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EPO News: Update on Early Certainty (EC)

Keltie LLP

K2 IP Limited

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epologoThe “Early Certainty from Search” scheme (ECfS) was launched by the EPO in 2014 to “provide applicants with legal certainty in Europe on pending patent applications early in the process and also to contribute to overall timeliness”.

It is IPcopy’s understanding from EPO sources that the EPO is happy with how ECfS has developed and that there are now plans to extend this into examination and opposition.

EC in Examination – IPcopy understands that the intention will be for cases to be decided on average within a year from an exam request (or from confirmation to proceed with examination). This ambitious target will involve the EPO issuing a first exam report within 4 months of the exam request/confirmation to proceed. Additionally the EPO will aim to get cases with a generally positive European Search Opinion ready for acceptance soon after they enter the examination process.

EC in Opposition – the plan here is to reduce the time period for a “standard” opposition from 18-27 months to around 15 months. To enable this, internal processes at the EPO will be streamlined and there will be increased expectations on the parties to make their cases fully and promptly. An adequate time window between summons and oral proceedings will be maintained.

MIND THE GAP

The following issue is something that IPcopy has heard discussed on the general IP grapevine.

One complication with progressing cases rapidly at the EPO is the gap between the Search and Examination phases. It may be that an applicant wants to talk to the EPO after the extended search report and written opinion has issued. However, at this point the Search division’s work has been completed but the Examining division’s work hasn’t started (and additionally the Examining division doesn’t have authority to discuss the case).

Welcome to the Examination Gap….

One suggestion for dealing with the Gap is that as the Article 94 and rule 70(a) deadlines are concurrent but not formally linked, the applicant could initiate examination first (including paying the examination fee) which would mean the Examining division would have authority to discuss the case. The applicant could then contact the Examiner to clarify objections before a response is filed to the objections raised in the written opinion.


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