To enhance the search products provided to applicants under both the European and PCT filing routes, the European Patent Office (EPO) is launching a new service on 1 April 2017 which will further improve the quality and transparency of its procedures.
At present, if there is a finding of lack of unity at the search stage, applicants receive the opinion on patentability (ESOP or WO‑ISA) only together with the "final" European or international search report (Rules 62(1) EPC and 43bis.1 PCT).
As from 1 April 2017, the EPO will start providing applicants with a provisional opinion on the patentability of the invention (or unitary group of inventions) first mentioned in the claims. This will be sent together with the invitation to pay further/additional search fees and the partial search results (see Rules 64(1) and 164(1)(a) EPC, and Article 17(3)(a) PCT).
This additional service will be provided for Euro-direct applications, Euro-PCT applications for which a supplementary European search under Rule 164(1) EPC is performed, and applications in respect of which the applicant has waived the communication under Rule 70(2) EPC. It will also be provided for international applications for which the EPO is acting as International Searching Authority (ISA).
As with international applications (cf. Rule 40.1 PCT), for European patent applications too applicants will in future be systematically informed about the reasons for the non-unity findings together with the invitation to pay further search fees.
The provisional opinion (EPO Form 1707) will be for information only. A reply addressing the points raised in the provisional opinion is not required and will not be taken into account when the extended European search report (EESR) is issued. Only the EESR requires a response under Rule 70a EPC.
In accordance with the same principle, any comments under Article 19 PCT, informal written comments, amendments and/or arguments under Article 34 PCT, and replies under Rule 161 EPC must be submitted only after the "final" international search report and WO‑ISA have been issued.
The provisional opinion accompanying the partial search results will be available to the public via online file inspection.