PCT Direct - an optional initial stage of the International (PCT) patent application procedure
The European Patent Office (EPO) offers a service called ‘PCT Direct’ which allows applicants for international applications under the Patent Cooperation Treaty (PCT applications) to optionally submit comments and arguments to be taken into account when an examiner first reviews their PCT application and prepares an international search report and written opinion. This service is available where the PCT application claims priority from an earlier patent application which has already been searched by the EPO. The comments and arguments address issues previously raised by the EPO in connection with the earlier application. PCT Direct enables applicants to cost-effectively and efficiently progress their international applications, and to make use of an additional opportunity for review of their application by an EPO examiner prior to the national phase and European regional phase.
This article assumes that readers already have a basic understanding of the PCT patent application procedure. If you do not, then please read our introduction to the PCT application procedure.
The international patent application procedure without PCT Direct
PCT applications which name the EPO as international searching authority are searched by an EPO examiner who prepares a search report and a written opinion on the patentability of the invention (or at least the first listed invention if there is more than one invention). If the applicant takes no further action then this report and opinion become the 'international preliminary report on patentability' (IPRP) which is used as the starting point for examination in the national phase. However, if the applicant wishes to dispute the conclusions of the search report and written opinion at this stage then they may file a request for international examination, called a ‘Chapter II Demand’ with arguments, and often claim amendments. These submissions are reviewed by the examiner and the applicant hopes to receive a more favourable IPRP as a result.
Thus, an EPO examiner will review the PCT application at least once in the international stage, when the search report and written opinion are prepared, and they may review the application one or more further times if the applicant decides to file a Chapter II Demand.
Frequently the preparation of the search report will not be the first time that the patentability of the invention has been considered. International applications usually claim priority from an earlier patent application, filed within the preceding year. If the earlier application was filed with an official search request, then the applicant will already have received a search report for the claims of that earlier application.
If the earlier application was a European patent application, then it will have received not only an official search report but also a written opinion of the EPO. Applicants frequently review these searches and opinions and check that they have good patentability arguments over the prior art which has been found. They frequently adjust their applications prior to filing internationally in view of the objections which have been raised.
If the earlier application was a European patent application, then the initial search and written opinion during the PCT application procedure frequently duplicates or closely corresponds to the search of the earlier application. Applicants can request that the EPO reuses the results of the earlier search when reviewing the PCT application and refunds some or all of the search fee. This is useful in that it reduces costs but means that the search stage of the PCT application procedure often does not progress the application at all.
Sometimes applicants will have addressed the concerns which the examiner had concerning the earlier application by amending their description and/or claims when filing the PCT application, or incorporating more experimental evidence to support an inventive step. However, these efforts may be overlooked or neglected, and frequently a search report and written opinion issues which is identical to that of the earlier application despite efforts made by the applicant. Sometimes the claims of the earlier application were patentable, and the objections are simply due to a misunderstanding of the prior art or the application per se by the examiner. However, prior to PCT Direct it was not possible to submit arguments to refute the objections, or to remind the examiner of any revisions made to the specification and claims.
The situation can be frustrating for applicants, especially for those who want early evidence of patentability to attract investors and/or to deter potential infringers. Practically, applicants who want to open a dialogue with the examiner will need to incur the costs of requesting international examination by filing a Chapter II Demand. Otherwise they can postpone discussions until the national phase.
PCT Direct service
The solution which has been found to these problems is the PCT Direct service which was introduced in November 2014 and then revised in 2015 and 2017. The PCT Direct service allows the applicant to submit a PCT Direct letter when their application is filed, containing written arguments in response to objections raised in the search report and written opinion issued on an earlier application from which priority is claimed. The applicant can highlight differences between their PCT application and their earlier application and discuss the implications of these. The examiner should take the content of a PCT Direct letter into account when drafting the international search report and written opinion. This may contribute to objections being waived.
PCT Direct therefore assists the EPO in their assessment of the PCT application and adds value to the written opinion established by the EPO. Applicants benefit from having an additional opportunity to explain the patentability of their invention and to have their amendments reviewed and arguments considered. Use of the PCT Direct service can therefore facilitate the progress of the international application towards a positive written opinion. However, the applicant retains the option to later file a Chapter II Demand, should they wish.
Requirements for PCT direct processing
In order to use the PCT Direct service, the following requirements must be satisfied:
1. The earlier application must have been searched by the EPO. This means that the earlier application should be a European patent application, PCT application or a national filing in one of a limited number of European countries whose applications are searched by the European Patent Office. This option is not available if the earlier application is a UK application, for example.
