Methods for Filing an Application

Direct Filing

With the EPO

Patent applications may be filed directly (R2(1) EPC) with the European Patent Office (A75(1) a) EPC).

Although the EPO has buildings in other cities (such as Vienna), only three locations can receive patent application filings (R35(1) EPC):

• Munich (EPO), The Hague (EPO Department), Berlin (EPO Branch).

The Vienna or Brussels branches cannot receive any filings (Guidelines A-II 1.1).

It should be noted that the Berlin and Munich buildings are equipped with automatic mailboxes that can be used at any time of day or night (« Decision of the President of the European Patent Office, dated 3 January 2017, concerning the designation of EPO filing offices« , OJ 2017, A11).

With National Offices

Principle

A75(1) b) EPC provides that:

The European patent application may be filed: a) [… ]
b) or, if the law of a Contracting State so permits, and subject to Article 76, paragraph 1, with the central industrial property office or other competent authority of that State. Any application so filed shall have the same effect as if it had been filed on the same date with the European Patent Office.

It is therefore necessary to check the legislation of each State to determine whether this is possible.

As of the latest information, it was possible to file a patent application in any language in all Contracting States except for (National law relating to the EPC, Table II):

• Cyprus
  • filing only in English, German, French, and Greek.
  • a translation into Greek must be submitted within 2 months if the description is not in Greek;
• Greece
  • filing in any language,
  • a translation into Greek must be submitted within 2 months if the description is not in Greek;
• Spain
  • filing only in English, German, French, and Spanish,
  • a translation into Spanish must be submitted at the same time if the description is not in Spanish;
• Bulgaria
  • filing only in English, German, French, and Bulgarian;
• Former Yugoslav Republic of Macedonia
  • filing only in English, German, French, and Macedonian;
• Norway
  • filing only in English, German, French, and Norwegian;
• Italy
  • filing in any language,
  • a translation into Italian must be submitted at the same time if the application is not in Italian, unless a priority from an application filed in Italy more than 90 days earlier or if the applicant is not domiciled in Italy;
• Portugal
  • filing in any language,
  • a translation into Portuguese must be submitted within 1 month if the application is not in Portuguese, unless there is a priority from an application filed in Portugal;
• Poland
  • filing in any language,
  • a translation into Polish must be submitted at the same time if the application is not in Polish.

Transmission of applications

Subject to national defense provisions (A77(2) EPC) which allow an invention to be kept secret, European patent applications filed with an authorized industrial property office are transmitted to the EPO (A77(1) EPC).

This transmission must take place within the shortest time compatible with national legislation (R37(1) EPC, Guidelines A-II 1.7). Ideally, this transmission should occur:

• if the invention is clearly not susceptible to being kept secret, within 6 weeks;
• otherwise:
  • if no priority is claimed, within 4 months;
  • otherwise, within 14 months from that priority.

Note that if an application does not reach the EPO within a certain time limit, the application is deemed to be withdrawn (A77(3) EPC and R37(2) EPC, Guidelines A-II 1.7).

• if no priority is claimed, within a period of 14 months from the filing date;
• otherwise, 14 months from the priority date.

Articles A121 EPC and A122 EPC do not apply to these 14-month time limits, as this is a time limit to be observed by the national offices and not a time limit to be observed by the applicant (J3/80).

Official fees paid are refunded in the event of an application deemed to be withdrawn for this reason (R37(2) EPC).

Filing by post

If filing is possible by direct delivery to a site (R2(1) EPC), it is also possible to send it by post to that site.

This filing option is provided for by R35(1) EPC and R2(1) EPC.

The postal addresses of EPO sites are available in the « EPO Communication dated 12 July 2007 concerning the accessibility of EPO filing offices« , OJ 2007, Special Edition No. 3, A.2, paragraph 2).

The addresses of national offices or national services that can receive a filing are indicated in the « National law relating to the EPC », Table II, column 0.

Filing by fax

Principle

Filing by fax is possible.

Indeed, it is possible to file any document during the grant procedure (R2(1) EPC together with « Decision of the President of the European Patent Office dated 3 January 2017 on the designation of EPO filing offices« , OJ 2017, A11) except for:

• priority documents;
• powers of attorney.

Which fax?

Only the faxes of the following filing offices may be used:

• those of Berlin, Munich and The Hague (« Decision of the President of the European Patent Office dated 20 February 2019 on the filing of patent applications and other documents by telefax« , OJ 2019, A18);
• those of national offices permitting it (« Decision of the President of the European Patent Office dated 20 February 2019 on the filing of patent applications and other documents by telefax« , OJ 2019, A18). Currently (Guidelines A-II 1.2 and « National law relating to the EPC », Table II, column 5), these are:
  • Germany (DE),
  • Austria (AT),
  • Belgium (BE),
  • Bulgaria (BG),
  • Denmark (DK),
  • Spain (ES),
  • Finland (FI),
  • France (FR),
  • Greece (GR),
  • Ireland (IE),
  • Iceland (IS),
  • Liechtenstein (LI),
  • Luxembourg (LU),
  • Monaco (MC),
  • Norway (NO),
  • Poland (PL),
  • Portugal (PT),
  • San Marino (SM),
  • Czech Republic (CZ),
  • United Kingdom (GB),
  • Slovakia (SK),
  • Slovenia (SI),
  • Sweden (SE),
  • Switzerland (CH).

Acknowledgment of Receipt

An acknowledgment of receipt of the documents transmitted is systematically issued by the Office without any financial consideration (« Decision of the President of the European Patent Office, dated 20 February 2019, on the filing of patent applications and other documents by telefax« , OJ 2019, A18).

Note that this is not the internal acknowledgment of receipt from modern fax systems.

Written Confirmation

European Application

There was a time when the EPO required systematic written confirmation when documents were sent by fax.

