EUROPEAN PATENT OFFICE
Information from the EPO
Notice from the European Patent Office dated 14 June 2020 concerning the applicability of new Rule 20.5bis PCT on the correction of erroneous filings in proceedings before the EPO
I. Introduction
1. On 1 July 2020, new Rule 20.5bis PCT, which allows applicants to correct an erroneously filed element (description or claims) or part of the description, claims or drawings (including all drawings) contained in an international application, will enter into force. The EPO has notified WIPO that this provision is partially incompatible with the current legal framework under the EPC and will therefore not be fully applicable in proceedings before the EPO as receiving and designated/elected Office (Rule 20.8(a-bis) and (b-bis) PCT).1
2. This notice gives information about the applicability of Rule 20.5bis PCT in proceedings before the EPO. The annexed diagrams give an overview of the possible procedural scenarios. The notice does not cover the procedure under existing Rule 20.5 PCT as there has been no change in practice at the EPO and that provision continues to apply only to cases where a part of the description, claims or drawings (including all drawings) is truly missing from the international application.
II. Procedure before the EPO as receiving Office
3. As a result of its notification of incompatibility, the EPO as receiving Office will process requests for correction under Rule 20.5bis PCT only in the following two scenarios:
(a) the correct element or part is furnished by the applicant on or before the date on which the international filing date is accorded (Rule 20.5bis(b) PCT). In this case, the wrong element or part will be replaced with the correct one and the international filing date will be the date on which all the requirements of Article 11(1) PCT are fulfilled.
(b) the correct element or part is furnished by the applicant after the date on which the international filing date has been accorded and no incorporation by reference is requested (Rule 20.5bis(c) PCT). In this case, the wrong element or part will be replaced with the correct one but the international filing date will be shifted to the date on which the correct element or part was received unless the applicant requests that it be disregarded (Rule 20.5bis(e) PCT).
4. By contrast, the EPO as receiving Office will not process requests for correction if the correct element or part is furnished by the applicant for the purpose of incorporating it by reference (Rule 20.5bis(d) and Rule 20.8(a-bis) PCT). Such requests can be processed only if the applicant authorises the transmittal of the international application to the International Bureau, which would then act as receiving Office for that application (Rule 19.4(a)(iii) PCT); the EPO will always contact the applicant first in these cases. However, a transmittal will have no negative consequences for the applicant since the International Bureau as receiving Office will deem the date on which the international application was received by the EPO to be the date of receipt (Rule 19.4(b) PCT).
III. Procedure before the EPO as International Searching Authority
5. The notification of incompatibility has no impact on the activity of the EPO as International Searching Authority, which depends on the decisions taken by the receiving Office with regard to the international application and its filing date. Therefore, in cases where the international application was corrected by the receiving Office under Rule 20.5bis PCT, the EPO as International Searching Authority will carry out the search on the basis of the international application including the correct element or part if:
(a) the correct element or part is notified to it by the receiving Office before the start of the search; or
(b) the correct element or part is notified to it by the receiving Office after the start of the search (including after its completion) and the applicant pays an additional fee equal to the search fee within one month from the date of the invitation to do so issued by the EPO (Rule 40bis.1 PCT and Article 2(1) of the Rules relating to Fees2).
6. If, in the scenario described in paragraph 5.b) above, the correct element or part is notified to the EPO as International Searching Authority after the search has started but before its completion and the additional fee is paid, the EPO will also complete the already initiated search and issue a non-official international search report and written opinion based on the international application as initially submitted. However, the non-official international search report and written opinion are issued only for the benefit of the applicant and any designated Offices which have notified an incompatibility under Rule 20.8(b-bis) PCT. They therefore do not constitute the international search report under Rule 43 PCT and written opinion under Rule 43bis PCT.
IV. Procedure before the EPO as International Preliminary Examining Authority
7. In the scenarios described in paragraphs 5 and 6 above, the international preliminary examination will be performed on the basis of the international application including the correct element or part, as searched by the International Searching Authority.
V. Procedure before the EPO as designated or elected Office
8. Corrections accepted by the receiving Office during the international phase under either Rule 20.5bis(b) PCT or Rule 20.5bis(c) PCT – i.e. where it accorded the date of receipt of the correct application documents3 or a later date as the filing date of the application or shifted the initial filing date of the application to the date of receipt of the correct application documents – will be effective in proceedings before the EPO as designated/elected Office.
