EPO designated or elected

Principle

A European patent may be obtained via the international route (A153(1) EPC in accordance with A4.1.ii PCT and A45.1 PCT).

Designation of the EPO for a State

However, the EPO may only be a designated or elected Office for a State if, at the time of the filing of the international application (J30/90), that State:

  • is a contracting State of the EPC and
  • is designated in the international application.

Mandatory designation of the EPO for certain States

For certain countries, it is not possible to obtain a patent via the international route without designating the EPO for the purpose of obtaining a European patent (Applicant’s Guide, Annex B1, in accordance with A4.1.ii PCT and A45.2 PCT):

  • Belgium,
  • Cyprus, France, Greece, Ireland, Italy, Latvia, Malta, Monaco, Netherlands,
  • Slovenia.

For other States, the designation of a State is made both for the purpose of national protection and for a European patent (e.g., United Kingdom) (in accordance with A45.1 PCT): at the national level, each country may decide whether there is a cumulation of protections (A139(3) EPC).

Effects of entering the national phase

File inspection

At the international stage, the EPO as an IPEA may not make files available to third parties (A38.1 PCT and R94.2 PCT) except:

  • for the applicant or a person authorized by them;
  • for elected Offices after the establishment of the IPER (R94.2 PCT).

However, as an elected Office, the EPO allows access to the international application file upon publication of the application (« Access to PCT files« , OJ 2003, 382 in accordance with R94.3 PCT): it is not necessary for the applicant to have indicated their intention to enter the European phase.

The conditions for file inspection are the same as for a European application.

Provisional protection

Principle

Provisional protection is generally provided upon international publication (A153(3) EPC in accordance with A29.1 PCT) in an official language of the EPO (A153(3) EPC in accordance with A29.2 PCT).

Entering the national phase

There is therefore no requirement to enter the national phase, provided that the application has been published in an official language of the EPO.

If the national phase is never entered, the protection shall be deemed never to have had effect (A67(4) EPC, since the patent application shall be deemed withdrawn under R160(1) EPC) and a notification shall be sent to the applicant (who may then request a decision under R160(2) EPC together with R112(2) EPC).

International publication in a non-official language

If the application is not published in French, English, or German, provisional protection is only granted from the time the translation is provided and published by the EPO (A153(4) EPC in accordance with A29.2 PCT).

This publication requires that the international application has entered the European phase (R159(1)(a) EPC and Guidelines E-IX 2.5.1).

State of the art under A54(3) EPC

For an international application to form part of the state of the art under A54(3) EPC, it must have entered the European phase.

I refer to this diagram from the article « Novelty » to detail the « Euro-PCT » section:

EDT
  1. If the disclosure is a Euro-PCT application (and meets points 7 to 9 below), it must be determined whether the application whose patentability is in question was filed internationally before December 13, 2007 (i.e., the entry into force of the EPC 2000); otherwise, the document is an A54(3) EPC document.
  2. If the application whose patentability is in question was filed before December 13, 2007 (and meets points 7 to 9 below), it is then necessary to verify that the conditions set out in the EPC73 are met regarding the prior art application:
    • The opposability of the prior art application is assessed country by country: to be opposable in a country, it is necessary that this prior art application has validly designated that country (A54(4) EPC73).
    • If the prior art application is a simple EP application:
  • These official fees must be paid within a period of 6 months from the date of the mention of the publication of the European search report (A79(2) EPC73).
  • If this period is missed, a notification is issued and a period of 1 month then begins to make this payment with an additional official fee (R85bis EPC73).
  • If the prior art application is a Euro-PCT application (A158(1) EPC73 and A158(2) EPC73):
    • It is necessary to pay the national fee of R106 EPC73, i.e., the filing fee and the designation fees;
    • The designation fees may in any event be paid within a period of 31 months (R107(1) EPC73) or within a period of 6 months from the date of the mention of the publication of the international search report (whichever period expires later).
  • If the disclosure is a Euro-PCT application, it is necessary to check whether it was pending (i.e., still in the international phase) on December 13, 2007 (i.e., the entry into force of the EPC 2000);
  • If this application was still pending on December 13, 2007, the EPC 2000 applies and it must be checked whether this application has the value of a regular European application (A153(2) EPC) under the EPC 2000 conditions (A153(5) EPC together with A153(3) EPC, A153(4) EPC, and R165 EPC):
    • It is necessary to file a translation of the PCT application if it is not in one of the EPO official languages (A153(4) EPC);
    • It is necessary to pay the filing fee of R159(1) c) EPC.
  • If this application was no longer pending on December 13, 2007, the EPC 1973 applies and it must be checked whether the conditions for entry into the EPC 1973 national phase were met (A158(1) EPC73 and A158(2) EPC73), i.e., within 31 months:
    • It is necessary to file a translation of the PCT application if it is not in one of the EPO official languages;
    • It is necessary to pay the national fee of R106 EPC73, i.e.:
      • the filing fee and
      • the designation fees;
    • The designation fees may be paid within a period of 31 months (R107(1) EPC73) or within a period of 6 months from the date of the mention of the publication of the international search report (whichever period expires later).

