Filing requirements

The minimum conditions necessary to obtain a filing date and the requirements for the filing of a European patent application should not be confused.

Let's look at these latest requirements in detail.

Contents

Chapter 1. Requirements

Section 1.1. Providing the translation of the application

1.1.1. requirements

1.1.2. Sanction

Section 1.2. Supply of the request for grant

1.2.1. requirements

1.2.2. Sanction

1.2.3. Precision on the priority claim

Section 1.3. Provision of claim (s)

1.3.1. requirements

1.3.2. Sanction

1.3.3. If the number of claims exceeds 15

1) Principle

2) Time limits

3) Sanction

4) Insufficient payment

5) Referral case for claims

1.3.4. Abandonment of claim after deposit

Section 1.4. Provision of the abstract

1.4.1. requirements

1.4.2. Form

1.4.3. Examination

1.4.4. Sanction

Section 1.5. Payment of the examination fee

Section 1.6. Payment of filing and search fees

1.6.1. requirements

1.6.2. If the request is over 35 pages

1) Principle

2) Time limit

3) Text to consider

1.6.3. Amount

1.6.4. Tax reduction

1.6.5. sanctions

Section 1.7. Designation of the inventor

1.7.1. requirements

1.7.2. Not published

1.7.3. Information of the inventor

1.7.4. Rectification

1.7.5. Penalty in case of non-designation or irregularities

1.7.6. Penalty in case of bad designation

Section 1.8. Claiming priority

1.8.1. Requirements for the declaration of priority

1.8.2. Requirement for the provision of the official copy

1) Principle and delay

2) Copy format

3) Copy utility for other requirements

4) Exception regarding the delivery of the previous application

1.8.3. Notification of irregularity and corrections

1.8.4. Sanction

1.8.5. Correction under R139 EPC

1.8.6. Providing a translation of the priority document?

1) Principle

2) Full translation declaration

3) Sanction

1.8.7. Verification of the validity of the priority claim

1) Principle

2) Same invention

1.8.8. Clarification concerning the loss of the right of priority / renunciation

1) Consequences for the applicant

2) Consequences for third parties

Section 1.9. Appointment of an agent

1.9.1. requirements

1.9.2. Sanction

Section 1.10. Formal rules of text and drawings

1.10.1. requirements

1) Drawings

2) Other parts

1.10.2. Case of a referral

1.10.3. Sanction

Section 1.11. Listing of nucleotides and amino acids

1.11.1. Form

1.11.2. Examination at the filing

1.11.3. Publication

1.11.4. Sequences filed late

1.11.5. Sequences in an application filed by reference

Chapter 2. Summary of these requirements

See the latest changes

The Deposit Section verifies that the ten requirements of the R57 EPC (together A90 CBE) are well respected.

Chapter 1. Requirements

Section 1.1. Providing the translation of the application

1.1.1. requirements

Indeed, it is necessary to provide a translation in one of the official languages of the EPO (English, French, German) if:

  • the patent application has not been filed in one of these languages (A14 (2) EPC together R6 EPC);
  • the patent application contains a reference to a text that is not written in one of these languages (R40 (3) EPC2nd sentence);
  • the patent application is a divisional application and the text of the patent application is in the language of the divisional application, which is not an official language (R36 (2) EPC).

The deadline for providing the translation is 2 months (respectively R6 (1) EPC, R40 (3) EPC and R36 (2) EPC).

It should also be noted that the translation provided can be modified throughout the procedure, as the original text in a foreign language is authentic (A14 (2) EPC).

1.1.2. Sanction

If the translation is not provided within the deadline 2 monthsthe EPO notifies the applicant (A90 (4) EPC) and gave him a new deadline of 2 months (R58 EPC) allowing him to correct his mistake.

If on the expiry of this new period no translation is in the possession of the EPO, the request is deemed withdrawn (R90 (5) EPC together A14 (2) EPC).

These two periods benefit from the restitutio in intergrum of the'A122 EPC, but of course, it is better to start from the second deadline (ie 12 months as from the expiry of the period specified in the notification).

Section 1.2. Supply of the request for grant

The R41 EPC provides for a number of requirements to be met by the request for grantA78 (1) (a) EPC).

This requirement is verified by the Deposit Section (A90 (3) EPC together A78 (1) (a) EPC together R41 EPC)

1.2.1. requirements

The request must to be presented on the form 1001 of the EPO (Directives A-III 4.1) unless the request is a Euro-PCT application (because the R49.4 PCT prohibits any obligation to use a national form).

