5.3 Documents that must be filed by the applicant – specification under Rule 159(1)(b)

It is the applicant's responsibility to file any documents which are not available to the EPO but which the applicant wants the EPO to take into account in the European grant proceedings.

An example of a "required document" in this context is a translation of the application under Art. 153(4) and Rule 159(1)(a) in all cases where the international application was not published in one of the official languages of the EPO (Rule 159(1)(a)) (A‑XIII, 3). Translations of the annexes to the IPER are also required documents and must be submitted by the applicant if they are not available to the EPO in the language of the proceedings in the European phase (A‑XIII, 3).

An example of an "optional document" is a translation of any amendments under Art. 19 PCT that were not published in an official language of the EPO (A‑XII, 5.2). If amendments filed under Art. 19 PCT are not available to the EPO in the language of the proceedings, they will not be taken into account (A‑XIII, 3). A further "optional document" is an amended set of claims filed with the EPO as designated/elected Office for the European grant proceedings under Rule 161 (A‑XIV, 2).

Although Rule 159(1)(b) requires the applicant to specify the documents on which they wish the European phase processing to be based, non-compliance with this requirement does not result in the application being deemed withdrawn under Rule 160 or in another loss of rights. However, compliance with this requirement is in the interest of both the EPO and the applicant because it ensures that processing is not based on the wrong set of documents. In particular, non-compliance with Rule 159(1)(b) may result in non-compliance with the requirement to pay the (correct) additional page fee and, consequently, to a deemed withdrawal of the application under Rule 160 (A‑XIII, 4). The additional fee is part of the filing fee and must be paid for each Euro-PCT application comprising more than 35 pages in accordance with Rule 159(1)(c) (A‑XIII, 4).

If the applicant does not specify the application documents on which the European grant proceedings are to be based, the international application as published, as well as any amendments made in the international phase, are all taken as the basis for the proceedings. The additional fee to be paid for an application comprising more than 35 pages will be calculated on the basis of the international application as published; any amendment pages filed under Art. 19 PCT and/or Art. 34 PCT are also taken into account for calculating the additional fee, unless the applicant has specified that the European phase processing is not to be based on these pages. For information on the additional fee, see A‑XIII, 4.

Applicants should preferably indicate the documents on which the proceedings in the European phase are to be based in section 6 of EPO Form 1200. Any further details may be provided on an additional sheet. This information should correspond to any indications given in the table/section provided for the calculation of the additional (page) fee to be paid for applications comprising more than 35 pages (A‑XIII, 4).

If there are inconsistencies in the information provided in EPO Form 1200, the applicant will be informed: even if an inconsistency does not affect the page fee to be paid, it cannot be excluded that there is an error in the information provided, which will result in an incorrect basis for the European phase processing.

If the applicant has filed test reports (e.g. comparative examples in support of inventive step) with the EPO as IPEA and has used EPO Form 1200, the EPO will consider that the applicant has agreed to the use of these reports in the European grant proceedings. In all other cases the applicant is invited to submit these reports for use in the European phase. See also A‑XIV, 6.3.1.