Earlier this year, the European Patent Office introduced a series of wide-ranging changes to European patent law that all patent practitioners should know about.
Ostensibly, the changes have been made to accelerate European patent prosecution and prevent alleged abuses of the process. The reality, however, is that the new rules impose some draconian limitations on applicants’ ability to prosecute their patent applications to achieve broad protection.

The headline-grabbing change is the alteration of the date by which a divisional application can be filed. As in the United States, the EPO has historically allowed divisional applications to be filed at any time before the grant of the parent patent. The EPO is now introducing a further additional limitation.

All divisional applications will need to be filed within two years from the first examination report, or within two years from an objection of lack of unity, whichever is later.

The provision is designed to stop applicants filing cascading divisional applications as – unless unity is an issue – the right to file a divisional application expires.

Under the old system, an applicant could, in theory, file a new divisional application the day before the grant of the parent case, thereby potentially having a pending application throughout the patent lifetime. The EPO sought to stop that practice, which it perceives to be an abuse of the patent system, as it denies certainty for third parties.
Unlike in the U.S. however, divisional applications are very expensive in Europe. The new provision thus seems to penalize the majority who file divisional applications sensibly due to the actions of a very small minority who may have abused the system.
It is important to note that the two-year deadline runs from the first communication from the examination division. A search report and accompanying written opinion from the EPO comes from the search division and does not trigger the start of the two-year divisional period.
Similarly, a unity objection during search triggers the two-year period only if it is reiterated by the examination division.

Applicants have until Oct. 1 to file divisional applications on any pending cases in which the two-year period may have already expired. That means it is incumbent to look through pending cases where the deadline is Oct. 1 to check whether a divisional should be filed.
Practitioners should note that the EPO is likely to be inundated with divisional filings on Oct. 1, and it is not uncommon for the online filing system and fax machines to creak under the pressure! Applicants should try to avoid filing on the last day, if possible.

One claim per category

It is almost certain that European attorneys will devise various ways of manipulating these rules, in particular, by devising ways of forcing the EPO to raise unity at a late stage. That leads to the second major change and a potential problem.

The EPO will now force applicants to have one claim in each claim category, except in certain exceptional circumstances.

The EPO will no longer search three similarly worded process claims, but instead applicants will be forced to select one for search. For U.S. drafters, that provision is very important as drafters need to consider the European position when preparing provisional and PCT applications that will eventually become European patent applications.

Should an applicant pursue more than one claim in each category, the EPO can ask an applicant which independent claim he wants searched. It is going to be important to try to cover the invention in a single claim. Claims not selected for search must be deleted.

One issue that may arise is how to trigger a unity objection, which often arises when two independent claims of slightly different scopes are pursued. Now the EPO can force an applicant to choose one of those claims for search and force the other to be deleted without ever raising unity. It can raise the objection under the provisions of Rule 43 as discussed above.

Moreover, the objection to multiple independent claims in the same category is one that is raised by the search division.

As noted above, a unity objection that triggers the divisional period can be raised only by the examination division. But by the time you have the claims before the examination division, your non-unified subject matter may have been deleted under Rule 43.
Drafting a single independent claim that covers all embodiments of interest is going to be even more important in Europe from now on.

Regional phase entry

Perhaps the most immediate change to the rules will be felt upon European regional phase entry.

The EPO is now forcing applicants to file a response to the written opinion supplied with the international search report where it was drawn up by the EPO about a month after regional phase entry. That effectively means applicants are not only faced with the cost of regional phase entry, but also responding to an office action, all within the space of about two months.
It remains to be seen exactly what will be regarded as a response, but the general thinking is that a proper response will be needed.

It has become common for U.S. applicants to identify the EPO as the international searching authority when they file an international application. It is slightly cheaper that way, and there is a perception that EPO searches are slightly better than U.S. searches. But that policy may need to be reconsidered.

If you choose the EPO, then you are going to have to file a first response much earlier. Designating the U.S. as searching authority will give applicants a lot more time before anything substantive occurs in Europe.

If the U.S. is the international searching authority, the EPO will carry out a supplementary search and provide a written opinion. Applicants will be obliged to respond to that written opinion within about six months of receiving it.

Given that it can take a few years for the EPO to produce a supplementary search, by designating the U.S. as international searching authority, an applicant can significantly slow down European prosecution.

Voluntary amendment

The EPO has also changed its rules on voluntary amendment.
Historically, after the search had issued and before a first office action had been sent out, applicants had the right to amend voluntarily, essentially at will. That is no longer the case.
The last opportunity for voluntary amendment will be in response to the search or shortly after European regional phase entry when a preliminary amendment is due.

It remains to be seen whether this reflects a change in policy at the EPO. Typically, EPO examiners have been flexible on voluntary amendments, and given that amendments can be made without any reason at all post-grant, it seems ridiculous that an amendment should be prevented pre-grant. I suspect, therefore, that practice will not actually change much in this regard, and as long as applicants are not perceived to be abusing the system, discretion, if needed, will be given.

Good news

The EPO has managed to devise some positive changes, too.
Historically, if the EPO decided that some subject matter was unsearchable, it made a unilateral decision to search the first subject matter that it considered searchable, irrespective of whether that subject matter offered any real value to the applicant.

The EPO will now invite an applicant to identify what it wants searched in those circumstances. That is a positive step forward.

The final major change is that the EPO now requires that basis for each amendment is explained for any changes made to the claims. That is something that all European agents should be doing automatically already, but it does no harm to reiterate the point that falling foul of the EPO’s added matter regulations is all too easy.

All U.S. patent drafters whose clients might want to pursue protection over the pond should consider whether they are providing sufficient basis for amendment in Europe where the rules on what is acceptable are much stricter than in the U.S.

Even simple little things like including multiple claim dependences in any PCT that is filed can make a difference. Obviously, they are not accepted in the U.S., but they are in Europe, and while it is easy to take them out for the U.S. case, it can be very difficult to put them in a European case unless they were there from the start.

If your clients have European aspirations, getting the application right at the start is essential. It must be remembered that, in general, basing amendments on examples is not going to be allowed. Intermediate generalizations are not normally accepted, and it is very valuable if the disclosure of claims is repeated in the description.

It will take months or perhaps even years for practice under these new rule changes to be clarified. But they make it even more important for U.S. practitioners whose clients will be filing in Europe to consider how we handle patent applications across the pond when they are drafting their cases.

Neil Campbell is a partner at Dehns, one of Europe’s largest patent and trademark law firms.