CHAPTER IX APPLICATIONS UNDER THE PATENT COOPERATION TREATY
1. General remarks
The EPO may be a "designated Office"
and an "elected Office"
for an international application made under the Patent Cooperation Treaty (PCT). That application is thereby deemed to be a European application (Euro-PCT application) for the purposes of the Convention; the third digit of the application number assigned is a "9". However, in the case of Euro-PCT applications the provisions of the PCT apply in addition to those of the Convention, and where there is conflict between them, e.g. in the case of certain time limits, the provisions of the PCT prevail. The EPO acts as a designated Office for Contracting States to the European Patent Convention in respect of which the PCT has entered into force and which are designated in the international application when the provisions of Art. 153(1), apply. The EPO is an elected Office when the conditions referred to in Art. 156 apply (for details see IX, 6.1).
»»Art. 153
»»Art. 156
»»Art. 150(3)
»»Art. 153(1)
In addition to being a designated Office, the EPO may act s a receiving Office and also as an International Searching Authority under the PCT within the terms set out in Art. 151 and 154 of the Convention. Furthermore the EPO may act as an International Preliminary Examining Authority under the terms of Art. 155. There are thus the following possibilities for a European application made under the provisions of the PCT:
»»Art. 151
»»Art. 154
»»Art. 155
(i) the filing of the application and the international search take place at an office or offices other than the EPO (e.g. the Japanese Patent Office). The EPO acts as a designated Office.
(ii) the application is filed at another office (e.g. the United Kingdom Patent Office) but the EPO performs the international search. The EPO acts as international Searching Authority and as a designated Office.
(iii) the application is filed at the EPO which also performs the international search. The EPO acts as receiving Office, International Searching Authority and designated Office.
(iv) in addition to the cases mentioned under (i) - (iii) the applicant makes a demand for international preliminary examination and elects the EPO from among the designated Offices. The EPO is the "elected Office".
(v) the EPO is the International Preliminary Examining Authority. It may carry out this function without being the receiving Office, the International Searching Authority, a designated Office or an elected Office.
In the first case the European application will be accompanied by an international search report drawn up by another office. In the second and third case the international search report will be prepared by the Search Division of the EPO. In the fourth case the international search report and the international preliminary examination report may be drawn up by the EPO or by another International Searching Authority and International Preliminary Examining Authority.
2. The EPO as a receiving Office
The EPO may act as a receiving Office when the conditions referred to in Art. 151 apply.
Where the EPO acts as a receiving Office, the provisions of Rule 104(1) and (2) will apply for the international application and its related documents. The following documents must be filed in triplicate with the EPO acting as receiving Office (Rule 104(1)): the request, the description, the claims, the abstract, the drawings. Under current practice, the other documents referred to in Rule 3.3(a)(ii) PCT, and listed on the right-hand side of Box VIII of the PCT request form (PCT/RO/101) need only be filed singly with the EPO. The President of the EPO may, however, decide that the international application and any related item be filed in fewer than three copies.
»»Rule 104(1), (2)
If an international application is filed with an authority of a Contracting State for transmittal to the EPO as the receiving Office, the Contracting State must ensure that the application reaches the EPO not later than two weeks before the end of the thirteenth month after filing or, if priority is claimed, after the date of priority.
»»Rule 104(3)
The initial processing and formal examination of international applications are carried out by the receiving Office and the International Bureau of the World Intellectual Property Organization (WIPO) in accordance with the provisions of the PCT. When the EPO is acting as a receiving Office, EPO employees will not work to these Guidelines but to the PCT Guidelines.
3. The EPO as an International Searching Authority
3.1 General Remarks
If the EPO acts as an International Searching Authority under the terms of Art. 154, it establishes the international search report in accordance with the PCT Search Guidelines (see PCT-Gazette S-06/1998 of 8 October 1998) and transmits it to the International Bureau (see Art. 16(1) and 18 of the PCT).
A copy of the international search report is also sent to the applicant who may, as a result, file with the International Bureau amended claims, and may also file a brief statement explaining the amendments and indicating their likely effect on the description and drawings (see IX, 4.7).
3.2 Review of the objection to lack of unity under Rule 40.2(c) - (e) PCT
The allegation of lack of unity can be contested by the applicant by paying the additional search fees under protest. A review panel will review the justification of the invitation to pay additional fees. If the review panel considers the protest entirely justified, the additional search fees are refunded and the search is carried out on all inventions.
If the review panel considers the protest unjustified, it informs the applicant of its reasons and invites him to pay a protest fee within a time limit of one month if the question of unity is to be referred to the Board of Appeal.
