PCT Applicant's Guide European Patent Organisation EQE

GENERAL INFO
RO
ISA
SISA
IPEA
BIO
NATIONAL CHAPTER

Materials for the European Qualifying Examination (EQE)
Special edition as of 31 October 2023, prepared for EQE candidates

Useful information

The PCT Applicant’s Guide is updated almost every week with information received by the International Bureau.

In case of question, please contact the Office or the International Bureau (pct.guide@wipo.int).

List of abbreviations used in this document:

Office: European Patent Office (EPO)

EPC: Convention on the Grant of European Patents (European Patent Convention)

Rfees: Rules relating to Fees (of the European Patent Office)

OJ EPO: Official Journal of the European Patent Office

Euro-PCT Guide (http://www.epo.org/applying/international.html)

List of currencies used in this document:

CHF (Swiss franc), DKK (Danish krone), EUR (Euro), GBP (Pound sterling), HUF (Hungarian forint), ISK (Icelandic krona), JPY (Japanese yen), NOK (Norwegian krone), NZD (New Zealand dollar), SEK (Swedish krona), SGD (Singapore dollar), USD (US dollar), ZAR (South African rand)

Countries and Offices information:

The list of acronyms used for Offices is no longer shown as it has been integrated in the mouseover functionality for each ST.3 code shown in this document.
Refer to List of WIPO Standards, Recommendations and Guidelines formerly Annex K, List of country names and two-letter codes. It includes a list of short names and two-letter codes accepted for use in indicating States, other entities and intergovernmental organizations and their Offices in documents relating to international applications under the PCT. The list is as set out in WIPO Standard ST.3.
Also refer to PCT Contracting States formerly Annex A.

Office profile

For more technical information about the Office, refer to ePCT Office profile.

PCT Reservations, Declarations, Notifications and Incompatibilities

Rule 66.1bis(b)
Refer to the full list.
The EPO has withdrawn its notifications of incompatibility under PCT Rules 20.8(a-bis) and 20.8(b-bis) as from 1 November 2022. For international applications filed on or after this date, the relevant PCT Rules will apply to the EPO as a receiving Office and a designed Office.
The EPO as International Preliminary Examining Authority (IPEA) has notified the International Bureau under PCT Rule 66.1bis(b) that it will not consider a written opinion established by any International Searching Authority other than the EPO itself as a written opinion of the IPEA for the purposes of PCT Rule 66.2(a).

Office Closed dates

Munich Office is closed weekly on Saturday and Sunday
The Hague Office is closed weekly on Saturday and Sunday
Berlin Office is closed weekly on Saturday and Sunday
Vienna Office is closed weekly on Saturday and Sunday

Additional closed dates can be consulted on the Office Closed dates page

International Phase

Annex B - Information on Contracting States or Intergovernmental Organization

Organization:

European Patent Organisation

Two-letter code:

Name of Office:

European Patent Office (EPO)

Location:

Headquarters München Office
Bob-van-Benthem-Platz 1
80469 München
Germany

Branch at The Hague
Rijswijk Office
Patentlaan 2
2288 EE Rijswijk
Netherlands

Berlin Office (Filing)
Gitschiner Str. 103
10969 Berlin
Germany

Mailing address:

München
80298 München
Germany

Rijswijk
Postbus 5818
2280 HV Rijswijk
Netherlands

Berlin
810958 Berlin
Germany

Telephone:

München
(49-89) 2399-4500
Customer Services
00 800 80 20 20 20

Rijswijk
(31-70) 340-4500

Berlin
(49-30) 25901-4500

E-mail:

support@epo.org

Website:

http://www.epo.org/

Facsimile:

München
(49-89) 2399-4465

Rijswijk
(31-70) 340-3016

Berlin
(49-30) 25901-840

Does the Office accept the filing of documents by facsimile or the like means (PCT Rule 92.4)?

Yes, by facsimile

Which kinds of documents may be so transmitted?

All kinds of documents with the exception of authorizations and priority documents

Must the original of the document be furnished in all cases?

Filing of the international application:
yes, preferably simultaneously, but in any event not later than one month from the date of the invitation by the EPO

Other documents:
only upon invitation by the EPO

Refer to OJ EPO 2007, Special Edition No. 3, page 7 et seq.

Does the Office send notifications via e-mail in respect of international applications?

Would the Office accept evidence of mailing a document, in case of loss or delay, where a delivery service other than the postal authorities is used (PCT Rule 82.1)?

Yes, provided that the delivery service is:
Chronopost
DHL
Federal Express
Flexpress
SkyNet
TNT
Transworld
UPS

Does the Office excuse delays in meeting time limits due to the unavailability of electronic means of communication (PCT Rule 82quater.2(a))?

Yes, delays in meeting time limits could be excused where any of the permitted means of electronic filing at the EPO notified under Rule 89bis, or means of online payment, was unavailable for a minimum of a continuous four-hour period on a specific working day. Rule 82quater.2 will not be applied by the EPO if a means of electronic filing is unavailable for less than four hours and an announcement of the outage has been published at least two working days in advance. In cases where the advance notice indicated that an outage was to last for less than four hours, but eventually lasted longer, the EPO will consider applying Rule 82quater.2. An unplanned outage, however, does not necessarily have to last a minimum of four hours to qualify for the application of Rule 82quater.2 by the EPO. If the unavailability of a means of electronic communication, or means of online payment, is qualified as an outage by its technical services, the EPO will consider applying Rule 82quater.2

For the relevant notification by the Office refer to the Official Notices (PCT Gazette) dated 26 November 2020, pages 254 et seq. and Notice from the EPO dated 22 October 2020 concerning the procedures and safeguards which apply under the EPC and the PCT in the event of outages of means of electronic filing and other online services (OJ EPO 2020, A120).

Is the Office prepared to allow applicants to make applications available to the WIPO Digital Access Service for Priority Documents (DAS) (PCT Rule 17.1(b-bis)?

Yes, the Office is prepared to allow applicants to make international and European patent applications available to the WIPO DAS

For further details, refer to OJ EPO 2019, A27

Competent receiving Office(s) for international applications filed by nationals or residents of the following States:

The applicant may also choose to file with the national Office of the country of which he is a national or resident or with the IB (Refer to Annex C).

AL,

AT,

BE,

BG,

CH,

CY,

CZ,

DE,

DK,

EE,

ES,

FI,

FR,

GB,

GR,

HR,

HU,

IE,

IS,

IT,

LI,

LT,

LU,

LV,

MC,

ME ¹,

MK,

MT,

NL,

NO,

PL,

PT,

RO,

RS,

SE,

SI,

SK,

SM,

Competent designated (or elected) Office(s) for this Organization:

Refer to National Phase EP.

AL,

AT,

BE,

BG,

CH,

CY,

CZ,

DE,

DK,

EE,

ES,

FI,

FR,

GB,

GR,

HR,

HU,

IE,

IS,

IT,

LI,

LT,

LU,

LV,

MC,

ME ¹,

MK,

MT,

NL,

NO,

PL,

PT,

RO,

RS,

SE,

SI,

SK,

SM,

Competent designated and elected Office for requesting extension of a European patent to the following countries:

Competent designated and elected Office for requesting validation of a European patent in the following countries:

For international applications filed on or after 1 March 2018:

For international applications filed on or after 1 March 2015:

For international applications filed on or after 1 November 2015:

For international applications filed on or after 1 December 2017:

Types of protection available via the PCT:

European patents

Availability under the national law for an international-type search (PCT Article 15):

None

Provisional protection after international publication:

The protection granted in each State party to both the PCT and the European Patent Convention is indicated under the heading “Where the designation is made for the purposes of a European patent” for such States. For further information, also refer to Articles 67 and 153 of the European Patent Convention and the EPO brochure “National law relating to the EPC”

Information of interest if this Contracting State is designated (or elected)

Time when the name and address of the inventor must be given:

For further details, refer to the Notice from the European Patent Office dated 22 February 2021 concerning the amendment of Rules 19 and 143 EPC, OJ EPO 2021, A12

May be in the request or may be furnished later. If not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation

Are there special provisions concerning the deposit of microorganisms and other biological material?

Yes, refer to Annex L.

Annex C - Receiving Office

Competent receiving Office for nationals and residents of:

AL,

AT,

BE ²,

BG ²,

CH,

CY ²,

CZ,

DE ²,

DK ²,

EE,

ES ²,

FI ²,

FR ²,

GB ²,

GE,

GR ²,

HR,

HU,

IE,

IS,

IT ²,

LI,

LT,

LU ²,

LV,

MC,

ME ²,

MK,

MT,

NL,

NO,

PL,

PT ²,

RO,

RS,

SE ²,

SI,

SK,

SM,

TR ²

Language in which international applications may be filed:

English,

French,

German

Language accepted for language-dependent free text in the sequence listing:

English or the same language as the international application (French or German); or English and any other language

Language in which the request may be filed:

English,

French,

German

Number of copies required by the receiving Office if application filed on paper:

Does the receiving Office accept the filing of international applications in electronic form?

Where the international application is filed in electronic form in accordance with and to the extent provided for in Part 7 and Annex F of the Administrative Instructions, the total amount of the international filing fee is reduced (refer to “Fees payable to the receiving Office”)

Where the international application contains a sequence listing as a separate part of the description, this should be furnished in accordance with Annex C of the Administrative Instructions, that is, in compliance with WIPO Standard ST.26 XML format; no fees are due for sequence listings filed in this format.

For the relevant notifications by the Office, refer to the Official Notices (PCT Gazette) dated 18 March 2021, pages 51 et seq., 3 June 2021, page 108, 30 June 2022, pages 165 et seq. and 19 May 2023, pages 117 et seq.

Yes, the Office accepts electronic filing via:

— ePCT-Filing

— EPO Online Filing

— EPO Online Filing 2.0

— EPO web-form filing service or

— EPO Contingency Upload Service

Offline filings may be furnished on CD-R, DVD-R or DVD+R if EPO Online Filing is used

Does the receiving Office accept requests for restoration of the right of priority (PCT Rule 26bis.3)?

Yes, the Office applies the “due care” criterion to such requests

Competent International Searching Authority:

Competent International Preliminary Examining Authority:

Fees payable to the receiving Office:

Transmittal fee:

Refer to information for users on the availability of DOCX filing and changes to the filing fee, fee for grant and transmittal fee, OJ EPO 2018, A28

145 EUR

This amount applies where the PCT request (Form PCT/RO/101) and the international application are filed with the EPO as receiving Office online in character-coded format.

0 EUR

International filing fee:

1,378 EUR

This fee is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

Fee per sheet in excess of 30:

16 EUR

This fee is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

Reductions (under Schedule of Fees, item 4):

Electronic filing (web-form filing):

104 EUR

Electronic filing (the request in character coded format):

207 EUR

Electronic filing (the request, description, claims and abstract in character coded format):

311 EUR

Search fee:

Refer to
Annex D(EP)

Fee for priority document (PCT Rule 17.1(b)):

115 EUR

Fee for requesting restoration of the right of priority (PCT Rule 26bis.3(d)):

720 EUR

Is an agent required by the receiving Office?

No, if the applicant has a residence or his principal place of business in one of the States party to the European Patent Convention
Yes, if the applicant has neither a residence nor his principal place of business within the territory of one of those States

Who can act as agent?

