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 Questions ?