On April 1, 2010, new and amended rules for patent prosecution before the EPO came into force as a part of the “raising the bar” initiative. Some of the changes that have been made to the existing rules may have significant effects on current patent strategies. The overall ambition by the EPO has been to encourage an improvement of the quality of incoming patent applications and to speed up the prosecution process.
 
How will this affect your business?
If you have the goal to obtain patent protection for a well defined invention in the shortest possible time, the amendments are in your favour. In most other cases the amendments will render it more difficult for you to realize your strategy.

Example of consequences:
• The new rules will make it more difficult to postpone decisions and actions, and therefore to delay costs
• They will render it more difficult to drag a patent application along for several years while keeping a third party unsure of the final scope of protection
• The possibility to file divisional applications will be subjected to restrictions

Further Information
Below you will find some additional information collected from the EPO web site. If you have detailed questions regarding how the new and amended rules will affect your business do not hesitate to contact any of our Patent Attorneys for a detailed discussion.

Rules 62a (new) and 63	The examiner can invite the applicant to clarify the claims before the search is performed.
7 (new paragraph 5)	Amendments introducing subject-matter excluded from search under Rules 62a and 63 EPC are not pRule 13ermitted.
Rules 70a (new) and 161*	The applicant must respond to the search opinion issued by the EPO search examiner prior to entry into the examination phase.
Rule 137, paragraphs 2 and 3	Only one opportunity for the applicant to file "own volition" amendments.
Rule 137, paragraph 4	The applicant must identify any amendments and indicate their basis in the original filing.
Rule 36**	Sets time limits for divisional applications.
Rules 57a, 69 and 135	References to some of above new rules added.
Rule 64	Time limit for payment of additional search fee in cases of non-unity.

*) This new rule relates to Euro-PCT applications, where a PCT application enters the regional European phase (and the EPO acted as International Searching Authority). The new rule necessitates a more active prosecution of the PCT application before entering the European phase.

**) The longer of 24 months from the first communication from the Examining Division or 24 months from any communication from the Examining division raising a non-unity objection. In both cases the parent application must be alive.

Links
Rule 36
Rule Changes as of 1 April, 2010
Decision of the Administrative Council of March 25, 2009, amending the Implementing Regulations to the European Patent Convention
New edition of the EPO Guidelines for Examination (NOTE: This is the only valid official version as of 1 April, 2010. The Guidelines define the work performed by the Examiners, etc. and the text is an excellent source of information for understanding the process.)