Newsletters and Bulletins / February 2002 / European Patent Office |
|
European Patent Office (EPO) - Changes in Practice A number of changes in practice have been announced by the European Patent Office. They include those set out below.
(1) With effect from January 2, 2002, regional phase entry into the EPO for all PCT applications for which a period of twenty-one months from priority has not expired on January 2, 2002 may be effected at any time up to thirty-one months of priority, irrespective of whether International Preliminary Examination has been requested. However, the EPO will only commence examination of a regional phase entry prior to thirty-one months from priority if regional phase entry requirements are completed within twenty-one months of priority. Furthermore, the EPO will henceforth issue only a single notification setting a two-month term for response that the applicant has not effected a regional phase entry and will deem the application abandoned after that communication has been sent. (2) With effect from January 2, 2002, a divisional application may be filed at any time during which the European application remains pending. (3) A new procedure for acceptance and grant which will take effect on July 1, 2002. Under the new procedure, once the Examining Division decides that the application is in order to proceed to grant, it will advise the applicant of the text on which grant is proposed and at the same time invite the applicant to pay the fees for grant and submit translations of the claims into the other two official languages. If the applicant believes amendment or correction is needed, the applicant should file translations of the claims as proposed to be amended. If no amendments are made or the Examining Division accepts the amendments, grant will then occur. If the Examining Division does not accept any proffered amendment, the applicant will be given the opportunity to submit observations on the Examining Division's objections and to offer further amendments to try to meet the points raised. If no agreement is reached, the application may be refused. (4) From March 1, 2002, the European Patent Office will no longer be a competent authority for search or examination of international applications filed by United States nationals or residents if the application relates to biotechnology or business methods. Furthermore, the EPO will no longer carry out international preliminary examination for applications relating to inventions in the field of telecommunications. (5) The EPO is to change its procedures relating to international preliminary examination with effect from January 3, 2002. Under the new procedures, applicants will have the option of foregoing detailed preliminary examination. In such cases, the same examiner will carry out the search and the examination and the written opinion will be based on the examiner's search notes. The written opinion will therefore confine itself to core issues of novelty, inventive step and industrial applicability. The applicant will, however, have the opportunity of requesting a more detailed international preliminary examination if it chooses and this can be done up to the date for responding to the written opinion. In this case, a second written opinion may be issued. If no detailed examination is requested, two-thirds of the examination fee will be refunded. (6) From January 2, 2002 a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject matter of the application involves one of the following: i. a plurality of inter-related products; ii. different uses of a product or apparatus; iii. alternative solutions to a particular problem, where it is not appropriate to cover these alternatives by a single claim. |
[Home] [About Ladas & Parry LLP]
[Contact Us] [Search]
[Trademarks] [Domain Names
& E-Commerce] [Patents & Copyrights]
[Litigation] [IP Rights
Maintenance] [IP as Property] [News
& Bulletins]
© Copyright 2002 Ladas & Parry - Posted February 2002
Please read our disclaimer.