OJ EPO 2009, 533

1. Introduction

As part of the "raising the bar" initiative, the Administrative Council of the European Patent Organisation has decided to amend the EPC Implementing Regulations in order to improve the quality of incoming patent applications and streamline the grant procedure (see CA/D 3/09 of 25 March 2009, OJ EPO 2009, 299).

2. New Rule 62a EPC

2.1 Rule 43(2) EPC (= Rule 29(2) EPC 1973) implements the Article 84 EPC requirement that the claims be clear and concise. These requirements are very important in the public interest as they ensure legal certainty as to the scope of protection.

Under the new Rule 62a EPC, applicants may already be required to limit the number of independent claims when filing their application, meaning that the potential scope of protection will be defined more clearly at this early stage. Since it was hitherto impossible to enforce Rule 43(2) EPC at the search stage, such limitation could be postponed until the substantive examination or even the grant phase. Search examiners encountering several independent claims in one or more categories had to draw up a search report on an application which could only be granted in its existing form if the Rule 43(2) EPC exceptions applied in the specific case. The new Rule 62a EPC remedies this situation and will thus make the grant procedure more efficient.

2.2 Where the applicant responds to an invitation under Rule 62a(1) EPC in good time, the search will focus on the decisive aspect of the invention. If no response is received by the deadline, the search report will be drawn up on the basis of the subject-matter of the first independent claim in each category. However, the applicant may challenge a Rule 62a EPC objection either in his reply to the search division or before the examining division. If the search examiner is persuaded by the reply, or if the examining division finds that the objection was unjustified, the search will be carried out, if necessary anew, on an unlimited basis.

2.3 Since the search report should be available on publication of the application, Rule 62a EPC prescribes a response period of two months and rules out further processing. However, a request for re-establishment of rights may be granted, provided the relevant conditions are met.

2.4 The combined effect of Rule 62a(2) and Rule 137(5), sentence 2, EPC is that patents cannot be granted with claims relating to non-searched subject-matter. Whilst Rule 137(5), sentence 2, EPC concerns amendments made during the grant proceedings which have been reviewed by the examining division, Rule 62a(2) EPC ensures that claims in the original application which are directed to non-searched subject-matter are removed. If the applicant fails to respond to the invitation under Rule 62a(2) EPC, the application will not meet all the EPC requirements and can be refused under Article 97(2) EPC.

3. Amended Rule 63 EPC

3.1 The amended Rule 63 EPC improves the processing of applications for which no meaningful search can be performed or which make substantive examination difficult because the claims are not supported, clear and concise. In such cases, applicants will be invited to file prior to the search a statement indicating the subject-matter to be searched.

3.2 Under Rule 137(1) EPC, the application cannot be amended at this stage. An appropriate response to an invitation under Rule 63 EPC might therefore be a statement indicating which part of the description (e.g. a particular embodiment) can be used to interpret the claims. Alternatively, the wording of the claims may be improved so as to remedy the defects; this wording will then be formally introduced to the proceedings as an amendment together with the reply to the extended European search report (EESR).

Ideally, the applicant's statement will remedy all defects under Article 84 EPC, making it possible to draw up a full search report. If not, a partial search report will be drawn up in the light of the applicant's submissions and the applicant will be required to limit the claims to the searched subject-matter. However, there will continue to be cases in which, despite the applicant's clarifications, the EPO can only issue a reasoned declaration that it was impossible to carry out a search, e.g. where the applicant's statement refers to subject-matter which has no basis in the application as filed.

3.3 Objections under Rule 63 EPC will be reviewed as part of the substantive examination.

3.4 Given that the search report should be published together with the application, the two-month period prescribed under Rule 63 EPC is not open to further processing, but it is possible to request re-establishment of rights.

3.5 As with Rule 62a(2) EPC (described in point 2.4 above), Rules 63(3) and Rule 137(5), sentence 2, EPC prevent the grant of patents for non-searched subject-matter.

