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

International phase and entry into the European phase 

Guide for applicants 

16th edition 
Updated to 1 January 2023 

Contents 

A.Terms and abbreviations

B.The international and European phases of a PCT application

C.Timeline for international applications

Chapter 1 – General overview

1.1What is the Euro-PCT Guide?

1.2What is the applicable law?

1.3Euro-PCT Guide and other sources of information

1.4What is the relationship between the PCT and the EPC?

1.5What is the role of the EPO in the international phase?

1.6What is a Euro-PCT application?

1.7What is the role of the EPO in the European phase?

1.8Contracting states to the PCT and the EPC

1.9Representation in the international phase

1.10Computation of time limits in the international phase

1.11Excuse of delays in meeting time limits and extension of time limits in the international phase

1.12External complaints

1.13Ombuds Office

Chapter 2 – The EPO as a PCT receiving Office

2.1Who may file an international application with the EPO?

2.2How must an international application be filed with the EPO as receiving Office?

2.2.2.E‑filing

2.2.3.How can an international application be filed online?

2.2.4.How can an international application be filed electronically on a physical medium ("offline filing")?

2.2.5.What is the purpose of filing in pre-conversion format?

2.2.6.How can an application be filed with the EPO by delivery by hand or by post?

2.2.7.What happens in the event of loss or delay in the post?

2.2.8.Can an international application be filed by fax?

2.2.9.Can an international application be filed by email, telegram, telex or similar means?

2.2.10.How can further documents be filed?

2.2.11.How can I get electronic communications from the EPO in the international phase?

2.3Elements of the international application

2.4How can missing elements or parts be incorporated into the international application by reference?

2.5How can erroneously filed elements or parts be corrected?

2.6International filing date

2.7How does an international application reach the International Searching Authority (ISA) and the International Bureau (IB)?

2.8Is it possible to file divisional applications in the international phase?

2.9The PCT request

2.10Should the inventor be designated in the request?

2.11Who may represent an applicant before the EPO as receiving Office?

2.11.2.Two or more applicants – common agent and common representative

2.11.3.How to appoint an agent, common agent or common representative

2.11.4.Is it possible to appoint an association of professional representatives?

2.11.5.Does the address for correspondence need to be in an EPC contracting state?

2.11.6.Does the EPO require the filing of a power of attorney?

2.11.7.Can an agent appointed for the international phase represent an applicant in the European phase before the EPO as designated or elected Office?

2.12For which states may international applications be filed?

2.12.2.Non-designation for reasons of national law

2.13Extension states

2.14Validation states

2.15How can an applicant claim the priority of an earlier application?

2.16How can an applicant request restoration of the priority right?

2.17Does the priority document have to be filed?

2.18Does the EPO acting as receiving Office issue certified copies of international applications?

2.19Which is the competent International Searching Authority (ISA) when the EPO acts as receiving Office?

2.20Is it possible to submit informal comments on earlier search results? What is PCT Direct?

2.21Can an applicant request that an earlier search be taken into account?

2.22In what circumstances is it possible to obtain a refund of the international search fee?

2.23Applications containing a reference to biological material

2.24Applications disclosing nucleotide and/or amino acid sequences

2.25Who must sign the request?

2.26In which language must the international application be filed?

2.27What fees are due when filing an international application?

2.27.2.Amounts of fees

2.27.3.Payment methods

2.27.4.Refund procedure

2.27.5.When do fee reductions apply?

2.27.6.What happens if fees are paid late?

Chapter 3 – The EPO as an International Searching Authority (ISA) and a Supplementary International Searching Authority (SISA)

3.1General

3.1.2.What is the role of the EPO as ISA?

3.1.3.When is the EPO competent to act as ISA?

3.1.3.2Specification by the receiving Office

3.1.3.3Lifting of the competence limitation

3.1.3.4Choice of ISA and consequences

3.1.4.When is a translation needed for the purpose of international search?

3.1.4.2Language of further correspondence

3.1.4.3Application filed in Dutch

3.1.5.Who may represent the applicant before the EPO as ISA?

3.1.6.What are the conditions for a reduction of the search fee?

3.1.7.When is the search fee refunded?

3.2The procedure before the EPO as ISA

3.2.1.General

3.2.2.Establishing the ISR and the WO‑ISA

3.2.3.What happens if there are multiple independent claims?

