For this purpose, the applicant must file an express request for early processing, which is not included in Form 1200. Moreover, he must fulfil the requirements for entry into the European phase as if the 31-month time limit provided for in Rule 159(1) EPC expired on the date he requests early processing.
This means that, for an application to be processed early, the following requirements must be complied with: payment of the filing fee (see point 534), filing of the translation (where applicable, see point 509), specification of the application documents (see point 473), payment of the search fee (where applicable, see point 580). Which further requirements must be complied with depends on the date on which early processing is requested, i.e. on whether the time limits for paying the designation fee (Rule 39(1) EPC) and the renewal fee (Rule 51(1) EPC) and for filing the request for examination and paying the examination fee (Rule 70(1) EPC) have already expired at that date (see points 549, 597 ff and points 585 ff). The term "necessary requirements" is used to refer to the requirements that must be complied with for a request for early processing for the application concerned to be effective.
Where applicable, the certificate of exhibition must also be filed on entry into the European phase (see point 609). However, if this requirement is not met, this will not prevent the request for early processing from being effective, but it will affect the prior art that the EPO takes into account in the procedure.
Claims fees for any claims in excess of fifteen need only be paid upon expiry of the period under Rule 162(2) EPC. Therefore, their payment is not a requirement for a request for early processing to be effective.
If on the date the request for early processing is filed all necessary requirements (see point 429) are complied with, the request for early processing is effective as from that date and the application will be processed in the same way as any Euro-PCT application which has entered the European phase. This means, for instance, that the EPO as designated/elected Office will issue the communication under Rule 161 EPC/Rule 162 EPC directly after it has established that the request for early processing is effective (see point 484). Furthermore, as from the date the request for early processing is effective, the applicant may file a divisional application (see point 659).
If on the date the request for early processing is filed any necessary requirement (see point 447) is not complied with, the request for early processing will not be effective on the date of receipt of the request but only as from the earliest date thereafter on which all requirements necessary on that date have been complied with (see point 429). It is only on the latter date that the application enters the European phase, and from that moment on is processed in the same way as any Euro-PCT application which has entered the European phase.
From the date the applicant's request for early processing is effective, any subsequent withdrawal under Rule 90bis PCT will have no effect in respect of the procedure in the European phase.
Note that if early processing is requested because the applicant wishes not only the processing of the application before the EPO as designated/elected Office but also the examination of the application to start, he must have filed a valid request for examination (including payment of the examination fee) under Article 94 EPC, even if the time limit under Rule 70(1) EPC has not yet expired at the date of effective entry into the European phase, since examination will be taken up only if a request for examination has been validly filed.
Furthermore, if a request for examination is filed before the EPO has, where applicable, sent the supplementary European search report to the applicant, examination will start only upon receipt of an indication from the applicant that he wishes to proceed further with the application and, if required, a response to the extended European search report. The applicant may waive his right to be asked whether he wishes to proceed further. He can indicate this in box 4.2 of Form 1200.
Date retrieved: 02 November 2015
33 references found.Click X to load a reference inside the current page, click on the title to open in a new page.
EPC Implementing Rules
XR.159 EPC The European Patent Office as a designated or elected Office – Requirements for entry into the European phase
EPO Guidelines - B Search
EPO Guide for Applicants, part II Int.
EPO Guide for Applicants, part II Int. - A General Overview
EPO Guide for Applicants, part II Int. - E Euro-PCT procedure before the EPO as designated or elected Office
XGA E IV 1 Which version of the Euro-PCT application is taken as the basis for the procedure in the European phase (Form 1200, Sections 6.1 and 6.2)?
XA.36 PCT Transmittal, Translation, and Communication, of the International Preliminary Examination Report
PCT Implementing Rules
XR.44bis PCT International Preliminary Report on Patentability by the International Searching Authority
XR.73 PCT Communication of the International Preliminary Examination Report or the Written Opinion of the International Searching Authority