The European Patent Office (EPO) is placing in force a number of new rules on 1 April 2010. Amongst these changes are the following:
(i) Addition of Rule 70a EPC – Compulsory response to the Extended European Search Report (EESR)
Currently an Applicant for a European Patent may or may not respond to the EESR within the period for paying the designation and examination fees and will often wait until the Examination Report even though a Written Opinion is generally issued with the Search Report.
But from 01 April 2010, if the ESSR issues on or from that date it will be compulsory to respond to the EPO and a failure to meet the 6 month deadline will mean the application will be deemed to be withdrawn forcing applicants to focus on the search report rather than permitting remarks and amendments to wait until the examination stage. As with most EPO deadlines, what is known as further processing allows another month with a charge.
(ii) Changes to Rule 161 EPC – One month deadline for responses to
It is possible to make a Patent Cooperation Treaty (PCT) application (what is known colloquially as an international application) to the EPO. For Euro-PCT applications, the EPO allows the European patent application to be voluntarily amended once soon after filing.
Where the EPO acts as the International Search Authority (ISR) or the International Preliminary Examining Authority (IPEA) on the PCT application, the EPO will ask the Applicant to comment on a negative Written Opinion. With a Euro-PCT application therefore it will become obligatory to file a response to an IPRP (Chapter I) or an IPRP (Chapter II) drawn up by the EPO, when receiving an invitation following EP phase entry.
Unlike now, the Applicant must respond to this invitation otherwise the application will be deemed to be withdrawn. The response term is only one month. Further Processing is available as a remedy.
This change forces Applicants to deal with objections raised in the International phase much earlier.
Where the Search Report and Written Opinion were drawn up by another office, and the EPO draws up its own supplementary Opinion, it will be compulsory to reply to this, within 4 months it is thought.