The EPO has recently launched a new initiative called “Early Certainty from Search”, with the aim of improving legal certainty on pending patent applications. Under the scheme, the EPO will aim to:
- Provide an applicant with an extended European search report within six months of filing;
- Prioritise applications that are already under examination, over new applications;
- Expedite grant for applications that receive a positive search report;
- Prioritise processing of cases where substantiated observations are filed by third parties who identify themselves; and
- Prioritise oppositions and requests for limitation or revocation.
This is welcome news from the EPO and should be of benefit to most applicants. Up until now it has not been unheard of for some European applications to lie effectively dormant for several years. Of course, during this period of inactivity, such applications are still subject to annual renewal fees. Getting an opinion on patentability in a timely manner can be of significant benefit to applicants when developing IP strategies. The aim to expedite grant for applications that have received positive search reports will be particularly useful for those wishing to use the granted claims as the basis of a PPH request elsewhere, since the PPH filing window is relatively short.
It is not clear how prioritisation will work in practice. The initiative appears to suggest that both new applications and applications already under examination will be prioritised. This then begs the question as to which applications will not be prioritised. It may be that search reports on new applications will be issued towards the end of the six month target, as opposed to four or five months, for example. It may also be the case that the average time between examination rounds will actually increase, but the deviation from this average will decrease. This would provide a more consistent approach which could give EPO examiners time to look at those cases that have effectively become dormant, while not forgetting about the 700+ new applications that are filed at the EPO every day.
It will be interesting to see what effect, if any, this initiative has on proceedings before the EPO. If the initiative does at least deliver on addressing those applications that have seen more than one leap year between examination rounds, it will be seen as a big improvement.