There have been some changes in the European Patent Convention (EPC). The search report from the European Patent Office (EPO) is accompanied by their opinion on the patent application and the invention. Both together make up the extended European search Report (EESR). The EPO gives the applicant now the opportunity to comment on the EESR.
The purpose of the opinion is to give the applicant a better overview over his application. It should help him with his further decisions about how to proceed with the further process of his application. After reading the opinion he should know whether to continue with the application (including the fee) or to interrupt the whole process because of e.g. too much inconsistence.
A positive opinion will be issued if the application and the invention comply with the requirements of the European Patent Convention (EPC). In this case, they will probably suggest to grant the patent.
If a positive opinion is received, it is advisable for the applicant to consider voluntary amendments to the application. They could still improve the application even if it is already declared as ‘good’. Important: All amendments must be filed fast. In other words: before the application proceeds to examination.
Opinion including objections
If the application and the invention do not seem to meet the requirements of the EPC, then the opinion will set out in detail the searcher’s objections to granting a patent. The objections can relate to both formal and substantive matters.
Responding to the opinion
If the opinon isn’t positive, the applicant has two possiblities:
- he can respond by arguing against the objections
- he can respond by amending the application.
The time for a response is limited. You have either
- six months from the date on which the European Patent Bulletin mentions the publication of the European search report (for direct-filed European applications, including divisional applications)
- a time limit set by an EPO communication issued shortly after the search report and search opinion (for PCT applications in the European Regional Phase).
The application is deemed to be withdrawn if the applicant does not respond within the mentioned period. If necessary, the loss of rights can be reversed using the “further processing” provisions.
Of course the applicant should respond aswell, if the opinion has been positive. In this case he needs to convey his accordance or, as mentioned before, amend his application. Step to the next paragraph, if you want to know how you should proceed your amendment.
The patent applicant can amend the description, claims and drawings. The application needs to be amended if the opinion was negative but it can also be amended voluntary if the opinion was positive. We advise to amend it in every case, because it can always become better. IMPORTANT: The last chance to make voluntary amendments is the time period for replying to the EESR.
Amendments need to be filed with indicating the basis in the original application. If not, the EPO will probably want you to explain the basis for the amendment within one month.
Claims cannot be amended to relate to subject matter which was not covered by the EPO search, unless the subject matter relates to the same inventive concept as the searched subject matter
Deciding to proceeding – Examination
The next step after considering the search opinion could be proceeding with the patent application. This is the point where the examination fee is due to pay, if this didn’t happen before (e.g. on filing the application or on entering the European regional phase). After the payment the EPO asks the applicant for a confirmation of his wish to proceed the examination.
The payment has to be fulfilled in the same time as the search opinion has to be answered (see “Responding to the opinion” above).
Deciding not to proceed – Refund of fees
If the applicant does not want to proceed, he actually can just wait. If he neither pays the examination fee nor confirms the application’s proceeding to examination during the time limit, the EPO will deem the application to be withdrawn. In this case the examination fee will be refunded, if payed beforehand.
If the applicant withdraws the patent application later but before the start of substantive examination, then only part of the examination fee is refunded.
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