5.2 Documents that need not be filed by the applicant

By the end of the international phase, the IB will have provided the EPO with various documents relating to the application and the international phase processing, and so these documents do not need to be filed by the applicant. However, depending on the case, the applicant may be required under Art. 153(4) in combination with Rule 159(1)(a) to file translations of certain documents provided by the IB (A‑XII, 5.1; A‑XIII, 3).

The EPO does not require the applicant to furnish a copy of the international application under Art. 22(1) PCT or Art. 39(1)(a) PCT. Since the EPO has not made use of the waiver referred to in Art. 20(1)(a) PCT, the IB will provide the EPO with a copy of the international application as published, together with the ISR and the WO‑ISA/IPRP Chapter I (Rule 44bis.1 PCT). Where applicable, the ISR, or any declaration under Art. 17(2)(a) PCT replacing the ISR, will include an indication that the application relates to subject-matter that the ISA need not and does not search, or that no meaningful search could be carried out (Art. 17(2)(a)(i) PCT and Art. 17(2)(a)(ii) PCT).

If amendments have been filed under Art. 19 PCT, the copy transmitted by the IB under Art. 20 PCT also includes these amendments and any statement the applicant has made on them (Art. 20(2) PCT). The IB will also transmit any informal comments received from the applicant in response to the WO‑ISA at 30 months from the filing date or the earliest priority date. The IB will notify the applicant of the transmittal of these documents to the EPO as designated/elected office and the applicant should not file any of these documents with the EPO (Rule 47.1(c) PCT).

Where a demand for international preliminary examination is filed, the IB transmits the IPER, including any annexes (in the original language), to the EPO as elected Office. The IB will notify the applicant of this, and the applicant should not file any of these documents with the EPO. However, the applicant must ensure that a translation of any annexes to the IPER is submitted if they are not available to the EPO in the language of the proceedings in the European phase (A‑XII, 5.1; A‑XIII, 3).

The EPO as designated Office will obtain on request any documents mentioned in the ISR from the ISA. Where new documents are cited in the IPER that were not cited in the ISR, they may be attached as an annex to the IPER in their original language (Art. 36(4) PCT, Art. 20(3) PCT). The EPO is not authorised to require that the applicant furnish copies, or information on the contents, of any papers connected with the examination relating to the same application in any other elected Office (Art. 42 PCT).

The EPO does not require the applicant to furnish a copy of the international application, even if the IB has not yet communicated a copy under Art. 20 PCT at the time the application enters the European phase (PCT Gazette 14/1986, 2367). However, if the EPO is acting as designated Office and the IB has not yet transmitted a copy of the international application, the ISR and the IPRP, the applicant may – e.g. at the time of filing a request for early processing (A‑XII, 7.1) – file a request with the IB for such a copy. The applicant may proceed in the same manner and submit a request to the IB if the EPO is acting as elected Office and the IB has not yet sent it a copy of the international application, the ISR, the IPRP or the IPER with its annexes.