There are 33 amendments and important notices announced by EPO in 2010. A patent Prosecution Highway pilot program (PPHP) between USPTO and EPO was agreed and effective as from 2010 for one more year – to be extended if no notice to the contrary. The PPH pilot program between the European Patent Office and the Japan Patent Office commenced on the 29/01/2010, for a trial period of two years ending on 28/01/2012. EPO revised "PACE" concerning the program for accelerated prosecution of European patent applications. Albania and Serbia accede to the European Patent Convention while, Hungary accedes to the London Agreement. Applicants for and proprietors of European patents with effect in Austria, Greece, and UK are advised to apply patents with the renewed rates.

A Summary of Amendments and Important Notices from the EPO – 2010

Explanation of Rule Changes:

1. Extension of European patents to Montenegro - Extension fee EUR 102.

2. PPHP between USPTO and EPO – agreed upon on 30/9/2008 – effective as from 30/9/2009 for one year – to be extended if no notice to the contrary. The Patent Prosecution Highway will leverage fast-track patent examination procedures already available at both offices to allow applicants to obtain corresponding patents faster and more efficiently.

3. PPHP between JPO and EPO. The Patent Prosecution Highway will leverage fast-track patent examination procedures already available at both offices to allow applicants to obtain corresponding patents faster and more efficiently.
4. Albania accedes to the European Patent Convention. European patent applications filed on or after 1 May 2010 will include the designation of Albania. It will not be possible to designate Albania retroactively in applications filed before that date.
To allow the new contracting state to be designated, however, the EPO will accord European patent applications filed in April 2010 the filing date of 1 May 2010 if the applicant expressly requests that filing date when filing the application.
5. Applicants for and proprietors of European patents with effect in Austria are advised that from 1 January 2010, the following renewal fees apply:

• Fee for the conversion of a European patent application into a national patent or utility model application: EUR 50

6. See supplement 2 to OJ 3 of 2010.

7. Administrative Council decisions CA/D 2/09 and CA/D 3/09 of 25 March 2009 amending the Implementing Regulations to the European Patent have given rise to changes to the Request for Grant form (EPA/EPO/OEB 1001 07.09) and the Entry into the European phase form (EPA/EPO/OEB 1200 04.09). New form available online as of the 1st of April 2010.

8. Rule 161 EPC : Amendment of the Application

The amended rule provides for the following:

When the European Patent Office acts as the International Searching Authority and, where a demand under Article 31 PCT is filed:

A:
1) The applicant may comment on the written opinion of the International Searching Authority or the International Preliminary Examination Report.
2) Where appropriate, the applicant will be invited to correct any deficiencies mentioned in the written opinion or in the International Preliminary Examination Report.
3) The applicant may amend the description, claims and drawings within a period of one month from the date of the written opinion of the International Searching Authority or the International Preliminary Examination Report.
4) In the case of a supplementary international search report by the EPO, an invitation will be similarly extended to the applicant.

If the applicant does not comply with or comment on an invitation from the EPO as mentioned above, the application shall be deemed to be withdrawn.

B:
(1) Where the European Patent Office draws up a supplementary European search report on a Euro-PCT application, the application may be amended once within a period of one month from a communication informing the applicant accordingly.
(2) The application as amended shall serve as the basis for the supplementary European search."

9. Rule 164 EPC: Consideration of Unity by the European Patent Office

1) When the EPO conducts a supplementary European search, and the application documents do not meet the requirements for unity of invention, then a supplementary European search report shall be drawn up on those parts of the application which relate to the invention, or group of inventions first mentioned in the claims.

2) If the examining division finds that the application documents do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the international search report or, by the supplementary international search report, or supplementary European search report,

…then it shall invite the applicant to limit the application to one invention covered by the international search report, the supplementary international search report or the supplementary European search report.

10. Rule 36 (1) and (2) shall be amended to read as follows:

"(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:

(a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or

(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.

(2) A divisional application shall be filed in the language of the proceedings for the earlier application. If the latter was not in an official language of the European Patent Office, the divisional application may be filed in the language of the earlier application; a translation into the language of the proceedings for the earlier application shall then be filed within two months of the filing of the divisional application. The divisional application shall be filed with the European Patent Office in Munich, The Hague or Berlin."

