EPO announces exemption of Czech Republic from Rule 141(1) EPC
05 October 2022
In a recent decision by the EPO, applicants claiming the priority of a first filing made in the Czech Republic will be exempt from filing a copy of the search results for the previous application under Rule 141(1) EPC. This ruling enters into force on 3 October 2022, and will apply to any applications to which an invitation to file the search report has not yet been despatched under Rule 70b(1).
What is Rule 141?
Amended Rule 141 came into force in January 2011, requiring an applicant claiming the priority of an earlier application to provide the EPO with a copy of the results of any search report for the priority application. The main goals of this amendment were to decrease the duplication of work and so increase the speed at which patents are granted. Failure to file a copy of the search report within a set time limit can lead to the withdrawal of the application under rule 70b EPC.
How do countries gain exemption?
The Czech Republic is part of the EPO Utilization Implementation Project (UIP) enabling the confidential sharing of national search and examination results through an automated system, before the publication of the national application. This data sharing procedure allows the EPO to deem a copy of the search report duly filed under Rule 141(2) EPC.
In 2021, 203 European patent applications originated in the Czech Republic, and 133 patents were successfully granted. The country joins Austria, Japan, the United Kingdom, the United States of America, the Republic of Korea, Denmark, Spain, Switzerland, the People's Republic of China and Sweden in its exemption from Rule 141(1). Amongst these countries, the patent offices of the United States of America, Japan, the Republic of Korea and China, along with the EPO, form the IP5, allowing for the secure exchange of patent search and examination documentation between each office as part of the Patent Prosecution Highway.
Also exempt from Rule 141(1) are Albania, Belgium, Croatia, Cyprus, France, Greece, Italy, Latvia, Lithuania, Luxembourg, Malta, Monaco, Netherlands and San Marino, for which the EPO performs search reports for national applications on behalf of the respective national offices.
Future Outlook
With the continued implementation of electronic inter-office-exchange infrastructure, it seems likely that more countries will be granted exemptions from Rule 141(1) in the future. Portugal for example is also a member of the UIP. As the number of exempt countries increases, it will be interesting to see whether Rule 141 ultimately becomes redundant.
