Preface to the 2014 Edition

Unusually, the EPC was modified twice in 2014.

The first set of amendments came into effect at the beginning of April. These changes primarily related to the EPO fee structures. The EPO amended its previous practice of providing all applicants domiciled or resident in contracting states with official languages other than English, French and German a 20% fee reduction if documents were filed in a non-EPO official language. Instead, with effect from 1 April 2014, the discount has been increased to 30% but is now only available to natural persons, small and medium-sized enterprises, and non-profit organisations, universities or public research organisations. In addition, the reduction also now only applies to the filing and examination fees paid by eligible applicants.

The rule change greatly increases the complexity of determining whether or not a fee discount is available. What constitutes a small or medium-size enterprise requires an applicant to refer to EU law, which defines such an enterprise as one that employs fewer than 250 persons, has an annual turnover not exceeding €50m and/or an annual balance sheet total not exceeding €43m and for which no more than 25% of the capital is held directly or indirectly by another company that also fulfils the same criteria. Although the EPO has provided some guidance, the boundaries of what constitutes a non-profit organisation, university or public research organisation are not entirely clear and uncertainties for these types of applicants will still exist.

In practice, the rule change significantly restricts the scope of the fee discounts available for applicants domiciled or resident in contracting states with official languages other than English, French and German. Larger companies based in those countries will now have to pay higher fees and all applicants in those countries will have to pay higher fees to oppose the grant of third party patents or to file an appeal. When filing or paying examination fees on behalf of small or medium-size enterprises, patent attorneys will have to know about a client’s balance sheet and the number of its employees as well as the current state of its corporate ownership.

The other notable change that came into effect at the beginning of April was the abandonment of the requirement that divisional applications must be filed within two years of the first official letter being issued by the Examining Division. Instead, the EPO has reverted to its pre-2010 practice of allowing divisional applications to be filed at any time whilst a parent application is pending and has introduced an extra fee for filing second and subsequent generation divisional applications. For a second generation divisional application (i.e. a divisional of a divisional), the filing fee is increased by €210, for a third generation divisional application, the filing fee is increased by €420, for a fourth generation divisional, the filing fee is increased by €630, and the filing fee is increased by €630 for any division of the fifth or subsequent generation.

The two-year divisional deadline, when it was introduced in 2010, caused an unnecessary flood of divisional patent applications. Shortly after its introduction the rules needed further amendment to clarify which official letters from the EPO would act to trigger the two-year deadline. It is not always possible to know in advance whether divisional applications are required and the existence of the deadline caused significant problems where an applicant sought to amend its claims later on during prosecution to an area that an examiner considered to be unsearched subject-matter. The change to divisional practice is to be welcomed.

The changes that come into effect at the beginning of November concern the supplementary searches of Euro-PCT applications. The rules are being amended to bring the EPO’s approach to supplementary searches more into line with the EPO’s approach to searching direct filed applications.

If the EPO considers that the claims which are to serve as the basis for the supplementary European search relate to more than one invention, initially the EPO will draw up a partial supplementary search report in respect of the first invention or group of inventions in the claims and issue a partial search report together with an official letter setting a deadline for further search fees to be paid. Further searches are then conducted only to the extent that the further fees are paid.

If a PCT application is searched by the Austrian, Nordic, Finnish, Swedish or Spanish Patent Offices in the international phase, normally the EPO dispenses with a supplementary European search report. However, if the Examining Division considers the application documents that are to serve as the basis for examination claim an invention that was not searched in the International Phase, the Examining Division will now issue an official letter setting a deadline for paying search fees in respect of any such claims that are to be searched. In such cases, the normal EPO approach to applications containing multiple independent claims in the same claim category or where the claims are considered unsearchable by the EPO will apply and the EPO will only conduct a supplementary search to the extent fees are paid and searchable subject matter is identified by an applicant.

Two decisions of the Enlarged Board of Appeal have been issued since the last edition of this book. In G1/11, the Board of Appeal ruled on a technical issue deciding that a Technical Board of Appeal rather than a Legal Board of Appeal has responsibility to determine an appeal against a decision of the Examining Division refusing to refund search fees paid under Rule 64 (2) EPC. In G1/12 the Enlarged Board ruled that it was permissible to correct the name of an appellant appearing in a Notice of Appeal where the wrong name had been entered in error.

The laws and fees in this edition are correct as of 1 November 2014.

Nicholas Fox, St Swithin’s Day 2014