In addition, the request must:

  • to file an application for the grant of a European patent (R41 (2) (a) EPC);
    • This request is still present on Form 1001.
  • contain the title of the invention (R41 (2) (b) EPC);
    • this condition is not very "hard". Indeed, the EPO may decide to modify it on its own (Directives A-III 7.2).
  • indicate the name, address, nationality, State of residence (or seat) of the applicant (R41 (2) (c) EPC);
    • in the case of multiple applicants, this information should be mentioned for each applicant (Directives A-III 4.2.1)
  • in the case of an agent, state his name, address, nationality, State of residence (or seat) (R41 (2) (d) EPC);
  • in the case of a divisional application, indicate this by specifying the number of the earlier application (R41 (2) (e) EPC);
  • in the case of a filing a new application for an invention previously filed by an unauthorized person, indicate the number of the initial application (R41 (2) (f) EPC);
  • in the case of a priority claim, contain a statement mentioning (R41 (2) (g) EPC):
    • its filing date,
    • the State in which it was filed,
    • and its deposit number (R52 (1) EPC which adds this last condition);
  • contain the signature of the applicant (or his authorized representative) (R41 (2) (h) EPC);
    • in the case of multiple applicants, a signature is required for each applicant or for the applicant's representative (Directives A-III 4.2.2) even if one of the applicants is a common representative of the others according to the R151 (1) EPC (Guidelines A-VIII 3.4);
    • the fact that the signature is not that of the person indicated in the request (eg a representative is appointed but it is an employee of the applicant signing) implies only that the signature is missing, but does not mean that the request has never been filed (J19 / 13) and it is therefore not possible to get tax refunds.
  • contain the list of attachments to the application (as well as the number of pages in the description, claims, drawings and abstract) (R41 (2) (i) EPC);
  • include the name of the inventor, if the inventor is the applicant (R41 (2) (j) EPC):

1.2.2. Sanction

If the request does not meet these conditions or no request for grant has been made during the depositthe EPO notifies the applicant (A90 (3) EPC and A90 (4) EPC) and gave him a period 2 months (R57 (b) EPC together R58 EPC) allowing him to correct his mistake.

If at the end of this period no correction is made, the request is rejected (A90 (5) EPC).

This period benefits from the restitutio in integrum of the'A122 EPC (ie 12 months as from the expiry of the period specified in the notification).

1.2.3. Precision on the priority claim

Of course, the EPO can not know if a priority claim is missing or is wrong. Thus, in practice, this requirement is of little interest. It is all the less interesting that the priority claim can be corrected later under the terms of the R52 (3) EPC.

Section 1.3. Provision of claim (s)

1.3.1. requirements

As we saw in the article Get a filing date The claims are no longer necessary to obtain a filing date with the EPO. Nevertheless, it is necessary to provide anyway for the rest of the procedure and especially research.

This requirement is also recalled in theA78 (1) (c) EPC.

1.3.2. Sanction

If the application does not contain a claim during the depositthe EPO notifies the applicant (A90 (4) EPC) and gives him a period of 2 months (R58 EPC) allowing him to correct his mistake.

If at the end of this period no correction is made, the request is rejected.

This period benefits from the restitutio in integrum of the'A122 EPC (ie 12 months as from the expiry of the period specified in the notification).

1.3.3. If the number of claims exceeds 15

1) Principle

If the number of claims provided exceeds 15, a claim fee is payable for each claim from the 16th (R45 (1) EPC).

This tax is 235 € from the 16th claim to the 50th (A2 (1) .15 RRT) and of 585 € beyond.

2) Time limits

It is necessary to pay this fee within a 1 month from the first filing of claims (R45 (2) EPC).

If no fee is paid, an irregularity notification is sent by the filing section to the applicant and a new 1 month it is granted (R45 (2) EPCthere is no surcharge).

TheA121 EPC is applicable to these two periods.

3) Sanction

If at the end of the latter period the fees are still not paid, the corresponding claims are deemed abandoned (R45 (3) EPC).

Characteristics contained in a claim deemed abandoned, which are also in the description, can be reintroduced into the application (J15 / 88). If they do not appear in the description, the claims will be considered as truly abandoned and they can not be reintroduced (a priori, a modification of the description at the time of non-payment of the fee in order to show the support of the claims in the description should be acceptable).

4) Insufficient payment

If there is an insufficient payment of tax to cover all the claims and there is no indication, at the time of payment, of the claims for which the fees have been paid, a notification is sent to the applicant to find out (A6 (2) RRT).

If he does not respond, the payment is not deemed to be void (contrary to what is stated in the second sentence of A6 (2) RRTbecause this sentence no longer applies): payment is deemed to have been made for the first claims from the 16th (J9 / 84).

5) Referral case for claims

The notification of irregularity of the R45 (2) EPC will not be sent (Directives A-III 9):

  • until the applicant has produced the copy of the previous application:
    • indeed, the applicant has a period of 2 months from the filing date to provide this copy (R40 (3) EPC);
    • before the EPO does not know the number of claims;
  • and as long as the deadline for 1 month from the filing date (R45 (2) EPC) has not expired (as a reference to claims of another application is properly considered to be a filing of claims within the meaning of that rule).

