Designated or elected Office

Contents

Chapter 1. EPO designated or elected

Section 1.1. Principle

Section 1.2. Designation of the EPO for a State

Section 1.3. Mandatory designation of the EPO for certain States

Chapter 2. Effects of phasing

Section 2.1. Public inspection

Section 2.2. Provisional protection

2.2.1. Principle

2.2.2. Enter phase

2.2.3. International publication in a non-official language

Section 2.3. State of the art within the meaning of A54 (3) EPC

Chapter 3. General information on entering the European phase

Section 3.1. Steps for entering phase

Section 3.2. Deadlines for entry into phase

3.2.1. Principle

3.2.2. Extension of entry deadline

3.2.3. Early entry

Chapter 4. Requirements when entering the European phase

Section 4.1. Filing fee

4.1.1. Principle

4.1.2. Basic fee

4.1.3. Fee for more than 35 pages

4.1.4. Time limit

4.1.5. Sanction

4.1.6. Legal remedies

1) Principle

2) Restitutio in integrum versus R49.6 PCT

Section 4.2. Designation fee

4.2.1. Principle

4.2.2. Amount

4.2.3. Time limit

4.2.4. Sanction

4.2.5. Legal remedies

Section 4.3. Annual fee for the 3rd year

4.3.1. Principle

4.3.2. Surcharge in case of delay

4.3.3. Sanction

4.3.4. Legal remedies

Section 4.4. Research tax

4.4.1. Principle

4.4.2. Amount

4.4.3. Reduction of the search report fee

4.4.4. Sanction

4.4.5. Legal remedies

Section 4.5. Claims taxes

4.5.1. Number of claims

4.5.2. Amount

4.5.3. Time limit

4.5.4. Waiver of receipt of R162 EPC

4.5.5. Debit

4.5.6. Refund in the event of a decrease in the number of claims

4.5.7. Sanction

4.5.8. Legal remedy

Section 4.6. Request for examination and examination fee

4.6.1. Requirement

4.6.2. Time limit

4.6.3. Sanction

4.6.4. Legal remedies

4.6.5. Invitation to maintain the request

4.6.6. Examination fee

1) Amount

2) Reduction

Section 4.7. Indication of the basis of the procedure

Section 4.8. Translation

4.8.1. Requirement

4.8.2. Time limit

4.8.3. contents

4.8.4. Sanction

1) Translation of main parts

Principle

Restitutio in integrum versus R49.6 PCT

2) Translation of secondary parts

4.8.5. Examination of the translation

Section 4.9. Exhibition certificate

4.9.1. Principle

4.9.2. Sanction

4.9.3. Legal remedy

Section 4.10. Designation of the inventor

4.10.1. Requirement

4.10.2. Sanction

4.10.3. Legal remedies

1) Principle

2) Restitutio in integrum versus R49.6 PCT

Section 4.11. Supply of the deposit number or copy of the previous application

4.11.1. Requirement

4.11.2. Transmission by the IB

4.11.3. Translation of the previous application

4.11.4. Exceptions to the requirement of delivery of the copy

4.11.5. Sanction

Section 4.12. Sequence listing

4.12.1. Principle

4.12.2. Sanction

4.12.3. Legal remedy

Section 4.13. Applicant Information

4.13.1. requirements

4.13.2. Sanction

4.13.3. Legal remedy

Section 4.14. Representation

4.14.1. Principle

4.14.2. Sanction

4.14.3. Legal remedy

Chapter 5. Procedure after entering phase

Section 5.1. Revisions of certain decisions taken during the international phase

Section 5.2. Position statement and modification of the request

5.2.1. Principle

5.2.2. Waiver

5.2.3. Different cases of figures

1) EPO = ISA and IPEA

2) EPO = ISA only

3) EPO = neither ISA nor SISA nor IPEA

4) EPO = neither ISA nor SISA, but IPEA

5) EPO = SISA

Section 5.3. Complementary research report

5.3.1. Principle

5.3.2. Exemption from supplementary research report

5.3.3. Base of the supplementary research report

5.3.4. Nature of the supplementary research report

5.3.5. Problem of non-unity

1) Where a further search is to be carried out by the EPO

2) Where the EPO has waived further research

Chapter 6. Review

Section 6.1. Principle

6.1.1. Problem of non-unity

See the latest changes

Chapter 1. EPO designated or elected

Section 1.1. Principle

A European patent can be obtained internationally (A153 (1) EPC in accordance with A4.1.ii PCT and A45.1 PCT).

Section 1.2. Designation of the EPO for a State

However, the EPO can not be designated or elected for a State than if, at the time of filing of this international application (J30 / 90), this state :

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

Section 1.3. Mandatory designation of the EPO for certain States

For some countries, it is not possible to obtain a patent internationally without going through the designation of the EPO for the purpose of obtaining a European patent (Applicant's Guide, Annex B1, compliant A4.1.ii PCT and A45.2 PCT):

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

For other States, the designation of a State is both for the purposes of national protection and for a European patent (eg England) A45.1 PCT): at the national level, each country can decide whether there are overlapping protections (A139 (3) EPC).

