Euro-PCT Transfer Issue

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Introduction

Euro-PCT transfer cases present somewhat of a problem for patent searchers wishing to focus on searching the European collection. The discussion below attempts to illustrate the problem, and offers the practical solution, which is: anytime one needs to search in the EP application database, one should search the PCT collection as well. The idea of the Euro-PCT Transfer problem has been discussed by Stephen Adams in his 2006 book, [1] which is also a major source for this discussion.


Explanation of the Issue

Essentially, sometimes an applicant files a PCT application but wishes to pursue patent protection in all member states that belong to both the Paris Convention Treaty and the European Patent Convention. This means that the PCT application will then enter the regional examination phase at the EPO, to be examined for grant as a European patent in all the eligible member states.

Put a simpler way, this means that a PCT application can be transferred into the regional European Patent Office (EPO), to be examined just like any other normal European application. However, these PCT applications have already been fully published in the PCT Gazette, so the European Patent Office does not fully publish them as European patent applications. Instead, it issues only a new patent front page, containing bibliographic data and a new EP application number for the document. This saves resources at the EPO: in 2004, an average of 1,200 new EP applications were fully published each week, compared to an average of 1,100 PCT cases entering the EP national phase which were published only as bibliographic records.

Although this practice is good for the EPO, it is bad for searchers who do not keep it in mind when conducting full text searches in EP Application databases, as a good chunk of full text PCT applications which have become EP applications may not be present. To solve this issue, users should consult a full text PCT database in addition to the EP database whenever these searches are conducted. Any relevant hits should then be examined to determine whether “EP” was a designated authority for the application.

Some databases offer a “Designated States” search field that at first may appear to limit WO searches to those applications designated for entry into the regional phase at the EPO; however, this field will not contain the code “EP,” but only individual country codes that are member states of the EPO. To limit the search to only those documents with designated EP states, users could choose one individual EP member state to limit the search.


Sources

  1. Adams, Stephen R. Information Sources in Patents, 2nd Edition. Munich: K.G. Saur. 2006. Page 33.

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