3) National-regional phase entry

Question 1

What is the deadline for entry into the European phase?

Answer 1

• Series of steps required to be taken. National phase entry deadline is 31 months.

Question 2

What actions are required when entering the European phase?

Answer 2

• Actions required by 31 months deadline referred to as “minimum requirements”. If not completed, application is deemed withdrawn.
• Remedy: Applicant can use Further Processing to remedy failure
• Further actions required failure to complete by 31 month deadline does not result in application being withdrawn.
• Remedy: depends on act
• 2020 - If seeking early entry for a PCT(EP) application, must explicitly request early
processing. It is not enough to simply pay the fees, the EPO will retain the fees and pursue EP national phase processing after expiry of the 31 month period.

Question 3

What are the minimum requirements for entry into the European phase?

Answer 3

Minimum Requirements
• supply the translation
• specify the application documents on which the European grant is based
• filing fee (including an additional page fee for applications longer than 35 pages. The basic filing fee is reduced where Form 1200 is filed online)
• designation fee (and any extension fees)
• search fee if a supplementary European search report is to be drawn up
• request for examination and examination fee
• renewal fee
• certificate of exhibition (rare)

Question 4

What are the further requirements for entry into the European phase?

Answer 4

Further Requirements
•	claims fees
•	designation of the inventor
•	priority information
•	sequence listing 
•	indications on the applicant
•	professional representative 
•	copy of the results of any search

Question 5

Minimum requirements - when is the translation required?

Answer 5

• Supply the translation if the Euro-PCT application was not published in one of the EPO’s official languages (English, French, German); Art. 153(4) / R. 159(1)(a) EPC

Question 6

Describe the factors around the supplementary European search report and search fee.

Answer 6

• Pay the search fee if a supplementary European search report is to be drawn up. Note this fee is adjusted as follows:
• the supplementary search is not needed if the EPO was ISA or SISA.
• Since 1 April 2018, the supplementary search fee is no longer reduced by EUR 190 for international applications for which the ISR was drawn up exclusively by any of the following ISAs: Australia, Japan, Korea, Russia, USA, China
• the supplementary search fee is reduced by EUR 1110 for international applications for which the ISR was drawn up by a European ISA: the Austria, Finland, Spain, Sweden, Norway
Art. 153(7) / R. 159(1)(e) EPC

Question 7

When is the examination fee reduced?

Answer 7

• Reduction in examination fee:
• 30%: if filed in admissible non-EPO language R6(3) /Rfees14(1)
• 75% (as of 1 April 2018): EPO acted as IPEA in the
International Phase (unless the applicant is seeking a patent for an invention which is not the subject of that report) Rfees14(2)

Question 8

When are renewal fees due and when can they be paid?

Answer 8

• Pay the renewal fee for the third year if the period under Rule 51(1) EPC has expired earlier. Note that this deadline is dependent on the filing date not the priority date. If the renewal fee is not paid within the renewal fee grace period, reestablishment is available; R. 159(1)(g) EPC
• Since 1 April 2018, it is possible to pay the third year renewal fee up to six months before it falls due, thereby allowing it to be paid on European regional phase entry.

Question 9

What is the difference between the minimum requirements and further requirements?

Answer 9

• Besides the “minimum requirements”, the applicant may have to complete one or more of the following steps within the 31month time limit. These further requirements are not referred to as “minimum requirements” since failure to comply with them does not have the direct effect of a loss of rights.

Question 10

Further requirement - Describe the payment of claims fees.

Answer 10

• pay any claims fees due (claims fees can be validly paid up to expiry of the Rule 161/162 period described below and claims fees are due on the amended claims) – can remedy using further processing. R. 162 EPC

Question 11

Further requirement - describe filing the designation of the inventor

Answer 11

• File the designation of the inventor. If within the 31-month time limit the inventor has not been designated or certain information regarding the inventor or any applicant is missing, the EPO will invite the applicant to file the designation of the inventor or to submit the missing data within two months from the notification of a communication under Rule 163(1) or (4) EPC. If no response is given within this time, Further Processing is available. R. 163(1) EPC

Question 12

Further requirement - describe furnishing the file number of applications of which priority is claimed

Answer 12

• Furnish the file number or the copy of the application(s) of which priority is claimed. If no information is provided, the applicant will be invited to furnish that copy or number within two months from the date of a notification under Rule 163(2) EPC. 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. However,
Further Processing is available. R. 163(2) EPC

Question 13

Further requirement - describe the process for furnishing a copy of the results of any search carried out on the priority application.

