Decision of the President of the European Patent Office dated 9 December 2010 exempting applicants claiming the priority of a first filing made in Japan, the United Kingdom or the United States of America from filing a copy of the search results under Rule 141(1) EPC – utilisation scheme

Decision of the President of the European Patent Office dated 9 December 2010 exempting applicants claiming the priority of a first filing made in Japan, the United Kingdom or the United States of America from filing a copy of the search results under Rule 141(1) EPC – utilisation scheme

The President of the European Patent Office, having regard to Rules 141(1) and (2) and 70b(1) and (2) of the European Patent Convention (EPC), has decided as follows:

Article 1

Exemption under Rule 141(2) EPC from filing a copy of the search results  

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 of a first filing made in one of the following states is claimed:

- Japan

- United Kingdom

- United States of America

Article 2

Entry into force

This decision shall enter into force on 1 January 2011 and shall apply to European patent applications and international applications filed on or after that date.

Done at Munich, 9 December 2010

Benoît BATTISTELLI

President

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(Reference)

Notice from the European Patent Office dated 9 December 2010 concerning exemption under Rule 141(2) EPC from filing a copy of the search results – utilisation scheme

1. Amended Rule 141(2) EPC provides that a copy of the search results under Rule 141(1) EPC is deemed to be duly filed if it is available to the European Patent Office (EPO) and to be included in the file of the European patent application under the conditions determined by the President of the EPO¹.

2. In October 2010, the President of the EPO decided that the EPO would include the above-mentioned copy in the file of a European patent application where it had drawn up certain types of search report on an application whose priority was claimed, thus exempting applicants in these cases from filing the copy themselves².

3. The Japan Patent Office, the United Kingdom Intellectual Property Office and the United States Patent and Trademark Office have agreed to provide the EPO in electronic form with the search results covered by Rule 141(1) EPC. Therefore, the President of the EPO has now decided that the EPO will also include the above-mentioned copy in the file of a European patent application, thus exempting the applicant from filing the copy himself, where the priority of a first filing made in Japan, the United Kingdom or the United States of America is claimed³.

This decision complements the decision referred to in point 2 above and will enter into force on the same date, 1 January 2011. Both decisions will apply to European and international applications filed on or after that date, i.e. as from the start of the utilisation scheme under Rules 141 and 70b EPC.

4. As a result, applicants will be exempted from filing a copy of the search results under Rule 141(1) EPC if they are claiming the priority of either

- an application on which the EPO drew up a certain type of search report, or

- a first filing made in Japan, the United Kingdom or the United States of America.

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1 See notice from the European Patent Office dated 28 July 2010 concerning amended Rule 141 EPC and new Rule 70b EPC - utilisation scheme, OJ EPO 2010, 410.

2 See decision of the President of the European Patent Office dated 5 October 2010 on the filing of copies of search results under Rule 141(1) EPC - utilisation scheme, OJ EPO 2010, 600.

3 See decision of the President of the European Patent Office dated 9 December 2010 exempting applicants claiming the priority of a first filing made in Japan, the United Kingdom or the United States of America from filing a copy of the search results under Rule 141(1) EPC - utilisation scheme, OJ EPO 1/2011.