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PCT procedure at the EPO

International phase and entry into the European phase

Guide for applicants

9th10th edition

Updated until 1 January 20162017

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Contents

General overview

Introduction to the Euro-PCT Guide

Applicable law

Euro-PCT Guide and other sources of information

Relationship PCT - EPC

The role of the EPO in the international phase

Euro-PCT application

The role of the EPO in the European phase

Contracting states to the PCT and the EPC

Representation in the international phase

Computation of time limits in the international phase

The EPO as a PCT receiving Office

Who may file an international application with the EPO?

Where to file if the EPO is receiving Office?

Elements of the international application

Incorporation by reference of missing parts and elements

International filing date

Filing options if the EPO is receiving Office

Number of copies of documents filed

Filing direct or by post

Loss or delay in the post

Fax filing

E‑mail, telegram, telex and similar means

Filing further documents

Acknowledgement of receipt

E‑filing

Online filing

Filing on a physical medium ("offline filing")

E‑filing in pre-conversion format

Divisional applications

The PCT request

Designation of inventor

Representation in the procedure before the EPO as receiving Office

Two or more applicants - common agent and common representative

How to appoint an agent, common agent or common representative

Association of professional representatives

Address for correspondence

Waiver

Appointment of an agent for the European phase with the EPO as receiving Office

For which states may international applications be filed?

Non-designation for reasons of national law

Extension

Validation

Priority claim

Restoration of the priority right

Furnishing of the priority document

The International Searching Authority (ISA)

Informal comments on earlier search results under PCT Direct

Taking an earlier search into account

Refund of the international search fee

Applications containing a reference to biological material

Applications disclosing nucleotide and/or amino acid sequences

Signature

Language of the international application

The EPO as an International Searching Authority (ISA) and a Supplementary International Searching Authority (SISA)

General

The role of the EPO as ISA

Competence of the EPO as ISA

Specification by the receiving Office

Lifting of the competence limitation

Choice of ISA and consequences

Translation

Language of further correspondence

Application filed in Dutch

Representation before the EPO as ISA

Reduction of the search fee

Refund of the search fee

II.

The procedure before the EPO as ISA

General

Establishing the ISR and the WO-ISA

Multiple independent claims

Validity of priority claims

Incorporation by reference of missing parts and elements

Restoration of the right of priority

PCT Direct service

International publication of the application and the ISR

Procedure after receipt of the ISR and WO-ISA

Amendments under Article 19 PCT

Informal comments

Demand for international preliminary examination

International Preliminary Report on Patentability Chapter I

Patent Prosecution Highway (PPH) based on a WO-ISA established by the EPO as ISA

III.

Refusal to perform a (full) international search

When may the EPO refuse to conduct a (full) search?

Nucleotide and amino acid sequences

Lack of unity of invention

Cascading non-unity

Consequences of non-payment of additional fee(s)

Protest procedure

IV.

Supplementary International Search (SIS)

General

Scope and limitations of the SIS

Requirements for filing a SIS request

Representation before the EPO as SISA

Lack of unity of invention

The EPO as an International Preliminary Examining Authority (IPEA) - PCT Chapter II

General

Aim of the international preliminary examination

Usefulness of PCT Chapter II

Patent Prosecution Highway (PPH) based on an IPER established by the EPO as IPEA

Competence of the EPO as an IPEA

Specification by the receiving Office

The EPO or a European ISA acted as ISA

Choice of applicant

Lifting of the competence limitation

Who may file a demand for international preliminary examination with the EPO?

How and where is the demand for international preliminary examination to be filed?

When should the demand for international preliminary examination be filed with the EPO?

Start of the international preliminary examination

Delaying of national phase until expiry of 30 months

Time limit for establishing the IPER

Translation of the international application

Applications filed in Dutch

Language of the demand

Language of further correspondence

Representation

Which states may be elected?

Signature

Fees

Fee reductions

Consequences of non- or late payment of fees

Refund of the fee for international preliminary examination

Defects in the demand and how they can be corrected

II.

