By: Kellie Fredericks


Following up on our prior reporting of new rules in the European Patent Office (EPO) affecting divisionals, claims practice, and responses to search reports and opinions, we now provide further updates on those changes and advise of additional disclosure requirements when entering the EP National Phase.


Beginning on January 1, 2011, the EPO will require additional disclosure of corresponding applications’ search reports upon entry into the EP National Phase. Patent applicants who file first in the US and enter Europe from a PCT will need to cite two reports: the International Search Report (ISR) and the references considered by the examiner in a US office action. Applicants are not required to submit office actions, translations or copies of the cited art. This requirement will be applied to those applications filed in Europe (or PCT applications which subsequently enter Europe) after January 1, 2011. If the disclosure materials are not filed with the EP, the regulations suggest that a reminder will be issued to comply within two months.


In our Spring 2010 newsletter, we had reported on other new rules in the EPO, and we now provide this update on the impact of those changes on European patent practice:



  1. Divisional applications: October 1, 2010, was the “grandfather” date for filing all divisional applications on older cases. It is now required to file all desired divisional applications stemming from a pending parent patent application within 24 months of the first substantive EPO communication (i.e., an examination report) for the parent application. If you receive a five-way lack of unity rejection, all four divisional applications, should you wish to file them, must be filed within this 24 month period or the subject matter not applied for will be forfeited.


  2. Claims practice: The new European rules restrict the number of independent claims to one per category (e.g., product, process for making, apparatus, use). If there is more than one independent claim in one category, or if the EPO does not believe a meaningful search can be performed, the applicant will receive a notice from the EPO to designate which claim is to be searched. Any unsearched subject matter must be filed in a divisional application. It will be imperative at this stage to be aware of the filing deadline for divisional applications in the family so that subject matter is not lost.


  3. Required response to relevant Search Reports and Opinions: As previously reported, applicants are now required, upon entry into Europe from a PCT, to respond to any outstanding issues in an International Preliminary Report on Patentability (IPRP) received from the EPO if it was designated as the Searching Authority. Letters requesting this response (Rule 161/162 letter) are being received extremely quickly after National Phase entry into Europe, requiring an even shorter turnaround time than anticipated. The EPO allows only one month in which to respond to the request and, due to mailing time between the EPO, our European agents and us, we usually have only about 14-20 days in which to respond.


There are two different letters we are receiving from the EPO. If substantive amendments have been completed prior to entry into Europe (for instance, in a Demand), or at the time of entry into Europe, a letter will state that we MAY respond to any outstanding issues from the IPRP, but we are not required to do so. If no prior amendments have been made, a letter will instruct us that we MUST respond to the outstanding issues. This response to the Rule 161/162 letter is the final opportunity to make voluntary amendments that the European examiner must consider. Reasons for each amendment must be explained at the time of amendment.


As the above issues are intertwined, it is important to be conscious of all of these issues when one receives a communication from the EPO or makes amendments. To that end, we suggest the following:



  • Looking forward, many of the PCT applications being filed by our clients can designate the US or Korea, rather than Europe, as the International Search Authority. The benefits of doing so are two-fold. First, searches are generally less expensive in the US and Korea. Second, for PCT applications entered into Europe, we will have six months AFTER the EP Supplemental Search is received in which to respond.


  • If there is a case which is planned for entry into Europe, we recommend drafting claims (or reviewing existing claims) to: i) ensure that there is only one independent claim per category; ii) clear up any ambiguity in the claims; ii) utilize multiple dependencies and “preferably” language; iv) try to draft (or amend to, for existing applications) no more than 15 claims to reduce excess claims fees; and v) present the claim(s) to the most desired subject matter first to ensure that it is searched and examined.


  • For PCT applications already filed with the EPO designated as the Search Authority, a possible strategy is to draft a response and/or any desired amendments to the claims soon after we receive the IPRP. A second strategy is to file amendments at the time of EP entry; this should serve to change the letter from a “must respond” to a “may respond.”

We will keep you posted as we receive information about cases moving through the EPO. As always, we invite you to contact our office for any questions you may have.