Pages 662-670

INFORMATION FROM THE EPO

LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE^* - No. 10/92 rev.^**

Articles 153 and 94(2) EPC

Consolidation of a European patent application with a Euro-PCT application

Refund of the examination fee

1. A European patent application and an international applicationfor which the EPO acts as designated Office or elected Office maybe consolidated at the request of the applicant for the purposeof joint proceedings up to grant before the Examining Division.The filing and priority dates of the applications to beconsolidated must be the same and the text of the description andthe claims must be identical, as also must be the drawings.

2. The decision to consolidate cannot be taken until the Examining Division has become responsible for both applicationsin accordance with Article 18(1) EPC.

3. If the request for the proceedings to be consolidated is madebefore the Examining Division has become responsible for bothapplications in accordance with Article 18(1) EPC, the effect ofthe decision to consolidate is that no separate examinationproceedings will be initiated for one of the applications: theexamination fee paid for the European application will berefunded (by analogy with Article 10b(a) of the Rules relating toFees). If the request for the proceedings to be consolidated ismade after the Examination Division has become responsible forboth applications in accordance with Article 18(1) EPC but beforethe substantive examination for the second application has begun,75% of the examination fee paid for the European application willbe refunded (by analogy with Article 10b(b) of the Rules relatingto Fees).

I. Introduction

1. EPC Contracting States are not always also PCT Contracting States. This was the case for Belgium and Italy at the time the first version of this Legal Advice was published, later also for Greece, Spain and Portugal.1 New EPC Contracting States may also be in the same position in the future.

The applicant of an international application wishing to obtain a European patent also for States which are not Contracting States of the PCT is forced to file a European patent application for the EPC Contracting States which are not PCT Contracting States, in addition to his international application for the EPC Contracting States which belong to the PCT (hereinafter referred to as a "Euro-PCT application").

2. A Euro-PCT application can, however, be consolidated at the examination stage with an identical European patent application, which has been filed for the above-mentioned reasons, for the purpose of joint proceedings up to grant.

II. Fundamental significance of consolidation

3. The EPC guarantees applicants the right, provided certain conditions are fulfilled, to divide an application - a right exercised by filing a divisional application. The Convention is silent on the question of whether applications may be consolidated. However, so long as the unity of the patent application and patent is preserved (see Article 118 EPC in particular), the Examining Division has - as explained below -the authority to consolidate two applications for the purpose of joint proceedings, if the applicant so requests and if the two applications are at a stage of the proceedings where they can be suitably consolidated.

4. The EPO (the relevant Examining Division) has, within its competence for conducting the examination proceedings, the right and the duty to take such measures as are necessary to carry out the procedure efficiently. If proceedings in respect of two applications are consolidated, this means reduced costs for the applicant and less administrative work for the EPO, since only one file is dealt with and only a single decision on grant or refusal is taken. The consolidation of proceedings thus conforms with the EPC's objectives of creating an efficient and economical patent grant procedure for acquiring protective rights in several European States at once.

5. Further arguments in favour of the consolidation of the applications can be derived from the relationship of the EPC to the PCT. The EPC is a regional treaty within the meaning of Article 45(1) PCT, to which the Preamble to the EPC in fact expressly refers. The EPC has also been consciously and intentionally aligned with the PCT and, as a regional treaty under the PCT, is responsible within its territorial field of application for realising the objectives of the PCT as well. One of the main objectives of the PCT, according to its Preamble, is to simplify and render more economical - through international co-operation world-wide - the obtaining of protection for inventions where protection is sought in several countries. The interaction of the PCT and EPC makes it possible to obtain protection for EPC Contracting States in an international application by taking the so-called Euro-PCT route. But a major economic obstacle for Euro-PCT applicants exists if not all EPC Contracting States always belong also to the PCT at the date of filing.

6. If the applicant who wishes to obtain a European patent decides to file a European patent application for the EPC Contracting States which do not belong to the PCT as well as a Euro-PCT application, he will incur extra costs for the parallel grant procedure, for maintaining the application (European renewal fees) and for the grant itself (fees for grant and printing, claims fees) unless the separate proceedings can be consolidated. These drawbacks would make the Euro-PCT route much more difficult. The consolidation of applications has therefore fundamental significance for the Euro-PCT procedure. Allowing the two applications to be consolidated meets a legitimate interest of the applicant which also accords with the objectives of the EPC and the PCT. So long as the unity of the European patent application and the European patent is preserved, and provided it is feasible to consolidate the two applications at their respective stages in the proceedings, there are no provisions in the EPC against this being done.