The international preliminary examination procedure before the EPO as an IPEA

Which documents form the basis of the international preliminary examination? - Amendments - Missing parts and elements

Amendments

Incorporation by reference of missing parts and elements

Top-up search

Third-party observations

First written opinion

Second written opinion

The EPO was not the ISA

International preliminary examination before the EPO: four scenarios

First case: The EPO acted as ISA and made no objections

Second case: The EPO acted as ISA and made objections

Third case: The EPO did not act as ISA and the EPO as IPEA has no objections

Fourth case: The EPO did not act as ISA and the EPO as IPEA has objections

Time limit for reply to the written opinion

International preliminary examination and SIS

Refusal to perform preliminary examination

Request for consultation by telephone

Nucleotide and amino acid sequences

Unity of invention

What must be done after receipt of the IPER?

Confidentiality of the international preliminary examination

Euro-PCT procedure before the EPO as a designated (PCT Chapter I) or elected (PCT Chapter II) Office

General

When is the EPO a designated or elected Office?

When can the EPO act as designated Office?

When can the EPO act as elected Office?

When must the applicant decide on the scope of protection sought for the European patent?

When must the European phase be initiated before the EPO as designated or elected Office?

Language of the proceedings in the European phase

How and where should the applicant initiate the procedure before the EPO as a designated/elected Office (Form 1200)?

Request for early processing

Accelerated prosecution of applications - the "PACE" programme

Combined PACE request and waiver of Rule 161/162 communication

II.

What is "entry into the European phase"?

Overview of the steps to be taken for entry into the European phase

Minimum requirements

Further requirements

Amounts of fees to be paid in the European phase

III.

Communication with the applicant – representation – address for correspondence (Form 1200, Sections 1, 2 and 3)

Requirements specific to applicants with neither residence nor principal place of business in an EPC contracting state - "non-resident applicants"

Non-observance of the requirement to appoint a professional representative

How to appoint a representative - authorisation

IV.

Application documents on which the procedure before the EPO as designated/elected Office is based (Form 1200, Section 6)

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)?

Information on prior art (Form 1200, Section 6.3)

Amending the application – Rule 161/162 communication

Waiving the Rule 161/162 communication

Amendments and the Rule 161/162 communication if a supplementary European search is carried out

Amendments and the Rule 161/162 communication if no supplementary European search is carried out

Amendments and claims fees

Translation of the application documents and other documents (Form 1200, Section 7)

When must the applicant file a translation of the Euro-PCT application?

Consequences of not filing a translation of the application

What the translation must include

Consequences of not filing a translation of the annexes to the IPER

VI.

Biological material & nucleotide and amino acid sequences

Biological material (Form 1200, Section 8)

Waiver under Rule 33(2) EPC

Nucleotide and amino acid sequences (Form 1200, Section 9)

Consequences of not filing a sequence listing

VII.

Filing fee

Page fee

Non-observance of the time limit for payment of the filing fee

VIII.

Designations, extensions and validations

Non-observance of the time limit for payment of the designation fee

How to extend or validate the Euro-PCT application (Form 1200, Section 11)

Non-observance of the time limit for payment of extension fees

Non-observance of the time limit for payment of validation fees

IX.

Supplementary European search

No supplementary European search performed

Result of supplementary European search and refund of examination fee

Search fee for supplementary European search

Reduction of the search fee

Refund of the search fee

Non-observance of the time limit for payment of the search fee

Examination

How to file the request for examination (Form 1200, Section 4)

When must the request for examination be filed? When must the examination fee be paid?

Reduction of the examination fee

Reduction if IPER was issued by the EPO

Non-observance of the time limit for filing the request for examination and payment of the examination fee

XI.

Renewal fee and claims fees

Renewal fee

Non-observance of the time limit for payment of the renewal fee

Claims fees

Non-observance of the time limit for payment of the claims fee

XII.

Filing of other documents

Missing data regarding the inventor or an applicant

Non-observance of the requirement to file any missing data regarding the inventor or an applicant

Certificate of exhibition

XIII.

Priority claim

Obligation to furnish the priority document

Non-observance of the requirement to file a copy or the application number

Filing a translation of the priority document or the declaration

Non-observance of the requirement to file the translation or declaration

Restoration of priority under Rule 49ter PCT

XIV.

