Search or Examination Authority (ISA, SISA or IPEA)

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Chapter 1. EPO-WIPO Agreement

Section 1.1. To be ISA or IPEA

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

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

Indeed, the EPO has signed an agreement with WIPO under theA16.3.b PCT and fromA32.3 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).

Section 1.2. To be SISA

The EPO can also be IF HIS during the PCT procedure under an agreement signed with WIPO (OG 2010, 304this new agreement essentially uses the same terms as "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 adding the possibility of SISA)

Chapter 2. Conditions

Section 2.1. ISA

2.1.1. Designation by the RO

The EPO can be ISA for all international application if the RO (Receiving Office) has designated it for that purpose ("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, A3.1).

The possibility of designation of one or more ISAs by ROs is opened by theA16.2 PCT, A16.3 PCT together R35.1 PCT and R35.2 PCT.

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

2.1.2. Designation by the applicant

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

2.1.3. Language

The request or its translation for the purpose of the search must be in ("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, A3.1 together Annex A modified by "PCT - Agreement between the EPO and WIPO under the PCT” , OJ 2018, A24):

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

Section 2.2. IF HIS

2.2.1. Principle

The EPO can be SISA (OG 2010, 304point 3.4).

2.2.2. Language

The request or its translation for further search must be in (OG 2010, 304Annex E):

  • German,
  • French,
  • English.

Section 2.3. IPEA

2.3.1. Designation by the RO

The EPO can be IPEA for all 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 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, A3.2).

The possibility of designating one or more IPEA by ROs is opened by theA32.2 PCT together R59.1.a PCT.

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

2.3.2. ISA used previously

In addition, it is necessary that the ISA that performed the previous search was ("PCT - Agreement between the EPO and WIPO under the PCT” , OJ 2014, A117 amending Annex A to this Agreement):

  • EPO,
  • Office of a State party to the EPC (which has not waived its role as ISA or IPEA under the centralization protocol for some requests):
    • 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 been ISA (PCT Applicant's Guide - Annex C - US or PCT Applicant's Guide - Annex C - JP).

2.3.3. Language

The application or its translation for the examination must be in ("PCT - Agreement between the EPO and WIPO under the PCT” , OJ 2018, A24 amending Annex A to this Agreement):

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

Chapter 3. Limitation of the competence of the EPO

Section 3.1. Exclusion of the object sought or examined

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:

Section 3.2. Redirection of requests?

3.2.1. EPO as ISA / IPEA

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 USPTO or IB being 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).

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).

3.2.2. EPO as SISA

There is no redirect or search if such a request is submitted to the EPO as SISA ("WIPO-EPO Agreement” , OG 2010, 304Annex E.3)

Section 3.3. 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).

Chapter 4. Particular points

Section 4.1. Regarding the EPO as an ISA

4.1.1. If the EPO has already searched for a previous application

If the EPO has searched for an application whose priority is claimed, the applicant may submit comments on the objections set out in the search report of this earlier application (the so-called PCT Direct procedure, "Notice from the European Patent Office dated 18 August 2014 concerning the treatment of informal observations on the results of previous searches by the EPO as receiving Office and International Searching Authority under PCT” , OJ 2014, A89).

To submit these observations, you must:

  • to claim a priority for filing (the search was carried out by the EPO).
  • send a letter separated to the EPO (acting as RO) at the same time as the international application:
    • entitled "PCT Direct / informal comments";
    • in which the number of the previous application is clearly indicated;
  • indicate in the PCT request that a PCT Direct letter is filed.

4.1.2. Clarity problem

If the ISA is of the opinion that the description, claims or drawings do not permit meaningful search (eg lack of clarity), it states that it will not prepare a search report (A17.2.a.ii PCT) possibly for some claims only (A17.2.b PCT).

The EPO provides for an informal procedure to first request explanations from the applicant before drawing up the search report (OY 2011, 327).

4.1.3. Unity problem

If the ISA considers that there is a problem of unity, the depositor may pay the additional fees with reservations, that is to say by attaching a reasoned statement to the effect that the application meets the requirement of unity of invention (R40.2.c PCT) or the number of fees requested is excessive.

In this case, the reservation is examined by a "review" body.

For the EPO, this body is composed of 3 examiners (one of whom is the examiner who raised the objection). The decision of the reviewing body indicates the composition of the proceeding ("Decision of the President of the European Patent Office dated 9 June 2015 instituting review proceedings for the implementation of the PCT's reservation and reconsideration procedures” , OJ 2015, A59).

4.1.4. Collaboration with other ISA Offices (US, JP, KR, CN)

The 5 offices (US, JP, KR, CN and EP) agreed to collaborate at the request of the applicant ("IP5 collaborative research and review pilot project under the PCT” , OJ 2018, A47).

If an applicant wishes, the search is carried out by the main ISA but the other 4 offices are consulted to collaborate on the research.

The applicant's request must be made through the submission of a form with the international application.

It is nevertheless necessary that the requests be in English ("IP5 collaborative research and review pilot project under the PCT” , OJ 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“, OJ 2018, A95).

