The Utilisation Pilot Project (UPP) run between April 2007 and August 2008 has shown that work carried out during the priority year on a first filing at a national patent office (NPO) can be further utilised by the EPO when prosecuting the subsequent European patent application and that such utilisation would be beneficial to the European patent system.
The Administrative Council therefore decided to introduce a permanent utilisation scheme on the basis of Article 124 EPC and to amend the EPC Implementing Regulations to this effect (see CA/D 18/09 of 28 October 2009, OJ EPO 2009, 585). Amended Rule 141 EPC and new Rule 70b EPC will enter into force on 1 January 2011 and will apply to European patent applications (including divisional applications) and international applications filed on or after that date.
A key principle of the utilisation scheme is that the use of the work of the NPO and in particular of the national search results is always at the discretion of the EPO examiner. Utilisation cannot and does not imply automatic reuse of NPO search results.
Under amended Rule 141(1) EPC, an applicant claiming priority of a previous application within the meaning of Article 87 EPC has to file a copy of the results of any search carried out by or on behalf of the authority with which the previous application(s) was/were filed (= office of first filing (OFF))
Rule 141(1) EPC applies to all European patent applications claiming priority. Where multiple priorities are claimed, the applicant has to file copies of the OFF search results drawn up in respect of all previous applications concerned.
The applicant's obligation under amended Rule 141(1) EPC covers search results in whatever form or format they are drawn up by the OFF (e.g. search report, listing of cited prior art, relevant part of the examination report). The copy of the search results submitted must be a copy of the official document issued by the OFF. A listing of the cited prior art drawn up by the applicant himself is not sufficient for the purpose of Rule 141(1) EPC.
A translation of the search results is not required where those results are drawn up by the OFF in a language that is not an official language of the EPO.
Copies of the documents cited in the OFF search results do not have to be filed under Rule 141(1) EPC.
Where the OFF search results are not available when filing the European patent application or, in the case of a Euro-PCT application, when entering the European phase, the applicant has to file the search results with the EPO without delay after they are made available to him. The earlier the national search results are available to the EPO, the better in terms of efficiency. Ideally they will be available to the EPO examiner when he is drafting the extended European search report.
The obligation under Rule 141(1) EPC exists as long as the European patent application is pending before the EPO.
For Euro-direct and international applications for which the EPO is a designated or elected Office (Euro-PCT applications), the OFF with which the previous application was filed will normally be a national or a regional Office. Hence, as a rule, the search results to be filed are those drawn up by an NPO in respect of a national patent application or of any other application for industrial property rights that gives rise to a right of priority (utility model, utility certificate, see Article 87 EPC). It may also occur that the priority of an international application under the PCT is claimed. In that case, the search results to be filed are those delivered by the competent International Searching Authority.
For European divisional applications, the copy of the search results does not have to be filed again if it has already been filed with respect to the parent application. Please see also the explanations below regarding new Rule 70b EPC.
Amended Rule 141(2) EPC provides that a copy of the search results under Rule 141(1) EPC 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.
This provision allows the President of the EPO to determine the cases in which the OFF search results are considered available to the EPO and are automatically included in the file of the European patent application. In these cases applicants are exempted from the obligation to file a copy of the search results.
For the time being, it is intended to exempt applicants from the obligation to file a copy of the search results referred to in Rule 141(1) EPC in cases where an earlier search report has been drawn up by the EPO in respect of an application whose priority is claimed.
Furthermore, the EPO together with interested NPOs intends to set up the necessary electronic environment for accessing OFF search results. Applicants claiming the priority of an application filed with an OFF for which such an electronic system is in place will be exempted from the obligation to file a copy of the search results under Rule 141(1) EPC. In this context, it is currently also being explored to what extent existing document exchange systems can be used.
The EPO will publish a decision of the President of the EPO under Rule 141(2) EPC as soon as possible before the entry into force of the new provisions.
New Rule 141(3) EPC provides that, without prejudice to paragraphs 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 Article 124(1) EPC.
Rule 141(3) EPC allows the EPO to request any information on prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates. This in particular encompasses search results with respect to filings whose priority is not being claimed in the European patent application. It also enables the EPO to request inter alia the copy referred to in Rule 141(1) EPC in situations where the search result is not available to the applicant when requested under new Rule 70b EPC (see below for the explanations on Rule 70b EPC). The non-extendable period of two months is aligned to that of new Rule 70b EPC.
Any invitation under Rule 141(3) EPC will be issued only during the examining phase and only in individual cases.
New Rule 70b(1) EPC complements amended Rule 141 EPC: where the EPO notes, at the time the examining division assumes responsibility, that a copy of the relevant search results as required under Rule 141(1) EPC has not been filed by the applicant and is not deemed to be duly filed under Rule 141(2) EPC, the EPO invites the applicant to file, within a non-extendable period of two months,
Where the applicant fails to reply in due time to the invitation under Rule 70b(1) EPC, the European patent application will be deemed to be withdrawn (Rule 70b(2) EPC). If the European patent application is deemed to be withdrawn under new Rule 70b(2) EPC because of the failure to observe the non-extendable two‑month period, further processing can be requested.
Where a divisional application enjoys a right of priority, the EPO will, where applicable (i.e. where no copy of the relevant search results has been filed for the divisional application), automatically issue an invitation under Rule 70b(1) EPC. Please note, however, that where all relevant search results have already been filed with respect to the parent application, the applicant need not reply to the Rule 70b EPC communication received with respect to the divisional application. The invitation under Rule 70b EPC will expressly draw applicants' attention to this point.
This implies that where, with respect to the parent application, an applicant has filed a statement of non-availability as a reply to the Rule 70b(1) EPC invitation, the copy of the relevant search results or a new statement of non-availability of these search results must be filed with respect to the divisional application.