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Rule 141 EPC: some good news

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

As from 1 January 2011 Rule 141 EPC, as modified by Administrative Council decision CA/D 18/09, will require applicants to supply search results relating to any priority filings. On the face of it, this adds yet another burden on applicants that they could well do without.  When the IPKat first saw the new Rule, he immediately thought it was quite pointless and unnecessary.  With patent offices around the world becoming increasingly interconnected, wouldn't such an additional requirement being placed on the applicant be a backwards step?  If patent offices can communicate with each other directly, why is there a need to supply information that has been provided by one via (probably at least two) intermediates?  Why not simply cut out the middlemen and send what is required directly, and online?

Fortunately, this does in fact already happen.  In the case of supplying certified copies of priority documents, the requirement under Rule 53(1) EPC for the applicant to supply a copy does not apply where the priority filing was made in Japan, Korea, the US or at the EPO, according to a decision of the President dated 17 March 2009.

Now we can be relieved even before the new year that, in many cases, the new form of Rule 141 will not have any effect on applicants due to another decision of the President dated 9 December 2010.  According to this decision, the EPO will be able to get search results for priority applications filed at the US, UK or Japanese patent office.  The IPKat suspects that others will join, once the relevant agreements have been signed.

The IPKat now wonders what the point was of the new form of Rule 141, if the ultimate aim was apparently to make such a requirement superfluous.  Can anyone enlighten the, now quite puzzled, IPKat?

Full post as published by IPKat on December 11, 2010 (boomark / email).