Delivery of U.S. Pre-Grant Search Results to the EPO Without Delay Requires Timely Consent From Applicants

Washington, DC. Current EPO regulations require that search results from an application, to which a European patent application filed on or after January 1, 2011 claims priority, must be filed with the EPO by the patent attorney without delay after the search results are made available to applicants. See Amended Rule 141(1) EPC (European Patent Convention). For the time being, U.S. applicants are exempt from personally providing search results for a U.S. priority application to the EPO as a result of an arrangement worked out between the USPTO and the EPO, whereby the USPTO will electronically deliver search results from priority U.S. applications to the EPO, as a no-charge service to applicants. See Electronic Delivery of Search Results From the United States Patent and Trademark Office to the European Patent Office, 76 FR 82279 (December 30, 2011).

Maintenance of the exemption, however, is dependent upon delivery of search results by the USPTO to the EPO as soon as they become available, including when search results are available prior to publication of the U.S. application. Because 35 U.S.C. 122 prohibits the USPTO from providing information about an as-yet unpublished application to a third party without the applicant’s consent, timely delivery of pre-publication search results requires applicant cooperation in providing the USPTO with the proper consent to release the search result information to the EPO. Failure of applicants to provide the USPTO with the required consent will prevent the USPTO from delivering the search results in a timely fashion and could result in EPO rescinding the exemption, which would require all U.S. applicants to provide the search result information to the EPO at their own time and expense.

Practice Tip: Inventors should timely file the Certification and Authorization form PTO/SB/69 (available at http://www.uspto.gov/forms/sb0069.pdf) in each application that is intended to form the basis for a claim of priority to a corresponding application filed with the EPO. This form provides applicant’s consent for the USPTO to deliver to the EPO the search results from an unpublished U.S. application. Applicants should file the form prior to filing a European application that claims priority to the U.S. application in order for search results to be delivered to the EPO without delay should they become available prior to publication of the U.S. application. When filing form PTO/SB/69 using EFS-Web, applicants should be careful to select the correct document description,”PTO/SB/69 – Authorize EPO Access to Search Results,” which can be found under the General Transmittal category. Identifying form PTO/SB/69 using any other document description will significantly delay or prevent delivery of the search results from an unpublished U.S. application to the EPO.