Information Disclosure Requirements at the EPO
The requirements to disclose relevant background art or information to the European Patent Office (EPO) are minimal and not comparable to those before the US Patent and Trademark Office (USPTO). A large number of applicants for European patent are even exempted from these requirements. As of July 1, 2021, applicants claiming priority of a Chinese first filing will be exempted too.
For any European or Euro-PCT application which claims priority of an earlier application, the European patent convention (Rule 141(1) EPC) requires the applicant to provide the EPO with a copy of the results of any prior art search carried out by the patent office in charge of the earlier application. The required copy of search results must be a copy of the official report issued by the relevant patent office, whatever its form (e.g., search report, listing of cited prior art, relevant part of the examination report). A non-official document, like a prior art listing prepared by the applicant, is not sufficient. Copies of the cited prior art do not have to be filed, and a translation of the search results in an official language of the EPO is not required.
The search results have to be filed together with the European patent application, in the case of a Euro-PCT application on entry into the European phase, or without delay after such results have been made available to the applicant. The obligation exists as long as the application is pending before the EPO. Where the search results are not provided before the substantive examination starts, the EPO will set a two-month period to file the search results or to provide a statement that no search results are available to the applicant.
According to Rule 141(2) EPC, applicants are exempted from filing said search results if they are claiming priority of either an earlier application for which the EPO carried out the search, or a first filing made in the following countries: Austria, Denmark, Japan, South Korea (ROK), Spain, Switzerland, the United Kingdom, or the United States of America.
As of July 1, 2021, this list will be extended to include: China (PRC) and Sweden.
This exemption results from agreements with the national patent offices of the foregoing countries, allowing the EPO to access the search results through electronic document exchange systems.
Information Disclosure Requirements were introduced at the EPO around ten years ago to allow the EPO to benefit from the prior art search carried out by another patent office on an invention to which a European patent application under examination relates. These requirements are limited to the official results of the prior art search. By contrast with the Information Disclosure Statement (IDS) procedure at the USPTO, the requirements at the EPO do not derive from the principle of duty of candor and good faith in dealing with the office. Accordingly, they do not extend to all the relevant prior art known by the applicants or their attorneys. Further, an increasing number of applicants have been exempted from these requirements since their introduction. It thus appears that the EPO is aware of the additional work such requirements may imply and pays attention not to place an excessive burden on the applicants.