Early Effects of EPC 2000

 

Although the EPC 2000 does not come into force until 13 December 2007, its effects are already being felt in certain areas.

 

Unity of Invention in the PCT phase

Going forward there will be no “second chance” for a search in the EP phase

Under current practice, when an International application enters the European regional phase and there is lack of unity in the International search report (ISR), the applicant has the opportunity to choose which set of claims with which to proceed. The EPO issues a communication under Rule 112 inviting payment of a further search fee within 1 month (accompanied by a partial search report if the ISR was drawn up by an office other than the EPO). After 13 December 2007, this option will no longer be available.

The rule under EPC 2000 will be that if the ISR is drawn up by the EPO and an objection of lack of unity has been raised and the applicant has neither taken the opportunity (in the International phase) to have the other invention(s) searched by paying additional search fees for them, nor amended the claims so that they are limited to the invention searched (and assuming the examiner agrees with the objection, which he generally will), the examiner must then deal exclusively with the subject-matter of the one and only invention which has been searched.

If the ISR is drawn up by another searching authority (e.g. the USPTO or the JPO) and there is a problem of unity of invention, a supplementary European search report will be drawn up, based on the invention or group of inventions first mentioned in the claims, independently of the findings of the International Searching Authority (ISA). In this scenario, there is an opportunity to amend the claims at the time of European regional phase entry (e.g. by re-ordering them) to have the European application proceed in respect of claims not searched by the ISA.

Any other inventions must be made the subject of one or more divisional applications.

So, if you are invited to pay an extra search fee on an International application now, you may wish to give extra consideration to doing so. If you pay the fee now, you will be able to make a choice as to which set of claims should be elected for prosecution in the European regional phase when the time comes. If the EPO is the ISA, it will be a definitive search. If any other office is the ISA, a supplementary European search will be drawn up on entry to the European phase.

 

Translations of Priority Documents

Where a European patent application claims priority from an earlier application that is not in English, French or German, it will no longer be necessary to file a translation of the application(s) from which priority is claimed as a matter of course. It will be required only where the validity of the priority claim is relevant to patentability. Third parties wishing to assess the validity of the priority claim will now need to prepare their own translations.

Until now, even where the validity of the priority claim is in issue, the translation of the priority document has been required at the conclusion of examination, at the same time as paying the grant and printing fees. As of 4th August 2007, the EPO has stopped requesting translations of Convention documents on the basis that, by the time the grant and printing fees fall due, the new rules will be in force.

 

Second Medical Use Claims

Examiners have still been objecting to second medical use claims, even though they will not be objectionable after 13 December. Where the deadline to reply falls after 13 December, the Examiners are no longer objecting. But exceptional extensions of time beyond that date are not being granted merely on these grounds. Will applicants still want their “Swiss” form claims? Will Examiners allow both? These matters should be discussed with your representative at Jenkins as a matter of urgency.