Until January 1, 2011, the EPO did not require applicants of European applications to file the results of searches carried out by other Offices for the same invention. In fact, the EPO has always taken pride in its own search engine and scientific literature library and highly valued its own prior art searches. While this surely has not changed, the EPO has now decided to also take into consideration searches carried out by other Offices, so as to also benefit from an exchange of information relating to already carried out searches.

Thus, for any European applications which claims priority from an earlier application, as of on January 1, 2011 the EPO has started requiring the submission of the priority search report. Applicants will need to file the priority search report when filing the European application or entering the European phase, unless the priority search report is not yet available at that time. In this latter case, the EPO will ask the Applicant for a copy of the priority search report in the course of the European examination.

To simplify things, according to the EPO it will not be necessary to file the priority search report if it was prepared by the Japan Patent Office, the United Kingdom Intellectual Property Office and the US Patents and Trademark Office. Indeed, if the priority search report is drawn up by one such Office, then the EPO will obtain the search report directly from the relevant Office (via an intra-Office electronic environment).

As a further simplification, the EPO has also indicated that the priority search report will need to be filed in the form in which it was issued by the priority Office – in other words, no special EPO form will need to be filled out, nor will it be necessary to provide a summary of the prior art or a copy thereof. It will not even be necessary to file a translation of the priority search report, not even if it not in one of the three EPO languages (English, German or French).

Thus, the EPO expects the submission of the search report to require the least amount of intervention by the Applicant, so as to ensure that the most “objective”, unfiltered reproduction of the priority search report reaches the EPO.

In the future, we may therefore see the EPO relying more and more on prior art retrieved by other Offices when searching and examining European applications. While the now required disclosure is therefore limited to prior art retrieved by the priority Office, this new change in the European Patent Convention does seem to take the EPO a small step closer to the information disclosure requirement we all know from the US patent world.

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