Search for prior art

The research allows the European Patent Office to get an idea of the existing prior art that may be opposed to your request (Guidelines B-II 2).

Contents

Chapter 1. Jurisdiction

Chapter 2. Search Basics

Section 2.1. Positive base

Section 2.2. Can not search

2.2.1. Principle

2.2.2. Special cases - A123 (2) EPC or A76 EPC

2.2.3. Answer and indication of what to look for

Section 2.3. Negative base

Section 2.4. Consequence of a partial search

Chapter 3. Change in Demand

Section 3.1. Principle

Section 3.2. Exception

Chapter 4. How searches are performed

Section 4.1. Procedure

Section 4.2. Research documentation

Chapter 5. Content of the European Extended Search Report (EIRR)

Section 5.1. Language of the RREE

Section 5.2. European Research Report (RER)

Section 5.3. Languages of documents cited

Section 5.4. Written opinion

5.4.1. Principle

5.4.2. Renunciation to confirm the examination

5.4.3. Possible delivery

Chapter 6. Transmission of the RREE

Chapter 7. Publication of the RREE

Section 7.1. Principle

Section 7.2. Importance of mention of publication to BEB

Chapter 8. Communication of foreign research reports

Section 8.1. applicability

Section 8.2. Principle

Section 8.3. Type of information requested

Section 8.4. Format of information

Section 8.5. exceptions

Section 8.6. Time and sanction

8.6.1. Obligation to provide the information itself

8.6.2. Obligation to provide information on request

Chapter 9. Types of search

Section 9.1. "Standard" searches

Section 9.2. Special "standard" searches

9.2.1. Partial European research

1) Because of substantial problems

2) Because of problems of non-unity

3) Euro-PCT - Where a further search is to be carried out by the EPO

4) Euro-PCT - Cases where the EPO has abandoned further research

9.2.2. Additional European research

Section 9.3. Complementary European research

9.3.1. Principle

9.3.2. exceptions

9.3.3. Base of the supplementary research report

9.3.4. Nature of the supplementary research report

Section 9.4. PCT International Searches

9.4.1. Principle

9.4.2. Limitation of competence

9.4.3. Redirection of requests?

Section 9.5. Additional international searches PCT

9.5.1. Principle

9.5.2. Number of research for HIFIS

Section 9.6. Some national research

Chapter 10. Research Tax

Section 10.1. Standard Searches

10.1.1. Principle

10.1.2. sanctions

Section 10.2. Additional searches

10.2.1. Principle

10.2.2. Reduction

10.2.3. Sanction

Section 10.3. PCT International Searches

10.3.1. Principle

10.3.2.

10.3.3. Sanction

Section 10.4. Additional international searches PCT

10.4.1. Principle

10.4.2. Sanction

Chapter 11. Reimbursement of the search fee

Section 11.1. Complete refund

11.1.1. European or complementary research

11.1.2. PCT International Searches

11.1.3. Additional international searches PCT

Section 11.2. Full or partial refund

11.2.1. European or complementary research

11.2.2. International searches (EPO / ISA or EPO / SISA)

11.2.3. Full / partial reuse criteria

11.2.4. Refund procedure

See the latest changes

Chapter 1. Jurisdiction

The research division is competent for this research (A17 CBE).

The examiner responsible for this search is normally the first member of the Examining Division for this application (BI guidelines 2): this principle was introduced by the "BEST" program of the EPO (1990, "Bringing Examination and Search Together” ).

Nevertheless, the examiner may consult other examiners (BI 2.1 guidelines) or request that the research division be increased by one or two other examiners if the nature of the invention so requires (BI 2.1 guidelines)

It is also possible to entrust a search to certain national offices, in particular to search databases of documents written in a non-official language.

Chapter 2. Search Basics

Section 2.1. Positive base

The search is carried out on the basis of the claims as filed (A92 CBE).

It is not possible to modify the claims before the search (R137 (1) EPC), even under the R139 EPC (you have to wait for the competence of the Examination Division, J4 / 85).

The research should focus on:

  • the dependent claims, in particular if the corresponding independent claim is not considered new or inventive (Guidelines B-III 3.8)
  • the objects of the description for which it is possible to think that they will be included in the claims (Directives B-III 3.5).

Section 2.2. Can not search

2.2.1. Principle

If the EPO is of the opinion that it is impossible to carry out a significant search on the state of the art with regard to all or part of the claimed subject matter, it invites the applicant to submit, within a 2 months, a statement indicating the elements to be researched (R63 (1) EPC).

This period does not benefit from theA121 EPC.

The notification can guide the applicant, indicating the elements that could be the subject of the search (Guidelines B-VIII 3.1).

2.2.2. Special cases - A123 (2) EPC or A76 EPC

This notification may also raise problems ofA123 (2) EPC orA76 CBEparticularly if these elements significantly change the results of the research (Directives B-VIII 6): this is possible especially during a phase entry or at a divisional.

This is rather "nice"On the part of the EPO because if, unfortunately, an Examiner made the search report on the basis of a set of claims contrary to the requirements of theA123 (2) EPC, we could end up in the situation where it would be impossible to later correct the problems of A123 (2) EPC without contravening R137 (5) EPC : it would be rather embarrassing.

2.2.3. Answer and indication of what to look for

If ever in response to this notification, the applicant submits a set of clarified / amended / amended claims, these can be taken into account only at the stage of the response to the RREE ("Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Regulations under the European Patent Convention” , OJ 2009, 533point 3.2).

Indeed, it is not possible to modify before R137 (1) EPC.

