Following an announcement earlier in the year that the UK IPO will be outsourcing searches to the EPO (see Ross’ article here), the UK IPO have expanded this to the computing and telecommunications fields (see announcement here). Where UK applications are filed in these fields, there will be a pot luck process as to whether an application is searched by the UK office or the EPO.
As Ross noted when the Biotech agreement was announced, there is a potential benefit for applicants in that if your patent application is forwarded to the EPO for search then they will be getting an EPO search for the price of a UKIPO search. The EPO search fee is currently €1,300 and the UKIPO search fee is currently £150.
The main implication of this news is that where the UK search has been performed by the EPO, applicants may be entitled for a refund of a search fee for a later filed PCT or EP application. The arbitrary choice of whether applications are searched by the EPO or the UKIPO therefore introduces a degree of randomness as to whether or not a later application is entitled to a refund (perhaps a little unfair). The refund could be 100% of a European search fee and so this is quite a saving.
Given that if a PCT application is filed by a UK applicant there is no choice but to have the EPO search the PCT application then there will be a significant discount for these patent families. In computing and telecommunications it is almost essential to file a later application (EP/PCT) to cover key markets for the technology, such as the US, Germany and China, and so it is likely there will be an impact for many applicants. Indeed non-UK applicants may consider taking advantage of the cheap rates at the UK IPO and file first in the UK taking advantage of the later savings during the PCT phase.
Since the applications are going to be covering computing and telecommunications, there is a potential that the EPO will assess UK applications using the EPO tests rather than the tests at the UK office, particularly when considering patent eligibility (e.g. Aerotel/Macrossan v G3/08). We suspect that the UK IPO will not pass on any applications they consider to include excluded subject-matter but as most will know the EPO and UK IPO are not completely harmonised when it comes to assessing computer-related inventions (they are getting closer as we have found here) and the outcomes are often quite different. Some applicants deliberately choose the UK IPO or the EPO and it will be interesting to monitor the impact of the searching differences.
Initially the UK IPO said they will be sending 200-300 biotech applications to the EPO and now estimate 400-550 total applications and so it is reasonable to estimate that there will be about 200 or so computing applications sent to the EPO for search.
We will have to wait and see if there is any impact on the searches themselves. If you have any questions on this or whether you might want to consider filing at the UK office first, please get in touch with your GJE contact or via email@example.com.