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Guide for applicants, Part 2: PCT procedure before the EPO (Euro-PCT Guide)

 
 
How to get
a European patent 
Guide for applicants 
Part 2 
PCT procedure before the EPO 
"Euro-PCT Guide"  
6th edition
Updated until 1 October 2012
 
Contents 
A.
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
B.
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
PCT-EASY filing
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
Priority claim
Restoration of priority right
Furnishing of the priority document
The International Searching Authority (ISA)
Taking an earlier search into account
Refund of the search fee paid for a priority application
Applications containing a reference to biological material
Applications disclosing nucleotide and/or amino acid sequences
Signature
Language of the international application
Fees
Amounts of fees
Payment methods
Reductions
Late payment of fees
C.
The EPO as an International Searching Authority (ISA) and a Supplementary International Searching Authority (SISA)
I.
General
The role of the EPO as ISA
Competence of the EPO as ISA
Specification by the receiving Office
Limited competence
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 priority
International publication of the application and the ISR
Access to the WO-ISA
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?
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
One-stage protest procedure
IV.
Supplementary International Search (SIS)
General
Scope and limitations of SIS
Requirements for filing a SIS request
Representation before the EPO as SISA
Lack of unity of invention
D.
The EPO as an International Preliminary Examining Authority (IPEA) - PCT Chapter II
I.
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
Limited competence
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
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
E.
Euro-PCT procedure before the EPO as a designated (PCT Chapter I) or elected (PCT Chapter II) Office
I.
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.
Representation
Requirements specific to applicants with neither residence nor principal place of business in an EPC contracting state - "non-resident applicants" (Form 1200, Sections 2 and 3)
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
V.
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 and extensions
Non-observance of the time limit for payment of the designation fee
How to extend the Euro-PCT application (Form 1200, Section 11)
Non-observance of the time limit for payment of extension 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
X.
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 Office of Euro-PCT applications which fail in the international phase
XV.
Lack of unity
No supplementary search performed: EPO was ISA
Supplementary search performed: EPO was not 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 application1 
Annex III
Timeline for international applications3 
Annex IV
Criteria chosen by the EPO as ISA/IPEA on specific points in the ISPE Guidelines5 
Annex V
Filing offices of the EPO (OJ 2007, Spec. Ed. 3, A.2.)7
Annex VI
Form PCT/RO/101 Request and Notes9 
Annex VII
Form PCT/RO/101 Fee Calculation Sheet and Notes3 
Annex VIII
EPO Form 1003 Authorisation9 
Annex IX
Form PCT/IPEA/401 Demand and Notes3 
Annex X
Form PCT/IPEA/401 Fee Calculation Sheet and Notes3 
Annex XI
Form for entry into the European phase (EPO Form 1200) and Notes7 
Annex XII
EPO Form 1010 Payment of fees and expenses7