News

Changes to EP Patent Rules and Fees

Following a review of practice and procedure at the European Patent Office (EPO), a package of new measures entered into force on 1st April 2010 containing new rules on search and examination at the EPO and time limits for the filing of divisional applications.

Divisional applications now need to be filed within 24 months of the Examiners’ first examination report which specifies a plurality of invention (mandatory divisional) or within 24 months of the first examination report (voluntary divisional). This includes pending applications for which an examination report has issued, however, if an examination report has issued before 1st April 2008, then you will have until 1st October 2010 at the earliest to file the required divisional.

It is now necessary to respond to search reports issued by the EPO on EP patent applications derived from international patent applications, for which the EPO was not the international search authority. A response must be filed on or before filing a request for examination – i.e. within 6 months of publication of the extended European search report - on search reports issued on or after 1st April 2010.

There is also now a requirement to comment on international search reports (ISR) and international preliminary examination reports (IPEP) issued by the EPO (acting as the international search authority or as international examination authority), which issue on or after 1st April 2010, within one month of an invitation from the EPO ( a “Rule 161/162 EPC communication”).

Previously, the EPO issued a R161/162 communication to give the applicant the option of filing amended pages of the specification following European regional phase entry. Under the new rules, it is mandatory to respond to R161/162 communications which issue on or after 1st April 2010, or the applications to which they relate will be deemed to be withdrawn

The EPO hopes that these changes will improve the efficiency of the application process.

The 1st April 2010 also saw an increase in the official fees payable to the EPO. The fee increase applies to all payments made on or after 1st April 2010 and therefore will apply to new and pending patent applications. A summary of the fees as applicable from 1st April 2010 can be viewed here http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/20091109b.html.