Recent and Foreseen EPC Rule Changes

(IPRinfo 3/2011)

Heli Pihlajamaa
Director Patent Law | Dir. 5.2.1
European Patent Office

After the plurality of changes to the EPC Implementing Regulations in April 2010, quieter times are ahead. Altogether 14 Rules of the EPC were amended or introduced as new provisions.

To evaluate how well the new amendments have reached their goal to raise the procedural efficiency before the European Patent Office, no further changes are to be expected in the near future. An exception to this are the amendments of Rules which were approved already in the Administrative Council of the EPO in October 2010. In the following these amendments and their entry into force are explained. Similarly, information about amended Rule 141 EPC and new Rule 70b EPC is given.

Amended Rule 141 EPC and new Rule 70b EPC
Rule 141 EPC in its amended form requires that the applicant of a European patent application provides a copy of the search results related to the previous application from which the European patent application claims priority.

In other words, when an applicant decides to file a national Finnish patent application first and, later on, files a European patent application duly claiming priority from the earlier Finnish patent application, the applicant is as a rule obliged to file any search results delivered by the authority searching the Finnish patent application.

The amended provision entered into force on 1 January 2011 and applies to all European patent applications and international applications filed on or after that date. It covers search results delivered by a national patent office on a national patent application or on any other application from which priority is claimed.

It is irrelevant whether the search results are unpublished or published in whichever form or format they are created by the office of first filing, namely the authority with which the earlier application, from which priority is claimed, was filed. The search result may be a search report, a list of cited prior art or a relevant part of the examination report.

If search results are not available upon filing, the applicant will have to submit them without delay, once they have been made available. However, when the applicant has filed the search results, he has fulfilled his obligation under Rule 141(1) EPC and does not need to file any later issued search results relating to the same application.

However, should the applicant wish to contribute further to reveal the relevant state of the art, he may also file the subsequent search results. It should also be noted that on the basis of Article 124(1) EPC the examining divisions may request the applicant to submit further information on prior art.

EPO invites the applicant to file relevant search results
At the time the application enters the examination stage, if a copy of the search results has not been filed by the applicant and is not deemed to be duly filed under R 141(2) EPC, the EPO invites the applicant to file, within a non-extendable period of two months, the copy(ies) of the relevant search results or a statement of non-availability of these search results.

Should the applicant fail to follow the invitation and to reply in due time either by submitting the available search results or a statement that no search results were available since, for example, the earlier application from which priority is claimed was withdrawn before any search results were issued, the European patent application will be deemed to be withdrawn (Rule 70b(2) EPC).

In certain cases the applicants are exempt from filing the required search results. In such cases an invitation will not be issued. The exemptions are based on a co-operation between some patent offices forming a basis for an electronic exchange of search results. This procedure is based on Rule 141(2) which allows the President of the EPO to determine cases in which the OFF search results are considered available to the EPO and are automatically included in the file of the EP application.

For the time being applicants will be exempted in cases where an earlier search report was prepared by the EPO in respect of an application whose priority is claimed (Decision of the President dated 5 October 2010) and in cases where priority is claimed of a first filing made in Japan, the United Kingdom or the United States of America ( Decision of the President dated 9 December 2010).

Rule 141 has been fully operational since its entry into force, in particular the examiners’ tools have been trimmed to allow availability of the information filed by the applicants. The OFF citations are systematically pushed to the examiners and integrated into the database when not already available, in particular for non-patent literature.

Amended Rules 161 and 162
Following the proposals of user groups to prolong the time limit of one month for the mandatory reply to the objections raised in the written opinion of the EPO as the ISA or as the IPEA or in the supplementary international search report (SIS), the EPO has evaluated the situation and come to the quick conclusion that a short time limit does not allow the system to reach its goals.

Therefore, it was decided in the Administrative Council of the EPO to prolong the said time limit to six months. It was considered necessary to allow the applicants more time to tackle the objections raised in the WOISA/IPEA or SIS so that the examining division could start its task with a complete picture of the applicant’s submissions to the possible objections.

The amendment also extends to 6 months the current 1-month time limit as laid down in Rule 162 for payment of the claims fees due (CA/D 12/10, OJ EPO 2010, 634). The amendment entered into force on 01.05.2011 and applies to applications in respect of which the communication pursuant to Rules 161 and 162 has not yet been dispatched by that date. The applicant’s are also given the possibility to waive the said communication where they have replied to the objections upon entry into the European phase.

Amended Rule 71 EPC and new Rule 71a
Currently the end phase of the grant procedure is tightly formed. Upon invitation to approve the text intended for grant the applicant also needs to file the necessary translations and pay the fee for publishing within the same four-month time limit.
Whereas this streamlined procedure is advantageous for the applicants and for the EPO in the vast majority of cases since only one time limit needs to be observed, it has proven complicated in approx. 15 percent of the applications where corrections under Rule 139 EPC or amendments, as far as they are possible at such a late stage of the proceedings (see G 7/93), become necessary.

To facilitate and regulate the treatment of such cases in a harmonised and clear manner, an extra step was introduced in Rule 71 EPC for such cases. For all other applications the end phase of the grant procedure runs as now. However, where amendments or corrections are necessary at that stage, the applicant does not need to file the translations or to pay the fee for publishing before an agreed version of the text of the patent is available. Similarly, for those applications the obligation to pay the claims fees due becomes relevant only when an agreed text exists.

An additional change for the end phase of the grant procedure is that in future the applicants will be asked to check the bibliographic data of their applications. This way it is hoped to avoid such situations where the applicant notices at the validation stage that, for example, the address of the applicant has changed and needs to be corrected. Such situations cause a lot of unnecessary correspondence between the national offices, the EPO and the applicant and can simply be avoided by checking up earlier in the proceedings.

Since the wording and formulation of Rule 71 EPC was often found complicated, especially with regard to the end phase of the grant proceedings (Rule 71(3) and the following paragraphs), the current Rule 71 EPC has been divided into two Rules, 71 and 71a. The procedural steps are to be found in Rule 71 whereas the requirements for payments and translations are collected in Rule 71a.

The amendments of Rule 71 EPC and the new Rule 71a EPC enter into force on 01.04.2012 (CA/D 2/10, OJ EPO 2010, 637).

Implementing Regulations to the Convention on the Grant of European Patents