Forthcoming changes at the EPO

30 June 2016

SPEEDIER OPPOSITION

The EPO is changing their internal procedures to provide a speedier opposition procedure aimed at reducing the time to decision for straightforward cases from a couple of years to just 15 months. This change in procedure comes into effect 1st July 2016.

The requirements for opposition are not changed. However the change in procedure means that the patentee will not get an extension of time for reply to the opposition without providing reasons; which means that prompt action on receipt of an opposition is advisable.

Opposition remains a cost-effective route for challenging European patents post-grant, and the improved timelines make it marginally more attractive.

Filing “third party observations” prior to grant of a patent can be a more cost effective and speedier route in some circumstances, and we would be pleased to advise on this.

REFUNDS

At present, the European examination fee is refunded:-

(a) in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the Examining Divisions have assumed responsibility;

(b) at a rate of 75% if the application is withdrawn, refused or deemed to be withdrawn after the Examining Divisions have assumed responsibility but before substantive examination has begun.

This is changing.

For any applications which are withdrawn, refused or deemed to be withdrawn on or after 1st July 2016, the examination fee will be refunded

(a) in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun;

and for any applications for which substantive examination starts on or after 1st November 2016, the examination fee will be partially refunded.:-

(b) at a rate of 50% if the European patent application is withdrawn after substantive examination has begun and

before expiry of the time limit for replying to the first invitation under Article 94, paragraph 3, of the Convention issued by the Examining Division proper or,

if no such invitation has been issued by the Examining Division, before the date of the communication under Rule 71, paragraph 3, of the Convention.

Cutting through the jargon, what this means is that it is even more worthwhile positively withdrawing a European patent application if you lose interest, as you are more likely to receive a significant refund of fees.

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