More opinions from the EPO, fewer from the UKIPO

EPO to issue second written opinions. The European Patent Office has issued a notice revising its practice when conducting International Preliminary Examination (IPE) for PCT applications.

The IPKat suspects that International Preliminary
is covered in Chapter 2 of a different text
Under existing practice, if the EPO is the searching authority, the applicant gets a written opinion attached to the International Search Report.  The applicant can pay a fee to file a demand for IPE (it's a purely optional procedure) and then usually has just one shot at responding with arguments or amendments before the final International Preliminary Examination Report is drawn up and circulated to all of the elected national patent offices for use when they come to examine the application.  If the EPO does not conduct the international search but is nominated as the IPE authority, the EPO issues its first and only written opinion in response to the demand, and again the applicant has just one attempt to overcome any objections.

The new practice entitles the applicant to a second written opinion, and provides a second chance to respond with further arguments or amendments. Alternatively, the applicant can choose to have a telephone discussion in lieu of a written opinion. Full details are given in the link above.

Currently only about 10% of PCT applications undergo IPE, and the IPKat suspects the number is rather low due to the cost of the procedure (€1892), the limited value in having just one chance to change the Examiner's mind, and the fact that the first written opinion accompanying the search report gives most of the information most applicants need to make a decision on further prosecution. Allowing for a second written opinion and response certainly makes the proposition much more attractive for those applicants who need a positive IPER for whatever reason.

On the downside, this Kat suspects that if one fails to convince the Examiner twice during the international phase, the EPO will not be slow to issue an early summons to oral proceedings once the application enters the EPO regional phase. 

An examiner in Newport votes in favour of
closing the commercial search service
UKIPO closes Patent Search and Advisory Service. Citing an increase in its regular searching workload (i.e. statutory search and application examination work), the commercial search services provided by the UKIPO were closed down on October 6th. This means the UKIPO will no longer provide patentability, freedom to operate (infringement) or validity searches as a commercial service. The formal Patent Opinion services on validity and infringement of patents, used in cases of disputes, remain unaffected.

The UKIPO notice indicates that alternatives are available and includes a link to a page hosted by the EPO which lists national patent offices offering commercial search services including (you guessed it) the UKIPO's now defunct service.


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