Notice from the European Patent Office dated 1 March 2011 concerning informal clarification by the European Patent Office acting as International Searching Authority under the Patent Cooperation Treaty (PCT)
OJ EPO 2011, 327
In an effort to further enhance the quality of the international search, the EPO acting as International Searching Authority under the Patent Cooperation Treaty (PCT) may seek informal clarification from the applicant where the description, the claims or the drawings fail to comply with the prescribed requirements, such as clarity or support of the claims by the description, to such an extent that no meaningful search for all or part of the claims can be carried out. This practice, which is based on paragraphs 9.34 and 9.35 of the PCT International Search and Preliminary Examination Guidelines, remains informal in nature. In particular, the EPO is under no obligation to ask for informal clarification and there is no sanction if the applicant does not respond. However, it is in the applicant's own interest to respond, as this will increase his chances of obtaining a full international search report. Further explanations with respect to this new practice are provided in the paragraphs below.
2. Communication with the applicant
An examiner who finds it appropriate to ask for informal clarification may contact the applicant by phone or in writing, preferably by fax. In the former case, the minutes of the conversation will be communicated to the applicant in the form of a note summarising the informal clarification. If the applicant could not provide the required clarification during the telephone consultation, a time limit for reply will be indicated in the minutes. In the latter case, an invitation to provide informal clarification may be issued and transmitted by fax to the applicant. In both cases, the EPO will make use of new Form PCT/ISA/207. A sample of that form is made available on the EPO website for information purposes.
3. Time limit for reply
As a rule, the time limit set to respond to an invitation to provide informal clarification is two weeks from the date of mailing of that invitation. The applicant may respond either by submitting the informal clarification in writing, preferably by fax, or otherwise in a (further) telephone conversation. If the applicant does not respond within the applicable time limit, the EPO will proceed with the search based on what can be understood, which might result in an incomplete search or, in exceptional cases, a Declaration of Non-Establishment of International Search Report ("declaration"). Any reply received after the applicable time limit, but before the establishment of the (incomplete) international search report or declaration may still be taken into account by the examiner.
Applicants are reminded that amended claims cannot be filed with the EPO as International Searching Authority. Amended claims may only be filed later on with the International Bureau within the applicable time limit under Rule 46.1 PCT, or with the EPO as International Preliminary Examining Authority in Chapter II proceedings.
The new practice applies to all international applications filed on or after 1 April 2011, and to any pending application for which an international search report or a declaration has not yet been issued on that date.