Accueil Patents in Europe Connections with the PCT Procedure Authority Responsible for Search or Examination (ISA, SISA, or IPEA)

Authority Responsible for Search or Examination (ISA, SISA, or IPEA)

EPO-WIPO Agreement

To Act as ISA or IPEA

The EPO may act, during the PCT procedure (A152 EPC):

  • ISA (International Searching Authority) or
  • IPEA (International Preliminary Examining Authority).

The EPO has entered into an agreement with WIPO pursuant to A16.3.b PCT and A32.3 PCT (« New Agreement between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization concerning the functions of the European Patent Office as International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty« , OJ 2017, A115).

To Act as SISA

The EPO may also act as SISA during the PCT procedure under an agreement signed with WIPO (OJ 2010, 304, this new agreement essentially reproduces the same terms as the « New Agreement between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization concerning the functions of the European Patent Office as International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty« , OJ 2017, A115, with the addition of the possibility to act as SISA).

Conditions

ISA

Designation by the RO

The EPO may act as ISA for any international application if the RO (Receiving Office) has designated it for this purpose (« New Agreement between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization concerning the functions of the European Patent Office as International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty« , OJ 2017, A115, A3.1).

The possibility for ROs to designate one or more ISAs is provided under A16.2 PCT, A16.3 PCT together with R35.1 PCT and R35.2 PCT.

The ROs that allow such designation of the EPO as ISA are:

Designation by the Applicant

Among the possible ISAs (as permitted by the RO), the applicant must designate the EPO as ISA (R4.1.b.iv PCT and R4.14bis PCT).

Language

The application or its translation for the purposes of the search must be in (« New Agreement between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization concerning the functions of the European Patent Office as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty« , OJ 2017, A115, A3.1 together with Annex A as amended by « PCT – Agreement between the EPO and WIPO under the PCT« , OJ 2018, A24):

  • German,
  • French,
  • English,
  • Dutch (only if the RO is the industrial property office of the Netherlands).

SISA

Principle

The EPO may act as SISA (OJ 2010, 304, point 3.4).

Language

The application or its translation for the purposes of the supplementary international search must be in (OJ 2010, 304, Annex E):

  • German,
  • French,
  • English.

IPEA

Designation by the RO

The EPO may act as IPEA for any international application if the RO (Receiving Office) is bound by Chapter II of the PCT and has designated it for this purpose (« New Agreement between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization concerning the functions of the European Patent Office as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty« , OJ 2017, A115, A3.2).

The possibility of designating one or more IPEAs by the ROs is provided for under A32.2 PCT together with R59.1.a PCT.

The ROs that allow such designation of the EPO as IPEA are:

ISA previously used

Furthermore, it is necessary that the ISA having carried out the previous search was (« PCT – Agreement between the EPO and WIPO under the PCT« , OJ 2014, A117 amending Annex A of this agreement):

  • the EPO,
  • or the Office of a state party to the EPC (which has not waived its right to act as ISA or IPEA under the centralisation protocol for certain applications):
    • AT (Austria),
    • ES (Spain),
    • SE (Sweden),
    • FI (Finland) or
    • XN (Nordic Patent Institute);

If the RO is the JPO or the USPTO, only the EPO may have acted as ISA (PCT Applicant’s Guide – Annex C – US or PCT Applicant’s Guide – Annex C – JP).

Language

The application or its translation for examination purposes must be in (« PCT – Agreement between the EPO and WIPO under the PCT« , OJ 2018, A24 amending Annex A of this agreement):

  • German,
  • French,
  • English,
  • Dutch (only if the RO is the industrial property office of the Netherlands).

