For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Saturday, 11 December 2010

Rule 141 EPC: some good news

As from 1 January 2011 Rule 141 EPC, as modified by Administrative Council decision CA/D 18/09, will require applicants to supply search results relating to any priority filings. On the face of it, this adds yet another burden on applicants that they could well do without.  When the IPKat first saw the new Rule, he immediately thought it was quite pointless and unnecessary.  With patent offices around the world becoming increasingly interconnected, wouldn't such an additional requirement being placed on the applicant be a backwards step?  If patent offices can communicate with each other directly, why is there a need to supply information that has been provided by one via (probably at least two) intermediates?  Why not simply cut out the middlemen and send what is required directly, and online?

Fortunately, this does in fact already happen.  In the case of supplying certified copies of priority documents, the requirement under Rule 53(1) EPC for the applicant to supply a copy does not apply where the priority filing was made in Japan, Korea, the US or at the EPO, according to a decision of the President dated 17 March 2009.

Now we can be relieved even before the new year that, in many cases, the new form of Rule 141 will not have any effect on applicants due to another decision of the President dated 9 December 2010.  According to this decision, the EPO will be able to get search results for priority applications filed at the US, UK or Japanese patent office.  The IPKat suspects that others will join, once the relevant agreements have been signed.

The IPKat now wonders what the point was of the new form of Rule 141, if the ultimate aim was apparently to make such a requirement superfluous.  Can anyone enlighten the, now quite puzzled, IPKat?

1 comment:

Anonymous said...

This particular Anonymouse is nevertheless still scratching its tiny grey head about the application of R. 141 to applications with a US priority. Considering the USPTO's endearing practice of performing new searches all through the examination process, does this mean that the EPO examiner will get a new load of documents whenever his USPTO counterpart decides to have yet another shot at finding a remotely relevant document?

Somehow I'm not so sure this will "streamline" the EPO's examination process, and I think it should be heartily disliked by applicants and EPO examiners alike. Especially if, as the terrible wording of R. 141(1) EPC would appear to indicate, the EPO is supplied with the results not just of any search carried out for the priority application itself, but also for any Continuation and Continuation-in-Part related to it…lots of fun for everybody involved!

I can only expect that EPO examiners will end up reacting to R. 141 documents in the same way that US examiners react to IDS filings: that is, by ignoring them altogether.

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