Notice from the European Patent Office dated 18 August 2014 concerning the processing by the EPO as PCT receiving Office and International Searching Authority of informal comments on earlier search results ("PCT Direct")
1.1 On 1 November 2014, the European Patent Office (EPO) in its capacity as receiving Office and International Searching Authority will launch a new PCT service, called "PCT Direct", which further improves the efficiency and quality of the procedure before the EPO as International Searching Authority.
1.2 Under PCT Direct, an applicant filing an international application claiming priority from an earlier application already searched by the EPO will be able to react to any objections raised in the search opinion drawn up for the priority application. This new service will simplify the assessment of the international application and add to the value of the international search report and written opinion established by the EPO.
2. Requests for PCT Direct
2.1 Applicants may request to have their international application processed under PCT Direct by filing a letter ("PCT Direct letter") containing informal comments aimed at overcoming objections raised in the search opinion established by the EPO for the priority application. Such informal comments are to be understood as arguments regarding the patentability of the claims of the international application and also possibly as explanations regarding any modifications to the application documents, in particular to the claims, in comparison with the earlier application. PCT Direct letters do not form part of the international application.
2.2 Upon receipt of a PCT Direct letter, the international application will be processed under PCT Direct only where the following two requirements are met:
(a) the informal comments are filed together with the international application with the EPO as receiving Office in the form specified in point 3 below, and
(b) the international application claims priority of an earlier application searched by the EPO (European or national first filing[ 1 ]).
3. Form of submissions
3.1 PCT Direct letters are to be presented as a separate document attached to the international application; they should be entitled "PCT Direct / informal comments" and clearly identify in the header the application number of the earlier application.
3.2 If the claims and/or the description of the international application differ from those of the earlier application, applicants should preferably submit a marked-up copy indicating the differences.
3.3 The PCT Direct letter and any marked-up copy of the claims and/or description are to be submitted as a single document in PDF format (not as ZIP) and indicated by checking Box IX of the PCT request form (check list, Form PCT/RO/101). In particular, the words "PCT Direct / informal comments" should be specified under point 11, "Other", for filings on paper and point 19, "Other", for filings in electronic form[ 2 ].
3.4 Informal comments filed under PCT Direct must be self-contained. This means that third parties must be able to fully understand these comments as they stand. The reason for this requirement is that the search report, the search opinion or any other submissions that are part of the file of the earlier application may not be publicly available.
4. Processing of PCT Direct letters
4.1 PCT Direct letters filed with the EPO as receiving Office will be transmitted to the EPO as International Searching Authority and to the International Bureau of WIPO together with the search copy and record copy, respectively.
4.2 At the EPO as International Searching Authority, the examiner performing the international search will take informal comments filed under PCT Direct into account when preparing the international search report and written opinion, provided that they meet the requirements listed under points 2.2 and 3 above. However, the examiner will make no explicit reference to the PCT Direct letter or its content.
4.3 In accordance with the PCT provisions on file inspection, PCT Direct letters will be available to the public on WIPO's PATENTSCOPE.
5. Entry into force
The present notice enters into force on 1 November 2014 and will apply to international applications filed with the EPO as receiving Office on or after that date.
[ 1 ] As of 1 November 2014, the EPO will be performing national searches for the following states: France, Netherlands, Belgium, Luxembourg, Italy, Turkey, Greece, Cyprus, Malta, San Marino and Lithuania.
[ 2 ] For online filings using the EPO case management system, applicants should indicate "Other" as document type and specify "PCT Direct / informal comments". In the case of the EPO online filing software, the functionality "Other" may be found by checking first "Contents" and then "Accompanying Items".