K. Adamczyk and H. van Driel (NL), European Patent Attorneys
The EPO Academy and the EPI have organized conferences called "Guidelines2Day", which are repeatedly held in several locations throughout Europe. The session in The Hague, which took place on the 13th of March this year, was well visited. It provided an opportunity to professional representatives to discuss new developments in EPO procedures with the EPO and with representatives from the EPI. One of the topics that were addressed was the PCT-Direct Service.
The PCT Direct service was introduced for applicants applications claiming priority from an application searched by the EPO. In particular, it is suitable for interested in a positive Written Opinion of the International Search Authority (WO-ISA) in cases where the EPO has raised objections in the search opinion for the priority application. During the Guidelines2Day session the recently announced new practice of the PCT Direct Service was discussed. According to the enhanced PCT Direct Service the International Search Report (ISR) and the WO-ISA should address directly amendments in the PCT application with respect to the priority application, provided these are properly indicated in the PCT Direct Letter, and arguments and observations made by the applicant in the PCT Direct Letter. In this letter we discuss the status of the PCT Direct Service.
Benefits of examination in the international phase
Traditionally, examination only started after the request for examination was filed. In case of a PCT application, this was typically 3 to 4 years after the priority date. Since 2005, each international search report is accompanied by a written opinion that is de facto a first examination report.
A positive written opinion in the international phase, either together with the International Search Report or after International Preliminary Examination, often results in a relatively easy and fast grant of a European patent. This is particularly the case when the European Patent Office (EPO) acts as International Search Authority (ISA). If all objections can be overcome in the International phase, the European Examiner can issue an intention to grant as first communication after conversion of the PCT-application into a European patent application. Additionally, a positive ISA-WO may be helpful for other purposes, such as for a relatively easy and fast grant during other national or regional phases or for convincing financiers.
However, in particular for PCT applications claiming priority and due to a somewhat limited number of communications in the PCT phase, it may be difficult to get a fully positive WO-ISA.
Making use of the priority application
Many applicants file a PCT application as a second application at the end of the priority year. The fees for a PCT application are relatively high. By doing so, the maximum lifetime of a patent can be extended with one year. Furthermore, one may evaluate the patented invention on the basis of a search report for the priority application. The idea underlying the new PCT-Direct Service is to stimulate applicants to amend the PCT application relative to the priority application, such that the filed PCT application (including the claims) addresses objections raised in any search report and written opinion for the priority application.
Procedural implementation of the PCT-Direct Service
The main changes in the PCT Direct Service clarify the formal steps that should be taken. Informal comments should be filed in the form of a "PCT Direct letter" together with the international application and should aim at overcoming the objections raised for the priority application, in particular by explaining how the amendments made compared to the priority application and remedy the objections and/or refuting them.
Formally, the priority application is an independent application from a later PCT application, and at the time of preparing a written opinion of the PCT application, the search opinion for the priority application is not public. Therefore, there was no way for the examiner preparing the PCT-written opinion to acknowledge a response of the applicant. Therefore, the applicant could not be sure beforehand whether the Examiner had taken into account any arguments made in the "PCT Direct Letter". Indeed, often it seemed that the ISR-WO neglected or overlooked amendments made in the description of the application and arguments made in the "PCT Direct Letter". In this way, the PCT Direct Service seemed of no use to the applicant.
In order to solve this, the EPO has announced the procedure to follow. In the new practice, informal comments filed under PCT Direct must be self-contained. This means that third parties must be able to fully understand these comments as they stand. The reason for this requirement is that the search report, the search opinion or any other submissions that are part of the file of the earlier application may not be publicly available. The applicant needs to clearly indicate in the letter the amendments made in the PCT application by using track changes with respect to the priority application. Furthermore, when reference is made to the search opinion in the PCT Direct letter, the applicant is advised to append the search opinion to the Letter. It is noted, that in accordance with the PCT provisions on file inspection, PCT Direct letters will be available to the public on WIPO's PATENTSCOPE.
During the Guidelines2Day sessions held (we attended on March 13th in The Hague), it was stated that if these requirements are met, the ISR and the WO-ISA will acknowledge the PCT Direct Letter. In particular, the amendments made on filing the PCT application, as well as the arguments and observations made by the applicant in the PCT Direct Letter, will be directly addressed. If needed, the Written Opinion may indicate the status of the objections raised in the search opinion for the priority application with direct reference to the search opinion.
New practice: enhancing the PCT-Direct Service
When the EPO indeed handles the PCT Direct Letter as promised, the PCT Direct Letter will give another opportunity to move towards a positive opinion. As such, the ISR and WO-ISA can provide a better basis for proper and early decision-making for further steps to be taken in the PCT procedure. A positive outcome in the international phase enhances the chances for expediting the prosecution in the European phase and may also support access to Patent Prosecution Highway pilot with partner offices.
Clearly, usefulness of the PCT-Direct Letter will depend on the applicant. An applicant may still want to be careful in not giving away positions and arguments in the PCT Direct Letter during the international phase, especially when this would not be absolutely necessary or when this would be prejudicial for legal positions in all relevant national phases or jurisdictions. Even more, not all applicants have the same desire for an early certainty of patentable subject-matter. But the applicant takes then the risk that he will be invited for Oral Proceedings during the European examination as the EPO considers that it takes too long to bring the application in a form ready for grant.
We may summarize the changing environment, as is also proclaimed by one of our colleagues Joost Grootscholten, as follows: "A PCT application provides clear opportunities for using PCT direct service and PCT Chapter II procedure in order to establish an advantageous position at the end of the International Phase in the International Preliminary Report on Patentability (IPRP). Opportunities to proceed to an advantageous position will be less frequent during the European Procedure for the EPO due to an increasing pressure on the efficiency of the EPO. That's why the use of PCT direct and PCT Chapter II procedure becomes more and more important."
The new PCT-Direct practice has entered into force on 1 April 2017 and applies to international applications filed on or after that date. Filing a PCT Direct letter for an International Search at the EPO has become more attractive for PCT applications, as the EPO now guarantees that the Examiner should consider in the ISR-WO the PCT Direct Letter, including amendments and the arguments submitted. It has to be seen whether the EPO in practice sticks to its promise to take the content of the PCT Direct letter into consideration for the ISR and WO-ISA. Moreover, this service is only provided to the applications, wherein the priority application was searched by the EPO.
- OJ EPO 2017, A21
- Private communication