EPO (General)

Question 1

What conditions must a PCT(EP) fulfil for it to qualify as Article 54(3) prior art?

EPO

Answer 1

The filing fee must be paid and, if necessary, a translation of the application must be filed.

[NB the EP filing fee must be paid whether it’s an EP direct filing or a PCT(EP).]

Question 2

What are the rules on filing in non-official languages?

EPO

Answer 2

You can file an application in any language, but a translation must be filed within two months. If not done, the EPO will invite you to file within a further two months. No further processing available.

The translation can be amended to bring it into conformity with the specification as filed throughout prosecution.

Question 3

What is the language of proceedings and why is it important?

EPO

Answer 3

The official language of the specification as filed at the EPO or of the submitted translation specifies the language of proceedings.

All claim amendments must be made in that language. Written proceedings can be in any language, however.

Question 4

Explain how it is possible to file something at the EPO not in an official language.

EPO

Answer 4

If the applicant is from a contracting state with a language other than English, French or German (e.g., Spain), anything that must be filed by a deadline can be filed in the language of that state (e.g., Spanish). A translation must then be filed within a month. This is effectively allowing the applicant extra time because they need a translation of everything they do.

NB an applicant actively making use of this rule (so an applicant who has actually filed something in another language) can get a fee reduction if they are an SME, a natural person, non-profit, university or public research organisation.

Question 5

What must the applicant do to file an application by reference to an earlier relevant application?

EPO

Answer 5

He must provide the date, country and application number of the other application, and he must indicate that the other application takes the place of the specification in his filing.

Certified copies of the other application and a translation if necessary must be filed within 2 months. If not done, the EPO will invite him to file within a further two months.

Question 6

When must claims be filed?

EPO

Answer 6

If no claims are present on filing, the EPO will invite the applicant to file them within two months.

Question 7

What are the two tiers of claim fees?

EPO

Answer 7

Lower fee for claims 16-50. Higher fee for claims 51+.

Question 8

When must excess claim fees be paid?

EPO

Answer 8

If there are more than 15 claims on filing, you will have to pay the claim fees within 1 month of filing. If not done, the EPO will notify you and give one more month from the notice. If not paid by this final deadline, the excess claims are deemed abandoned. No further processing.

If there are more than 15 claims on grant, any claim fees which have not been paid yet must be paid when approving the Druckexemplar. If they are not paid within this period the entire application will be deemed withdrawn. There is further processing available for the 71(3) of course, and that includes for the claim fees.

Question 9

When is the designation fee due?

EPO

Answer 9

Within 6 month of the date on which the European Patent Bulletin mentions the publication of the European search report.

If not paid on time the application is withdrawn. Further processing available.

Question 10

Name the extension and validation countries.

EPO

Answer 10

Extension: Bosnia and Herzegovina, Serbia, Latvia, Lithuania, Albania, Romania, North Macedonia, Slovenia and Croatia

Validation: Morocco, Tunisia, Moldova and Cambodia

The extension and validation fees are due at the same time as the designation fee but are optional.

Question 11

When are the filing fee and search fee due?

EPO

Answer 11

Within one month of filing. Further processing available.

Question 12

What are the excess page fees and when are they due?

EPO

Answer 12

Fees are due for pages over 35, and are technically classed as part of the filing fee.

If the application is filed without claims or by reference to a previously filed application, the additional fee is payable within one month of filing the first set of claims or one month of filing the certified copy of the application, whichever expires later. Otherwise, they are due within one month of filing.

NB for applications filed by reference, the earlier relevant application is used to count the pages of the description.

Further processing available.

Question 13

What are the divisional fees and when are they due?

EPO

Answer 13

Within one month of filing the divisional. Further processing available. The fee technically forms part of the filing fee for the divisional.

The fee increases in regular intervals between the 2nd generation and 5th generation. The fee for the 6th generation onwards is the same as for the 5th generation.

[NB the other fees all have the same deadlines. Claims may also be filed two months after filing, just as with standard applications.]

