March 1, 2011

New Disclosure Requirements at the EPO

Dr. Ilan Cohn, Senior Partner
Dr. Ilan Cohn

Senior Partner

Reinhold Cohn & Partners

The European Patent Office (EPO) has now joined other patent offices in requiring applicants to submit results of previous prior art searches in priority applications. This disclosure requirement is effective as of 1 January 2011.

The EPO, taking pride in its own quality search and examination process, never widely required applicants to submit information on searches and examination results from other patent offices; although examiners occasionally did raise such requirements during examination.

However, in joining the wave of increased reliance of patent offices worldwide on search and examination results in other countries, among others, within the framework of the Patent Prosecution Highway (PPH)1, the EPO has, as of 1 January 2011, instituted the requirement for disclosure of search results. However, unlike other patent offices who have such requirements (such as the Israeli Patent Authority), the EPO’s disclosure requirement is limited to search results issued in connection with the patent application(s) from which priority is claimed – the priority search report (PSR).

The new requirements establish an ongoing duty of disclosure concerning prior art cited against priority application(s). Under the new guidelines, for any application that claims priority from an earlier application(s), a PSR will have to be submitted. This will have to be done upon filing a regular European patent application or one that is based on a PCT application. If the PSR is not available at the time of such filing, the EPO will request applicant to submit it in the course of examination of the application.

 

It will not be necessary to file the PSR if prepared by the Japanese Patent Office, UK Intellectual Property Office or the USPTO. In such cases the EPO, which has direct links to these patent offices, will obtain a copy directly from them.

Failure to comply with the requirement in due time will lead to the European patent application being deemed withdrawn. However, further processing can be requested.

At present, disclosure requirements are limited to the PSR and, for the most part, is irrelevant to Israeli applicants who typically file first application as US provisional application which, as known, is not examined and no search is conducted in connection therewith. In contrast, those who file their priority application in Israel or in another country and eventually file a European application based thereon, will have to provide the EPO with results of searches carried out in connection with the priority application.

It is reasonable to assume that the EPO, in line with the increased international tendency, will expand its disclosure requirements in the future to provide information on prior art cited in corresponding applications other than the priority application.

The patent prosecution highway (PPH) is an international program whereby patent offices make reliance on examination results from other patent offices. The PPH began as a program between the so-called trilateral offices – the USPTO, the EPO and the JPO – but has been increasingly broadened over recent years.

This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.

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