The European Patent Office (EPO) has seen a significant increase in the number of European patent applications filed over the last decade. Filings have more than doubled and a backlog of several hundred thousand patent applications has been generated as a result.
According to the EPO, applicants have abused the patent system by filing European patent applications suffering from what the EPO has denoted as “basic drafting deficiencies”. The EPO holds the view that such “basic drafting deficiencies” have resulted in prosecution of European patent applications which did not comply with many of the provisions of the EPC. The EPO has introduced significant rule changes in an attempt to counter many of the “basic drafting deficiencies” which - according to the EPO - should have been remedied by applicants prior to filing their European patent applications.
These developments have prompted the EPO to introduce some sweeping changes to the European Patent Convention (EPC). The changes impose serious restrictions on the prosecution of European patent applications. New procedural rules and fee structures have been introduced, and existing rules are enforced more strictly.
Some of the changes aimed to counter what the EPO considers a “procedural abuse” of the patent system are directed to new procedural rules regulating the filing of divisional patent applications.
One example which - according to the EPO - constituted an abuse of the EPC was the use of divisional European patent applications as a form of US style continuation applications - i.e. filings perceived by the EPO to cause legal uncertainty and to prolong the prosecution of a European patent application.
According to the EPO, divisional applications should primarily be filed to overcome a rejection that a group of inventions are not unified.
New Rule 36(1) EPC imposes a strict regulation of the period of time in which an applicant can file a divisional patent application in Europe. Provided that the parent application is pending, a divisional application can only be filed within 24 months from the date of issuance of an Official Communication. The date starting the 24-month term is the latter of
The changes to the EPC also restrict subject matter that will be searched by the EPO during the initial phases of the prosecution of a European patent application. In particular, the EPO has imposed the following procedural restrictions on searches:
Only a single independent claim is allowed in each claim category,
An incomplete search will be performed if the claims are deemed too broad or unclear, and
A partial search will be performed if the claims are deemed to lack unity.
The EPO allows only a single independent claim in each claim category, except under certain circumstances, cf. Rule 43(2) EPC:
When a plurality of interrelated products are claimed,
When different uses of a product or an apparatus are claimed, and
When alternative solutions to a particular problem are claimed - and it is inappropriate to cite the different alternatives in a single claim.
When the EPO considers that Rule 43(2) EPC is not adhered to, the applicant will be invited to indicate the independent claim in each claim category which should be searched. The EPO will limit the search to this subject matter.
In the absence of a response to the invitation to elect a single independent claim in each claim category, the EPO will search only the first mentioned independent claim in each claim category. An applicant may challenge an objection that Rule 43(2) EPC has not been adhered to. If the challenge is successful, the EPO will not limit the search.
When the EPO considers that the claims are too broad, or unclear, the applicant will be invited to file a statement identifying subject matter to be searched.
If the statement is deemed deficient in identifying the subject matter to be searched, the EPO may either not perform a search at all, or perform only a partial search. An applicant may challenge an objection directed to the claims being either too broad or unclear. If the challenge is successful, the EPO will not limit the search.
The EPO may - independently of the above-cited objections - consider that the claims are directed to more than a single, general inventive concept - in which case the EPO will impose a lack of unity objection. The EPO will perform a search of the first mentioned invention in the claims and invite the applicant to pay a search fee for each of the further inventions.
The above-cited procedural changes should be carefully evaluated when deciding how best to draft and prosecute a European patent application. Generally, subject matter, which has not been searched, will not be examined - and said subject matter will - if at all possible - have to be pursued in a divisional application.
The EPO may decide not to search certain claims in a divisional application - in which case said claims will not be examined during the prosecution of said divisional application. It may not be possible to file a further divisional application because the term for doing so may have expired, cf. herein above. Under such circumstances, an applicant may have lost the opportunity to pursue unsearched subject matter.
