OJ EPO 2011, 532

1. Introduction

1.1 The European Patent Office (EPO) in its function as International Preliminary Examining Authority (IPEA) has revised its practice under Rule 66.4 PCT. Pursuant to that provision any IPEA has discretion to issue one or more additional written opinions before the international preliminary examination report (IPER) is established.

1.2 The new practice, which is set out in detail hereafter (points 2 to 6), provides for a further opportunity for dialogue with the EPO as IPEA, thereby giving applicants more scope to enter the national phase before the elected Offices with a positive IPER. In doing so, the new practice adds to the value of the international preliminary examination procedure before the EPO as IPEA.

2. New practice under Rule 66.4 PCT

2.1 Before issuing a negative IPER, the EPO will, as a rule, issue one additional written opinion (hereafter: "second written opinion"). In the communication containing the second written opinion (Form PCT/IPEA/408) a time limit is set within which the applicant may reply by filing further amendments and/or arguments to overcome any objections raised therein. A request for a second written opinion need not be filed. For the purpose of this new practice and in the interest of applicants, a broad definition of the term "negative" IPER is used. This term is to be understood as an IPER informing the applicant of a deficiency to which he must respond under Rule 161(1) EPC if he decides to enter the European phase. ^[ 1 ] If the IPER contains no objections or only minor objections which do not hinder a direct grant in the European phase, the IPER is considered positive.

2.2. A second written opinion will be issued on condition that the applicant filed in due time either a substantive reply to the written opinion established by the EPO as International Searching Authority (WO-ISA) (see point 3) or to the first written opinion established by the EPO as IPEA (see point 4). However, depending on the particular circumstances of a case, the procedure may be different and a second opinion may not necessarily be issued if a request for consultation by telephone is filed (see point 5).

3. Procedure if the EPO acted as ISA for the international application

3.1 If the EPO acted as ISA for an international application, the written opinion (WO-ISA) established by it is considered a first written opinion for the procedure under Chapter II PCT (Rule 66.1bis (a) PCT).

3.2 A second written opinion (Form PCT/IPEA/408) is issued on condition that:

• the applicant has filed amendments and/or arguments which must be taken into account for international preliminary examination (Rules 66.1(a)-(d) and 66.4bis PCT), and
• there are objections outstanding such that the IPER would be negative were it to be issued based on the file as it stands.

4. Procedure if the EPO did not act as ISA for the international application

4.1 If the WO-ISA was established by another international authority acting as ISA, the WO-ISA is not considered a (first) written opinion for the international preliminary examination procedure before the EPO as IPEA (Rule 66.1bis(b) PCT). ^[ 2 ] In these cases the EPO in its function as IPEA issues a first written opinion (Form PCT/IPEA/408) if it has any objections. The applicant may respond to this communication by filing amendments and/or arguments within the time limit set therein.

4.2 A second written opinion is issued on condition that:

• the applicant has filed amendments and/or arguments to overcome any objections raised in the first written opinion within the time limit set for reply (Rules 66.1bis(c) and 66.2 PCT) and
• there are objections outstanding such that the IPER would be negative were it to be issued based on the file as it stands.

5. Request for consultation by telephone

5.1 Before the IPER is established, an applicant may file a request for consultation by telephone. The EPO will grant such a request as a rule only once (Rule 66.6 PCT). As a consequence of the new practice under Rule 66.4 PCT, the procedure concerning consultation by telephone is amended as follows:

5.2 If the applicant files a request for consultation by telephone before a second written opinion is issued, the applicant is sent the minutes of the telephone consultation together with an invitation to submit further amendments and/or arguments within the time limit set for reply therein. No second written opinion will be issued, since this procedure allows a dialogue with the applicant comparable to the procedure set out in point 2.

5.3 If the applicant requests a consultation by telephone and/or a second written opinion before a second written opinion is issued, the discretion to decide on the most appropriate way to proceed is left to the EPO as IPEA and the examiner will either consult the applicant by telephone (see point 5.2) or establish a second written opinion (see point 2).

5.4 If the applicant files a request for consultation by telephone after a second written opinion has been issued but before the date on which the IPER is established, the minutes of the telephone consultation are sent to the applicant but will not be accompanied by an invitation to submit further amendments and/or arguments and none will be accepted, unless agreed upon during the consultation by telephone.

6. Time limit for reply

The time limit set for reply to the second written opinion or, as the case may be (see point 5), to the invitation accompanying the minutes of the telephone consultation is normally two months and not shorter than one month (Rule 66.2(d) PCT).

7. Entry into force

The new practice applies to international applications for which, pursuant to Rule 69.2 PCT, the time limit for establishing the IPER expires on or after 1 December 2011 unless the IPER is established before 1 October 2011^[ 3 ] .