2013年1月29日 星期二

歐洲檢索報告筆記

筆記

當提出歐洲專利申請案後,將於一段時間後先收到一份歐洲檢索報告,其中可能包括一份檢索報告,以及各前案關聯本案的權利範圍項次,包括X, Y, P等文件(可參閱:http://enpan.blogspot.tw/2009/05/epo.html);另隨同檢索報告的也可能會有根據各權利範圍之間是否具有共同的特殊技術特徵(special technical feature, STF)作出各項之間不具單一性,因此檢索報告僅針對其中第一組被認為具有共同STF的權利範圍;隨同檢索報告,審查委員也會提出一些初步意見(preliminary opinion)。

相關事項:
  1. 檢索報告為歐洲專利檢索部門作出
    EPC Article 17 Search Divisions
    The Search Divisions shall be responsible for drawing up European search reports.
  2. 檢索範圍為權利範圍與關聯的圖式
    EPC Article 92 Drawing up of the European search report
    The European Patent Office shall, in accordance with the Implementing Regulations, draw up and publish a European search report in respect of the European patent application on the basis of the claims, with due regard to the description and any drawings.
  3. EPO為WIPO指定國的檢索報告,其國際檢索報告可取代歐洲檢索報告
    EPC Article 153 The European Patent Office as designated Office or elected Office
    (6) The international search report drawn up in respect of a Euro-PCT application or the declaration replacing it, and their international publication, shall take the place of the European search report and the mention of its publication in the European Patent Bulletin.
  4. 當EPO為WIPO的指定國,歐洲專利局可以提出補充歐洲檢索報告,檢索報告的費用可以減免
    EPC Article 153 The European Patent Office as designated Office or elected Office
    (7) A supplementary European search report shall be drawn up in respect of any Euro-PCT application under paragraph 5. The Administrative Council may decide that the supplementary search report is to be dispensed with or that the search fee is to be reduced.
  5. 應於歐洲專利公告檢索報告後六個月內繳交國家指定費
    EPC Rule 17 Filing of a new European patent application by the entitled person
    (3) The designation fee shall be paid within six months of the date on which the European Patent Bulletin mentions the publication of the European search report drawn up in respect of the new application. Rule 39, paragraphs 2 and 3, shall apply.
  6. 檢索報告應說明引證案的公開日與申請案的優先權、申請日等的關係
    EPC Rule 61 Content of the European search report
    (3) The European search report shall distinguish between cited documents published
    before the date of priority claimed, between such date of priority and the date of filing, and on or after the date of filing.
  7.  檢索報告應伴隨判斷是否符合歐洲專利法的意見
    EPC Rule 62 Extended European search report
    (1) The European search report shall be accompanied by an opinion on whether the
    application and the invention to which it relates seem to meet the requirements of this Convention, unless a communication under Rule 71, paragraph 1 or 3, can be issued.
  8. 如果因為一些瑕疵無法作出有意義的檢索,可以先提出部份檢索報告
    EPC Rule 63 Incomplete search
    (2) ...European patent application fails to such an extent to comply with this Convention that it is impossible to carry out a meaningful search regarding the state of the art on the basis of all or some of the subject-matter claimed or, as far as is practicable, draw up a partial search report. The reasoned declaration or the partial search report shall be considered, for the purposes of subsequent proceedings, as the European search report.
  9. 當提出前述部份檢索報告後,審查單位應要求申請人限制權項,除非無法作出有意義檢索的判斷有誤
    EPC Rule 63 Incomplete search
    (3) When a partial search report has been drawn up, the Examining Division shall invite the applicant to restrict the claims to the subject matter searched unless it finds that the objection under paragraph 1 was not justified.
  10. 如果歐洲專利申請案不符單一性要求,應提出部份檢索報告,申請人僅能額外付費對其他不符單一性的權項作出檢索報告
    EPC Rule 64 European search report where the invention lacks unity
    (1) If the European Patent Office considers that the European patent application does not comply with the requirement of unity of invention, it shall draw up a partial search report on those parts of the application which relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims. It shall inform the applicant that, for the European search report to cover the other inventions, a further search fee must be paid, in respect of each invention involved, within a period of two months. The European search report shall be drawn up for the parts of the application relating to inventions in respect of which search fees have been paid.
