Early certainty and PCT direct – a visit by the EPO

In Insights, Uncategorized

22 September, 2016

Have you ever dreamt of having a fast grant of a European patent?

This question was in focus at a well-attended breakfast seminar held by Awapatent in cooperation with a group of Examiners from the European Patent Office (EPO).

Under the project “Early Certainty”, the EPO is currently trying to reduce their backlog when it comes to search, examination, and oppositions. The EPO has set a goal stating that searches should be performed within 6 months of filing, examination should be concluded within 12 months from the start of the examination procedure, and oppositions should be concluded within 15 months.

By recruiting new examiners and focusing on their core business, the EPO has already managed to reach the goal when it comes to searches, but for examination and oppositions the goal is still further down the road.

Another interesting project launched by the EPO is PCT direct, which is available for PCT applications claiming priority from a previous application searched by the EPO. In brief, the applicant may, when filing the PCT application, also file informal comments regarding the written opinion of the previous application. These informal comments are then taken into account by the Examiner when preparing the written opinion of the PCT application. This improves the chances of having a positive first written opinion issued for the PCT application which, together with PPH requests, may lead to faster grants outside Europe.

I welcome the EPO’s attempts to speed up the procedure. However, I can also see that the ambitious goals set up for examination puts a pressure on the Examiners to quickly come to a decision, and we may expect that the average number of office actions per case will go down. I have already seen a tendency that the EPO summons to oral proceedings early in the proceedings, such as immediately after the first office action.

Sofia Åberg, European Patent Attorney and member of Awapatent’s EPC specialist team

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