Opinion on the patentability of your invention by the 5 IP5 Offices. It’s now possible at the international stage!

Paris, April 8, 2019 – The IP5 offices have launched a collaborative search and examination pilot project to provide a written opinion on the patentability of an invention by these five offices, as early as the international stage, and thus without waiting for the initiation of national phase examination procedures.

When filing an international application, it is now possible for applicant(s) to apply to participate in the collaborative search and examination pilot project launched by IP5, which comprises the 5 most important IP offices worldwide, namely the European Patent Office (EPO), the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO) and the State Intellectual Property Office of the People’s Republic of China (SIPO).

As part of this pilot project, the competent International Searching Authority (main ISA), namely the EPO for a French applicant, transmits a provisional international search report and provisional written opinion to the other IP5 offices acting as peer International Searching Authorities (peer ISAs). After performing an additional search, if necessary, the peer ISAs send their contributions to the main ISA. The latter then establishes a final international search report and final written opinion which respectively correspond to the provisional international search report and provisional written opinion supplemented, as appropriate, by the contributions of the peer ISAs which are deemed relevant by the main ISA.

The following documents are then submitted to public inspection:

• final international search report and final written opinion that reflect the opinion of the main ISA,
• contributions from peer ISAs that reflect the opinion of each peer ISA, respectively.

Only the final written opinion can, however, be used as a basis for submitting a PPH request in order to accelerate an examination procedure.

At this stage of the project, which is still in its pilot phase, no fee is required for participation. However, if this project is continued as a result of this pilot phase, a fee, corresponding at most to the sum of the search fees of each participating ISA along with an administrative fee to cover collaboration costs, will need to be paid.

The conditions to participate in this pilot project are as follows:

• no more than 10 PCT applications admitted to the pilot project per applicant for the same main ISA,
• no more than 100 PCT applications admitted to the pilot project per main ISA,
• a limited number of PCT applications admitted to the pilot project for a given technical field to ensure a diversity of technical fields,
• the absence of a specific reason identified by the main ISA that could hinder the processing of the request according to the collaborative procedure schedule (e.g. an irregularity in the request, the absence of a sequence listing in text format, etc.).

In addition, where the main ISA is the EPO, a request to participate in the pilot project may currently be filed only for international applications in French or German. For international applications in English, requests for participation may be filed from July 1, 2019.

This pilot project makes it possible to benefit, at the international stage, from an opinion on the patentability of an invention by the five IP5 patent offices, namely the US, Chinese, European, Japanese and South Korean offices, without the payment of an additional fee during the pilot phase of this project.

Such a collaborative search and examination procedure may, however, result in:

• a delay in the preparation of the international search report and written opinion,
• the identification of new relevant prior art documents (e.g. Asian documents) that may lead to a change in the opinion of the main ISA in relation to the written opinion previously established for the priority application.

REGIMBEAU is at your disposal to evaluate the appropriateness of requesting participation in the collaborative search and examination pilot project in your particular case.