1.3.4. Abandonment of claim after deposit

Once the application is filed and before the payment of claims fees, it is not possible to abandon certain tax-exempt claims in order to benefit others (eg abandonment of all claims except 1-2 and 30 -25): only the first claims 1-15 will be exempt from taxes (J9 / 84).

If a claim is abandoned at a later stage of the proceedings, the claim fees that would have been paid are not refunded.

It is quite possible to reintroduce a claim considered abandoned during the examination (subject to the R137 (5) EPC) if and only if the object of the claim is in the description (J15 / 88, T490 / 90 and Directives A-III 9 hollow).

Section 1.4. Provision of the abstract

1.4.1. requirements

The abstract has no legal value (A85 CBE), it is not part of the content of the application (T246 / 86).

However, it is necessary to provide it (A78 (1) (e) EPC).

Of course, the abstract must match the request or it will not be considered as provided (Directives A-III 10.2).

1.4.2. Form

The abstract must contain (preferably 150 words maximum, R47 (3) EPC):

  • a mention of the title of the invention (R47 (1) EPC);
  • a concise summary of what is in the description, claims and drawings. This summary (R47 (2) EPC):
    • indicates the technical field of the invention;
    • to understand the technical problem;
    • to understand the essence of the proposed solution;
    • repeat, where applicable, the most representative chemical formula of the invention;
    • does not contain any benefit or statement relating to the value of the invention.
  • references to drawings in parentheses where possible (R47 (4) EPC).

The applicant must indicate which figure is likely to accompany the publication of the abstract, but this indication has no binding force for the EPO (R47 (4) EPC).

The figure can be chosen by the research division if:

It is not possible to draw a special figure for publication (Guidelines A-IX 2.3).

1.4.3. Examination

Beyond its presence which is verified by the filing section, the search division checks the contents of the abstract (BX 7 Guidelines).

The final content of the abstract falls within the competence of the Research Division (R66 EPC). The prior art found during the research must not have any impact (F-II Guidelines 2.2).

1.4.4. Sanction

If the request does not contain an abstract during the depositthe EPO notifies the applicant (A90 (4) EPC) and gave him a period 2 months (R58 EPC) allowing him to correct his mistake (Directives A-III 16.2).

If at the end of this period no correction is made, the request is rejected.

This period benefits from the restitutio in intergrum of the'A122 EPC (ie 12 months as from the expiry of the period specified in the notification).

Section 1.5. Payment of the examination fee

The examination fee is "due" on the filing date of the request for examination (AX 5.2.2 Guidelines): as the request for grant filed at the time of filing contains this request, the examination fee may be validly paid to the filing.

However, this is not mandatory: it must simply be paid in 6 months from the mention of the publication of the search report to the European Patent Bulletin (R70 (1) EPC).

Section 1.6. Payment of filing and search fees

1.6.1. requirements

Deposit and search fees must be paid (A78 (2) EPC) in a delay of 1 month from :

  • the deposit of "standard" request (R38 (1) EPC);
  • the deposit of divisional application (R36 (3) EPC);
  • the deposit of new request for an invention previously filed by an unauthorized person (R17 (2) EPC).

There will be no notification concerning this irregularity (R58 EPC).

The deadline for 1 month is calculated from the filing date of the first coins (although a filing date can not be granted, G3 / 98).

1.6.2. If the request is over 35 pages

1) Principle

In addition, an additional filing fee must be paid if the application is more (strictly) 35 pages because it forms part of the filing fee: description, claims (1st game deposited), drawings and the abstract (" Notice from the European Patent Office dated 26 January 2009 concerning the 2009 fee structure », OJ 2009, 118).

2) Time limit

This last tax must be paid (R38 (2) EPC and R38 (3) EPC) within one 1 month to count (the period expiring later being taken into account):

  • the filing of the application;
  • depositing the first claim set;
  • the provision of the certified copy of the reference text referred to in R40 (3) EPC and possibly a translation of the latter.
3) Text to consider

The text to be taken into account for the calculation of the number of pages is, for a direct European application, the complete text of the deposit (whatever its language) (ie description, claims, drawings and a page for the abstract) and not the translation of this text (Directives A-III 13.2).

In case of referral, this is the text of the previous application.

In case of euroPCT requests, I invite you to read the article the national / regional phase.

1.6.3. Amount

The filing fee is referred to inA2 (1) .1 RRT (120 € electronically, 250 € if not).

The additional fee if the application is more than 35 pages in length is A2 (1) .1bis RRT (15 € per page above strictly 35).

