|Benefit Claims, Priority, Electronic Exchange of Documents
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(164) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2011-0064]
Electronic Delivery of Search Results From the United States
Patent and Trademark Office to the European Patent Office
AGENCY: United States Patent and Trademark Office, Commerce.
SUMMARY: The United States Patent and Trademark Office (USPTO) has
recently begun electronic delivery of search results from U.S. patent
applications to the European Patent Office (EPO) to assist U.S.
applicants who later file in the EPO to comply with amended Rule 141(1)
of the EPO's implementing regulations to the European Patent Convention
(EPC). As a result, U.S. applicants subject to amended Rule 141(1) EPC
will not need to separately file their U.S. search results with the
EPO, thereby providing time and cost savings to these applicants.
FOR FURTHER INFORMATION CONTACT: Susy Tsang-Foster, Legal Advisor or
Brian Hanlon, Director, Office of Patent Legal Administration, Office
of the Associate Commissioner for Patent Examination Policy, by
telephone at (571) 272-7711 or (571) 272-5047; or by mail addressed to:
Mail Stop Comments - Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450, marked to the attention of Susy Tsang-Foster.
SUPPLEMENTARY INFORMATION: Amended Rule 141(1) EPC (Information on
Prior Art), which went into effect on January 1, 2011, applies to all
European patent applications filed on or after January 1, 2011. Amended
Rule 141(1) EPC requires applicants to file with the EPO a copy of the
search results from a previously filed patent application to which the
European patent application claims priority. See Notice from the
European Patent Office dated 28 July 2010 concerning amended Rule 141
EPC and new Rule 70b EPC - utilisation scheme, OJ EPO 2010, 410.
To assist U.S. applicants who later file in the EPO to comply with
amended Rule 141(1) EPC, in October 2011, the USPTO began
electronically providing the search results (Notice of References
Cited, form PTO-892) from examined U.S. patent applications to the EPO.
Due to the confidential nature of U.S. patent applications, however,
search results from U.S. patent applications are being provided only if
one of the following criteria is met: (1) The U.S. patent application
is publicly available (i.e., published or patented), or (2) an
authorized party has submitted written consent to transmit the search
results from the U.S. patent application to the EPO by completing Form
PTO/SB/69 and the U.S. patent application has cleared national security
review. As a result, an EPO applicant claiming priority to a U.S.
patent application that meets one of the above criteria will not need
to separately file a copy of the search results from the U.S. patent
application with the EPO. See Notice from the European Patent Office
dated 9 December 2010 concerning exemption under Rule 141(2) EPC from
filing a copy of the search results - utilisation scheme, OJ EPO 2011,
Form PTO/SB/69 titled "Certification and Authorization to Permit
Access to Search Results by the European Patent Office (EPO)" will be
available on the USPTO Web site at http://www.uspto.gov/forms/index.jsp.
A properly completed Form PTO/SB/69 by an authorized party
in accordance with 37 CFR 1.14(c) provides the USPTO with written
consent to electronically deliver the search results from an
unpublished U.S. patent application to the EPO. The Office of
Management and Budget (OMB) has determined that, under 5 CFR 1320.3(h),
Form PTO/SB/69 does not collect "information" within the meaning of
the Paperwork Reduction Act of 1995. Authorized parties for a U.S.
patent application are encouraged to submit Form PTO/SB/69 prior to the
filing of a subsequent European patent application, in which priority
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is claimed to a U.S. patent application. The EPO has agreed to maintain
the confidentiality of the unpublished search results received from the
Once a U.S. patent application is published under 35 U.S.C. 122(b),
it is open to the public, and in this instance, consent from an
authorized party for the U.S. patent application is not necessary for
the USPTO to deliver the search results to the EPO. The USPTO is
authorized to electronically deliver search results to the EPO by 35
U.S.C. 2(b)(11), which permits it to conduct programs, studies, or
exchanges of items or services regarding domestic and international
intellectual property law and the effectiveness of intellectual
property protection domestically and throughout the world, and by 35
U.S.C. 2(b)(6), which permits it to use services, records, facilities,
or personnel of a foreign patent and trademark office or international
organization to perform functions on its behalf.
This electronic delivery of search results will benefit patent
applicants who file with the USPTO and subsequently with the EPO as
they will be relieved of the effort and expense of filing a copy of the
search results from a U.S. priority patent application with the EPO.
Additionally, no fee is required for the electronic delivery of search
results from the USPTO to the EPO.
December 20, 2011 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1374 OG 250]