The European Patent Office (EPO) has launched a new “Early Certainty from Search” scheme, which is intended to optimise the use of examining resources and improve legal certainty on pending European Applications. To this end, the EPO aims to issue European search reports (including written opinions on patentability) within 6 months of filing. Applicants of first filings (priority-founding European Applications) already receive the European search report within 6 months in most cases, but the scheme is being applied globally to all European Applications (convention European Applications, divisional European Applications, and International (PCT) Applications entering the European Regional Phase). The earlier issue of the European search report means applicants will be able to gain sight of the preliminary view of the EPO early in the grant procedure.
To achieve this goal, the EPO proposes to prioritise applications which have already entered the search phase before starting new applications, and to expedite the grant procedure for applications with a positive search opinion. As an additional arm of the scheme, the EPO will be prioritising applications where substantive third party observations have been filed (but only where the third party is identified/not anonymous); as well as post-grant opposition, limitation, and revocation proceedings.
The proposal appears to be reasonable, but there may be some drawbacks – the prioritisation of certain applications will presumably act as an impediment to other applications (applications with a completed search phase), which could manifest as an increase in the time to the issue of the first substantive examination report and an overall lengthening of the grant procedure. There is also a question as to how the scheme will be received by EPO staff, who have already this year staged a demonstration to highlight dissatisfaction with certain working conditions; but the EPO suggest that the application of the scheme will be neutral on staff workload.
Applicants concerned that the grant of an application might be delayed as a consequence of the new scheme should consider utilising the accelerated examination (PACE) procedure before the EPO, which puts an onus on the EPO to return communications to the applicant within 3 months of filing a response. Accelerated examination can be requested at any time, but the optimum time to do so is together with the response to the written opinion accompanying the European search report, whereby the applicant can benefit from gaining sight of the preliminary view of the EPO and, if proceeding with the application, can benefit from an accelerated examination phase.