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This publication is available at https://www.gov.uk/government/publications/working-with-the-epo-to-improve-uk-patent-search-timeliness/working-with-the-epo-to-improve-uk-patent-search-timeliness
The Intellectual Property Office (IPO) currently has a significant backlog of biotechnology patent applications. We have recruited and trained patent examiners in this area, and continue to do so. However, we remain unable to deliver the timeliness that we want for our customers, particularly in relation to searches.
The European Patent Office (EPO) can assist member states, for example by performing searches on national applications. The IPO and EPO have therefore agreed that the EPO will carry out some searches on UK patent applications in the biotechnology area.
The bilateral cooperation agreement entered into force on 1 July 2018 after it was approved by the EPO’s Administrative Council. The IPO sent the first UK biotechnology searches to the EPO in early November 2018.
In addition to the above, the IPO has now decided to extend the agreement with the EPO to include computing and telecommunications patent applications. We also have a backlog of these patent applications and are unable to deliver the timeliness that we want for our customers. We have and will continue to recruit and train patent examiners in this area. The IPO sent the first computing and telecommunications searches to the EPO in July 2019.
The duration of the agreement is initially for two years. We estimate that the EPO will complete 400 to 500 UK searches per year. The IPO will determine which applications are sent to the EPO and which will be searched by IPO examiners. Standard IPO forms and fees will continue to apply.
Where a UK application is sent to the EPO for a search, the search report will be generated using the same tools as the IPO uses. The IPO will then issue the report as a conventional UK search report, and the covering letter will indicate that the search was performed by the EPO. Searches will be subject to the same quality assurance process whether completed by the EPO or the IPO.
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 and international (PCT) applications. The EPO may also consider an international application to be eligible for PCT direct if it claims priority from a UK application which was searched by the EPO. Any queries relating to such refunds or eligibility should be pursued with the EPO.
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