Earlier this week the United States Patent and Trademark Office issued an Advisory to the patent bar, reminding everyone about regulations of the European Patent Office that requires search results to be filed with the EPO without delay after the search results are made available to applicants. This arises in the situation where a European patent application filed on or after January 1, 2011 claims priority to a previously filed application.
It seems virtually certain that the USPTO is starting to notice problems associated with U.S. applicants complying with the new EPO rule mandating the electronic delivery of searches, which is what prompted this advisory reminder.
The relevant rule is Rule 141(1) EPC, which states: “(1) An applicant claiming priority within the meaning of Article 87 shall file a copy of the results of any search carried out by the authority with which the previous application was filed together with the European patent application…” Subsection (2) goes on to say: “The copy referred to in paragraph 1 shall be deemed to be duly filed if it is available to the European Patent Office and to be included in the file of the European patent application…”
The advisory from the USPTO explains that currently applicants in the United States are exempt from the requirement that they personally provide search results for a U.S. priority application. This exemption is attributed to a special work arrangement reached between the USPTO and the EPO. Under this special arrangement the USPTO will electronically deliver search results from priority U.S. applications to the EPO. The USPTO is offering this on a no-fee basis to U.S. applicants.
If you missed this announcement by the USPTO that they would undertake the electronic delivery of searches to the USPTO that is at least somewhat understandable. The Federal Register Notice (76 FR 82279) announcing this was published on December 30, 2011, and undoubtedly went unnoticed by many, which is likely why the USPTO thought it wise to rather randomly issue an advisory.
In the Federal Register Notice the USPTO explained that the Office had began to electronically provide search results to the EPO, but that due to the confidential nature of U.S. patent applications prior to publication it would be impossible for the Office to electronically deliver search results prior to publication without express permission of the applicant. With that in mind the USPTO explained that search results would be provided “only if one of the following criteria is met: (1) The U.S. patent application is publicly available (i.e., published or patented), or (2) an authorized party has submitted written consent to transmit the search results from the U.S. patent application to the EPO by completing Form PTO/SB/69 and the U.S. patent application has cleared national security review.”
In the July 30, 2012, advisory, the USPTO explained that the exemption worked out between the USPTO and the EPO to allow the USPTO to deliver search results electronically on behalf of U.S. applicants is maintained if the search results are delivered by the USPTO to the EPO as soon as they become available. The USPTO advisory went on to say:
Because 35 U.S.C. 122 prohibits the USPTO from providing information about an as-yet unpublished application to a third party without the applicant’s consent, timely delivery of pre-publication search results requires applicant cooperation in providing the USPTO with the proper consent to release the search result information to the EPO. Failure of applicants to provide the USPTO with the required consent will prevent the USPTO from delivering the search results in a timely fashion and could result in EPO rescinding the exemption, which would require all U.S. applicants to provide the search result information to the EPO at their own time and expense.
With this in mind the USPTO is strongly encouraging applicants who intend to use a U.S. filing as priority in a later filed, corresponding EPO patent application to file Form PTO/SB/69 “prior to filing a European application that claims priority to the U.S. application…” This will allow the USPTO to electronically deliver the search results to the EPO even if the application has not yet published in the U.S.
The USPTO also encourages applicants to make sure they use the correct document description, namely —“PTO/SB/69 – Authorize EPO Access to Search Results.” This is likely a reminder to those firms who do not use USPTO forms, but rather create their own forms for filing, which is allowed. Nevertheless, the USPTO explains that “[i]dentifying form PTO/SB/69 using any other document description will significantly delay or prevent delivery of the search results from an unpublished U.S. application to the EPO.”