Disclosure of Information relating to prior art for European patents required as from 01/01/2011
01.01.2011
<link http: archive.epo.org epo pubs oj009 external-link-new-window officiel de>New Rules 70b and 141 EPC entered into force on 01/01/2011, and concern all European patent applications filed as from 01/01/2011, whether it concerns direct European patent applications (direct filing) or entries into European regional phase of PCT applications (Euro-PCT filing).
They apply as long as the application is pending before EPO.
Pursuant to new Rule 141 EPC, at the time of filing a European patent application (direct filing or Euro-PCT filing) claiming a priority, it is necessary to file a copy of the results of any search carried out by the authority with which the previous application (priority application) was filed.
If multiple priorities are claimed, copies of search results for all priority applications have to be provided.
A copy of the official search report/examination report for each priority application has to be provided. A mere list by the applicant is not sufficient. When the official search report/examination report is not in an Official language of the EPO, it is not necessary to provide a translation. It is also not necessary to provide a copy of cited documents.
If the search results are not available when filing the application, these results shall be filed before EPO as soon as they are available.
The European Patent Office shall include in the file of a European patent application a copy of the search results referred to in Rule 141(1) EPC, thus exempting the applicant from filing said copy, where the priority of a first filing made in JP, GB, US. The applicants are also exempted from filing a copy of search results pursuant to Rule 141 EPC if they are claiming a priority from an application on which the EPO drew-up a certain type of search report.
The EPO can also request the applicant to provide, within a period of two months, information available to the applicant regarding applications (other than the priority application) corresponding to the European patent application in procedure (direct filing or Euro-PCT filing) (Rule 141(3) EPC).
Pursuant to Rule 70b EPC, if no copy of the search results for the priority application have been filed when the Examining Division processes the application, the EPO requests the applicant, within two months, to provide such results. If such results are not provided within two months or a declaration according to which such results are not available to the applicant is not filed within two months, the application is deemed to be withdrawn.