4. Adjustment of Rule 64 EPC deadline

The deadline in Rule 64 EPC has been brought into line with those in Rules 62a and 63 EPC, so that applicants will now have two months in which to pay further search fees in the event of an objection of lack of unity. In the situations covered by Rule 64 EPC, further processing was already excluded under the EPC 1973, and has been ruled out under Rule 135(2) EPC since the EPC 2000 entered into force.

5. Reply to search opinion

5.1. Reply to EESR

5.1.1 One of the aims of the 2005 introduction of an opinion as part of the European search report was to accelerate the examination procedure by providing a product similar to the examiner's first action at the earlier search stage. Under the legislation applicable to date, there is no obligation to reply to the opinion issued with the European search report.

5.1.2 The new Rule 70a EPC provides that the applicant must reply to the opinion accompanying the search report within the period for filing an examination request. However, this applies only if the opinion is negative. If no objections are raised in the opinion, i.e. no invitation to remedy defects or amend the claims, description or drawings is issued, the applicant need not file a reply and will be informed of this.

5.1.3 Applicants have six months in which to comment on the EESR and, in particular, react to any objections. For Euro-direct applications, this follows from Rule 70a(1) EPC, which refers to the period for requesting examination laid down in Rule 70(1) EPC.

5.1.4 If the examination fee was paid before despatch of the European search report, i.e. if a valid examination request has already been filed, the Office will invite the applicant under Rule 70(2) EPC to state, within a period to be specified, whether he wishes to proceed with the application. It is planned to include in the Examination Guidelines a note that the period granted will be six months from the date on which the European Patent Bulletin mentions that the search report has been published. A period of six months specified by the Office under Rule 70(2) EPC and thus also relevant to Rule 70a(2) EPC is extendable only under exceptional circumstances (Guidelines for Examination E-VIII, 1.6).

5.1.5 It is also envisaged that the Examination Guidelines will include a note that, where a supplementary European search report has been drawn up for a Euro-PCT application, the applicant will likewise be granted six months for his reply to the search opinion; this period starts with the notification of the communication by the Office pursuant to Rule 70(2) and Rule 70a(2) EPC. As in the above case, a period of six months specified by the Office is extendable only under exceptional circumstances (Guidelines for examination E-VIII, 1.6).

5.1.6 If the applicant has paid the examination fee early and waived the right to indicate whether he wishes to proceed with the application after despatch of the European or supplementary European search report, no search opinion will be issued. Instead, a first examiner's action will be issued immediately, meaning that Article 94(3) EPC, rather than Rule 70a EPC, will become applicable at that stage already.

5.1.7 Under Rule 70a(3) EPC, European patent applications will be deemed withdrawn if the applicant fails to comply with an invitation under Rule 70a(1) or (2) EPC to remedy defects or make amendments and also fails to comment on the search opinion. However, further processing may be requested in such cases.

5.2 Reply to international search reports or international preliminary examination reports drawn up by the EPO

5.2.1 In the case of Euro-PCT applications for which the EPO acted as International Searching Authority (ISA) and issued the ISA written opinion (WO-ISA), the applicant must comment on a negative WO-ISA within one month of the date of the EPO communication under Rule 161(1) EPC.

5.2.2 Amendments or comments on the WO-ISA which are filed on entry into the European phase are deemed to be a relevant response, so there is no need to reply to the Rule 161(1) EPC communication. The same applies for amendments filed under Article 19 PCT which are maintained on entry into the European phase.

5.2.3 Amendments under Article 19 or 34 PCT which have been taken into account by the EPO when drawing up the international preliminary examination report (IPER) in its capacity as ISA and International Preliminary Examining Authority (IPEA) cannot, however, be regarded as the requisite reply to a Rule 161(1) EPC invitation, and applicants must therefore respond to the IPER.

5.2.4 If the applicant fails to respond as required to a Rule 161(1) EPC communication within the prescribed period, the application will be deemed withdrawn (Rule 161(1), sentence 2, EPC). Further processing may be requested.