  11. 檢索報告可能與申請案一起公開,也可分開公開
    Rule 68 Form of the publication of European patent applications and European search reports
    (1) ... the European search report, where it is available before the termination of the technical preparations for publication. If the search report or the abstract is not published at the same time as the application, it shall be published separately.
  12. 應於歐洲專利公告檢索報告後六個月內請求實際審查
    EPC Rule 70 Request for examination
    (1) The applicant may request examination of the European patent application up to six months after the date on which the European Patent Bulletin mentions the publication of the European search report. The request may not be withdrawn.
  13. 如果在檢索報告之前已經提出實審請求,歐洲專利局可以限期要求申請人表明是否要繼續後續審查,並可給予對該檢索報告作出意見與修正說明書、權利範圍與圖式的機會
    EPC Rule 70 Request for examination
    (2) If the request for examination has been filed before the European search report has been transmitted to the applicant, the European Patent Office shall invite the applicant to indicate, within a period to be specified, whether he wishes to proceed further with the application, and shall give him the opportunity to comment
    on the search report and to amend, where appropriate, the description, claims and
    drawings.
  14. 隨同歐洲檢索報告,歐洲專利局提供申請人作出對檢索報告(包括補充檢索報告,見同項第(2)款)的意見的機會,也可以校正官方所作出的意見瑕疵,並可限期修正說明書、權利範圍與圖式
    EPC Rule 70a Response to the extended European search report
    (1) In the opinion accompanying the European search report the European Patent Office shall give the applicant the opportunity to comment on the extended European search report and, where appropriate, invite him to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period referred to in Rule 70, paragraph 1.
  15. 修正時機:
    EPC Rule 137 Amendment of the European patent application
    (1) Before receiving the European search report, the applicant may not amend the
    description, claims or drawings of a European patent application unless otherwise provided.
    在接到歐洲檢索報告前,不能修正說明書、權利範圍或圖式
    (2) Together with any comments, corrections or amendments made in response to communications by the European Patent Office under Rule 70a, paragraph 1 or 2, or Rule 161, paragraph 1, the applicant may amend the description, claims and drawings of his own volition.
    回覆官方意見時(communication, OA),可以同時修正說明書、權利範圍與圖式
    (3) No further amendment may be made without the consent of the Examining Division.
    如果沒有審查單位的同意,不得修正
    (4) When filing any amendments referred to in paragraphs 1 to 3, the applicant shall identify them and indicate the basis for them in the application as filed. If the Examining Division notes a failure to meet either requirement, it may request the correction of this deficiency within a period of one month.
    當提出修正時,申請人應指明修正是基於原申請時說明書內容,如果違反規定,可於一個月內提出修正
    (5) Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Nor may they relate to subject-matter not searched in accordance with Rule 62a or Rule 63.
    修正後的權利範圍不能關聯原申請專利範圍內未檢索的部份,或是非一個發明概念下的範圍
  16. 單一性相關:
    EPC Rule 164 Consideration of unity by the European Patent Office
    (1) Where the European Patent Office considers that the application documents which are to serve as the basis for the supplementary European search do not meet the requirements for unity of invention, a supplementary European search report shall be drawn up on those parts of the application which relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims.
    當歐洲專利局判斷權利範圍不符單一性要求,僅對第一組範圍作出檢索(包括補充檢索)
    (2) Where the examining division finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the international search report or, as the case may be, by the supplementary international search report or supplementary European search report, it shall invite the applicant to limit the application to one invention covered by the international search report, the supplementary international search report or the supplementary European search report.
    當審查單位發現申請案並未符合單一性要求,或是發現國際檢索、補充檢索報告未涵蓋的發明,審查單位應要求申請人將申請案限制在被上述各檢索報告所包括的一個發明內
順便補上歐洲檢索費用(官方費用):

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