OJ EPO 2013, 156

I. Introduction

1. In recent years the number of requests for early processing filed with the EPO as designated/elected Office has risen. As a result thereof and consequent to decision J 18/09 the EPO has received a number of enquiries concerning the EPO's practice in processing such requests. ^[ 1 ]

2. In its Part II this notice gives information about the requirements for a request for early processing of a Euro-PCT application to be effective. In Part III, the consequences of such a request for the procedure in the European phase are set out. In Part IV some related issues are addressed. Various examples providing insight into the procedure are presented in Part V. The present notice further clarifies the information on early processing in the Euro-PCT Guide. ^[ 2 ]

II. Request for early processing

3. The processing of an international application by a designated/elected Office is prohibited until expiry of the time limit under Articles 22 and 39 PCT for performing the acts for entry into the national phase. This "processing ban" applies to designated and elected Offices pursuant to Articles 23(1) and 40(1) PCT respectively.

4. The applicable time limit for performing the acts for entry into the European phase before the EPO as designated/elected Office is 31 months from the filing date or, if priority has been claimed, the priority date (Rule 159(1) EPC, Articles 22(3) and 39(1)(b) PCT). Therefore, the EPO as designated/elected Office will not commence processing an international application before the 31-month time limit has expired. An exception applies if the applicant lifts the processing ban earlier. This requires that a request for early processing under Articles 23(2) or 40(2) PCT is filed with the EPO as designated/elected Office (point 5) and that the requirements for the request to be effective are complied with (points 6-7).

5. A request for early processing may be filed with the EPO at any time before expiry of the 31-month time limit. The request does not require a specific wording, but the applicant must clearly express that he wishes the processing of his application before the EPO as designated/elected Office to commence early. For the sake of clarity it is advised that the request explicitly refers to Article 23(2) PCT or, where applicable, Article 40(2) PCT.

6. For the request to be effective the applicant must comply with the requirements stipulated in Rule 159(1) EPC as if the 31-month time limit expired on the date the applicant requests early processing. This means that the following requirements must be complied with: payment of the filing fee (including any additional fee under Article 2(1), item 1a, of the Rules relating to Fees if the application comprises more than 35 pages), filing of a translation (if a translation is required under Article 153(4) EPC), specification of the application documents, and payment of the search fee (where a supplementary European search report has to be drawn up under Article 153(7) EPC).

7. It depends on the date on which early processing is requested which further requirements stipulated in Rule 159(1) EPC must be complied with, since the (regular) 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) may not have expired on the date the request for early processing is filed. Therefore, if any of these time limits is still running on that date, the request will be effective without the requirements concerned having been complied with (Article 153(2) EPC, Article 11(3) PCT).

8. If follows that the requirements of Rule 159(1) EPC which must be fulfilled in respect of a particular international application vary, since they depend on the international application concerned (point 6) and on the filing date of the request for early processing (point 7). Therefore, these requirements are hereafter referred to as "necessary requirements".

III. Consequences of an effective request for early processing

9. If on the date the request for early processing is filed the necessary requirements for entry into the European phase are complied with, the request is effective and the Euro-PCT application will as from that date be processed in the same way as a Euro-PCT application which has entered the European phase by fulfilling the necessary requirements of Rule 159 EPC within the 31-month time limit and without a request for early processing having been filed. On that date the international phase is thus terminated in respect of the EPO as designated/elected Office. Moreover, since by filing an effective request for early processing the processing ban is lifted, as from that date it is no longer possible to claim the 31-month time limit under Rule 159(1) EPC.

10. In particular the following consequences of an effective request for early processing are important to note:

• If the time limit under Rule 70(1) EPC for filing the request for examination and payment of the examination fee and under Rule 39(1) EPC for payment of the designation fee expires after the date on which the request for early processing was effective and these acts are not performed within that time limit, the EPO will issue a communication noting a loss of rights pursuant to Rule 112(1) EPC (see the examples in points 18-20).
• As from the date the request for early processing is effective, the due date for payment of the renewal fee is to be established on the basis of Rule 51(1) EPC. If it is not paid within this period and also not within the additional six-month period pursuant to Rule 51(2) EPC (including payment of the additional fee), the EPO will issue a communication noting a loss of rights pursuant to Rule 112(1) EPC (see the examples in points 21-22).
• The EPO will issue the communication under Rule 161/162 EPC directly after it has established that the request for early processing is effective.
• As from the date the request for early processing is effective, the applicant may file a divisional application.
• 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 (Rule 90bis.6 PCT).

