Providing Search Results to the EPO
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.
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?
When do the search results have to be filed?
These requirements apply to applications with a filing date on or after 1 January 2011.
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 If a response to the communication is not filed in due time, the application will be deemed to be withdrawn.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.