There has been much wailing and gnashing of teeth among patent attorneys and applicants over the new rules that the EPO's Administrative Council has inflicted upon us over the past year or two. Rule changes relating to a new deadline for filing of divisional applications (Rule 36) and to a new requirement to respond to an international written opinion shortly after entering the European regional phase (Rule 161) have perhaps been the most controversial.
In the case of Rule 36, nobody was quite sure what exactly would cause the 24 month period within which a divisional could be filed to start. Even though the EPO issued a communication stating that only communications issued by the examining division would count, this did not really resolve the issue, particularly because communications other than those under Article 94(3) or Rule 71(3) also tended to be confusingly issued "For the Examining Division".
In the case of Rule 161, the one month time period imposed to provide a response was seen by many to be far too short, particularly when applicants who would most likely be affected by this would be from outside Europe and therefore not necessarily warned in advance.
The Adminstrative Council have obviously been listening to these complaints about the apparent uncertainty and downright unfairness of aspects of the new rules, and have now issued some further decisions. These include:
- CA/D 16/10 amending Rule 36, entering into force as of 26 October 2010; and
- CA/D 12/10 amending Rules 161 and 162, entering into force on 1 May 2011.
The first of these addresses the issue of which communications start the two year period by specifying in new Rule 36 that the time limit is "twenty-four months from the Examining Division's first communication under Article 94, paragraph 3, and Rule 71, paragraph 1 and 2, or Rule 71, paragraph 3, in respect of the earliest application for which a communication has been issued".
The second decision addresses the issue of the short period to respond under Rules 161 and 162 by making the period six months instead of one.
If all that wasn't enough to be more cheerful about, the Administrative Council have also issued a further decision CA/D 2/10 that addresses some concerns about what should happen if a communication under Rule 71(3) (a notice of allowance issued by the examining division) is not agreed with by the applicant. A revised Rule 71 and a new Rule 71a, along with revisions to Rules 82 and 95 relating to the equivalent situations for oppositions and limitations, allows for a reasoned response to be made with amendments or corrections, followed by approval by the examiner. These changes do not come into force until 1 April 2012, but will then apply to all communications issued on or after that date.