Provisional opinion accompanying the partial search results
Effective April 1st, 2017, the EPO introduced a new service for its users.
Up to now in case the Search Examiner held the claims non-unitary, at the search stage, the opinion on patentability (ESOP or WO ISA) was emitted together with the complete European or international search report (see Rules 62(1) EPC and 43bis.1 PCT).
Starting April 1st, 2017, the EPO emits a provisional opinion on the patentability of the invention (or unitary group of inventions) first mentioned in the set of claims. The provisional opinion is communicated jointly with the partial search results (see R64(1)EPC and R164(1)(a) EPC, and Article 17(3)(a) PCT) and the invitation to pay further search fees.
The new procedure is applicable to direct EP applications, Euro-PCT applications for which a supplementary European search under Rule 164(1) EPC is executed, and applications in respect of which the applicant has waived the communication under Rule 70(2) EPC. It is also applicable when the EPO is acting as International Searching Authority (ISA) for PCT applications.
Therefore for all European patent applications the users will be informed about the reasons for the non-unity assessment together with the invitation to pay further search fees.
The provisional opinion is drawn up on a new EPO Form 1707 which is for information only. A reply to the provisional opinion is not required and will not be taken into account when the extended European search report (EESR) is issued. Only the extended European search report requires a response (see Rule 70a EPC).
In accordance with the same principle, any arguments or amendments made within the framework of the PCT or replies according to Rule 161 EPC need only to be filed after the complete international search report and written opinion have been emitted.
The provisional opinion accompanying the partial search results will be available to the public via online file inspection.
This IP Alert is for information purposes only and does not constitute legal advice.