What’s new with the EURO/PCT-Route?
by Reinhard Knauer, Partner of Grünecker, Kinkeldey, Stockmair & Schwanhäusser

Several recent amendments to the EPC, the PCT and the internal practice of the European Patent Office (EPO) have led to important changes in particular in regard to PCT applications that are handled by the EPO in its role as ISA or IPEA. This paper concentrates on the most important aspects of these changes that need to be considered when deciding on an appropriate strategy for PCT applications.

EPO No Longer Acts as ISA or IPEA for PCT Applications Filed by US Applicants in Certain Classes

For any PCT application filed on or after March 01, 2002 by a national or resident of the United States, the EPO is no longer a second choice besides the USPTO for carrying out international searches if the application contains claims relating to the following classes in the fields of biotechnology or business methods:
Biotechnology:
Int. classes C12M, C12N, C12P, C12Q, C07K, G01N33/50, A61K39, A61K48, A01H;
U.S. classes 424, 435, 436, 514, 530, 536, 800, 930.
Business method related inventions:
Int. class G06F17/60
US class 705.

Additionally, the EPO will no longer act as an IPEA in regard to demands for examination filed by US applicants on or after March 01, 2002 (as an alternative to the USPTO), if the claims of the PCT application relate either to the above-quoted classes of biotechnology or business methods or if the claims relate to the following classes of Telecommunication:
Int. class H04;
US classes 370, 375, 379, 380, 381, 455.

For demands for international preliminary examination received by the EPO in relation to PCT applications for which the EPO is not the competent IPEA for the reasons mentioned above, Rule 59.3 PCT applies, meaning that those demands are treated as having been received by the USPTO at the same day they were received at the EPO. This means that a request for international preliminary examination sent erroneously to the EPO leads to a valid request for Chapter II.

The EPO Makes Increased Use of the Exclusions Stipulated by Article 17(2) PCT

In recent months the EPO has made increased use of the provisions under Article 17(2) PCT. This Article in combination with Rule 39.1 (iii) enables the EPO, acting as the competent ISA, to refuse to carry out an international search with regard to business method related inventions. In accordance with Rule 66.1 (e) PCT, the EPO will in such situations also refuse to carry out an International Preliminary Examination despite an explicit and timely filed request for examination.

In recent times, it has occurred frequently that applicants were informed by the EPO on the non-establishment of a search report later than the 19-month deadline which led to a situation where applicants paid for Chapter II without knowing that the EPO will not carry out an international examination due to the non-establishment of a search report.

Officials from the EPO reported that in these cases the EPO will refund the examination fee.

In the subsequent regional phase before the EPO, the EPO has the possibility to refuse to carry out a search on the basis of Rule 45 EPC.

In this respect, however, it should be noted that the EPO must carry out an examination for regional patent applications, if the examination fee has been paid. The subject matter will then be examined on the basis of the current case law. In this respect Board of Appeal decision T 0931/95 has established that an invention is technical and thus not excluded from patentability, if it is directed to a computer system suitably programmed for use in a particular field, even if that is the field of business or economy. However, it is to be expected that the EPO will reject many business method related applications by arguing that the business related features do not provide a technical contribution and are thus not to be considered when assessing inventiveness.

In view of this situation, we encourage our clients to continue to file important business related inventions as direct EP applications, i.e. without a PCT phase involving the EPO.

EPO Rationalizes its Procedure for International Preliminary Examination

Starting January 03, 2002 the EPO has changed its examination procedure for PCT applications. This new procedure also applies to PCT applications where a Chapter II demand was filed before January 03, 2002 and which were not yet under examination on that date.

The following are the basic principles of the new procedure:

Generally, the EPO will issue computer-generated examination reports (Written Opinions or IPERs). The result of the report is predictable.

If the Search Report lists only so-called A-documents (background documents), an IPER is issued immediately, stating that the subject matter is novel and inventive.

In all other cases (i.e. if the Search Report lists X- or Y-documents) and provided that no amended claims were filed in response to the Search Report, a negative Written Opinion is issued, stating that the claimed subject matter is not patentable. The report provides the applicant with a 1-month time limit until which he can request detailed examination, which will then be carried out by an Examiner.

