"Euro-PCT Guide":

PCT procedure at the EPO

International phase and entry into the
European phase

Guide for applicants

11th edition
Updated until 1 January 2018
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Contents
A. General overview................................................................................... 9
Introduction to the Euro-PCT Guide .............................................................................. 9
Applicable law ............................................................................................................... 9
Euro-PCT Guide and other sources of information ...................................................... 10
Relationship PCT - EPC.............................................................................................. 11
The role of the EPO in the international phase ............................................................ 11
Euro-PCT application .................................................................................................. 12
The role of the EPO in the European phase ................................................................ 12
Contracting states to the PCT and the EPC ................................................................ 13
Representation in the international phase ................................................................... 13
Computation of time limits in the international phase................................................... 14
External complaints ..................................................................................................... 14

B. The EPO as a PCT receiving Office .................................................... 16

Who may file an international application with the EPO? ............................................. 16
Filing options if the EPO is receiving Office ................................................................. 16
E-filing ......................................................................................................................... 16
Online filing ............................................................................................................ 17
Filing on a physical medium ("offline filing") ............................................................ 17
E-filing in pre-conversion format ............................................................................. 17
Filing direct or by post ............................................................................................ 18
Loss or delay in the post ......................................................................................... 18
Fax filing ................................................................................................................. 19
Acknowledgement of receipt ....................................................................................... 19
E-mail, telegram, telex and similar means .............................................................. 20
Filing further documents ......................................................................................... 20
Elements of the international application ..................................................................... 20
Incorporation by reference of missing parts and elements .......................................... 21
International filing date ................................................................................................ 21
Divisional applications ................................................................................................. 22
The PCT request......................................................................................................... 22
Designation of inventor ............................................................................................... 22
Representation in the procedure before the EPO as receiving Office .......................... 23
Two or more applicants – common agent and common representative .................. 23
How to appoint an agent, common agent or common representative ..................... 23
Association of professional representatives ............................................................ 24
Address for correspondence................................................................................... 24
Waiver .................................................................................................................... 24
Appointment of an agent for the European phase with the EPO as
receiving Office....................................................................................................... 25
For which states may international applications be filed? ............................................ 25
Non-designation for reasons of national law ........................................................... 26
Extension .................................................................................................................... 26
Validation .................................................................................................................... 27
Priority claim ............................................................................................................... 28
Restoration of the priority right .................................................................................... 28
Furnishing of the priority document ............................................................................. 29

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 The International Searching Authority (ISA) ................................................................ 30
Informal comments on earlier search results under PCT Direct ................................... 30
Taking an earlier search into account .......................................................................... 30
Refund of the international search fee ......................................................................... 30
Applications containing a reference to biological material ........................................... 31
Applications disclosing nucleotide and/or amino acid sequences ................................ 32
Signature .................................................................................................................... 33
Language of the international application .................................................................... 33
Fees ............................................................................................................................ 34
Amounts of fees ..................................................................................................... 34
Payment methods .................................................................................................. 35
Reductions ............................................................................................................. 35
Late payment of fees .............................................................................................. 36

C. The EPO as an International Searching Authority (ISA) and a

Supplementary International Searching Authority (SISA) ................ 37
I. General ...................................................................................................................... 37
The role of the EPO as ISA ......................................................................................... 37
Competence of the EPO as ISA .................................................................................. 37
Specification by the receiving Office ....................................................................... 38
Lifting of the competence limitation......................................................................... 38
Choice of ISA and consequences ........................................................................... 38
Translation .................................................................................................................. 39
Language of further correspondence ...................................................................... 39
Application filed in Dutch ........................................................................................ 39
Representation before the EPO as ISA ....................................................................... 39
Reduction of the search fee ........................................................................................ 40
Refund of the search fee ............................................................................................. 40

II. The procedure before the EPO as ISA ..................................................................... 40

General ....................................................................................................................... 40
Establishing the ISR and the WO-ISA ......................................................................... 41
Multiple independent claims ........................................................................................ 42
Validity of priority claims .............................................................................................. 42
Incorporation by reference of missing parts and elements .......................................... 42
Restoration of the right of priority ................................................................................ 42
Taking earlier search and classification results into account ....................................... 43
PCT Direct service ...................................................................................................... 43
International publication of the application and the ISR ............................................... 43
Procedure after receipt of the ISR and WO-ISA .......................................................... 43
Amendments under Article 19 PCT ........................................................................ 44
Informal comments ................................................................................................. 44
Demand for international preliminary examination .................................................. 44
International Preliminary Report on Patentability Chapter I ......................................... 44
Patent Prosecution Highway (PPH) based on a WO-ISA established by the
EPO as ISA................................................................................................................. 45

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 III. Refusal to perform a (full) international search ...................................................... 45
When may the EPO refuse to conduct a (full) search? ................................................ 45
No search ................................................................................................................... 45
Incomplete search ....................................................................................................... 46
Limitations related to the subject-matter ...................................................................... 46
Business methods .................................................................................................. 46
Complex applications .................................................................................................. 46
Nucleotide and amino acid sequences ........................................................................ 47
Lack of unity of invention ............................................................................................. 47
Cascading non-unity ............................................................................................... 47
Consequences of non-payment of additional fee(s) ................................................ 48
Protest procedure ....................................................................................................... 48

IV. Supplementary International Search (SIS) .............................................................. 49

General ....................................................................................................................... 49
Scope and limitations of the SIS ................................................................................. 49
Requirements for filing a SIS request .......................................................................... 50
Representation before the EPO as SISA..................................................................... 50
Lack of unity of invention ............................................................................................. 51

D. The EPO as an International Preliminary Examining

Authority (IPEA) - PCT Chapter II ....................................................... 52
I. General ...................................................................................................................... 52
Aim of the international preliminary examination ......................................................... 52
Usefulness of PCT Chapter II...................................................................................... 52
Patent Prosecution Highway (PPH) based on an IPER established by the
EPO as IPEA .............................................................................................................. 53
Competence of the EPO as an IPEA ........................................................................... 54
Specification by the receiving Office ....................................................................... 54
The EPO or a European ISA acted as ISA ............................................................. 54
Choice of applicant ................................................................................................. 54
Lifting of the competence limitation......................................................................... 54
Who may file a demand for international preliminary examination with the
EPO? .......................................................................................................................... 55
How and where is the demand for international preliminary examination to be
filed? ........................................................................................................................... 55
When should the demand for international preliminary examination be filed
with the EPO? ............................................................................................................. 55
Start of the international preliminary examination ........................................................ 56
Delaying of national phase until expiry of 30 months ................................................... 56
Time limit for establishing the IPER............................................................................. 57
Translation of the international application .................................................................. 57
Applications filed in Dutch....................................................................................... 57
Language of the demand ............................................................................................ 58
Language of further correspondence ...................................................................... 58
Representation............................................................................................................ 58
Which states may be elected? .................................................................................... 59
Signature .................................................................................................................... 59

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 Fees ............................................................................................................................ 59
Fee reductions........................................................................................................ 59
Consequences of non- or late payment of fees....................................................... 60
Refund of the fee for international preliminary examination .................................... 60
Defects in the demand and how they can be corrected ............................................... 60

II. The international preliminary examination procedure before the EPO as

an IPEA ...................................................................................................................... 61
Which documents form the basis of the international preliminary examination?
- Amendments - Missing parts and elements .............................................................. 61
Amendments .......................................................................................................... 61
Incorporation by reference of missing parts and elements ...................................... 62
Top-up search ............................................................................................................. 62
Third-party observations ............................................................................................. 63
First written opinion ..................................................................................................... 63
Second written opinion ................................................................................................ 63
The EPO was not the ISA ........................................................................................... 63
International preliminary examination before the EPO: four scenarios ............................. 64
First case: The EPO acted as ISA and made no objections .................................... 64
Second case: The EPO acted as ISA and made objections.................................... 64
Third case: The EPO did not act as ISA and the EPO as IPEA has no
objections ............................................................................................................... 64
Fourth case: The EPO did not act as ISA and the EPO as IPEA has
objections ............................................................................................................... 65
Time limit for reply to the written opinion ..................................................................... 65
International preliminary examination and SIS ............................................................ 65
Refusal to perform preliminary examination ................................................................ 65
Request for consultation by telephone ........................................................................ 66
Nucleotide and amino acid sequences ........................................................................ 66
Unity of invention ........................................................................................................ 66
What must be done after receipt of the IPER? ............................................................ 67
Confidentiality of the international preliminary examination ......................................... 67

E. Euro-PCT procedure before the EPO as a designated (PCT

Chapter I) or elected (PCT Chapter II) Office ..................................... 69
I. General ...................................................................................................................... 69
When is the EPO a designated or elected Office? ....................................................... 69
When can the EPO act as designated Office? ........................................................ 69
When can the EPO act as elected Office? .............................................................. 69
When must the applicant decide on the scope of protection sought for the
European patent? ....................................................................................................... 70
When must the European phase be initiated before the EPO as designated or
elected Office? ............................................................................................................ 70
Language of the proceedings in the European phase ................................................. 70
How and where should the applicant initiate the procedure before the EPO as
a designated/elected Office (Form 1200)? .................................................................. 71
Request for early processing....................................................................................... 71
Accelerated prosecution of applications - the "PACE" programme .............................. 74
Combined PACE request and waiver of Rule 161/162 communication ................... 74

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II. What is "entry into the European phase"? .............................................................. 74
Overview of the steps to be taken for entry into the European phase .......................... 74
Minimum requirements................................................................................................ 75
Further requirements................................................................................................... 75
Amounts of fees to be paid in the European phase ..................................................... 76

III. Communication with the applicant – representation – address for

correspondence (Form 1200, Sections 1, 2 and 3) ................................................. 77
Requirements specific to applicants with neither residence nor principal place
of business in an EPC contracting state - "non-resident applicants" ............................ 78
Non-observance of the requirement to appoint a professional representative ............. 79
How to appoint a representative - authorisation .......................................................... 79

IV. Application documents on which the procedure before the EPO as

designated/elected Office is based (Form 1200, Section 6) ................................... 80
Which version of the Euro-PCT application is taken as the basis for the
procedure in the European phase (Form 1200, Sections 6.1 and 6.2)? ....................... 80
Information on prior art (Form 1200, Section 6.3) ........................................................ 80
Amending the application – Rule 161/162 communication .......................................... 81
Waiving the Rule 161/162 communication .................................................................. 82
Amendments and the Rule 161/162 communication if a supplementary
European search is carried out ................................................................................... 82
Amendments and the Rule 161/162 communication if no supplementary
European search is carried out ................................................................................... 83
Amendments and claims fees ..................................................................................... 84

V. Translation of the application documents and other documents

(Form 1200, Section 7) .............................................................................................. 85
When must the applicant file a translation of the Euro-PCT application? ..................... 85
Consequences of not filing a translation of the application...................................... 85
What the translation must include ............................................................................... 86
Consequences of not filing a translation of the annexes to the IPER ...................... 87

VI. Biological material & nucleotide and amino acid sequences ................................ 87
Biological material (Form 1200, Section 8) .................................................................. 87
Waiver under Rule 33(2) EPC ..................................................................................... 87
Nucleotide and amino acid sequences (Form 1200, Section 9) ................................... 88
Consequences of not filing a sequence listing ............................................................. 88

VII. Filing fee .................................................................................................................... 89

Page fee ..................................................................................................................... 89
Non-observance of the time limit for payment of the filing fee ..................................... 90

VIII. Designations, extensions and validations .............................................................. 91

Non-observance of the time limit for payment of the designation fee........................... 91
How to extend or validate the Euro-PCT application (Form 1200, Section 11) ............ 92
Non-observance of the time limit for payment of extension fees .................................. 93
Non-observance of the time limit for payment of validation fees .................................. 93

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 IX. Supplementary European search ............................................................................ 94
No supplementary European search performed .......................................................... 95
Result of supplementary European search and refund of examination fee .................. 95
Search fee for supplementary European search ......................................................... 96
Reduction of the search fee .................................................................................... 96
Refund of the search fee ............................................................................................. 97
Non-observance of the time limit for payment of the search fee ............................. 97

X. Examination............................................................................................................... 97
How to file the request for examination (Form 1200, Section 4) .................................. 97
When must the request for examination be filed? When must the examination
fee be paid? ................................................................................................................ 97
Reduction of the examination fee ................................................................................ 98
Reduction if IPER was issued by the EPO .................................................................. 98
Non-observance of the time limit for filing the request for examination and
payment of the examination fee .................................................................................. 99

XI. Renewal fee and claims fees .................................................................................... 99

Renewal fee ................................................................................................................ 99
Non-observance of the time limit for payment of the renewal fee .......................... 100
Claims fees ............................................................................................................... 100
Non-observance of the time limit for payment of the claims fee ............................ 100

XII. Filing of other documents ...................................................................................... 101

Missing data regarding the inventor or an applicant .................................................. 101
Non-observance of the requirement to file any missing data regarding the
inventor or an applicant ........................................................................................ 101
Certificate of exhibition .............................................................................................. 101

XIII. Priority claim ........................................................................................................... 101

Obligation to furnish the priority document ................................................................ 102
Non-observance of the requirement to file a copy or the application number ........ 102
Filing a translation of the priority document or the declaration ................................... 103
Non-observance of the requirement to file the translation or declaration............... 103
Restoration of priority under Rule 49ter PCT ............................................................. 104

XIV. Review by the EPO as designated/elected Office and rectification of

errors made by the receiving Office or by the IB .................................................. 105
Review by the EPO as designated Office under Article 25 PCT ................................ 105
Review by the EPO as designated/elected Office under Article 24 PCT .................... 105
Rectification of errors made by the receiving Office or by the IB................................ 106

XV. Lack of unity ............................................................................................................ 106

Supplementary European search to be performed: the EPO did not act as
(S)ISA ....................................................................................................................... 107
No supplementary search performed: the EPO acted as (S)ISA ............................... 108

XVI. Publication of the Euro-PCT application by the EPO ........................................... 108

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 XVII. State of the art ......................................................................................................... 109

XVIII. Divisional applications ........................................................................................... 109

Annex I
Terms and abbreviations ................................................................................................. 111

Annex II
The international and European phases of a PCT application...................................... 113

Annex III
Timeline for international applications ........................................................................... 115

Annex IV
Criteria chosen by the EPO as ISA/IPEA on specific points in the ISPE
Guidelines......................................................................................................................... 117

Annex V
Filing offices of the EPO (OJ 2007, Spec. Ed. 3, A.2; OJ 2013, 442) ............................. 119

Annex VI
Form PCT/RO/101 Request and Notes ............................................................................ 121

Annex VII
Form PCT/RO/101 Fee Calculation Sheet and Notes ..................................................... 145

Annex VIII
EPO Form 1003 Authorisation......................................................................................... 151

Annex IX
Form PCT/IPEA/401 Demand and Notes ......................................................................... 155

Annex X
Form PCT/IPEA/401 Fee Calculation Sheet and Notes .................................................. 165

Annex XI
Form for entry into the European phase (EPO Form 1200) and Notes ......................... 169

Annex XII
EPO Form 1201 Entry into the European phase before the EPO .................................. 187

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A. General overview
Introduction to the Euro-PCT Guide

1 This publication is a guide for applicants interested in pursuing the

procedure under the PCT. It focuses on the elements specific to the
PCT procedure before the EPO.
2 This is the eleventh edition of the publication, which is further referred
to as the "Euro-PCT Guide".
3 The Euro-PCT Guide gives an overview of the procedures under the
PCT before the EPO, including entry into the European phase before
the EPO as designated/elected Office. The information it provides is not
to be considered complete, nor is it intended to replace relevant WIPO
publications and EPO decisions and notices concerning specific issues.
4 The Euro-PCT Guide is based on the information available on
1 January 2018. Any changes to the PCT procedures before the EPO
after that date are not reflected in the information provided here.
Therefore, in using this Guide, applicants should always verify in
particular whether any relevant changes to the procedures have
entered into force since 1 January 2018. Information on any changes
made after that date can be found in the sources of information
mentioned below (see points 10 ff).
5 Although the information in this Guide is not exhaustive, it aims to cover
all the points to note when the EPO acts in its capacity as:
– a receiving Office (RO),
– an International Searching Authority (ISA),
– a Supplementary International Searching Authority (SISA),
– an International Preliminary Examining Authority (IPEA), and/or
– a designated or elected Office.
Annex II shows the different phases of the PCT procedure (see also
Annex III).
6 Any comments on the Euro-PCT Guide may be addressed to
Department 5.2.2.1, PCT Affairs (preferably by email to:
international_pct_affairs@epo.org).

Applicable law

7 In all PCT procedures before the EPO, the PCT is applied in Art. 150(1) EPC
accordance with the provisions of Part X of the EPC, "International
applications under the Patent Cooperation Treaty - Euro-PCT
applications", the Implementing Regulations to the EPC ("EPC Rules")
and the relevant further legislation.
8 The European Patent Convention of 1973 ("EPC 1973") was
comprehensively revised in November 2000 ("EPC 2000"). The revised
text of the EPC entered into force on 13 December 2007. Since that
date some of the Implementing Regulations to EPC 2000 have been

9
 further revised. The most up-to-date version of EPC 2000 is provided
on the EPO website. 1 Any reference in this Guide to the articles of the
EPC and the rules of the Implementing Regulations relates to EPC
2000.
9 The legal basis for all EPO activities under the PCT is Part X of the
EPC (Articles 150-153) as implemented by the provisions of the
Implementing Regulations to the EPC, in particular Rules 157-165, and
by further legislation such as decisions of the President and the
Administrative Council of the EPO.

Euro-PCT Guide and other sources of information

10 It is explicitly pointed out that the Euro-PCT Guide is intended to be

complementary to, but not a substitute for, the PCT Applicant's Guide
("WIPO PCT Guide").
11 The WIPO PCT Guide is published in English and French by the
International Bureau of WIPO ("IB") in electronic form only. 2 A
German translation is published in paper form by Carl Heymanns
Verlag.
12 Regularly updated general information on the EPO and specific
information on the procedures before the EPO as receiving Office,
International Authority (ISA, SISA and IPEA) and designated/elected
Office under the PCT is provided in the Annexes to the WIPO PCT
Guide. 3
13 Relevant information is also provided on the EPO website 4 and in the OJ 2013, 606
EPO's Official Journal ("OJ"), which is published in electronic form
only. 5 Applicants are strongly advised to consult these publications and
to take note of, in particular, any information published after 1 January
2018.
14 Up-to-date news about the PCT is available on the WIPO website and
also from the PCT Newsletter and the Official Notices (PCT Gazette),
both published in electronic form by WIPO. 6 Applicants desiring further
information about the PCT procedure in the international phase are
advised to consult the Administrative Instructions under the PCT ("AI"), 7
the PCT Receiving Office Guidelines ("GL/RO") and the PCT
International Search and Preliminary Examination Guidelines ("ISPE
Guidelines", "GL/ISPE"), 8 all available on the WIPO website.
15 Since 1 November 2015, applicants have also been able to consult the OJ 2015, A73
Guidelines for Search and Examination at the European Patent

1
www.epo.org/law-practice/legal-texts/epc.html
2
www.wipo.int/pct/en/appguide/index.jsp
3
www.wipo.int/pct/en/appguide/index.jsp
4
www.epo.org
5
www.epo.org/law-practice/legal-texts/official-journal.html
6
PCT Newsletter: www.wipo.int/pct/en/newslett/
Official Notices (PCT Gazette): www.wipo.int/pct/en/official_notices/index.html
7
AI: www.wipo.int/pct/en/texts/index.html
8
GL/ISPE and GL/RO: www.wipo.int/pct/en/texts/gdlines.html

10
 Office as PCT Authority ("PCT-EPO Guidelines", "GL/PCT-EPO"),
available on the EPO website. 9 Furthermore, any reference to
"GL/EPO" in this Guide relates to the Guidelines for Examination in
the European Patent Office as revised in 2017. 10

Relationship PCT - EPC

16 For international applications which are the subject of proceedings Art. 150(2) EPC
before the EPO in any of its functions (see point 5), the provisions of
the PCT and its Regulations ("the PCT Rules") apply, supplemented
by the provisions of the EPC.
17 In case of conflict between the provisions of the EPC and those of the
PCT or the PCT Rules, the PCT prevails.
18 As from the entry into force of EPC 2000 on 13 December 2007 the OJ 2007, 692
EPO has withdrawn all notifications of incompatibility with PCT
provisions. 11
19 In accordance with the principle of the prevalence of the PCT,
applicants should refer to the PCT International Search and Preliminary
Examination Guidelines ("GL/ISPE", "ISPE Guidelines") for information
on search and examination practice and procedure before the EPO as
ISA, SISA and IPEA. In addition, they may also refer to the PCT-EPO
Guidelines. In these procedures the Guidelines for Examination in the
European Patent Office (GL/EPO) apply only to the extent that they can
be applied in conformity with the supplementary role of the EPC in the
international phase (see point 16).
20 In a number of cases the ISPE Guidelines leave a choice between
alternative options, from which each ISA/IPEA may select the most
appropriate. The options are set out in appendices to the chapters of
the ISPE Guidelines. The EPO will choose the option most in line with
its own practice under the EPC. A list of policy options chosen by the
EPO is provided in Annex IV (see point 221).
21 Moreover, in an agreement between the EPO and the International OJ 2017, A28, A115
Bureau of WIPO ("Agreement EPO-WIPO") concerning the functioning of Official Notices (PCT
the EPO as International Authority (ISA, SISA and IPEA) all particulars of Gazette) – 16 March
2017
the work of the EPO in that capacity are set out. The latest agreement of
October 2017 entered into force on 1 January 2018.

The role of the EPO in the international phase

22 For international applications under the PCT, the EPO may act as: Art. 1-49 PCT
Art. 150-153 EPC
– receiving Office ("RO") (see points 45 ff),
– International Searching Authority ("ISA") (see points 192 ff),
– Supplementary International Searching Authority ("SISA") (see
points 275 ff), and

9
www.epo.org/law-practice/legal-texts/html/guidelinespct/e/index.htm
10
www.epo.org/law-practice/legal-texts/guidelines.html
11
www.wipo.int/pct/en/texts/reservations/res_incomp.html

11
 – International Preliminary Examining Authority ("IPEA") (see
points 295 ff).

Euro-PCT application

23 An international application for which the EPO is a designated Office Art. 11(3), 45(1) PCT
(see point 30) and which has been accorded an international filing date Art. 153(2) EPC
has - as from that date - the effect of a regular European application
(Euro-direct application). Such an international application, being
equivalent to a regular European patent application, is referred to as a
"Euro-PCT application".
24 Each international application for which the EPO is designated Office is
(also) given a European application number. This number is notified
to the applicant in a communication informing the applicant of the
requirements for entry into the European phase (EPO Form 1201) (see
Annex XII), which, as a rule, is issued ten months after international
publication of the application.
25 Annex II contains a chart illustrating the various stages of a Euro-PCT
application with the most important time limits.
26 During the international phase of the processing of an international Art. 23, 40 PCT
application no designated or elected Office is allowed to process or to WIPO PCT Guide
examine that application. However, this prohibition may be lifted at the 3.005, 5.005
explicit request of the applicant (see points 431 ff).

The role of the EPO in the European phase

27 Once an international application has entered the national phase before Art. 22(1), (3),
the EPO, the international application is said to be in the European 39(1), (2) PCT
phase. R. 159(1) EPC
WIPO PCT Guide
5.005
28 The time limit for entering the European phase is 31 months from the
date of filing or, if priority has been claimed, from the earliest priority
date (see point 447).
29 An up-to-date overview of the applicable time limit for entry into the
national phase in each PCT contracting state - including the EPC
contracting states where the national route is preferred - is available on
the WIPO website. 12
30 If an international application enters the European phase (see points Art. 153(1) EPC
447 ff), the EPO will act:
– as designated Office if the international application was only
processed under PCT Chapter I proceedings (international search
and publication of the application);
– as elected Office if the international application at the request of
the applicant was also processed under PCT Chapter II
proceedings (international preliminary examination) (see points
295 ff and points 411 ff).

12
www.wipo.int/pct/en/texts/time_limits.html

12
 Contracting states to the PCT and the EPC

31 On 1 January 2018 the EPC was in force in a total of 38 states: Albania OJ 2009, 396
(AL), Austria (AT), Belgium (BE), Bulgaria (BG), Croatia (HR), Cyprus OJ 2010, 96, 394
GL/EPO, General
(CY), Czech Republic (CZ), Denmark (DK), Estonia (EE), Finland (FI),
Part, 6
France (FR), Germany (DE), Greece (GR), Hungary (HU), Iceland (IS),
Ireland (IE), Italy (IT), Latvia (LV), Liechtenstein (LI), Lithuania (LT),
Luxembourg (LU), former Yugoslav Republic of Macedonia (MK), Malta
(MT), Monaco (MC), Netherlands (NL), Norway (NO), Poland (PL),
Portugal (PT), Romania (RO), San Marino (SM), Serbia (RS), Slovakia
(SK), Slovenia (SI), Spain (ES), Sweden (SE), Switzerland (CH),
Turkey (TR) and United Kingdom (GB).
32 All EPC contracting states are also contracting states to the PCT Art. 64(1) PCT
and are bound by its Chapter II. The EPO can therefore act as OJ 2014, A33
designated and elected Office for any EPC contracting state provided
the international application was filed on or after the date on which the
EPC entered into force for the state concerned. This means that no
European patent can be granted for an EPC contracting state on the
basis of an international application filed prior to the date of entry into
force of the EPC for that state. For further information on the
(dependent) territories of the EPC contracting states to which the PCT
has been extended, see the Notice from the EPO published in OJ 2014,
A33.
33 For some EPC contracting states, patent protection on the basis of an Art. 45(2) PCT
international application can only be obtained via the European route,
i.e. by entering the European phase to obtain a European patent for the
state concerned, since these states have closed off the possibility of
entering into the national phase before the national Office concerned
(see point 122).
34 European patents may also take effect in states other than EPC
contracting states via a system of extension or validation. For
information on extension states, see points 123 ff. For information on
validation states, see points 129 ff.

Representation in the international phase

35 Any attorney, patent agent or other person ("agent") having the right to Art. 27(7), 49 PCT
practise before the national or regional patent office with which the R. 90.1 PCT
international application was filed is entitled to practise before: Art. 133, 134 EPC
WIPO PCT Guide
5.041-5.051,
10.019-10.023,
11.001-11.014
– this national or regional office acting as receiving Office,
– the IB,
– the competent ISA,
– the competent SISA and
– the competent IPEA.
36 An agent so appointed before the receiving Office is referred to as "the
agent for the international phase". Applicants are strongly advised to

13
 appoint an agent already at the time of filing an international application
with the receiving Office (see Annex VIII).
37 Two or more applicants may choose to appoint either a common agent R. 2.2, 2.2bis,
for the international phase or one of the said applicants who is a 90.2(a), 90.3 PCT
national or resident of a PCT contracting state to act as their common
representative, who in turn may then appoint an agent.
38 If no common agent or common representative has been appointed, the R. 90bis.5, 90.2(b)
applicant first named in the request who is entitled to file an PCT
international application is considered to be the common representative PCT Newsletter
10/2013, 11
(see points 101 ff). The "deemed common representative" is not 7-8/2014, 11
entitled to sign notices of withdrawal on behalf of co-applicants. If a 6/2017, 8
deemed common representative has appointed an agent, the latter will
be considered to be the agent of record and may validly perform any
act which could be performed by the deemed common representative.
If an agent has been appointed by a co-applicant of the deemed
common representative, the agent will be entitled to act only on behalf
of that co-applicant.
39 More information on representation specifically before the EPO is
provided in points 97 ff (EPO as RO), points 211 ff (EPO as ISA),
points 340 ff (EPO as IPEA) and in points 464 ff (EPO as designated or
elected Office).

Computation of time limits in the international phase

40 If a time limit in any procedure in the international phase starts to run R. 80.6 PCT
upon issue of a communication, the day of the date of that R. 126-129, 131(2)
communication is decisive for computing the end of that time limit, not EPC
the date of its receipt. In this respect the PCT differs from the EPC,
where the date of receipt of a communication is relevant.
41 However, if an applicant proves to the satisfaction of the EPO as
receiving Office, ISA, SISA or IPEA that the despatch of a
communication did not take place on the date that the document bears,
the actual date of mailing will be taken as the basis for computing the
applicable time limit. Furthermore, if a communication was received
more than seven days after the date it bears, the applicable time limit
will be extended by the number of days by which the communication
was received later than seven days after the date it bears.

External complaints

42 External complaints may concern any service or product delivered by

the EPO, including all PCT products, and may be submitted by any
person, including applicants. They may be submitted using the online
form available at www.epo.org/complaint.
43 Complaints are forwarded to a dedicated EPO unit responsible for
ensuring that any complaint is dealt with fairly and efficiently and that
suitable action is taken to address it. A comprehensive reply to the
complaint will be provided.
44 The complaint handling procedure does not replace the procedures laid
down in the PCT; nor does the unit responsible for handling complaints
take decisions on procedural requests. The department competent for

14
the proceedings concerned decides on:

(a) complaints relating to procedural and/or substantive aspects of

specific pending proceedings which are submitted by a party to those
proceedings. All parties to the proceedings will be informed accordingly;

(b) complaints relating to substantive issues which are submitted by a

third party while proceedings are pending before the EPO. Such a
submission will be treated as a third-party observation (see point 374).

15
B. The EPO as a PCT receiving Office
Who may file an international application with the EPO?

45 An international application may at the applicant's option be filed: Art. 9, 10 PCT

R. 19.1, 19.2 PCT
WIPO PCT Guide
5.008-5.009
– with the national office of the PCT contracting state of which the
applicant is a resident or national, or with the office acting for that
state, or
– with the IB as receiving Office.
46 A third option exists for natural and legal persons who are nationals or R. 4.5(d), 18, 19.1(b)
residents of an EPC contracting state, since they may also file PCT
international applications with the EPO acting as a receiving Office. In Art. 151 EPC
R. 157 EPC
such cases it is sufficient that at least one applicant is a national or OJ 2014, A33
resident of an EPC contracting state, regardless of whether he is for
example mentioned in Box II of the PCT Request as applicant for the
designation of the US or any other PCT contracting state only and, as
the case may be, also as inventor. A person mentioned only as inventor
does not qualify as an applicant. Hence, the nationality or residence of
a person mentioned only as inventor is irrelevant for the purpose of
filing an international application.
47 If there are two or more applicants, it is sufficient for at least one of OJ 2014, A33
the applicants to satisfy these requirements. For instance, if a national Section 203 AI
or resident of an EPC contracting state is mentioned in the PCT request WIPO PCT Guide
5.020-5.022
form as inventor and applicant for the purposes of the United States PCT Newsletter
only, the international application may be filed with the EPO as 5/2012, 8
receiving Office regardless of the residence and nationality of the other 4/2014, 6
applicant(s).
48 When the EPO acts as receiving Office, the EPO will process the
application in accordance with the relevant provisions of the PCT,
including the PCT Receiving Office Guidelines (GL/RO) and the
Administrative Instructions under the PCT (AI) (see points 10 ff).

Filing options if the EPO is receiving Office

49 International applications must be filed in writing using the PCT request R. 11, 92.4 PCT
form (PCT/RO/101), either on paper or in electronic form (e-filing). They OJ 2007, Spec.Ed.3,
may be filed online, direct, by post or by fax. If the application is filed in A.1, A.2, A.3
OJ 2015, A91
electronic form, fee reductions apply (see point 187). OJ 2017, A59
WIPO PCT Guide
6.003
E-filing

50 International applications may be filed in electronic form with the EPO R. 89bis PCT
as receiving Office, either online or offline on an electronic data carrier OJ 2015, A26, A91
("physical medium"). OJ 2017, A59
GL/EPO A-II, 1.3

16
 Online filing

51 For online filing with the EPO as receiving Office, the EPO’s Online OJ 2014, A50, A98,
Filing software, the EPO new online filing - case management system A107
OJ 2015, A27
(CMS), the EPO web-form filing service or the PCT-SAFE software and
AI, Part 7, Annex F
ePCT-Filing provided by the IB may be used. All means of online filing
– except for the web-form filing service – allow applicants to fill in the
PCT request form (Form PCT/RO/101) directly in the electronic
document formats that are accepted by the EPO as receiving Office.
52 The EPO's Online Filing software and the required smart card, as well
as CMS and the web-form filing service, are free of charge. More
information regarding the EPO Online Services is available on the EPO
website. 13
53 Information on the PCT-SAFE software, ePCT-Filing and the ePCT
service for uploading documents is available on the WIPO website. 14
54 The online filing of an international application with the EPO as
receiving Office triggers the electronic acknowledgement of receipt. The
acknowledgement indicates the receiving Office, the date and time of
receipt, the reference or application number allocated by the EPO, the
list of the files transmitted and a message digest, i.e. the message in
compressed form.

Filing on a physical medium ("offline filing")

55 The physical media accepted by the EPO as receiving Office are CD-R, OJ 2007, Spec.Ed.3,
DVD+R and DVD-R. For more information, please refer to the WIPO A.5
PCT Guide. 15
56 If an international application is filed on a physical medium, the
acknowledgement of receipt is sent by post (see point 72).

