Pages 681-691

INTERNATIONAL TREATIES

PCT

Revised information for PCT applicants concerning the procedure before the EPO as an International Preliminary Examining Authority under Chapter II PCT

1. Following several important changes to the Regulations under the PCT in recent years this notice is intended to replace the information published in Official Journal EPO 1986, 441, and 1988, 468.

2. The activity of the EPO as an International Preliminary Examining Authority (IPEA) is based on the PCT and the Regulations under the Treaty, the Agreement between WIPO and the EPO under the PCT1, the Administrative Instructions under the PCT, Part 62, and the PCT Preliminary Examination Guidelines3.

3. For comprehensive information on the PCT and procedure thereunder, including Chapter II, the PCT Applicant's Guide4 published by WIPO should be referred to.

I. Entitlement to file a demand with the EPO as an IPEA

There are four basic conditions:

Condition 1: Residence or nationality

4. If there is one applicant filing the demand, he must be a resident or national of a PCT Contracting State bound by Chapter II PCT (Art. 31(2)(a) and Rule 54.1 PCT).

When considering the Contracting States party both to the PCT and to the EPC, this requirement means that residents or nationals of CH/LI, ES or GR are not entitled to file a demand as long as these States are not bound by Chapter II PCT.

5. If there is more than one applicant then at least one of them making the demand must be a national or resident of a Contracting State bound by Chapter II PCT (irrespective of the States elected by that applicant) (Art. 31(2)(a) and Rule 54.2(i) PCT).

Condition 2: Receiving Office

6. If there is one applicant, the international application must have been filed at a receiving Office of or acting for a Contracting State bound by Chapter II PCT (Art. 31(2)(a) PCT).

The EPO may (subject to any national security requirements on filing abroad) act as receiving Office for applicants of any Contracting State party both to the PCT and to the EPC. The receiving Office requirement is met where the EPO has acted as such for an applicant who is a national or resident of such a Contracting State which is bound by Chapter II PCT. This means that the requirement is not met where the EPO has acted as receiving Office for an applicant who is a national or resident of CH/LI, ES or GR.

Where the International Bureau of WIPO has acted as receiving Office under Rule 19.1(a)(iii) PCT, the same reasoning applies, i.e. the receiving Office requirement is met where the International Bureau has acted as such for an applicant who is a national or resident of a Contracting State which is bound by Chapter II PCT.

7. If there is more than one applicant, the receiving Office requirement is fulfilled where that receiving Office acted as such for at least one of the applicants, that applicant being a resident or national of a State bound by Chapter II PCT (Art. 31(2)(a) and Rule 54.2(i) PCT).

Impact on conditions 1 and 2 of changes of nationality or residence of the applicant before filing the demand

8. Where a change in the person, residence or nationality of the applicant or of one of the applicants has been recorded (Rule 92bis.1(a)(i) PCT) after the filing date of the international application but before the date of making the demand, the following additional elements apply regarding, on the one hand, residence or nationality and, on the other hand, the receiving Office requirement:

(a) Where the international application has been filed with the EPO or the International Bureau by one applicant who is a resident or national of a Contracting State not bound by Chapter II PCT, but following the change the applicant making the demand is a resident or national of a Contracting State bound by Chapter II PCT, condition 1 above (residence or nationality) is considered as met.

The same is true where more than one applicant has filed the international application with the EPO or the International Bureau, all of the applicants being nationals or residents of Contracting States not bound by Chapter II PCT, and following a change at least one of the applicants becomes a resident or national of a Contracting State bound by Chapter II.

(b) Condition 2 above (receiving Office) is met where the receiving Office with which the international application has actually been filed could have been competent under Rule 19 PCT for the applicant who has replaced the original one.

(c) The receiving Office requirement is also met in the case where both the original and later applicants are residents or nationals of different States both bound by Chapter II PCT and the international application has been filed with a receiving Office of or acting for a State bound by Chapter II.

Example 1:

(i) The international application has been filed by a Spanish national, "A", with the EPO acting as receiving Office.

(ii) Shortly before making the demand, a change of the applicant has been recorded under Rule 92bis.1(a)(i) PCT, the new applicant being a German national, "B".

In that case, a demand may be validly filed with the EPO as IPEA because the applicant "B" is now a national of a State bound by Chapter II PCT for which the EPO acts as receiving Office for the purpose of Article 31(2)(a) PCT.

(iii) With regard to applicants "A" and "B", the same conclusion would apply had the international application been filed with the International Bureau in accordance with Rule 19.1(a)(iii) PCT.

Example 2:

Taking the same situation as under Example 1, except that the receiving Office was the Spanish Patent Office, there is no entitlement to file a demand because that Office would not act as receiving Office for a German national or resident.

