European Patent Office: Changes to Multiple Independent Claims Practice

We recently gave a brief summary of the impending 1 April 2010 changes to European rules.

New Rule 62A: Independent Claims
Today, we’re going to go into a little more detail about the changes to management of independent claims in Europe under the new regime.

Current practice
Under current European practice, typically only one independent claim is allowed in each claim category (apparatus, method, etc).

However, there are some exceptions:

  • Inter-related items (for example, a plug and socket; gene, gene construct, host, protein, medicament; intermediate and final chemical product).

  • Multiple different inventive uses of a product or device (for example, different second or further medical uses).

  • Examples of alternative solutions to a problem (for example, groups of chemical compounds; two or more processes for manufacturing a compound).

At the moment, the EPO searches all claims, and then raises an objection during examination if it is considered there are too many independent claims in each category.

Under new Rule 62a:
The EPO will no longer search all independent claims in each category. Instead, the new procedure will be to invite the applicant to select which claim in each category should be searched (and therefore examined).

The subject matter of the remaining independent claims may need to be made the subject of a divisional application if it cannot successfully be argued that an exception (such as one of those listed above) is appropriate.

If no claim is selected, the EPO will automatically search only the first claim in each category.

Which applications are affected?
For various technical reasons, the new rules will only affect cases where the International Search Report was not prepared by the EPO.

The rule applies to all applications where the European search report issues after 1 April 2010.

What needs to be done?
For PCT applicants entering the regional phase in Europe, there is an opportunity to amend the European claims either at regional phase entry, or following issuance of a rule 161 communication (we’ll post about that soon). This is the last opportunity to get the most appropriate claims on file before the search process begins.

Need more information?
Our European agents, Kilburn & Strode, have prepared briefing papers summarising the main impending changes to European practice. The papers can be downloaded from their website.


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