By Daniel Davidson

In an effort to better the quality of searches as the International Searching Authority, the European Patent Office is stepping out of their Sunday’s best and into their Tom Selleck’s best.  The EPO has announced that they will be seeking “informal” clarification from applicants that file under the Patent Cooperation Treaty.  If the drawings, specifications, or claims are not up to par with the requirements so that a quality search can be made, an examiner will contact the applicant (or applicant’s attorney of record) and ask for specification in any area that may need clarification.

This effort is regarded as informal because the EPO is under no obligation to contact the applicant for clarification and the applicant is under no obligation to respond to such a request, but as I am sure you have guessed or common sense has kicked in and said, “why wouldn’t you want to respond and have a better quality search performed,” it would be in the applicant’s best interest to respond.  The EPO has indicated that the initial communication will be by telephone or by communication, likely through fax.  As would be the case with the USPTO (in an interview summary as the USPTO calls it), the minutes of the communication will be summarized and sent to the applicant.  If no clarification was made during the telephone consultation, a time limit will be indicated in the written communication summary in which the applicant will need to respond with clarifying statements.  Still, there is no obligation to respond to this request.  It will only result in a sub-par search which I’m sure every applicant wants after paying the fees associated with a PCT application.

The EPO has elected to go with the two week response time from the mailing date which can be done either through further telephone conferences or in formal writing, sent via fax.  (I didn’t know people still used faxes?)  Maybe they will catch on to the email buzz I’ve been hearing about.  I hear email is the new black.  Nonetheless, even if an applicant misses the two week deadline but a response to the “informal” request is received, the examiner may still take into consideration any clarification received as long as it is before the completion of the International Search Report.

The EPO has reminded applicants that this is not an invitation to amend claims because that will need to be done later with the International Bureau.  The newly implemented process will be applied to applications filed on or after April 1, 2011 and will also apply to applications that have not yet received an International Search Report.

This is a fine extension of love from our neighbors to the east, and I’m sure will be appreciated, in most cases, because as I iterated above, it is not at all cheap to file a PCT application. 

I wonder if the EPO has participated in Mustache March to prepare for their new attire?  Cheers.