11.

Rule 62a
Applications containing a plurality of independent claims

Rule 63 Incomplete search

Rule 64 Unity of Invention

Rule 69 Information about publication

Rule 70a Response to the extended European search report

Rule 135(2) Further processing

Rule 137 Amendment of the European patent application

Rule 161 Amendment of the application

12.

Applicants for and proprietors of European patents with effect in Greece are advised that from 1 April 2010 the following rates apply:

Publication of translations of the claims pursuant to Article 67(3) EPC:

EUR 100 (unchanged)

Publication of translations of the patent specification pursuant to Article 65 EPC:

EUR 350

Renewal fees:

Conversion of European patent applications or patents into national patent applications or patents:

Filing fee: EUR 50

Fee for registering a transfer, license or other right: EUR 200

13.

Applicants for and proprietors of European patents with effect in the United Kingdom are advised that from 6 April 2010 the following rates apply:

Renewal fees:

Conversion of European patent applications or patents into national patent applications or patents:
Application fee: GBP 30 (unchanged)
Fee for search (Form 9A): GBP 150

14.

The "Guide for applicants" has been designed to provide inventors, companies and their representatives with an outline of the procedure involved in applying for a European patent, offering practical advice to smooth the way through the various stages.

The Guide cannot go into the details or specific issues of the European patent grant procedure, and it does not constitute an official commentary on the European Patent Convention (EPC).

15.

The entry into force of new Rule 70a and amended Rule 161 EPC means updating the PACE programme. The revised PACE programme takes account in particular of the changes to the European grant procedure which entered into force on 1 April 2010 concerning the applicant's obligation to file a substantive response under Rule 70a or Rule 161(1) EPC to

• the extended European search report (EESR),
• the written opinion of the International Search Authority (WO-ISA) drawn up by the EPO,
• the international preliminary examination report (IPER) drawn up by the EPO, or
• the explanations under Rule 45bis.7(e) PCT contained in the supplementary international search report (SISR) drawn up by the EPO.

As in the past, PACE enables applicants who want their applications processed rapidly to obtain the European search report plus opinion under Rule 62(1) EPC, the first examination report and any communication under Rule 71(3) EPC within tight deadlines.

16.
A-IV, 1.1.1.2 has been modified in order to clarify that the list of events from which the period for voluntary division is calculated is exclusive. In particular, a communication under Rule 161 EPC issued by the examining division does not qualify as the "Examining Division's first communication" within the meaning of Rule 36(1)(a) EPC. 

17.

Decisions incurring a period for appeal or a petition for review, and summonses to oral proceedings (Rule 115 EPC) or to the taking of evidence (Rule 118 EPC), are notified by the European Patent Office (EPO) by registered letter with advice of delivery (Article 119 and Rule 126(1) EPC).

As a result of differing delivery regulations in individual states, advices of delivery are often either not returned to the EPO at all or else returned without being completed at the receiving end. Subsequent investigations take disproportionate time and effort. Particular difficulties arise with summonses to oral proceedings or the taking of evidence, because of the prescribed period of advance notice (Rules 115(1) and 118(2) EPC).

To avoid difficulties, the EPO has for some time enclosed with all notifications sent by registered mail with advice of delivery an acknowledgement of receipt (EPO Form 2936), which from now on will be an A4 sheet rather than a recto-verso white card.

The addressee is requested to date and sign the acknowledgement of receipt (EPO Form 2936) and to return it immediately to the EPO through EPO Online Services (as annex to EPO Form 1038), by fax (+49 (0)89 2399-4465 or +31 (0)70 340-3016) or by post.

18.

A "communication" within the meaning of amended Rule 36(1) EPC causes the time limit for the voluntary or mandatory filing of divisional applications to start, provided it is the first communication from the examining division or the examining division raises a non-unity objection for the first time in said communication. Such a communication is understood to be a substantive communication which sets out the examining division's opinion as to whether the application or invention to which it relates meets the requirements of the Convention. Even though amended Rule 36(1) EPC does not explicitly refer to a substantive communication, it derives from the legislative history that the applicant should be allowed to file a divisional application up to twenty-four months after having been informed of the examining division's opinion with regard to compliance of the application with the EPC.

