英文 |  日文 |  各地分所 |  联系我们 |  网站说明 |  首页 
新闻档案
CHANGES TO THE EUROPEAN PATENT CONVENTION IMPLEMENTING REGULATIONS

by Francesca Giovannini

The European Patent Convention (EPC) has implemented regulations entered into force effective January 1, 2011. These changes apply to European patent applications and international applications filed on or after January 1, 2011 and claiming a priority of a previous application.

New Rule 141(1) EPC introduces an obligation for the applicant to provide a copy of previous search results carried out with respect to the priority application(s).

Specifically, an applicant claiming priority of a previous application has to file with the EPO a copy of the results of any search carried out by or on behalf of the authority with which the previous application was/were filed, i.e. of the national/regional patent office or, in case of an Euro-PCT, of the International Searching Authority (ISA).

The copy must be a copy of the official document issued by the national/regional patent office or by the ISA, in the same form or format it is drawn up (e.g. search report, listing of cited prior art, relevant part of the examination report) and has to be filed on filing of the European patent application or, in case of Euro-PCT applications, on entry into the European phase. Copies of the cited documents are not required, and translations are not required if the search results are drawn in a language that is not an official language of the EPO.

If the copy is not available at the filing date, the applicant has to file it with the EPO without delay after it is made available. This obligation exists as long as the patent application is pending before the EPO, i.e. before grant.

However, the copy is deemed to be duly filed if it is available to the EPO and is automatically included in the file in cases where an earlier search report has been drawn up by the EPO in respect to an application whose priority is claimed and where the priority of a first filing made in Japan, United Kingdom, or United States is claimed.

The obligation applies also to divisional applications enjoying a right to priority. However, if the copy of the search results has already been filed with respect to the parent application, the applicant is exempted from filing the copy.

An invitation according to new Rule 70b EPC is issued whenever the examining division, once assumed the responsibility of the file, notes that no copy of the search results has been furnished. In this case, the applicant is given a non-extendable two-month deadline either to provide the copy or to file a statement of non-availability of the search results.

Failure to respond to the EPO invitation results in the application deemed to be withdrawn. As a remedy, “further processing" by payment of the prescribed fee under Art.121 EPC is available.

In view of the above changes, when filing a European patent application claiming one or more priorities or when entering the European regional phase of a PCT application claiming one or more priorities, the applicant has to supply a copy of any previous search results carried out by or on behalf of the authority with which the priority application(s) was/were filed and, if not available, supply a copy as soon as it is available.

Following two decisions of the President of the EPO effective January 1, 2011, the applicant is exempted from the obligation of filing the copy of the previous search results in the following cases:

- when the search report of the priority application is a European search report (Art. 92 EPC), an International search report drawn up by the EPO (Art. 15(1) PCT), or an International-type search report drawn up by the EPO (Art. 15(5) PCT);
- when the search report of the priority application is a search report made on behalf of a national office on a national application in Belgium, Cyprus, France, Greece, Italy, Luxembourg, Malta, Netherlands, Turkey;
- when the priority application is a national application filed in Japan, United Kingdom or United States; and
- when the application is a divisional application and the copy of the search results has already been filed with respect to the parent application.

Please do not hesitate to contact us if you have any questions about these changes.
 

◎2011 Osha Liang LLP |  休斯顿  |  巴黎  |  硅谷  |  东京  |  奥斯汀