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Requirement to file search results on European Patent Applications

Requirement to file search results on European Patent Applications

09/12/10

With effect from 1 January 2011 it will be necessary to file search reports drawn up in connection with applications from which a European patent application claims priority.

The new rule will apply to any European application having a filing date on or after 1 January 2011. This includes European divisional applications filed on or after 1 January 2011 and Euro-PCT applications with an international filing date on or after 1 January 2011. However, a recent decision of the President of the EPO confirms that the search results from a priority application filed at the US Patent Office, the Japanese Patent Office or the UK Patent Office will not need to be filed by the applicant as these will be supplied automatically by the relevant patent offices.

The EPO has amended Rule 141 EPC to specify that applicants must provide search reports carried out by a national patent office (the so-called office of first filing) or an International Searching Authority (ISA) for applications from which the European application claims priority. For applications which claim multiple priorities the search report for each priority application will be required.

The search reports must be provided to the EPO in the same format as they were drawn up by the office carrying out the search. Copies of these reports must be filed; a listings of the cited prior art will not be sufficient. Copies of cited documents are not required and it will not be necessary to file any translations of documents, including the search report which is in a non-EPO language.  

If there is a family of cases, the EPO can also request any information on prior art taken into consideration during examination of corresponding applications elsewhere. This must be provided within a non-extendible deadline of 2 months.

The earlier search, if available, should be forwarded to the EPO when filing the European application or on entry in to the European regional phase. If the results are not available at filing, then they must be filed once they become available. This requirement is ongoing and remains whilst the European application is pending.

If no information regarding earlier search results has been provided by the applicant when substantive examination starts, the EPO will issue an invitation to the applicant to file such information. The deadline for responding by filing any earlier search results, or a statement that no such search results are available, will be 2 months from the date of the invitation. If no response is filed, the application will be deemed withdrawn.

If the EPO carried out the earlier search, whether as office of first filing or as ISA, the EPO will automatically include results of the search on the application and no action is required. This exemption will also extend to search reports made on a national application in Belgium, Cyprus, France, Greece, Italy, Luxembourg, Malta, Netherlands and Turkey. This exemption will be extended to other offices in the future. In addition information available from earlier European applications  will automatically be made available for divisional applications.