PCT procedure before the EPO as receiving Office procedure... · 2017. 7. 25. · OJ 2015, A51);...

59
Rome, 18.07.2017 PCT procedure before the EPO as receiving Office Filippo Santi, European and Italian Patent Attorney, Barzanò & Zanardo Paola Giancane, Lawyer, EPO

Transcript of PCT procedure before the EPO as receiving Office procedure... · 2017. 7. 25. · OJ 2015, A51);...

Page 1: PCT procedure before the EPO as receiving Office procedure... · 2017. 7. 25. · OJ 2015, A51); since April 2017 reference may be made to PCT letter (see EPO OJ 2017, A21) « PCT

Rome, 18.07.2017

PCT procedure before the EPO

as receiving Office

Filippo Santi, European and Italian Patent Attorney, Barzanò & ZanardoPaola Giancane, Lawyer, EPO

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PCT procedure before the EPO/UIBM as receiving Office

(RO)

Choice of RO

Applicability of PCT to EPC Contracting States

PCT Direct service

Address for Correspondence (AfC)

Representation rules for non-European applicants

Means of filing and payment, use of smart cards at the EPO

Reminder: ‘mixed language applications’

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With a national Office

With the International Bureau of WIPO, or

With a regional Office

For details, see PCT Applicant’s Guide, International Phase, General

Information, Annexes B1 and B2

Where to file the international application (Rule 19 PCT)

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Choice of receiving Office

Considerations:

Accepted filing languages

Choice of International Searching Authorities

Criteria for restoration of the priority right and fee to be paid

Possibility to incorporate by reference

Limitations due to national laws

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Why filing with the EPO as receiving Office?

PCT applications filed with the EPO as RO, ISA, IPEA and DO/EO

are available in the same electronic storage system

Coherence amongst PCT and EPC procedures

Safety nets (eg. Incorporation by reference and priority rights

restoration)

Fast transmittal of

Original documents to the international bureau

Search copy to the EPO as competent authority

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Why filing with the EPO as receiving Office (RO/IT)?

Most of the advantages of the filing with the EPO

Possibility of filing in Italian language

Obligation in case of first filing (or priority < 90 days)

Presence of some limitations

Online filing still not available

Incompatibility with incorporation by reference and priority rights

restoration

6

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Conditions for the selection of RO/EP (1)

Nationality / Residence of the applicant:

The EPO is receiving office (RO) for international applications for all EPC

Contracting States receives applications from:

- nationals from EPC Contracting States, and

- residents in an EPC Contracting State (natural / legal persons)

ATTENTION: Nationality / residence of a person mentioned only as an

inventor is irrelevant for the purposes of filing an international application,

but his/her designation is required for the European phase.

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Conditions for the selection of RO/EP (2)

Multiple applicants:

at least one of the applicants has to comply with the nationality /

residence criterion

possibility to select an applicant for certain PCT Contracting States

only .... but:

ATTENTION: when a State is designated for a national and

regional patent, the applicants have to be the same for both

designations - Rule 4(5)(d) PCT

if a priority is claimed, it is enough that the applicant of the earlier

application is also (one) applicant in the subsequent PCT application

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Conditions for the selection of RO/EP (3)

The PCT does not extend to all territories of the EPC Contracting States

(ex.: Jersey, Bermuda, Cayman Islands, ...):

applicants residing on such territories must ensure that they are entitled

to file an international application with the EPO as receiving office

(criteria: nationality)

all PCT applicants wanting to benefit from protection in these territories

must first verify if this protection can be obtained thanks to a national

patent (e.g. validation of UK patent)

See OJ EPO 2014, A.33

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Conditions for the selection of RO/IT (1)

RO/IT is competent if

Language: Italian, English, German or French

At least one applicant must be national from or resident in Italy

In case RO/IT is not competent: application is forwarded to RO/IB

Date of receipt is maintained PCT Rule 19.4

The competent ISA is always the EPO, therefore:

The request must be written in English, German or French

language

If the application is written in Italian language, it must be

translated into one language chosen from English, German or

French

In case of first filing, the international application must be written

in Italian or translated into Italian

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If the international application is filed in Italian but the translation is

not filed within one month, RO/IT invites the applicant to provide it

and pay an additional fee equal to 25% of the basic fee within the

later of:

One month from the date of invitation, or

Two months from the date of receipt of the international

application at RO/IT

If the applicant does not comply, RO/IT considers the international

application as withdrawn.

