IP Cases & Articles

EPO PCT Direct benefits for international applications

From 1 November 2014, the European Patent Office (EPO) offers their new 'PCT Direct' service for international applications filed as Receiving Office (RO).

The PCT Direct service allows an applicant of an international application claiming priority from an earlier application already searched by the European Patent Office (EPO), to provide informal comments to objections raised in the search opinion drawn up in respect of the priority application.

It is noted that an EPO search can be requested on priority applications filed at the EPO or nationally in France, Netherlands, Belgium, Luxembourg, Italy, Turkey, Greece, Cyprus, Malta, San Marino or Lithuania.

The PCT Direct service allows the applicant to benefit from the earlier search results on the priority application, and enables objections to be addressed at an early stage in the PCT application procedure. This service may be particularly useful to those applicants wishing to take advantage of the existing Patent Prosecution Highway (PPH) pilot programmes in order to expedite examination, since participation in a PPH pilot programme requires a positive Written Opinion or International Preliminary Examination Report on Patentability.

A request for processing of the international application under PCT Direct must be made when filing the international application at the EPO. The request is made by filing a separate letter ('PCT Direct letter') containing informal comments addressing the objections raised by the EPO in respect of the priority application and/or an explanation of any changes relative to the priority application together with marked-up copies showing the changes.

The International Search Examiner will take the comments into account when preparing the International Search Report and Written Opinion, although no explicit reference to the PCT Direct letter or its contents will be made. However, PCT Direct letters will be available for public inspection via WIPO's PATENTSCOPE.