Two chances to amend in the International Phase
The European Patent Office has issued a notice outlining a change to its practice under Rule 66.4 PCT. This change affects PCT applications for which International Preliminary Examination is requested.
PCT applications are searched by an International Searching Authority (ISA), which issues an International Search Report detailing the relevant prior art found in the search. When the European Patent Office is the ISA, a Written Opinion is issued alongside the International Search Report, indicating whether the European Patent Office considers the invention to be patentable.
The applicant then has the option to request ("file a demand for") International Preliminary Examination (IPE). If this is done, the applicant can then file arguments and amendments in response to the Written Opinion, after which a further opinion on patentability, called the International Preliminary Report on Patentability (IPRP), is issued.
If the European Patent Office did not act as ISA but does carry out IPE, then a first Written Opinion is issued in response to the demand for IPE. As before, the applicant can then amend and/or submit arguments, following which the IPRP is issued.
In both of the above cases, the applicant only has one opportunity to amend the application and submit arguments to the European Patent Office.
Rule 66.4 PCT states that any authority carrying out IPE has discretion to issue one or more additional written opinions before the IPRP is established. The European Patent Office is now changing its practice so that applicants will be entitled to a second written opinion and a corresponding second chance to amend their application and/or submit arguments.
A second Written Opinion will automatically be issued where the European Patent Office considers that issues remain that would hinder a direct grant in the European Phase. A deadline of two months will be provided for response to the second written opinion.
As an alternative, it is possible to opt for a telephone conversation in lieu of the second written opinion.
Currently, IPE is only requested for 10% of PCT applications. It is an expensive procedure (the official fees alone amounting to EUR1892), and in many cases it is not appropriate. It is hoped that by providing a second opportunity for amendment, IPE will become a much more attractive proposition for applicants for whom obtaining a positive IPRP is important.
However, there are some concerns that this may have a detrimental effect on the way the European Patent Office subsequently examines applications during the European phase, as they will already have considered arguments and amendments from the applicant twice.
This new practice will be applicable to applications for which the time limit for establishing the IPRP is on or after 1 December 2011 (applications which have a priority date on or after 1 August 2009). If you have any queries or concerns about how this change may affect your current or future patent applications, then please get in touch and we will be happy to discuss it with you.
7 November 2011