3.1. Competence of the EPO as designated or elected Office

The EPO can be either a "designated Office" or an "elected Office" for an international application filed under the PCT that designates "EP" (Euro-PCT application). If an applicant enters the European phase without having requested international preliminary examination under PCT Chapter II, the EPO will act as a "designated Office". If, before entering the European phase, the application was processed under PCT Chapter II, the EPO will act in the European phase as an ''elected Office''. Pursuant to Art. 153(2) EPC, an international application for which the EPO is a designated or elected Office is deemed to be a European patent application.

In J 26/87 (OJ 1989, 329) the Legal Board held that if, on the proper interpretation of the request for grant of an international application, an applicant designated an EPC contracting state for which the PCT was in force on the filing date of the international application, the EPO was bound by the provisions of Art. 153 EPC 1973 to act as the designated Office for that contracting state, even if the international application had been published by the International Bureau without mentioning that contracting state as a designated state.

J 19/93 also concerned the designation of EPC contracting states in an international application for the purpose of obtaining a European patent. The Legal Board pointed out that the EPO as elected or designated Office was fully competent to interpret applications appointing it to act in these capacities. It was not bound by the interpretation of the receiving Office or of the International Bureau (see also J 26/87, J 17/99).

In J 3/94 the Legal Board could not agree with the applicant's contention that the election of two EPC contracting states made the EPO an elected Office by operation of law. In the PCT request, the applicant had designated a European patent under "Regional Patent" and five PCT contracting states, including Germany and the United Kingdom, under "National Patent". However, in the demand for international preliminary examination, filed with the EPO as IPEA, only the five PCT contracting states were elected; under "Regional Patent" there was no cross indicating the European patent. The Legal Board held that the EPO did not become an elected Office in this case. One of the principles implemented by Art. 31(4)(a) PCT was that applicants could choose the office for which they intended to use the results of the international preliminary examination. Furthermore, it was not only a matter for the EPC to decide whether an election made for the national route was also valid for the EPO. The validity of an election had to be decided during the international phase in order to give effect to the election and, in particular, to the IPEA's duty of confidentiality (Art. 38 PCT).

As to whether the EPO had competence to interpret a declaration in the demand differently from the IPEA, the Legal Board in J 4/94 observed that the interpretation of the demand was at the outset the task of the IPEA. However, this did not necessarily exclude an office alleged to be an elected Office from interpreting the demand as well. In the case in hand, there had been a formal deficiency in the demand (two EPC contracting states had been indicated as elected Offices in handwriting, next to the ''EP'' box). Instead of inviting the applicant to correct the deficiency, the IPEA had deleted the handwritten indication. A clear deviation by the IPEA from the intention expressed in the demand was not binding on the EPO. It was therefore possible for the EPO to regard itself as a validly elected Office.