9. However, if the receiving Office considered the correct application documents to be incorporated by reference under Rule 20.5bis(d) PCT, i.e. without changing the filing date, this incorporation will not be effective in proceedings before the EPO as designated/elected Office. In such cases, the EPO will establish the filing date and the application documents on which the processing before the EPO as designated/elected Office will be based in accordance with either the standard or the abridged procedure set out below (see paragraph 10 ff and paragraph 16 ff). For a better understanding, examples of the procedure before the EPO as designated/elected Office are given in Part VI.
Standard procedure
10. If the EPO establishes that the notification of incompatibility applies, it will, on entry into the European phase, consider the filing date of the application to be the date on which the correct application documents were received (Rule 20.8(c) PCT). Furthermore, it will consider the application as filed to include the correct application documents but not the erroneously filed ones. It will inform the applicant of this in a communication under Rules 20.8(c) and 82ter.1(c) and (d) PCT, setting a time limit of two months for reply:
(a) If the applicant requests within the time limit set that the correct application documents be disregarded under Rule 82ter.1(d) PCT, the EPO will issue an interlocutory decision changing the filing date to the filing date initially accorded by the receiving Office and confirming that the correct application documents are to be disregarded. This means that the proceedings before the EPO as designated/elected Office will be based on the application documents as filed on the initial filing date and that this date will be the date of filing of the application for the purposes of processing in the European phase (see example 2 below).
(b) If the applicant files observations in reply to the communication under Rules 20.8(c) and 82ter.1(c) and (d) PCT within the time limit set, the EPO will similarly issue an interlocutory decision taking those observations into account.
(c) If the applicant does not file observations and does not request that the correct application documents be disregarded, no interlocutory decision will be issued. In this case, the date of receipt of the correct application documents will be considered to be the filing date of the application for the purposes of the proceedings before the EPO as designated/elected Office. The EPO will consider the application as filed to include the correct application documents but not the erroneously filed ones (see example 1 below).
11. The application documents considered to form the application as filed are determined by the procedure set out in paragraph 10. Once that procedure has been finalised, a communication under Rules 161 and 162 EPC will be issued and the applicant may amend the application within the scope of the disclosure on the filing date as determined in this procedure.
12. Any additional fee due on entry into the European phase will be calculated as set out in the applicable notices from the EPO.4 If the applicant makes use of the abridged procedure, this may have a positive effect on the calculation of the additional fee (see paragraphs 16 and 17).
13. Where a translation must be filed on entry into the European phase (Article 153(4) and Rule 159(1)(a) EPC), the translation must have the same content as the international publication. This means that a translation of both the erroneously filed application documents and the correct application documents must be filed. Moreover, the applicant must indicate which pages make up the translation of the correct application documents and which the translation of the erroneously filed application documents.
14. The application published under Article 153(4) EPC, if applicable, will correspond to the international publication. It will thus comprise both the erroneously filed application documents and the correct application documents. The front page of the publication will make reference to the fact that the notification of incompatibility under Rule 20.5bis(d) PCT applies to the application.
Restoration of the right of priority
15. Applicants are reminded that changing the filing date to the date of receipt of the correct application documents may result in the loss of any priority right claimed. In such cases, they may request restoration of the right of priority under Rule 49ter.2 PCT. Pursuant to Rule 49ter.2(b)(i) PCT, such a request must be filed within one month from expiry of the 31-month time limit under Rule 159(1) EPC or within one month from an effective request for early processing under Article 23(2) or 40(2) PCT.5
Abridged procedure
16. Applicants interested in fast and straightforward processing of their application may abridge the procedure under paragraph 10 as follows:
(a) They may request that the EPO disregard the correct application documents within the 31-month time limit under Rule 159(1) EPC or at the latest before the communication under Rules 20.8(c) and 82ter.1(c) and (d) PCT is issued. They are then considered to have waived their right to such a communication and an interlocutory decision will be issued instead. This decision will confirm that the application's initial filing date is maintained and that the correct application documents will be disregarded in the proceedings before the EPO as designated/elected Office.
(b) Alternatively, they may declare, within one of the time limits referred to in point a) above, that they wish to pursue the application containing the correct application documents with the date of receipt of those application documents as the filing date. They are then considered to have waived their right to the communication under Rules 20.8(c) and 82ter.1(c) and (d) PCT. No such communication and no interlocutory decision will be issued. The EPO will correct the filing date and consider the erroneously filed application documents not to have been filed. The applicant will be informed accordingly (see example 3 below).
