European Patent Office Practices

Over the last few years, there has been number of procedural changes at the European Patent Office (EPO) like,

• Clarification of the scope of protection prior to search (Rule 62a EPC and Rule 63 EPC),
• Mandatory responses to the international written opinion prepared by the EPO (Rule 161 EPC) and
• The European search opinion (Rule 70a EPC), and
• Only one opportunity to file voluntary amendments and mandatory provision of the basis for amendments (Rule 137 EPC).
• The two-year divisional deadline (Rule 36 EPC) and the restriction on searching inventions which have not been searched in the international phase (Rule 164 EPC).

Likewise, some of the most recent changes are:

1. PCT Direct 

This new scheme known as “PCT Direct” allows applicants, when filing a PCT application and designating the EPO as the international searching authority (ISA), to also respond to an EPO search opinion issued on the first application from which the PCT application claims priority. Notably, the first application need not be a European application but can also be a national application for which a search is carried out by the EPO.

A reply to the written opinion and a demand for international preliminary examination can still be filed if any objections remain.  Applicants can also increase their chances of achieving just a publicly available positive written opinion and avoid the need to file a demand for international preliminary examination at all.

The clear benefit of this new procedure, which is free to use, is that,

• Applicants have, an extra opportunity during the International PCT stage to overcome objections already raised by the EPO.  
• It is useful in determining the likelihood of success for applications before proceeding with the expense of entering the European regional phase or other national phases.

Taken in concurrence with the Patent Prosecution Highway (PPH) program, for countries which require a positive international written opinion or international preliminary report on patentability (IPRP) from the EPO or indeed schemes in other countries which take the written opinion of the EPO into account, the examination and grant of such corresponding family member applications can be accelerated.

1. Early Certainty from Search

The EPO has also introduced a new priority scheme for those with long-pending applications.

1. Initially, applications already being examined will be prioritized over newly filed applications.
2. Furthermore, all search reports and written opinions on patentability will be issued within six months of filing.
3. The granting of applications will also be accelerated for those applications on which a positive European search opinion is issued.

One of the most intriguing aspects of the “Early Certainty from Search” scheme is that now, under certain conditions, the processing of applications against which third-party observations are filed will be accelerated.  This also applies to patents in opposition proceedings and post-grant requests for limitation or revocation.  The two fundamental requirements are that the submissions are substantiated and not filed anonymously.