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The European Patent Office (EPO) in its function as International Preliminary Examining Authority (IPEA) has further improved its practice under Chapter II PCT, following the entry into force on 1 July 2014 of new Rule 66.1ter and amended Rule 70.2(f) PCT. Pursuant to these provisions any IPEA will conduct a “top-up” search to find prior art that was published or became available to the said Authority after the date on which the international search report was established. The introduction of such a “top-up” search therefore adds to the value of the international preliminary examination procedure before the EPO as IPEA.

The EPO in its function as IPEA will, as a rule, conduct a “top-up” search at the start of the Chapter II PCT procedure. An express request by the applicant is not required as this new service forms part of the procedure.

The “top-up” search performed by the EPO will mainly focus on finding intermediate prior art documents that have become public since the international search was performed and that could become relevant under Article 54(3) EPC if the application enters the regional phase before the EPO. It will also cover prior art that was cited in national proceedings for the same application if such documents became available to the EPO in its function as IPEA.

The “top-up” search will not extend beyond the subject-matter searched by the International Searching Authority (ISA). It will be conducted for all international applications undergoing examination under Chapter II PCT, unless the EPO in its function as IPEA considers that such a search would serve no useful purpose. In particular, in cases where the EPO in its function as ISA does not cite any documentary evidence as to the relevant state of the art (e.g. in cases of “notorious knowledge” in the field of computer-implemented inventions) the EPO in its function as IPEA will not perform a “top-up” search, since it would be considered to serve no useful purpose. Furthermore, a “top-up” search will not be conducted with regard to subject-matter that is excluded from international preliminary examination (Article 34(4) PCT).

Any relevant documents found during the “top-up” search will be listed in the international preliminary examination report, with the exception of documents that become irrelevant in view of amendments or arguments filed in reply to the written opinion.

Source: EPO