Changes in European patent law, Status: 1 April 2010


Changes in European patent law

On 1 April 2010 the following changes will enter into force:


Further to the already communicated changes (see our news dated 28 April 2009) for divisional applications (Rule 36(1) and Rule 36(2) EPC), now the Rules for prosecution of the European patent applications themselves will be tightened.


With new Rule 62a EPC, applicants may already be required to limit the number of independent claims before a search report is drawn up. Further amendments to the application at this point are still not possible due to Rule 137(1) EPC.
Where the applicant does not respond to an invitation under Rule 62a(1) EPC, 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.

Rule 62a EPC prescribes a response period of 2 months and rules out further processing.


With new Rule 70a EPC a mandatory response of the application (which may include amendments to the application, i.e. claims, specification, drawings) to a negative search report (i.e. the so-called extended European search report according to Rule 62 EPC) is required, within a response period of 6 months from the notice of the publication of the European search report. The response period is (with few exceptions) not extendable. Without a timely response of the applicant, the application is deemed withdrawn; further processing, however, is possible.


The communication according to new Rule 161 EPC will as of 1 April 2010 be the first communication of the examining division for all PCT applications entering the EP regional phase with either having ISA/EP or IPEA/EP, even if it does only refer to the written opinion of the international searching authority (ISA) resp. the international preliminary report on patentability (IPRP) of the international examination authority (IPEA). The response period is 1 month and is not extendable. Without a timely response, the application is deemed to be withdrawn; further processing, however, is possible.

These are only the most important changes. For more detailed information on changes and for any questions you may have, please feel free to contact us.