The search fee is referred to inA2 (1) .2 RRT (1300 € for a standard application filed after 1 July 2005, 885 € for a standard application filed before July 1, 2005).

1.6.4. Tax reduction

Normally, the language of the deposit can be whatever (A14 (2) EPC).

However, if an applicant has his domicile (or registered office) in one of the Contracting States (or if he is the national of one of those States domiciled abroad) and that State has an official language other than the applicant, the applicant, may deposit the document in the English, French or description other parts may be in another language (AX 9.2.2 Guidelines and G6 / 91) in one of these languages (R6 (3) EPC together A14 (4) EPC).

There is then a reduction in taxes.

For applications filed (incoming in phase) as of April 1, 2014 (" Decision of the Administrative Council of 13 December 2013 amending Rule 6 of the Implementing Regulation to the European Patent Convention and Article 14 (1) of the Rules relating to Fees », OY 2014, A4), to benefit from this reduction, all depositors will have to be (R6 (4) EPC and R6 (7) EPC):

  • a small or medium business
  • a physical person ; or
  • a non-profit organization, a university and a public research organization.

The criteria are given in the Commission Recommendation 2003/361 / EC of 6 May 2003 (R6 (5) EPC), and recalled in the Notice from the European Patent Office dated 10 January 2014 concerning the amendment of Rule 6 EPC and Article 14 (1) RRT », OJ 2014, A23).

Applicants must declare their membership in a higher mentioned category, but the EPO may ask for evidence in case of doubt (R6 (6) EPC).

All applicants (in case of plurality of applicants) must meet the above criteria (R6 (7) EPC). Nevertheless, it is not necessary that they are all nationals or inhabitants of a Contracting State whose official language is a language other than German, English or French (J4 / 18).

For this tax reduction to apply, it is possible to deposit the translation at the same time or after (but in any case not before, G6 / 91).

The applicant will obtain a 30% tax reduction (A14 (1) RRT) the filing fee only.

The additional fee for more than 35 pages is also reduced (Directives A-III 13.2).

No reduction of the search fee is planned.

1.6.5. sanctions

The EPO verifies that these taxes have been paid (A90 (3) EPC together R57 (e) EPC).

If the filing fee (and possibly the additional fee) and / or search fee is missing at the end of the 1 month, the request is deemed withdrawn (A78 (2) EPC for standard requests, R17 (2) EPC for applications filed by an unauthorized person and R36 (3) EPC for divisional applications).

This period benefits from the continuation of the procedure of theA121 EPC.

If the problem is the payment of the additional fee, the amount of the fee for the continuation of the procedure is calculated according to the number of pages in the file and for which the tax has not been paid (Directives A-III 13.2).

Section 1.7. Designation of the inventor

1.7.1. requirements

It is necessary, during the deposit, to designate the inventor (s) (A81 CBE and R19 (1) EPC) even if they wish to maintain their anonymity vis-à-vis third parties and do not wish to appear in published documents (R20 (1) EPC).

This designation must include (R19 (1) EPC):

  • the name and surname of the inventor (s);
  • the complete address of the inventor (s);
  • a statement indicating the origin of the acquisition of the right to the patent (A81 CBE, ex. a statement such as "under the contract made on ..." or "the plaintiff being the universal heir to ..." is sufficient Directives A-III 5.3);
  • the signature of the applicant or agent. If there are several applicants, the signature of each applicant, their representative or the common representative is mandatory (Guidelines A-VIII 3.4), because the designation of the inventors is not considered to be a related document that may not be signed in accordance with the R50 (3) EPC.

1.7.2. Not published

An inventor may wish not to be mentioned on the publication of the invention.

He may make a written request to the EPO (R20 (1) EPC). This application must be signed (R50 (3) EPC).

His name will be (Directives A-III 5.2):

  • registered in the BIA under R143 (1) (g) EPC.
  • or published on the application if its request arrives before the end of the technical preparations for publication;
  • accessible to the public inspection of the file (R144 (c) EPC).

1.7.3. Information of the inventor

If the applicant is not the inventor or sole inventor, the EPO transmits to them (R19 (3) EPC):

  • the number of the application;
  • the filing date and, if applicable, the date, the State and priority number of the priority application;
  • the name of the applicant;
  • the title of the invention;
  • designated states.

It is possible for the inventor to waive this notification (" Notice from the European Patent Office dated 5 April 1991 concerning the possibility for the inventor to forego the notification of the designation as provided for in Rule 17 (3) EPC », OJ 1991, 266).

Neither the applicant nor the inventor can rely on the omission of this notification (R19 (4) EPC) or errors contained therein.

If the registered letter comes back because the address is incorrect, the EPO will request the correct address from the applicant (Guidelines A-III 5.4). The notification will be re-sent if a new address is communicated, otherwise nothing ...