Limitation of the EPO’s competence

Exclusion of the subject matter searched or examined

The EPO has indicated that it is not obliged to perform its function as ISA or IPEA to the extent that it considers the international application relates to subject matter referred to in PCT Rule 39.1 or PCT Rule 67.1 (« New Agreement between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization concerning the functions of the European Patent Office as an International Searching Authority and an International Preliminary Examining Authority under the Patent Cooperation Treaty« , OJ 2017, A115, A4) unless, for a European application, it would carry out the search or examination (« New Agreement between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization concerning the functions of the European Patent Office as an International Searching Authority and an International Preliminary Examining Authority under the Patent Cooperation Treaty« , OJ 2017, A1157, Annex B).

This limitation is consistent with PCT Article 16(3)(b) (ISA) or PCT Article 32(3) (IPEA).

Thus, the excluded subject matter would likely include:

  • scientific and mathematical theories (equivalent to EPC Article 52(2)(a));
  • plant varieties, animal breeds, essentially biological processes for the production of plants or animals, other than microbiological processes and the products thereof (equivalent to EPC Article 53(b));
  • plans, principles or methods for doing business, performing purely mental acts or playing games (equivalent to EPC Article 52(2)(c));
  • methods for treatment of the human or animal body by surgery or therapy, and diagnostic methods (equivalent to EPC Article 53(c));
  • mere presentations of information (equivalent to EPC Article 52(2)(d));
  • computer programs as such (equivalent to EPC Article 52(2)(c)).

Therefore, the following should not be excluded, contrary to the EPO’s practice for a European application:

Redirection of applications?

EPO as ISA / IPEA

Since January 1, 2015, PCT applications (« PCT – Agreement between the EPO and WIPO under the PCT« , OJ 2014, A117, amending Annex A of this agreement) filed by a U.S. national or a person domiciled in the United States of America with the USPTO or IB as RO are processed regardless of the technical field.

For applications filed before January 1, 2015, they are « redirected » to the USPTO as ISA or as IPEA if the application contains a claim relating to the field of business methods (G06Q and subclasses).

However, this does not mean that business methods will be searched by the EPO (« Notice from the European Patent Office, dated October 1, 2007, concerning methods in the field of economic activities« , OJ 2007, 592).

EPO as SISA

There is no redirection or search if such an application is submitted to the EPO as SISA (« WIPO-EPO Agreement« , OJ 2010, 304, Annex E.3).

Number of searches for the SISA

The EPO as SISA does not perform more than 700 additional searches per year (« WIPO-EPO Agreement« , OJ 2010, 304, Annex E.5).

Special points

Regarding the EPO as ISA

If the EPO has already performed a search for an earlier application

If the EPO has performed a search for an application from which priority is claimed, the applicant may submit observations regarding the objections raised in the search report of that earlier application (so-called PCT Direct procedure, « Notice from the European Patent Office, dated August 18, 2014, concerning the processing of informal comments on earlier search results by the EPO acting as receiving Office and International Searching Authority under the PCT« , OJ 2014, A89).

To submit these observations, the following is required:

  • Claim priority at filing (for which the search was performed by the EPO).
  • Submit a separate letter to the EPO (acting as RO) together with the international application:
    • Entitled « PCT Direct / informal comments »;
    • In which the number of the earlier application is clearly indicated;
  • Indicate in the PCT request that a PCT Direct letter is being filed.

Clarity issue

If the ISA considers that the description, claims, or drawings do not allow a meaningful search to be carried out (e.g., lack of clarity), it declares that it will not establish a search report (A17.2(a)(ii) PCT), possibly for certain claims only (A17.2(b) PCT).

The EPO provides an informal procedure to first request explanations from the applicant before establishing the search report (OJ 2011, 327).

Unity issue

If the ISA considers that there is a unity issue, the applicant may pay the additional official fees subject to protest, i.e., by attaching a reasoned statement demonstrating that the application meets the requirement of unity of invention (R40.2(c) PCT) or that the number of official fees requested is excessive.