If the applicant does not respond to this notification (or not sufficiently), the EPO will establish (R63 (2) EPC):

  • a partial report;
  • a reasoned statement indicating why no research is possible

Section 2.3. Negative base

There are some items that will not be searched (Directives B-VIII or Guidelines B-III 3.11, ).

These are mainly:

  • objects excluded from patentability (A52 (2) EPC, A53 CBE, A57 EPC, or for the PCT, A17.2 PCT together R39.1 PCT):
    • scientific and mathematical theories;
    • plant varieties, animal breeds;
    • plans, principles or commercial methods, purely intellectual or gaming;
    • methods of treatment by surgery or therapy;
    • diagnostic methods;
    • simple information presentations;
    • computer programs.
  • objects unclear or too vast.

If the Board determines that a re-wording of the claims would allow a search (eg reformulation of a device-based therapeutic procedure), the search division must perform this search (Guidelines B-VIII 2.1) without having to ask the applicant for an indication of the elements to be investigated R63 (1) EPC.

Section 2.4. Consequence of a partial search

In the case of a partial search, the Examining Division must invite the applicant to limit its application to only those objects which have been the subject of the search (R63 (3) EPC and H-II Guidelines 5) unless it finds that the objection was not justified.

If the applicant does not limit, the application may be rejected (A97 (2) EPC).

Subsequently, it will not be possible to reintroduce items that have not been the subject of the research (R137 (5) EPC).

Chapter 3. Change in Demand

Section 3.1. Principle

In principle, it is not possible to modify the application before having received the RRE (R137 (1) EPC).

Section 3.2. Exception

Nevertheless, there are certain exceptions provided for in the Implementing Regulation:

It is also possible to provide modifications before the receipt of the TPP (for information) and to confirm it upon receipt of the TPP (AV Guidelines 2.2).

Chapter 4. How searches are performed

Section 4.1. Procedure

As a first step, the Examiner studies the request and the claims (Guidelines B-IV 1.1).

Any irregularities that would have escaped the filing section are mentioned in the filing section (Directives B-IV 1.2).

The documents cited in the application are examined and if a document can not be found, the examining division shall request it from the applicant (Directives B-IV 1.3).

The abstract is verified and a ranking of the request is made (BX 7 Guidelines).

The object of the research is determined (Directives B-IV 2).

The search is performed for all independent claims. However, if a product claim is not new, there is no need to look for the claims (Guidelines B-III 3.10):

  • manufacturing process that inevitably leads to this product;
  • of use of this product.

Section 4.2. Research documentation

The documentation used includes the PCT minimum documentation (R34 PCT) and other documents available to the EPO (Guidelines B-IX 1.1).

Requests not yet published are not cited by the Research Division: it is the Examining Division which is responsible for this point (Directives B-VI 4.1).

Internet searches are possible, particularly in sectors related to computer science (Guidelines B-III 2.4).

Chapter 5. Content of the European Extended Search Report (EIRR)

Section 5.1. Language of the RREE

The RREE is written in the language of the procedure (A14 (3) EPC and R61 (5) EPC).

If the EPO acts as ISA, the search report is in principle written in the language of international publication (R43.4 PCT).

Section 5.2. European Research Report (RER)

The European Search Report (or RER) is a report containing all documents known to the EPO (R61 (1) EPC).

As an illustration, a RRE (or ESR in English for "European Search Report") Can look like this file (randomly drawn on the European register).

The different documents are classified according to their relevance (R61 (3) EPC, R61 (4) EPC and BX 9.2 Guidelines):

  • Current classifications:
    • X means that the document is particularly relevant on its own (ie it would destroy the novelty of the request);
    • Y means that the document is relevant if it was combined with another document of the same type (ie it would destroy the inventive step of the request);
    • A means that the document is simply quoted because it is in a near field, but does not anticipate the request;
  • Classifications a little rarer:
    • T means that the document presents the scientific theory serving as a basis for the request (but without anticipating it);
    • D means that the document is quoted by the request itself. This classification can be combined with another classification (for example "DX");
    • P means that the document is an intermediate document: it would be relevant if the priority was not valid. This classification may be combined with another classification (eg "PY");
    • E means that the document is not opposable (but may still provide certain information);
  • Rare classifications:
    • O means that the disclosure is not a written disclosure;
    • L means that the document is cited for another reason (often this classification serves as a classification "catchall” )

In addition, each document cited is related to the claims against which it is relevant (R61 (2) EPC).

In addition, the search report may mention the list of claims that have not been the subject of the search (BX 8 Guidelines):

  • non-unit;
  • tax not paid;
  • several independent claims of the same type;
  • unpatentable object.

The search report also contains a translation of the title into the other two official languages (BX 7 Guidelines iv).

The abstract is stopped at the same time as the transmission of the RRE. This is sent to the applicant at the same time (R66 EPC).

Section 5.3. Languages of documents cited

A priori, the EPO can provide documents in any language (BX 9.1.3 Guidelines).

It is nevertheless recommended to provide a translation of the document when it exists or at least a partial translation of the relevant paragraphs (BX 9.1.3 Guidelines).

In any event, if the applicant disputes the technical content of a document, the EPO must provide the translation (G-IV Guidelines 4 and T655 / 13).

Section 5.4. Written opinion

5.4.1. Principle

Since the 1st July 2005, the search report contains a "written opinion" or "opinion" (R62 (1) EPC) and is now called "European Research Report expanded"Or RREE (or even EESR in English, for"Extended European Search Report” , “Decision of the Administrative Council of 9 December 2004 amending the Regulations under the European Patent Convention and the Rules relating to Fees” , OG 1/2005, p5).

