7.1 The request for early processing

When acting as designated Office, the EPO is not authorised to process or examine an international application before expiry of the period applicable under Art. 22 PCT (Art. 23(1) PCT). The same processing ban applies under Art. 40(1) PCT when the EPO acts as elected Office. One of the cases in which the processing ban ends before expiry of the 31-month period is where the EPO receives a valid request for early processing (A‑XII, 3.2).

Pursuant to Art. 23(2) PCT and Art. 40(2) PCT, the EPO may, at the express request of the applicant, start processing the international application as designated/elected Office at any time before expiry of the 31-month period set in Rule 159(1) in combination with Art. 22(3) PCT and Art. 39(3) PCT. There is no set wording for the request, but applicants must clearly express that they wish the processing of their application before the EPO as designated/elected Office to commence without further delay.

Applicants are advised to use EPO Form 1200 and select the appropriate checkbox to file a request for early processing. For more information, see the notice from the EPO dated 7 July 2017 (OJ EPO 2017, A74).

A request for early processing is not only a means of speeding up the European phase processing. It may in fact be essential for an applicant seeking a remedy of any sort provided for in the EPC which is subject to a time limit that will already have expired by the time the application enters the European phase at the end of the 31-month period. An example is a request under Rule 56 or Rule 56a (A‑XV, 1 and 6). These provisions provide for a remedy, as opposed to a requirement for entry, and so the processing ban does not defer the time limits they set to the end of the 31-month period (A‑XII, 3.1), which means that they may have expired already by the time the European phase processing starts (A‑XV, 1).

For the request for early processing to be effective, applicants must not only file it but also comply with the applicable minimum requirements for entry into the European phase under Rule 159(1) as if the 31-month period expired on the date they filed the request. If all applicable minimum requirements have been complied with on that date, the request is effective and, from that date, the Euro-PCT application will be processed in the same way as a Euro-PCT application that has entered the European phase by fulfilling the necessary requirements within the 31-month period and without a request for early processing having been filed.

Some of the minimum requirements apply independently of the date of filing of the request for early processing, i.e. they must always be complied with for entry into the European phase and thus for the request for early processing to be effective (A‑XII, 3.2):

–payment of the filing fee under Rule 159(1)(c), including any additional fee under Art. 2(1), item 1a, RFees, if the application comprises more than 35 pages (A‑XIII, 4)

–filing of a translation, if required under Art. 153(4) in combination with Rule 159(1)(a) (A‑XIII, 3)

–payment of the search fee under Rule 159(1)(e), where a supplementary European search report has to be drawn up under Art. 153(7) (A‑XIII, 6).

Other requirements stipulated in Rule 159(1) must be complied with as if the 31-month period expired on the date the applicant filed the request for early processing. It therefore depends on the date on which early processing is requested which requirements are to be fulfilled, since the (regular) time limits for paying the designation fee (Rule 39(1)) and the renewal fee (Rule 51(1)), and for filing the request for examination and paying the examination fee (Rule 70(1)), may not yet have expired on that date. If any of these time limits is still running on that date or, in the case of the renewal fee, if the due date under Rule 51(1) is later than that date, the request for early processing will therefore still be effective even if these requirements have not been fulfilled.

Furthermore, although not a minimum requirement, it is important that the applicant specify the application documents under Rule 159(1)(b) on which they wish the European phase processing to be based for the reasons given in A‑XII, 5.3 and, if required, appoint a professional representative (A‑XII, 6.2).

If the EPO establishes that a request for early processing is effective, the applicant is notified of the effective date of the request. As from that date, the application is processed as a European patent application in accordance with Art. 153 and Art. 150(2). Filing an effective request for early processing lifts the processing ban, so it is then no longer possible to claim the right to the full 31-month period for complying with any requirement under Rule 159(1), or any other requirement that must be complied with within that period (e.g. Rule 163, A‑XIII, 11) if the time limit set under the EPC for such requirements expires earlier. The same applies in respect of the one-month time limit for filing a request for restoration of priority under Rule 49ter PCT. This means that such a request must be filed within one month of the effective date of the request for early processing (A‑XV, 5).

Furthermore, as from the date the request is effective, the international phase is terminated in respect of the EPO as designated/elected Office (J 18/09, reasons 13). This means that, as from that date, any subsequent withdrawal under Rule 90bis PCT will have no effect in respect of the procedure in the European phase (Rule 90bis.6(a) PCT). Moreover, a divisional application may be filed as from the date the request is effective (J 18/09) (A‑XIII, 9.1.2; A‑IV, 1).

