21/11/2014
This month the European Patent Office (EPO) initiated its new PCT Direct service, which is aimed at improving the efficiency of the search process for International (PCT) applications that claim priority to an application that has previously been searched by the EPO by building on the search results and opinion issued by the EPO on a priority application.
In the PCT direct system, the applicant is able to submit informal comments on the PCT application that will be considered by the EPO examiner when producing the International search report and written opinion. This means that the applicant has the opportunity to explain to the examiner why the claims of the PCT application are patentable over the prior art cited on the priority application. This in turn reduces the likelihood that the written opinion of the International search report will simply restate that objections raised in the search opinion on the priority application and increases the chance that a positive International search report and written opinion will be issued.
This is advantageous to the applicant not only because it means that the process to grant of a subsequent European national phase (ex-PCT) application is likely to be shorter, but also because national phase applications in countries that participate in the Patent Prosecution Highway, as well as other countries that take the written opinion of the EPO into account will be able to be accelerated.
It is, of course, a two-way street and the EPO will also be able to benefit by reducing the length of time some ex-PCT applications remain pending and in turn cutting down the backlog, which can only look good for the EPO.
PCT Direct processing can be requested for any PCT application filed after 1 November 2014 with the EPO as the Receiving Office that also claims the priority of an application that has been searched by the EPO. It is worth remembering that this covers not only European priority applications, but also national applications filed in France, Netherlands, Belgium, Luxembourg, Italy, Turkey, Greece, Cyprus, Malta, San Marino and Lithuania for which the EPO also carries out searching functions.
The informal comments may explain any amendments made or alternatively explain the invention if the Examiner appears to have misunderstood it; however, they must also be self-contained such that they can be understood without reference to the priority application. Additionally the request must be filed simultaneously with the PCT application and applicants are encouraged to submit a marked-up copy of the PCT application indicating any differences in comparison with the priority document.
The PCT Direct service would appear to be most beneficial in cases where the EPO examiner for the priority application appears to have misunderstood the invention or the scope of the claims. However, whilst the additional opportunity to present arguments in favour of the application can only be a good thing, it should be borne in mind that these comments will be made publically available on the PATENTSCOPE database when the PCT application is published. The official notice from the EPO can be found here.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