Example 3:

(i) The international application has been filed by a Norwegian national, "A", with the Norwegian Patent Office as receiving Office.

(ii) Shortly before making the demand, a change of the applicant has been recorded under Rule 92bis.1(a)(i) PCT, the new applicant being a French national, "B". In this case, a demand may be validly filed with the EPO since the international application was filed with the receiving Office of a State bound by Chapter II PCT (Norway) and the later applicant is a national of a State bound by Chapter II PCT (France).

Example 4:

Taking the same situation as under Example 3, except that the new applicant is a Spanish citizen, there is no entitlement to file a demand because condition 1 is not fulfilled.

Condition 3: Correlation between the EPO as IPEA and the receiving Office

9. The EPO must have been specified as an IPEA by that receiving Office with which the international application has been filed (Art. 3(2) of the Agreement between the EPO and WIPO under the PCT).

Where the international application has been filed with the International Bureau in accordance with Rule 19.1(a)(iii) PCT, the EPO shall be the competent IPEA if having regard to the nationality or residence of at least one of the applicants, the international application could have been filed with a receiving Office which has specified the EPO in that capacity (Rule 59.1(b) PCT).

Condition 4: Correlation between the EPO as IPEA and the ISA

10. The EPO, the Swedish Patent Office or the Austrian Patent Office must be acting or must have acted as the International Searching Authority for the international application (Art. 3(2) of the Agreement between the EPO and WIPO under the PCT).

II. Filing of the demand

11. If the EPO is to be used as the IPEA, the demand for international preliminary examination (Form PCT/IPEA/401) must be submitted to the EPO directly, preferably at Munich, to the following address:

The European Patent Office, D-80298 Munich, Fax No. (+49-89) 2399-8787.

12. Documents submitted to the EPO as IPEA should carry the international application number and should be clearly marked "PCT Chapter II". The EPO provides free of charge identifying labels for documents pertaining to the Chapter II procedure and it is strongly recommended that one of these labels be affixed to every document before it is sent to or filed with the EPO.

13. If entry into the regional/national phase is to be postponed to 30 months from the priority date as per Article 39(1)(a) PCT (31 months in the EPO - Rule 104b(1) EPC) , the demand must be received within 19 months of the priority date. Applicants who intend to file a demand should do so in good time, as it often happens that demands are filed very shortly before the expiry of 19 months but either the EPO is not the competent IPEA or the demand is defective. In such a case it may be impossible to advise the applicant of this in time to allow him to meet the 19-month time limit. It is therefore recommended that last-minute demands be filed by fax. No confirmation is required except upon invitation of the EPO where the document so communicated is of inferior quality (Rule 92.4(b) PCT and Notice from the EPO dated 2 June 1992, see OJ EPO 1992, 306, item 4).

14. If the demand is received after 19 months from the priority date the EPO will promptly inform the applicant. It will also inform him that the demand will not have the effect of postponing entry into the regional/national phase. In this case all of the procedural steps under Article 22 PCT for entry into the regional/national phase must be completed within 20 months of the priority date (21 months before the EPO - Rule 104(b)(1) EPC).

III. Language of the demand

15. Demands submitted to the EPO as IPEA shall be in the language of the international application (English, French, German) or in the language of publication, if this was English (Rule 55 PCT).

Correspondence (not amendments to the application) may be addressed to the EPO as IPEA in English, French or German (Rule 92.2(b) PCT and the Notice of the President of the EPO dated 18 June 1993, OJ EPO 1993, 540).

IV. Representation

16. It is strongly recommended that applicants who do not have their residence or place of business in one of the EPC Contracting States appoint a professional representative before the EPO, who can be contacted to deal with any urgent problems which may arise. For general information on representation before the IPEA see in particular Rule 90.1(d) PCT and the PCT Applicant's Guide, Vol. I, paras. 267-271.

If the applicant or agent appointed for the international phase under Chapter I PCT wishes to appoint a professional representative before the EPO for the purpose of the international preliminary examination, he may do so either by signing the demand or by signing and filing a separate power of attorney (Rules 90.1(d) and 90.4 PCT).

V. Signature of the demand

17. The demand must be signed by the applicant or his agent. If there is more than one applicant, a common agent or common representative may sign on their behalf (Rules 53.2(b), 53.8, 90.3 PCT).

VI. Election of States

18. Only Contracting States designated in the international application and bound by Chapter II PCT may be elected (Art. 31(4) PCT).

19. A pre-crossed box (No. V) in the Demand Form PCT/IPEA/401 provides for election of all eligible States which have been designated, but the applicant has the possibility of excluding any States he does not wish to elect.