In this case, the protest is examined by a « review panel. »

For the EPO, this panel consists of 3 examiners (one of whom is the examiner who raised the objection). The decision of the review panel indicates the composition of the panel (« Decision of the President of the European Patent Office, dated June 9, 2015, establishing review panels for the implementation of the protest and review procedures provided for under the PCT« , OJ 2015, A59).

Collaboration with other ISA offices (US, JP, KR, CN)

The 5 offices (US, JP, KR, CN and EP) have agreed to collaborate at the request of the applicant (« IP5 Collaborative Search and Examination Pilot Project under the PCT« , JO 2018, A47).

If an applicant so wishes, the search is carried out by the main ISA, but the other four offices are consulted to collaborate on the search.

The applicant’s request must be formalized by submitting a form with the international filing.

However, it is necessary that the filings be in English (« IP5 Collaborative Search and Examination Pilot Project under the PCT« , JO 2018, A47), in French or in German (« IP5 Collaborative Search and Examination Pilot Project under the PCT – Admission of international applications filed in German or French« , JO 2018, A95).

Regarding the EPO as IPEA

Request submitted in electronic form

For the examination request, it is possible to submit this request in electronic form via EPOLINE / CMS or online form (R89bis.2 PCT together with R2(1) EPC and the « Decision of the President of the European Patent Office, dated 9 May 2018, on the electronic filing of documents« , JO 2018, A45).

The PCT-DEMAND plug-in of EPOLINE should then be used (« Notice from the European Patent Office, dated 13 June 2014, concerning the online filing of the demand for international preliminary examination under Chapter II of the PCT« , JO 2014, A71).

Written opinion of the ISA considered as the first written opinion of the IPEA

The ISA issues a written opinion concerning:

If the EPO is also the IPEA, this written opinion is considered as the first written opinion of the IPEA, and the applicant is invited to respond to it (as an indication is systematically included in the written opinion stating this in accordance with R43bis.1.c PCT) (« Procedure followed by the European Patent Office acting as International Preliminary Examining Authority (IPEA) for applications filed as from 1 January 2004« , JO 2005, 493).

Second written opinion

Before issuing a negative examination report (« Notice from the European Patent Office, dated 31 August 2011, concerning the establishment of a second written opinion in the procedure under Chapter II of the PCT« , OJ 2011, 532, points 3 and 4):

  • and if the EPO was also the ISA:
    • The EPO issues at least one second written opinion (the first being the WOISA established by the EPO/ISA)
      • if a substantive response has been filed (amendments and/or arguments) within the time limit in reply to the first written opinion;
      • and if objections remain;
  • and if the EPO was not the ISA:
    • The EPO issues at least one second written opinion (the first being the first written opinion established by the EPO/IPEA)
      • if a substantive response has been filed (amendments and/or arguments) within the time limit in reply to the first written opinion;
      • and if objections remain.

The time limit for responding to this second written opinion is between 1 and 2 months (often 2) (« Notice from the European Patent Office, dated 31 August 2011, concerning the establishment of a second written opinion in the procedure under Chapter II of the PCT« , OJ 2011, 532, point 6):

Telephone interviews

Before the examination report is established, the applicant may request a telephone interview. As a rule, the EPO will not grant more than one interview (R66.6 PCT) (« Notice from the European Patent Office, dated 31 August 2011, concerning the establishment of a second written opinion in the procedure under Chapter II of the PCT« , OJ 2011, 532, point 5.1).

If the request for an interview is made before the second written opinion, a record is communicated to the applicant, who may then respond to it (this communication then replaces the « second written opinion ») (« Notice from the European Patent Office, dated 31 August 2011, concerning the establishment of a second written opinion in the procedure under Chapter II of the PCT« , OJ 2011, 532, point 5.2).

If the request for an interview is made after the second written opinion but before the examination report is established, a record is communicated to the applicant, but no invitation to submit further amendments/arguments is attached (« Notice from the European Patent Office, dated 31 August 2011, concerning the establishment of a second written opinion in the procedure under Chapter II of the PCT« , OJ 2011, 532, point 5.4).