    • General information on entry into the European phase

    Steps for entry into the European phase

    Entry into the European phase can be made using Form 1200, although its use is not mandatory.

    Entry into the European phase can be made online using the EpoLine/CMS software or the online form (« Decision of the President of the European Patent Office, dated May 9, 2018, on the electronic filing of documents« , OJ 2018, A45).

    Time limits for entry into the European phase

    Principle

    The time limit for entry into the European phase is 31 months from the priority date (R159(1) EPC in accordance with A22.1 PCT and A22.3 PCT if the EPO is the designated Office, A39.1.a PCT and A39.1.b PCT if the EPO is the elected Office).

    Extension of time limit for entry into the national phase

    The provisions of R134 EPC apply to the time limit for entry into the national phase under R159 EPC.

    Early entry into the national phase

    Normally, even in the case of early entry into the national phase, the EPO does not process the application unless the applicant expressly requests it (« Notice from the European Patent Office dated 21 February 2013 concerning the request for early processing« , OJ 2013, 156 in accordance with A23.2 PCT or A40.2 PCT).

    If the express request for early entry into the national phase is submitted before the publication of the international application, the applicant or the EPO must additionally request the IB to communicate the documents of the application pursuant to A20 PCT (A23.2 PCT or A40.2 PCT together with R47.4 PCT).

    No specific form is required for this request.

    The applicant must then comply with the national phase entry requirements mentioned below (e.g., pay the filing fee, the additional fee if the application comprises more than 35 pages, file a translation, specify the documents of the application, and pay the search fee) (« Notice from the European Patent Office dated 21 February 2013 concerning the request for early processing« , OJ 2013, 156).

    Requirements for entry into the European phase

    Filing fee

    Principle

    This requirement is set out in R159(1)(c) EPC.

    Basic fee

    The national fee (under A22.1 PCT and A39.1(a) PCT) is the filing fee under A78(2) EPC together with R159(1)(c) EPC.

    This official fee is (A2(1).1 RFees):

    • 115 € if the entry into the national phase is filed online;
    • 200 € if the entry into the national phase is not filed online.

    Official fee for more than 35 pages

    Furthermore, an additional filing official fee must be paid if the application exceeds (strictly) 35 pages and if the international application enters the European phase after April 1, 2009 (« Notice from the European Patent Office dated January 26, 2009, concerning the fee structure in 2009« , OJ 2009, 118).

    The additional official fee is set out in A2(1).1bis RFEE (14 € per page strictly above 35).

    The number of pages is calculated based on (« Notice from the European Patent Office dated January 26, 2009, concerning the fee structure in 2009« , OJ 2009, 118):

    • the international application as published;
    • any amendments after receipt of the ISR (A19 PCT);
    • one page for the abstract;
    • one page for the bibliographic data even if it spans more than one page;
    • amendments submitted upon entry into the European phase (A34 PCT) if they are available to the EPO by the date of payment of the additional official fee and if the payment date falls within the 31-month time limit;
    • if the applicant indicates that new pages replace the claims, the old claims are not taken into account and the new pages are taken into account, but only if this indication occurs before payment of the additional official fees and within the 31-month time limit.

    If the international application has not been published in an official language (« Notice supplementing the Notice from the European Patent Office dated January 26, 2009, concerning the fee structure in 2009« , OJ 2009, 338), the same principles apply, but amendments upon entry into the European phase (A34 PCT) must be submitted directly in an official language.