20. Although CH/LI, ES and GR cannot be elected, the time limit under Article 39(1) PCT and Rule 104b(1) EPC (31 months from the priority date) for entry into the regional European phase also applies to these States if they have been designated for a European patent, provided at least one other EPC Contracting State designated for a European patent has been elected before the expiry of 19 months from the priority date. Naturally, if these States have been designated for a national patent, the time limit under Article 22 PCT, 20 months from the priority date, is applicable.

VII. Basis for commencement of international preliminary examination

21. The applicant should indicate in Box IV of the Demand Form PCT/IPEA/401 (Rule 53.9 PCT) on the basis of which documents the preliminary examination should start: international application as originally filed, amendments of claims under Article 19 PCT or amendments under Article 34 PCT (other than amendments under Article 19 PCT).

VIII. Fees

22. Two fees are payable:

(a) the handling fee, and

(b) the preliminary examination fee.

Both fees are payable to the EPO and are due on submitting the demand.

23. For the current rates of these fees5 in all the currencies of the EPC Contracting States please refer to the latest issue of the OJ EPO, Section "FEES". This section also regularly gives guidance as to the methods of paying fees, etc. (see also PCT Newsletter6).

Applicants are urged to use the Fee Calculation Sheet annexed to the Demand Form (PCT/IPEA/401 Annex).

24. If the fees are not paid in full on filing the demand the EPO will notify the applicant that he may pay the outstanding amount within one month failing which the demand will be considered as not submitted. This will naturally prejudice the international application in the States elected in the demand if the applicant has not performed, within the time limit under Article 22 PCT (20 months from the priority date), the prescribed acts for entry into the national/regional phase.

25. Since the EPO will only begin the international preliminary examination when the fees have been received, late or incomplete payments reduce the time available for establishment of the international preliminary examination report (IPER) and should be avoided in the applicant's own interest.

IX. Defects in the demand

26. If there are defects in the demand referred to in Rule 60.1(a) PCT the EPO will invite the applicant to correct them within one month (extendable) of the date of the invitation. Provided the correction is received on time the demand is considered as if it had been received on the actual filing date provided the demand as submitted contained at least the election of one PCT Contracting State bound by PCT Chapter II and allowed the applicant and the international application to be identified. If these two conditions are not fulfilled then the demand is considered to have been filed on the date of receipt of the corrections.

The most frequent defects concern failure to indicate in the demand all applicants, where there is more than one, and failure to pay the fees due on filing the demand.

X. First written opinion

27. If there are no objections to the application on grounds of novelty, inventive step or industrial applicability, or on any of the other grounds mentioned in Rule 66.2(a) PCT, the IPER (Form PCT/IPEA/409) is established immediately.

If there are objections, generally one written opinion will be issued by the EPO (Form PCT/IPEA/408). This will set a time limit for the applicant's response, normally three months, which may be extended provided the extension is requested before expiry of the time limit set in the written opinion and there is sufficient time available to grant the extension before issuing the IPER (Rule 69.2 PCT).

28. Replies received after expiry of the time limit will normally only be considered if preparation of the IPER has not already begun (Rule 66.4bis PCT). After this no further amendment will normally be considered by the EPO as IPEA. Such amendments may be filed at the elected Offices when entering the national/regional phase7.

29. If the applicant does not intend to reply to a written opinion he may so inform the EPO. However, the EPO can give no guarantee that this will necessarily result in the IPER being given priority treatment.

XI. Interviews

30. Article 34(2)(a) PCT and Rule 66.6 PCT allow for informal communication between the applicant or his representative and the EPO examiner responsible for preparing the IPER.

In particular, personal interviews before establishment of the IPER have often proved useful.

If a representative or applicant wishes an interview to be held he may indicate this in his reply to the written opinion or he may telephone the examiner responsible whose name is indicated in the box "authorized officer" in the written opinion. When proposing dates for interviews it should be kept in mind that the EPO must in normal cases despatch the IPER within 28 months of the priority date.

XII. Unity of invention

31. Where the EPO as IPEA considers that the international application lacks unity of invention, it will invite the applicant either to restrict the claims in order to meet this requirement or, to the extent that the inventions have been searched (see Rule 66.1(e) PCT), to pay additional preliminary examination fees.

In the latter case the applicant may pay the additional fees under protest (Rule 68.3(c) PCT), that is to say he disputes, in writing, the finding of lack of unity. The protest will then be examined by a three-member EPO review panel which may either sustain the protest and order a refund of the additional fees (in whole or in part), or uphold the decision of the examiner. In the latter case the applicant will be invited to pay a protest fee if he wishes his protest to be referred for decision to an EPO Board of Appeal. The protest fee must be paid within one month of the review panel's notification and will be refunded if the protest is entirely upheld (full details on the operation of this procedure are published in OJ EPO 1992, 547).