Wednesday, 1 August 2012

Consent from Applicant Required to Provide Search Results to EPO

Starting January 1, 2011, EPO required an applicant to submit search results (without any delay - emphasis added) related to any priority filings (See Amended Rule 141 of EPC).  This requirement was not applicable for priority applications from US, UK and JPO as the EPO electronically received the search results directly from the patent offices of US, UK and JPO. This was made possible because of mutual agreements between the EPO with the patent offices of US, UK and JPO. 

While there is no issue with respect to delivery of search results when a US patent application has been published, the same is not true for delivery of search results for unpublished US patent applications. The issue arises because 35 USC 122 prohibits the USPTO from providing information about an unpublished patent application without the consent of the applicant. 

In order to tackle the above issue, the USPTO recently issued a notice requesting the applicants to file Certification and Authorization form PTO/SB/69 for US applications that will serve as the priority application for their European counterpart. Essentially, this form will act as the applicant’s consent and allow the USPTO to timely provide the search results of an unpublished US patent application to the EPO. Failure to file the form will prevent the USPTO from delivering the search results. The consequence of not receiving the search results on time may lead the EPO to vacate the mutual agreement between the EPO and the USPTO thereby requiring the applicant himself to provide the search results. If the applicant fails to provide the search results on time, the application may be considered as deemed withdrawn. The Certification and Authorization form PTO/SB/69 should be filed before the corresponding European patent application is filed at the EPO.

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