As an applicant no longer has the option to file voluntarily a divisional application, strategies for filing and prosecuting a divisional application, including the subject matter to be claimed, should be carefully evaluated. Generally, a decision to file a divisional application will have to be taken at an earlier stage of the prosecution of a parent application under the new rules.
Another reason for carefully evaluating subject matter to be pursued in a divisional application is that it may no longer be possible to pursue a strategy of initially seeking a narrow protection of certain aspects of an invention - with a view to later pursuing a broader protection for the same invention in a further divisional application.
An applicant should carefully consider, prior to filing a European patent application, how to draft a single, clear and concise generic claim covering all commercially relevant aspects of the invention. Alternatively, several, equally preferred, alternative embodiments of the invention should be presented in a single claim. In some cases, such claims should also be included in the European patent application as filed - as the possibilities for introducing amendments to the claimed subject matter may be limited once the application has been filed.
For a direct filing of a European patent application with the EPO, no opportunity exists for introducing amendments to the claims before a European search report is issued. Accordingly, the subject matter for which protection is sought should be reviewed and amended prior to filing the European patent application. The EPO will issue an Opinion accompanying a supplementary European search report. Collectively, the Opinion and the supplementary European search report will be referred to as an extended European search report. Applicants must file a response directed to the objections raised by the EPO in the Opinion of the extended European search report. Filing a response is mandatory and the European patent application will be deemed to be withdrawn if no response is filed.
For Euro-PCT applications, for which the EPO did not act as ISA during the international phase, the EPO will conduct a supplementary European search. Applicants have the opportunity to amend the claims when filing a European patent application - prior to the EPO conducting the supplementary European search. Amended claims, if any, introduced when filing the European patent application, will form the basis for the supplementary European search conducted by the EPO. The EPO will issue an Opinion accompanying the supplementary European search report. Applicants must file a response directed to the objections, if any, raised by the EPO in this Opinion. Filing a response is mandatory and a European patent application will be deemed to be withdrawn if no response is filed.
For Euro-PCT applications, for which the EPO acted as ISA during the international phase, no supplementary European search is performed. Applicants are required to file a response directed to the objections raised by the EPO (acting as ISA) during the international phase. The response - including any claim amendments - can be filed voluntarily at the time of filing the European patent application, or the response can be filed in reply to issuance by the EPO of a Communication pursuant to Rule 161 EPC. Filing a response to a Communication pursuant to Rule 161 EPC is mandatory and a European patent application will be deemed to be withdrawn if no response is filed.
The filing of a response to an Opinion issued by the EPO represents the only opportunity for an applicant to voluntarily amend the claims. Further amendments can only be introduced with the consent of the Examining Division. For a European patent application - irrespective of how the application is filed with the EPO, or entered into the regional phase in Europe - the EPO can be expected to strictly enforce the following procedural limitations:
Another example of an abuse of the patent system is - according to the EPO - filing and prosecuting European patent applications containing a large number of claims, or claims having an overlapping scope of protection. Hence, the EPO has significantly increased the claim fees payable when filing a European patent application having more than 15 claims.
The below table contains some of the recently introduced rule changes.
| Rules 62a (new) and 63 | Applicants are required to clarify claims deemed unclear before a search is performed. |
|
Rule 137 (new paragraph 5) |
Amendments introducing non-searched subject-matter are not permited, cf. Rules 62a and 63 EPC. |
|
Rules 70a (new) and 161 |
Applicants must file a response to the search opinion issued by the EPO Search Examiner prior to entering substantial examination. |
|
Rule 137, paragraphs 2 & 3 |
Only a single opportunity for an applicant to file voluntary amendments. |
|
Rule 137, paragraph 4 |
Amendment must be identified and basis in the original filing must be provided. |
|
Rule 36 |
Sets strict time limits for filing divisional applications. |
|
Rules 57a, 69 and 135 |
References to some of above new rules have been added. |
|
Rule 64 |
Revised time limit for paying additional search fee(s) in case of non-unity. |