EPO rationalises the international preliminary examination procedure

The European Patent Office will rationalise its procedures for international preliminary examination under Chapter II PCT with effect from 3 January 2002, as an interim measure until the steps already taken or still pending in the current PCT reform become fully effective. The reason is that the international preliminary examination procedure (i.e. the PCT Chapter II phase) is often used simply to delay entry into the European regional phase. Even though such applicants may not even have any interest in using the international preliminary examination report, the usual procedure involved in processing the examination request must nevertheless be followed and the International Preliminary Examination Report must be drawn up.

The EPO will from January on refrain from performing substantive examination on each of the PCT applications which enters the Chapter II phase. Unless expressly requested by an applicant and if no amendments and/or arguments are filed by the applicant, a rationalised examination will be carried out where a written opinion (and if the applicant does not respond, the international preliminary examination report) is issued solely based on the information given in the international search report. The written opinion (and the report) will be negative if the search report contains at least one X or Y document, and will be positive otherwise. Other requirements such as form and clarity will be covered only exceptionally.

If a rationalised examination report is issued the EPO will refund two thirds of the international preliminary examination fee. However, the 50% reduction in the European examination fee when entering the regional phase will then no longer apply.

If an applicant files amendments and/or arguments, or expressly requests detailed preliminary examination, the international application will be dealt with by the substantive examiner. So the applicant determines whether the result of the international search becomes the basis for rationalised international preliminary examination, or whether a mehr detailed substantive examination is made. [mehr]

Another measure to reduce examination workload at the EPO is to make full use of Article 34(4) PCT which allows the EPO not to carry out international preliminary examination if the PCT application relates to excluded subject matter. With respect to business methods, it was already decided not to carry out an international search in the Chapter I phase. This kind of rationalisation apparently now also relates to the Chapter II phase.