Chapter 2. Effects of phasing

Section 2.1. Public inspection

At the international level, the EPO as IEA can not make records accessible to third parties (A38.1 PCT and R94.2 PCT) except :

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

Nevertheless, as an elected Office, the EPO allows access to the file of the international application as soon as the application is published (" Access to PCT files », OJ 2003, 382 in accordance with R94.3 PCT): it is not necessary for the applicant to indicate his intention to enter the European phase.

The methods of public inspection are the same as for a European application.

Section 2.2. Provisional protection

2.2.1. Principle

Provisional protection is provided in principle as from international publication (A153 (3) EPC true A29.1 PCT) in an official language of the EPO (A153 (3) EPC true A29.2 PCT).

2.2.2. Enter phase

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

If the phasing is never done, the protection will be deemed noA67 (4) EPCbecause the patent application will be deemed withdrawn according to R160 (1) EPC) and a notification will be sent to the applicant (who may then R160 (2) EPC together R112 (2) EPC).

2.2.3. International publication in a non-official language

If the application is not published in English, French or German, provisional protection is only granted from the provision of the translation and its publication by the EPO (A153 (4) EPC true A29.2 PCT).

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

Section 2.3. State of the art within the meaning of A54 (3) EPC

In order for an international application to enter the state of the art within the meaning of A54 (3) EPC, this application must enter the European phase.

I repeat this diagram of the article " Novelty In order to detail the "Euro-PCT" part:

EDT
  1. If the disclosure is a Euro-PCT application (and validating points 7 to 9 below), it must be asked whether the application whose patentability is in question was filed internationally before 13 December 2007 (ie entry into force of EPC 2000): otherwise the document is a document A54 (3) EPC.
  2. If the application whose patentability is in question was filed before 13 December 2007 (and validating points 7 to 9 below), then it is necessary to check that the conditions laid down by the CBE73 are met with respect to the request for the prior art:
    • The opposability of the application of the prior art is analyzed country by country: to be opposable in a country, it is necessary that this application of the prior art has validly designated this country (A54 (4) CBE73).
    • If the request of the prior art is a simple EP request:
      • It is necessary that the designation fees of theA79 (2) CBE73 have been validly paid (R23bis CBE73). These taxes must be paid within 6 months from the mention of the publication of the European search report (A79 (2) CBE73).
      • If this deadline is missed, a notification is sent and then runs a deadline of 1 month to make this payment with surcharge (R85bis CBE73).
    • If the request of the prior art is a Euro-PCT application (A158 (1) CBE73 and A158 (2) CBE73):
      • It is necessary to pay the national tax of R106 CBE73, ie the filing fee and the designation fees;
      • The designation fees may in any case be paid within a 31 months (R107 (1) CBE73) or within 6 months from the mention of the publication of the international search report (the longer of the two deadlines).
  3. If the disclosure is a Euro-PCT application, it should be considered whether it was pending (ie still in international phase) on 13 December 2007 (ie the entry into force of the EPC 2000);
  4. If this request was still pending on 13 December 2007, the EPC 2000 is applicable and it must be considered whether this request is worth a regular European application (A153 (2) EPC) under CBE2000 conditions (A153 (5) EPC together A153 (3) EPC, A153 (4) EPC, and R165 EPC):
    • It is necessary to produce a translation of the PCT application if it is not in one of the official languages of the EPO (A153 (4) EPC);
    • It is necessary to pay the filing fee of R159 (1) (c) EPC.
  5. If this request was no longer pending on 13 December 2007, the EPC 1973 is applicable and it must be considered whether the conditions of entry into phase CBE73 have been met (A158 (1) CBE73 and A158 (2) CBE73), ie under 31 months :
    • It is necessary to produce a translation of the PCT application if it is not in one of the official languages of the EPO;
    • It is necessary to pay the national tax of R106 CBE73, that is to say :
      • the filing fee and
      • designation fees;
    • The designation fees may be paid within a 31 months (R107 (1) CBE73) or within 6 months from the mention of the publication of the international search report (the longer of the two deadlines).

Chapter 3. General information on entering the European phase

Section 3.1. Steps for entering phase

The phase entry can be done via the form 1200, although its use is not mandatory.

The phase entry can be done online via the EpoLine / CMS software or online form (" Decision of the President of the European Patent Office dated 9 May 2018 concerning the electronic filing of documents », OJ 2018, A45).

Section 3.2. Deadlines for entry into phase

3.2.1. Principle

The phase-in period in Europe is 31 months from the priority date (R159 (1) EPC in accordance with A22.1 PCT and A22.3 PCT if the EPO is designated office, A39.1.a PCT and A39.1.b PCT if the EPO is elected).

3.2.2. Extension of entry deadline

The provisions of the R134 EPC apply to the period of entry into phase of the R159 EPC.

3.2.3. Early entry

Normally, even if it enters the phase before this deadline, 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 advance processing », OG 2013, 156 conform to theA23.2 PCT or A40.2 PCT).

If the express request for early entry is made prior to the publication of the international application, the applicant or the EPO must also request the IB to provide the documents of the application in accordance with theA20 PCT (A23.2 PCT or A40.2 PCT together R47.4 PCT).

No form is required for this request.

