R.G.C. Jenkins

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R.G.C. Jenkins Co Patents Designs Trade
Marks
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EPO Rule Changes coming into force 1 April 2010
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Background

• Original EPC (1973) required divisional to be
  filed at time of response to 1st OA or later if
  justified
• In practice, Examining Division usually gave
  consent up to approval of the text for grant
• In 2002 these restrictions were removed and
  divisionals could be filed as of right any time
  up to grant
• But now there is a trend for applicants to abuse
  these procedural possibilities

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Abuse?

• Duplication of proceedings
• filing an identical divisional the day before a
  hearing and prosecuting the divisional instead of
  appealing
• whats abusive about that?
• until recently the cautious approach was to make
  the divisional identical and only later amend
• 5 of applications are divisionals
• Of these, 7 are 2nd generation and 1 are later
  generation
• No statistics on how many are prima facie
  abusive
• Enlarged Board of Appeal found it unsatisfactory
  that sequences of divisionals should be pending
  for up to 20 years
• Legislator should consider whether there are
  abuses and what the remedy could be (G1/05
  G1/06)

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Sunset for filing Divisional Applications

• Divisional applications must be filed within 2
  years from the Examining Divisions first
  communication in respect of the earliest
  application for which a communication has issued
• i.e. from the first communication in the parent
  application unless exceptional circumstances mean
  that a divisional is examined first.
• The 2 years run from the date of the
  communication
• Not from the date of notification of the
  communication
• Accordingly, the 10-day rule does not apply
• Problem if the representative never receives the
  communication

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Transition Provisions

• If the 2-year period has already expired on
  1 April 2010, a divisional application may still
  be filed by 1 October 2010
• If it is still running on 1 April 2010, it will
  continue to do so until 1 October 2010.
• E.g. 1st OA issued 2 April 2008
• 2-year sunset would expire 2 April 2010 but
  continues to 1 October 2010
• So why does the EPO say the new rule applies to
  divisional applications filed after 1 April 2010,
  when its effect is postponed to 1 October 2010?
• To protect the lazy practitioner who ignores the
  rule until it has come into force?

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No tears

• No further processing
• (nor for the transition provisions)
• Restitutio not precluded
• Would have to show that in spite of all due care
  being taken to file the divisional in time, the
  deadline was missed
• Might be limited to only those instances where
  there was at that time a specific intention to
  file a divisional application and an error
  occurred
• As opposed to an instance where, after the
  deadline expired, it became apparent that there
  was unclaimed subject matter.

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Exception to the Rule

• The exception is where the Examining Division
  raises a lack of unity objection for the first
  time (in the parent or any of the divisionals).
• In such a case, the clock re-starts from the date
  of the communication in which the specific
  non-unity objection is first raised.
• Unusual to have a non-unity objection in a 2nd or
  subsequent OA
• N.B. it is the communication from the Examining
  Division that is relevant
• Not, for example, the Written Opinion
  accompanying the ISR

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Dont Count on Restarting the Clock

• A non-unity objection cannot be provoked merely
  by adding new claims
• Rule 137(4) prohibits amendment to unsearched
  subject matter that does not share unity of
  invention with the already searched claims.
• Consider all possible new and inventive subject
  matter, and file one or more divisional
  applications with all the envisaged claims within
  the 2-year period.

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Non-Unity Objections

• A priori objection
• Independent claims do not share the same special
  technical features

• A posteriori objection
• From the search results, the features of the
  independent claims lack novelty or inventiveness
• Dependent claims divide into different groups
  that do not share the same special technical
  features
• Usually raised by the search examiner

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A priori and a posteriori non-unity objections
Claim 1
Claim 8
Claim 2
Claim 9
Claim 10
Claim 3
Claim 6
Claim 4
Claim 7
Claim 5
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Rebutting a non-unity objection

• An applicant can quite properly reply that
• The a priori non-unity objection is unfounded
  because the independent claims share the same
  special technical features
• The a posteriori non-unity objection is unfounded
  because the independent claims (or the unifying
  dependent claims) are indeed new and inventive

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Dont depend on rebutting the objection

• If the rebuttal is accepted and the objection is
  withdrawn
• no problem there should be no need for a
  divisional application
• Later amendment might lead to lack of unity
• If its the same lack of unity dont expect
  sympathy the clock started running from the 1st
  OA
• If its a new lack of unity, the clock will
  restart
• If the rebuttal is unpersuasive, the clock is
  running
• Long gaps between communications
• Recently we have noticed very long gaps that
  would eat up the 2-year period.
• You may have to file the divisional application
  before knowing whether the rebuttal argument is
  persuasive.

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Oral Proceedings

• In practice, you get at most 2 Office Actions
• The 2-year sunset is likely to have expired
  before Oral Proceedings
• If it has expired
• Do not expect to provoke a non-unity objection at
  this late stage
• Amendment is at the discretion of the Examining
  Division
• Discretion will not be exercised to permit entry
  of an amendment that does not satisfy Article 82
• If it has not
• File a precautionary divisional in case the
  application is refused

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Plan Cascading Divisionals

• Careful planning of cascading dependent claims
  (in the parent and again in the first divisional)
  may allow an applicant to make full use of the
  exception to restart the clock.
• If claims are written to give meaningful
  fall-back positions, the Examining Division can
  be provoked into raising a non-unity objection,
  even if 2 years have passed since commencement of
  examination, thereby opening the possibility of
  filing a late divisional.

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Cascading Divisionals
Claim 1
Claim 2
Claim 3
Claim 6
Claim 4
Claim 7
Claim 5
Claim 9
Claim 8
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Other Rule Changes coming into force on 1 April
2010
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Multiple Independent Claims and Complex
Applications

• Multiple claims in the same category
• 1 month to select which are to be searched (Rule
  62a)
• Searching Complex applications
• Where meaningful search is not possible, instead
  of a declaration or a partial search report, the
  EPO will invite the applicant to clarify the
  subject matter to be searched
• I month to reply (Rule 63)
• No further processing
• No restitutio
• neither shorter than 2 weeks nor exceed six weeks

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Obligatory response to the Search Opinion

• To the Search Opinion accompanying the European
  search report (Rule 70(a)(1))
• Must be submitted within the period specified for
  confirming the intention to proceed
• Applies to applications filed after 1 July 2005
  (we are still receiving occasional search reports
  on earlier applications )
• Equally to a Supplementary Search Report (Rule
  70a(2))
• To a Chapter I report (IPRP) or Chapter II
  report (IPER) drawn up by the EPO against a
  PCT application (Rule 161)
• Must be submitted within the 1-month period for
  amending the claims under Rule 161
• We will need a copy of the ISR WO or IPER at
  the earliest opportunity
• Risky to merely deny the objections
• Might receive a summons, so request oral
  proceedings as a precaution

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EP Phase entry

• Due 31 months from priority
• But the ISR and WO are not available from the
  WIPO file history until 30 months from priority
• Best that we receive these from our client before
  EP phase entry
• Enter EP Phase at 31 months
• Receive communication under Rule 161 inviting
  amendment
• Usually takes about 6 weeks to receive this
• Communication under Rule 161 sets 1 month to
  reply
• Further processing is available

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Detailed identification of basis for amendments

• New Rule 137(4)
• No change here for Jenkins
• we routinely indicate to examiners where support
  for amendments can be found
• Failure to meet requirement is a deficiency and
  the EPO may request correction within 1 month
• Further processing available

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Questions ?