One of the most important things for an applicant is the filing date of their application.
Indeed, it determines the state of the art that can be opposed (as we will see later).
In order to verify that the application meets the minimum conditions laid down in the EPC, the Receiving Section examines the documents in the filing (A16 CBE).
Chapter 1. Conditions for assigning a filing date
Section 1.1. Overview
TheA80 CBE simply refer to the regulation to know the requirements for obtaining a filing date.
Section 1.2. The three minimum conditions
Since 13 December 2007 (entry into force of the EPC 2000), the conditions have considerably eased.
We have kept only three (R40 (1) EPC):
- an indication that a European patent is requested (R40 (1) (a) EPC);
- indications which make it possible to identify the applicant or to contact him (R40 (1) (b) EPC);
- a description or reference to a previously filed application (R40 (1) (c) EPC).
1.2.1. Indication that a patent is requested
This condition is provided for in R40 (1) (a) EPC.
No form requirement is necessary. Thus, it can be presented on free paper (Directives A-II 4.1), written by hand (provided that the indication is legible).
If this indication is missing, a notification will be sent to the applicant to correct this irregularity within a 2 months (R55 EPC). Just be aware that the filing date will be the date this condition is met (if the other two are, R55 EPC second sentence).
1.2.2. Identification of the applicant
This condition is provided for in R40 (1) (b) EPC.
Guidelines for the Examination (Guidelines A-II 4.1.2) indicate that this identification must:
- to identify the applicant,
- to allow him to make contact with him.
Thus, the case law of the EPO considers the following information to satisfy this requirement (Guidelines A-II 4.1.2):
- the name and address of the applicant's agent;
- a fax number;
- a signature with a readable name (J25 / 86);
- a post office box number.
If this condition is not fulfilled, it is not possible to notify the applicant.
Nevertheless, if the applicant is insufficiently identified, he has a 2 months from the filing of the first coins to correct his mistake (Guidelines A-II 4.1.4).
The filing date is the date on which this condition will be met (if the other two are, R55 EPC second sentence).
1.2.3. Description and drawings
This condition is provided for in R40 (1) (c) EPC.
There is no requirement for:
- the language of the description (A14 (2) EPC);
- the presence of claim (s) (Directives A-II 4.1if the claims are not filed on the filing date, this is stated in the publication R68 (4) EPC).
In short, you just need a text (and possibly drawings) ...
In the decision T382 / 94, the Board of Appeal stated that if the annotations of the drawings were in a language different from that of the description, this did not affect the filing date (the claims and the description were filed in German, but the drawings included a text in English).
What if part of the description or if a claim is in a language different from the rest of the description?
European patent applications are filed in a of these languages
Today, the wording is different, but we can find similarities:
Any European patent application must be filed in a official languages or, if filed in a other language, translated into one of the official languages, in accordance with the Regulations.
I think that the position of the EPO would be the same: the principle of the uniqueness of the language of European patent applications would be the rule.
However, nothing is certain: for example, some assume that if the claims are in a different language, this is not a concern (the claims are not an obligation to obtain a filing date).
If this indication is missing, a notification will be sent to the applicant to correct this irregularity within a 2 months (R55 EPC). Just be aware that the filing date will be the date this condition is met subject to the provisions detailed below in the chapter "Errors concerning description or drawings" (if the other two are, R55 EPC second sentence).
Section 1.3. Reference to an earlier application
It is possible to replace the requirement to provide a description with a reference to an earlier application (R40 (1) (c) EPC, the priority of this request is not necessarily claimed, Guidelines A-II 126.96.36.199).
This earlier application can be a utility model (Guidelines A-II 188.8.131.52).
1.3.2. Requirements when filing
- the filing date of the previous application,
- his deposit number,
- the office from which it was filed,
- the reference that the reference replaces the description and, where applicable, the drawings.
This reference can be presented in any form, as long as it is legible (Guidelines A-II 184.108.40.206).
It is not possible to make a referral to several requests.
If the referral is not in conformity, a notification will be sent to the applicant to correct this irregularity within 2 months (R55 EPC).
The filing date is the date on which this condition will be met (if the other two are, R55 EPC second sentence).
1.3.3. Providing a certified copy
To benefit from the filing date, it is also necessary to produce a certified copy of the previously filed application within 2 months (R40 (3) EPC).
If this requirement is not fulfilled within the time limit, the applicant is requested to provide the copy within 2 months (R55 EPC).
If the applicant files the certified copy within that period of time, the 2 monthsthe application retains its original filing date, provided that it meets all the other conditions for a filing date to be granted (Guidelines A-II 4.1.5).
1.3.4. Case where the supply of the copy is not obligatory
The R53 (2) EPC is applicable where the earlier application is at the disposal of the Office. This rule states that "A copy of the earlier application shall be deemed to have been duly filed if a copy of the application, which is at the disposal of the European Patent Office, is to be entered in the file of the European patent application under the conditions determined by the President of the European Patent Office. the European Patent Office ".
The conditions in question are as follows. The applicant does not need to produce this copy in the following two cases only ("Notice from the European Patent Office dated 14 September 2009 concerning the production of a certified copy of the application previously filed where a reference is made” , OJ 2009, 486):
- if the previously filed application is a EP request, or
- if the previously filed application is a PCT application and if the RO is the EPO.
1.3.5. Referral Translation
The R40 (3) EPC also indicates that, within the same 2 monthsa translation of the application if the previously filed application is not in an official language (ie French, English, or German, A14 (1) EPC).
TheA121 EPC is not applicable to this period.
The supply of the translation is not obligatory if the EPO is already in possession of it (R53 (2) EPC).
