Euro-PCT applications: claim amendment and other issues

Recent years have seen numerous changes to the rules governing procedure within the European Patent Office (EPO).

In particular, there has been a trend towards front-loading of procedure in the prosecution of European patent applications, with decisions on claim amendment having to be made much sooner than was previously the case. This paper examines some of the issues that arise from the current rules, and the considerations that have to be given to claim amendment, with particular reference to PCT applications entering the regional phase in the EPO.

1. Entry to the regional phase

The deadline for entering the European regional phase is 31 months from the earliest filing/priority date. The application must be filed in English, French or German. The only mandatory action in every case in order to enter the regional phase is payment of the requisite fees:

• filing fee;
• search fee (if the EPO was not the International Searching Authority): this is reduced when the International Search was performed by one of a number of specified ISAs, including the USPTO;
• examination fee: unless less than six months has elapsed since publication of the International Search Report (though we would normally pay this fee anyway, as a precaution – it will be refunded should the application not proceed to substantive examination);
• designation fee: payable at the same time as the examination fee;
• excess claims fees: see Section 2 below;
• excess page fees: see Section 3 below;
• third year annuity: only due at this stage if more than two years has passed since the PCT filing date, e.g. if no priority is claimed or if the PCT was filed shortly after the priority application. In the majority of cases, however, this fee is not due at the point of entry to the regional phase (and, indeed, cannot be paid at that point, as it may only be paid within the three months preceding the due date).

In contrast to earlier practice, only a single designation fee is paid, and this results in all countries party to the European Patent Convention (“Contracting States”) being designated in the application (see Box 1). It is important to note, however, that the countries that are covered by the EPO application are those that were Contracting States of the EPC on the date of filing of the PCT application, and not at the date of entry to the regional phase.

2. Excess claims fees

In Europe, excess claims fees are payable for the 16th and each subsequent claim. Note that there is no distinction between dependent and independent claims, nor between singly dependent and multiply-dependent claims. It is simply the number of claims that is taken into account.

The statutory provision relevant to PCT applications entering the regional phase is Rule 162 EPC:

(1) If the application documents on which the European grant procedure is to be based comprise more than fifteen claims, claims fees shall be paid for the sixteenth and each subsequent claim as laid down in the Rules relating to Fees within the period under Rule 159, paragraph 1.

The size of these fees is such that they magnify greatly the overall cost of entering the regional phase. It is therefore customary to reduce the number of claims, e.g. by the use of multiple dependencies and/or cancellation of less significant claims. As an aside, please note that care must be taken when introducing multiple dependencies into claims that one does not thereby create combinations of features that were not disclosed in the original PCT application. EPO examiners commonly raise objections under Article 123 (2) EPC1 when this happens. The nominal due date for payment of the excess claims fees is the same as for the other fees due on entry to the regional phase, namely 31 months from the earliest priority date ("the period under Rule 159, paragraph 1"). However:

(2) If the claims fees are not paid in due time, they may still be paid within six months from a communication concerning the failure to observe the time limit. If within this period amended claims are filed, the claims fees due shall be computed on the basis of such amended claims. Under paragraph (2) above, amendment of the claims and payment of the excess claims fees does not have to be carried out on entry to the European regional phase. The Rule 161 communication (see section 4) includes an invitation to pay the excess claims fees. Hence, those fees can be paid when responding to that communication, and will be calculated on the basis of any claim amendments filed in response to that communication.

A communication under Rule 161 issues even if an amendment has been filed and/or excess claims fees paid on entry to the regional phase. If a further amendment is submitted in response to the Rule 161 communication, and the effect of that amendment is to reduce the number of claims, then Rule 162(3) comes into play: 

(3) Any claims fees paid within the period under paragraph 1 and in excess of those due under paragraph 2, second sentence, shall be refunded. It is important to note the consequence of failure to pay the excess claims fees. This is set out in Rule 162(4) EPC:

(4) Where a claims fee is not paid in due time, the claim concerned shall be deemed to be abandoned. Thus, the effect of non-payment of the fees due in respect of the sixteenth claim onwards is that those claims are struck out of the application. It is not possible for the applicant at a later stage to select for examination fifteen claims from those previously filed; instead, Claim 16 and any subsequent claims are, in effect, deemed never to have been filed. The subsequent Supplementary European Search will cover only the subject matter of Claims 1 to 15. Generally speaking, if the features of claims deemed to be abandoned due to non-payment of excess claims fees are found elsewhere in the specification (i.e. in the description and drawings), then it may be possible to reintroduce those features in a subsequent amendment (during substantive examination), provided that the amended claims relate to subject-matter that has been searched.

