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UKIPO extends its EPO search outsourcing

UKIPO extends its EPO search outsourcing

01/08/19

The UK Intellectual Property Office (UKIPO) has announced that its agreement to outsource a limited number of patent searches to the European Patent Office (EPO), which had previously been limited to the biotech sector, is being extended to cover UK telecoms and computing applications.

The original agreement, which came into force in July 2018, established an outsourcing scheme which aimed to speed up the search process for customers and address the backlog of biotech applications at the UK-IPO. Since then a limited number of patent applications have been sent to the EPO for searching as a supplement to the work done by UK examiners.

The two offices agreed that, as of July 2019, the scheme will be extended to cover UK applications encompassing telecoms and computing technology, and which also have significant backlogs.

As the announcement stresses, the application process for affected UK patents will remain the same from a user’s perspective: the EPO will generate its search reports with the same tools used by UK examiners, and the results will be issued as standard UK search reports. The reports will also be subject to the UK-IPO’s quality assurance process, and standard UK forms and fees will also still apply. The applicant will, however, be informed that the EPO has conducted the search.

One possible change for users is that EPO-searched UK applications may be eligible for additional benefits which are unavailable to standard UK applications. For example, the new agreement states that the EPO may give a full or partial refund of search fees for any EP or PCT application (searched by the EPO) which claims priority to a UK application searched under the scheme. Further, such applications may also be eligible for the EPO’s PCT Direct scheme, which allows the owner of an international application claiming priority to an EPO-searched application to react to objections raised in the written opinion of its priority document.

The new agreement is scheduled to run for an initial two years, during which the UKIPO will still conduct the majority of searches on UK applications, and will continue to retain and recruit patent examiners in the affected fields. It is estimated that the EPO will be completing around 400 - 500 searches on UK applications each year, and with the UK office deciding which of its searches are outsourced.

It is still unclear, however, whether UK applicants will be able to request an EPO search if they wish to obtain the touted benefits described in the announcement. The full text of the announcement can be found here.