In any case, even a detailed examination will be a so-called “streamlined examination” commenting only on novelty and inventiveness but not on any other deficiencies.

Whether a detailed examination is also possible in regard to “A cases”, i.e. cases where a computer-generated positive IPER is immediately issued, has not been announced by the EPO officially.

According to unofficial comments, such a subsequent request should however be possible.

no detailed examination is requested, the EPO will refund two-thirds of the international examination fee. However, if such a refund is made, there will be no additional 50% reduction for the examination fee during the subsequent regional European phase.
Where no refund is made, the examination fee for the subsequent European phase is reduced by 50% in accordance with the former practice.

The computer-generated Written Opinions and IPERs that are currently issued by the EPO are drafted ambiguously and lead to complaints by many applicants.

With this new procedure, the EPO responds to the flood of PCT applications that reached the Office in the last two years and for which the EPO has insufficient amount of personnel to do the traditional detailed examination.

The EPO’s new policy is also based on the belief that most applicants are mehr interested in the additional 10-months they gain by filing a Chapter II demand, rather than in obtaining an early examination result.

This aspect of “buying additional time” by means of a Chapter II demand has to be seen in close relation to the following two points.

New Uniform Time Limit of 31 Months for Entry into the European Phase Before the EPO

Rule 107 EPC has been amended and now grants a uniform 31-month term from the earliest priority date for entering the regional phase. Formerly, in cases where no request for international examination was filed before expiry of 19 months from the earliest priority date, the necessary steps for entering the regional phase were to be completed at the latest 21 months from the earliest priority date. With the amendment of Rule 107 EPC, a uniform 31 month term has now been established regardless of whether or not international preliminary examination has been requested.
The new rule applies to all PCT applications, for which on January 02, 2002 the former 21 month term has not yet expired and where the regional phase has not yet been entered.

Amendment to Article 22(1) PCT Extends Time Limit for Entry into National and Regional Phases Globally from 20 Months to 30 Months

For all PCT applications, in respect to which the 20-month period from the earliest priority date expires on or after April 01, 2002, the time limit for entering the national (regional) phases has globally been extended from 20 months to 30 months by an amendment of Article 22(1) PCT.
For offices that inform the International Bureau prior to January 31, 2002 that its national law is not compatible with this amendment of Article 22(1) PCT, the amendment shall not apply.

The following offices have submitted such a notification, meaning that in regard to the following offices, the extension from 20 months to 30 months is not applicable:

AU, BG, BR, CH, CN, DK, EE, FI, GB, HR, HU, IL, JP, KR, LU, NO, SE, SG, SK, TZ, UG, YU, ZA, ZM;

This means that in regard to the above mentioned national offices, applicants must still request international preliminary examination in accordance with PCT Chapter II if they wish to extend the international phase from 20 to 30 months.

Clients, who are only interested in globally extending the international phase from 20 months to 30 months, but not in a detailed examination, are advised to continue to file Chapter II Demands prior to expiry of the 19 months time limit with the EPO. Such a request extends the time limit for entering the national (regional) phases to 30 months. Due to the EPO’s rationalization of its international examination (see above), no detailed examination will be performed. Instead, the EPO will reimburse two-thirds of the examination fee. This seems currently to constitute the safest and cheapest way to delay the entry into national phases globally up to 30 month.

The EPO No Longer Allows Several Independent Caims within the Same Claim Category

Effective from January 02, 2002, the EPO will no longer allow mehr than one independent claim within the same claim category except if the following conditions apply. In accordance with an amendment of Rule 29(2) EPC, mehr than one independent claim in the same category is only permissible if the subject matter of the application involves one of the following:

a)a plurality of inter-related products;
b)different uses of a product or apparatus;
c)alternative solutions to a particular problem, where it is not appropriate to cover these alternatives by a single claim.

We recommend our clients to fulfill this requirement for any new EP application that is filed with the EPO as well as for any PCT application that enters the regional phase before the EPO if they want to avoid formal objections concerning the claim structure.

According to unofficial comments from the EPO, the amendment of Rule 29(2) EPC will be applied to PCT applications in the sense that this Rule will be used to interpret Article 6 and Rule 6.1 (clarity of claims).