The EPO does not require disclosure of potentially relevant prior art on all patent applications, as is required for example by the United States Patent & Trademark Office. However, information disclosure requirements apply under some circumstances.
There are two parts to the information disclosure requirements at the EPO:
- During examination, the EPO can require the applicant to provide details of prior art cited by other Patent Offices on corresponding applications. A non-extendable two month period is set for response. This information is requested on individual cases rather than as a routine measure. In our experience, such requests are rarely made.
- An applicant claiming priority for a European Patent application is obliged to file a copy of the results of any search carried out on the priority application(s), subject to the exceptions below. The copy of the search results submitted must be a copy of the official document issued by the relevant Patent Office, which may be a search report or an examination report. The citations are not required, and no translation of foreign language search results is required.
The search results should, when possible, be filed with the European patent application, or when entering the European Regional Phase of a PCT application. If the search results are not provided, the EPO will set a two month period to file the search results or to provide a statement that no results are available.
No copies of search results are currently needed where:
a. the search was conducted by
- the EPO (whether on a European application, a PCT application, or a national application for Belgium, Cyprus, France, Greece, Italy, Luxembourg, Malta, Netherlands or Turkey);
- the UK Intellectual Property Office;
- the US Patent Office;
- the Japanese Intellectual Property Office;
- the Korean Patent Office;
- the Austrian Patent Office;
- the Spanish Patent and Trademark Office; or
- the Danish Patent Office. This list is subject to change from time to time. If you believe that search results may be required please ask us for the most up to date information.
b. the application is a divisional application and the requirements have been met for the parent application.