January 2011
The latest European Patent Office (EPO) rule change requires an applicant to file a copy of the search report for any priority application. The rule applies to all applications with a filing date on or after 1 January 2011.
The applicant should submit the copy when filing a European application or entering the European regional phase of a PCT application. If it is not available, it must be submitted as soon as possible. If it is not, the EPO may ask for it.
The applicant does not have to file a copy of the search report where:
• the priority application is a European, UK, US or Japanese application, or
• the EPO carried out the search (on behalf of another patent office),
because EPO will already have access to these.
The EPO requires a copy of the search report (or an office action listing the prior art) only. The EPO does not need copies of the prior art citations, or translations of any search report in a non-official language of the EPO.
The new EPO rule is not as strict as, for example, the USPTO’s duty of candor. The EPO rule only applies to the search of the priority application(s) and not to searches of any other non-EPO patent applications in the same family.