European patent applications filed on or after January 1, 2011 will be subject to a new disclosure requirement designed to support international worksharing efforts. The new rule will require applicants to submit copies of search results received from the national patent office of the priority country (the Office of First Filing, or OFF). Failure to comply with the new requirement can result in abandonment of the European patent application, but the EPO plans to implement steps to facilitate compliance.
EPC Rule 141
The new disclosure requirement will fall under an amended version of Rule 141(1) EPC. The rule will apply to applications claiming priority to an earlier foreign or PCT application, including EP divisional applications with a foreign priority claim.
The rule will require the submission of “the results of any search carried out by or on behalf of the authority with which the previous application(s) was/were filed (= office of first filing (OFF)).” The submission must be made
- when the EP application is filed
- when the EP regional phase is entered or
- as soon as search results are available (“without delay”)
If an application claims priority to multiple foreign applications, search results from each “OFF” must be submitted.
The rule defines “search results” broadly as encompassing “search results in whatever form or format they are drawn up by the OFF (e.g. search report, listing of cited prior art, relevant part of the examination report).” The rule requires submission of “a copy of the official document issued by the OFF,” and expressly states that a list of cited prior art prepared by the applicant is not sufficient.
New Rule 141(3) EPC will give the EPO the authority to “invite the applicant to provide, within a period of two months, information on prior art within the meaning of Article 124(1) EPC.” This provision is intended to give the EPO the ability to “request any information on prior art taken into consideration in national or regional patent proceedings,” including search results from patent offices other than the OFF.
EPC Rule 70b(1)
Amended Rule 141 EPC will be complemented by new Rule 70b(1) EPC. Under this rule, if search results have not been filed when the Examining Division assumes responsibility for the application, the EPO will “invite” the applicant to file the required search results or a statement that no search results are available. The applicant will have two months (non-extendable) to comply. Non-compliance will result in abandonment, but revival will be available under the EPO’s usual “further processing” rules.
Several aspects of the new rule should facilitate compliance.
First, the EPO will not require a translation of search results, even if the results are not provided in an official language of the EPO.
Second, the EPO will not require submission of copies of the cited documents.
Third, the EPO will not require submission of search results in a divisional applications if the results were filed in the EP parent application.
Fourth, the EPO will determine other circumstances under which the OFF search results will be deemed to be “available” to the EPO and “automatically included in the file,” and will exempt applicants from the requirement to file search results in those cases. For example, cases “where an earlier search report has been drawn up by the EPO in respect of an application whose priority is claimed” will be exempt. Additionally, the EPO intends to “set up the necessary electronic environment for accessing OFF search results” and will extend exemptions to applications with priority applications filed in such OFFs.
This development is just another step towards the international worksharing that is being championed by Director Kappos and other leaders of the “IP5” (EPO, JPO, KIPO and SIPO). The EPO’s announcement states that its trial program (the Utilisation Pilot Project, or UPP) which ran between April 2007 and August 2008 showed that “work carried out during the priority year on a first filing at a national patent office (NPO) can be further utilised by the EPO when prosecuting the subsequent European patent application and that such utilisation would be beneficial to the European patent system.” Still, the EPO emphasizes:
A key principle of the utilisation scheme is that the use of the work of the NPO and in particular of the national search results is always at the discretion of the EPO examiner. Utilisation cannot and does not imply automatic reuse of NPO search results.
Thus, there is no requirement that the EPO will rely on the OFF search results, and it remains to be seen whether and to what extent worksharing will realize the intended examination efficiencies.
While the new EPO requirement will mean another filing deadline to keep track of, the EPO should be applauded for taking steps to minimize the administrative burdens it will bring. It is refreshing to see the EPO express a willingness to obtain search reports from the OFF on its on initiative, and is quite a contrast to the USPTO, which still requires applicants to cross-cite information from co-pending U.S. applications, and provide copies of documents that the USPTO already has on hand. (Yes, I’m complaining about the McKesson IDS problem again!)