Filing in EPO with a priority claim to a US application? If so, read this!

Sometimes when you log in at EFS-Web there will be a sort of “announcement of the day” on the main EFS-Web page.  Recently there was an announcement that said that US patent applicants need to be sure to file Form PTO/SB/69 to avoid getting in trouble with the European Patent Office.  I had never heard of Form PTO/SB/69 and had no idea that without it there was some risk of getting in trouble with the EPO.  So I looked into the matter and spoke with people at EPO and at USPTO about this.

Maybe you already know all about Form PTO/SB/69 in which case no need to read further.  Otherwise I invite you to read on.

The starting point for all of this is EPO’s rule 141, which EPO promulgated in July of 2010.  This rule, now more than four years old, imposes upon all applicants in the EPO a duty to disclose to the EPO any search results developed during the prosecution of a non-EPO priority application.  So for example if you file a non-provisional application in the USPTO, and if later you file in EPO claiming priority from that US application, you are under a duty to let the EPO examiner hear about the references that were cited by the USPTO examiner.  Basically this means that if you received Form PTO-892 from the USPTO examiner, you need to pass along that Form PTO-892 to the EPO examiner.

The interesting part is that USPTO and EPO worked out a way that US applicants could be exempted from this paperwork burden. You can see a decision of the President of the EPO dated December 9, 2010 exempting filers of US priority applications from the duty to disclose search results.  The concept is that when EPO receives a patent application claiming priority from a US patent application, EPO will go and ask USPTO for the Form PTO-892. USPTO will provide it to EPO.  This will save the applicant from the fuss and bother of having to download the Form PTO-892 from PAIR and having to forward the Form PTO-892 to European counsel and having to pay a bill for services from European counsel for sending the Form PTO-892.

The hitch is, what if by some chance the USPTO examiner has examined the case chronologically prior to the date that the USPTO publishes the US patent application?  In such a case, EPO would ask USPTO to please provide the Form PTO-892 but USPTO would be unable to provide it.  This is, of course, because (pursuant to 37 CFR 1.14) the application is held in confidence within the USPTO until such time as the application is published or issued.

At some point after the December 9, 2010 decision of the EPO President, the USPTO realized that indeed at least every now and then a USPTO Examiner might examine an application prior to USPTO publishing the application.  This led to a Federal Register Notice of December 30, 2011 announcing Form PTO/SB/69.  And then I guess USPTO noticed that not very many filers were actually filing Form PTO/SB/69, which prompted a blog posting of October 3, 2012 by Director Kappos urging filers to file Form PTO/SB/69.

Which is what brings us to Form PTO/SB/69.  This is the form by which a US applicant can give USPTO permission to pass along the Form PTO-892 despite the application having not yet been published.  If you are filing a US patent application, and if you think there is some chance you might later use this US patent application as a priority application in the EPO, then you might want to include Form PTO/SB/69 when you file your US patent application.  Practice tip:  when filing Form PTO/SB/69, be sure to e-file it, and be sure to use the correct document code which is “PTO/SB/69 – Authorize EPO Access to Search Results”.

The other possibility is that the examination by the USPTO examiner happens chronologically after the date that the USPTO publishes the US patent application.  In that case it does not matter whether the applicant did or did not file Form PTO/SB/69 because at that point the Form PTO-892 is a public record anyway, so USPTO can freely hand it over.

Many questions come to mind at this point.

I don’t expect any Office Action in my case until well after the application gets published.  Why is Form PTO/SB/69 needed at all?  This is a very good question.  Once the application is published, the application will be visible in Public PAIR.  Anyone (not just the EPO) that has any interest in the application could at that point obtain any Form PTO-892 from Public PAIR.

And indeed even if the applicant fails to file Form PTO/SB/69 at all, if the USPTO Office Action does not happen until after the US publication, then the failure to file Form PTO/SB/69 is a “no harm no foul” sort of failure.

What happens if I file Form PTO/SB/69 and I never actually get around to filing a patent application in EPO that claims priority from my US application?  This is also a very good question.  As I understand it from a USPTO person that I spoke with, the EPO will pick up the Form PTO/SB/69 in a sort of automated way when it picks up everything that is available to the EPO on that day.  I also understand that EPO maintains the picked-up information in confidence within the EPO for any given US patent application until such time as that US patent application gets published.

What happens if I fail to file Form PTO/SB/69 and the USPTO happens to examine the application prior to US publication?  Will this jeopardize the EP patent application?  As I understand it from an EPO person that I spoke with, if EPO notices that (a) there is a priority claim to a US application and (b) the EPO has not received any search results from USPTO under this program, then EPO will write a letter to the applicant reminding the applicant of the obligation to disclose the US search results.  The applicant will then have a period of time within which the applicant can manually remedy the lapse by manually handing in a copy of the Forms PTO-892 from the US priority application.  Or, if at that point the US application had still not been examined, then the applicant may respond to the EPO inquiry with a report that there is nothing to report.

So is it really important to file Form PTO/SB/69?  Well, some US applications do get examined right away, for example those that are on Track I.  Another example would be a US application that happens to have been assigned to an Art Unit that has very little work to do and has a very short First Office Action Prediction.  In such cases, if it is contemplated that a later filing in EPO might claim priority from such a US application, then yes Form PTO/SB/69 ought to be filed.

In my phone calls with EPO and USPTO people, I learned that an entire proposed rulemaking about this has recently come and gone, and I had missed it somehow.  In a Federal Register notice of July 11, 2014, USPTO proposed to flip from the present “opt-in” approach of Form PTO/SB/69 to an “opt-out” approach.  If the applicant were to include an Application Data Sheet on USPTO’s official form, as of some future date the ADS would include language communicating a consent to disclosure of Forms PTO-892 to EPO except in the special case where the applicant goes to the trouble to check a box withholding such consent.  Since ADSs of this kind get filed in well over 80% of US non-provisional patent applications, this would go a long way towards minimizing how often EPO would ask for search results and not get them.

Comments in response to the July 11, 2014 Notice were due by September 9, 2014.  You can see the comments that got filed.

I asked a USPTO person when USPTO might get around to promulgating Final Rules in this particular rulemaking.  What this person mentioned is that the gating factor might be how long it will take for IT (information technology) people at USPTO to implement the needed new features in USPTO’s systems.

So anyway maybe some time in early 2015, you won’t need to file Form PTO/SB/69 any more because the ADS will take care of the needed EPO consent.

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