PA 11/2017: How to make sure that applicants’ comments on earlier search results are taken into account by examiners at the European Patent Office as International Searching Authority under “PCT Direct”

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q:  I am about to submit an international application claiming priority from an earlier application searched by the European Patent Office (EPO), and I was wondering whether there is any way to provide the EPO as International Searching Authority (ISA) with comments on the objections raised in the search opinion of the priority application. If so, how should I proceed?

A:  The EPO in its capacity as ISA provides a service, which it calls “PCT Direct”, which allows applicants to submit informal comments reacting to objections raised by the EPO in the search opinion of the priority application.  A similar service is also offered by the Israel Patent Office (see PCT Newsletter No. 07-08/2016, page 3).

As far as the EPO is concerned, any informal comments submitted under “PCT Direct” are to be understood as arguments regarding the patentability of the claims of the international application and also possibly as explanations regarding any modifications to the application documents, in particular to the claims, in comparison with the earlier application.

The “PCT Direct” service establishes a link between the results obtained for the first filing by the EPO and the subsequent search carried out by the EPO in the international phase.  PCT applicants may make use of this service to explain the rationale behind their decision to amend (or not amend) the application documents in the international phase.  It may be particularly useful at this stage of the procedure in light of the fact that no contact is foreseen between applicants and examiners in the international phase until conclusion of the international search.  The provision of comments to the ISA may significantly increase the chances of a positive written opinion in the international phase.

If you wish to request that your application be processed under “PCT Direct” before the EPO, you must ensure that the following requirements are met:

  • the international application claims priority of an earlier application searched by the EPO (international, European or national first filing, but not an international-type search).
  • the informal comments are submitted to the receiving Office selected (this does not necessarily have to be the EPO – it can be any competent receiving Office) in the form of a letter (“PCT Direct” letter) together with the international application (note that the “PCT Direct” letter does not, however, form part of the international application itself).
  • the “PCT Direct” letter is presented as a separate document attached to the international application – such document should be entitled “PCT Direct / informal comments” and should clearly identify the application number of the earlier application in the header.
  • if the claims and/or the description of the international application differ from those of the earlier application, a marked‑up copy indicating the differences should preferably be submitted.
  • a copy of the earlier search opinion could also be annexed to the “PCT Direct” letter. However, please bear in mind that the letter, together with the annexed documents, will be made available to the public, in accordance with PCT provisions on file inspection.
  • the “PCT Direct” letter, any marked‑up copy of the claims and/or description, as well as the earlier search opinion, if annexed, are to be submitted as a single document in PDF format (not as a ZIP file).
  • the presence of the “PCT Direct” letter and its annexes is to be indicated in the PCT request form (Form PCT/RO/101) as follows:
    • for filings on paper: the words “PCT Direct / informal comments" should be specified under check-box 11 (“other”);
    • for filings using the EPO online filing software: applicants should select “Applicant letter to ISA concerning earlier search (PCT Direct)” as document type from the sub‑tab “Accompanying items” on the “Content” tab, and indicate “PCT Direct / informal comments” as a “Remark” on the “Annotate” tab;
    • for online filings using the EPO new online filing tool (CMS), applicants should indicate “Communication concerning PCT Direct” as document type and specify "PCT Direct / informal comments” in the “Remarks” field;
    • for filings in electronic form using WIPO’s ePCT portal, such documents are to be uploaded as “Other documents” by selecting the box “Applicant letter to ISA concerning earlier search (“PCT Direct”)”.
  • finally, informal comments filed under “PCT Direct” must be self-contained, since the search report, the search opinion or any other submissions that are part of the file of the earlier application may not be publicly available.

If the above‑mentioned requirements are met, the examiner will take into account these informal comments when preparing the international search report and written opinion.  The examiner will acknowledge the “PCT Direct” letter in the written opinion and address its content insofar as it is relevant to the international search procedure, and in so doing, demonstrating that your comments have been considered. The examiner will only make explicit reference to the earlier search opinion if you annexed this to your “PCT Direct” letter.

It is important to note that the above‑mentioned “PCT Direct” procedure should not be confused with the submission of informal comments under the PCT.  The latter gives the applicant the opportunity to respond informally to the written opinion of the ISA by submitting comments to the International Bureau which are ultimately made available to designated Offices (for further information see the PCT Applicant’s Guide, International Phase, paragraph 7.030, and the “Practical Advice” published in PCT Newsletter No. 01/2015).