Any professional representative entered on the relevant list maintained by the EPO (the directory of professional representatives can be ordered at the EPO, Vienna, or consulted on the EPO web site)

Any legal practitioner qualified to practice in patent matters in one of the States party to the European Patent Convention and who has his place of business in that State

Where an applicant wishes to appoint the professional representatives practicing within an association of representatives registered with the EPO under Rule 152(11) EPC, the name of that association and its registration number are to be indicated in Box No. IV of the Request form

Waiver of power of attorney:

Refer to OJ EPO 5/2010, page 335

Waivers of powers of attorney do not apply (PCT Rule 90.4(e) and 90.5(d)) where the agent or common representative submits any notice of withdrawal during the international phase (PCT Rule 90bis.1 to 90bis.4, also refer to International Phase, paragraph 11.048).

Has the Office waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

If necessary in the circumstances of a particular case, for example:

(1) where a procedural act is performed by a purported agent who is not the agent of record, unless:

— the purported agent belongs to the same office as the agent of record; or

— both the purported agent and the agent of record are employees of the applicant (or, if there is more than one applicant, of the common representative)

(2) in case of doubt as to whether the agent or common representative is entitled to act

Has the Office waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

If necessary in the circumstances of a particular case, for example:

(1) where a procedural act is performed by a purported agent who is not the agent of record, unless:

— the purported agent belongs to the same office as the agent of record; or

— both the purported agent and the agent of record are employees of the applicant (or, if there is more than one applicant, of the common representative)

(2) in case of doubt as to whether the agent or common representative is entitled to act

Annex D - International Searching Authority

International Searching Authority competent for the following Receiving Offices:

AL,

AM,

AP,

AT,

AZ,

BA,

BG,

BH,

BN,

BR,

BW,

BY,

BZ,

CH,

CL,

CN,

CO,

CR,

CU,

CV,

CY,

CZ,

DE,

DJ,

DK,

DO,

DZ,

EA,

EC,

EE,

EG,

EP,

ES,

FI,

FR,

GB,

GE,

GH,

GR,

HN,

HR,

HU,

ID,

IE,

IL,

IN,

IQ,

IR,

IS,

IT,

JM,

JO,

JP,

KE,

KG,

KH,

KN,

KZ,

LR,

LS,

LT,

LU,

LV,

LY,

MA,

MD,

MK,

MN,

MT,

MW,

MX,

MY,

NI,

NL,

NO,

NZ,

OA,

OM,

PA,

PE,

PH,

PL,

PT,

QA,

RO,

RS,

RU,

SA,

SC,

SD,

SE,

SG,

SI,

SK,

SV,

SY,

TH,

TJ,

TM,

TN,

TR,

TT,

UA,

UG,

US,

UZ,

VN,

WS,

ZA,

Search fee (PCT Rule 16):

1,713 CHF

13,200 DKK

1,775 EUR

1,546 GBP

690,700 HUF

271,000 ISK

266,100 JPY

19,970 NOK

3,064 NZD

20,760 SEK

2,488 SGD

1,875 USD

36,760 ZAR

This fee is payable to the receiving Office in the currency or one of the currencies accepted by it. The fee is reduced by 75% where the applicant or, if there are two or more applicants, each applicant is a natural person and is a national of and resides in a State classified by the World Bank as low-income or lower-middle-income economy. For the list of States to which this reduction applies, refer to:
https://www.epo.org/applying/fees/international-fees/information.html.
This fee is also reduced by 75% where the applicant, or if there are two or more applicants, each applicant is a natural or legal person who, within the meaning of Rule 18 of the Patent Cooperation Treaty, is a national of and resident in a state in which a validation agreement with the European Patent Organisation is in force. For further information refer to the decision of the EPO’s Administrative Council of 12 December 2019 (OJ EPO 2020, A4):
https://www.epo.org/law-practice/legal-texts/official-journal/2020/01/a4.html and OJ EPO 2021, A58

Additional search fee (PCT Rule 40.2):

1,775 EUR

This fee is payable to the International Searching Authority and only in particular circumstances

Additional search fee in relation to PCT Rule 20.5bis (PCT Rule 40bis):

1,775 EUR

For further information, refer to the “Notice from the European Patent Office dated 14 June 2020 concerning the applicability of new Rule 20.5bis PCT on the correction of erroneous filings in proceedings before the EPO” (OJ EPO 2020, A81) and the Official Notices (PCT Gazette) dated 30 April 2020, page 83

This fee is payable to the International Searching Authority and only in particular circumstances

Protest fee (PCT Rule 40.2(e)):

980 EUR

The applicable procedure since 1 July 2010 is as set out in OJ EPO 5/2010, page 322

Late furnishing fee (PCT Rule 13ter.1(c)):

255 EUR

Conditions for refund and amount of refund of the search fee:

Money paid by mistake, without cause, or in excess, will be refunded

Where the international application is withdrawn or is considered withdrawn, under PCT Article 14(1), (3) or (4), before the start of the international search:
refund of 100%

Where the international search report drawn up by the Authority is based on an earlier search report prepared by the Authority on an application whose priority is claimed for the international application, the international search fee paid for the pending international application shall be refunded as follows: ³

For a European search (EPC Article 92), an international search (PCT Article 15(1)), a supplementary international search (PCT Rule 45bis) or a search made on behalf of a national Office on a national application

BE ⁴,

CY,

FR,

GB ⁶,

GR,

IT,

LT,

LU,

LV,

MC,

MT,

MU,

NL ³,

SM,

— full benefit:
refund of 100%

— partial benefit:
refund of 25%

For an international-type search (PCT Article 15(5)):

— full benefit:
refund of 70%

— partial benefit:
refund of 17.5%

Languages accepted for international search:

English,

French,

German

Dutch,

where the international application is filed with the Netherlands Patent Office

Does the Authority accept informal comments on earlier search results where an international application claims priority from an earlier application already searched by this Authority?

Yes, The applicant may submit informal comments to overcome objections raised in the search opinion established for the priority application. At the EPO this service is called “PCT Direct”. Informal comments should be sent to the receiving Office together with the international application in the form of a separate letter entitled “PCT Direct/informal comments”. If the claims and/or the description of the international application differ from those of the earlier application, applicants should preferably also submit a marked-up copy indicating the differences. PCT Direct submissions are published on PATENTSCOPE. This service is free of charge.

For more details on the PCT Direct service and, in particular, on the form of submission and on the content of a PCT Direct request, refer to OJ EPO 2017, A21.

Types of physical media accepted for the furnishing of nucleotide and/or amino acid sequence listings:

CD-ROM (type: ISO/IEC 10149:1995, 120 mm CD-ROM; format: ISO 9660, 650 MB)

CD-R (type: 120 mm CD-Recordable Disk; format: ISO 9660, 650 MB)

DVD (type: ISO/IEC 16448:1999, 120 mm DVD—Read-Only Disk; format: 4.7 GB, conforming to either ISO 9660 or OSTA UDF (1.02 and higher))

DVD-R (type: Standard ECMA-279, 120 mm (3.95 GB per side)—DVD-Recordable; format: 3.95 GB, conforming to either ISO 9660 or OSTA UDF (1.02 and higher))

Subject matter that will not be searched:

The subject matter specified in items (i) to (vi) of PCT Rule 39.1 with the exception of any subject matter which is searched under the patent grant procedure in accordance with the provisions of the European Patent Convention

Waiver of power of attorney:

Refer to OJ EPO 5/2010, page 335

Has the Authority waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Where procedural acts are performed by a purported agent who is not the agent of record, unless the purported agent belongs to the same office as the agent of record, or if both the purported agent and the agent of record are employees of the applicant or, if there is more than one applicant, of the common representative; or in case of doubt as to the agent’s or the common representative’s entitlement to act

Has the Authority waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Annex SISA - International Searching Authority (Supplementary Search)

Fees payable to the International Bureau:

For further details on the payment of fees to the International Bureau, refer to the WIPO website at http://www.wipo.int/pct/en/fees/special.html

Supplementary search fee (PCT Rule 45bis.3):

This fee is fixed by the Authority in EUR and will be revised from time to time to reflect currency fluctuations between EUR and CHF. The fee is reduced by 75% where the applicant or, if there are two or more applicants, each applicant is a natural person and is a national of and resides in a State classified by the World Bank as low-income or lower-middle-income economy. For the list of States to which this reduction applies, refer to:
https://www.epo.org/applying/fees/international-fees/information.html.
This fee is also reduced by 75% where the applicant, or if there are two or more applicants, each applicant is a natural or legal person who, within the meaning of Rule 18 of the Patent Cooperation Treaty, is a national of and resident in a state in which a validation agreement with the European Patent Organisation is in force. For further information refer to the decision of the EPO’s Administrative Council of 12 December 2019 (OJ EPO 2020, A4):
https://www.epo.org/law-practice/legal-texts/official-journal/2020/01/a4.html

1,713 CHF

Supplementary search handling fee (PCT Rule 45bis.2):

200 CHF

Late payment fee (PCT Rule 45bis.4(c)):

100 CHF

Fees payable to the Authority:

Review fee (PCT Rule 45bis.6(c)):

980 EUR

Late furnishing fee (PCT Rules 13ter.1(c) and 45bis.5(c)):

255 EUR

Conditions for refund and amount of refund of the supplementary search fee:

Money paid by mistake, without cause, or in excess, will be refunded

The International Bureau shall refund this fee where the supplementary search request has not yet been transmitted to the Authority and the international application is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or considered not to have been submitted (refer to PCT Rule 45bis.3(d)):
refund of 100%

The Authority shall refund this fee if, before it has started the supplementary international search in accordance with PCT Rule 45bis.5(a), the supplementary search request is considered not to have been submitted under PCT Rule 45bis.5(g)

The Authority shall refund this fee if, after receipt of the documents specified in PCT Rule 45bis.4(e)(i) to (iv), but before it has started the supplementary international search in accordance with PCT Rule 45bis.5(a), it is notified of the withdrawal of the international application or of the supplementary search request

Languages accepted for supplementary international search:

English,

French,

German

Subject matter that will not be searched:

Scope of documentation included in the supplementary international search:

In addition to PCT minimum documentation, the Authority shall include the documents held in its search collection

Limitations on supplementary international search:

Where applicable, the Authority shall start the supplementary international search in accordance with PCT Rule 45bis.5(a) only if a copy of a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions is furnished under PCT Rule 45bis.1(c)(ii) and thereafter transmitted to it under PCT Rule 45bis.4(e)(iii)

Does the Authority require that nucleotide and/or amino acid sequence listings be furnished in electronic form (PCT Rules 13ter.1 and 45bis.5(c))?

