Guide for Applicants - Part 2:How to get a European patent

Guide for Applicants - Part 2
How to get a European patent

D / E

How to get a European patent

A. General overview

B. The EPO as a PCT receiving Office

C. The EPO as an International Searching Authority

D. The EPO as an International Preliminary Examining Authority

E. Euro-PCT procedure before the EPO as a designated or elected Office

Annexes

A. General overview

Introduction

Relationship to other sources of information

Relationship PCT - EPC

The role of the EPO in the international phase

Euro-PCT application

The role of the EPO in the European phase

Contracting states to the PCT and the EPC

Representation in the international phase

B. The EPO as a PCT receiving Office

Where may an international application be filed?

How and where to file if the EPO is receiving Office

Filing direct or by post

Fax filing

Filing further documents

Acknowledgement of receipt

E-filing

Online filing

Filing on a physical medium

PCT-EASY filing

Divisional applications

The PCT request

Who may file with the EPO as receiving Office?

Designation of inventor

Agent or common representative

How to appoint an agent

Waiver

Appointment of agent for European phase with the EPO as receiving Office

For which states may international applications be filed?

Non-designation

Extension

Priority claim

The International Searching Authority (ISA)

Documents to be filed with the EPO acting as a receiving Office

Applications in the field of biotechnology

Signature

Language of the international application

Fees

Amounts of fees

Reductions

Late payment of fees

C. The EPO as an International Searching Authority (ISA) - PCT Chapter I

I. General

Competence of the EPO as an ISA

Specification by the receiving Office

Limited competence

Choice of ISA and consequences

Translation

Application filed in Dutch

Partnership between the EPO, the Spanish Patent and Trademark Office (OEPM) and the Swedish Patent and...

Representation before the EPO as ISA

Reduction of the search fee

Refunding of the search fee

II. The procedure before the EPO as ISA

General

Establishing the ISR and WO-ISA

The ISR

International publication

The WO-ISA

Access to the WO-ISA

Amendments and informal comments

IPRP Chapter I

When may the EPO refuse to conduct a (full) search?

Business methods

Complex applications

Partial search

Nucleotide and amino acid sequences

Lack of unity of invention

No payment of additional fee(s)

Protest

Protest procedure

D. The EPO as an International Preliminary Examining Authority (IPEA) - PCT Chapter II

I. General

Aim of the international preliminary examination

Usefulness of PCT Chapter II

Competence of the EPO as an IPEA

Specification by the receiving Office

EPO was ISA

Choice of applicant

Limited competence

Who may file a demand for international preliminary examination with the EPO?

How and where is the demand for international preliminary examination by the EPO filed?

When should the demand for international preliminary examination be filed with the EPO?

Delaying of national phase until 30 months

Translation of the international application

Applications filed in Dutch

Language of the demand

Representation

Which states may be elected?

Signature

Fees

Fee reductions

Consequences of non- or late payment of fees

Refund of the fee for international preliminary examination

Defects in the demand and how they can be corrected

II. The international preliminary examination procedure before the EPO as an IPEA

Which documents form the basis of the international preliminary examination? - Amendments

Further steps in the procedure - first written opinion

First case: The EPO acted as ISA and made no objections

Second case: The EPO acted as ISA and made objections

Third case: The EPO did not act as ISA and the EPO as IPEA has no objections

Fourth case: The EPO did not act as ISA and the EPO as IPEA has objections

Time limit for reply to the written opinion

Refusal to perform preliminary examination

Contacts between applicants and the EPO during the procedure

Rationalised procedure

Nucleotide and amino acid sequences

Unity of invention

What must be done after receipt of IPRP Chapter II?

Confidentiality of the international preliminary examination

E. Euro-PCT procedure before the EPO as a designated (PCT Chapter I) or elected (PCT Chapter II)...

I. General

When is the EPO a designated or elected Office?

Time limit for entry into the European phase

When can the EPO act as designated Office?

When can the EPO act as elected Office?

When must the applicant decide on the scope of protection of the European patent?

When must the European phase be initiated before the EPO as designated or elected Office?

Early entry into the European phase

Accelerated prosecution of applications - the PACE programme

II. What must the applicant do to initiate the European phase?

Minimum requirements

Amounts of fees to be paid in the European phase

Language of the proceedings in the European phase

How and where should the applicant initiate the procedure before the EPO as a designated/elected Office...

Representation - Requirements specific to applicants with neither residence nor place of business in an EPC...

How to appoint a representative - Authorisation

Which version of the Euro-PCT application is taken as the basis for the procedure before the EPO as a...

Amending the application before the EPO as designated or elected Office

Amendments and claims fees

When must the applicant file a translation of the Euro-PCT application (Form 1200, Section 7)?

What are the legal consequences of not filing a translation?

What the translation must include

Biological material (Form 1200, Section 8)

Nucleotide and amino acid sequences (Form 1200, Section 9)

Which fees must the applicant pay to the EPO?

National basic fee

Non-observance of the time limit for payment of the national basic fee

Designations and designation fees (Form 1200, Section 10)

Payment of designation fees

Time limit for payment of designation fees

Non-observance of the time limit for payment of designation fees

Extension and extension fees (Form 1200, Section 11)

Non-observance of the time limit for payment of extension fees

Supplementary European search

No supplementary European search is performed

A supplementary European search is performed

Information on supplementary European search

Search fee for supplementary European search

Reduction of the search fee

Non-observance of the time limit for payment of the search fee

Claims fee

Non-observance of the time limit for payment of the claims fee

How to file the request for examination (Form 1200, Section 4)

When must the request for examination be filed? When must the examination fee be paid?

Result of supplementary search and refund of examination fee

Reduction of the examination fee

Reduction if IPER was issued by the EPO

Non-observance of the time limit for filing the request for examination and for payment of the examination...

Renewal fees

III. Filing of other documents

Designation of inventor

Non-observance of the requirement to file the designation of inventor

Certificate of exhibition

Claims for priority and priority documents

Filing of translation or declaration

Non-observance of the requirement to file the translation or declaration

IV. Review by the EPO as designated Office of Euro-PCT applications which fail in the international...

V. Lack of unity

VI. Publication of the Euro-PCT application by the EPO

VII. Divisional applications

ANNEX I Terms and abbreviations

ANNEX II The international and European phases of a PCT application

ANNEX III Timeline for international applications

ANNEX IV Filing offices of the EPO (OJ 2005, 44 ff)

ANNEX V Form PCT/RO/101 Request and Notes

ANNEX VI Form PCT/RO/101 Fee Calculation Sheet and Notes

ANNEX VII EPO Form 1003 Authorisation

ANNEX VIII Form PCT/IPEA/401 Demand and Notes

ANNEX IX Form PCT/IPEA/401 Fee Calculation Sheet and Notes

ANNEX X Form for entry into the European phase (EPO Form 1200) and Notes

ANNEX XI EPO Form 1010 Payment of fees and costs