17. Applicants opting for the abridged procedure avoid the steps involved in the standard procedure and so save time and effort. Moreover, if, before the additional fee is paid, and on condition that the date of payment is within the 31-month period under Rule 159(1) EPC, they have chosen the set of documents on which the proceedings before the EPO as designated/elected Office are to be based – i.e. either the correct application documents or the erroneously filed ones – only those chosen documents will be considered for the purposes of calculating the additional fee.
Request for early processing
18. If a request for early processing is filed,6 the same procedure applies. Applicants wishing to make use of the abridged procedure must inform the EPO of this at the time the request for early processing is validly filed or at the latest before the communication under Rules 20.8(c) and 82ter.1(c) and (d) PCT is issued.
Competence to apply the new procedure
19. The competence to apply the procedure under Rule 20.8(c) PCT in the European phase lies with either the Receiving Section or the examining division (Rule 10 EPC). Where the examining division is competent, its duties are entrusted to non-examining staff by decision of the President of the European Patent Office dated 14 June 2020 concerning the entrustment to non-examining staff of certain duties incumbent on the examining or opposition divisions.7
VI. Examples of processing in the European phase
20. Example 1: Applicant opts to proceed with the correct application documents and with the later filing date.
An international application is filed on 2 July 2020, with description A erroneously attached. It claims priority of an application with a filing date of 3 October 2019 and containing description B.
2 July 2020 is accorded as the international filing date.
Correct description B is filed on 2 August 2020, found to be completely contained in the priority document and incorporated by reference under Rule 20.5bis(d) PCT. There is no change of the filing date in the international phase.
Entry into European phase:
Communication issued under Rules 20.8(c) and 82ter.1(c) and (d) PCT, informing the applicant that:
- the EPO considers the filing date of the Euro-PCT application to be 2 August 2020
- the application as filed is considered to include description B but not erroneously filed description A
- they may file a request that correct description B be disregarded in order to maintain the initial filing date.
The applicant does not react within the time limit set in the communication.
For processing in the European phase, 2 August 2020 is considered to be the filing date and the correct application documents including description B are considered to be the content of the application as filed. Erroneously filed description A is not considered to be part of the application as filed. No interlocutory decision is issued.
21. Example 2: Applicant opts to proceed with the application documents filed on the initial filing date and with that initial filing date.
The international phase is the same as in example 1.
Entry into European phase:
Communication issued under Rules 20.8(c) and 82ter.1(c) and (d) PCT, informing the applicant that
- the EPO considers the filing date of the Euro-PCT application to be 2 August 2020
- the application as filed is considered to include description B but not erroneously filed description A
- they may file a request that correct description B be disregarded in order to maintain the initial filing date.
The applicant requests that correct description B be disregarded in order to maintain the initial filing date.
The EPO issues an interlocutory decision confirming that 2 July 2020 is considered to be the filing date, that the application documents filed on 2 July 2020 and including description A are considered to be the content of the application as filed and that description B filed on 2 August 2020 is not considered part of the application as filed.
22. Example 3: Applicant opts under the abridged procedure to proceed with the correct application documents.
The international phase is the same as in example 1.
Early entry into the European phase with a valid request for early processing, combined with a request that 2 August 2020 be considered the date of filing, that the application as filed be considered to include description B and that erroneously filed description A be disregarded.
The applicant is informed that, for processing in the European phase, 2 August 2020 is considered to be the filing date and the correct application documents including description B are considered to be the content of the application as filed. Erroneously filed description A is not considered part of the application as filed.
Annex: Diagram illustrating possible scenarios
(a) The EPO as receiving Office
(b) The EPO as International Searching Authority
(c) The EPO as designated or elected Office
1 See the Official Notice published by the International Bureau in the PCT Gazette of 30 January 2020.
2 See Decision of the Administrative Council CA/D 2/20 of 27 March 2020 (OJ EPO 2020, A36).
3 Since the EPC refers to the description, claims and drawings, or parts of them, as "application documents", this wording is used in the rest of this notice instead of "elements or parts".
4 Notice from the European Patent Office dated 26 January 2009 concerning the 2009 fee structure (OJ EPO 2009, 118) and notice supplementing the notice from the European Patent Office dated 26 January 2009 concerning the 2009 fee structure (OJ EPO 2009, 338).