Pages 428-432

L. PCT

L.4 The EPO as a Supplementary International Searching Authority (SISA)

Notice from the European Patent Office dated 24 March 2010 concerning the carrying out of supplementary international searches under the PCT

OJ EPO 2010, 316

1. Introduction

In October 2009 the Administrative Council of the European Patent Organisation took the decisions necessary for the European Patent Office to start carrying out supplementary international searches (SIS) under Rule 45bis PCT as of 1 July 20101. The Agreement between the EPO and the International Bureau of WIPO (IB) has been amended accordingly2.

General information on SIS and on the filing of a request for SIS can be found in the PCT Applicant's Guide - Introduction to the International Phase (PCT Guide), Par. 8.001-8.053. The request for a SIS to be carried out by the EPO is to be submitted with the IB (not with the EPO), and can be filed as of 1 July 2010 provided the time limit of 19 months from the priority date has not yet expired in the application concerned.

The EPO will carry out SIS in accordance with the updated PCT International Search and Preliminary Examination Guidelines that are currently under preparation. The 1 April 2010 update of the Guidelines for Examination before the EPO does not yet cover SIS. The present notice contains information specific to SIS proceedings before the EPO.

2. Fees

The fee for SIS is set at the same level as the fee for an international search (currently EUR 1 785). This fee is not to be paid to the EPO, but is to be paid together with the SIS handling fee (currently CHF 200) in Swiss francs to the IB.

3. Language

If the international application was not filed in English, French or German, and no translation into any of these languages has been filed for the purposes of main international search or international publication, a translation of the international application into English, French or German must be filed together with the request for SIS to the IB. The Supplementary international search report (SISR) will be drawn up in the language in which the international application was filed or translated.

4. Applications containing sequence listings

Where the international application contains the disclosure of one or more nucleotide and/or amino acid sequences, the applicant should file a copy of the sequence listing in electronic form complying with Annex C to the Administrative Instructions under the PCT together with the request for SIS. If the applicant does not fulfil this requirement, the EPO will invite the applicant to furnish an electronic copy of the sequence listing complying with that Annex and to pay the late furnishing fee under Rule 13ter.1(c) PCT3.

5. Limitations

The EPO will not carry out SIS if the international application has been filed by a national or resident of the United States of America with the United States Patent and Trademark Office or the International Bureau as receiving Office, and where such application contains one or more claims relating to the field of business methods, as defined by the International Patent Classification units listed in Annex A to the Agreement between the EPO and WIPO under the PCT. Furthermore, the EPO will only accept a limited number of SIS requests and will specify the number each year in a notification to the IB. For 2010, the EPO has limited the number of SIS requests it will accept to 700.

6. Scope

The scope of a SIS by the EPO is the same as the scope of an international search by the EPO. Although no separate written opinion is established, the EPO will provide explanations under Rule 45bis.7(e) PCT that will be of equal value as a written opinion by the EPO as International Searching Authority (WO/ISA).

7. Review procedure in the case of a non-unity finding

The decision of the President of the EPO dated 24 June 2007 providing for review panels and the notice from the EPO concerning the protest procedure have been updated to cover the review procedure under Rule 45bis.6 PCT4. The review fee is currently set at EUR 790.

8. Copies of documents cited in the SISR

The applicant will receive a copy of each document cited in the SISR free of charge.

9. Procedure after entry into the European phase

The EPO will not draw up a supplementary European search report if it has drawn up an SISR for an international application. Therefore the fee for a supplementary European search under Rule 159(1)(e) EPC will not become due at 31 months from the priority date if the EPO has drawn up either an international search report or a SISR.

Within the framework of the "Raising the bar" initiative the Administrative Council amended Rule 161 EPC in March 2009, obliging the applicant to file a substantive response to a WO/ISA or international preliminary examination report (IPER) drawn up by the EPO. In October 2009 Rule 161 EPC was further amended to include an obligation for the applicant to file a substantive response to the explanations made under Rule 45bis.7(e) PCT in a SISR drawn up by the EPO5. For practical reasons both amendments to Rule 161 EPC entered into force on 1 April 2010.

A further amendment to the EPC Implementing Regulations made in October 2009 concerns Rule 164(2). If, in an application where the EPO has drawn up an SISR, the examining division finds that the application lacks unity of invention, or protection is sought for an invention not covered by the SISR, the applicant will be invited to limit the application to the invention covered by the SISR6.

The 1 April 2010 update of the Guidelines for Examination before the EPO does not yet cover SIS by the EPO and the October 2009 amendments to the Implementing Regulations. The sections of the Guidelines dealing with Rule 161 EPC as amended in March 2009 and with Rule 164 EPC will however be applicable mutatis mutandis to the October 2009 amendments of Rules 161 and 164 EPC, with the proviso that at the SIS stage there will have been no opportunity for the applicant to have further inventions searched against the payment of additional search fees.