Thursday 1 April 2010

Don't be made a Fool of by the European Patent Office Rule Revisions

1st April is the day that the EPO introduces its rule changes to "raise the bar". The EPO website highlights the changes here. Loads of publicity has been given to the changes to Rule 36, which prevents you filing voluntary divisionals more than 2 years after the first communication on examination.

My guess is that Patent Agents will be filling the EPO coffers with fees for Further Processing because of the new Rule 70(a) and Rule 161. These require a response to the search opinion. Its not too bad if you are processing a normal European patent application filed directly with the EPO. You must respond to the  search report when requesting examination. If you do not then you can expect a communication that the application is deemed withdrawn and further processing fees will apply as well as the filing of the response.

Life is a bit more complicated when it is a PCT-EP application. If you are going to get a supplementary search then you are OK to wait the usual long period where nothing is required of the applicant however meritless the apllication. However if the EPO did the search, then your Rule 161(1) notice stops being a letter you can ignore, but one that needs a response within a short period. Entering the national phase of a PCT application is already wildly expensive and a heavy financial risk to solo attorneys. Now it means a big risk on your own time working on the response as well. My low esimate proved too much for a lay client the other day and it transpires he is doing the work unaided.

A little client management is now going to be needed to explain this early obligation. The EPO hope that agents will be helping them reduce the backlog of doomed applications before they arrive. Its not going to be that easy especially if it raises the number of unrepresented applicants. I advised a different corporate client last week that it was not worth entering the national phase as they could not tell me why they thought the search opinion had missed the point of the invention. All that happens is that another attorney will do it and I earned no fees for my sound advice. Being solo I have no-one to whom to justify that loss of business but in larger firms such good advice may be less welcome.

If you are in Glasgow you can attend the CIPA Seminar on 16 April to make sure you are up to speed with all of the new rules.


  1. Indeed, giving advice to clients that goes against the doctrine of "making money from the client at all costs" within some firms (for that mantra exists here in France too), is often frowned upon or even rebuked by one's superiors, and even partners. I have always found this behaviour a misnomer of the word "counsel". In France, that word does, after all, form part of our official title. How many actually reflect that title in their daily professional lives ? I suppose one can always adopt the approach, good or bad, advice is always worth something...but then I might as well become a bean counter...

  2. I have always found the one month deadline for the new Rule 161 response strange; surely the EPO must realise that national phase entry is one situation where European attorneys will be communicating for the first time with foreign clients in different time zones?

    I suppose the eventual result will be that foreign applicants will make sure that the International Searching Authority is not the EPO to nudge the application onto the supplementary Search and Written Opinion route.