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Law & practice

Official Journal November 2018

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Citation: OJ EPO 2018, A95
Online publication date: 30.11.2018

IP5 pilot project on collaborative search and examination under the PCT – acceptance of international applications filed in French or German

I. Introduction

1. On 31 May 2018, the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People's Republic of China (SIPO) (now called the National Intellectual Property Administration of the People's Republic of China (CNIPA)) and the United States Patent and Trademark Office (USPTO), referred to jointly as the IP5 offices, announced the launch of the operational phase of the third pilot project on collaborative search and examination (CS&E) under the PCT (hereinafter "the pilot project") (OJ EPO 2018, A47). As announced, to date only international applications filed in English have been accepted for the pilot project.

2. Due to the strong response from applicants in the first two months of the operational phase, the EPO had already accepted over 40 international applications filed in English by mid-September 2018 in its capacity as competent International Searching Authority under Rule 35 PCT (also referred to as "the main International Searching Authority" within the framework of the pilot project). This initial batch needs now to be completed by around 10 international applications filed in French or German. At the moment, the EPO has temporarily stopped accepting international applications filed in English and will start accepting them again as of the beginning of the second year of the pilot project, i.e. 1 July 2019.

3. The EPO as main International Searching Authority will start accepting international applications filed in French or German as of 1 January 2019.

4. For international applications filed in French or German, the notice from the EPO cited above (OJ EPO 2018, A47) will apply, supplemented by the present notice.

II. Framework – international applications filed in French or German

5. For international applications filed in French or German, requests to participate in the pilot project may be filed as from 1 January 2019.

6. Where the international application is filed in French or German and the EPO, as the main International Searching Authority, determines that the participation requirements applicable upon receipt of the search copy are met, the application will be provisionally accepted for the pilot project and the applicant will be given one month from the date of notification of the provisional acceptance to submit an English translation of the application. English will be the working language used between the main International Searching Authority and the peer International Searching Authorities. It is in the applicant's interest to submit a high-quality translation since a poor-quality one may lead to objections of lack of clarity from the peer examiners.

7. Where an English translation of the application is not filed within the prescribed time limit, the EPO, as the main International Searching Authority, will notify the applicant that the application will not be subject to collaborative search and examination under the pilot project. In such cases, the EPO, as the main International Searching Authority, will not transmit provisional work products to the peer International Searching Authorities. It will simply transmit the international search report (Form PCT/ISA/210) (or, where appropriate, the declaration of non-establishment of an international search report (Form PCT/ISA/203)) and the written opinion (Form PCT/ISA/237), in the language of filing of the application, to the applicant and the International Bureau.

8. Where the applicant files an English translation of the application within the prescribed time limit, the EPO, as the main International Searching Authority, will transmit, in addition to the provisional work products, the English translation of the international application to the peer International Searching Authorities.

9. The EPO, as the main International Searching Authority, will then produce the final international search report (Form PCT/ISA/210) (or, where appropriate, the declaration of non-establishment of an international search report (Form PCT/ISA/203)) and the final written opinion (Form PCT/ISA/237), and, where applicable, a record of the search strategy, in the language of filing of the application.

III. Requirements for participation – international applications filed in French or German

10. For the sake of clarity, all the requirements to be met by applicants wishing to participate in the pilot project and filing an international application in French or German are stated below, even if this entails the repetition of certain requirements contained in the notice cited above (OJ EPO 2018, A47).

11. The requirements are as follows:

(a) The request to participate in the pilot project must be submitted using the standard participation form and filed together with the international application.

(b) The participation form and the international application must be filed with the EPO or the International Bureau as receiving Office.

(c) Where the participation form and the international application are filed with the EPO, they must be filed in electronic form using one of the following filing tools: the EPO Online Filing software (PCT update 1 October 2018 (build 3.51.261)), PCT-SAFE client version 3.51.085.261 (1 October 2018) or ePCT.

(d) The participation form and the international application must be filed in French or German.

(e) Where an international application filed in French or German has been provisionally accepted for the pilot project, an English translation of the application must be submitted within one month of the date of notification of the provisional acceptance.