The European Patent Office (EPO), like all major Patent Offices throughout the world, is constantly striving to become more efficient, specifically by avoiding duplication of work that may have already been performed by other Patent Offices.

To this end, in addition to participating in the Patent Prosecution Highway (PPH) program together with many of the world’s Patent Offices, EPO Examiners may ask, for individual European patent applications, that the applicant provide a copy of the search results relating to the searches performed by other Patent Offices for any parallel applications relating to the same invention (in essence, belonging to the same patent family).

Following a recent decision of the EPO President, in many cases it will no longer be necessary for the applicant to file the above search results with the EPO, as in such cases the EPO will be able to retrieve those search results itself, thanks to the ongoing and ever-expanding intra-Office cooperation trend.

Specifically, the EPO will no longer require the applicant to file a copy of the search results relating to an earlier patent application whose priority is claimed by the European patent application, if the earlier priority application was filed in the following countries not belonging to the contracting states of the European Patent Convention:
– United States of America
– Japan
– South Korea

The same will apply to the following countries belonging to the contracting states of the European Patent Convention:
– United Kingdom
– Switzerland
– France
– Belgium
– Netherlands
– Austria
– Denmark
– Spain
– Cyprus
– Greece
– Italy
– Luxembourg
– Malta
– Turkey

All of this applies irrespective of whether the European patent application is filed as such or as the EP phase entry of a PCT application.

The above development in the EPO practice is very positive for European patent applicants as there will be, in many cases, one less administrative requirement for the applicants to comply with, while at the same time putting the EPO in a position to benefit from the search results of other Patent Offices for the same invention when searching the claims of the European patent application, thus leading to the best possible prior art search by the EPO.


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ISSN 2531-4483