New EPO Disclosure Requirements in Effect

Our good friends at Kilburn & Strode informed us of a recent change to Rule 141 EPC affecting the disclosure of earlier search results conducted in connection with related applications. 

Prior to the rule change, Rule 141 EPC stated that the EPO may invite an applicant to provide information on prior art taken into consideration in the examination of corresponding applications.  Effective for any European applications filed on or after January 1, 2011, new Rule 141 EPC requires applicants provide to the EPO the results of any search conducted by a national patent office or an International Searching Authority with respect to an application from which the EP application claims priority. 

Copies of these results, including search reports, listings of cited prior art and relevant parts of examination reports, must be provided to the EPO; however, copies of the cited references are not required.  It is also unnecessary to submit translations of references issued in a non-EPO language. 

New Rule 141 EPC will apply to all cases except where the first application was a:

  • UK application;
  • EP application;
  • PCT application where the EPO drew up the International Search Report; or
  • US application

If you have any questions about the new disclosure requirements, feel free to contact us.


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