Patents

Proposed changes at European Patent Office

April 26, 2013

Many European patents are sought via an International patent application filed under the PCT. Difficulties are quite regularly encountered by applicants when it has been suggested that an International application covers more than one invention. The European Patent Office are considering rule changes to assist applicants in such a situation.

The EPO are proposing changes to some of the rules relating to European applications which stem from international applications (EP-PCT applications). The EPO proposes to change the rules to give the applicant the opportunity to have an extra European search carried out for EP-PCT applications where an EP-PCT application relates to one or more inventions which have not been searched during the international phase. Under the current rules if the EPO draw up a supplementary search report for an EP-PCT application and consider that the application contains more than one invention then the application automatically becomes limited to the first invention. The applicant does not get the opportunity to pick which invention they would like to be searched or to request that other inventions searched. The only way to obtain protection for the inventions which are not covered by the supplementary search report is by filing a divisional application. Under the proposed new rule the applicant would be given an opportunity to request that an extra search is carried out on one or more other inventions. The applicant may then be able to protect these other inventions without filing a divisional application. The EPO will draw up a supplementary search report for EP-PCT applications where the EPO did not draw up an international search report. For EP-PCT applications which the EPO drew up the international search report no supplementary search is created but the examining division will issue an examination report. The examining division will use the international search report when preparing the examination report. Under the current rules for such applications an applicant must limit an EP-PCT application to inventions which were covered by the international search. If there are inventions in the application that were not covered by the international search then the only way to obtain protection for them is to file a divisional application. Again, under the proposed new rule the applicant would be given an opportunity to request that an extra search is carried out on one or more other inventions so that the applicant may then be able to protect these other inventions without filing a divisional application. The proposed rule changes should make the EP-PCT route more flexible as applicants will no longer be restricted to inventions searched during the international stage. This may give applicants the opportunity to obtain protection for a different invention without having to incur the expense of filing a divisional application. The proposed new rule is still at the consultation stage but we will provide information relating to further developments as they arise. If you have further questions in this matter please contact Christine Hawkrigg [email protected]

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