Wednesday, July 08, 2015 From 1 July 2015 - "PCT Direct" service available with EPO as ISA extended to other receiving offices

In the Official Journal of June 2015  (OJ EPO 2015, A51, "Notice from the European Patent Office dated 22 June 2015 concerning the processing by the EPO as International Searching Authority of informal comments on earlier search results ("PCT Direct")"), the EPO announced that, as of 1 July 2015, the PCT Direct service will be extended to the other receiving Offices than the EPO only.

PCT Direct: what and why?

In August 2014, the EPO in its capacity as receiving Office and International Searching Authority announced the launch of a new PCT service called "PCT Direct", aimed at further improving the efficiency and quality of the procedure before the EPO as International Searching Authority as of 1 November 2014 (OJ EPO 2014, A89). The PCT Direct service was initially only available for international applications filed with the EPO as receiving Office.

As of 1 July 2015, the service will be extended to the other receiving Offices. As a result, PCT applicants who selected the EPO as International Searching Authority will be able to use the service and submit PCT Direct letters irrespective of the receiving Office chosen. The electronic filing tools available at the EPO as receiving Office under the PCT as well as the ePCT system have been adapted to support this new service.

Under PCT Direct, an applicant filing an international application claiming priority from an earlier application already searched by the EPO is able to react to any objections raised in the search opinion drawn up for the priority application. This new service simplifies the assessment of the international application and adds to the value of the international search report and written opinion established by the EPO.

Thus, if:

• the priority application is a European application, a PCT application, or a national application that was searched by the EPO (incl. international or national searches for the following states: France, Netherlands, Belgium, Luxembourg, Italy, Turkey, Greece, Cyprus, Malta, San Marino and Lithuania)

and

• the applicant files a PCT application claiming priority from that application, and
• wishes to react on the search results and/or search opinion of the priority application
• by providing the search examiner with:
• arguments in response to the search opinion, e.g. as to an interpretation of terms form the application or from the prior art, and/or
• information regarding amendments made to the claims compared to the priority application,
• to make sure that the search examiner will take the argument or amendments into account,

the applicant can file a "PCT Direct" letter together with the PCT application.

Hereby, the new search report and new search opinion, drawn up for the PCT application, will be drawn up while taking these arguments and/or amendments into account.

Details

For details, refer to the "Notice from the European Patent Office dated 22 June 2015 concerning the processing by the EPO as International Searching Authority of informal comments on earlier search results ("PCT Direct")" in OJ EPO 2015, A51.

What if...

...the search examiner ignores the arguments or the amendments made, as happened in the past?

In the past, it happened that exactly the same search report and search opinion as drawn up for the priority application was issued for the later application, despite amendments made to the claims, as the search examiner did not spot that any amendments were made. When objecting to that after receipt of the search report and opinion,  it also happened occasionally that the search examiner refused to correct his oversight and told the applicant to argue in examination - thereby forcing the applicant to request examination without having the actually filed claims being searched. The PCT Direct procedure is meant, a.o., to prevent this from happening, and to make sure that the search on the later PCT application is done taking any amendments into account and take any arguments into account, to hereby best serve the interests of the applicant as well as third parties, and to allow an efficient search and examination procedure a the EPO.

No formal procedure is given in the PCT Direct notice as to what the applicant can do if the search examiner would anyhow accidentally ignore the arguments or the amendments made. At the Guidelines2DAY seminar in Rijswijk on 15 April 2015, the EPO speaker commented on my question what an applicant can do in such case. If such situation would arise, the applicant can:

• first contact the search examiner informally to point out the oversight, and request the search examiner to (re)draw the search report and the search opinion while taking the PCT Direct submission into account;
• if that fails to be successful: indicate to the search examiner you intend to file a formal complaint, and if that has not effect, file the complaint after having contacted Customer Services.

The complaints procedure is described on the EPO website on http://www.epo.org/service-support/contact-us/complaints.html. The complaints procedure is said to be highly effective. 

You can make a complaint using the EPO online form at www.epo.org/complaints. Your complaint goes direct to the EPO's complaint handling unit, which is responsible for ensuring that all complaints are dealt with fairly and efficiently. The complaint handling unit is also responsible for

• ensuring that suitable measures are taken to address your complaint,
• following up on these measures, and, where necessary,
• providing a comprehensive reply to your complaint.

You will receive an acknowledgment of receipt by e-mail within one working day after registration of your complaint in the EPO database, and the EPO indicated they will make every effort to process your complaint within 20 working days of registration.

Outlook 

The EPO announced that the PCT Direct service will be extended to any subsequent application for which the EPO performs a search, so not limited to later PCT applications but also available for later EP applications or national applications for which the EPO performs the later search.

Figure taken from the EPO presentation "Using effectively the procedural options", presented by the EPO at the Guidelines2DAY seminar in Rijswijk on 15 April 2015.