5.2.5 Rule 161(2) EPC applies to Euro-PCT applications for which a supplementary European search report is drawn up. For such cases, the applicable law is unchanged, i.e. applicants may amend their application on entry into the European phase or in response to a communication under Rule 161(2) EPC; the supplementary European search report will then be based on the amended application. Rule 70a(2) EPC governs the procedure following despatch of the supplementary European search report.

6. Amendment of Rule 69 EPC

Under the amended Rule 69 EPC, the EPO must notify the applicant of the date on which publication of the European search report will be mentioned in the European Patent Bulletin and of the deadlines under Article 94(2) and Rules 70(1) and 70a(1) EPC. The amended rule protects the applicant's legitimate expectation that the information on the publication date is accurate: if the date specified is later than the date on which publication of the search report was actually mentioned, the later date is decisive for the periods referred to in Rules 70(1) and 70a(1) EPC, unless the error was obvious.

7. Amendment of Rule 137 EPC

7.1 Rule 137(1) EPC has not been amended, so - despite the new Rule 62a EPC and the amendment of Rule 63 EPC - the description, the claims and the drawings may not be amended before the European search report has been received.

7.2 Under Article 123(1), sentence 2, EPC, the applicant must be given at least one opportunity to amend the application of his own volition. Under the amended Rule 137(2) EPC, the applicant may file any amendments made of his own volition together with his reply to the opinion on the European search report or to the WO-ISA or IPER.

Where Rule 70a(1) EPC applies, such amendments must therefore be filed, together with the reply to the EESR, within the period prescribed for requesting examination. Where Rule 70a(2) EPC applies, they must be filed, together with the reply to the opinion accompanying the European search report or supplementary European search report, within the period granted by the EPO for indicating whether to proceed with the application. In the case of international applications for which no supplementary European search report is issued, amendments made by the applicant of his own volition must be filed when responding as required under Rule 161(1) EPC.

Even where the opinion accompanying the search report is positive, so that no reply is required, the above deadlines apply if the applicant wishes to make amendments of his own volition. If the applicant requests examination before receiving the search report and dispenses with an invitation to indicate whether he wishes to proceed with the application, he may make amendments of his own volition when responding to the examining division's first action.

Under Rule 137(3) EPC, any subsequent amendments are subject to the examining division's consent.

7.3 The applicant must identify all amendments and indicate the basis for them in the original application (Rule 137(4) EPC). If he fails to do so, the examining division may issue a communication inviting him to make good this failure within a brief non-extendable period. If he then fails to reply within that period, the application will be deemed withdrawn under Article 94(4) EPC.

7.4 The current fourth paragraph of Rule 137 EPC will become the first sentence of paragraph 5. The newly inserted paragraph 5, sentence 2, applies where subject-matter was excluded from the search under Rule 62a or 63 EPC. Where the claims have been limited under Rule 62a(2) or Rule 63(3) EPC, amendments based on non-searched subject-matter can no longer be derived from the description at a later stage of the grant procedure. The subject-matter excluded from the search under Rule 62a or Rule 63 EPC may, however, be prosecuted in divisional applications, which must be filed by the deadline laid down in Rule 36(1)(a) EPC.

8. Transitional provisions

8.1 The new Rules 62a and 70a and the amended Rules 63, 64, 69, 137 and 161 EPC will enter into force on 1 April 2010.

8.2 The new Rule 62a EPC, the amended Rule 63 EPC, the new Rule 70a EPC and the amended Rule 137 EPC will apply to European patent applications for which the European search report or supplementary European search report is drawn up on or after 1 April 2010.

The amended Rule 161 EPC will apply to European patent applications for which no communication under Rule 161 EPC as currently in force has been issued before 1 April 2010.

9. Revised Examination Guidelines

More detailed information on the implementation of the new rules will be included in the revised Guidelines for Examination. A draft version of the revised guidelines is expected to be made available for pre-publication consultation on the EPO website (www.epo.org) in December 2009.