E-filing in pre-conversion format

57 If any document making up the international application has been OJ 2007, Spec.Ed.3,
prepared by conversion from a different electronic document format A.5
(pre-conversion format), the applicant may submit the document in that PCT Newsletter
7/2008, 1
format, preferably together with a statement that the international AI, Part 7, Section
application in electronic form is a complete and accurate copy of the 706
document in pre-conversion format. Each pre-conversion document
must be in a format that fulfils the requirements stipulated in the
Decision of the President of 12 July 2007. Furthermore, it is
recommended that pre-conversion documents be submitted as ZIP
files.

13
www.epo.org/applying/online-services.html
14
www.wipo.int/pct-safe/en/download/download_client.html,
https://pct.wipo.int/,
www.wipo.int/pct-safe/en/index.html
15
www.wipo.int/pct/guide/en/gdvol1/annexes/annexc/ax_c_ep.pdf
www.wipo.int/pct/guide/en/gdvol1/annexes/annexd/ax_d_ep.pdf

17
 Filing direct or by post

58 In principle, the date of filing accorded to an application filed with the OJ 2007, Spec.Ed.3,
EPO direct or by post is the date of handing over or receipt A.1, A.2
OJ 2010, 642
respectively at an EPO filing office. Automated mailboxes are
installed in Munich ("Zollstrasse") and Berlin next to the EPO building.
These automated mailboxes may be used at any time. The automated
mailbox at EPO headquarters in Munich (Isar building, Kohlstrasse) has
been closed since 1 April 2017. Outside office hours, at all filing offices,
documents may be handed to the porter, who will security-scan them
on receipt.
59 If the applicant has chosen the EPO as receiving Office the Art. 10 PCT
international application should be sent directly to one of the EPO filing R. 157(1) EPC
offices and not to a national patent office (see point 46).
60 The EPO has filing offices in Munich, The Hague and Berlin. Please OJ 2007, Spec.Ed.3,
note that the sub-office in Vienna is not a filing office, nor is the A.1, A.2
GL/EPO, A-II, 1.1
Brussels Bureau. The EPO’s addresses are listed in Annex V.
61 The national law of an EPC contracting state may prescribe that an Art. 27(8) PCT
international application is to be filed with the EPO as receiving Office Art. 75(2), 151 EPC
via its national patent office. Only in that case may the application be R. 157(1) EPC
PCT Newsletter
filed with the EPO as receiving Office via the national patent office of 6/2014, 11
the EPC contracting state concerned.
62 If, pursuant to national law, the international application must be filed
with the EPO as receiving Office via the competent national patent
office, this office will only be acting as a "filing office" for the EPO and
not as receiving Office. The date of receipt of the application by the
national patent office concerned, on behalf of the EPO as receiving
Office, will be considered the international filing date, on condition that
the application meets the PCT requirements for a filing date to be
accorded.
63 In these cases the national patent office concerned must ensure that R. 157(3) EPC
the application reaches the EPO not later than two weeks before the
end of the thirteenth month from filing or, if priority is claimed, from the
earliest date of priority.
64 The addresses of the national patent authorities of the EPC contracting Art. 3(2), 4-7 PCT
states and information on national legislation are provided in the R. 3.3, 4-8, 11.1 PCT
brochure "National law relating to the EPC". 16 The documents R. 157(2) EPC
WIPO PCT Guide
constituting an international application must be filed in only one copy 5.010, 5.179-5.180
with the EPO as receiving Office: PCT request form, description,
claims, abstract and drawings (Box No. IX PCT request form). The
same applies to any other documents referred to in Rule 3.3(a)(ii) PCT
and listed in Box No. IX of the PCT request form.

Loss or delay in the post

65 In case of loss or delay, the EPO accepts evidence of mailing a R. 82.1(d), (e) PCT
document only if it was mailed via the postal authorities or if one of the OJ 2015, A29

16
www.epo.org/law-practice/legal-texts/national-law.html

18
 following postal service providers was used instead: Chronopost, DHL,
Federal Express, flexpress, TNT, SkyNet, UPS or Transworld. As
evidence, confirmation of registration by the post office or confirmation
of receipt by the postal service provider must be provided at the request
of the EPO.
66 Rule 82 PCT excusing a delay in the post and Rule 82quater PCT Art. 48(1) PCT
excusing a delay due to force majeure are not applicable to the priority OJ 2010, 351
period, because these provisions may only be applied in respect of time
limits fixed in the PCT. It is only under strict conditions that a right of
priority may be restored (see points 135 ff). It is therefore
recommended that an application be filed as early as possible.

Fax filing

67 An international application may, together with further documents other R. 92.4 PCT
than authorisations and priority documents, be filed by fax with the EPO OJ 2007, Spec.Ed.3,
as receiving Office. The fax numbers are provided in Annex V, point 3. A.2, A.3
OJ 2008, 16
OJ 2010, 642
68 If an international application is filed by fax, the date on which the
facsimile application documents are received in full at the EPO is
accorded as the date of receipt of the application. Each of the EPO
filing offices is based in the Central European Time zone (CET).
69 If an international application is filed by fax, the original, i.e. the OJ 2007, Spec.Ed.3,
confirmation copy, is to be filed simultaneously, and the fax should A.3
OJ 2010, 642
state that the confirmation copy has been filed separately on paper at
the same time (see point 58).
70 Further, on the first sheet of the PCT request form filed as confirmation
copy it should be indicated that the international application has
previously been filed by fax, in the form of the words "CONFIRMATION
COPY" followed by the date of fax transmission.
71 If the confirmation copy is not submitted within 14 days, the applicant R. 92.4(d), (e), (f),
will be invited to submit it. If the confirmation copy is not received after (g) PCT
expiry of the time limit set in this invitation, the application will be
considered withdrawn (see point 428).

Acknowledgement of receipt

72 As a rule, the receiving Office will acknowledge receipt of an OJ 2007, Spec.Ed.3,

international application at an EPO filing office by mail within four A.3
working days. The acknowledgement explicitly confirms the receipt of OJ 2010, 642
GL/EPO, A-II, 3.1
each separate document and item making up the international
application (e.g. description, claims, abstract, data carrier, letter, etc.).
The receiving Office acknowledges receipt of the international
application by automatically issuing Form 1031.
73 On request, the EPO also acknowledges receipt of an international
application directly by fax or post upon payment of an administrative
fee. 17 To ensure prompt acknowledgement, the request for fax

17
www.epo.org/applying/forms-fees.html

19
 confirmation and evidence of payment of the administrative fee (e.g. a
bank order) or a debit order must be enclosed with the documents or
filed at the same time. The applicant should not forget to also provide a
fax number to which acknowledgement of receipt is to be sent. If no fax
number is indicated, the acknowledgement is sent by post to the
applicant or, where applicable, his agent.
74 If the above-mentioned requirements are fulfilled, the acknowledgement
is issued within one working day after receipt of the application.

E-mail, telegram, telex and similar means

75 An international application cannot be filed with the EPO by e-mail, OJ 2000, 458
telegram, telex or similar means. Applications so filed cannot be OJ 2007, Spec.Ed.3,
A.3
accorded a valid date of filing. For filing in electronic form see
points 50 ff.
76 E-mail, telegram, telex and similar means have no legal force in the
proceedings under the PCT and cannot be used validly to perform any
procedural act. Therefore, no time limit for such act can be complied
with by such means.

Filing further documents

77 After an international application has been filed other documents may OJ 2007, Spec.Ed.3,
be filed in any proceedings before the EPO online or direct, by post or A.3
OJ 2014, A50, A71,
by fax at the EPO filing offices. Since 1 November 2016, the ePCT
A98
service may also be used for filing subsequently filed documents online OJ 2015, A26, A27,
with the EPO. However, priority documents issued in paper form which A91
have to be certified by the issuing authority should also be submitted to OJ 2016, A78
the EPO in that form to ensure the validity of the certification. For that OJ 2017, A59
reason, they may not be filed by fax or via the EPO web-form filing
service. On the other hand, priority documents issued in electronic form
are accepted only if they are digitally signed by the issuing authority
and if that signature is also accepted by the EPO. The filing of
authorisations by fax and via the EPO web-form filing service is
excluded.
78 There is no obligation to file a confirmation copy of subsequent
documents, but the receiving Office may require one to be submitted
(see point 69) and will do so in particular if the applicant has submitted
substitute sheets under Rule 26 PCT and/or any sheets to be
incorporated by reference under Rule 20.6 PCT. In these two cases the
applicant is advised to submit a confirmation copy on his own initiative
directly after sending the sheets concerned by fax.

Elements of the international application

79 Any international application must contain the following elements: PCT Art. 3(2)-7 PCT
request, description, claim(s) and an abstract. Drawings must only be PCT Newsletter
filed when they are necessary for the understanding of the invention. As 4/2017, 9
regards international applications in the field of biotechnology see also
the information in points 152 ff.
80 The international application has to be filed with the EPO as receiving R. 11.1 PCT
Office in one copy only. However, if the application is filed by fax a R. 157(2) EPC
confirmation copy must be filed (see points 69 ff). OJ 2007, Spec.Ed.3,
A.3

20
 Incorporation by reference of missing parts and elements

81 If the applicant has omitted to file a part of the description, the claims R. 4.18, 20.5, 20.6,
or the drawings of the international application or an entire element, 20.7 PCT
WIPO PCT Guide
i.e. (all of) the description or all of the claims, these parts and elements
6.028
may be incorporated in the international application under the
conditions set out in Rules 4.18 and 20 PCT. If all conditions are met,
such incorporation will not affect the international filing date.
This procedure may be summarised as follows:
82 Firstly, such incorporation requires that the omitted part(s) or
element(s) be completely contained in an application from which the
priority was (validly) claimed on the international filing date (see
points 132 ff). The test for "completely contained" requires that the later
filed missing part - e.g. a paragraph, a page or a drawing - be identical
to the corresponding text/drawing in the priority document.
83 Secondly, the PCT request must contain a statement of incorporation
by reference of the priority application(s). A statement to that effect is
already provided in Box VI of the PCT request form.
84 If both conditions are met, an applicant who has omitted to file a part or
element may include it by confirming its incorporation by reference.
This requires that the conditions for confirmation set out in Rules 20.6
and 20.7 PCT are also met.
85 If the description and/or claims as contained in the earlier application do
not qualify as "missing parts" on the grounds that the international
application already contained a complete description and/or a complete
set of claims, the EPO as receiving Office will proceed to a negative
finding under paragraph 205D of the PCT Receiving Office Guidelines
and will not transmit the international application to the International
Bureau in accordance with Rule 19.4(a)(iii) PCT (205G(b) GL/RO).
86 The procedure before the EPO as ISA/IPEA in the case of a
positive/negative decision by the receiving Office on a request for
incorporation by reference is set out below (see points 234, 367).
87 An applicant wishing to add omitted parts or elements to an
international application which have no basis in a claimed priority
application may do so under the conditions set out in Rule 20.5 PCT.
However, in that case the filing date of the application as a whole will
be the date of filing of the missing parts or elements.

International filing date

88 Applicants must carefully consider the date on which an international Art. 11 PCT
application is to be filed and accordingly choose an appropriate way of
filing to assure timely receipt at the EPO (see point 60).
89 The international filing date of an application filed with the EPO as
receiving Office is the date on which the application is received at the
EPO or, in exceptional cases (see points 61-64), at a national patent
office of an EPC contracting state acting as filing office on behalf of the
EPO.

21
90 Each international application has a single filing date. The term
"international filing date" should therefore not be interpreted as if there
is any further filing date in respect of an international application. The
word "international" only refers to the fact that the application
concerned was filed as an application under the PCT.
91 The (international) filing date is not to be confused with the date of entry
into the European phase before the EPO or into any national phase
before a designated/elected Office (see Annex II). This means that
even after entry into the European phase any reference to the filing
date of the international application concerned is a reference to the
international filing date (see points 447 ff).

Divisional applications

92 The PCT does not provide for the possibility of filing a divisional GL/EPO E-VIII, 2.4.1
application. A divisional application with an international application as
its parent application may not be filed with the EPO as
designated/elected Office unless the parent application has validly
entered the European phase (see point 676).

The PCT request

93 International applications must be filed using the PCT request form Art. 3, 4, 11(1)(iii)
(PCT/RO/101) or a corresponding computer printout. Applicants are PCT
advised to read carefully the PCT request form and the explanatory R. 3, 4 PCT
WIPO PCT Guide
notes before completing the form. For electronic filing, see points 50 ff. 5.015-5.093
94 The PCT request form with the explanatory notes and the fee
calculation sheet can be found in Annex VI and VII. Copies of these
documents together with explanatory notes are available free of charge
from the EPO, the IB and national patent offices. Both documents may
also be downloaded from the WIPO website. 18

Designation of inventor

95 It is recommended that the inventor always be identified (Box No. III, Art. 4(1)(v) PCT
PCT request form), unless there are special reasons for not doing so. R. 4.1(a)(iv) PCT
The name and address of the inventor must be furnished in the PCT WIPO PCT Guide
5.035-5.038
request form if the applicant wants to enter the national phase of a state PCT Newsletter
requiring that the data of the inventor be given in the request upon 8-9/2013, 8
filing. The consequences of non-compliance are a matter of national
law. For up-to-date information on the national law of each of the PCT
contracting states, see the WIPO PCT Guide.
96 In so far as the applicant aims to obtain a European patent, the data Art. 22(1) PCT
concerning the inventor – if not already submitted during the R. 159, 163(1) EPC
international phase – must be provided upon entry into the European GL/EPO E-IX, 2.3.4
phase (see points 452 and 622).

18
www.wipo.int/pct/en/forms/index.htm

22
 Representation in the procedure before the EPO as receiving
Office

97 Information on the representation of the applicant(s) during the Art. 27(7), 49 PCT
international phase is to be provided in Box No. IV of the PCT request R. 90.1 PCT
form. Before filling in the box, applicants should carefully read the Art. 133, 134 EPC
OJ 2010, 335
instructions provided in the Notes to the PCT request form concerning WIPO PCT Guide
Box No. IV and the information given below (see points 98-115). 11.001-11.014

98 Two categories of representatives ("agents" in PCT terminology) have

the right to practise before the EPO as receiving Office:
– any professional representative or association of representatives OJ 2013, 500, 535
entered in the directory of professional representatives maintained
by the EPO
– any legal practitioner qualified to practise in patent matters in one of
the EPC contracting states and who has his place of business in
that state.
99 Only a person belonging to at least one of these categories may be
appointed as agent for an international application filed with the EPO as
receiving Office (see points 35 ff). The directory of professional
representatives can be consulted on the EPO website. 19
100 The agent must always be mentioned by name in Box No. IV of the
PCT request form, unless he belongs to an association of professional
representatives registered as such with the EPO (see point 108). The
agent may choose his address as he wishes on condition that it is in an
EPC contracting state.

Two or more applicants – common agent and common representative

101 If there are two or more applicants, a professional representative (see R. 90.2 PCT
point 99) may be appointed as "common agent" (see point 37).
102 Moreover, if two or more applicants file the application, they may also
appoint one of them as "common representative" (see point 37). If no
common agent or common representative is appointed, the applicant
first named in the PCT request form who is entitled to file an application
with the EPO as receiving Office is considered to be the common
representative ("deemed common representative") (see point 38).
103 If no common agent is appointed, any correspondence is sent to the
(deemed) common representative. If the latter has appointed an agent,
it is sent to the agent of the (deemed) common representative. A
different address may be provided as address for correspondence only
if certain requirements are met (see point 109).

How to appoint an agent, common agent or common representative

104 Appointment of an agent, common agent or common representative for R. 90.4, 90.5 PCT
the international phase requires a declaration to that effect. This can be

19
www.epo.org/applying/online-services/representatives.html

23
 made either in the PCT request (Box No. IV PCT request form) itself or
in a separate notice ("power of attorney"). For this purpose the
"PCT/Model of power of attorney" may be used, which is available on
the WIPO website. 20 If the agent, common agent or common
representative is at the same time to be appointed for the procedure in
the European phase, please refer to the information in points 114 ff.
105 For the appointment of the agent, the common agent or the common
representative to be effective, the PCT request or the power of attorney
must be duly signed by (all) the applicant(s) for whom the agent, the
common agent or the common representative is intended to act (see
points 110 ff and 165 ff).
106 Appointment of a (common) agent may also be effected by referring in
the PCT request or in a separate notice to an existing general power of
attorney deposited with the EPO.
107 Please note that a power of attorney may not be filed by fax or using
the EPO web-form filing service (see point 67).

Association of professional representatives

108 If the applicant wishes to appoint the members of an association of R. 90 PCT

professional representatives as agents, the name of the association R. 152(11) EPC
and its registration number must be indicated in Box No. IV of the PCT OJ 2013, 500, 535
request form.

Address for correspondence

109 If no agent has been appointed, any correspondence is sent to the Art. 27(7) PCT
applicant. In that case, applicants may indicate an address for R. 4.4(d), 53.4 PCT
correspondence, which may be located anywhere in the world. This Art. 150 EPC
OJ 2014, A99
revised EPO practice for the use of an address for correspondence PCT Newsletter
entered into force on 1 November 2014. 4/2015, 9

Waiver

110 The EPO as receiving Office (and also as ISA, SISA and IPEA) has R. 90.4(d) PCT
waived the requirement that, for the effective appointment of an agent, Art. 134(8) EPC
common agent or common representative, a signed separate power of OJ 2010, 335
attorney must be submitted to it if the PCT request is not signed by (all)
the applicant(s). The waiver does not apply to a legal practitioner
referred to in Article 134(8) EPC if that person is not also a professional
representative.
111 The EPO has also waived the requirement that a copy of the general R. 90.5(c) PCT
power of attorney be attached to the PCT request or to a separate
notice if appointment of a (common) agent is made by reference to a
general power of attorney.
112 However, as a matter of strategy and caution, (common) agents and R. 90.4(e), 90.5(d),
common representatives are recommended to obtain explicit 90bis PCT
authorisation from (all) the applicant(s) by way of direct signature of the

20
http://www.wipo.int/pct/en/forms/pa/index.htm

24
 PCT request or by duly signed powers of attorney. The authorisation
of each applicant is required in any case in which a withdrawal of
any kind is submitted.
113 The EPO may require the filing of a separate power of attorney or a OJ 2010, 335
copy of a general power of attorney in any case of doubt as to the
(common) agent’s or common representative's entitlement to act.

Appointment of an agent for the European phase with the EPO as

receiving Office

114 A (common) agent appointed in the PCT request as agent for an Art. 27(7), 49 PCT
international application is appointed only for the international phase. R. 90.1 PCT
This means that a professional representative authorised to act before Art. 134 EPC
GL/EPO A-VIII, 1.5
the EPO and who acted for the applicant(s) in the international phase is WIPO PCT Guide
not automatically considered to be the representative for the European 11.001
phase. However, if the EPO is receiving Office and the agent is
appointed by separate authorisation, the applicant(s) may, at the same
time, indicate therein that the agent is also appointed to represent the
applicant(s) before the EPO as designated or elected Office in the
European phase. For the designation of an agent for the international
and European phase at the same time, the applicant may use Form
EPA/EPO/OEB 1003 available on the EPO's website. 21
115 If the appointment of an agent is effected by reference to an existing
general power of attorney and filing of a copy (see point 106), the
appointment of the agent also for the European phase must be
explicitly made in a separate notice.

For which states may international applications be filed?

116 An international application may seek patent or another form of Art. 4(1)(ii),
protection (utility model, for example) for any PCT contracting state. 11(1)(iii)(b) PCT
R. 4.9(a), (b) PCT
Art. 153(1) EPC
WIPO PCT Guide
5.052
117 Upon filing of the PCT request, the applicant will obtain automatic and
all-inclusive coverage of all designations available under the PCT on
the international filing date, in respect of every kind of protection
available and in respect of both regional and national patents. The
(automatic) designation of "EP" covers all EPC contracting states for
which the PCT and the EPC are in force on the filing date of the
international application.
118 A decision on the EPC contracting states in which protection by way of
a European patent is actually being sought need not be made until the
application enters the European phase (see points 416 ff). Therefore, if
a state accedes to the EPC after the international filing date, the EPO
cannot act as a designated Office for the EPC contracting state
concerned and no European patent can be obtained for that state. In
this respect, the date of entry into the European phase is irrelevant.

21
http://documents.epo.org/projects/babylon/eponet.nsf/0/
F0E8FAC1BF4ED2A7C125737E004E4C9A/$File/1003_form_11_11.pdf

25
 Non-designation for reasons of national law

119 For reasons of national law, check-boxes in Box No. V of the PCT R. 4.9(b) PCT
request form provide for exceptions to the otherwise automatic WIPO PCT Guide
5.053
designation of Germany (DE), Japan (JP) and the Republic of Korea
(KR). Crossing the check-box for these designations is not considered
as withdrawal of a designation, but as non-designation of the state(s)
concerned.
120 According to the national law of these states, the filing of an
international application which contains the designation of that state
and claims the priority of an earlier national application filed in that state
(for Germany: for the same kind of protection) will have the result that
the earlier national application ceases to have effect, with the same
consequences as the withdrawal of the earlier national application. To
avoid this effect, the appropriate box must be crossed (Box No. V PCT
request form). More information on so-called "self-designation" can be
obtained from the national patent offices concerned.
121 As regards the EPC contracting states, the problem of self-designation
exclusively concerns Germany (DE), and only if protection via the grant
of a national patent in Germany is sought, i.e. if the application
actually enters the German national phase. The designation of
Germany for the purposes of a European patent is not considered a
self-designation and is thus not affected. Consequently, there is no
reason for withdrawing the automatic designation of EP.
122 The national law of a number of EPC contracting states stipulates that, Art. 45(2) PCT
on the basis of a PCT application, only a European patent may be
obtained for these states. The countries which close off the route to a
national patent in this way were, on 1 January 2018, Belgium (BE),
Cyprus (CY), France (FR), Greece (GR), Ireland (IE), Italy (IT), Latvia
(LV), Lithuania (LT), Monaco (MC), Malta (MT), Netherlands (NL) and
Slovenia (SI).

Extension

123 With some European states which are not a party to the EPC and thus GL/EPO General
not "included" in the designation "EP", the EPO has concluded so- Part, 7, A-III, 12-12.5
called "extension agreements". Pursuant to such agreements and the
relevant national law, it is possible for applicants to extend European
patent applications and patents to extension states, where the
extended patents will confer essentially the same protection as patents
granted by the EPO for the current 38 member states of the European
Patent Organisation. Valid extension requires firstly that the applicant
submits a request for extension and pays the extension fee(s) in due
time, i.e. within 31 months from the date of filing (or the earliest priority
date) or six months from the date of publication of the international
search report, whichever is the later. A further requirement is that, on
the international filing date, the extension agreement has to be in force
and the extension state must both be a PCT contracting state and be
designated for a national patent in the international application.
124 The extension states listed below were already PCT contracting states
on the date of entry into force of the extension agreements. Moreover,
as from 1 January 2004, all PCT contracting states are automatically

26
 designated for a national and, where applicable, a regional patent (see
point 117).
125 On 1 January 2018, extension agreements are in force with:
– Bosnia and Herzegovina (BA) (since 1 December 2004); OJ 2004, 563, 619

– Montenegro (ME) (since 1 March 2010). OJ 2010, 10

126 As to the extension of a European patent to the Republic of OJ 2007, 406

Montenegro (ME) following its Declaration of Independence on 3 June
2006 and before entry into force of the extension agreement on
1 March 2010, please refer to the information in the Official Journal.
127 The extension agreements with Albania (AL), Croatia (HR), Latvia (LV), OJ 2002, 463
Lithuania (LT), the former Yugoslav Republic of Macedonia (MK), OJ 2003, 1
Romania (RO), Serbia (RS) and Slovenia (SI) terminated when these OJ 2004, 481
OJ 2005, 299
states acceded to the EPC. The extension system continues to apply OJ 2007, 637
after the relevant termination date for all applications filed prior to OJ 2008, 507
the date on which the extension agreement concerned terminated. OJ 2010, 96, 394

128 A decision on the states for which extension is sought - and, in OJ 2009, 603
accordance therewith, timely payment of the extension fee(s) is due -
need not be taken until the application has to enter the European phase
(see points 567 ff).

Validation

129 In addition to the extension agreements, the EPO has concluded

validation agreements with a number of states which are not a party to
the EPC and thus not included in the designation "EP" (validation
states). These validation agreements, unlike extension agreements, are
not limited to European states. Pursuant to such agreements and the
relevant national law, it is possible for applicants to validate European
patent applications and patents in validation states, where the validated
patents will confer essentially the same protection as patents granted
by the EPO for the current 38 member states of the European Patent
Organisation.
130 In order to validate European patent applications and patents in a OJ 2015, A19
validation state, an applicant has to submit a request for validation and
pay the validation fees in due time, i.e. within 31 months from the date
of filing (or the earliest priority date) or six months from the date of
publication of the international search report, whichever is the later. A
further requirement is that, on the international filing date, the validation
agreement has to be in force and the validation state must both be a
PCT contracting state and be designated for a national patent in the
international application. Thus, a decision on the states for which
validation is sought – and, in accordance therewith, timely payment of
the validation fee(s) is due – need not be taken until the application
enters the European phase (see points 123 ff).
131 On 1 January 2018, validation agreements are in force with:
– Morocco (since 1 March 2015); OJ 2015, A18, A20

– Moldova (since 1 November 2015); OJ 2016, A5

27
 – Tunisia (since 1 December 2017). OJ 2017, A84, A85

Priority claim

132 A declaration in an international application claiming the priority of one Art. 8(1) PCT
or more earlier applications filed in or for any state party to the Paris R. 2.4, 4.10 PCT
Convention for the Protection of Industrial Property ("Paris Convention") OJ 2007, 692
WIPO PCT Guide
or in or for any Member of the World Trade Organization (WTO) that is 5.007,
not party to the Paris Convention must always indicate the date on 5.057-5.071,
which the earlier application was filed, the state or states in which it was 6.038-6.044
filed and the application number(s) under which it was filed. If the
earlier application was a regional one, it suffices to give the name of the
patent-granting authority under the regional agreement - i.e. "EP" in the
case of a European application (Box No. VI PCT request form).
133 Priority from an application filed in or for a WTO Member that is not
party to the Paris Convention may only be claimed in the procedure
before the EPO as designated Office for an application filed on or after
13 December 2007.
134 If the priority application was not filed by the applicant but transferred to GL/EPO A-III, 6.1
him, the transfer must have taken place before the filing of the
application. Proof of entitlement on the international filing date must be
submitted (only) if the validity of the priority right claimed becomes
relevant in the proceedings before the EPO.

Restoration of the priority right

135 If an international application is filed after expiry of the priority period, a Art. 8 PCT
request for restoration of the right of priority under Rule 26bis.3 PCT R. 2.4, 26bis.2(c),
may be filed with the EPO as receiving Office. A request for restoration 26bis.3, 80.5, 82
PCT
of priority may also be filed with the EPO upon entry into the European Art. 122 EPC
phase, but its effect will then per se be limited to the grant procedures Art. 2(1)13 RFees
before the EPO (see points 644 ff). OJ 2007, 692
WIPO PCT Guide
5.063-5.069
PCT Newsletter
9/2015, 10,
7-8/2017, 15
136 If the last day of the priority year falls on a non-working day or an R. 80.5 PCT
official holiday of the EPO, the priority year expires on the next
subsequent working day. Rule 82 PCT concerning delay in receipt of an
international application due to irregularities in the mail and
Rule 82quater PCT concerning delays due to force majeure are not
applicable to the 12-month time limit for claiming priority, since this time
limit is not fixed in the PCT.
137 The EPO as receiving Office may only grant a request for restoration of
the right of priority if the following requirements are met:
– the international filing date is within two months from the date on
which the priority period expired;
– the request for restoration is filed within the time limit of two months
from the date on which the priority period expired;
– the fee for restoration of the right of priority is paid within the same
time limit, which is not extended if the EPO acts as receiving Office;

28
 – the request for restoration is supplemented by a statement
explaining the reasons for failure to file the application within the
priority period together with, where available, any evidence; and
– the failure to file the international application within the priority
period occurred in spite of due care required by the circumstances
having been taken by the applicant.
138 If the EPO as receiving Office intends to refuse a request for restoration
of the right of priority, further submissions and/or evidence may be filed
with the EPO within the time limit of two months from the date on which
the first communication was issued (Form PCT/RO/158). Only then, will
a final decision be taken and issued (Form PCT/RO/159).
139 A decision by the receiving Office on a request for restoration of the R. 26bis.2(c)(iii) PCT
right of priority is not required for the international search if the
application was filed within two months from the date on which the
priority period expired, because in that case the priority claim may not
be considered void during the international phase (see point 236).
140 If the applicant has not requested restoration of the right of priority in R. 49ter.1 and
the procedure before the EPO as receiving Office or if the request for 49ter.2 PCT
restoration has been rejected by the latter, the applicant may file a new
request in the national phase, i.e. in the procedures before the EPO
(see points 644 ff) and any other designated Office that has not made a
reservation as to the applicability of Rules 49ter.1 and 49ter.2 PCT.
141 If the EPO as receiving Office has granted a request for restoration,
that decision is valid and will not be reviewed in the procedure before
the EPO as designated Office (see points 648-649). If no reservation
applies, that positive decision will, as a rule, also be accepted by other
designated Offices.
142 For information as to the Offices that have made a reservation, please
refer to the information in the WIPO PCT Guide (see points 10 ff).

Furnishing of the priority document

143 Where the applicant claims the priority of an earlier application, a R. 17.1(a), (b) PCT
certified copy of that earlier application ("the priority document") must
be filed with the receiving Office or the International Bureau within 16
months after the priority date. However, if the earlier application was
filed with the receiving Office, the applicant may request that the
receiving Office transmit a certified copy of the earlier application to the
International Bureau. For that purpose, a check-box is provided in Box
No. VI of the PCT request form.
144 If the EPO is requested to prepare and transmit a certified copy of a R. 17.1(b) PCT
priority document to the International Bureau, a fee is due. Art. 3(1) RFees

145 Please note that the procedure whereby the EPO includes, free of R. 17.1(a),
charge, a copy of the previous application from which priority is claimed (b-bis) PCT
in the file of a European patent application does not apply in respect of OJ 2012, 492
PCT Newsletter
an international application processed by the EPO as receiving Office 12/2010, 7
(see point 634). Moreover, in the case of an EP priority document, the
obligation to furnish such a priority document cannot be met by a
request to the IB under the Digital Access Service (DAS) to retrieve it

29
 from an electronic library, because the EPO does not participate in this
system. However, where the earlier application was filed as a national
application with a national office that participates in DAS, the IB may be
requested to obtain a certified copy of the earlier application from the
digital library. For that purpose a check-box and a text field for the
required access code are provided in Box No. VI of the PCT request
form.
146 A priority document issued in paper form should also be submitted in OJ 2014, A98
that form to the EPO to ensure the validity of its certification. For that OJ 2015, A27, A91
OJ 2017, A59
reason, it may not be filed by fax or using the EPO web-form filing
service. On the other hand, priority documents issued in electronic form
are accepted only if they are digitally signed by the issuing authority
and if that signature is also accepted by the EPO. At present, only the
Online Filing software supports the submission of priority documents
issued in electronic form (see points 67 and 77).

The International Searching Authority (ISA)

147 If an international application is filed with the EPO acting as receiving Art. 16 PCT
Office, the EPO is the only competent ISA. Therefore, this need not R. 4.1(b)(iv), 4.14bis
PCT
be entered in Box No. VII of the PCT request form.
Art. 152 EPC
Informal comments on earlier search results under PCT Direct

148 On 1 November 2014, the EPO launched the PCT Direct service for OJ 2014, A89
international applications filed with the EPO as receiving Office. On OJ 2017, A21
1 July 2015, this service was extended to all the other receiving Offices.
Thus, under PCT Direct, an applicant filing an international application
with any receiving Office and claiming priority from an earlier
application already searched by the EPO may, together with the
request form, file a letter containing informal comments aimed at
overcoming objections raised in the search opinion established by the
EPO for the priority application (see point 238). The EPO as ISA will
take such informal comments into account when establishing the ISR
and WO-ISA.

Taking an earlier search into account

149 The applicant may file a request with the receiving Office that the result R. 4.12 PCT
of an earlier search carried out by the EPO or by any other office be
taken into account. A refund of the international search fee is, however,
granted only under the conditions set out in point 150.

Refund of the international search fee

150 If the search for the international application is based entirely or partly R. 4.12, 12bis.1(d),
on an earlier search report already prepared by the EPO on an 16.3, 41 PCT
application whose priority is validly claimed (Box No. VI of the PCT Art. 9(2) RFees
Agreement EPO-
request form), the applicant may obtain a refund of the international WIPO Art. 5(2)
search fee. The EPO acting as ISA decides whether the requirements OJ 2009, 99
are met and, where applicable, refunds the applicable amount (see OJ 2010, 304
point 217). Where priority is claimed from an application for which the OJ 2014, A40, A117
OJ 2017, A95
EPO carried out a search, the continuation section of Box No. VII in the GL/EPO A-X, 10.2.3
PCT request does not need to be filled in. WIPO PCT Guide
5.073

30
151 No refund is made for any search other than a search carried out by the
EPO on an application from which the right of priority is validly claimed.

