1. New Fees

The European Patent Office decided to increase the official fees by April 1, 2010. Please note that the new fees apply to all payments made on or after April 1, 2010. Moreover, please be informed that our service fees remain unchanged.

2. Divisional Applications

According to new Rule 36 EPC divisional applications may only be filed within a time limit of 24 months after the first office action of the examining division in the earliest application or after an objection with respect to unity of invention has been raised. In this respect the expression “office action” refers to an office action during examination procedure, i.e. an office action according to Article 94 (3) EPC or Rule 70 EPC office action. The earliest application refers to the original patent application.

Since the new Rule 36 EPC will be applied for all divisional applications filed on or after April 1, 2010 in some cases the 24 months term may be already expired, since the first office action of the earliest application has already been issued more than 24 months ago. In order to give the applicants of the pending European patent applications the possibility to file divisional applications although the first office action of the earliest application has already been issued more than 24 months ago, a transitional period of six months until September 30, 2010 is available.

Accordingly, all pending European patent applications should be checked with respect to the necessity of filing divisional applications and the new time period of 24 months after the first office action in the earliest application. After expiration of the transitional period no divisional application is possible anymore. Moreover, if the 24 months term is missed, no possibility of filing a divisional application will be available, since this term is not open for further processing.

3. Restriction of Search for Prior Art

New Rules 62a, 63 and 64 refer to the European search for prior art in the case of a plurality of independent claims, incomplete search due to non-searchable subject matter and the search with respect to several inventions lacking unity of invention.

According to Rules 62a EPC and 63 EPC an applicant will be invited to specify the subject matter, on which the search should be carried out, if the examiner raises objections with respect to a non-allowable number of independent claims or non-searchable subject matter. The time limit for filing an appropriate response is set to expire two months after notification of such a communication. Accordingly, the term for payment of additional search fees in the case of lack of unity of invention according to Rule 64 EPC has been adapted to be also two months.

Rules 62a and 63 further comprise provisions that claims which have not been searched have to be deleted from the application.

If the term set according to the above mentioned Rule 62a EPC is missed, the search will be restricted to the first independent claim of each category according to Rule 62a. Moreover, the Rules 62a, 63 and 64 are excluded from further processing according to Rule 135 EPC.

4. Response to the Extended European Search Report

According to new Rule 70a EPC the applicant needs to file a response to the extended European search report, if the opinion accompanying the extended European search report comprises objections. The time limit for filing the response corresponds to the time limit for filing the request for examination or, if the request is already filed, to the time limit of declaration of further processing (Rule 70 (2) EPC).

For Euro-PCT-Applications for which the European Patent Office has established the international search report or the international examination report a response to the objections has to be filed within a time limit of one month after receipt of a corresponding communication (Rule 161 EPC).

If the applicant fails to file a response to new Rule 70a EPC or Rule 161 EPC the application is deemed to be withdrawn.

For further information please contact:

Dr.-Ing. Christian Lang
LangRaible Patent- und Rechtsanwälte
Herzog-Wilhelm-Str. 22
80331 München
Tel.: +49 (0) 89 – 18 94 73 0
Fax: +49 (0) 89 – 18 94 73 13
mail@langraible.info

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