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EUROPEAN REGIONAL PHASE ENTRY: EARLY STAGE PROCEDURE WHERE THE EPO ACTED AS THE ISA

EUROPEAN REGIONAL PHASE ENTRY: EARLY STAGE PROCEDURE WHERE THE EPO ACTED AS THE ISA

Here we set out the early stage procedure for international (PCT) applications entering the regional phase at the EPO where the international search was carried out by the EPO.  We also set out the practical consequences of this procedure for prosecuting these applications at the EPO.

For the early stage procedure on international applications where an authority other than the EPO acted as the ISA, or for European patent applications filed directly at the EPO, see our separate information sheets.

What is the procedure?

Where the EPO has performed a search for an international application in its capacity as ISA, it will not automatically carry out a further search on entry into the regional phase.

Soon after an application enters the regional phase the EPO issue a “Communication under Rules 161 and 162 EPC”.  In response to this communication, or on entry to the regional phase the Applicant may be required to take some or all of the following actions:

  • File a compulsory response where objections have been raised by the EPO during the international phase.
  • File voluntary amendments to the application, in particular to the claims.
  • Consider amending the claims to relate to an invention that was not searched in the international phase.
  • Pay any excess claims fees due.

The Rule 161/162 communication sets a six month time limit for response.  This time limit is not extensible.

The claims on file at the EPO after expiry of the six month time limit will be those considered when examination begins and determine how many claims fees are payable at this time.

If the Applicant prefers not to have examination delayed by this six month time limit, the Applicant may expressly waive the right to this communication on entering the regional phase, provided the requirements of Rules 161 and 162 EPC have been fulfilled, i.e. submission of comments and/or amendments addressing objections raised by the EPO during the international phase, where required, and payment of any claims fees due.

Last opportunity for voluntary amendment

The six month time limit for response is the last opportunity to file voluntary amendments.  After this time, amendments require the consent of the Examining Division.  With the EPO’s ongoing aim to make examination of applications more efficient, we may expect Examining Divisions to become less willing to consent to later voluntary amendments.

The claims on file at the EPO after expiry of the six month time limit will be those considered when examination begins.

1.   Consideration of unity

Irrespective of whether the Applicant paid additional search fee(s) during the international phase, it is possible for the Applicant to pay one or more search fees in the European phase and to choose which invention they wish to pursue in the European regional phase.

The EPO examine the claims on file at the end of the six month period for responding to the “Communication under Rule 161” or, where the Applicant has waived that communication, the claims on file on entry to the European regional phase.  If the Examining Division find that the claims include subject matter that does not relate to the invention or inventions that were searched in the international phase, they will invite the Applicant to pay additional search fees to have unsearched subject matter searched.  This invitation sets a two month time limit for response.  This time limit is not extensible and “further processing” is not available.

If an additional search fee is paid for one or more of the other inventions to be searched, then the Examining Division communicate the results to the Applicant as an annex to the first examination report.  If no additional search fees are paid, the examination report is produced on the basis of the invention that was searched in the international phase.

It is not possible to argue against a finding of lack of unity at this stage, although it can be challenged when responding to the first examination report. If successful, then the EPO will conduct a further search if necessary, without charge.

If the lack of unity finding is maintained by the Examining Division then it will not be possible to have unsearched inventions examined in the present application and a divisional application will be required.

Where the EPO identify a lack of unity, the Applicant must amend the claims to refer only to one of the search inventions.  The further invention(s) may be pursued in one or more divisional application(s).  If a divisional application is filed for an invention for which a search fee was paid in the present application, the search fee may be refunded during prosecution of the divisional.

2.   Only a single independent claim in each category

The EPO allows only a single independent claim in each category (product, process, apparatus or use), except under certain limited circumstances.  Where the EPO considers that this requirement is not met, it will invite the Applicant to indicate which one independent claim for each category should be searched.

The invitation sets a two month time limit for response.  This time limit is not extensible and “further processing” is not available.  If the Applicant does not reply, the EPO will search only the first independent claim in each category.  It is possible to challenge such an objection, either in reply to the invitation or during examination.  If the challenge is successful, the EPO will not limit the search.

3.   Payment of excess claims fees due

The claims on file at the EPO at expiry of the six month time limit determine how many claims fees are payable at this time. Claims fees are payable where there are more than 15 claims.

Excess claims fees are payable for the 16th and each subsequent claim. A higher claims fee is payable in respect of the 51st and subsequent claims.

In preparing amended claims, careful attention to the number of claims is required to avoid the cost of claims fees becoming prohibitively high.

Where a claims fee is not paid in due time, the claim concerned shall be deemed to be abandoned.  Features of a claim deemed to be abandoned and which are not otherwise to be found in the description or drawings cannot subsequently be reintroduced into the application and, in particular, into the claims.

Where an amended claim set is filed which reduces the number of claims, any claims fees which have been paid on entry into the regional phase will be refunded.

4.   Basis for amendments in the application as filed must be identified

When filing amendments, the Applicant must identify them and indicate the basis for them in the application as filed. If the EPO considers that this requirement is not met, the EPO may invite the Applicant to correct the deficiency.

The invitation sets a one month time limit for response. This time limit is not extensible. If the deficiency is not corrected in time, the application will be deemed withdrawn, although more time for filing a response is available by using “further processing” at additional cost.

Response to objections raised in the International Phase

  • Mandatory response

A mandatory response is required where objections were raised by the EPO in the international phase, either with the written opinion (WO/ISA) and subsequently repeated in the international preliminary report on patentability (IPRP/Chapter I) or, if a demand for international preliminary examination was filed, in the international preliminary report on patentability (IPRP/Chapter II).

If comments and/or amendments addressing the objections are not filed in time, the application will be deemed withdrawn, although more time for filing a response is available by using “further processing” at additional cost.

  • Optional response

Where comments and/or amendments have already been filed, either in the international phase and then maintained on entry into the regional phase, or on entry into the regional phase, then these will be deemed to be a relevant response, and no further response is required at this stage.

If there are no objections in the WO/ISA, SISR or IPRP then a response is not required.

What action should Applicants take?

  • Early review of the EPO’s objections in the WO/ISA or IPRP and early consideration of voluntary amendments.
  • Early preparation of comments and/or amendments for response to the objections and/or of voluntary amendments.
  • Amend claims if necessary to include subject matter that was not searched during the international phase, if desired.
  • Amend claims if necessary to reduce claim number to avoid/reduce payment of claims fees.
  • Amend claims for compliance with EPO practice, such as amending to include only one independent claim in the same category.

If you would like further advice about how the rules may affect you or particular applications, please contact us.

This information is simplified and must not be taken as a definitive statement of the law or practice.