Two Tier International Preliminary Examination at the EPO
To ease its examination burden, the European Patent Office (EPO) is to introduce on 3 January 2002 a two tier International Preliminary Examination under the Patent Corporation Treaty (PCT). The EPO believes that International Preliminary Examination of an International application is requested by many applicants merely to defer the deadline for entering the national/regional phases from 20 months (Chapter I PCT) to 30 months (Chapter II PCT) from the priority date and not necessarily in order to benefit from detailed examination report of the invention.
As of 3 January 2002 therefore, the EPO, when acting as International Preliminary Examining Authority is to introduce a two tier system of rationalised and detailed examination.
(i) Rationalised Examination
In the absence of any amendments to the application either before or at the time of demanding International Preliminary Examination, and in the absence of a specific request for detailed examination, a rationalised Written Opinion, or International Preliminary Examination Report, will be issued, depending on the relevance of the citations in the International Search Report.
(a) If the International Search Report lists documents cited in Category X or Y, i.e. having a perceived relevance to the question of the patentability of the invention, then a rationalised Written Opinion will be issued setting a deadline for response by the applicant. If no response is filed by the applicant then a rationalised International Preliminary Examination Report will be issued mirroring the earlier Written Opinion.
(b) If the International Search Report contains documents only cited in Category A, i.e. relating merely to the technological background of the invention, then a favorable rationalised International Preliminary Examination Report will be issued.
In both cases (a) and (b) above, the International Preliminary Examination Report will merely emphasize the findings of the International Search Report and the applicant will then be entitled to a refund of two thirds of the International Preliminary Examination fee.
(ii) Detailed Examination
If the International application has been amended either prior to, or at the time of filing the demand for International Preliminary Examination, or a request for detailed examination is made at the time of filing the demand for International Preliminary Examination, then a detailed examination of the application will be carried out and no partial refund of the International Preliminary Examination fee will be made. Also, under (i)(a) above, if arguments are filed in reply to the rationalised Written Opinion, the application will be subjected to detailed examination and a further Written Opinion may be issued before establishment of the final detailed International Preliminary Examination Report. In this case also, no partial refund of the International Preliminary Examination fee will be available.
When the EPO has acted as International Searching Authority, and is due to act as International Preliminary Examining Authority, it is therefore important to consider whether an applicant might merely be considering proceeding via Chapter II PCT in order to defer the national/regional phase deadline to 30 months, or whether they are really interested in obtaining a detailed International Examination Report into the invention. If delay of the deadline for national/regional phase entry is likely to be the prime motive for demanding International Preliminary Examination, then care should be taken not to make any amendments to the application prior to filing a demand for International Preliminary Examination.
The above measures are of a generally temporary measure until such time as the proposed amendment to the PCT so as to introduce a common 30 month national/regional phase deadline before both Chapter I and Chapter II cases becomes fully effective.