Yes

Types of electronic carrier required:

CD-ROM (type: ISO/IEC 10149:1995, 120 mm CD-ROM; format: ISO 9660, 650 MB)

CD-R (type: 120 mm CD-Recordable Disk; format: ISO 9660, 650 MB)

DVD (type: ISO/IEC 16448:1999, 120 mm DVD—Read-Only Disk; format: 4.7 GB, conforming to either ISO 9660 or OSTA UDF (1.02 and higher))

DVD-R (type: Standard ECMA-279, 120 mm (3.95 GB per side)—DVD-Recordable; format: 3.95 GB, conforming to either ISO 9660 or OSTA UDF (1.02 and higher))

Waiver of power of attorney:

Refer to OJ EPO 5/2010, page 335

Has the Authority waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Has the Authority waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Annex E - International Preliminary Examining Authority

International Preliminary Examining Authority competent for the following Receiving Offices:

AL,

AM,

AP,

AT,

AZ,

BA,

BG,

BH,

BN,

BR,

BW,

BY,

BZ,

CH,

CL,

CN,

CO,

CR,

CU,

CV,

CY,

CZ,

DE,

DJ,

DK,

DO,

DZ,

EA,

EC,

EE,

EG,

EP,

ES,

FI,

FR,

GB,

GE,

GH,

GR,

HN,

HR,

HU,

ID,

IE,

IL,

IN,

IQ,

IR,

IS,

IT,

JM,

JO,

JP,

KE,

KG,

KH,

KN,

KZ,

LR,

LS,

LT,

LU,

LV,

LY,

MA,

MD,

MK,

MN,

MT,

MU,

MW,

MX,

MY,

NI,

NL,

NO,

NZ,

OA,

OM,

PA,

PE,

PH,

PL,

PT,

QA,

RO,

RS,

RU,

SA,

SC,

SD,

SE,

SG,

SI,

SK,

SV,

SY,

TH,

TJ,

TM,

TN,

TR,

TT,

UA,

UG,

US,

UZ,

VN,

WS,

ZA,

The EPO may act as International Preliminary Examining Authority only if the international search is or has been performed by the EPO, the Austrian Patent Office, the Finnish Patent and Registration Office (PRH), the Nordic Patent Institute, the Spanish Patent and Trademark Office, the Swedish Intellectual Property Office (PRV), the Turkish Patent and Trademark Office (Turkpatent) or the Visegrad Patent Institute

Preliminary examination fee (PCT Rule 58):

1,840 EUR

This fee is payable to the International Preliminary Examining Authority.

This fee is reduced by 75% where the applicant or, if there are two or more applicants, each applicant is a natural person and is a national of and resides in a State classified by the World Bank as low-income or lower-middle-income economy. For the list of States to which this reduction applies, refer to:
https://www.epo.org/applying/fees/international-fees/information.html.
This fee is also reduced by 75% where the applicant, or if there are two or more applicants, each applicant is a natural or legal person who, within the meaning of Rule 18 of the Patent Cooperation Treaty, is a national of and resident in a state in which a validation agreement with the European Patent Organisation is in force. For further information refer to the decision of the EPO’s Administrative Council of 12 December 2019 (OJ EPO 2020, A4):
https://www.epo.org/law-practice/legal-texts/official-journal/2020/01/a4.html

The late payment fee, equal to 50% of the amount of the unpaid fees, is payable to the International Preliminary Examining Authority. Refer to OJ EPO 5/1998, page 282

Additional preliminary examination fee (PCT Rule 68.3):

This fee is payable to the International Preliminary Examining Authority and only in particular circumstances

1,840 EUR

Handling fee (PCT Rule 57.1):

207 EUR

The late payment fee, equal to 50% of the amount of the unpaid fees, is payable to the International Preliminary Examining Authority. Refer to OJ EPO 5/1998, page 282

This fee is payable to the International Preliminary Examining Authority. It is reduced by 90% if certain conditions apply (refer to Annex C(IB))

Protest fee (PCT Rule 68.3(e)):

980 EUR

Late furnishing fee (PCT Rule 13ter.2):

255 EUR

Conditions for refund and amount of refund of the preliminary examination fee:

Money paid by mistake, without cause, or in excess, will be refunded

In the cases provided for under PCT Rule 58.3:
refund of 100%

If the international application or the demand is withdrawn before the start of the international preliminary examination:
refund of 100%

Does the Office accept the filing of demands (PCT Chapter II) in electronic form?

For the relevant notification by the Office, refer to Official Notices (PCT Gazette) dated 3 June 2021, page 108 and 19 May 2023, pages 117 et seq.

Yes, The Office accepts electronic filing via :

— EPO Online Filing

— EPO web-form filing service

— ePCT-Filing

— EPO Online Filing 2.0 or

— EPO Contingency Upload Service

Offline filings may be furnished on CD-R, DVD-R or DVD+R if EPO Online Filing is used

Languages accepted for international preliminary examination:

English,

French,

German

Subject matter that will not be examined:

The subject matter specified in items (i) to (vi) of PCT Rule 67.1 with the exception of any subject matter which is examined under the patent grant procedure in accordance with the provisions of the European Patent Convention

Waiver of power of attorney:

Refer to OJ EPO 5/2010, page 335

Has the Authority waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Has the Authority waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Annex L - Deposits of Microorganisms and Other Biological Material

Requirements of designated and elected Offices

Only Offices whose applicable national law contains provisions concerning the deposits of microorganisms and other biological material are listed in Annex L. Unless otherwise indicated, deposits may be made for the purposes of patent procedure before these Offices with any depositary institution having acquired the status of international depositary authority under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

For a list of these institutions refer to:

http://www.wipo.int/treaties/en/registration/budapest/pdf/idalist.pdf

Notifications related thereto may be consulted under:

http://www.wipo.int/treaties/en/registration/budapest/

Further information concerning the requirements of international depository authorities under the Budapest Treaty is available at:

http://www.wipo.int/budapest/en/guide/index.html

Time (if any) earlier than 16 months from priority date by which applicant must furnish:

— the indications prescribed in Rule 13bis.3(a)(i) to (iii):

None

— any additional indications:

At the time of filing

Additional indications (if any) which must be given besides those prescribed in Rule 13bis.3(a)(i) to (iii) pursuant to notifications from the Office:

To the extent available to the applicant, relevant information on the characteristics of the biological material relevant information on the characteristics of the biological material

Additional information

Deposits with CNCM can be made under the Budapest Treaty or, as far as the deposits of cell cultures, mycoplasma and rickettsiae are concerned, under a bilateral agreement with the EPO.

If the applicant wishes that, until the publication of the mention of the grant of a European patent or for 20 years from the date of filing if the application is refused or withdrawn or deemed to be withdrawn, the biological material shall be made available as provided in Rule 33(1) EPC only by the issue of a sample to an expert nominated by the requester (Rule 32(1) EPC), the applicant must, by a written statement, inform the International Bureau accordingly before completion of technical preparations for publication of the international application where such publication takes place in one of the EPO official languages (English, French or German). Such statement must be separate from the description and the claims of the international application and must preferably be made on Form PCT/RO/134, referred to in Section 209 of the Administrative Instructions under the PCT and available on the WIPO website at https://www.wipo.int/pct/en/forms/ro/editable/ed_ro134.pdf.

If the international application was not published in an official language of the EPO (English, French, German), the statement under Rule 32(1) EPC can still be submitted in the European phase until completion of the technical preparations for publication of the translation of the international application under Article 153(4) EPC. The fact that the expert option has been chosen will then be published on the front page of the published translation of the application. Information received under Rule 32(1) EPC after completion of the technical preparations for publication of the international application – or, where applicable, of the translation of the application pursuant to Article 153(4) EPC – cannot be taken into account with the consequence that the biological material will be available to any person as provided for in PCT Rule 13bis.6 and Rule 33(1) EPC without an expert acting as intermediary (refer to Notice from the European Patent Office dated 7 July 2010 concerning inventions which involve the use of or concern biological material, OJ EPO 10/2010, page 498 et seq.).

WARNING: Where the invention involves the use of or concerns biological material which is not available to the public at the date of filing the application and which has been deposited by a person other than the applicant, the reference to such a deposit must include the name and address of the depositor and a statement that the latter has authorized the applicant to refer to the deposited biological material in the application and has given his unreserved and irrevocable consent to the deposited material being made available to the public in accordance with Rule 31(1)(d) of the European Patent Convention (EPC). If any of these indications (the name and address of the depositor, and the statement) is not included in a reference to deposited biological material in the international application as filed, it may still be furnished to the International Bureau within a period of 16 months after the date of filing of the international patent application or, if priority is claimed, after the priority date; this time limit is deemed to have been met if the indication reaches the International Bureau before the technical preparations for international publication have been completed (PCT Rule 13bis.4(a)). Where the applicant makes a request for early publication under PCT Article 21(2)(b), the indications must be furnished to the International Bureau at the latest before the completion of the technical preparations for international publication (PCT Rule 13bis.4(c)). The failure to meet this time limit cannot be remedied upon entry into the European phase neither by re-establishment of rights nor by further processing. As a result, the application may have to be refused under Article 97(2) EPC in the course of examination proceedings for insufficient disclosure (Article 83 EPC).

National Phase

Summary of requirements for entry into the national phase

Time limits applicable for entry into the national phase:

Under PCT Article 22(3): 31 months from the priority date
Under PCT Article 39(1)(b): 31 months from the priority date

Translation of international application required into (one of) the following language(s):

English,

French,

German

Required contents of the translation for entry into the national phase:

Under PCT Article 22: Description, claims (if amended, both as originally filed and as amended, if the applicant wishes the amendments to form the basis for the proceedings, together with any statement under PCT Article 19 ), any text matter of drawings, abstract

Under PCT Article 39(1): Description, claims, any text matter of drawings (if any of those parts has been amended, both as originally filed and as amended by the annexes to the international preliminary report on patentability (Chapter II) and claims amended under PCT Article 19, if the applicant wishes these amendments to form the basis for the proceedings, together with any statement under PCT Article 19), abstract

Where the applicant furnishes only one translation of the international application, or any part of it, either as originally filed or as amended, the Office will invite the applicant to furnish the missing translation within a reasonable time limit. If the translation of the amended part or of the international application as initially filed is missing and is not furnished, the international application will be considered withdrawn. However, it should be noted that, if the translation of the claims as amended under PCT Article 19(1) is not furnished in due time, only those claims will be disregarded (PCT Rule 49.5(c-bis)) and the international application will not be considered withdrawn

Is a copy of the international application required in particular circumstances?

National fees:

Filing fee: ⁵ ⁷

— for online filings

135 EUR

— for non-online filings

285 EUR

Additional fee for pages in excess of 35 for the 36^th and each subsequent page

17 EUR

Designation fee for one or more EPO Contracting States designated ¹²

660 EUR

Extension fee for each extension State (extension of the European patent to Bosnia and Herzegovina) ¹²

102 EUR

Fee for validation of the European patent in:

— Cambodia ⁸ ¹²

180 EUR

— Morocco ⁹ ¹²

240 EUR

— Republic of Moldova ¹⁰ ¹²

200 EUR

— Tunisia ¹¹ ¹²

180 EUR

Claims fee:

— for the 16^th and each subsequent claim up to the limit of 50

265 EUR

— for the 51^st and each subsequent claim

660 EUR

Search fee:

— for (international) applications filed before 1 July 2005

1,000 EUR

— for (international) applications filed on or after 1 July 2005

1,460 EUR

Fee for further processing:

— in the event of late payment of a fee

50% of the relevant fee

— other cases

290 EUR

Fee for late furnishing of a sequence listing

255 EUR

Examination fee: ¹³

— for (international) applications filed before 1 July 2005

2,055 EUR

— for (international) applications filed on or after 1 July 2005 for which no supplementary European search report is drawn up

2,055 EUR

— for all other (international) applications filed on or after 1 July 2005

1,840 EUR

Renewal fee for the 3^rd year ¹⁴

530 EUR

Exemptions, reductions or refunds of fees: ¹⁵

No search fee is payable:

— where the international search report has been established by the EPO

— where the international application has been filed before 1 July 2005 and the international search report has been established by the Austrian Patent Office, the Spanish Patent and Trademark Office or the Swedish Patent and Registration Office

— where the international application has been filed between 1 April 2005 and 30 June 2005 and the international search report has been established by the Finnish Patent and Registration Office (PRH)

The search fee is

reduced by 1,245 EUR

for international applications for which the international search report or a supplementary international search report has been established by the Austrian Patent Office, or in accordance with the Protocol on Centralisation by the Finnish Patent and Registration Office (PRH), the Nordic Patent Institute, the Spanish Patent and Trademark Office, the Swedish Intellectual Property Office (PRV), the Turkish Patent and Trademark Office (Turkpatent) or the Visegrad Patent Institute

The search fee is refunded fully or in part where the supplementary European search report is based on an earlier search report prepared by the Office

The examination fee is

reduced by 75%

where the international preliminary report on patentability (Chapter II) has been established by the EPO ¹⁶

Furthermore, in certain cases the examination fee is ¹⁶

reduced by 30% for language reasons

Special requirements of the Office (PCT Rule 51bis): ¹⁷

Name, country and place of residence of the inventor if they have not been furnished in the “Request” part of the international application or in a declaration in accordance with PCT Rule 4.17(i)

Address, nationality and residence of the applicant if they have not been furnished in the “Request” part of the international application

Appointment of an agent if the applicant has neither a residence nor his principal place of business within the territory of one of the Contracting States of the European Patent Convention

Furnishing of a nucleotide and/or amino acid sequence listing if it is not otherwise available to the EPO

Who can act as agent?

