USPTO Advisory on US Application as Priority for EPO Filing

Earlier this week the United States Patent and Trademark Office issued an Advisory to the patent bar, reminding everyone about regulations of the European Patent Office that requires search results to be filed with the EPO without delay after the search results are made available to applicants.  This arises in the situation where a European patent application filed on or after January 1, 2011 claims priority to a previously filed application.

It seems virtually certain that the USPTO is starting to notice problems associated with U.S. applicants complying with the new EPO rule mandating the electronic delivery of searches, which is what prompted this advisory reminder.

The relevant rule is Rule 141(1) EPC, which states: “(1) An applicant claiming priority within the meaning of Article 87 shall file a copy of the results of any search carried out by the authority with which the previous application was filed together with the European patent application…”  Subsection (2) goes on to say: “The copy referred to in paragraph 1 shall be deemed to be duly filed if it is available to the European Patent Office and to be included in the file of the European patent application…”

The advisory from the USPTO explains that currently applicants in the United States are exempt from the requirement that they personally provide search results for a U.S. priority application.  This exemption is attributed to a special work arrangement reached between the USPTO and the EPO.  Under this special arrangement the USPTO will electronically deliver search results from priority U.S. applications to the EPO.  The USPTO is offering this on a no-fee basis to U.S. applicants.

If you missed this announcement by the USPTO that they would undertake the electronic delivery of searches to the USPTO that is at least somewhat understandable.  The Federal Register Notice (76 FR 82279) announcing this was published on December 30, 2011, and undoubtedly went unnoticed by many, which is likely why the USPTO thought it wise to rather randomly issue an advisory.

In the Federal Register Notice the USPTO explained that the Office had began to electronically provide search results to the EPO, but that due to the confidential nature of U.S. patent applications prior to publication it would be impossible for the Office to electronically deliver search results prior to publication without express permission of the applicant.  With that in mind the USPTO explained that search results would be 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.”

In the July 30, 2012, advisory, the USPTO explained that the exemption worked out between the USPTO and the EPO to allow the USPTO to deliver search results electronically on behalf of U.S. applicants is maintained if the search results are delivered by the USPTO to the EPO as soon as they become available.  The USPTO advisory went on to say:

Because 35 U.S.C. 122 prohibits the USPTO from providing information about an as-yet unpublished application to a third party without the applicant’s consent, timely delivery of pre-publication search results requires applicant cooperation in providing the USPTO with the proper consent to release the search result information to the EPO. Failure of applicants to provide the USPTO with the required consent will prevent the USPTO from delivering the search results in a timely fashion and could result in EPO rescinding the exemption, which would require all U.S. applicants to provide the search result information to the EPO at their own time and expense.

With this in mind the USPTO is strongly encouraging applicants who intend to use a U.S. filing as priority in a later filed, corresponding EPO patent application to file Form PTO/SB/69 “prior to filing a European application that claims priority to the U.S. application…”  This will allow the USPTO to electronically deliver the search results to the EPO even if the application has not yet published in the U.S.

The USPTO also encourages applicants to make sure they use the correct document description, namely —“PTO/SB/69 – Authorize EPO Access to Search Results.” This is likely a reminder to those firms who do not use USPTO forms, but rather create their own forms for filing, which is allowed.  Nevertheless, the USPTO explains that “[i]dentifying form PTO/SB/69 using any other document description will significantly delay or prevent delivery of the search results from an unpublished U.S. application to the EPO.”


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9 comments so far.

  • [Avatar for American Cowboy]
    American Cowboy
    August 3, 2012 09:39 am

    “Germany shares American faith, that what the PTO issues after examination can’t be invalid,”

    Max, I wish a that really were the American faith. Unfortunately, we go into witch-hunts when a patent-owner asserts his/her rights, trying to find some undotted i or uncrossed t that can be used to invalidate the patent and call its owner a scoundrel and/or would-be monopolist.

  • [Avatar for MaxDrei]
    August 3, 2012 03:23 am

    Stan, it’s hard, finding the balance between quick relief for owners of infringed patents, and competitors that clear the path and are careful not to infringe any not invalid claim.

    Quick injunctive relief is great, just as long as the asserted patent survives well-informed and reasonable attacks on its validity. Germany shares American faith, that what the PTO issues after examination can’t be invalid, so enjoins Apple’s competitors this summer and yet on reflection will find Apple’s asserted patents invalid years later. Imagine the tables turned. Your licensee Stan enters the market, gets enjoined, gives up, but then find out years later that it was right all along.

    England does infringement and validity, finally and conclusively, all together, within 15 months of filing suit. It can do this only because it has English common law fact-finding (discovery and cross-examination) and, as its patent judges, people who have 20 years of experience as patent litgator advocates under their belts.

