This study aims to provide a practical approach to the procedures for entering an international patent application under the Patent Cooperation Treaty (PCT) in the regional phase of the European Patent Office (EPO).
 
According to the European Patent Convention (EPC), an international application for which the EPO is a designated or elected Office, and which has been accorded an international date of filing, shall be equivalent to a regular European patent application (EURO-PCT application).

Minimum requirements for entry into the regional phase

The following acts must be performed within 31-month time limit from the priority date of the international application for entry of the EURO-PCT application into the European phase: a) supply, where applicable, a translation of the international application into one of the official languages of the EPO; b) specify the application documents, as originally filed or amended, on which the European grant procedure is to be based; c) pay the filing; d) pay the search fee, where a supplementary European search report has to be drawn up; e) file, where applicable, the certificate of exhibition of the invention at an international exhibition.
 
Moreover, a second set of acts must be performed within variable time limits. The acts regarding the payment of the designation fee, the request for examination, and the payment of the examination fee must be carried out within 31-month time limit from the priority date of the international application or up to six months after the date of the publication of the International Search Report (ISR), whichever time limit expires later. The payment of the designation fee confirms the designation of the European states which are EPC contracting states at the date the international application was filed.
 
The EURO-PCT application can also be extended or validated in some states that have concluded an extension or validation agreement with the European Patent Organization. Currently, these states are Bosnia and Herzegovina, Cambodia, Morocco, the Republic of Moldova, Tunisia and Georgia. An extension or validation fee must be paid for each respective state within the same time limit of the payment of the designation fee.

Furthermore, it can be necessary to pay the renewal fee in respect of the third year within 31 months from the priority date of the international application, if the renewal fee has fallen due earlier, wherein the renewal fee in respect of the third year is due on the last day of the month containing the second anniversary of the international filing date.

Consequences of non-fulfillment of the minimum requirements

If either the translation of the international application or the request of the examination is not filed in due time, or if the filing fee, the search fee or the designation fee is not paid in due time, the European patent application shall be deemed to be withdrawn. In this case, the applicant will receive a notification of communication of loss of rights.

Remedies for missing/late performing of a regional entry act

The loss of rights is deemed to not to have occurred if, within two months from the notification of loss of rights, a request for further processing is filed for each one of the missed acts regarding the minimum requirements.

There are two basic types of further processing fees: a) when the missed act is referred to the payment of an official fee, the related further processing fee corresponds to 50% of said official fee; b) when the missed act is referred to a procedural act, the related further processing fee is a flat fee.

Therefore, if the applicant missed the whole set of minimum requirements to enter the EURO-PCT application in the regional phase, the applicant shall execute the following acts within two months from the notification of loss of rights:

  • File the translation of the international application, where applicable, and pay one flat further processing fee;
  • File the request for the examination, and pay one flat further processing fee;
  • Pay the examination fee, and pay a further processing fee corresponding to 50% of the examination fee;
  • Pay the search fee, and pay a further processing fee corresponding to 50% of the search fee;
  • Pay the designation fee, and pay a further processing fee corresponding to 50% of the designation fee.

If the applicant misses the time limit to request further processing, it is still possible to request re-establishment for loss of rights in spite of all due care. The general principle of the “all due care” encompasses all reasonable care that a reasonably competent applicant would employ in all the relevant circumstances. Any request for re-establishment of rights shall be filed in writing within two months of the removal of the cause of non-compliance with the period but at the latest within one year of the expiry of the unobserved time limit. It is important to bear in mind that the “unintentional” criteria is not effective in proceedings before the EPO. For example, in cases where the right to priority may be successfully restored in the international phase using the ‘unintentional’ criteria, the re-establishment of the priority right before the EPO must be supported by detailed evidence regarding the circumstances of the late filing to establish that the ‘all due care’ criteria has been met.

If the applicant misses the whole set of minimum requirements to enter the EURO-PCT application in the regional phase and misses the time limit to request further processing, the applicant shall request for re-establishment of rights and carry out the following acts:

  • File the translation of the international application, where applicable, and pay one re-establishment fee;
  • File the request for the examination, pay the examination fee, and pay one re-establishment fee;
  • Pay the search fee, and pay one re-establishment fee;
  • Pay the designation fee, and pay one re-establishment fee;
  • The request for re-establishment of rights shall set out the facts on which it relies.

