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Thursday, 12 August 2010

Rule 141 and further EPO obstructions

As if things weren't complicated enough already, what with all the rule changes this year and the looming 1 October deadline for divisional applications, the EPO will be making things a little bit more difficult for applicants as from 1 January 2011.  Changes to Rule 141 and a new Rule 70b EPC, announced in the EPO Official Journal late last year (here) will then be coming into force.  These will require applicants to provide the results of any search that has been carried out on an application from which an EP application claims priority.  Although this will add only a small further burden on the applicant or his attorney, this is in the IPKat's view another sign that the EPO is seeking to put yet further responsibility on to the applicant rather than taking the opportunity to make the system simpler and more efficient. 

Fortunately, at least one patent office is taking this as an opportunity to be a little bit more helpful to applicants for European patents.  In response to a recent notice from the EPO, the UK IPO has announced that they plan to automatically transfer to the EPO the results of any search carried out by them, relieving the applicant of the need to do this themselves.  The IPKat would like to know if any of his readers outside the UK are aware of any other similar systems being planned or put in place. 

The IPKat thinks that, in an age of increasingly interconnected worldwide computer systems, putting a new burden on the applicant to make sure that results from one patent office are provided to another is a backward step and does nothing to help the system become simpler and more efficient, which should surely be one of the main aims of the EPO (although it appears from recent experience not to be).  What the EPO and other offices (including India: see here for an example of what these kinds of requirements can end up resulting in; and don't forget the threat of 'inequitable conduct' in the US for not meeting similar requirements) should be doing instead is working behind the scenes to ensure that systems are in place to allow different offices to know what each other is doing, and not making the files of patent attorneys and patent offices over the world even more cluttered with extraneous communications about fact finding and checking just to make sure that silly little formal requirements are met (comments are to be expected regarding the word 'silly'; please go ahead). The IPKat looks forward to the day when the EPO announces that Rule 141 is to be abolished because they are able access all other patent office searches themselves, though he suspects that the rule, and equivalent rules in other countries, will be with us for some time to come.

9 comments:

athurgood said...

Well the French Search Report results have been available to the EPO for years, simply because the EPO carry out the search for the French patent office...so no real surprises there.

Peter Smith said...

It's certainly becoming an administrative and financial burden to comply with all the rules of this kind in various jurisdictions, however irrelevant the citations are.

I have two questions about the new EPO rules:

1. Do we have an on-going duty to report late citations to the EPO? (E.g. when the UK IPO looks at the US and PCT search reports and discovers relevant documents that it missed in its original search on the priority application.) My guess is yes.

2. Do we have a duty to report to the EPO citations that are made against further applications in the same country as the priority application? I am thinking particularly of U.S. non-provisional applications based on the provisional application from which the EP application claims priority ? My guess is no, but this could make a large proportion of relevant search reports, including most from the USA, unavailable to the EPO.

Chris Hardingham said...

Based on the English-language wording of the Rule, the answer to Peter Smith's second query is - grammatically speaking - a resounding yes. The rule requires the applicant to file the results of ANY search - not just one in relation to previous (priority) application.
Further - again grammatically speaking - the provision of ANY search results from the relevant Office should satisfy the EPO - perhaps I'll prepare a std letter with the search results to my favourite priority case (perhaps a chemical invention), for supply with all my (electronic) priority-claiming cases, thereby avoiding the Rule 70b(2) deemed withdrawal sanction... It's a relief the rule doesn't require one to file the results of EVERY search - I understand the USPTO carries out some 1/3 million per year, which are made available to me by PAIR...
Yet Further - since I rather suspect none of us are in the habit of "filing the European Patent Application TOGETHER WITH a previous application", the whole rule as exressed in English appears to be gobbledy-gook.
Come on Administrative Council, surely you can write properly constructed English sentences... (Or perhaps there was no English-language consideration of the Rule...)

Anonymous said...

I remember some three years ago the resounding welcome words for the first british EPO's president ...
Now she is gone and what is left? Blame for the EPO and its AC ...
Nobody saying thank you to Ms. Brimelow?

Anonymous said...

Re: Chris

The "any" shows up clearly in the English and French rules, but I think is missing from the German version:

The German text says:
eine Kopie der Recherchenergebnisse
der Behörde
= a copy of the search results of the authority

Perhaps someone with better German then me can confirm, but I think there'd need to be a jeder floating around in there to get the same meaning in German as in the other two languages.

As you say, the "any" in the English and French versions raises the interesting possibility of just filing any search result. I guess it's clear what they're trying to say, but I remember a QM lecturer saying that purposive construction should not be an excuse for sloppy drafting.

It appears in any case that there's no sanction to Rule 141, so an applicant could do nothing and just wait for a communication under Rule 70b to see what they need to file. I guess that's not in the spirit of the rule though.

Anonymous said...

"It appears in any case that there's no sanction to Rule 141, so an applicant could do nothing and just wait for a communication under Rule 70b to see what they need to file. I guess that's not in the spirit of the rule though."

Rule 70b EPC specifies the sanction ;)

A more severe sanction seems impossible, since Art. 124(1) EPC only empowers the EPO to invite the applicant to provide information on prior art. New (i.e. future) Rule 141 EPC cannot really oblige the applicant to file anything before the EPO issues an invitation.

Anonymous said...

Given the "wounded bull" charges of some European patent attorneys (which we put up with, with our clients' interests firmly in mind of course, for the purposes of reciprocity), making all first filings in South Africa might be a lower cost strategy for handling the new requirement ...

Anonymous said...

The practical consequence is that EPO action on an application claiming priority of a german national application will have the results of the german search.
(very common scenario with DE applicants)

Peter Smith said...

I had interpreted "the results of any search carried out" as meaning "the results of the search carried out (if any)".

The bad news, Chris, is that the French text DOES appear to require every search by the authority to be filed: "... une copie des résultats de toute
recherche effectuée."

So we have
- German: "the results of the search"
- English: "the results of any search"
- French: "the results of every search"
all equally authentic.

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