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Upcoming Changes to European Patent Examination Procedures

By Peter G. Pappas, William L. Warren and Kar Yee Tse
July 29, 2009

Recently, the European Patent Office (“EPO”) announced changes to the rules of the European Patent Convention (“EPC” ) as part of the EPO's initiative to speed up patent examination. The new EPC rules, which will be effective on April 1, 2010, will drastically restrict how a patent applicant is able to file divisional patent applications and will increase the patent applicant's obligations to provide information to the EPO during patent examination.

More specifically, these rule changes implement: 1) time limits for filing divisional European patent applications; 2) compulsory responses to European search reports and written opinions of the EPO acting as the International Searching Authority (“ISA”) in European patent applications; 3) a requirement that the basis in the original text of a European patent application be provided for all amendments; 4) restrictions on a patent applicant's right to make voluntary amendments; 5) a requirement, for European patent applications containing more than one independent claim in the same category, that patent applicants identify which claims are to be searched; and 6) a requirement, for claims the EPO considers too broad or unclear on which to carry out a meaningful search, that the patent applicant indicate which subject matter should be searched.

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