INFORMATION FROM THE EPO
Notices of the President of the EPO
Notice from the President of the European Patent Office dated 8 May 2003 on a pilot project concerning an Extended European Search Report
1. Within the framework of the EPO's procedure called BEST (Bringing Examination and Search Together), the search examiner is also the primary examiner in the examining division. For increased efficiency in the overall grant procedure, a BEST examiner prepares, already at the search stage, an opinion about the patentability of the invention claimed.
If not all requirements of the EPC are met, the text of the first substantive examination communication is drawn up, setting out the objections to patentability. This communication is issued to the applicant only after a valid request for examination has been filed, ie the examination fee paid.
If the application meets all the requirements of the EPC, a positive opinion is drafted which may later serve as the basis for the grant of a patent.
The Extended European Search Report
2. As of 1 July 2003 the EPO will commence a pilot project for EP first filings (ie applications claiming no priority), which will involve issuing to the applicant, together with the search report, an opinion on whether the application and the invention to which it relates meet the requirements of the EPC (Extended European Search Report, EESR).
This opinion will consist either of the text of the first examination communication where all the objections to patentability are addressed or of a positive statement which would allow the application to proceed to grant.
The non-binding opinion on patentability will be issued free of charge as a service. No time limit will be set for reply, nor does it affect the period for requesting examination, ie for paying the examination fee under Article 94(2) EPC. The opinion issued along with the search report may, however, be used by the applicant as the basis for an informed decision as to whether he wants to pursue the application further or not.
3. If the applicant receives a positive opinion, he can pay the examination fee and will then receive the communication under Rule 51(4) EPC if a final topping-up search carried out after the end of the priority year does not reveal new prior art under Article 54(3) EPC and the examining division assigned concurs with the opinion.
If the opinion contains any objections to patentability, the applicant may file amendments to meet the objections and thus shorten the procedure considerably. If no amendments are filed, the opinion will be re-issued as the official first communication under Article 96(2) and Rule 51(2) EPC. Only then will the normal examination procedure start.
However, where the applicant has paid the examination fee before the search report is issued and waived the right to receive the communication under Article 96(1) EPC, a valid request for examination has already been filed. The examiner will then issue the official first communication under Article 96(2) and Rule 51(2) EPC as soon as possible after establishing the search report. In the case of a positive opinion the communication under Rule 51(4) EPC will be issued if the final topping-up search does not reveal new prior art under Article 54(3) EPC and the examining division assigned concurs with the opinion.
4. Once the Extended European Search Report is issued to the applicant, it is part of the file and open to file inspection after publication of the application (Article 128(4) EPC).
Opting Out of the Extended European Search Report
5. Some applicants may wish not to receive an Extended European Search Report. These applicants may so request, preferably when filing the application. If, upon filing, no such request is submitted, a communication will be issued giving the applicant the opportunity to declare that he does not wish to receive an EESR.
The same communication will be issued in respect of applications filed between 1 February and 30 June 2003 where the search report will normally be drawn up as from 1 July 2003. However, not all of these applications may be covered by the project.
6. The EPO considers the Extended European Search Report as an efficient tool and service helping applicants to make an informed decision about their case at an early stage and enabling the Office to streamline the grant procedure.
At the same time it will be a first step to bringing the procedures under the EPC and the PCT into line, bearing in mind that for international applications filed as from 1 January 2004 the International Searching Authorities will issue an extended international search report.
The pilot project will allow the EPO to gather some concrete feedback on the implications of an EESR as far as essential parameters such as pendency time, direct grant and withdrawal rate are concerned. This will be helpful in assessing whether the service offered by the EESR should be extended to all European patent applications.