1.7.4. Rectification

It is possible to make an inventor correction (R21 (1) EPC) upon request.

There are no deadlines for such a correction. Rectification may even be requested when the proceedings before the EPO are completed (Directives A-III 5.6 and Directives A-XI 4).

Corrigenda can be:

  • the addition of an inventor:
    • the agreement of the other inventors already designated is not necessary (Directives A-III 5.6 and D8 / 82);
    • the agreement of the inventor to be added is not necessary (D8 / 82);
    • the request must contain the same information as for a designation, ie the information of R19 (1) EPC (see above, R21 (1) EPC).
  • the removal of an inventor wrongly designated:
    • his agreement is then necessary (R21 (1) EPC).
    • the agreement of the other inventors is not necessary.

Where the request is made by a third party, the consent of the applicant or holder is required (R21 (1) EPC).

Such rectification is the responsibility of the formalities officer, unless there is reason to believe that the decision will not allow the correction (A20 CBE)

There will be no notification concerning this irregularity (R58 EPC).

1.7.5. Penalty in case of non-designation or irregularities

If no inventor is designated or if the designation contains irregularities (eg no names of the inventor appointed) during the deposit, the EPO will see it (A90 (3) EPC together R57 (f) EPC) and notify the applicant (A90 (4) EPC).

The applicant has a period of 16 months from the deposit to correct his error (R60 (1) EPC). If the correction is made before the end of the technical preparations for publication, the correction is deemed to have been received on time (R60 (1) EPClast sentence, ie 5 weeks before publication in the light of Decision of the President of the European Patent Office dated 25 April 2006 concerning the completion of the technical preparations undertaken for the publication of the European patent application », OG 2006, 405).

In addition, if an advance publication is requested, the deadline for 16 months is maintained (J1 / 10).

If at the end of this period no correction is made, the request is rejected (A90 (5) EPC together R60 (1) EPC) and the applicant is informed.

The deadline for 16 months benefits from the continuation of the procedure of theA121 EPC.

1.7.6. Penalty in case of bad designation

Yes " Mickey Mouse "Is designated as inventor, it does not seem that the EPO can reject the request: no penalty is then incurred.

Section 1.8. Claiming priority

1.8.1. Requirements for the declaration of priority

If a priority claim is made, a declaration of priority must be made (A88 (1) EPC).

This declaration (R52 (1) EPC) includes:

  • the filing date;
  • the CUP State or WTO Member in which the deposit was made;
  • the deposit number.

This declaration must be completed at the filing (A88 (1) EPC together R52 (2) EPC).

Nevertheless, this declaration may be completed before the expiry of the period expiring later than any of the following periods:

  • in one 16 months from the earliest priority date (for an addition, R52 (2) EPC, Directives A-III 6.5.1);
  • in a delay of 16 months from the earliest date among (for correction, R52 (3) EPC):
    • the earliest priority date before correction and,
    • the earliest priority date after correction ;
  • in a delay of 4 months from the filing date (for correction, R52 (3) EPC);
  • in one deadline for the correction of the designation of the application number following a notification (see below).

However, these deadlines are no longer relevant if a request for advance publication is presented (R52 (4) EPC).

Only theA122 EPC is applicable to these deadlines.

1.8.2. Requirement for the provision of the official copy

1) Principle and delay

An official copy of the priority document must also be provided (R53 (1) EPC) in a delay of 16 months from the earliest priority date (this delay is not likely to be affected by an advance publication).

Moreover, in case of non-supply, a notification will be issued by the EPO and it will send a new deadline (see below).

2) Copy format

The copy may be filed:

  • in paper format (be careful, a simple impression of an electronic document is not enough: we are talking here about the paper document handed over by the administration of origin);
  • by CD (Guidelines A-III 6.7) if :
    • the CD has been engraved by the administration which delivers this copy in a non-modifiable way;
    • the content is certified by this administration;
    • the filing date is certified by this administration.
  • by electronic filing only if (" Decision of the President of the European Patent Office dated 9 May 2018 concerning the electronic filing of documents », OJ 2018, A45):
    • the document is signed by the administration issuing the copy;
    • the signature of this administration is recognized by the EPO.
    • the supply is made via EPOLINE (" Decision of the President of the European Patent Office dated 9 May 2018 concerning the electronic filing of documents », OJ 2018, A45) or via the CMS (" Decision of the President of the European Patent Office dated 15 November 2018 concerning the electronic filing of priority documents«, OJ 2018, A93)
3) Copy utility for other requirements

This official copy may fulfill the requirements of the declaration concerning the filing date and the deposit number if this official copy (Directives A-III 6.5):

  • is provided within the time limits prescribed above;
  • includes the mention of the previous filing date.
4) Exception regarding the delivery of the previous application

If the priority document has been filed in some countries, it is not necessary to produce a certified copy of it: Cooperation Agreements (DAS) allow the EPO to automatically obtain these documents without action by the applicant (R53 (2) EPC and Decision of the President of the European Patent Office dated 18 October 2018 concerning the production of priority documents », OJ 2018, A78).

