26 December 2010

Reminder: Changes of EPC Entering Into Force as from 1 January 2011 (Information on Prior Art)

As already mentioned earlier on this blog, the following important changes of the EPC Implementing Regulations will enter into force on 1 January 2011 (see also EPO Notice of 28 July 2010):

Amended Rule 141 EPC (Information on prior art) requires that for a priority-claiming EP application, copies of the search results drawn up for the priority application(s) have to be filed upon filing the EP application or upon PCT national phase entry, based on the following constraints:
  • a translation of the search results is not required;
  • copies of cited prior art are not required;
  • search reports not available upon filing have to be filed "without delay after they are made available";
  • search results of the ISA have to be filed for priority-claiming PCT applications.
In future, the EPO may also request any information on prior art taken into consideration in further parallel national/regional examinations.

New Rule 70b EPC (Request for a copy of search results) clarifies that, if the information pursuant amended Rule 141 is not filed in time, a (non-extendable) two-months time limit is set to either file the required search results or a statement of non-availability. If the applicant fails to reply in due time to this invitation, his application will be deemed to be withdrawn (further processing available).

For priority-claiming divisional applications, the EPO will automatically issue an invitation under new Rule 70b. If the required 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 has been filed, the copy of the relevant search results, if available, or a new statement of non-availability is required.

Exemption: According to Rule 141(2) EPC, the applicant is exempted from filing a copy of the search results in special cases, which have been specified by the President's Decision of 5 October 2010 and an EPO Notice of 9 December 2010 (see also related earlier posting):

The EPO will automatically include those search results in its file that have been drawn up by the EPO itself, e.g.
Further, the following Patent Offices have agreed to provide the EPO with search results covered by Rule 141 EPC. Such search results will thus be automatically included in the EPO's file as well:
Consequently, applicants will be exempted from filing a copy of the search results under Rule 141 EPC if they are claiming the priority of either
  • an application on which the EPO itslf drew up a certain type of search report, or
  • a first filing made in Japan, the United Kingdom or the United States of America.
Amended Rule 141 EPC 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).
New Rule 70b EPC 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.

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