By James DeGiulio --
On January 1, 2011, all direct European patent applications and European national phase applications will be subject to new EPC Rules 141 and Rule 70b, which modify the requirements for supplying search results on priority applications. In December 2009, the European Patent Office (EPO) announced in the Official Journal the amendment of Rule 141 and the insertion of new Rule 70b. These changes to the EPC enhance the requirements for providing search information on related applications and setting penalties for failing to do so. Some view these new rules as reminiscent of the Information Disclosure Statement in the U.S. Patent and Trademark Office.
The most substantial change is Amended Rule 141(1), which requires that the applicant provide a copy of the results of any search that was carried out on a priority application when filing a European application or when entering the regional phase in Europe. If the results are unavailable upon filing, they must be filed "without delay after such results have been made available." Under Rule 141(1), the EPO requires a copy of the search results in whichever form they originally issued, such as a search report.
Rule 141(2) eases the burden on what the applicant will soon be required to provide, establishing that search results already "available to the European Patent Office" need not be disclosed.
Rule 141(3) empowers the examiner to request the applicant provide "information on prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates." The examiner retains discretion on whether to issue a Rule 141(3) request, but once the request has been issued, the prior art information must be submitted within two months. Failure to submit a response will result in the application being deemed withdrawn.
New Rule 70b establishes the procedure where search results have not been provided under 141(1) and are not deemed to be available to the EPO under 141(2). Upon recognition of the applicant's non-compliance with Rule 141, Rule 70b(1) empowers the Examining Division to issue an invitation to provide the required search results. The invitation sets a two-month reply period in which the applicant must file either a copy of the required search results under Rule 141(1) or a statement that the search results are not available to the applicant. Failure to comply with a Rule 70b request will result in the application being deemed withdrawn.
James DeGiulio has a doctorate in molecular biology and genetics from Northwestern University and is a graduate of Northwestern University School of Law. Dr. DeGiulio is a member of MBHB's 2010 associate class and he can be contacted at degiulio@mbhb.com.
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