Reasons not to search Lack of unity Lack of statutory subject matter Claims too broad for a meaningful search Claims too unclear Too many independent claims
Claims unclear EPO will ask for clarification of what is to be searched Response due within 2 months If clarification sufficient, EPO will use that to conduct the search rather than the wording of the claims Otherwise no search conducted
Too many independent claims Process similar to US restriction requirement Election of claims due within 2 months EPO will search only the elected claims or if no election made just the first independent claim in each category
Problems No appeal when the search is undertaken – can only object later during examination Any unsearched claims must be deleted from the application unless Examining Division persuaded restriction was in error Any amendments must still be based on the content of the application as filed
An example 1) A cat flap pre-activated using a time machine. 2) A cat flap lifted using anti-gravity plates. 3) A cat flap powered by a perpetual motion device.
Result Too many independent claims EPO will ask which is to be searched Result only one claim searched Other claims must be deleted
Second attempt 1) A cat flap. 2)as 1 pre-activated using a time machine. 3) as 1 lifted using anti-gravity plates. 4) as 1 powered by a perpetual motion device.
Result EPO object claim 1 too broad to search/ the invention to be searched is unclear EPO will ask for clarification of invention Result only one claim searched Other claims must be deleted
Solution Claims must be in European style on filing to avoid having to pay extra search fees/ file divisional applications Must draft claim 1 to cover unifying inventive concept Normally only independent claim allowed per category e.g. method, apparatus etc. Only very limited exceptions e.g. plug and socket, transmitter/receiver inventions
New deadline for filing divisional applications 1)Within 24 months from first communication from Examining Division on the earliest application 2) Within 24 months from when a lack of unity objection is raised for the first time 3) Divisional applications can still be filed on any pending application up until 10.1.2010
Example 1- First Examination Report before October 1, 2008 3.1.2008 – 1 st Examination Report 3.1.2010 – 2 year anniversary (i.e. before 10.1.2010) Deadline for filing divisional applications 10.1.2010
Example 2 - First Examination Report after October 1, 2008 6.1.2009 – 1 st Examination report 6.1.2011 – 2 year anniversary of 1 st examination report (i.e. after 10.1.2010) Deadline for filing divisional applications is 2 year anniversary in this case 6.1.2011
Example 3 – Deadline extended by late lack of unity objection 6.1.2009 – 1 st examination report on parent application not raising lack of unity 5.1.2010 – Divisional filed 6.1.2011 – 2 year anniversary– normal deadline for filing any further divisionals 10.1.2013 – Lack of unity objection raised for the first time in examination report on divisional application Deadline for filing divisional of divisional extended to10.1.2015
The BIG problem Divisional filing deadline is NOT extended by an unsearched subject matter objection Example: 6.1.2009 – 1 st examination report 6.1.2011 – 2 year anniversary of 1st examination report – divisional deadline 10.1.2011 – Unsearched subject matter objection Not possible to file a divisional application to protect unsearched subject matter
Action required now All existing applications must be checked now to see if any divisional filings are required Deadline for most older cases will be October 1, 2010 after which no further divisional filings can be made
More recent cases Going forward you will have 2 years notice of the deadline for filing divisional applications First examination report from the Examination Division triggers deadline for all cases in a family N.B. EESR issued with search report is not issued by the Examination Division
Late divisionals Extensions caused by the EPO raising lack of unity at a late stage will be rare Normally late objections will only arise if new prior art is discovered which invalidates unifying concept of claim 1 Examining Division need not object to lack unity if other grounds of objection exist so manufacturing a late lack of unity objection will be difficult
Strategy If ESSR raises a lack of unity objection on an initial filing you should amend the claims to overcome the objection before the first letter from the Examining Division to preserve the possibility of extensions Conversely if a lack of unity objection is raised on a divisional application arguments should be presented so the Examining Division can trigger an extension
European Extended Search Report EESR will now set a deadline for response This is the only opportunity to make amendments as of right Examining Division can issue a Summons to Oral Proceedings as next step if response is not satisfactory
Basis for amendment EPO have always required attorneys to provide basis for any amendments made Rules introduce a new power to set a 1 month deadline for correcting the deficiency if basis is not identified or insufficiently identified The 1 month deadline can only be extended using further processing and payment of a fee
Euro-PCT applications If EPO was ISA or IPEA, must respond to objections raised by EPO during the International Phase when entering regional phase If no response filed on entry EPO will set 1 month deadline for filing a response The 1 month deadline can only be extended using further processing and payment of a fee
Summary Urgent action required to establish if any divisional applications need to be filed on older cases EPO is reducing the opportunities to make changes before a Summons to Oral Proceeding is issued Restrictions on divisional applications remove the options for keeping applications pending or for changing tack later on during prosecution
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