Section 4.2. Regarding the EPO as IPEA

4.2.1. Application in electronic form

For the request for examination, it is possible to produce this request in electronic form is possible via EPOLINE / CMS or online form (R89bis.2 PCT together R2 (1) EPC and the "Decision of the President of the European Patent Office dated 9 May 2018 concerning the electronic filing of documents” , OJ 2018, A45).

You should then use the PCT-DEMAND plug-in from EPOLINE ("Notice from the European Patent Office dated 13 June 2014 concerning the online filing of the demand under PCT Chapter II” , OY 2014, A71).

4.2.2. Written opinion of the RRI as the first written opinion of the IPEA

ISA issues a written opinion regarding:

If the EPO is also IPEA, this written opinion is considered as the first written opinion of the IPEA and the applicant is invited to reply to it (as an indication is systematically inserted in the written opinion indicating it in accordance with R43bis.1.c PCT) (“Procedure followed by the European Patent Office as an International Preliminary Examining Authority (IPEA) for applications filed on or after 1 January 2004” , OJ 2005, 493).

4.2.3. Second written opinion

Before issuing a negative examination report ("Notice from the European Patent Office dated 31 August 2011 concerning the issuance of a second written opinion in the context of the PCT Chapter II proceedings” , OY 2011, 532, points 3 and 4):

  • and if the EPO was also ISA:
    • the EPO issues at least one second written opinion (the first being that of the RRI established by the EPO / ISA)
      • if an answer to the merits has been filed (amendments and / or arguments) within the time limits in response to the first written opinion;
      • and if any objections remain;
  • and if the EPO was not ISA:
    • the EPO issues at least one second written opinion (the first being the first written opinion issued by the EPO / IPEA)
      • if an answer to the merits has been filed (amendments and / or arguments) within the time limits in response to the first written opinion;
      • and if any objections remain.

The deadline 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 issuance of a second written opinion in the context of the PCT Chapter II proceedings” , OY 2011, 532point 6):

4.2.4. Telephone interviews

Before the examination report is prepared, the applicant may submit a telephone interview request. As a general 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 issuance of a second written opinion in the context of the PCT Chapter II proceedings” , OY 2011, 532point 5.1).

If the maintenance request is requested before the second written opinion, a report is sent to the applicant, who can then reply to it (this communication replaces the "second written opinion") ("Notice from the European Patent Office dated 31 August 2011 concerning the issuance of a second written opinion in the context of the PCT Chapter II proceedings” , OY 2011, 532, point 5.2).

If the maintenance request is requested after the second written opinion, but before the examination report is prepared, a report is sent to the applicant, but no invitation to submit new amendments / arguments is attached ("Notice from the European Patent Office dated 31 August 2011 concerning the issuance of a second written opinion in the context of the PCT Chapter II proceedings” , OY 2011, 532point 5.4).

4.2.5. Additional search

As of 1 July 2014, IPEA conducts further research to discover the state of the art that has been published or has become available after the date on which the international search report was prepared (R66.1ter PCT together "Notice from the European Patent Office dated 12 May 2014 concerning the introduction of a supplementary search in the context of the PCT Chapter II proceedings” , OY 2014, A57point 2.2).

The complementary research will not extend beyond the subject of the ISA research ("Notice from the European Patent Office dated 12 May 2014 concerning the introduction of a supplementary search in the context of the PCT Chapter II proceedings” , OY 2014, A57point 2.3).

In any event, it will be necessary to limit the purpose of the object to be investigated if the claims are not considered unitary ("Notice from the European Patent Office dated 12 May 2014 concerning the introduction of a supplementary search in the context of the PCT Chapter II proceedings” , OY 2014, A57point 2.4).

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

Chapter 5. International Search

International type searches are planned by theA15.5 PCT.

Thus, the EPO may be entrusted with research for national applications (of a Contracting State and the national law of that State so provides). To find out whether States provide such research, it is necessary to look at the applicant's guideAnnex 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 fee is 1145 € for first deposits or 1795 € for other cases (Schedule of taxes and fees, point 2.2.1)

Chapter 6. Search or examination fees

Section 6.1. Research tax

See "The search for anteriorities".

Section 6.2. Examination fee

6.2.1. Amount

The examination fee provided for by the R58.1.a PCT is fixed by the EPO 1830 € (R158 (2) EPC together A2 (1) .19 RRT).

In the event of late or incomplete payment of the examination fee (R58bis.1.a PCT), the EPO requests payment of a late payment 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, “EPO Schedule of Fees and Charges (applicable from 1 April 2012)” , OJ 3/2012, supplement, point 5.11):

6.2.2. Refund

Any amount collected by mistake, in excess, etc. is reimbursed ("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, A115Annex C, Part II, point 1).

If the request for examination is considered not to have been submitted (R58.3 PCT), the examination fee is refunded in full ("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, A115Annex C, Part II, point 4).

If the application is withdrawn before the start of the examination, the search fee is reimbursed at 75% ("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, A115Annex C, Part II, point 5).

6.2.3. Reduction

A 75% reduction in the examination 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.

Chapter 7. Remedies

The boards of appeal of the EPO are not competent to hear decisions of ISA or IPEA (J20 / 89).

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