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Sunday, 5 April 2009

EPC - Lots of changes coming

The Administrative Council of the EPO had a busy meeting last week, and decided on several changes to the EPC Implementing Regulations, resulting in decisions CA/D 2/09 and CA/D 3/09, due to come into force on 1 April 2010.  As well as the expected changes to Rule 36 regarding divisional applications (noted by the IPKat here), other changes include a new version of Rule 161 that will make responding to a written opinion prepared by the EPO for an international application compulsory shortly after entering the European regional phase.  On the face of it, the new Rule 161 appears to apply only to where a demand under Article 31 PCT has been filed but (as one anonymous commenter has already indicated), this was probably not the intention.  The IPKat wonders whether those responsible for drafting the new rule have a proper grasp of either English grammar or Boolean logic.  It is bad enough to have to deal with major tinkering of the EPC of this kind, but making it worse by shoddy legal drafting is hardly helpful.

CA/D 3/09 also makes changes aimed at clamping down harder on applications lacking unity, by making the applicant limit their application to only one invention in response to a finding of the search examiner.  Additionally, responses to an extended European search report will be mandatory and, when filing amendments, basis from the specification as-filed will need to be indicated.  

As far as the IPKat can figure out, all this will effectively makes compulsory what is currently merely advisory, and will tend to force applicants into making decisions about what to do with their application earlier on in the process, as well as making European patent attorneys work a bit harder (and, as a consequence, making applicants spend more money earlier on in the process).  Whether the EPO will respond in kind by speeding up examination is another matter. 

29 comments:

Anonymous said...

I am afraid that the IPKat has misinterpreted the words "If the European Patent Office has acted as the International Searching Authority and, where a demand under Article 31 PCT was filed, also as the International Preliminary Examining Authority": this "where" means "if", so that the new mandatory response to the PCT written opinion also needs to be filed if the EPO has only acted as ISA.

See also the other authentic texts of the new Rule, viz. "Ist das Europäische Patentamt für eine Euro-PCT-Anmeldung als Internationale Recherchenbehörde und, wenn ein Antrag nach Artikel 31 PCT gestellt wurde, auch als mit der internationalen vorläufigen Prüfung beauftragte Behörde tätig gewesen" and "Si l'Office européen des brevets a agi en qualité d'administration chargée de la recherche internationale et, lorsqu'une demande d'examen préliminaire international a été déposée au titre de l'article 31 PCT, d'administration chargée de l'examen préliminaire international pour une demande euro-PCT".

As EPI has informed its members by email, in view of the PCT time line, the entry into force of this new Rule 161 in April 2010 means that it applies to PCT search reports and written opinions that are received now, so that EP attorneys are well advised to (seek instructions to) prepare a response as soon as the PCT report is received as the short one month time limit of 1 month in Rule 161 does not allow to only start preparing a response once the Rule 161 communication is received.

Also, EP attorneys in private practice should advice their foreign clients and associates that new instructions for EP national phase entry need to be acoompanied by instructions for response to the PCT report, as the short one month time limit of Rule 161 does not allow to only start preparing such a response when the Rule 161 communication is received.

Anonymous said...

I would advise my foreign clients that if they have designated the EPO as the ISA, they should request international preliminary examination before their home office.

Anonymous said...

Why? The EPO wants applicants to respond on the EPO written opinion anyway; the new Rule 161 only results in that this response is filed a couple of months earlier. Why would e.g. a US applicant spend USD 750 examination fee (fee applicable if USPTO was not ISA) + USD 171 handling fee on a PCT-II procedure before the USPTO only to delay the moment when the response to the EPO written opinion needs to be filed with the EPO? This is a very expensive extension of time.
From the viewpoint of a US applicant who has selected the EPO as ISA, it is much cheaper to just instruct the EP attorney to prepare a response to the EPO written opinion when that EP attorney is instructed to enter the national phase before the EPO, as this would entail no additional costs for a PCT-II procedure.
Even better: if this response entails a reduction in the number of claims, fewer expensive EP claims fees (EUR 200 per claim above 15, and EUR per claim above 50) need to be paid.

Anonymous said...

Yet anopther counter-productive change of rules. A big increase in the number of divisional applicaitons is to be expected in view of the inflexible time limits and the newly introduced restrictions on amendments [Rule 137(5), second sentence is mad].

