The clerical requirements for filing at the EPO are simple and can largely be met electronically:
- A request for examination by the EPO,
- Payment of the EPO examination fee, and
- Appointment of a representative.
The International Bureau of World Intellectual Property Organisation (WIPO) will have already provided the EPO with the specification in the form of the PCT published pamphlet. This can be monitored by noting receipt of notifications under Rules 47(1(c) and 61(3).
The authorisation of representative can be filed electronically.
There is no absolute requirement for the following, but the EPO asks for the specifications for EP applications to:
- Refer to at least the most relevant prior art, in particular the closest prior art where the claim is in two part form;
- Drafting of Claim 1 to be in two part form with the closest prior art in the preamble and the inventive feature(s), often solving a problem of the prior art, in the “characterised” part of the claim;
- Incorporation of reference numerals in Claim 1;
- Whilst more claims are permitted by payment of excess claims fees, restriction to 15 claims if the fees are to be avoided.
The EPO is adverse to multiple independent claims, although claims linked by a single inventive concept, e.g. transmitter and receiver, are allowable. Amendment on this account is often prudent as part of the reduction to 15.
EPO NOT THE ISA
If the International Search Report was not prepared by the EPO, a supplemental search fee is required. This may be reduced by 20% where the International Search was made by the Patent Office of one of the major Pacific Rim countries.
Because of the risk of more relevant prior art – or at least a suggestion by the EPO that a different piece is the most relevant – I am reluctant to make more than the minimum of amendments on entry in the Euro-PCT phase.
FULL EPO REQUIREMENTS
A full statement of the requirements on entry into the Euro-PCT phase is available in the PCT Applicants Guide at: http://www.wipo.int/pct/guide/en/gdvol2/annexes/ep.pdf.
DEADLINE FOR ENTRY INTO EURO-PCT REGIONAL PHASE
Counting from the PCT priority date, not the application date, the actual deadline is 31 months, by which time:
- The examination must have been requested, in practice via the regional phase entry form, and
- The request for examination and other fees must have been paid to the EPO.
In practice a week’s notice of instruction before the 31 month deadline is desirable.
In exceptional cases, the 31 month deadline can be extended, because the EPO regards the application as already existing before it when the PCT application was filed. However, the surcharge for late payment is heavy – 50%.