On 1st January 2011 new Rules 141 and 70b EPC come into force. They stipulate new requirements for supplying search results on priority applications. The rule changes apply to European patent applications filed on or after 1 January 2011 (including divisional and international applications).
While the current version of the EPC (European Patent Convention), in the form of Article 124 EPC, allows for the European Patent Office (EPO) to invite the applicant to provide information on prior art cited on related applications, it has generally only been used in rare occasions on individual cases. However, following a successful pilot program, the EPO has added more teeth to the provision; worryingly appearing to head in the direction of the onerous (and somewhat confusing) US Information Disclosure Statement (IDS).
Amended Rule 141 EPC
Amended Rule 141(1) EPC requires that the applicant provide a copy of the results of any search that was carried out on a priority application when filing a convention European application or when entering the regional phase in Europe. (If the results are unavailable they must be filed “without delay after such results have been made available”.)
Now, I expect most of you are saying: “what if I do not provide these results?”
- If the priority application is a GB patent application (with existing search results), you do not need to worry: the kind gentlepeople of the UKIPO will (they promise) provide a copy of the search results to the EPO. This should be a relief to UK based EPAs whose UK clients file GB priority applications with a view to obtaining search results within the priority year. However, I would keep an eye on the exact implementation of this exchange.
- Amended Rule 141(2) EPC provides for other automatic exchanges to relieve the burden on the applicant. Keep your eyes open for details of such exchanges in the coming months.
- If no automatic exchange exists, Amended Rule 141(3) EPC enables the EPO to issue an invitation with a 2-month time limit requesting the search results.
- It is not entirely clear what happens if you fail to reply to the invitation. The likely answer is nothing. As amended R.141(3) EPC explicitly mentions Article 124(1) EPC, it is assumed the “invitation” of amended R.141(3) EPC implements the “invitation” present in Article 124(1) EPC. Article 124(2) EPC states that the sanction for failing to supply search results is the application is deemed to be withdrawn; however, it is not clear whether Article 124(2) EPC will apply directly to this invitation (i.e. deemed withdrawn if you do not reply) or whether R.70b (discussed below) will implement the sanction of Article 124(2)EPC. The latter interpretation looks the most likely.
Amended Rule 70b EPC
Assuming that nothing happens if you fail to supply search results when requested under R.141(3) EPC, the case will proceed happily along to examination. At this point amended Rule 70b(1) EPC gives the Examining Division the power to spot your evasion and issue (another) invitation to provide search results.
If no reply is provided the application is deemed withdrawn (amended R.70b(2) EPC). However, amended R.70b EPC does give you the option to file a statement saying that the search results are unavailable. It is unclear what would happen if you provided this statement with knowledge that it was incorrect.
As amended R.70b EPC only kicks in at the start of examination, there will likely be no ongoing duty to disclose search reports (cf. US) – the European Examiners simply wish to check other prior art searches before starting substantive examination (although this is not confirmed).
On receipt of new cases, EPAs should check for a priority claim. If at least one priority application exists they should ask the instructing party for a copy of any search results issued on the priority application(s).
As a matter of practice, EPAs should begin requesting that search results are supplied for convention EP and ex-PCT cases. If the priority applications are accessible via online patent inspection sites this should be noted as search results may be supplied without requiring lengthy communication chains.
IPKat Post: http://ipkitten.blogspot.com/2010/08/rule-141-and-further-epo-obstructions.html (interesting discussion in the comments on possible variation between the different languages).
The EPO has added a number of exceptions which removes the bite somewhat. See post here.