Information for PCT applicants concerning the procedure before the EPO as an International Preliminary Examining Authority under Chapter II PCT
This information replaces that published in OJ EPO 1994, 681 and relates specifically to the role of the EPO as an International Preliminary Examining Authority (IPEA). For comprehensive general information on the PCT and procedures thereunder including Chapter II, the PCT Applicant's Guide1 published by WIPO should be referred to.
Following withdrawal of its declaration under Article 64(1)(a) PCT, Spain became bound by PCT Chapter II on 6 September 1997 (see OJ EPO 1997, 394). This means that all PCT contracting states are now bound by PCT Chapter II. The activity of the EPO as an International Preliminary Examining Authority is based on the PCT and the Regulations under the Treaty, the Agreement between WIPO and the EPO under the PCT2, the Administrative Instructions under the PCT (Part 6)3, and the PCT Preliminary Examination Guidelines4.
I. Entitlement to file a demand with the EPO as IPEA
In order to file a valid demand with the EPO as IPEA at least one applicant must be a resident or national of a contracting state bound by PCT Chapter II (Article 31(2)(a) and Rule 54.1 PCT) and the international application must have been filed at a receiving Office of or acting for a contracting state bound by PCT Chapter II (Article 31(2)(a) PCT). Both of these conditions are now fulfilled by nationals or residents of any PCT contracting state. Nevertheless two further conditions must also be fulfilled.
(i) Correlation between the EPO as IPEA and the receiving Office
The EPO must have been specified as an IPEA by the receiving Office with which the international application has been filed (Art. 3(2) of the Agreement between the EPO and WIPO under the PCT).
Where the international application has been filed with the International Bureau in accordance with Rule 19.1(a)(iii) PCT, the EPO shall be the competent IPEA if having regard to the nationality or residence of at least one of the applicants, the international application could have been filed with a receiving Office which has specified the EPO in that capacity (Rule 59.1(b) PCT).
(ii) Correlation between the EPO as IPEA and the ISA
The EPO, the Spanish Patent and Trademark Office, the Swedish Patent Office or the Austrian Patent Office must be acting or must have acted as the International Searching Authority (ISA) for the international application (Art. 3(2) of the Agreement between WIPO and the EPO and the declaration filed by the EPO with the International Bureau under Rule 55.2(e) PCT).
In the case of international applications for which the Spanish Patent and Trademark Office is or has been the ISA, a translation into one of the EPO official languages must be furnished with the demand (Rule 55.2(a) PCT) and must include any amendments under Article 19 or 34 PCT if these are to be taken into account for the purposes of the international preliminary examination (Rule 53.9 PCT).
II. Filing of the demand
If the EPO is to be used as the IPEA, the demand for international preliminary examination (Form PCT/IPEA/401) must be submitted to the EPO directly, preferably at Munich, to the following address:
The European Patent Office
Fax No. (+49-89) 2399-8787
Documents submitted to the EPO as IPEA should carry the international application number and should be clearly marked "PCT Chapter II". The EPO provides free of charge identifying labels for documents pertaining to the Chapter II procedure and it is strongly recommended that one of these labels be affixed to every document before it is sent to or filed with the EPO.
If entry into the regional/national phase is to be postponed to 30 months from the priority date as per Article 39(1)(a) PCT (31 months in the EPO - Rule 104b(1) EPC), the demand must be received within 19 months of the priority date. Applicants who intend to file a demand should do so in good time, as it often happens that demands are filed very shortly before the expiry of 19 months but either the EPO is not the competent IPEA or the demand is defective. In such a case it may be impossible to advise the applicant of this in time to allow him to meet the 19-month time limit. It is therefore recommended that last-minute demands be filed by fax. No confirmation is required except upon invitation of the EPO where the document so communicated is of inferior quality (Rule 92.4(b) PCT and Notice from the EPO dated 2 June 1992, see OJ EPO 1992, 306, item 4).
If the demand is received after 19 months from the priority date the EPO will promptly inform the applicant. It will also inform him that the demand will not have the effect of postponing entry into the regional/national phase. In this case all of the procedural steps under Article 22 PCT for entry into the regional/national phase must be completed within 20 months of the priority date (21 months before the EPO - Rule 104(b)(1) EPC).
III. Language of the demand
Demands submitted to the EPO as IPEA shall be in the language of the international application (English, French, German) or in the language of publication, if this was English (Rule 55 PCT) or where the international preliminary examination is to be based on a translation into one of the EPO official languages (see I(ii) above) in the language of the translation.
Correspondence (not amendments to the application) may be addressed to the EPO as IPEA in English, French or German (Rule 92.2(b) PCT and Notice of the President of the EPO dated 18 June 1993, OJ EPO 1993, 540).
It is strongly recommended that applicants who do not have their residence or place of business in one of the EPC contracting states appoint a professional representative before the EPO, who can be contacted to deal with any urgent problems which may arise. For general information on representation before the IPEA see in particular Rule 90.1(d) PCT and the PCT Applicant's Guide, Vol. I, paras. 267-271.
