European patent applications at the end of the PCT phase

International clients often use the Patent Cooperation Treaty, PCT, for expanding patent protection to Europe. The European Patent Convention is drafted with a view to such international applications, refers to them as Euro-PCT applications (see Part X of the EPC) – Link https://www.epo.org/en/legal/epc/2020/apx.html

Required documents

We do not require many documents: The application can typically rely on the international “WO” publication. If amendments were made during the Chapter II PCT stage, we require the documents on which the International Preliminary Examination Report is based. If you wish to enter the European regional phase without amendments made during the PCT, that can also be indicated. Additionally, we appreciate a copy of the search results from the USPTO but can obtain it later if necessary.

Timing and Remedies

The European Patent Office grants a 31-month time limit for entering the regional phase. For both Chapter I (under Art. 22 PCT) and Chapter II (under Article 39(1) PCT) applications, you have the full 31 months.

In fact, were the 31-month deadline has been missed for a PCT application that has been notified to the European Patent Office by WIPO a late entry into the European Regional Phase is normally feasible. Art 121 EPC allows for a “further processing” procedure. This is associated with surcharges on the normal fees. However, further processing is always available. WIPO notifies the European Patent Office of international applications and the European Patent Office issues a communication under Rule 112(1) noting the loss of rights, where the regional phase entry has not been made within 31-month. The notification of this communication to the Applicant sets a 2-month period for requesting further processing.

As a further remedy re-establishment of rights can be considered also in respect of the 31-month period. A successful request for re-establishment of rights will need to lay out that all due care has been taken for a timely entry of the regional European phase.

Costs

At the European Patent Office, the end of the international phase incurs the usual fees, including the filing fee, search fee, examination fee, designation fee, and the 3rd-year renewal fee, totaling approximately €4,500. Refunds for the search fee may apply if the EPO conducted the international search. However, this does not apply to searches from China, Japan, the USA, or other countries, provided by the CNIPA, JPO, USPTO, etc., respectively. Additional claim fees may be due for claim sets exceeding 15 claims, with fees starting from €265 per claim after the 15th claim and escalating to €660 per claim after the 50th claim. Redrafting a long claim set can be beneficial, and multiple claim dependencies are allowed without extra charges.

(To note – some US applicants opt for the EPO as international search authority, which is possible under the PCT. We are happy to advice on pros and cons.)

Accelerated Procedure

The EPO offers an accelerated prosecution programme, known as the PACE programme. Remarkably, it is not associated with increased fees. Nonetheless, we normally see a noticeably accelerated procedure. If you plan to use PACE, you should consider to select the EPO as international search authority. Of course, the PACE programme is also available for applications, for which the other patent offices such as the CNIPA, JPO, or USPTO have acted as international search authority. A request for accelerated procedure can also be made before the end of the international phase. However, PACE requests filed before the 31-month period will not be effective unless they are accompanied by an express request for early processing under Article 23(2) or 40(2) PCT.

Short path to an enforceable right

As a German patent attorney Dr. Borbach can also represent you before the German Patent and Trademark office.