The European Patent Office (EPO), following public consultation, intends introducing a new procedural option enabling applicants of European Patent (EP) applications to request postponement of the start of substantive examination, by up to 3 years.
Currently, applicants can speed up the grant procedure of an EP application, using the Programme for Accelerated Examination of European patent applications (PACE) or other mechanisms. However, no mechanism is currently available to defer commencement of examination. For EP applications filed directly with the EPO, examination has to be requested no later than 6 months from publication of the European search report. For EP applications originating in International (PCT) applications, examination is requested at the time of regional phase entry, ie latest by 31 months from the priority date of the PCT application.
The new procedure will allow an applicant to request postponement of the start of substantive examination, either within the period of 6 months from issuance of the European search, or from entry into the EP phase of a PCT application where the EPO does not perform a supplementary search. However, the procedure up to the end of the search stage remains unchanged.
That is, the EPO will continue to draw up the European search report with a preliminary opinion on patentability, which has to be finalised within 6 months of filing the EP application, and/or draw up the supplementary search, with preliminary opinion, within 6 months from the date of regional phase entry of a Euro-PCT application.
Relevantly also, the applicant continues to be obliged to reply to the search opinion and to pay the examination fee, as the application otherwise lapses. For Euro-PCT cases, the fee is payable at regional phase entry, but can be reimbursed if the applicant later on decides to discontinue the application following receipt of the supplementary search and an (adverse) preliminary written opinion on patentability.
For Australian applicants, most of whom use the Euro-PCT route, this means that they will still have to pay the examination fee at regional phase entry of a PCT application at the EPO, but can request commencement of examination be delayed for three years.
There are pros and cons in doing this, and this should be discussed with your IP advisor rather than being used as a default position. Applicants can initiate examination before the maximum 3 year period expires, by withdrawing the postponement request, and if commercial considerations make such desirable, request expedited examination under the PACE procedure, or the various patent prosecution highway (PPH) programs to which the EPO subscribes.
Third parties who wish to have earlier certainty about potential patent rights that may be granted on an EP application under deferred examination status, can lift the postponement by filing a non-anonymous, substantiated ‘observation’ indicative of non-patentability of the subject matter covered by the claims of the EP application.
It is currently understood that once the EPO deems the third part observation on face value substantiated, the applicant will have no recourse to maintaining deferment in place, and the application will be forwarded to the relevant examination division.
The deferment option is available for all PCT applications entering regional phase before the EPO on or after 1 July 2018.