The translation and payment are considered received on time if

they are received at the RO before the declaration of withdrawal

and within 15 months from the date of filing

Conditions for the selection of RO/IT (2)

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Competence RO/EP or RO/IT

Exemples

Filing with RO/EP, but none of the applicants is national from or

resident in an EPC Contracting State

(US, CN, CA etc.) RO/EP is not competent

Filing with RO/IT, but none of the applicants is national from or

resident in Italy

(US, CN, CA etc.) RO/IT is not competent

none of the applicants is national from or resident in a PCT

Contracting State

(PK, VG, AR, BO ecc.) No international application

No filing date

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Relevant for applicants filing a PCT application and claiming priority from

a 1st filing searched by EPO who are interested in a quick outcome

How? File “PCT Direct letter” with PCT application containing informal

comments on objections of earlier search opinion + possibility of showing

“track changes” → PCT Direct is free of charge

Examiner will establish ISR and WO-ISA taking into account informal

comments on the earlier search opinion

Increase likelihood of receiving positive WOISA. + 200 letters / month

Since Nov. 2014 at RO/EP; since July 2015 open to all ROs (see EPO

OJ 2015, A51); since April 2017 reference may be made to PCT letter

(see EPO OJ 2017, A21)

« PCT Direct » Service

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PCT Direct : concept

Applicant

files first

application

searched by EPO

files second

application (PCT

application)

searched by EPO

Applicant

First search

performed by

EPO within 6 m

Comments taken into

account by EPO

examiner when preparing

the second ISR & WO-ISA

WO-ISA

positive or negative

Chapter II?National /

regional phases

PCT Direct Letter

attached to 2nd filing

Second search fee

refunded by EPO

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PCT Direct: time line

1st filing searched by EPO e.g. PCT at RO/ES,

ISA/EPO

PCT 2nd filing + informal comment to WOISA on 1st filing

at any RO with ISA/EPO

0 m

< 3 m

6 m

< 12 m

EPO ISA

EPO ISR + WOISA on 1st PCT

ISR + WOISA on 2nd PCT

WOISA

positive?PCT Chap II

Entry Reg. And Nat. Phases

(with PPH?)

Euro-PCT

high priority direct grant

17 m

within +/- 1

year from

entry into EP

Phase when

expedited

NO YES

Priority

claim

30/31 m

Italian agent (possible)

European patent attorney (compulsory)

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“PCT Direct” search refunds if ISA=EPO

100 % refund where EPO

can make full use of earlier ISR

(“doublure”)

25 % refund where EPO

can make partial use of earlier ISR

Search fee: € 0

Search fee: €1.875

1st filing (EPO/ISA)

e.g. PCT Priority

2nd PCT filing

(“doublure”)

PCT

Direct

Letter

Claim

Priority

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PCT Direct RO/IT

Service available starting from 1 July 2015

Informal arguments/comments on objections of earlier search opinion

(“PCT Direct letter”) are intended for the examiner of the EPO, and must

be written in English (even if the international application is filed in

Italian)

Showing “track changes” is intended for the use of the examiner of the

EPO but is optional (language?)

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Address for Correspondence (AfC) RO/EP (1)

Previous EPO practice

Only legal persons acting without a representative could indicate

an address of correspondence which did not coincide with the

address of their place of business.

Recipient indicated for the address for correspondence must be

the applicant.

Revised practice (since November 2014)

Differentiation between international and European phase of an

application alignment of EPO’s practice on the practice of the

IB for the international phase.

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Address for Correspondence (AfC) RO/EP: current

practice (2)

In the international phase, if no representative has been appointed:

all applicants (either natural or legal persons),

can indicate as AfC an address situated in any State in the World

(not only EPC Contracting States),

even if that address is the one of a person other than the applicant.

In the European phase:

any applicant, whether a natural or legal person,

can indicate as AfC, an address located on the territory of an

EPC Contracting States

only if the address is the applicant’s address (for legal persons,

the address may include a sub-division within a firm, provided this

is not a different legal person).

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Address for correspondence (AfC) RO/EP: European

phase (3)

An address for correspondence indicated in the Euro-PCT

application for the international phase is not valid for the

European phase if:

it is located outside the territories of EPC Contracting States;

belongs to another person.

The applicant will have to indicate a new address for

correspondence fulfilling the conditions under the European phase

(Form 1200 or separate letter).