This written opinion (or opinion on patentability) indicates all the irregularities of the substantive or formal request (eg lack of novelty, problem of clarity, etc., Directives B-XI 3).

If, following a filing of missing parts of the description or drawings, the filing date has not been modified, but if the Examiner in charge of the search considers that the conditions of the R56 (3) EPC or R20.6 PCT are not fulfilled, the searcher performs the search as if the filing date had been changed and indicates his reasons in the notice (Directives B-XI 2.1).

On the contrary, if the filing date has been changed, but the Reviewer considers that the conditions of the R56 (3) EPC or R20.6 PCT are fulfilled, it indicates this in the opinion for a subsequent review by the Examining Division (Directives B-XI 2.1).

If the claims were filed late (under the R58 EPC), the Research Examinator verifies that the provisions of theA123 (2) EPC are respected (but still try to search Guidelines B-XI 2.2).

If the priority document has not been provided or its translation, the priority will be considered valid for the research stage (Directives B-XI 4).

The written opinion invites to correct the irregularities identified in it within a 6 months from the mention of the publication of the RREE at the BEB (R70bis (1) EPC together R70 (1) EPC).

If the opinion contains no objection, it is not necessary to reply and the applicant is informed ("Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Regulations under the European Patent Convention” , OJ 2009, 533)

5.4.2. Renunciation to confirm the examination

If the applicant has waived the confirmation of the examination (eg PACE, the request for examination having been submitted before the transmission of the search report), the written opinion may be omitted: a notification under theA94 (3) EPC (Directives C-VI 3 and R62 (1) EPC) will be issued a few days later.

5.4.3. Possible delivery

In favorable cases, this written opinion may be omitted: a notification according to the R71 (3) EPC indicating the intention to grant a patent (R62 (1) EPC) will be issued a few days later.

Chapter 6. Transmission of the RREE

The search report is sent by the deposit section (R10 (1) EPC) to the applicant with a copy of all the documents cited (R65 EPC and BX Guidelines 11.1) and the Written Opinion (also called "Opinion at the Research Stage", BX 12 Guidelines).

The documents cited do not need to be in an official language of the EPO (BX 9.1.3 Guidelines).

If the applicant challenges the relevance of this document by presenting particular reasons, the examiner will, if he wishes to maintain this document, provide a (at least partial) translation of the document (G-IV Guidelines 4).

An automatic translation can be used, and the applicant will have to provide an improved translation if he wants to dispute the content (G-IV Guidelines 4.1).

Chapter 7. Publication of the RREE

Section 7.1. Principle

The publication of the patent application shall be accompanied (in annex), and if available, by the search report (A92 CBE and R68 (1) EPC).

If this search report is not published with the application, the RER is published separately (R68 (1) EPC).

The opinion is not published with the RRE (R62 (2) EPC). However, it is accessible in the file after the publication of the application (Directives A-XI 2.1)

The publication date is entered in the REB (R143 (1) (l) EPC).

Section 7.2. Importance of mention of publication to BEB

The date of the mention to the BEB of the publication of the RER is notified to the applicant (R69 (1) EPC) because it sends a number of deadlines:

  • the deadline for 6 months to pay the designation fees (A79 (2) EPC and R39 (1) EPC);
  • if the request for examination has not yet been submitted:
    • the deadline for 6 months to request the examination (if it is not already done, the form 1001 has a box pre-checked the applicant) and pay the examination fee (R70 (1) EPC);
    • the deadline for 6 months to respond to any objections raised in the opinion accompanying the European search report (R70bis (1) EPC together R70 (1) EPC);
  • if the examination has already been requested before the ERP was submitted:
    • if the applicant n / A not renounced to receive notification R70 (2) EPC asking to confirm the exam:
      • the deadline for 6 months to confirm the examination and pay the examination fee (R70 (2) EPC together "Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Regulations under the European Patent Convention” , OJ 2009, 533point 5.1.4);
    • the deadline for 6 months to respond to any objections raised in the opinion accompanying the European search report (R70bis (2) EPC together R70 (2) EPC together "Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Regulations under the European Patent Convention” , OJ 2009, 533point 5.1.4).
    • one can question the legality of this time limit which does not start from the notification in contradiction with R131 (2) EPC ;
  • if the applicant at renounced to receive notification R70 (2) EPC asking to confirm the exam:
    • no delay;
    • no opinion on patentability will be issued (see above) and it will therefore not be necessary to respond to it;
    • a notification A94 (3) EPC or R71 (3) EPC will be issued and it will be necessary to reply in the usual conditions.

For the supplementary search report established for a EuroPCT application, the deadline for R70 (2) EPC and R70bis (2) EPC previously mentioned is, for their part, 6 months from the date of notification of the publication of the report to the BEB ("Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Regulations under the European Patent Convention” , OJ 2009, 533point 5.1.5).

TheA121 EPC is applicable for all these periods.

If the applicant does not respond to the objections raised in the notice (the answer must be Directives B-XI 8), the application will be deemed withdrawn (R70bis (3) EPC).

At this stage of the procedure, it is possible to make changes unrelated to the objections raised (R137 (2) EPC) and this will be the last time it will be possible ...

Chapter 8. Communication of foreign research reports

Section 8.1. applicability

This principle only applies to European applications filed on or after 1 January 2011 ("Governing Body decision of 28 October 2009 amending the Regulations under the European Patent Convention” ,OJ 2009, 585) or divisional applications received by the EPO as of that date (Directives A-III 6.12)

Section 8.2. Principle

If a foreign priority is claimed, the Examining Division may request the submission of the search report for this priority application (A124 (1) EPC together R70ter (1) CBE).

