The EPO offers a useful, but often overlooked, service called “PCT Direct” to PCT applicants who select the EPO as the International Search Authority (ISA). It can significantly increase the chances of a positive International Search Report (ISR) being issued by the EPO, and may also be used to achieve smoother, and even faster, grant of a patent - not only by the EPO, but also in other PCT member states.
In essence, PCT Direct offers an early opportunity to argue in favour of the patentability of the claims of the PCT application over prior art cited against its priority application in a search opinion that was drawn up by the EPO. The EPO as ISA will take the PCT Direct submissions into account when preparing the ISR. The submissions can also highlight any amendments made to the PCT application compared to the priority application so that the ISA can give them full consideration.
PCT Direct can therefore “fast forward” the procedure for PCT applications that claim priority from an application already searched by the EPO. If objections are raised in the priority application’s search opinion and PCT Direct is not used, then the EPO’s ISR will typically simply repeat those objections – sometimes even if the claims have been amended since the priority application if the Examiner isn’t being thorough. The objections will either need to be dealt with at the national phase, which can prolong the application process, or could be addressed under PCT Chapter II, which incurs the significant additional costs of Chapter II International Preliminary Examination. Filing PCT Direct submissions can also be considered more effective than filing amendments to the claims under Article 19 PCT, which are not formally taken into account when drawing up the ISR.
We’ve found that using PCT Direct can improve the chances of a positive ISR being issued on a PCT application that claims priority from an application searched by the EPO. The positive ISR can subsequently help applications proceed smoothly to grant during the national phase. If used in combination with early national phase entry and accelerated prosecution/Patent Prosecution Highway in applicable countries then the overall timescale of the application process through to grant may be greatly shortened in many PCT member states.
In order to qualify for PCT Direct a PCT application must:
There is no additional official fee for the PCT Direct service.
The PCT Direct submission should comprise a letter titled "PCT Direct/Informal comments" that identifies the number of the priority application. The PCT Direct letter and any marked-up copy of the claims and/or description is to be submitted as a single PDF document, separate from the PCT specification itself, with the PCT Request form. In practice, Box IX of the PCT Request form (check list, Form PCT/RO/101) should be checked and the words "PCT Direct/informal comments" should be specified under point 19, "Other", for filings in electronic form.
Although we’ve outlined the advantages of PCT Direct in general above, there can be subtleties which mean its use should be considered on a case-by-case basis. For instance, PCT Direct submissions will be made public and so may give rise to file wrapper issues. Also, for patent applications involving computer-implemented inventions, the EPO has different patentability requirements compared to other countries, including the USA and the UK. Depending on the nature of the software-based subject matter, it may be beneficial to adopt a filing strategy based on a priority application at the EPO with a view to subsequently using PCT Direct to obtain a positive ISR from the EPO as the ISA, which could then be used to help achieve grant in other countries.
If you’d like more information on how PCT Direct could help your patent filings, please contact one of our attorneys.
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