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Obligation to submit search results to the EPO as of January 1, 2011

Submitting search results of priority applications to the EPO will become obligatory as of January 1, 2011

The Implementing Regulations of the European Patent Convention will change as of January 1, 2011, which apply to European patent applications and international applications filed on or after that date. Thus, the new Rules do not apply to applications that have been filed prior to January 1, 2011.

According to amended Rule 141(1) EPC, an applicant claiming priority has to file a copy of the results of any search carried out by the Patent Office(s) with which the previous application(s) was/were filed. This copy has to be filed together with the European patent application or by entry into the European phase of a PCT application, or without delay after such results have been made available to the applicant. It has not yet been determined by the European Patent Office what exactly “without delay” means, but we recommend to provide the search results as soon as possible and within approximately two weeks after they have been made available to the applicant.
This obligation applies to search results in any form, i.e. as part of the search but also as part of an office action issued by the Patent Office with which the previous application was filed. This obligation persists as long as the European patent application is pending.

In view of the new rules, when providing us with instructions to file a European or international patent application with the EPO, claiming priority of an earlier application, please provide us with a copy of corresponding search results once these are available or with a statement that such search results are not available. If search results are available, please provide a copy of the corresponding official document issued by the Office of first filing. A translation of the search results or copies of the prior art cited therein is not required.

If no search results have been filed by the applicant, the EPO will invite according to new Rule 70b (1) the applicant to file, within a period of two months, the copy or a statement that the results of the search are not available. If the applicant fails to reply in due time to such invitation, the European patent application shall be deemed to be withdrawn.

Furthermore, please note that the EPO intends to set up an electronic environment for directly accessing these search results so that applicants claiming the priority of an application filed with an National Patent Office for which such an electronic system is in place will be exempted from the obligation to file a copy of the search results under Rule 141 (1) EPC. We expect that at least the countries USA, Japan and Korea will factually be exempted from this new provision. Unfortunately, respective decisions have not been published yet, but are expected to be published early next year.

Published with permission of

Eisenführ, Speiser & Partner – Patentanwälte Rechtsanwälte

www.eisenfuhr.com

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