The applicant must then comply with the phase entry requirements mentioned below (eg, pay the filing fee, the additional fee if the application exceeds 35 pages), produce a translation, specify the application documents and pay the search fee) (" Notice from the European Patent Office dated 21 February 2013 concerning the request for advance processing », OG 2013, 156).

Chapter 4. Requirements when entering the European phase

Section 4.1. Filing fee

4.1.1. Principle

This requirement is stated in R159 (1) (c) EPC.

4.1.2. Basic fee

The national tax (of theA22.1 PCT and fromA39.1.a PCT) is the filing fee of theA78 (2) EPC together R159 (1) (c) EPC.

This tax isA2 (1) .1 RRT):

  • 120 € if the phase entry is done online;
  • 250 € if the phase entry is not done online.

4.1.3. Fee for more than 35 pages

In addition, an additional filing fee must be paid if the request is more (strictly) 35 pages long and if the international application enters the European phase after 1 April 2009 (" Notice from the European Patent Office dated 26 January 2009 concerning the 2009 fee structure », OJ 2009, 118).

The additional fee is referred to A2 (1) .1bis RRT (15 € per page above strictly 35).

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

  • the international application as published;
  • possible modifications after receipt of RRI (A19 PCT);
  • one page for the abstract;
  • one page for bibliographic data even if they contain more than one page;
  • changes presented when entering the phase (A34 PCT) if they are available to the EPO on the date of payment of the additional fee and if the date of payment is within the 31 months ;
  • 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 the payment of the additional fees and within the 31 months.

If the international application has not been published in an official language (" Notice supplementing the Notice from the European Patent Office dated 26 January 2009 concerning the 2009 fee structure », OJ 2009, 338), the same principles apply, but the modifications when entering phase (A34 PCT) must be produced directly in an official language.

4.1.4. Time limit

The filing fee (including the additional fee for more than 35 pages) must be paid within the 31 months (R159 (1) (c) EPC).

4.1.5. Sanction

In case of failure the request is deemed withdrawn (R160 (1) EPC in accordance with A24.1.iii PCT or A39.2 PCT)

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 R112 (2) EPC).

4.1.6. Legal remedies

1) Principle

TheA121 EPC is applicable to the period of 31 months ( ' Notice from the European Patent Office dated 26 January 2009 concerning the 2009 fee structure », OJ 2009, 118, Guidelines E-IX 2.1.3).

The amount of further processing is calculated based on the number of pages in the file at the end of the period (Directives A-III 13.2).

It is also possible to benefit from the provisions of the R49.6 PCT allowing, in the event of failure to comply with one of the acts of entry into phase, to be reinstated in his rights if the non-observance of the time limit has occurred even though the due diligence in this case was exercised ( ' Notice from the European Patent Office dated 7 November 2007 concerning the withdrawal of PCT reservations », OJ 2007, 692).

The requirements in terms of evidence are quite close to those of theA122 EPC (R49.6.c PCT and R49.6.d.ii PCT).

Multiple legal remedies for non-compliance when entering phase
Multiple legal remedies for non-compliance when entering phase

The request for reinstatement of rights must be filed under 2 months from the cessation of the impediment, but without exceeding 12 months from the expiry of the 31 months (R49.6.b PCT).

A reinstatement fee must be paid (equal to the tax of re): 640 € (A2 (1) .13 RRT in accordance with R49.6.di PCT).

2) Restitutio in integrum versus R49.6 PCT

As the restitutio in integrum (A122 EPC) is also possible on the delay of theA121 EPC, we can tell ourselves that the provisions of the R49.6 PCT are useless ... (since the delay of theA122 EPC expires by construction after that of the R49.6 PCT).

This is not quite true ...

Indeed :

  • the legitimate excuses that can allow a restitutio in integrum (A122 EPC) are aimed at acts of the continuation of the proceedings (ie the required diligence must cover acts that should have allowed the continuation of proceedings);
  • legitimate excuses for PCT restoration (R49.6 PCT) are aimed at acts of phase entry (ie the required diligence must cover the acts that should have allowed the entry into phase).

Section 4.2. Designation fee

4.2.1. Principle

This requirement is stated in R159 (1) (d) EPC.

4.2.2. Amount

The designation fee (R159 (1) (d) EPC together A79 (2) EPC and R39 (1) EPC conform to the R49.1.a PCT or R76.5 PCT) is of 585 € (A2 (1) .3 RRT).

4.2.3. Time limit

In principle, the designation fee must be paid (max of the two periods, R159 (1) (d) EPC):

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

4.2.4. Sanction

Otherwise, the request 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 R112 (2) EPC).

4.2.5. Legal remedies

TheA121 EPC is applicable to the period of 31 months (Guidelines E-IX 2.1.3).

The R49.6 PCT does not apply because the designation fee is not part of the national fee referred to inA22 PCT, only allowing a restoration of rights (EuroPCT Guide E-VIII 1, point 548).

Section 4.3. Annual fee for the 3rd year

4.3.1. Principle

The annual fee due for the third year must be paid within the 31 months from the priority (R159 (1) (g) EPC) if this deadline has come to an end.

So, any tax is not due:

  • if the international application is a priority application;
  • whether the time difference between the filing of the priority application and the filing of the international application is greater than 7 months.

