EPO and PCT - Changes as of January 1, 2011

I. EPO - Amendment of Rule 141 EPC and new Rule 70b EPC

(PresseBox) ( München, )
Key words: Obligation to submit search results of priority application(s) for all European (including divisional) and international (PCT) applications filed from January 1, 2011 onwards:

- According to amended Rule 141 (1), an applicant claiming priority from an earlier application shall file, together with the application, a copy of the results of any prior search carried out by or on behalf of the authority with which the previous application(s) was or were filed. In case of a EURO-PCT application, the said prior art search results shall be filed on entry into the European phase.

- Where multiple priorities are claimed, the applicant has to file copies of the search results of all previous applications concerned.

- The copy of the search results submitted must be a copy of the official document issued by the Office of first filing. Note: A mere listing of the cited prior art drawn up by the applicant himself is not sufficient for the purpose of Rule 141 (1) EPC.

- There is no need to file copies of documents themselves as cited in the search reports, or any translations of the search results if they are in a language other than English, French or German.

- The obligation exists as long as the European patent application is pending before the EPO, and it comprises official search results drawn up in any form, such as search reports, listings of prior art, relevant part of examinations reports etc.

- The new Regulation applies also to newly filed European divisional applications, unless the search results have already been filed in the parent application.

- New Rule 70b EPC provides that if the search results are not available at the time when examination starts, the Applicant will be invited to file, within two months from notification, the required copies of the search results or a statement that the search results are not available to him. If the Applicant fails to reply in due time, the application will be deemed to be withdrawn. Further Processing in accordance with Art. 121 EPC is, however, possible.

- According to the decision of the President of the EPO dated October 5, 2010 (OJ 2010, 600), however, the submission of a copy of the search results is NOT required if the application priority of which is claimed is a European patent application. The same applies for applications filed in the US, Japan or the United Kingdom. The EPO concluded special agreements with the patent offices of these countries according to which the search results will be electronically transmitted directly from Office to Office. For details see http://www.epo.org/patents/law/legaltexts/journal/president/archive/20101209.html?update=law and http://www.epo.org/patents/law/legaltexts/journal/informationEPO/archive/20101209.html?update=law

In view of the new rules, we would like to invite our clients when they instruct us to file a new European or PCT application, or to enter the European regional phase of a PCT application, to provide us with a copy of the results of any search carried out by or on behalf of the authority with which the prior application was filed, or to provide us with a statement that the search results are not yet available. As mentioned, this does NOT apply for applications claiming the priority of applications originally filed with the EPO, the JPO, the USPTO, or the UK Patent Office.

II. PCT - Changes in Fees From January 1, 2011, the International Bureau of WIPO has determined new fees for PCT international applications as follows:

- International filing fee: increased from 950 to 999 Euros

- For electronically filed applications if the request is in character coded format: changed from 143 to 150 Euros, thus bringing the filing fee for electronically filed applications from 807 to 849 Euros

- Handling fee for PCT Chapter II demands: increased from 132 to 150 Euros
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