Section 8.3. Type of information requested

the EPO may request any information on the state of the art taken into account:

  • at the research stage concerning the priority request (R141 (1) EPC) (“Notice from the European Patent Office dated 28 July 2010 concerning amended Rule 141 EPC and new Rule 70b EPC - use system” , OG 2010, 410):
    • including the results of the ISA, if the priority demand is a Euro-PCT request;
    • all research carried out on all priority requests must be provided;
    • the fact that the priority has been removed, corrected or added after the deposit does not change anything (Directives A-III 6.12);
  • or more generally, in foreign patent proceedings the same invention (even if a priority is not claimed, A124 (1) EPC).

A copy of the documents cited is not necessary ("Notice from the European Patent Office dated 28 July 2010 concerning amended Rule 141 EPC and new Rule 70b EPC - use system” , OG 2010, 410).

Section 8.4. Format of information

The documents provided are in the form in which they have been drawn up by the Office, ie copy of the official document (“Notice from the European Patent Office dated 28 July 2010 concerning amended Rule 141 EPC and new Rule 70b EPC - use system” , OG 2010, 410):

  • research report;
  • list of known states of the art;
  • relevant part of the examination report;
  • etc.

A translation of this document is not necessary ("Notice from the European Patent Office dated 28 July 2010 concerning amended Rule 141 EPC and new Rule 70b EPC - use system” , OG 2010, 410).

Section 8.5. exceptions

There are some exceptions to not meeting this requirement:

  • the European application is a divisional application, the prior art information for the parent application having already been communicated before the examining division became competent ("Notice from the European Patent Office dated 28 July 2010 concerning amended Rule 141 EPC and new Rule 70b EPC - use system” , OG 2010, 410, Directives A-III 6.12);
  • the priority claimed is that of a first deposit made:
    • for applications filed on or after 1 January 2011 ("Decision of the President of the European Patent Office dated 9 December 2010 exempting applicants claiming the priority of a first filing in the United States of America, Japan or the United Kingdom from filing a copy search results under Rule 141 (1) EPC - use system” , OG 2011, 62):
      • to USA,
      • in Japan,
      • UK ;
    • for requests that have not issued an invitation R70ter (1) CBE October 1, 2012 ("Decision of the President of the European Patent Office dated 19 September 2012 exempting applicants claiming the priority of a first filing in Austria from producing a copy of the search results under Rule 141 (1) ) CBE - system of use” , OY 2012, 540):
      • in Austria
    • for requests that have not issued an invitation R70ter (1) CBE April 1, 2013 ("Decision of the President of the European Patent Office dated 27 February 2013 exempting applicants claiming the priority of a first filing in the Republic of Korea from producing a copy of Rule 141 search results (1) CBE - system of use” , OG 2013, 216):
      • in South Korea
    • for requests that have not issued an invitation R70ter (1) CBE April 1, 2015 ("Decision of the President of the European Patent Office dated 10 December 2014 exempting applicants claiming the priority of a first filing in Denmark from producing a copy of the search results under Rule 141 (1 ) CBE - system of use” , OJ 2015, A2)
      • in Denmark
  • the European application was filed after 1 January 2011 and the search report for the priority application ("Decision of the President of the European Patent Office dated 5 October 2010 concerning the production of copies of the search results in accordance with Rule 141 (1) EPC - use system” , OY 2010, 600) was carried out by the EPO in the framework of:
    • a European demand,
    • an international application (ie EPO = ISA),
    • international research (A15.5 PCT),
    • a national application:
      • Belgium,
      • Cyprus,
      • La France,
      • Greece,
      • Italy,
      • Luxembourg
      • Malta,
      • Netherlands,
      • Turkey.

Section 8.6. Time and sanction

8.6.1. Obligation to provide the information itself

Normally, the applicant must file of himself these informations (R141 (1) EPC):

  • upon submission of a European application;
  • as soon as a Euro-PCT request enters into phase;
  • or without delay, as soon as this information is available (and without so much as the request is still pending "Notice from the European Patent Office dated 28 July 2010 concerning amended Rule 141 EPC and new Rule 70b EPC - use system” , OG 2010, 410).

Nevertheless, there is no penalty if this requirement is not fulfilled.

8.6.2. Obligation to provide information on request

When the Examining Division becomes competent, the EPO invites the applicant to provide 2 months, and if this information has not been provided before (R70ter (1) CBE for priorities, R141 (3) EPC for other information):

  • the information on the state of the art mentioned above;
  • a statement that this information is not yet available.

If the applicant does not respond to this notification, the request is deemed withdrawn (R70ter (2) EPC for priorities or A124 (2) EPC for other information).

TheA121 EPC is applicable to this period of 2 months (that this is the one of the R70ter (1) CBE for priorities or the R141 (3) EPC for other information).

Chapter 9. Types of search

Section 9.1. "Standard" searches

These searches are those that occupy the EPO the most: searches carried out during the filing of a European patent application (Guidelines B-II 4.1).

Section 9.2. Special "standard" searches

9.2.1. Partial European research

A partial search is conducted when the Examiner can not perform a standard search (R63 (1) EPC).

This research will not include a written opinion, but only the results of the search for the elements allowing it (Guidelines B-XI 5).

This report is not published even though it is accessible to public inspection (A128 (4) EPC) after the publication of the application (BX Guidelines 1).

1) Because of substantial problems

If the request contains problems such that a significant search can not be carried out (eg a problem of significant clarity), the EPO notifies the applicant of this and invites him to indicate within a 2 months the elements to be researched (R63 (1) EPC).

