Upcoming Changes to European Patent Office Practice

Although it is still several months away, the EPO will dramatically changes its practice effective April 1, 2010 relating to divisional applications and European search reports.  A review of the changes is presented below:

Limitation on Filing Divisional Applications
In addition to tight substantive limitations on divisional applications, the EPO will temporally limit such applications.  As of the effective date, any divisional application must be filed within 24 months of the Examiner’s first communication or a unity-of-invention communication.  A six-month grace period is provided for filing of divisional applications based on parent applications filed before the effective date.

Requirement to Respond to Search Report
As of the effective date, a response must be filed with respect to each EP search report.  The deadline for the response is six months from the publication date of the search report, or two months in the case of an extended search report.

Invitation to Respond to PCT Written Opinion
The EPO will not conduct a new search in PCT applications for which it performed the international search.  In line with the response requirement for EP search reports, the EPO will issue a notice requiring a response to the PCT Written Opinion after entry into the European regional phase.  The response will be due one month after the EPO’s notification.

Changes to Amendment PracticeAs of the effective date, no voluntary amendments are permitted except when filed with a response to a written opinion, and further amendments are subject to the examiner’s discretion.  Applicants will be required to provide basis for amendments in the application text, and a one-month deadline will be set by notification if such basis is not provided with the amendments.

Searching Multiple Independent Claims
Present EPO practice is to search the first of multiple independent claims, particularly where a lack of unity of invention exists.  The new practice will have the applicant elect which claim to have searched.

Please contact us if you have any questions regarding the upcoming changes to EPO practice or would like to discuss the effects of these changes in greater detail.