As there is a six month transitional period to the rules on divisionals after entry into force 1st April 2010, expect September 2010 to have a very big blip in filing numbers.

As for Rule 161, the only requirement is that one complies or comments with objections raised in the WO-ISA. There is no requirement that the comments be sensible. How many attorneys with lack of instructions will file form comments? After all, "I disagree" is a comment.

Anonymous said...

If the attorney merely writes "I disagree", what prevents the EPO from writing back "I reject"?

Even if the EPO is not so efficient as to immediately reject the application, do you really think that the examining division will be inclined to grant a patent later on in the procedure if the EP attorney was that non-cooperative in a situation in which the applicant already had the PCT search report + written opinion for more than a year?

EP attornys who like to stay on the list of professional representatives may wish to have a look at Article 1 of the Regulation on discipline (http://216.92.57.242/patentepi/english/100/120/123/), as I doubt whether the simple answer "I disagree" is in line with that provision.

Always nice and cooperating said...

In response to the anonymous comment at 8:00:00 AM and especially "Even if the EPO is not so efficient as to immediately reject the application, do you really think that the examining division will be inclined to grant a patent later on in the procedure if the EP attorney was that non-cooperative in a situation in which the applicant already had the PCT search report + written opinion for more than a year?, may I suggest then amending Article 52 EPC as follows:

"European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step and only if during the examination proceedings the applicant and their representative are nice and cooperating with the Examining Division."

At least what would be required to get a European patent on an invention benefiting society would be clear from the start...

Anonymous said...

With the current amendments to the EPC, it would appear that a US style RCE is required. If amendments to the claims are filed in response to the Rule 161 communication and subsequently these amendments are rejected and Rule 137(3) is applied strictly with no further amendment being allowed, under the new rules a divisional application might not be available such that the application suffers a nasty death. An RCE would be a solution to this problem - the application continues but a (substantial?) fee is required.

Anonymous said...

Anonymous at Monday, April 06, 2009 8:00:00 AM quotes Article 1 of the regulation on discipline. This reads:-

1. A professional representative shall exercise his profession conscientiously and in a manner appropriate to its dignity. In particular, he shall not knowingly make any false or misleading statement.

No false statement is made by "I disagree". No misleading statement is made by "I disagree". If lacking instructions, making such a statement is more conscientious than doing nothing [which would result in the added cost of further processing]. As for dignity, doing one's best for one's client seems to be reasonably dignified.

Anonymous also seems to be of the view that immediate rejection will be an option for the Examiner. It is not. The consequence of failure to meet R161 is deemed withdrawal.

As for Anonymous's suggestion that the applicant would have had the PCT search + written opinion for more than one year - plainly he has not looked at PCT statistics. The proportion of ISA's issuing from the EPO after 30 months seems to be growing [page 17 at http://www.wipo.int/export/sites/www/ipstats/en/statistics/pct/pdf/performance_indicators.pdf. Perhaps the EPO should practice conscientiously and in a manner appropriate to its dignity?

Gerontius said...

Had a big long rant in my head, this is the short version: the Administrative Council are a bunch of utter muppets clearly living in a complete vacuum separate from all reality of prosecuting patent applications.

At 30/31 months from the priority date, the applicant is spending vast sums of time and money working out which countries they want to bring their PCT application into. The last thing they need is to be forced to spend more time and money worrying about draconian time limits imposed by the EPO.

There was no need to introduce a new procedure to deal with this perceived problem. All that was necessary was that the EPO get their fingers out their orifices and issue a first examination report immediately an ex-PCT application enters the EP phase with the words "observations raised in the written opinion result in objections under the corresponding provisions of the EPC". Typically, the EPO take three years to get such a report out at the moment.

Then, the good old friendly examination procedure that everyone knows about and knows whether the deadlines are extendable and further processable and 10-day-able would happen exactly as it did before, just a little bit sooner.

The same goes for the new Rule 70a and the enforced response to the search opinion at a time when the applicant is worrying about whether or not to pay the examination fee. The current procedure has only been in place a couple of years and seems to be working very well and very quickly - no need whatsoever for a new procedure to confuse everyone.

Like I say, Administrative council: muppets, the lot of you. Try simplifying the rules not making them more complicated if you want a smoothly running office.

Anonymous said...

The period of one month for responding does not seem to be in line with the spirit of Rule 132(2).