If the review panel considers the protest justified only in part, the corresponding search fees are refunded, the applicant is informed of the reasons and is invited to pay a protest fee (see above) if he wishes the question referred to the Board of Appeal, to the extent it was not allowed.
If the protest fee is not paid in due time, the protest is considered withdrawn. If the protest fee is paid in due time, the Board of Appeal will examine the question and may find that:
- the protest was entirely justified, in which case the additional search fees and the protest fee are refunded,
- the protest was justified only in part, in which case the corresponding search fees are refunded,
- the protest was unjustified, (see Decision of the President of the EPO, OJ 9/1992, 547).
4. The EPO as a designated Office
4.1 General remark
With regard to deadlines and procedural steps before the EPO as a designated Office, see Information for PCT applicants in Supplement No. 1 to OJ 12/1992 and OJ 1-2/1994, 131. For applications concerning nucleotide and amino acid sequences, see A-VII, 4.2 and Supplement No. 2 to OJ 11/1998.
4.2 Communication to the EPO as a designated Office
A copy of the application together with the international search report or a declaration in accordance with Art. 17(2)(a) of the PCT is communicated, by the International Bureau in accordance with Art. 20(1)(a) of the PCT to the EPO as a designated Office. Furthermore, the EPO does not require the furnishing by the applicant of a copy of the international application (Rule 49.1(a bis) PCT). The designated Offices then deal with it in accordance with their respective patent laws (e.g. the EPO will examine the application for compliance with the requirements of the Convention, see particularly A-VII).
4.3 Publication of the translation of the international application
Publication of the application by the International Bureau takes the place of publication by the EPO, with the proviso that, if the language of the application is not one of the official languages of the EPO, then within 21 months of the priority date, the EPO must, according to PCT Art. 22(1) and Rule 104b(1)(a) EPC, be supplied by the applicant with a translation in one of those languages, which it must publish. Even if the International Searching Authority has made a declaration that no international search report will be established, the applicant must provide the EPO with a translation within 21 months from the priority date. If the translated application, together with the appropriate fee, is not supplied, the application is to be deemed withdrawn (Art. 24(1) PCT). Also, in this case, the application which has been published under the PCT is not considered as comprised in the state of the art in accordance with Art. 54(3) (see C-IV, 6).
»»Art. 158(1)
»»Art. 158(2)
4.4 Supplementary European search report
When the application, in one of the official languages of the EPO, and the international search report have been communicated to the EPO, and the fees have been paid, the Search Division will prepare a supplementary search report, except where the Administrative Council has decided otherwise. Hence the application will reach the Examining Division containing either one or two search reports, which must be taken into consideration during the examination.
»»Art. 157(2)(b)
»»Art. 157(2)(a)
4.5 Delaying of the procedure before the EPO
When acting as a designated Office, the EPO must not process or examine an international application prior to the expiry of the period applicable under PCT Art. 22 (PCT Art. 23(1)). However, the EPO may, on the express request of the applicant, process or examine an international application at any time (PCT Art. 23(2)).
4.6 Review by the EPO as a designated Office
The EPO may decide, in accordance with PCT Art. 25, to allow an international application deemed to be withdrawn, or not accorded a filing date, to proceed as a European application. The Examining Division is competent to take decisions in relation to these applications and the Receiving Section transfers copies of any documents received from the International Bureau under the circumstances of PCT Art. 25(1)(a) to the Examining Division. Where it is decided that the application can proceed as a European application then the examination is carried out as for other applications although the application may be accorded the date it was originally filed with the PCT receiving Office and may claim the priority date, if any, of the international application.
»»Art. 153(2)
4.7 Examination and processing
If amended claims were filed (see IX, 3.1) on an international application before its transmission to the EPO these should be considered together with any accompanying explanatory statement, in the same way as for other amendments filed prior to the examiner's first communication with the applicant (see C-VI, 3).
In all other respects the substantive examination should be carried out as for any other European application.
4.8 Inspection of files
The EPO as designated Office allows inspection of files relating to international applications after international publication by the International Bureau, even if these have not entered into the regional phase before the EPO, see IX, 4.1. The same applies mutatis mutandis to the communication of information from the files.
5. The EPO as an International
Preliminary Examining Authority
5.1 General remarks
The EPO may act as an International Preliminary Examining Authority under the terms of Art. 155.
»»Art. 155(1), (2)
When the EPO acts as an International Preliminary Examining Authority, the provisions of the PCT Guidelines for International Preliminary Examination (see PCT-Gazette S-07/1998 of 29 October 1998) will apply for the examination procedure. The international preliminary examination is carried out by a single examiner.
