By: Kellie S. Fredericks

The European Patent Office (EPO) has further altered a number of policies which recently had gone into effect. These changes relieve much of the recent compliance burden placed on patent applicants in Europe.

As reported in our previous newsletter, the EPO will require additional disclosure of corresponding applications’ search reports upon entry into the EP National Phase. However, a subsequent decision by the EPO now exempts those applicants with priority applications filed in the United States, the United Kingdom and Japan from having to submit these search reports. This decision relates to both international and European applications filed on or after January 1, 2011.

We also had previously reported on the requirement to respond to outstanding issues raised during the international search phase upon entry into Europe from a PCT. The EPO has now extended the time to respond to these issues from one month from the receipt of the Rule 161/162 letter to six months for those applications in which the Rule 161/162 letter is received after May 1, 2011. While the Rule 161/162 letter still needs to be responded to, the extended time frame is much more palatable for all involved and will allow our clients more time in which to respond to the request.

The rules for divisional application deadlines and the restrictions on the number of independent claims remain unchanged. Please refer to our earlier newsletters for further information on these topics.

We will continue to update you on any further changes to European prosecution. In the meantime, please contact our office with any questions or concerns you may have.