becK Greener
preparing new applications Search, examination and
to amend the application in response to the first
examination report. Further amendments must be
• Identify a single invention to be described and
amendment
made with the consent of the examiner.
claimed, and have a single independent main From April 1, 2010, the right to make amendments
claim only in each category will be severely curtailed. Furthermore, applicants
Under the new rules, which will apply to any
will also have to respond to search reports, often
• If at all possible, have no more than 15 claims
application having a search report drawn up on
within tight timescales. The rules will determine
and certainly no more than 50
or after April 1, 2010, voluntary amendments can
which claims will be searched by the EPO, and it
only be offered within the time period allowed
• Consider nominating an authority other
is expected that the EPO will continue to strictly
for responding to the search report. Any later
than the EPO as the international searching
apply the rule that unsearched subject matter
amendments will require the examiner’s consent,
authority
cannot continue.
and current practice by the EPO suggests that
consent is unlikely to be forthcoming.
• Where the EPO has searched or examined the
These changes will stop applicants redefining
international application, make any necessary
their invention or recasting a specification during
amendments to the claims when entering the
prosecution. The European patent application,
regional phase.
whether filed directly, or by way of the PCT, will
need to enter the EPO with a specification that
Jacqueline Needle is a partner at Beck Greener.
She can be contacted at: jneedle@beckgreener.com
divisional applications
meets the European regulations and with a set
of claims adequately covering the invention.
Deborah Selden is a patent attorney at Beck
Currently, it is possible to file a divisional Although it will increase the upfront filing costs,
Greener. She can be contacted at:
application on any European application at any
we believe that all applications to be filed in the
dselden@beckgreener.com
time before that application is granted. The
EPO should be reviewed by a European patent
rules coming into force on April 1, 2010, which
attorney before filing to avoid any difficulties that
will apply to all applications pending at that
the new regime may bring.
time, as well as to new cases filed subsequently,
will severely restrict the period during which
need to respond to search reports
divisional applications may be filed.
Currently, where the EPO issues a search
What are the new deadlines?
report, whether on a European or international
application, the Examiner additionally issues
There will be a deadline for filing divisional
an opinion on patentability. The applicant may
applications of 24 months from the Examining
Division’s first communication in respect of the
choose to file a response to it but such a response
earliest application for which a communication
is not obligatory. The new regime will require that
has been issued. Additionally, if the Examining
applicants respond to these reports for both direct
Jacqueline Needle
Division issues an examination report on an
European applications and for the European
Jacqueline Needle is a partner of Beck Greener.
application in which a new non-unity objection
regional phase of international applications.
She is a chartered patent attorney, a European
is raised, there will be a deadline of 24 months
Where no response is filed, the application will be
patent attorney and a European trademark
from the issue of that communication for filing a
deemed to have been withdrawn.
attorney. Needle has extensive experience
divisional application.
of patent drafting and prosecution, and has
period for response
responsibility for corporate patent portfolios
transitional provisions that include applications in a large number of
For a directly filed European patent application, countries.
There will be a transitional provision that will
for example, the response to the Examiner’s
allow applicants until October 1, 2010 to file new
opinion will have to be filed within six months of
divisional applications, even where the time limit
the publication of the search report.
as set out above has already expired.
However, for ex-international applications, there
recommended actions will be much shorter timescales. If the EPO has
Applicants should review existing applications to
produced the examiner’s opinion during the
identify cases on which a non-unity objection was
international phase, there will be only a one-
raised. Cases defining but not claiming more than
month period in which to file a response. This
one invention, and for which the first examination
period will be triggered by the issuance of a notice
report has already been received, should also be
soon after the regional phase is entered. In view of
Deborah Selden
reviewed. Any required divisional applications
the very short period allowed, it is suggested that
Deborah Selden read Chemistry at Merton
for such applications will need to be filed before
amendments should be filed when international
College, Oxford. She subsequently carried
October 1, 2010.
applications enter the regional phase.
out research into asymmetric catalysis for
her DPhil. Selden practises in chemical
Should an applicant identify a number of
restrictions on voluntary amendments
patent matters.
divisional applications to be filed, it will be
possible to spread the filings, and thus the cost, Currently, an applicant has the right to make
over the period to October 1, 2010 by starting unlimited voluntary amendments to the
with the filings right away. application after receipt of the search report and
44 World Intellectual property review September/October 2009 www.worldipreview.com
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