The EPO is currently running a roadshow for professional representatives around Europe  covering changes to the Guidelines for Examination and other matters such as rule 164 EPC, “Doing business with the EPO electronically”, early entry into the European phase, effective use of procedural options, the rule 71(3) EPC procedure and Article 123(2) EPC.

Recently the roadshow made it to London and in this post we take a look at the changes to the rule 164 procedure and also some of the fee related changes.

Rule 164 EPC

The current version of this rule was introduced in November 2014 and should therefore be familiar to most readers. To briefly recap however IPcopy notes that the latest rule change altered the way the EPO handled EP-PCT applications having a lack of unity and basically gave applicants an opportunity to have a search performed on any unsearched subject matter in a PCT application that was entering the European phase.

The rule as revised in November 2013 is regarded as fairer to all applicants as it provides the flexibility to get additional searches performed on entering the European phase.

The current rule however still treats applications differently depending on who the ISA was. For applications that did not have the EPO as ISA , rule 164(1) applies and the application is handled by the Search Division of the EPO upon entering the regional phase. Applicants experiencing rule 164(1) EPC therefore receive a partial search report and an invitation to pay additional search fees followed by a supplemental search report and written opinion.

For applications that did have the EPO as ISA, rule 162(2) applies and the application is handled by the Examining Division and so the invitation to pay additional search fees in case of lack of unity comes from the Examining Division.

Although the particular division in control of the additional search phase may seem a little academic it does of course have an important consequence, namely in relation to the ability to get an examination fee refund. Those applicants having applications that did not use the EPO as ISA may request a refund of the exam fee in the event of a negative search. Applicants that used the EPO as ISA are instead already within the remit of the Examining Division and so the option of a refund is not available.

This imbalance in the way applications are still treated under the current version of rule 164 was revisited in the Q&A session at the end of the talk. The EPO representative that was present attempted to justify this difference in approach by saying that the applicant that had had the EPO as ISA in the international phase would have already received a search from the EPO and so there was no need to offer the possibility of a refund of the exam fee.

This explanation seemed to be dodging the issue and was challenged by one questioner who postulated a theoretical situation in which the claims were amended on EP entry (or in response to the rule 161 Communication) to relate to a new invention that had been brought in from the description. In this case the applicant would never have had the chance to get this invention searched in the international phase and so to deny the applicant the chance of an exam fee refund was regarded as unfair if the only difference was the choice of ISA.

Further questions/issues raised in the Q&A session included:

• Assume an application comprises two inventions, Invention A and Invention B. Further assume that at the rule 161 stage invention A is dropped and Invention B is made the subject of the claims. In due course an invitation to pay a further search fee is received and then paid. If the search report that comes back in relation to invention B is highly negative, is the applicant allowed to switch back to Invention A? The EPO representative was unable to provide an on the spot answer to this question. The epi representative (the sessions were a double act between the EPO and the epi) suggested that reverting to invention A should be acceptable as long as the subject matter hadn’t been abandoned at the rule 161 stage. It was also pointed out that rule 164(2)(b) provides an exception (“lex specialis”) to rule 137(3) EPC allowing a further amendment of the application.
• The perceived unfairness of an a posteriori objection was raised. The applicant faced with such an objection has no option correct the claims and can only choose to deal with the objection by way of paying additional fees, choosing not to pay the fees and losing the option to pursue that subject matter in the pending application or paying the fees with a request for a refund. This comment was tackled by the EPO representative and his response was somewhat unrepentant – in a nutshell, if that happens, then tough.

General changes in the Guidelines & fee related issues

A few more general points were covered including:

• the website version of the Guidelines page has a toggle switch in the upper right part of the page which allows modifications to the Guidelines to be made visible.
• The previous rules relating to time limits when summoning oral proceedings had attracted some criticism. The revised version has made it clearer that the general rule is that there will be at least 4 months from the summons to the hearing though in specific circumstances it can be shorter (where there’s been extensive exchanges between the applicant and the Examiner) or longer (complex case or no suitable rooms). The aim of the revised rule is to harmonise the oral procedure with the written procedure.
• Rule 6 EPC. This has been in force since 1 April 2014 and provides a reduction of 30% in the filing and examination fees only for applicants who a refiling translations. The rule now provides for the reduction for SME entities instead of all entities and is restricted to filing/exam fees only to keep the rule simple. It was noted that an incorrect declaration can lead to the application being deemed to be withdrawn (though further processing available).
• Rule 39(1) EPC. The Guidelines have been clarified to reflect the due date for paying the designation fee. Apparently the previous version of the Guideline dated from nearly 20 years ago. Under rule 39(1) the EPO will still accept payment of the designation fee on filing. It was also pointed out that if the application is withdrawn or refused prior to the date set in rule 39(1) then a refund of the fee is possible because the legal basis for the rule has ceased to exist.
• Arrangements for Deposit Accounts. The abolition of the administrative fee got an airing in this section with the EPO representative stating that the administrative fee was removed because the EPO felt it provided an extra means of redress for applicants who used deposit accounts compared to those that did not. It was also noted that only a very small number of users actually took advantage of the system. It was pointed out that the deposit account system meant that it was often necessary to keep large amounts of Euros in the account to mitigate against unexpected payments going out and colleagues filing applications that you don’t know about. The EPO’s position on this was clear. It’s the representatives responsibility to keep the account topped up…
• Alternative payment methods. The EPO will apparently be introducing the possibility of credit card payments at some point though the timetable for this was unclear. Direct debit payments are being looked into though apparently this is not an easy thing for the EPO to set up.