Applications containing a reference to biological material

152 Under the PCT, the question as to whether a reference to deposited R. 13bis PCT
biological material must be included in an international application is R. 31-34 EPC
left to the national law of the designated states. The PCT, however, OJ 2010, 498
Section 209 AI
prescribes the contents of a required reference and sets the time limit WIPO PCT Guide
for providing such a reference. 11.075-11.087
PCT Newsletter
11/2014, 13
153 Each designated Office decides whether a reference to biological
material in accordance with the provisions of the PCT satisfies the
requirements of its national law as to the content and time for furnishing
the reference. However, a national requirement may be added and
become a PCT requirement upon notification to the IB. The EPO has
made use of this possibility (see points 154-155).
154 The EPO has notified the IB that the following additional matter should R. 13bis.4, 7 PCT
be indicated by an applicant wishing to enter the European phase: R. 31(1)(d) EPC

To the extent available to the applicant, relevant information on the

characteristics of the biological material should be mentioned in the
application as filed, and where the biological material has not been
deposited by (one of) the applicant(s) but by someone else, the name
and address of the latter person (the depositor) must be stated in the
international application. Moreover, a document must be submitted to
the IB within 16 months from the priority date in which the depositor:
– has authorised the applicant to refer to the biological material, and
– has given his/her unreserved and irrevocable consent to the
deposited material being made available to the public.
155 Such authorisation is, however, not required if the depositor transferred
his rights in the deposit to the applicant on the filing date at the latest. In
that case, the document containing the transfer must be submitted
instead. For further information see Annex L to the WIPO PCT Guide.
156 If any requirement concerning a reference to biological material is not
met within 16 months from the priority date of the application, this
cannot be remedied in the procedure before the EPO as a designated
Office, i.e. upon entry into the European phase. As a consequence, the
international application may be refused for insufficient disclosure in the
course of the examination proceedings before the EPO as
designated/elected Office.
157 Details of deposited biological material which are not included in the
description should be supplied on a separate form (PCT/RO/134) (Box
No. IX, check-box No. 7 PCT request form). This form must likewise be
used if the applicant wishes samples to be made available only to an
expert.

31
158 The furnishing of samples of biological material by the EPO takes place R. 13bis.6 PCT
in conformity with Rule 13bis PCT and Rule 33 EPC. As a R. 32(1), 33 EPC
OJ 1992, 470
consequence, if the requirements of Rule 33 EPC are met, requests for
OJ 2010, 498
the furnishing of samples of biological material are certified by the EPO PCT Newsletter
in its capacity as designated Office vis-à-vis third parties as from 7-8/2010, 6
international publication in an EPO language, i.e. during the 11/2011, 5
international phase. The EPO has notified the IB that if the applicant
wishes the biological material to be made available only by the issue of
a sample to an expert nominated by the requester, the applicant must
inform the IB accordingly before completion of the technical
preparations for publication of the international application, where such
publication takes place in one of the EPO's official languages. If the
international application was not published in an official language of the
EPO, notification of the expert solution may be submitted until
completion of the technical preparations for publication of the
translation of this application. The fact that this solution has been
chosen will be published by WIPO on its Patentscope website and/or, if
applicable, on the front page of the published translation of the
application.

Applications disclosing nucleotide and/or amino acid sequences

159 If the international application discloses one or more nucleotide and/or R. 5.2, 13ter.1 PCT
amino acid sequences, it must contain a sequence listing, which is to OJ 2011, 372
be drawn up in compliance with the standard prescribed in Annex C of OJ 2013, 542
Section 101, 207,
the Administrative Instructions under the PCT and published on the 208, 513, 610,
WIPO website. More specifically, the sequence listing must comply with 707(a) and (a-bis)
the version of WIPO Standard ST.25 which is applicable on the date on Annex C AI
which the sequence listing is submitted. 22 WIPO PCT Guide
5.099-5.108,
7.005-7.012, 11.088
PCT Newsletter
7-8/2009, 10
12/2010, 5
12/2015, 9
160 Any sequence listing not contained in the international application as
filed will, if not allowable as an amendment under Article 34 PCT (see
points 362 ff), not form part of the international application.
161 Tables related to sequence listings must be included as an integral part
of the description in the same format as the remainder of the
application. Any pages of tables relating to sequence listings count as
regular pages of the description for which full page fees are payable
(see point 176).
162 The EPO accepts sequence listings filed on electronic media as
specified by the EPO (see point 55).
163 If an international application is filed in electronic form, a sequence
listing forming part of such application and filed in text format in
compliance with Annex C is not taken into account for calculating the
(page fee part of the) international filing fee (see point 176). There will
be no need to file a second copy for the purposes of international

22
www.wipo.int/export/sites/www/standards/en/pdf/archives/03-25-01arc2009.pdf

32
 search and, where applicable, international preliminary examination
(see points 263, 393).
164 If any other option for filing a sequence listing is chosen, e.g. filing on R. 13ter.1 PCT
paper or in image format, the sum of the page fee part of the OJ 2011, 372
international filing fee is calculated taking into account each page of the OJ 2013, 542
GL/PCT-EPO B-VIII,
sequence listing. Furthermore, if the EPO is selected as ISA, SISA 3.2;
and/or IPEA a sequence listing in electronic form in text format in GL/EPO E-IX, 2.4.2
compliance with Annex C will be required (see points 263 ff).

Signature

165 The PCT request form or, where applicable, the power of attorney must R. 4.1(d), 4.15,
be signed by the applicant. 26.2bis(a),
51bis.1(a)(vi) PCT
WIPO PCT Guide
5.088-5.091
166 Where there are two or more applicants, each applicant must sign the
request, or each applicant for whom an agent has been appointed must
sign a power of attorney (Box No. IX PCT request form). However, if
there is more than one applicant, the EPO as receiving Office will not
invite the applicant to furnish the missing signature(s) if the PCT
request form is signed by at least one of the applicants. Any
designated Office, however, may require the missing signature of any
applicant who has not signed the PCT request for that designated state.
167 The EPO as designated Office does not require a missing signature to
be submitted upon entry into the European phase.
168 If not the applicant but his agent has signed the PCT request form, a R. 90.3, 90.4,
signed power of attorney or a copy of a general power of attorney need 90.5 PCT
OJ 2010, 335
not be submitted since this requirement has been waived by the EPO
(see point 110). However, as a matter of strategy and caution, it is
recommended that agents obtain explicit authorisation from all
applicants, by way of either direct signature or power of attorney (see
points 112 ff).

Language of the international application

169 The international application, i.e. the request, description, claim(s), Art. 3(4)(i), 11(1)(ii)
drawing(s) and abstract, must be filed with the EPO as receiving Office PCT
in English, French or German. An international application filed in R. 12, 19.4 PCT
Art. 14, 150(2) EPC
another language will be forwarded to the IB to act as receiving Office R. 3, 157(2) EPC
instead of the EPO. This means that there is no possibility to file an WIPO PCT Guide
application with the EPO as receiving Office in any other language as is 5.013-5.014
provided under Article 14 EPC for European patent applications not
filed via the PCT route (Euro-direct applications).
170 If an application is filed with the EPO as receiving Office in one of its G 4/08
official languages, that language will be the language of the OJ 2010, 572
proceedings which may not be changed either during the international
phase or on entry into the European phase (see points 422-423).
However, with the exception of amendments and corrections to the
application, for which the language of the international application must
be used, any other correspondence with the EPO may be in any of the
EPO's three official languages.

33
 Fees

171 For fee payments to be made during the international phase, please Art. 3(4)(iv) PCT
consult the latest information available on both the EPO and the WIPO R. 14-16 PCT
WIPO PCT Guide
websites. Furthermore, guidance for the payment of fees, expenses
5.184-5.199
and prices is provided in every issue of the Official Journal.
172 Anyone can validly make fee payments to the EPO: applicants,
representatives and any other person.
173 For international applications the following fees are payable direct to
the EPO as receiving Office:
– the transmittal fee,
– the international filing fee, and
– the international search fee.
174 The transmittal, international filing and search fees are payable within R. 14.1, 15.3,
one month of receipt of the international application. 16.1(f) PCT
PCT Newsletter
5/2015, 10
175 If the application contains more than 30 pages, the international filing
fee increases, with a fixed sum to be paid for each page in excess of
30 pages. This extra fee is considered part of the international filing fee
and must be paid by the applicant together with the (basic) filing fee.
The applicant should compute the extra amount himself and not wait for
a communication, because as from expiry of the one month time limit
the missing amount may only be validly paid together with a late
payment fee (see point 189).
176 If the application contains a sequence listing as part of the description,
the pages forming that part are not taken into account for calculating
the page fee if all requirements are met (see point 163).

Amounts of fees

177 The amounts of the transmittal and international search fee are set by R. 157(4) EPC
the EPO and laid down in the EPO's current Schedule of fees and Art. 2(1).2, 2(1).18
expenses published in the Official Journal. RFees

178 The conditions for a reduction in the international search fee are set out
in points 215 ff.
179 The amount of the international filing fee, including the page fee, is set R. 15.3, 16.1(f),
by WIPO in Swiss francs and is specified in the Schedule of Fees which 14.1(c), 96.1 PCT
is annexed to the PCT Regulations (PCT Schedule of Fees) and forms PCT Schedule of
Fees
an integral part thereof. If this fee is paid to the EPO as RO, it must be OJ 2017, A102
paid in euros. Due to changes in the exchange rate between the euro
and the Swiss franc, the equivalent amount is changed from time to
time. This is announced by WIPO in its PCT Newsletter and by the
EPO in its Official Journal. The amounts payable in respect of the
international filing fee, the search fee and the transmittal fee are those
applicable on the date of receipt of the international application.
180 The conditions for a reduction in the international filing fee are set out in
points 183 ff.

34
 Payment methods

181 All fees which are to be paid to the EPO must be paid in euros by OJ 2007, 626
payment or transfer to a bank account held by the EPO. For persons OJ 2015, A53, A65
OJ 2015, Suppl.
having a deposit account with the EPO payment may be made by debit
Publ. 3
order. As from 1 December 2017, the EPO has moved to "online-only" OJ 2017, Suppl.
management of users’ deposit accounts. This means that as from that Publ. 5
date, all debit orders must be filed in an electronically processable OJ 2017, A72, A73
format (XML) using one of the accepted electronic means of filing. A
debit order can also be submitted in electronic form via the EPO's
Online Fee Payment portal. Automatic debiting has been available for
any fee payments to the EPO as receiving Office, ISA and IPEA since 1
April 2015. Payment of fees by credit card became possible on 1
December 2017. Payment by cheque was abolished by the EPO in
2008. Every issue of the Official Journal provides guidance for the
payment of fees.
182 The date to be considered as the date on which a payment is made is Art. 7(1) RFees
established in accordance with the EPO's Rules relating to Fees.

Reductions

183 The international filing fee is reduced by 90% if the requirements Point 5 PCT
stipulated in point 5 of the PCT Schedule of Fees are met. If there are Schedule of Fees
several applicants, each of them must satisfy the requirements for the WIPO PCT Guide
5.188
reduction to apply. PCT Newsletter
6/2015, 13
PCT Newsletter
7-8/2015, 5
184 In respect of applicants entitled to file an international application with
the EPO as receiving Office (see point 46), the reduction applies if the
applicant is a natural person who is a national of and resides in one of
the following states: Albania (AL), Bulgaria (BG), Croatia (HR), Cyprus
(CY), Czech Republic (CZ), Estonia (EE), Greece (GR), Hungary (HU),
Latvia (LV), Lithuania (LT), Former Yugoslav Republic of Macedonia
(MK), Malta (MT), Poland (PL), Portugal (PT), Romania (RO), Serbia
(RS), Slovakia (SK), Slovenia (SI), Turkey (TR). On 1 January 2018,
these EPC/PCT contracting states fell within the criteria of point 5(a) of
the PCT Schedule of Fees.
185 If the application is filed by more than one applicant, only one must be a
national and resident of one of the EPC/PCT contracting states listed
above, but each applicant must fulfil the criteria mentioned under
point 5 of the PCT Schedule of Fees.
186 A list of states whose nationals/residents may satisfy the requirements
for a reduction is published in the PCT Newsletter.
187 With the EPO acting as receiving Office, there is a reduction in the WIPO PCT Guide
international filing fee if the application is filed in electronic form (see 5.189
point 50). The level of the reduction depends on the format in which the
application is filed (PDF or XML format).
188 The PCT request form contains a Fee Calculation Sheet which
applicants are asked to use for calculating fees (Annex VII).

35
 Late payment of fees

189 If no fees are paid within the prescribed time limits (see point 174), or if Art. 14(3)(a) PCT
the amounts paid are not sufficient to cover the fees due, the EPO R. 16bis PCT
OJ 1992, 383
invites the applicant to pay the missing amount together with a late
WIPO PCT Guide
payment fee of 50% of the amount of unpaid fees but at least an 5.193-5.196
amount equal to the transmittal fee. PCT Newsletter
5/2015, 10
190 The late filing fee may not exceed the amount of 50% of the
international filing fee as specified in the PCT Schedule of Fees,
without taking into account any fee due for each page of the
international application in excess of 30 pages.
191 If the applicant fails to pay the prescribed fees together with the late
payment fee within one month of the date of the invitation, the
international application will be considered withdrawn and the receiving
Office will so declare.

36
C. The EPO as an International Searching
Authority (ISA) and a Supplementary
International Searching Authority (SISA)
I. General
192 Since 1 July 2010 the EPO, in its capacity as an International Authority
under the PCT, has acted not only as an ISA and an IPEA, but also as
a Supplementary International Searching Authority (SISA). This chapter
first sets out the procedure before the EPO acting as ISA, and at the
end provides information on the procedure before the EPO acting as
SISA (see points 275 ff). Chapter D provides information on the
procedure before the EPO acting as IPEA.
193 The Agreement EPO-WIPO sets out particulars of the procedures OJ 2017, A115
before the EPO as an International Authority. In view of the expiry of
the previous agreement, a new agreement has been concluded,
entering into force on 1 January 2018.

The role of the EPO as ISA

194 For every international application, the EPO as ISA issues either an Art. 17(2), 18 PCT
International Search Report (ISR) and a Written Opinion of the
International Searching Authority (WO-ISA) under Chapter I PCT or, in
exceptional cases, a Declaration of Non-Establishment of International
Search Report and a WO-ISA indicating that the ISA is not required to
perform a search or cannot perform a meaningful search (see
points 223 ff).
195 The ISR contains, among other things, the citations of the prior art R. 43 PCT
documents considered relevant, the classification of the subject-matter
of the invention and an indication of the fields searched.
196 The WO-ISA provides the applicant with a preliminary, non-binding
opinion on the issues of novelty, inventive step and industrial
applicability. This allows the applicant to assess, already at the search
stage, whether to proceed directly to the national/regional phase or to
file a demand under Chapter II PCT in order to overcome objections
raised in the WO-ISA and possibly receive a positive IPER. However,
before taking a decision on filing a demand for international preliminary
examination, applicants are advised to consider carefully the
information regarding the usefulness of the procedure under Chapter II
PCT (see points 295 ff).

Competence of the EPO as ISA

197 Although the EPO's competence to act as ISA is, in principle, Art. 16 PCT
universal, i.e. not restricted to international applications from e.g. EPC R. 35 PCT
contracting states, its competence to act as ISA for an international Art. 152 EPC
Agreement EPO-
application is, as set out below, not automatically applicable (see WIPO, Art. 3(1)
points 198 ff). OJ 2017, A115
WIPO PCT Guide
7.002

37
 Specification by the receiving Office

198 The EPO can act as ISA only on condition that the receiving Office
where the application was filed has specified the EPO as ISA.
199 Since most receiving Offices have specified the EPO, only states that
had not (yet) specified the EPO as ISA (and IPEA) on 1 January 2018
are mentioned here: United Arab Emirates (AE), Australia (AU),
Canada (CA), China (CN), Dominica (DM), Saint Kitts and Nevis (KN),
Democratic People’s Republic of Korea (KP), Republic of Korea (KR)
and Papua New Guinea (PG). Up-to-date information is available on
the WIPO website (see point 14).
200 If the IB is acting as receiving Office, the EPO is competent as Agreement EPO-
ISA/IPEA if the international application could have been filed with a WIPO, Art. 3(3)
receiving Office which had specified the EPO as ISA/IPEA at the date OJ 2017, A115
of filing.

Lifting of the competence limitation

201 As a result of an amendment to the previous Agreement between the OJ 2017, A115
EPO and WIPO under the PCT, any national or resident of the USA
filing an international application on or after 1 January 2015 with the
USPTO or the IB as receiving Office can select the EPO as ISA or
IPEA, irrespective of the technical field of the international application.
This amendment is reflected in the new agreement which entered into
force on 1 January 2018. It should, however, be noted that the Notice
from the EPO dated 1 October 2007 concerning business methods
remains applicable.

Choice of ISA and consequences

202 If the receiving Office has specified more than one ISA, the applicant R. 4.1(b)(iv),
must indicate his choice of ISA in the PCT request (Box No. VII) and in 4.14bis PCT
the Fee Calculation Sheet (Box No. 2) (see Annex VII). Only one ISA Agreement EPO-
WIPO, Art. 3(2),
may be selected. For example, the EPO may be chosen as ISA for Annex A(ii)
applications filed with the USPTO and for applications in English filed OJ 2017, A115
with the JPO as receiving Office.
203 Applicants considering their choice of ISA are advised to bear in mind
that the EPO will act as an IPEA only if the international search was
carried out by the EPO itself or by another European ISA. On
1 January 2018, the EPO, the Austrian, Finnish, Spanish, Swedish and
Turkish patent offices as well as the Nordic Patent Institute and the
Visegrad Patent Institute were acting as European ISAs (see
point 311).
204 If the EPO acts as ISA or SISA, no supplementary European search is OJ 2009, 594
carried out. Therefore, no search fee will be due on entry into the
European phase (see point 583).
205 If the EPO acts as IPEA, there is a reduction of 50% of the examination Art. 14(2) RFees
fee in the European phase (see point 607).

38
 Translation

206 For the purpose of the international search by the EPO as ISA, the R. 12.3 PCT
application must be in one of its three official languages, i.e. English,
French or German. Where the international application is filed in a
different language the applicant must file a translation into one of the
three official languages of the EPO with the receiving Office. Such
translation must be furnished within one month of the date of receipt of
the international application by the receiving Office.
207 If the application was not filed in a PCT language of publication, the R. 48.3 PCT
language of the translation submitted for the purpose of the procedure OJ 2010, 572
before the EPO as ISA determines the language in which the
international application is published. In any case where the language
of the international publication is an official language of the EPO, that
language will be the language of the proceedings in the European
phase and cannot be changed. Therefore, applicants should carefully
consider in which language they submit a translation for the purpose of
international search.
208 Upon receipt of payment of the international search fee, the receiving Art. 12(1) PCT
Office will promptly forward a copy of the translation and of the PCT R. 23.1(b) PCT
request form ("search copy") to the EPO as ISA.

Language of further correspondence

209 In any further correspondence with the EPO as ISA, the applicant may R. 92.2(b) PCT
use any of the three official languages of the EPO (see point 170). OJ 1993, 540

Application filed in Dutch

210 An exception to the translation requirements for the purpose of R. 12.3, 12.4, 43.4,
international search by the EPO as ISA applies only if the application 48.3 PCT
was filed with the Belgian or Netherlands patent office as receiving Agreement EPO-
WIPO, Annex A(i)
Office. The EPO as ISA also accepts applications drawn up in Dutch, OJ 2017, A115
even though it is not an official EPO language. Therefore, a translation
of an international application filed in Dutch with the Belgian or
Netherlands patent office is not required for the purpose of the
international search by the EPO as ISA. However, within 14 months
from the priority date a translation must be filed with the receiving Office
in a language of publication accepted by the receiving Office for the
purpose of international publication. The ISR and WO-ISA will be
established in the language of the international publication. For the
above reasons, filing an application in Dutch should be carefully
considered.

Representation before the EPO as ISA

211 Applicants may be represented before the EPO as ISA by the agent Art. 49 PCT
appointed on filing the international application and having the right to R. 83.1bis(b),
practise before the receiving Office, i.e. the agent for the international 90.1(a), (b), (d) PCT
WIPO PCT Guide
phase (see points 36 ff). 11.001-11.014
PCT Newsletter
4/2008, 7
212 An applicant may also appoint an agent to represent him specifically
before the EPO in its capacity as ISA. Moreover, the agent appointed

39
 for the international phase - and thus including for the procedure before
the ISA - may appoint a sub-agent to represent the applicant
specifically before the EPO as ISA. All communications issued by the
ISA are sent to the agent specifically appointed for the procedure
before the EPO as ISA.
213 Any agent specifically appointed to act before the EPO as ISA must be
entitled to practise before the EPO (see point 99).
214 The requirement in respect of filing a separate power of attorney or a OJ 2010, 335
copy of a general power of attorney has been waived by the EPO as
ISA (see point 110).

Reduction of the search fee

215 The search fee to be paid if the EPO acts as ISA is reduced by 75% OJ 2008, 521
where the applicant or, if there are two or more applicants, each GL/PCT-EPO A-II,
applicant is a natural person who is a national and resident of a state 8.2
WIPO PCT Guide
not party to the EPC which on the date of filing of the application is 5.188-5.190
classified as a low-income or lower-middle-income economy by the
World Bank. A table listing these states is available on the EPO
website. 23
216 The consequence of the requirement that each applicant must be a
natural person who is a national and resident of a state not party to the
EPC is that applicants with the nationality of or residence in an EPC
contracting state for that reason alone do not fulfil the requirements for
the reduction in the search fee (and the fee for international preliminary
examination). It is, however, possible that they fulfil the requirements
for the reduction in the international filing fee (see point 183) and the
handling fee (see point 352).

Refund of the search fee

217 Where the EPO can base the ISR on an earlier search that it has R. 4.12, 12bis, 16.3,
carried out for an application whose priority is validly claimed for the 41.1 PCT
international application, the international search fee paid will be OJ 2009, 99
OJ 2017, A95
refunded in part or in full, depending on the extent to which the EPO WIPO PCT Guide
benefits from that earlier search (see point 150). 5.073

218 No refund is made for an earlier search that was not carried out by the
EPO itself and/or if priority has not been validly claimed (see point 151).

II. The procedure before the EPO as ISA

General

219 The objective of the international search is to discover relevant prior Art. 15, 27(5) PCT
art. The PCT defines prior art as consisting of everything which has R. 33.1 PCT
been made available to the public anywhere in the world by means of a GL/PCT-EPO B-II, 2,
B-III, 1
written disclosure. Prior art is relevant if it is of assistance in
determining whether the claimed invention is new and involves an
inventive step.

23
www.epo.org/applying/forms-fees/international-fees/information.html

40
220 The definition of prior art in Rule 33 PCT is valid exclusively for the
international phase of the procedure. This means that, during the
European phase, the EPO applies the criteria applicable under the EPC
for determining the relevant prior art. However, the scope of an
international search is equivalent to that of a European search. This
means that there is no difference between an international and a
European search, either in respect of the method and quality of the
search or in respect of the sources of prior art searched.
221 The EPO conducts the international search in accordance with the
ISPE Guidelines (see point 19). In a number of cases, these guidelines
leave it to the ISA concerned to choose between two or more (policy)
options. A list of the options chosen by the EPO is provided in
Annex IV.
222 In accordance with the principle of supplementary application of the
EPC, the EPO as ISA applies the Guidelines for Examination in the
EPO where the PCT-EPO Guidelines and the ISPE Guidelines are
silent (see points 16-21).

Establishing the ISR and the WO-ISA

223 For every international application the EPO as ISA issues either an Art. 15, 18 PCT
International Search Report (ISR) or, in exceptional cases, a R. 43, 43bis, 44 PCT
"Declaration of Non-Establishment of International Search Report" (see OJ 2003, 574
point 255), and a Written Opinion of the International Searching
Authority (WO-ISA).
224 The procedure for establishing the ISR and the WO-ISA is similar to
that for establishing the European search report and the European
Search Opinion (ESOP).
225 The WO-ISA provides the applicant with a preliminary non-binding R. 43bis.1 PCT
written opinion on the question whether the claimed invention appears
to be novel, to involve an inventive step and to be industrially
applicable. A WO-ISA established by the EPO as ISA will be
comparable to the written opinion established by the EPO for a Euro-
direct application (ESOP) (see point 220).
226 Where appropriate, the WO-ISA will also provide an opinion on issues
such as added subject-matter, unity of invention, insufficiency of
disclosure, support for the claims in the description, clarity, conciseness
and formal defects (e.g. missing reference signs).
227 The WO-ISA may be positive or negative. A WO-ISA is qualified as
positive if it contains no objections or only minor objections which would
not prevent a direct grant in the European phase. In any other case the
WO-ISA is considered negative (see point 231).
228 The ISR is established within three months from receipt of the search R. 42 PCT
copy at the EPO as ISA or within nine months from the earliest priority WIPO PCT Guide
date, whichever time limit expires later. 7.023

229 The WO-ISA is established at the same time as the ISR. Both
documents are sent to the applicant and the IB. The applicant also
receives a copy of each document cited in the ISR.

41
230 As from 1 January 2018, an information sheet ("Information on Search OJ 2017, A106
Strategy") is annexed to all search reports drawn up by the EPO under
both the PCT and EP procedures. This information sheet contains
details about the databases and keywords used by examiners to
retrieve the relevant prior art, as well as the classification symbols
defining the extent of the search. Information sheets are made available
via file inspection on WIPO’s PATENTSCOPE and in the European
Patent Register upon publication of the search report.
231 If the EPO acted as ISA (but not as IPEA), the applicant must provide a R. 161 EPC
substantive response to any deficiencies set out in the WO-ISA GL/EPO E-IX, 3.2
("negative WO-ISA") upon entry into the European phase ("mandatory
response") (see points 502 ff).

Multiple independent claims

232 As a rule, the WO-ISA provides an opinion on all searched claims. Art. 6 PCT
However, if there are multiple independent claims, only one
independent claim in each category is dealt with in detail. In respect of
further independent claims, short comments are made. Where
appropriate, an objection as to clarity and conciseness under Article 6
PCT may be raised. Further, the ISA may exercise its discretion to ask
the applicant to clarify the subject-matter to be searched (see
point 262).

Validity of priority claims

233 If, at the time the search is conducted, the priority document(s) is (are)
not available to the ISA, the search will be conducted as if the priority
claim(s) is (are) valid.

Incorporation by reference of missing parts and elements

234 If the receiving Office has granted a request for incorporation by R. 4.18, 20.6 PCT
reference under Rules 4.18 and 20.6 PCT (see points 81 ff), but the
EPO as ISA does not consider the relevant part(s) and/or element
completely contained in the priority application, it will indicate this
negative finding in the WO-ISA, for instance if the missing text has
been inserted into the description of the application in such a way that it
does not have exactly the same meaning as in the priority document.
235 Furthermore the search will be extended to cover all prior art that will be
relevant if, in accordance with the ISA's findings, the international
application is re-dated by a designated Office in the national phase.
Re-dating of the filing date can be avoided on condition that the
applicant withdraws the later filed parts or elements that are not
considered completely contained in the priority application (see
points 81 ff).

Restoration of the right of priority

236 The EPO as ISA must consider any priority claim to be valid if the R. 26bis.2(c) PCT
international application claiming the priority right is filed within two
months after expiry of the priority year ("retention principle"). Therefore,
even if no request for restoration of right of priority has been filed, or if
such request has been rejected or has not yet been decided upon at

42
 the time the international search is carried out, this has no bearing on
the procedure before the ISA (see point 139).

Taking earlier search and classification results into account

237 For international applications filed on or after 1 July 2017, in carrying R. 23bis.2, 41.2 PCT
out the international search the EPO as ISA may take earlier search
results into account where the applicant makes a request to that effect
under Rule 4.12 PCT as well as in the cases envisaged under Rule
41.2 PCT. This means that the EPO as ISA will also be able to take
earlier search and classification results into account where the
international application claims the priority of one or more earlier
applications in respect of which an earlier search has been carried out
by the EPO, or where the RO has transmitted to it a copy of the results
of any earlier search or of any earlier classification under Rule
23bis.2(a) or (c) PCT, or where such a copy is available to it in a form
and manner acceptable to it.

PCT Direct service

238 If the applicant has made use of the PCT Direct service by filing, OJ 2017, A21
together with the international application, informal comments on the
EPO’s earlier search results for the priority application (see point 148),
the EPO as ISA will take such informal comments into account when
establishing the ISR and WO-ISA. On 1 July 2015, this service was
extended to all receiving Offices. As a result, applicants who selected
the EPO as ISA will be able to use the service and submit PCT Direct
letters irrespective of the receiving Office chosen. The PCT Direct
service is useful for applicants interested in a positive WO-ISA in cases
where the EPO has raised objections in the search opinion for the
priority application. The informal comments should be in the form of a
"PCT Direct letter" filed together with the international application and
should aim at overcoming the objections raised for the priority
application, in particular by explaining any amendments made
compared to the priority application and by commenting on the
objections raised.

International publication of the application and the ISR

239 International publication by the IB takes place promptly after expiry of Art. 21 PCT
18 months from the priority date. If the ISR is available at that time, it R. 48 PCT
will be published together with the application. If not, the ISR is
published separately from the international application on receipt by the
IB.
240 A WO-ISA for an international application filed on or after 1 July 2014
will be made available to the public as of the date of publication of the
international application.

Procedure after receipt of the ISR and WO-ISA

241 There is no possibility for any form of dialogue between the applicant Art. 19 PCT
and the ISA on the content of the ISR and/or the WO-ISA. However, the R. 46 PCT
applicant has the right to submit to the IB amendments to the claims PCT Newsletter
10/2004, 7
pursuant to Article 19 PCT, as well as informal written comments on the 6/2010, 8
WO-ISA. Moreover, the applicant may consider filing a demand for

43
 international preliminary examination under Chapter II PCT (see
points 300 ff).

Amendments under Article 19 PCT

242 Amendments under Article 19 PCT are published by the IB. They are WIPO PCT Guide
particularly useful if there is a reason to better define the scope of the 9.004-9.011
claims for the purpose of securing provisional protection in the PCT
contracting states offering it (see point 671).
243 If the applicant wishes to file amendments to the claims, he must R. 46.4 and 46.5
submit a complete set of the claims in replacement of all claims PCT
originally filed. Further, the basis for the amendments in the application Section 205 AI
WIPO PCT Guide
as filed must be indicated in an accompanying letter. 9.004-9.011
PCT Newsletter
9/2010, 12
244 Amendments under Article 19 PCT are to be filed exclusively with the PCT Newsletter
IB in the language of the international publication. 6/2010, 8

245 Any amendment to the claims under Article 19 PCT is to be made: R. 46.1 PCT

– within two months from the date of transmittal of the search report,
or
– within 16 months from the (earliest) priority date,
whichever time limit expires later.
Later filed amendments are accepted if they are received before the
technical preparations for international publication have been
completed.

Informal comments

246 If the applicant wishes to file informal comments, he may file them PCT Newsletter
exclusively with the IB. Informal comments must be in the language of 4/2015, 8
the international publication and may be submitted only during the
international phase, i.e. within 30 months from the (earliest) priority
date, but preferably before expiry of 28 months from the priority date.
The IB will not send such comments to the IPEA.

Demand for international preliminary examination

247 If a demand for international preliminary examination under Chapter II WIPO PCT Guide
PCT is filed, any response to the WO-ISA must be submitted to the 7.030
IPEA in the form of amendments and/or arguments under Article 34
PCT as part of the preliminary examination procedure (see
points 362 ff).

International Preliminary Report on Patentability Chapter I

248 If no demand for international preliminary examination is filed, the IB R. 44bis PCT
will convert the WO-ISA into the International Preliminary Report on
Patentability (IPRP Chapter I). Further, the IPRP Chapter I will be
communicated to all designated Offices after expiry of 30 months from
the priority date. A copy is promptly sent to the applicant. Any informal
comments received will be annexed to the IPRP Chapter I.

44
249 The IPRP Chapter I, together with any informal comments, will be made R. 94.1(b) PCT
available for public inspection at the IB, but not before the international GL/PCT-EPO C-I, 3
PCT Gazette,
publication of the international application and subject to Article 38 and
12 May 2016, 93
Rule 94.1(d) to (g) PCT.

Patent Prosecution Highway (PPH) based on a WO-ISA

established by the EPO as ISA

250 The PPH enables applicants whose claims have been determined to be OJ 2015, A6, A7,
patentable/allowable to have a corresponding application that has been A70
filed with a PPH partner office processed in an accelerated manner OJ 2016, A44, A54,
A68, A75, A106
while at the same time allowing the offices involved to exploit available OJ 2017, A46, A47,
work results. A67, A77

251 Under the PPH pilot programme at the EPO, a PPH request can also
be based on the latest PCT work product, i.e. the WO-ISA or the
IPER. Where the EPO is the ISA (and/or IPEA) and the international
application contains claims that are determined to be
patentable/allowable by the EPO as ISA (and/or IPEA), the applicant
may, under the PPH pilot programme, request accelerated examination
at the EPO’s PPH partner offices. The EPO maintains a comprehensive
PPH pilot programme with the other IP5 offices, i.e. JPO, KIPO, SIPO
and USPTO, and has launched bilateral PPH pilot programmes with
CIPO (Canada), ILPO (Israel), IMPI (Mexico), IPOS (Singapore), IPA
(Australia), SIC (Colombia), ROSPATENT (Russian Federation),
MyIPO (Malaysia), IPOPHL (Philippines) and EAPO (Eurasian Patent
Office).
252 Irrespective of the PPH pilot programme, any applicant may request OJ 2010, 352
accelerated examination under the PACE programme in the procedure OJ 2015, A93
before the EPO as designated Office, at any time. For more information
on the PACE programme, please refer to points 445 ff.

