Updates

Earlier action needed to secure effective acceleration of prosecution in the European regional phase

25 July 2011

These changes have affected procedures for accelerating the examination process: early action will be required to get the most effective acceleration. Action may be required before regional phase entry, so please contact us as early as possible before the EPO regional phase deadline of 31 months from earliest priority date.

Background

At the same time as entering the European regional phase, applicants have the opportunity to file voluntary amendments to the claims and pay any excess claims fees due (for claims over 15). Shortly after filing, the EPO will issue a communication (under Rules 161 and 162) inviting the applicant to file any (new or additional) voluntary amendments and pay any excess claims fees still outstanding. New rules that came into force in early 2010 also require the applicant to respond to any objections raised by the EPO during the International phase.

Changes in procedure

As from 1 April 2011, the (non-extendible) period for responding to this communication was increased from 1 month to 6 months. Examination (or, if required, search) of the application will not begin before this period has expired, even if the applicant responds near the beginning of this period. This delay will occur irrespective of whether a request for accelerated prosecution has been filed. For those wishing to avoid this delay, the EPO has given applicants the option to waive the right to receive this communication. This means applicants must complete all of the actions that would be otherwise have been required in response to that communication at the same time as entering the European regional phase.

Actions Required

The actions required depend on whether the EPO acted as the International Searching Authority (ISA) and/or the International Preliminary Examination Authority (IPEA) for the corresponding PCT application.

EPO acted as ISA/IPEA

In these circumstances, the EPO does not perform a search prior to examination of the parent application.

The applicant must:

  • respond (by amendment and/or argument) to any objections raised in the International Preliminary Report on Patentability (IPRP); and
  • pay any outstanding excess claims fees. The applicant also has the option of making voluntary amendments to the claims; for example:
  • to reduce the number of claims (to reduce the excess claims fees);
  • to delete subject matter that was not searched by the EPO during the International phase; and/or
  • to bring the claims into line with European practice (for example, by changing the format of certain claims). This represents the applicant's final opportunity to amend the claims during the examination process without requiring the examiner's consent.

Other ISA/IPEA

In these circumstances, the EPO performs a supplementary European search prior to examination.

The applicant has to pay any outstanding excess claims fees, but there is no need to respond to any objections raised in the IPRP.

The applicant also has the option of making voluntary amendments to the claims, which will determine the subject matter that is searched. Thus, it may be appropriate to file amendments that:

  • reorder the claims;
  • reorder the subject matter within one or more claim; and/or
  • reduce the number of independent claims (by adding claim dependencies).

It may also be appropriate to make amendments to:

  • bring the claims into line with European practice; and/or
  • reduce the number of claims.

Summary

  • Shortly after entering the European regional phase, the EPO will set a fixed 6-month period within which to:

          – amend the claims;

          – pay outstanding excess claims fees; and, if relevant,

          – respond to objections raised by the EPO acting as ISA or IPEA.

  • Where accelerated prosecution is required, applicants may wish to avoid this delay by waiving the right to this period.
  • If waiving this right, applicants will need to be prepared take additional actions at the same time as entering the European regional phase.

Therefore, those wishing to obtain quick grant should contact their usual Potter Clarkson representative as early as possible before the EPO regional phase deadline.

 

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