Any professional representative entered on the relevant list maintained by the EPO (the directory of professional representatives can be consulted on the EPO website) ¹⁹

Any legal practitioner qualified to practice in patent matters in one of the States party to the European Patent Convention and who has his place of business in that State

Does the Office accept requests for restoration of the right of priority (PCT Rule 49ter.2)?

Yes, the Office applies the “due care” criterion to such requests

The procedure in the national Phase

Detailed information on the procedure before the EPO as designated Office and as elected Office can also be found in Chapter 5 of the “Euro-PCT Guide” (“PCT procedure before the EPO”), available on the EPO website http://www.epo.org/applying/international.html

EP.01 FORM FOR ENTERING THE NATIONAL PHASE

Euro-PCT Guide 5.1.015 et seq.
The EPO has available a special form for entering the national phase (EPO Form 1200-refer to Annex EP.II).

The EPO strongly recommends that applicants use the latest version of this form which contains detailed explanatory notes. The form is also available on the EPO’s website: http://www.epo.org/applying/forms.html. The form may be filed electronically (using EPO Online Filing (OLF), Online Filing 2.0 or the EPO Web-Form Filing service (refer to OJ EPO 2021, A42).

EP.02 LANGUAGE OF PROCEEDINGS

EPC Art. 14, EPC Art. 153(4), Euro-PCT Guide 5.1.013, Euro-PCT Guide 5.1.014
The language of proceedings is one of the EPO official languages (English, French or German). If the international application has been published in one of those languages, this language is the language of proceedings; if not, the language of the translation which must be submitted upon entry into the European phase will be the language of the proceedings (refer to paragraph EP.03). The language of proceedings cannot be changed subsequently.

EPC Rule 3(1), EPC Rule 3(2), Euro-PCT Guide 5.5.004
In written proceedings, the applicant may use any official language of the EPO. However, amendments (refer to paragraph EP.18) to the application itself must be filed in the language of the proceedings.

EP.03 TRANSLATION OF THE APPLICATION

EPC Art. 153(4), EPC Rule 159(1)(a), Euro-PCT Guide 5.5.001, Euro-PCT Guide 5.5.010 et seq., PCT Art. 19(1), PCT Rule 49.3, PCT Rule 70.16, PCT Rule 74(1)
If the Euro-PCT application was not published by the International Bureau in an official language of the EPO (English, French, German), the applicant must, within the 31-month time limit, submit to the EPO a translation of the application into one of the official languages (Form 1200, Section 7). In addition to those elements of the translation which must be furnished within the time limit of 31 months from the priority date (the description, the claims and any text in the drawings as originally filed and the abstract as published), the following elements should also be included:

if the EPO acts as designated Office:

— any amendments made to the claims under PCT Article 19 in the form of a translation of the complete set of claims furnished in replacement of all claims originally filed only if the applicant wishes such amendments to form the basis of further proceedings. The amendments must be submitted together with, if submitted to the International Bureau, the statement under PCT Article 19(1) explaining the amendments and, in every case, the accompanying letter under PCT Rule 46.5(b) in an official language of the EPO. If a translation of the complete set of claims submitted under PCT Article 19 is not furnished or not accompanied by a translation of, if submitted to the International Bureau, the statement under PCT Article 19(1) and, in every case, the accompanying letter under PCT Rule 46.5(b), the amendments under PCT Article 19 will be disregarded for the further proceedings. If only the statement under PCT Article 19(1) is not available in an official language, only that document will be disregarded;

— any indication under PCT Rule 13bis.3 and 13bis.4, i.e., separately furnished reference to deposited biological material;

— any nucleotide and amino acid sequence listing under PCT Rule 5.2(a), unless the text in the sequence listing is available to the EPO in English;

— any request for rectification referred to in PCT Rule 91.3(d) as published in accordance with PCT Rule 48.2(a)(vii).

if the EPO acts as elected Office:

— translation of any annexes to the international preliminary report on patentability (Chapter II), i.e. regardless of whether protection is sought for the same version of the application documents as was the subject of that report. If any amendments under PCT Article 19 are annexed to the IPRP (Chapter II), a translation of those amendments must also always be filed.

If the applicant wishes the amendments to the claims made before the IB under PCT Article 19 to form the basis of the procedure before the EPO as elected Office, and these amendments are not annexed to the IPRP (Chapter II) (for instance because they were considered reversed by an amendment under PCT Article 34), then these amendments must also be furnished in translated form, as otherwise they will be disregarded for the further proceedings. Any statement under PCT Article 19(1) and, in every case, the letter under Rule PCT 46.5(b) must also be furnished in an official language of the EPO. If only the statement under PCT Article 19(1) is not available in an official language, only that document will be disregarded.

If the translation of all annexes to the IPRP (Chapter II) is not filed in due time, the applicant is invited to furnish the missing translation within two months of notification of a communication. If the applicant fails to comply, the Euro-PCT application is deemed to be withdrawn. The applicant may request further processing (or re-establishment of rights under PCT Rule 49.6 if the application is deemed withdrawn because the translation was not filed in due time. However, the fee is higher and stricter requirements apply. Therefore, this remedy has only advantages if the period for requesting further processing has already expired).

EP.04 TRANSLATION (CORRECTION)

Errors in the translation of the international application can be corrected with reference to the text of the international application as filed (refer to National Phase, paragraphs 6.002 and 6.003).

EP.05 FEES (METHOD OF PAYMENT)

RFees Art. 5
The method of payment of the fees indicated in the Summary and in this Chapter is outlined in Annex EP.I. Payments via a deposit account held with the EPO are only accepted if made online, i.e. in an electronically processable format (XML), using, e.g. the electronic EPO filing forms, the Online Fee Payment in Online services or the Central Fee Payment service (refer to OJ EPO 2022, A81). This also applies to automatic debit orders. Furthermore, any refund instructions to a deposit account must also be filed in an electronic processable format. For more details, refer to Extract from the Arrangements for deposit accounts (ADA) and their annexes in Annex EP.I and the Supplementary publication 3 to OJ EPO 2022.

EP.05a FILING FEE

PCT Art. 22(1), PCT Art. 39(1), EPC Art. 78(2), EPC Rule 159(1)(c), EPC Rule 165, RFees Art. 2(1).1, OJ EPO 2009-118, Euro-PCT Guide 5.7.001 et seq., Euro-PCT Guide 5.17.001
Within the 31-month time limit the European filing fee must be paid. This fee is composed of a basic fee and an additional fee which is due for the 36^th and each subsequent page of the application. The additional fee is referred to as the “page fee”. The basic fee is reduced where EPO Form 1200 is filed via EPO Online Filing, Online Filing 2.0 or the EPO Web-Form Filing service. If the basic filing fee and/or, where applicable, the page fee, is not paid in full in due time, the application will be deemed withdrawn. In addition, the Euro-PCT application will not be considered as comprised in the state of the art under EPC Article 54(3).

EP.05b PAGE FEE

EPC Rule 38(2), RFees Art. 2(1).1a, OJ EPO 2009-338, Euro-PCT Guide 5.7.004 et seq.
As a general rule, the page fee is based on the international application as published, regardless of the language of publication. The pages of the description, claims and drawings are counted, plus one page in total for any pages with the bibliographic data and the abstract. Amended claims under PCT Article 19 and/or PCT Article 34 are also considered part of the international publication and must be taken into account unless the applicant has indicated that the procedure in the European phase is not to be based on them. If (parts of) the description and/or claims are amended on entry into the European phase, the amended pages of the description and the amended set of claims replace the equivalent pages of the international application as published and, consequently, form then the basis for calculating the page fee.

However, the calculation of the page fee cannot be based on pages of the description or of the claims drafted partly in an official language of the EPO and partly in another language. Thus, special rules for calculating the page fee apply if the international application was not published in one of the official languages of the EPO and amendments are filed upon entry into the European phase. Detailed information regarding the correct calculation of the page fee in such case is provided in OJ EPO 2009-338 and in the Guidelines for Examination in the EPO, A-III, 13.2. Completion of section 6 of EPO Form 1200 and the related table serves applicants to clearly indicate to the EPO the documents on which the further proceedings are to be based and to correctly compute the page fee.

Pages with amendments filed after expiry of the 31-month time limit are not taken into account in calculating the page fee. Furthermore, page fees will not be refunded if the number of pages is reduced during the proceedings before the EPO.

EP.06 EUROPEAN DESIGNATION FEE

EPC Art. 79(2), EPC Rule 159(1)(d), EPC Rule 160, EPC Rule 39(1), Euro-PCT Guide 5.8.001 et seq., RFees Art. 2 No. 3
A (flat) designation fee must be paid within six months from the publication by the International Bureau of the international search report or before the expiration of the time limit applicable under PCT Articles 22(3) and 39(1)(b) and EPC Rule 159 (31 months from the filing date or, if priority has been claimed, the earliest priority date), whichever time limit expires later. If the designation fee is not paid in due time, the Euro-PCT application will be deemed withdrawn.

EP.07 EXTENSION/VALIDATION

Euro-PCT Guide 5.8.009 et seq., OJ EPO 2009-603, OJ EPO 2015-A18-20, OJ EPO 2015-A84, OJ EPO 2015-A85, OJ EPO 2016-A5, OJ EPO 2016-A67, OJ EPO 2017-A85, OJ EPO 2018-A16
International applications entering into the national phase at the EPO (European phase) can be extended to or validated in certain States which have concluded an Extension or Validation Agreement to that effect with the European Patent Organisation (they are indicated in the Summary), provided the Extension/Validation Agreement with the EPO was in force at the international filing date, the State concerned was designated for a national patent in the international application and the respective extension/validation fees have been paid, the amount of which is indicated in Annex EP.I. For payment of the extension/validation fee, the provisions for payment of the European designation fees apply mutatis mutandis. The request for extension/validation for a state is deemed withdrawn if the extension/validation fee is not paid to the EPO within the time limit laid down in the EPC for the payment of the designation fee (EPC Rule 159(1)(d) and EPC Rule 39(1), refer to paragraph EP.06). If the designation fee was paid but none of the extension/validation fees, no communication pointing out the failure to observe the time limit for payment of the extension/validation fees is issued. However, the applicant may still pay an extension/validation fee after expiry of the (basic) time limit for payment of the designation fee and the extension/validation fees with a 50% surcharge within a grace period of two months as from expiry of the basic time limit. Furthermore, where in the absence of payment of the designation fee in due time further processing can be requested in respect of the designation fee, the applicant may within two months from notification of the communication of the loss of rights also pay the extension/validation fee(s) with a 50% surcharge (refer to Guidelines for Examination in the EPO, A-III, 12.2). When an extension State accedes to the EPC, the Extension Agreement remains applicable to international applications filed prior to the date of accession.

