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Wednesday Oct 03, 2012

Claim Your Exemption!

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

The World Intellectual Property Organization hosts its Fiftieth Series of Meetings of the Assemblies of the Member States this week. Being with the delegation representing the U.S. in Geneva, I’m reminded of a very important service the USPTO provides to help U.S. patent applicants comply with European Patent Office (EPO) rules if you’re also filing an application there after first filing it with the USPTO. It’s a service that saves you time and money with your European application, but this beneficial service could be in jeopardy if U.S. applicants don’t make use of it.

As you may know, Rule 141 of the European Patent Convention requires applicants to file a copy of the search results from a previous patent application to which the European patent application claims priority. This applies to all European patent applications filed on or after January 1, 2011. Because of an arrangement worked out between the USPTO and the EPO, U.S. applicants are currently exempt from a requirement to personally transmit search results for a U.S. priority application to the EPO. At no charge to you, the USPTO will electronically deliver these search results from U.S. priority applications to the EPO.

The hitch, however, is that maintenance of this exemption is dependent upon delivery of search results by the USPTO to the EPO as soon as they become available, including search results from unpublished U.S. applications. Since the USPTO is prohibited from providing information about an unpublished U.S. application to a third party without the applicant’s consent, timely delivery of pre-publication search results to the EPO requires applicants to provide the USPTO with the proper consent to release that search result information.

This is key, because failure to deliver the search results in a timely fashion could result in the EPO rescinding the exemption, and that would then require all U.S. applicants to provide the search result information to the EPO at their own time and expense. The bottom line is that if you’re filing in both offices, your participation is critical and unquestionably is to your benefit.

So what do you need to do? If you’re one of the aforementioned applicants, file a Certification and Authorization Form PTO/SB/69 in each U.S. nonprovisional application to which priority is intended to be claimed in a subsequent European patent application. (It can even be done electronically through EFS-Web.) This provides the USPTO with the necessary applicant consent to deliver to the EPO the search results from an unpublished U.S. application. File it in the U.S. application prior to filing the European 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.

The current exemption is a huge benefit for all U.S. applicants who subsequently file at the EPO. Find more details and instructions in the July 30, 2012 advisory on the EFS-Web page on our website and in the Federal Register Notice announcing this service.


Regarding the Certification and Authorization Form PTO/SB/69, if a U.S. applicant files PCT and at 30 months from the U.S. priority date enters the national phase in the EPO, is there any reason to file the Form PTO/SB/69 before entering the national phase? Technically, a PCT application is "filed" in each country or region on its international filing date (U.S. application still unpublished). But would the EPO care about search results before the national phase is entered at the EPO (most U.S. applications published by then)?

Posted by Frank H. Foster on October 03, 2012 at 01:50 PM EDT #

We recommend that you file Form PTO/SB/69 in the U.S. nonprovisional application if you intend to subsequently file in the EPO, even in those instances where you intend to file a PCT. Further questions regarding the EPO’s legal requirements under Rule 141 EPC would be best directed to the EPO. Susy Tsang-Foster Legal Advisor Office of Patent Legal Administration

Posted by Susy Tsang-Foster on October 10, 2012 at 01:33 PM EDT #

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