In the absence of an answer or in case of an unsatisfactory answer, the research division tries to do as it can (R63 (2) EPC):

  • a search is carried out (if only part of the object of claim 1 has problems),
  • a reasoned statement is issued by the EPO to explain why no search has been carried out ... a search (even partial) must be carried out (T1242 / 04), except :
    • when there is a fundamental lack of clarity, or
    • in the absence of any technical nature.
2) Because of problems of non-unity

In case of lack of unity of invention, the EPO will prepare a partial search report for the first invention mentioned in the claims (R64 (1) EPC)

A notification is then made to the applicant to let him 2 months to request, if desired, additional research on inventions that have not been searched for (R64 (1) EPC).

Only the restitutio in integrum of the'A122 EPC is possible on the delay of 2 months.

3) Euro-PCT - Where a further search is to be carried out by the EPO

If the EPO considers that there is no unity of invention, the supplementary search report is only established for the first invention (Partial Supplementary Search Report, R164 (1) (a) EPC).

This partial supplementary research report is not accompanied by a written opinion ("Notice from the European Patent Office dated 10 June 2014 concerning the amendment of Rules 164 and 135 EPC” , OY 2014, A70point 8).

Since November 1, 2014 ("Governing Body decision of 16 October 2013 amending Rules 135 and 164 of the Regulations under the European Patent Convention” , OG 2013, 503), a notification is sent to the applicant asking whether he wishes, in the 2 months from the notification, pay a supplementary search fee for each invention not sought (R164 (1) (b) EPC).

This period is excluded from the continuation of the procedure (R135 (2) EPC) and only restitutio in integrum of the'A122 EPC is applicable.

A complementary search report (covering all inventions for which a fee has been paid) is then established accordingly (R164 (1) (c) EPC) with a written opinion.

4) Euro-PCT - Cases where the EPO has abandoned further research

If the EPO has refrained from conducting a supplementary search, but the claimed invention at the time of entry into phase has not been searched, the EPO notifies the applicant to pay a fee. additional search fee within a period of 2 months (R164 (2) (a) EPC).

This period is excluded from the continuation of the procedure (R135 (2) EPC) and only restitutio in integrum of the'A122 EPC is applicable.

The results of this research will be communicated to the applicant in a notification A94 (3) EPC or a notification R71 (3) EPC (R164 (2) (b) EPC). This notification also gives the applicant time to take a position on the findings of the examining division and the attached search results, as well as to amend the description, claims and drawings on his own initiative ("Notice from the European Patent Office dated 10 June 2014 concerning the amendment of Rules 164 and 135 EPC” , OY 2014, A70point 16).

This additional search will not include a written opinion (R164 (4) EPC together R62 EPC).

Where appropriate, the EPO will also invite the applicant to limit the application to an invention among the inventions sought (either at the international stage or at the stage of the complementary search, R164 (2) (c) EPC and R164 (3) EPC together R62bis EPC).

9.2.2. Additional European research

This research is done, at the examination stage, in the event that the "standard" search (Guidelines C-IV 7.2):

  • could not take place, but is now possible following modifications (Guidelines C-IV 7.2 i);
  • has been done incompletely, but the reason for this incomplete search is, in fact, wrong:
  • has not been done, but the reason for this non-research is, in fact, wrong:
    • all characteristics were deemed to be known (eg computer, Guidelines C-IV 7.2 v);
    • all the characteristics had been judged as included in the state of the art without research (Guidelines C-IV 7.2 vi);
  • has not covered newly added elements in the claims (but without going beyond the same inventive concept so as not to violate the provisions of the R137 EPC) (Guidelines C-IV 7.2 iv);
  • was not as far as the Examiner would have liked (eg new research in another technical area, Guidelines C-IV 7.2 vii);
  • was not correct because of a change or addition of a priority (Guidelines C-IV 7.2 viii).

Section 9.3. Complementary European research

9.3.1. Principle

The international search report normally replaces the European report (A153 (6) EPC).

Nevertheless, a complementary search must be carried out when entering the phase (A153 (7) EPC).

Indeed, when entering the European phase, and even if a search was carried out during the international phase, the EPO wishes to verify that it was of good quality: a complementary search report is therefore established. .

9.3.2. exceptions

There is a exemption complementary research if:

  • ISA or SISA is the EPO ("Notice from the European Patent Office dated 6 February 2012 concerning search and examination fees” , OG 2012, 212point 3.a);
  • the ISA, for an application filed previously 1st July 2005, has been ("Notice from the European Patent Office dated 6 February 2012 concerning search and examination fees” , OG 2012, 212point 3.b):
    • the Swedish Patent Office,
    • the Austrian Office
    • the Spanish Office.

These provisions were made by the board of directors under theA153 (7) EPC.

9.3.3. Base of the supplementary research report

The supplementary search report is based on the documents specified by the applicant at the time of entry into the regional phase (R159 (1) (b) EPC) or modified in response to the notification R161 (2) EPC (Guidelines B-II 4.3.3).

9.3.4. Nature of the supplementary research report

The supplementary research report is not published, but accessible through public inspection.

This search report contains an opinion at the research stage.

Section 9.4. PCT International Searches

9.4.1. Principle

The EPO is also an "International Searching Authority" (ISA) within the meaning of the PCT Treaty (A16.1 PCT ).

Of course, the issues mentioned above remain relevant (A17 PCT and R158 EPC):

  • substantial problems preventing research;
  • problem of non-unity under the PCT (R13 PCT).

