EPO to Provide Opinions on Patentability with Partial Search Reports

10 March 2017

The EPO has announced that, from 1 April 2017, it will issue an opinion on patentability even in cases where a partial search report is drawn up. At present, if the EPO identifies that the claims cover more than one invention, then it issues a partial search report covering the invention mentioned first in the claims and invites the applicant to pay additional search fee(s) to get the other invention(s) searched. This partial search report is not accompanied by an opinion on patentability. After the deadline for paying additional search fees has passed, the EPO issues a final search report, which covers all inventions for which search fees have been paid and which is accompanied by an opinion on patentability for each of those inventions.

From 1 April 2017, the EPO has announced that it will now issue an opinion on patentability for the invention mentioned first in the claims with the partial search report. This change will apply to both (a) European patent applications on which a search report is to be drawn up, and (b) International applications where the EPO is the International Searching Authority. The procedure will not otherwise change, in that the partial search report will still be accompanied by an invitation to pay additional search fees and a final search report will subsequently be issued covering all inventions for which search fees have been paid.

This is a welcome development, because it means that the applicant will have more information as to how the EPO views the patent application when deciding whether or not to pay additional search fees. Further information on the changes can be found here.

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