Supplementary search

Since 1 July 2014, the IPEA carries out a supplementary search to discover the prior art that was published or became available after the date on which the international search report was established (R66.1ter PCT together with « Notice from the European Patent Office, dated 12 May 2014, concerning the introduction of a supplementary search in the procedure under Chapter II of the PCT« , OJ 2014, A57, point 2.2).

The supplementary search will not extend beyond the subject matter that was the subject of the search carried out by the ISA (« Notice from the European Patent Office, dated 12 May 2014, concerning the introduction of a supplementary search in the procedure under Chapter II of the PCT« , OJ 2014, A57, point 2.3).

In any event, it will be necessary to limit the subject matter to be searched if the claims are not considered to be unitary (« Notice from the European Patent Office, dated 12 May 2014, concerning the introduction of a supplementary search in the procedure under Chapter II of the PCT« , OJ 2014, A57, point 2.4).

This supplementary search is mentioned in the examination report (R70.2.f PCT).

International-type search

International-type searches are provided for under A15.5 PCT.

The EPO may thus be entrusted with searches for national applications (from a Contracting State and if the national law of that State so provides). To determine whether States provide for such a search, it is necessary to consult the applicant’s guide, Annex B1.

These searches are similar to international searches except in cases of lack of unity of invention, where the procedure is then aligned with the European procedure (Guidelines B-II 4.5).

For this type of search, the search official fee is [montant_epo default= »1145 € » name= »Barème des taxes et des redevances – recherche de type internationale – premier dépôt »] for first filings or [montant_epo default= »1795 € » name= »Barème des taxes et des redevances – recherche de type internationale – non premier dépôt »] for other cases (Schedule of official fees, point 2.2.1).

Search or examination official fees

Search official fee

See « The prior art search ».

Examination official fee

Amount

The examination official fee provided for under R58.1.a PCT is set by the EPO at [montant_epo default= »1850 € » name= »A2(1).19 RRT »] (R158(2) EPC together with A2(1).19 RRT).

In the event of late or incomplete payment of the examination official fee (R58bis.1.a PCT), the EPO requests payment of a late payment official fee (« Decision of the President of the European Patent Office, dated 26 February 1998, concerning the late payment fee referred to in Rule 58bis.2 PCT« , OJ 1998, 282, « Schedule of fees and official fees of the EPO (applicable as from 1 April 2012)« , OJ 3/2012, supplement, point 5.11):

  • amounting to 50% of the amount of the missing official fees,
  • but not less than the processing official fee (i.e. [montant_epo default= »165 € » name= »Barème des taxes et des redevances – Taxe de traitement »], Schedule of official fees, point 5.10),
  • but not exceeding twice the processing official fee (i.e. 2x[montant_epo default= »165 € » name= »Barème des taxes et des redevances – Taxe de traitement »], Schedule of official fees, point 5.10).

Refund

Any amount collected in error, overpaid, etc. is refunded (« New Agreement between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization concerning the functions of the European Patent Office as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty« , OJ 2017, A115, Annex C, Part II, point 1).

If the request for examination is deemed not to have been filed (R58.3 PCT), the examination fee is refunded in full (« New Agreement between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization concerning the functions of the European Patent Office as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty« , OJ 2017, A115, Annex C, Part II, point 4).

If the application is withdrawn before the start of the examination, the search fee is refunded at 75 % (« New Agreement between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization concerning the functions of the European Patent Office as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty« , OJ 2017, A115, Annex C, Part II, point 5).

Reduction

A 75 % reduction of the examination fee is granted for certain developing countries (OJ 2020, A4).

The list of these « low-income or lower-middle-income countries » is established by the World Bank.

To benefit from this reduction, all applicants must meet this criterion.

Appeals

The EPO Boards of Appeal have no jurisdiction to review decisions of the ISA or the IPEA (J20/89).

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