Thus, are concerned (Guidelines A-III 6.7) :

  • a demand European,
  • a demand international if the RO is theEPO :
  • a demand American (normal or "provisional")
    • for the "provisionnal", a PTO / SB / 39 form must be filed with the USPTO to authorize 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);

Thus, the EPO includes in the file, free of charge, this copy without having to request it (F-VI Guidelines 3.3, except for US provisional applications, because a PTO / SB / 39 form 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).

1.8.3. Notification of irregularity and corrections

There are different cases generating or not an irregularity notification:

  • Notification:
    • If the official copy of the priority document is not provided within the 16 months from the earliest priority (A90 (4) EPC together R59 EPC);
    • If the deposit number is not provided (and not "is incorrect" because the EPO does not check) within the 16 months from the earliest priority (A90 (4) EPC together R59 EPC);
  • No notification:
    • If there is oversight of claim (since the EPO can not know if a priority is desired);
    • If the deposit date is not provided (or is incorrect, the R58 EPC not applying to the R57 (g) EPC, Directives A-III 6.5). If the date indicated is earlier than 12 monthsthe applicant is informed so that he can correct it if he so wishes (Directives A-III 6.6this notification does not impose a deadline, therefore the provisions of R52 (3) EPC);
    • If the designation of the state is not provided (or is incorrect, the R58 EPC not applying to the R57 (g) EPC, Directives A-III 6.5);
    • If the deposit number is wrong.

The previous deadlines benefit from the restitutio in integrum of the'A122 EPC.

1.8.4. Sanction

In case of notification, the EPO new deadline to provide the missing data (R59 EPC).

TheA122 EPC is only applicable to this new deadline.

After the expiry of the previous applicable time limits, no changes or additions of priority will be allowed.

If the applicant does not correct his declaration within this deadline or does not produce a copy of the previous application requested, priority is lost and the applicant is informed (A90 (5) EPC).

In the absence of notification, the applicant will have to correct his priority using the provisions of R52 (3) EPC (see the deadlines above). If at the end of the prescribed period the requirements are not met, priority is lost and the applicant is informed (A90 (5) EPC).

1.8.5. Correction under R139 EPC

It seems possible to request a correction under the R139 EPC. Nevertheless, a number of conditions must be respected:

  • dated and state filing of the earlier application (AV Guidelines 3):
    • the request for amendment must have been filed early enough to be taken into account before publication (eg, simple mention of the correction in the publication);
    • or, on the other hand,
      • if the error is obvious (D8 / 80) or the information is manifestly inconsistent (J3 / 91 and J2 / 92)
      • if it appears from the published application that an error has been made (J6 / 91);
      • if the rest of the proceedings can not suggest to the public that the priority claim was correct (T713 / 02);
      • if another priority is added and is later (J4 / 82)
  • number deposit :
    • it is possible to correct it at any time, even after publication, because the wrong number can not infringe the rights of third parties (since the priority document is in the folder, J3 / 91).

Normally, this correction is made by the formalities officer (" Decision of the President of the European Patent Office dated 12 December 2013 to assign to agents who are not examiners certain tasks of the Examining or Opposition Divisions », OJ 2014, A6point 22).

Nevertheless, if the formalities officer makes a correction, this does not mean that the point is definitively decided (T713 / 02).

1.8.6. Providing a translation of the priority document?

1) Principle

When filing and claiming a new priority, it is not necessary to translate the priority request.

Nevertheless, during the examination or during the opposition (exceptional case Notice from the European Patent Office dated 28 January 2013 concerning Rule 53 (3) EPC as amended », OG 2013, 150), it may happen that such a translation is requested: if the validity of the priority claim is relevant to establish whether the invention is patentable (ie if a relevant interleaved document is found by the Examiner), then a translation will be to be provided in one of the official languages after notification by the EPO and in a deadline (R53 (3) EPC).

This time limit is (" Notice from the European Patent Office dated 28 January 2013 concerning Rule 53 (3) EPC as amended, OG 2013, 150):

  • in case of European demand:
    • aligned with the time limit for the provision of the request for examination (R70 (1) EPC) or the time to confirm the examination (R70 (2) EPC) depending on the particular case, if the validity of the priority claim becomes significant at the moment the European search report is completed.
    • by the Examining Division, if the validity of the priority claim becomes significant during the examination procedure.
  • in case of euroPCT request:
    • granted by the Examining Division (if the EPO was ISA or SISA)
  • in case of European patent:
    • granted by the Opposition Division, if the validity of the priority claim becomes significant during the opposition proceedings.

