通告
02. May 2011
EUROPEAN PATENT LAW
New Rules 161 and 162 EPC, as amended by Decision of the Administrative Council CA/D 12/10 of 26.10.2010 shall apply to Euro-PCT applications for which no communication under the previously existing Rules 161 and 162 was issued by May 1, 2011. Accordingly, the term for
• filing amendments to the description, claims and drawings after entering the European phase, and/or
•commenting on the written opinion of the International Searching Authority or the International Preliminary Examination Report (IPER) where the EPO has acted as the competent ISA or IPEA, and/or
• paying the claims' fees for each claim in excess of 15 claims,
has been extended from one month to six months from
notification of the communication under Rule 161 and 162 EPC. Thus,
where needed, the applicants will have significantly more time to deal
with the requirements of Rule 161 and 162 EPC, particularly for
commenting on the written opinion or IPER established by the EPO as the
competent authority, which has become compulsory as of 2010.
Possibilities to accelerate the proceedings:
If
the applicant does not wish to file any amendments, and/or has already
commented on the written opinion/international preliminary examination
established be the EPO, and/or has already paid the claims' fees, where
appropriate, he may accelerate the proceedings as follows:
• upon entering the European phase, explicitly waive his or her right to the communication pursuant to Rules 161(1) or (2) and 162 EPC, or
• after receipt of the communication under Rule 161 and 162 EPC, file a short submission to the EPO indicating that no amendments to the description, claims or drawings will be filed, so that the EPO can start processing the application without waiting for the 6 month term to expire.
To further accelerate the processing of the application, the
applicant can request accelerated search and/or examination under the PACE programme.
The amended Rules read as follows:
Rule 161 - Amendment of the application
(1) If the European Patent Office has acted as the International Searching Authority and, where a demand under Article 31 PCT was filed, also as the International Preliminary Examining Authority for a Euro-PCT application, it shall give the applicant the opportunity to comment on the written opinion of the International Searching Authority or the International Preliminary Examination Report and, where appropriate, invite him to correct any deficiencies noted in the written opinion or in the International Preliminary Examination Report and to amend the description, claims and drawings within a period of six months from the respective communication. If the European Patent Office has drawn up a supplementary international search report, an invitation in accordance with the first sentence shall be issued in respect of the explanations given in accordance with Rule 45 bis 7(e) PCT. If the applicant does not comply with or comment on an invitation in accordance with the first or second sentence, the application shall be deemed to be withdrawn.
(2) Where the European Patent Office draws up a supplementary
European search report on a Euro-PCT application, the application may be
amended once within a period of six months from a communication
informing the applicant accordingly. The application as amended shall
serve as the basis for the supplementary European search.
Rule 162 - Claims incurring fees
(1)
If the application documents on which the European grant procedure is
to be based comprise more than fifteen claims, claims fees shall be paid
for the sixteenth and each subsequent claim as laid down in the Rules
relating to Fees within the period under Rule 159, paragraph 1.
(2) If the claims fees are not paid in due time, they may still be paid within six months from a communication concerning the failure to observe the time limit. If within this period amended claims are filed, the claims fees due shall be computed on the basis of such amended claims.
(3) Any claims fees paid within the period under paragraph 1 and in excess of those due under paragraph 2, second sentence, shall be refunded.
(4) Where a claims fee is not paid in due time, the claim concerned shall be deemed to be abandoned.
Download the full text Decision of the Administrative Council of 26 October 2010 under:
Download the full text of the Notice from the EPO dated 5 April 2011 under:
http://www.mueller-bore.de/tl_files/Decisions_EPO/Notice_EPO_waiver_communication_Rule 161_162.pdf
Should you have any questions or need additional information, please contact us at mbp@mueller-bore.de
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