The European Patent Office (EPO) are introducing further restrictions on the filing of voluntary amendments from 1st April 2010. For applications currently being prosecuted, the EPO are refusing to enter amendments which require permission.
Applicants can take steps now to deal with the forthcoming EPO regime, which as well as restricting opportunites for amendment, will severely penalise long specifications and excessive numbers of claims. For example, when preparing new applications now, the new regulations at the EPO should be borne in mind. International applications already on file will be prosecuted under the new regime and may need to be amended as they enter the European phase.
Recommendations for the preparation of new applications
- Identify a single invention to be described and claimed and have only a single independent main claim in each category ;
- If at all possible have no more than 15 claims, and certainly no more than 50.
- Consider nominating an authority other than the EPO as the international searching authority.
- Where the EPO has searched or examined the International application, make any necessary amendments to the claims when entering the regional phase.
The New Regime for Search, Examination and Amendment
From 1st April 2010 the right to make amendments will be severely curtailed. Furthermore, applicants will also have to respond to search reports, often within tight timescales. The rules will determine which claims will be searched by the EPO and it is expected that the EPO will continue to strictly apply the rule that unsearched subject matter cannot continue.
These changes will stop applicants redefining their invention or recasting a specification during prosecution. The European patent application, whether filed directly, or by way of the PCT, will need to enter the EPO with a specification which meets the European regulations and with a set of claims adequately covering the invention. Although it increases up front filing costs, we believe that all applications to be filed in the EPO should be reviewed by a European patent attorney before filing to avoid the difficulties which the new regime may bring.
Need to respond to Search Reports
Currently, where the EPO issues a search report, whether on a European or International application, the Examiner additionally issues an opinion on patentability. The applicant may choose to file a response to it, but such a response is not obligatory. The new regime will require that applicants respond to these reports, for both direct European applications and for the European regional phase of international applications.
Where no response is filed, the application will be deemed to be withdrawn.
Period for Response
For a directly filed European patent application, for example, the response to the Examiner's opinion will have to be filed within six months of the publication of the search report.
However, for ex International applications there will be much shorter timescales. If the EPO has produced the Examiner's opinion during the International phase, there will be only a one month period to file a response. This period will be triggered by the issuance a notice soon after the regional phase is entered. In view of the very short period allowed, it is suggested that amendments should be filed when International applications enter the regional phase.
Restrictions on Voluntary Amendments
Currently, an applicant has the right to make unlimited voluntary amendments to the application after receipt of the search report, and to amend the application in response to the first examination report. Further amendments must be made with the consent of the Examiner.
Under the new rules, which will apply to any application having a search report drawn up on or after 1st April 2010, voluntary amendments can only be offered within the time period allowed for responding to the search report. Any later amendments require the Examiner's consent, and current practice by the EPO suggests that consent is unlikely to be forthcoming.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
