Several amendments to the implementing regulations for the European Patent Convention (EPC) which entered into force on April 1 2010 and are intended to realign the European patent grant procedure under the initiative Raising the Bar lead to legal obscurities and uncertainties, in particular with respect to determining time limits to be observed under the EPC.
Some of the amendments and the European Patent Office (EPO) practice concerning the handling of the amended provisions impose efforts and corresponding costs on the applicants by diverting work which the EPO should perform in the examination proceedings for which the applicants paid the examination fee. Notices of the EPO intended to clarify the amended provisions and to give guidelines to the applicants in respect of the procedures to be observed under the amended provisions do not seem to provide a clarification but rather to introduce further obscurities.
A crucial point which may influence the validity of a European patent granted on a divisional application concerns which examining division's first communication triggers the time limit of 24 months for first filing a divisional application under Rule 36 EPC. The EPO is of the opinion that only substantial communications from the examining division trigger the time limit under Rule 36 EPC and a communication under Rule 161, 162 EPC is to be regarded as an essentially formal communication which does not trigger that time limit. No legal basis or case law of the Boards of Appeal is indicated by the EPO in support of its opinion. It is important to notice that the validity of a European patent granted on a divisional application will finally be determined by a national court of a contracting state.
The obscurities and inconsistencies introduced by the amendments to the implementing regulations and the EPO notices concerning the handling in this respect lead to severe legal uncertainties. This unfortunate situation should be remedied by taking appropriate measures as soon as possible.
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| Detlev Pust |
Maiwald Patentanwalts GmbH
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Tel: +49 89 74 72 660
Fax: +49 89 77 64 24
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