Utilisation Pilot Project

 

A pilot project is in place between the European Patent Office and the national patent offices of the United Kingdom, Germany, Denmark and Austria, through which the EPO will utilize the search results of these national offices to try to speed up the issuing of search reports for European patent applications that claim priority from earlier applications filed at these offices.

Patent applicants in the participating countries who go on to file European patent applications within the Paris Convention year can simply file a UPP form with a copy of the national search report, and the EPO expects to be able to issue the Extended European Search Report within 3-6 months. This is an improvement on the present turnaround time at the EPO. At present, it is quite common for an application filed at the end of the priority year to be published 18 months after priority date as an A2 publication, i.e. without a search report, and for the search report to issue some months (sometimes many months) later, whereupon it is published as an A3 publication. Precedence is currently given to European filings claiming no priority, but even for these, the search report usually takes over 6 months to arrive.

International (PCT) applications for which the EPO is the International Searching Authority will not be included. This is unfortunate, as the PCT route is popular among UK and German applicants.

The EPO will monitor whether the national search reports are helpful in expediting the European search, and will publish the results as the project proceeds. The pilot project will run until about 1 April 2008. It is hoped that the scheme can then be implemented full-scale across more national offices.

 

Comment

We naturally welcome this project, as it aims to avoid duplication of work between patent offices. If, through this, the national patent office examiners are able to receive EPO training and improved tools to achieve the high standard of searching of the EPO, this will be a double benefit. Outcomes would be more predicable and business risk would be reduced if there were less disparity in quality and results of the searches.

In weighing up the factors in the “PCT or EPO” decision that applicants face coming up to the end of the priority year, the extra speed of the EPO search may not add much weight to the latter choice. But it is of considerable value to applicants who choose the EPO route to be able to get their results soon, if for no other reason than to curtail prosecution of hopeless cases.

It will continue to be disappointing if searches for International applications are not brought into the project, not least because we are seeing greater and greater delays in these searches, which undermine the value of the PCT system (see “Late PCT Searches” in this newsletter). It would be regrettable (though entirely predictable) if the speed of PCT searching suffers further by giving priority to searching of European patent applications in the project.