See OJ EPO 2014, A99

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Address for correspondence (AfC) RO/IT

In case of filing with the UIBM (Italian applicant and possible

agent):

If (at least) one agent is appointed, the address of the (first)

agent

If a common representative is indicated, the address of this

common representative

Otherwise the first applicant entitled to file (national from or

resident in Italy)

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Representation in case of a non-European applicant

In the case of multiple applicants only,

if one or more of the applicants is / are not domiciled in an EPC

Contracting State...

but at least one of the applicants is domiciled in an EPC Contracting

State,

the latter applicant is considered as the deemed common

representative under Rule 90(2) PCT

For the (other) non-European applicant(s), there no requirement by

RO/EP for representation by a European representative

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New means of filing with the EPO

RO-EP accepts paper filings, filings by fax, eOLF, CMS, and ...

Since November 2014 : Filing of international applications with RO/EP

directly with ePCT (WIPO).

Since November 2016: ePCT service extended to all subsequently

filed documents for RO/EP, ISA/EP et IPEA/EP.

Emergency solution (better than fax) : web-form filing on EPO website

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Means of filing with the UIBM (RO/IT) (1)

At present, the electronic filing with the UIBM of an international

application or of any other subsequent document following the filing

of an international application is not possible

An international application can be filed in paper form only

Subsequent documents following the filing of an international

application can be filed by fax

But....

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Means of filing with the UIBM (RO/IT) (2)

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Current Fee payment methods at the EPO

Bank transfers to EPO’s bank account

Fee payments to EPO bank account must be made in EUR and transferred

without charge to the EPO

Use of a deposit account held with the EPO, replenished via bank transfer:

2 possibilities of deposit account payment: debit order for individual fees, and

automatic debit order.

Electronic means of payment for EPO deposit accounts holders:

Online Filing (PCT/RO 101, PCT-SFD, PCT-Demand)

Online Fee Payment (batch payment, deposit account management)

New Online Filing – CMS, PCT-SAFE

ePCT (PCT/RO/101, SFD)

Objective: to stop paper order and accept payments by credit card.

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Current Fee payment methods at the UIBM

The transmission fee must be paid via model “F24 Versamento con

elementi identificativi”

The total amount of international fee, search fee and, if applicable,

additional fees, must be paid to WIPO bank account

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Reminder: ‘mixed language applications’

The international application must be in a prescribed language (Articles

3(4)(i) and 11(1)(ii) PCT) EN, FR or DE (only one of them)

It is a requirement for according an international filing date

The receiving Office may invite the applicant to file the required correction

(Article 11(2) PCT, Rule 26.ter PCT)

Lenient approach only possible if language neutral words (standard in the

relevant fields, e.g. IEEE defined standards)

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Restoration of the right of priority: background

The Patent Law Treaty (PLT) introduces the concept of restoration of

the right of priority in Art. 13

Since 1 April 2007, the restoration of the right of priority was

implemented in the PCT e.g. Rule 26bis.3

Incompatibility with national law:

a) To date 14 Offices acting as RO (Rule 26bis.3(j)): BE, BR, CO,

CU, CZ, DE, DZ, GR, ID, IN, IT, KR, NO, PH

b) To date 16 Offices acting as DO (Rules 49ter.1(g) and

49ter.2(h)): BR, CA, CN, CO, CU, CZ, DE, DZ, ID, IN, KR, LT,

MX, NO, PH, TR

Updated list: http://www.wipo.int/pct/en/texts/restoration.html

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Objectives

Maintain the right of priority, even if the international application

is accidentally filed after the expiration of the priority year, for a

period of up to 2 months from the 12-month time limit under Paris

Convention.

Harmonise the practices

In practice, however, there was no harmonisation of the criteria for

restoration (non-intentionality and due care)

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Decision by the RO: formal requirements(Rule 26bis.3 PCT)

International filing date within 2 months from the date on which

the priority period expired

Filing of request for restoration of priority within this 2-month

period

Fee for restoration of priority paid within this 2-month period (at

RO/EP: 640 EUR); period for payment of the fee may be extended

by RO by 2 months (exceptional cases)

Statement of reasons (also within 2-month period); if necessary:

declaration or other evidence in support of the statement of

reasons

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Decision by the RO: merits (1)

RO applies at least one of these two criteria:

- 'failure to file the IA within the priority period occurred in spite of

due care required by the circumstances having been taken‘

- 'failure to file the IA within the priority period was unintentional‘

No interpretation of these criteria is provided in the PCT

Regulations but the PCT RO Guidelines support ROs:

- whole procedure: Chapter VII, paragraphs 166-192

- "due care": Chapter VII, paragraphs 166J-166M

- "non-intentional": Chapter VII, paragraph 166I

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Practice at the RO/EP: merits (2)

EPO uses only 'due care' criterion in accordance with EPC law

and practice (Article 122 EPC)

Non-compliance with the time limits results either from

- exceptional circumstance

- an isolated mistake within a normally satisfactory system for

monitoring time limits

Postal delays (Rule 82) and 'force majeure' (Rule 82quater) can be

valid reasons for having observed "due care" but do not excuse

missing the priority period as such.