    Time limit

    The filing official fee (including the additional official fee for more than 35 pages) must be paid within the 31-month time limit (R159(1)(c) EPC).

    Sanction

    In case of failure to comply, the application shall be deemed withdrawn (R160(1) EPC in accordance with A24.1.iii PCT or A39.2 PCT).

    The EPO shall then notify the applicant of this loss of rights (R160(2) EPC). The applicant may then request a decision (R160(2) EPC together with R112(2) EPC).

    Legal remedies

    Principle

    A121 EPC applies to the 31-month time limit (« Notice from the European Patent Office dated 26 January 2009 concerning the fee structure for 2009« , OJ 2009, 118, Guidelines E-IX 2.1.3).

    The amount for further processing is calculated based on the number of pages in the file at the expiry of the time limit (Guidelines A-III 13.2).

    It is also possible to benefit from the provisions of R49.6 PCT, which allows, in the event of failure to perform one of the acts for entry into the national phase, reinstatement of rights if the failure to observe the time limit occurred despite due care required by the circumstances having been taken (« Notice from the European Patent Office dated 7 November 2007 concerning the withdrawal of reservations under the PCT« , OJ 2007, 692).

    The requirements in terms of evidence are quite similar to those of A122 EPC (R49.6.c PCT and R49.6.d.ii PCT).

    Multiple legal remedies in case of failure to comply with national phase entry requirements
    Multiple legal remedies in case of failure to comply with national phase entry requirements

    The request for reinstatement of rights must be filed within 2 months from the removal of the impediment, but no later than 12 months from the expiry of the 31-month time limit (R49.6.b PCT).

    A reinstatement fee must be paid (equal to the restitutio fee): 610 € (A2(1).13 RFees in accordance with R49.6.d.i PCT).

    Restitutio in integrum versus R49.6 PCT

    Since restitutio in integrum (A122 EPC) is also possible for the time limit under A121 EPC, one might think that the provisions of R49.6 PCT are redundant… (since the time limit under A122 EPC expires, by definition, after that of R49.6 PCT).

    This is not entirely true…

    Indeed:

    • the legitimate reasons that may allow restitutio in integrum (A122 EPC) relate to the acts of further processing (i.e., due care must be exercised in relation to the acts that should have enabled further processing);
    • the legitimate reasons that may allow reinstatement under the PCT (R49.6 PCT) relate to the acts of entry into the national phase (i.e., due care must be exercised in relation to the acts that should have enabled entry into the national phase).

    Designation fee

    Principle

    This requirement is set out in R159(1)(d) EPC.

    Amount

    The designation fee (R159(1) d) EPC together with A79(2) EPC and R39(1) EPC in accordance with R49.1.a PCT or R76.5 PCT) is 1 280 € (A2(1).3 RRT).

    Time limit

    In principle, the designation fee must be paid (longer of the two time limits, R159(1) d) EPC):

    • within the 31-month time limit;
    • within the 6-month time limit from the international publication of the ISR (A153(6) EPC together with R39(1) EPC, only applicable if the ISR is published 25 months after the priority).

    Sanction

    Otherwise, the application shall be deemed withdrawn (R160(1) EPC).

    The EPO shall then notify the applicant of this loss of rights (R160(2) EPC). The applicant may then request a decision (R160(2) EPC together with R112(2) EPC).

    Legal remedies

    A121 EPC applies to the 31-month time limit (Guidelines E-IX 2.1.3).

    R49.6 PCT is not applicable, since the designation fee is not part of the national fee referred to in A22 PCT, which alone allows for re-establishment of rights (EuroPCT Guide 5.8 point 5.8.007).

    Annual fee for the 3rd year

    Principle

    The annual fee due for the 3rd year must be paid within the 31-month time limit from the priority (R159(1) g) EPC) if this deadline has expired.

    Thus, no fee is due:

    • if the international application is a priority application;
    • if the time gap between the filing of the priority application and the filing of the international application exceeds 7 months.

    Additional official fee for late payment

    If the 3rd-year official fee is not paid on time, it may still be paid with an additional official fee within a period of 6 months (R51(2) EPC).

    If the due date for payment of the third-year official fee has expired, the 31-month period triggers the period for payment with an additional official fee (by extending the 31-month period if it falls on a day when one of the EPO offices is closed, as it is a composite period, J1/89 and Guidelines A-X 5.2.4).

