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Friday, 16 July 2010

EPO: English version of notice concerning communications under amended Rule 161 EPC

The European Patent Office has issued today an English version of its notice of 29 June 2010 (previously available only in German) concerning communications under amended Rule 161 EPC (thank you, Birgit Clark and Simon Roberts, for the pointer!). The notice concerns the calculation of the time limit according to Rule 36 EPC, brought in on 1 April 2010 (noted on IPKat here, here, here, here, here, here and here). Under Rule 36, divisionals must be filed within two years from a non-unity objection or from the first communication from the Examining Division. The question is: what is a communication from the Examining Division, namely, is a communication under Rule 161 a communication in the sense of Rule 36? The short answer is no:

A communication under Rule 161 EPC (both in its amended form as well as in the version applicable until 31 March 2010), despite emanating from the examining division in compliance with Rule 10 EPC, is not a substantive communication within the meaning of amended Rule 36(1) EPC and therefore does not cause the time limit for the filing of voluntary or mandatory divisional applications to start.
Practitioners are advised to read the notice in full here.


Anonymous said...

Anyone for fudge?...

"5. In deviation from the procedure set out in points 3 and 4, if the WO-ISA or IPER was issued before 1 April 2010, the applicant may receive EPO Form 1226A even if the WO-ISA or IPER was positive...
...In these transitional cases, applicants may consequently receive EPO Form 1226A, which appears to require them to respond to a positive WO-ISA or IPER, when in fact no loss of rights will occur if the applicant does not react."

Anonymous said...

I am still puzzled: if the text of the law is clear, can the administration take a deviating position by means of some creative interpretation? I would believe that applicants are well advised to file any divisional applications within 2 years from the Rule 161 Communication.

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