Additional period for paying the renewal fee in respect of the third year

If the renewal fee in respect of the third year is not paid in the due date, it may still be paid within six months of the due date, provided that an additional fee is also paid within that period.

The remedy of the further processing for failure to pay a renewal fee is excluded. However, re-establishment of rights is possible.

Topics regarding supplying translations

The official languages of the EPO are English, French or German. Where the international application was not published in an official language of the EPO, a translation of the published international application shall be furnished within 31 months from the earliest priority date. Filing this translation even when the EPO acts as ISA, wherein the EPO has received a translation of the specification into English, French, or German to draft the international search. The language of the translation determines the language of the proceedings before the EPO. If the applicant does not file a translation of the description and claims timely, the application will be considered withdrawn. 

Furthermore, the applicant shall also file within said 31-month time limit, a translation of the amended claims and the letter indicating the amendments under Art. 19 PCT, if the EPO acts as designated office; and a translation of all annexes to the International Preliminary Examination Report (IPER) under Chapter II of the PCT. If the applicant does not file the translations recited in this paragraph, the EPO will invite him to furnish these translations within a two-month period of the date of said communication.

It is not possible to change the language of the proceedings before the EPO where the international application was published in one of the official languages of the EPO.

Further acts

There is a set of acts that should be executed within 31-months period but can be executed after entering the EPO regional phase in a reply to specific invitations, which provide a two-month period to be answered. These further acts comprise the designation of inventor; particulars of the claimed priority, e.g. the priority number or its certified copy; sequence listing; missing particulars of the applicant, e.g. its address or nationality; and the appointment of a representative.

Regarding the conditions for representation before the EPO, the EPC defines that natural or legal persons not having their residence or place of business in a Contracting State of the EPC shall be represented by a professional representative and act through him in all proceedings, other than the filing or a European patent application or the entry of an international patent application in the EPO regional phase.

The EPO also invites the applicant shortly after entering the regional phase to reply to the PCT written opinion, providing a time limit of 6 months for the applicant to submit arguments and amendments in the specification. Where the ISA/IPEA was the EPO, the reply to this invitation is mandatory, if the applicant misses this act, the EURO-PCT application will be considered withdrawn. Where the ISA/IPEA was not the EPO, the reply to this invitation is optional, and a response and amendments filed by the applicant shall serve as the basis for the Supplementary European Search.

Early regional entry and other measures to accelerate the prosecution

The EPO must not process or examine the EURO-PCT application before the expiry of the 31-month time limit, unless the applicant presents an express request of the applicant to process the application, wherein this request can be done at any time, even if the international application has not been published yet.

For the request to be effective, the applicant must comply with the minimum requirements to enter the EPO regional phase as if the 31-month time limit expired on the date he requests early processing, including the payment of the renewal fee in respect of the third year if it is already due.

Moreover, the applicant can submit technical arguments and amendments in the specification to reply to the PCT written opinion, and perform of a waiver of the invitation to provide said reply to the PCT written opinion.

A further measure available to the applicant is filing a request for accelerated examination under the program for accelerated prosecution of European patent applications (PACE).

Some topics regarding the fees

The basic filing fee may include an additional (if the application documents comprise more than thirty-five pages). This fee is calculated on the basis of the international application as published (even if published in a non-EPO language) plus any amended claims under Art. 19 PCT plus one page for the abstract. If the applicant requests early processing and the international application has not been published yet, the filing fee is calculated on the basis of the international application as filed.

Where the ISA/IPEA was the EPO, the search fee is not charged.

The EPO charges claim fees for each claim above 15 claims, wherein these claims fees can be paid in a grace period corresponding to the time limit of 6 months to the PCT written opinion.

Besides the 31-month time limit, the entry of an international patent application before the EPO comprises several procedures to be observed, a plurality of variables that influence the official fees, and some extra time limits available to the applicant for certain acts.
 
It is relevant to know the timings regarding the entry of a EURO-PCT application to avoid missing mandatory acts, as well as be aware of the acts that can be executed after the 31-month time limit. Where a certain procedural step is not completed within the 31-month time limit, it is also important to learn about the legal remedies, such as the request for further processing, as well as the corresponding costs of said legal remedies.


Vítor Sérgio Moreira is Patent Manager and a Trademark and Patent Attorney at Inventa. He can be contacted at vmoreira@inventa.com


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Sources:
References to the European Patent Convention; Jelle Hoekstra / October 2023
Euro-PCT Guide – PCT procedure at the EPO; 16th edition / January 2023