New European Patent Rules
Posted by: Bruce in European patent rules, IP strategy, tags: European patent rulesAlthough it is your patent attorney’s job to keep abreast of changes in the rules at the various patent offices around the world, it is the inventor’s job to at least be aware of the general issues so that he or she understands what the attorney is trying to do. So consider this post just a “heads up” notice of some changes that went into effect in April 2010.
Divisional applications: A basic rule all around the world is 1 invention = 1 patent. This makes sense since the purpose of a patent is to fence off a particular invention for you sole profit and it would be hard to figure out if someone was infringing when more than one invention was described in the patent. Sometimes we find it convenient to file an application that, intentionally or not, covers more than one invention. When this occurs we usually file one or more “divisional” applications to get back to the one invention per patent rule, where a divisional application is just the original specification with new claims directed to the additional inventions.
Under current US and the old European rules you could (voluntary) divisional applications years after your original filling date. Under the new European rules, all voluntary divisional applications must be filed within 2 years from the first office action, but not earlier than October 1, 2010. This means that “old” patent applications have a relatively short window for filing any new divisional applications. So don’t be surprised if your patent attorney calls you and wants to discuss the need for getting these applications filed.
Early Reply to Objections: In an apparent move to keep the process moving forward, the new rules require you to reply within one month to objections raised in search reports generated by the European Patent Office when you file under the Patent Cooperation Treaty (”PTC”). Here in the US we are used to being able to delay responses to the patent office for as long as 6 months. So again, don’t be surprised when your attorney presses you to answer his questions quickly - he’s just trying to keep your application from being “abandoned”
There have been other changes too, but particular changes are likely to affect the communications you have with your patent attorney very soon.

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