4.3.2. Surcharge in case of delay

If the third installment is not paid on time, it may still be paid with surcharge within a period of 6 months (R51 (2) EPC).

In the event that the payment deadline for the third installment has expired, the 31 months delay the payment with surcharge (by extending the deadline for 31 months if it falls on a closing day for one of the EPO offices, because it is a compound delay, J1 / 89 and AX 5.2.4 Guidelines).

In the event that the deadline for payment of the third installment has not yet expired, the calculation of the 6 months is done as usual, that is to say using the "ultimo-ultimo" principle described in the article on payment of renewal fees.

Payment of the 3rd installment for a EuroPCT application
Payment of the 3rd installment for a EuroPCT application Payment of the 3rd annuity for a EuroPCT application

4.3.3. Sanction

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

4.3.4. Legal remedies

Only theA122 EPC is applicable to the period of 6 months.

Section 4.4. Research tax

4.4.1. Principle

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

This tax must be paid within the 31 months from the priority (R159 (1) (e) EPC).

4.4.2. Amount

By default, the amount of this tax is 1300 € (A2 (1) .2 RRT) for applications filed on or after July 1, 2005.

4.4.3. Reduction of the search report fee

In some situations, the search fee is reduced:

  • there is a exemption complementary research (and therefore no tax is due) if:
    • ISA or SISA is the EPO (" Notice from the European Patent Office dated 6 February 2012 concerning search and examination fees », OG 2012, 212point 3.a);
    • the ISA, for an application filed previously 1st July 2005, has been (" Notice from the European Patent Office dated 6 February 2012 concerning search and examination fees », OG 2012, 212point 3.b):
      • the Swedish Patent Office,
      • the Austrian Office
      • the Spanish Office.
  • there is a reduction of 1100 € of the supplementary search fee (which is 1300 €, A2 (1) .2 RRT) if the application was filed after 1st July 2005 and if the ISA is (" Decision of the Administrative Council of 16 December 2015 reducing the tax payable for supplementary European search where the international search report or the supplementary international search report has been drawn up by the Austrian Patent Office, by the Spanish Patent Office and trademarks, by 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) », OY 2016, A2) :
    • the Austrian Office,
    • the Finnish Office,
    • the Swedish Office,
    • the Spanish Office,
    • the Nordic Institute,
    • the Visegrad Institute.

These provisions were made by the board of directors under theA153 (7) EPC.

4.4.4. Sanction

Otherwise, the request 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 R112 (2) EPC).

4.4.5. Legal remedies

TheA121 EPC is applicable to the period of 31 months (Guidelines E-IX 2.1.3).

Section 4.5. Claims taxes

4.5.1. Number of claims

The EPO relies on the parts of the application on which the issuing procedure must be based to calculate the number of claims greater than 15 (R162 (1) EPC).

4.5.2. Amount

Each claim from the 16th gives rise to a payment of 235 € then 585 € beyond the 51st (A2 (1) .15 RRT)

4.5.3. Time limit

This tax must to be paid within the 31 months to count the priority (R162 (1) EPC together R159 (1) EPC).

Nevertheless, the applicant can pay them within a 6 months from the notification (R162 (2) EPC, which is served upon the expiry of the 31 months, combined with the notification according to R161 (1) EPC, " Notice dated 13 October 1999 concerning the amendment of the Regulations under the European Patent Convention and the Regulations relating to Fees », OJ 1999, 696point I.10) stating that it has not been paid.

This payment is calculated on the basis of the claims possibly modified in response to the R161 (1) EPC (R162 (3) EPC).

4.5.4. Waiver of receipt of R162 EPC

When entering phase, it is possible for the applicant to waive his right to receive the notification R162 EPC reminding him of the payment of claims fees (such as giving up notification R161 EPC, " Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure », OJ 2015, A94).

To do this, it will be necessary for him to have, when entering phase:

  • filed amendments in response to the written opinion of ISA (or HIFIS or IPEA as appropriate);
  • paid the necessary claims fees.

4.5.5. Debit

In the case of automatic debit, the claims fees are deemed to be received on the last day of the 6 mes (unless otherwise specified by the EPO, point 6.1.b RPA, OJ 3/2009, supplement).

It is not possible to benefit from the automatic debiting procedure if the applicant waives his right to receive the R162 EPC In this case, the applicant must pay the claims fees as soon as they enter the phase by other means.

4.5.6. Refund in the event of a decrease in the number of claims

If amended claims within the 6 months from the notification R161 (1) EPC and R161 (2) EPC cause the number of claims for which a tax is payable to be reduced, while claim fees have already been paid, the overpayment is refunded (R162 (2) EPC and R162 (3) EPC).

Any subsequent decrease in the number of claims (eg unity of invention problem requiring a restriction) does not allow for reimbursement (J3 / 09).

4.5.7. Sanction

If a claims fee is not paid on time, the corresponding claim (ie the highest claim) is deemed abandoned (R162 (4) EPC).

A claim deemed to be abandoned, which does not otherwise appear in the description or drawings, can not be used for subsequent modification (Guidelines E-IX 2.1.3).

4.5.8. Legal remedy

TheA121 EPC is applicable to this period of 6 months.

