Over the last few years, we have seen a number of procedural changes at the European Patent Office (EPO) looking to "raise the bar" in prosecution of European patent applications. This culminated in measures such as clarification of the scope of protection prior to search (Rule 62a EPC and Rule 63 EPC), mandatory responses to the international written opinion prepared by the EPO (Rule 161 EPC) and the European search opinion (Rule 70a EPC), and only one opportunity to file voluntary amendments and mandatory provision of the basis for amendments (Rule 137 EPC). Some changes, however, have seen a turnaround from the EPO, such as the two-year divisional deadline (Rule 36 EPC) and the restriction on searching inventions which have not been searched in the international phase (Rule 164 EPC). While there is already a free mechanism for acceleration of examination proceedings, PACE, which ensures issuance of an examination report within three months, this procedure is not regularly used and is only acted upon the individual cases for which it is requested. Instead of applying more "burden" on applicants, the next wave of sweeping changes appears to place the ball firmly in the EPO's "court," and also gives applicants—and indeed third parties—more options to accelerate proceedings at the EPO and elsewhere. In this article, we shall look closely at some of the most recent changes, which at least for now look set to stay.
PCT Direct
One of the new schemes known as "PCT Direct" allows applicants, when filing a PCT application and designating the EPO as the international searching authority (ISA), to also respond to an EPO search opinion issued on the first application from which the PCT application claims priority. Notably, the first application need not be a European application but can also be a national application for which a search is carried out by the EPO. As well as European applications, this is also therefore available for first applications searched by the EPO in France, the Netherlands, Belgium, Luxembourg, Italy, Turkey, Greece, Cyprus, Malta, San Marino, or Lithuania. The response to the search opinion can include amendment of the claims, including the description and drawings. Optionally, a marked-up copy of the application documents can also be filed. The EPO acting as ISA will then establish the international search report and written opinion based on the reply to the earlier opinion. While there will not be any reference to the earlier search opinion in the international written opinion, the response filed under the PCT Direct scheme will be made publicly available on the PATENTSCOPE database when the PCT application is published.
The clear benefit of this new procedure, which is free to use, is that applicants have an extra opportunity during the International PCT stage to overcome objections already raised by the EPO. A reply to the written opinion and a demand for international preliminary examination can still be filed if any objections remain. Applicants can also increase their chances of achieving just a publicly available positive written opinion and avoid the need to file a demand for international preliminary examination at all. Overall, the scheme is clearly useful in determining the likelihood of success for applications before proceeding with the expense of entering the European regional phase or other national phases.
Taken in conjunction with the Patent Prosecution Highway (PPH) program, for countries which require a positive international written opinion or international preliminary report on patentability (IPRP) from the EPO or indeed schemes in other countries which take the written opinion of the EPO into account, the examination and grant of such corresponding family member applications can be expedited.
Early Certainty from Search
The EPO has also introduced a new priority scheme, which will be good news to many, particularly those with long-pending applications. First, applications already being examined will be prioritized over newly filed applications. Additionally, all search reports and written opinions on patentability will be issued within six months of filing. The granting of applications will also be expedited for those applications on which a positive European search opinion is issued. This certainly appears an ambitious statement of intent by the EPO and is a welcome step in the right direction for applicants looking to sooner reach grant of their applications.
One of the most intriguing aspects of the "Early Certainty from Search" scheme is that now, under certain conditions, the processing of applications against which third-party observations are filed will be accelerated. This also applies to patents in opposition proceedings and post-grant requests for limitation or revocation. The two fundamental requirements are that the submissions are substantiated and not filed anonymously. It appears therefore that reasoned observations filed by a "straw man" may satisfy the requirements to accelerate proceedings before the EPO.
As, a result applicants and third parties can accelerate procedure on sensitive cases. From the observer's perspective, it provides a means of determining more quickly whether there will be freedom to operate should that be a reason for filing observations. Furthermore, for pending applications, there is the opportunity to argue for grounds such as lack of clarity and lack of unity, which are not available during EPO opposition proceedings. Similarly, it should be borne in mind that in opposition, burden of proof lies with the opponent to convince the EPO that the patent is invalid. During examination, generally speaking, the burden lies with the applicant to convince the EPO of validity, which may be particularly relevant for filing arguments of insufficiency and lack of inventive step. Third-party observations at the EPO, for which there is no official fee, might also influence proceedings for corresponding applications in other jurisdictions, a prime example being the U.S. Patent and Trademark Office and the duty of disclosure.
Overall, these are very positive changes by the EPO and should go some way to satisfying applicants who have had their patience tested by lengthy proceedings. The possibility for third parties to expedite proceedings with observations is also an interesting development. The tool remains free to users, but for acceleration, anonymity will have to be sacrificed.
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