III. Refusal to perform a (full) international search

When may the EPO refuse to conduct a (full) search?

253 There are several reasons why the EPO as ISA may refuse or will not
be able to perform a (full) international search. Such refusal may relate
to the subject-matter of the application (see point 257), non-compliance
with requirements regarding the description, claims or drawings of the
application (see point 260), missing sequence listings (see point 264) or
lack of unity of invention (see points 265 ff).
254 If a claim relates to an invention in respect of which no international R. 66.1(e) PCT
search was carried out, the EPO as IPEA will not carry out international
preliminary examination in respect of that claim (see point 386). This
also applies if amendments and/or arguments under Article 34 PCT
have been filed.

No search

255 If all claims are found unsearchable, the EPO as ISA will establish a Art. 17(2)(a) PCT
"Declaration of Non-Establishment of International Search Report" PCT Newsletter
instead of an International Search Report and give reasons for the 10/2007, 7
decision in that declaration and in the WO-ISA.

45
 Incomplete search

256 If only certain claims are found unsearchable, an ISR and a WO-ISA Art. 17(2)(b) PCT
will be established in respect of the other claims. In that case the
international search will be incomplete.

Limitations related to the subject-matter

257 The EPO is not required to perform an international search if the Art. 17(2)(a)(i) PCT
application relates to subject-matter which is not regarded as an R. 39.1 PCT
Agreement EPO-
invention or susceptible of industrial application or which is excluded
WIPO, Art. 4,
from patentability under the provisions of the EPC. Here, the criteria Annex C
applied for the decision not to perform an international search are the OJ 2017, A115
same as for the European procedure. This means that the discretion of GL/PCT-EPO B-VIII,
an ISA not to search subject-matter set forth in Rule 39.1 PCT is used 1- 3
WIPO PCT Guide
by the EPO as ISA only to the extent that such subject-matter is not 7.013
searched under the provisions of the EPC.

Business methods

258 The EPO as ISA will not carry out an international search on an R. 39.1(iii) PCT
application to the extent that its subject-matter relates to no more than OJ 2007, 592
a method of doing business, in the absence of any apparent technical
character (see point 201).
259 Nevertheless, if the claimed subject-matter involves technical means,
an ISR will be established. However, to the extent that the technical
means involved were widely available to everyone at the filing date, no
documentary evidence is considered required, because of their
notoriety, and no document will be cited in the ISR. Instead, a
statement will be inserted that these technical means are considered so
commonplace that no citation is considered necessary.

Complex applications

260 Furthermore, the EPO as ISA will in exceptional cases not perform an Art. 17(2)(a)(ii) PCT
international search or will perform a search limited to parts of the Art. 150(2) EPC
claimed subject-matter if the application documents fail to comply with
the prescribed requirements to such an extent that a meaningful search
is impossible for all or part of the claims. Applications of this kind are
often referred to as "complex applications".
261 Complex applications will be dealt with in accordance with the PCT-
EPO Guidelines and the ISPE Guidelines supplemented, where
appropriate, by the EPO's practice as set out in the Guidelines for
Examination (GL/EPO) (see points 16-21).
262 Before taking a decision under Article 17(2)(a)(ii) PCT, the ISA may OJ 2011, 327
invite the applicant informally to provide clarification of the claimed
subject-matter in accordance with paragraphs 9.34 and 9.35 of the
ISPE Guidelines.

46
 Nucleotide and amino acid sequences

263 If the sequence listing of an international application is not available in R. 5.2, 13ter.1 PCT
electronic form and/or does not comply with the standard provided in OJ 2007, Spec.Ed.3,
C.2
Annex C to the Administrative Instructions (WIPO Standard ST.25), the
OJ 2011, 372
EPO as ISA will invite the applicant to furnish the sequence listing in WIPO PCT Guide
electronic format and to pay a late furnishing fee within a non- 7.005-7.012
extendable time limit of one month. Extensive information is provided in
the Notice from the EPO of 18 October 2013.
264 If, within the time limit set, the applicant has not submitted the
sequence listing in the required electronic form and format and paid the
late furnishing fee, the EPO as ISA will carry out the international
search without the sequence listing to the extent that a meaningful
search can be carried out. This means that in many cases no or only an
incomplete search is performed. This also has consequences for the
international preliminary examination procedure before the EPO as
IPEA (see point 393).

Lack of unity of invention

265 If the EPO as ISA considers that the international application claims Art. 17(3)(a) PCT
more than one invention, it states the reasons for its finding and invites R. 13, 40 PCT
R. 158(1) EPC
the applicant to pay an additional fee for every further search, payable
OJ 1989, 61
direct to the EPO. At the same time the EPO informs the applicant of OJ 2017, A20
the result of the partial international search, which is restricted to those GL/ISPE
parts of the application relating to the invention first mentioned in the 10.01-10.70
claims. As from 1 April 2017, the EPO sends a provisional opinion on PCT Newsletter
7/2013, 10
the patentability of the invention (or unitary group of inventions) first
mentioned in the claims, together with the invitation to pay additional
search fees and the partial search results.
266 The amount of the additional fee is reduced for applicants fulfilling the
requirements for reduction of the search fee (see point 215).
267 If the applicant does not pay any additional search fee, the EPO
establishes the ISR and WO-ISA on the basis of the result already
communicated. The WO-ISA will contain the reasons for any non-unity
objection raised.
268 If the applicant pays one or more additional search fee(s) within the time
limit set, those parts of the application for which additional search fees
have been paid will also be searched. Consequently the ISR and WO-ISA
will be established for all inventions for which a search fee has been paid.

Cascading non-unity

269 If in response to an invitation by the EPO as ISA additional search fees

are paid and the additional searches reveal a further lack of unity within
one of the inventions found initially ("a posteriori"), no further invitation
to pay additional fees is issued and the international search is limited to
the first invention of each further invention for which an additional fee
was paid. If a cascading lack of unity of invention is likely to arise, the
invitation to pay additional fees will contain a warning in that respect.

47
 Consequences of non-payment of additional fee(s)

270 The lack of an ISR and WO-ISA in respect of those parts of the Art. 17(3)(b) PCT
international application for which no additional search fee was paid WIPO PCT Guide
7.021
does not, of itself, have any influence on the validity of the international
application. However, the national law of any designated Office may
provide that the non-searched parts are considered withdrawn unless a
special fee is paid. For further information see the national chapter for
the designated Office concerned in the WIPO PCT Guide.
271 If the EPO is ISA, non-payment of an additional search fee has the
following important consequences in the further procedures before the
EPO:
– the EPO as IPEA will not perform the international preliminary R. 66.1(e) PCT
examination in respect of any claims relating to an invention for
which no additional search fee was paid and, therefore, for which
no ISR was established (see point 396)
– upon entry into the European phase the EPO as designated Office R. 164 EPC
will consider whether the application, which in the meantime may OJ 2014, A70
have been amended by the applicant, meets the requirement of GL/EPO C-III, 2.3
unity of invention. If not, the examining division will invite the
applicant to pay, within a period of two months, one or more further
search fees in respect of any unsearched inventions claimed upon
entry into the European phase in order for these to be covered by a
further search (see points 668 ff).

Protest procedure

272 An applicant may pay an additional search fee under "protest". This R. 40.2(c), (e) PCT
means that at the time of payment of the additional fee(s) the applicant R. 158(3) EPC
objects to the finding of lack of unity in a written reasoned statement OJ 2010, 322
OJ 2015, A59
filed with the EPO as ISA. Such objections may concern the finding of
non-unity as such or the number of the required additional fees. The
lodging of a protest does not delay the search itself.
273 According to the protest procedure as set out in Rule 40.2 PCT, the
only body examining a protest before the EPO as ISA is a review panel
consisting of three members, one of whom chairs the panel and
another of whom is the examiner who was responsible for issuing the
invitation to pay additional fees.
274 Where additional fees are paid under protest and the protest fee is duly
paid, the protest will be referred to the review panel for a decision in
first and last resort. If the review panel finds that the protest was
entirely justified, the additional fees and the protest fee will be refunded.
If the review panel finds that the protest was justified only in part, the
corresponding additional fees will be refunded, but not the protest fee.
The findings of the review panel will be taken into account when
establishing the ISR and WO-ISA.

48
IV. Supplementary International Search (SIS)
General

275 In its capacity as Authority specified for supplementary search, R. 45bis PCT
hereafter referred to as the Supplementary International Searching Agreement EPO-
Authority or SISA, the EPO will carry out a supplementary international WIPO, Annex B
OJ 2017, A115
search (SIS) at the applicant's request. WIPO PCT Guide
8.001-8.053
PCT Newsletter
4/2011, 9
1/2012, 10
9/2016, 8
276 The purpose of the SIS is to provide the applicant with a supplementary
international search report (SISR) in addition to the search carried out
under Article 15 PCT by the competent ISA ("main search") (see
point 223). In particular, in view of the growing linguistic diversity of the
prior art and considering the language knowledge available in the EPO,
a SISR established by the EPO can be very useful to applicants.
277 Since the SISR is established within 28 months from the priority date, it
may improve the basis for deciding on national phase entry and, in
particular where a SISR is drawn up by the EPO, on whether or not to
enter the European phase. The SIS reduces the risk of an applicant
being faced with relevant prior art only after incurring considerable
expenditure for entry into the national/regional phase.
278 In the procedure before the EPO as SISA, no separate written opinion
is established. However, the EPO will provide explanations in an annex
to the SISR ("Scope Annex") which are equivalent to the information
contained in a written opinion established by the EPO as ISA (WO-ISA)
(see point 225).
279 If the EPO has acted as SISA and established a SISR, in principle, no Art. 153(7) EPC
supplementary European search report will be drawn up in the R. 161, 164 EPC
European phase. Further, the applicant will be invited in a OJ 2009, 594
OJ 2014, A70
communication under Rule 161 EPC to correct any deficiencies set out
in the Scope Annex to the SISR upon entry into the European phase
(see point 502).

Scope and limitations of the SIS

280 The scope of the search conducted by the EPO as SISA, i.e. the
documentation searched, is the same as for any international search
carried out by the EPO as ISA (see point 220).
281 The SIS is conducted on the international application as originally filed, R. 45bis.5(b) PCT
and neither amendments filed under Article 19 and/or 34 PCT nor
informal comments will be taken into account.
282 If the ISR is available at the time the SIS is carried out, it will be taken
into account. Prior-art documents mentioned in the ISR are re-cited in
the SISR only if the EPO qualifies their relevance differently.
283 The EPO conducts a maximum of 700 supplementary searches per
year.

49
284 The limitations related to subject-matter set out in Annex C to the
Agreement EPO-WIPO apply both where the EPO acts as ISA and
where it acts as SISA (see points 257 ff). The same applies as to any
other reason for non-establishment of a (full) search, i.e. complex
applications, missing sequence listings and non-unity (see
points 253 ff). As to particulars of the procedure in case of a missing
sequence listing and non-unity, please refer to points 288 and 292.
285 Furthermore, the EPO acting as SISA may decide not to carry out a R. 45bis.5(c), (d),
search on claims that were not searched by the ISA either. However, if (e) PCT
the EPO as ISA had searched the claims concerned, it will also search
these claims if it acts as SISA.

Requirements for filing a SIS request

286 A SIS request must be filed with the IB within 22 months from the R. 45bis.2 and .3
priority date. The request is valid only if the supplementary search fee PCT
and the supplementary search handling fee are validly paid to the IB in
Swiss francs.
287 If the application was not filed in English, French or German, and no R. 45bis.1(b)(iii) PCT
translation into any of these languages has been filed for the purpose
of the proceedings before the ISA or for the purpose of international
publication, a translation into one of these languages must be filed with
the IB together with the SIS request.
288 Where applicable, the applicant must, together with the SIS request, R. 13ter, 45bis.5
also furnish to the IB a copy of the sequence listing in an electronic PCT
format complying with the standard provided for in Annex C to the Agreement
EPO-WIPO, Annex B
Administrative Instructions (see points 263 ff). The EPO will start the OJ 2013, 542
supplementary international search only upon receipt of that copy. If it OJ 2017, A115
is not received, the EPO will invite the applicant to furnish an electronic
copy of the sequence listing complying with that Annex and to pay a
late furnishing fee.

Representation before the EPO as SISA

289 Applicants may be represented before the EPO as SISA by the agent Art. 49 PCT
appointed on filing the international application and having the right to R. 83.1, 90.1(a), (b),
practise before the receiving Office, i.e. the agent for the international (b-bis), (d) PCT
phase (see points 36 ff).
290 An applicant may also appoint an agent to represent him specifically
before the EPO in its capacity as SISA. Moreover, the agent
appointed for the international phase - and thus including for the
procedure before the SISA - may appoint a sub-agent to represent the
applicant specifically before the EPO as SISA. All communications
issued by the EPO as SISA are sent to the agent specifically appointed
for the procedure before the EPO as SISA. An agent specifically
appointed to act before the EPO as SISA must be entitled to practise
before the EPO (see point 98).
291 The requirements in respect of filing a separate power of attorney or a
copy of a general power of attorney have been waived by the EPO as
SISA (see point 110).

50
 Lack of unity of invention

292 If the EPO as SISA is of the opinion that the international application R. 45bis.1(d),
claims more than one invention, it will state the reasons for its finding 45bis.6 PCT
OJ 2010, 322
and perform a search only for those parts of the application relating to
OJ 2015, A59
the main invention, i.e. the invention first mentioned in the claims. If,
however, the ISA has already raised a non-unity objection and the
applicant has, upon filing the SIS request, specified for which invention
identified in the ISR the SISR is to be drawn up, the EPO as SISA:
– will restrict its search to that invention, if it agrees with the finding of
the ISA;
– will take the applicant's wish into account as far as possible, if the
non-unity objection made by the ISA is not followed, but a different
non-unity objection is found;
– will perform a full search if it considers the requirement of unity of
invention to be met.
293 In the case of a non-unity finding by the EPO as SISA, the applicant
cannot pay additional search fees to obtain further searches as in the
procedure before the ISA (see point 265). However, within one month
of the date of mailing of the SISR, the applicant may request a review
of a non-unity finding. He also has to pay the review fee set by the EPO
within the same time limit, direct to the EPO. If the review panel
considers the lack of unity objection (partly) justified, a revised SISR
taking into account the outcome of the review procedure is established.
294 Upon entry into the European phase, the EPO as designated/elected R. 164 EPC
Office will consider whether the application for which it acted as SISA, OJ 2014, A70
and which meanwhile may have been amended, meets the requirement GL/EPO C-III, 2.3
of unity of invention and whether protection is sought for an invention
covered by the SISR. If not, the examining division will invite the
applicant to pay, within a period of two months, one or more further
search fees in respect of any unsearched inventions claimed upon
entry into the European phase in order for these to be covered by a
further search (see points 668 ff).

51
D. The EPO as an International Preliminary
Examining Authority (IPEA) - PCT Chapter II
I. General
Aim of the international preliminary examination

295 In its capacity as IPEA the EPO will carry out an international
preliminary examination on condition that the applicant has (validly)
filed a "demand" and paid the fees due. The usefulness of this optional
procedure depends on the international application concerned and,
especially, on the result of the international search (see points 223 ff). A
demand under PCT Chapter II may, in particular, be useful in order to
overcome objections raised in the WO-ISA and possibly receive a
positive IPER at the end of the PCT Chapter II procedure. However,
before taking a decision whether to file a demand with the EPO as
IPEA, applicants are strongly recommended to take special note of the
information set out in points 300 ff.
296 The purpose of the international preliminary examination under Art. 35 PCT
Chapter II of the PCT is not grant or refusal of a patent, but provision of R. 64, 65, 67-70 PCT
a preliminary and non-binding opinion on whether the claimed invention WIPO PCT Guide
10.001-10.003
appears to be novel, to involve an inventive step and to be industrially OJ 2003, 574
applicable as defined in Article 33 PCT. The statement whether these OJ 2011, 532
criteria are satisfied is set out in the International Preliminary Report on
Patentability ("IPRP Chapter II") established by the IPEA.
297 While there is not a fully uniform approach to the criteria for
patentability in the national laws of the PCT contracting states, their
application during international preliminary examination is such that
IPRP Chapter II provides the applicant with a good basis on which to
evaluate the chances of obtaining patents in the procedures before the
various designated Offices in the national phase.
298 The term "IPRP Chapter II" is no more than a different name for the R. 70.15(b) PCT
international preliminary examination report (IPER). Both terms refer to
the same document; the report established by the competent IPEA
containing the result of the international preliminary examination carried
out by it. In the following the term IPER will be used.
299 As set out above, the applicant may react to the ISR and WO-ISA
established by the ISA by filing amendments under Article 19 PCT
and/or "informal comments" with the IB, and/or by filing a demand for
international preliminary examination (see points 314 ff). Should the
applicant decide to file a demand for international preliminary
examination, the demand form together with amendments and/or
arguments under Article 34 PCT are to be filed directly with the
competent IPEA (see points 317 ff).

Usefulness of PCT Chapter II

300 Regardless of whether a demand is filed, applicants will receive a PCT Newsletter
preliminary non-binding written opinion on the patentability of their 4/2010, 8
claimed invention (WO-ISA, IPRP Chapter I) as part of the international 5/2010, 8
search procedure (see points 223 ff). Therefore, the usefulness of the

52
 optional international preliminary examination under Chapter II PCT
must be considered carefully for each international application.
301 International preliminary examination will, in general, have no added
value unless amendments and/or arguments under Article 34 PCT are
filed. In the absence of such amendments and/or arguments there will
be no reason for the EPO as IPEA to come to a different conclusion to
that which it reached in its capacity as ISA, as set out in the WO-ISA.
302 If the ISA has provided the applicant with a declaration under
Article 17(2) PCT that no ISR has been established ("declaration of no
search"), filing a demand is not recommended, since the EPO as IPEA
will not examine claims for which no ISR has been established (see
point 386).
303 It follows that filing a demand for international preliminary examination
is, in general, useful only if the WO-ISA was "negative" and the
applicant is of the opinion that his amendments and/or arguments filed
for the purpose of the PCT Chapter II procedure may lead to a
"positive" IPER. In other words, international preliminary examination
gives the applicant the opportunity to respond to any negative finding of
the ISA during the international phase, as opposed to drafting and filing
multiple responses with the national/regional offices where national
phase entry is made. In the Chapter II procedure before the EPO the
applicant will have the opportunity to interact with the examiner and file
further amendments should objections still persist after the reply to the
WO-ISA (see point 376).
304 Further, as from 1 July 2014 the EPO as IPEA performs a "top-up" R. 66.1ter PCT
search in order to reveal further relevant prior-art documents, in OJ 2014, A57
particular intermediate prior art, which have been published or have
become available to the IPEA after the international search report was
established (see points 368 ff).

Patent Prosecution Highway (PPH) based on an IPER established

by the EPO as IPEA

305 The PPH enables an applicant whose claims have been determined to OJ 2014, A8
be patentable/allowable to have a corresponding application that has OJ 2015, A6, A70
been filed with a PPH partner office processed in an accelerated OJ 2016, A44, A54,
A68, A75
manner while at the same time allowing the offices involved to exploit OJ 2017, A5, A46,
available work results. A47, A67, A77

306 Under the PPH pilot programme at the EPO, a PPH request filed with
one of the other IP5 offices, i.e. JPO, USPTO, SIPO and KIPO, or with
one of the offices with which the EPO has launched bilateral PPH pilot
programmes, i.e. CIPO (Canada), ILPO (Israel), IMPI (Mexico), IPOS
(Singapore), IPA (Australia), SIC (Colombia), ROSPATENT (Russia),
IPOPHL (Philippines), MyIPO (Malaysia) and EAPO (Eurasian Patent
Office) can also be based on an IPER established by the EPO as IPEA
(see point 250).
307 Irrespective of the PPH pilot programme any applicant may request OJ 2010, 352
accelerated examination under the PACE programme in the procedure OJ 2015, A93
before the EPO as elected Office at any time. For more information on
the PACE programme reference is made to chapter E (see points
445 ff).

53
 Competence of the EPO as an IPEA

308 Although the EPO's competence as an IPEA is in principle universal, Art. 32 PCT
i.e. not restricted to international applications from e.g. EPC contracting R. 59.1 PCT
WIPO PCT Guide
states, restrictions of various nature do limit its competence (see
10.006
points 309 ff). In particular it is stressed that the EPO is competent to PCT Newsletter
act as IPEA only if a "European ISA" (including the EPO itself) carried 6/2013, 9
out the international search (see point 311).

Specification by the receiving Office

309 The EPO acts as an IPEA for any application, on condition that the Art. 32 PCT
receiving Office with which the international application was filed Agreement EPO-
has specified the EPO as IPEA. The same countries which have not WIPO, Art. 3(2), (3)
OJ 2010, 304
(yet) specified the EPO as ISA have not (yet) specified the EPO as OJ 2014, A117
IPEA (see point 199). Up-to-date information is available in the annexes
to the WIPO PCT Guide (see point 11).
310 Where the international application was filed with the IB, the EPO is
competent as IPEA if the international application could have been filed
with a receiving Office which has specified the EPO as IPEA.

The EPO or a European ISA acted as ISA

311 The EPO will, however, only act as an IPEA if the international search Agreement EPO-
was also carried out by the EPO or by the Austrian, Finnish, Spanish, WIPO, Art. 3(2),
Swedish or Turkish patent office or the Nordic Patent Institute or the Annex A(ii)
OJ 2010, 304
Visegrad Patent Institute. Applicants considering their choice of ISA OJ 2014, A117
(PCT request form Box No. VII) are advised to bear this in mind (see
also point 203).

Choice of applicant

312 Where several IPEAs are competent in relation to a particular R. 35.2, 59.1 PCT
application, the applicant may choose. Here, it should be considered Art. 14(2) RFees
that where the EPO as IPEA has drawn up the IPER the examination
fee due in the European phase is reduced by 50% if the subject-matter
to be examined is covered by the IPER (see point 607). 24

Lifting of the competence limitation

313 As a result of an amendment to the Agreement between the EPO and OJ 2007, 592
WIPO under the PCT, any national or resident of the USA filing an OJ 2010, 304
international application on or after 1 January 2015 with the USPTO or OJ 2014, A117
the IB as receiving Office can select the EPO as IPEA, irrespective of
the technical field in which the application is classified. It should,
however, be noted that the Notice from the EPO dated 1 October 2007
concerning business methods remains applicable.

24
Please note that the percentage of this reduction will increase to 75% as from 1 April
2018.

54
 Who may file a demand for international preliminary examination
with the EPO?

314 Sole applicants must have their residence in, or be a national of, a PCT Art. 31(2)(a) PCT
contracting state bound by PCT Chapter II. If there are two or more R. 18.1, 54.1, 54.2
applicants, at least one of them must meet these requirements. PCT
Art. 152 EPC
Secondly, the international application must have been filed with a WIPO PCT Guide
receiving Office of or acting for a PCT contracting state bound by PCT 10.004, 10.017
Chapter II.
315 At 1 January 2018, all PCT contracting states were bound by Chapter II
and, therefore, these requirements do not stand in the way of any
applicant wishing to file a demand for a pending international application.

How and where is the demand for international preliminary

examination to be filed?

316 The demand for international preliminary examination must be made Art. 31(3) PCT
using the prescribed form (PCT/IPEA/401 - see Annex IX), copies of R. 53 PCT
which are available free of charge from all receiving Offices, the IB and WIPO PCT Guide
10.012
the EPO. The form may also be downloaded from the WIPO website. 25
317 The demand and any further document relating to the Chapter II Art. 31(6) PCT
procedure (e.g. amendments and/or arguments filed under Article 34 R. 59.3, 61 PCT
WIPO PCT Guide
PCT) must be submitted to the EPO as IPEA and not to the
10.006
receiving Office or the IB. The EPO as IPEA will indicate the date of
receipt on the demand and promptly notify the applicant of that date.
318 The demand may be filed with the EPO as IPEA direct, by post, by fax OJ 2014, A71
or online (see points 50-78). As of 1 November 2016, the ePCT service OJ 2016, A78
may be used for online filing of the demand under PCT Chapter II
directly with the EPO as IPEA, and also for indicating the payment of
fees related to the demand.
319 If the demand is filed by fax, no written confirmation needs to be filed R. 92.4(e), (g) PCT
unless the applicant is invited by the EPO as IPEA to do so (see OJ 2007, Spec.Ed.3,
A.3 (Art. 3 and 7 of
point 78).
the Decision)
320 The EPO filing offices are located in the Central European Time (CET)
zone (see Annex V).

When should the demand for international preliminary

examination be filed with the EPO?

321 Pursuant to Rule 54bis PCT, the demand may be validly submitted at WIPO PCT Guide
any time prior to expiry of whichever of the following periods expires 10.010
later:
– three months from the date of transmittal to the applicant of the ISR
and WO-ISA by the ISA, or
– 22 months from the (earliest) priority date.

25
www.wipo.int/export/sites/www/pct/en/forms/demand/ed_demand.pdf

55
322 This time limit guarantees that the applicant has at least three months
from the date of mailing of the ISR to decide on the basis of the result
of the international search laid down in the ISR and the WO-ISA
whether he wants to file a demand with amendments and/or arguments.
323 If the demand is submitted after expiry of this time limit, the demand is R. 54bis.1(b) PCT
considered as if it had not been submitted.
324 The applicant should be aware that the possibilities to withdraw a R. 90bis.4 PCT
demand and obtain a refund of the fee paid are limited (see point 357).

Start of the international preliminary examination

325 The EPO as IPEA will not start examination before expiry of the time R. 66.1, 66.4bis,
limit laid down in Rule 54bis PCT, unless the applicant expressly 69.1(a) PCT
WIPO PCT Guide
requests an earlier start under R. 69.1(a) PCT. You are recommended
10.051
to request an earlier start directly in the demand. Amendments and/or PCT Newsletter
arguments under Article 34 PCT filed after filing of the demand, but 3/2005, 8
before expiry of this time limit, must always be taken into account for
international preliminary examination (see point 362).
326 Where the WO-ISA is considered a first written opinion (see point 375), Art. 34(2)(c) PCT
a single extension of one month for filing a reply (amendments and/or
arguments under Article 34 PCT) is in principle granted if requested
before expiry of the normal time limit under Rule 54bis PCT and on
condition that the time limit so extended does not expire later than
25 months from the (earliest) priority date (see also point 384). The
extension does not apply to the time limit for filing the demand,
which cannot be extended.

Delaying of national phase until expiry of 30 months

327 Most contracting states apply Article 22 PCT as amended with effect
from 1 April 2002. For these states, the 30/31-month time limit for entry
into the national/regional phase applies regardless of whether the
applicant has submitted the demand for international preliminary
examination within 19 months from the (earliest) priority date.
328 The EPO too applies Article 22 PCT as amended with effect from R. 159(1) EPC
1 April 2002. Therefore, the time limit for entry into the European phase
is always 31 months from the priority date (see points 418 ff).
329 However, in respect of a small number of designated Offices, old PCT Newsletter
Article 22(1) PCT still applies. The list of the contracting states for 2/2005, 6
which that provision is still applicable is published on the WIPO website
(see point 14). According to the latest information from WIPO available
on 9 June 2017, the 20/21-month time limit applies to the following
states: Luxembourg (LU), United Republic of Tanzania (TZ) and
Uganda (UG). However, in respect of the regional designation of each
of these states, the time limit under amended Article 22 PCT applies. 26
330 Therefore, if an applicant wants to enter the national phase for these
states, the demand must be received by the competent IPEA within

26
www.wipo.int/pct/en/texts/time_limits.html

56
 19 months from the (earliest) priority date to secure the right to entry
into the national phase being delayed until expiry of 30/31 months from
the priority date.
331 Moreover, for these states, the applicant must respect the 19-month
time limit even where the ISR and the WO-ISA are not yet available. In
other words, a delay in the international search does not have as a
consequence that the 19-month time limit is changed, since this time
limit is exclusively calculated on the basis of the (earliest) priority date.
332 For states applying the old Article 22(1) PCT, a demand filed with the
EPO after expiry of 19 months from the priority date but prior to:
– three months from the date of transmittal to the applicant of the ISR
and the written opinion (WO-ISA) by the ISA, or
– 22 months from the (earliest) priority date
is valid, but does not have the effect of postponing commencement of
the national phase to 30/31 months for the states in question (see
point 329).

Time limit for establishing the IPER

333 Where the documents required for the preliminary examination were R. 69.2 PCT
received in due time, the EPO as IPEA will establish the IPER usually
within 28 months from the earliest priority date.

Translation of the international application

334 If neither the language in which the international application was filed R. 55.2 PCT
nor the language in which the application was published is one of the OJ 1993, 540
official languages of the EPO (English, French or German), the WIPO PCT Guide
10.011
applicant must within the time limit for filing the demand also file a
translation in one of these languages with the EPO as IPEA.
335 This situation occurs, for instance, if the international application was
filed in Spanish, and the Spanish patent office acted as ISA. However,
if the international application was filed in Spanish but the EPO acted
as ISA, the applicant need not furnish a translation to the EPO as IPEA
because the international preliminary examination will be carried out on
the basis of the translation already furnished for the purposes of
international search (see point 206).
336 Any amendments to be taken into account for the international R. 55.3 PCT
preliminary examination must be submitted in the language of WIPO PCT Guide
proceedings before the EPO as IPEA. If they are initially not submitted 10.055
in that language, the applicant must file a translation.

Applications filed in Dutch

337 If the EPO is IPEA for an international application originally filed in R. 12.4, 55.1,
Dutch with the Dutch or Belgian patent office as receiving Office, the 55.2(a) PCT
applicant need not file a translation of the international application since Agreement EPO-
WIPO, Annex A(i)
the EPO as IPEA will use the published version of the international OJ 2010, 304
application as received from the IB. It should be noted that the demand OJ 2014, A117
and amendments under Article 34 PCT must be submitted to the EPO

57
 as IPEA in the language of the international publication (see points 210
and 336).

Language of the demand

338 The demand must be filed in the language in which the international R. 48.3, 55.1 PCT
application was filed, except in the following situations:
– If the international application was filed in a language other than the
language in which it was published, the demand must be filed in the
language of publication (e.g. application filed in Dutch, see
point 337).
– If a translation of the application has to be filed with the EPO as
IPEA (see points 334-336), the demand must be filed in the
language of that translation (e.g. application filed in Spanish, see
point 335).

Language of further correspondence

339 Any other correspondence with the EPO as IPEA may be in any of the R. 92.2(b) PCT
EPO's three official languages with the exception of amendments to the Art. 150 EPC
application, which are to be filed in the same language as the demand R. 3 EPC
OJ 1993, 540
(see point 336).

Representation

340 Applicants may be represented before the EPO as IPEA by the agent Art. 49 PCT
appointed on filing the international application and having the right to R. 90.1(c), (d) PCT
practise before the receiving Office, i.e. the agent for the international WIPO PCT Guide
10.019-10.023
phase (see point 36). The applicant may also appoint an agent to
represent him specifically before the EPO as IPEA. Moreover, the
agent appointed for the international phase may appoint a sub-agent to
represent the applicant specifically before the EPO as IPEA.
341 Any agent specifically appointed before the EPO as IPEA must be R. 90.1(c) PCT
entitled to practise before the EPO. It is strongly recommended that Art. 134 EPC
applicants who do not have their residence or place of business in one
of the EPC contracting states appoint an agent entitled to practise
before the EPO for the proceedings before the EPO as IPEA (see
points 98 ff).
342 The appointment of an agent specifically before the EPO as IPEA can R. 90.4, 90.5 PCT
be done by the applicant or the agent for the international phase either
by completing Box No. III of the PCT demand form (PCT/IPEA/401) and
signing the demand, or by signing and submitting a separate power of
attorney. Appointment may also be effected by reference in the demand
or in a separate notice to a correctly deposited general power of
attorney, of which a copy must be submitted. In that case, the demand
or the separate notice may be signed by the purported agent.
343 The EPO as IPEA has waived the requirement that a signed separate R. 90.4(d), 90.5(c)
power of attorney or a copy of a general power of attorney be submitted PCT
to it if the demand is signed by the purported agent for the procedure OJ 2010, 335
before the EPO as IPEA and not by the applicant or the agent for the
international phase.

58
344 An exception to the waiver applies where the demand is signed by an
agent who is not the agent of record, both agents do not belong to the
same office and the new agent is not appointed in addition to the agent
appointed earlier but appointed under revocation of any earlier
appointment (PCT/IPEA/401, Box III, second check-box). In that
situation a separate power of attorney signed by the applicant or the
agent of record, or a copy of a general power of attorney, is to be
furnished. A further exception applies in any other case where the EPO
is in doubt as to the person entitled to act for the application concerned.

Which states may be elected?

345 The filing of the demand constitutes the election of all PCT contracting Art. 31(4) PCT
states designated in the international application and bound by PCT R. 53.7 PCT
Chapter II for a national and where possible a regional patent at the WIPO PCT Guide
10.005, 10.029
same time (see point 315). If after filing the PCT request the applicant
has validly withdrawn a designation, the filing of the demand cannot
constitute the election of that state.

