what happens when ISA's opinion (i.e. preliminary examination) is negative on a patent application?

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blue & green
Posts: 16
Joined: Sun Dec 03, 2017 7:12 pm

what happens when ISA's opinion (i.e. preliminary examination) is negative on a patent application?

Post by blue & green » Mon Apr 05, 2021 3:48 am

can we say that EPO would rely on the findings (so this would result in: "REJECT")
or is this a case for EPO to also accept the application? (assume please ISA is not EPO)

further, could you also specify whether utility models are applicable according EPO's procedures (relevance: PCT,Entry Office=EPO). And what happens in these separate cases:

* when ISA (is not EPO) says that that application was a patent document (i.e. criteron of inventive step is being satisfied) but at national phase (Entry office=EPO) EPO says that that application was utility model (and not patent) (i.e. the product/application is novel but inventive step is not being satisfied for that application).

* when ISA says that that application was utility model ,but EPO says that it was patent application according to the same case with previous subquestion.

Kind Regards
blue


EPO / Patent Information
Posts: 640
Joined: Wed Nov 12, 2014 3:36 pm

Re: what happens when ISA's opinion (i.e. preliminary examination) is negative on a patent application?

Post by EPO / Patent Information » Fri Apr 23, 2021 7:35 pm

Dear User,

Following entry into the regional phase, unless it has been ISA or SISA itself, the EPO carries out a supplementary European search (see Euro PCT Guide 5.9.007). In that, it will consider any opinion from the (S)ISA/IPEA, but is free to digress from them when drawing up its reports and opinions (see section B-II.4.3 of the EPO PCT Guidelines). This also applies to the requirements of inventive step.

The EPO does not accept applications for utility models; a European patent may only be granted if the invention is new, involves an inventive step and is susceptible of industrial application (Article 52(1) EPC). However, pursuant to Article 87 EPC, priority may be claimed from an earlier application for a utility model. In addition, under Article 135 EPC, where a European patent application has been refused, is withdrawn or is deemed to be withdrawn, or a European patent is revoked, national law of an EPC Contracting State may provide for a conversion into a national application for a patent but also for a utility model. Further information can be found in the publication National Law relating to the EPC section VII.

As indicated, if, in the international phase, a PCT authority other than the EPO has held that there is no inventive step, the EPO as designated/elected office is not bound by this assessment. However, if the EPO equally finds that an inventive step is lacking, it will refuse the application.
Kind regards,

The Patent Information User Support Team


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