1.1 Precedence of the PCT and supplementary application of the EPC in the European phase

The principle that the PCT takes precedence, with the EPC applying on a supplementary basis, is explicitly laid down in Art. 150(2). This provision applies to processing before the EPO in both the international and the European phase (General Part, 3.2). The fact that, in the absence of a higher-ranking PCT provision, the EPC is to be applied to international applications ensures that applicants are treated equally and receive the same service within the limits set by the PCT.

The supplementary application of the law of the designated/elected Office follows from Art. 11(3) PCT, which states that an international application for which a national/regional office is designated Office "shall have the effect of a regular … application … as of the international filing date". Art. 153(2) explicitly confirms this for international applications before the EPO as designated/elected Office.

It follows that any differences in how Euro-direct and Euro-PCT applications are processed in the European grant proceedings must result from the fact that the PCT provisions take precedence. A number of provisions in both the PCT and the EPC implement and ensure the precedence of the PCT. For instance, Rule 49.5(a) PCT lays down the requirements for any translation of the international application that has to be filed pursuant to Rule 159(1)(a) in combination with Art. 22 PCT or Art. 39 PCT (A‑XIII, 3). Another example is Rule 161, which implements the right to make amendments on entry into the European phase laid down in Art. 28(1) PCT and Art. 41(1) PCT (A‑XIV, 2.1).

Pursuant to Art. 27(1) PCT, the EPO cannot require compliance with requirements "relating to form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations". The PCT thereby provides for harmonisation of the patent law in relation to formal requirements. Accordingly, if the requirements for according an “international filing date” under Art. 11 PCT are met, that date is the filing date of the application in all proceedings, including the grant proceedings before the EPO as designated/elected Office. In other words, the "filing date" of a Euro-PCT application is the (international) filing date accorded by the receiving Office under Art. 11 PCT (A‑II, 4). Only where it is established that the receiving Office failed to apply the PCT provisions correctly may the international filing date be revised in the European grant proceedings (A‑XV, 2). Exceptions to the principle laid down in Art. 27(1) PCT may apply only if the PCT explicitly allows the application of different or additional formal requirements under the law of the designated/elected Offices. Examples of such provisions are Art. 27(7) PCT, which concerns the requirements as regards representation before the designated/elected Offices (A‑XII, 5.2), and Art. 27(2) PCT and Rule 51bis PCT, which concern the requirements of the designated Offices in cases of missing information and documents respectively.

Art. 27(5) PCT makes it clear that it is only the law on formal requirements laid down in the PCT that takes precedence, by explicitly providing that matters of substantive patent law are the exclusive competence of the designated/elected Offices. Thus, in the European phase, the EPC provisions on the substantive conditions for patentability and any other EPC provisions that are not "requirements relating to form and contents" of applications apply. The instructions in chapters A‑XII to A‑XV therefore concern matters of form and contents. Since the higher-ranking law in the PCT relates exclusively to these formal requirements, the differences between the grant proceedings for Euro-direct and for Euro-PCT applications are limited to matters of this nature. To the limited extent that the PCT provides for (non-prevailing) substantive patent law, it is mostly in line with the EPC, as is the case, for instance, with the prohibition on extending the disclosure by amendments under Art. 123(2), which is also laid down in the PCT (Art. 28(2) PCT, Art. 41(2) PCT).

Subject to the limits set by the principle of precedence, the PCT requires that the designated/elected Offices apply their national/regional law to international applications. Art. 11(3) PCT states that an international application for which a national/regional office is designated Office "shall have the effect of a regular … application … as of the international filing date". The supplementary role of the EPC in the European phase is explicitly expressed in Art. 153(2), which states that a Euro-PCT application is "equivalent to a regular European patent application". These two provisions, together with Art. 150(2), guarantee equal treatment of applicants in the European grant proceedings within the limits set by the PCT. An example of the effect of this principle can be found in Art. 48(2) PCT, which requires that the designated/elected Offices allow applicants to benefit from the remedies available under their law to overcome delays in meeting any time limit during processing in the international phase. Rule 139, for instance, may therefore be relied on to correct errors made in the international phase before the EPO as designated/elected Office (A‑XV, 1).