INFORMATION FROM THE EPO
Notice dated 9 January 2002 concerning amendment of Rules 25(1), 29(2) and 51 EPC
This notice provides details of these amendments and the applicable transitional provisions.
1. Under the amended version of Rule 25(1) EPC a divisional application can be filed relating to any pending earlier European patent application. The word "any" has been introduced in order to clarify that it is irrelevant what kind of application the parent application is. The parent could thus also be an earlier divisional application. A divisional application relating to a Euro-PCT application can only be filed once the Euro-PCT application is pending before the EPO acting as designated or elected Office, ie it must have entered into the regional phase.
An application is pending up to (but not including) the date that the European Patent Bulletin mentions the grant of the European patent, or until the date that the application is refused, withdrawn or deemed withdrawn; if notice of appeal is filed against the decision to refuse, a divisional application may still be filed while appeal proceedings are under way (see Guidelines for Examination in the European Patent Office, Chapter A-IV, 1.1.4).
Rule 25(1) EPC as amended is applicable as of 2 January 2002. That means that a divisional application can be filed relating to any application still pending on that date, irrespective of whether approval under existing Rule 51(4) EPC has already been given prior to that date.
2. The amendment to Rule 29(2) EPC underscores and legally defines the principle of "one independent claim per category". The only admissible exceptions to this principle are now explicitly stated in the rule. New Rule 29(2) EPC is intended to have the same effect as strict application of Article 84 EPC and existing Rule 29(2) EPC, but without the lengthy substantive argumentation required hitherto. An applicant wanting more than one independent claim in the same category must, if the EPO objects, convincingly demonstrate that all the additional independent claims come under one of the exceptions explicitly given in the rule. So the onus is on the applicant.
Typical instances of these exceptional situations will be added to the Guidelines for Examination in the European Patent Office. Typical exceptions under Rule 29(2)(a) are plug and socket, transmitter and receiver, intermediate(s) and final product, gene - gene construct - host - protein - medicament. Exceptions under Rule 29(2)(b) are in particular second or further medical uses in the claim format of a second medical-use type claim. Typical exceptions under Rule 29(2)(c) are two or more processes for the manufacture of a chemical compound, in inventions relating to a group of new chemical compounds.
Rule 29(2) EPC as amended entered into force on 2 January 2002 and applies to all European patent applications in respect of which the EPO had not yet despatched a communication under Rule 51(4) EPC by that date.
3. The revised Rule 51 EPC will not enter into force until 1 July 2002, in order to allow the Office sufficient time to change working procedures and computer programs. Under the revised wording, the previous separate communications under Rule 51(4) and 51(6) EPC are combined. The applicant will immediately be asked to file the translations of the claims and to pay the fees for grant and printing.
Filing of the translations and payment of the fees implies approval of the text for grant. Express disapproval is no longer foreseen. If the applicant does not file the translations and/or does not pay the fees for grant and printing, the application will be deemed to be withdrawn under Article 97(3) and (5) and Rule 51(8) EPC. The application will thus no longer be refused when no express statement of approval is filed.
Upon reviewing the proposed text for grant, the applicant may wish to make minor amendments and/or he may discover mistakes. He will have an opportunity to file those amendments or corrections within the period set under Rule 51(4) EPC. If the examining division consents to the amendments or corrections, it can immediately proceed to grant, as the applicant is obliged to file translations of the claims as amended or corrected, provided the applicant has also paid the fees for grant and printing within the time limit set. If the applicant files amendments or corrections and translations of the claims in due time, but does not pay the fees, the application will be deemed to be withdrawn under Article 97(3) and Rule 51(8) EPC. If the examining division does not consent to the requested amendments or corrections, the applicant will be given the opportunity to comment, and either to withdraw or again to amend those amendments or corrections. In the latter case amended translations of the claims will need to be submitted once more. As such amendments will generally be of a minor nature, this should involve no substantial burden for the applicant.
If the applicant fails to meet the objections raised, the examining division must refuse the application under Article 97(1) EPC because it does not meet the requirements of the Convention. As the applicant must always pay the fees for grant and printing and any claims fees within the time limit set under Rule 51(4) EPC, a legal basis has been created for their refund if no patent is granted. The procedure under paragraph 6 only takes place when these fees have been paid. If not, the application is already deemed to be withdrawn under Article 97(3) and Rule 51(8) EPC.