3. Excess page fees

In addition to excess claims fees, additional fees are also due for pages of the application in excess of 35. The calculation is based on the documents that make up the application at the point of entry to the regional phase and includes one page for the abstract, plus the actual number of pages of description, claims and drawings. Note that the sequence listing, if any, is not included in the calculation. It is only for very lengthy specifications that this becomes significant. As noted above, it is customary, for a PCT application with a large number of claims, to reduce that number in order to reduce the number of excess claims fees that are due.

However, for reasons that are discussed below (see Section 5), we normally recommend that any amendment is filed later, in response to the communication under Rule 161 EPC, and not at the point of entry to the regional phase. This does sometimes mean that a few additional page fees are incurred, but this added cost is not normally substantial. Of course, if the existing claim set extends over a very large number of pages, then amendment to avoid wasted excess page fees may be appropriate.

4. Rule 161 communication

Soon after entry to the European regional phase and before any supplementary search is carried out, a communication is issued under Rule 161 EPC:

(1) If the European Patent Office has acted as the International Searching Authority and, where a demand under Article 31 PCT was filed, also as the International Preliminary Examining Authority for a Euro-PCT application, it shall give the applicant the opportunity to comment on the written opinion of the International Searching Authority or the International Preliminary Examination Report and, where appropriate, invite him to correct any deficiencies noted in the written opinion or in the International Preliminary Examination Report and to amend the description, claims and drawings within a period of six months from the respective communication. If the European Patent Office has drawn up a supplementary international search report, an invitation in accordance with the first sentence shall be issued in respect of the explanations given in accordance with Rule 45bis.7(e) PCT. If the applicant does not comply with or comment on an invitation in accordance with the first or second sentence, the application shall be deemed to be withdrawn.

Rule 161 (1) applies where it was the EPO that acted as the International Searching Authority (or the Supplementary International Searching Authority). This is normally the case for our UK clients, and may be the case for applicants from outside Europe, if the EPO is a competent ISA and they opted to have the EPO act in that capacity. If the Written Opinion of the International Searching Authority (WOISA) identified any deficiencies in the application, it is mandatory to file a substantive response dealing with all of the issues raised in that document. Note that failure to respond results in the application being deemed to be withdrawn. Where the WOISA was entirely positive (i.e. the rather rare eventuality that the WOISA contains absolutely no objections), amendments may be filed but a response is not mandatory.

In addition to amendments intended to address rejections in the WOISA, an amendment filed in response to the Rule 161 communication normally has the effect of reducing the number of claims, and the excess claims fees that are then due (based on the number of claims in the amended claim set) are paid at the same time as the response is lodged.

(2) Where the European Patent Office draws up a supplementary European search report on a Euro-PCT application, the application may be amended once within a period of six months from a communication informing the applicant accordingly. The application as amended shall serve as the basis for the supplementary European search. Rule 161(2) applies where the EPO was not the International Searching Authority or the Supplementary International Searching Authority. This is the more common situation for applicants outside Europe. The Rule 161(2) EPC communication contains an invitation to amend the application, but no response to the WOISA is required. Amendments filed under Rule 161(2) most commonly include a reduced number of claims, in order to reduce the excess claims fees that are payable, but it is perhaps more important to take this opportunity to address more substantive issues, particularly those referred to in Sections 6 and 7 below.

In both cases, the period for response to the Rule 161 communication is six months. Practice Pointer: If the EPO has acted as ISA, then the applicant is required to file a substantive response in response to the Rule 161 communication. Where the EPO has not acted as ISA, then it carries out a supplementary search, and it is only in response to that search that a substantive response must be filed. This means, in effect, that in the former case examination of the application commences sooner, forcing the applicant to commit to claim amendments at an earlier stage and also most likely resulting in earlier issuance of the first communication from the Examining Division. For these reasons, we normally recommend that overseas applicants, where they have a choice of ISA, do not opt for the EPO.

