INFORMATION FROM THE EPO
Notice from the European Patent Office dated 1 July 2005 concerning new Rule 44a EPC (introduction of the extended European search report), amendments to Articles 2 and 10 RFees and reduction of the search fee for supplementary European search reports under Article 157(3)(b) EPC
By decision of 9 December 20041, the Administrative Council of the European Patent Organisation amended the Implementing Regulations to the European Patent Convention (EPC) and the Rules relating to Fees (RFees). On 10 June 2005, the Administrative Council adopted a decision under Article 157(3)(b) EPC on reduction of the search fee for the supplementary European search report.2
The present notice gives more information about these amendments and the transitional provisions applicable.
I. Extended European search report (EESR)
1. Under new Rule 44a(1) EPC, "the European search report [is] accompanied by an opinion on whether the application and the invention to which it relates seem to meet the requirements of the European Patent Convention".
The extended European search report (EESR) comprises the search report, or supplementary European search report, and the opinion under Rule 44a(1) EPC (hereinafter "opinion").
New Rule 44a EPC applies to European patent applications filed on or after 1 July 2005, and to international applications with a filing date of or after 1 July 2005 which subsequently enter the European phase.
Now, unlike during the pilot project3, the EESR is obligatory: applicants can no longer opt out. And the new procedure also applies to the supplementary European search report under Article 157(2)(a) EPC.
2. If the application and the invention to which it relates do not meet all the requirements of the EPC, the objections to grant of a patent will be set out in the opinion.
If they do seem to meet the said requirements, a positive opinion is issued which may later serve as the basis for grant of a patent.
No time limit is set for the applicant to respond to the opinion nor is the time limit to file a request for examination affected. So the examination procedure begins when examination is validly requested – ie on payment of the examination fee under Article 94(2) EPC – or a reply is received to the communication under Article 96(1) EPC. The applicant may therefore use the EESR as the basis for an informed decision about pursuing the application further.
In the case of a positive opinion, in examination proceedings the applicant then receives the communication under Rule 51(4) EPC, provided a final topping-up search does not reveal new prior art under Article 54(3) EPC and the examining division concurs with the opinion.
If the opinion contains objections to grant of a patent, the examining division issues a communication under Article 96(2) and Rule 51(2) EPC, setting a time limit and referring to the content of the opinion. Then the normal examination procedure starts.
The applicant can shorten the procedure by filing arguments or amendments under Rule 86(2) EPC to meet the objections raised in the opinion. Then the communication under Article 96(2) and Rule 51(2) EPC cannot merely refer to the content of the opinion. The communication issued must take account of the amendments and arguments submitted.
3. The opinion is not part of the European search report, and therefore is not published with it under Article 93(2) EPC. However, once the EESR is issued to the applicant, it is part of the file and open to file inspection once the application has been published (Article 128(4) EPC).
II. Proceedings without EESR
1. If the applicant has paid the examination fee before receiving the search report and waives the communication under Article 96(1) EPC, then a valid request for examination has already been made. In such cases, examination proceedings can begin as soon as the search report has been issued. The Office then issues either an examination communication under Article 96(2) and Rule 51(2) EPC or a communication under Rule 51(4) EPC. So in these special cases, no opinion under Rule 44a EPC but rather a communication under Rule 51(2) or (4) EPC is sent to the applicant.
If there are objections to grant of a patent, the examination communication under Article 96(2) and Rule 51(2) EPC is issued as soon as possible after the search report. Under the BEST procedure (Bringing Examination and Search Together), the examination communication under Article 96(2) and Rule 51(2) EPC is drawn up more quickly, significantly reducing the period of time elapsing between receipt of the search report and receipt of the first examination communication. This also reduces the time available for filing amendments under Rule 86(2) EPC, but does not affect amendments under Rule 86(3) EPC.
If the examining division considers that the application and the invention to which it relates meet the requirements of the EPC, it issues a communication under Rule 51(4) EPC, provided a final search does not reveal new prior art under Article 54(3) EPC.
2. If the EPO acted as International Searching Authority, no supplementary European search report is drawn up on entry into the European phase.
III. Amendments to the Rules relating to Fees, and to the fees for drawing up supplementary European search reports
1. Search fee
For European and international applications with a filing date on or after 1 July 2005, the fee for the European or supplementary European search is EUR 960.
In accordance with the Administrative Council's decision of 10 June 2005,4 the EPO will draw up a supplementary European search report, on entry into the European phase, for:
international applications filed on or after 1 April 2005 for which the international search report was drawn up by the National Board of Patents and Registration of Finland,
and
international applications filed on or after 1 July 2005 for which the international search report was drawn up by the Austrian Patent Office, the Swedish Patent and Registration Office or the Spanish Patent and Trademark Office.
In these cases, the fee for the supplementary European search report is reduced by EUR 810.
2. Examination fee
For European and international applications for which a supplementary European search report is drawn up and which are filed on or after 1 July 2005, the examination fee is reduced to EUR 1 280. In the case of international applications for which no supplementary European search report is drawn up, the examination fee remains EUR 1 430.
3. New refund system
For European or international applications with a filing date on or after 1 July 2005, the system for search-fee refunds under Article 10 RFees is being brought into line with that for refunding international search fees under the amended Agreement between the European Patent Organisation and WIPO under the PCT (see OJ EPO 2003, 631). In other words, the basis for the refund is the earlier search, and the levels of refund are no longer expressed as percentages but as specific amounts which reflect the extent to which the EPO, when carrying out the search on a European patent application, benefits from an earlier search it has already performed.
By decision of 9 December 2004, the Administrative Council amended Article 10 RFees accordingly (OJ EPO 2005, 5). Apart from an editorial clarification, new Article 10(1) RFees corresponds to existing Article 10(3) RFees. New Article 10(2) RFees provides that the amount refunded depends on the type of earlier search and the extent to which the Office benefits from the earlier search report when carrying out the subsequent search. The EPO President's decision in respect of Article 10(2) RFees is published in the present issue5.It distinguishes different types of earlier EPO search, specifying the amount of the full refund for each type separately. Normally, provided it seems appropriate, this amount will be that paid for the earlier search; a partial refund will be 25% of the full refund. Where it is not appropriate to refund the fee paid for the earlier search, the amount of the refund corresponds to the fee payable hitherto for a non-extended search.