European Patent Office now issues second written opinions

The European Patent Office (EPO) has changed its practice when it acts as the
International Preliminary Examining Authority (IPEA) for a PCT patent application. The new practice is intended to make the option of requesting International preliminary examination better value for applicants, by including an additional opportunity for dialogue with the EPO as IPEA and so making it more feasible for applicants to obtain a positive International preliminary examination report (IPER).

Following the change in practice, if an applicant requests International preliminary examination by the EPO and the amendments and/or arguments submitted in response to the International search report and written opinion are not, in the view of the EPO, sufficient to allow a “positive” IPER to be issued, the new procedure will apply.

Accordingly, rather than immediately issuing a “negative” IPER, the EPO will now, as a rule, issue one additional written opinion, which will provide a time limit for the applicant to reply with further amendments and/or arguments. Alternatively, if the applicant requests a telephone consultation before the additional written opinion is prepared, then this interview with the EPO Examiner will take the place of the additional written opinion, and the minutes of the interview will present the applicant with the option to submit further amendments and/or arguments. Therefore in either case there will be an opportunity for the applicant to try to obtain a positive IPER, which in turn could potentially aid faster and cheaper progression of subsequent national phase applications for the invention.