The European Patent Office is adopting new rules that will affect U.S. applicants for European patents. Effective January 1, 2011, the European Patent Office will require disclosure of prior art identified in search results from the patent office of first filing. The new rules will apply to a U.S. applicant seeking a European patent based on a U.S. priority application. The intent of the new rules is to improve efficiencies in search and examination of European patents. In particular, the EPC will be introducing an amendment to rule 141 and a new rule 70b, both effective from 01 January 2011.

Although the applicant will be under an obligation to provide the search results at the time a European application (or EP regional phase entry from a PCT application) is filed, no sanction is imposed for failure to do this. Later, during examination, if it is noted that these search results have not been filed, the EPO will invite the applicant to do so and allow two months to respond. If the applicant does not respond within that period, the EPO will treat the application as having been withdrawn but, as usual, the application can still be revived under further processing provisions for a short period thereafter.

The EPO will require an actual copy of the search results in the form in which they are provided by the office of first filing. For U.S. applicants, that will typically be the PTO-892 form that accompanies the first Office action. The EPO also requires the search results for each priority application. Copies of the documents cited in the search results are not required, however, and applicants need not provide a translation of the search results document if it is in a language other than English, French or German.

For divisional applications, a copy of the priority application search results does not have to be filed if a copy was previously filed in the parent application.

Applicants will be exempted from this requirement to file search results to the extent that these results can already be accessed by EPO directly by electronic means from other national patent offices. The EPO will publish information both prior to and after entry into force of these new rules concerning the extent to which this exemption will be applicable.

The EPO already had the power to require “information on prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates,” Art. 124(1), although it rarely exercised that power. Under the new rules to take effect January 1, 2011, the EPO will now automatically invoke that power to require a copy of at least the first Search Report from the office of first filing, and the copy must be submitted within two months from the EPO letter requiring it.

Of course, the best practice will be to comply with the EPC requirement at the time of EP filing/EP regional phase entry, wherever possible.

To comply with the new rules, we recommend that U.S. applicants for European patents send the EPO a copy of the PTO-892 form included with the first U.S. office action as soon as it is received from the PTO. Whether the new rules cover subsequent search reports received after the first one was submitted to the EPO is debatable, since the EPO certainly has no way to enforce filing them. Out of an abundance of caution, however, filing subsequent PTO-892 forms if they are received would be prudent.