Rule 141 EPC has caused a degree of consternation as to the extent to which it establishes a continuing obligation of disclosure to the EPO and whether it necessitates putting in place internal procedures to capture prior art newly cited after an initial search report is drawn up by the office of first filing (OFF), for example prior art cited in US continuation and divisional applications. We have some information direct from the EPO settling the concerns.
This is a summary of an article being published in the March 2011 CIPA Journal, reporting on some clarification from the EPO and looking at the broader question of citing prior art to the EPO.
Rule 141 - when does the obligation arise and when is it fulfilled?
New EPC Rule 141 requires that applicants "shall file a copy of the results of any search carried out by the authority with which the previous application was filed." These results must be filed together with the European patent application or, in the case of a Euro-PCT application, on entry into the European phase, if the results are available at that time. If not available then, they must be filed "without delay after they are available to the Applicant". The Notice from the EPO of 28 July 2010 confirms that the obligation under Rule 141(1) EPC exists as long as the European patent application is pending before the EPO.
There has been speculation that the ongoing obligation may not be discharged upon filing of the first results of a search carried out against the earlier application. This is addressed by a message received by Jenkins from an EPO lawyer with responsibility for International Legal Affairs, which says:
Where the search results drawn up by the office of first filing with respect to the priority application have been filed with the EPO by the applicant himself, the applicant has fulfilled his duty under Rule 141(1) EPC and does not need to file any further search results.
The President's Exemption for UK, US and Japanese first filing
The Notice from the EPO of 28 July 2010 announced an intention to exempt applicants from the obligations under Rule 141(1) where priority is claimed from certain OFFs. The Decision of the President dated 9 December 2010 implemented this policy in these words:
The European Patent Office shall include in the file of a European patent application a copy of the search results referred to in Rule 141(1) EPC, thus exempting the applicant from filing said copy, where the priority is claimed of a first filing made in: Japan, UK or USA.
This too has been clarified by the EPO International Legal Affairs as not merely exempting the filing of a particular copy of particular search results. We are told:
Applicants are completely exempted from the obligation enshrined in Rule 141(1) EPC whenever a JP, UK or US-priority is being claimed. In such cases, the applicant will not receive any invitation under Rule 70b EPC.
Accordingly, applicants claiming priority from UK, US and Japanese applications can ignore the new rule entirely.
As far as the Office is concerned, this is a procedural rule. So long as the EPO grants patents according to its interpretation of the rule, that is the end of the matter. If the EPO's interpretation is, for example, incorrect, any breach of the rule is cured by grant of the patent.
An application claiming priority from an earlier UK, US or Japanese application need not (voluntarily, or otherwise) cite prior art to the EPO. But is it not wise to do anyway? We consider this question next.