When the amended European Patent Convention (EPC2000) came into effect in 2007, various of the EPO's Rules were amended in the name of simplification. That included changes to the rule governing handling of Euro-PCT patent applications following a finding of lack of unity in a European Supplementary Search (a search carried out when a PCT application enters the European regional phase, in the case where the PCT application was previously searched by an International Searching Authority other than the EPO). Current rule 164 EPC sets out that only the first invention mentioned in the claims is to be searched. In order for protection to be obtained for additional inventions, it is necessary to file a divisional application (at considerable cost). This approach is out of line with the treatment of direct EP applications and many stakeholders have found it unfair.
The EPO has now announced that Rule 164 will be amended with effect from 1 November 2014 so that in the case of a lack of unity being found, the applicant will be given the opportunity to request (and pay for) an additional search. The new Rule will apply to all Euro-PCT applications, including those for which the EPO carried out the International Search, and will enable an invention to be pursued in the European application even if it is not the first one mentioned in the claims and if it was not searched in the International Phase. As the further searching involves the payment of further search fees, it remains beneficial for the invention of most interest to be presented first in the claims.
The new rule will apply to applications for which the supplementary European search report has not been drawn up by 1 November 2014. As applicants are always given six months to file new claims after entering the European regional phase (Rule 161 EPC), any PCT application entering the EP regional phase from approximately now onwards will be able to benefit from the new, more liberal, rule.
...And Announces Less Flexible Procedure For Filing Of Amendments
The EPO has also recently changed its approach regarding the filing of amendments to pages of European patent applications. However, unlike the change to Rule 164, in this case the EPO have moved away from what was previously a more liberal approach.
The EPO rules state that documents making up an application, and replacement pages, shall generally be typewritten or printed (Rule 49(8) and 50(1) EPC), but until now this Rule has not been enforced strictly and handwritten amendments have regularly been made by Applicants and EPO Examiners alike. However, the EPO has recently issued a Notice stating that such handwritten amendments will no longer be accepted, with effect from 1 January 2014.
Although this is comparatively minor procedural change, there are implications for Applicants: it will be important to retain an editable copy of the patent specification until late in the application process so that it does not become necessary to re-type pages. There will also be an effect on the course of oral proceedings, especially first instance opposition oral proceedings. At opposition oral proceedings, it is common for the patent to be maintained with a claim set that has been amended from the originally granted patent. In that situation, the Patentee must generally file amended pages of the description, in line with the allowed claims, before the end of the hearing. In the past, that has generally been carried out by making handwritten amendments on a print of the specification during the hearing. From now on, it will be necessary to prepare the amended pages on a computer and then print out the new pages. It remains to be seen whether the computer facilities that the EPO will provide will enable amended pages to be produced in a satisfactory manner. It may become necessary to prepare in advance multiple sets of amended description pages to cover every amendment that might be expected. We will report further as this process becomes established.
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