EPO to become competent international search authority for Australian applicants – is this a boon for software innovators in Australia?

The EPO and IP Australia have announced a 2-year pilot programme whereby Australian applicants can designate the EPO as their International Search Authority (ISA) and/or International Preliminary Examination Authority (IPEA) under the PCT.  #

This means that, when filing a PCT, Australian applicants can opt for the EPO as an alternative to IP Australia. 

A strategic opportunity for Australian software innovators  #

This could be seen as good news for software innovators in Australia. 

IP Australia, which can be used to search PCT applications for Australian applicants, have recently refreshed their approach to the assessment of the patentability of computer-implemented inventions and is now seen as significantly less restrictive. This is discussed in a recent article in IPKat where it is set out that the abstract ideas manipulated on a computer can be patentable.  

However, the EPO adopts a different approach to assessing the patentability of software, where the technical effect of the claimed subject matter is assessed relative to the prior art. Some may see this approach as more favourable to software inventions as it means they are assessed relative to prior art for inventive step rather than with direct reference to statutory exclusions. 

Other key territories with collaborative work schemes 

Other major IP offices have also explored joint search schemes and shared resources. IP Australia and the EPO are not the only IP offices to have realised the benefits of a joint approach to search – providing flexibility and choice for applicants and managing their own work streams. The EPO and the Chinese patent office (China National Intellectual Property Administration) initiated a pilot scheme for search in December 2020, and this is now extended until 2031. 

The scheme has been very successful, and Chinese applicants can use the EPO to search PCT applications, thus in effect accelerating the European patent grant process and bypassing the stage of supplementary search.
Other schemes included a trial of collaborative search and examination between the IP5 (EPO, JPO, KIPO, CNIPA and USPTO), now concluded in 2024, that provided a useful framework for examiners in different jurisdictions working together.

PPH (Patent Prosecution Highway) schemes are often highlighted as examples of offices working together to avoid duplication of effort and swifter, more cohesive access to patent grants for applicants. Of note are current schemes beyond the pilot stage for USPTO/JPO/KIPO/UKIPO/EPO PPH. Additionally, there is currently a pilot scheme for PPH with the EPO and SAIP (Saudi Authority for Intellectual Property).

Does this change anything?

This pilot programme adds choice for applicants in Australia, but it also adds the opportunity to have applications searched by the EPO, who are widely regarded for providing search reports that are respected worldwide. 

Getting a favourable search from the EPO can lead other patent offices around the world to adopt a similar view. For software inventions, which can have a tough time during examination in many jurisdictions around the world, using the EPO to obtain a search can have a positive impact on the prospects of success in the patent system due to the way they are examined. 

The assessment of the patentability of software by IP Australia can sometimes lead to a negative search opinion for the same inventions, which can make progress in other jurisdictions difficult, as those jurisdictions often pay close attention to the search report. This is because the assessment of software by IP Australia can often ignore the content of prior art and start with the assumption that the invention is excluded. By contrast, the EPO approach looks at inventions by comparison to the technical features they provide relative to the prior art. 

Improving chances before the EPO

If software innovators are considering the use of the EPO as an international search authority, then it is worth drafting specifications with the EPO’s approach in mind. This means focusing the specification on support for the technical effect of the invention. 

Additionally, for AI and Machine Learning–focused specifications, this means ensuring there is an adequate description of how your model is being trained. 

Given the strong economic ties between Australia and the EU, and the number of Australian companies that file applications into Europe via the PCT, the pilot with the European Patent Office creates an exciting practical opportunity for Australian startups and small to medium entities (SMEs) seeking funding, partnerships, and international market entry.

Leveraging EPO search outcomes for investment and commercial strategy – an Australian perspective

Jeremy Moller, Principal and Patent and Trade Mark Attorney at Australian and New Zealand IP firm MBIP, shares his perspective on the commercial implications of choosing the EPO as International Search Authority.

Many Australian companies rely on pending patents to support investment and collaboration discussions. Choosing the EPO as International Search Authority effectively allows European examination to start earlier. A favourable EPO Written Opinion provides high credibility technical validation of an invention that can be leveraged in investor due diligence and commercial negotiations, particularly given the EPO’s reputation for rigorous assessment.

Where an objection-free report is obtained at the PCT stage, applicants may move quickly into the European regional phase (using PACE, for example) and expedite a grant, shortening the path to a European patent which could then be used to bolster investment and collaboration discussions and create new opportunities.

At the same time, those same EPO results can be used to accelerate acceptance and grant in Australia via Patent Prosecution Highway pathways with IP Australia. This creates a coordinated fast track across Europe and Australia. 

Particularly savvy applicants may then also use these positive results to further fast-track examination in other important jurisdictions, such as the United States, by using the Track One program, for example.

For SMEs trying to manage IP costs early in the lifecycle of product and process development while also using that IP to attract investment and collaboration, this alignment between IP Australia and EPO will allow applicants to optimally leverage their IP portfolio to their advantage.

Aligning drafting strategy with the EPO’s approach

If you are considering choosing the EPO as your International Search Authority, early drafting choices are critical. We have extensive expertise in crafting patent applications for software innovators for use at the EPO. Please contact us to discuss how this pilot programme could be leveraged for your IP portfolio.