By Christopher P. Singer --
About two weeks ago, we were advised of by one of our European associates about changes to the rules relating to divisional practice in the European Patent Office (see "Changes Coming to Divisional Application Practice in Europe"). This week, our associate Forresters advised us about further rule changes that are scheduled to take effect on April 1, 2010. These changes include:
Compulsory Applicant Responses to EP Search Reports
Under the current rules, applicants are not required to respond to any search report issued by the EPO. The new rule changes will require that applicants respond to the objections raised in any European search report, regardless of whether it is an extended or supplementary search report. The deadline for filing a response to a search report is triggered by the examination request; either 6 months for applications in which no request has been made, or 2 months for applications in which the request has been made. Failure to file a response will result in withdrawal of the application, which can be revived through further processing.
Compulsory Applicant Responses to EP Written Opinions and IPERs
Similarly, applicants will be required to respond to the objections raised in written opinions generated by the EPO during the international PCT phase once they enter the European national phase. The EPO will send a communication to applicants, setting a one-month period of time in which to file a response to the objections from the EP-based written opinion, as well as pay claims fees and file voluntary amendments.
Specifying Basis for Application Amendments
The new rules will require applicants to identify the basis in the original application text for all amendments made in an application. If applicants fail to identify and provide the basis, the EPO will set a one-month deadline to provide such information. After the one-month period expires, the application will be considered abandoned, but can be revived through further processing.
Multiple Independent Claims and Incomplete Searches
The rule changes will attempt to streamline the current ways in which the EPO handles multiple independent claims and examination of applications that are determined to be impossible to carry out a meaningful search of the claims. Currently, if an application contains multiple independent claims to the same class of subject matter (e.g., product, method, use), the EPO will search the first independent claim in each class. Under the new rule, the EPO will ask applicants which claims they would like to be searched, allowing for a more directed and timely examination of claims of interest and importance to applicants.
In situations when the EPO determines that a meaningful search of the claims cannot be performed, the EPO will notify applicants and invite them to indicate which subject matter should be searched.
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