A communication under Rule 161 EPC (both in its amended form as well as in the version applicable until 31 March 2010), despite emanating from the examining division in compliance with Rule 10 EPC, is not a substantive communication within the meaning of amended Rule 36(1) EPC and therefore does not cause the time limit for the filing of voluntary or mandatory divisional applications to start.  Rather, a communication under Rule 161 EPC, which fulfils an EPO obligation under the PCT, is essentially a formal communication without its own substantive content (see II infra). This communication refers to the written opinion of the International Searching Authority (WO-ISA), the international preliminary examination report (IPER) or explanations made in a supplementary international search report (SISR), but does not yet contain the examining division's own opinion as to whether the application or the invention to which it relates meet the requirements of the EPC. Instead, the purpose of the communication under Rule 161 EPC is to prepare and accelerate the subsequent discussion with the examining division, the results of the international phase having already been taken into account by the applicant.

19.

The Icelandic Patent Office has informed us that for the time being the transfer of renewal and other fees payable in connection with European patents in Iceland is possible only in euros to the following bank account:
Name of the beneficiary: 650191-2189 - Einkaleyfastofan

Name and address of the bank:

NBI hf (Landsbankinn)
Laugavegi 77
101 Reykjavík

SWIFT: NBIIISRE

IBAN: IS93 0111 3871 2189 6501 9121 89

Euro correspondent bank: CITIGB2L

20.

European patent applications filed on or after 1 October 2010 will include the designation of Serbia. It will not be possible to designate Serbia retroactively in applications filed before that date.

To allow the new contracting state to be designated, however, the EPO will accord European patent applications filed in September 2010 the filing date of 1 October 2010 if the applicant expressly requests that filing date when filing the application.

21.

International filing fee: from EUR 878 to EUR 950

Fee per sheet in excess of 30: from EUR 10 to EUR 11

Reductions (under the Schedule of Fees, item 4):

• Electronic filing (the request being in character coded format) from EUR 132 to EUR 143
• Electronic filing (in character coded format) from EUR 198 to EUR 214

Handling fee: EUR 132 (unchanged)

22.

The EPO and the USPTO announced that they intend to extend the trial period for the Patent Prosecution Highway (PPH) Programme until 28 January 2012, effective as of 1 October 2010.

The PPH programme enables an applicant whose claims have been determined to be patentable/allowable in the Office of First Filing (OFF) to have the corresponding application filed in the Office of Second Filing (OSF) advanced out of turn for examination while at the same time allowing the OSF to exploit the work results of the OFF.

23.

The present Notice is intended to update and consolidate the information given in the "Notice of the EPO dated 18 July 1986 concerning European patent applications and European patents in which reference is made to micro-organisms" (OJ EPO 1986, 269) with the "Notice of the President of the EPO dated 28 July 1981 concerning the procedure for informing the EPO that the 'expert' option (Rule 28, paragraph 4, EPC) has been chosen, and the publication of that fact" (OJ EPO 1981, 358), the notice regarding "Conversion of deposits of micro-organisms made outside the purview of the Budapest Treaty to deposits made within the purview of the Budapest Treaty" (OJ EPO 1991, 461) and the "Notice dated 1 October 1996 concerning the main amendments to Rules 28 and 28a EPC" (OJ EPO 1996, 596).
24.
The accession of the Republic of Serbia to the European Patent Convention with effect from 1 October 2010 has given rise to the following changes to the Request for Grant form and the form for entry into the European phase (EPA/EPO/OEB 1001, 05.10 version and EPA/EPO/OEB 1200, 07.10 version):
Section 33.1 of the Request for Grant form and section 11 of the form for entry into European phase no longer mention Serbia as an extension state.

25.

The European Patent Office shall include in the file of a European patent application a copy of the search results referred to in Rule 141(1) EPC where a search report of the following type was drawn up by the European Patent Office on an application whose priority is claimed:

- European search report (Art. 92 EPC)

- international search report (Art. 15(1) PCT)

- international-type search (Art. 15(5) PCT)

- search report made on behalf of a national office on a national application (Belgium, Cyprus, France, Greece, Italy, Luxembourg, Malta, Netherlands, Turkey).