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Practice at the RO/EP: merits (3)

Primary responsibility lies with the applicant:

- takes all steps that can be expected of a reasonably diligent

person

- proper instructions to agent if so, agent also has to show 'due

care‘

'Due care' of the agent in dealing with an assistant priority

deadline is not met because of an error by the assistant dealing

with a routine task, and:

- suitable person chosen for the work

- properly instructed in the tasks

- reasonably supervised

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European Patent Office

Practice at the RO/EP: applicant with no agent

Example 1: error by the delivery service

applicant has selected a reliable

delivery service

applicant has given the necessary and

proper instructions to the carrier

it is expected from a delivery service

that it fulfils its commitment

facts and arguments offered were

sufficient to prove that ‘due care’ was

exercised by the applicant

Decision: restoration granted

Example 2: error in monitoring time limits

mistake with monitoring the time limits: the

priority date was missed

the error went unnoticed by the IP

department

unclear to which extent the system

allowed any efficient internal checks

big company

failure could not be regarded as an

isolated mistake within a satisfactory system

for monitoring time limits

Decision: restoration denied

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European Patent Office

Practice at the RO/EP: applicant with agent

Example 3: combined error

agent invites the applicant to file PCT

application

e-mail requesting PCT filing was

erroneous

applicant sends fax to check if e-mail

was received, however this fax never

reached the agent

applicant calls agent on the day of the

deadline to check again

agent files application just after

midnight

all due care was taken by both the

applicant and the agent

Decision: restoration granted

Example 4: applicant does not follow

agent’s instructions

applicant received a letter from his

agent with instructions to pay fee

applicant did not pay because was not

aware of the consequences of non-

payment, but did not check with his

agent

applicant did not take all steps that can

be reasonably expected from a diligent

person.

necessary due care was not taken by

the applicant

Decision: restoration denied

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European Patent Office

Practice at the RO/EP: agent

Example 5: sudden illness

agent stayed on duty in spite of pain

medical certificate was submitted (but was

kept confidential)

online transmission was received four

minutes past midnight

exceptional circumstances, necessary

due care was exercised

Decision: restoration granted

Example 6: error by the agent

agent erroneously believed he had

taken the necessary action

agent met over eight thousand time

limits in his professional career, this

was the first mistake

however, no special circumstances

agent is responsible for his own agenda

mistake is not an isolated mistake in an

otherwise satisfactory system

Decision: restoration denied

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European Patent Office

Practice at the RO/EP: agent dealing with assistant

Example 7: error in following

instructions

assistant filed the wrong file

double check but mistake was not

noticed

the agent acted with due care in

dealing with the assistant: qualified

assistant, familiar with the duties and

execution of work supervised to a

reasonable extent

isolated mistake in an otherwise well-

functioning system

Decision: restoration granted

Example 8: error in filing application

assistant was on maternity leave

substitute assistant had received two days

of instruction

substitute assistant forgot to file the

application

substitute assistant was not properly

supervised

same standard of care has to be applied

in dealing with a substitute assistant as

with the assistant

necessary due care on the part of the

agent could not be established

Decision: restoration denied

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European Patent Office

Practice at the RO/EP: agent dealing with assistant

Example 9: data entry mistake by

agent's assistant

assistant entered the wrong priority

date in the system

this mistake unnoticed by double check

all internal reminders were based on

erroneous date

the agent acted with due care in

dealing with the assistant: qualified

assistant, familiar with the duties and

execution of work supervised to a

reasonable extent

isolated mistake within a normally well

functioning system

Decision: restoration granted

Example 10: data entry mistake by

agent's assistant

loss of a written notice instructing the

data processing department to change

the status of the application

not described as a routine task

no direct control over this change of

status allowed by the system

eventuality of a paper file being lost

and thereby a time limit being missed

was reasonably foreseeable

exercise of necessary due care could

not be established

Decision: restoration denied

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Restoration at the DO: effect (Rule 49ter.1 PCT)

