The European Patent Office (EPO) has recently published information on Rule changes which come into force on January 1, 2011 and which introduces a limited duty of disclosure to the EPO. The new Rules will apply to all European patent applications, including divisional applications, and international applications entering into the European national phase filed on or after January 1, 2011. Since the filing date of applications entering into the European national phase is the PCT filing date, this means that it will only apply to PCT applications whose parent PCT filing date is on or after January 1, 2011.
The New Disclosure Requirement
For European applications or international applications entering into the European phase, the EPO will require Applicants to file the results of any official searches/examinations carried out on priority applications. Where multiple priorities are claimed, search/examination results must be disclosed for each priority application.
When: Search/examination results must be disclosed upon filing of the European application or upon entering the European regional phase. If search/examination results are not available to the applicant when the new application is filed, or further search/examination results become available later, the results must be disclosed to the EPO without delay after they become available to the applicant. This obligation exists as long as the European patent application is pending before the EPO.
What: Only searches/examinations performed by the authority with which the priority application was filed will need to be supplied. Since search/examination reports are not provided for most priority applications (e.g., U.S. provisional applications), this new rule will affect a limited number of applicants.
A simple listing of the cited prior art is not acceptable, and instead the EPO will require a copy of the search/examination results in whichever form they originally issued (e.g. search report, listing of cited prior art, relevant part of the examination report). There will be no need to provide copies of cited documents or translations of the search/examination results.
Exceptions: There is no need to disclose search results already “available to the European Patent Office.” This allows applicants to be exempt from supplying search/examination results issued by the EPO itself. Currently this will apply only to priority applications filed with the EPO.
For divisional applications, search/examination results already filed in the parent application will not need to be re-filed. The EPO will automatically issue invitations to file the priority application search/examination results for divisional applications, but these invitations can be ignored if all of the required search results have already been filed on the parent application.
The EPO also intends to make arrangements with other national and regional patent offices so that applicants need not supply search results from those offices in future. The President of the EPO is expected to announce the first batch of these arrangements sometime before the new provisions come into force. It is likely that this arrangement will require that some form of written consent to disclose unpublished search results is given when filing the priority application(s).
New Rule 70b EPC establishes the procedure for situations in which search/examination results were not provided by the time substantive examination of the new application starts and are not deemed to be available to the EPO. A communication will issue setting a non-extendable two month period for reply in which the applicant must file either:
(a) a copy of the search results, or
(b) a statement of non-availability of search results (if they are not available to the applicant).
Failure to comply will result in the application being deemed withdrawn.
Disclosure of Other Prior Art Information
The examiner will also (at their discretion) be able to request 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”.
When: It is up to the examiner to issue the request, and one may not issue at all. Once a request has issued, a non-extendable two month period for reply is set. Failure to submit a response will result in the application being deemed withdrawn. It is also possible for examiners to issue multiple requests at different times whilst an application is pending.
What: The wording of this provision is different to Rule 141(1) EPC and so it appears that a simple listing of prior art will be acceptable.
The new disclosure requirement is contained in amended Rule 141 and new Rule 70b EPC . A copy of the latest EPO Official Journal publication regarding this duty may be found here.