Practice Note on US/EPO Patent Family Prosecution

Guest Post by Gwilym Roberts (UK) of Kilburn & Strode LLP

The USPTO delivered an advisory on 30th July 2012 urging US practitioners to file Form PTO/SB/69 effectively releasing search results from an unpublished US patent application for delivery to the EPO.  Practitioners in Europe have become aware of this because of the flurry of queries they have received subsequently from US attorneys requiring clarification! 

The relevant EPO provision is Rule 141 EPC.  Rule 141(1) is the key provision which entered into force on 1st January 2011 requiring applicants filing a European patent application claiming priority to additionally file a copy of the results of any search on the application from which priority was claimed.  However under Rule 141(2) the EPO can make special arrangements and US Federal Register Notice 2011-33539 notes that the USPTO has agreed with the EPO to provide the search results directly.  As a result, the EPO, prior to entry into force of the new rule, confirmed to users that they did not need to provide priority search results for US originating cases.  Hence, as far as European Patent attorneys are concerned, when we file a European patent application claiming priority from a US patent application there is no obligation on us, under EP law, to additionally provide search results from the original US application.

Before we get on to the new complexities following the USPTO advisory, as a final point Rule 141(3) does permit the European Patent Office to additionally request copies of search results from related cases.  In practice we are seeing this invoked in only very few instances. 

The complexity had come, as noted in the Federal Register Notice, because, of course, most if not all US patent applications will not have been published at the time a European application is filed claiming priority, meaning that the search results are not publically available.  As a result, Form PTO/SB/69 needs to be filled out for any US case in which an EP priority is likely to be claimed.  In practice this has not been happening, it would appear, hence issuance of the advisory pleading with US attorneys to fill out the form.  Of course the form is discretionary not obligatory and it may well be that in some instances applicants are not happy for their information to be released before publication of the patent application.  But the implication of the advisory notice is that if the situation is not remedied, the EPO exemption may be lifted meaning that on every EP case filed claiming priority from the US, the US search results need to be filed which will of course add to the burden and cost of the process.  It's not clear whether there has been discussion to that effect between the EPO and the USPTO, nor what prompted the appearance of the advisory. 

So what does this mean for US attorneys?  At present, whether or not the form is filed on the given case has no effect on the legal situation in Europe – European patent attorneys are not obliged to independently file copies of the priority search results by virtue of the notice from the EPO President.  Given that in due course the US application will be published the practical effects of not filing the form are likely to be either that processing of the European application is delayed until publication of the US application from which it claims priority, or that the EPO will start invoking Rule 141(3) and independently asking for the search results.  Longer term, however, we may see the exemption being lifted with the ensuing problems as described above. 

So for now perhaps the answer is, going forwards, and with applicant consent, to file the form, given that the results will be publically available at 18 months anyway.  However if the applicant is uncomfortable then this needs to be taken into account although it's worth noting that the search results will not become visible from the EPO earlier than 18 months either as it is subjected to the same non-publication period.  Questions have been raised as to whether it is necessary to file back dated release forms for applications already filed.  There will be no need to do this for applications that have been published but more generally this does not appear to be something the USPTO Advisory is requesting.

As regards the USPTO, it is clearly taking the correct legal line in terms of applicant interest.  But looking at other offices the approach taken by the UKIPO is certainly more straightforward – when requesting search on patents form 9A there is a box to be ticked requesting consent for sharing search information confidentially but note H indicates that in any event they are obliged to provide some information before publication to the EPO.  In other words, they just do it.  The relationship between EP law and UK law is far closer and intertwined, or course, but what a simple solution!

Summary

  • It is necessary to provide search results from US applications in relation to EP applications claiming priority from them, but this is done automatically by the EPO 
  • The USPTO can only send the priority search documents pre publication with applicant consent which it is now pleading with users to provide
  • From an EP perspective there is no legal obligation for US applicants to provide such a consent
  • But the long term result otherwise may be that the EPO no longer automatically obtains copies of US search results adding to the burden of the applicant, so it is worth doing, with client consent
  • There seems no need to retrospectively provide consent on existing applications.

7 thoughts on “Practice Note on US/EPO Patent Family Prosecution

  1. Oh, but EPO examiners are most certainly not going to rely on the wisdom of their American counterparts. They are still expected to carry out their own search anyway, under their own responsability, and they have seen enough USPTO international searches already to put too much faith into the work of others…It’s like the EPO’s implementation of the PPH, which is a huge joke: it just brings incoming files into the PACE accelerated examination programme, which can otherwise be requested by a simple letter, without any additional fee, and which shifts most constraints onto the applicant, not the office.

    All these “work-sharing” arrangements are pushed from the top by management that (somewhat optimistically) expects big productivity gains. On the workfloor, on the other hand, I’m quite sure that there’s general groaning at the prospect of having to go through a thicket of foreign citations before starting with their own search anyway.

  2. Les,

    Not arguing with you, merely pointing out the following things:
    1) A large backlog at every office.
    2) Worksharing announcements by ever office.
    3) Creation of the common citation system.
    4) PPH (Patent Prosecution Highway).
    5) Harmonization.
    6) CPC (Cooperative Patent Classification).
    7) Political pressure to reduce #1 above.
    Based on that, where do you think the patent offices are heading?

  3. Given that the US case publishes 18 months after the initial filing in any case, I can’t see how the patent owner can effectively refuse to comply with the EPO rule, except to the extent that the patent owner can delay the sharing of this information until the publication automatically occurs at 18 months.

    But since most US applications enter the EPO at one year at the earliest, and often after PCT filing at 30 months, I can’t see how this would become relevant. The number of cases in which the EPO search is conducted prior to the 18 months elapsing, and the US first office action/search has also be completed within that timeframe should be pretty small.

  4. Perhaps each Patent Office (and especially the EPO) should do it’s own D@#$ search and not rely on the nonsensical search results generated by other offices (especially the USPTO)…. Or is the second office going to start refunding search and examination fees when all they do is parrot another office?

  5. Perhaps the USPTO should amend its rules to state that by filing a foreign counterpart and claiming priority to a US application, the applicant consents to the USPTO disclosing search results to the foreign patent offices. The USPTO could give applicants the option of requesting non-sharing, and could require a fee to do so.

  6. Denis,
    (i) thank you for your blog
    (ii) No penalty for the patent owner

    The penalty for not complying with Rule 141(1) EPC is that the patent application is deemed to be withdrawn (Art 124(2) EPC). The EPC does not contain provision about the consequences, after the grant of the European patent, of not compliance with R141(1) during the examination.

    There is no provision in the EPC regarding the special situation where the lack of compliance with Rule 141(1) is made intentionnaly. I guess that the EP attorney is exposed to disciplinary sanctions (provided he’s aware of the applicant’s intention).

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