Only to be used as a “safety net”

Restoration of priority right by RO under 'due care' criterion:

- in principle effective in all DOs (except those indicating

incompatibility with national law)

- however, the DO can review decision of the RO when it

reasonably doubts if one of the substantive requirements for

restoration is complied with (Rule 49ter.1(c) PCT)

Restoration of priority right by RO under the 'unintentional'

criterion:

- only effective in DOs that apply this criterion

- if DO does not apply this criterion, priority not considered restored

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Practice at the DO/EP

The EPO as DO applies the 'due care' criterion

The applicant must file a new request for restoration upon entry

into the European phase where:

- no request was made in the international phase

- the RO granted the request for restoration under the

'unintentional' criterion

- the RO ejected the request for restoration

Even if the RO granted a request for restoration under the 'due

care' criterion, DO/EP may review when it reasonable doubts if

one of the substantive requirements for restoration is complied

with (Rule 49ter.1(c) PCT)

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Omitted elements or parts: Background

The Patent Law Treaty (PLT, signed 1 June 2000 in Geneva)

introduces the concept of incorporation by reference of missing

parts and elements in Article 5

Harmonize the practices in proceedings before Offices acting

under the PCT and applying national laws

Enable the inclusion of accidentally omitted elements or parts

that are contained in an earlier application of which priority is

validly claimed, without affecting the international filing date

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Omitted elements or parts: PCT framework

Since 1 April 2007 in force under the PCT

To date, 8 Offices acting as receiving Office (RO) have not yet

withdrawn their notification of incompatibility with their national law

(Rule 20.8(a) PCT): BE, CU, CZ, DE, ID, IT, KR, MX

To date, 8 Offices acting as designated Office (DO) have not yet

withdrawn their notification of incompatibility with their national law

(Rule 20.8(b) PCT): CN, CU, CZ, DE, ID, KR, MX, TR

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Missing element

The whole description or the full set of claims

If the RO finds that an element is missing in the papers purporting

to be an international application, it invites the applicant

(PCT/RO/103):

- to furnish the required element the international filing date (IFD)

changes into the day the requirements for filing an international

application are fulfilled (Article 11(2)(b) and Rule 20.3(b)(i) PCT)

or

- to confirm that the element is incorporated by reference if the

conditions of incorporation by reference are met, the IFD is

maintained (Rule 20.6(b) and 20.3(b)(ii) PCT)

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Missing part

Definition: part of the description, part of the claims, part or

all of the drawings

Where the RO finds a part is missing, it invites the applicant

(PCT/RO/107):

- to complete the purported international application by furnishing

the missing part the IFD changes into the date of receipt of the

missing part (Rule 20.5(c) PCT)

or

- to confirm that the part was incorporated by reference if the

conditions for incorporation by reference are met, the IFD is

maintained (Rule 20.6(b) and 20.5(d) PCT)

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Formal requirements: time limit (Rule 20.7 PCT)

Where an invitation was issued by the RO (Rule 20.3(a) or

Rule 20.5(a) PCT): two months from the date of the invitation

- the RO informs the applicant if in these two months the priority

period expires

Where no invitation was sent to the applicant by the RO: two

months from the filing date

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Formal requirements: confirmation (Rule 20.6 PCT)

Written notice confirming that the element or part in question is

incorporated by reference in the international application

accompanied by:

- The sheet(s) embodying the entire element or part as contained in

the priority document

- A copy of the priority document, if not already submitted

- A translation if the earlier application is not in the language of the

international application

- An indication of where the missing part is in the priority document

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Condition: 'completely contained' (Rule 20.6 PCT)

The omitted element or part must be completely contained in the

earlier application from which the priority was validly claimed must

be identical to the corresponding text/drawing in the priority document

Request contains a statement of incorporation by reference (Rule

4.18 PCT), subject to confirmation under Rule 20.6 PCT Box No.

VI in Form PCT/RO/101

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Decision by RO: overview of the procedure

request for incorporation by reference

of missing parts and elements

RO checks if formal requirements are

fulfilled (time limit

+ confirmation of incorporation)

yes no

IFD is date of receipt of

missing part or element,

applicant notified with form PCT/RO/114

RO checks if 'completely contained'