Signature

346 The demand must be signed by the applicant or, if there is more than R. 53.2(b), 53.8,
one applicant, by all applicants. If the signature of one or more 60.1(a-ter), 90.3 PCT
applicants is missing, the EPO as IPEA will not invite the applicant(s) to WIPO PCT Guide
10.031-10.032
furnish the missing signature(s) provided that at least one of the
applicants has signed the demand (see point 359).
347 A (common) agent or common representative may sign the demand on
behalf of the applicant(s) who appointed him (see points 105 ff).
348 Where the demand is signed by a (common) agent the EPO as IPEA R. 90.4, 90.5 PCT
will not invite the applicant(s) to file a (separate) power of attorney - if OJ 2010, 335
not already on file - or a copy of a general power of attorney since the
EPO has waived these requirements (see points 110 ff).

Fees

349 For international preliminary examination, the handling fee and the Art. 31(5) PCT
preliminary examination fee must be paid direct to the EPO as IPEA. R. 57.3, 58 PCT
The preliminary examination fee is set by the EPO. The handling fee is WIPO PCT Guide
10.035 -10.043
provided for in the Schedule of Fees under the PCT which is published
by the IB.
350 Both fees have to be paid within one month of the date on which the
demand was submitted or within 22 months from the priority date,
whichever time limit expires later. The amounts of the handling fee and
the preliminary examination fee to be paid shall be the amounts
applicable on the date of payment.
351 Applicants are urged to use the Fee Calculation Sheet annexed to the
demand form (PCT/IPEA/401). For the payment methods currently
accepted by the EPO, see point 181.

Fee reductions

352 The handling fee is reduced by 90% under the same conditions as for
the international filing fee (see point 183).

59
353 The fee for international preliminary examination is reduced by 75% Agreement EPO-
under the same conditions as for the reduction of the international WIPO, Annex D-II
OJ 2017, A28, A115
search fee (see point 215).
PCT Newsletter
7-8/2016, 5
Consequences of non- or late payment of fees

354 Applicants should avoid late or incomplete payment of the handling and WIPO PCT Guide
international preliminary examination fee (see points 349 ff), since the 10.047
EPO cannot commence international preliminary examination before
these fees have been paid. Late payment thus reduces the amount of
time available for establishment of the IPER.
355 Where the EPO as IPEA finds that the amount paid to it is insufficient to R. 58bis PCT
cover the handling fee and the international preliminary examination fee OJ 1998, 282
or that no fees were paid by the time they were due, the EPO as IPEA
invites the applicant to pay to it the amount required to cover both fees
together with the late-payment fee within one month of the date of the
invitation. If the applicant complies with the invitation within the
specified time limit, payment is deemed to have been made in due time.
The late-payment fee is 50% of the amount of the unpaid fees as
specified in the invitation. However, it is at least equal to but not more
than double the amount of the handling fee.
356 If the applicant does not comply with the invitation, the demand is
deemed not to have been submitted and no IPER will be established.
The absence of a validly filed demand has no consequence for the
procedure before the EPO as designated Office, because the time limit
to be respected for entry into the European phase is in any case 31
months from the priority date (see point 418).

Refund of the fee for international preliminary examination

357 Where the international application or the demand for international R. 58.3, 90bis.4 PCT
preliminary examination is withdrawn before examination has Agreement EPO-
commenced and within 30 months from the priority date, the fee for WIPO, Annex D-II
OJ 2017, A28, A115
international preliminary examination is refunded in full. It is also
refunded in full if the demand is deemed not to have been submitted or
the fee was paid by mistake. Any amount paid in excess of the amount
due is likewise refunded.

Defects in the demand and how they can be corrected

358 If the demand does not comply with the requirements, the EPO as IPEA R. 60.1 PCT
invites the applicant to correct the defects within one month of the date of WIPO PCT Guide
the invitation. If the applicant complies with the time limit, the demand is 10.047-10.050
deemed to have been received on the actual filing date, provided that the
demand as submitted sufficiently identified the international application. If
the applicant does not comply with the invitation in due time, the demand
is deemed not to have been submitted.
359 Where there is more than one applicant, a frequent defect concerns R. 53, 60.1(a-bis),
failure to provide the required indications and/or the signatures of all the 60.1(a-ter) PCT
applicants. However, if the required indications are available in respect
of one of the applicants entitled to file a demand and the demand is
signed by one of them, this is considered sufficient and no invitation will
be issued (see point 346).

60
II. The international preliminary examination procedure
before the EPO as an IPEA
Which documents form the basis of the international preliminary
examination? - Amendments - Missing parts and elements

360 The applicant must indicate in Box No. IV of the demand form R. 53.9, 66.1, 66.5,
(PCT/IPEA/401) whether the international preliminary examination is to 70.2(a), (c) PCT
be based on the international application WIPO PCT Guide
10.025, 10.061
– as (originally) filed,
or whether it should take account of
– amendments to the claims under Article 19 PCT, and/or
– amendments to the claims, the description and/or the drawings
under Article 34(2)(b) PCT.
The EPO acting as IPEA does not accept claims in the form of auxiliary
requests, since this is not provided for under the PCT.

Amendments

361 If amendments under Article 19 PCT are to be taken into account, the
applicant must enclose a copy of these with the demand.
362 Amendments and/or arguments filed under Article 34 PCT should R. 66.1(b), 66.4bis
preferably be filed together with the demand. However, they also have PCT
OJ 2011, 532
to be taken into account by the EPO as IPEA if they are filed before
WIPO PCT Guide
expiry of the time limit for filing the demand (see point 325). 10.024, 10.028
Subsequently filed amendments and/or arguments will only be taken
into account by the EPO as IPEA if they are received before the point at
which preparation of a written opinion or the IPER has actually started.
Moreover, if a second written opinion is established (see point 376),
subsequently filed amendments and/or arguments will be taken into
account together with the reply to the second written opinion.
Amendments and/or arguments not taken into account by the EPO as
IPEA may be (re-)filed with the elected Offices upon entry into the
national phase.
363 If the EPO acted as ISA, the EPO as IPEA will consider the WO-ISA as R. 66.1bis(b) PCT
a first written opinion for the purposes of international preliminary
examination and, as a rule, commence the international preliminary
examination immediately after expiry of the time limit for filing the
demand (see points 380 ff). Therefore, it is important that amendments
and/or arguments under Article 34 PCT are filed in due time.
364 Applicants must make sure that none of the amendments go beyond R. 66.8(a) PCT
the disclosure in the international application as originally filed. Note GL/PCT-EPO H
that if an amendment contains a negative limitation, e.g. a "disclaimer", GL/ISPE 20.21
the EPO as IPEA in accordance with the discretion provided for in the
ISPE Guidelines applies the same approach as in respect of a Euro-
direct application (see Annex IV). Further, applicants must indicate in
an accompanying letter
– the differences between the application as originally filed and any
amendments made,

61
 – the basis for the amendments in the application as filed, and
– the reasons for any such amendments.
365 If the basis for any amendment is not indicated as required, the EPO R. 70.2(c-bis) PCT
will establish the written opinion and/or IPER as if no amendments had
been filed and without first issuing a reminder.
366 If amendments to the claims are filed a complete set of the claims in R. 66.8(c) PCT
replacement of all claims originally filed must be submitted.

Incorporation by reference of missing parts and elements

367 If the receiving Office has granted a request for incorporation by R. 4.18, 20.6 PCT
reference under Rules 4.18 and 20.6 PCT but the EPO as IPEA does
not consider the relevant part(s) and/or element(s) completely
contained in the priority application, it will indicate so in the IPER
(see points 81 ff).

Top-up search

368 Since 1 July 2014 the EPO as IPEA has performed a top-up search in R. 66.1ter PCT
Chapter II in order to reveal further relevant prior-art documents, in OJ 2014, A57
particular intermediate prior art, which have been published or have
become available to the IPEA after the international search report was
established.
369 Any relevant documents found during the top-up search will be
indicated in the IPER.
370 A top-up search does not normally extend beyond the subject-matter
searched by the ISA as set out in Rule 66.1ter PCT. It is performed in
respect of all applications undergoing Chapter II examination, apart
from in exceptional cases where the examiner considers that
performing a top-up search would serve no useful purpose.
371 The top-up search is normally performed at the start of Chapter II
examination. However, in the case of non-unity where there is more
than one invention claimed in the documents for which examination
under Chapter II is demanded, the examiner first issues an invitation to
pay further examination fees and then performs the top-up search for
all inventions for which further examination fees have been paid,
provided that any such inventions are not excluded from preliminary
examination by the examiner under Rule 66.1(e) PCT.
372 The top-up search is based on the application documents available at R. 70.2(c),
the start of Chapter II examination. However, in the special case that (c-bis) PCT
the application is amended but the basis for the amendments could not
be found and/or there is no letter explaining their basis in the
description, the top-up search may be limited to the scope of the claims
forming the basis of the IPER.
373 If relevant documents are found during the top-up search which give
rise to objections as to patentability, the EPO as IPEA issues a second
WO along the lines set out under point 376.

62
 Third-party observations

374 Since 1 July 2012 third parties may file observations on a PCT AI, Part 8
application during the international phase until 28 months from the
priority date. Such observations are to be submitted using the online
tool provided by WIPO and may be filed anonymously. If third-party
observations are received, WIPO will inform the applicant and the
applicant is permitted to reply. If the IPER has not yet been established
at the time when observations or any reply are received, WIPO will
forward the observations and the reply to the EPO acting as IPEA,
which will take the observations into account when establishing the
second written opinion, if it has not yet been established, and the IPER.
Detailed information is contained in a guide entitled "ePCT Third Party
Observations", published by WIPO. 27

First written opinion

375 A written opinion for the purposes of international preliminary Art. 33, 34, 35 PCT
examination is a notification issued by the IPEA which indicates any R. 66.2, 66.3, 66.4
comments or objections concerning the international application. PCT
OJ 2003, 574
Pursuant to Rule 66.1bis(a) PCT the WO-ISA is considered to be a WIPO PCT Guide
(first) written opinion of the IPEA for the purposes of international 10.064-10.066
preliminary examination. The EPO has notified the International Bureau
under Rule 66.1bis(b) PCT that this provision is only applied by the
EPO as IPEA to the extent that the WO-ISA has been established by
the EPO acting as ISA.

Second written opinion

376 Before issuing a "negative" IPER, the EPO as IPEA will, as a rule, issue OJ 2011, 532
a second written opinion, thereby providing the applicant with a further
opportunity to submit amendments and/or arguments to overcome any
objections raised therein. A request for a second written opinion need
not be filed. A second written opinion will be issued on condition that
the applicant filed in due time a substantive reply either to the WO-ISA
established by the EPO or to the first written opinion established by the
EPO as IPEA. The procedure may be different and a second written
opinion may not necessarily be issued if a request for consultation by
telephone is filed by the applicant (see points 390 ff). In this context the
term "negative" IPER is to be understood as an IPER informing the
applicant of a deficiency to which he must respond under Rule 161(1)
EPC if he decides to enter the European phase (see points 502 ff). If
the IPER contains no objections or only minor objections which do not
hinder a direct grant in the European phase, the IPER is considered
positive.

The EPO was not the ISA

377 If the EPO acts as IPEA but did not establish the WO-ISA because the OJ 2011, 532
international search was conducted by one of the other European ISAs
(see point 203), the WO-ISA established by any such ISA is not
considered a (first) written opinion of the EPO as IPEA (see point 375).

27
www.wipo.int/pct/en/epct/pdf/epct_observations.pdf

63
 In these cases, the EPO in its function as IPEA will issue a first written
opinion if it has any objections. The applicant may respond to this
written opinion by filing amendments and/or arguments within the time
limit set therein.
378 In this case a second written opinion will be issued on condition that the
applicant has filed amendments and/or arguments to overcome any
objections raised in the first written opinion and that there remain
objections outstanding such that the IPER would be negative if it were
to be issued on the basis of the file as it stands.

International preliminary examination before the EPO: four scenarios

379 For ease of understanding, the procedure before the EPO as IPEA can OJ 2011, 532
be summarised in four scenarios:

First case: The EPO acted as ISA and made no objections

380 If the WO-ISA established by the EPO as ISA contains no objections Art. 34(2)(c) PCT
to the international application ("positive WO-ISA"), the EPO as IPEA
will consider the WO-ISA as the first written opinion for the purposes of
international preliminary examination (see point 375). The EPO as
IPEA will in this case use its discretion in proceeding to issue the IPER
immediately after expiry of the time limit for filing the demand.
Therefore, with the exception of the top-up search, the IPER will have
no added value over the information provided in the WO-ISA, unless
the applicant files amendments and/or arguments for the EPO to take
into account as IPEA.

Second case: The EPO acted as ISA and made objections

381 If the WO-ISA established by the EPO as ISA contained objections to R. 66.1bis, 66.4,
the international application ("negative WO-ISA"), the EPO as IPEA will 66.4bis PCT
consider the WO-ISA as the first written opinion for the purposes of
international preliminary examination (see point 375). The WO-ISA will
not, however, be reissued as a first written opinion of the EPO as IPEA.
A second written opinion will be issued on condition that the applicant
has filed amendments and/or arguments in reply to the WO-ISA which
must be taken into account for international preliminary examination
and that there remain objections outstanding such that the IPER would
be negative if it were to be issued on the basis of the file as it stands.

Third case: The EPO did not act as ISA and the EPO as IPEA has no
objections

382 If the WO-ISA was issued by an ISA other than the EPO, the WO-ISA is Art. 34(2)(c) PCT
not considered to be the first written opinion of the EPO as IPEA (see
point 375). However, if the EPO as IPEA has no objections to the
(amended) application for which preliminary examination has been
requested, it may proceed to issue the IPER immediately after expiry of
the time limit for filing the demand (see point 321).

64
 Fourth case: The EPO did not act as ISA and the EPO as IPEA has
objections

383 If the WO-ISA was issued by another ISA, the WO-ISA is not R. 66.1bis, 66.2,
considered to be the first written opinion of the EPO as IPEA (see 66.4, 66.4bis PCT
point 377). If the EPO as IPEA has objections to the application for
which preliminary examination has been requested, it will issue a first
written opinion. The applicant may respond to this written opinion by
filing amendments and/or arguments within the time limit set therein. A
second written opinion will be issued on condition that the applicant has
filed amendments and/or arguments to overcome any objections raised
in the first written opinion and that there remain objections outstanding
such that the IPER would be negative if it were to be issued on the
basis of the file as it stands.

Time limit for reply to the written opinion

384 The time limit for the reply to the first written opinion issued by the EPO R. 66.2(d)(e), 69.2
as IPEA is usually two months but may be extended to a maximum of PCT
three months at the applicant's request. Such a request must be filed OJ 2011, 532
before expiry of the two-month time limit set. An extension will only be
granted if the extended time limit does not expire later than 25 months
from the priority date. An extension of the time limit may also be
requested if the WO-ISA is considered to be the first written opinion of
the EPO as IPEA (see point 375). The time limit for the reply to the
second written opinion or, as the case may be, to the invitation
accompanying the minutes of a telephone consultation is normally two
months and not shorter than one month unless the applicant has
agreed to a shorter time limit.

International preliminary examination and SIS

385 The EPO as IPEA will take into account any SISR (only) if it is available R. 45bis.8(c) PCT
at the time the international preliminary examination is performed. A
further written opinion will be issued before the IPER is established in
the exceptional case that the contents of the SISR would change the
EPO's opinion as set out in the WO-ISA established by the EPO as
ISA.

Refusal to perform preliminary examination

386 The EPO as IPEA will not perform an international preliminary Art. 17(2)(a) PCT
examination on any claim for which no international search was R. 66.1(e),
performed (see point 254). In this context it is not relevant whether the 66.2(a)(vi) PCT
applicant files amendments and/or arguments that, allegedly, overcome
the reasons for the decision of the ISA not to search the claims
concerned.
387 Further, the EPO as IPEA will make use of its discretion not to carry out Art. 34(4) PCT
preliminary examination if the application relates to subject-matter listed Agreement EPO-
in Rule 67 PCT to the extent that such subject-matter is not regarded WIPO, Art. 4
OJ 2007, 592
as an invention or susceptible of industrial application or is excluded OJ 2017, A115
from patentability under the provisions of the EPC.
388 Also, if the application fails to comply with the prescribed requirements
to such an extent that no meaningful opinion can be formed on novelty,

65
 inventive step or industrial applicability, no preliminary opinion on these
questions will be established.

Request for consultation by telephone

389 Since the issues to be discussed must be clear, a request for personal Art. 34(2)(a) PCT
communication will not be granted before the applicant has submitted R. 66.6 PCT
amendments and/or arguments which are to be taken into account by OJ 2011, 532
WIPO PCT Guide
the EPO as IPEA. A request for personal communication may be 10.067
granted by the EPO acting as IPEA only once and only in the form of
consultation by telephone.
390 If the applicant files a request for consultation by telephone before a
second written opinion is issued, he will be sent the minutes of the
telephone consultation together with an invitation to submit further
amendments and/or arguments within the time limit set for reply therein.
In such a case, no second written opinion will be issued.
391 If the applicant requests a consultation by telephone and/or a second
written opinion before a second written opinion is issued, the discretion
to decide whether to consult the applicant by telephone or to establish a
second written opinion is left to the EPO as IPEA.
392 If the applicant files a request for consultation by telephone after a
second written opinion has been issued but before the date on which
the IPER is established, the minutes of the telephone consultation are
sent to the applicant but will not be accompanied by an invitation to
submit further amendments and/or arguments, and none will be
accepted unless agreed upon during the consultation by telephone.

Nucleotide and amino acid sequences

393 If the ISR was not drawn up in full or in part because the sequence listing R. 13ter.2, 66.1(e)
was not available to the ISA in electronic form in the specified format PCT
(see point 264), this may affect the procedure under Chapter II PCT. OJ 2011, 372
OJ 2013, 542
394 If no sequence listing in electronic form complying with the
requirements is available to the EPO as IPEA, the applicant may be
invited to furnish that sequence listing in the required form and format
and to pay the late furnishing fee.
395 If no (full) international search was carried out, the EPO as IPEA will
not perform the international preliminary examination if a meaningful
examination cannot be performed (see point 386). In such cases an
invitation to file a sequence listing under Rule 13ter.2 PCT is not issued
by the EPO as IPEA and applicants are advised not to file sequence
listings at this late stage.

Unity of invention

396 Where the EPO as IPEA considers that the international application Art. 34(3) PCT
lacks unity of invention, it will invite the applicant either to restrict the R. 68.2, 68.3 PCT
claims in order to meet this requirement or, to the extent that the R. 158(2) EPC
OJ 2010, 322
inventions have been searched, to pay additional preliminary OJ 2015, A59
examination fees.

66
397 If the applicant fulfils the requirements for reduction of the preliminary
examination fee, any additional fee is validly paid upon payment of the
reduced sum (see point 353).
398 If the applicant does not pay any additional preliminary examination fee
the EPO establishes the IPER on the basis of the result already
communicated.
399 If the applicant pays one or more additional preliminary examination
fee(s) within the time limit set, those parts of the application for which
additional fees have been paid will also be examined. Consequently the
IPER will be established for all inventions for which a fee for preliminary
examination has been paid.
400 The applicant may pay any additional fee under protest in accordance R. 158(3) EPC
with Rule 68.3(c) PCT. The protest procedure is the same as before the OJ 2010, 322
EPO as ISA (see points 272 ff). OJ 2015, A59

401 Where applicable, the EPO as IPEA will base the examination on the
results of the protest procedure, if available, before establishment of the
IPER.
402 Claims relating to inventions in respect of which no international search R. 66.1(e) PCT
report has been established will not be the subject of international
preliminary examination by the EPO as IPEA (see point 386).

What must be done after receipt of the IPER?

403 The IPER is transmitted to the applicant and the IB. The applicant then Art. 36. 39 PCT
has no further opportunity to submit comments to the EPO as IPEA. He R. 71.1 PCT
must now decide on the basis of the results of the international
preliminary examination as laid down in the IPER whether he wishes to
pursue the international application further by entering the
national/regional phase before the elected Offices.
404 If the EPO acted as IPEA, the applicant will, where appropriate, be R. 161 EPC
invited to correct any deficiencies set out in the IPER ("negative IPER") GL/EPO E-VIII, 3.2
upon entry into the European phase (see points 502 ff).
405 All (further) questions relating to the European phase - the procedure
before the EPO as a designated or elected Office - are dealt with in
detail in chapter E.

Confidentiality of the international preliminary examination

406 The IB and the EPO as IPEA may not allow access to the file of the Art. 36(3), 38 PCT
international preliminary examination to third parties without R. 73.2, 94.1(c),
authorisation by the applicant. 94.3 PCT
Art. 128 EPC
OJ 1999, 329
OJ 2003, 382
OJ 2007, Spec.Ed.3,
J.2, J.3
WIPO PCT Guide
10.003, 10.080,
10.081

67
407 Once the IPER has been established and transmitted to the IB, the
latter sends a copy of the IPER to each elected Office. As from that
time, the IB also furnishes copies of the IPER on request to any person
on behalf of the EPO as IPEA.
408 Furthermore, after completion of the IPER the EPO as elected Office
allows access to the file of the international preliminary examination in
accordance with the provisions of the EPC.

68
E. Euro-PCT procedure before the EPO as a
designated (PCT Chapter I) or elected (PCT
Chapter II) Office
I. General
409 Before the end of the international phase the applicant must decide
whether and where he wants to proceed with the international application
in the national/regional phase before the designated/elected Offices.
410 If the applicant wishes to obtain a European patent he must enter what
is known as "the European phase", which means that he must fulfil the
requirements (see points 447 ff) for initiating the processing of his
application by the EPO as designated or elected Office in due time (see
point 418).

When is the EPO a designated or elected Office?

411 If an applicant enters the European phase without having requested Art. 2(xiii) and (xiv)
international preliminary examination under Chapter II, the EPO will act PCT
Art. 153(1) EPC
as a "designated Office" (see points 412 ff). However, if before entering
GL/EPO E-IX, 2
the European phase the application was processed under Chapter II
PCT, the EPO will act in the European phase as an ''elected Office''
(see points 415 ff).

When can the EPO act as designated Office?

412 Since all EPC contracting states are PCT contracting states, the EPO
can act as a designated Office for any EPC contracting state, provided
the international application was filed on or after the date on which the
EPC entered into force for the state concerned (see point 31).
413 If this requirement is not met, it may be that an extension or validation
agreement between the EPO and a PCT contracting state was in force
on the international filing date that provides for the extension or
validation of a European patent application or a European patent to or
in the state for which patent protection is sought (see points 123 ff).
414 Furthermore, a European patent for any EPC contracting state can be R. 90bis.1 and .2
obtained only if neither the application nor the (automatic) designation PCT
of the state concerned for a European patent during the international
phase has been (deemed) withdrawn.

When can the EPO act as elected Office?

415 For the EPO as an elected Office, the same requirements apply as for
the EPO acting as a designated Office (see points 412-414). In
addition, however, at least one of the EPC contracting states must have
been elected for a European patent in the demand for international
preliminary examination. Since the filing of the demand constitutes the
election of all PCT contracting states that were designated for, where
possible, a national and a regional patent, this requirement will
automatically be met in respect of each state that was an EPC
contracting state at the international filing date, unless the applicant has
withdrawn such election in the meantime (see points 31, 345).

69
 When must the applicant decide on the scope of protection sought
for the European patent?

416 Upon entry into the European phase the applicant must pay the R. 159(1)(d) EPC
designation fee (see point 556). Payment of this fee confirms the Art. 2(1)3 RFees
designation of all EPC contracting states that were designated on the
international filing date for a European patent (see points 31, 116 ff).
417 Within the time limit for payment of the designation fee, the applicant
must decide on the extension or validation states for which he seeks
extension or validation of the European patent and must pay the due
fee (see points 123 ff, 564 ff). This fee is to be paid for each extension
or validation, and no flat fee applies.

When must the European phase be initiated before the EPO as

designated or elected Office?

418 If, after considering the ISR and WO-ISA (see points 241 ff) and, where Art. 22(1)(3),
applicable, the result of the international preliminary examination as laid 39(1)(a)(b) PCT
down in the IPER (see points 403 ff) and/or a supplementary R. 159(1) EPC
international search (see points 275 ff), an applicant decides to pursue
his international application further before the EPO as
designated/elected Office, he must comply with the requirements for
entry into the European phase within 31 months from the filing date
or, if priority has been claimed, from the earliest priority date.
419 The time limit for complying with the requirements for entry into the
European phase thus extends by one month beyond the standard time
limit of 30 months provided for in Articles 22(1) and 39(1)(a) PCT and
applies irrespective of whether or not a demand for international
preliminary examination was filed (see points 327-328).
420 If the 31-month time limit expires on a day on which one of the filing R. 80.5 PCT
offices of the EPO is not open for receipt of documents, the period is R. 134 EPC
extended to the first day thereafter on which all filing offices are open
for receipt of documents and on which mail is delivered.
421 If the applicant does not comply with the requirements for entry into the Art. 24(1)(iii), 39(2)
European phase within the 31-month time limit, the Euro-PCT PCT
application is, as a rule, deemed to be withdrawn (see point 449). R. 160 EPC

Language of the proceedings in the European phase

422 The language of the proceedings is one of the official languages of the Art. 14(3), 153(4)
EPO (English, French and German). If the international application was EPC
published by WIPO (see point 239) in an official language of the EPO, R. 159(1)(a) EPC
that language is the language of the proceedings in the European
phase. If not, the EPO official language of the translation to be
submitted upon entry into the European phase is the language of the
proceedings (see points 514 ff).
423 The EPO does not allow the language of the proceedings to be OJ 2010, 572
changed. Reference is made to decision G 4/08 of the Enlarged Board
of Appeal.

70
 How and where should the applicant initiate the procedure before
the EPO as a designated/elected Office (Form 1200)?

424 For entry into the European phase, applicants are strongly Art. 22, 39 PCT
recommended to use the latest version of Form 1200. R. 49.4 PCT
OJ 2017, A74
425 Form 1200 may be filed in electronic form, online via either the EPO Art. 2(1)1 RFees
Online Filing software, the EPO case management system (CMS) or OJ 2014, A98
the EPO web-form filing service. The (basic part of the) filing fee is OJ 2015, A27, A91
OJ 2017, A59, A74
reduced if Form 1200 is filed online (see point 542). 28
426 The form may also be filed on paper and can be downloaded from the
EPO website (Annex XI). 29 Applicants are advised to read the
explanatory notes carefully before completing the form.
427 The form must be filed with the EPO direct. It should not be sent either OJ 2017, A11, A12
to the IB or to an authority of an EPC contracting state competent to
receive European patent applications.
428 If filed in paper form, either by post or by fax, only one copy of the OJ 2007, Spec.
document must be submitted. If the form is filed by fax, a confirmation Ed.3, A.3
copy must be filed only on invitation by the EPO.
429 The IB sends to the EPO as designated/elected Office a copy of the Art. 20, 36(3) PCT
international application and the ISR (including the WO-ISA) and, R. 47.1(c), 73 PCT
where applicable, also the IPER with annexes. The IB will notify the PCT Newsletter
11/2013, 9
applicant thereof, and the applicant himself should not file any of these
documents with the EPO (see point 453). However, the applicant may
have to file a translation of the international application and further
documents as set out below (see points 514 ff).
430 Applicants must indicate the European application number, which as a
rule is communicated to them approximately ten months after
international publication (EPO Form 1201) (see Annex XII). Applicants
who have not yet been notified of this number when performing the
required steps for entry into the European phase may instead cite the
PCT application number or the PCT publication number.

Request for early processing

431 An applicant can request the EPO as designated or elected Office to Art. 23(2), 40(2) PCT
commence processing the Euro-PCT application at any time before R. 159 EPC
OJ 2013, 156
expiry of the 31-month time limit.
OJ 2015, A94
GL/EPO, E-IX, 2.8

432 For this purpose, the applicant must file an express request for early OJ 2017, A74
processing under Articles 23(2) and 40(2) PCT. Section 12.1 of Form
1200 includes a check box for this purpose. However, the request is
effective only if the applicant also fulfils the requirements for entry into
the European phase as if the 31-month time limit provided for in
Rule 159(1) EPC expired on the date he requests early processing.

28
www.epo.org/applying/online-services.html
29
www.epo.org/applying/forms-fees/forms.html

71
433 This means that, for an application to be processed early, the following
requirements must be complied with: payment of the filing fee (see
point 540), including any page fees (see points 543 ff), filing of the
translation (where applicable, see point 514), specification of the
application documents (see point 478), payment of the search fee
(where applicable, see point 592). Which further requirements must be
complied with depends on the date on which early processing is
requested, i.e. on whether the time limits for paying the designation fee
(Rule 39(1) EPC) and the renewal fee (Rule 51(1) EPC) and for filing
the request for examination and paying the examination fee (Rule 70(1)
EPC) have already expired at that date (see points 556, 613 ff and
599 ff). The term "necessary requirements" is used to refer to the
requirements that must be complied with for a request for early
processing for the application concerned to be effective.
434 Where applicable, the certificate of exhibition must also be filed on Art. 55(2) EPC
entry into the European phase (see point 625). However, if this R. 159(1)(h) EPC
requirement is not met, this will not prevent the request for early GL/EPO B-VI, 5.5
processing from being effective, but it will affect the prior art that the
EPO takes into account in the procedure.
435 Claims fees for any claims in excess of fifteen need only be paid before
expiry of the period under Rule 162(2) EPC. Therefore, their payment is
not a requirement for a request for early processing to be effective.
436 Since 1 November 2017, fees which need to be paid for a request for OJ 2017, Suppl.
early processing to be effective may also be paid by automatic debit Publ. 5
order. However, applicants should bear in mind that automatic debiting
can only be performed if the EPO can establish whether or not a page
fee needs to be included as part of the filing fee. This is only possible if
the EPO has access to the documents referred to in Article 20 PCT, i.e.
if:
– the international application has already been published at the time
the request for early processing is received,
– the EPO is the receiving Office, or
– the EPO is acting as (S)ISA or IPEA.
If none of the above documents is available to the EPO on the day the
request for early processing is filed, applicants should choose another
means of payment. Otherwise the fees due will be debited on the date
of receipt of the documents referred to in Article 20 PCT from the
International Bureau under Rule 47.4 PCT. In this case, the date on
which the request for early processing takes effect will be postponed to
that date (see point 437). 30
437 If on the date the request for early processing is filed all necessary
requirements (see point 433) are complied with, the request for early
processing is effective as from that date and the application will be
processed in the same way as any "regular" Euro-PCT application

30
See Notice from the EPO dated 27 September 2017 concerning revision of the Arrangements
for deposit accounts and their annexes, point II.2, OJ 2017, Supplementary publication 5, 2.

72
 which has entered the European phase. This means, for instance, that
the EPO as designated/elected Office will issue the communication
under Rule 161/162 EPC directly after it has established that the
request for early processing is effective (see point 489) and on
condition that the international search report has already been
established. Furthermore, as from the date the request for early
processing is effective, the applicant may file a divisional application
(see point 676).
438 If on the date the request for early processing is filed any necessary
requirement (see point 451) is not complied with, the request for early
processing will not be effective on the date of receipt of the request but
only as from the earliest date thereafter on which all requirements
necessary on that date have been complied with (see point 433). It is
only on the latter date that the application enters the European phase.
From that moment on it is processed as if the 31-month time limit had
already expired, i.e. in the same way as any "regular" Euro-PCT
application which has entered the European phase.
439 If the requirements for a request for early processing to be effective are
not complied with before expiry of the 31-month time limit, the EPO as
designated/elected Office cannot start processing the application until
that time limit has expired.
440 From the date the applicant's request for early processing is effective, R. 90bis.6(a) PCT
any subsequent withdrawal under Rule 90bis PCT will have no effect in
respect of the procedure in the European phase.
441 Note that if early processing is requested because the applicant wishes
not only the processing of the application before the EPO as
designated/elected Office but also the examination of the application to
start, he must have filed a valid request for examination (including
payment of the examination fee) under Article 94 EPC, even if the time
limit under Rule 70(1) EPC has not yet expired at the date of effective
entry into the European phase, since examination will be taken up only
if a request for examination has been validly filed.
442 Furthermore, if a request for examination is filed before the EPO has, R. 70(2), 70a(2) EPC
where applicable, sent the supplementary European search report to OJ 2015, A94
the applicant, examination will start only upon receipt of an indication OJ 2017, A74
from the applicant that he wishes to proceed further with the application
and, if required, a response to the extended European search report.
The applicant may waive his right to be asked whether he wishes to
proceed further. He can indicate this by ticking the second check box in
Section 12.2 of Form 1200.
443 If the EPO acts as designated Office and the IB has not yet transmitted Art. 20 PCT
to it a copy of the international application, the ISR and the WO-ISA, R. 44bis.2(b),
the applicant may but does not have to file with the IB a request to do 47.4 PCT
so. If needed, the EPO will take care of this itself.
444 The same applies if the EPO acts as elected Office and the IB has not Art. 36(3)(a) PCT
yet transmitted to it a copy of the international application, the ISR, the R. 61.2(d), 73.2(b)
WO-ISA and the IPER with its annexes. PCT

73
 Accelerated prosecution of applications - the "PACE" programme

445 An effective request for early processing causes prosecution of the OJ 2015, A93
application by the EPO as designated/elected Office to be taken up GL/EPO E-VIII, 4
before expiry of the 31-month time limit. In addition to the possibility of
requesting early processing, the applicant may want accelerated
prosecution of his application in the European phase. For this purpose,
a separate request under the PACE programme is to be submitted
online upon entry into the European phase or later (EPO Form 1005).
Depending on the time when the request is submitted and the
indications made in the form, accelerated prosecution may cover the
establishment of the supplementary European search report, where
such a report is to be drawn up (see points 577 ff), or substantive
examination. A PACE request may be filed only once for each stage of
the procedure. This means that, for a Euro-PCT application for which a
supplementary European search is carried out, a request for
accelerated examination cannot be filed on entry into the European
phase but only after the applicant has declared that he wishes to
proceed further to examination (Rule 70(2), 70a(2) EPC;
see points 588-589).

