The search report from the European Patent Office is accompanied by an opinion on the patent application and the invention. The combination of the European search report and the searcher’s opinion make up the extended European search Report (EESR).
The purpose of the opinion included in the EESR is to help the applicant decide how to proceed with the prosecution of the patent application. In particular, it should help the applicant to decide whether to continue with the application and incur the additional cost of the EPO examination fee.
If the application and the invention for which the search has been conducted seem to meet the requirements of the European Patent Convention (EPC), then a positive opinion is issued. In this case, the first communication from the Examining Division during substantive examination is likely to be a notice of intent to grant a patent (communication under Rule 71(3) EPC).
If a positive opinion is received, it is advisable for the applicant to consider whether any voluntary amendments to the application are desirable. If the applicant wishes to amend the application, then the amendments must be filed before the application proceeds to examination, since voluntary amendment may not be possible later (see “Amendment” below).
Opinion including objections
If the application and the invention do not seem to meet the requirements of the EPC, then the opinion will set out in detail the searcher’s objections to granting a patent. The objections can relate to both formal and substantive matters.
Responding to the opinion
If the search opinion raises objections then the applicant must respond by amending the application and/or arguing against the objections.
The time limit for responding to the search opinion is:
(i) six months from the date on which the European Patent Bulletin mentions the publication of the European search report (for direct-filed European applications, including divisional applications);
(ii) a time limit set by an EPO communication issued shortly after the search report and search opinion (for PCT applications in the European Regional Phase).
If the applicant does not respond to the search opinion within the time limit then the application is deemed to be withdrawn. If necessary, the loss of rights can be reversed using the “further processing” provisions.
After receiving the search opinion, the applicant can amend the description, claims and drawings. Amendments at this stage can be voluntary, i.e. not in response to official objections. The time period for replying to the search opinion is the final opportunity to make voluntary amendments as of right. During subsequent examination, voluntary amendments are allowable only at the Examining Division’s discretion.
Amendments must not add subject matter extending beyond the content of the application as originally filed. When filing amendments, it is necessary to indicate the basis for them in the original application. If an amendment is filed without indicating basis in the original application, then the EPO may set a one month deadline for the applicant to explain the basis for the amendment.
Claims cannot be amended to relate to subject matter which was not covered by the EPO search, unless the subject matter relates to the same inventive concept as the searched subject matter.
If subject matter was excluded from the search under Rule 62a (multiple independent claims), Rule 63 (incomplete search), or Rule 64/Rule 164 (non-unity of invention), then this subject matter will need to be removed from the claims unless the Examining Division withdraws the objection.
Proceeding to Examination
If the applicant wishes to proceed with the patent application after considering the search opinion, then the next stage is to pay the examination fee. If this has already been paid (e.g. on filing the application or on entering the European regional phase) then the EPO invites the applicant to confirm that he wishes to proceed to examination. The time limit for paying the examination fee or confirming that the application is to proceed is the same as the time limit for responding to the search opinion (see “Responding to the opinion” above).
Deciding not to proceed - Refund of fees
If the applicant decides at this point not to proceed with the patent application, then the application can be allowed to lapse at the end of the time limit by not paying the examination fee or not confirming that the application is to proceed to examination. If the examination fee has already been paid, then it will be refunded.
Publication of the search opinion
Although the European search report is published together with the application (or as soon as practicable after publication of the application), the search opinion is not published.
However, once the application and the European search report have been formally published, the opinion will be made available for public inspection as part of the EPO file history online.
This information is simplified and must not be taken as a definitive statement of the law or practice.