The international preliminary examination has for its objective according to Art. 33(1) PCT to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step, and to be industrially applicable. With respect to these three criteria substantially the same requirements apply as according to the European Patent Convention (compare Art. 33(2), (3) and (4) PCT with Art. 54(1), 56 and 57 EPC).
Essential differences exist, however, between the procedures of the international preliminary examination and the examination of European patent applications:
(i) The international preliminary examination does not lead up to the grant of a patent or refusal of the application.
(ii) For the international preliminary examination the time limits set in Rule 69 PCT are to be met.
(iii) The procedure followed in cases of lack of unity of invention.
In nearly all cases the examiner will issue a first written opinion according to Rule 66.2 PCT, to which the applicant may submit a formal response (Rule 66.3 PCT) directly to the International Preliminary Examining Authority. Also informal communications with the applicant (telephone call or personal interview) are possible according to Rule 66.6 PCT. In any case the international preliminary examination report (Art. 35 PCT) will be established within the prescribed time limit and in the form prescribed in Rule 70 PCT. One copy each of the international preliminary examination report and its annexes, if any, will be transmitted, on the same day, to the International Bureau and to the applicant (Rule 71.1 PCT).
5.2 Review of the objection to lack of unity under Rule 68.3(c) - (e) PCT
The allegation of lack of unity can be contested by the applicant by paying the additional examination fees under protest. A review panel will review the justification of the invitation to pay additional fees. If the review panel considers the protest entirely justified, the additional examination fees are refunded and the examination is carried out on all inventions.
If the review panel considers the protest unjustified, it informs the applicant of its reasons and invites him to pay a protest fee within a time limit of one month if the question of unity is to be referred to the Board of Appeal.
If the review panel considers the protest justified only in part, the corresponding examination fees are refunded, the applicant is informed of the reasons and is invited to pay a protest fee (see above) if he wishes the question referred to the Board of Appeal, to the extent it was not allowed.
If the protest fee is not paid in due time, the protest is considered withdrawn. If the protest fee is paid in due time, the Board of Appeal will examine the question and may find that:
- the protest was entirely justified, in which case the additional examination fees and the protest fee are refunded,
- the protest was justified only in part, in which case the corresponding examination fees are refunded,
- the protest was unjustified, (see Decision of the President of the EPO, OJ 9/1992, 547).
Where additional search fees have been paid under protest (see IX, 3.2) in response to an invitation of the EPO as International Searching Authority, the question will usually have been treated by the review panel. If after review a protest fee has been paid and the matter has already been treated by the Board of Appeal and the Board has decided on the substantive issue, the substantive examiner should generally follow the Decision of the Board of Appeal, insofar the facts are the same. If the Decision of the Board of Appeal is not yet available or only relates to formal issues, the examiner should generally follow the opinion of the review panel (when the facts are still the same) and ask, when applicable, for additional examination fees. A refund of these can be given, when the review panel in examination considers the protest (partly) justified (see above). If in the meantime the Decision of the Board of Appeal becomes available
and is in favour of the applicant on the substantive issue, the review panel should take this into consideration.
5.3 Documents forming the basis for the International Preliminary Examination Report (IPER)
Comparative tests not forming part of the international application as filed, but having been submitted as further evidence in the course of the International Preliminary Examination, are considered confidential information and are therefore not published. These tests should neither be annexed to nor, except with the prior consent of the applicant, extensively referred to in the IPER. The examiner should make a clear reference in the IPER to the fact that comparative test results had been submitted during the International Preliminary Examination, without giving details of those results, to put the elected Offices on notice with respect to those results.
6. The EPO as an elected Office
6.1 Introductory remark
With regard to deadlines and procedural steps before the EPO as an elected Office, see Information for PCT applicants in Supplement No. 1 to OJ 12/1992 and OJ 1-2/1994, 133. For applications concerning nucleotide or amino acid sequences, see A-VII, 4.2 and Supplement No. 2 to OJ 11/1998.
6.1a General remarks
The EPO will act as an elected Office if the applicant has made a demand for international preliminary examination and has elected at least one Contracting State of the European Patent Convention which is designated in the international application, bound by Chapter II PCT and for which a European patent is sought. An international preliminary examination report will be drawn up on the basis of the demand by an International Preliminary Examining Authority (e.g. the EPO in accordance with IX, 5). Election of the EPO means that the applicant intends to use the results of the international preliminary examination report in proceedings before the EPO (see Art. 31(4)(a) PCT).
