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Thursday, 11 November 2010

More EPO rule changes - this time it's good news (mostly)

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.

9 comments:

Anonymous said...

The rule changes do appear to be an uncommon outbreak of logical thinking, however there still a problem with the language of R36.

The term "the earliest application for which a communication has been issued" has been retained.

The problem is that, in the recently issued presentation "clarifying" this rule in relation to a parent and one or more subsequent divisionals, two contradictory interpretations of this language have been made by the EPO:

(i) the 24 month period triggered by the first communication issued in respect of the earliest application (i.e. the parent or grandparent application)

or.....

(ii) the 24 month period triggered by the earliest communication issued in respect of any of the parent and divisionals.

Which is correct, or does it depend on the mood your examiner is in at the time?

Mark Bell said...

The excess claims fees were already these values, all that is going to be changed is the consequent change to the reference to R71(4) which at the moment is R71(6). See: http://documents.epo.org/projects/babylon/eponet.nsf/0/D0105F9FBB841A8AC12575590040BA6C/$File/rules_relating_to_fees_02_09.pdf, http://archive.epo.org/epo/pubs/oj010/03_10/03_sup10.pdf and the links above to the current decision changes.

Anonymous said...

The changes to rules 82 and 95 are only to remove the last passage of parapgraph (2) of R.82 and (3) of R95 - i.e. the requirement that the EPO invitation to file translations of the claims (as amended in opposition or limitation) has to contain a reference to the EPO 'website where information concerning translation requirements of the claims in the Contracting States is published'. The same deletion has been made in Rule 71.

Anonymous said...

The change to R36 makes things worse in one way - by restricting the types of Communication in part (a) (voluntary divisionals) but not part (b) (mandatory divisionals), that arguably implies that any type of Communication is relevant for part (b). So, is a R161 referring to an IPRP that mentions a lack of unity "raising that specific objection for the first time", or can the unity objection be raised for the "first" time at a later date in a A94(3) Communication?

On the "first communication ... in respect of the earliest application for which a communication has been issued" point, I still find it odd that no one ever seems to consider the interpretation that is, to me, what the wording actually says - in other words, I would say that neither interpretation in the first comment above is correct. My interpretation being - take all the communications that have had a communication issued, find the earliest application out of that set of applications (this is "the earliest application for which a communication has been issued"), then it's the first communication for that application ("the first communication in respect of ..."). I've not checked properly, but I think this might even be consistent with the examples in the EPO's presentation. Why do people keep interpreting "earliest application for which a communication has been issued" to be "earliest application" (interpretation i), or "any application" (interpretation ii), when it's not either?

David said...

Thanks Mark for pointing out the error. That bit of the post has been deleted to avoid further confusion.

Confoozed said...

With parents/divisionals can anyone clarify what happens if a Communication issues on an earlier application (i.e. parent) after a Communication has issued on a later application (i.e. divisional), does your deadline then change? In this situation your parent then becomes 'the earliest application'.

David said...

@Confoozed:

It is my understanding, along with that of the company I work for, that in the case you mention the "earliest application for which a communication has been issued" will be the divisional. The 24 month time limit will then be calculated from the date of this communication, and not from any subsequent communication that may issue on the parent (unless it falls within the definition of Rule 36(1)(b)).

I know that others take the view that a later communication issuing on the parent will 'reset' the time limit. Given the 'mischief' that the rule change aims at addressing, I consider that this would be rather risky, if not downright foolish, to rely on.

Anonymous said...

Anon 5:43 again, @David: I wouldn't suggest that you rely on the deadline being reset, which I agree would be foolish. But I would still question on what basis you can "understand" that first communication ... in respect of the earliest application for which a communication has been issued should be interpreted as earliest communication issued on any application, when it seems fairly obviously that they mean different things.

And your interpretation is only the safe one to use when you're the one filing the divisionals, of course - are you going to rely on the fact that a competitor has lost the opportunity to file a divisional when a communication has not yet issued on a pending parent? This is the problem that comes with deciding on a "safe" interpetation and using that, rather than deciding what the interpretation could be (without necessarily choosing a single possibility), and then considering what is safe in any particular set of circumstances.

Anonymous said...

I thought the EPO (Ingwer Koch, Director Patent Law, EPO in particular) had repeatedly indicated that the clock is reset by a late communication issuing on a still pending parent (I have the slide but cannot post it here). I agree that in FTO analyses it would be dangerous to rule this out.

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