GA INDEX "Euro-PCT Guide":

PCT procedure at the EPO 
 
International phase and entry into the European phase 
 
Guide for applicants 
 
 
13th edition 
Updated to 1 January 2020
n
 
 
Contents 
A.
Terms and abbreviations
B.
The international and European phases of a PCT application
C.
Timeline for international applications
Chapter 1 – General overview
1.1
What is the Euro-PCT Guide?
1.2
What is the applicable law?
1.3
Euro-PCT Guide and other sources of information
1.4
What is the relationship between the PCT and the EPC?
1.5
What is the role of the EPO in the international phase?
1.6
What is a Euro-PCT application?
1.7
What is the role of the EPO in the European phase?
1.8
Contracting states to the PCT and the EPC
1.9
Representation in the international phase
1.10
Computation of time limits in the international phase
1.11
External complaints
Chapter 2 – The EPO as a PCT receiving Office
2.1
Who may file an international application with the EPO?
2.2
How must an international application be filed with the EPO as receiving Office?
E‑filing
How can an international application be filed online?
How can an international application be filed electronically on a physical medium ("offline filing")?
What is the purpose of filing in pre-conversion format?
How can an application be filed with the EPO direct or by post?
What happens in the event of loss or delay in the post?
Can an international application be filed by fax?
Can an international application be filed by email, telegram, telex or similar means?
How can further documents be filed?
2.3
Elements of the international application
2.4
How can elements or parts be incorporated in the international application by reference?
2.5
International filing date
2.6
Is it possible to file divisional applications in the international phase?
2.7
The PCT request
2.8
Should the inventor be designated in the request?
2.9
Who may represent an applicant 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
Is it possible to appoint an association of professional representatives?
Does the address for correspondence need to be in an EPC contracting state?
Does the EPO require the filing of a power of attorney?
Is it possible to appoint an agent for the European phase with the EPO as receiving Office?
2.10
For which states may international applications be filed?
Non-designation for reasons of national law
2.11
Extension
2.12
Validation
2.13
How can an applicant claim the priority of an earlier application?
2.14
How can an applicant request restoration of the priority right?
2.15
Does the priority document have to be filed?
2.16
Which is the competent International Searching Authority (ISA) when the EPO acts as receiving Office?
2.17
Is it possible to submit informal comments on earlier search results? What is PCT Direct?
2.18
Can an applicant request that an earlier search be taken into account?
2.19
In what circumstances is it possible to obtain a refund of the international search fee?
2.20
Applications containing a reference to biological material
2.21
Applications disclosing nucleotide and/or amino acid sequences
2.22
Who must sign the request?
2.23
In which language must the international application be filed?
2.24
What fees are due when filing an international application?
Amounts of fees
Payment methods
Refund procedure
When do fee reductions apply?
What happens if fees are paid late?
Chapter 3 – The EPO as an International Searching Authority (ISA) and a Supplementary International Searching Authority (SISA)
3.1
General
What is the role of the EPO as ISA?
When is the EPO competent to act as ISA?
Specification by the receiving Office
Lifting of the competence limitation
Choice of ISA and consequences
When is a translation needed for the purpose of international search?
Language of further correspondence
Application filed in Dutch
Who may represent the applicant before the EPO as ISA?
What are the conditions for a reduction of the search fee?
When is the search fee refunded?
3.2
The procedure before the EPO as ISA
General
Establishing the ISR and the WO-ISA
What happens if there are multiple independent claims?
What happens if the priority document is not available to the ISA?
Incorporation by reference of missing parts and elements
What is the "retention principle" for priority claims?
When will the EPO as ISA take earlier search and classification results into account?
What happens if an applicant has made use of the PCT Direct service?
When does international publication of the application and the ISR take place?
Can the applicant respond to the ISR and WO-ISA?
Amendments under Article 19 PCT
Informal comments
Demand for international preliminary examination
What is the International Preliminary Report on Patentability Chapter I?
Patent Prosecution Highway (PPH) based on a WO-ISA established by the EPO as ISA
3.3
Refusal to perform a (full) international search
When may the EPO refuse to conduct a (full) search?
No search
Incomplete search
Limitations related to the subject-matter
Business methods
Complex applications
Nucleotide and amino acid sequences
Lack of unity of invention
Cascading non-unity
Consequences of non-payment of additional fee(s)
Protest procedure
3.4
Supplementary International Search (SIS)
General
What is the scope of the SIS?
What are the requirements for a SIS request?
Who may represent the applicant before the EPO as SISA?
Lack of unity of invention
Chapter 4 – The EPO as an International Preliminary Examining Authority (IPEA) - PCT Chapter II
4.1
General
What is the aim of the international preliminary examination?
When is it useful to file a demand for international preliminary examination?
Patent Prosecution Highway (PPH) based on an IPER established by the EPO as IPEA
