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Commentary

EPO searches on UK patent applications

Date: 11 January 2021

The UK Intellectual Property Office (UKIPO) has been working with the European Patent Office (EPO) to reduce backlogs in searches since 2018. In particular, the UKIPO has been sending some searches in the biotechnology, computing and telecommunications area to the EPO.

 

We are now seeing more frequently the results of such searches in UK search reports and combined search and examination reports. Such search reports indicate that the search was carried out by the EPO. In addition, the combined search and examination report indicates that the accompanying Written Opinion, also prepared by the EPO, uses the problem/solution approach to assessing inventive step, but any response will be assessed using the Windsurfing/Pozzoli approach.

 

Having a search prepared by the EPO on a UK application can be beneficial in a number of ways.

 

Typically, a new patent application for our UK clients is filed first in the UK. This is a relatively inexpensive way of obtaining a priority date. A search report carried out by the UKIPO assists the applicant in deciding on further filings at the end of the priority year, including a European Patent (EP) application. However, the EPO will also carry out a search, on the EP application, which often has different results from the UKIPO search. The EPO search may reveal prior art documents that mean an applicant would not have filed an EP application had they known in advance.

 

In other words, knowing the results of an EPO search before deciding whether or not to file an EP application can be advantageous, especially bearing in mind the relatively high costs of filing an EP application (primarily because of official fees).

 

If the EPO has carried out a search for the UKIPO, the search fees for a later-filed EP or PCT application claiming priority from the UK application may be refunded partially or completely.

 

The cost of an EPO search (official fee currently 1350 Euros) is higher than that of a UK search (official fee currently £150).

 

It is to be noted that the UKIPO decides which applications are sent to the EPO and it is not currently possible for the applicant to request this. These measures will also enable the UKIPO to focus on reducing the backlog in examination.

 

If you have any questions on this topic, please contact Holly Whitlock, Alvin Lam or Dr. John Parkin.

 

Further information can be found on the UKIPO website: Working with the EPO to improve UK patent search timelines

 

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