11. If on the date the request for early processing is filed any necessary requirement is not complied with, the request for early processing will be effective (only) as from the date on which all requirements necessary on the latter date have been complied with. It is only on that 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.

IV. Further points to note

12. Fees which need to be paid for a request for early processing to be effective must not be paid by automatic debit order, since in that case the fees are debited - and thus paid - only on the last day of the 31-month time limit.

13. If pursuant to Rule 159(1)(h) EPC a certificate of exhibition must be filed and 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 in the European phase.

14. 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.

15. 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.

16. 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, of 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.

17. If the EPO acts as designated Office and the IB has not yet transmitted to it a copy of the international application, the ISR and the WO-ISA, the applicant may but does not have to file with the IB a request to do so. If needed, the EPO will take care of this itself (Rule 44bis.2(b) PCT, Rule 47.4 PCT). The same applies if the EPO acts as elected Office and the IB has not yet transmitted to it a copy of the international application, the ISR, the WO-ISA and the IPER with its annexes (Rule 73.2(b) PCT).

V. Examples

18. Example 1: payment of designation fee and request for examination (including payment of examination fee)

Request for early processing: 1.8.2012

Publication of international search report: 10.10.2012

On the date the request for early processing is filed, the periods pursuant to Rules 39(1) and 70(1) EPC have not yet started. Therefore, paying the designation fee and filing the request for examination (including the payment of the examination fee) are not necessary requirements for the request for early processing to be effective. The designation fee can be paid and the request for examination can be filed within the periods pursuant to Rules 39(1) and 70(1) EPC, respectively. If these acts are not performed within these periods, the application will be deemed to be withdrawn and the applicant will be notified thereof.

19. Example 2: payment of designation fee and request for examination (including payment of examination fee)

Publication of international search report: 1.6.2012

Request for early processing: 1.8.2012

On the date the request for early processing is filed, the periods pursuant to Rules 39(1) and 70(1) EPC have started but not yet expired. Therefore, paying the designation fee and filing the request for examination (including payment of the examination fee) are not necessary requirements for the request for early processing to be effective. The designation fee can be paid and the request for examination can be filed within the periods pursuant to Rules 39(1) and 70(1) EPC, respectively. If these acts are not performed within these periods, the application will be deemed to be withdrawn and the applicant will be notified thereof.

20. Example 3: payment of designation fee and request for examination (including payment of examination fee)

Publication of international search report: 1.6.2012

Request for early processing: 1.3.2013

The periods pursuant to Rules 39(1) and 70(1) EPC have expired. Therefore, paying the designation fee and filing the request for examination (including payment of the examination fee) are necessary requirements for the request for early processing to be effective. If the designation fee is not paid and/or no request for examination is filed on the date early processing is requested, the request for early processing will be effective (only) as from the date on which the designation fee is paid and/or the request for examination (including payment of the examination fee) is filed and all further requirements necessary on the latter date have been complied with (see point 11).

21. Example 4: renewal fee

Date of filing: 3.1.2011

Request for early processing: 3.12.2012

Pursuant to Rule 51(1) EPC, the renewal fee is due on 31.1.2013. Therefore, payment of the renewal fee is not a necessary requirement for the request for early processing to be effective. However, the renewal fee may already be paid, since renewal fees can be paid three months before they fall due (Rule 51(1) EPC). If it is not paid within this period and also not within the additional six-month period (including payment of the additional fee) pursuant to Rule 51(2) EPC, the application will be deemed to be withdrawn and the applicant will be notified thereof.

22. Example 5: renewal fee

Date of filing: 3.1.2011

Request for early processing: 1.3.2013

Pursuant to Rule 51(1) EPC, the renewal fee is due on 31.1.2013. Payment of the renewal fee (without additional fee) is, therefore, a necessary requirement for the request for early processing filed on 1.3.2013 to be effective. If the renewal fee is not paid on the date early processing is requested, the request for early processing will be effective (only) as from the date on which the renewal fee is paid and all further requirements necessary on the latter date have been complied with.