In December 2009, the European Patent Office (“EPO”) announced in the Official Journal the amendment of Rule 141 and the insertion of new Rule 70b.1 These changes to the European Patent Convention (“EPC”) modify the requirements for supplying search results on priority applications, introducing a limited duty of candor to the EPO. While Article 124 of the EPC currently allows the EPO to invite an applicant to provide information on prior art cited on related applications,2 the new Rules add more teeth to the provision by requiring, rather than merely inviting, search information on related applications. This article examines the language of, and describes what is required under, the new Rules, which will apply to direct European patent applications and national phase PCT applications filed on or after January 1, 2011,3 and proposes some practical considerations for EPO applicants and practitioners in preparing for these changes.

Amended Rule 141 - Information on Prior Art

The most substantial change is Amended Rule 141(1), which requires an applicant to provide a copy of the results of any search that was carried out on a priority application when filing a European application or when entering the regional phase in Europe.4 Upon reading the Rule, it is not clear as to exactly what is meant by “a copy of the results of any search carried out by the authority with which the previous application was filed….” If the priority document is a U.S. utility application, would submitting a copy of the Notice of References Cited (PTO-892) from an Office action be sufficient, or would the Applicant also be required to provide a copy of the Office action issued by the U.S. Patent Office? The EPO has not yet provided clarification of this language in Rule 141(1).