EP.08 CLAIMS FEES

EPC Rule 162, Euro-PCT Guide 5.11.004 et seq.
If the application documents on which the European grant procedure is to be based contain more than fifteen claims, a claims fee is payable within the 31-month period in respect of the sixteenth and each subsequent claim. A higher claims fee is payable in respect of the 51^st and each subsequent claim. The claims fees must be calculated on the basis of the number of claims specified to form the basis for the further proceedings on entry into the national phase (that is, where amendments have been filed, the claims as amended under PCT Article 19 or 34(2) or the claims as submitted by the applicant under PCT Article 28 or 41 upon entering the national phase), unless the applicant uses the opportunity to amend the claims in response to the communication pursuant to EPC Rules 161 and 162 referred to in paragraph EP.18, the claims thus amended being then used as the basis for calculation of the claims fee and for the further proceedings. Where the applicant fails to pay the correct amount of the claims fees within the 31-month time limit, the EPO will invite him to pay the missing amount within the non-extendable six-month time limit set in the communication under EPC Rules 161 and 162. Where the number of claims changes as a consequence of a later (further) amendment filed in response to the communication pursuant to Rules 161 and 162, that number is to be used as the basis for calculating the amount of the claims fees to be paid. Where a claim fee is not paid in due time, a noting of loss of rights (EPC Rule 112(1)) is issued, giving the applicant the opportunity to request further processing (EPC Article 121) by paying the missing claims fee(s) together with the applicable fee for further processing within a period of two months from notification of the communication. If not paid within that period, the claim(s) concerned shall be deemed to be abandoned. Features of a claim deemed to have been abandoned and which are not otherwise to be found in the description or drawings cannot subsequently be reintroduced into the application and, in particular, the claims.

EP.09 DESIGNATION OF THE INVENTOR

EPC Rule 163(1), EPC Rule 163(6), Euro-PCT Guide 5.12.001 et seq., OJ EPO 2021-A12, OJ EPO 2021-A3
A designation of inventor must only be filed upon entry into the European phase if within the 31-month time limit the inventor has not been designated or certain information, e.g. the country or place of residence, is missing. If not filed upon entry, the EPO will invite the applicant to file the missing information within two months from the notification of a communication under Rule 163(1) or (4) EPC. If the missing information is not furnished within the two-month time limit, the application is refused. For further details, refer to the form for such designation in Annex EP.III. Legalization is not required.

EP.10 APPOINTMENT OF AN AGENT AND POWER OF ATTORNEY

EPC Art. 133, EPC Art. 134, EPC Rule 152, EPC Rule 163(5), EPC Rule 163(6), Euro-PCT Guide 5.3.006 et seq., OJ EPO 2007, Special Edition No. 3, page 128 et seq.
Natural and legal persons having either their residence or their principal place of business within the territory of one of the EPC contracting states may act on their own behalf in proceedings before the EPO (EPC Article 133(1)). Natural and legal persons not having either a residence or their principal place of business within the territory of one of the EPC contracting states must be represented by a professional representative and act through him in all proceedings established by the EPC (refer to the Summary, “Who can act as agent?”). In case of failure to appoint the required professional representative, the applicant will be invited by the EPO to do so within two months. If the deficiency is not corrected in due time, the application is refused. Nevertheless, the applicant may act on his own behalf within the 31-month time limit applicable under PCT Articles 22(3) and 39(1)(b) and EPC Rule 159(1). Under no circumstances, however, may the applicant act through his agent appointed during the international phase if the latter is not an agent entitled to practice before the EPO. Payments can be made by anybody. A power of attorney (“Authorisation” or “General Authorisation”, refer to samples given in Annexes EP.IV and EP.V, respectively), generally, need not be filed by an agent who is a professional representative entered on the list maintained by the EPO. It is, however, necessary that he informs the EPO of his appointment. This applies even if the professional representative was appointed for the international phase, unless he was at the same time also explicitly appointed for the European phase before the EPO acting as Receiving Office. Legal practitioners entitled to practice before the EPO and employees representing an applicant under EPC Article 133(3) who are not professional representatives must always file a signed authorization or a reference to a general authorization already on file (for details, refer to the Decision of the President of the EPO dated 12 July 2007 on the filing of authorizations, OJ EPO 2007, Special edition No. 3, 128 et seq.). Only where the EPO acted as receiving Office and the authorization expressly empowered the legal practitioner or employee to act before the EPO in the national phase, is a new authorization not required. In the cases where a power of attorney is required, the EPO will invite the applicant or agent to file it within a period to be specified. If the authorization is not filed in due time, any procedural steps taken by the agent will be deemed not to have been taken.

EP.11 RENEWAL FEES

EPC Art. 86(1), EPC Art. 86(2), EPC Rule 159(1)(g), EPC Rule 51, Euro-PCT Guide 5.11.001 et seq., OJ EPO 2018-A2, RFees Art. 2 No. 4, RFees Art. 2 No. 5
They are payable for the third and each subsequent year following the international filing date. Payment must be made before the expiration of the month containing the anniversary of the international filing date. Payment can then still be made, together with a 50% surcharge for late payment, before the expiration of the sixth month after the month containing the anniversary of the international filing date. It is to be noted that a renewal fee which is due within the 31-month time limit applicable under PCT Articles 22(3) and 39(1)(b) can be paid without surcharge up to the expiration of the 31-month time limit. The renewal fee can still validly be paid within six months after the expiration of the 31-month time limit, subject to the payment of the 50% surcharge. If the renewal fee is not paid within the six-month period, the application is deemed to be withdrawn. The failure to meet the time limit for paying the renewal fee with surcharge may be remedied by filing a request for re-establishment of rights (EPC Article 122, EPC Rule 136). The amounts of the renewal fees are indicated in Annex EP.I. For the calculation of aggregate time limits, refer to OJ EPO 1993-229, point II-3. The renewal fee in respect of the third year may not be validly paid more than six months before it falls due. All other renewal fees may not be validly paid more than three months before they fall due.

EP.12 REQUEST FOR EXAMINATION

EPC Art. 94, Euro-PCT Guide 5.10.001, Euro-PCT Guide 5.10.002, Euro-PCT Guide 5.10.003
A European patent will be granted only if the substantive examination of the application shows it to meet the requirements of the EPC. Examination will only start upon explicit request. The request may be made by using the form referred to in paragraph EP.01 (refer to pre-crossed box 4.1 of EPO Form 1200, Annex EP.II). The request for examination is not deemed to be filed until after the examination fee has been paid.

EP.13 TIME LIMIT FOR REQUESTING EXAMINATION

EPC Rule 159(1)(f), EPC Rule 160(1), EPC Rule 70(1), Euro-PCT Guide 5.10.004, Euro-PCT Guide 5.10.005, Euro-PCT Guide 5.10.006, Euro-PCT Guide 5.10.007, Euro-PCT Guide 5.10.011 et seq.
Examination must be requested within six months from the publication by the International Bureau of the international search report or before the expiration of the time limit applicable under PCT Articles 22(3) and 39(1)(b) and EPC Rule 159(1) (31 months from the filing date or, if priority has been claimed, from the earliest priority date), whichever time limit expires later. If the request for examination is not filed or the examination fee (refer to paragraph EP.14) not paid in due time, the Euro-PCT application is deemed to be withdrawn.

EP.14 FEE FOR EXAMINATION

EPC Art. 94(1), OJ EPO 2018-A4, RFees Art. 14(2)
The request for examination is only effective if the examination fee has been paid. That fee must therefore be paid within the time limits set out in paragraph EP.13. The amount of the said fee is indicated in Annex EP.I.

Euro-PCT Guide 5.10.009
(i) It is reduced by 75% where an international preliminary report on patentability (Chapter II) has been established by the EPO. If the report was established on certain parts of the international application, the reduction is allowed only if examination is to be performed on subject matter covered by the report.

EPC Art. 14(2), EPC Rule 6(3), EPC Rule 6(4), EPC Rule 6(5), EPC Rule 6(6), Euro-PCT Guide 5.10.008, OJ EPO 2014-A23, OJ EPO 2014-A4, RFees Art. 14(1)
(ii) Furthermore, a 30% reduction in the examination fee is available to SMEs, natural persons, non-profit organizations, universities or public research organizations having their residence or principal place of business in a EPC contracting state with an official language other than English, French or German if they file the request for examination in an official language of that state (“admissible non-EPO language”) and declare themselves to be entitled to do so (EPC Rule 6(6)). Since the request for examination is only effective if the examination fee has been paid, the request for examination in an admissible non-EPO language may still be filed up until the examination fee is paid. If the request for examination in an admissible non-EPO language is filed subsequently, it must be accompanied by a translation of the request for examination in the procedural language. (Refer to Annex EP.II, EPO Form 1200, page 2, box 4).

RFees Art. 11, Euro-PCT Guide 5.10.010, OJ EPO 2013-153
(iii) If the conditions for both reductions are fulfilled, the examination fee is first reduced by 75%. The 30% reduction is applied to the resulting total and not to the full fee. Therefore, the total reduction in relation to the full fee is 82.50%.

Euro-PCT Guide 5.9.014, Euro-PCT Guide 5.9.015, OJ EPO 2016-A48, OJ EPO 2016-A49, RFees Art. 11(a), RFees Art. 11(b)
The examination fee is refunded in full if the application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun. Fifty percent of the examination fee is refunded if the application is withdrawn, refused or deemed to be withdrawn after the examining division has begun but before expiry of the time limit for replying to the first invitation under Article 94(3) EPC issued by the examining division, or if no such invitation has been issued, before the date of the communication under Rule 71(3) EPC.

EP.15 CONSEQUENCES OF NON-FULFILMENT OF CERTAIN REQUIREMENTS

EPC Art. 121, EPC Rule 135, EPC Rule 160, Euro-PCT Guide 5.19
EPC Rule 160 provides that if either the translation of the international application or the request for examination is not filed in due time or if the filing fee, including any additional fee for pages exceeding 35, the search fee, the examination fee or the designation fee is not paid in due time, the European patent application is deemed withdrawn. In these circumstances, the applicant will be informed of the deemed withdrawal and EPC Rule 112(2) shall apply. However, the loss of rights shall be deemed not to have occurred if, within two months of the EPO notification, further processing is requested by payment of the respective fee(s) for further processing and the omitted act is completed.

If the applicant neither filed the request for examination nor paid the examination fee in due time, further processing must be requested in respect of both omissions, i.e. in respect of filing the request for examination and payment of the examination fee. It follows that the applicant must file the request for examination and pay the examination fee together with two fees for further processing: a flat fee for further processing in respect of the request for examination and 50% of the examination fee.

