GL B VI 4.1.2 Published international applications (WO) as "E" documents

(a)According to Art. 158(1) EPC 1973, a conflicting PCT application that validly entered the European phase before 13 December 2007 and was retrieved as an "E" document in the search for a European application will constitute prior art within the meaning of Art. 54(3) and (4) EPC 1973 only if:
– the EPO has been designated in the international application, 
– where necessary, the applicant has supplied to the EPO a translation of the international application into an official EPO language, and 
– the applicant has paid the EPO's national basic fee (the same as the filing fee) according to Rule 107(1)(c) EPC 1973 and the EPO's designation fees according to Rule 107(1)(d) EPC 1973.
(b)A conflicting PCT application that entered the European phase on or after 13 December 2007 and was retrieved as an "E" document in the search for a European application will constitute prior art within the meaning of Art. 54(3) only if according to Rule 165:
– the EPO has been designated in the international application, 
– where necessary, the applicant has supplied to the EPO a translation of the international application into an official EPO language according to Art. 153(4) and Rule 159(1)(a), and
– the applicant has paid the filing fee according to Rule 159(1)(c).
If it is not possible to verify any of the above based on the published international (WO) application (in particular because the 31-month time limit for performing the above acts under Art. 22 PCT and Art. 39 PCT has not yet expired for the international application at the time of the search), the document may become relevant under Art. 54(3) and consequently is cited as an "E" document in the search report (see also B‑X, 9.2.6).

Source: http://www.epo.org/law-practice/legal-texts/html/guidelines/e/b_vi_4_1_2.htm

Date retrieved: 17 May 2021

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