OJ EPO 2014, A33

I. Introduction

1. Pursuant to Articles 9 and 10 PCT and Rules 19.1 and 19.2 PCT, the European Patent Office is receiving Office for the contracting states to the European Patent Convention (EPC). The European Patent Organisation currently has 38 contracting states. ^[ 1 ]

2. In Europe, an international application may be filed, at the applicant's option,

• with the European Patent Office (EPO),
• with the national office, or
• with the International Bureau (WIPO).

II. Residence and nationality

3. Any resident or national of a PCT contracting state (whether a natural or a legal person) may file an international application. This also applies to territories of EPC contracting states to which the PCT is extended. The nationality and residence of the applicant as indicated on the international filing date are relevant under Article 11 PCT for determining whether or not a receiving Office is competent to receive the international application. If there are several applicants, it is sufficient that at least one of them meets one of these two criteria. If this requirement is not complied with, the receiving Office will not accept the application and will transmit it, pursuant to Rule 19.4 PCT, to the International Bureau as receiving Office. ^[ 2 ]

4. The nationality or residence of a person mentioned as inventor only is irrelevant for the purpose of filing an international application. Hence, the EPO is not competent to act as receiving Office on the basis of an inventor, even if that inventor is a national or resident of an EPC contracting state. Following the entry into force of the America Invents Act, the inventor no longer needs to be indicated as an applicant on the PCT request form PCT/RO/101 for the purpose of the US designation. However, if the inventor is the only person that meets the requirements of residence or nationality, he should be kept as applicant for the purpose of filing the international application with the EPO as receiving Office, provided that he has the right to file that application (see point 8 below).

III. Several applicants

5. If there are several applicants, it is possible to indicate an applicant for all contracting states and one or more applicants for a few states only. It is also possible to indicate an applicant for a few states only and the other(s) for the other states.

6. Designation of the EPC contracting states may likewise be split amongst several applicants. However, where a particular EPC contracting state has been designated for both a national and a European patent, the same applicant(s) must be indicated for both designations. ^[ 3 ] It follows that the applicant(s) for one or more EPC contracting states for a national patent (national route) may not be different from the applicant(s) for a European patent (designation EP); e.g. if applicant A is the only applicant for the designation EP, applicant B may not designate an individual EPC contracting state for the national route. Applicant B could, however, designate any non-EPC contracting state.

7. Applicants who wish to file an international application with the EPO acting as receiving Office should ensure that at least one person indicated as applicant (e.g. inventor or agent) fulfils the necessary requirements regarding nationality and residence.

8. However, any person named as an applicant in the international application must have the right to file the application. This would not be the case where, for instance, an inventor had assigned the rights to the invention to the company employing him, at the time of filing the international application.

9. In the case of joint applicants filing the international application with the EPO as receiving Office and claiming priority from an earlier application, it is sufficient that one of the applicants is the applicant for that earlier application, or his successor in title. Since the international application has been filed jointly, thereby showing the consent of the applicant for the earlier application, there is no need for a special transfer of priority right to the other (additional) applicant(s). Likewise, no transfer of priority right is needed where the earlier application was filed by joint applicants, provided that all of them, or their successor(s) in title, are amongst the joint applicants for the international application.

IV. Territories of EPC contracting states

10. The PCT has not been extended to all territories of EPC contracting states. Some EPC contracting states with territories have declared that the PCT and/or the EPC are applicable to one or more of these territories.

11. Applicants that are nationals or residents of territories of EPC contracting states should therefore check whether they may file an international application with the EPO as receiving Office. Similarly, PCT applicants wishing to obtain protection in those territories should first check whether it can be obtained via a European patent validated in the contracting state concerned or whether they should enter the national phase in that state directly. ^[ 4 ]

V. Designation of the inventor

12. Rule 19 EPC states that the inventor's data, including family name, given name(s) and full address, must be provided to the EPO as designated Office. Therefore if, within the 31-month period stipulated under Rule 159 EPC for entering the European phase, the inventor has not been designated or certain information regarding the inventor or any applicant is missing, the EPO will invite the applicant to file the designation of the inventor or to submit the missing data within two months from the notification of a communication under Rule 163(1) or (4) EPC, respectively. ^[ 5 ]

13. It is therefore recommended that this information should be included in the PCT request form already at the time of filing the international application. If the inventor does not wish to indicate his "home address", the EPO will as a rule accept the address of his employer instead, if applicable.