EP.16a SUPPLEMENTARY EUROPEAN SEARCH

EPC Art. 153(7), EPC Rule 161, EPC Rule 70(2), EPC Rule 70a(2), Euro-PCT Guide 5.9.001 et seq.
As a rule, a supplementary European search must be performed for each international application entering the European phase and a search fee must be paid.

The supplementary European search will be based on the last set of (amended) claims available to the EPO on the date of expiry of the time limit set under EPC Rule 161(2). Thus, any amendment to the claims which has been filed up to that date will be taken into account (refer to paragraph EP.18).

OJ EPO 2015-A94
Where the request for examination was filed before transmittal of the supplementary European search report, which is usually the case, the EPO invites the applicant, after transmittal of the supplementary European search report, to indicate whether he wishes to proceed further with the application before the EPO. The applicant may waive the right to receive such communication by informing the EPO thereof in due time.

— If the applicant does not wish to proceed further, he may withdraw the application or he may simply refrain from answering the invitation within the time limit fixed in it and the application is deemed to be withdrawn. If the applicant wishes to proceed further, he must notify the EPO accordingly. He may, at the same time, respond to the supplementary European search report by filing amendments and/or comments on his application. The applicant is required to reply to a search opinion within the time limit set by the EPO in its communication under EPC Rule 70a(2) if the EPO has issued a negative written opinion (refer to Guidelines for Examination in the EPO, B-XI, 8 and EP.18).

No supplementary European search performed:

Euro-PCT Guide 5.9.007 et seq.
Dispensation applies and no search fee is to be paid if the international search report (or supplementary international search report) was established by the EPO. In this case the applicant will be invited to comment on the written opinion of the ISA or on the IPRP (Chapter II), or on the supplementary international search report and to correct, if appropriate, any deficiencies noted therein and to amend the application within six months from notification of the invitation (EPC Rule 161(1)); refer to Guidelines for Examination in the EPO, E-IX, 3.2 for more details. ²⁰ ²¹

EP.16b SEARCH FEE

Euro-PCT Guide 5.9.016, Euro-PCT Guide 5.9.017
If a supplementary European search report is to be established, the search fee must be paid within the 31-month time limit, and may be reduced as follows:

OJ EPO 2022-A2
by EUR 1,185 where the international search report was drawn up by the Austrian Patent Office, the Finnish Patent and Registration Office, the Nordic Patent Institute, the Spanish Patent and Trademark Office, the Swedish Intellectual Property Office (PRV), the Turkish Patent and Trademark Office (Turkpatent) or the Visegrad Patent Institute. This reduction also applies when a supplementary international search was established by the Austrian Patent Office, the Finnish Patent and Registration Office, the Nordic Patent Institute, the Swedish Intellectual Property Office (PRV), the Turkish Patent and Trademark Office (Turkpatent) or the Visegrad Patent Institute.

OJ EPO 2019-A4, Euro-PCT Guide 5.9.018
If the application claims the priority of an earlier application for which a search was carried out by the EPO, (a part of) the fee paid for the supplementary European search may be refunded. The level of any refund depends on the type of the earlier search and the extent to which the EPO benefits from the earlier search report when carrying out the supplementary search.

EP.17 NUCLEOTIDE AND AMINO ACID SEQUENCES

EPC Rule 163(3), EPC Rule 30, Euro-PCT Guide 5.6.006 et seq., OJ EPO 11/2013-542, OJ EPO 2021, A96, OJ EPO 2021, A97
If a Standard-compliant sequence listing is contained in the international application under PCT Rule 5.2, furnished to the EPO acting as ISA/SISA or IPEA under PCT Rule 13ter.1(a) or made accessible to the EPO by other means, the applicant does not have to submit the Standard-compliant sequence listing again on entry into the regional phase before the EPO as designated or elected Office.

Where, however, a Standard-compliant sequence listing is not available to the EPO on the expiry of the period under Rule 159(1) EPC, the applicant will be invited to file a Standard-compliant sequence listing within a non-extendable period of two months from the invitation and to pay the late furnishing fee. Furthermore, the applicant must enclose, together with the late filed sequence listing, a declaration to the effect that the sequence listing does not extend beyond the content of the application as originally filed (refer to EPO Form 1200, Section 9.2). The sequence listing must not be submitted on paper or in PDF format. EPC Rule 30(2) and (3) and the Decision of the President of the European Patent Office dated 9 December 2021 on the filing of sequence listings (OJ EPO 2021, A96) are to be applied accordingly (refer to EPC Rule 163(3) in conjunction with Article 5 of the above-mentioned decision of the President).

If any deficiencies are not remedied in due time after such an invitation – this also applies to the payment of the late furnishing fee – the application will be refused (EPC Rule 30(3)). The applicant may request further processing of the application under EPC Article 121 EPC. For international and European patent applications filed until 30 June 2022, WIPO Standard ST.25 is applicable. ²²

For international and European patent applications filed on or after 1 July 2022, the applicable sequence listing standard is WIPO Standard ST.26 (refer to the Decision of the President of the EPO dated 9 December 2021 on the filing of sequence listings, OJ EPO 2021, A96 and the corresponding notice, OJ EPO 2021, A97).

EP.18 AMENDMENT OF THE APPLICATION; TIME LIMITS

EPC Rule 161(1), EPC Rule 161(2), OJ EPO 2010-634, Euro-PCT Guide 5.4.011 et seq.
For the purpose of the procedure before the EPO as designated/elected Office the applicant may always file (voluntary) amendments within the 31-month time limit, and if he subsequently changes his mind he may file (further) amendments until expiry of the time limit set in the combined communication under EPC Rules 161 and 162. The applicant may also be required to file (mandatory) amendments to and/or comments on the application within the time limit set in the communication under EPC Rules 161 and 162. Whether or not a response is mandatory is clearly stated in the communication, its wording thus differing depending on the case (EPO Forms 1226AA, 1226BB or 1226CC).

The communication under EPC Rules 161 and 162 is issued for each application promptly once the application has entered the European phase and on condition that the ISR is available to the EPO. This means that it is also issued if the applicant has already filed, with Form 1200 or thereafter, amendments and/or comments to form the basis for the procedure in the European phase. Pursuant to EPC Rules 161 and 162 the time limit set in the communication is six months. This time limit cannot be extended.

OJ EPO 2015-A94
In order to accelerate the grant procedure the applicant can waive his right to the Rule 161/162 communication by crossing the box in Section 12.2, first checkbox, of EPO Form 1200. The waiver will only be effective if any claims fees due for the set of claims indicated as the basis for the procedure in the European phase have been paid and any mandatory substantive response to the WO-ISA / the IPRP (Chapter II) / the SISR, established by the EPO, was filed on entry into the European phase.

EPC Rule 70a(2), EPC Rule 70a(3), EPC Rule 137(3)
After expiry of the six-month time limit further possibilities for amending the application are limited. If no supplementary European search is carried out, it is at the discretion of the examining division to allow amendments. If a supplementary European search is carried out, the applicant always has one further opportunity to submit amendments upon receipt of the report. Thus, after issuance of the supplementary European search report the applicant may, first of all, comment on both the report and the search opinion and file (voluntary) amendments to the description, claims and drawings within the period specified in the communication under EPC Rule 70a(2) for indicating whether he wishes to proceed further with the application. Secondly, if any deficiencies are noted in the search opinion, the applicant will be required under EPC Rule 70a(2) to respond to the objections made. The application will be deemed withdrawn if the applicant does not submit a substantive reply to the communication under EPC Rule 70a(2) (“mandatory response”). The loss of rights can be remedied by requesting further processing. Amendments made thereafter require the consent of the examining division.

EPC Art. 123(2)
Amendments may under no circumstances go beyond the disclosure in the international application as filed.

EPC Rule 137(4)
Whenever amendments are filed, the applicant must identify them and indicate their basis in the application as filed. If he fails to do so, the examining division may issue a communication requesting correction of the omission within a non-extendable time limit of one month. If the deficiency is not remedied in due time, the application will be deemed withdrawn under EPC Article 94(4). The loss of rights can be remedied by requesting further processing.

EP.19 GRANTING OF THE EUROPEAN PATENT

EPC Art. 97(1), EPC Rule 71(3), EPC Rule 71(4), EPC Rule 71(5), EPC Rule 71(6)
Prior to the decision to grant the European patent, the applicant will receive a communication containing both the text in which the Examining Division intends to grant the European patent and an invitation to pay the grant and printing fees and to supply a translation of the claims in the two other official languages of the EPO. Performance of these acts implies approval of the text. If applicable, the communication will also include an invitation to pay additional claims fees. ¹⁸

EP.20 FEE FOR GRANT, INCLUDING FEE FOR PUBLISHING AND CLAIMS FEE

EPC Rule 71(3)
The amounts of the fees are indicated in Annex EP.I. They must be paid within four months from the communication pursuant to EPC Rule 71(3) referred to in paragraph EP.19

EP.21 TRANSLATION OF CLAIMS

EPC Rule 71(3)
Within the same period, the claims must be translated into the two official languages of the EPO which are not the language of proceedings (refer to paragraphs EP.02 and EP.19).

EP.22 EARLY PROCESSING OF NATIONAL PHASE

EPC Rule 159(1), Euro-PCT Guide 5.1.022 et seq., PCT Art. 23(2), PCT Art. 40(2)
If the applicant wishes the processing and the examination of his application to start earlier than the expiration of the time limit applicable under PCT Article 22(3) or 39(1)(b), he must file an express request for early processing. The request can be made by ticking the checkbox in section 12.1 of EPO Form 1200. Moreover, the applicant must fulfill the requirements for entry into the European phase as if the 31-month time limit provided for in EPC Rule 159(1) expired on the date he requests early processing (refer to OJ EPO No. 3/2013-156 et seq.).

EP.23 REVIEW UNDER ARTICLE 25 OF THE PCT

PCT Art. 25, PCT Rule 51, PCT Rule 82bis, EPC Rule 159(2), Euro-PCT Guide 5.14.002, Euro-PCT Guide 5.14.003
The applicable procedure is outlined in paragraphs 6.018 to 6.021 of the National Phase. At the request of the applicant, the EPO may review whether a refusal by the receiving Office to accord a filing date, or a declaration on the part of the receiving Office that a Euro-PCT application or the designation of a state is considered withdrawn, or a finding by the International Bureau under PCT Article 12(3) is the result of an error or omission on the part of the authority concerned, in which case the Euro-PCT application can proceed as a European application.

To obtain such a review by the EPO as designated/elected Office, applicants must, within the two-month time limit under PCT Rule 51.1, request the International Bureau under PCT Article 25(1) to send copies of documents in the files promptly to the EPO as designated Office. Furthermore, the filing fee under EPC Rule 159(1)(c) must be paid and, where required, a translation of the Euro-PCT application furnished within the same two-month time limit (PCT Rule 51.3).

Applicants are recommended to undertake the remaining steps for entry into the European phase under EPC Rule 159(1) at the same time.

EPC Art. 106, EPC Art. 108
If, upon review under PCT Article 25, the EPO denies an error or omission on the part of the receiving Office or the International Bureau, a notice of appeal against this decision may be lodged within two months from the date of receipt of the decision. Within the same two-month time limit, a fee for appeal must be paid (for the amount, refer to Annex EP.I). Within four months from the date of receipt of the decision, grounds substantiating the notice of appeal must be filed. The Board of Appeal will then decide on the appeal.