EdT

Gerontius said...

On a more serious note, trying to interpret the new rules is proving a little tricky in some respects.

Where is it possible to find minutes of Admin Council meetings so that we can understand what they meant? Are they on the EPO website anywhere?

Anonymous said...

Doesn't new Rule 137(5) limit the possibility of generating an Article 82 objection?

This could be important because it reduces the possibility of using Rule 36(1)(b) to escape the divisional time limit.

MaxDrei said...

The fact that no court can tell the EPO where it has gone wrong has been, over the last 30 years, a strength of the system, as the EPO has got going, and built its reputation.(Look at the shambles in the USA, where the CAFC and SCOTUS impose unworkable stuff on the PTO). But that success has gone to the heads of some of the folks within the EPO, who now think they can walk on water. An attitude "We do what we like, and you lot must lump it" is dangerous, in times when the EPO sees itself as superior to everybody else, despite having zero experience of real life use of patent rights. Mind you, even Robin Jacob in Napp v Sandoz (April the First Decision), para 7 to 12, asserts that divisionals are abuses, and that there should be a period of zero months, in which Applicant can choose to file a divisional. And he should know!

David said...

As email subscribers will know, I initially thought that the new form of r161 would only apply where a demand under a31 PCT was filed. After seeing the first anonymous comment above, I removed this from the post to avoid possible confusion. However, having read the AC's decision again, I'm not so sure. The new r161 seems to be quite clear that the conditions are for the EPO to be ISA and IPEA. I don't see it as being either/or. If the intention was for either to apply, shouldn't r161 instead state "...has acted as the International Searching Authority or, where under a demand under Article 31 PCT was filed, the International Preliminary Examining Authority for the application..."?

Cosmictrout said...

"shouldn't r161 instead state "...has acted as the International Searching Authority or, where under a demand under Article 31 PCT was filed, the International Preliminary Examining Authority for the application..."?"

Yes, it should. As with much of the new rules, it *should* be a lot clearer... I am currently puzzling over quite a few points

on this one though I think it is clear that the intention is that it is not necessary for a demand to have been filed - the reqt to reply to the WOISA applies even if EPO was only the ISA

Anonymous said...

David - I also think that the intention is that it is not necessary for a demand to have been filed, as supported by the next part of new Rule 161:


"it [the EPO] shall give the applicant the opportunity to comment on the written opinion of the International Searching Authority OR the International Preliminary Examination Report"

If a demand has been filed then it makes no sense to be given the opportunity to respond to the WOISA

Anonymous said...

I think the following link makes it clear that a Demand does not need to be filed:

http://www.wipo.int/edocs/mdocs/mdocs/en/pct_mia_16/pct_mia_16_11.doc

"COMPULSORY REPLY TO THE IPRP

1. The EPO is introducing a rule change into the EPC, stipulating that for applications where the EPO was ISA, or ISA and IPEA, the applicant has to file a substantiated reply to the IPRP upon European phase entry in the event that the IPRP notes deficiencies in the application. This will not only accelerate proceedings, but will also mean efficiency gains for the office. Currently after European phase entry, where the applicant has not filed amendments and/or observations, a communication from the examining division has to be dispatched inviting the applicant to remedy the deficiencies already listed in the IPRP, meaning a duplication of work.

2. A very important further consequence of this rule change is that it will give the IPRP the same status as a first office action in substantive examination, and will therefore increase its standing before other designated Offices (DOs)."

MaxDrei said...

Before the acronym WOISA gets too popular, let's all agree shall we that it ought to be WOISR. ISR always served perfectly well, but I do concede that WOISR makes a nattier sound bite.

Anonymous said...

But WOISA stands for Written Opinion of the International Searching Authority (it says that at the top of the page). It is separate from the International Search Report, although prepared at the same time.

In any case, how can an International Search Report have a Written Opinion?

Perhaps we should all refer to IPRP (International Preliminary Report on Patentability) under Chapter I or Chapter II of the PCT?

MaxDrei said...

I stand corrected. Beg pardon. I was thinking that the WO is "of" the ISR in that the ISR "has" annexed to it a WO, but I concede I should have read the words at the top of its page. Anyway, "WOISA" is an even niftier acronym than WOISR, so I'll be quiet now.

Anonymous said...

