On April 1, 2010, the EPO has introduced new rules aimed at shortening the time from filing of a European application till grant.
Until now, whenever the EPO would issue a search report – be it a European search report (ESR) for European applications, an International search report (ISR) for PCT applications where the EPO acted as International Searching Authority or a supplementary search report (SSR) for EP entries from PCT applications where the EPO had not acted as International Searching Authority – no reply was required in response to such search reports. Thus, until now the applicant could simply take due note of the prior art references cited in the ESR, ISR and SSR, and of any objections raised in the related search or written opinion, and wait until the 1st Examination Report would be issued by the EPO Examining Division to prepare a reply.
Within the framework of the recent so-called “Raising the bar” initiative, the EPO has now introduced certain new rules which make it mandatory to file a reply to the search opinion or written opinion provided with the ESR, ISR or SSR.
Under the new system, when the EPO will issue a ESR for a European application, a reply to the ESR will need to be filed essentially at the same time as requesting examination (or confirming the applicant’s intention to proceed with the application, in case examination was already requested at the time of filing of the application).
Similarly, when the EPO will issue a SSR for an EP phase of a PCT application for which the EPO was not the International Searching Authority, a reply to the SSR will also need to be filed.
Finally, for those cases where the EPO will have been selected as International Searching Authority for a given PCT application, and the EPO will thus have issued the ISR, when entering the EP phase it will be necessary to file a response to the written opinion provided with the ISR. In this case, it will be possible to file such reply either at the time of entry into the EP phase or in response to a communication (so-called R. 161-162 EPC communication) which is issued shortly after the EP entry.
According to EPO information, the response to the various search reports will only be mandatory for those cases where the EPO will have identified any “deficiencies” in the search opinion or written opinion provided with the search report itself. At the time of writing of this article, it remains to be seen whether the EPO will from now on make it entirely clear whether a given search report requires the filing of a reply or not. Nevertheless, what does appear is that with this new system the search or written opinion provided with the search reports prepared by the EPO will in fact take the place of the 1st Examination Report, and it is therefore possible that in the end fewer Examination Reports will be issued and European patents will be granted sooner.

New EPC Rules on divisionals
On April 1, 2010, the EPO has introduced new rules relating to the time for filing European divisional applications.
Until now, European divisional applications could be filed at any point in the “life” of the (pending) parent European application. Under the new system, which the EPO has implemented as part of its recent “Raising the Bar” initiative, divisional applications can be filed only within certain limited periods during the life of the parent application.
In particular, the EPO has now made a distinction between so-called “voluntary” and “mandatory” divisional applications. Voluntary divisionals are divisionals filed by the applicant at his own volition. In other words, these divisionals are not necessarily meant to overcome any objections – such as lack of unity objections – raised by the EPO for the parent application.
Voluntary divisionals can be filed within 2 years from the 1st communication issued by the EPO Examining Division (ED) for the parent case. This communication is usually an Examination Report, but it can also be a summons to attend oral proceedings or even a R. 71(3) EPC communication (informing about the text for grant).
On the other hand, mandatory divisionals are divisional applications arguably filed by the applicant in order to overcome a lack of unity objection raised by the EPO for the parent application. Mandatory divisionals can be filed within 2 years from the 1st EPO ED communication issued for the parent case in which the EPO raises a lack of unity objection not previously raised.
Thus, if in a given case no lack of unity objection is raised in the 1st ED communication issued for that case, the period for filing a (voluntary) divisional will expire 2 years from that 1st ED communication. However, if in the 2nd ED communication issued for the same case the EPO then raises (for the first time) a lack of unity objection, then the period for filing a (mandatory) divisional will expire 2 years from that 2nd ED communication, since the latter communication will be the first in which a lack of unity objection was raised.
The new EPO divisional rules should lead to a decrease in the total number of divisionals filed, and also to the creation of a time bar after which no more divisionals can be filed. This should lead to greater certainty for 3rd parties. However, the new system will require thorough monitoring of the divisional deadlines to ensure that applicants can still exploit their right to divisionals to the full extent.

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