10 March 2010

Forthcoming Changes in the EPC: The Search Stage

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). These amendments can be roughly classified into
  • Changes affecting the search stage, 
  • Changes affecting the examination procedure, and
  • Changes affecting divisional applications.
Below we will briefly discuss those Rules that affect the European search stage, while the remaining two issues will be discussed separately in further posts.

Generally, the new provisions on the European search focus on inviting the applicant to comply already at the search stage with requirements such as unity, clarity and conciseness of the claims. It is tried to better streamline the proceedings up to grant by concentrating the search (and thus the examination) on only one independent claim per category and by inviting the applicant to clarify the subject-matter to be searched (and examined) as early as possible.

Concerning the changes of the European search, Rules 43(2), 62a, 63, 64(1) EPC are relevant. According to (unamended) Rule 43 (2) EPC, not more than one independent claim per claim category is allowed, except they relate to:
  1. a plurality of interrelated products, or
  2. different uses of a product or apparatus, or
  3. alternative solutions to a particular problem where a single claim is not appropriate.
According to new Rule 62a EPC (plurality of independent claims) the applicant is invited to indicate claims that comply with Rule 43 (2) EPC within a two-months period with no extension of term or further processing being available. If the applicant fails to present such claims, the first claim in each category is searched and substantive examination will only be carried out on the searched claims.

Amendments to the claims are not possible prior to completion of the search and amendments relating to non-searched subject matter are generally not possible during examination, as required by Rule 137(5) EPC.

According to amended Rule 63 EPC, (incomplete search), where no meaningful search can be conducted (e.g. because of lack of support, clarity or conciseness) applicant is invited to indicate subject matter to be searched within 2 months with no extension of term or further processing being available. If the applicant fails to comply, the EPO will either issue a declaration that search is not possible or a partial search report.

Amendments to the claims are not possible prior to completion of the search, whereas amended claim wording will be considered and can later be introduced during examination.

According to amended Rule 64 (1) EPC (lack of unity), where a lack of unity objection according to Art 82 EPC is raised, the applicant is invited to pay additional search fees within a two-months term with no extension of term or further processing being available. In the case of failure, a partial search report is drawn up.

The new provisions will apply to all applications where the search is conducted after 1 April 2010.