• EPO Opens its Doors again to do PCT Searches in Biotech and Telecoms for US Applicants

    In 2003, the backlog of searches at the EPO in the popular fields of biotechnology and telecommunications diminished to the extent that in 2004 the office announced that it would once again accept requests for preliminary examination and search from US applicants in these subject matter fields.

    For US applicants filing PCT applications, there are three good reasons not to choose the USPTO to do the international search:

    1. the results will be a repetition of the search carried out on the parent application;

    2. on entry to the regional phase, the EPO will do its own supplementary search; and

    3. there will be only a very limited discount on the EPO search fees.

    For these reasons, and in recognition of its excellent searching reputation, US applicants have often preferred to choose the EPO as the international search authority.

    Some practitioners will recall that in the early years of the EPO, annual quotas were set for requests for international searches from applicants in the US. When the EPO search capacity increased, those quotas were lifted, but in recent years when demand rose in these particular fields, the flow was again stemmed by placing a moratorium on requests for searches in particular fields.

    Happily, capacity at the EPO is now more matched to demand, and requests for International searches will again be accepted from US applicants for applications in the fields of biotechnology and telecommunications.

     

    Comment

    It is good news that the EPO is once again able to undertake searches for PCT applications in these fields. Applicants electing this option should prepare their PCT applications with EPO practice in mind and may prefer to involve Jenkins at the time of filing the PCT application, even if it is to be filed in the USPTO, the JPO or elsewhere. Under the PCT rules that came into force on 1 January 2004, PCT processing will for practical purposes end upon completion of the International Search Report and its accompanying Written Opinion (together referred to now as the “Chapter I Report”). This means it is all the more important that the PCT application will be fully searched by the EPO. To ensure the search is complete, applicants should familiarize themselves with PCT Rule 13 and PCT International Search Guidelines Chapter VII.

    If required, Jenkins can be appointed as representative before the EPO as International Searching Authority, which can be useful for resolution of non-unity objections or borderline software cases that the EPO may be reluctant to search.