18 March 2010

Forthcoming Changes in the EPC: Examination

On 1 April 2010 a number of changes to the Implementing Regulations of the EPC will enter into force (see Decision CA/D 3/09 of the Administrative Council of 25 March 2009 and OJ 2009, 533). These amendments can be roughly classified into
Below the amended rules affecting the examination procedure are briefly outlined.

According to amended Rule 137 EPC (voluntary amendments) the applicant may amend description, claims and drawings of an application on his own volition only in the following cases:
  • in a Euro-direct application
    ⇒ in reply to the extended European search report (EESR); or

  • in a Euro-PCT application


    • where the EPO did not act as International Search Authority (ISA), i.e. the International Search Report (ISR) was not drawn up by the EPO
      ⇒ in reply to the supplementary European search report;
    • where the EPO did act as International Search Authority (ISA), i.e. the International Search Report (ISR) was drawn up by the EPO
      ⇒ in reply to the written opinion of the International search report.
This rather course scheme may be specified in more detail related to the various procedural sitiations that may occur in Euro-direct and Euro-PCT applications:

Procedural situations in Euro-direct proceedings
  • If the examination fee was not paid upon filing, the examination fee has to be paid and a reply to the search opinion - established by the EPO within the extended European search report (EESR) - has to be file within six months as of publication of the European search report (Rules 70 (1), 70a (1) EPC).
  •  If the Examination fee was paid upon filing, the declaration as to “proceed further” has to be filed and a reply to the search opinion - established by the EPO within the extended European search report (EESR) - has to be file within six months as of publication of the European search report (Rules 70 (2), 70a (2) EPC).
  • If the Examination fee was paid upon filing and the declaration as to “proceed further” has been waived by the applicant (Rule 10 (4) EPC), a reply to an office action which in this case has been established by the EPO within the extended European search report (EESR) has to be filed within four months with two months extension possible.
While the first two options are frequently used, that latter option appears not to be very common even though it may accelerate the proceedings.

If the applicant waives his right to receive the invitation pursuant to Rule 70 (2) EPC and thus confirmes that he desires to proceed further when the search report is transmitted to him, the search report is accompanied by a regular communication under Art 94 (3) EPC or, if the application is in order for grant, a notification under Rule 71 (3) EPC. Before issuing such communication, however, it will be checked whether or not conflicting European applications according to Art 54 (3) EPC exist, which, as a general searching rule, have not been checked during the European search.  

Procedural situations in EURO-PCT proceedings:
  • If the EPO did not act as International Search Authority (EPO ≠ISA), i.e. the written opinion of the International search report (ISA) was not drawn up by the EPO, the EPO issues a notification pursuant Rule 161 (1) EPC after which voluntary amendments may be conducted within one month (+ 10 days grace period).
    The EPO then draws up the supplementary European search report with a search opinion (R 161 (2) EPC), whereas the term to file a declaration as to "proceed further” and a reply on the search opinion has to be filed within six months (+ 10 days grace period). 

  • If the EPO did act as International Search Authority (EPO=ISA), i.e. the written opinion of International search report (ISA) was drawn up by the EPO, the EPO issues a notification pursuant Rule 161 (1) EPC after which a reply to the written opinion has to be filed already within one month (+ 10 days grace period), unless a reply has already been filed upon entering the European phase.
Especially in the latter case (EPO=ISA) the time frame for filing a substantive reply is rather narrow. It thus is highly advisable to start preparing the mandatory reply shortly after the written opinion has been issued, e.g. sufficently before issuance of the notification pursuant Rule 161 (1) EPC.

Concluding Remarks:
Beyond the above full terms, no (further) extensions are available. Upon failure to observe the terms, the application is deemed to be withdrawn (Rules 70a (3), 161 (1) EPC), whereas, as remedy, further processing ist possible within one month after the respective notification (Art 121 EPC).

The above amendment shall apply to all applications for which the extended or supplementary European search report is drawn up or after 1 April 2010.