5. When to amend

When the European regional phase is entered, an application will normally proceed initially either on the basis of the original claims of the PCT application, or on the basis of any amendments which were filed under Article 19 or Article 34 PCT during the international phase. It is possible to file an amendment at the point of entry to the regional phase, but there is generally nothing to be gained by doing so (apart perhaps for a small saving in excess page fees (see Section 3)) and in some circumstances there is a definite disadvantage. The EPO uses three different versions of the Rule 161 communication: Forms 1226A, 1226B and 1226C.

In the more common situation for overseas applicants, in which the EPO did not act as ISA, an amendment is most commonly filed in response to the Rule 161 communication, and there is no requirement for a substantive response to the WOISA. The Rule 161 communication issues (as Form 1226C) irrespective of whether an amendment was filed on entry to the regional phase, and the EPO normally does not continue the procedure until after the deadline for response to that communication has passed. Where the EPO did act as ISA, there is a disadvantage in filing an amendment prior to issuance of the Rule 161 communication. If no such amendment is filed, the Rule 161 communication is issued on Form 1226A. That version of the communication requires that a response to the WOISA be filed within six months, and amendments may be made as of right. If an amendment is filed upon entry to the regional phase, perhaps simply to reduce the number of claims, this is taken to be the applicant's substantive response to the WOISA and the Rule 161 communication issues on Form 1226B. This draws attention to the possibility of a substantive response, but does not require it. It is tempting, therefore, not to respond.

The pitfall that this can lead to, however, is that the next opportunity to amend arises in response to the first communication of the Examining Division and at that stage an amendment cannot be made as of right, but only with the consent of the Examining Division.

Practice Pointer: File amendments after entry to the regional phase, in response to the Rule 161 communication, and not at the point of entry to the regional phase. For cases on which the EPO was not the ISA, there is no advantage in filing the amendment sooner. For cases on which the EPO was the ISA, filing the amendment early, and not making a substantive response to the Rule 161 communication, risks problems with subsequent amendments. Most importantly, do not file amendments at this stage solely to reduce the overall number of claims, but consider the substantive issues, particularly those referred to below, in Sections 6 and 7.

In addition, delaying filing claim amendments in response to the Rule 161 EPC communication rather than on entry to the European regional phase postpones the payment of excess claims fees (see section 2).

6. Ordering of claims: unity of invention

In Europe, an objection of lack of unity of invention can be raised at either the search or the examination stage. See Article 82 EPC:

The European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.

Rule 164(1) EPC is applicable when this objection is raised by the Search Division in relation to a supplementary European Search Report on a Euro-PCT application:

If the European Patent Office considers that the application documents which are to serve as the basis for the supplementary European search do not comply with the requirement of unity of invention, it shall:

• draw up a partial supplementary search report on those parts of the application which relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims;
• inform the applicant that, for the supplementary European search report to cover the other inventions, a further search fee must be paid, in respect of each invention involved, within a period of two months; and
• draw up the supplementary European search report for the parts of the application relating to inventions in respect of which search fees have been paid.

If the Search Division considers that the claims relate to more than one invention, a search report will be drawn up based on the first invention covered by the claims. Whilst one or more additional search fees may subsequently be paid in order to have one or more further inventions searched, there is no opportunity to have just one invention searched unless that is the invention “first mentioned in the claims”. It may therefore be important to make sure that the claims relating to the subject matter of greatest importance are listed first. Very often, an objection of lack of unity of invention will have been raised by the International Searching Authority (e.g. the USPTO) during the international phase of the application. However, when conducting its supplementary search, the EPO is not bound by the findings of the ISA and its analysis of unity may lead to a very different conclusion to that reached by the ISA. It is therefore impossible to predict with certainty the view that the Search Division will reach, and whilst one may, for instance, file amended claims in which the invention identified by the ISA is placed first, there is no guarantee that the Search Division will consider that claim at least to be unified and issue the supplementary search report in respect of it.

A common occurrence is that the Search Division will find a lack of unity a posteriori, that is to say it will find the inventive concept common to all embodiments covered by Claim 1 to lack novelty, and therefore that those embodiments are not "so linked as to form a single general inventive concept". An objection under Article 82 therefore arises, and the search examiner will review the claims to identify the invention "first mentioned in the claims". This may be the embodiment defined by a dependent claim, or it may the embodiment first mentioned in a dependent claim that lists several embodiments as alternatives. Note that this analysis by the search examiner is conducted without reference to the applicant or its
representative.

