You have filed a patent application in Europe. About 5 months later, you’ll receive a European Search Report. But what is this Report? What do you have to do?
A YesMyPatent expert explains.
What is a European research report?
A European Research Report is similar in form to a Preliminary Research Report.
This is the opinion of the European Examiner, in relation to your patent application.
This opinion is divided into two parts:
- list of relevant documents identified during the examination of your european patent application
- the Examiner’s written opinion including objections to the patentability of your application
What’s in a European Research Report?
In addition to the elements discussed above, a number of other items of information can be found in a European research report:
- information on your application and any previous documents identified: application number, application date, publication number and date of publication of previous artworks
- the Examiner’s name and telephone number, so that you can contact him/her if necessary. Normally, he or she will be in charge of examining your application until it is issued.
What should I do when I receive the European Research Report?
The first thing to do is to analyze the documents cited by the Examiner. They are listed by relevance in his report, the first being generally the most problematic for patentability.
Next, think about the differences you see between the cited documents and the claims of your invention.
Analysis of the Examiner’s opinion will enable you to :
- make a decision on any necessary amendments to your patent application before filing an international patent.
You will be able to amend the text of the international application, taking into account the elements of the European Search Report. Please note that after this period (12 months after the initial filing) you will no longer be able to modify the text. - decide whether or not to internationalize your patent application. The objections raised by the Examiner are a very good indicator of the difficulty of the procedure to be followed.
If there are many objections that are difficult to overcome, it may be more worthwhile to withdraw the application before publication and rework the invention.
If objections can be overcome, filing an international patent is a good strategy for increasing the value of your patent family and the territories protected.
Do I have to reply to a European Research Report?
In 90% of cases, the answer is YES.
But no urgency.
Indeed, the response to the European Research Report is only mandatory later in the procedure.
It must be requested within 6 months of publication of your application. [insertion lien hyperlink]
That is, 24 months after the filing of your initial European patent application.
But don’t worry, if you’re accompanied by a firm of patent attorneys, they’ll send you the notification and inform you of the maximum deadline for responding.
If you’re not accompanied by a law firm…watch out for the delay! Without a response, your patent application will be rejected!
