News

New EPO Rules | 1 April 2010

Under new European Patent Office (EPO) rules that came into effect on 1st April, there has been a significant change in practice.

Under the old rules, applicants enjoyed considerable flexibility in the timing of responses to search reports issued by the EPO. Indeed, it was quite common not to respond to such reports in any formal way, but merely to take note of the “prior art” mentioned in the search report, and to make any appropriate amendments to the claims subsequently, once a substantive examination report had been received from the EPO. Deferring a response in this way allowed applicants to take account of prior art which might be cited in other jurisdictions, and to gain a greater awareness of those features of the invention which were especially important from a technical and/or commercial standpoint, and ensure that these features were adequately covered in any amended claims.

However, this possibility has been swept away under the new rules, which make it mandatory for Applicants to submit a formal response to EPO search reports, typically within a six month period. Failure to respond within the relevant time limit will result in the application being deemed withdrawn.

These changes are part of a larger program aimed at streamlining the European patent application procedure. Unfortunately, this is achieved by forcing applicants to make much more strenuous efforts, at an earlier stage in the process, to place the application in order for allowance.

Whilst this may decrease the time taken for cases to proceed to grant, it places the burden squarely on the applicant, reduces flexibility and limits the options for deferring costs.

If you would like further information or advice as to how the new EPO rules may affect you, please get in touch with your regular contact at Nash Matthews, or else send an e-mail to mail@nashmatthews.co.uk.