OJ EPO 2016, A19 - Notice from the European Patent Office dated 10 February 2016 concerning exemption under Rule 141(2) EPC from filing a copy of the search results – utilisation scheme

1. Amended 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 European Patent Office (EPO) and to be included in the file of the European patent application under the conditions determined by the President of the EPO. [ 1 ]

2. Following a decision of the President of the EPO, the EPO includes the above-mentioned copy in the file of a European patent application where it has drawn up certain types of search report on an application whose priority is claimed, thus exempting applicants in these cases from filing the copy themselves. [ 2 ]

3. The President of the EPO has moreover decided that the EPO also includes a copy of the search results in the file of a European patent application, thus exempting the applicant from filing the copy himself, where the priority of a first filing made in Austria, [ 3 ] Denmark[ 4 ], Japan, the Republic of Korea, the United Kingdom,

or the United States of America is claimed. [ 5 ], [ 6 ]

4. Spain is henceforth providing the EPO in electronic form with the search results covered by Rule 141(1) EPC. By decision dated 10 February 2016, the President of the EPO has therefore added Spain to the above list of countries. [ 7 ]

5. As a result, applicants will be exempted from filing a copy of the search results under Rule 141(1) EPC if they are claiming the priority of either

  • an application on which the EPO drew up a certain type of search report, or
  • a first filing made in
  • Austria,
  • Denmark,
  • Japan,
  • the Republic of Korea,
  • Spain,
  • the United Kingdom or
  • the United States of America.

 

 

[ 1 ] 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.

[ 2 ] 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.

[ 3 ] See decision of the President of the European Patent Office dated 19 September 2012 exempting applicants claiming the priority of a first filing made in Austria from filing a copy of the search results under Rule 141(1) EPC – utilisation scheme, OJ EPO 2012, 540.

[ 4 ] See decision of the President of the European Patent Office dated 10 December 2014 exempting applicants claiming the priority of a first filing made in Denmark from filing a copy of the search results under Rule 141(1) EPC – utilisation scheme, OJ EPO 2015, A2.

[ 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.

[ 6 ] See decision of the President of the European Patent Office dated 27 February 2013 exempting applicants claiming the priority of a first filing made in the Republic of Korea from filing a copy of the search results under Rule 141(1) EPC – utilisation scheme, OJ EPO 2013, 216.

[ 7 ] See decision of the President of the European Patent Office dated 10 February 2016 exempting applicants claiming the priority of a first filing made in Spain from filing a copy of the search results under Rule 141(1) EPC – utilisation scheme, OJ EPO 2016.

3 references found.

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EPC Implementing Rules

EPO Guide for Applicants, part II Int. - E Euro-PCT procedure before the EPO as designated or elected Office

Offical Journal of the EPO