March 2011
The European Patent Office (EPO) has announced two major changes to its practice in the next year.
The first major change applies to PCT applications, entering the European regional phase, for which the EPO as ISA issued a written opinion.
Following last year’s rule changes, the EPO requires that the applicant respond to that opinion. The applicant must respond fully, in the same way as to an examination communication.
Under the current practice, the EPO issues a communication (under rule 161/162 EPC) which sets a one month deadline to file the response and any amended claims, and to pay any excess claims fees due. Applicants have raised concerns that this response period is very short.
After 1 May 2011, all communications under rule 161/162 EPC will set a 6 months response term.
Another significant change is to the procedure for grant of a European patent.
Currently, when the EPO intends to grant a patent, it issues a communication (under rule 71(3) EPC) setting a four month response term. Within that term the applicant must pay the relevant fees, request any amendments, and file claims translations. If the applicant submits amendments to the claims, the claims translations must reflect those proposed amendments.
However, if the proposed amendments are substantive, there is no certainty that the examining division will accept them. If it does not, the applicant must submit new translations of whatever claims the examining division does, eventually, accept. This is inefficient.
The EPO has proposed a two-step grant procedure, for cases where the applicant wants to amend the claims.
The first step is for the applicant to propose the amended claims within the initial four month term. The second, after the applicant has agreed the amended claims with the examining division, is to file translations and pay the fees, in a second four month term to be set by the examining division.
The EPO proposes that this procedure comes in to force on 1 April 2012. We will let you know once this is confirmed.
If you would like any further information about these changes, or you are in any doubt of whether they will affect your current or future patent applications, please contact us.