In these cases, the applicant shall be exempted from filing a copy of the search results under Rule 141(1) EPC.

26.

For European patents granted with effect for Hungary on or after 1 January 2011, no Hungarian translation of the European patent specification need be supplied if the patent is granted in English or if an English translation of the patent is supplied in accordance with Article 65(1) EPC; but a Hungarian translation of the claims must always be supplied. However, where no English translation of the patent specification is available, applicants will still have the option of supplying a Hungarian translation. There are no special transitional arrangements.

27.

Amendment to Rule 36(1)

(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:

(a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication under Article 94, paragraph 3, and Rule 71, paragraph 1 and 2, or Rule 71, paragraph 3, in respect of the earliest application for which a communication has been issued, or

(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.

28.

Rule 71 EPC

Paragraphs 3 to 11 shall be replaced by the following paragraphs 3 to 7:

"(3) Before the Examining Division decides to grant the European patent, it shall inform the applicant of the text in which it intends to grant it and of the related bibliographic data. In this communication the Examining Division shall invite the applicant to pay the fee for grant and publishing and to file a translation of the claims in the two official languages of the European Patent Office other than the language of the proceedings within four months.

(4) If the European patent application in the text intended for grant comprises more than fifteen claims, the Examining Division shall invite the applicant to pay claims fees in respect of the sixteenth and each subsequent claim within the period under paragraph 3 unless the said fees have already been paid under Rule 45 or Rule 162.

(5) If the applicant, within the period laid down in paragraph 3, pays the fees under paragraph 3 and, where applicable, paragraph 4 and files the translations under paragraph 3, he shall be deemed to have approved the text communicated to him under paragraph 3 and verified the bibliographic data.

(6) If the applicant, within the period under paragraph 3, requests reasoned amendments or corrections to the communicated text or keeps to the latest text submitted by him, the Examining Division shall issue a new communication under paragraph 3 if it gives its consent; otherwise it shall resume the examination proceedings.

(7) If the fee for grant and publishing or the claims fees are not paid in due time, or if the translations are not filed in due time, the European patent application shall be deemed to be withdrawn."

New Rule 71a shall be added in Part IV, Chapter IV:

"Rule 71a

Conclusion of the grant procedure

(1) The decision to grant the European patent shall be issued if all fees have been paid, a translation of the claims in the two official languages of the European Patent Office other than the language of the proceedings has been filed and there is agreement as to the text to be granted. It shall state which text of the European patent application forms the basis for the decision.

(2) Until the decision to grant the European patent, the Examining Division may resume the examination proceedings at any time.

(3) If the designation fee becomes due after the communication under Rule 71, paragraph 3, the mention of the grant of the European patent shall not be published until the designation fee has been paid. The applicant shall be informed accordingly.

(4) If a renewal fee becomes due after the communication under Rule 71, paragraph 3, and before the next possible date for publication of the mention of the grant of the European patent, the mention shall not be published until the renewal fee has been paid. The applicant shall be informed accordingly.

(5) If, in response to an invitation under Rule 71, paragraph 3, the applicant has already paid the fee for grant and publishing or the claims fees, the paid amount shall be credited if a further such invitation is issued.

(6) If the European patent application is refused, withdrawn prior to notification of the decision on the grant of a European patent or, at that time, deemed to be withdrawn, the fee for grant and publishing shall be refunded."

Rule 82, paragraph 2 EPC shall read as follows:

"(2) If a party disapproves of the text communicated by the Opposition Division, examination of the opposition may be continued. Otherwise, the Opposition Division shall, on expiry of the period under paragraph 1, invite the proprietor of the patent to pay the prescribed fee and to file a translation of any amended claims in the official languages of the European Patent Office other than the language of the proceedings, within a period of three months."

Rule 95, paragraph 3, EPC:

"(3) If a request for limitation is allowable under paragraph 2, the Examining Division shall communicate this to the requester and invite him to pay the prescribed fee and to file a translation of the amended claims in the official languages of the European Patent Office other than the language of the proceedings, within a period of three months; Rule 82, paragraph 3, first sentence, shall apply mutatis mutandis. If the requester performs these acts in due time, the Examining Division shall limit the patent."