    Meanwhile, American courts wriggle, wring their hands, and then construe the claim too narrowly, or decline to enjoin.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    August 2, 2012 11:08 pm

    Hi Max-

    Interesting comparisons that you make, which is perhaps somewhat useful for some us Yankees to consider now that our laws are changing so drastically in the next 8 months. Your remarks about compensatory relief instead of punitive damages are what has been gradually happening here through court decisions, but injunctive relief has unfortunately been also gotten much harder to get to through what I consider to be bad decisions in US courts. It is what it is, so there is no sense in crying over spilt milk I suppose.

    Fortunately we have a very capable Director of the USPTO now that is trying to mitigate some of the possible damage, but there is only so much he can do about what the courts and Congress have to say in various matters.


  • [Avatar for MaxDrei]
    August 2, 2012 12:00 pm

    Not a litigator myself but I’m sure it plays a role. Of course, damages over here are compensatory rather than punitive, and quantum is invariably fixed in separate proceedings after liability has been adjudicated. Rarely does quantum ever come to trial. So we are unlikely to know, aren’t we, how big a role pre-issue compensation plays, in settling quantum. Over here, what everybody is after, primarily, is injunctive relief.

  • [Avatar for American Cowboy]
    American Cowboy
    August 2, 2012 10:48 am

    Thanks, Max. You mention “threat of compensation for infringing acts right back to the date of A publication. ”

    In your experience does that threat ever really have results in Europe? Do infringers really wind up paying for that? We have had a similar provision in the USA for about 15 years (learned from you fine folks, no doubt) and I don’t think anybody ever has paid a nickel in pre-grant royalties in the US.

  • [Avatar for MaxDrei]
    August 2, 2012 10:28 am

    Good question Cowboy. My experience with timeliness of EPO search reports is that some issue very early and some not until a lot of time has gone by. But the EPC contemplates publication of the app as filed, in a pamphlet (called the “A1” publication) that includes the EPO search report, 18 months after the earliest priority date ie 6 months after the end of the Paris Convention year. So, to meet that target, the EPO needs to hack on hard, and so needs the USPTO search report straightaway, on filing.

    Look at EE cases filed between 5 and 10 years ago. There, the delay before the EPO issues its search report can be very substantial. But the EPO is nowadays giving priority (over downstream work) to early issue of search reports. Consider medical devices currently. One gets the search report soon after filing, typically within 3 months.

    Are you in EE, I wonder?

    There is no need to wait years for an EPO search report. Just ask for expedited handling. No reason required. No fee required. But rare are the occasions when Applicants ask for such (PACE) handling. Why that? Who wants early issue? Wouldn’t you rather see what your competitors are launching before you amend. Would you not prefer to intimidate them with the wide claims of your A publication and the threat of compensation for infringing acts right back to the date of A publication. Think too about the sheer cost of the grant stage at the EPO. Few are in a rush to pay that bill.

    But ask the EPO for speed and you will likely get it (unless you are one of those corporations that includes a Demand for PACE, willy-nilly, on EVERY one of the EPO application forms it files).

  • [Avatar for American Cowboy]
    American Cowboy
    August 2, 2012 09:54 am

    Max, why does the EPO need the search results rushed to it?

    My experience is once you file in the EPO, its response is …. wait for it…. wait some more…. that’s right, the response by the EPO is slow and late. Not to pick on the EPO, though, USPTO does the same thing, as do most patent offices worldwide.

  • [Avatar for MaxDrei]
    August 1, 2012 04:43 pm

    Ring a bell? Yes, of course. But then it would, wouldn’t it, because this is an EPO initiative.

    Some US patent law firms, instructing associates of mine, are well aware of it.

    I can understand the need the USPTO perceives, to get explicit prior authority from the Applicant. Funny thing is, as far as I know, it is the only PTO in the world that bothers to gather such authority on a one by one, application by application basis. As far as I know, all the other Ofices “Just Do It!”, in bulk.

    WIPO also collects bibliographic details of patent applications as filed, I suppose. Does the USPTO supply that data to WIPO, soon after filing? Does the Chinese Patent Office. The advantage of supplying such data soon after filing dates is that it ties filing dates to filing serial numbers straight after filing, at an international supervisory body, on a public Register. This removes any temptation on any national PTO, to manipulate filing dates, after the event. This removal benefits everybody.

  • [Avatar for EG]
    August 1, 2012 03:56 pm


    Thanks for getting this information posted. As we discussed, it looks like the USPTO posted this information on its web site at a bad time (December 2011) so that it went pretty much unnoticed. Glad the USPTO sent a follow up via e-mail to those on their mailing.

    Paul Cole/MaxDrei: Does this notice ring a bell with you?