    If the due date for payment of the third-year official fee has not yet expired, the calculation of the 6-month period is carried out as usual, i.e., using the « ultimo-ultimo » principle described in the article on payment of annual fees.

    Payment of the 3rd-year official fee for a EuroPCT application
    Payment of the 3rd-year official fee for a EuroPCT application Payment of the 3rd-year official fee for a EuroPCT application

    Sanction

    If the annual official fee is still not paid, the application is deemed to be withdrawn (A153(2) EPC together with A86(1) EPC).

    Legal remedies

    Only A122 EPC is applicable to the 6-month period.

    Search fee

    Principle

    A search fee must be paid if a search report is to be drawn up (see below, A153(7) EPC together with R159(1) e) EPC).

    This fee must be paid within the 31-month period from the priority date (R159(1) e) EPC).

    Amount

    By default, the amount of this fee is 1165 € (A2(1).2 RFees) for applications filed as of 1 July 2005.

    Reduction of the search report official fee

    In certain situations, the search official fee is reduced:

    • there is an exemption from the supplementary search (and thus no official fee is due) if:
      • the ISA or the SISA is the EPO (« Notice from the European Patent Office dated 6 February 2012 concerning search and examination fees« , OJ 2012, 212, point 3.a));
      • the ISA, for a filing made before 1 July 2005, was (« Notice from the European Patent Office dated 6 February 2012 concerning search and examination fees« , OJ 2012, 212, point 3.b)):
        • the Swedish Patent Office,
        • the Austrian Patent Office,
        • the Spanish Patent Office.
    • there is a reduction of 1 420 € of the supplementary search official fee (which is 1 775 €), A2(1).2 RFees) if the filing was made after 1 July 2005 and if the ISA is (« Decision of the Administrative Council of 16 December 2015 reducing the fee due for supplementary European search when the international search report or the supplementary international search report has been drawn up by the Austrian Patent Office, the Spanish Patent and Trademark Office, the Finnish Patent and Registration Office, the Swedish Patent and Registration Office, the Nordic Patent Institute or the Visegrad Patent Institute (CA/D 8/15)« , OJ 2016, A2):
      • the Austrian Patent Office,
      • the Finnish Patent Office,
      • the Swedish Patent Office,
      • the Spanish Patent Office,
      • the Nordic Patent Institute,
      • the Visegrad Patent Institute.

    These provisions were adopted by the Administrative Council pursuant to A153(7) EPC.

    Sanction

    Otherwise, the filing is deemed withdrawn (R160(1) EPC).

    The EPO then notifies the applicant of this loss of rights (R160(2) EPC). The applicant may then request a decision (R160(2) EPC together with R112(2) EPC).

    Legal remedies

    A121 EPC applies to the 31-month time limit (Guidelines E-IX 2.1.3).

    Claim fees

    Number of claims

    The EPO bases its calculation on the documents of the filing on which the grant procedure is to be based to determine the number of claims exceeding 15 (R162(1) EPC).

    Amount

    Each claim from the 16th onwards incurs an official fee of 280 € and then 630 € beyond the 51st (A2(1).15 RFees).

    Time limit

    This official fee must be paid within the 31-month time limit from the priority (R162(1) EPC together with R159(1) EPC).

    However, the applicant may pay it within a 6-month time limit from the notification (R162(2) EPC, which is issued upon expiry of the 31-month time limit, combined with the notification under R161(1) EPC, « Notice dated 13 October 1999 concerning amendments to the Implementing Regulations to the European Patent Convention and the Rules relating to Fees« , OJ 1999, 696, point I.10) indicating that it has not been paid.

    This payment is calculated based on any amended claims in response to R161(1) EPC (R162(3) EPC).

    Waiver of receipt of R162 EPC

    Upon entry into the national phase, the applicant may waive the right to receive the notification R162 EPC reminding them to pay the claims official fees (as with the waiver of the notification R161 EPC, « Notice from the European Patent Office dated 30 November 2015 concerning ways to expedite the European grant procedure« , OJ 2015, A94).

    To do so, the applicant must, upon entry into the national phase:

    • have filed amendments in response to the written opinion of the ISA (or the SISA or IPEA, as applicable);
    • paid the necessary claims official fees.

