ICC Document & publication

ICC response to the European Patent Office request concerning industry support for an early coordinated patent search

Pilot projects on collaborative search and examination 450/1072 2147488431 PCT/WG/4/15 of 20 May 2011 reported the results of the Collaborative Search and Examination (CS&E) Pilot Project, and the European Patent Office (EPO) commented on this on 20 October 2011. 2147495517 2147484731

Pilot projects on collaborative search and examination

PCT/WG/4/15 of 20 May 2011 reported the results of the Collaborative Search and Examination (CS&E) Pilot Project, and the European Patent Office (EPO) commented on this on 20 October 2011. A second pilot project is in progress.

The EPO observes that the CS&E concept originated in a proposal made by industry, and requests reassurance that it is still supported by industry.

In response to the EPO’s request, ICC continues to urge the establishment of an early, comprehensive, coordinated search in which all of the IP5 Offices would participate, most preferably as part of the PCT procedure and complete by twenty eight months after the priority date (compare ICC policy paper 450/1056 of 28 June 2010, attached for your convenience).

We forecast that there would be a level of usage of the system sufficient to justify its establishment. (It would be used more than the present Supplementary International Searching Authority (SISA) system, which is unattractive because, of the IP5 offices, only the EPO is a SISA.) However, ICC does not think that it would create in the early years a difficult surge of work for any individual Office, because companies would vary in the extent to which they used the system, and some would phase in its usage for budgetary reasons, or else simply to gain experience of it initially on a small scale.

ICC makes the following assumptions in making this forecast:

(a) that the cost of the comprehensive coordinated search would be a modest mutliple of the present ISA search as indicated by the first pilot study (involving the EPO, the USPTO, and the KIPO); and

(b) that when an application which had been subjected to such a search enters the regional/national phases at the IP5 offices, (i) no additional prior art would be cited save in exceptional cases, and (ii) a partial or total refund of the fees from the regional/national offices would be due (compare the present practice of the EPO).

ICC looks forward to the completion of the second pilot project and is at the disposal of Offices who wish to discuss the results with us with a view to full implementation of a scheme for an early, comprehensive, coordinated search.