Section 4.6. Request for examination and examination fee

4.6.1. Requirement

A request for examination must be submitted (R159 (1) (f) EPC). When the requester uses the form 1200 for entry into phase, the box is already checked.

The request for examination shall be considered as submitted only after payment of the examination fee (A94 (1) EPC).

4.6.2. Time limit

The request for examination must be submitted (max of two deadlines):

  • 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 RRI (A153 (6) EPC together R70 (1) EPC, only applies if the RRI is published 25 months after the priority).

4.6.3. Sanction

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

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

4.6.4. Legal remedies

TheA121 EPC is applicable to the period of 31 months (Guidelines E-IX 2.1.3).

4.6.5. Invitation to maintain the request

If the applicant has submitted his request for examination before the supplementary search report is notified to him (if a further search is to be carried out), the EPO sets a deadline to confirm his request (D8 / 83 and R70 (2) EPC, the reasoning of the decision
D8 / 83 is that the complementary research report is a research report and so the R70 (2) EPC applies naturally).

This notification also invites him to comment on the objections contained in the RREE (R70bis (2) EPCthe 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 fee is refunded in full (D8 / 83 and A11 a) RRT).

It is possible that the applicant definitively renounces the possibility of confirming his request when entering the phase (via the PACE program,
Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93) .

If no supplementary search report is to be made, this invitation is not made and the Examining Division becomes competent upon receipt by the EPO of the request for examination (D8 / 83).

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

4.6.6. Examination fee

1) Amount

If there has been no supplementary search report and for applications filed on or after July 1, 2005, the examination fee is 1825€ (A2 (1) .6 RRT).

Otherwise, the examination fee is 1635€ (A2 (1) .6 RRT) for applications filed on or after July 1, 2005.

2) Reduction

If the EPO has been IPEA, the examination fee is reduced by 50% (A14 (2) RRT) unless the European phase review covers elements not covered in the international phase.

In addition, it is possible to benefit from a reduction of 20% (A153 (2) EPC together R6 (3) EPC together A14 (4) EPCand A14 (1) RRT) if the applicant (domiciled or domiciled in a Contracting State having a language other than German, English or French as an official language, or being a national of that State) submits the request for examination in that national language .

Both reductions can accumulate (AX 9.3.2 Guidelines).

Section 4.7. Indication of the basis of the procedure

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

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

Thus, the request can be modified just for entry into phase or after receipt of the RRI (A19 PCT): these changes may be considered as the response to the RRI's written opinion, effectively removing the obligation to respond to the notification R161 (1) EPC (OJ 2009, 533point 5.2.2).

Of course, the requirements for identifying and justifying changes (R137 (4) EPC) remain applicable (even if a priorias long as the Examining Division is not competent, no notification will be issued to remedy this irregularity, R137 (4) EPC 2nd sentence).

At worst, if the changes do not seem supported and the search is heavily impacted by the changes, the Research Examinator may issue a notification R63 EPC (Directives B-VIII 6).

If in response to the R161 (2) EPC, the applicant modifies his request, these modifications will of course be taken into account during the complementary search and during the examination (Guidelines B-II 4.3.3).

Section 4.8. Translation

4.8.1. Requirement

This requirement is stated in R159 (1) (a) EPC.

A translation of the international application must be submitted to the EPO if the language of filing or publication of the application was not an official language of the EPO (A153 (4) EPC true A22.1 PCT together R49.1.ai PCT or A39.1.a PCT together R76.5 PCT).

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

4.8.2. Time limit

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

4.8.3. contents

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

  • the description ;
  • the claims as filed;
  • the text of the drawings;
  • the abstract;
  • any changes to the claims (as well as statements explaining these changes, if a translation is not delivered, the EPO may disregard the amendment, R49.5.c PCT);
  • any request for rectification according to the R91.3.d PCT.

4.8.4. Sanction

1) Translation of main parts
Principle

If the translation is not submitted on time, the request 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 R112 (2) EPC).

TheA121 EPC is applicable to the period of 31 months (Guidelines E-IX 2.1.2).

The translation being referred toA22 PCTit is also possible to benefit from the provisions of the R49.6 PCT allowing, in the event of failure to comply with one of the acts of entry into phase, to be reinstated in his rights if the non-observance of the time limit has occurred even though the due diligence in this case was exercised ( ' Notice from the European Patent Office dated 7 November 2007 concerning the withdrawal of PCT reservations », OJ 2007, 692).

The requirements in terms of evidence are quite close to those of theA122 EPC (R49.6.c PCT and R49.6.d.ii PCT).

Multiple legal remedies for non-compliance when entering phase
Multiple legal remedies for non-compliance when entering phase

The request for reinstatement of rights must be filed under 2 months from the cessation of the impediment, but without exceeding 12 months from the expiry of the 31 months (R49.6.b PCT).

A reinstatement fee must be paid (equal to the tax of re):640 € (A2 (1) .13 RRT in accordance with R49.6.di PCT).

Restitutio in integrum versus R49.6 PCT

As the restitutio in integrum (A122 EPC) is also possible on the delay of theA121 EPC, we can tell ourselves that the provisions of the R49.6 PCT are useless ... (since the delay of theA122 EPC expires by construction after that of the R49.6 PCT).

