Recent changes in the European Patent Office

Transcription

1 Recent changes in the European Patent Office Heli Pihlajamaa Director Patent Law (5.2.1) European Patent Office Copenhagen, February 2012

2 Outline 1. Rule changes 2. Guidelines changes 2/17

3 The main EPC changes resulting from the "Raising the Bar": 1) Time limit for filing divisional applications (Rule 36 EPC) 2) Clarification of the scope of search (Rules 62a, 63 and 64 EPC) 3) Mandatory reply to ESOP/WOISA (Rules 70a, 161 EPC) 4) Making amendments (Rule 137 EPC) 3/17

4 Rule 62a EPC Communication Requirements of Rule 43(2) EPC not met One independent claim in the same category (product, process, apparatus or use) Unless the subject-matter of the application involves one of the following: (a) a plurality of interrelated products, (b) different uses of a product or apparatus, (c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim NOTE: The examiner may make a complete search for all claims and raise an objection under R. 43(2) in the ESOP Guidelines C-III, 3.3 PCT: Informal clarification before search, PCT/MIA/16/11 4/17

5 Rule 63 EPC Communication Meaningful Search? Search Division to determine Invitation may additionally indicate the claimed subject-matter on which the Search Division considers it feasible to base a meaningful search Invitation will give the reasons why a meaningful search is not possible Subject-matter excluded from search Examples Art. 83 and/or 84 EPC (i) claims lacking support; insufficient disclosure (ii) claims lacking conciseness (iii) claims lacking clarity Subject-matter excluded from patentability or not susceptible to industrial action 5/17

6 Mandatory Response and Amendments: Overview Applicant to provide a response to the extended European search report on entry into examination phase New Rule 70a EPC; amended Rule 161 EPC Only one opportunity for "own volition" amendment Rule 137 paragraphs 2 and 3 EPC Applicant to identify amendments & indicate their basis in the original filing Amended Rule 137 paragraph 4 EPC 6/17

7 Further EPC changes resulting from the "Raising the Bar": 1. 3rd party observations Promotion of 3rd party observations - web based form Recognition of 3rd party observations - statement in communications End of the grant phase (Rules 71 and 71a EPC as of ) 2nd Written Opinion during the PCT International Phase Manual for Best Practice processed in close co-operation with the users 7/17

8 Evaluation of RtB changes Stocktaking of the amendments through internal metrics, user satisfaction surveys and stakeholder feedback commencing summer 2011 Evaluation in stages autumn/winter /17

9 Recent and forthcoming Rule changes 1. Earlier search results (Rule 141 and Rule 70b EPC) An applicant claiming priority of a previous application will be required to file a copy of the results of any novelty search carried out by or on behalf of the authority with which the previous application was filed together with the European patent application or in the case of a Euro-PCT application, on entry into the European phase 9/17

10 Recent and forthcoming Rule changes 1. Earlier search results (Rule 141 and Rule 70b EPC) cont. Invitation to file missing earlier search results when the application enters the search stage if neither earlier search results, nor a statement that they are not available, are filed in due time, application is deemed to be withdrawn Exemptions for EP, USPTO, UK and JP search results on basis of inter-office exchange Entry into force on , applies for applications filed on or after that date 10/17

11 Recent and forthcoming Rule changes 2. Clarification of the end phase of the grant procedure (Rule 71 EPC and Rule 71a EPC) A second step for cases where the applicant requests amendments or corrections in response to the examining division's communication informing of its intention to grant the patent under the current Rule 71(3) EPC. Translations to be filed and excess claims fees to be paid only when agreement reached The current streamlined one-step procedure will be maintained for all other cases. Approval of bibliographic data with the text for grant Entry into force on /17

12 Flowchart of the final examination stage ADWI Text proposed for the grant 4 months time limit for replying No Has a reply been received in time? Yes Have translations been filed and fee been paid in time? Yes To grant No Yes Is the amended/corrected text patentable for the ED? Yes Negative reply with reasoning and amendments? Current streamlined procedure which should further cover 85% of the cases as now. This is the highway to grant. No No Back to normal examination Refusal The EPO factor Recent procedural changes 12/17

13 Rule changes in progress 1. Claiming priority 2. Fee refunds 13/17

14 Outline 1. Rule changes 2. Guidelines changes 14/17

15 Guidelines - New Structure A. Formalities Examination B. Search C. Procedural Aspects of Substantive Examination D. Opposition and Limitation/Revocation Procedures E. General Procedural Matters F. The European Patent Application G. Patentability H. Amendments and Corrections 15/17

16 Guidelines - Timeline Internal drafting and checking 10/2011 SACEPO Working Party on Guidelines 3-4/2012 Publication of the EN draft on the EPO website 6/2012 Publication of the Guidelines in all three languages on the EPO website, entry into force 9/2012 Publication in paper 16/17

17 Thank you for your attention... Heli Pihlajamaa Director, Directorate Patent Law European Patent Office, Munich Tel: /17