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EPO rule chanegs related to prior art disclosure

The European Patent Office (EPO) has recently published further information on Rule changes which come into force on 1 January 2011 and which introduce a limited duty of candour to the EPO.

The new Rules will apply to all European patent applications, including divisional applications, and ‘international’ Euro-PCT applications filed on or after 1 January 2011. Since the filing date of Euro-PCT applications is the PCT filing date, this means that it will only apply to Euro-PCT applications whose parent PCT filing date is on or after 1 January 2011.

1. Requirement to disclose search results on priority applications – Rule 141(1) EPC
The most substantial change is the introduction of a mandatory requirement to disclose search results on priority applications. Where multiple priorities are claimed, search results must be disclosed for each priority application.

2. No need to disclose search results if already "available to the European Patent Office" – Rule 141(2) EPC
This allows the above requirement to be fulfilled where search results are already available to the EPO. Currently this will apply only to priority applications filed with the EPO.

3. Disclosure of other prior art information – Rule 141(3) EPC
The examiner will also (at their discretion) be able to request the applicant to provide "... information on prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates".

4. Failure to provide search results under Rule 141(1)/(2) – Rule 70b EPC
New Rule 70b EPC establishes the procedure where search results have not been provided under (1) and are not deemed to be available to the EPO under (2). A communication will issue setting a non-extendable two month period for reply in which the applicant must file either:
(a) a copy of the search results, or
(b) a statement of non-availability of search results (if they are not available to the applicant).
Failure to comply will result in the application being deemed withdrawn.
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