condition is fulfilled

yes no

IFD is date of receipt of

missing part or element,

applicant notified with form PCT/RO/114

IFD is maintained,

applicant notified with form PCT/RO/114

applicant may request the missing

part concerned to be disregarded

no correction, IFD maintained

applicant may request the missing

part concerned to be disregarded

no correction, IFD maintained

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European Patent Office

Practical examples (1): general

Example 1: missing element

the full set of claims is missing

RO noticed shortly after the filing date

RO is expected to spot the missing

element

Decision: RO issues invitation

(PCT/RO/103) to the applicant, who has

then two months to furnish missing

element or request incorporation by

reference

Example 2: missing part unnoticed

by RO

several pages of the description are missing,

number of pages in Check List of the

Request is accurate

two months after the filing date

applicant found out about the mistake and

informed the RO

RO is expected to spot the missing part

Decision: RO issues invitation (PCT/RO/107)

to the applicant, who has then two months to

furnish missing part or request incorporation

by reference

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European Patent Office

Practical examples (2): missing drawings

Example 3: missing page of

drawings

Example 4: missing feature in a

drawing

p.1 p.3 p.4

RO is expected to spot the missing

page of drawings

Decision: RO issues invitation

(PCT/RO/107) to the applicant, who has or request incorporation by reference

Figure 1a

Figure 1c

Fig.1

RO is not expected to spot a missing

feature in a drawing

Decision: RO does not issue invitation

(PCT/RO/107) to the applicant

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European Patent Office

Practical examples (3): others

Example 5: addition of priority

claim

Priority not claimed on the filing date

Some pages of the drawings appear to be

missing

Completely contained in the priority

claimed one week after the filing date

Rule 4.18 PCT requires that the priority

of the earlier application is claimed on the

filing date

Decision: Incorporation by reference not

allowed

Example 6: sequence listing as a

missing part

References to a sequence listing in the

description

No sequence listing filed on the filing date

Sequence listing completely contained in

the earlier application whose priority is

claimed

Sequence listing filed in the application

is a part of the description (Rule 5.2 PCT)

Decision: RO issues invitation

PCT/RO/107

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European Patent Office

Practical examples (4): others

Example 7: missing paragraph in

description filed with IB instead of

RO/EP

applicant requested incorporation by

reference with the IB after publication

RO/EP received the request forwarded by

the IB

Request must be filed with the RO

RO/EP is not expected to spot a

missing paragraph

Decision: RO does not issue invitation

(PCT/RO/107) to the applicant

Example 8: entire set of new

elements was filed

application as filed was complete

(description and claims)

new description and claims are entirely

unrelated to the elements originally filed

whole set of new description and

claims does not qualify as missing

element

Decision: Request not granted

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Our advice to applicants

This procedure is time consuming for both users and Offices, and

requests are not always granted

Be careful: always check the content of the acknowledgement

of receipt after filing an international application

Use online file access tools (such as ePCT) right after submission

of your application to verify correct contents of your application

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Effect on DO: full review (Rule 82ter.1 PCT)

DOs may review decisions of ROs which have allowed incorporation

by reference if the DO finds:

no priority document was furnished

the statement of incorporation was missing or not submitted

no required translation of the priority document was furnished, or

the element or part in question was not completely contained in the

priority document

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Effect on DO: outcome of review (Rule 82ter.1 PCT)

If the DO decides the incorporation by reference did not meet the

criteria

the DO may treat the international application as if the

international filing date had been accorded on the basis of the

date on which the sheets containing the missing elements or

parts were submitted

the DO has to give the applicant the opportunity to make

observations on this outcome and/or to request that, at

least the missing parts which had been furnished be

disregarded

If the DO notified the IB of incompatibility with their national law, the

DO will apply the above as well (Rule 20.8 (c) PCT)

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Entry into the regional phase with the EPO

Where the priority document is not in an EPO official language, the

applicant must provide (Rule 51bis.1(e)(ii) PCT):

a translation of the priority document, and

in cases of missing parts, an indication as to where that part is

contained in the translation of the priority document

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Conclusion

EPO and IB / USPTO practices differ only marginally, i.e. when a

completely new specification (description & claims) is filed.

EPO suggested to 2013 PCT WG to align the RO Guidelines to

Rule 20 PCT (PCT/WG/6/20), in order to avoid loss of rights when

entering into the regional phase; there was no consensus.

Discussions continued in the PCT WG on this matter since 2013,

especially regarding the cases of erroneously filed applications.

The target is to explore possibilities that could achieve greater

consistency and legal certainty for applicants.

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Thank you for your attention!

Questions :

[email protected]

([email protected])

www.epo.org