Question 14

What are the rules for making a priority declaration?

EPO

Answer 14

The declaration of priority can be made up to 16 months from the earliest claimed priority date. Certified copies are also due within the 16 months. No further processing.

NB deadline for correcting priority applications are the same as for PCT applications: the earlier of 16 months of the old and new dates, but in no case can the deadline fall earlier than 4 months from filing.

The applicants must be the same on the priority as on the application in suite. You can add new applications but cannot take any away. If the applicants are different then the right to claim priority must be assigned from the old applicant to the new applicants.

**Old flashcard (which I believe was incorrect):

The declaration can be made up to the earlier of 16 months from priority and 4 months of filing. The declaration can only be corrected within this deadline also.

Certified copies due within 16 months, unless already available to the EPO.

The applicants must be the same on the priority as on the application in suite. You can add new applications but cannot take any away.**

Question 15

What is the designation of inventor?

EPO

Answer 15

Equivalent to UK statement of inventorship under s13(2).

Deadline is the same - 16 months from priority.

Further processing available.

Question 16

What are the rules on missing parts?

EPO

Answer 16

Equivalent to the UK.

If identified during formal examination, the applicant will be notified and allowed to correct. The application will be redated unless the missing parts are wholly contained in the priority documents and the declaration of priority was made on filing.

Question 17

When are multiple independent claims in the same category allowed?

EPO

Answer 17

If they relate to interrelated products; different uses of a product; or alternative solutions to a problem, where it is not appropriate to cover these alternatives in a single claim.

Question 18

Explain what happens if the search division finds a lack of unity or unallowable multiple independent claims in the same category?

EPO

Answer 18

For unity, they will write a partial search report which searches the first invention only. The applicant will have to pay an additional search fee for each further invention he wants searched within 2 months. Unsearched matter will have to be deleted from the application during examination.

For unallowable multiple independent claims in the same category, the search division will invite the applicant to indicate within 2 months the claims to be searched. In the absence of a reply, the search division will search the first independent claim in each category. Unsearched matter will have to be deleted from the application during examination.

Question 19

What happens if the search division feels that they cannot conduct a meaningful search of the full subject matter?

EPO

Answer 19

They will invite the applicant to indicate within 2 months the subject matter to be searched. In the absence of a reply, or if the reply is not helpful, the search division will perform a partial search if possible or issue a declaration explaining why no search was possible.

Unsearched matter will have to be deleted from the application during examination.

Question 20

How long before publication are technical preparations usually completed?

EPO

Answer 20

5 weeks.

Question 21

When can the application be amended?

EPO

Answer 21

No amendments before the search report. After that amendments can only be made as part of a reply, even if the amendments are unrelated to the reply.

Question 22

What are the rules for PACE?

EPO

Answer 22

No reason needed and no extra fee. The only rule is the EPO won’t let you use it on all or almost all your applications and abuse the system.

It has to be requested once during search and once during examination. It can only be requested for each once the respective division has taken responsibility for the application.

If any deadlines are extended or missed then the application is removed from PACE and goes to the back of the standard search/examination queue, and PACE cannot be requested again.

The search report will be issued within 6 months of the (search) PACE request. The first examination report will be issued within 3 months of the (examination) PACE request, and subsequent examination reports will be issued within 3 months of the previous applicant response.

Question 23

What is the deadline for responding to an Article 71(3) communication, and how do you respond?

EPO

Answer 23

4 months - no extensions but further processing available.

To approve the Druckexemplar you need to accept the text, pay the grant and printing fee (single fee) and provide the claim translations.

NB if the renewal or designation fee is due after the 71(3) communication but before the expected mention of grant in the bulletin, these fees will need to be paid too before the application can be granted.

To disapprove the Druckexemplar you reply to the EPO requesting further amendments. The Examiner will then issue another 71(3) or a 94(3).

NB further processing is different for a 71(3). The FP fee includes a single flat fee for failure to do any of the above, regardless of whether you missed only one requirement or all of them, and then will charge an additional 50% for each claim fee you missed.