The agent appointed for the international phase under PCT Chapter I may also act before the EPO as IPEA and sign the demand on the applicant's behalf. Alternatively another or additional agent may be appointed in the demand or in a separate power of attorney (Rules 90.1 and 90.4 PCT).
V. Signature of the demand
The demand must be signed by the applicant or his agent. If there is more than one applicant, a duly appointed common agent or common representative may sign on their behalf (Rules 53.2(b), 53.8, 90.3 PCT).
VI. Election of States
Only contracting states designated in the international application may be elected (Art. 31(4) PCT).
A pre-crossed box (No. V) in the Demand Form PCT/IPEA/401 provides for election of all eligible states which have been designated, but the applicant has the possibility of excluding any states he does not wish to elect.
VII. Basis for commencement of international preliminary examination
The applicant should indicate in Box IV of the Demand Form PCT/IPEA/401 (Rule 53.9 PCT) on the basis of which documents the preliminary examination should start: international application as originally filed, amendments of claims under Article 19 PCT or amendments under Article 34 PCT (other than amendments under Article 19 PCT) and copies of any such amendments should accompany the Demand.
Two fees are payable:
(a) the handling fee, and
(b) the preliminary examination fee.
Both fees are payable to the EPO and are due on submitting the demand.
For the current rates of these fees5 in all the currencies of the EPC contracting states please refer to the latest issue of the OJ EPO, Section "FEES". This section also regularly gives guidance as to the methods of paying fees, etc. (see also PCT Newsletter6).
Applicants are urged to use the Fee Calculation Sheet annexed to the Demand Form (PCT/IPEA/401 Annex).
If the fees are not paid in full on filing the demand the EPO will notify the applicant that he may pay the outstanding amount within one month, failing which the demand will be considered as not submitted. This will naturally prejudice the prosecution of the international application in the states elected in the demand if the applicant has not performed, within the time limit under Article 22 PCT (20 months from the priority date), the prescribed acts for entry into the national/regional phase.
Since the EPO will only begin the international preliminary examination when the fees have been received, late or incomplete payments reduce the time available for establishment of the international preliminary examination report (IPER) and should be avoided in the applicant's own interest.
IX. Defects in the demand
If there are defects in the demand referred to in Rule 60.1(a) PCT the EPO will invite the applicant to correct them within one month (extendable at the discretion of the EPO) of the date of the invitation. Provided the correction is received on time the demand is considered as if it had been received on the actual filing date provided the demand as submitted contained at least the election of one PCT contracting state and allowed the applicant and the international application to be identified. If these two conditions are not fulfilled then the demand is considered to have been filed on the date of receipt of the corrections.
The most frequent defects concern the failure to indicate in the demand all applicants, where there is more than one, and failure to pay the fees due on filing the demand.
X. First written opinion
If there are no objections to the application on grounds of novelty, inventive step or industrial applicability, or on any of the other grounds mentioned in Rule 66.2(a) PCT, the IPER (Form PCT/IPEA/409) is established immediately.
If there are objections, generally one written opinion will be issued by the EPO (Form PCT/IPEA/408). This will set a time limit for the applicant's response, normally three months, which may be extended provided the extension is requested before expiry of the time limit set in the written opinion and there is sufficient time available to grant the extension before issuing the IPER (Rule 69.2 PCT).
Replies received after expiry of the time limit will normally only be considered if preparation of the IPER has not already begun (Rule 66.4bis PCT). After this no amendment will normally be considered by the EPO as IPEA. Such amendments may be filed at the elected Offices when entering the national/regional phase7.
If the applicant does not intend to reply to a written opinion he may so inform the EPO. However, the EPO can give no guarantee that this will necessarily result in the IPER being given priority treatment.
In particular, personal interviews before establishment of the IPER have often proved useful.
If a representative or applicant wishes an interview to be held he may indicate this in his reply to the written opinion or he may telephone the examiner responsible whose name is indicated in the box "authorised officer" in the written opinion. When proposing dates for interviews it should be kept in mind that the EPO must in normal cases despatch the IPER within 28 months of the priority date.
XII. Unity of invention
Where the EPO as IPEA considers that the international application lacks unity of invention, it will invite the applicant either to restrict the claims in order to meet this requirement or, to the extent that the inventions have been searched (see Rule 66.1(e) PCT), to pay additional preliminary examination fees.
In the latter case the applicant may pay the additional fees under protest (Rule 68.3(c) PCT), that is to say he disputes, in writing, the finding of lack of unity. The protest will then be examined by a three-member EPO review panel which may either sustain the protest and order a refund of the additional fees (in whole or in part), or uphold the decision of the examiner. In the latter case the applicant will be invited to pay a protest fee if he wishes his protest to be referred for decision to an EPO Board of Appeal. The protest fee must be paid within one month of the review panel's notification and will be refunded if the protest is entirely upheld (full details on the operation of this procedure are published in OJ EPO 1992, 547).
1 Obtainable from WIPO.
3 See PCT Gazette No. 24/1996 (special issue).
4 See PCT Gazette No. 7/1993 (special issue) and No. 14/1995, 5579.
6 WIPO publication available by subscription.