As I explained in my October 25th post, the European Patent Office (“EPO”) has recently announced a series of rule changes that will become effective on April 1, 2010. The topic of this post is the new EPO rule 70(a) which will force applicants to respond to written opinions with a short time frame or else the application will be deemed to be withdrawn. This rule will apply to any application for which a search report is issued after 1 April 2010.
When the EPO carries out a search, they will issue a written opinion. At present, there is no requirement to respond to the written opinion until the substantive examination has occurred. Currently, if no response to the written opinion has been filed, the EPO will typically issue a communication setting a four-month term for responding to any objections raised in the written opinion. In other words, applicants currently have at least 6 months, and normally at least 1 year, from issuance of the written opinion before they need to respond to any objections.
Under rule 70a (entitled: “Response to the extended European search report”), the applicant must respond to the written opinion, otherwise the application will be deemed withdrawn. Rule 70a, states:
(1) In the opinion accompanying the European search report the European Patent Office shall give the applicant the opportunity to comment on the extended European search report and, where appropriate, invite him to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period referred to in Rule 70, paragraph 1.
(2) In the case referred to in Rule 70, paragraph 2, or if a supplementary European search report is drawn up on a Euro-PCT-application, the European Patent Office shall give the applicant the opportunity to comment on the extended European search report and, where appropriate, invite him to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period specified for indicating whether he wishes to proceed further with the application.
(3) If the applicant neither complies with nor comments on an invitation in accordance with paragraph 1 or 2, the application shall be deemed to be withdrawn.”
Several of my European colleagues tell me that rule 70(a) will also be applied in situations the EPO has acted as the International Searching Authority (ISA) or the International Preliminary Examination Authority (IPEA) in PCT applications. For PCT applications where the EPO is the search authority, the term for response will be set by the EPO. According to many reputable European law firms, this term is likely to be two months. Other sources indicate the term could be as short as one month.
In response to Rule 70(a), several sources now recommend that you avoid using the EPO as your ISA in your PCT applications to avoid this strict deadline. It certainly seems that is the intended consequence of the new rule. In recent years, the EPO has been swamped with PCT searches and it has affected their ability to respond to their domestic applications. They have certainly indicated that they are looking for ways to respond to the massive influx of patent applications. Limiting the number of PCT applications is one way of responding to their backlog.
If you are a U.S. applicant, should you stop using the EPO as a PCT search authority? That is a good question without a clear answer. The EPO has an excellent reputation. Many lawyers believe that it is the best search authority in the world. (However, other lawyers have begun to question this reputation after receiving questionable searches from the EPO during the last couple of years.)
Other search authorities available to U.S. applicants are: the USPTO, the Korean Patent Office, and the Australian Patent Office. The USPTO outsources their PCT searches to outside contractors. It is generally believed that the quality of such searches is somewhat mixed (to put it kindly). Furthermore, a PCT written opinion from the USPTO is likely to be issued beyond the 30 month date. So, a USPTO search will be worthless in helping your clients decide whether to go into the national stage phase. I have not used the USPTO as an ISA for years. However, we are hearing rumors about a few timely responses from the USPTO. Could David Kappos actually have an impact?
In an effort to limit the number of applications they receive, the Australian Patent Office places strict limits on the technical subject matter that it will search. So, the Australian Patent Office is often not a practical solution. The Korean Patent Office is strong in certain technological areas, but not other areas.
So, as a U.S. applicant, your choices for a PCT search authority are not that great. Personally, I would probably stick with the EPO as the ISA in most cases. Of course, I would also be prepared to address any objections in the written opinion when I enter the European National Phase. However, if you have a technology where you know the Korean Patent Office will likely issue a complete search, Rule 70(a) might persuade you to select the Korean Patent Office as your PCT search authority – especially in light of the relatively inexpensive Korean search fees. If you are really daring, you might event try the USPTO.
Bill Naifeh is a patent attorney in Dallas, Texas. He often works with clients on a part time “in-house” basis to assist clients with the management of their patent portfolios. More information may be found at www.naifeh.com.