade Marks

EPO Rule Changes coming into force 1 April 2010

Background

• Original EPC (1973) required divisional to be filed at time of response to 1st OA or later “if justified”– In practice, Examining Division usually gave

consent up to approval of the text for grant• In 2002 these restrictions were

removed and divisionals could be filed as of right any time up to grant

• But now “there is a trend for applicants to abuse these procedural possibilities”

Abuse?• “Duplication” of proceedings

– filing an identical divisional the day before a hearing and prosecuting the divisional instead of appealing • what’s abusive about that?• until recently the cautious approach was to make the

divisional identical and only later amend

• 5% of applications are divisionals– Of these, 7% are 2nd generation and 1% are later

generation– No statistics on how many are prima facie “abusive”

• Enlarged Board of Appeal found it unsatisfactory that sequences of divisionals should be pending for up to 20 years– Legislator should consider whether there are abuses and

what the remedy could be (G1/05 & G1/06)

Sunset for filing Divisional Applications

• Divisional applications must be filed within 2 years from the Examining Division’s first communication in respect of the earliest application for which a communication has issued– i.e. from the first communication in the parent

application unless exceptional circumstances mean that a divisional is examined first.

• The 2 years run from the date of the communication – Not from the date of “notification” of the

communication– Accordingly, the 10-day rule does not apply– Problem if the representative never receives the

communication

Transition Provisions

• If the 2-year period has already expired on 1 April 2010, a divisional application may still be filed by 1 October 2010

• If it is still running on 1 April 2010, it will continue to do so until 1 October 2010.– E.g. 1st OA issued 2 April 2008– 2-year sunset would expire 2 April 2010 but continues

to 1 October 2010 • So why does the EPO say the new rule applies to

divisional applications filed after 1 April 2010, when its effect is postponed to 1 October 2010?– To protect the lazy practitioner who ignores the rule

until it has come into force?

No tears

• No “further processing”– (nor for the transition provisions)

• Restitutio not precluded– Would have to show that in spite of all due care

being taken to file the divisional in time, the deadline was missed

– Might be limited to only those instances where there was at that time a specific intention to file a divisional application and an error occurred• As opposed to an instance where, after the deadline

expired, it became apparent that there was unclaimed subject matter.

Exception to the Rule

• The exception is where the Examining Division raises a lack of unity objection for the first time (in the parent or any of the divisionals).

• In such a case, the clock re-starts from the date of the communication in which the specific non-unity objection is first raised.

• Unusual to have a non-unity objection in a 2nd or subsequent OA

• N.B. it is the communication from the Examining Division that is relevant– Not, for example, the Written Opinion

accompanying the ISR

Don’t Count on Restarting the Clock

• A non-unity objection cannot be provoked merely by adding new claims– Rule 137(4) prohibits amendment to unsearched subject

matter that does not share unity of invention with the already searched claims.

• Consider all possible new and inventive subject matter, and file one or more divisional applications with all the envisaged claims within the 2-year period.

Non-Unity Objections

• A priori objection• Independent claims

do not share the same special technical features

• A posteriori objection

• From the search results, the features of the independent claims lack novelty or inventiveness

• Dependent claims divide into different groups that do not share the same special technical features

• Usually raised by the search examiner

A priori and a posteriori non-unity objections

Claim 1

Claim 2

Claim 3

Claim 4

Claim 6

Claim 7

Claim 5

Claim 9

Claim 8

Claim 10

Rebutting a non-unity objection

• An applicant can quite properly reply that:– The a priori non-unity objection is unfounded

because the independent claims share the same special technical features

– The a posteriori non-unity objection is unfounded because the independent claims (or the unifying dependent claims) are indeed new and inventive

Don’t depend on rebutting the objection

• If the rebuttal is accepted and the objection is withdrawn – no problem – there should be no need for a divisional

application

• Later amendment might lead to lack of unity– If it’s the same lack of unity don’t expect sympathy – the

clock started running from the 1st OA– If it’s a new lack of unity, the clock will restart– If the rebuttal is unpersuasive, the clock is running

• Long gaps between communications– Recently we have noticed very long gaps that would eat

up the 2-year period. – You may have to file the divisional application before

knowing whether the rebuttal argument is persuasive.

Oral Proceedings• In practice, you get at most 2 Office Actions

– The 2-year sunset is likely to have expired before Oral Proceedings

• If it has expired:– Do not expect to provoke a non-unity objection at this

late stage– Amendment is at the discretion of the Examining Division– Discretion will not be exercised to permit entry of an

amendment that does not satisfy Article 82

• If it has not:– File a precautionary divisional in case the application is

refused

Plan Cascading Divisionals

• Careful planning of cascading dependent claims (in the parent and again in the first divisional) may allow an applicant to make full use of the exception to restart the clock.

• If claims are written to give meaningful fall-back positions, the Examining Division can be provoked into raising a non-unity objection, even if 2 years have passed since commencement of examination, thereby opening the possibility of filing a late divisional.

Cascading Divisionals

Claim 1

Claim 2

Claim 3

Claim 4

Claim 6

Claim 7

Claim 5 Claim 9Claim 8

Other Rule Changes coming into force on 1 April 2010

Multiple Independent Claims and “Complex” Applications

• Multiple claims in the same category– 1 month* to select which are to be searched (Rule 62a)

• Searching “Complex applications”– Where meaningful search is not possible, instead of a

declaration or a partial search report, the EPO will invite the applicant to “clarify the subject matter to be searched”

– I month to reply (Rule 63)

• No further processing• No restitutio

*neither shorter than 2 weeks nor exceed six weeks

Obligatory response to the Search Opinion

• To the Search Opinion accompanying the European search report (Rule 70(a)(1))– Must be submitted within the period specified for confirming the

intention to proceed• Applies to applications filed after 1 July 2005 (we are still receiving

occasional search reports on earlier applications )– Equally to a Supplementary Search Report (Rule 70a(2))

• To a Chapter I report (“IPRP”) or Chapter II report (“IPER”) drawn up by the EPO against a PCT application (Rule 161)– Must be submitted within the 1-month period for amending the

claims under Rule 161– We will need a copy of the ISR & WO or IPER at the earliest

opportunity• Risky to merely deny the objections – Might receive a summons, so request oral proceedings as a

precaution

EP Phase entry

• Due 31 months from priority• But the ISR and WO are not available from the

WIPO file history until 30 months from priority– Best that we receive these from our client before EP

phase entry • Enter EP Phase at 31 months• Receive communication under Rule 161 inviting

amendment – Usually takes about 6 weeks to receive this

• Communication under Rule 161 sets 1 month to reply

• Further processing is available

Detailed identification of basis for amendments

• New Rule 137(4)• No change here for Jenkins

– we routinely indicate to examiners where support for amendments can be found

• Failure to meet requirement is a deficiency and the EPO may request correction within 1 month

• Further processing available

Questions ?