There are some differences with the European procedure:

  • the EPO has a deadline to carry out this research (R42 PCTthe deadline expiring later is taken into account):
    • 3 months from the receipt of the research copy;
    • 9 months from the priority.
  • there are no additional taxes per claim beyond the 15th: a search must be made on all the claims;
  • the unity of invention is slightly different;
  • interfering applications are mentioned in the international search report (R33.1.c PCT), but are not taken into account for the international preliminary examination (R64.3 PCT).

9.4.2. Limitation of competence

The EPO has indicated that it is not obliged to fulfill its ISA or IPEA function in so far as it considers that the international application relates to an object referred to in R39.1 PCT or at R67.1 PCT (“New Agreement between the European Patent Organization and the International Bureau of the World Intellectual Property Organization concerning the functions of the European Patent Office as an International Searching and Administrative Authority responsible for the International Preliminary Examination under the Patent Cooperation Treaty “, OY 2017, A115, A4) unless for a European application it would conduct the search or examination "New Agreement between the European Patent Organization and the International Bureau of the World Intellectual Property Organization concerning the functions of the European Patent Office as an International Searching and Administrative Authority responsible for the International Preliminary Examination under the Patent Cooperation Treaty “, OY 2017, A1157Annex B).

This limitation is consistent with theA16.3.b PCT (ISA) or theA32.3 PCT (IPEA).

Thus, presumably excluded objects would be:

  • scientific and mathematical theories (equivalent of A52 (2) (a) EPC);
  • plant varieties, animal breeds, essentially biological processes for the production of plants or animals, other than microbiological processes and products obtained by these processes (equivalent to A53 (b) EPC);
  • plans, principles or methods for doing business, performing purely intellectual acts or playing (equivalent to A52 (2) (c) EPC);
  • methods of treatment of the human or animal body by surgery or therapy, as well as methods of diagnosis (equivalent to A53 (c) EPC);
  • simple presentations of information (equivalent to A52 (2) (d) EPC);
  • computer programs as such (equivalent of A52 (2) (c) EPC);

Should not be excluded, contrary to the practice of the EPO for a European application:

9.4.3. Redirection of requests?

Since 1 January 2015, the applications ("PCT - Agreement between the EPO and WIPO under the PCT” , OJ 2014, A117 amending Schedule A to this Agreement) filed by an American or a person domiciled in the United States of America with RO as USPTO or IB are processed by the EPO regardless of the technical domain (ie without redirection).

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).

This does not mean, however, that commercial methods will be sought by the EPO ("Notice from the European Patent Office dated 1 October 2007 concerning methods in the field of economic activities” , OG 2007, 592).

Section 9.5. Additional international searches PCT

9.5.1. Principle

The EPO may also be an "Supplementary International Searching Authority" (or SISA) within the meaning of the PCT Treaty (R45bis PCT).

Without going into too much detail, know that "additional PCT search"Roughly the same as"PCT research"Except that it is optional" (R45bis PCT).

There are some differences with the European procedure:

  • the EPO has a deadline to carry out this research (R45bis.7.a PCT):
    • 28 months from the priority.
  • there are no additional taxes per claim beyond the 15th: a search must be made on all the claims;
  • the unity of invention is slightly different;
  • interfering applications are mentioned in the supplementary international search report (R45bis.5.c PCT), but are not taken into account for the international preliminary examination (R64.3 PCT).

9.5.2. Number of research for HIFIS

The EPO as SISA does not carry out more than 700 additional searches per year ("WIPO-EPO Agreement” , OG 2010, 304Annex E.5).

Section 9.6. Some national research

Some national Offices of the Contracting States delegate to the EPO their search (Guidelines B-II 4.6, for example, France).

Chapter 10. Research Tax

Section 10.1. Standard Searches

10.1.1. Principle

The search fee is due (A78 (2) EPC) in a delay of 1 month from :

  • in the case of a "standard" request (R38 (1) EPC);
  • the deposit of divisional application (R36 (3) EPC);
  • the deposit of new request for an invention previously filed by an unauthorized person (R17 (2) EPC).

There will be no notification concerning this irregularity (R58 EPC).

The deadline for 1 month is calculated from the filing date of the first coins (although a filing date can not be granted, G3 / 98).

The search fee is referred to inA2 (1) .2 RRT (1300 € for a standard application filed after 1 July 2005, 885 € for a standard application filed before July 1, 2005).

10.1.2. sanctions

The EPO verifies that these taxes have been paid (A90 (3) EPC together R57 (e) EPC).

If the search fee is missing after the expiry of the 1 month, the request is deemed withdrawn (A78 (2) EPC for standard requests, R17 (2) EPC for applications filed by an unauthorized person and R36 (3) EPC for divisional applications).

This period benefits from the continuation of the procedure of theA121 EPC.

Section 10.2. Additional searches

10.2.1. Principle

A search fee must be paid if a search report is to be made (see below for exemption, A153 (7) EPC together R159 (1) (e) EPC).

This tax must be paid within the 31 months from the priority (R159 (1) (e) EPC).

By default, the amount of this tax is 1300 € (A2 (1) .2 RRT) for applications filed on or after 1 July 2005 and 885 € for a standard application filed before July 1, 2005.

10.2.2. Reduction

There is a exemption complementary research (ie 100% reduction) if:

  • ISA or SISA is the EPO ("Notice from the European Patent Office dated 6 February 2012 concerning search and examination fees” , OG 2012, 212point 3.a);
  • the ISA, for an application filed previously 1st July 2005, has been ("Notice from the European Patent Office dated 6 February 2012 concerning search and examination fees” , OG 2012, 212point 3.b):
    • the Swedish Patent Office,
    • the Austrian Office
    • the Spanish Office.