Answer 13

• Furnish a copy of the results of any search carried out by or on behalf of the authority with which the priority application was filed. R.
141(1) EPC
• Not required if EPO carried out the search or if the priority application was from Austria, Japan, Korea, UK, US or Spain since 1 June 2016.

Question 14

What are the next steps after entry into the European phase?

Answer 14

• The EPO is sent the copy of the international application required under Article 22(1) or 39(1) PCT by the IB before expiry of the 31-month time limit. Therefore, the applicant should not submit a copy of the application to the EPO.
• Art. 20, 22(1),
• 39(1) PCT
• If amendments have been made under Article 19 PCT, the copy transmitted by the IB also includes these amendments and the applicant’s statement thereon.
• Art. 19(1), (2) PCT

Question 15

What are the requirements for representation?

Answer 15

• Applicants having neither their residence nor 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.5 In such cases a professional representative must be appointed in due time.
• Art. 27(7) PCT
• Art. 133(2),
• 134 EPCGL/EPO A-III, 2.1
• Two categories of professional representative have the right to practise before the EPO:
• any professional representative entered in the directory of professional representatives maintained by the EPO, and
• any legal practitioner who is qualified to practise in patent matters in one of the EPC contracting states and has his place of business in that state.
• However, up to expiry of the 31-month time limit under Rule 159 EPC, non-resident applicants may either comply with any requirement themselves or act through a professional representative entitled to practise before the EPO. This means that a non-resident applicant may himself, within the 31-month time limit, for example sign and file EPO Form 1200, submit amendments, file a translation of the application, etc.

Question 16

What are the language requirements?

Answer 16

If the Euro-PCT application was not published by the IB 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 any such language (Form 1200, Section 7). 153(4) /
R. 159(1)(a) EPC
• If a translation must be filed, the language of the translation determines the language of the proceedings before the EPO. At any time during the processing of the application in the European phase, errors made in the translation may be corrected. Art. 14(3) EPC
• If the translation of the Euro-PCT application is not filed within the time limit, the application is deemed to be withdrawn and the applicant is informed of this in a communication. Further processing is available. Moreover, the application will not be considered as comprised in the state of the art under Article 54(3) EPC.

Question 17

How can regional phase entry be delayed?

Answer 17

• If the applicant is not in a position to enter the EP Regional Phase by the 31 month deadline, it is possible to make use of Further Processing.
• This will effectively buy a further 3-5 months for entering the EP Regional Phase (taking into account the time it will take the EPO to notify the loss of rights and the two month further processing deadline).
• However, bear in mind the 50% surcharge in official fees which makes this an expensive exercise (cf Canada for example).

Question 18

When can the applicant amend?

Answer 18

• The applicant has two opportunities to amend on regional phase entry.
• The first is on national phase entry [R.159(1)(b)]. The applicant is free to file amendments.
• The second is in response to the R.161/162 communication. Shortly after entry into the European regional phase the EPO sends a communication under R. 161 (EPO was ISA) or R. 162 (EPO was not ISA). This sets a six month deadline (non-extendible) within which the application can file further voluntary amendments.
• The applicant may also be required to file (mandatory) amendments to and/or comments on the application. Whether or not a response is mandatory is clearly stated in the communication, its wording thus differing depending on the case.
• From 1 November 2014, the rules governing how unity is handled for Euro-PCT applications has changed. New R.164 gives greater opportunities to get subject matter searched.
• After expiry of the six-month time limit, there are limited further possibilities for amending the application.
• If a supplementary European search is carried out, the applicant always has one further opportunity to submit amendments upon receipt of the report.
• Amendments made thereafter require the consent of the examining division.
• Amendments may under no circumstances go beyond the disclosure in the international application as filed. 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 nonextendable time limit of one month. If the deficiency is not remedied in due time, the application will be deemed withdrawn under Article 94(4) EPC. The loss of rights can be remedied with further processing.

Question 19

What is the procedure if EPO was ISA?