TheA121 EPC is applicable to this deadline for the applicant while theA122 EPC is applicable for the holder.

2) Full translation declaration

It is also possible to provide a declaration that the European application is a complete translation of the priority document (R53 (3) EPCsecond sentence).

This declaration may be made in the request for grant form (Directives A-III 6.8.6).

3) Sanction

If no translation is produced within the deadlines, the intermediate documents will be considered as opposable (ie loss of the right of priority, A90 (5) EPC and R53 (3) EPC, last phrase).

1.8.7. Verification of the validity of the priority claim

1) Principle

The deposit section is not required to check the validity of the priority. Nevertheless, if this validity can be questioned in an obvious way (eg title of the priority application "Method of drilling an oil well", title of the European application "Shoe without lace"), the applicant will be informed (Directives A-III 6.4).

This is only studied in detail if an interlocutory document is relevant to the validity of the patent (F-VI 2.1 Guidelines).

2) Same invention

A priority request P contains the same invention as a claim of the subsequent application claiming that priority if (F-VI Guidelines 2.2 and G2 / 98) the person skilled in the art can, using his general knowledge, deduce directly and without ambiguity from the contents of P the subject of the claim of DU.

The drawings of the application P can be used (A88 (4) EPC and T169 / 83).

The elements mentioned in the reference to the state of the art or in a disclaimer can not be taken into account (F-VI Guidelines 2.2).

Finally, it is necessary that the content of DA is sufficiently described and allows the realization of the invention (T843 / 03).

1.8.8. Clarification concerning the loss of the right of priority / renunciation

The loss of the right of priority (or its renunciation) is not retroactive: even if for the applicant it does not change anything, for third parties the consequences can be significant.

Let's look at the following diagram:

1) Consequences for the applicant

For the plaintiff, the consequence is clear: he can not invoke his priority in the grant procedure (his actual filing date is t = 11).

Notification is made to the applicant in accordance with R112 (1) EPC.

Deadlines (only those not expired, Directives A-III 6.11) are then calculated from the new date of the application (Directives E-VIII 1.5).

If this loss or renunciation occurs after the end of technical preparations for publication, but before publication, this does not prevent publication (F-VI Guidelines 3.5).

2) Consequences for third parties

For third parties, the consequence is different:

  • If the priority has been withdrawn / rejected after publication while the priority claim was valid (eg the time limit for providing the copy was not expired), it will be opposable against their own request from the date of the priority document (the actual filing date is then t = 0 eg, if the copy is not provided on time, G-IV Guidelines 5.1.1).
  • If the priority has been withdrawn / rejected before publication, the effective date of the application will be that of the filing of the application (t = 11, G-IV Guidelines 5.1.1).

Section 1.9. Appointment of an agent

1.9.1. requirements

For proceedings before the EPO (with the exception of the formal deposition act), persons not domiciled in one of the member countries must be represented by an authorized representative (A133 (2) EPC).

We must be careful because nationality plays no role here.

1.9.2. Sanction

If no representative is appointed during the deposit (and that its constitution is mandatory), the EPO notifies the applicant (A90 (4) EPC) and gives him a period of 2 months (R58 EPC) allowing him to correct his mistake.

If at the end of this period no correction is made, the request is rejected (A90 (5) EPC) .

This period benefits from the restitutio in integrum of the'A122 EPC (ie 12 months as from the expiry of the period specified in the notification).

Section 1.10. Formal rules of text and drawings

1.10.1. requirements

1) Drawings

The R46 EPC gives the requirements of form of the drawings, in particular:

  • the drawings must be made in black and white, with the help of lines, without flat;
  • the drawings must be "sufficiently" large;
  • the inscriptions on the drawings (references, text, etc.) must be simple (not circled, without parentheses, without quotation marks). They must use the Latin or Greek alphabet. The size of the font must not be less than 3.2 mm (the size depends on the font chosen so be careful).
  • the margins can not be smaller than the following scheme:

It should be noted that the EPC does not contain any requirements as to the color of the drawings. Thus, the submitted drawings can be in color even if the availability to the public is in black and white (Directives A-IX 1.2).

2) Other parts

In addition, the R49 EPC provides additional requirements for the application parts (including description), including:

  • the sheets must be in A4 format and be used in portrait format (except possibly for drawings, tables or mathematical formulas);
  • leaves should be numbered with an Arabic numeral centered at the top of the leaf (but not in the margin);
  • the lines of the description and the claims must be numbered 5 in 5, to the left of the sheet (but without being in the margin);
  • the request for grant, the description, the claims and the abstract must be typed or printed (except possibly for symbols and graphic characters, chemical or mathematical formulas);
  • for typed texts, the line spacing must be 1.5;
  • all texts must be with a font whose capitals are at least 2.1 mm high (the size depends on the font chosen so be careful) and in black;
  • the margins can not be smaller than the following scheme:

1.10.2. Case of a referral

In the case of return, it is the certified copy (or, where applicable, its translation) which must satisfy the formal requirements (Directives A-III 3.2.1).