EP.24 EXCUSE OF DELAYS IN MEETING TIME LIMITS

PCT Art. 24(2), PCT Art. 48(2), PCT Rule 82bis, Euro-PCT Guide 5.14.004
Reference is made to paragraphs 6.022 to 6.028 of the National Phase and to paragraph EP.15.

EP.25 FURTHER PROCESSING

PCT Rule 82bis.2, EPC Art. 121, EPC Rule 135
Further processing of the application may be requested where the applicant has missed a time limit during the international or the national phase in respect of which further processing is not ruled out under Rule 135(2). If the request is granted, this has the effect that the legal consequence of the failure to observe the time limit is deemed not to have ensued. It must be made by completing the omitted act(s), as applicable, and payment of the fee(s) for further processing, the amount of which is indicated in Annex EP.I, within two months of the notification of the noting of loss of rights (EPC Rule 112(1)). The fee for further processing varies depending on whether the loss of rights occurred due to an omitted act (flat rate fee) or the late payment of a fee (50% of that fee). In some cases, both fees for further processing have to be paid, e.g. if further processing is requested for the late filing of the request for examination and the late payment of the examination fee (refer to paragraph EP.15).

EP.26 RE-ESTABLISHMENT OF RIGHTS

PCT Rule 82bis.2, EPC Art. 122, EPC Rule 136
Re-establishment of rights may be requested where the applicant lost any right because, in spite of all due care required by the circumstances having been taken, he was unable to observe a time limit during the international or the national phase. An application for re-establishment must be filed in writing within two months from the removal of the cause of non-compliance with the time limit(s) but not later than one year from the expiration of the time limit(s) which have not been observed. Within the said two months, the omitted act(s) must be completed, the respective fee(s) for re-establishment of rights (refer to Annex EP.I) must be paid and the request must state the grounds on which it is based and must set out the facts on which it relies. However, re-establishment of rights is ruled out in respect of any period for which further processing under EPC Article 121 is available. Refer to Guidelines for Examination in the EPO, E-IX, 3 for more details.

EP.27 PRIORITY DOCUMENTS

EPC Rule 53(2), Euro-PCT Guide 5.13, OJ EPO 2019-A27, OJ EPO 2021-A83
Where the priority of an earlier application is claimed for a Euro-PCT application, the priority document is sent by the International Bureau to the EPO, if the International Bureau received the priority document from the receiving Office or directly from the applicant or was able to retrieve it from a digital library. The EPO will, at the request of the applicant, include free of charge in the file of the European patent application a copy of the previous application from which priority is claimed, if it can be retrieved via the WIPO Digital Access Service (DAS), using the indicated DAS access code. Where for any reason the priority document has not been submitted by the time of entry into the national phase, the applicant will be invited to furnish the missing document(s) within two months from the date of a notification under EPC Rule 163(2). This time limit cannot be extended. If the priority document or the application number is not submitted within that time limit, the priority right is lost. The loss of rights may be remedied by requesting further processing.

EPC Rule 163(2), OJ EPO 2018-A93, OJ EPO 2021-A42, OJ EPO 2021-A84
A priority document may be filed in electronic form with the EPO only if it is digitally signed by the issuing authority and the signature is accepted by the EPO. A priority document cannot be filed by fax or Web-Form Filing.

No obligation to furnish the priority document:

The EPO as designated/elected Office will include a copy of the priority document free of charge in the file of a Euro-PCT application even without having received a copy from the International Bureau if the priority application is:

— a European patent application;

— an international application filed with the EPO as receiving Office;

For Euro-PCT applications having entered the European phase before 1 January 2022, the EPO will also include, free of charge, a copy of the priority document if the priority application is a patent or utility model application filed with the USPTO, KIPO or CNIPA.

For Euro-PCT applications entering the European phase on or after 1 January 2022, the EPO will discontinue to include US, Korean or Chinese priority documents in the file of the Euro-PCT application due to termination of the respective Agreements for the electronic exchange of priority documents (PDX). If for these cases the priority document is still missing on entry of the European phase, the applicant will be notified thereof and may submit the US, Korean or Chinese priority document via DAS or by filing the certified copy under Rule 53(1) EPC.

EPC Rule 53(3), Euro-PCT Guide 5.13.011 et seq., OJ EPO 2013-150
Where the language of priority documents is not one of the official languages of the EPO (English, French or German) and the validity of the priority claim is relevant to the determination of the patentability of the invention concerned, the applicant is invited to file, within the time limit specified by the EPO, a translation in one of these three languages or a declaration that the international application is a complete translation of the priority application. Failure to comply with this invitation will result in the loss of the right of the relevant priority. For further information refer to Guidelines for Examination in the EPO, A-III, 6.8.

EP.28 RESTORATION OF PRIORITY

EPC Art. 122, Euro-PCT Guide 5.13.017 et seq., OJ EPO 2007-692, PCT Rule 49ter.1, PCT Rule 49ter.2
If the international application was filed more than 12 months from the filing date of the earlier application whose priority is claimed, the applicant may file or resubmit a request for restoration of priority with the EPO as designated/elected Office.

A request for restoration of the right of priority under PCT Rule 49ter.2 may be granted provided the following requirements are met:

— the filing date is within two months from the date on which the priority period expired (PCT Rule 26bis.2(c)(iii));

— the failure to claim the right of priority within the priority period occurred in spite of all due care required by the circumstances having been taken; thus, the requirement of due care is applied by the EPO in accordance with its standing practice under EPC Article 122;

— the request for restoration of priority is filed within one month from the date on which the 31-month time limit for entry into the European phase expired (PCT Rule 49ter.2(b)(i)), or within one month from the receipt of a request for early processing (PCT Articles 23(2) or 40(2));

— the fee for restoration of priority levied by the EPO is duly paid within the same time limit (PCT Rule 49ter.2(b)(iii));

— the request for restoration of priority is accompanied by a statement of reasons for the failure and is preferably accompanied by any declaration or other evidence in support of the statement of reasons (PCT Rule 49ter.2(b)(ii)).

EP.29 PROOF OF ENTITLEMENT TO CLAIM PIORITY

EPC Art. 87(1), Euro-PCT Guide 2.14
The applicant claiming the priority from a previous application must be the applicant of the latter or the successor in title to the applicant who filed the previous application. If the previous application was not filed by the applicant and the previous application or the priority right was transferred to him, the transfer (of the previous application or of the priority right) must have taken place before the filing date of the international application and must be a transfer valid under the applicable national law.

Euro-PCT Guide 2.14
If the previous application was filed by several applicants, all the applicants for the previous application must be applicants for the international application or have transferred their rights to the applicant, or (at least) one of the applicants, of the international application. It is not sufficient if only one of several applicants of the previous application is named as applicant for the international application.

Proof of entitlement to claim the priority of an earlier application must be submitted in the proceedings before the EPO (only) if the validity of the priority right claimed becomes relevant. However, in order to enjoy in proceedings before the EPO a priority right as successor in title a transfer of the previous application or of the priority right must have taken place before the filing date of the international application. Any deficiencies cannot be remedied in the national phase before the EPO. Thus, applicants claiming the priority of a previous application and planning to enter the national phase before the EPO are strongly advised to ensure that on the international filing date all applicants of the previous application are either designated as applicants for the international application or have validly transferred their rights to the applicant, or (at least) one of the applicants, of the international application.

EP.30 LACK OF UNITY

EPC Art. 82, EPC Rule 164, OJ EPO 2014-A70, Euro-PCT Guide 5.15
If upon expiry of the time limit set in the communication under EPC Rules 161 and 162 for filing amendments, the documents that serve as the basis for the supplementary European search or for examination contain claims relating to an invention that was not searched by the EPO, and the application documents do not meet the requirement of unity of invention, the procedure under EPC Rule 164 applies (refer to OJ EPO 2014-A70).

The EPO did not act as (S)ISA:

— In this case the EPO draws up a partial supplementary European search report on those parts of the application which relate to the invention first mentioned in the claims and informs the applicant that, for the supplementary European search report to cover the other inventions, a further search fee must be paid in respect of each invention involved, within two months.

The EPO acted as (S)ISA:

— Where the supplementary European search report is dispensed with (refer to EP.16a) and the examining division considers that in the application documents which are to serve as the basis for examination an invention is claimed which was not searched by the EPO as (S)ISA, the examining division shall inform the applicant that a search will be performed in respect of any such invention for which a search fee is paid within a period of two months.

EP.31 INCORPORATION BY REFERENCE OF CORRECT ELEMENTS OR PARTS UNDER PCT RULE 20.5bis(d)

PCT Rule 20.5bis(d), PCT Rule 20.8(b-bis), OJ EPO 2020-A81, OJ EPO 2022, A71
In the international phase, under PCT Rule 20.5bis(d), it is possible to incorporate by reference correct elements or parts into the application as originally filed without changing the international filing date, provided the requirements of PCT Rule 20.5bis(d) are fulfilled. However, where the international application was filed between 1 July 2020 and 31 October 2022 and the receiving Office has allowed the incorporation of correct elements or parts, such incorporation will not be effective before the EPO as designated or elected Office due to the incompatibility of PCT Rule 20.5bis(d) with the EPC (refer to “International Phase”, paragraph 6.027).

In such cases, applicants may inform the EPO within the 31-month time limit under EPC Rule 159(1), or at the latest before a corresponding communication is issued, on the basis of which documents they wish to pursue the Euro-PCT application:

a) on documents containing the correct elements or parts and with the filing date changed to the date of receipt of those elements or parts, or

b) on the documents as originally filed and based on the initial filing date. In such case, the correct elements or parts incorporated by reference are disregarded.

If no such information is present on entry into the European phase, the EPO will send a communication under PCT Rule 20.8(c) and Rule 82ter.1(c) and (d) to clarify the situation for the proceedings before the EPO as designated or elected Office.

For international applications filed on or after 1 November 2022, the EPO will fully apply Rule 20.5bis PCT, so that incorporations by reference allowed by the receiving Office under Rule 20.5bis(d) PCT will also be effective before the EPO as designated or elected Office.