Answer 19

Rule 161(1)/162 and R.164(2): EPO was ISA/SISA
• No supplemental search is drawn up.
• Rule 161(1)/162 communication issues. Sets six month time limit to amend the claims and pay excess claim fees. Within this time period, the applicant may file voluntary amendments and comments.
• In addition, if negative findings are identified during the International search and/or examination, the applicant is required under Rule 161(1) EPC to respond to this finding (“mandatory response”). Further processing is available.
• All comments and amendments validly filed by the applicant on a mandatory or voluntary basis within the time limit set in the Rule
161/162 communication will form the basis for further examination.
• In relation to unity: upon expiry of the R.161/162 period, the examiner will assess whether there are claims that were not searched by the EPO under R.164(2). If unsearched claims are identified, applicant will be given the opportunity request within two months to have any non-searched invention(s) searched on payment of a search fee or fees. The applicant can file voluntary amendments with this response.
• The searched subject matter is then the subject of examination.
• It is at the discretion of the examining division to accept any further amendment at a later stage of the proceedings. R. 137(3) EPC

Question 20

What is the procedure if the EPO was not the ISA?

Answer 20

Rule 161(2)/162 and R.164(1): EPO was not ISA/SISA
• Rule 161(1)/162 communication issues. Sets six month time limit to amend the claims and pay excess claim fees. Within this time period, the applicant may file “voluntary” amendments and comments. A response is not required.
• All amendments and comments filed within the time limit set in the communication will be taken into account in drawing up the supplementary European search report and the search opinion.
• The EPO will draw up the supplementary European search based on the last set of claims filed up to expiry of this time limit for which any claims fee due is paid.
• If lack of unity is identified, the EPO will draw up a partial supplementary search report on the invention first mentioned in the claims. The partial report will be sent to the applicant with an invitation to pay further search fees.
• Further search fees are due within two months.
• The (full) supplementary search report will then be drawn up for all inventions in respect of which search fees have been paid.
• 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 Rule 70a(2) EPC for indicating whether he wishes to proceed further with the application. R. 137(2) / 70a(2) EPC
• Secondly, if any deficiencies are noted in the search opinion, the applicant will be required under Rule 70a(2) EPC 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 Rule 70a(2) EPC (“mandatory response”). The loss of rights can be remedied with further processing. R. 135, 70a(2) EPC
• It is at the discretion of the examining division to accept any further amendment at a later stage of the proceedings. R. 137(3) EPC

Question 21

Describe the requirements associated with claim fees.

Answer 21

• Where the number of claims changes as a consequence of a (further) amendment submitted within the six-month time limit set in the Rule 161/162 communication, that number is decisive for calculating the amount of the claims fees to be paid
• If consequent to the amendments made before expiry of the sixmonth time limit the number of claims forming the basis for the further procedure is reduced, any claims fees overpaid will be refunded.
• R. 162(3) EPC
• Claims for which a fee due is not paid are deemed to be abandoned, and the applicant is notified thereof. The loss of rights may be remedied by further processing. Features of a claim deemed abandoned which are not otherwise to be found in the description cannot be reintroduced into the application.
• Art. 121 EPC; R. 135, 162(4) EPC; J 15/88; OJ 1990, 445

Question 22

What further considerations should be made when thinking about claim amendments?

Answer 22

Further considerations when thinking about claim amendments:
•Reduce to 15 or less to avoid excess claim fees
•Do the claims contain multiple inventions? Are there multiple independent claims and, if so, are they allowable under European practice? Could the claims be re-written more concisely using multiple dependencies?
•Do the claims contain subject matter that would not be patentable in Europe (e.g. method of treatment claims)?
• Were all of the claims searched during the international phase? Could dependent claims be joined together as alternative clauses to reduce the number of claims while still maintaining all of the subject matter in the claim set?
•Is the subject matter of any deleted claims in the description, and should an amendment to the description be considered?

Question 23

To enter national phase the applicant must:

Answer 23

• Provide copy of international application (this is generally provided automatically by the IB
or the contracting state waives the requirement for a copy of the application)
• Pay required national fees
• If prescribed, supply a translation of international application if the language of
filing/publication not accepted by the designated/elected office. Also must file translation of
Art 19/34 amendments if made.
• Carry out any other acts required under national law
• SEE OTHER INFORMATION PROVDED IN OVERSEAS COUNTRY DOCUMENT