Combined PACE request and waiver of Rule 161/162 communication

446 If a PACE request has been filed, the EPO will also have to respect the OJ 2015, A94
six-month time limit provided for in Rules 161 and 162 EPC and will OJ 2017, A74
therefore not be able to start supplementary European search or
examination before expiry of that time limit (see point 488). For this
reason an applicant interested in acceleration of the procedure may
consider waiving his right to the Rule 161/162 communication. He can
do so by ticking the first check box in Section 12.2 of EPO Form 1200.
The further details are set out below (see point 494). In such a case the
claims fee must not be paid by automatic debit order, since in that case
the fees are debited – and thus paid – on the last day of the six-month
period under Rule 162(2) EPC.

II. What is "entry into the European phase"?

Overview of the steps to be taken for entry into the European
phase

447 The process generally referred to as "entry into the European phase" is
not an act in itself but may be described as a series of "steps" to be
taken or, in other words, as a bundle of requirements to be fulfilled
within 31 months from the international filing date or, where applicable,
the earliest priority date claimed for the international application
("31-month time limit"). Which requirements are to be fulfilled within the
31-month time limit depends to a certain extent on the particular case.
448 Some requirements must be fulfilled in every case, such as payment of
the filing fee (point 540) and specification of the documents on which
processing in the European phase is to be based (points 478 ff).
Further, as a rule, the designation fee is due and the request for
examination must be filed at expiry of the 31-month time limit for entry
into the European phase, unless the ISR was published extremely late
(see points 556, 602). However, the filing of a translation, for instance,
is required only if the international application was not published in an

74
 official language of the EPO (points 514 ff). This means that for each
application the applicant must verify which requirements are to be
fulfilled within the 31-month time limit.
449 If the applicant does not fulfil all requirements that must be met within Art. 24(1)(iii),
the 31-month time limit, in many cases - depending on exactly which 39(2) PCT
requirement was not met - the effect is that the application is deemed to Art. 121,
122 EPC
be withdrawn as from the date of expiry of that time limit. A loss of R. 135, 136,
rights may be remedied, but only if the strict requirements under which 160, 163(6) EPC
a remedy applies are fulfilled in due time. If not, the application is
irreversibly lost. Each of the requirements will be discussed in detail
below (see points 451 ff).
450 All requirements in respect of which non-timely compliance results in a
loss of rights (directly) upon expiry of the 31-month time limit are listed
in Rule 159 EPC. In view of that legal effect they are usually referred to
as "minimum requirements" for entry into the European phase.

Minimum requirements

451 In order to initiate the European phase the applicant must take at least R. 159 EPC
the following steps within 31 months from the filing date or, if priority
has been claimed, from the earliest priority date:
– supply the translation if the Euro-PCT application was not Art. 153(4) EPC
published in one of the EPO's official languages (see points 514 ff), R. 159(1)(a) EPC

– specify the application documents on which the European grant R. 159(1)(b) EPC
procedure is to be based (see points 478 ff),
– pay the filing fee provided for in Article 78(2) EPC, including an R. 159(1)(c) EPC
additional page fee for applications with more than 35 pages (see
points 540 ff),
– pay the designation fee (and any extension or validation fees) if R. 159(1)(d) EPC
the period under Rule 39 EPC has expired earlier (see points
556 ff),
– pay the search fee if a supplementary European search report is to Art. 153(7) EPC
be drawn up (see points 592 ff), R. 159(1)(e) EPC

– file the request for examination and pay the examination fee if R. 159(1)(f) EPC
the period under Rule 70(1) EPC has expired earlier (see points
599 ff),
– pay the renewal fee for the third year if the period under Rule 51(1) R. 159(1)(g) EPC
EPC has expired earlier (see points 613 ff),
– where applicable (in rare cases), file the certificate of exhibition R. 159(1)(h) EPC
mentioned in Article 55(2) EPC (see points 625 ff).

Further requirements

452 Besides the "minimum requirements" mentioned in point 451, the

applicant may have to complete one or more of the following steps
within the 31-month time limit. These further requirements are not
referred to as "minimum requirements" since failure to comply with
them does not have the direct effect of a loss of rights (see point 449).

75
 These further requirements are:
– pay any claims fees due (see points 616 ff), R. 162 EPC

– file the designation of the inventor (see points 622 ff), R. 163(1) EPC

– furnish the file number or the certified copy of the application(s) of R. 163(2) EPC
which priority is claimed (see points 631 ff),
– furnish a sequence listing complying with the standard (see point R. 163(3) EPC
533),
– furnish the indications on the applicant mentioned in Rule 163(4) R. 163(4) EPC
EPC in respect of any applicant (see points 622 ff),
– appoint a professional representative (see point 464), R. 163(5) EPC

– furnish a copy of the results of any search carried out by or on R. 141(1) EPC
behalf of the authority with which the priority application was filed
(see points 482 ff).
453 The EPO is sent the copy of the international application required under Art. 20, 22(1),
Article 22(1) or 39(1) PCT by the IB before expiry of the 31-month time 39(1) PCT
limit. Therefore, the applicant should not submit a copy of the
application to the EPO.
454 If amendments have been made under Article 19 PCT (see points Art. 19(1), 20(2) PCT
242 ff), the copy transmitted by the IB also includes these amendments
and the applicant's statement thereon, if any.

Amounts of fees to be paid in the European phase

455 The amounts of all fees that may be due on entry into the European
phase or thereafter are listed in the current version of the Rules relating
to Fees (RFees) and the Schedule of fees and expenses of the EPO,
which is published as a supplement to the Official Journal and can be
found on the EPO website in the section "Forms and fees – Making
payments". 31 Guidance for the payment of fees and expenses is
published in each issue of the Official Journal.
456 All fees to be paid on entry into the European phase are to be paid to OJ 2014, A75
the EPO in euro. The bank account opened in the name of the EPO OJ 2017, A100
and information on the different options to make a valid payment, for OJ 2016, Suppl.
Publ. 2
instance via a deposit account held with the EPO, can be found in each OJ 2017, Suppl.
issue of the Official Journal and on the EPO website in the section Publ. 5
"Forms and fees – Making payments". 32
457 Applicants having a deposit account may also make use of the OJ 2017, A44,
automatic debiting procedure in respect of any fee that must be paid Suppl. Publ. 5
within the 31-month time limit and thereafter. If an automatic debit order
is filed in due time, any fee which must be paid within the 31-month
time limit will be debited on the last day of that time limit. As from 1
December 2017, the EPO has moved to "online-only" management of

31
www.epo.org/applying/forms-fees.html
32
www.epo.org/applying/forms-fees/payment.html

76
 users’ deposit accounts. This means that debit orders must be filed in
an electronically processable format (XML), either using one of the
accepted electronic means of filing (e.g. EPO Form 1200E) or via
Online Fee Payment in Online services. 33 This also applies to the filing
of an automatic debit order. For more information on deposit accounts
and the automatic debiting procedure, reference is made to the
"Arrangements for deposit accounts (ADA) and their annexes",
published in OJ 2017, Supplementary publication 5.
458 As of 1 December 2017, fees due to the EPO may be paid by credit OJ 2017, A72, A73
card. For conditions and further information, reference is made to the
Decision of the President of the EPO dated 22 August 2017 as
published in the Official Journal.
459 Please note that payment of fees in cash or by cheque is not possible.

III. Communication with the applicant – representation –

address for correspondence (Form 1200, Sections 1, 2
and 3)
460 The EPO will issue any communication only to the applicant or, where
applicable, the professional representative. Accordingly, any procedural
action will be accepted by the EPO only if it is undertaken by the
applicant or, on his behalf, by the (appointed) professional
representative. An exception applies in respect of fees, which can be
validly paid to the EPO by a third party.
461 If an applicant has not appointed a professional representative and is
not obliged to do so (see point 464), he may indicate an address for
correspondence to which the EPO will send its communications if all
requirements are met. This applies irrespective of whether the applicant
is a natural or a legal person.
462 The address for correspondence indicated for the proceedings in the OJ 2014, A99
European phase must be the applicant’s own address and must be
located in an EPC contracting state.
463 Please note that an address for correspondence which is acceptable for
the procedure in the international phase (see point 109) does not
necessarily comply with the requirements applicable in the European
phase.

33
www.epo.org/applying/online-services/fee-payment.html#tab1

77
 Requirements specific to applicants with neither residence nor
principal place of business in an EPC contracting state - "non-
resident applicants"

464 Applicants having neither their residence nor their principal place of Art. 27(7) PCT
business within the territory of one of the EPC contracting states ("non- Art. 133(2), 134 EPC
GL/EPO A-III, 2.1
resident applicants") must be represented by a professional
GL/EPO A-VIII, 1
representative and act through him in all proceedings established by GL/EPO E-IX, 2.3.1
the EPC. 34 In such cases a professional representative must be
appointed in due time.
465 Two categories of professional representative have the right to practise
before the EPO:
– any professional representative entered in the directory of
professional representatives maintained by the EPO, and
– any legal practitioner who is qualified to practise in patent matters in
one of the EPC contracting states and has his place of business in
that state.
466 However, up to expiry of the 31-month time limit under Rule 159 EPC,
non-resident applicants may either comply with any requirement
themselves or act through a professional representative entitled to
practise before the EPO. This means that a non-resident applicant may
himself, within the 31-month time limit, for example sign and file EPO
Form 1200, submit amendments, file a translation of the application, file
a request for early processing, etc.
467 Non-resident applicants who did not themselves take the required
steps for entry into the European phase within the 31-month time
limit may subsequently perform these and the other procedural steps
(e.g. filing of a request for re-establishment of rights) only through a
professional representative entitled to practise before the EPO.
468 The only exception to the rule that after expiry of the 31-month time GL/EPO A-X, 1
limit non-resident applicants must act in the procedure before the EPO
as designated/elected Office through a professional representative is
that payments to the EPO can be validly made by anybody.
469 Under no circumstances can an applicant act through his agent
appointed for the international phase if the latter is not a professional
representative entitled to practise before the EPO (see point 465).
Further, if such representative is the appointed agent for the
international phase, he is not automatically appointed for the European
phase. A separate appointment is necessary (see point 114).
470 The only case in which a new appointment need not be made is if the
professional representative was validly appointed in the procedure
before the EPO as receiving Office, ISA or IPEA and the appointment
expressly extends to representation in the European phase (see point
114).

34
www.epo.org/applying/online-services/representatives.html

78
471 Non-resident applicants are therefore strongly advised to appoint a
professional representative before the EPO in good time, i.e. before
they initiate proceedings before the EPO as designated/elected Office,
and to indicate this appointment in Form 1200, Sections 2 and 3 (see
points 475 ff).
472 If no professional representative is appointed for the proceedings in the OJ 2014, A99
European phase, any communication issued by the EPO as
designated/elected Office will be notified to the applicant, at his address
for correspondence, where applicable.

Non-observance of the requirement to appoint a professional

representative

473 In case of failure to appoint a professional representative where this is R. 163(5), (6) EPC
required, the applicant will be invited by the EPO to do so within a time
limit of two months. Until the EPO is informed of a (valid) appointment,
any procedural step taken by the applicant will be deemed not to have
been taken. If within due time the deficiency has not been corrected,
the application will be refused.
474 The refusal may be remedied by a request for further processing. The Art. 121 EPC
request will be granted if within two months from notification of the R. 135 EPC
refusal a professional representative is appointed and the fee for further Art. 2(1)12 RFees
processing is paid.

How to appoint a representative - authorisation

475 In the procedure before the EPO as a designated/elected Office, an Art. 133, 134 EPC
authorisation or (a reference to) a general authorisation need, as a rule, R. 152 EPC
not be filed by a representative who identifies himself as a professional OJ 2007, Spec.Ed.3,
L.1
representative entered on the list maintained by the EPO. This means
that for a valid appointment a professional representative merely needs
to inform the EPO of his appointment for the application concerned (see
also point 114), e.g. by signing EPO Form 1200.
476 Legal practitioners entitled to practise before the EPO (see point 465) Art. 133(3) and
and employees representing an applicant who are not professional 134(8) EPC
representatives must, as a rule, file a signed authorisation or a OJ 2007, Spec.Ed.3,
L.1
reference to a general authorisation. However, no (new) authorisation is GL/EPO A-VIII,
to be filed where an authorisation was filed with the EPO as receiving 1.5-1.6
Office, ISA or IPEA and the authorisation expressly empowered the
legal practitioner or employee to act before the EPO in the European
phase (see point 114).
477 Where an authorisation is to be filed, the use of EPO Form 1003 GL/EPO A-VIII, 1.7
(Annex VIII) is recommended for individual authorisations and EPO
Form 1004 for general authorisations. If an authorisation is required but
not received, the EPO will invite the applicant or representative to file it
within a period to be specified in the invitation.

79
IV. Application documents on which the procedure before
the EPO as designated/elected Office is based
(Form 1200, Section 6)
Which version of the Euro-PCT application is taken as the basis
for the procedure in the European phase (Form 1200, Sections 6.1
and 6.2)?

478 When an application enters the European phase, the applicant must R. 159(1)(b) EPC
specify the application documents, as originally filed or as amended, on OJ 2017, A74
which the European grant procedure is to be based.
479 The documents on which the proceedings before the EPO as
designated or elected Office are to be based are to be indicated in
Section 6 of Form 1200 and, where necessary, further clarification may
be provided on an additional sheet. The applicant must make sure that
the indications in Section 6 and/or on the additional sheet correspond to
any indications given in the table for Section 6 provided for calculation
of the additional (page) fee to be paid for applications comprising more
than 35 pages (see points 540 ff).
480 If the EPO acts as designated Office, the documents forming the basis
for the proceedings in the European phase are to be indicated in
Section 6.1.
481 If the EPO acts as elected Office, the documents forming the basis for
the proceedings in the European phase are to be indicated in Section
6.2. If the applicant has filed test reports (e.g. comparative examples in
support of inventive step) with the EPO as IPEA, it is assumed that the
EPO may also use them in the European grant proceedings.

Information on prior art (Form 1200, Section 6.3)

482 If the applicant has claimed the right of priority of one or more earlier Art. 124 EPC
applications, he must on entry into the European phase file the results R. 70b, 141 EPC
of any search carried out by or on behalf of the office of first filing (OFF) OJ 2010, 410
for each application whose priority is claimed. This obligation applies to
international applications filed as from 1 January 2011.
483 The obligation applies irrespective of the form and format in which the
search results are drawn up, for instance a search report, a listing of
cited prior art or a (relevant) part of an examination report. The
applicant must file a complete copy of each relevant document as
received from the authority concerned. However, neither a translation of
the search results nor a copy of the documents cited therein need be
filed at this stage.
484 If the search results for the priority application(s) are not available at the
time of entry into the European phase, the applicant must file them as
soon as he receives them.
485 No action is required on the part of the applicant where an exemption OJ 2017, A94
applies. Firstly, this is the case if the EPO is the authority that GL/EPO A-III, 6.12
performed the search on a claimed priority application and established
a search report of one of the following types: a European search report,
an ISR, an international-type search report or a search report on a
national application drawn up on behalf of a national office (Belgium,

80
 Cyprus, France, Greece, Italy, Latvia (as of 1 October 2016), Lithuania,
Luxembourg, Malta, Monaco (as of 1 April 2017), Netherlands, San
Marino, Turkey).
486 A further exemption from the obligation to file a copy of any search OJ 2011, 62
results for a priority application applies if priority is claimed of a first OJ 2012, 540
filing made in: OJ 2013, 216
OJ 2015, A2
OJ 2016, A18
– Austria
– Denmark
– Japan
– the Republic of Korea
– Spain
– the United Kingdom
– the United States of America.
487 If the search results regarding any claimed priority application have to R. 70b EPC
be filed with the EPO but are not received, the applicant will be invited
to file, within a period of two months set in the invitation, the copy of the
missing search results and/or a statement that these results are (in
whole or in part) not available to him. The invitation will be issued at the
time the examining division assumes responsibility for the application.

Amending the application – Rule 161/162 communication

488 For the purpose of the procedure before the EPO as Art. 28, 41 PCT
designated/elected Office the applicant may always file (voluntary) R. 52.1(a), 78.1(a)
amendments within the 31-month time limit, and if he subsequently PCT
Art. 123(1) EPC
changes his mind he may file (further) amendments until expiry of the R. 137(2), 161(1),
time limit set in the combined communication under Rules 161 and 162 (2) EPC
EPC (Rule 161/162 communication). As set out below, and if the EPO OJ 2010, 634
acted as (Supplementary) International Searching Authority, the OJ 2016, A102
GL/EPO E-IX, 3.3.1
applicant may also be required to file (mandatory) amendments to
and/or comments on the application within the time limit set in the Rule
161/162 communication (see point 503). Whether or not a response is
mandatory is clearly stated in the communication, its wording thus
differing depending on the case (EPO Forms 1226AA and 1226BB).
489 The Rule 161/162 communication is issued for each application
promptly once the application has entered the European phase and on
condition that the ISR is available to the EPO. This means that it is also
issued if the applicant has already filed, with Form 1200 or thereafter,
amendments and/or comments to form the basis for the procedure in
the European phase.
490 The time limit set in the communication under Rules 161 and 162 EPC
is six months. This time limit cannot be extended.
491 After expiry of the six-month time limit further possibilities for amending R. 70a(2), 137(3),
the application are limited. If a supplementary European search is 164(2) EPC
carried out, the applicant always has one further opportunity to submit
amendments upon receipt of the report (see point 498). Amendments

81
 made thereafter require the consent of the examining division. By way
of exception, in cases where the supplementary European search is
dispensed with (EPO was (S)ISA) and, after expiry of the period
according to Rule 161(1) EPC, a further search is carried out in the
European phase according to Rule 164(2)(a) EPC (see points 668-
669), the applicant may also submit amendments in response to the
communication of the results of that search in accordance with Rule
164(2)(b) EPC and without requiring the consent of the examining
division.
492 Amendments may under no circumstances go beyond the disclosure in Art. 28(2), 41(2) PCT
the international application as filed. Art. 123(2) EPC

493 Whenever amendments are filed, the applicant must identify them and Art. 94(4) EPC
indicate their basis in the application as filed. If he fails to do so, the R. 137(4) EPC
examining division may issue a communication requesting correction of GL/EPO E-IX, 3.4
the omission within a non-extendable time limit of one month. If the
deficiency is not remedied in due time, the application will be deemed
withdrawn under Article 94(4) EPC. The loss of rights can be remedied
with further processing.

Waiving the Rule 161/162 communication

494 In order to accelerate the European grant procedure the applicant can, OJ 2015, A94
if so desired in addition to a PACE request (see point 445), waive his OJ 2017, A74
right to the Rule 161/162 communication by ticking the first check box
in Section 12.2 of Form 1200.
495 This waiver will be effective and no Rule 161/162 communication OJ 2015, A94
issued only if the applicant has taken all steps required to make its GL/EPO E-IX, 3.1,
issuance superfluous. In other words, he must ensure that all 3.2, 3.3.1
requirements for the application to proceed to the next phase of the
European grant procedure without the communication being issued are
fulfilled. This means that within the 31-month time limit he must have:
– paid any claims fees due for the set of claims indicated as the basis
for the procedure in the European phase, and
– filed a substantive response, as the case may be, to the WO-ISA,
the IPER or the SISR established by the EPO, if in the absence of
such a response the EPO would invite the applicant to do so under
Rule 161(1) EPC ("mandatory response").
496 If any requirement for the waiver to be effective is not fulfilled, a Rule
161/162 communication will be issued and processing of the application
will not start until the six-month time limit set therein has expired. This
applies even if a request under the PACE programme is or has been
filed (see point 445).

Amendments and the Rule 161/162 communication if a

supplementary European search is carried out

497 If the EPO did not act as ISA or SISA for the application it will upon R. 161(2) EPC
entry into the European phase draw up a supplementary European GL/EPO E-IX, 3.1
search report (see point 577). Up to expiry of the time limit set in the
Rule 161/162 communication (EPO Form 1226CC) the applicant may
file ("voluntary") amendments. All amendments filed within the time limit

82
 set in the communication will be taken into account in drawing up the
supplementary European search report and the search opinion (see
points 577, 579). This means that the supplementary European search
will be based on the last set of claims filed up to expiry of this time limit
for which any claims fee due has been paid (see point 617). If the
applicant does not wish to wait for the end of the six-month time limit
under Rules 161(2) and 162 EPC for processing to start, he may
request the immediate start of the supplementary search by explicitly
waiving his right to use the part of the six-month period that has not yet
expired at the date the waiver is received.
498 After issuance of the supplementary European search report the R. 137(2) EPC
applicant may, first of all, comment on both the report and the
("positive") search opinion and file ("voluntary") amendments to the
description, claims and drawings within the period specified in the
communication under Rules 70(2) and 70a(2) EPC for indicating
whether he wishes to proceed further with the application.
499 Secondly, if any deficiencies are noted in the search opinion, the Art. 121 EPC
applicant will be required under Rule 70a(2) EPC to respond to the R. 70(2), 70a(2),
objections made. The application will be deemed withdrawn if the 70a(3), 135 EPC
applicant does not submit a substantive reply to the communication
under Rule 70a(2) EPC ("mandatory response"). The loss of rights can
be remedied with further processing.
500 It is at the discretion of the examining division to accept any further R. 137(3) EPC
amendment at a later stage of the proceedings.

Amendments and the Rule 161/162 communication if no

supplementary European search is carried out

501 If the EPO has performed a search for an international application in R. 137(2), 161(1)
its capacity as ISA or SISA, it will not carry out a supplementary EPC
European search upon entry into the European phase (see point 577), GL/EPO E-IX, 3.2
and any amendments filed within the time limit set in the Rule 161/162
communication will serve as the basis for examination.
502 If the EPO in the international phase made any negative finding and OJ 2010, 634
drew up a "negative WO-ISA" or, where the EPO also acted as IPEA, a
"negative IPER" or made "objections" in the explanatory notes on the
SISR ("negative SISR"), the applicant is required under Rule 161(1)
EPC to respond to this finding ("mandatory response").
503 If a response is mandatory, the applicant must respond to the Rule
161/162 communication within the six-month time limit set therein,
unless a substantive response has already been submitted. For the
purpose of Rule 161(1) EPC new amendments filed on entry into the
European phase and up to the time the Rule 161/162 communication is
issued are held to constitute a response on condition that the applicant
has indicated - preferably in Box 6 of Form 1200 - that they form the
basis for prosecution of the application in the European phase.
504 Under the same conditions as for amendments made on entry into the GL/EPO E-IX, 3.3.1
European phase or thereafter, but subject to certain requirements set
out in detail in the Guidelines, any amendments made under Article 19
and/or 34 PCT and maintained for the processing of the application in
the European phase will constitute a response.

83
505 If a "mandatory response" is not filed in due time, the application is Art. 121 EPC
deemed withdrawn under Rule 161(1) EPC. Further processing may be R. 135 EPC
requested.
506 Further, if the EPO acted as ISA, SISA or IPEA in the international R. 137(2) EPC
phase, and regardless of whether the EPO in the international phase
made any negative finding (see point 502), the applicant has the right to
submit (further) comments on the WO-ISA, IPER and SISR and to file
(further) voluntary amendments as he sees fit within the time limit set in
the Rule 161/162 communication.
507 All comments and amendments validly filed by the applicant on a GL/EPO C-II, 3.2
mandatory or voluntary basis within the time limit set in the Rule GL/EPO E-IX,
161/162 communication will be taken into account in the examination 4.1- 4.3
OJ 2015, A94
proceedings. This means that examination will be based on the last set
of claims filed up to expiry of this time limit for which any claims fee
required is duly paid (see points 616 ff). If the applicant does not wish
to wait for the end of the six-month time limit under Rules 161(1) and
162 EPC for processing to start, he may request the immediate start of
examination by explicitly waiving his right to use the part of the six-
month period that has not yet expired at the date the waiver is received.
508 It is at the discretion of the examining division to accept any further R. 137(3) EPC
amendment at a later stage of the examination proceedings.

Amendments and claims fees

509 The claims fees are calculated on the basis of the number of claims R. 162 EPC
contained in the application in the version that is, in accordance with Art. 2(1)15 RFees
the indications in Form 1200, to be taken as the basis for the procedure GL/EPO E-IX, 2.1.3
in the European phase. The amount of the claims fee varies according
to a two-tier system. For the 16th and each further claim a claims fee
must be paid. However, for any claim over 50 a higher amount is due
(see points 616 ff).
510 Where claims fees are to be paid, they must be paid within the 31-
month time limit. If the applicant fails to pay (the correct amount of)
claims fees in due time, he is invited in the Rule 161/162
communication to pay the missing amount within the non-extendable
six-month time limit set therein (see point 490). If a supplementary
European search is carried out, it will relate to the last set of claims
received before expiry of the six-month time limit and will be confined to
claims for which any claims fees, where applicable, have been paid in
due time.
511 Where the number of claims changes as a consequence of a (further) OJ 2016, A102,
amendment submitted within the six-month time limit set in the Rule A103
161/162 communication (see point 490), that number is decisive for
calculating the amount of the claims fees to be paid.
512 If consequent to the amendments made before expiry of the six-month R. 162(3) EPC
time limit the number of claims forming the basis for the further
procedure is reduced, any claims fees overpaid will be refunded.
513 Claims for which a fee due is not paid are deemed to be abandoned, Art. 121 EPC
and the applicant is notified thereof. The loss of rights may be remedied R. 135, 162(4) EPC
by further processing. Features of a claim deemed abandoned which J 15/88 (OJ 1990,
445)

84
 are not otherwise to be found in the description cannot be reintroduced
into the application.

V. Translation of the application documents and other

documents (Form 1200, Section 7)
When must the applicant file a translation of the Euro-PCT
application?

514 If the Euro-PCT application was not published by the IB in an official Art. 22(1), 39(1) PCT
language of the EPO (English, French, German), the applicant must, R. 49.2 PCT
within the 31-month time limit, submit to the EPO a translation of the Art. 14(2), 153(4)
EPC
application into any such language (Form 1200, Section 7). R. 159(1)(a) EPC
GL/EPO E-IX, 2.1.2
515 If a translation must be filed, the language of the translation determines Art. 14(2), (3) EPC
the language of the proceedings before the EPO (see point 422). At
any time during the processing of the application in the European
phase, errors made in the translation may be corrected.
516 If the international application has been published by the IB in an official G 4/08
language of the EPO, no translation is required and any translation that OJ 2010, 572
is nevertheless filed will be ignored, since the language of the
proceedings may not be changed upon entry into the European phase
(see point 423).
517 In written proceedings the applicant may use any official language of R. 3 EPC
the EPO, but any amendments to the application must always be filed
in the language of the proceedings (see point 422).
518 On the question of whether a translation of the priority document must
be submitted, reference is made to points 638 ff.

Consequences of not filing a translation of the application

519 If the translation of the Euro-PCT application is not filed within the time Art. 24(1)(iii),
limit, the application is deemed to be withdrawn and the applicant is 39(2) PCT
informed of this in a communication. Moreover, the application will not Art. 153(5) EPC
R. 112, 160 EPC
be considered as comprised in the state of the art under Article 54(3)
EPC (see point 675).
520 The loss of rights is deemed not to have occurred if, within two months Art. 121 EPC
from notification of the above communication, the translation is supplied R. 135(1) EPC
and further processing is requested by payment of the relevant fee. Art. 2(1)12 RFees

521 Alternatively, the applicant may request reinstatement of rights under R. 49.6 PCT
Rule 49.6 PCT if the application is deemed withdrawn because the Art. 122 EPC
translation was not filed in due time. However, given that the fee is R. 136 EPC
Art. 2(1)13 RFees
higher and stricter requirements apply, this remedy has no advantages OJ 2007, 692
unless the period for requesting further processing has already expired.
522 If the time limit for requesting further processing has been missed (see Art. 122 EPC
point 520), a request for re-establishment of rights in respect of the R. 136 EPC
period under Rule 135(1) EPC may be filed. The request is not deemed Art. 2(1)13 RFees
GL/EPO E-VIII, 3.1.3
to have been filed until the fee for re-establishment relating to the
omitted act, i.e. filing the translation under Rule 159(1)(a) EPC, has
been paid. Attention is drawn to the further requirements under Article
122 and Rule 136 EPC for the request to be admissible and allowable.

85
 What the translation must include

523 The translation must always include: R. 49.3 and .5 PCT

– the description (as originally filed)

– the claims (as originally filed)
– any text in the drawings (as originally filed)
– the abstract (as published).
524 If the EPO acts as designated Office the translation must, where R. 49.5 PCT
applicable, also include:
– only if the applicant wishes such amendments to form the basis of Art. 19 PCT
further proceedings, any amendments made to the claims under R. 46.4 and .5, 49.3,
49.5(c), (c-bis) PCT
Article 19 PCT in the form of a translation of the complete set of
R. 3, 137(4) EPC
claims furnished in replacement of all claims originally filed (see
point 245). The claims as amended under Article 19 PCT must be
submitted together with, if submitted to the IB, the translated
statement under Article 19(1) PCT explaining the amendments and,
in every case, the translated accompanying letter under Rule
46.5(b) PCT, indicating the basis for the amendments in the
application as filed, in an official language of the EPO. If a
translation of the complete set of claims submitted under Article 19
PCT is not furnished or not accompanied by a translation of, if
submitted to the IB, the statement under Article 19(1) PCT and, in
every case, the accompanying letter under Rule 46.5(b) PCT, the
amendments under Article 19 PCT will be disregarded for the
further proceedings. If only the statement under Article 19(1) PCT is
not available in an official language, only that document will be
disregarded.
– any published request for rectification R. 91.3(d),
48.2(a)(vii) PCT
– any sequence listing, unless the text in the sequence listing is R. 49.5(a-bis), 5.2(b)
available to the EPO in English (see point 537) PCT

– any separately furnished references to deposited biological material R. 49.5(h), 13bis.3

(Form 1200, Section 8). and 13bis.4 PCT

525 In addition, if the EPO acts as elected Office, translations of any Art. 36(2)(b) and
annexes to the international preliminary examination report (IPER) (3)(b), 39(2) PCT
must always be furnished, i.e. including any accompanying letter R. 70.16, 74.1(a)
PCT
under Rules 66.8(a) or (b) PCT indicating the basis for the amendments R. 137(4) EPC
in the application as filed. Such translations must be filed regardless of
whether protection is sought for the same version of the application
documents as was the subject of the IPER. Therefore, a translation of
any amendments made under Article 19 PCT (and the accompanying
letter under Rule 46.5(b) PCT, if annexed to the IPER) must also
always be filed if such amendments are annexed to the IPER.
526 If the applicant wishes the amendments to the claims made before the
IB under Article 19 PCT to form the basis of the subsequent procedure
before the EPO as elected Office, and these amendments are not
annexed to the IPER (for instance because they were considered
reversed by an amendment under Article 34 PCT), then these

86
 amendments must also be furnished in translated form, as otherwise
they will be disregarded for the further proceedings. Any statement
under Article 19(1) PCT and, in every case, the letter under Rule
46.5(b) PCT must also be furnished in an official language of the EPO.
If only the statement under Article 19(1) PCT is not available in an
official language, only that document will be disregarded (see point
524).

Consequences of not filing a translation of the annexes to the IPER

527 If the translation of all annexes to the IPER is not filed in due time, the Art. 121 EPC
applicant is invited to furnish the missing translation within two months R. 135, 160 EPC
of notification of a communication. If the applicant fails to reply (in time), Art. 2(1)12 RFees
the Euro-PCT application is deemed to be withdrawn. The applicant
may request further processing (or reinstatement of rights, see points
520 ff).

VI. Biological material & nucleotide and amino acid

sequences
Biological material (Form 1200, Section 8)

528 For the sufficient disclosure of an invention which involves the use of or R. 13bis.3, 13bis.4
concerns biological material which is not available to the public and PCT
Art. 83 EPC
which cannot be described in the application in an enabling manner for
R. 31, 32 EPC
the skilled person, specific requirements must be met on the OJ 2010, 498
international filing date and within sixteen months after the date of filing OJ 2017, A55, A60,
or the priority date (see point 152). If any of these requirements was not A61
met within the applicable time limit, no remedy is available before the GL/EPO A-IV, 4.1,
4.3; F-III, 6.5
EPO as designated/elected Office upon entry into the European phase.
Extensive information is provided in the Notice from the EPO dated
7 July 2010.
529 If on filing the international application a reference to the deposit of
biological material complying with Rule 31 EPC was made but no proof
of the deposit in the form of a copy of the deposit receipt issued by the
depositary institution was submitted, the applicant is strongly advised to
do so upon entry into the European phase.
530 If the Euro-PCT application was not published by the IB in an official R. 13bis.6 PCT
language of the EPO, the biological material referred to in the R. 32, 33 EPC
OJ 2017, A55, A60,
application will be available upon request to any person (only) from the
A61
date of publication of the translation by the EPO. In this case, if the
applicant files the statement under Rule 32(1) EPC before the technical
preparations for publication of the translation by the EPO are
completed, the biological material concerned will be made available
only by the issue of a sample to an independent expert nominated by
the requester.

