Recent changes in European patent examination practice make early and complete response to the Search Report more critical.
In European patent prosecution practice a two-step procedure is followed, in which first there is a search report by the European Patent Office, with an associated Search Opinion, and then the application is examined. The applicant has an opportunity to respond to the European Patent Office’s Search Opinion prior to the application entering the Examination Phase (typically by submitting arguments, amendments, or both).
In the case of European applications arising as direct filings before the EPO, the deadline for this is six months measured from the publication of the European Search Report. Where a European patent application arises as a national phase entry of a PCT application and the EPO was the International Searching Authority on a case, this opportunity arises under Rule 161(1), with the deadline being six months after the issuance of a communication under that rule.
Where the International Search Authority was not the EPO, Rule 161(2) applies: the applicant is invited to amend the application within a period of six months, after which a supplementary European search based on the amended application is produced and the applicant normally has an opportunity to amend and submit arguments in response to that.
Following a response to the Search Opinion, there may be one or more rounds of examination reports and responses but at any stage in the examination procedure, if they think it appropriate, the EPO can issue a Summons to Oral Proceedings.
Many Euro-PCT applicants have treated the response to the Search Opinion as being fairly low-stakes, with applicants frequently being mostly concerned with amending claims in such a manner as to avoid or reduce claims fees for claims in excess of 15. There has always been the reassurance that at least one Article 94(3) Examination Report would issue on an application prior to any rejection or summons to oral proceedings; therefore, at the stage of responding to the Search Opinion many applicants have been able to make comparatively minimal amendments either to defer costs, or in the hope that they need not commit too soon, and could rely on slow prosecution to give thinking time to decide what scope to fight for.
However, from 1 November 2017 new Guidelines took effect at the EPO which will change the examination procedure. In particular, the new Guideline C-III-5 states that the examining division has the option of foregoing that first Article 94(3) Examination Report entirely and leapfrogging straight to a Summons to Oral Proceedings as the first action following the response to the Search Opinion.
According to the new guidelines, this can only take place where “despite the applicant’s reply to the search opinion no possibility of a grant can be envisaged” and if two requirements are met:
– The content of the claims on file is not substantially different to that of the claims which served as a basis for the search.
– One or more objections raised in the Search Opinion which are crucial to the outcome of the examination procedure still apply.
Oral proceedings aren’t quite the “Last Chance Saloon” – but they’re a few doors down on the same street. An application not found at least potentially allowable at oral proceedings will typically be rejected; it is possible to appeal this decision, but even the basic official fees on appeals are expensive. All this is before we consider the expenses involved in the applicant’s representative attending the oral proceedings in person, which is usually advisable if the applicant wants to maximise their odds of a positive outcome from proceedings. It is therefore highly desirable to avoid a summons if it is possible to do so, and if it isn’t possible to at least delay the moment when it arrives.
This being the case, it will be prudent to formulate a response to the Search Opinion well in advance of the due date. The sooner the European representative knows in what direction the applicant wants to proceed, the sooner they can prepare a suitably comprehensive response. In particular:
- It is worth noting that adding reference numerals to the claims, whilst a requirement of European formalities, is unlikely to be considered as making the content claims “substantially different” by itself; reference numerals do not limit the scope of claims in European practice.
- Likewise, amending to take advantage of multiple dependency in order to avoid claims fees, whilst an excellent idea, may not be enough to make the content of the claims on file “substantially different”.
- It continues to be best practice to address each and every point raised in the search opinion; the temptation to say “Oh, I’ll address this mild formalities issue once we’ve settled the major inventive step question” should be resisted.
For those who are interested in delay, and are able to do so, selection of an ISA other than the EPO will build in delay.
Should you have any questions regarding the prosecution of your own European patent applications, our attorneys welcome any and all enquiries.