This is not quite true ...

Indeed :

  • the legitimate excuses that can allow a restitutio in integrum (A122 EPC) are aimed at acts of the continuation of the proceedings (ie the required diligence must cover acts that should have allowed the continuation of proceedings);
  • legitimate excuses for PCT restoration (R49.6 PCT) are aimed at acts of phase entry (ie the required diligence must cover the acts that should have allowed the entry into phase).
2) Translation of secondary parts

If documents annexed to the preliminary examination report are written in a language other than the language of the proceedings, and if a translation is not provided, the applicant is requested to provide a translation into the language of the proceedings within allottedE-IX 4.3 Guidelines).

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

4.8.5. 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 (eg elements contrary to morality), the EPO also verifies that they have been omitted from the translation (Guidelines E-IX 2.3.7).

Section 4.9. Exhibition certificate

4.9.1. Principle

The certificate of exposure must be provided within the 31 months from the priority date (R159 (1) (h) EPC true A27.2.ii PCT together R51bis.1.av PCT).

4.9.2. Sanction

The sanction of a non-supply is the fact that the disclosure made during the exhibition is then opposable (A55 (2) EPC).

4.9.3. Legal remedy

TheA121 EPC is applicable.

Since the sanction of non-supply is not a cessation of the effects of the international application, the restoration of the rights of the R49.6 PCT is inapplicable.

Section 4.10. Designation of the inventor

4.10.1. Requirement

If the designation of inventor of the R19 (1) EPC was not carried out within the 31 months from the priority, the EPO invites the applicant to do so under 2 months (R163 (1) EPC).

4.10.2. Sanction

Otherwise, the request is rejected (R163 (6) EPC).

4.10.3. Legal remedies

1) Principle

TheA121 EPC is applicable to this period of 2 months.

The designation of the inventor being referred to inA22 PCTit is also possible to benefit from the provisions of the R49.6 PCT allowing, in the event of failure to comply with one of the acts of entry into phase, to be reinstated in his rights if the non-observance of the time limit has occurred even though the due diligence in this case was exercised ( ' Notice from the European Patent Office dated 7 November 2007 concerning the withdrawal of PCT reservations », OJ 2007, 692).

The requirements in terms of evidence are quite close to those of theA122 EPC (R49.6.c PCT and R49.6.d.ii PCT).

Multiple legal remedies for non-compliance when entering phase
Multiple legal remedies for non-compliance when entering phase Multiple legal remedies for non-compliance when entering phase

The request for reinstatement of rights must be filed under 2 months from the cessation of the impediment, but without exceeding 12 months from the expiry of the 31 months (R49.6.b PCT).

A reinstatement fee must be paid (equal to the tax of re): 640 € (A2 (1) .13 RRT in accordance with R49.6.di PCT).

2) Restitutio in integrum versus R49.6 PCT

As the restitutio in integrum (A122 EPC) is also possible on the delay of theA121 EPC, we can tell ourselves that the provisions of the R49.6 PCT are useless ... (since the delay of theA122 EPC expires by construction after that of the R49.6 PCT).

This is not quite true ...

Indeed :

  • the legitimate excuses that can allow a restitutio in integrum (A122 EPC) are aimed at acts of the continuation of the proceedings (ie the required diligence must cover acts that should have allowed the continuation of proceedings);
  • legitimate excuses for PCT restoration (R49.6 PCT) are aimed at acts of phase entry (ie the required diligence must cover the acts that should have allowed the entry into phase).

Section 4.11. Supply of the deposit number or copy of the previous application

4.11.1. Requirement

If a priority is claimed, and the filing number or copy of the priority application (from R52 (1) EPC and R53 EPC) are not provided within the 31 monthsthe EPO invites the applicant to provide them within a 2 months (R163 (2) EPC).

4.11.2. Transmission by the IB

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

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

The EPO will have to start the examination even though the issuing decision may be delayed pending the copy (Guidelines E-IX 2.3.5).

4.11.3. Translation of the previous application

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

4.11.4. Exceptions to the requirement of delivery of the copy

As for filing requirementsthis obligation to provide the copy is subject to exceptions.

If the priority document has been filed in some countries, it is not necessary to produce a certified copy of it: co-operation agreements allow the EPO to obtain these documents automatically without any 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-IV 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).

4.11.5. Sanction

Otherwise, the priority is lost (R163 (6) EPC).

TheA121 EPC is applicable to this period of 2 months.

Since the sanction of non-supply of such information is not a cessation of the effects of the international application, the restoration of the rights of the R49.6 PCT is inapplicable.

Section 4.12. Sequence listing

4.12.1. Principle

If the applicant has to submit to the EPO a listing which complies with the requirements within a 31 months from the priority (R163 (3) EPC together R159 (1) EPC).

If the sequence listing has not reached the EPO by the deadline, the applicant is requested to provide it within 2 months from the notification (R163 (3) EPC) also paying a late delivery fee (R163 (3) EPC together R30 (3) EPC): 230 € (A2 (1) .14bis RRT).

4.12.2. Sanction

Otherwise, the request is rejected (R163 (3) EPC together R30 (3) EPC).

4.12.3. Legal remedy

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

Nevertheless, this act is not listed in theA22 PCT, the provisions of the R49.6 PCT reinstatement of rights are inapplicable.