It is therefore important when amending the claims to pay attention not only to the order in which independent claims are set out, but also the order in which dependent claims are presented, and the order in which alternatives are presented within any one dependent claim. To illustrate the point, consider the hypothetical claims set out in Box 2.

The claims may have been structured in this way because, at the time of filing the polypeptide of greatest interest (i.e. the subject-matter that, at that time, the applicant most strongly wished to prosecute to grant) was that of SEQ ID NO:1. However, suppose that things have changed in the interim and it is now SEQ ID NO: 3 that is most important. Suppose also that the examiner finds the inventive concept of Claim 1 to lack novelty, and hence the claim to lack unity of invention. The examiner will then proceed to identify the invention "first mentioned in the claims". In the illustrated example, this would lead him to conclude that there are four distinct inventions set out in the claims, namely the polypeptides with SEQ ID NOS: 1, 2, 3 and 4. The first of these that is mentioned in the claims is SEQ ID NO: 1 and so it is that one that will be searched.

The subject-matter now of greatest interest, SEQ ID NO: 3, will not have been searched, and the only way that subject matter can be pursued in the application will be by paying an additional search fee.

So how could this situation have been avoided? The answer would have been to re-order the claims as shown in Box 3 or Box 4. These show two alternative ways of ensuring (so far as it is possible to do so) that if the examiner opts to search a subsidiary invention, then the one he will choose will be that which it is desired to pursue. In the Box 3 approach, original Claims 2 and 3 are combined, and SEQ ID NO: 3 is placed first in the list. In the Box 4 approach, SEQ ID NO: 3 is promoted to Claim 2, in place of SEQ ID NO: 1. In these claim sets, the dependent claims focus on the product of greatest interest, with (Box 3) that product being set out in the first dependent claim or (Box 4) that product being the placed first in a list of alternative embodiments.

Such a neat solution is, of course, not always so easy to achieve in practice, but in this hypothetical example the sequence of claims focusing on the subject-matter of interest is easy to identify, and the benefit of re-ordering the embodiments in original Claim 3 is predictable.

Note that, whilst a non-unity opinion issued by the Search Division can be contested when responding to the first examination report, if the opinion is maintained, examination can proceed only on the basis of an invention that has been searched. Any remaining subject matter can only be pursued by means of one or more divisional applications.

Practice Pointer: Think hard about possible objections of lack of unity, and structure the claims so far as possible in such a way that the invention that it is most desired to prosecute to grant appears first. In doing this, consider not only the independent claims, but also the
dependent claims.

7. Multiple independent claims

Under Article 84 EPC, there is a general requirement for claims to be "concise". EPO examiners have always interpreted this to mean not only that an individual claim must be concisely worded, but also that the claim set as a whole should be concise. This was used as a ground for objection to cases in which claim scope was mapped out by a plurality of overlapping independent claims.

Rule 43 (2) EPC provides a more explicit basis for such an objection:

(2) Without prejudice to Article 82 [unity of invention], a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves one of the following:

• (a) a plurality of interrelated products,
• (b) different uses of a product or apparatus,
• (c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim.

Option (a) can be invoked as justification for inclusion of several product claims, e.g. a novel compound, an intermediate useful in the synthesis of the compound, a pharmaceutical composition comprising the compound etc. Option (c) can often be used to justify the use of a plurality of claims directed to alternative embodiments of an invention, rather than a single claim that might be unduly convoluted and therefore not itself "concise".

The risk of including multiple independent claims that cannot be justified under Rule 43(2) arises from Rule 62a EPC:

(1) If the European Patent Office considers that the claims as filed do not comply with Rule 43, paragraph 2, it shall invite the applicant to indicate, within a period of two months, the claims complying with Rule 43, paragraph 2, on the basis of which the search is to be carried out. If the applicant fails to provide such an indication in due time, the search shall be carried out on the basis of the first claim in each category. An objection under Rule 43(2) may be raised by the Search Division. If this happens, the EPO will provide an opportunity for the applicant to select the claims to be searched. Note that the applicant is not given the opportunity to amend the claims at this stage. Instead, the applicant must select the claim of each category that is to be searched (and those selected claims must share the same inventive concept). If the applicant fails to respond to the invitation, the EPO will simply search the first claim of each category (again assuming those claims to meet the requirements of Article 82 EPC).

