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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,
accompanying the ISR
the
Written
Opinion
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 8
Claim 2
Claim 9
Claim 3
Claim 6
Claim 4
Claim 7
Claim 5
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 fallback 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 6
Claim 4
Claim 7
Claim 5
Claim 8
Claim 9
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
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