New PCT Direct Procedure – Opportunity to Comment on International Application

The EPO has launched a new PCT service, PCT Direct, available to PCT applications which:

  • are filed on or after 1 November 2014;
  • are filed at the European Patent Office as Receiving Office; and
  • claim priority from an earlier patent application which was searched by the EPO.

If a new PCT application fulfils all of these criteria, the Applicant may file a “PCT Direct letter” providing informal comments with the application. The Search Examiner is obliged to consider those comments when preparing the International Search Report and the Written Opinion on patentability. 

The PCT Direct letter should discuss the patentability of the subject matter claimed in the PCT application. It may also explain any modifications made to the application in comparison to the priority application. The PCT Direct procedure therefore provides the Applicant with an opportunity to argue in favour of the patentability of the claimed subject matter at an early stage in the international phase and without the need to file a Demand for International Preliminary Examination.

To take advantage of the new PCT Direct procedure the PCT Direct letter must be filed together with the PCT application and must be self contained, such that a third party could understand the comments without reference to the priority application(s) at issue.  The content of the PCT Direct letter will become part of the public file after the PCT application publishes.

Further information about PCT Direct and details of the formalities to be completed when filing a PCT Direct letter can be found in the Notice from the European Patent Office dated 18 August 2014.  A link to that Notice is provided below.

http://www.epo.org/law-practice/legal-texts/official-journal/2014/09/a89.html

18 March 2015

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