INFORMATION FROM THE EPO
LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE - No. 18/92*
Articles 22(1), (3), 39(1), 27(7), 49 PCT
Articles 133(2), 150, 153(1), 156, Rule 104b EPC
Procedural steps a "non-resident" Euro-PCT applicant may himself take before the EPO as designated or elected Office
I. A Euro-PCT applicant1 with neither a residence nor his principal place of business in an EPC Contracting State ("non-resident applicant") must be represented in the regional phase before the EPO as designated or elected Office by a professional representative entitled to practise before the EPO and act through him.
II. The applicant himself however may initiate processing of the international application, provided he does so before expiry of the 21st or 31st month as from the priority date2.
III. The applicant's representative in the international phase may act before the EPO as designated or elected Office only if he is also entitled to practise before the EPO (Article 49 PCT, 133(2) EPC).
IV. Fees may be paid by any person, and thus also by a non-resident applicant or his representative in the international phase (cf. Legal Advice No. 6/91 rev., OJ EPO 1991, 573).
1. Under Article 133(2) EPC, applicants with neither a residence nor their principal place of business in an EPC Contracting State ("non-resident applicants") must be represented by a professional representative entitled to practise before the EPO and act through him in all proceedings established by the European Patent Convention, other than in filing the European patent application. Article 134(7) EPC puts a legal practitioner entitled to act before the EPO on the same footing as a professional representative.
2. The EPO is frequently asked whether a non-resident applicant who has filed an international application for which the EPO is acting as designated or elected Office may himself (or through his representative in the international phase but who is not entitled to practise before the EPO) take the procedural steps initiating the regional phase before the EPO. More particularly, does the exception under Article 133(2) EPC ("filing the European patent application") also apply to the procedural steps an applicant in an international application has to take under Articles 22(1) or 39(1)(a) PCT?
The answer is as follows:
3. Under Article 27(7) PCT, any designated Office which has started to process an international application may apply national (regional) law requiring the applicant to be represented by an agent entitled to practise before that Office. The EPO makes use of this possibility:
Article 133(2) EPC applies to a Euro-PCT application as from thedate on which processing of the international application starts (see point 6 below), but not later than expiry of the 21st or31st month as from the priority date.
4. The exception under Article 133(2) EPC ("filing the European patent application") is designed to enable an applicant filing a European patent application to be accorded a date of filing without delay, i.e. without for example having to appoint a professional representative first. For an international application the filing date has already been fixed, in the international phase after filing. An international application for which the EPO acts as designated or elected Office is deemed to be a European patent application (Article 150(3) EPC). Initiation of the regional phase before the EPO as designated or elected Office does not therefore equate to the filing of a European patent application.
5. The non-resident applicant may himself initiate processing of the application by the EPO as designated or elected Office, provided he does so before expiry of the 21st or 31st month after the priority date. The fact that Articles 23 and 40 PCT prohibit the EPO from processing and examining the application before expiry of the 20th or 30th month as from the priority date does not prevent the applicant from initiating the regional phase before the EPO himself at any time prior to expiry of the 21st or 31st month as from the priority date.
Apart from this there is no exception to the requirement of Article 133(2) EPC to appoint a professional representative in the regional phase before the EPO as designated or elected Office. Upon receipt of the international search report or (if he has invoked Chapter II PCT in due time) of the international preliminary examination report, the non-resident applicant has enough time before the end of the 21st or 31st month as from the priority date to take the steps initiating the regional phase before the EPO.
6. Processing of the application starts on the day following that on which the procedural steps required under Article 22(1) or 39(1)(a) PCT in conjunction with Article 157(2)(b) and Rule 104b(1) EPC were taken. Before expiry of the 20th or 30th month as from the priority date, however, processing starts only at the applicant's express request (Articles 23, 40 PCT). The procedural steps required3 include:
(a) filing of the translation of the application under Article 158(2) EPC, if the international application was not published in an EPO official language,
(b) payment of the national fee under Article 158(2) EPC, comprising the national basic fee, the designation fees and any claims fees, and
(c) payment of the search fee under Article 157(2)(b) EPC, unless under Article 157(3)(a) EPC no supplementary European search report is being drawn up.
7. At the same time as he takes these procedural steps (but no later) the non-resident applicant may file a request for examination under Article 94(1), (2) EPC and any amended application documents under Rule 86(2) EPC. If he has not already done so, he may also file a certificate of exhibition, the designation of inventor and, if claiming the priority of an earlier application, furnish the number, copy and translation of the earlier application (Rule 104b(1)(f), (2), (3) EPC).
8. As from the date on which processing of the application starts or (if he fails to take in time the necessary procedural steps) after expiry of the 21st or 31st month as from the priority date, under Article 133(2) EPC the non-resident applicant may only act through a professional representative entitled to practise before the EPO. He cannot for example file a valid request under Rule 69(2) EPC or for re-establishment of rights under Article 122 EPC. Any procedural steps he nonetheless takes - apart from payments, which can be made by any person (cf. Legal Advice No. 6/91 rev., OJ EPO 1991, 573) - have no effect.
9. Under no circumstances, even before expiry of the 21st or 31stmonth as from the priority date, may the non-resident applicant's representative in the international phase, if not a professional rep resentative entitled to practise before the EPO, act on the applicant's behalf before the EPO as designated or elected Office. Under Article 49 PCT he is not entitled to practise before the EPO as designated or elected Office. Any procedural steps he nonetheless takes (apart from payments) have no effect (Article 134(1) EPC).
10. If a time limit is not met because a non-resident applicant, or his representative in the international phase but who is not a professional representative entitled to practise before the EPO, takes ineffective procedural steps, loss of rights or other disadvantage may ensue.
If for example the translation of the application is not filed in time, the application is deemed withdrawn under Article 24(1)(iii) or 39(2) PCT. If a request to appoint a professional representative entitled to practise before the EPO is not complied with in time, the application is refused (Article 91(3) or 97(1) EPC) or deemed withdrawn (Article 96(3) EPC). If the fees referred to in point 6(b) or (c) above are not paid in time, or the request for examination is not filed in due time, surcharges under Rules 85a and 85b EPC are payable. In such cases, the EPO informs the applicant by means of a communication sent to him by ordinary mail at his last known address. Notification is deemed effected once despatch takes place (Rule 78(2) EPC), even if the letter is returned undelivered. A loss of rights or other disadvantage may thus occur without an applicant receiving a decision or communication from the EPO.
Non-resident applicants are therefore strongly advised to appoint in good time a professional representative entitled to practise before the EPO to represent them in proceedings before the EPO as designated or elected Office.
* In this column the Office answers queries of general interest. As the title suggests, the intention is to advise, primarily on formal matters of procedure. The information given is in no way binding on the competent departments of the European Patent Office, especially the Boards of Appeal and the Enlarged Board of Appeal.
1 A Euro-PCT application is an international application for which the EPO acts as designated or elected Office (cf. Article 150(3) EPC).
2 Priority date means the filing date of the application whose priority is claimed or, if the international application claims more than one priority, the filing date of the earliest application whose priority is claimed or, if no priority is claimed, the international filing date of the application (Article 2(xi) PCT).
3 Cf. Information for PCT applicants concerning time limits and procedural steps before the EPO as designated or elected Office, OJ EPO 1991, 328 and 339.