How we handle Euro-PCT Applications

ACTUAL FILING

We make the request online, complete bibliographic information and identify ourselves as representative. We normally pay the fees by electronic transfer.

The authorisation of representative in our favour is filed electronically. However, we do ask for one to be signed – see Downloads.

OUR FILE

We maintain a hard copy for easy access to the application’s specification, objections, responses and citations.

CLAIM AMENDMENT

Within the service fee for filing the application, we review the PCT claims as amended in the International phase and advise if any amendments appear appropriate. In particular if there are more than 15 claims, the excess claims fees are such that it is usually sensible to revise the claims to reduce their number. If this can be done very simply we will make no specific charge for this. We would not normally expect to attend to simple specification amendments, without additional fees. If the amount of work that seems prudent is extensive, we will advise.

Apart from there being more than 15 claims, sets of claims drafted in accordance with US practice often have multiple independent claims. The EPO will allow claims linked by the same inventive concept, such as a transmitter and a receiver, they are liable to object to the same invention claimed in more than one independent claim of the same type (apparatus, method). If the amount of work that seems prudent is extensive, we will advise.

Should the EPO have issued a Written Opinion / Preliminary Examination Report, they will in due course issue a communication under rule 161. It is more sensible to amend the claims to take account of objections in a Written Opinion / Preliminary Examination Report, if appropriate. Again, if the amount of work that seems prudent is extensive, we will advise.

RENEWAL FEES

It can happen that if priority is not claimed, renewal is due on entry into the regional phase. We will pay this fee with the other fees due.

If priority is claimed, we will enter the case in our records for renewal on the 3rd anniversary of the PCT application date in the normal way.

REPORTING AND CHARGING

We report and charge all applications off a central records system to ensure that bibliographic data is fully recorded and reported.

The records system handles renewals, both payable the EPO prior to grant and national patent offices after grant.

PAYMENT ON ACCOUNT

We are grateful to receive payment on account of heavy EPO fees and our fee structure takes account of payments on account received.

EXAMINATION AND PROSECUTION

We will report examination objections in the normal way, asking for detailed instructions if the objection is complex. If it is simple, we may be able to suggest amendments.