Perhaps not all of you are aware of the three forces acting in the EPO: the Administrative Council, the President and the Boards of appeal. When separated, each with its own responsibility, everything worked quite well. Since Mr Kober left the Administrative Council increased its influence steadily so that in fact now only the Boards of Appeal are still independent and fortunately they are aware of the fact that it is essential to the system that they remain independent. However, at least some representatives of contracting states in the Administrative Council also want more “control” over the Boards of Appeal.
Where this “control” of the Administrative Council leads to follows from the comments made by Gerontius and Max Drei. Let’s hope that the Boards of Appeal keep their heads clear of EPO policy and keep deciding in agreement with the EPC only.

MaxDrei said...

THe EPO worked well through the period before patents became contentious. Now that patents are widely seen as denying people their life-saving drugs and US politicians their life-saving Blackberries, the mission of the EPO, to grant patents, is being stress-tested. I think it is surviving these stress tests. When it comes to all these amendments to the Implementing Regulations though, they have gone through the AC at the second time of asking, haven't they. As I understand it, the AC threw them out, first time around. So who is the black hat at the EPO, the AC, the President, VP-DG3, or the team in the ivory tower cooking up these new Rules? As far as I can see, the EPO is getting its workload under control. Could you do any better? Do our clients really have it that bad?

Anonymous said...

Some people appear to have more background information others: Where is the evidence that the EPO is getting its workload under control? At least the AC is not of this opinion.
As regards the "black hat", don't blame the "team in the ivory tower", they just do what they are told by the president and as far as VP-DG3 is concerned he is wise enough not to get openly involved in policy matters, otherwise DG3 staff would run riot.

MaxDrei said...

Where is the evidence, anonymous? What I'm getting out of the EPO DG2: swift EESR's, 71(3)'s, fast handling of oppositions. But admittedly that's not in one of those technical fields where the EPO can't find enough Examiners. As to everybody doing what they are told to do by the President, I bet that's not how it feels like to Alison. But you're right about VP-DG3. He is painfully aware of the possibility of his herd of cats running riot.

Gerontius said...

My experience with the EPO over the last two years is much the same as MaxDrei's - the speed with which new applications are being dealt with is improving significantly. I received a search report before first publication of the application for probably the first time in my career last week.

Even more reassuringly, the day after my complaint above that the EPO take too long to issue a first examination report having already provided a WO in the international phase, I received an examination report on a case filed just three months earlier. Perfect timing, in my view - keeping things moving but giving the applicant time to recover from the outlay of cash for entering the European phase and the representative time to properly consider what response to make to the EPO.

Good show, EPO, and way to go in proving my point that many of these reforms are simply not necessary so long as the EPO themselves are in a position to deal with their workload.

Anonymous said...

MaxDrei’s and Gerontius’ comments show how difficult it is to remain objective when you are served well. Of course in some technical fields things work fine, but does that allow a general conclusion about workload control?
Apparently there is now a concentration on search and because of BEST many examiners are available for doing searches. However examination and oppositions are suffering: how else can an average of a 50 months (!) delay in dealing with oppositions (official EPO figure) be explained?

Anonymous said...

In some circles, in Germany (Birgit?) there is a view that delays in oppositions don't matter because there is no public interest in expedition, only the private interests of the warring parties. And they are well able to look after themselves, helped as needed by any courts involved. I wonder how much of this view pentrates the EPO buildings.

Anonymous said...

I refer to the anonymous comment made on 5th April at 4:52pm:

“Why would e.g. a US applicant spend USD 750 examination fee (fee applicable if USPTO was not ISA) + USD 171 handling fee on a PCT-II procedure before the USPTO only to delay the moment when the response to the EPO written opinion needs to be filed with the EPO?”

In these circumstances, Rule 161(1) EPC does not seem to apply (the EPO as ISA AND IPEA condition is not met) and I can see no reason why Rule 161(2) EPC would apply as the EPO would not need to draw up a supplementary European search report.

I agree that the moment at which a response was filed would be delayed, but would the applicant still be responding to the written opinion of the EPO as ISA? This would seem inappropriate if amendments had been filed e.g. when filing the Demand. I can’t immediately see which of the new Rules would then apply – perhaps a communication under Article 94(3) EPC would be issued?

Anonymous said...

In response to Anonymous @ April 06, 2009 10:45:

Is it possible to discern from the documents being studied whether further processing is available for this one month time period.

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