Annexes

Annex EP.I - Fees

This list is based on the Schedule of fees and expenses of the European Patent Office. For the currently valid version of this Schedule reference is made to the Guidance for the payment of fees and expenses, in the latest issue of the OJ EPO on to the EPO’s website

Filing fee: ⁷

— for online filings

135 EUR

— for non-online filings

285 EUR

Additional fee for pages in excess of 35, for the 36^th and each subsequent page

17 EUR

Additional fee in the case of a divisional application filed in respect of any earlier application which is itself a divisional application:

— fee for a divisional application of second generation

235 EUR

— fee for a divisional application of third generation

480 EUR

— fee for a divisional application of fourth generation

715 EUR

— fee for a divisional application of fifth or any subsequent generation

955 EUR

Designation fee for one or more EPO Contracting States designated

660 EUR

Extension fee for each extension State (extension of the European patent to certain States which are not EPO Contracting States—refer to Summary)

102 EUR

Fee for validation of the European patent in:

— Cambodia: ²³

180 EUR

— Morocco: ²⁴

240 EUR

— Republic of Moldova: ²⁵

200 EUR

— Tunisia: ¹¹

180 EUR

Claims fee:

— for the 16^th and each subsequent claim up to the limit of 50

265 EUR

— for the 51^th and each subsequent claim

660 EUR

Search fee in respect of a European or supplementary European search:

— for international applications filed before 1 July 2005

1,000 EUR

— for international applications filed on or after 1 July 2005

1,460 EUR

Fee for further processing:

— in the event of late payment of a fee

50% of the relevant fee

— in the event of late performance of the acts under Rule 71(3) EPC

290 EUR

— other cases

290 EUR

Fee for late furnishing of a sequence listing

255 EUR

Examination fee:

— for international applications filed before 1 July 2005

2,055 EUR

— for international applications filed on or after 1 July 2005 for which no supplementary European search report is drawn up

2,055 EUR

— for all other international applications filed on or after 1 July 2005

1,840 EUR

Renewal fees for European patent applications: ²⁶

— for the 3^rd year counted from the international filing date

530 EUR

— for the 4^th year counted from the international filing date

660 EUR

— for the 5^th year counted from the international filing date

925 EUR

— for the 6^th year counted from the international filing date

1,180 EUR

— for the 7^th year counted from the international filing date

1,305 EUR

— for the 8^th year counted from the international filing date

1,440 EUR

— for the 9^th year counted from the international filing date

1,570 EUR

— for the 10^th and each subsequent year counted from the international filing date

1,775 EUR

Additional fee for late payment of a renewal fee

50% of the relevant fee

Fee for grant, including fee for printing the European patent specification: ²⁷

— where the application documents to be printed comprise not more than 35 pages

1,040 EUR

— where the application documents to be printed comprise more than 35 pages

1,040 EUR

— plus for the 36^th and each subsequent page

17 EUR

Fee for grant, including fee for publication of the European patent specification ²⁸

1,040 EUR

Fee for reestablishment of rights/fee for requesting restoration/fee for reinstatement of rights

720 EUR

Fee for appeal for an appeal filed: ²⁹

— by a natural person or an entity referred to in Rule 6, paragraphs 4 and 5

2,015 EUR

— by any other entity

2,925 EUR

Extract from the Rules Relating to Fees

Article 5

Payment of fees

(1) The fees due to the Office shall be paid in euro by payment or transfer to a bank account held by the Office.

(2) The President of the Office may allow other methods of paying fees than those set out in paragraph 1.

Article 6

Particulars concerning payments

(1) Every payment must indicate the name of the person making the payment and must contain the necessary particulars to enable the Office to establish immediately the purpose of the payment.

(2) If the purpose of the payment cannot immediately be established, the Office shall require the person making the payment to notify it in writing of this purpose within such period as it may specify. If he does not comply with this request in due time the payment shall be considered not to have been made.

Article 7

Date to be considered as the date on which payment is made

(1) The date on which any payment shall be considered to have been made to the Office shall be the date on which the amount of the payment or of the transfer is actually entered in a bank account held by the Office.

(2) Where the President of the Office allows, in accordance with the provisions of Article 5, paragraph 2, other methods of paying fees than those set out in Article 5, paragraph 1, he shall also lay down the date on which such payments shall be considered to have been made.

(3) Where, under the provisions of paragraphs 1 and 2, payment of a fee is not considered to have been made until after the expiry of the period in which it should have been made, it shall be considered that this period has been observed if evidence is provided to the Office that the person who made the payments fulfilled one of the following conditions in a Contracting State within the period within which the payment should have been made:

(i) he effected the payment through a banking establishment;

(ii) he duly gave an order to a banking establishment to transfer the amount of the payment

(4) The Office may request the person who made the payment to produce evidence as to the date on which a condition according to paragraph 3 was fulfilled within a period to be specified by it. If he fails to comply with this request or if the evidence is insufficient, the period for payment shall be considered not to have been observed.

Article 8

Insufficiency of the amount paid

A time limit for payment shall in principle be deemed to have been observed only if the full amount of the fee has been paid in due time. If the fee is not paid in full, the amount which has been paid shall be refunded after the period for payment has expired. The Office may, however, in so far as this is possible within the time remaining before the end of the period, give the person making the payment the opportunity to pay the amount lacking. It may also, where this is considered justified, overlook any small amounts lacking without prejudice to the rights of the person making the payment.

Article 9

Refund of search fees

(1) The search fee paid for a European or supplementary European search shall be fully refunded if the European patent application is withdrawn or refused or deemed to be withdrawn at a time when the Office has not yet begun to draw up the search report.

(2) Where the European search report is based on an earlier search report prepared by the Office on an application whose priority is claimed or an earlier application within the meaning of Article 76 of the Convention or of Rule 17 of the Convention, the Office shall refund to the applicant, in accordance with a decision of its
President, an amount which shall depend on the type of earlier search and the extent to which the Office benefits from the earlier search report when carrying out the subsequent search.

Article 11

Refund of examination fee

The examination fee shall be refunded:

(a) in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun;

(b) at a rate of 50% if the European patent application is withdrawn after substantive examination has begun and before expiry of the time limit for replying to the first invitation under Article 94, paragraph 3, of the Convention issued by the Examining Division proper or, if no such invitation has been issued by the Examining
Division, before the date of the communication under Rule 71, paragraph 3, of the Convention.

Article 14

Reduction of fees

(1) The reduction laid down in Rule 6, paragraph 3, of the Convention shall be 30% of the filing fee or examination fee.

(2) Where the European Patent Office has drawn up an international preliminary examination report, the examination fee shall be reduced by 75%. If the report was established on certain parts of the international application in accordance with Article 34, paragraph 3(c), PCT, the fee shall not be reduced if subject-matter not covered by the report is to be examined.

Extract from the Arrangements for deposit accounts which may be used for the settlement of fees or the cost of publications and other services payable to the EPO

https://www.epo.org/law-practice/legal-texts/official-journal/2022/etc/se3/p11.html

Extract from the decision of the President of the European Patent Office concerning the payment of fees by credit card ³⁰

The President of the European Patent Office, having regard to Articles 5(2) and 7(2) of the Rules relating to Fees, has decided as follows:

Article 1

Credit card as a method of fee payment

Fees due to the EPO may be paid by credit card under the conditions set forth in the present decision.

Article 2

Conditions for use

Payments by credit card must be made in euro via the EPO’s credit card fee payment service, using a credit card accepted by the EPO.

Article 3

Date of payment

Payment by credit card is deemed to have been made on the date on which the transaction is approved. This date is indicated in the transaction confirmation made available to the payer.

Article 5

Entry into force

This decision enters into force on 1 December 2017.

Forms

The following documents are maintained by the Office. Refer to the Office website (Annex B) for latest version and other languages.

Annex EP.II - Entry into the European phase (EPO as designated or elected Office) (EPO Form 1200)

Annex EP.III - Designation of inventor (EPO Form 1002)

Annex EP.IV - Authorisation (EPO Form 1003)

Annex EP.V - General Authorisation (EPO Form 1004)

Notes:
¹ ^a ^bFor all international applications filed on or after 1 October 2022.
² ^a ^b ^c ^d ^e ^f ^g ^h ⁱ ^j ^k ^l ^m ⁿ ^o ^pHowever, refer to Annex B relating to that State as to the national requirements for compulsory filing with a national Office.
³ ^a ^bRefer to OJ EPO 2019, A5.
⁴ ^aIncludes international-type searches covered by an agreement between the Authority and that Office.
⁵ ^aMust be paid within 31 months from the priority date. For claims fees refer also to paragraph EP.08 of National Chapter EP.
⁶ ^aApplies to search requests in respect of national applications filed as of 1 July 2018 for the United Kingdom.
⁷ ^a ^bRefer to the Decision of the EPO’s Administrative Council dated 14 December 2022 (CA/D 16/22), OJ EPO 2023, A2.
⁸ ^aValidation of the European patent in Cambodia is only available for international applications filed on or after 1 March 2018. Refer to OJ EPO 2/2018, A16. (It should be noted that under the Law on Patents in force in Cambodia, pharmaceutical products are excluded from patent protection).
⁹ ^aValidation of the European patent in Morocco is only available for international applications filed on or after 1 March 2015. Refer to OJ EPO 2/2015, A18-A20.
¹⁰ ^aValidation of the European patent in the Republic of Moldova is only available for international applications filed on or after 1 November 2015. Refer to OJ EPO 10/2015, A85.
¹¹ ^a ^bValidation of the European patent in Tunisia is only available for international applications filed on or after 1 December 2017. Refer to OJ EPO 10/2017, A85
¹² ^a ^b ^c ^d ^e ^fThe designation, extension and validation fees are payable within 31 months from the priority date or six months after the date of publication of the international search report, whichever expires later.
¹³ ^aA request for examination must be made and the examination fee must be paid within the time limit applicable under PCT Article 22 or 39(1) and EPC Rule 159(1) or six months after the date of publication of the international search report, whichever expires later.
¹⁴ ^aThis fee is due before the expiration of the month containing the second anniversary (24 months) of the international filing date; it is due within 31 months from the priority date if that 31-month time limit expires later.
¹⁵ ^aRefer to OJ EPO 2019, A3, OJ EPO 2022, A8 and OJ EPO 2022, A29.
¹⁶ ^a ^bRefer also to paragraph EP.14 of National Chapter EP and OJ EPO 2/2014, A23.
¹⁷ ^aIf not already complied with within the time limit applicable under PCT Article 22 or 39(1) (31 months from the priority date), the Office will invite the applicant to comply with the requirement within two months. In respect of nucleotide and/or amino acid sequence listings, refer also to OJ EPO 6/2011, page 372 and OJ EPO 11/2013, page 542.
¹⁸ ^aFor information concerning amended Rule 71 and new Rule 71a EPC, refer to the Notice from the European Patent Office dated 13 December 2011, OJ EPO 2/2012, 52.
¹⁹ ^aRefer to http://www.epo.org/applying/online-services/representatives.html
²⁰ ^aApplicable as from 1 July 2010 (refer to OJ EPO 12/2009, 594).
²¹ ^aApplicable as from 1 May 2011 (refer to OJ EPO 12/2010, 634).
²² ^aRefer to OJ EPO 6/2011, 372 and OJ EPO 11/2013, 542.
²³ ^aValidation of the European patent in Cambodia is only available for international applications filed on or after 1 March 2018.
²⁴ ^aValidation of the European patent in Morocco is only available for international applications filed on or after 1 March 2015.
²⁵ ^aValidation of the European patent in the Republic of Moldova is only available for international applications filed on or after 1 November 2015.
²⁶ ^aThe obligation to pay renewal fees to the EPO ceases with the payment of the renewal fee due in respect of the year during which the grant of the European patent has been published in the European Patent Bulletin.
²⁷ ^aApplicable to international applications entering the regional phase before 1 April 2009.
²⁸ ^aApplicable to international applications entering the regional phase on or after 1 April 2009.
²⁹ ^aRefer to OJ EPO 2018, A4 and A5.
³⁰ ^aDecision of the President dated 22 August 2017 concerning the payment of fees by credit card: OJ EPO 2017, A72 and Notice from the European Patent Office dated 16 February 2022 concerning the payment of fees by credit card (OJ EPO 2022, A18).

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Useful information

International Phase

Annex B - Information on Contracting States or Intergovernmental Organization

Annex C - Receiving Office

Annex D - International Searching Authority

Annex SISA - International Searching Authority (Supplementary Search)

Annex E - International Preliminary Examining Authority

Annex L - Deposits of Microorganisms and Other Biological Material

National Phase

Summary of requirements for entry into the national phase

The procedure in the national Phase

Annexes

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