    Automatic debiting

    In the case of automatic debiting, the claims official fees are deemed received on the last day of the 6-month time limit (unless contrary instructions are received by the EPO, point 6.1.b ADA, OJ 3/2009, supplement).

    It is not possible to benefit from the automatic debiting procedure if the applicant waives the right to receive the R162 EPC: in this case, the applicant must pay the claims official fees upon entry into the national phase by other means.

    Refund in case of reduction in the number of claims

    If amended claims filed within the 6-month time limit from the notification under R161(1) EPC and R161(2) EPC result in a reduction in the number of claims subject to an official fee, and the claims official fees have already been paid, the excess amount is refunded (R162(2) EPC and R162(3) EPC).

    Any subsequent reduction in the number of claims (e.g., due to a lack of unity of invention requiring restriction) does not entitle the applicant to a refund (J3/09).

    Sanction

    If a claims official fee is not paid within the time limits, the corresponding claim (i.e., the one with the highest ranking necessarily) is deemed withdrawn (R162(4) EPC).

    A claim deemed withdrawn, which is not otherwise present in the description or drawings, cannot be used for a subsequent amendment (Guidelines E-IX 2.1.3).

    Legal remedy

    The A121 EPC applies to this 6-month time limit.

    Request for examination and examination fee

    Requirement

    A request for examination must be filed (R159(1) f) EPC). When the applicant uses Form 1200 for entry into the national phase, the box is already checked.

    The request for examination is only deemed to be filed after payment of the examination official fee (A94(1) EPC).

    Time limit

    The request for examination must be filed (the later of the two time limits):

    • within the time limit of 31 months from the priority (R159(1) f) EPC);
    • within the time limit of 6 months from the international publication of the ISR (A153(6) EPC together with R70(1) EPC, only applicable if the ISR is published 25 months after the priority).

    Sanction

    Otherwise, the application is deemed to be withdrawn (R160(1) EPC).

    The EPO then notifies the applicant of this loss of rights (R160(2) EPC). The applicant may then request a decision (R160(2) EPC together with R112(2) EPC).

    Legal remedies

    A121 EPC applies to the time limit of 31 months (Guidelines E-IX 2.1.3).

    Invitation to maintain the request

    If the applicant has filed the request for examination before the supplementary search report is notified (if a supplementary search is to be carried out), the EPO sets a time limit for the applicant to confirm the request (J8/83 and R70(2) EPC, the reasoning of decision
    J8/83 is that the supplementary search report is a search report and therefore R70(2) EPC applies naturally).

    This notification also invites the applicant to comment on the objections raised in the ESR (R70bis(2) EPC, the case of the supplementary search report is expressly provided for by this rule).

    If the applicant withdraws the application or does not respond to this invitation, the official fee is refunded in full (J8/83 and A11 a) RFees).

    It is possible for the applicant to definitively waive the possibility of confirming the request upon entry into the national phase (via the PACE program,
    « Notice from the European Patent Office dated 30 November 2015 concerning the programme for accelerated processing of European patent applications (« PACE »)« , OJ 2015, A93).

    If no supplementary search report is to be carried out, this invitation is not issued, and the Examining Division becomes competent upon receipt by the EPO of the request for examination (J8/83).

    A withdrawal can (at best) only allow a refund of up to 75 % of the examination official fee (A11 a) RFees).

    Examination official fee

    Amount

    If no supplementary search report has been drawn up and for applications filed as of 1 July 2005, the examination official fee is 1730 € (A2(1).6 RFees).

    Otherwise, the examination official fee is 1555 € (A2(1).6 RFees) for applications filed as of 1 July 2005.

    Reduction

    If the EPO acted as IPEA, the examination fee is reduced by 50 % (A14(2) RRT) unless the examination in the European phase relates to subject-matter not covered in the international phase.

    Additionally, a reduction of 20 % (A153(2) EPC together with R6(3) EPC together with A14(4) EPC and A14(1) RRT) may be obtained if the applicant (having their residence or principal place of business in a contracting state with an official language other than English, French, or German, or being a national of such a state) files the request for examination in that national language.

    The two reductions may be combined (Guidelines A-X 9.3.2).

