The European Patent Office has proposed an option to defer examination for 3 years. The scheme is referred to as “User Driven Early Certainty” and is explained in memo CA/PL 4/18 of 25 January 2018 from the President to the Committee for Patent Law.
It was presented as ready for publication with a start date of 1 July 2018 but various user groups have expressed reservations and outgoing President Batistelli told the eip Council at its 40th anniversary meeting on 20 April 2018 that he is passing this particular baton to his successor, António Campinos and it is up to the new president whether to take it forward. The proposed launch date is postponed and a revised paper is expected later this year.
Summary of the proposed scheme
- There is to be no fee for deferral
- The option to defer comes after the obligation to reply to the Search Report (or to confirm the desire to proceed with examination as the case may be) - accordingly, there need be no change to the Rules.
- The applicant can lift the deferral and resume examination at any time within the 3 years.
- Third parties can lift the deferral but only by filing substantiated non-anonymized observations.
Other IP5 offices already permit applicants to influence start of examination
- At the JPO, examination may be requested within 3 years from filing the application.
- At the KIPO a request for examination may be filed within 3 years from the filing date of the application.
- At the SIPO examination may be requested within three years from filing the application.
- At the USPTO applicants may request a deferral of examination for a period of up to three years from the earliest filing date.
Reasons given for the new scheme (“user feedback”):
- Applicants may have an interest in postponing the prosecution of their application to align with external factors;
- filing of an application at a very early stage in the product development cycle;
- need to align with regulatory approval requirements;
- need to align with funding or licencing activities;
- increase prosecution efficiency for both applicants and the EPO.