February 2002



EPO “rationalises” PCT Examination





procedure. However, Applicants using the rationalised procedure will no longer be entitled to a 50% reduction on the European examination fee.


Our Advice


Applicants who are using the PCT examination procedure to extend the decision period for filing national patent application are probably best advised to file no amendments and use the rationalised procedure in order to minimise costs.


Applicants who wish to have a detailed examination report of the application should seriously consider filing amendments to the application after receipt of the Search Report.

            Last year, the European Patent Office (EPO) announced that it planned to “rationalise” its procedures for international preliminary examination under the Patent Co-Operation Treaty (PCT). The aim behind this rationalisation is to speed up the prosecution of European Patent Applications and reduce the amount of work that Examiners have to carry out in connection with PCT applications. The rationalised procedure came into force on 3rd January 2002 and we are already seeing the first results.

Search Report


Under the new procedure, the international search report will form the basis for the international examination.

If the applicant requests a PCT Examination for an application in which the Search Report contained X or Y documents and the applicant files no amendments, then an automated “negative” written opinion will be issued. If, on the other hand, the Search Report contains only A documents, then an automated “positive” written opinion will be issued.


Detailed Written Opinion


The Applicant can request a detailed PCT examination by either

i) filing a request for a detailed examination on filing the demand for examination,

ii) filing amendments to the PCT application on filing the demand for examination, or

iii) filing a response to the “negative” written opinion issued under the rationalised procedure.

The detailed written opinion will in future focus on only the novelty, inventive step and industrial applicability aspects of the invention.


Fee Reduction


The EPO will refund two-thirds of any PCT international preliminary examination fee which has been examined under the rationalised

For further information:


Huber & Schüssler Patent Attorneys

Truderinger Str. 246

81825 Munich / Germany

Tel: +49 89 43 77 88 0

Fax: +49 89 43 77 88 99