Request for examination

The request for examination is the act by which the applicant asks the office to carry out the substantive examination of its patent application. Before the European Patent Office (EPO), it is provided for by Article 94 of the European Patent Convention (EPC) and is deemed filed only once the examination fee has been paid. It conditions the opening of the examination procedure, and failing it the application is deemed withdrawn.

Time limit and formalities before the EPO

In practice the request is included in the request for grant form, but it only takes effect upon payment of the fee. It must be filed within six months of the date on which the European Patent Bulletin mentions the publication of the European search report. Where the request was filed before the report was transmitted to the applicant, the office invites the applicant to confirm that it wishes to proceed further. For a Euro-PCT application, the request must be filed on entry into the European phase, within thirty-one months of the priority date, or within the longer period running from publication of the international search report.

Consequences of omission

Failure to file the request in time results in the loss of the application, which is deemed withdrawn. The applicant may still request further processing, without having to explain the cause of the delay, by completing the omitted act and paying the prescribed fee. The examination fee is refunded in full or in part where the application is withdrawn before substantive examination begins or at an early stage of it, a mechanism that allows an application which has lost its interest to be abandoned at lower cost.

Comparison with national laws

French law has no separate request for examination. INPI draws up the search report and examines the application without any specific step by the applicant, and it has extended its review to inventive step since the PACTE Act. Other offices have adopted deferred examination, under which the application is examined only on a request filed within a long period. That period is seven years from filing before the German Patent and Trade Mark Office and three years before the Japanese and Chinese offices. The system allows costs to be deferred and the decision to examine to be taken in light of the commercial value of the invention, but it prolongs uncertainty for third parties.

Key points

The request for examination is a formality whose omission costs the applicant its application. Before the EPO, the time limit runs from publication of the mention of the search report, and the reply to the opinion accompanying that report must be filed within the same period. This deadline should be docketed as soon as the report is received, and the period should be used to decide, in light of the prior art cited, whether to proceed, amend the claims or abandon the application.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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