Notices from the EPO concerning the exemption to provide search results according to Rule 141 (2) and the reimbursement of search and examination fees.

 

1. Notice of February 27, 2013 from the EPO concerning the exemption under Rule 141 (2) from filing a copy of the search results

Legal context

According to Rule 141 of the European Patent Convention, for a European patent application filed on or after January 1, 2011, the European Patent Office (EPO) has to be informed upon filing or without delay about the search results relating to the priority patent application(s).

Exceptions

In cases where the EPO has drawn up the search report for the priority patent application, a copy is automatically included in the file. The same applies for patent offices with which the EPO has concluded an agreement, so that also their search results are automatically included in the file of the subsequent European Patent Application.

Since April 1, 2013, the EPO is provided automatically with the search results of the Korean Intellectual Property Office.

Thus, applicants will be exempted from filing a copy of the search results under Rule 141(1) EPC if they are claiming the priority of either

- an application on which the EPO drew up a certain type of search report, or

- a first filing made in

  • Austria,
  • Japan,
  • The Republic of Korea,
  • The United Kingdom or
  • The United States of America.


2. Notice from the EPO dated January 29, 2013 concerning the reimbursement of search and examination fees

Legal context

According to the Article 9(1) of the Rules relating to the fees of the EPO, the search fee paid for a European or supplementary European search is refunded in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the Office has started drawing up the search report.

According to Article 11(b) of the Rules relating to the Fees, the examination fee is refunded at a rate of 75% if the European patent application is withdrawn, refused or deemed to be withdrawn after the examining division has assumed responsibility but before substantive examination has begun.

There has been a decision from the Legal Board of Appeal (J25/10 and J9/10), which we reported to you with our IP Alert of January 2012, that the EPO has to provide transparent facts allowing to determine the exact date at which the Examiner in charge of a file started with drawing up the search report or with substantive examination.

Solution provided by the EPO

The EPO will now provide a so-called “Search Starting Date” (SSD). The SSD is the date on which the Search Division starts its work by triggering the EPO’s internal search engine to execute a search algorithm serving as a basis to define an appropriate search strategy.

Additionally, a so-called “Examination Starting Date” (ESD) will be introduced. The ESD is the date on which the Examining Division starts its work by triggering the EPO’s internal search engine to execute an algorithm identifying the state of the art represented by earlier applications published posterior to the application date, and documents cited by other offices on applications of the same family.

For published applications, the SSD and ESD will be visible in the European Patent Register. For unpublished applications, they will be only visible at request of the applicant or by inspecting the file using private electronic file inspection.

The SSD and ESD will be introduced as of June 28, 2013.

For more details or any questions regarding the EPO’s new services please do not hesitate to contact Jacob Klinkisch.

 

Publication date : June 2013

 

 

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