3.2.4.What happens if the priority document is not available to the ISA?

3.2.5.Incorporation by reference of missing or correct elements or parts

3.2.6.Correct elements or parts notified after the start of the search and additional fee

3.2.7.What is the "retention principle" for priority claims?

3.2.8.When will the EPO as ISA take earlier search and classification results into account?

3.2.9.What happens if an applicant has made use of the PCT Direct service?

3.2.10.When does international publication of the application and the ISR take place?

3.2.11.Can the applicant respond to the ISR and WO‑ISA?

3.2.11.2Amendments under Article 19 PCT

3.2.11.3Informal comments

3.2.11.4Demand for international preliminary examination

3.2.12.What is the International Preliminary Report on Patentability Chapter I?

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

3.3Refusal to perform a (full) international search

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

3.3.2.No search

3.3.3.Incomplete search

3.3.4.Limitations related to the subject-matter

3.3.4.2Business methods

3.3.5.Complex applications

3.3.6.Nucleotide and amino acid sequences

3.3.7.Lack of unity of invention

3.3.7.2Cascading non-unity

3.3.7.3Consequences of non-payment of additional fee(s)

3.3.8.Protest procedure

3.4Supplementary International Search (SIS)

3.4.1.General

3.4.2.What is the scope of the SIS?

3.4.3.What are the requirements for a SIS request?

3.4.4.Who may represent the applicant before the EPO as SISA?

3.4.5.Lack of unity of invention

Chapter 4 – The EPO as an International Preliminary Examining Authority (IPEA) – PCT Chapter II

4.1General

4.1.1.What is the aim of the international preliminary examination?

4.1.2.When is it useful to file a demand for international preliminary examination?

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

4.1.4.When is the EPO competent to act as IPEA?

4.1.4.2Specification by the receiving Office

4.1.4.3The EPO or a European ISA acted as ISA

4.1.4.4Is it possible to choose between different IPEAs?

4.1.4.5Lifting of the competence limitation

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

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

4.1.7.What is the time limit for filing the demand for international preliminary examination with the EPO?

4.1.8.When does the international preliminary examination start?

4.1.9.Delaying of national phase until expiry of 30 months

4.1.10.By when will the EPO establish the IPER?

4.1.11.Is a translation of the international application required?

4.1.11.2Applications filed in Dutch

4.1.12.In which language should the demand be filed?

4.1.12.2Language of further correspondence

4.1.13.Who may represent the applicant before the EPO as IPEA?

4.1.14.Which states may be elected?

4.1.15.Who has to sign the demand?

4.1.16.What fees are due for the international preliminary examination?

4.1.16.2Fee reductions

4.1.16.3Consequences of non- or late payment of fees

4.1.16.4Refund of the fee for international preliminary examination

4.1.17Is it possible to correct defects in the demand?

4.2The international preliminary examination procedure before the EPO as an IPEA

4.2.1.Which documents form the basis of the international preliminary examination? – Amendments – Missing parts and elements

4.2.1.2Amendments

4.2.1.3Incorporation by reference of missing or erroneously filed elements and parts

4.2.2.Top-up search

4.2.3.Is it possible to submit third-party observations?

4.2.4.Procedure before the EPO as IPEA when it also acted as ISA

4.2.4.1First written opinion

4.2.4.2Second written opinion

4.2.5.Procedure before the EPO as IPEA when it did not act as ISA

4.2.6.International preliminary examination before the EPO: four scenarios

4.2.6.2First scenario: the EPO acted as ISA and made no objections

4.2.6.3Second scenario: the EPO acted as ISA and made objections

4.2.6.4Third scenario: the EPO did not act as ISA and the EPO as IPEA has no objections

4.2.6.5Fourth scenario: the EPO did not act as ISA and the EPO as IPEA has objections

4.2.7.What is the time limit for replying to the written opinion?

4.2.8.Will the EPO take any SISR into account?

4.2.9.Can the EPO refuse to perform preliminary examination?

4.2.10.Is it possible to request consultation by telephone?

4.2.11.Nucleotide and amino acid sequences

4.2.12.Unity of invention

4.2.13.What must be done after receipt of the IPER?

4.2.14.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

5.1General

5.1.2.When is the EPO a designated or elected Office?