Otherwise :

  • There is a reduction of 1100 € of the supplementary search fee if the application was filed after the 1st July 2005 and if the ISA is ("Decision of the Administrative Council of 16 December 2015 reducing the tax payable for supplementary European search where the international search report or the supplementary international search report has been drawn up by the Austrian Patent Office, by the Spanish Patent Office and trademarks, by the Finnish Patent and Registration Office, the Swedish Patent and Registration Office, the Nordic Patent Institute or the Visegrad Patent Institute (CA / D 8/15)” , OY 2016, A2):
    • the Austrian Office,
    • the Finnish Office,
    • the Swedish Office,
    • the Spanish Office,
    • the Nordic Institute,
    • The institute of Visegrad.
  • There is a reduction of 1100 € of the supplementary search fee if the application was filed after the 1st July 2005 and if the ISA is the Turkish Office ("Decision of the Administrative Council of 28 June 2017 reducing the tax due for supplementary European search where the international search report or the supplementary international search report has been drawn up by the Turkish Patent and Trademark Office (CA / D 9 / 17)“, OY 2017, A57).

These provisions were made by the board of directors under theA153 (7) EPC.

10.2.3. Sanction

If the search fee is not paid within the time limit of 31 months, the request is deemed withdrawn (R160 (1) EPC).

The EPO then notifies the applicant of this loss of rights (R160 (2) EPC).

TheA121 EPC is applicable to the period of 31 months (Directives C-II 1.2).

Section 10.3. PCT International Searches

10.3.1. Principle

The search fee provided by the R16 PCT is fixed by the EPO 1775 € (R158 (1) EPC together A2 (1) .2 RRT).

The search fee is collected by the RO for the ISA (A3.4.iv PCT together R16.1.a PCT) to cover the costs of the research.

The amount is fixed by the ISA (R16.1.a PCT) but must be paid to the RO (R16.1.b PCT) which fixes the currency in which this tax is to be paid.

This tax is due within a 1 month from the time of deposit (R16.1.f PCT).

10.3.2.

A 75% reduction in the search fee is granted for some developing countries ("Decision of the Administrative Council of 21 October 2008 on the Reduction of Fees for International Search and Preliminary Examination on International Applications Filed by Nationals of Certain States” , OG 2008, 521).

The list of these "low-income or lower-middle-income countries"Is established by the World Bank.

To qualify for this reduction, all applicants must meet this criterion.

10.3.3. Sanction

In case of late payment (or insufficient payment), the RO invites the depositor to pay the outstanding payment within 1 month from the notification (R16bis.1.a PCT).

A payment is not considered late if the payment is received by the RO before the latter sends the notification indicating the late payment (R16bis.1.d PCT).

A late payment fee may be required by the RO (R16bis.2.a PCT) for his benefit. This late payment fee is the maximum of the following two taxes:

  • 50% of the minimum between:
    • the amount remaining to be paid;
    • the international filing fee (R16bis.2.b PCT).
  • the amount of the transmission tax.

If, despite the notification, the applicant does not pay in due time, the international application is considered withdrawn and the RO informs the applicant (A14.3.a PCT together R16bis.1.ci PCT together R27.1 PCT together R29 PCT).

The payment is considered valid (even though a late fee may be due) if the RO receives the payment before sending the RO notification informing the applicant that his request is deemed withdrawn (R16bis.1.e PCT).

Section 10.4. Additional international searches PCT

10.4.1. Principle

The supplementary search fee provided for by the R45bis PCT is fixed by the EPO 1775 € (R158 (1) EPC together A2 (1) .2 RRT).

This fee is set by the EPO but collected by the IB for its benefit (R45bis.3.b PCT).

This tax is due within a 1 month from the receipt of the supplementary search request (R45bis.3.c PCT together R45bis.2.c PCT).

10.4.2. Sanction

In the event of late payment, the IB invites the depositor to pay it within 1 month from the invitation:

Otherwise, the request for supplementary search is deemed not to have been submitted (R45bis.4.d PCT).

Chapter 11. Reimbursement of the search fee

Section 11.1. Complete refund

11.1.1. European or complementary research

The search fee is refunded in full if:

  • the request is not transmitted (R37 (2) EPC) by a Contracting State to the EPO within a period of 14 months from the priority;
  • the application is withdrawn, rejected or deemed withdrawn before the EPO has started toA9 (1) RRT);
  • the application is not granted a filing date (Guidelines A-II 4.1.4).

The fact that research has begun must be based on clear and transparent elements ("Notice from the European Patent Office dated 29 January 2013 concerning the adaptation of the search and examination fee refund system” , OG 2013, 153): the launch date of the search algorithm of the prior art by the examiner in charge of the search is thus entered in the file for this to be verifiable.

11.1.2. PCT International Searches

Any amount collected by mistake, in excess, etc. is reimbursed ("WIPO-EPO Agreement” , OG 2010, 304Annex C, Part II, point 1).

The EPO reimburses the search fee ("WIPO-EPO Agreement” , OG 2010, 304, Annex C, Part II, point 2) if the international application is withdrawn or considered withdrawn under theA14.1 PCT, A14.3 PCT, A14.4 PCT before the start of the international search (mainly because of problems of form or payment of tax).

11.1.3. Additional international searches PCT

Any amount collected by mistake, in excess, etc. is reimbursed ("WIPO-EPO Agreement” , OG 2010, 304Annex C, Part II, point 1).

The supplementary search fee is reimbursed by the IB (R45bis.3.d PCT):

  • if the international application is withdrawn, considered withdrawn before the search copy is sent to the EPO,
  • if the supplementary search request is withdrawn or deemed not to have been submitted before the search copy is sent to the EPO.