If the translation is not provided within the deadline, the EPO notifies the applicant and gives him 2 months to provide this translation (R58 EPC, the R57 (a) EPC also providing for this translation)
However, the absence of translation does not affect the filing date (Guidelines A-II 4.1.4last paragraph). This is explained by the absence of a language requirement for the description for the assignment of a filing date.
The penalty for this non-translation is the fact that the request is deemed withdrawn (A14 (2) EPC).
In the proceedings, and until proven otherwise, this translation is assumed to be correct (R7 EPC).
Section 1.4. Authentic text
Normally, the authentic text in all proceedings before the EPO is the text in the language of the proceedings (A70 (1) EPC).
However, if the application has not been filed in an official language of the EPO, this is the authoritativeA70 (2) EPC).
The translated text may be brought into line with the text as filed throughout the proceedings (A14 (2) EPC).
This latter possibility is questionable if the filing refers only to an application in a language that is not an official language of the Office, the R40 (3) EPC not foreseeing the correction (nevertheless, this seems logical, especially with regard to R7 EPC).
Section 1.5. Special case of a deposit on a holiday
If a patent application is filed on a public holiday or a closing day of an EPO office (eg fax filing on a Sunday), it is questionable whether the filing date is shifted to the next business day .
The answer is no: the filing date may very well be a public or closed holiday for the EPO.
Chapter 2. The correction of irregularities
Section 2.1. Non respect of minimum conditions
Failure to comply with one of the three minimum conditions mentioned above entails the sending of a notification by the EPO to the applicant (R55 EPC).
From the receipt of this notification, the applicant then has a period of 2 months (R55 EPC) to proceed with the regularization of his deposit:
- if there is a regularization, the filing date is the date of the EPO's correction;
- if there is no regularization, there is no filing date.
If the identification of the applicant is not sufficient to enable the notification to be sent, the time limit for 2 months short of the deposit itself (since we can not warn him, Guidelines A-II 4.1.4): to the depositor to realize it himself!
Section 2.2. Special case of missing parts in the description or drawings
As explained above, it may happen that the applicant makes an error when filing his description or drawings.
For example (and God knows this happens!), Only every second page has been provided to the EPO because of a photocopy on the front of the sheets instead of the front and back ...
In this case, a correction may be possible under certain conditions.
2.2.2. Identification of error / forgetfulness and temporal conditions
At first, the correction is only possible:
- if the applicant becomes aware of his mistake and requests a correction within a 2 months after the deposit (R56 (2) EPC), or
- if the EPO is aware of the plaintiff's error (but nothing is guaranteed R56 (1) EPC) and that the latter then requests the correction less 2 months after receiving the notification from the EPO (R55 EPC, total forgetfulness or R56 (2) EPC partial forgetting of the description).
2.2.3. Correction using a priority document
1) Correction of an omission (page, part, element) of the description and drawings
If one of the above conditions is fulfilled, then it must be considered whether the part that has been forgotten exists in full in a possible document whose priority is claimed (note, moreover, that a new priority document can be added). if we want according to the R52 (3) EPC).
If yes, a correction is possible (R56 (3) EPC).
It will then be necessary to provide the formalities officer with the following:
- a correction request (R56 (3) EPC);
- a copy of the priority application (R56 (3) (a) EPCunless the priority request is ("Decision of the President of the European Patent Office dated 18 October 2018 concerning the production of priority documents” , OJ 2018, A78):
- a demand European,
- a demand international if the RO is theEPO :
- a demand American (normal or "provisional")
- for the "provisionnal", a form PTO / SB / 39 must be filed with the USPTO to allow it to communicate this request ("Notice from the European Patent Office dated 27 June 2007 concerning the practical aspects of the electronic exchange of priority documents between the EPO and the United States Patent and Trademark Office (USPTO)” , OG 2007, 473),
- a demand Korean (patent or utility model),
- a demand Chinese (patent or utility model),
- a demand Japanese (patent or utility model);
- a translation if the priority demand is not in a official language EPO (R56 (3) (b) EPC):
- if the priority request is in a language different from the language of the proceedings, but for all that, it is an official language of the EPO, it is necessary (Guidelines A-II 5.4.4):
- to produce a translation missing parts in the language of the procedure (to respect R56 (1) EPC and R3 (2) EPC) (Guidelines A-II 5.4.4 i);
- to produce the missing parts as well as a declaration that the missing parts are a faithful translation of the parts of the priority application (Guidelines A-II 5.4.4 ii).
- a indication the exact place where the missing parts of the description or the missing drawings appear in full (R56 (3) (c) EPC).
In this case, the correction will be accepted and the filing date will not be changed (R56 (3) EPC).
2) Correction of claims?
In theory, the letter of the R56 (1) EPC does not correct an omission in the claims.
It seems nevertheless possible, at the extreme limit, to correct the description by adding to it the claims of the previous application (this will not violate theA123 (2) EPC if claims need to be added later).
3) Correction of an erroneous element?
Nevertheless, if it appears very clearly that the deposited figures are not correct (eg many references are not described), this correction seems possible (J2 / 12) if it can be established without applying technical knowledge:
- that the figures initially filed are not those to which the description refers, and
- that the figures provided later are those to which the description refers.
4) Correction of an unreadable element?
2.2.4. Other corrections
In all other cases, the correction can not be made without modifying the filing date (ie which will become the date on which the correction takes place).
Therefore, upon receipt of the correction documents, the EPO will inform the applicant that this correction results in a change in the filing date (R56 (5) EPC).
The applicant will then have a period of 1 month to oppose it (R56 (5) EPC) and thus renounce the corrections he himself proposed.
If finally no modification is made (or is accepted by the applicant), a "cleaning" of the application is required (R56 (4) EPC): All references to missing drawings must be removed from the description (Directives A-II 5.5) so that third parties can navigate when the application is published!