Message from the Intellectual Property Office (IPO):
The IPO has had a historic backlog in examinations of patent applications. The IPO has recruited and trained patent examiners in all areas of technology and continues to do so. However, the IPO has not been able to deliver the timeliness that it wants for its customers, particularly in relation to examinations.
The European Patent Office (EPO) can assist member states, for example, by performing searches on national applications. A bilateral co-operation agreement between the IPO and EPO entered into force on 1 July 2018 after it was approved by the EPO’s Administrative Council. Since then, the IPO has been sending UK searches to the EPO to carry out the searches on our behalf. Doing this has allowed IPO examiners to deal with the backlog in examinations.
When a UK application is sent to the EPO for a search, the search report is generated by the EPO using the same tools the IPO uses. The IPO issues the report as a conventional UK search report, and the covering letter indicates that the search was performed by the EPO on our behalf. Searches are subject to the same quality assurance process whether completed by the EPO or the IPO.
The EPO agrees to return the searches within nine months of the filing date, or six months from the request for search if the request is filed at a later date. This is the standard timeliness that the EPO uses for all its contracts with national offices. While this timeliness is outside the IPO’s six-month target for processing requests for searches, the EPO contract has been essential in providing us with the capacity necessary to deal with the historic examination backlog and allow the IPO to examine patent applications within 42 months of filing. In the time that the agreement has been in place, the IPO has both reduced the examination backlog (from over 16,000 pending cases to just 120 at the end of April 2022) and improved the timeliness of searches in the biotechnology area.
The current agreement was due to finish in June 2022, however, it has been extended for a further 12 months to ensure that the IPO will have the capacity to deal with any surges in search requests while maintaining the timeliness of searches at six months and examinations at 42 months.
Going forwards it is anticipated that the number of searches sent to the EPO will be reduced due to the removal of the examination backlog and increased examiner capacity within the IPO. However, due to the timescales agreed under the cooperation agreement it is anticipated that the IPO will be receiving searches back from the EPO up to the end of 2023.
Where the EPO has completed a UK search under this agreement, the search fees for later-filed EP or PCT applications which claim priority from the UK application may be eligible for whole or partial refund at the EPO. Further details are available from the EPO in relation to EP applications [1] and international (PCT) applications. [2] The EPO may also consider an international application to be eligible for PCT direct [3] if it claims priority from a UK application, which was searched by the EPO. Any queries relating to such refunds or eligibility should be pursed with the EPO.
For further information please contact [email protected].
[1] https://www.epo.org/law-practice/legal-texts/official-journal/2019/01/a4.html
[2] https://www.epo.org/law-practice/legal-texts/official-journal/2019/01/a5.html
[3] https://www.epo.org/law-practice/legal-texts/official-journal/2017/03/a21.html
Date published: 24 May 2022
