4.3 Minimum requirements for entry into the European phase

All minimum requirements that, depending on the application, may be applicable are laid down in Rule 159(1). "Entry into the European phase" is not one single act but a series of individual acts to be performed. Due to their different legal nature, these required acts do not form a unitary procedural step but are legally independent and subject to independent time limits laid down in Rule 159.

Some of the requirements listed in Rule 159(1) are, strictly speaking, not minimum requirements for effective entry into the European phase, because their non-compliance does not result in a loss of rights which blocks such entry into the European phase and, as a result, the start of the European grant proceedings:

–Rule 159(1)(b): Filing a specification of the application documents on which the European grant proceedings are to be based as required under Rule 159(1)(b). If no specification is filed, there is no legal consequence, but the EPO will take all amendments received via the IB and from the applicant as the basis for the proceedings. This may result in payment of an incorrect filing fee owing to the pages that the EPO then takes into account to establish the page fee (A‑XII, 5.3).

–Rule 159(1)(h): Filing a certificate of exhibition required under Rule 159(1)(h) in combination with Art. 55(2). If a certificate is not filed, this (only) affects the relevant prior art taken into account in the European phase. So, although this requirement has to be complied with within the 31-month period, a failure to do so does not block the start of the processing in the European phase (A‑XIII, 11.6).

The applicable minimum requirements for effective entry into the European phase vary depending on the state of the file at the time of entry into the European phase. If any of the minimum requirements in the list below expires on the 31-month time limit, it must be complied with for effective entry into the European phase:

–supply the translation pursuant to Rule 159(1)(a) if the Euro-PCT application was not published by the IB (international publication) in one of the EPO's official languages (A‑XIII, 3)

–pay the filing fee provided for in Art. 78(2), including the additional fee for applications with more than 35 pages, pursuant to Rule 159(1)(c) (A‑XIII, 4)

–pay the designation fee pursuant to Rule 159(1)(d) (and any extension or validation fees) if the period under Rule 39 has expired earlier (A XIII, 5)

–pay the search fee pursuant to Rule 159(1)(e) if a supplementary European search report is to be drawn up (A‑XIII, 6)

–file the request for examination and pay the examination fee pursuant to Rule 159(1)(f) if the period under Rule 70(1) has expired earlier

–pay the renewal fee for the third year pursuant to Rule 159(1)(g) if the period under Rule 51(1) has expired earlier. If the due date is missed, the applicant may still pay the renewal fee with an additional fee under Rule 51(2) (A‑XIII, 8).

Due to the different legal nature of the various minimum requirements, a remedy is required for each one not complied with in due time. Each minimum requirement is therefore set out separately, together with its legal consequences and the available remedy in cases of non-observance in due time, in A‑XIII, 2 to 9. A‑XIII, 9.2 addresses some aspects of non-compliance with several minimum requirements.

If an applicable minimum requirement is not complied with, the application is deemed withdrawn under Rule 160 (A‑XIII, 3-8). However, non-payment of the renewal fee due at the expiry of the 31-month period does not result immediately in a deemed withdrawal of the application, but only if the renewal fee due is not paid in accordance with Rule 51(2) within the six-month time limit (Art. 86(1)) (A‑XIII, 8; A‑X, 5.2.4).

Once the application has effectively entered the European phase, a divisional application may be filed, because the application is considered pending before the EPO as designated/elected Office as from the date of entry (G 1/09, Reasons 3.2.5; J 18/09). To ensure the Euro-PCT application is not deemed withdrawn at the time a divisional application is filed, the applicable requirements of Rule 159(1) must therefore be fulfilled (A‑XIII, 9.1.2; A‑IV, 1). On the further effects of full or partial compliance with the minimum requirements, see A‑XIII, 9.