9.1.3 Prior-art effect under Rule 165

It follows from Art. 153(5), in conjunction with Rule 165, that an international application is included in the state of the art for the purposes of Art. 54(3) if the PCT applicant has paid the filing fee under Rule 159(1)(c) and supplied a translation under Rule 159(1)(a) in cases where the application has not been published by the IB in one of the official languages of the EPO (A‑XIII, 3). Thus, for a Euro-PCT application to be considered a conflicting European application under Art. 54(3), not all minimum requirements must be met and the EPO will provide information about it in the European Patent Bulletin even though it has not entered the European phase (A‑XIII, 10). For general information on Art. 54(3), see G‑IV, 5.2.

Moreover, the translation required for the prior-art effect under Rule 165 does not need to fulfil the same requirements as the translation required for effective entry into the European phase (A‑XIII, 3). The translation under Rule 165 (only) needs to contain the following:

–the description (as originally filed; if applicable, the title as established by the ISA under Rule 37.2 PCT)

–the claims (as originally filed)

–any text matter in the drawings as originally filed, except for the expression "Fig."

–the abstract.