Notice from the European Patent Office dated 3 March 2017 concerning issuing a provisional opinion accompanying the partial search results

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Notice from the European Patent Office dated 3 March 2017 concerning
issuing a provisional opinion accompanying the partial search results

This text is intended for publication in the Official Journal (OJ) of the EPO. It is made available in advance on the EPO website merely as a courtesy to the public. Only the text subsequently published in the officially certified PDF file of the OJ is authentic. It cannot be guaranteed that this advance version accurately replicates that text.

To enhance the search products provided to
applicants under both the European and PCT filing routes, the European
Patent Office (EPO) is launching a new service on 1 April 2017 which
will further improve the quality and transparency of its procedures.

At present, if there is a finding of lack of
unity at the search stage, applicants receive the opinion on
patentability (ESOP or WO‑ISA) only together with the “final” European or international search report (Rules 62(1) EPC and 43bis.1 PCT).

As from 1 April 2017, the EPO will start
providing applicants with a provisional opinion on the patentability of
the invention (or unitary group of inventions) first mentioned in the
claims. This will be sent together with the invitation to pay
further/additional search fees and the partial search results (see Rules 64(1) and 164(1)(a) EPC, and Article 17(3)(a) PCT).

This additional service will be provided for
Euro-direct applications, Euro-PCT applications for which a
supplementary European search under Rule 164(1) EPC is performed, and applications in respect of which the applicant has waived the communication under Rule 70(2) EPC.
It will also be provided for international applications for which the
EPO is acting as International Searching Authority (ISA).

As with international applications (cf. Rule 40.1 PCT),
for European patent applications too applicants will in future be
systematically informed about the reasons for the non-unity findings
together with the invitation to pay further search fees.

The provisional opinion (EPO Form 1707) will
be for information only. A reply addressing the points raised in the
provisional opinion is not required and will not be taken into account
when the extended European search report (EESR) is issued. Only the EESR
requires a response under Rule 70a EPC.

In accordance with the same principle, any comments under Article 19 PCT, informal written comments, amendments and/or arguments under Article 34 PCT, and replies under Rule 161 EPC must be submitted only after the “final” international search report and WO‑ISA have been issued.

The provisional opinion accompanying the partial search results will be available to the public via online file inspection.