Route to File a Euro-PCT Patent Application

Entering the European regional phase from an International PCT (Patent Cooperation Treaty) application, sometimes known as the “Euro-PCT route,” results in a European patent application.

A European patent obtained this way gives the same protection and rights to the applicant as a European patent obtained through a direct filing at the European Patent Office (EPO). The first phase (the international phase) of the procedure is controlled by the PCT, whereas the second phase (the regional phase) is handled by the EPO and is governed by the European Patent Convention (EPC).

How to enter the European regional phase?

The following acts must be completed before the European regional phase begin:

• Payment of a number of fees. The amount payable can vary depending on certain factors, e.g., the amount may be reduced depending on which International Searching Authority (ISA) searched the application during the international phase.
• File a request for examination;
• Supply a translation of the Euro-PCT application if that application is not published in English, French or German;
• Specify the application documents on which the European grant procedure is to based, i.e., the PCT application as filed and/or any amended application documents;
• Pay the renewal fee for the third year (only necessary if entering the European regional phase 24 months or more after the date of filing the PCT application); and
• File a certificate of exhibition (only necessary if the invention was disclosed at an officially recognised international exhibition).

The applicant has the option to file voluntary amendments to the application after it has entered the European regional phase. For example, you may desire to make changes in specific instances in order to minimize the number of pages in the application and therefore reduce or eliminate excess page costs. Any changes made must be within the scope of the subject matter disclosed in the PCT application as submitted.

When do you have to enter the European regional phase?

The deadline for entering the European regional phase is 31 months from the PCT application’s earliest priority date, or 31 months from the PCT application’s filing date if no priority is claimed. If you want to speed up the procedure, you can seek early processing of your application at the EPO and reach the European regional phase before the deadline.

If the 31-month deadline is missed, the EPO will grant a 2-month extension (“further processing”) to complete the above-mentioned minimum criteria. Additional costs must be paid, and these can be substantial, thus it is suggested that the initial 31-month deadline be fulfilled from a financial viewpoint.

Following the entry into the European regional phase

The EPO will send a notification under Rule 161/162 EPC shortly after entering the European regional phase, setting a 6-month timeframe (unless, as explained below, the applicant chooses to waive their right to this communication). Whether or whether the EPO functioned as the International Searching Authority (ISA) during the international phase of the application determines the application’s path at this point.

Excess claims costs must be paid before the 6 month deadline in any scenario if the application contains more than 15 claims. Before limiting the number of claims to 15 or less by the deadline, these costs can be avoided.

Unity Evaluation

Regardless of whether the EPO was the ISA or not, the EPO will examine unity at the conclusion of the R161/162 communication’s 6-month term. If the claims do not relate to the same invention, the EPO will determine that the claims on file are not unified.

If there is a lack of unity and the EPO was the ISA, the applicant will have two months to pay any further search fees for any unsearched inventions (s).

If there is a lack of unity and the EPO is not the ISA, the EPO’s supplemental search report will be a partial supplementary search report addressed to the first invention listed in the claims. A supplementary search report for the other invention can be obtained by paying additional search fees (s).

Waiving the right to the communication under R161/162 EPC

If the applicant wants to speed up the European prosecution of their case, they might choose to renounce their right to communication under Rule 161/162 EPC. Waiving this privilege permits the application to move on without having to wait for the 6 month time limit specified by a Rule 161/162 EPC communication, which might possibly shorten the time it takes for the application to be granted. Waiving this privilege is frequently utilized in conjunction with a request for the application to be handled under the European Patent Office’s accelerated prosecution program (PACE).

The waiver, however, will only be valid if the applicant guarantees that all conditions for the application to advance to the next stage of the European grant procedure are met. This includes paying any necessary excess claims costs while entering the European regional phase.

The application is subsequently sent to the EPO for substantive examination .