INFORMATION FROM THE EPO
Notice from the European Patent Office reminding applicants of the exemptions under Rule 141(2) EPC from filing a copy of the search results under Rule 141(1) EPC - utilisation scheme
1. Amended Rule 141 EPC and new Rule 70b EPC implementing the EPO's permanent utilisation scheme entered into force on 1 January 20111. The present notice is to remind applicants of the cases in which they do not have to file a copy of the search results under Rule 141(1) EPC, with a view to avoiding unnecessary administrative work and related costs both for the applicant and the EPO.
2. Under Rule 141(1) EPC, an applicant claiming the 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 was filed (= office of first filing (OFF)) together with the European patent application or, in the case of a Euro-PCT application, on entry into the European phase2.
3. Rule 141(2) EPC provides that a copy of the search results under Rule 141(1) EPC is deemed to be duly filed if it is available to the EPO and to be included in the file of the European patent application under the conditions determined by the President of the EPO. This provision allows the President of the EPO to determine the cases in which the OFF search results are considered to be 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.
4. Applicants are reminded that they are exempted from filing a copy of the search results under Rule 141(1) EPC if they are claiming the priority of an application on which the EPO drew up a certain type of search report, namely a European search report, an international search report, or an international-type search report3.
5. Moreover, no copy of the search results needs to be filed by the applicant where the EPO drew up a search report on behalf of a national office on a national first filing made in Belgium, Cyprus, France, Greece, Italy, Luxembourg, Malta, the Netherlands or Turkey4. Applicants are, for the time being, also exempted from filing a copy of the search results where the priority is claimed of a first filing made in Japan, the United Kingdom or the United States of America5.
1 See decision of the Administrative Council of 28 October 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 18/09), OJ EPO 2009, 585.
2 See notice from the European Patent Office dated 28 July 2010 concerning amended Rule 141 EPC and new Rule 70b EPC – utilisation scheme, OJ EPO 2010, 410.
3 See decision of the President of the European Patent Office dated 5 October 2010 on the filing of copies of search results under Rule 141(1) EPC – utilisation scheme, OJ EPO 2010, 600.
4 See footnote 3.
5 See decision of the President of the European Patent Office dated 9 December 2010 exempting applicants claiming the priority of a first filing made in Japan, the United Kingdom or the United States of America from filing a copy of the search results under Rule 141(1) EPC – utilisation scheme, OJ EPO 2011, 62, and notice from the European Patent Office dated 9 December 2010 concerning exemption under Rule 141(2) EPC from filing a copy of the search results – utilisation scheme, OJ EPO 2011, 64.