Question 24

What is the deadline for applying for a unitary patent?

EPO

Answer 24

A request for unitary effect must be filed within one month of the mention of grant in the bulletin.

Question 25

When is grant mentioned in the bulletin?

EPO

Answer 25

About 4 weeks after after the Examiner approves your 71(3) response and issues a decision to grant.

Question 26

What is the validation deadline?

EPO

Answer 26

3 months after publication of grant in the EP bulletin.

Question 27

When is the first renewal fee due?

EPO

Answer 27

2nd anniversary of filing - can be paid until the end of the calendar month. There is also a 6 month grace period with a 50% surcharge.

Question 28

How do “back renewal” fees work for divisionals?

EPO

Answer 28

All renewal fees due between the filing and initiation dates are added together and must be paid within 4 months of the initiation date. They can be paid within a further 2 months with a 50% surcharge. No further processing.

Question 29

When is the last renewal fee due?

EPO

Answer 29

In respect of the year in which grant is mentioned in the bulletin. Future fees must be paid at the national offices.

Question 30

How does the further processing fee work?

EPO

Answer 30

If the missed action was a missed fee, then the further processing fee is 50% of this fee.

Otherwise, the fee is fixed at 250 euros.

Question 31

Summarise the rules for re-establishment.

EPO

Answer 31

If a deadline was missed in spite of all due care, re-establishment can be requested within the earlier of 12 months of the missed deadline and 2 months from the applicant becoming aware of the missed deadline.

Criterion is all due care.

It is not retroactive and thus third party rights can accrue.

You cannot request re-establishment while it is possible to request further processing.

Question 32

What countries require no translation on validation?

EPO

Answer 32

UK, Germany and France.

They each have an official language which is a language of the EPO (obviously). Other countries not on spec include Switzerland, Belgium, Ireland, etc.

Question 33

What countries require a translation only of the claims if the patent is in English?

EPO

Answer 33

Norway and the Netherlands.

They have both designated English as the official language for which they only require claim translations (Norwegian for Norway and Dutch for the Netherlands).

Question 34

What countries require a full translation on validation?

EPO

Answer 34

Italy, Spain and Poland.

These countries (and some others) are not part of the London Agreement.

Question 35

How does one enter the national phase early in Europe?

EPO

Answer 35

You need to fulfil the minimum requirements but must also explicitly request early processing. If you don’t the EPO won’t start NP processing till the 31 month deadline.

Question 36

What are the minimum NP-entry requirements?

EPO

Answer 36

File a translation (if necessary) into an EPO language.

Specify the application documents on which the EP grant procedure is to be carried out.

Pay the filing fee (including an additional page fee for pages over 35).

Pay the designation (and extension and validation) fees if it has been more than 6 months since the ISR was published.

If the EPO was not the ISA, pay the search fee for a supplementary search.

Request examination and pay the examination fee if it has been more than 6 months since the ISR was published.

Pay the third year renewal fee if the calendar month containing the 2nd anniversary of filing has already passed. (Grace period is irrelevant.)

File a certificate of exhibition if necessary.

Further processing is available if these are not done. They are all requirements of NP entry so must be done on NP entry.

Question 37

What are the further NP-entry requirements?

EPO

Answer 37

The designation of inventor must be filed.

File the application number of each priority document, or a certified copy thereof.

File a copy of any search report carried out for the priority application, unless the search was carried out by the EPO, UK, US, Spain, Austria, Japan or Korea.

File any relevant sequence listing.

Provide the indications on the applicant (basic applicant information such as name, address, contact information, etc.) if not already provided during the international phase.

Appoint a professional representative.

If these are not done on filing, you will have two months from a notice to do them. If not done by this deadline, further processing is available.

Question 38

When are claim fees due for a PCT entering EP regional phase?

EPO

Answer 38

On filing or by the 6 month deadline of the R161(1, 2) / 162 communication.