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Recent Changes to the European Patent Convention

December 2009 - Intellectual Property. Legal Developments by Hertin Anwaltssozietät .

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The administrative council of the European Patent Organisation enacted important changes to the European Patent Convention in March this year. These changes serve the pursuit of the so-called ‘raising the bar’ project of the European Patent Office. This project seeks to improve both the quality and legal certainty during the granting of a European patent. However, it cannot be overlooked that significant numbers of changes are disadvantageous for the applicant. In the future we will endeavour to provide you with recommendations in regards to how you can minimize potentially disadvantageous outcomes.

The following changes have come into effect as of April 1. 2009:

 

1.

For a European patent application, or for entry into the European regional phase, page fees of 12,- EUR per page, as of the 36th page, will be charged. However, the page fee upon grant of the European patent will no longer apply.

2.

A new claims fee of 200,- EUR will be charged as of the 16th claim. As of the 50th claim, a claims fee of 500,- EUR will be charged. This means that the first 15 claims are free.

3.

Until now, single contracting states could be nominated with a payment of 85,- EUR, whereas with the payment of seven such fees all contracting states would be considered as nominated. For patent applications submitted after April 1. 2009, or for entry to the European regional phase, all contracting states will be automatically nominated. For this comprehensive nomination a new flat fee of 500,- EUR is to be paid.

The administrative council has enacted the following further changes to take effect as of April 1. 2010:

4.

For international applications in which the European patent office was assigned for the search or international preliminary examination, a notification is issued at entry to the regional phase, whereby the applicant is required to rectify deficiencies in the description, the claims or in the figures, as alluded to in the written report of the international search or the international preliminary examination report. A response to this new notification and the subsequent adjustments to the description, the claims and the figures is compulsory and must occur within one month from the date of the notification, otherwise the application is deemed to be withdrawn.

Especially relevant is the change which will come into force in regards to the submission of divisional applications, which we would like to outline in detail below:

As of April 1. 2010 the European patent office will discriminate between voluntary and obligatory divisional applications, even if this is not explicitly formulated. Obligatory divisional applications will fundamentally become applications which will be submitted as a response to an objection over unity. All other divisional applications, which are submitted according to the initiative of the applicant, are voluntary divisional applications.

Divisional applications are only possible within a time frame of two years from the first report issued by the examination division. An especially limiting aspect of these changes for the applicant is that during a chain of multiple divisional applications, the first report of the earliest application will be used to calculate the time frame of two years. This means that the first examination report, specifically the report issued by the examination division for the original application, determines the 24 month time frame.

Obligatory divisional applications, or divisional applications that have been enforced due to insufficient unity, can only be submitted within a two year time frame from the first notification from the patent office relating to this matter. Should this deadline be missed, the applicant has no legal remedy at their disposal.

In calculating the 24 month deadline it must be considered that only one application can be divided. This means that a divisional application of a pending European patent application must be submitted, at latest, the day before the publication of the granting of the earlier application, even if the 24 month deadline will expire on a later date. The rule changes in regards to the submission of divisional applications apply to all divisional applications that will be submitted on or after April 1. 2010. If the 24 month deadline expires before April 1. 2010, a divisional application can be submitted within 6 months after this date. Provided the deadline extends beyond April 1. 2010, it will continue for at least 6 months.

Due to these rule changes, we kindly ask you to review all pending European applications to discern whether further relevant technical subject matter should be submitted in the form of a divisional application. Please contact us if you require any consultation in this matter.

 

Dr. Tobias Boeckh and Dr. Sven Lange, Patent Attorneys and European Patent Attorneys, HERTIN Anwaltssozietät, Berlin, Germany

www.hertin.de