Changes at the European Patent Office Part II

(iii) Amendment of the European patent application – changes to Rule 137 EPC (European Patent Convention)

Whereas previous Rules 137(2) and (3) permitted amendment as a matter of right once upon receipt of the European Search Report and again before the Examining Division, the second opportunity has been eliminated by amendment to Rule 137(3).

The EPO (European Patent Office) now permits amendment as a matter of right once upon receipt of the Search Report and again before the Examining Division. From 01 April 2010 the opportunity to amend will be under the discretion of the Examining Division so if they do not foresee grant they theoretically may not allow what they consider to be pointless amendments.

Rule 137 EPC is being amended to make it compulsory to provide good information on the basis of amendments on applications which have a search report issued on or after 1 April 2010. If this information is not provided in enough detail for the Examining Division, a time limit of one month will be provided to provide this information although further processing is available of one month for a fee.

(iv) Plurality of independent claims in one category not allowed – introduction of new Rule 62a EPC

A European patent application having more than one independent claim per category is not allowed. This is because the EPO considers that the claims are not concise.

For search reports issued on or after 1 April 2010, where the EPO considers that the claims the is more than one independent claim in the same category of product or process, at the search stage the Applicant will be asked to indicate which independent claim is to be pursued.

In addition where the application is not considered concise enough, lacks clarity or forms matter excluded from patentability under Articles 52(2) and 53 EPC and a meaningful search to be possible, this will be raised at the search stage.

There will be a two month time limit set which is not extendable by further processing or by restitutio ad integrum (a last-gasp procedure for dropped applications similar to restoration in the UK).

If the Applicant does not respond within the time limit, the EPO will only search the first mentioned independent claim in each category.

Finally the EPO will introduce a procedure similar to the US Information Disclosure Statement requirement from 2011. There will be a requirement for the applicant to provide earlier relevant patent office search results to aid the European examination.

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