5.13 Priority claim
5.13.2.When is there an obligation to file the priority document with the EPO?
5.13.004If during the international phase the applicant did not submit a certified copy of the previous application (the "priority document") or indicate the file number of the application from which priority is claimed, they must provide either or both of them upon entry into the European phase. Where the previous application is a European patent application or an international application filed with the EPO as receiving Office, the EPO will include a priority document in the file of the Euro-PCT application free of charge (see point 5.13.010).
5.13.005A priority document may be filed electronically with the EPO using Online Filing or Online Filing 2.0, provided it has been digitally signed by the issuing authority and the EPO can accept and verify the signature. The electronically filed priority document must be issued in a PDF format which complies with the Administrative Instructions under the PCT, Part 7 and Annex F. It cannot be filed by fax or using the EPO web-form filing service. By way of example, the EPO accepts electronic priority documents issued and digitally signed by the patent offices of the USA, Brazil, Portugal, Italy, Austria, France and Poland, Czech Republic and Singapore. Further offices are expected to follow.
5.13.006Since 1 November 2018, the EPO, if so requested by applicants in relation to international applications entering the European phase before the EPO as designated or elected Office, has been retrieving priority documents via the Digital Access Service (DAS), provided the previous application was filed with another office participating in DAS. To make use of this service, applicants first ask the "office of first filing" (OFF) with which the previous application was filed to make the priority document available via DAS, and then ask the EPO to retrieve a copy using the access code assigned by the OFF. This access code can be communicated to the EPO using EPO Form 1013. DAS is free of charge for applicants. As at 1 January 2023, 39 offices were listed as participating, and their number is expected to increase.69
5.13.007The EPO as designated/elected Office will include a copy of the priority document free of charge in the file of a Euro-PCT application even without having received one from the IB or been requested to retrieve it via DAS if it is:
–a European patent application; or
–an international application filed with the EPO as receiving Office.
5.13.008Similarly, for Euro-PCT applications entering the European phase before 1 January 2022 and claiming priority from:
–a Chinese patent or utility model application;
–a Korean patent or utility model application; or
–a United States provisional or non-provisional patent application;
the EPO as designated/elected Office will include a copy of the priority document in the file free of charge even without having received one from the IB or been requested to retrieve it via DAS, provided it can still be included by 30 June 2023.
5.13.009For Euro-PCT applications which entered the European phase on or after 1 January 2022, however, the EPO has stopped including any US, Korean or Chinese priority documents in the file. In such cases, if the priority document is still missing on entry into the European phase, the applicant will be duly notified and may submit the US, Korean or Chinese priority document(s) via DAS or by filing the certified copy under Rule 53(1) EPC.
69For a list of the participating offices, see wipo.int/das/en/participating_offices.html.