Second Written Opinions from EPO during PCT Prosecution

The European Patent Office (EPO) has announced that  it is revising its practice regarding issuance of written opinions on patentability in its function as International Preliminary Examining Authority for international applications.

An applicant for an international (PCT) application who receives a search report and written opinion from the EPO acting as International Searching Authority, may optionally pay for an International Examination. The applicant is entitled to file amended claims and/or arguments and to have these considered in the International Preliminary Examination process. Until now, the EPO has generally allowed the applicant only one go at responding to the first written opinion before drawing up a final International Preliminary Examination Report (IPER).

Under the new practice, if the applicant pays for International Examination and submits arguments and/or amendments, the EPO will issue a second written opinion if the examiner believes that a substantive objection remains. The applicant will be permitted to file a further response to the second written opinion which will be considered before the IPER is finally drawn up.

The new practice provides patent applicants with an improved system for evaluating patentability of an international application during the international phase, before a final decision need be taken as to whether to proceed with the national phase in countries of interest.

Peter Gemmell

25 October 2011