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OBLIGATION TO GIVE INFORMATION ON PRIOR ART FOR EUROPEAN PATENT APPLICATION/ EURO-PCT APPLICATION FROM 1ST JANUARY 2011

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))

  • together with the European patent application or,
  • in the case of a Euro-PCT application, on entry into the European phase.

Therefore, when providing us with instructions to file European patent application or entering Euro-PCT application before EPO, claiming priority of an earlier national, regional or international application, please provide us also at the same time with information on prior art issued by the authority where the previous application was filed. When not yet available, please provide us that prior art information as soon as possible once they become available. When the previous application is a US provisional application for example and that no search will be established for this previous application, please provide us with a statement that the results of the search are not available and will not become available.

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.

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. 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.