New Examination Schemes Announced by the European Patent Office

The European Patent Office (EPO) has been criticised for the large backlog of pending applications. It is not unusual for some European applications to take over ten years to reach a decision of allowance or refusal. The EPO has been looking at ways to improve this situation and has introduced two new schemes, the PCT direct scheme and the early certainty from search scheme. The PCT direct scheme is an initiative which will be launched on 1st November 2014. The key idea behind this scheme is to link the search report of a first filed European application with the international phase for a PCT application. If the EPO believes that the deficiencies identified in the search report of the European application have been addressed when the PCT application is filed then a positive International Preliminary Report on Patentability may be obtained and the application may proceed quickly to grant when it reaches the national phase. The PCT direct scheme requires applicants to file a European application and obtain the search opinion. The applicant must then file a PCT application claiming priority from the European application with the EPO as receiving office and designated as international searching authority. A response to the search opinion should be filed with the PCT application. The response to the search opinion can include amendments to the claims and arguments rebutting examiner’s objections and/or explaining the meaning of the amendments. The EPO examiners will establish the international search report and written opinion on the basis of the reply to the earlier search opinion, without direct reference to the first filing. Currently the PCT direct scheme requires that the PCT application is filed with the EPO as receiving office; however, it is intended to broaden this out in future. The EPO also announced the early certainty from search scheme which aims to “benefit companies and inventors seeking patent protection in Europe by ensuring timely delivery of all search reports and opinions on their applications, giving them a sound basis for their patenting strategies early on”. Under this scheme the EPO aims to issue all search reports and written opinions within six months of the European application being filed. This may enable a high quality search to be obtained quickly which should be useful for considering filing strategies. The EPO also intends to prioritise the completion of examination files it has already started over beginning work on new files and to expedite grants once a positive search opinion has been issued, this is intended to reduce the backlog of pending applications. Under the early certainty from search scheme the EPO will also prioritise processing of those cases where substantiated observations are filed by third parties who identify themselves, and also of oppositions and requests for limitation or revocation. This means that a third party can accelerate prosecution of your patent application by filing substantiated observations.

If you have any questions concerning these schemes, please get in touch with your usual contact at Swindell & Pearson Ltd or Christine Anglesea at [email protected]. Christine is based in the East Midlands, at our head office in Derby.