30/11/2015
On 1 November 2014, the European Patent Office (EPO) introduced the PCT Direct service. Under the service, a Patent Cooperation Treaty (PCT) application using the EPO as the international searching authority, and claiming priority from an earlier application that has been searched by the EPO, can be filed along with comments responding to any objections raised in the search report for the priority application. This appeared to be a commendable attempt to rectify the situation where the EPO, acting as the international searching authority, simply repeat the objections from the European search report (ESR) in the international search report (ISR), with no mechanism for the applicant to submit arguments in between. Further details on the PCT Direct service may be found in our article from November 2014 here.
When introduced, the PCT Direct service was only available to applicants who used the EPO as the receiving office for their PCT application. On 1 July 2015 this was extended to include any competent receiving office for the EPO, essentially any national patent office of a European Patent Organisation member state. It is possible that this is an indication that in its first eight months the service has been popular with applicants. Alternatively, the change could be an attempt to remove barriers, albeit small ones, to a service that has so far been underused. The EPO’s motivation is unclear since there are so far no figures detailing the extent to which the service has been used. Additionally, it is even less clear how successful the written submissions have been at avoiding a repeat of the ESR objections in the ISR. The official notice from the EPO on the expansion of the PCT Direct service can be found here.
Should You Go Direct?
The PCT direct service is likely to be most useful for applicants who;
- wish to file a PCT application claiming priority from an earlier application than has been searched by the EPO (generally a European application1);
- disagree with the European examiner’s objections raised in the earlier search report; and
- require a positive work product from the international phase, possibly for use as part of the IP5 patent prosecution highway (read more about this here).
An applicant in this position has two options in addition to filing a PCT Direct letter:
- If the applicant and the examiner disagree on the disclosure of a prior art document, the applicant may amend the specification before filing the PCT application to include a description of the prior art document outlining what the applicant believes is disclosed. This approach can be a bit hit-and-miss; experience suggests that such descriptions are not always successful in convincing the examiner. Furthermore, since one cannot present arguments with this approach, it is not useful in situations where the applicant agrees with the examiner on the disclosure of the prior art.
- Alternatively, the applicant could demand international preliminary examination (IPE) at which point it is possible to submit arguments. The disadvantage here is that IPE is expensive, about EUR 20002 and if the IPE report still includes objections despite the arguments, the applicant has no other opportunity to obtain a positive work product in the international phase.
PCT Direct offers several advantages over these two existing options. First, unlike the addition of a description of the prior art to the specification, actual arguments can be filed with the PCT application meaning the applicant can respond to a wider range of objections. Secondly, it is hoped the examiner will give more weight to PCT Direct comments than is sometimes given to a prior art description. Thirdly, and unlike IPE, PCT Direct gives the applicant another go at submitting arguments; if the PCT Direct arguments fail, the applicant has the option of requesting IPE and presenting further arguments. Lastly, there is no official fee for PCT Direct making it considerably cheaper than IPE.
Conclusion
July’s expansion is unlikely to affect many applicants. It is unclear how many have even been using the PCT Direct service since its inception, let alone how many of these applicants have been successful. That said, for those who qualify, it seems the PCT Direct service does offer a cost effective opportunity to present arguments before the issue of the ISR. On paper at least, PCT Direct may make the ISR more meaningful and could lead to a greater proportion of positive work products from the international phase of the PCT application which, in turn, could lead to more applications being accelerated. Failing that, the move at least makes filing first in Europe a slightly more attractive option, provided applicants and practitioners remember that PCT Direct exists.
- This may also be a national application of France, Netherlands, Belgium, Luxembourg, Italy, Turkey, Greece, Cyprus, Malta, San Marino or Lithuania since the EPO performs the national patent searches in these states.
- Details of official fees for IPE may be found here.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
