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In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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We wrote in our Autumn 2011 edition of Patent issues about the pros and cons of using PCT Chapter II. We were not at that time effusive in our enthusiasm for the extra expense of Chapter II.

Since then, a number of changes have occurred in EPO practice that favour using PCT Chapter II. Applicants should not merely bide time to EP regional phase entry.

Reason 1 - If there is non-unity you can keep options open and argue the merits of different inventions in parallel
If the International Search Report has identified that there is more than one invention, a brief opportunity is given to pay an additional search fee. If the additional fee is not paid, a partial search report is drawn up. The unsearched claims cannot be examined before the EPO except by (a) entering the EP regional phase and (b) filing a divisional application to the unsearched claims. There are strong reasons for paying the extra search fee(s) when invited to do so.

By paying the extra search fee(s), the option to prosecute different inventions is kept open to the next stage, but if no Demand for Preliminary Examination is filed (no Chapter II Demand), the application enters the regional phase from PCT Chapter I and the applicant is promptly required to choose (within 6 months of receipt of the communication under Rule 161) which claims should proceed to examination. (The Applicant can decline to choose and argue for unity, but let us not complicate the question in hand.) Having chosen one set of claims, new Guideline C-III, 3.4 prevents the applicant from going back and amending to the non-elected claims.

Accordingly, existing practice does not permit examination of different inventions in parallel and the new guideline rules out the possibility of examining different inventions in series.

On the other hand, in Chapter II examination the examiner will proceed (upon payment of one or more additional fees) to examine more than one searched invention in parallel. The Applicant therefore has one opportunity to argue in favour of different inventions before having to choose.

Reason 2 - Dialogue with the PCT Examiner
In recent years it has been common experience that the IPRP II has been a carbon copy of the Written Opinion, with perhaps a mere sentence rebutting the arguments made by the applicant accompanying the amendment under PCT Article 34. It can be frustrating to set out a detailed argument and not feel that the International Examiner has properly addressed all the points raised in reply to the Written Opinion.

According to a new policy that came into effect on 1 December 2011, the EPO will issue one additional written opinion and/or permit a telephone consultation with the Examiner before issuing a negative International Preliminary Report on Patentability. A broad definition of the term "negative" is intended. A pre-condition is that the applicant responds in due time to the written opinion established by the EPO as ISA or to the first written opinion established by the EPO as IPEA.

This new policy provides for a further opportunity for dialogue with the EPO as IPEA, thereby giving applicants more scope to enter the national phase before the elected Offices with a positive International Preliminary Report on Patentability.

Reason 3 - Two extra bites at the cherry
Under the "Raising the Bar" initiative at the EPO, there has been a noticeable trend toward guillotining procedure after just one office action. It is not unusual to receive a second or third office action, but it is all too common to receive a summons to oral proceedings (in Munich, the Hague or Berlin) after just one round of written argument. User groups have petitioned against this trend, but it is a procedure applicants must learn to live with. Of course there are cases in which oral argument is appropriate, and in more than 50% of cases for which a summons is received, the outstanding objections are resolved before the need for a hearing. Nevertheless, a summons to a hearing is rarely welcome, not merely because of the hearing itself (the hearing lasts just a few hours, and from London we can often travel there and back in a day), but because the preparation must be so much more thorough.

To prepare for a hearing, all contemplated amendments must be prepared in advance, and all objections to those amendments must be anticipated. The onus is very much on the applicant to lay out the entire case and any fall-back positions in advance, even if these ultimately turn out to be unnecessary. This is where the costs increase.

Hence, an extra round or two of negotiation with the examiner in a more traditional iterative dialogue may well be worth the cost of an International Preliminary Examination Fee (half of which is recovered in the form of a discount in the EP phase).

International Preliminary Examination is more useful than ever if:

  • a wide filing program is contemplated, rapid grant is required or the case is a difficult one to present;

and remains less interesting if:

  • costs are to be deferred or minimised, or only a few countries are to be selected for national/regional processing.

It remains the case that not all patent applicants prefer to push ahead to grant in the shortest time at the least cost. There are many scenarios in which a slow-running strategy is preferred. The PCT route without preliminary examination remains preferred where an applicant does not want to "show his hand" or commit too early to a particular amendment or scope of claim.