1.10.3. Sanction

If any of the above requirements are not met during the depositthe EPO notifies the applicant (A90 (4) EPC) and gave him a period 2 months (R57 i) EPC together R58 EPC) allowing him to correct his mistake.

If at the end of this period no correction is made, the request is rejected (A90 (5) EPC).

Normally, the filing section does not verify the requirement of the R46 (2) (i) EPC ( ' Reference signs may be used for the drawings only if they appear in the description and in the claims and vice versa"). It is the Exam division that will look at this point (Directives A-III 3.2).

This period benefits from the restitutio in integrum of the'A122 EPC (ie 12 months as from the expiry of the period specified in the notification).

Section 1.11. Listing of nucleotides and amino acids

1.11.1. Form

The application must contain the nucleotide sequences exposed in the application (R30 (1) EPC) in accordance with the " Decision of the President of the European Patent Office dated 28 April 2011 on the filing of sequence listings »(OY 2011, 372).

The standard used is WIPO Standard ST 25 (Directives A-IV 5 and Guidelines F-II 6.1).

In particular, the sequence listing must be deposited on an electronic data medium (eg CD Decision of the President of the European Patent Office dated 28 April 2011 on the filing of sequence listings », OY 2011, 372, art. 1).

In addition, if the listing is also provided in paper format, a declaration must be provided to certify that the listing is identical to the electronic listing.

1.11.2. Examination at the filing

The Receiving Section checks, when examining irregularities (A90 (3) EPC together R57 (j) EPC), if the prescribed listing has been filed (Directives A-III 1.2).

If the applicant has not produced a listing (or the required declaration), the filing section invites the applicant within 2 months (A90 (3) EPC together A90 (4) EPC together R30 (3) EPC):

Otherwise, the request is rejected (A90 (5) EPC together R30 (3) EPC).

TheA121 EPC is applicable (there are two acts not completed in the case where nothing has been done).

If the electronic medium includes illegible, incomplete or infected information, the applicant is informed and is requested to resubmit a replacement copy within 2 months non-extendable (" Decision of the President of the European Patent Office dated 28 April 2011 on the filing of sequence listings », OY 2011, 372, art. 3 (3)).

If a sequence is filed or corrected after the filing date, a statement must be provided by the agent or applicant to certify that the sequence provided does not extend beyond the content of the application as filed (" Decision of the President of the European Patent Office dated 28 April 2011 on the filing of sequence listings », OY 2011, 372, art. 2 (2)).

1.11.3. Publication

The sequence listing is published as part of the description (" Decision of the President of the European Patent Office dated 28 April 2011 on the filing of sequence listings », OY 2011, 372, art. 6).

1.11.4. Sequences filed late

If a sequence is filed late under the R56 (2) EPC (change of filing date), the filing section will check the formal requirements of this filing after the expiry of the 1 month to retract (R56 (6) EPC), and in the event of an irregularity, send a notification inviting the applicant to correct it within a 2 months (A90 (3) EPC together A90 (4) EPC together R30 (3) EPC, Guidelines A-IV 5.1).

If a sequence is filed late under the R56 (3) EPC (retention of the filing date), the filing section will check the formal requirements of this filing upon receipt of the sequenceand, in the event of an irregularity, send a notification inviting the applicant to correct it within a 2 months (A90 (3) EPC together A90 (4) EPC together R30 (3) EPC, Guidelines A-IV 5.1).

The sequence produced under the R56 (2) EPC or R56 (3) EPC part of the description on the filing date and the provisions of the R30 (2) EPC indicating the opposite does not apply (Guidelines A-IV 5.1).

1.11.5. Sequences in an application filed by reference

A sequence contained on the filing date in an earlier application to which it is returned (according to R40 (1) (c) EPC) is a part of the new application (unless the sequence was contained only in the claims and they were not incorporated R57 (c) EPC) (Directives A-IV 5.2).

The repository section will check the form requirements of the sequence when it receives the previous applicationand, in the event of an irregularity, send a notification inviting the applicant to correct it within a 2 months (A90 (3) EPC together A90 (4) EPC together R30 (3) EPC, Directives A-IV 5.2).

If the earlier application is a European application or a PCT application filed with the EPO, the requirements of the R30 (1) EPC (eg supply of a CD, declaration of conformity, etc.) are deemed to be fulfilled as soon as the new application is filed (Directives A-IV 5.2).

Chapter 2. Summary of these requirements

Here is a graphic summary of the different requirements:

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