2. The PCT application must claim priority from the earlier application searched by the EPO.
3. Although the PCT application can be filed with any receiving office, the EPO must be selected as the international search authority. Note that this is anyway the only option for most UK-based applicants.
4. At the time of filing the PCT application, the applicant must request processing under PCT Direct and file a PCT Direct letter containing comments on the written opinion of the earlier application.
5. The PCT Direct letter must be self-contained. It may not just refer to an earlier written opinion because that report may not be publicly available. The applicant might therefore quote relevant parts of the earlier opinion or annex the earlier opinion to the letter.
6. If amendments have been made to the claims and/or the description, in comparison with the earlier application, it is preferable to submit a marked-up document showing those differences. Alternatively amendments should at least be discussed.
7. The PCT Direct letter and any attachments and annexes must be submitted as a single pdf document entitled PCT-Direct/informal comments.
Note that the PCT Direct letter is not part of the PCT application per se, and its pages are not counted when calculating page fees. Additional points are described in the EPO Guidelines on PCT Direct.
A useful feature of the PCT Direct service is that it does not incur any official fees. Applicants will usually incur the fees of a European Patent Attorney in drafting a PCT Direct letter, however those costs will anyway be incurred at some point in the future. If amendments are made to the content of their earlier application when filing internationally it can be efficient for the reason for those amendments and associated arguments to be written up at the same time, rather than years later. PCT Direct can present a significant cost saving if it enables the filing of a Chapter II Demand to be omitted and the high official fee for international examination to be avoided.
Note that when PCT Direct is requested it is usual to request a refund of at least part of the PCT official search fee on grounds that the search of the earlier application can be reused and at least a partial refund is often obtained. Accordingly, this benefit of the regular approach of requesting reuse of an earlier search is not lost.
Advantages and concerns
Overall, the PCT Direct service provides a new opportunity to cost-effectively obtain a positive written opinion for a PCT application. A positive written opinion not only provides early certainty and assurance to third parties but may also help the application to proceed relatively smoothly to grant during the national phase. The PCT Direct service is voluntary and free of charge from the EPO. Applicants retain all of their existing rights to make amendments or request international examination under the PCT.
PCT Direct is only available where the earlier application from which priority is claimed was searched by the European Patent Office and so the availability of PCT Direct is another factor which may push the applicant towards filing European patent applications in the first place instead of UK or other national applications in territories which do not use the EPO to carry out searches.
Some applicants only wish their patent applications to reach the stage of being published if they expect to receive sufficiently broad patent protection. This may apply where a patent application contains important know-how which has to be included in the patent application to meet sufficiency and enabling disclosure requirements, but which an applicant would rather keep confidential if they are not going to receive a broad patent. PCT Direct is useful in that the application receives a further round of review which is often, although not always, received before it is too late to withdraw the application in time to prevent publication.
However, one should also bear in mind that the PCT Direct letter is available for public inspection from publication, i.e., after the expiry of 18 months from the filing date or priority date (if priority is claimed) of the PCT application. The publication of a PCT Direct letter may give rise to issues such as prosecution history estoppel in territories where that is relevant. If the earlier search report is annexed, it might alert third parties to possible weaknesses in the application.
Furthermore, there are various circumstances in which PCT Direct is not appropriate. These are similar to the reasons why filing a Chapter II Demand is often not appropriate. It may be that the applicant expects to present different arguments or make different amendments in different territories in the national phase. There may not be a single clear way forward. The applicant may not want to receive multiple written rejections of a claim in the international phase before addressing an issue in the national phase. The applicants may want to keep the competitors guessing the scope of protection conferred by patent claims. The applicant may simply wish to minimise immediate costs even if they may increase overall costs due to cash flow issues or for other strategic business reasons. Accordingly, multiple early rounds of consideration are not always necessary or desirable.
It is also worth remembering that a positive written opinion which turns into a positive international preliminary report on patentability (IPRP) does not necessarily lead to a granted patent without further prosecution in the national phase. This is because of the non-binding nature of the IPRP. A national examiner is free to challenge the conclusions of the IPRP. Sometimes, even an EPO examiner who has issued a positive IPRP changes his or her mind during the European regional phase, although it is fairly rare.
On balance, our view is that for many regular filers of PCT applications whose concern is overall efficiency and cost-effectiveness, PCT Direct will frequently be an option worth taking up.
If you have a question about how PCT Direct may apply to your patent applications please do not hesitate to contact us.