16 July 2010

A Communication Pursuant to Rule 161 EPC is no "First Communication" According to Rule 36 (1) EPC

Rule 36(1) EPC and Rule 161 EPC have been amended as of 1 April 2010. In the meantime, among practicioners the question occured whether or not the issuance of the communication under Rule 161(1) EPC (by the examining division) marks the starting point of the new two-years time limit for filing mandatorey or voluntary divisional applications according to Rule 36(1) 

According to this notice of the EPO, the good (and predictable) news is that communication pursuant Rule 161 EPC is not a "communication" within the meaning of amended Rule 36(1) EPC.

The EPO explains in his notice that a communication pursuant Rule 36(1) EPC.
is understood to be a substantive communication which sets out the examining division's opinion as to whether the application or invention to which it relates meets the requirements of the Convention, [ whereas] a communication under Rule 161 EPC is not a substantive communication within the meaning of amended Rule 36(1) EPC and therefore does not cause the time limit for the filing of voluntary or mandatory divisional applications to start.
A communication under Rule 161 EPC, in fact, is essentially a formal communication referring to the opinions or examination/search reports issued during the international phase but does not yet contain the examining division's own substantive opinion.