    Indication of the basis for the procedure

    The applicant must specify the parts of the application (possibly amended) on which the grant procedure is to be based (R159(1)(b) EPC).

    This must be done within 31 months from the priority date (R159(1)(b) EPC).

    Thus, the application may be amended solely for the purpose of entering the national phase or after receipt of the WO-ISA (A19 PCT): such amendments may be considered as a response to the written opinion of the WO-ISA, thereby effectively removing the obligation to respond to the communication under R161(1) EPC (OJ 2009, 533, point 5.2.2).

    Of course, the requirements for identifying and justifying amendments (R137(4) EPC) remain applicable (even if, a priori, as long as the examining division is not competent, no communication will be issued to remedy this irregularity, R137(4) EPC, second sentence).

    At worst, if the amendments do not appear to be supported and the search is significantly impacted by the amendments, the examiner in charge of the search may issue a communication under R63 EPC (Guidelines B-VIII 6).

    If, in response to the R161(2) EPC, the applicant amends the application, such amendments will, of course, be taken into account during the supplementary search and examination (Guidelines B-II 4.3.3).

    Translation

    Requirement

    This requirement is set out in R159(1)(a) EPC.

    A translation of the international application must be filed with the EPO if the language of filing or publication of that application was not an official language of the EPO (A153(4) EPC in accordance with A22.1 PCT together with R49.1(a)(i) PCT or A39.1(a) PCT together with R76.5 PCT).

    If the international application is already in an official language of the EPO, no translation may be filed (G4/08).

    Time limit

    The translation must be filed within 31 months from the priority date (R159(1)(a) EPC).

    Content

    The translation must cover (A22 PCT and R49.5 PCT):

    • the description;
    • the claims as filed;
    • the text of the drawings;
    • the abstract;
    • any amendment to the claims (as well as statements explaining such amendments; if a translation is not submitted, the EPO may disregard the amendment, R49.5.c PCT);
    • any request for correction under R91.3.d PCT.

    Sanction

    Translation of the main documents

    Principle

    If the translation is not submitted within the time limit, the application is deemed withdrawn (R160(1) EPC).

    The EPO then notifies the applicant of this loss of rights (R160(2) EPC). The applicant may then request a decision (R160(2) EPC together with R112(2) EPC).

    A121 EPC applies to the 31-month time limit (Guidelines E-IX 2.1.2).

    Since the translation is governed by A22 PCT, it is also possible to benefit from the provisions of R49.6 PCT, which allow, in the event of failure to perform one of the acts for entry into the national phase, to be reinstated in rights if the failure to meet the time limit occurred despite due care required by the circumstances having been taken (« Notice from the European Patent Office, dated 7 November 2007, concerning the withdrawal of reservations under the PCT« , OJ 2007, 692).

    The requirements in terms of evidence are quite similar to those of A122 EPC (R49.6.c PCT and R49.6.d.ii PCT).

    Multiple legal remedies in case of failure to meet the requirements for entry into the national phase
    Multiple legal remedies in case of failure to meet the requirements for entry into the national phase

    The request for reinstatement of rights must be filed within 2 months from the removal of the impediment, but no later than 12 months from the expiry of the 31-month time limit (R49.6.b PCT).

    A reinstatement fee must be paid (equal to the restitutio fee): 1 165 € (A2(1).13 RRT in accordance with R49.6.d.i PCT).

    Restitutio in integrum versus R49.6 PCT

    As restitutio in integrum (A122 EPC) is also available for the time limit under A121 EPC, we might think that the provisions of R49.6 PCT are redundant… (since the time limit under A122 EPC expires by definition after that of R49.6 PCT).

    This is not entirely true…

    Indeed:

    • the legitimate reasons that may allow for restitutio in integrum (A122 EPC) relate to the acts of further processing (i.e., the required diligence must pertain to the acts that should have enabled further processing);
    • the legitimate reasons that may allow for restoration under the PCT (R49.6 PCT) relate to the acts of entry into the national phase (i.e., the required diligence must pertain to the acts that should have enabled entry into the national phase).

    Translation of secondary documents

    If any documents annexed to the international preliminary examination report are drafted in a language other than that of the proceedings, and if a translation is not provided, the applicant is invited to furnish a translation into the language of the proceedings within a specified time limit (Guidelines E-IX 4.3).