If the EPO establishes that no request for early processing has been received but all requirements for entry into the European phase have been complied with before expiry of the 31-month period and

–EPO Form 1200 is filed before expiry of 30 months or,

–if it is filed after 30 months but before expiry of the 31-month time limit, EPO Form 1200 is filed together with an indication that the applicant wishes any other form of expedited processing set out in A‑XII, 7.2 to 7.4,

it may inform the applicant that no request for early processing has been received.

Similarly, in cases where, on the date a request for early processing is filed, any minimum requirement has still not been met, the EPO will inform the applicant that the request will become effective only from the date on which all requirements have been complied with.

Applicants having neither a residence nor their principal place of business within the territory of one of the contracting states must act through a professional representative entitled to practise before the EPO (Rule 163(5)). They may, however, act on their own behalf until the date the request for early processing becomes effective because processing before the EPO does not start until then (A‑XII, 6.2). In other words, once early processing takes effect, such applicants can no longer act on their own behalf.

To process the application, the EPO will need all documents on which the processing in the European phase is to be based. This means that if 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 – file a request with the IB asking it to send these documents to the EPO under Art. 20 PCT. Such a request is not required if the documents are available to the EPO, e.g. because it has been selected as ISA, or if they can be retrieved via ePCT ("Office-to-Office"). The same applies 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.

Pursuant to Art. 153(6) the EPO will defer performing search and substantive examination if the ISR is expected but not yet received. This is the case where the international phase has not ended in respect of all other designated/elected Offices. However, if the application was deemed withdrawn before establishment of the ISR, the start of the search will be deferred by waiting for the international application to be forwarded by the IB under Art. 20 PCT, not by waiting for the ISR.

Furthermore, if international preliminary examination has not started or the IPER has not yet been published at the time the request for early processing becomes effective, the EPO will not defer search and examination. It will consider the fulfilment of the requirements for the request for early of processing as the clear wish of the applicant that a European patent be granted without delay. This means that it will take the IPER into account only if it is received before the grant of the European patent.

The automatic debiting procedure may be used to pay the fees falling due on filing the request for early processing (Annexes A.1 and Annex A.2 to the ADA, Supplementary publication 2, OJ EPO 2024). However, automatic debiting can only be performed if the EPO can establish whether a page fee needs to be included as part of the filing fee (A‑III, 13.2). This is only possible if the EPO has access to the international application, i.e. if:

–the EPO is the receiving Office, or

–the international application has already been published at the time the request for early processing is received and has been forwarded under Art. 20 PCT,

–the EPO is acting as (S)ISA or IPEA.

On the applicable procedure for applications corrected by the receiving Office under Rule 20.5bis(d) PCT, see A‑XIII, 4.1.2, C‑III, 1.3 and A‑XV, 6.

The EPO as designated/elected Office will issue the communication under Rules 161 and 162 directly after it has established that the request for early processing is effective and on condition that the ISR has already been established. The applicant may waive the right to receive this communication (A‑XII, 7.2).

If a certificate of exhibition has to be filed under Rule 159(1)(h) but has not yet been received by the date the request for early processing is filed, this will not prevent the request from taking effect, but it will affect the prior art that the EPO will take into account in the European phase (A‑XIII, 11.6).

Claims fees for any claims in excess of 15 need to be paid before expiry of the period under Rule 162 (A‑XIV, 2.2.). Their payment is therefore not a requirement for a request for early processing to take effect. On cases where the applicant also wished to waive the right to receive the communication under Rules 161 and 162, see A‑XII, 7.2 and A‑XIII, 11.8.

If the EPO acted as (S)ISA and the applicant wishes not only the processing of the application before the EPO as designated/elected Office, but also examination of the application to start without delay, they must file a valid request for examination (including payment of the examination fee) even if the time limit under Rule 70(1) has not yet expired at the date of entry into the European phase, since examination can begin only if a request for examination has been validly filed.

Where a request for examination is filed before the EPO has sent, where applicable, the supplementary European search report to the applicant, the applicant may wish to consider waiving the right to receive the communication under Rules 70(2) and 70a(2) (A‑XII, 7.3, A‑XIV, 5.2).

For further details, see the notice from the EPO dated 21 February 2013 (OJ EPO 2013, 156).