European Round-Table on Patent Practice (EUROTAB)
The European Patent Office (EPO) in its function as International Preliminary Examining Authority (IPEA) has further improved its practice under Chapter II PCT, following the entry into force on 1 July 2014 of new Rule 66.1ter and amended Rule 70.2(f) PCT. Pursuant to these provisions any IPEA will conduct a "top-up" search to find prior art that was published or became available to the said Authority after the date on which the international search report was established. The introduction of such a "top-up" search therefore adds to the value of the international preliminary examination procedure before the EPO as IPEA.
2.1 The EPO in its function as IPEA will, as a rule, conduct a "top-up" search at the start of the Chapter II PCT procedure. An express request by the applicant is not required as this new service forms part of the procedure.
2.2 The "top-up" search performed by the EPO will mainly focus on finding intermediate prior art documents that have become public since the international search was performed and that could become relevant under Article 54(3) EPC if the application enters the regional phase before the EPO. It will also cover prior art that was cited in national proceedings for the same application if such documents became available to the EPO in its function as IPEA.
2.3 The "top-up" search will not extend beyond the subject-matter searched by the International Searching Authority (ISA). It will be conducted for all international applications undergoing examination under Chapter II PCT, unless the EPO in its function as IPEA considers that such a search would serve no useful purpose. In particular, in cases where the EPO in its function as ISA does not cite any documentary evidence as to the relevant state of the art (e.g. in cases of "notorious knowledge" in the field of computer-implemented inventions) the EPO in its function as IPEA will not perform a "top-up" search, since it would be considered to serve no useful purpose. Furthermore, a "top-up" search will not be conducted with regard to subject-matter that is excluded from international preliminary examination (Article 34(4) PCT).
2.4 As a general rule, a "top-up" search will be conducted for all the claims forming the basis for the procedure under Chapter II PCT. Where the EPO in its function as IPEA considers that the international application does not comply with the requirement of unity of invention, the applicant will first be invited either to restrict the claims or to pay additional fees (Article 34(3) PCT). The "top-up" search will then be conducted for all inventions for which additional fees have been paid.
2.5 In addition, where the international application is amended and the basis for the amendments is not sufficiently explained in a letter according to Rules 46.5(b) and 66.8 PCT or the amendments go beyond the disclosure of the international application as originally filed, the EPO in its function as IPEA will limit the "top-up" search to the scope of the claims forming the basis of the international preliminary examination report.
2.6 If relevant documents under Rule 64.1 PCT are found during the "top-up" search that give rise to objections, in particular with regard to novelty and inventive step, the EPO in its function as IPEA will issue a second written opinion or conduct a telephone consultation according to present practice, pursuant to the Notice from the European Patent Office dated 31 August 2011 (OJ EPO 2011, 532).
In particular, in the cases mentioned in that Notice under point 2.2, where the applicant does not file a substantive reply to the written opinion established by the EPO as ISA or to the first written opinion established by the EPO as IPEA, a second written opinion will only be issued if the "top-up" search reveals new relevant prior art; otherwise the IPER will be issued directly.
2.7 Any relevant documents found during the "top-up" search will be listed in the international preliminary examination report, with the exception of documents that become irrelevant in view of amendments or arguments filed in reply to the written opinion.
2.8 In the event that only intermediate prior art documents (P) or potentially conflicting applications (E) are found during the "top-up" search and there are no other objections, a second written opinion will only be issued if the documents would give rise to objections under Article 54(3) EPC in the regional phase before the EPO. Otherwise, an IPER will be issued.
The present Notice will enter into force on 1 July 2014.