Review by the EPO as designated/elected Office and rectification of errors made by the receiving Office or by the IB

Review by the EPO as designated Office under Article 25 PCT

Review by the EPO as designated/elected Office under Article 24 PCT

Rectification of errors made by the receiving Office or by the IB

XV.

Lack of unity

Supplementary European search to be performed: the EPO did not act as (S)ISA

No supplementary search performed: the EPO acted as (S)ISA

XVI.

Publication of the Euro-PCT application by the EPO

XVII.

State of the art

XVIII.

Divisional applications

Annex I

Terms and abbreviations

Annex II

The international and European phases of a PCT application

Annex III

Timeline for international applications

Annex IV

Criteria chosen by the EPO as ISA/IPEA on specific points in the ISPE Guidelines

Annex V

Filing offices of the EPO (OJ 2007, Spec. Ed. 3, A.2; OJ 2013, 442)

Annex VI

Form PCT/RO/101 Request and Notes

Annex VII

Form PCT/RO/101 Fee Calculation Sheet and Notes

Annex VIII

EPO Form 1003 Authorisation

Annex IX

Form PCT/IPEA/401 Demand and Notes

Annex X

Form PCT/IPEA/401 Fee Calculation Sheet and Notes

Annex XI

Form for entry into the European phase (EPO Form 1200) and Notes

Annex XII

EPO Form 1010 Payment of fees and expenses

Annex XIII

EPO Form 1201 Entry into the European phase before the EPO

Source: http://www.epo.org/applying/international/guide-for-applicants/html/e/index.html

Date retrieved: 24 November 2017

253 references found. Limiting display to 200 references.

Click X to load a reference inside the current page, click on the title to open in a new page.

EPO Guide for Applicants, part II Int. - E Euro-PCT procedure before the EPO as designated or elected Office

X GA E E.

X GA E I I.

X GA E I 1 When is the EPO a designated or elected Office?

X GA E I 2 When can the EPO act as designated Office?

X GA E I 3 When can the EPO act as elected Office?

X GA E I 4 When must the applicant decide on the scope of protection sought for the European patent?

X GA E I 5 When must the European phase be initiated before the EPO as designated or elected Office?

X GA E I 6 Language of the proceedings in the European phase

X GA E I 7 How and where should the applicant initiate the procedure before the EPO as a designated/elected Office (Form 1200)?

X GA E I 8 Request for early processing

X GA E I 9 Accelerated prosecution of applications - the "PACE" programme

X GA E I 10 Combined PACE request and waiver of Rule 161 EPC/Rule 162 EPC communication

X GA E II II.

X GA E II 1 Overview of the steps to be taken for entry into the European phase

X GA E II 2 Minimum requirements

X GA E II 3 Further requirements

X GA E II 4 Amounts of fees to be paid in the European phase

X GA E III III.

X GA E III 1 Requirements specific to applicants with neither residence nor principal place of business in an EPC contracting state - "non-resident applicants"

X GA E III 2 Non-observance of the requirement to appoint a professional representative

X GA E III 3 How to appoint a representative - authorisation

X GA E IV IV.

X GA 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)?

X GA E IV 2 Information on prior art (Form 1200, Section 6.3)

X GA E IV 3 Amending the application – Rule 161 EPC/Rule 162 EPC communication

X GA E IV 4 Waiving the Rule 161 EPC/Rule 162 EPC communication

X GA E IV 5 Amendments and the Rule 161 EPC/Rule 162 EPC communication if a supplementary European search is carried out

X GA E IV 6 Amendments and the Rule 161 EPC/Rule 162 EPC communication if no supplementary European search is carried out

X GA E IV 7 Amendments and claims fees

X GA E V V.

X GA E V 1 When must the applicant file a translation of the Euro-PCT application?

X GA E V 2 Consequences of not filing a translation of the application

253 references found. Limiting display to 200 references.

EPO Guide for Applicants, part II Int. - A General Overview

EPO Guide for Applicants, part II Int. - B The EPO as a PCT receiving Office

EPO Guide for Applicants, part II Int. - C The EPO as ISA and SISA

EPO Guide for Applicants, part II Int. - D The EPO as an IPEA

EPO Guide for Applicants, part II Int. - E Euro-PCT procedure before the EPO as designated or elected Office

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