Notice of the President of the European Patent Office dated 2 November 2001 concerning rationalisation of international preliminary examination procedure at the EPO
1. The unremitting increase in its PCT search and examination workload has prompted the EPO to rationalise its procedures for international preliminary examination under Chapter II PCT with effect from 3 January 2002. Its objective is to avoid using examining capacity unnecessarily on cases where applicants are more interested in prolonging the international phase than in the outcome of preliminary examination, and to save it for core work in search and European substantive examination. To that end, procedures will be streamlined and international preliminary examination focused on its core elements.
2. This rationalisation exercise is an interim measure, until the steps already taken or still pending in the current PCT reform1 become fully effective. The reform is intended both to ease the burden on those PCT authorities most affected and at the same time ensure quality standards.
3. A central element in the streamlined procedure is that the result of the international search will serve as the basis for international preliminary examination, without involving the substantive examiner again (procedure without detailed substantive examination - see Section II below).
In addition, all the EPO's written opinions and preliminary examination reports (ie even when it is examining the application in detail) will focus on the core aspects, namely novelty, inventive step and industrial applicability (see Section IV below).
II. Procedure without detailed substantive examination
4. International preliminary examination at the EPO presupposes that the EPO also performed the international search. Introduction of BEST Office-wide means that the same examiner will carry out both search and substantive examination. BEST examiners will therefore, even at the international search stage, take due account of the main requirements of international preliminary examination under Article 33(1) PCT (novelty, inventive step, industrial applicability), reaching a provisional judgment which will later be set down in the first written opinion and the preliminary examination report.
5. If an applicant files amendments and/or arguments, or expressly requests detailed preliminary examination (when filing the demand or later), the international application will always be dealt with by the substantive examiner again. So the applicant determines whether the result of the international search becomes the basis for rationalised international preliminary examination, or whether a more detailed substantive examination is made.
These principles are illustrated below, using typical case types.
6. If the international search report contains at least one X or Y document, and the applicant has neither filed amendments under Article 19 or 34(2)(b) PCT nor expressly requested detailed preliminary examination, the international search report becomes the basis for a negative written opinion without involving the substantive examiner again.
If this rationalised written opinion prompts no response under Rule 66.3 PCT, the EPO will draw up an international preliminary examination report with the same content as that written opinion and refund two thirds of the preliminary examination fee (see Section III below).
7. If the applicant responds to the rationalised written opinion under Rule 66.3 PCT by requesting detailed substantive examination (see also point 5 above), the substantive examiner will exceptionally draw up a second opinion, unless in the light of that examination he can issue a positive examination report direct.
8. If the international search report does not cite X or Y documents, and the applicant has neither filed amendments under Article 19 or 34(2)(b) PCT nor expressly requested detailed preliminary examination, the EPO will issue a positive rationalised examination report without involving the substantive examiner again and refund two thirds of the preliminary examination fee (see Section III below).
III. Partial refund of the international preliminary examination fee
9. If the EPO has concluded the procedure under Chapter II PCT with a rationalised examination report, the EPO will, under Article 10d RFees as valid from 3 January 20022, refund two thirds of the international preliminary examination fee at the same time as it transmits the report.
10. The new system applies to all international applications on which the EPO draws up a rationalised international preliminary examination report as from 3 January 2002.
IV. Discontinuation of the 50% reduction in the European examination fee
11. If an international application is pursued before the EPO as elected Office (Euro-PCT route) and the Office has refunded two thirds of the international preliminary examination fee (see Section III above), the full European examination fee is payable under Article 12(2), second sentence, RFees as valid from 3 January 20023. Thus applicants will benefit from the 50% reduction in the European examination fee only if the EPO has drawn up a detailed international preliminary examination report on the Euro-PCT application.
V. Further rationalisation measures
12. In future, the time limits fixed by the EPO for filing amendments or arguments (Rule 66.2(d) PCT) will be at the lower limit of the range allowed. Discussions with the applicant (Rule 66.6 PCT) will take place only after he has responded to the first written opinion (and only by telephone). As a rule, only one single written opinion will be issued.
13. Detailed international preliminary examination at the EPO will in future focus on the claims defining the invention and the main requirements under Article 33(1) PCT (novelty, inventive step and industrial applicability). Other requirements (such as form, contents or clarity) under Article 34(2)(c)(ii) and Rule 66.2(a) PCT will be covered only if this is essential for preliminary examination purposes. PCT Forms 408 (first written opinion) and 409 (preliminary examination report) will normally give no information under Sections II (priority), VI (cited documents), VII (defects in the application) and VIII (comments on the international application).
14. Lastly, the EPO will in future make full use of Article 34(4) PCT, performing no international preliminary examination in such cases. The same applies to amendments, if the differences to the original application and the reasons for the amendments have not been made sufficiently clear (see also Rule 66.8(a) PCT).
1 See eg amended time limit for entering the European phase under Rule 107(1) EPC (OJ EPO 2001, 373), and decision of the Assembly of the PCT Union dated 4 October 2001 amending Article 22 PCT (PCT Newsletter 10/2001).