Article 2, paragraph 1, item 15, of the Rules relating to Fees:

"Claims fee (Rule 45, paragraph 1, Rule 71, paragraph 4, and Rule 162, paragraph 1) in respect of an application filed on or after 1 April 2009

- for the 16th and each subsequent claim up to the limit of 50                           210

- for the 51st and each subsequent claim                                                          525"

29.

Rule 161 Amendment of the application

(1) If the European Patent Office has acted as the International Searching Authority and, where a demand under Article 31 PCT was filed, also as the International Preliminary Examining Authority for a Euro-PCT application, it shall give the applicant the opportunity to comment on the written opinion of the International Searching Authority or the International Preliminary Examination Report and, where appropriate, invite him to correct any deficiencies noted in the written opinion or in the International Preliminary Examination Report and to amend the description, claims and drawings within a period of six months from the respective communication. If the European Patent Office has drawn up a supplementary international search report, an invitation in accordance with the first sentence shall be issued in respect of the explanations given in accordance with Rule 45bis.7(e) PCT. If the applicant does not comply with or comment on an invitation in accordance with the first or second sentence, the application shall be deemed to be withdrawn.

(2) Where the European Patent Office draws up a supplementary European search report on a Euro-PCT application, the application may be amended once within a period of six months from a communication informing the applicant accordingly. The application as amended shall serve as the basis for the supplementary European search."

2. Rule 162 of the Implementing Regulations to the EPC shall be amended to read as follows:

"Rule 162

Claims incurring fees

(1) If the application documents on which the European grant procedure is to be based comprise more than fifteen claims, claims fees shall be paid for the sixteenth and each subsequent claim as laid down in the Rules relating to Fees within the period under Rule 159, paragraph 1.

(2) If the claims fees are not paid in due time, they may still be paid within six months from a communication concerning the failure to observe the time limit. If within this period amended claims are filed, the claims fees due shall be computed on the basis of such amended claims.

(3) Any claims fees paid within the period under paragraph 1 and in excess of those due under paragraph 2, second sentence, shall be refunded.

(4) Where a claims fee is not paid in due time, the claim concerned shall be deemed to be abandoned

30.

Please note that, as from 1 January 2011, the equivalent amounts in euros have been amended by the International Bureau.. The table of fees for international applications published in OJ EPO 8-9/2010, 451, is therefore changed as follows:

International filing fee: from EUR 950 to EUR 999

Reductions (under the Schedule of Fees, item 4):

- Electronic filing (the request being in character coded format) from EUR 143 to EUR 150

- Electronic filing (in character coded format) from EUR 214 to EUR 225

Handling fee: from EUR 132 to EUR 150

31.

In the request for grant form (EPA/EPO/OEB 1001), the main change to the 10.10 version is under section 25, which now provides the possibility to indicate that a copy of the results of any search carried out for the previous application(s) whose priority is claimed in the European patent application is attached. Section 25.1, referring to any additional declaration(s) of priority on an additional sheet, has been brought into line with the new requirements of Rule 141 EPC.

Furthermore, section 41 has been deleted and the text of section 48.B.4 in the receipt for documents (EPA/EPO/OEB 1001.8) has been reworded.

In the form for entry into the European phase (EPA/EPO/OEB 1200), the change to the 10.10 version is the introduction of section 6.3, in which the applicant can indicate that a copy of the results of any search carried out with respect to the previous application(s) whose priority is claimed in the international application is attached.

32.

As from 1 March 2011, the European Patent Office (EPO) as receiving Office under the PCT will have in place an automated system for producing the "receipt for documents" for (purported) international applications filed with it in paper form (by hand, post or fax) on or after that date. It is therefore revising its procedure for acknowledging receipt of such applications. Applicants and their representatives are requested to adjust their administrative procedures as necessary, to fit the revised procedure. Information about how to obtain immediate acknowledgement of receipt from the EPO is provided by the EPO.

33.

Applicants will be exempted from filing a copy of the search results under Rule 141(1) EPC if they are claiming the priority of either

- an application on which the EPO drew up a certain type of search report, or

- a first filing made in Japan, the United Kingdom or the United States of America.