When is the EPO competent to act as IPEA?
Specification by the receiving Office
The EPO or a European ISA acted as ISA
Is it possible to choose between different IPEAs?
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?
When does the international preliminary examination start?
Delaying of national phase until expiry of 30 months
By when will the EPO establish the IPER?
Is a translation of the international application required?
Applications filed in Dutch
In which language should the demand be filed?
Language of further correspondence
Who may represent the applicant before the EPO as IPEA?
Which states may be elected?
Who has to sign the demand?
What fees are due for the international preliminary examination?
Fee reductions
Consequences of non- or late payment of fees
Refund of the fee for international preliminary examination
Is it possible to correct defects in the demand?
4.2
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
Is it possible to submit third-party observations?
Procedure before the EPO as IPEA when it also acted as ISA
First written opinion
Second written opinion
Procedure before the EPO as IPEA when it did not act as 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
What is the time limit for replying to the written opinion?
Will the EPO take any SIS into account?
Can the EPO refuse to perform preliminary examination?
Is it possible to request 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
Chapter 5 – Euro-PCT procedure before the EPO as a designated (PCT Chapter I) or elected (PCT Chapter II) Office
5.1
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 territorial scope of protection sought for the European patent?
When must the European phase be initiated before the EPO as designated or elected Office?
What is the 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)?
Can the applicant request early processing?
Accelerated prosecution of applications - the "PACE" programme
Combined PACE request and waiver of Rule 161/162 communication
5.2
What are the requirements for entry into the European phase?
Which steps have to be taken for entry into the European phase?
What are the minimum requirements?
What further requirements need to be considered?
Amounts of fees to be paid in the European phase
5.3
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"
What happens if the requirement to appoint a professional representative is not observed?
How does a representative have to be appointed?
5.4
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
May the Rule 161/162 communication be waived?
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
Does the filing of amendments have an impact on the number of claims fees payable?
5.5
Translation of the application documents and other documents (Form 1200, Section 7)
When must the applicant file a translation of the Euro-PCT application?
What are the consequences of not filing a translation of the application?
What must the translation include?
What are the consequences of not filing a translation of the annexes to the IPER?
5.6
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)
What are the consequences of not filing a sequence listing?
5.7
Filing fee
Page fee
What happens if the time limit for payment of the filing fee is not observed?
5.8
Designations, extensions and validations
What happens if the time limit for payment of the designation fee is not observed?
How can the Euro-PCT application be extended or validated (Form 1200, Section 11)?
What happens if the time limit for payment of extension fees is not observed?
What happens if the time limit for payment of validation fees is not observed?
5.9
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
What happens if the time limit for payment of the search fee is not observed?
5.10
Examination
How is the request for examination filed (Form 1200, Section 4)?
When must the request for examination be filed? When must the examination fee be paid?
Are reductions of the examination fee possible?
Reduction if IPER was issued by the EPO
What happens if the time limit for filing the request for examination and payment of the examination fee is not observed?
5.11
Renewal fee and claims fees
Renewal fee
What happens if the time limit for payment of the renewal fee and the additional fee is not observed?
Claims fees
What happens if the time limit for payment of the claims fee is not observed?
5.12
Filing of other documents
What happens if data regarding the inventor or an applicant is missing?
What happens if the requirement to file any missing data regarding the inventor or an applicant is not observed?
Certificate of exhibition
5.13
Priority claim
When is there an obligation to file the priority document with the EPO?
What happens if the requirement to file the priority document or the file number is not observed?
Is it necessary to file a translation of the priority document?
What happens if the requirement to file the translation or declaration is not observed?
Restoration of priority under Rule 49ter PCT
5.14
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
May errors made by the receiving Office or by the IB be rectified?
5.15
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
5.16
Publication of the Euro-PCT application by the EPO
5.17
State of the art
5.18
Divisional applications
5.19
Further processing and re-establishment of rights
Annex I.
Criteria chosen by the EPO as ISA/IPEA on specific points in the ISPE Guidelines
 
 

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

Date retrieved: 17 May 2021

246 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. - A General Overview

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