Important benefit for U.S. patent applicants who subsequently file a European patent application

We want our clients (especially the U.S. clients) to be aware of an important service the USPTO provides to help U.S. patent applicants comply with European Patent Office (EPO) rules, when they are also filing an application with the EPO after first filing it with the USPTO. The service creates an important exemption that saves time and money for all U.S. applicants who subsequently file a European application at the EPO.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 the applicant, the USPTO electronically delivers these search results from U.S. priority applications to the EPO.However, 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upon delivery of search results by the USPTO to the EPO as soon as they become available, including search results from unpublished U.S. applications. Since the USPTO is prohibited from providing information about an unpublished U.S. application to a third party without the applicant’s consent, timely delivery of pre-publication search results to the EPO requires applicants to provide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.  Failure to deliver the search results in a timely fashion could result in the EPO rescinding the exemption, which would then require the U.S. applicant to provide the search result information to the EPO at his/her own time and expense. Accordingly, if one is filing in both offices, active participation is critical and unquestionably is to the applicant’s benefit.So what should be done?  If you are one of these 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.  These days it can be done electronically through EFS-Web.  The filing of this form provides the USPTO with the necessary applicant’s consent to deliver to the EPO the search results from an unpublished U.S. application.  File the form 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.  Our team will be happy to provide tthis as our continued exceptional service for the interested clients.