5.1.2.2When can the EPO act as designated Office?

5.1.2.3When can the EPO act as elected Office?

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

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

5.1.5.What is the language of the proceedings in the European phase?

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

5.1.7.Can the applicant request early processing?

5.1.8.Accelerated prosecution of applications – the "PACE" programme

5.1.8.2Combined PACE request and waiver of Rule 161/162 communication

5.2What are the requirements for entry into the European phase?

5.2.1.Which steps have to be taken for entry into the European phase?

5.2.2.What are the minimum requirements?

5.2.3.What further requirements need to be considered?

5.2.4.Amounts of fees to be paid in the European phase and payment methods

5.3Communication with the applicant – representation – address for correspondence (Form 1200, Sections 1, 2 and 3)

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

5.3.3.What happens if the requirement to appoint a professional representative is not observed?

5.3.4.How does a representative have to be appointed?

5.4Application documents on which the procedure before the EPO as designated/elected Office is based (Form 1200, Section 6)

5.4.1.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)?

5.4.2.Information on prior art (Form 1200, Section 6.3)

5.4.3.Amending the application – Rule 161/162 communication

5.4.4.May the Rule 161/162 communication be waived?

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

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

5.4.7.Does the filing of amendments have an impact on the number of claims fees payable?

5.5Translation of the application documents and other documents (Form 1200, Section 7)

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

5.5.1.2What are the consequences of not filing a translation of the application?

5.5.2.What must the translation include?

5.5.2.2What are the consequences of not filing a translation of the annexes to the IPER?

5.6Biological material and nucleotide and amino acid sequences

5.6.1.Biological material (Form 1200, Section 8)

5.6.2.Waiver under Rule 33(2) EPC

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

5.6.3.2What are the consequences of not filing a sequence listing?

5.7Filing fee

5.7.2.Page fee

5.7.3.What happens if the time limit for payment of the filing fee is not observed?

5.8Designations, extensions and validations

5.8.2.What happens if the time limit for payment of the designation fee is not observed?

5.8.3.How can the Euro-PCT application be extended or validated (Form 1200, Section 11)?

5.8.4.What happens if the time limit for payment of extension fees is not observed?

5.8.5.What happens if the time limit for payment of validation fees is not observed?

5.9Supplementary European search

5.9.2.No supplementary European search performed

5.9.3.Result of supplementary European search and refund of examination fee

5.9.4.Search fee for supplementary European search

5.9.4.2Reduction of the search fee

5.9.4.3Refund of the search fee

5.9.4.4What happens if the time limit for payment of the search fee is not observed?

5.10Examination

5.10.1.How is the request for examination filed (Form 1200, Section 4)?

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

5.10.3.Are reductions of the examination fee possible?

5.10.3.2Reduction if IPER was issued by the EPO

5.10.4.What happens if the time limit for filing the request for examination and payment of the examination fee is not observed?

5.11Renewal fee and claims fees

5.11.1.Renewal fee

5.11.2.What happens if the time limit for payment of the renewal fee and the additional fee is not observed?

5.11.3.Claims fees

5.11.4.What happens if the time limit for payment of the claims fee is not observed?

5.12Filing of other documents

5.12.1.What happens if data regarding the inventor or an applicant is missing?

5.12.2.What happens if the requirement to file any missing data regarding the inventor or an applicant is not observed?

5.12.3.Certificate of exhibition

5.13Priority claim

5.13.2.When is there an obligation to file the priority document with the EPO?

5.13.3.What happens if the requirement to file the priority document or the file number is not observed?

5.13.4.Is it necessary to file a translation of the priority document?

5.13.5.What happens if the requirement to file the translation or declaration is not observed?

5.13.6.Restoration of priority under Rule 49ter PCT

5.13.7.Incorporation by reference of a correct element or part under Rule 20.5bis(d) PCT

5.14Review by the EPO as designated/elected Office and rectification of errors made by the receiving Office or by the IB

5.14.2.Review by the EPO as designated Office under Article 25 PCT

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

5.14.4.May errors made by the receiving Office or by the IB be rectified?

5.15Lack of unity

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

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

5.16Publication of the Euro-PCT application by the EPO

5.17State of the art

5.18Divisional applications

5.19Further processing and re-establishment of rights

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