New EPO Rules require provision of search results

As of 1 January 2011 new Rules come into force which will require certain search results to be submitted to the European Patent Office (EPO) in respect of certain European patent applications. In particular, where a European patent application claims one or more priorities, it is the official search results (if any exist) of those earlier priority cases that must be filed. A recent decision of the EPO means that, fortunately, the impact of the new Rules on many Applicants will be minimal, but it is advisable to be aware of the Rules nonetheless.

Note that the requirement is to file  ‘a copy of the results of any search’ , as opposed to a simple list of the citations found. This requirement assists the EPO in understanding the relevance of the citations, since the search results from most foreign patent offices will give an indication of the novelty, inventiveness etc., of the claims.  However, the claims on file before the EPO may not be the same as in the priority application, and as such the priority application search results may be less relevant for the European patent application.

Of course, many patent offices publish search results on-line, and hence search results on foreign equivalent applications are readily available to the European Patent Office.  However, often Applicants will allow the priority application to become abandoned prior to publication, and thereafter seek patent protection in the ’home‘ country via a second application.  Under these circumstances, any search carried out on the priority application will never become publicly available, and this is perhaps one reason why the EPO are asking for this specific document.

Turning to the new Rules themselves, a ‘two pronged’ approach has been adopted.  New Rule 141 requires the Applicant to take action when filing a new European patent application (or for a Euro-PCT Application, on entry into the European regional phase), whereas Rule 70(b) relates to actions taken at the examination stage of the European application (i.e. after the European application has already been searched).

Thus, Rule 141(1) states:-

 An Applicant claiming priority within the meaning of Article 87 shall file a copy of the results of any search carried out by the authority with which the previous application was filed together with the European Patent Application, in the case of a Euro-PCT application on entry into the European phase, or without delay after such results have been made available to him.

As will be appreciated, any search results may not be available at the priority year end, or even at the 31 month period for European regional phase entry.  Rule 141(1) recognises this and simply requires the search results to be filed ’without delay‘ after they become available.  But what does ’without delay‘ mean?  Perhaps we should not be too concerned with this question, simply because there is no penalty for not complying with Rule 141(1) (but note the penalty for not complying with Rule 70(b),see below).  What is clear from Rule 141(1) is that the ’without delay‘ wording creates an ongoing requirement (until grant).

Rule 141(2) allows the information to be ’deemed to be filed‘ if certain conditions determined by the President of the EPO have been met.  Initially, where the priority application is a European or PCT application, or a national application from Belgium, France, Greece, Italy, Luxembourg, Malta, the Netherlands or Turkey, the search results will be deemed filed. This list is likely to grow.  Indeed, in accordance with a decision of the President of the EPO of 9 December 2010, the EPO will obtain search results directly from the UK, US and Japanese Patent Offices.  Accordingly there will be no need for Applicants to file search results based on priority applications filed in these patent offices.

New Rule 70(b) states:-

70(b)(1) Where the European Patent Office notes, at the time the Examining Division assumes responsibility, that a copy referred to in Rule 141, paragraph 1, has not been filed by the Applicant and is not deemed to be duly filed under Rule 141, paragraph 2, it shall invite the Applicant to file, within a period of two months, the copy or a statement that the results of the Search referred to in Rule 141, paragraph 1, are not available to him.

70(b)(2) If the Applicant fails to reply in due time to the invitation under paragraph 1, the European Patent Application shall be deemed to be withdrawn.

Importantly, this Rule only comes into play at the time the Examining Division assumes responsibility.  Thankfully, at this stage the Applicant is, in effect, reminded by the EPO since a letter (the invitation) will be sent out (assuming the search results have not already been filed).  A response must be filed within two months of this invitation, and the consequences of failing to respond are severe - the Application is deemed withdrawn.

As the EPO have appreciated, even at the examination stage, the search results from the priority application may still not be available.  Accordingly, provided a statement that the results of the search are not available is filed at the EPO within the two month period of Rule 70(b)(1), the requirements of the Rule will be met.  Significantly, Rule 70(b) does not create an ongoing requirement, since even if the search results come in after the statement has been filed, Rule 70(b) does not require the results to be filed (though of course Rule 141 does).  The real significance of this is that after the statement has been filed, there is no longer the threat of the European application being deemed withdrawn under Rule 70(b)(2).

In summary, Rule 141 creates an ongoing requirement at an early stage of prosecution, but provides no penalties if the requirement is not met, whereas Rule 70(b) creates a requirement at a later stage in the application process, but with a severe penalty if the requirement is not met.  Rule 70(b) does not create an ongoing requirement once a response to the invitation from the Examining Division has been filed.

From a practical perspective, it may be sensible simply to file the results when they become available since, once filed, no Rule 70(b) letter will be issued.  The threat of deemed withdrawal under Rule 70(b)(2) hence cannot arise.

Finally, the new rules only apply to Direct European applications filed on or after 1 January 2011, and  Euro PCT applications where  the International filing date is on or after 1 January 2011.

John Jones
Advanced Engineering Group