Up until March 2017, when the EPO – acting as “itself” for direct European applications and for European applications resulting from the EP phase entry of PCT applications, or as the International Searching Authority for PCT applications – identified more than one invention during the search stage, it would send the applicant a partial search report, containing:

(a) the search results for the first identified invention only
(b) an explanation of the reasons for the finding of lack of unity
(c) the identification of the further invention(s) identified by the search Examiner, and
(d) an invitation to optionally pay the additional search fee(s) for such additional invention(s).

Only thereafter, i.e. with the final search report, would the EPO then also provide the search opinion containing any objections raised by the EPO against the first invention (and against the additional invention(s), in the event that the corresponding additional search fee(s) had been paid following the invitation by the EPO).

In line with the EPO’s continued efforts to improve early certainty for EP and PCT applicants, the EPO has now decided that the search opinion containing any objections raised by the EPO against the first invention will now instead be provided already together with the partial search report.

This new change in the EPO’s procedure will apply to:

  • European search reports issued for direct European patent applications
  • supplementary European search reports for European patent applications resulting from the EP phase entry of PCT applications, where applicable
  • International search reports for PCT applications for which the EPO was selected as the International Searching Authority

Thanks to this new procedure, and regardless of whether the applicant then decides to pay the additional search fee(s) for the invention(s) other than the first one, the applicant will know the opinion of the EPO regarding the patentability of the claims relating to the first identified invention already upon receipt of the partial search report.

The above change represents a new step by the EPO to address the issue of timeliness of the process, which is often raised in public debate. In fact, users of the EPO system have clearly expressed great interest in the quick delivery of the EPO search reports, so as to improve legal certainty for pending patent applications and remove the previous backlog at no additional costs for the applicants.

Since the final search report is generally issued several months after the partial search report, this change in the EPO’s procedure represents a very significant advantage for applicants, who will be informed of the EPO’s objections much earlier than in the past. In fact, in this way applicants will be able to start preparing their replies to such objections much sooner. In addition, applicants will be able to decide whether to continue pursuing the first invention much sooner, given that oftentimes the first invention identified by the EPO is not, or is no longer, necessarily the invention representing the actual commercial interest for the applicant at the time when the patent application is searched. Finally, since the search opinion supplied with the partial search report will form part of the public file history of the application, it will become available to third parties much sooner, as well. As a result, the above change in the EPO’s procedure is certainly a welcome improvement for all users of the EPO system.


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ISSN 2531-4483