4.1.3.1 Reference to a previously filed application 

Details required on the filing date

Under Rule 40(2), to qualify for a filing date, the applicant must indicate the following details on the filing date:

(i)the filing date of the previously filed application 

(ii)its file number 

(iii)the office where it was filed 

(iv)an indication that this reference replaces the description and any drawings. 

The previously filed application referenced may also be an application for a utility model.

Copy of the previously filed application

The applicant must supply a copy of the previously filed application certified as correct by the authority with which it was filed within two months of the filing date (Rule 40(3)). However, according to Rule 40(3), last sentence, this requirement is dispensed with where the previously filed application is already available to the EPO under the conditions specified by the President. According to the notice from the EPO dated 14 September 2009, OJ EPO 2009, 486, a certified copy does not need to be filed where the previously filed application is a Euro-direct application or an international one filed with the EPO as receiving Office under the PCT. In all other cases, a certified copy of the previously filed application referenced must be filed within the time limit under Rule 40(3).

Where the previously filed application referenced is the claimed priority application, only one certified copy needs to be filed to satisfy the requirements relating to both the filing date (Rule 40(3)) and the priority claim (Rule 53(1), see A‑III, 6.7).

For divisional applications filed by reference, see A‑IV, 1.3.1.

Translation of the previously filed application

If the previously filed application is not in an official EPO language, the applicant must also file a translation into one such language within two months of the filing date (Rule 40(3)). If the translation of the previously filed application is already available to the EPO, a copy of it will be included in the file free of charge and the applicant will not need to file it (Rule 40(3)).

Note that where the previously filed application is in an official language of an EPC contracting state according to Art. 14(4), the application may qualify for a reduction of the filing fee, provided that the applicant is entitled to a reduction according to Rule 6(3) in conjunction with Rule 6(4) to Rule 6(7) (see A‑X, 9.2.1 and A-X, 9.2.2). The reduction applies even in cases where the description is filed by reference to a previously filed application according to Rule 40(1)(c), where the previously filed application is in a language specified in Art. 14(4) but the claims are filed after the filing date in accordance with Rule 57(c) and Rule 58 and in an official EPO language. This is because the essential element for establishing a filing date (the provision of a description, see Rule 40(1)(c)) has been provided in a language giving rise to the entitlement to the reduction (see G 6/91, mutatis mutandis).

The claims

Applicants can also indicate that the reference to the previously filed application should also replace the claims (Rule 57(c)). This must be done on the filing date, preferably by selecting the appropriate box on the request for grant (EPO Form 1001). In that case, the previously filed application's claims will form the basis for the search and, as they satisfy the requirement of Rule 57(c), the applicant will not be invited to file claims later.

If applicants do not refer to the previously filed application's claims but only to the description and any drawings, they may file a set of claims at the same time as the reference (i.e. on the filing date). If they do not do so, the Receiving Section will invite them under Rule 58 to file claims (see A‑III, 15).