Waiver under Rule 33(2) EPC

531 The issue of a sample of biological material may be requested by any OJ 2010, 498
person under the conditions set out in Rule 33(1) EPC. Rule 33(2) EPC
requires that the requester has undertaken vis-à-vis the applicant not to
make the biological material, or any biological material derived
therefrom, available to any third party and to use that material for

87
 experimental purposes only, until such time as the European patent
application is refused or withdrawn or deemed to be withdrawn, or
before the European patent has expired in all the designated states.
532 In Form 1200, Section 8, the applicant is given the option of waiving his
right to an undertaking by the requester pursuant to Rule 33(2) EPC on
condition that the applicant is the depositor of the biological material. A
waiver may, however, be filed at any time in the form of a signed
statement containing a specification of the biological material
concerned.

Nucleotide and amino acid sequences (Form 1200, Section 9)

533 Where the Euro-PCT application discloses nucleotide or amino acid R. 5.2, 13ter.3 PCT
sequences, a sequence listing in electronic (text) form drawn up in R. 30, 163(3) EPC
compliance with WIPO Standard ST.25 must be available to the EPO OJ 2011, 372
OJ 2013, 542
as a designated/elected Office on expiry of the 31-month time limit. GL/EPO A-IV, 5;
Extensive information is provided in the Notice from the EPO dated E-IX, 2.4.2
18 October 2013. The sequence listing must be filed in electronic (TXT)
format only; consequently, a sequence listing filed on paper or in PDF
format is not permitted and will be disregarded.
534 As a rule the required sequence listing will be available to the EPO if it
was contained in the international application under Rule 5.2 PCT or
filed under Rule 13ter PCT with the EPO acting as ISA/SISA or IPEA
(see points 159 ff). Further, it will also be accessible to the EPO if it is
made available by WIPO on Patentscope and can be downloaded in a
usable form.
535 The applicant should in due time verify whether the sequence listing is
available to the EPO in the required form and, if it is not, file it before
expiry of the 31-month time limit in electronic (TXT) format online or on
a data carrier.
536 If a sequence listing must be filed upon entry into the European phase,
the applicant must enclose a statement to the effect that the information
contained in the sequence listing does not go beyond the content of the
original application documents. This statement can be made by
crossing the appropriate box in Section 9.2 of Form 1200.
537 A translation of any text matter in a sequence listing which forms part of R. 5.2(b), 12.1(d),
the description or which was filed subsequently need only be provided if 13ter, 49.5(a-bis)
it is not yet available to the EPO in English (see point 524). PCT
Art. 14(3) EPC
R. 3 EPC
Consequences of not filing a sequence listing

538 If on expiry of the 31-month time limit a sequence listing in electronic R. 30(3), 163(3) EPC
form complying with WIPO Standard ST.25 is not available to the EPO, Art. 2(1)14a RFees
the applicant will be invited to furnish such a sequence listing and pay
the late furnishing fee within a non-extendable period of two months.
539 If the required sequence listing is not filed within the time limit set, the Art. 121 EPC
application is refused. The refusal may be remedied by a request for R. 135 EPC
further processing.

88
VII. Filing fee
540 Within the 31-month time limit the European filing fee must be paid, this Art. 22(1), 39(1) PCT
being composed of a basic filing fee and an additional fee which is due Art. 78(2) EPC
for the 36th and each subsequent page of the application. In the case R. 159(1)(c) EPC
Art. 2(1)1 RFees
of Euro-PCT applications, the pages forming the basis for the OJ 2009, 118, 338
procedure in the European phase are counted as set out below. The GL/EPO A-III, 13.1
additional fee is referred to as the "page fee". and E-IX, 2.1.3

541 The requirement to pay the European filing fee on entry into the
European phase implements the right of the EPO as a designated/
elected Office to require payment of a "national fee" under Articles
22(1) and 39(1) PCT.
542 The basic filing fee is reduced where Form 1200 is filed online (see
point 425).

Page fee

543 Applicants are advised to compute the correct page fee with the help of R. 38(2) EPC
Form 1200, section 6, and in particular the related table, which is part of Art. 2(1)1a RFees
GL/EPO A-III,13.2
Form 1200. Precise and correct indications in section 6 and the table
are required to ensure that the EPO does not deem the application to
be withdrawn due to payment of what appears to be an incorrect
amount of the filing fee.
544 As a general rule, the page fee is based on the international application OJ 2017, A74
as published, regardless of the language of publication. The pages of
the description, claims and drawings are counted, plus one page in total
for any pages with the bibliographic data and the abstract. Amended
claims under Article 19 PCT are also part of the international
publication and must be taken into account. They are considered to
replace the claims as originally filed unless the applicant explicitly
states that the procedure in the European phase is not to be based on
them (see first check box in Section 6.1 of Form 1200). Furthermore,
any amended pages annexed to the IPER are counted in addition,
provided that the IPER is available to the EPO at the 31-month time
limit, and unless the applicant has either indicated that the further
proceedings are not to be based on them or clearly stated that they
replace the corresponding pages as originally filed (see point 548). The
latter statement can be made by ticking the first check box in Section
6.2.
545 However, the calculation of the page fee cannot be based on pages of OJ 2009, 338
the description or of the claims drafted partly in an official language of
the EPO and partly in another language. Thus, special rules for
calculating the page fee apply if the international application was not
published in an official language of the EPO and amendments were
filed upon entry into the European phase.
546 If amendments to the claims are filed for the procedure in the
European phase, the entire set of claims must always be submitted,
and this set will form the basis for calculating the page fee and will
replace any earlier set of claims filed. For international applications not
published in an official language of the EPO, the page fee is calculated
on the basis of the translation of the set of claims as amended and the
description of the international application as published.

89
547 If amendments to the description are filed, the pages of the description
are counted as follows: the pages of the description as published, plus
any pages submitted as amendments to the description, minus the
pages which are replaced by the amendments to the description filed
upon entry into the European phase. For international applications not
published in an official language of the EPO, the page fee is calculated
on the basis of the translation of the entire description, even if it is only
amended in part. The same applies where the description has been
amended under Article 34 PCT and the applicant wishes these
amendments to be taken into consideration in the European phase.
548 If the application was processed under PCT Chapter II, the
amendments filed under Article 34 PCT, which are annexed to the
IPER, are to be taken into account in computing the page fee unless
the applicant indicates that these pages are not to form the basis for the
procedure in the European phase or clearly states that they replace the
corresponding pages as originally filed. If no indications are given
concerning the replacement of pages, the amendments annexed to the
IPER are included in the page count in addition to the number of pages
in the international publication (see point 543).
549 Form 1200 and any sequence listing presented as a separate part of
the description in accordance with the requirements of WIPO Standard
ST.25 are disregarded for the purpose of these calculations.
550 Pages with amendments filed after expiry of the 31-month time limit are
not taken into account in calculating the page fee. Consequently, even
if amendments submitted after expiry of the 31-month time limit reduce
the number of pages already paid for, no refund will be made.

Non-observance of the time limit for payment of the filing fee

551 If the filing fee, i.e. the basic filing fee and/or, where applicable, the Art. 153(5) EPC
page fee, is not paid in full in due time, the application is deemed to be R. 160, 165 EPC
withdrawn. Further, the Euro-PCT application will not be considered as
comprised in the state of the art under Article 54(3) EPC (see point
675). The applicant is informed of the loss of rights in a communication
under Rules 112(1) and 160(2) EPC.
552 Further processing may be requested within two months from Art. 121 EPC
notification of the communication of the loss of rights by payment of the R. 135 EPC
filing fee or the missing part of the filing fee and any page fees, together Art. 2(1)12 RFees
with the fee for further processing.
553 If the basic filing fee is not paid (in full) in due time, the fee for further
processing amounts to 50% of the basic filing fee. If the page fee is not
paid (in full), the fee for further processing in respect of this part of the
filing fee amounts to 50% of the page fee for the number of pages for
which the page fee has not been paid.
554 The applicant may also request re-instatement of rights if the R. 49.6 PCT
application is deemed withdrawn because the filing fee was not paid in Art. 122 EPC
due time. Given the fact that the fee is higher and stricter requirements R. 136 EPC
Art. 2(1)13 RFees
apply, this remedy has no advantages, unless the period for requesting
further processing has already expired (see point 521).

90
555 If the time limit for requesting further processing has been missed (see Art. 122 EPC
point 552), a request for re-establishment of rights in respect of the R. 136 EPC
Art. 2(1)13 RFees
period under Rule 135(1) EPC may be filed. The request is not deemed
GL/EPO E-VIII, 3.1.3
to have been filed until the fee for re-establishment relating to the
omitted act, i.e. payment of the filing fee under Rule 159(1)(c) EPC,
including any additional fee, has been paid. Attention is drawn to the
further requirements under Article 122 and Rule 136 EPC for the
request to be admissible and allowable.

VIII. Designations, extensions and validations

556 A (flat) designation fee must be paid within 31 months from the filing Art. 21 PCT
date or, if priority has been claimed, the earliest priority date, or within R. 48 PCT
six months from the date of publication of the ISR, whichever time limit Art. 79(2), 153(6)
EPC
expires later. Therefore, unless the publication of the ISR was R. 39, 159(1)(d) EPC
considerably delayed, the designation fee must be paid within the 31- Art. 2(1)3 RFees
month time limit. OJ 2009, 118
GL/EPO A-III, 11.2.5;
E-IX, 2.1.3, 2.3.11
557 Payment of the designation fee will be effective only in respect of EPC
contracting states that were designated for a European patent in the
international application on the international filing date (see point 116).
558 Applicants are reminded that upon filing of the PCT request all PCT
contracting states are automatically designated for both a national and,
where applicable, a regional patent. Therefore, payment of the (flat)
designation fee on entry into the European phase confirms the
designation of the EPC contracting states that were EPC and PCT
contracting states at the international filing date (see point 117). An
exception applies where the applicant has withdrawn the designation
for a European patent in respect of one or more EPC contracting states
during the international phase.
559 If a state for which patent protection is sought was neither an EPC
contracting state nor an extension or validation state at the international
filing date (see point 564), the applicant must enter the national phase
in the state concerned to obtain patent protection for that state on the
basis of his international application. If, however, before entry into force
of the EPC for a state an extension agreement with that state was in
force, patent protection in that state may still be obtained on the basis
of the extension agreement for any application filed before the
extension agreement was terminated (see point 127).

Non-observance of the time limit for payment of the designation

fee

560 If the designation fee is not paid in due time, the application is deemed R. 160 EPC
withdrawn. The applicant will be informed thereof in a communication GL/EPO E-IX, 2.1.3
under Rules 112(1) and 160(2) EPC.
561 Further processing may be requested within two months after Art. 121 EPC
notification of the communication of the loss of rights by payment of the R. 135 EPC
designation fee together with the fee for further processing, which Art. 2(1)3, 2(1)12
RFees
amounts to 50% of the designation fee.

91
562 Since the designation fee does not form part of the national (filing) fee Art. 22(1) PCT
(see point 540), applicants cannot request re-instatement of rights R. 49.6 PCT
under Rule 49.6 PCT.
563 If the time limit for requesting further processing has been missed (see Art. 122 EPC
point 561), a request for re-establishment of rights in respect of the R. 136(1) EPC
period under Rule 135(1) EPC may be filed. The request is not deemed Art. 2(1)13 RFees
GL/EPO E-VIII, 3.1.3
to have been filed until the fee for re-establishment relating to the
omitted act, i.e. payment of the designation fee under Rule 39 EPC,
has been paid. Attention is drawn to the further requirements under
Article 122 and Rule 136 EPC for the request to be admissible and
allowable.

How to extend or validate the Euro-PCT application (Form 1200,

Section 11)

564 Under certain conditions a European patent may be extended to or OJ 1994, 75; 1996,
validated in states which are not EPC contracting states on the 82; 1997, 538; 2004,
international filing date but have concluded an extension or validation 117, 619; 2007, 406;
2009, 603; 2010, 10
agreement with the EPO to that effect. OJ 2015, A18, A20,
A84, A85
OJ 2016, A5, A67
OJ 2017, A84, A85
GL/EPO A-III, 12,
and E-IX, 2.1.3
565 Extension or validation of a European patent is possible only if the state
concerned was designated in the international application for a national
patent and an extension or validation agreement with the EPO was in
force at the international filing date (see point 123).
566 Extension or validation is deemed requested for any international GL/EPO A-III, 12.4
application entering the European phase in respect of any state
designated in the application with which an extension or validation
agreement was in force at the international filing date. However,
such request is deemed to be withdrawn in respect of each extension
or validation state for which no extension or validation fee is paid in due
time. The applicant must, therefore, carefully check for which states
extension or validation is possible and pay the required fees in due time
(see point 131).
567 Pursuant to the extension and validation agreements, an extension or
validation fee must be paid within the same time limit as applies for
payment of the designation fee (see point 556). There is no flat
extension or validation fee.
568 In Form 1200, Section 11, the applicant may indicate for which states OJ 2017, A84, A85
he intends to pay (an) extension or validation fee(s). In addition to the
boxes provided for the states with which an extension agreement was
in force on 1 January 2018 – i.e. Bosnia and Herzegovina (BA) and
Montenegro (ME) – and those with which a validation agreement was in
force on 1 January 2018 – i.e. Morocco (MA), the Republic of Moldova
(MD) and Tunisia (TN) – further states may be indicated on condition
that an extension or validation agreement with that state was in force at
the filing date of the international application.
569 Upon payment, the applicant must specify the extension or validation
states for which payment is actually made, preferably by indicating the

92
 correct fee code which is assigned to each individual extension and
validation state. 35

Non-observance of the time limit for payment of extension fees

570 If no valid payment is made (see point 567), any request for extension OJ 2009, 603
is deemed withdrawn. GL/EPO A-III, 12.1,
12.2
571 Unlike the payment of designation fees, the payment of extension fees
is regulated entirely in the relevant extension agreement. Therefore
Rule 112 EPC does not apply. This means that no loss-of-rights
communication pointing out the failure to observe the time limit for
payment is issued. For the same reasons, the applicant cannot request
either an (appealable) decision under Rule 112(2) EPC or the
re-establishment of rights under Article 122 EPC. However, the
applicant may still pay an extension fee after expiry of the (basic) time
limit for payment of the designation fee and the extension fees under
the following circumstances:
572 Firstly, within a grace period of two months as from expiry of the basic
time limit, any extension fee may always be paid with a 50% surcharge.
573 Secondly, where in the absence of payment of the designation fee in
due time further processing can be requested in respect of the
designation fee, the applicant may within two months from notification
of the communication of the loss of rights also pay the extension fee(s)
with a 50% surcharge.

Non-observance of the time limit for payment of validation fees

574 If a validation fee is not paid in due time (see point 567), the request for OJ 2015, A19, A85
validation is deemed withdrawn. Similarly to the payment of the OJ 2016, A5, A67
OJ 2017, A84, A85
extension fee, the payment of validation fees is regulated entirely in the
relevant validation agreement. Therefore Rule 112 EPC and Article 122
EPC do not apply.
575 If the validation fee for a state is not paid within the basic period, the
applicant can still pay it, together with a 50% surcharge, either within
two months of expiry of the basic period ("grace period") or along with
the request for further processing concerning the designation fee if this
has also not been paid in time and hence within two months of
notification of a communication of loss of rights under Rule 112(1) EPC
following non-payment of the designation fee.
576 For the reasons set out in point 575, re-establishment of rights under
Article 122 and Rule 136 EPC is not available in respect of payment of
the validation fee.

35
See OJ 2016, supplementary publication 2, "Miscellaneous fees" and "Description of
fee codes".

93
IX. Supplementary European search
577 As a rule, a supplementary European search must be performed for Art. 153(7) EPC
each international application entering the European phase and a R. 62, 159(1)(e) EPC
search fee must be paid. For an exception see point 583 ff. Like any GL/EPO B-II, 4.2,
4.3; E-IX, 3.1
European search report, the supplementary European search report is OJ 2017, A106
accompanied by an opinion under Rule 62 EPC, the European search
opinion (ESOP), on whether the application and the invention to which
it relates meet the requirements of the EPC. As a further service, the
information sheet "Information on Search Strategy" is annexed to all
supplementary European search reports as from 1 January 2018 (see
point 230). The supplementary European search report together with
the search opinion is known as the "extended (supplementary)
European search report" (EESR).
578 No search opinion under Rule 62 EPC will be issued if the applicant:
– has filed the request for examination according to Rule 159(1)(f)
EPC and
– has waived the right to be asked under Rule 70(2) EPC whether he
wishes to proceed further with the application (see points 600 and
603)
before the supplementary European search report has been GL/EPO B-XI, 7;
transmitted to him. Instead, a communication will be issued under Rule C-II, 1.(ii); C-VI, 3
71(1) or 71(3) EPC, respectively inviting the applicant to correct and/or OJ 2015, A52, A94
amend the application or informing him of the text in which the EPO
intends to grant the patent. If the applicant requests reasoned
amendments or corrections to the text intended for grant, the
examining division will issue a further communication under Rule 71(3)
EPC if it gives its consent to the amendments or corrections provided
by the applicant. Upon fulfilment of certain conditions applicants are
given the option to waive the right to receive this further communication
under Rule 71(3) EPC.
579 The supplementary European search is performed on the basis of the R. 161 EPC
last set of (amended) claims available to the EPO on expiry of the time
limit set in the Rule 161/162 communication (see points 497 ff). That
set of claims is considered the final set at the time the search is
performed (see point 488). Any claim for which a claim fee due has not
been paid will not be searched (see points 619 ff).
580 If third-party observations were filed during the international phase and OJ 2017, A86
forwarded by the IB to the EPO as designated or elected Office, they GL/EPO E-VI, 3
will be considered in the supplementary European search report,
provided they are substantiated and meet all formal requirements.
Furthermore, provided they were not filed anonymously and the third
party has explicitly so requested, the EPO will expedite the issuing of
the first office action in the (European) examination phase.
581 If a supplementary European search is carried out, the European
Patent Bulletin will mention the date of despatch of the supplementary
European search report. The report is not published, but is available
through file inspection.

94
582 If during the supplementary European search the EPO comes to the R. 62a, 63 EPC
conclusion that the application contains more than one independent OJ 2009, 533
GL/EPO B-VIII, 4.1,
claim in the same category which does not fall under the exceptions
3.1
listed under Rule 43(2) EPC, it may issue an invitation to indicate,
within a time limit of two months, the basis on which the search is to be
carried out (Rule 62a(1) EPC). Similarly, if it is impossible to carry out a
meaningful search on the basis of all or some of the subject-matter
claimed, an invitation to file, again within a time limit of two months, a
statement indicating the subject-matter to be searched will be issued.
Any declaration of no search, or a partial supplementary European
search report issued subsequently due to failure to overcome the
deficiency, takes the place of the European search report.

No supplementary European search performed

583 As a rule a supplementary European search is carried out. Art. 153(7) EPC
Dispensation applies and no search fee is to be paid under Rule OJ 2009, 594
159(1)(e) EPC only if the EPO acted as ISA or SISA for the application
in the international phase.
584 If dispensation applies, it also applies where instead of an ISR a Art. 17(2)(a) PCT
declaration of non-establishment under Article 17(2)(a) PCT was Art. 153(6) EPC
issued.
585 If no supplementary European search report is drawn up, the Euro-PCT
application will, after formalities examination, be passed on for
substantive examination on condition that a request for examination
has been validly filed (see points 599 ff).
586 Any third-party observations filed during the international phase and OJ 2017, A86
forwarded by the IB to the EPO as designated or elected Office will be GL/EPO E-VI, 3
considered in the first office action of the examining division, provided
they are substantiated and meet all formal requirements. Provided they
were not filed anonymously and the third party has explicitly so
requested, the issuing of the first office action will be expedited.

Result of supplementary European search and refund of

examination fee

587 Where the request for examination was filed before transmittal of the R. 70(2), 70a(2) EPC
supplementary European search report, which is usually the case (see GL/EPO E-IX, 2.5.3,
point 602), the EPO invites the applicant after transmittal of the B-XI, 8
supplementary European search report to indicate within a six-month
time limit whether he wishes to proceed further with the application,
unless the applicant has expressly waived the right to receive such
invitation (see point 603). With the same communication, the applicant
is invited to correct any deficiencies noted in the search opinion
accompanying the supplementary European search report. Such a
reply is mandatory if the search opinion was negative. If the applicant
fails to file a reply in such a case, the application is deemed to be
withdrawn (see points 589-590).
588 Where the request for examination was filed before transmittal of the
supplementary European search report and the applicant wishes to
proceed further, he must notify the EPO accordingly within the six-
month time limit. Within the same time limit he may or must, as the

95
 case may be, comment on the supplementary European search report
by filing amendments (see point 497).
589 If the applicant does not wish to proceed further, he may actively R. 70(3), 70a(3) EPC
withdraw the application, or allow it to lapse by simply not filing a reply
within the time limit set in the communication under Rules 70(2) and
70a(2) EPC. This will result in the application being deemed withdrawn.
590 Where the application is withdrawn, refused or deemed withdrawn Art. 11(a) RFees
before substantive examination has begun, the examination fee is OJ 2016, A48, A49
refunded in full.
591 If the application is withdrawn after substantive examination has begun Art. 11(b) RFees
but before expiry of the time limit for replying to the first invitation issued OJ 2013, 153
by the examining division under Art. 94(3) EPC or, if no such invitation OJ 2016, A48, A49
GL/EPO A-VI, 2.5
has been issued, before the date of the communication under Rule
71(3) EPC, the examination fee is refunded at a rate of 50%.

Search fee for supplementary European search

592 If a supplementary European search is to be performed, the European R. 159(1)(e) EPC

search fee must be paid within the 31-month time limit. Art. 2(1)2 RFees
OJ 2016, A3
Reduction of the search fee

593 If a supplementary European search report is to be established, the Art. 153(7) EPC
European search fee may be reduced. The reductions in the search fee OJ 2005, 548
OJ 2016, A2, A20
applicable on 1 January 2018 may be summarised as follows:
OJ 2017, A57
GL/EPO A-X, 9.3.1
– a reduction of EUR 190 for international applications for which the
ISR was drawn up exclusively by any of the following ISAs: the
Australian Patent Office, the Japan Patent Office (JPO), the Korean
Intellectual Property Office (KIPO), the Russian Federal Service for
Intellectual Property, Patents and Trademarks (Russian Federation),
the United States Patent and Trademark Office (USPTO) or the State
Intellectual Property Office of the People’s Republic of China
(SIPO).36
– a reduction of EUR 1 110 for international applications for which the
(S)ISR was drawn up by a European ISA: the Austrian Patent
Office, the Finnish Patent and Registration Office, the Spanish
Patent and Trademark Office, the Swedish Patent and Registration
Office, the Nordic Patent Institute, the Turkish Patent and
Trademark Office or the Visegrad Patent Institute.
However, these reductions apply only to the search fee paid in
accordance with Rule 159(1)(e) EPC. In particular, a reduction does
not apply to further search fees paid under Rule 164(1) EPC (see
points 659 ff).

36
Please note that this reduction will no longer be applicable as from 1 April 2018.

96
 Refund of the search fee

594 If the application claims the priority of an earlier application for which a Art. 9(2) RFees
search was carried out by the EPO, (a part of) the fee paid for the OJ 2009, 99
OJ 2017, A94
supplementary European search may be refunded. The level of the
GL/EPO A-X, 10.2.1
refund depends on the type of earlier search and the extent to which
the EPO benefits from the earlier search report when carrying out the
supplementary European search.

Non-observance of the time limit for payment of the search fee

595 If the search fee is not paid in due time the Euro-PCT application will be R. 160 EPC
deemed to be withdrawn and the applicant will be informed of this in a
communication under Rules 112(1) and 160(2) EPC.
596 The loss of rights is deemed not to have ensued if within two months Art. 121 EPC
after notification of this communication further processing is requested R. 135 EPC
by payment of the further processing fee, which amounts to 50% of the Art. 2(1)12 RFees
search fee, together with the missing search fee.
597 Since the search fee does not form part of the national (filing) fee (see Art. 22(1) PCT
point 540), applicants cannot request re-instatement of rights under R. 49.6 PCT
Rule 49.6 PCT.
598 If the time limit for requesting further processing has been missed (see Art. 122 EPC
point 596), a request for re-establishment of rights in respect of the R. 136(1) EPC
period under Rule 135(1) EPC may be filed. The request is not deemed Art. 2(1)13 RFees
GL/EPO E-VIII, 3.1.3
to have been filed until the fee for re-establishment relating to the
omitted act, i.e. payment of the search fee under Rule 159(1)(e) EPC,
has been paid. Attention is drawn to the further requirements under
Article 122 and Rule 136 EPC for the request to be admissible and
allowable.

X. Examination
How to file the request for examination (Form 1200, Section 4)

599 A European patent may only be granted if the substantive examination of Art. 94 EPC
the application shows it to meet the requirements of the EPC. Substantive GL/EPO E-IX, 2.1.3,
2.5.2
examination of an application will only start upon explicit request.
600 The applicant must therefore file a written request for examination. If R. 70 EPC
Form 1200, as recommended, is used (see point 424), this requirement
will always be met since the appropriate check-box is pre-crossed
(Form 1200, Section 4).
601 The request for examination is only effective if the examination fee has
been paid. Therefore, the examination fee must be paid in due time
(see points 602-605 and 609).

When must the request for examination be filed? When must the
examination fee be paid?

602 The request for examination must be filed and the examination fee paid R. 70(1), 159(1)(f)
within 31 months from the filing date or, if priority has been claimed, EPC
from the earliest priority date, or up to six months after the date of Art. 2(1)6 RFees
GL/EPO C-II, 1.2
publication of the ISR, whichever time limit expires later. Therefore, as

97
 a rule and unless the ISR was published after 25 months from the date
of filing or the earliest priority date, the request for examination must be
filed and the examination fee paid within the 31-month time limit.
603 In most cases the request for examination must be filed and the R. 70(2) EPC
examination fee must be paid before the supplementary European OJ 2017, A74
search report is transmitted to the applicant (see point 587). After
transmission of the report, the EPO will invite the applicant to indicate
whether he wishes to proceed further with the application (see point
587). The applicant can waive his right to be asked whether he wishes
to proceed further with the application, e.g. by ticking the second check
box in Section 12.2 of Form 1200.
604 On the right to a refund of the examination fee see points 590 ff.
605 Neither the drawing-up of a supplementary European search report
(see points 581 ff) nor publication of the translation of the Euro-PCT
application (see points 516 ff) affect the time limit for filing the request
for examination and payment of the examination fee.

Reduction of the examination fee

606 According to Rule 6(4) EPC, the examination fee is reduced by 30% for Art. 14(1) RFees
small and medium-sized enterprises, natural persons, non-profit OJ 2014, A4, A23
organisations, universities or public research organisations that have GL/EPO A-X, 9.2.3
their residence or principal place of business in an EPC contracting
state having an official language other than English, French or German,
and nationals of such states who are resident abroad, provided that
they make the declaration under Rule 6(4) EPC and that the request for
examination is made in the official language of that EPC contracting
state ("admissible non-EPO language"). The declaration under Rule
6(4) EPC can be made by ticking the second check box in Section 4.1
of Form 1200. Applicants having their residence or principal place of
business within such a contracting state but not complying with the
definition under Rule 6(4) EPC may still file documents in an admissible
non-EPO language, but will not qualify for a fee reduction. If there are
multiple applicants, all of them must fulfil the requirements of Rule 6
EPC.

Reduction if IPER was issued by the EPO

607 The examination fee is reduced by 50% where the EPO acting as IPEA Art. 14(2) RFees
has already drawn up an international preliminary examination report in OJ 2016, A20
respect of the relevant Euro-PCT application, unless in the European GL/EPO A-X, 9.3.2
phase the applicant is seeking a patent for an invention which is not the
subject of that report (see points 386 and 396 ff). 37
608 If the conditions for both reductions (see points 606-607) are fulfilled,
the examination fee is first reduced by 50%. The 30% reduction is
applied to the resulting total and not to the full fee. Therefore, the total
reduction in relation to the full fee is 65%.

37
Please note that this reduction will be increased to 75% as from 1 April 2018.

98
 Non-observance of the time limit for filing the request for
examination and payment of the examination fee

609 If the request for examination is not filed or the examination fee is not Art. 121 EPC
paid in due time, the application is deemed to be withdrawn. The R. 135, 160(2) EPC
applicant is informed of this in a communication under Rules 112(1) Art. 2(1)12 RFees
and 160(2) EPC. If only the examination fee was not paid in due time,
the loss of rights is deemed not to have ensued if within two months
after notification of this communication further processing is requested
by payment of the further processing fee, which amounts to 50% of the
examination fee, together with the missing examination fee.
610 If, exceptionally, the applicant neither filed the request for examination GL/EPO E-VIII, 2
nor paid the examination fee in due time, further processing must be
requested in respect of both omissions, i.e. in respect of filing the
request for examination and payment of the examination fee. It follows
that the applicant must file the request for examination and pay the
examination fee itself together with two fees for further processing: the
flat fee for further processing in respect of the omitted act (i.e. the
request for examination) and 50% of the late-paid examination fee.
611 Since the request for examination including payment of the examination Art. 22(1) PCT
fee does not form part of the national (filing) fee (see point 540), R. 49.6 PCT
applicants cannot request re-instatement of rights under Rule 49.6
PCT.
612 If the time limit for requesting further processing has been missed (see Art. 122 EPC
point 609), a request for re-establishment of rights in respect of the R. 136 EPC
period under Rule 135(1) EPC may be filed. The request is not deemed Art. 2(1)13 RFees
GL/EPO E-VIII, 3.1.3
to have been filed until the fee for re-establishment relating to the
omitted act, i.e. filing the request for examination under Rule 70 EPC,
including payment of the examination fee, has been paid. Attention is
drawn to the further requirements under Article 122 and Rule 136 EPC
for the request to be admissible and allowable.

XI. Renewal fee and claims fees

Renewal fee

613 The renewal fees for a pending Euro-PCT application must be paid to Art. 11(3) PCT
the EPO. These fees are due in respect of the third and each Art. 86(1), (2) EPC
subsequent year, calculated from the date of filing of the Euro-PCT R. 51(1), (2),
159(1)(g) EPC
application as accorded by the receiving Office. They may not be paid Art. 2(1)4, 2(1)5
more than three months before they fall due. 38 RFees
GL/EPO A-X, 5.2.4

614 The renewal fee for the third year falls due according to Rule 51(1)
EPC. If, however, according to Rule 51(1) EPC the renewal fee for the
third year fell due within the 31-month time limit for entry into the
European phase, the due date is deferred and the fee may be paid
without surcharge up to expiry of the 31-month time limit. In that case

38
Please note that as from 1 April 2018 the renewal fee in respect of the third year may
not be validly paid more than six months before it falls due. All other renewal fees
may still not be paid more than three months before they fall due.

99
 the grace period of six months within which the renewal fee can still be
validly paid, subject to payment of a 50% additional fee, is computed
from the date of expiry of the 31-month time limit.

Non-observance of the time limit for payment of the renewal fee

615 If the renewal fee is not paid within the 6-month grace period the Art. 122 EPC
application is deemed to be withdrawn and the applicant is informed of R. 51(2), 136 EPC
Art. 2(1)13 RFees
this in a communication under Rule 112(1) EPC. The applicant may
OJ 2016, A102,
within one year from expiry of the grace period request re- A103
establishment of rights provided the request is filed within two months GL/EPO E-VIII, 3
from the removal of the cause of non-compliance with the time limit.

Claims fees

616 If the application documents on which the European grant procedure is R. 162 EPC
to be based contain more than fifteen claims, a claims fee is payable Art. 2(1)15 RFees
within the 31-month period in respect of the sixteenth and each GL/EPO A-III, 9;
E-IX, 2.1.3 and 2.3.8
subsequent claim, and a higher claims fee is payable in respect of the
51st and each subsequent claim.
617 The claims fees must be calculated on the basis of the number of OJ 2016, A102,
claims contained in the application in the version that is, in accordance A103
with the indications in Form 1200, to be taken as the basis for
processing in the European phase (see point 509). However, where the
number of claims changes as a consequence of a later (further)
amendment filed before expiry of the time limit set in the Rule 161/162
communication, the number of claims fees due must be computed on
the basis of the claims on file upon expiry of the six-month period set in
the Rule 161/162 communication (see point 510). For further
information, please refer to the examples given in OJ 2016, A103,
points 3.1 and 3.2.
618 If the applicant has already paid claims fees within the 31-month period, R. 162(3) EPC
and the number of claims is reduced as a result of amendments filed
within the six-month time limit set in the Rule 161/162 communication,
any claims fees paid in excess of those due will be refunded after
expiry of that time limit (see point 512).