III. Substantive requirements for consolidation

7. The requirements for consolidating European patent grant proceedings are as follows (cf. Article 118 EPC in particular):

(a) Both applications must have the same date of filing (Article 80 EPC; Article 11(1) PCT).

(b) Priority claims must be identical: in cases where priority claims vary this may be achieved by abandoning priorities. The priority claims need only be identical on the date on which the decision consolidating the applications is adopted.

(c) Apart from the exceptions described in Part C-III, 8 of the Guidelines for Examination in the EPO (cf. Article 54(3),(4), Article 167(2)(a), Rule 16(1),(2) EPC), the texts of the description and claims, as well as the drawings of the applications to be consolidated must be identical.

"Identical" does not mean merely that the description, claims, as well as the drawings must be the same in a technical sense. "Identical" is to be understood as meaning that the wording used must be exactly the same. This must be the case both on the date of filing and on the date of the decision consolidating the application. Amendments may have taken place, however, in the texts of the applications during proceedings before the date on which the request for consolidation was filed. This may be the case, for instance, where the applicant has amended the claims under Rule 86(2) EPC or Article 19 PCT. Where the request for consolidation has been filed and the two applications are no longer identical due to amendments made after the date of filing of the applications, the requirement that the applications be identical can be easily met by filing a statement indicating that the application to be joined is amended so as to be identical with the application for which the consolidated proceedings will continue (cf. point 15).

(d) The language of the proceedings must be the same for both applications.

(e) If the applications were not filed in an official language of the EPO, their original language (e.g. Swedish) must also be the same: Article 14 EPC applies. The text of the description and claims, as well as the drawings, contained in the documents originally filed must be identical: the applicant is required to furnish a statement to that effect.

8. The involvement of different applicants in the two applications is no barrier to consolidation, since the EPC (Article 59) permits multiple applicants designating different Contracting States. In this case, however, the request for the applications to be consolidated must be made by all the applicants.

9. These requirements derive from the principle of unity of the European patent application and European patent, pursuant in particular to Article 118 EPC. This means that the basis on which the decision is taken in both applications must be the same. This applies in particular to the content of the application as filed and to the relevant state of the art. Since the question of consolidation arises before substantive examination takes place, these requirements have to be clearly fulfilled from a formal point of view. It follows from that that the filing and priority dates and the content of the application as originally filed (description, claims and drawings) must be identical for all designated States, apart from the exceptions mentioned in point 7(c) above. The original documents need to be identical because, apart from anything else, an assertion that Article 123 EPC has been infringed can still be made later in opposition and revocation proceedings (Articles 100(c) and 138(1)(c) EPC) and in this context non-uniform documents would conflict with the principle of unity of the European patent. However, if the conditions specified are fulfilled, the substantive requirements for consolidation are met.

IV. Stage in the proceedings reached by the applications onadoption of the decision consolidating them

10. The consolidation of applications is not admissible while the Euro-PCT application is still in the international phase and the prohibition on examination and processing still applies under Article 23(1) or Article 40(1) PCT. The Euro-PCT application must have completed its transition to the European phase. Finally, the common responsibility for processing the two applications must lie with the Examining Division.

11. The following requirements therefore emerge:

(a) The requirements under Article 22 or Article 39 PCT for opening the European phase of the Euro-PCT application must be fulfilled; in particular, the fees specified in Rule 104b(1) EPC must have been paid;

(b) A request for examination must have been validly filed for both of the applications; as far as necessary the applicant must also have indicated in accordance with Article 96(1) EPC that he wishes to proceed further;

(c) Responsibility for processing must not, as a result of an appeal, have passed from the Examining Division to a Board of Appeal.

12. The Examining Division is responsible for taking the decision consolidating the applications. The application to consolidate can even be filed after the Examining Division has become responsible or the substantive examination has already begun in both applications (Article 18(1) EPC). It is, however, advisable to file the request at an early stage in order to secure the refund of one full examination fee (see points 16-18 and 21).

