24 October 2010

European Patent Network Supports Filing of Search Results under Amended Rule 141 EPC

Illustration on the website of the Europen Patent Network 
According to a Notice dated 28 July 2010 of the Administrative Council, the permanent utilisation scheme (see CA/D 18/09 of 28.10.2009, OJ EPO 2009, 585) to be implemented by amended Rule 141 and new Rule 70b EPC will apply to EP/PCT applications that are filed on or after 1 January 2011.

The permanent utilisation scheme will enable the EPO to utilise work carried out on a first filing by a National or Regional Patent Office during the priority year. It 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". 

In brief, while amended Rule 141 (1) EPC 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, amended Rule 141 (2) EPC relates to cases in which the search results are automatically included in the EPO's file, 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" comes into play as soon as the required electronic communication environment between NPO's and the EPO is set up that allows for automatic forwarding of such search results from an NPO to the EPO.

Now, in the Decision of the President of the EPO on the filing of copies of search results under Rule 141(1) EPC dated 5 October 2010 it is clarified that, according to amended Rule 141 (2) EPC, the EPO shall automatically include into the file of an EP application copies of the following search reports drawn up by the EPO itself:
The President's Decision further documents that the European Patent Network appears to work properly already in connection with the national Offices of Belgium, Cyprus, France, Greece, Italy, Luxembourg, Malta, Netherlands, and Turkey, so that in cases of priority applications in theses countries the applicant is exempted from filing a copy of the search results under amended Rule 141(1) EPC.

For more information on wording and regulations of amended Rule 141 EPC (Information on prior art) new Rule 70b EPC (Request for a copy of search results) you may refer to this earlier posting.

More information on the EPN can be found here and here. Recently, in an interview with the Staff Union of the EPO (SUEPO), former President of the German Patent Bar Association Dr. Eugen Popp expressed a strongly opposing point of view towards the idea that the EPO may not only receive search results drawn up by NPOs but may especially outsource its own search to the NPOs via the EPN framework:
I am very much against [the EPN idea to giving EPO work to national offices]. If I, as an applicant in Europe, pay filing and examination fees, then I want the work done by the EPO. Mutual assistance with search work is fine, but a European search must not be replaced by one from the Swiss or Danish office. No applicant minds their search results being used to improve quality; that happens anyway, so we don't need an EPN for it. These days the first thing an examiner does on a European filing is conduct a family search to see which parallel applications have been filed and whether search reports on them already exist. That is relatively easy these days, and gives examiners a head start with their own search and examination of the application.