The EPO reimburses the supplementary search fee if, before it has started the supplementary international search, the EPO finds that the request for supplementary search is deemed not to have been submitted because the search is totally excluded because of a limitation (R45bis.5.g PCT) (“WIPO-EPO Agreement” , OG 2010, 304Annex C, Part II, point 7).

The EPO reimburses the supplementary search fee ("WIPO-EPO Agreement” , OG 2010, 304Annex C, Part II, point 8):

  • if the international application is withdrawn, considered withdrawn before the EPO starts the search,
  • if the supplementary search request is withdrawn or deemed not to have been submitted before the EPO starts the search.

Section 11.2. Full or partial refund

11.2.1. European or complementary research

If research is facilitated by previous research, part of the search fee may be refunded ("Decision of the President of the European Patent Office dated 21 December 2018 concerning the refund of the search fee under Article 9 (2) of the Rules relating to Fees” , OJ 2019, A4).

This refund applies to European searches or additional searches ("Decision of the President of the European Patent Office dated 21 December 2018 concerning the refund of the search fee under Article 9 (2) of the Rules relating to Fees” , OJ 2019, A4) :

  • and if the previous research had been done with written opinion,
    • and if this previous research is a European research for an EP application filed on or after July 1, 2005, the refund is:
      • 100% in case of complete reuse or
      • 25% in case of partial reuse.
    • and if this previous research is a PCT search for a PCT application filed on or after January 1, 2004, the refund is:
      • 84% in case of complete reuse or
      • 21% in case of partial reuse.
    • and if this previous research is a additional PCT search, the refund is:
      • 84% in case of complete reuse or
      • 21% in case of partial reuse.
    • and if this previous research is a national search for BE, CY, FR, GB, GR, IT, LT, LU, LV, MC, MT, NL, SM, TR, the refund is:
      • 84% in case of complete reuse or
      • 21% in case of partial reuse.
  • and if the previous research had been done without written opinion,
    • and if this previous research is a European research for an EP application filed before July 1, 2005, the refund is:
      • 70% in case of complete reuse or
      • 17.5% in case of partial reuse.
    • and if this previous research is a PCT search filed before January 1, 2004, the refund is:
      • 70% in case of complete reuse or
      • 17.5% in case of partial reuse.
    • and if this previous research is a international type search, the refund is:
      • 70% in case of complete reuse or
      • 17.5% in case of partial reuse.
    • and if this previous research is a standard search (the EPO has not done this type of search since 1 September 2007), the reimbursement is:
      • 70% in case of complete reuse or
      • 17.5% in case of partial reuse.
    • and if this previous research is a research national account for BE, CY, FR, GR, LU, NL, TR, the refund is:
      • 70% in case of complete reuse or
      • 17.5% in case of partial reuse.

11.2.2. International searches (EPO / ISA or EPO / SISA)

If search is facilitated by prior search by the EPO for the priority request (including a "standard" search requested in a private capacity), part of the search fee may be refunded (R16.3 PCT, “Agreement” , OG 2010, 304, Annex C, Part II, point 3 and A9 RRT together "Decision of the President of the European Patent Office dated 21 February 2014 concerning the refund of the international search fee by the EPO as International Searching Authority ” , OY 2014, A30):

  • and if the previous research had been done with written opinion,
    • and if this previous research is a European research, the refund is:
      • 100% in case of complete reuse or
      • 25% in case of partial reuse.
    • and if this previous research is a PCT search, the refund is:
      • 100% in case of complete reuse or
      • 25% in case of partial reuse.
    • and if this previous research is a additional PCT search, the refund is:
      • 100% in case of complete reuse or
      • 25% in case of partial reuse.
    • and if this previous research is a research national on BE, CY, FR, GR, IT, LU, MT, NL, TR, the refund is:
      • 100% in case of complete reuse or
      • 25% in case of partial reuse.
  • and if the previous research had been done without written opinion,
    • and if this previous research is a international type search, the refund is:
      • 70% in case of complete reuse or
      • 17.5% in case of partial reuse.
    • and if this previous research is a standard search (the EPO has not done this type of search since 1 September 2007), the reimbursement is:
      • 70% in case of complete reuse or
      • 17.5% in case of partial reuse.
    • and if this previous research is a research national account for BE, CY, FR, GR, LU, NL, TR, the refund is:
      • 70% in case of complete reuse or
      • 17.5% in case of partial reuse.

11.2.3. Full / partial reuse criteria

Normally, a research report will be reused completely if the claims presentedNotice from the European Patent Office dated 9 January 2009 concerning criteria for reimbursement of search fees” , OCT 2009, 99point 2.1):

  • are identical to the claims previously sought;
  • or represent a limitation of the claims previously sought:
    • deletion of claims,
    • deletion of alternative features of a claim,
    • adding a limitation related to claim merger.

Normally, a research report will be partially reused if the claims presentedNotice from the European Patent Office dated 9 January 2009 concerning criteria for reimbursement of search fees” , OCT 2009, 99point 2.2):

  • are broader than the claims previously sought (and constitute a generalization);
  • or represent a limitation of the claims previously sought with a feature that was not disclosed in the earlier application (but which relates to the same invention).

No refund is due, ie the search report will not be not recycledwhen the claimed invention is different ("Notice from the European Patent Office dated 9 January 2009 concerning criteria for reimbursement of search fees” , OCT 2009, 99point 2.3).

11.2.4. Refund procedure

The reimbursement is made after the communication of the search report, the amount of this refund having been previously communicated to the applicant ("Notice from the European Patent Office dated 9 January 2009 concerning criteria for reimbursement of search fees” , OCT 2009, 99point 3).

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