Responding to Written Opinions at the European Patent Office
Archive
March 2013
Search reports prepared on European patent applications include an accompanying written opinion, to which a response is required. Different deadlines apply to different types of European patent application.
A summary of what is required is set out below
- For direct European applications, a response is required by the deadline for requesting examination. This deadline is six months from the publication of the search report.
- For the European Regional Phase of PCT applications for which the EPO was not the International Searching Authority, a response is required within a deadline set after the supplementary search report and written opinion are issued. In general, the EPO sets a six-month period for this. For such applications, a separate, earlier, six-month period is set for filing voluntary amendments before the supplementary search report is prepared. It is possible to file comments in response to the International Preliminary Report on Patentability (that is, the written opinion accompanying the international search report) at that stage, but it is not essential to do so.
- For European regional phase applications for which the EPO was the ISA or IPEA, a response is required within a six-month period set shortly after entry into the European regional phase.
Any voluntary amendments must also be filed by these deadlines. Later voluntary amendments can only be made with the Examiner’s consent.
Recent news & updates
Find out more Discontinuation of Advance Information on European Regional Phase Entry
IP News
September 2023
The abolition of the ten-day rule is not the only procedural change being made at the European Patent Office (EPO) in November 2023.
Beck Greener Expands In-House Litigation Capabilites
Beck Greener News
August 2023
We are delighted to report that Beck Greener Associate, Kashif Syed, has passed both the written and practical examinations set by Nottingham Law School to qualify as a Higher Courts Advocate.
EPO Enlarged Board of Appeal Referral G1/23 – Extent of Disclosure of Prior Use
IP News
August 2023
The first referral of 2023, case G1/23, has been made to the Enlarged Board of Appeal (EBA) of the EPO, seeking clarification on the enablement test in relation to prior use of a product.
UK IPO Introduces One IPO
IP News
July 2023
In 2021, the UK Intellectual Property Office (IPO) began a transformation programme to update its system and services.
IAM Patent 1000 ranks Beck Greener for patent prosecution for 3rd year running
Beck Greener News
June 2023
Beck Greener has been ranked by the legal directory IAM Patent 1000 for patent prosecution in the recently published IAM Patent 1000 2023 listings. This year marks the third year running for the firm being ranked in this category. This ranking from IAM Patent 1000 means that Beck Greener is highly praised by sources and amongst the most competitive in the field.
UK Trade Marks Registry raising of bad faith objections ex officio on examination of trade mark applications
IP News
June 2023
The concept of "bad faith" has no definition under the UK Trade Marks Act 1994 ("the Act").
The Unitary Patent Package Is Here!
IP News
June 2023
The European patent system makes its biggest change in forty years, as the Unified Patent Court Agreement enters into force on 1 June 2023.
Plausibility – G 2/21: Decision issued by Enlarged Board of Appeal
IP News
May 2023
The EPO’s Enlarged Board of Appeal (EBA) has recently announced the eagerly awaited decision in respect of the G 2/21 (“Plausibility”) referral made in 2021.
International Trade Mark System Joined by Mauritius
IP News
March 2023
Mauritius has filed instruments of accession to the Madrid Protocol with the World Intellectual Property Organization (WIPO) in Geneva, resulting in the Madrid System of International Trade Marks now covering 130 countries.
Unified Patent Court: Sunrise Period opens on 1 March 2023
IP News
February 2023
In a major landmark on the road towards entry into effect of the Unified Patent Court Agreement, the Sunrise Period opens on 1 March 2023.
WTR 1000 Ranks Beck Greener Silver Tiered Firm 5th Year Running
Beck Greener News
February 2023
We are delighted to announce that Beck Greener has been recognised as a Silver Tier firm for prosecution and strategy in the 2023 edition of the World Trademark Review (WTR) 1000: The World’s Leading Trademark Professionals for the 5th consecutive year.
EPO Announce Transitional Measures For Early Uptake of Unitary Patent
IP News
December 2022
With the recent announcement of the delay to the implementation of the UPC Agreement to 1 June 2023, and the start of the “Sunrise Period” to 1 March 2023, the EPO has announced that two transitional measures previously signaled at the start of 2022 will come into force on 1 January 2023.
Belize Joins International Trade Mark System
IP News
December 2022
Instruments of accession to the Madrid Protocol were filed by Belize on 24 November 2022 with the World Intellectual Property Organization (WIPO) in Geneva, taking the number of countries covered by the Madrid System of International Trade Marks to 129 countries.
Adjustment of the Unified Patent Court timeline – Start of the Sunrise Period on 1 March 2023
IP News
December 2022
The roadmap for the UPC has been postponed by two months.
EPO: VICO Oppositions are Here to Stay
IP News
November 2022
The EPO has decided, following completion of a pilot project, that from 1 January 2023 video conference (VICO) will be the default format for Oral proceedings in opposition. The practice of recent months and years is here to stay.
EPO to Abolish the 10-day Rule
IP News
November 2022
The EPO has announced that it has updated its mailing period rules. The update will end the current mailing period arrangements with effect from 1 November 2023.
Beck Greener ranked in legal directory Chambers & Partners for 4th year running
Beck Greener News
October 2022
Beck Greener has been ranked as a leading firm in the Intellectual Property: Patent and Trade Mark Attorneys UK-wide section of the legal directory Chambers & Partners for the 4th year running.
Date announced! Unified Patent Court will finally open its doors
IP News
October 2022
After many years of discussion, preparation, and recent delays, it has finally been announced that the Unified Patent Court Agreement (UPCA) will come into effect on 1 April 2023, with the so-called Sunrise Period beginning on 1 January 2023.
Could a grace period for patent filings be introduced into the EPC?
IP News
October 2022
Any publicly available, enabling disclosure that occurs before the filing or priority date of a patent application before the European Patent Office (EPO) is currently novelty destroying (unless there has been a breach of confidence). A grace period in which a patent application can still be filed following a disclosure of the invention by the applicant itself exists in a number of countries but there is no equivalent provision in the European Patent Convention (EPC). In June 2022, the EPO released a report reviewing the impact that implementing a grace period in Europe would have for applicants. The purpose of the review was to provide an evidence-based assessment for the potential economic impact of the introduction of a grace period in Europe.
