EPO Upgrades International Examination under Chapter II PCT by Further Written Opinions

According to Chapter II PCT (International Preliminary Examination) the International Preliminary Examination Authority (IPEA) draws up the International Preliminary Examination Report (IPER) which is forwarded to the elected national patent Offices upon national phase entry. Since most national Offices use the IPER as a basis for their substantive examination, it is vital for the applicant that a positive IPER is established.

Based on Rule 66.4 PCT, reading

Additional Opportunity for Submitting Amendments or Arguments:

(a)  If the International Preliminary Examining Authority wishes to issue one or more additional written opinions, it may do so, and Rules 66.2 and 66.3 shall apply.

(b)  On the request of the applicant, the International Preliminary Examining Authority may give him one or more additional opportunities to submit amendments or arguments.

the EPO now announced an important procedural change for international applications entering Chapter II PCT before the EPO functioning as IPEA (see Notice from the EPO dated 31 August 2011).  According to that revised practice, the EPO obtains discretion to issue additional written opinions before establishing the IPER, either on its own initiative or upon applicant’s request. This will give applicants more control and influence and better chances to enter the national phase with a positive IPER.

The new practise will apply to all international applications for which the time limit for establishing  the IPER (Rule 69 PCT) expires on or after 1 December 2011 unless the IPER was established before 1 October 2011.

The basic aspects of the new procedure are:

• Before issuing a negative IPER, the EPO will issue a second written opinion. The term “negative IPER” is broadly interpreted and covers any IPER rainsing deficiencies to which an applicant must respond under Rule 161(1) EPC if he enter the European phase.
• If the EPO acted as ISA, the written opinion (WO-ISA) is considered a first written opinion for the procedure under Chapter II PCT (Rule 66.1bis(a) PCT).
• If another office acted as ISA, the WO-ISA is not considered a (first) written opinion for international preliminary examination before the EPO as IPEA (Rule 66.1bis(b) PCT) but the EPO, acting as IPEA, issues a first written opinion by itself.
• The second writen opinion, however, will only be issued if the applicant duely filed a substantive reply to either the written opinion according to Chapter I PCT (WO-ISA) or the first written opinion according to Chalper II PCT (WO-IPEA).
• The reply to the second written opinion is normally due within two months and not shorter than one month (Rule 66.2(d) PCT).
• As the applicant’s option to request for a telephone consultation before the IPER is established (Rule 66.6 PCT) already allows a dialogue between examiner and applicant, a telephone consultation whose minutes are sent to the applicant together with an invitation to submit further amendments and/or arguments may replace a second opinion. The discretion to decide on the most appropriate way to proceed, i.e. to either grant a requested telephone consultation or issue a second opinion, is left to the EPO as IPEA (for further details on the handling of telephone consultations under the new procedure  see paragraph 5 of the EPO’s Notice).

The revised practise will increase the value and benefits of the PCT procedure and its international preliminary examination to applicants, much in line with the effective political agenda of major players in the IP world to harmonze international patent law and construct a truly global patent system.

In fact, together with the increasingly popular “patent prosecution highways” (see e.g. here or here), the upgraded international examination may, one day, result in a (substantive) international patent examination whose outcomes are accepted by national offices, as it may have been he result of the Substantive Patent Law Trearty (SPLT).