EPO Providing Patentability Opinions with Search Reports

For European patent applications filed on or after 1 July 2005, the search report will include an initial EPO opinion on the claimed invention's patentability.

Under the new EPC Rule 44, "the European search report [is] accompanied by an opinion on whether the application and the invention to which it relates seem to meet the requirements of the European Patent Convention." This new "extended European search report" or "EESR," is obligatory. Applicants can no longer opt out, and the new procedure also applies to the supplementary European search report under Article 157(2)(a) EPC. The opinion is not part of the European search report, and therefore is not published with it under Article 93(2) EPC. Nonetheless, once the EESR is issued to the applicant, it is part of the file and open to file inspection once the application has been published (Article 128(4) EPC).

The implementation of EESRs for all European patent applications follows a successful pilot project for European first filings which started in July 2003. According to the official press release, the new procedure "gives applicants a very early opportunity to manage their patenting risks. At the same time, it also ensures more information and procedural transparency for the public, who will have access to the EESR, via (electronic) file inspection, as soon as the EPO publishes the application. "

To cover the extra work which the EESR involves, the Administrative Council of the European Patent Organisation has increased the European search fee from EUR 690 to EUR 960. To counterbalance that, the examination fee payable on applications with an EESR has been reduced from EUR 1 430 to EUR 1 280.

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