Navigating Claim Amendments after the EPO Rule 161/Rule 162 Communication

After an international (PCT) patent application enters the European phase, the European Patent Office (EPO) issues a communication under Rules 161 and 162 of the European Patent Convention (EPC). This communication sets a six-month deadline for the applicant to amend the application, provide patentability arguments, and address any outstanding claims fees.

This article will focus on the issue of claim amendments. We assume readers have a basic understanding of the Rules 161 and 162 communication. If not, please refer to our article on navigating the Rule 161/Rule 162 communication.

Considerations for claim amendments

In response to the Rule 161/Rule 162 communication, applicants may amend any part of the application. However, the primary focus is often on amending the claims, as they determine the calculation of excess claims fees and form the basis for the next stage of European prosecution. It is important to ensure that all relevant subject matter the applicant wants the European examiner to consider is included in the claim set.

The EPO charges substantial fees for claims beyond the 15th. Therefore, during the six-month period, one of the objectives is to minimise or avoid excess fees. This may involve revising or consolidating claims, not only to reduce costs but also to put forward the subject matter the applicant wishes to pursue. Additionally, claim amendments can help address objections, such as lack of unity (if multiple inventions are claimed) or clarity issues (if multiple independent claims exist in the same category).

It is also important to appreciate that once it has carried out a search, the European Patent Office will object to claim amendments to cover unsearched subject matter, requiring any such amendments to be pursued in a divisional application. Unless the EPO was the international searching authority, the first act the EPO will carry out in the European regional phase is a supplementary search. In this case, it is important that the claims which are searched include key subject matter to avoid the risk of a frustrating later objection that claim amendments relate to unsearched subject matter.

Overall, strategic claim amendments should balance budget constraints with the need to maximise, or at least maintain, the desired scope of protection in Europe and to get relevant subject matter searched. Below, we outline essential factors to consider when amending claims during this period.

1. Combining claims

Claims can be combined to make one feature optional relative to another, simply by using terms like ‘optional’, 'typically' etc. For example,

claim X: a system comprising a biasing means.

claim Y: a system according to claim x, wherein the biasing means is a spring.

New combined claim: a system comprising a biasing means, optionally wherein the biasing means is a spring.

This strategy effectively reduces the total number of claims while preserving the subject matter for the next stage of prosecution and extending the amount of subject matter which will be searched (where applicable).

It is important to note that optional features do not limit the scope of the claims. As a result, EPO examiners may overlook these features when assessing patentability or raise clarity objections regarding the scope of protection they define. While combining claims or making features optional can help manage claims fees, this approach should not be taken to extremes. Excessive consolidation or the inclusion of too many optional features may lead to objections, particularly if the claimed scope becomes ambiguous. If a clarity objection is raised, typically, the applicant is given an opportunity to address this issue at a later stage in the process.

In general, combining claims allows the applicant to reduce claim numbers efficiently without inadvertently abandoning any subject matter before the substantive search or examination.

2. Deleting claims

In some cases, it may be appropriate to delete certain claims. For example, if the EPO raised substantive objections during the international search phase and the applicant believes that counterarguments alone will not overcome these objections, they may choose to cancel certain claims. Additionally, there may be strategic reasons for cancelling those claims, such as expediting prosecution for a swift grant, while filing a divisional application later to pursue the cancelled subject matter.

3. Multiple dependent and independent claims

If the applicant previously had a different International Searching Authority (ISA), such as the USPTO, responding to the R161/R162 communication is their first and final opportunity to present claims specifically for the European examiner before the supplementary European search is conducted. In Europe, multiple dependencies are allowed: a dependent claim may refer to one or more independent and/or dependent claims. Additionally, a dependent claim can reference independent claims from different categories as alternatives. Whether referencing a single claim or multiple claims, the EPO will count such a claim as one. Therefore, utilising multiple dependencies can be a useful tool for the applicant to include all the desired subject matter, especially various combinations of features, without increasing the total number of claims—and in some cases, even reducing it. However, in such cases, careful consideration should be given to ensure that all claimed combinations of features are supported by the international application as originally filed.

In cases where the EPO acted as the ISA, applicants can still leverage these tools to minimise the number of claims while preserving the subject matter. It is important that the claims are supported by the original application AND do not introduce subject matter that was not previously searched during the international phase by the EPO.

Additionally, in Europe, the number of independent claims per category (i.e. product, process, apparatus, or use) is generally limited to one. There are three exceptions to this rule: a plurality of interrelated products, different methods and/or uses of a product, and alternative solutions to a specific problem. If multiple independent claims per category are retained and the exceptions do not apply, it is advisable to list the most important independent claim first in the claim set. In some cases, it may be appropriate to delete one or more of the multiple independent claims in the same category and file a divisional application to pursue them separately.

4. Unity of invention

If the EPO acted as the international search authority and identified multiple inventions in the application, it is mandatory to explain the unity of the invention and/or amend the claims to address this objection in response to the Rule 161/162 communication. Generally, at the Rule 161/162 stage, it is not possible to shift to subject matter that the EPO, as the international search authority, has not searched.

If another international search authority (e.g. USPTO) raised unity objections, the applicant may provide voluntary explanations. Additionally, careful consideration should be given to the ordering of the claims. In Europe, if the application contains multiple inventions, the examiner will typically search only the first invention mentioned in the claims. Therefore, it is important to ensure that the subject matter the applicant wishes the European search examiner to consider is listed first. For example,

Claim 1: a system comprising a biasing means.

Claim 2: a system according to claim 1, wherein the biasing means is [feature A].

Claim 3: a system according to claim 1, wherein the biasing means is [feature B].

If the US office conducted the international search and found prior art affecting novelty of claim 1, the embodiments in claims 2 and 3 may not be linked by a single inventive concept and could therefore be treated as different inventions. If the European examiner also finds claim 1 lacks novelty, they will proceed to search the first invention mentioned in the claims, which could lead them to search feature A in claim 2 and not feature B in claim 3. If feature B is of greater interest, the applicant can amend the claims at the Rule 161/162 stage to move feature B into claim 2 instead of feature A, thereby minimising the risk of ‘wrong’ subject matter being searched during the European phase.

While this example illustrates the concept, predicting unity objections and structuring claims appropriately to minimise the risk of undesired searches can be challenging. Therefore, we recommend discussing this issue with a European patent attorney rather than attempting to amend the claims on your own.

5. Exclusions

In Europe, there are several exceptions to patentability. Notably, a European patent cannot be granted for:

· plant or animal varieties or essentially biological processes for the production of plants or animals, or plants or animals exclusively obtained by means of an essentially biological process; or

• methods for treatment of... the human or animal body by surgery or therapy and diagnostic methods... practised on the human or animal body.

European examiners typically raise objections to subject matter that falls within these exclusions. However, in some cases, it is possible to re-draft claims related to medical uses in formats that may be acceptable to the EPO. Applicants often face the choice of either deleting the excluded subject matter or recrafting the claims in accordance with EPO practices. It is advisable to discuss these issues with a European patent attorney to determine the best strategy.

Conclusions

In this article, we have discussed various issues related to claim amendments during the six-month period established by the Rule 161/Rule 162 communication. Claims submitted at this stage will form the basis for the European search and/or examination, as well as determine the excess claims fees. Therefore, preparing a well-considered set of claims is vital. There is generally no uniform practice for amending claims at this stage; the merits of different approaches must be evaluated on a case-by-case basis.

Author: Julia Li

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