V. Languages

13. If the Euro-PCT application was filed in a language other than an official language of the EPO (e.g. Swedish - see point 7(e)), it is not necessary to submit a translation in order to open the European phase (Articles 22 and 39 PCT), because the Euro-PCT application is published by the International Bureau in an English translation established by the International Searching Authority. Since the International Bureau communicates the published application to the EPO in accordance with Article 20 PCT, this fulfils the conditions laid down by Articles 22 or 39 PCT in conjunction with Article 158(2) EPC. If the applicant himself does not submit a translation, English is deemed to be the language chosen for the proceedings. The international publication (English translation of the application) is the basis for further proceedings before the EPO. However, by submitting a German or French translation of the Euro-PCT application within the period specified in Rule 104b(1)(a) EPC, the applicant has the chance to choose either of those languages as the language of the proceedings (see Information for PCT applicants, OJ EPO 1991, 328, footnote 6, 339, footnote 5)2. Where the languages of the Euro-PCT application and the European patent application are the same, the two applications can be consolidated.

14. The following examples are intended to demonstrate this:

Example I:

The Euro-PCT application is filed in Swedish and translated into English by the International Bureau. The applicant does not supply a translation under Articles 22 or 39 PCT. The European patent application is likewise filed in Swedish.

The applications may be consolidated if an English translation of the European patent application has been filed in accordance with Article 14(2) EPC.

Example II:

The Euro-PCT application is filed in Swedish. On opening the European phase (Articles 22 and 39 PCT), the applicant furnishes a German or French translation. The European patent application is likewise filed in Swedish.

The applications may be consolidated if a translation of the European patent application in the language chosen for the translation of the Euro-PCT application has been filed in accordance with Article 14(2) EPC.

VI. Application, in which the examination procedure is continued

15. If the requests for examination and for consolidation in both applications are submitted simultaneously, the applicant may choose either application as the one under which the consolidated proceedings are to be continued. If the request for consolidation is submitted later, the consolidated proceedings will continue for the application where the substantive examination has reached the more advanced stage.

VII. Refund of the examination fee

16. Before a decision to consolidate two applications can be taken, a valid request for examination must have been filed for both (see point 11(b)). If the request for the proceedings to be consolidated is made before the Examining Division has assumed responsibility for both applications in accordance with Article 18(1) EPC, the effect of the decision to consolidate is that for one of the applications no separate examination proceedings will be initiated: the examination fee paid for that European application will be refunded (by analogy with Article 10b(a) of the Rules relating to Fees).

If the request for the proceedings to be consolidated is made after the Examining Division has become responsible for both applications in accordance with Article 18(1) EPC but before the substantive examination for the second application has begun, 75% of the examination fee paid for the European application will be refunded (by analogy with Article 10b(b) of the Rules relating to Fees).3

17. If the European Patent Office has drawn up the international preliminary examination report in respect of the Euro-PCT application, the applicant must only pay the examination fee at a rate of 50% when entering into the regional phase, according to Rule 104b(6) EPC and Article 12(2) Rules relating to Fees: in this case also the examination fee paid for the European application will be refunded in accordance with point 16.

18. No examination fee can, however, be refunded if the request to consolidate proceedings is made after substantive examination has begun for both applications.

VIII. Renewal fees

19. Renewal fees (Article 86 EPC) which become due after the notification of the decision to consolidate the applications are only to be paid for the application under which the proceedings continue.

Renewal fees must be paid for each of the two applications until the date of the notification of the decision to consolidate the applications. However, the renewal fees for the second application paid after the date on which the requirements for issuing the decision to consolidate the applications were completed (those set out above in detail in parts III and IV) will be refunded.

IX. Action to be taken on the files and in the Registerfollowing the decision to consolidate

20. The following action will be taken:

(a) The fact that the applications have been consolidated will be recorded in the Register of European Patents and published in the European Patent Bulletin. If a patent is subsequently granted, the title page of the patent specification will contain an indication of the consolidation and the serial number of the other application.

(b) As regards the application under which the consolidated grant proceedings are to be continued, the corresponding changes will be made in the Register data (addition of other designated States) and an announcement that this has been done published in the European Patent Bulletin.

X. Additional information

21. The examination fee may only be refunded in full or at a rate of 75% if the application for consolidation has been filed in time (cf. Article 10b Rules relating to Fees, and above points 16-18). Applicants are advised, when submitting the Europeanpatent application, to file on a signed additional sheet with the request for grant form (EPO Form 1001.1) a request for subsequentconsolidation of the two applications for the purpose of joint examination proceedings including a reference to the parallel Euro-PCT application.

Applicants should note that in the first place the examinationfees must be paid for both applications and that no fee can be refunded until the two proceedings have been consolidated (cf. Decision J XX/87, OJ EPO 1988, 177).