Section 4.13. Applicant Information

4.13.1. requirements

If, on the expiry of the 31 months priority, the address, the nationality, or the State of the domicile or registered office of an applicant is lacking, the EPO invites the applicant to provide such information within a 2 months (R163 (4) EPC).

4.13.2. Sanction

Otherwise, the request is rejected (R163 (6) EPC).

4.13.3. Legal remedy

TheA121 EPC is applicable to this period of 2 months.

Nevertheless, this act is not listed in theA22 PCT, the provisions of the R49.6 PCT reinstatement of rights are inapplicable.

Section 4.14. Representation

4.14.1. Principle

If no representative is appointed at the end of the 31 months from the priority date (where the applicant is not domiciled in a Member State A133 (2) EPC), the EPO invites the applicant to appoint a representative in the 2 months (R163 (5) EPC in accordance with A27.7 PCT together R51bis.1.bi PCT or to A27.7 PCT together R76.5 PCT).

4.14.2. Sanction

If this deadline is not respected, the request is rejected (R163 (6) EPC).

4.14.3. Legal remedy

TheA121 EPC is applicable to the period of 2 months above.

Nevertheless, this act is not listed in theA22 PCT, the provisions of the R49.6 PCT reinstatement of rights are inapplicable.

Chapter 5. Procedure after entering phase

Section 5.1. Revisions of certain decisions taken during the international phase

The EPO is not obliged to respect all the decisions that the different administrations may have taken at the stage of the international procedure, for example:

  • refusal of a filing date or considering the application considered withdrawn (A25.2 PCT) or
  • a decision regarding the excuse (or not) for delay.

The Examining Division is competent to review these decisions (R159 (2) EPC).

In the event of a review invalidating an old decision, the EPO takes a decision that is subject to appeal.

Section 5.2. Position statement and modification of the request

5.2.1. Principle

The applicant has a right for the applicant to file amendments (R161 EPC in accordance with A28.1 PCT or A40.1 PCTduring 6 months from the corresponding notification (minimum of 1 month prescribed by A28.1 PCT together R52.1 PCT or A40.1 PCT together R78.1 PCT).

Of course, the requirements for identifying and justifying changes (R137 (4) EPC) remain applicable even in response to this notification.

5.2.2. Waiver

When entering phase, it is possible for the applicant to waive his right to receive the notification R161 EPC allowing him to make changes to his application (" Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure », OJ 2015, A94).

To do this, it will be necessary for him to have, when entering phase:

  • filed amendments in response to the written opinion of ISA (or HIFIS or IPEA as appropriate);
  • paid the necessary claims fees.

5.2.3. Different cases of figures

1) EPO = ISA and IPEA

The applicant has the opportunity to comment on the preliminary examination report (R161 (1) EPC) and where appropriate, the EPO invites it to remedy the deficiencies found in this examination report.

These modifications may be unrelated to the examination report if they are made at the same time as the response to this notification (Guidelines C-III 2.2): the other amendments will be submitted for the approval of the Examining Division (R137 (2) EPC and R137 (3) EPC).

An answer is mandatory, unless :

The deadline for responding to the notification is 6 months from the notification (R161 (1) EPC).

If a response is mandatory, but no response is provided, the request is deemed withdrawn (R161 (1) EPC).

TheA121 EPC is applicable to this period of 6 months.

2) EPO = ISA only

The fact that another office has been IPEA in the international procedure does not change the following (E-IX 3.2 Guidelines).

The applicant has the opportunity to comment on the written opinion attached to the international search report (R161 (1) EPC) and where appropriate, the EPO invites him to remedy the irregularities found in this written opinion.

These modifications may be unrelated to the written opinion if they are made at the same time as the reply to this notification (Guidelines C-III 2.2): the other amendments will be submitted for the approval of the Examining Division (R137 (2) EPC and R137 (3) EPC).

An answer is mandatory, unless :

  • there is no objection to the written opinion (Guidelines E-IX 3.3.2);
  • the applicant has already submitted changes or comments when entering the phase (E-IX Guidelines 3.3.1) and if the applicant indicates that these modifications / comments must be the basis of the examination (Guidelines E-IX 3.3.5);
  • the applicant has submitted amendments in response to the IPP according to theA19 PCT (E-IX Guidelines 3.3.1) and if the applicant maintains these changes upon entry into phase and provides a translation where appropriate (Guidelines E-IX 3.3.5, " Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Regulations under the European Patent Convention », OJ 2009, 533point 5.2.2);
  • the applicant has submitted, where appropriate, amendments during the international examination according to theA34 PCT (E-IX Guidelines 3.3.1) and if the applicant maintains these changes upon entry into phase and provides a translation where appropriate (Guidelines E-IX 3.3.5, " Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Regulations under the European Patent Convention », OJ 2009, 533point 5.2.2).

The deadline for responding to the notification is 6 months from the notification (R161 (1) EPC).

If a response is mandatory, but no response is provided, the request is deemed withdrawn (R161 (1) EPC).

TheA121 EPC is applicable to this period of 6 months.

