Working with the EPO to improve UK patent search timeliness
Updated 16 July 2019
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The Intellectual Property Office (IPO) currently has a backlog of biotechnology patent applications. We have recruited and trained patent examiners in this area, and continue to do so. However, we have not been able 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. Last year, the IPO and EPO agreed that the EPO will carry out some searches on UK patent applications in the biotechnology area.
The bilateral cooperation agreement between the IPO and EPO 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 a backlog of computing and telecommunications patent applications. We have and will continue to recruit and train patent examiners in this area. The EPO are now also carrying out some searches on behalf of the IPO in the computing and telecommunications areas. The IPO sent the first computing and telecommunications searches to the EPO in July 2019.
Further to the above, the EPO are now also carrying out searches on behalf of the IPO more widely to cover an agreed set of subject matter headings covering chemical and mechanical subject matter. We have chosen to widen the subject matter because it will enable our examiners to focus on reducing the backlog of examinations that we currently have. Also, this will allow the IPO to maintain the progress it has made in improving the timeliness of searches. Cases from these wider areas will be sent from start of November 2019.
The duration of the agreement is initially for two years from July 2018. The EPO will complete 1200 to 1400 UK searches per year. The IPO will continue to 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 issues the report as a conventional UK search report, and the covering letter indicates that the search was performed by the EPO. Searches are 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.
For further information please contact workcooperation@ipo.gov.uk.