In addition to the rule changes concerning divisional applications, which changes are explained in the news item “New EPO rules for divisional applications”, further miscellaneous rules changes also will come into effect on 1 April 2010.
Response to the extended European search report (Rule 70a)
Existing practice does not require a response to the extended European search report (which comprises the European search report and the written opinion). It is currently not uncommon for an applicant to make no response and for the first substantive examination report to simply refer back to the written opinion. The new practice makes it mandatory to file a response.
Unsearchable subject matter (Rule 63)
An examiner may sometimes reach the conclusion that the subject matter of the claims makes it impossible to perform a meaningful search. Under existing practice, in such circumstances, the examiner unilaterally either issues a reasoned declaration to that effect or, as far as is practicable, draws up a partial search report. Under the new practice, before the examiner takes any unilateral action, the applicant is given the opportunity to file a statement indicating the subject matter to be searched. If the statement enables a search to be performed, a search report is drawn up. If the statement does not enable a search report to be performed, the previous practice of either issuing a reasoned declaration to that effect or, as far as is practicable, drawing up a partial search report is followed.
Multiple independent claims (Rule 62a)
Rule 43(2) requires that there should be only one independent claim per category (device, method etc) except in the circumstances that it explicitly sets out. Under existing practice, this objection is first raised in substantive examination in respect of a group of searched claims. Under the new practice, the Rule 43(2) issue is considered before the search is performed. The applicant is given an opportunity under new Rule 62a to indicate which claims it wishes to be searched.
Entering the EP regional phase (Rule 161)
Under existing practice, all Euro-PCT applications may be voluntarily amended shortly after entering the EP regional phase in response to a routine communication providing an invitation to do so. The communication has a 1-month deadline and no action is mandatory. Under the new practice, for Euro-PCT applications in respect of which the EPO acted as the ISA and the IPEA in the international phase, a communication is routinely issued shortly after entering the EP regional phase requiring a response to the objections raised in the international phase. The communication has a 1-month deadline, but a response, which effectively amounts to a regular office action response, is mandatory. For other Euro-PCT applications (where the EPO did not act as the ISA and the IPEA in the international phase), the existing practice remains unchanged.
Consequences
These further rules changes have the consequence of bringing forward the time when the applicant must consider certain substantive issues that hitherto have often been left until the formal start of substantive examination.
In respect of European applications, or Euro-PCT applications where a supplementary search is performed, for example, when the USPTO or the JPO are the ISA, we will be encouraging our clients to regard the now mandatory response to the extended European search report as the effective start of substantive examination and we will frame our advice accordingly.
In respect of Euro-PCT applications where the EPO acted as the ISA and IPEA in the international phase, we will be encouraging our clients to regard the mandatory response to the above-mentioned communication (with a 1-month response deadline) issued shortly after entering the European regional phase as the effective start of substantive examination in the European regional phase. For our direct clients, we will work preemptively to mitigate the effects of the tight 1-month deadline. For our relevant associate clients, as soon as we are instructed to make an EP regional phase entry, we will send a reminder emphasizing the need to shortly make a substantive submission.