3) EPO = neither ISA nor SISA nor IPEA

The applicant is invited to, if he wishes, freely modify his application (R161 (2) EPC) in a delay of 6 months from the notification.

Of course, the applicant can modify the request without waiting for this notification at the entry phase (" Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Regulations under the European Patent Convention », OJ 2009, 533, point 5.2.5).

There is no penalty for non-response to the R161 EPC (E-IX Guidelines 3.1).

4) EPO = neither ISA nor SISA, but IPEA

This can happen especially if the ISA has been AT, ES, FI, SE, or XN.

The letter of the R161 (1) EPC does not seem to make it possible to make the response to the notification obligatory (ie the provisions of the preceding paragraph then apply).

5) EPO = SISA

The procedure is very similar in case the EPO is ISA only.

If the EPO has been SISA, the applicant is invited to comment on the supplementary search report (explanations of the citations of the documents deemed relevant and the scope of the search under the R45bis.7.e PCT) (R161 (1) EPC).

The deadline for responding to the notification is 6 months from the notification (R161 (1) EPC).

If a response is mandatory, but no response is provided, the request is deemed withdrawn (R161 (1) EPC).

TheA121 EPC is applicable to this period of 6 months.

Section 5.3. Complementary research report

5.3.1. Principle

The international search report normally replaces the European report (A153 (6) EPC).

Nevertheless, a complementary search must be carried out when entering the phase (A153 (7) EPC).

Indeed, when entering the European phase, and even if a search was carried out during the international phase, the EPO wishes to verify that it was of good quality: a complementary search report is therefore established. .

5.3.2. Exemption from supplementary research report

There is a exemption complementary research if:

  • ISA or SISA is the EPO (" Notice from the European Patent Office dated 6 February 2012 concerning search and examination fees », OG 2012, 212point 3.a);
  • the ISA, for an application filed previously 1st July 2005, has been (" Notice from the European Patent Office dated 6 February 2012 concerning search and examination fees », OG 2012, 212point 3.b):
    • the Swedish Patent Office,
    • the Austrian Office
    • the Spanish Office.

These provisions were made by the board of directors under theA153 (7) EPC.

5.3.3. Base of the supplementary research report

The supplementary search report is based on the documents specified by the applicant at the time of entry into the regional phase (R159 (1) (b) EPC) or modified in response to the notification R161 (2) EPC (Guidelines B-II 4.3.3).

5.3.4. Nature of the supplementary research report

The supplementary research report is not published, but accessible through public inspection.

This search report contains an opinion at the research stage.

5.3.5. Problem of non-unity

1) Where a further search is to be carried out by the EPO

If the EPO considers that there is no unity of invention, the supplementary search report is only established for the first invention (Partial Supplementary Search Report, R164 (1) (a) EPC).

This partial supplementary research report is not accompanied by a written opinion (" Notice from the European Patent Office dated 10 June 2014 concerning the amendment of Rules 164 and 135 EPC », OY 2014, A70point 8).

Since November 1, 2014 (" Governing Body decision of 16 October 2013 amending Rules 135 and 164 of the Regulations under the European Patent Convention », OG 2013, 503), a notification is sent to the applicant asking whether he wishes, in the 2 months from the notification, pay a supplementary search fee for each invention not sought (R164 (1) (b) EPC).

This period is excluded from the continuation of the procedure (R135 (2) EPC) and only restitutio in integrum of the'A122 EPC is applicable.

A complementary search report (covering all inventions for which a fee has been paid) is then established accordingly (R164 (1) (c) EPC) with a written opinion.

2) Where the EPO has waived further research

If the EPO has refrained from conducting a supplementary search, but the claimed invention at the time of entry into phase has not been searched, the EPO notifies the applicant to pay a fee. additional search fee within a period of 2 months (R164 (2) (a) EPC).

This period is excluded from the continuation of the procedure (R135 (2) EPC) and only restitutio in integrum of the'A122 EPC is applicable.

The results of this research will be communicated to the applicant in a notification A94 (3) EPC or a notification R71 (3) EPC (R164 (2) (b) EPC). This notification also gives the applicant time to take a position on the conclusions of the examining division and the attached search results, as well as to modify the description, claims and drawings on his own initiative (" Notice from the European Patent Office dated 10 June 2014 concerning the amendment of Rules 164 and 135 EPC », OY 2014, A70point 16).

This additional search will not include a written opinion (R164 (4) EPC together R62 EPC).

Where appropriate, the EPO will also invite the applicant to limit the application to an invention among the inventions sought (either at the international stage or at the stage of the complementary search, R164 (2) (c) EPC and R164 (3) EPC together R62bis EPC).

Chapter 6. Review

Section 6.1. Principle

The examination of the application then follows the same principles or the same procedure as for a "normal" European application.

6.1.1. Problem of non-unity

It may happen that the Examining Division finds that (R164 (2) EPC):

  • unity of invention is not respected by the request,
  • or that the claimed invention has not been searched for in:
    • complementary research,
    • in the absence of :
      • in international research,
      • in the supplementary international search.

It then invites the applicant to limit his invention (R164 (2) EPC) to the object covered by the search.

The R137 (5) EPC can be used as a basis for rejection in this case (T2459 / 12) and not the R164 (2) EPC which only indicates that a notification is sent.

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