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The Euro-PCT route Recent & Upcoming Changes. Reinoud Hesper Lawyer Dir. International Legal Affairs - PCT Washington, October 25, 2013. Present Rule 36 EPC - Filing of a divisional application. Since 1 April 2010 filing a d ivisional application re quires

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The euro pct route recent upcoming changes

The Euro-PCT routeRecent & Upcoming Changes

Reinoud Hesper


Dir. International Legal Affairs - PCT Washington, October 25, 2013

Present rule 36 epc filing of a divisional application
Present Rule 36 EPC - Filing of a divisional application

Since 1 April 2010 filing a divisional application requires

The earlier application must be pending

The divisional application must be filed within 24 months from =>

Voluntary division: the ED's first communication under Art. 94(3) EPC, Rule 71(1), (2), or (3) EPC in respect of the earliest application for which a communication has been issued, OR

Mandatory division: any ED's communication raising a (specific) objection of non-unity for the first time against the earlier application

Objective: Limitation of the possibility to use divisional applications as a tool to prolong pendency of subject-matter ("ever greening")


Amended rules 36 and 38 epc
Amended Rules 36 and 38 EPC

Entry into force on 1 April 2014

Applicable to divisional applications filed on or after that date

Amended Rule 36(1) EPC => return to earlier wording of the rule

Divisional application may be filedas long as the earlier application (parent) is pending

Amended Rule 38 EPC => introduction of new fee element

Additional fee as part of the filing fee for divisional applications of second or subsequent generations

Concept "generation" relates to the links in a chain of divisional applications (G1/05 and G1/06, reasons 11.1)

See also EPO Guidelines (A-IV, 1.1.1 -; T 1158/01


Rule 36 epc reasons for revision
Rule 36 EPC - Reasons for revision

Aim: Reduction of the monitoring burden and costs for the users

Fact: Less precautionary filing of divisional applications

G 1/09 =>application refused by a decision of the ED is still pending within the meaning of Rule 25 EPC 1973 (current Rule 36(1) EPC) until the expiry of the time limit for filing the notice of appeal

But: The filing of long sequences of divisional applications is detrimental to the European patent system =>

Preventing sequences of divisional applications remains a valid objective


Rule 38 epc additional filing fee
Rule 38 EPC - Additional filing fee

"Signal" to the users => a more proportionate way to prevent sequences of divisional applications

Legitimate filing strategies not affected

A moderate additional fee as part of the filing fee is due within one monthfrom filing the divisional application (Rule 38 EPC)

First generation divisional applications will not be subject to payment of the additional fee

The level of the additional fee grows with each generation up to a certain ceiling


The euro pct route recent upcoming changes

Euro-PCT applications

The PCT at the EPO

PCT applications in the European phase as proportion of PCT applications in the European phase plus Euro-direct applications. Overall share: 58%.


Equal service levels as a compass
"Equal Service Levels" as a compass

  • 18 October 2013: President Battistelli at the Annual Meeting of the US Bar - EPO Liaison Council (report)

    • "Our guiding principle is to attempt to achieve Equal Service Levels between the EPC procedure and the procedure under the PCT.

    • The alignment of procedures and services under both treaties .... reduces complexity .... and contributes to the quality and efficiency of the EPO,

    • as well as enhancing value for applicant through greater transparency and simplicity."

  • Aligning law & practice: proposal to freeze EPO's international search fee

    • Decision taken December 2013 in Administrative Council

Amended rule 164 epc 1
Amended Rule 164 EPC (1)

  • As from 1 November 2014 (amended) Rule 164 EPC will enable applicants to:

    • Obtain asearch of any invention claimed in the application documents for the European phase

      • Upon payment of a further search fee for each further invention to be searched

      • "Same" as for Euro-direct applications (Rule 64 EPC)

    • Select for the further processing of the application any invention searched by the EPO either as

      • Designated/elected Office in the European phase OR

      • As (S)ISA in the international phase

    • Implementation of Equal Service Levels

Amended rule 164 epc 2
Amended Rule 164 EPC (2)

  • If the EPO was not the (S)ISA => supplementary European search may cover further searches

    • Rule 164(1) EPC (compare Rule 64(1) EPC)

  • Applicants no longer bound to the (single) invention searched by the EPO asdesignated or elected Office upon entry into the European phase

    • No costs for a divisional application to obtain (just) a search

  • If the EPO was the (S)ISA => Further searches may be obtained after the start of examination (Rule 164(2) EPC)

  • Applicantsno longer bound to the invention(s) searched by the EPO as(S)ISA in the international phase

    • Flexibility: postponing further searches from the international to the European phase

    • Avoiding (further) investments at an (too) early stage

    • "Benefit" of European search fee

Enhancing chapter ii pct top up search
Enhancing Chapter II PCT - Top-up search

Recent measures enabling

A better decision on entry into the national/European phase

If wished, fast(er) grant in the European phase

FIRST => as from 1 July 2014 a top-up search in Chapter II PCT will be performed

Implementation of Rule 66.1ter PCT and Equal Service Levels

No extra charge

First action in Chapter II (as a rule)

Covering secret and "normal" prior art (Rule 64 PCT) in alignment with the (extended) top-up search performed in the European phase

Conflicting applications (Art. 54(3) EPC)

Potential conflicting applications => int. applications in international phase (Art 153(5) and Rule 165 EPC)

Prior art in searches by other Offices on family members after an EPO search


Enhancing chapter ii pct more dialogue
Enhancing Chapter II PCT - More dialogue

SECOND (reminder) => Since 1 October 2011 more interaction between the examiner and the applicant in the procedure before the EPO as IPEA

Notice in OJ EPO 10/2011, 532

A second written opinion is issued in Chapter II procedure if

The applicant filed amendments for the Chapter II procedure AND

There are objections outstanding so that the IPER would be negative if issued based on the file as it stands

The applicant may reply within the time limit set of (as a rule) two months by filing comments and (further) amendments

If the EPO acted as IPEA => 975 EURO (50%) reduction in the examination fee in the European phase

Art. 14(2) Rules Relating to Fees


Acceleration early processing at the epo
Acceleration - Early processing at the EPO

  • "Processing ban" (Art. 23(1) and 40(1) PCT)

    • Designated/elected Offices cannot start processing an international application during the international phase (30 months at least)

    • => ONLY the applicant may lift the processing ban

      • Art. 23(2) and 40(2) PCT (J18/09, OJ EPO 2011, 480)

  • How to lift the processing ban in respect of the EPO to start the processing in the European phase?

    • Submit an express request for early processing (no special form)

    • Comply with all further requirements => precise information in Notice of the EPO dated 21.2.2013 (OJ EPO 3/2013, 156)

Info on pct procedures before epo
Info on PCT procedures before EPO

All PCT related information of the EPO

Detailed overview of the PCT procedures before EPO

"Euro-PCT Guide" (How to get a European Patent, Part II)

February 2014: publication of "Euro-PCT Guide 2014"(1.1.2014)

Content => EPO specific information concerning the EPO in its function as RO, (S)ISA, IPEA and as DO/EO

Many references to "sources" of EPC law and practice

Decisions of the President, Notices of the EPO, Guidelines of the EPO, case law


The euro pct route recent upcoming changes

Thank you for your attention!