1.2.1 General issues

According to Art. 94(1) EPC, the EPO shall, in accordance with the Implementing Regulations, examine on request whether the European patent application and the invention to which it relates meet the requirements of the EPC. The request shall not be deemed to be filed until the examination fee has been paid (Art. 94(1), second sentence, EPC; former Art. 94(2) EPC 1973). If no request for examination has been made in due time, the application shall be deemed to be withdrawn (Art. 94(2) EPC).

R. 70 EPC sets out the practical arrangements for filing the request for examination, including the form and the time limit. R. 70(1) EPC stipulates that the applicant may request examination of the European patent application up to six months after the date on which the European Patent Bulletin mentions the publication of the European search report. The request may not be withdrawn.

In J 21/98 (OJ 2000, 406) the Legal Board stated that the request for examination constituted an autonomous step, which had to be kept quite separate from the (previous) step of filing the European patent application. In particular, the provision of Art. 94(1) EPC 1973, pursuant to which, for the examination of the application to be started, the applicant had to file a written request, showed that, according to the EPC, the patent application was not considered as the only necessary step to be taken by the applicant to obtain the grant of a patent, since a further step was necessary, consisting in a written request for examination – that meant a new declaration of intention to continue the grant procedure. Thus the applicant was given the right to know the outcome of the search report before deciding whether to ask for the prosecution of the grant procedure by means of the request for examination, which implied the payment of the related fee, or to drop said procedure. The provisions of the EPC were indeed clearly aimed at giving the applicant the possibility to properly consider the convenience of a further prosecution of the grant procedure in the light of the outcome of the search report.

In J 12/82 (OJ 1983, 221) the Legal Board found that the unequivocal terms of Art. 94 EPC 1973 did not permit any wide interpretation – in fact the Article required that the request be written, filed within a certain period and accompanied by payment of the fee within the same period. In addition it should be noted that the authors of the EPC 1973, i.e. the contracting states, gave the request filed within the time limit extensive effects: it could not be withdrawn (Art. 94(2), last sentence, EPC 1973), yet on the other hand, if it was filed late the patent application was automatically deemed to be withdrawn (Art. 94(3) EPC 1973). The Legal Board held that the mere payment of the examination fee within the time limits provided for in Art. 94(2) EPC 1973 could not be a substitute for filing the request itself in good time.

In J 4/00 the Legal Board held that a request for examination under Art. 94 EPC 1973 required, over and above payment of the examination fee, that the underlying intention of an applicant that his application should proceed to examination was manifested in a written statement made by the applicant or his representative addressed to the EPO and received there in time. While this requirement was quite distinct from that of payment of the examination fee, there was no prescribed form of words for a request for examination which could be contained in the same document as a debit order or other payment instruction. To qualify as a request for examination, in the circumstances of the case the only reasonable interpretation of the text filed with the EPO had to be that the applicant thereby wanted to inform the EPO that he wished to have the application examined pursuant to Art. 94 EPC 1973.