With the beginning of the year 2011, two new rules of the European Patent Convention came into effect, namely new rule 70b as well as the revised rule 141 EPC. According to the new rule 141 EPC, the applicant must file, along with the European patent application, the search results for the previous application whose priority is claimed by the European patent application. The above also applies for the entry of the European regional phases of PCT applications for priorities claimed by the PCT application. Accordingly, when introducing the European regional phase, the search result concerning the previous application, whose priority is claimed by the PCT application, must also be filed. Furthermore, the European Patent Office can also request the applicant to indicate further prior art known to him concerning the European patent application.

Filing the search results concerning a previous patent application is not necessary in case the European Patent Office already has access to the search results, e. g. when search has already been conducted by the EPO or by agencies which exchange with the European Patent Office the search results electronically. According to the resolution of the president of the European Patent Office the obligation of the applicant to file a copy of the search results is withdrawn in case of priority applications in Japan, the United Kingdom and the USA.

The search result concerning a previous patent application must be filed as a copy of the official search report. Mere specification of prior art which has been indicated by a patent office for a previous application is not enough. The official search report or the examination action which is available in another language than the official languages of the European Patent Office, however, does not need to be translated.

In case no search results concerning a previous application whose priority is claimed by the European patent application are available to the European Patent Office at the beginning of the examination procedure, the European Patent Office can, according to the new rule 70b, request the applicant to declare within a period of two months that no appropriate search results are available, as the patent office probably has not conducted any search concerning the previous application, or that the search results have not been communicated yet. Alternatively, interim available search results can be filed within the period of two months. In case no response or search results are filed within the period of two months, the European patent application is considered to be withdrawn.

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