New Information Disclosure Requirements under Rule 141 EPC

This article was included in our Winter 2010 edition of Inside IP magazine.

New disclosure rules are coming into effect from 1 January 2011 for European patent applications filed on or after that date.

Under amended Rule 141 EPC, the applicant for a European application is obliged to file a copy of any search carried out on the priority application by the authority with which the priority application was filed.  The search results should be filed at the time of filing the European application (or entering the EP national phase of an international application) or, if not available at that time, ‘without delay after they are made available’.

Although the rules apply from 1 January 2011 for standard priority-claiming European applications, they will only apply to EP national phase applications that are based on international applications filed on or after 1 January 2011.  In other words, for EP national phase applications, the effect of the rules will be delayed, typically until mid-2012 (the 31 month deadline for entering the EP national phase).

Contrary to some reports, the new obligation is not particularly onerous, and is far removed from the sweeping Information Disclosure Statement (IDS) obligations under US law.  Nevertheless, the new rules inevitably add to the overall administrative burden on the applicant.  The obligation only requires the filing of a copy of the official search on the priority application, in whatever form it is issued.  There is no requirement for a translation of the search document, nor for the filing of the cited documents themselves.

Furthermore, there are no immediate sanctions for non-compliance.  Sanctions can only flow from the application of new Rule 70b EPC, which provides that the EPO can issue a communication requiring the filing of the search results, or a statement that no such results exist.  The communication will set a two month time limit for filing the results.  Failure to file the results within this time limit will result in the application being deemed withdrawn.

The new rules create a continuing obligation to file search results relating to the priority application.  For example, if further documents are cited after the initial search/examination report on the priority application, these documents should also be disclosed.  While there are currently no rules that would allow an application to be challenged post-grant as a result of any failure to disclose all of the search results, the prudent approach would be to ensure that all such results are disclosed.

An exemption to the requirements is provided where the search documents are available to the EPO.  This is intended to allow for agreements between patent offices to supply such documents automatically.  The UK Intellectual Property Office has already announced that it is working to provide the results of searches automatically to the EPO.  It is to be hoped that, in time, other major patent offices will make similar provisions, so that the new rules should not inevitably be seen as the start of a tougher disclosure regime.

Update: As of 1 January 2011, agreements are in place with the UKIPO, USPTO and the Japanese Patent Office, so that no search results need to be provided where the application is based on a UK, US or Japanese priority document.

Jan Walaski 29 Nov 2010

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