EPO Exempts Some Applicants from Submitting Search Results under Rule 141(1) EPC

By Donald Zuhn --

Last month, the European Patent Office (EPO) announced that in some circumstances, applicants would be exempted from filing a copy of search results under amended Rule 141(1) EPC.  Prior to the EPO's announcement, the new rule would have required applicants to 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, and If the results were unavailable upon filing, to provide the results "without delay after such results have been made available" (see "EPO Prepares to Roll out New Prior Art Search Disclosure Rules").  The requirement to provide search results applies to European and international applications filed on or after January 1, 2011.

Pursuant to the EPO's recent announcement, applicants will be exempted from providing search results for a priority application when (1) the EPO drew up a certain type of search report on that application, or (2) the application is a first filing in Japan, the United Kingdom, or the United States.  The EPO explained that under amended Rule 141(2) EPC, a copy of the search results under Rule 141(1) EPC is deemed to be duly filed if it is available to the EPO and will be included in the file of the European patent application under conditions determined by the President of the EPO.  The notice indicates that in October, the President of the EPO decided that the EPO would include a copy of certain search results in the file of a European patent application where the EPO had drawn up the search report, thus exempting applicants in such cases from filing the search results themselves.  According to an earlier notice from the EPO, only the following search reports will apply:  European search reports under Article 92 EPC, international search reports under Article 15(1) PCT, international-type searches under Article 15(5) PCT, and search reports made on behalf of a national office on a national application in Belgium, Cyprus, France, Greece, Italy, Luxembourg, Malta, Netherlands, and Turkey.

The second class of exempted applications is likely more relevant to U.S. practitioners and applicants.  The EPO noted that the Japan Patent Office (JPO), the United Kingdom Intellectual Property Office (UKIPO), and the United States Patent and Trademark Office (USPTO) had each agreed to provide the EPO with electronic copies of search results produced by their offices and covered by Rule 141(1) EPC.  As a result, the President of the EPO determined that the EPO would include these search results in the file of a European patent application, thus exempting applicants claiming the priority of a first filing made in Japan, the United Kingdom, or the United States from filing copies of the search results themselves.

In a release posted on the Marks & Clerk website, the European IP firm notes that if an EP application claims priority from one or more applications filed with an office other than the USPTO, JPO, or UKIPO, search results will still need to be filed with the EPO.  In addition, the notice indicates that under amended Rule 141(1) EPC, the actual document issued by the patent office (as opposed to a list of references cited) must be filed with the EPO.

Comments

[James Demers]

It seems likely that "first filed" would not apply to U.S. provisional applications, which do not generate any search results.

[MaxDrei]

At the UK Patent Office, when one files a priority application and asks for a search report, the PTO asks Applicant for permission to forward the search report to the EPO computer (rather than doing it without first asking permission). Is it the same at the USPTO?

[Skeptical]

It is similar. There is a check box on the application submission form.