04 August 2010

EPO Tightens Information Disclosure Requirements

Since the entering into force of the revised European Patent Convention (EPC 2000) on 13 December 2007, the EPO may "invite the applicant to provide information on prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates", as specified under Art. 124 (1) EPC.

The EPO now announced in a Notice dated 28 July 2010 that the Administrative Council decided to introduce a permanent utilisation scheme (see CA/D 18/09 of 28.10.2009, OJ EPO 2009, 585) so that work carried out on a first filing by a National or Regional Patent Office during the priority year can be utilised by the EPO for its own search. For this reason, amended Rule 141 EPC and new Rule 70b EPC will apply to EP/PCT applications that are filed on or after 1 January 2011.

The permanent utilisation scheme as defined by amended Rule 141 EPC is an outcome of the Utilisation Pilot Project conducted from April 2007 to August 2008 and part of the agenda of the European Patent Network in which National Patent Offices (NPOs) of the EPC member states agreed on "utilisation by the EPO of work done by NPOs". 

Amended Rule 141 EPC (Information on prior art) reads:
(1) An applicant claiming priority within the meaning of Art. 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.

(2) The copy referred to in para. 1 shall be deemed to be duly filed if it is available to the European Patent Office and to be included in the file of the European patent application under the conditions determined by the President of the European Patent Office.  

(3) Without prejudice to para. 1 and 2, the European Patent Office may invite the applicant to provide, within a period of two months, information on prior art within the meaning of Art. 124 (1).
Paragraph 1 requires that for an EP application claiming one or more priorities, copies of the related search results from the Office(s) of first filing have to be filed directly upon filing the EP application or upon entry of an PCT application into the European regional phase. Further constraints are:
  • translation of the search results are not required;
  • filing copies of the revealed prior art is not require;
  • search reports not available upon filing have to be filed "without delay after they are made available";
  • for a priority of a PCT application, the search results of the ISA have to be filed.
Paragraph 2 relates to cases in which the search results are automatically included in the EPO's file of the EPO, so that the applicant is releaved from the obligations to file copies of search results, e.g. if those search results were drawn up by the EPO itself.

At this point the "European Patent Network" will come into as soon as the required electronic communication environment between NPO's and the EPO is set up that allows automatic forwarding of such search results from an NPO to the EPO.

Paragraph 3 allows the EPO to request any information on prior art taken into consideration in further parallel national/regional examination. The notice explains under section 2.3 that "this in particular encompasses search results with respect to filings whose priority is not being claimed in the European patent application", because amended Rule 141 (3) refers to Art. 124 (1) EPC, which explicitly relates to "information on prior art taken into consideration in the examination of national or regional patent applications and concerning an invention to which the European patent application relates".

New Rule 70b EPC (Request for a copy of search results) reads:
(1) Where the European Patent Office notes, at the time the Examining Division assumes responsibility, that a copy referred to in Rule 141 (1) has not been filed by the applicant and is not deemed to be duly filed under Rule 141 (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 (1), are not available to him.

(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.
Paragraph 1 clarifies that, if the information pursuant amended Rule 141(1) neither is filed upon filing/European entry of the EP/PCT application nor is deemed to be duly filed under amended Rule 141(2), the EPO sets a (non-extendable) two-months time limit to either file the search results required under amended Rule 141(1) or a statement of non-availability of such search results.

Paragraph 2 clarifies that, if the applicant fails to reply in due time to the invitation under new Rule 70b(1), his application will be deemed to be withdrawn. Thereafter, further processing (Art. 121 EPC) is available as a remedy.

For divisional applications claiming a priority, the EPO will automatically issue an invitation under new Rule 70b(1). If the relevant search results have already been filed for the parent application, a reply is not required. If for the parent application a statement of non-availability according to new Rule 70b(1) EPC has been filed, the copy of the relevant search results or a new statement of non-availability has to be filed for the divisional application.