»»Art. 156
6.2 Opening of the regional phase and of substantive examination
The EPO will be notified of its election by the International Bureau (WIPO) (Art. 31(7), Rule 61.2(a) PCT). If such a notification is in the file and an EPC Contracting State has been elected before expiry of the 19th month from the earliest priority date, the European substantive examination must not normally begin before expiry of the 31st month from the earliest priority date (Art. 40(1) PCT). The only circumstance in which examination may begin earlier is if the applicant has expressly so requested (Art. 40(2) PCT).
6.3 The international preliminary examination report (IPER)
The international preliminary examination report constitutes a preliminary, non-binding opinion on whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable (Art. 33(1) PCT). The opinion is formulated on the basis of the documents referred to in the report. These documents may be the following, in particular:
(i) the text of the application as filed with the receiving Office or, if appropriate, the published translation thereof (Art. 21 PCT);
(ii) the text of the application as filed with the receiving Office, taking into consideration any amendments made pursuant to Art. 19 PCT to the claims or, if appropriate, the published translation thereof (Art. 21 PCT);
(iii) the text of the application referred to in (i) or (ii), taking into consideration the documents (description, claims and drawings; see Art. 34(2)(b) and (3)(b) and Rules 66 and 68.2 PCT) attached in annex to the international preliminary examination report.
6.4 Substantive examination of a Euro-PCT application accompanied by an international preliminary examination report (IPER)
The substantive examination is conducted in the same way as with European applications for which the EPO is a designated Office (see IX, 4). Where the EPO was the International Preliminary Examining Authority, the international preliminary examination will normally have been carried out by the examiner responsible for examining the related Euro-PCT application.
The application to be examined will be accompanied by an international preliminary examination report drawn up in one of the official languages of the EPO. New documents in the original language may be attached in annex to the report (Art. 36(3)(a) PCT and Rule 70.16). The application will also be accompanied by a translation of the annexes, transmitted by the applicant, in the same language into which the international preliminary examination report was translated (Art. 36(3)(b) PCT).
»»Art. 14(1)
The examination must be conducted in accordance with Art. 41 and 42 PCT, which stipulate that:
(i) the applicant must be given the opportunity to amend the claims, the description, and the drawings within a time limit prescribed pursuant to Rule 78.1(b) or 78.2 PCT, and
(ii) the EPO cannot require that the applicant furnish copies, or information on the contents, of any papers connected with the examination relating to the same application in any other elected Office.
6.4.1 Comparative test results
Where the EPO has established the IPER and therein refers to the submission of test reports (see IX, 5.4), the applicant is taken to agree to the use of these reports as the basis of proceedings before the EPO when he uses the standard form for entry into the regional phase before the EPO as elected Office. If the latter is not used or the IPER - referring to the test reports - was established by another International Preliminary Examination Authority, the applicant is invited to submit these reports for the European application.
6.4.2 Documents forming the basis for substantive examination
Normally, the documents which are indicated in the international preliminary examination report as forming the basis for that report will also form the basis for the substantive examination in the EPO as an elected Office in the regional phase. New documents (claims, description, drawings) submitted during the international preliminary examination and replacing the earlier filed documents will be attached to the international preliminary examination report. If the documents attached to the international preliminary examination report are in a language other than the language of the proceedings of the European application in the regional phase, the applicant must be requested to file the documents in the language of the proceedings within a fixed period.
The applicant may also request that the examination be based on the documents in the international application as published or on amendments made on entry into the regional phase. If the declarations of the applicant are unclear in this respect, the examiner will have to clarify the situation.
6.4.3 Consideration of the contents of the international preliminary examination report during substantive examination
If the international preliminary examination report has been drawn up by the EPO, that report is to be regarded as an opinion for purposes of examination and generally the first communication will only refer to the opinion expressed in the IPER. Such an opinion may be departed from if new facts relevant to assessing patentability are in evidence (e.g. if further documents have been cited, as might happen in a supplementary European search report, or if evidence is produced of unexpected effects) or where the substantive patentability requirements under the PCT and EPC are different.
Examination reports drawn up by other International Preliminary Examining Authorities must be examined carefully. If the reasons put forward in the international preliminary examination report are sound, they must not be disregarded.
6.5 Inspection of files
Files held by the EPO in its capacity as International Preliminary Examination Authority are accessible to the applicant or any person authorized by him and, once the international preliminary examination report has been drawn up, to the elected offices.
»»Rule 94.2 PCT
In its capacity as elected office the EPO also allows access to its files pertaining to the international phase of applications filed on or after 1 July 1998, provided that international publication has taken place and that at least one of the acts listed in Rule 104b(1) EPC for entry into the regional phase has been performed. The above applies mutatis mutandis to the communication of information from the files.
»»Rule 94.3 PCT
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