By decisions dated 25 March 2009 1 and 27 October 2009 2, the Administrative Council of the European Patent Organi- sation amended Rule 36(1) EPC and Rule 161 EPC with effect from 1 April 2010.

The EPO has already issued information about these amendments in Notices dated 20 August 2009 3, 15 October 2009 4 and 26 October 2009 5. Sections A-IV, 1 and C-VI, 3.5.1 of the revised Guidelines for Examination in the EPO, which came into force on 1 April 2010, moreover, provide a detailed explanation of EPO practice under the amended provisions. Information is also set out under II.6 in the revised Notes on EPO Form 1200, for entry into the European phase (EPO 1200 Notes 07.10). A presentation on the amendment of Rule 36(1) EPC has furthermore been available on the EPO's website since the end of April 2010. 6

Due to the fact that the communication under Rule 161(1) EPC is issued by the examining division, the EPO has recently received numerous enquiries concerning

1 CA/D 2/09 of 25 March 2009, OJ EPO 2009, 296 as well as CA/D 3/09 of 25 March 2009, OJ EPO 2009, 299. 2 CA/D 20/09 of 27 October 2009, OJ EPO 2009, 582. 3 Notice from the European Patent Office dated 20 August 2009 concerning amended Rule 36 (1) and (2) EPC (European divisional appli- cations) and consequential amendments to Rules 57(a) and 135(2) EPC, OJ EPO 2009, 481. 4 Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Implementing Regulations to the European Patent Convention, OJ EPO 2009, 533.

5 Notice from the European Patent Office dated 26 October 2009 on the establishment of the date of the Examining Division's first communi- cation for calculation of the time limit under Rule 36(1)(a) EPC as from 1 April 2010, OJ EPO 2009, 601. 6 http://www.epo.org/patents/law/legal-texts/epc/ changes-2010.html.

the relevance of this communication for the calculation of the time limit under Rule 36(1) EPC. In addition, users have sought guidance with regard to the different communications under Rule 161 EPC.

I. Communication under Rule 161 EPC: not a "communication" within the meaning of amended Rule 36(1) EPC

1. A "communication" within the meaning of amended Rule 36(1) EPC causes the time limit for the voluntary or mandatory filing of divisional applications to start, provided it is the first communication from the examining division or the exam- ining division raises a non-unity objection for the first time in said communication. Such a communication is understood to be a substantive communication which sets out the examining division's opinion as to whether the application or invention to which it relates meets the require- ments of the Convention. Even though amended Rule 36(1) EPC does not expli- citly refer to a substantive communica- tion, it derives from the legislative history that the applicant should be allowed to file a divisional application up to twenty- four months after having been informed of the examining division's opinion with regard to compliance of the application with the EPC.

2. A communication under Rule 161 EPC (both in its amended form as well as in the version applicable until 31 March 2010), despite emanating from the examining division in compliance with Rule 10 EPC, is not a substantive communication within the meaning of amended Rule 36(1) EPC and there- fore does not cause the time limit for the filing of voluntary or mandatory divisional applications to start. 7 Rather, a communication under Rule 161

7 A-IV, 1.1.1.2 contains an exclusive list of events from which the period for voluntary division is calculated; see also the note published on the EPO website on 14 June 2010 regarding the clarifying amendment of part A-IV, 1.1.1.2 of the Guidelines.

EPC, which fulfils an EPO obligation under the PCT 8, is essentially a formal communication without its own substan- tive content (see II infra). This communi- cation refers to the written opinion of the International Searching Authority (WO- ISA), the international preliminary exam- ination report (IPER) or explanations made in a supplementary international search report (SISR), but does not yet contain the examining division's own opinion as to whether the application or the invention to which it relates meet the requirements of the EPC. Instead, the purpose of the communication under Rule 161 EPC is to prepare and acceler- ate the subsequent discussion with the examining division, the results of the international phase having already been taken into account by the applicant.

II. Different communications under Rule 161 EPC (EPO Forms 1226A, B und C)

3. Under Rule 161(1) EPC, the EPO invites the applicant to correct any defi- ciencies noted in the WO-ISA, the IPER or the SISR and to amend the descrip- tion, claims and drawings within a period of one month from the respective communication. Where the WO-ISA or, where applicable, the IPER or the SISR explanations was/were negative and the applicant has failed to file or maintain amendments or file comments upon entry into the European phase, EPO Form 1226A is issued. The applicant is required to respond to this communica- tion within the one-month time limit or else the application is deemed to be withdrawn (Rule 161(1), sentence 3, EPC). The applicant's attention is drawn to the option of further processing of the application (Article 121 and Rule 135 EPC) or requesting a decision pursuant to Rule 112(2) EPC.

4. Where the WO-ISA, the IPER or the SISR explanations prepared by the EPO was/were positive (in accordance with the principles set out in B-XII, 3.9 of the Guidelines) or the applicant has already filed amendments upon entry into the

8 See Article 28 in conjunction with Rule 52.1(a) PCT and Article 41 in conjunction with Rule 78.1(a) PCT.

European phase or maintained amend- ments carried out during the international phase and/or filed comments, which can be considered to be a reply, (and has indicated that such amendments and/or comments are to form the basis for further prosecution of the application) no invitation is issued under Rule 161(1) EPC. Rather, the applicant's attention is drawn with EPO Form 1226B to the possibility of commenting on the WO-ISA, IPER or SISR and amending the application (see Rule 137(2) and (3) EPC). The applicant is not required to respond to this communication.

5. In deviation from the procedure set out in points 3 and 4, if the WO-ISA or IPER was issued before 1 April 2010, the applicant may receive EPO Form 1226A even if the WO-ISA or IPER was posi- tive. If the one-month time limit specified under Rule 161(1) EPC for these cases then expires without a reaction from the applicant, the EPO will check whether the WO-ISA or IPER was positive or negative. Only in the case of a negative WO-ISA or IPER will a communication under Rule 112(1) EPC concerning loss of rights be issued. In these transitional cases, applicants may consequently receive EPO Form 1226A, which appears to require them to respond to a positive WO-ISA or IPER, when in fact no loss of rights will occur if the applicant does not react.

6. Where the EPO draws up a supple- mentary European search report on a Euro-PCT application, the applicant's attention is drawn with EPO Form 1226C under Rule 161(2) EPC to the possibility of amending the application before the start of the supplementary search. This communication corresponds to the communication under Rule 161 EPC in the version applicable until 31 March 2010; in this regard the applicable law is unchanged.

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