Streamlined International Preliminary Examination Procedures at the European Patent Office

The continued increase in the PCT search and examination workload has prompted the EPO to streamline its procedures for carrying out International Preliminary Examination.  New "rationalised" procedures were announced in a Notice of the President of the EPO dated 2 November 2001. The procedures came into effect on 3 January 2002 and apply to all International applications for which the EPO is the International Preliminary Examining Authority (including cases where the Demand for International Preliminary Examination was filed before the commencement date).

Under the rationalised examination procedures, unless the applicant files amendments and/or arguments, or expressly requests detailed examination (when filing the Demand or later), the Written Opinion and/or International Preliminary Examination Report will be computer-generated on the basis of the categorisation of the prior art documents cited in the International Search Report. If the International Search Report contains at least one 'X' or 'Y' category document, a negative Written Opinion will issue.

'X' or 'Y' category document, a negative Written Opinion will issue. If there is no response to such a Written Opinion, the International Preliminary Examination Report will be negative and have the same content as the Written Opinion. There will then be a refund of two thirds of the preliminary examination fee. If the International Search Report cites only 'A' category documents (i.e. technological background), the EPO will issue a positive computer-generated International Preliminary Examination Report and refund two thirds of the examination fee.

Changes to Procedures for Detailed Examination

In addition to the rationalised procedure, the President's Notice sets out various changes in practice where detailed International Preliminary Examination is requested. The Examiner will concentrate on the core issues of novelty, inventive step and industrial applicability. Other matters such as clarity and form will be covered only if essential for preliminary examination purposes. The EPO will in future make full use of Article 34(4) PCT, performing no International Preliminary Examination in such cases. Article 34(4) PCT permits the International Preliminary Examining Authority to carry out no examination where the claims are so unclear or inadequately supported by the description that no meaningful opinion as to their patentability can be formed. EPO Examiners have often in the past used this provision to avoid carrying out any meaningful examination when faced with applications in which there is more than one independent claim in any particular category (for example, apparatus or method), arguing that the presence of, say, two independent apparatus claims renders the claims so unclear that no meaningful opinion can be formed. It can be expected that this practice will now be universally applied by Examiners carrying out International Preliminary Examination, and therefore applicants seeking an examination on the merits will have to give serious consideration to amending their claims so that there is only one independent claim in any particular category when detailed examination is required.