It is quite well-known that the European Patent Office takes great pride in its searching capabilities, also because of a particular proprietary search engine.

Nevertheless, in recent times the EPO has decided to avail itself of the searches prepared by other Offices as well, possibly as an additional source of prior art and/or information on the technology relating to a certain invention.

As a result, where a given European application claims priority from an earlier application, the applicant is supposed to file also a copy of the results of any search carried out by the Office with which the priority application was filed. The results of such search should be filed together with the European application, or at EP phase entry if the European application is based on a PCT application. If the search results are not available at that time, the applicant should submit them as soon as they are available.

So as to make the procedure more efficient, the EPO has also decided, in even more recent times, that in certain scenarios it is not necessary for the applicant to actually file a copy of the search results of the priority application.

In a first scenario, this is not necessary if the search results are available to the EPO and can thus be automatically included in the EPO’s file of the relevant European application, i.e. where the EPO itself has drawn up certain types of search report on the application whose priority is claimed. In such cases, the applicant is of course exempted from having to file the copy of the search results himself.

The types of search report contemplated in the above scenario are European search reports (if the European application claims priority from an earlier European application), international search reports (if the European application claims priority from an international application and the EPO acted as International Searching Authority), international-type searches and, last but not least, search reports made by the EPO on behalf of a national Office on a national application (this is the case for Belgium, France, Italy, the Netherlands, Cyprus, Greece, Luxembourg, Malta, and Turkey).

Furthermore, and even more importantly, the EPO President has decided that the EPO will include a copy of the search results in the file of a European patent application, thereby exempting the applicant from having to filing the copy himself, also in the cases where the European patent application claims priority from an application filed
● in the US,
● in Japan,
● in the Republic of Korea,
● in Austria,
● in the United Kingdom and
● in Denmark.

Therefore, applicants of European applications are exempted from having to file a copy of the search results if their European applications claim priority from an application on which the EPO drew up the above-mentioned types of search report, or from an application filed in any of the above-listed countries.

This is surely a most welcome and cost-effective simplification for applicants of European applications, as it means that in many cases fewer documents must be supplied by the applicants to the EPO.


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