Unless the Examining Division later considers that the objection was unjustified, the application must be limited to the searched subject matter and unsearched subject matter may not be reintroduced into the application at a later date. The unsearched subject matter can only be pursued through one or more divisional applications. See Rule 62a(2) EPC:

The Examining Division shall invite the applicant to restrict the claims to the subject-matter searched unless it finds that the objection under paragraph 1 was not justified.

In cases where multiple independent claims relate to significantly different subject matter, it is often difficult to predict whether an objection under Article 82 (lack of unity of invention – see section 6) or Rule 43(2) is more likely to be raised by the Search Division. The effects of these two objections are very different, and it is therefore important to amend claims
appropriately before the application is searched to limit the likelihood of either of these objections being raised. Practice Pointer: Where it is possible to do so, avoid the use of multiple independent claims in the same category. Where such claims are retained, ensure that the most important occurs first. 

8. Basis for amendments

Any amendments made to the claims or description must not go outside the scope of the application as originally filed, and basis for the amendments must be clearly indicated to the EPO. See Rule 137(4) EPC:

(4) When filing any amendments referred to in paragraphs 1 to 3, the applicant shall identify them and indicate the basis for them in the application as filed. If the Examining Division notes a failure to meet either requirement, it may request the correction of this deficiency
within a period of one month.

In the case of a Euro-PCT application, "the application as filed" is the PCT application. When any amendments are submitted to the EPO, either in response to a Rule 161 EPC communication (see section 4) or in response to an examination report, the response must explicitly state where the amendments have basis in the application as originally filed.

9. Method of treatment claims

Claims directed to the treatment or diagnosis of the human or animal body by surgery or therapy are not allowable in Europe. Article 53 EPC: European patents shall not be granted in respect of:

• (c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

and Article 54 EPC:

• (4) Paragraphs 2 and 3 [absolute novelty] shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in Article 53(c), provided that its use for any such method is not comprised in the state of the art.
  5) Paragraphs 2 and 3 shall also not exclude the patentability of any substance or composition referred to in paragraph 4 for any specific use in a method referred to in Article 53(c), provided that such use is not comprised in the state of the art.

Though a claim to the method is not allowable, Article 53(c) EPC states that it is possible to claim the substance or composition for use in such a method. In addition, Articles 54(4) and (5) EPC lay out the law surrounding so-called first and second medical use claims. These may be used to claim a compound which, though known per se, was not previously known as a medicament at all (first medical use), or was previously known to be a medicament but not for the treatment of a particular illness or disease (second medical use).

The acceptable form of second medical use claim (more properly "use-limited product claim"):

“Compound Y for use in the treatment of disease X”

replaces the previously used "Swiss-type" claim:

“The use of compound Y in the manufacture of a medicament for the treatment of disease X”

Swiss-type claims are no longer allowable in applications having filing and/or priority dates later than 29 January 2011.

10. Filing of search results

For all European patent applications filed (or PCT patent applications entering the regional phase) on or after 1 January 2011, it is necessary to file a copy of any search results obtained in relation to the priority application. See Rule 141 EPC:

(1) An applicant claiming priority within the meaning of Article 87 [right to priority] shall file a copy of the results of any search carried out by the authority with which the previous application was filed together with the European patent application, in the case of a Euro-PCT application on entry into the European phase, or without delay after such results have been made available to him. According to Rule 141(1) EPC, search results should be filed on entry to the European phase, or as soon after that as they become available. Note, however, that under Rule 141(2) EPC, this requirement does not apply where the priority application was filed with one of those patent offices (e.g. the USPTO) that shares such information automatically with the EPO:

(2) The copy referred to in paragraph 1 shall be deemed to be duly filed if it is available to the European Patent Office and to be included in the file of the European patent application under the conditions determined by the President of the European Patent Office.

In any event, during substantive examination the Examining Division has the power to request information on prior art from the applicant:

(3) Without prejudice to paragraphs 1 and 2, the European Patent Office may invite the applicant to provide, within a period of two months, information on prior art within the meaning of Article 124, paragraph 13.

The extent to which Examining Divisions take advantage of this possibility is varied, and there is no uniform practice across the EPO. Where such an invitation is issued, failure to respond in a timely manner results in deemed withdrawal of the application. Note that it is only prior art information that the applicant is required to provide; there is no obligation to submit copies of office actions or decisions issued by other patent offices, or other correspondence.

NB: We have endeavoured to ensure that the information in this note is accurate and up-to-date. However, this note is for general guidance only, and is not a substitute for professional advice.

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