New scheme for the examination of patent applications at the European Patent Office (EPO)

 

The EPO has introduced a new scheme for the examination of pending patent applications, called “Early Certainty from Search”.

1. Patent prosecution at the EPO

 

The EPO has a two-stage procedure until grant. In a first stage (search), a search for prior art is performed by the Search Division and a search report including a search opinion is drawn up.

 

An applicant has then the possibility to proceed further with the patent application to a second stage (examination), which is performed by the Examining Division. The Examining Division examines the response to the search report and issues office action(s). The Examining Division is in charge of the patent application until a decision to grant or a rejection.

 

It should be noted that the first stage (search) and second stage (examination) is usually performed by the same examiners, despite the different denomination of the acting body as “Search Division” and “Examining Division”.

2. Content of the new scheme 

 

According to the new scheme, the EPO tries to issue all search reports and search opinions on patentability within six months of filing.

 

The EPO will prioritise completing files for which examination already started over beginning new files and expedite grants after a positive search opinion has been issued.

 

Further, the EPO tries to prioritise processing of patent applications for which substantiated observations are filed by third parties who identify themselves.

 

Even if it does not concern patent applications as such, the EPO indicated that opposition, limitation and revocation procedures are also prioritized.

3. Results of the new scheme

 

The EPO will put most of its effort on the search and finishing already started examination cases. In the second stage (examination), new files, which are not prioritized, will be only treated if the assigned examiners have remaining time after the completion of their other prioritized tasks. This may lead to long prosecution of a patent application.

 

In case the result of the examination of a specific patent application is important for you or your client, it is possible to expedite the examination procedure, provided the EPO has enough capacity, by :

 

-       Filing a PACE request for accelerated examination (possible for an applicant), or

-       Filing observations with the EPO in accordance with Article 115 EPC (as a third party).

 

We are at your disposal to file the respective requests with the EPO.

 

This is only a rough overview over the new scheme. For more details or any questions please do not hesitate to contact us.

 

Contact: Mr. Jacob Klinkisch

 

Publication date : July 2014

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