Notice from the European Patent Office dated 8 March 2017 concerning the processing by the EPO as International Searching Authority of informal comments on earlier search results ("PCT Direct")
1.1 On 18 August 2014, the European Patent Office (EPO) in its capacity as receiving Office and International Searching Authority announced the launch of a new PCT service called "PCT Direct", aimed at further improving the efficiency and quality of the procedure before the EPO as International Searching Authority as of 1 November 2014 (OJ EPO 2014, A89). The PCT Direct service was initially only available for international applications filed with the EPO as receiving Office.
1.2 As of 1 July 2015, the service was extended to the other receiving Offices (OJ EPO 2015, A51). As a result, PCT applicants selecting the EPO as International Searching Authority are able to use the service and submit PCT Direct letters irrespective of the receiving Office chosen. The electronic filing tools available at the EPO as receiving Office under the PCT as well as the ePCT system have been adapted to support this new service.
1.3 Under PCT Direct, an applicant filing an international application claiming priority from an earlier application already searched by the EPO is able to react to any objections raised in the search opinion drawn up for the priority application. This new service simplifies the assessment of the international application and adds to the value of the international search report and written opinion established by the EPO.
1.4 With the present notice, users are informed that the restriction whereby no explicit reference could be made by the examiner to the PCT Direct letter or its content will be lifted as of 1 April 2017. Details on the amended practice are provided in point 4.2 below.
2. Requests for PCT Direct
2.1 Applicants may request to have their international application processed under PCT Direct by filing a letter ("PCT Direct letter") containing informal comments aimed at overcoming objections raised in the search opinion established by the EPO for the priority application. Such informal comments are to be understood as arguments regarding the patentability of the claims of the international application and also possibly as explanations regarding any modifications to the application documents, in particular to the claims, in comparison with the earlier application. PCT Direct letters do not form part of the international application.
2.2 Upon receipt of a PCT Direct letter, the international application will be processed under PCT Direct only where the following two requirements are met:
(a) the informal comments are filed together with the international application with the receiving Office in the form specified in point 3 below, and
(b) the international application claims priority of an earlier application searched by the EPO (international, European or national first filing). [ 1 ]
3. Form of submissions
3.1 PCT Direct letters are to be presented as a separate document attached to the international application; they should be entitled "PCT Direct / informal comments" and clearly identify in the header the application number of the earlier application.
3.2 If the claims and/or the description of the international application differ from those of the earlier application, applicants should preferably submit a marked-up copy indicating the differences.
3.3 The applicant may also annex a copy of the earlier search opinion to the PCT Direct letter.
3.4 The PCT Direct letter, any marked-up copy of the claims and/or description as well as the earlier search opinion, if annexed, are to be submitted as a single document in PDF format (not as ZIP) and indicated by checking Box IX of the PCT request form (check list, Form PCT/RO/101). In particular, the words "PCT Direct / informal comments" should be specified under point 11, "Other", for filings on paper and as a remark for filings in electronic form using the EPO online filing software or the EPO new online filing (CMS). [ 2 ] For filings in electronic form using WIPO's ePCT portal, the PCT Direct letter and any marked-up copy of the claims and/or description are to be uploaded as "Other documents" by selecting the box "Applicant letter to ISA concerning earlier search ("PCT Direct")".
3.5 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.
4. Processing of PCT Direct letters
4.1 PCT Direct letters filed with the receiving Office will be transmitted to the EPO as International Searching Authority and to the International Bureau of WIPO together with the search copy and record copy, respectively.
4.2 At the EPO as International Searching Authority, the examiner performing the international search will take informal comments filed under PCT Direct into account when preparing the international search report and written opinion, provided that they meet the requirements listed under points 2.2 and 3 above. The written opinion will reflect this by acknowledging the PCT Direct letter and addressing its content insofar as it is relevant to the international search procedure. The examiner however may make explicit reference to the earlier search opinion only if it is annexed to the PCT Direct letter.
4.3 In accordance with the PCT provisions on file inspection, PCT Direct letters will be available to the public on WIPO's PATENTSCOPE.
5. Entry into force
5.1 The present notice enters into force on 1 April 2017 and will apply to international applications filed on or after that date.
5.2 As from its entry into force, the present notice will replace the notice from the European Patent Office dated 22 June 2015 concerning the processing by the EPO as International Searching Authority of informal comments on earlier search results ("PCT Direct") (OJ EPO 2015, A51).
[ 1 ] As on 1 April 2017, the EPO performs national searches for the following states: France, Netherlands, Belgium, Luxembourg, Italy, Turkey, Greece, Cyprus, Malta, San Marino, Lithuania, Latvia and Monaco. Please note that international-type searches are not covered by the PCT Direct procedure.
[ 2 ] For online filings using the EPO new online filing (CMS), applicants should indicate "Communication concerning PCT Direct" as document type and specify "PCT Direct / informal comments" in the "Remarks" field. In the case of the EPO online filing software, applicants should select "Applicant letter to ISA concerning earlier search (PCT Direct)" as document type from the sub-tab "Accompanying items" on the "Content" tab, and indicate "PCT Direct / informal comments" as a "Remark" on the "Annotate" tab.