On 1 January 2011, new Rules 141 and 70b come into force at the EPO which require applicants to provide the EPO with a copy of the results of any search carried out in respect of an earlier application from which the European patent application claims priority.
Separately, the EPO examiner may require applicants to provide ""information on prior art"" taken into consideration by other patent offices in relation to patent applications concerning the invention to which the European patent application relates.
Search results for priority applications
Where a European patent application claims priority from an earlier application, the new rules introduce a new obligation on applicants. This is because the EPO wants to see the search results for the priority application(s).
It is not necessary to file the results of a search carried out by the EPO, the USPTO, the JPO, the KIPO or the UKIPO. The EPO will automatically obtain the search results from these patent offices.
What has to be filed?
- The EPO wants to see a copy of the official document which lists the search results. (This may be, for example, a search report, or a list of cited documents from an examination report.)
- Copies of the cited documents are not required.
- It is not necessary to translate the official document.
- It is not acceptable to file a list prepared by the applicant - a copy of the official document must be filed.
- It is not necessary to file the results of private or commercial searches.
When do the search results have to be filed?
- If possible, a copy of the search results should be filed when the European patent application is filed, or on entry into the European regional phase for PCT applications.
- If a copy of the search results has not been provided by the time substantive examination begins, then the EPO will set a time limit for filing the search results. If a response is not filed by the time limit, then the application will be deemed withdrawn.
- If the results are not available at that time, then a statement explaining that the search results are not available must be filed by the time limit.
- If the search results are not available when substantive examination begins, then the EPO examiner may set another time limit for filing the results, during examination.
These requirements apply to applications with a filing date on or after 1 January 2011.
Information on prior art
Separately, the EPO may require the applicant to provide information on prior art which has been considered by national or regional patent offices, concerning the invention to which the European patent application relates. For example, this could include prior art considered in relation to patent applications which claim the same priority as the European patent application, and/or which are derived from the same PCT application.
(Note that this is separate from the general obligation to file search results in respect of the priority application(s), discussed above.)
It is not necessary to file copies of the documents. A list of the relevant documents prepared by the applicant, or copies of the relevant search or examination reports, is sufficient.
This is not a general obligation. It is only necessary to file information on prior art if the EPO sends a communication requiring this information to be filed. The communication will set a time limit for filing the information. If a response to the communication is not filed in due time, the application will be deemed to be withdrawn.
This information is simplified and must not be taken as a definitive statement of the law or practice.