    If a translation is not submitted, the EPO may disregard these documents (R49.5.c PCT).

    Examination of the translation

    If the EPO is informed by the IB that certain elements of the international application have been omitted from the publication of the application (e.g., elements contrary to morality), the EPO also verifies that they have been omitted from the translation (Guidelines E-IX 2.3.7).

    Exhibition attestation

    Principle

    The exhibition attestation must be provided within a time limit of 31 months from the priority date (R159(1)(h) EPC in accordance with A27.2.ii PCT together with R51bis.1.a.v PCT).

    Sanction

    The sanction for failure to provide the attestation is that the disclosure made at the exhibition becomes citable as prior art (A55(2) EPC).

    Legal remedy

    A121 EPC is applicable.

    Since the sanction for failure to provide the attestation is not a cessation of the effects of the international application, the restoration of rights under R49.6 PCT is inapplicable.

    Inventor designation

    Requirement

    If the inventor designation under R19(1) EPC has not been made within the time limit of 31 months from the priority date, the EPO invites the applicant to do so within 2 months (R163(1) EPC).

    Sanction

    Failing this, the application is refused (R163(6) EPC).

    Legal remedies

    Principle

    A121 EPC is applicable to this 2-month time limit.

    Since the designation of the inventor is referred to in A22 PCT, it is also possible to benefit from the provisions of R49.6 PCT, which allow, in the event of failure to perform one of the acts for entry into the national phase, to be restored in rights if the non-observance of the time limit occurred despite the due care required by the circumstances having been taken (« Notice from the European Patent Office, dated 7 November 2007, concerning the withdrawal of reservations under the PCT« , OJ 2007, 692).

    The requirements in terms of evidence are quite similar to those of A122 EPC (R49.6.c PCT and R49.6.d.ii PCT).

    Multiple legal remedies in case of non-observance during entry into the national phase
    Multiple legal remedies in case of non-observance during entry into the national phase Multiple legal remedies in case of non-observance during entry into the national phase

    The request for re-establishment of rights must be filed within 2 months from the removal of the impediment, but no later than 12 months from the expiry of the 31-month time limit (R49.6.b PCT).

    A re-establishment fee must be paid (equal to the restitutio fee): 1 165 € (A2(1).13 RRT in accordance with R49.6.d.i PCT).

    Restitutio in integrum versus R49.6 PCT

    Since restitutio in integrum (A122 EPC) is also possible for the time limit under A121 EPC, one might think that the provisions of R49.6 PCT are redundant… (since the time limit under A122 EPC expires by definition after that of R49.6 PCT).

    This is not entirely true…

    Indeed:

    • the legitimate reasons that may allow restitutio in integrum (A122 EPC) relate to the acts of further processing (i.e. the due care must relate to the acts that should have enabled further processing);
    • the legitimate reasons that may allow restoration under the PCT (R49.6 PCT) relate to the acts of entry into the national phase (i.e. the due care must relate to the acts that should have enabled entry into the national phase).

    Provision of the filing number or copy of the earlier application

    Requirement

    If a priority is claimed, and the filing number or copy of the priority application (under R52(1) EPC and R53 EPC) is not provided within the 31-month time limit, the EPO invites the applicant to provide it within a 2-month time limit (R163(2) EPC).

    Transmission by the IB

    Normally, the IB transmits this information to the EPO if it has it (which is usually the case, since this information is required in the international phase for the RO).

    If the applicant has duly submitted a copy to the RO or the IB (or requested transmission by paying the corresponding official fee R17.1.b PCT and R17.1.b-bis PCT), the EPO cannot request this copy again from the applicant (R17.2.a PCT).

    The EPO must begin the examination even if the decision to grant may be delayed while awaiting this copy (Guidelines E-IX 2.3.5).

    Translation of the earlier application

    The EPO may request the translation of the priority application (R51bis.1.e PCT or R76.5 PCT) under certain conditions (particularly when the priority is important for patentability).

    Exceptions to the requirement to submit the copy

    As with the filing requirements, this obligation to provide the copy has exceptions.

    If the priority document was filed in certain countries, it is not necessary to produce a certified copy thereof: cooperation agreements allow the EPO to automatically obtain these documents without any action by the applicant (R53(2) EPC and OJ 2020, A57).

    The following are concerned (Guidelines A-III 6.7):