Today, this confirmation is not required unless expressly requested by the EPO to provide such confirmation within a 2-month period from the notification (in cases of insufficient fax quality, « Decision of the President of the European Patent Office, dated 20 February 2019, on the filing of patent applications and other documents by telefax« , OJ 2019, A18 and Guidelines A-II 1.2).

A121 EPC applies to the 2-month period.

If the applicant fails to comply with this request, the application is deemed withdrawn (« Decision of the President of the European Patent Office, dated 20 February 2019, on the filing of patent applications and other documents by telefax« , OJ 2019, A18).

PCT Application

For PCT applications, it is still necessary to submit one copy (A151 EPC together with R157(2) EPC) of the paper copy of the application documents as well as the request (« Decision of the President of the European Patent Office, dated 20 February 2019, on the filing of patent applications and other documents by telefax« , OJ 2019, A18).

The fax must indicate that the application documents have been transmitted separately on paper (« Decision of the President of the European Patent Office, dated 20 February 2019, on the filing of patent applications and other documents by telefax« , OJ 2019, A18).

If no paper documents are received, the EPO invites the applicant to submit these documents within a 2-month period.

If the applicant fails to comply with this request, the fax is deemed not to have been received, meaning the application is deemed withdrawn (R92.4.g.i PCT).

Illegible Fax

If the transmitted document is illegible, it is deemed not to have been received (« Decision of the President of the European Patent Office, dated 20 February 2019, on the filing of patent applications and other documents by telefax« , OJ 2019, A18).

The sender is informed thereof without delay (Guidelines A-II 1.2).

Special Case of Priority Documents and Powers of Attorney

Priority documents or powers of attorney cannot be sent by fax (« Decision of the President of the European Patent Office, dated 20 February 2019, on the filing of patent applications and other documents by telefax« , OJ 2019, A18).

Date of Receipt

The date of receipt is the date on which the EPO receives all pages of the fax (« Decision of the President of the European Patent Office, dated 20 February 2019, on the filing of patent applications and other documents by telefax« , OJ 2019, A18).

If some pages are received before midnight and others after midnight, the applicant has the choice (« Decision of the President of the European Patent Office, dated 20 February 2019, on the filing of patent applications and other documents by telefax« , OJ 2019, A18). They may choose:

• to benefit from the date of the previous day, but by abandoning the pages received after midnight;
• to retain all pages, but only benefiting from the date of the following day.

Electronic Filing

Filing Documents

Principle

Electronic filing is possible under R2(1) EPC together with the « Decision of the President of the European Patent Office, dated 9 May 2018, on the electronic filing of documents« , OJ 2018, A45.

Available software

This filing may be carried out via (« Decision of the President of the European Patent Office, dated 9 May 2018, on the electronic filing of documents« , OJ 2018, A45):

• the EPOLINE® software;
• the CMS software via the Internet;
• the online forms provided for this purpose;
• an authorized data carrier, i.e., CD-R, DVD-R, or DVD+R (together « Decision of the President of the European Patent Office, dated 12 July 2007, on electronic signatures and data carriers as well as on the software to be used for the electronic filing of patent applications and other documents« , OJ 2007, Special Edition No. 3, A.5, Art. 2);
• other software authorized by the EPO:
  • for example, the PaTrAS software is authorized for the filing of European patent applications with the German Patent and Trademark Office (« Notice from the European Patent Office, dated 12 July 2007, concerning the electronic filing of European patent applications with the German Patent and Trademark Office (DPMA)« , OJ 2007, Special Edition No. 3, A.6).

Filing with national offices

Filing a European patent application with national offices that allow it is also possible (« Decision of the President of the European Patent Office, dated 9 May 2018, on the electronic filing of documents », OJ 2018, A45, National law relating to the EPC, Table II, column 5):

• Germany (DE),
• Denmark (DK),
• Spain (ES),
• Finland (FI),
• France (FR),
• Hungary (HU), Iceland (IS),
• the United Kingdom (GB),
• Poland (PL),
• Portugal (PT),
• Slovakia (SK).

Filing date

The filing date is the date of receipt by the EPO of the application documents.

Acknowledgement of receipt

An acknowledgement of receipt is issued to prove which documents have been filed (« Decision of the President of the European Patent Office, dated 9 May 2018, on the electronic filing of documents« , OJ 2018, A45).

Format to be used

The formats to be used are specified in the « Decision of the President of the European Patent Office, dated 12 July 2007, on electronic signatures and data carriers as well as on the software to be used for the electronic filing of patent applications and other documents« , OJ 2007, Special Edition No. 3, A.5, Art. 3).

Paper confirmation

It is not necessary to file a paper confirmation of the documents filed.

Special cases of priority documents

Priority documents cannot be submitted electronically if they have not received an electronic signature from the issuing authority (« Decision of the President of the European Patent Office, dated 9 May 2018, on the electronic filing of documents« , OJ 2018, A45).

For example, priority documents certified by the USPTO using a special technique may be submitted electronically (« Notice from the European Patent Office, dated 15 September 2004, concerning the electronic filing of priority documents issued by the United States Patent and Trademark Office« , OJ 2004, 562).

Filing by telex, telegram, teletext (i.e., email), etc.

These types of filing are not possible (« Decision of the President of the European Patent Office, dated 20 February 2019, on the filing of patent applications and other documents by telefax« , OJ 2019, A18).

Documents filed in this manner are deemed not to have been received (Guidelines A-II 1.4).

Filing by a means not accepted by the EPO

If a filing is made with the EPO by a means not accepted by it, no filing date will be accorded.

However, if the filing is made with a national office by a means not accepted by the EPO but accepted by that office, the filing date will be the date on which the application was filed with that authority (J20/84).