Non-observance of the time limit for payment of the claims fee

619 Where the applicant fails to pay (the correct amount of) the claims fees R. 162(2) EPC
within the 31-month period, the EPO will invite him by means of the GL/EPO E-IX, 2.1.3
Rule 161/162 communication to pay the missing amount within a non-
extendable period of six months (see point 511).
620 If additional claims fees become due as a result of amendments filed
within the six-month period, the applicant must pay these further claims
fees within that same period, since no further invitation under Rule 162
EPC will be issued (see point 509).
621 Where a claims fee is not paid within the six-month period, the claim Art. 121 EPC
concerned is deemed to be abandoned. The applicant is informed of R. 135, 162(4) EPC
the loss of rights in a communication under Rule 112(1) EPC. Further Art. 2(1)12 RFees
J 15/88 (OJ 1990,
processing can be requested within two months from notification of the 445)
communication by payment of the further processing fee, which
amounts to 50% of the claims fee(s) due, together with the missing

100
 claims fee(s). Features of a claim deemed to have been abandoned
and which are not otherwise to be found in the description or drawings
cannot subsequently be reintroduced into the application and in
particular, into the claims (see point 511).

XII. Filing of other documents

Missing data regarding the inventor or an applicant

622 If within the 31-month time limit the inventor has not been designated or Art. 4(1)(iii), (v),
certain information regarding the inventor or any applicant is missing, 22(1), 27(2) PCT
R. 51bis.1(a)(i) PCT
the EPO will invite the applicant to file the designation of the inventor or
Art. 81 EPC
to submit the missing data within two months from the notification of a R. 19, 41(2)(c)
communication under Rule 163(1) or (4) EPC (see point 96). and 163(1)(4) EPC
GL/EPO E-IX, 2.3.1,
2.3.4
Non-observance of the requirement to file any missing data regarding
the inventor or an applicant

623 If within the two-month time limit set in the invitation the missing data R. 163(6) EPC
have not been filed, the application is refused.
624 The refusal may be remedied by a request for further processing. The Art. 121 EPC
request will be granted if within two months from notification of the decision R. 135 EPC
Art. 2(1)12 RFees
the missing data are filed and the fee for further processing is paid.

Certificate of exhibition

625 Where relevant, the certificate of exhibition is to be filed within the 31- Art. 54, 55(2) EPC
month time limit. If the document is not filed in due time, the applicant's R. 25, 159(1)(h) EPC
disclosure at the relevant exhibition will be taken into account for the
purposes of establishing whether the invention claimed is new under
Article 54 EPC.
626 If the certificate is not filed in due time, the applicant is informed of this Art. 121 EPC
in a communication under Rule 112(1) EPC. The omission may be R. 135 EPC
remedied by a request for further processing. The request will be Art. 2(1)12 RFees
granted if within two months from notification of the communication the
certificate is furnished and the fee for further processing is paid.

XIII. Priority claim

627 An international application may claim the priority of an earlier R. 17.1(c), 17.2 PCT
application. As a rule the priority document, i.e. a certified copy of the Art. 88(1) EPC
application from which priority is claimed, will be available to the EPO R. 163(2)(6), 53 EPC
GL/EPO E-IX, 2.3.5
(see point 143). However, if this is not the case, the applicant is given
an opportunity to file that document upon entry into the European
phase (see points 635 ff).
628 The EPO also recognises a priority claim from an application filed in or Art. 87(1)(b) EPC
for any member of the World Trade Organization (WTO) that is not R. 4.10(a) PCT
party to the Paris Convention for the Protection of Industrial Property OJ 2007, 692
(see points 132 ff).
629 A request for restoration of the right of priority may be filed with the R. 49ter.1 and .2 PCT
EPO as designated/elected Office (see points 644 ff). OJ 2007, 692

101
 Obligation to furnish the priority document

630 Where the priority of an earlier application is claimed for a Euro-PCT R. 17.1, 17.2 PCT
application, the IB sends a copy of the priority document to the EPO if GL/EPO E-IX, 2.3.5
the IB received the priority document from the receiving Office or
directly from the applicant or was able to retrieve it from a digital library.
As a rule the applicant should file a copy with the receiving Office or the
IB or request the IB that the copy be retrieved from a digital library
within 16 months from the (earliest) priority date (see point 143).
631 If during the international phase the applicant did not furnish the priority
document or, where no such document must be furnished, the number
of the application from which priority is claimed, he may provide the
priority document or that number upon entry into the European phase.
632 A priority document may be filed in electronic form with the EPO only if OJ 2007 Spec.Ed. 3,
it is digitally signed by the issuing authority and the signature is A.3
accepted by the EPO. A priority document cannot be filed by fax. OJ 2014, A98
OJ 2015, A27, A91
OJ 2017, A59

633 The application number of a priority application must always be R. 4.1(a)(ii), 4.10
available to the EPO as designated/elected Office. This number is, if PCT
known at the time of filing the application, to be provided in Box VI of R. 163(2) EPC
the PCT request form.
634 In the cases listed below, the EPO as designated/elected Office will R. 53(2) EPC
include a copy of the priority application free of charge in the file of a OJ 2012, 492
Euro-PCT application even without having received a copy from the IB. GL/EPO E-IX, 2.3.5
The applicant will be informed of this inclusion unless the previous
application is a European application or an international application filed
with the EPO as receiving Office. This service is provided on condition
that the applicant has informed the EPO of the application number and
only if the priority application is:
– a European patent application;
– an international application filed with the EPO as receiving Office;
– a Chinese patent or utility model application;
– a Japanese patent or utility model application;
– a Korean patent or utility model application;
– a United States provisional or non-provisional patent application.

Non-observance of the requirement to file a copy or the application

number

635 Where the certified copy of the priority document or, where no copy R. 163(2)(6) EPC
must be filed (see point 634), the application number has not yet been
submitted on entry into the European phase, the applicant will be
invited to furnish that copy or number within two months from the date
of a notification under Rule 163(2) EPC. This time limit cannot be
extended. If the priority document or the application number is not
submitted within that time limit, the priority right is lost.

102
636 The loss of rights may be remedied by requesting further processing. Art. 121 EPC
The request will be granted if within two months from notification of the R. 135 EPC
Art. 2(1)12 RFees
loss of rights the (certified) copy of the priority document or the
application number is filed and the fee for further processing paid.
637 If a priority document has not been received from the IB (see point 630) R. 17.1(b),
and is missing on Patentscope but the applicant has requested the 17.1(b-bis),
receiving Office to forward the priority document(s) to the IB or 17.2(a) PCT
GL/EPO E-IX, 2.3.5;
requested the IB to obtain the certified copy of the earlier application(s) F-VI, 2.1
from a digital library, no loss of rights will occur. In such case
substantive examination may nevertheless begin, but the decision to
grant will not be taken until the priority document is furnished. The
applicant is informed accordingly.

Filing a translation of the priority document or the declaration

638 Where the priority document is not in English, French or German, and R. 51bis.1(e) PCT
the validity of the priority claim is relevant for determining whether the R. 53(3) EPC
invention concerned is patentable, a translation in one of these OJ 2007, 692
OJ 2013, 150
languages must be submitted at the invitation of the EPO. If a GL/EPO A-III, 6.8;
translation is already available to the EPO, it will not issue an invitation. F-VI, 3.4

639 The translation need not necessarily be in the language of the

proceedings as long as it is in English, French or German (see point
422).
640 Where the international application is a complete translation of the R. 53(3) EPC
previous application, a declaration to that effect is sufficient and no GL/EPO A-III, 6.8.6
invitation to file a translation will be issued (Form 1200, Section 7.3).
This means that if the priority application is, for instance, a national
application filed in Spanish, the applicant may declare that his
international application filed in, for instance, English is a complete
translation of the Spanish priority application. A translation from
Spanish into an official language of the EPO is in that case not
required.
641 A translation of the priority document may also be requested where the R. 51bis.1(e)(ii) PCT
application was filed (in part) on the basis of incorporation by reference.

Non-observance of the requirement to file the translation or declaration

642 If the applicant does not provide the translation in time, the right of Art. 54(2)(3) EPC
priority is lost and the applicant is informed accordingly. This has the R. 53(3) EPC
effect that the intermediate document(s) which resulted in the validity of OJ 2013, 150
the priority claimed becoming relevant for the assessment of
patentability will belong to the prior art under Article 54(2) or
Article 54(3) EPC, as applicable.
643 If the priority right is lost, further processing can be requested and will Art. 121 EPC
be granted if within two months from notification of the loss of rights the R. 135 EPC
required translation or declaration is filed and the fee for further Art. 2(1)12 RFees
GL/EPO A-III, 6.8.3
processing paid.

103
 Restoration of priority under Rule 49ter PCT

644 If the international application was filed more than 12 months from the R. 49ter.1 and .2
filing date of the earlier application whose priority is claimed, the PCT
Art. 122 EPC
applicant may file a request for restoration of priority with the EPO as
GL/EPO E-IX, 2.3.5
receiving Office and as designated/elected Office. For information on OJ 2007, 692
the procedure before the EPO as receiving Office see point 135. PCT Newsletter
9/2015, 10
645 The EPO in its function both as receiving Office and as designated/
elected Office will grant such a request only if the failure to claim the
right of priority within the priority period occurred in spite of due care
required by the circumstances having been taken. The requirement of
due care is applied by the EPO in accordance with its standing practice
under Article 122 EPC. The second criterion referred to in the PCT,
whether the failure was unintentional, does not play a role in the
procedures before the EPO (see point 649).
646 As set out hereafter (see point 647), if the applicant has already filed a
request for restoration of priority with the receiving Office, a (new)
request need not always be filed upon entry into the European phase.
647 The EPO will grant a request for restoration of priority right only if the R. 49ter PCT
following requirements are met:
– the filing date is within two months from the date on which the R. 26bis.2(c)(iii) PCT
priority period expired;
– the failure to claim the right of priority within the priority period R. 49ter.2(a) PCT
occurred in spite of due care required by the circumstances having Art. 122 EPC
been taken;
– a request for restoration of priority is filed within one month from the R. 49ter.2(b)(i) PCT
date on which the 31-month time limit for entry into the European
phase expired or from the effective date of early entry into the
European phase;
– the fee for restoration of priority levied by the EPO is duly paid R. 49ter.2(b)(iii), (d)
within the same time limit; PCT
R. 136(1) EPC

– the request for restoration of priority is accompanied by a statement R. 49ter.2(b)(ii) PCT

of reasons for the failure and is preferably accompanied by any R. 136(2) EPC
declaration or other evidence in support of the statement of
reasons.
648 If the priority right was restored by the receiving Office under the "due R. 49ter.1(d) PCT
care criterion", no new request need be filed with the EPO as Art. 113(1) EPC
designated/elected Office, since the EPO will, in principle, recognise
the decision of the receiving Office. If, however, the EPO has
reasonable doubt that the requirements for grant were not met, it will
notify the applicant accordingly. In this communication the reasons for
such doubt will be indicated and a time limit will be set within which the
applicant may submit comments.
649 If the priority right was restored by the receiving Office under the
"unintentional criterion", a new request needs to be filed with the EPO
as designated/elected Office, since the EPO is not bound by the
decision of any receiving Office under the "unintentional criterion".

104
650 If the applicant wants the priority claim to be valid in the procedure
before the EPO as designated/elected Office, a request for restoration
must always be filed if, in the procedure before the receiving Office:
– no request for restoration of priority right was filed;
– the request for restoration of priority right filed with the receiving
Office was rejected;
– a request for restoration of priority right filed with the receiving
Office was granted only under the "unintentional criterion".

XIV. Review by the EPO as designated/elected Office and

rectification of errors made by the receiving Office or by
the IB
651 The EPO as designated or elected Office may review or rectify certain
acts of the receiving Office or the IB in the international phase. As
regards review of the grant of a request for restoration of the right of
priority by the receiving Office, see points 644 ff.

Review by the EPO as designated Office under Article 25 PCT

652 At the request of the applicant, the EPO may review whether a refusal Art. 25 PCT
by the receiving Office to accord a filing date, or a declaration on the R. 51, 82ter PCT
R. 159(2) EPC
part of the receiving Office that an international application or the
GL/EPO E-IX, 2.9
designation of a state is considered withdrawn, or a finding by the IB
under Article 12(3) PCT is the result of an error or omission on the part
of the authority concerned, in which case the Euro-PCT application can
proceed as a European application.
653 To obtain such a review by the EPO as designated Office, applicants
must take the following steps:
– The request to the IB under Article 25(1) PCT to send copies of
documents in the files promptly to the EPO as designated Office
must be made within the two-month time limit under Rule 51.1 PCT.
– The filing fee under Rule 159(1)(c) EPC must be paid and, where
required, a translation of the Euro-PCT application furnished within
the same two-month time limit (Article 25(2), Rule 51.3 PCT).
Applicants are recommended to undertake the remaining steps for
entry into the European phase under Rule 159(1) EPC at the same
time, possibly together with a request for early processing under
Article 23(2) PCT (see points 431 ff, 451 ff, 514 ff).

Review by the EPO as designated/elected Office under Article 24

PCT

654 Pursuant to Article 24(2) PCT the EPO as designated/elected Office Art. 24(2), 48(2) PCT
may even maintain the application as a European application if this is R. 82bis PCT
not required by virtue of the provision in Article 25(2) PCT. The filing of Art. 122, 121 EPC
OJ 1984, 565
a request under Article 24(2) PCT is governed by the same (Reasons 4)
requirements as a request for review under Article 25(2) PCT, with the J 19/16 (Reasons 6)
exception that the two-month time limit under Rules 51.1 and 51.3 PCT
does not apply. The time limit for making a request to be excused under
Article 24(2) PCT is subject to national law. Such request may be

105
 combined with a request for re-establishment of rights or further
processing.

Rectification of errors made by the receiving Office or by the IB

655 If the applicant proves to the satisfaction of the EPO that the R. 82ter.1(a) PCT
international filing date is incorrect owing to an error made by the
receiving Office or that the priority claim has been erroneously
considered by the receiving Office or the International Bureau not to
have been made, and if the error is an error such that, had it been
made by the EPO itself, the EPO would rectify it under EPC law or
practice, the EPO must rectify the error and treat the international
application as if it had been accorded the rectified international filing
date or as if the priority claim had not been considered not to have
been made.
656 Further, if a receiving Office accords the international filing date on the Art. 11(1)(iii)(d), (e)
basis of incorporation by reference (see points 81 ff), the EPO as PCT
designated/elected Office will review this finding in terms of whether the R. 4.18, 20.6,
82ter.1(b) PCT
requirements listed in Rule 82ter.1(b)(i)-(iii) PCT have been complied
with. In particular, the EPO will consider whether the element or part
incorporated by reference was indeed missing. For instance, where the
international application contained a description and a claim or claims
on the international filing date, it is not possible to replace these
elements with elements from a priority application. It is also not possible
to add elements from a priority application if this would result in the
international application having, for instance, two (or more) descriptions
or two (or more) sets of claims.
657 If the EPO does not agree with the finding of the receiving Office, it will R. 82ter.1(c), (d)
notify the applicant that it intends to consider the (later) date on which PCT
the missing element or part was furnished as the international filing
date in the European patent grant procedure. The applicant will be
given the opportunity to comment. Further, in the case of missing parts,
the applicant may also request that the missing part concerned be
disregarded in the European patent grant procedure. In that case, the
missing part will be considered not to have been furnished and the EPO
will not treat the international application as if the international filing
date had been corrected.

XV. Lack of unity

658 Where the Euro-PCT application does not meet the requirement of
unity of invention, the procedure laid down in Rule 164 EPC applies
upon entry into the European phase.
659 Rule 164 EPC provides the applicant with an opportunity to pay upon Art. 82 EPC
invitation, within a two-month period, a further search fee for any R. 164 EPC
OJ 2014, A70
invention which has not been searched by the (Supplementary)
GL/EPO B-VII, 2.3
International Searching Authority in the international phase but which GL/EPO C-III, 2.3
the applicant claims upon expiry of the time limit set in the GL/EPO E-IX, 4.2
communication under Rules 161 and 162 EPC. This opportunity is G 2/92
available both where a supplementary European search is to be carried
out (the EPO was not the (S)ISA) and where the supplementary
European search is dispensed with (the EPO acted as (S)ISA). The
further search fees are not subject to the fee reduction under

106
 Article 153(7) EPC (see point 593), which applies only to the search fee
payable under Rule 159(1)(e) EPC. Moreover, any further search fees
cannot be validly paid until an invitation pursuant to Rule 164 EPC has
been issued. The inventions for which a further search fee is paid will
be searched by the EPO. The search will not be based on any
amendments filed in response to an invitation to pay search fees.
660 If the applicant uses automatic debiting, all search fees to be paid OJ 2017, Suppl.
under Rule 164 EPC will be automatically debited on the last day of the Publ. 5, Annex A.1,
two-month period set in the invitation. Therefore, if the applicant does point 3, Annex A.2,
Re point 3 AAD, I(b)
not wish to pay any or some of the fees, he must notify the EPO
accordingly.
661 The further search fees must be paid within the non-extendable two- Art. 122 EPC
month time limit set in the invitation. This time limit is excluded from R. 135(2) EPC
further processing, but re-establishment of rights may be requested. OJ 2013, 503
OJ 2014, A70
662 If the applicant disagrees with the finding of lack of unity made by the R. 164(5) EPC
search division or the examining division, he may request the
examining division to review this finding and to refund the search fees
paid.
663 An invention that has not been searched by the EPO cannot be GL/EPO C-III, 3.1.1,
prosecuted in examination. Therefore, if the applicant does not take the 3.1.2, 3.2
opportunity to pay search fees under Rule 164 EPC, he will be G 2/92
requested by the examining division to delete any unsearched subject-
matter. Any searched or unsearched invention which is not prosecuted
in the examination proceedings may be pursued in a divisional
application.

Supplementary European search to be performed: the EPO did not

act as (S)ISA

664 If the application documents which are to serve as the basis for the
supplementary European search do not comply with the requirement of
unity of invention, the applicant is invited under Rule 164(1)(b) EPC to
pay a further search fee for each invention other than the first invention
mentioned in the claims. If the applicant wishes to pay further search
fees in response to the invitation under Rule 164(1)(b) EPC, he must do
so within the time limit of two months set in the invitation. This period is
excluded from further processing under Rule 135(2) EPC.
665 Together with the invitation, a partial supplementary European search R. 164(1)(a) EPC
report together with a provisional opinion on the patentability of the OJ 2017, A20
invention (or unitary group of inventions) is drawn up on the invention or
group of inventions first mentioned in the claims.
666 The supplementary European search report is then drawn up for the R. 164(1)(c) EPC
parts of the application relating to inventions for which search fees have GL/EPO C-III, 3.1.2,
been paid. In reply to the accompanying search opinion, the applicant 3.2
G 2/92
must select, from all inventions searched by the EPO, a single invention
to be prosecuted in the European grant procedure. For the other
inventions the applicant may file divisional applications.
667 Although the EPO is in no way bound by the opinion of the ISA on the
issue of whether the application meets the requirement of unity, the
EPO will in many cases share that opinion, given that the practices of

107
 the ISAs are based on the same Guidelines (Chapter 10 of the ISPE
Guidelines). Therefore, where the (S)ISA considered the requirement of
unity not to be met, the applicant is advised to amend the application in
due time (i.e. before expiry of the period under Rule 161(2) EPC) in
such a way that the invention on which the applicant wishes the
supplementary European search and the examination to be based is
that first mentioned in the claims, since if the EPO agrees with this lack
of unity, this invention will then be searched on the basis of the search
fee paid according to Rule 159(1)(e) EPC, without the need to pay any
additional search fees according to Rule 164(1) EPC, which do not
qualify for a fee reduction according to Article 153(7) EPC.

No supplementary search performed: the EPO acted as (S)ISA

668 If the supplementary European search report is dispensed with, the Art. 19, 34 PCT
examining division will start examination upon expiry of the time limit R. 161(1), 164(2)
set in the communication under Rule 161 and 162 EPC. Where it EPC
OJ 2014, A70
considers that an invention is claimed which was not searched by the GL/EPO C-III, 2.3
EPO in the international phase, it will invite the applicant to pay a
search fee in respect of that invention.
669 The examining division will send the applicant the results of any search R. 164(2) EPC
carried out in respect of an invention for which a search fee has been OJ 2014, A70
paid. If the examining division has not found any deficiencies, together GL/EPO C-III, 2.3
with the results it will send the applicant a communication informing him
of the text in which it intends to grant the patent and of the related
bibliographic data (Rule 71(3) EPC). If the examining division has found
deficiencies, together with the results it will send the applicant a
communication inviting him to comment on the deficiencies and, where
appropriate, to amend the application (Article 94(3) EPC and Rule 71(1)
and (2) EPC). Where appropriate, the applicant must limit the
application to a single searched invention to be prosecuted in the
patent grant procedure. For any searched or unsearched subject-
matter, divisional applications may be filed.

XVI. Publication of the Euro-PCT application by the EPO

670 In principle, the international publication of an international application Art. 11(3), 29(1)(2)
takes the place of the publication of a European patent application. PCT
Art. 67, 153(3)(4)
EPC
GL/EPO E-IX, 2.5.1
671 In accordance with this principle, a Euro-PCT application published by
the IB in an official language of the EPO enjoys, subject to the
provisions of Article 67(3) EPC, provisional protection as from the date
of the international publication. The EPO will, once the application
has entered the European phase, notify the applicant of the publication
of the bibliographic data of the Euro-PCT application in the European
Patent Bulletin and confirm that the application, subject to the
provisions of Article 67(2) and (3) EPC, enjoys provisional protection in
the individual EPC contracting states.
672 If the Euro-PCT application was published by the IB in a language other
than one of the three official languages of the EPO, the EPO will
publish the translation of the Euro-PCT application submitted by the
applicant upon entry into the European phase (see point 514). In that case

108
 the provisional protection is, subject to Article 67(2) and (3) EPC, only
effective as from the date of publication of the translation by the EPO.
673 The translation of the international application is published together with R. 48.2 PCT
the bibliographic data as an A-document and includes all documents
that were part of the international publication:
– the description as originally filed;
– the claims as originally filed;
– any claims amended under Article 19 PCT including the statement
under Article 19 PCT;
– any drawings as originally filed;
– the sequence listing forming part of the description (see point 537);
– the abstract;
– any appendices to the application;
– any certificate(s) of the deposit of biological material;
– the translation of the ISR.
The mandatory translation of the annexes to the IPER and any
amendments to the application documents filed on or after entry into
the European phase are not published.
674 Pursuant to Art. 153(6) EPC the international search report takes the
place of the European search report. Once the supplementary
European search report has been drawn up, this will be mentioned in
the European Patent Bulletin, Part I.1(4). The supplementary search
report itself is not published but is available via public file inspection.

XVII. State of the art

675 Upon payment of the filing fee and, where required, receipt of the Art. 54(3), 153(3)(4)
translation, an international application is considered as comprised in EPC
the state of the art under Article 54(3) EPC (see points 519 and 551). R. 165 EPC
GL/EPO G-IV, 5.2
XVIII. Divisional applications
676 If the Euro-PCT application has effectively entered the European phase Art. 76 EPC
and is thus considered pending before the EPO, one or more European R. 36(2) EPC
OJ 2013, 156, 501
divisional applications may be filed in respect of subject-matter
GL/EPO A-IV, 1.1,
contained in a Euro-PCT application. The divisional application must be 1.1.1, 1.3.3;
filed in the language of the proceedings of the earlier (parent) E-IX, 2.4.1
application. Alternatively, if the earlier application was filed in a J 18/09, OJ 2011,
language other than an EPO official language, the divisional application 480
may be filed in that language. In this case, a translation into the
language of the proceedings of the earlier application must be filed
within two months of the filing of the divisional application.

109
Annex I
Terms and abbreviations
ADD Automatic debiting procedure
AI Administrative Instructions under the PCT
Art. Article(s) (of the EPC or the PCT)
CET Central European Time
CMS EPO new online filing – case management system
DAS Digital Access Service
EPC European Patent Convention
EPO European Patent Office
GL/EPO Guidelines for Examination in the European Patent Office
(quoted as follows: GL/EPO C-III, 8.4 = Guidelines, Part C,
Chapter III, section 8, point 4)
GL/ISPE PCT International Search and Preliminary Examination
Guidelines
GL/PCT-EPO Guidelines for Search and Examination at the European
Patent Office as PCT Authority (quoted as follows:
GL/PCT-EPO C-III, 8.4 = Guidelines, Part C, Chapter III,
section 8, point 4)
GL/RO PCT Receiving Office Guidelines
IB International Bureau of WIPO
IPEA International Preliminary Examining Authority
IPER International Preliminary Examination Report
IPRP International Preliminary Report on Patentability
ISA International Searching Authority
ISPE Guidelines PCT International Search and Preliminary Examination
Guidelines
ISR International Search Report
JPO Japan Patent Office
KIPO Korean Intellectual Property Office
NPI Nordic Patent Institute
OEPM Spanish Patent and Trademark Office
OJ Official Journal of the European Patent Office (quoted as
follows until December 2013: OJ 2001, 459 = Official
Journal, year 2001, page 459; and as of January 2014 as:
OJ 2015, A51 = Official Journal, year 2015, article 51)
OJ 2007, Spec.Ed.1 Special Edition No. 1 to EPO Official Journal 2007
OFF Office of first filing
OSF Office of second filing

111
PACE programme for accelerated prosecution of European patent
applications
PCT Patent Cooperation Treaty
PPH Patent Prosecution Highway
R. Rule(s) of the Implementing Regulations (to the EPC or the
PCT)
RFees EPC Rules relating to Fees
RO Receiving Office
SIPO State Intellectual Property Office of the People’s Republic of
China
SIS Supplementary International Search
SISA Supplementary International Searching Authority
SISR SIS report
SMEs Small and medium-sized enterprises
USPTO United States Patent and Trademark Office
WIPO World Intellectual Property Organization
WIPO PCT Guide "PCT Applicant's Guide" published by the International
Bureau of WIPO
WO-ISA Written Opinion of the International Searching Authority

112
Annex II
The international and European phases of a PCT application

113
Annex III
Timeline for international applications

115
Annex IV
Criteria chosen by the EPO as ISA/IPEA on specific points in the ISPE
Guidelines
In a number of cases the ISPE Guidelines leave ISAs/IPEAs the choice between alternative
guidelines upon which each ISA/IPEA may rely as appropriate.
The options are set out in the appendices to the chapters of the ISPE Guidelines mentioned below.
The paragraph number (e.g. Point A5.16) refers to the relevant paragraph in the chapter
concerned (in this case Chapter 5, point 16).
The EPO as ISA/IPEA has chosen the options listed below.
Appendix to Chapter 4

Point A4.05 References to prior art Option [1] applies

Appendix to Chapter 5

Point A5.16 Multiple dependent claims Option [2] applies

Point A5.20 Interpretation of claims Option [2] applies
Point A5.21 The EPO applies the first sentence concerning "use" claims
Point A5.26 Product-by-process claims Option [1] applies
Point A5.42 Conciseness Option [2] applies
Appendix to Chapter 9

Point A9.07 Excluded subject matter Option [2] applies

Point A9.15 Programs for computers Option [2] applies
Appendix to Chapter 12

Point A12.02 Novelty: effective date Option [1] applies

Appendix to Chapter 13

Point A13.08 The EPO applies the problem-solution approach

Appendix to Chapter 14

Point 14.01[02] The EPO applies the criterion of industrial applicability

Appendix to Chapter 20

Point A20.21 Disclaimer Option [2] applies

117
Annex V
Filing offices of the EPO (OJ 2007, Spec. Ed. 3, A.2; OJ 2013, 442)
1. Addresses and opening hours of the filing offices

(a) Munich headquarters

European Patent Office
Bob-van-Benthem-Platz 1
80469 Munich
Germany
European Patent Office
Bayerstrasse 34
(entrance via Zollstrasse 3)
80335 Munich
Germany
Postal address:
European Patent Office
80298 Munich
Germany
Tel.: +49 (0)89 2399-0
Monday to Thursday: 08.00 to 16.45 hrs, and
Friday: 08.00 to 15.30 hrs (both offices)

(b) The Hague

European Patent Office
Patentlaan 2
2288 EE Rijswijk
Netherlands
Tel.: +31 (0)70 340-2040
Postal address:
European Patent Office
Postbus 5818
2280 HV Rijswijk
Netherlands
Monday to Friday: 08.00 to 18.00 hrs
(c) Berlin
European Patent Office
Gitschiner Strasse 97
10969 Berlin
Germany
Tel.: +49 (0)30 25901-0
Postal address:
European Patent Office
10958 Berlin
Germany
Monday to Friday: 10.00 to 12.00 hrs

119
2. The EPO filing offices in Berlin and Munich are equipped with automated mail-boxes,
which may be used at any time.*

3. For filing documents by fax only, the following numbers of the filing offices are
to be used:

Munich: +49 (0)89 2399-4465

The Hague: +31 (0)70 340-3016
Berlin: +49 (0)30 25901-840
4. For information on filing documents online, see the website of the EPO Online
Services: www.epoline.org/portal/public

* As of 01.04.2017 only the filing offices in Munich (PschorrHöfe building, Zollstrasse) and Berlin are equipped with
automated mail-boxes (see OJ 2017, A11, A12).
Outside office hours, at all the filing offices, documents may be handed to the porter.

120
Annex VI
Form PCT/RO/101 Request and Notes

121
 For receiving Office use only
PCT
International Application No.

REQUEST
International Filing Date

The undersigned requests that the present

international application be processed
according to the Patent Cooperation Treaty. Name of receiving Office and “PCT International Application”

Applicant’s or agent’s file reference

(if desired) (12 characters maximum)
Box No. I TITLE OF INVENTION

Box No. II APPLICANT This person is also inventor

Name and address: (Family name followed by given name; for a legal entity, full official designation. Telephone No.
The address must include postal code and name of country. The country of the address indicated in this
Box is the applicant’s State (that is, country) of residence if no State of residence is indicated below.)
Facsimile No.

Applicant’s registration No. with the Office

E-mail authorization: Marking one of the check-boxes below authorizes the receiving Office, the International Searching Authority, the
International Bureau and the International Preliminary Examining Authority to use the e-mail address indicated in this Box to send,
notifications issued in respect of this international application to that e-mail address if those offices are willing to do so.
as advance copies followed by paper notifications; or exclusively in electronic form (no paper notifications will be sent).
E-mail address:
State (that is, country) of nationality: State (that is, country) of residence:

This person is applicant all designated States the States indicated in the Supplemental Box
for the purposes of:
Box No. III FURTHER APPLICANT(S) AND/OR (FURTHER) INVENTOR(S)

Further applicants and/or (further) inventors are indicated on a continuation sheet.

Box No. IV AGENT OR COMMON REPRESENTATIVE; OR ADDRESS FOR CORRESPONDENCE

The person identified below is hereby/has been appointed to act on behalf agent common
of the applicant(s) before the competent International Authorities as: representative
Name and address: (Family name followed by given name; for a legal entity, full official designation. Telephone No.
The address must include postal code and name of country.)

Facsimile No.

Agent’s registration No. with the Office

E-mail authorization: Marking one of the check-boxes below authorizes the receiving Office, the International Searching Authority, the
International Bureau and the International Preliminary Examining Authority to use the e-mail address indicated in this Box to send,
notifications issued in respect of this international application to that e-mail address if those offices are willing to do so.
as advance copies followed by paper notifications; or exclusively in electronic form (no paper notifications will be sent).
E-mail address:
Address for correspondence: Mark this check-box where no agent or common representative is/has been appointed and the
space above is used instead to indicate a special address to which correspondence should be sent.
Form PCT/RO/101 (first sheet) (July 2017) See Notes to the request form
 Sheet No. . . . . . . .

Box No. III FURTHER APPLICANT(S) AND/OR (FURTHER) INVENTOR(S)

If none of the following sub-boxes is used, this sheet should not be included in the request.

Name and address: (Family name followed by given name; for a legal entity, full official designation. This person is:
The address must include postal code and name of country. The country of the address indicated in this
Box is the applicant’s State (that is, country) of residence if no State of residence is indicated below.) applicant only

applicant and inventor

inventor only (If this check-box
is marked, do not fill in below.)

Applicant’s registration No. with the Office

State (that is, country) of nationality: State (that is, country) of residence:

This person is applicant all designated States the States indicated in the Supplemental Box
for the purposes of:

Name and address: (Family name followed by given name; for a legal entity, full official designation. This person is:
The address must include postal code and name of country. The country of the address indicated in this
Box is the applicant’s State (that is, country) of residence if no State of residence is indicated below.) applicant only

applicant and inventor

inventor only (If this check-box
is marked, do not fill in below.)

Applicant’s registration No. with the Office

State (that is, country) of nationality: State (that is, country) of residence:

This person is applicant all designated States the States indicated in the Supplemental Box
for the purposes of:

Name and address: (Family name followed by given name; for a legal entity, full official designation. This person is:
The address must include postal code and name of country. The country of the address indicated in this
Box is the applicant’s State (that is, country) of residence if no State of residence is indicated below.) applicant only

applicant and inventor

inventor only (If this check-box
is marked, do not fill in below.)

Applicant’s registration No. with the Office

State (that is, country) of nationality: State (that is, country) of residence:

This person is applicant all designated States the States indicated in the Supplemental Box
for the purposes of:
Name and address: (Family name followed by given name; for a legal entity, full official designation. This person is:
The address must include postal code and name of country. The country of the address indicated in this
Box is the applicant’s State (that is, country) of residence if no State of residence is indicated below.) applicant only

applicant and inventor

inventor only (If this check-box
is marked, do not fill in below.)

Applicant’s registration No. with the Office

State (that is, country) of nationality: State (that is, country) of residence:

This person is applicant all designated States the States indicated in the Supplemental Box
for the purposes of:

Further applicants and/or (further) inventors are indicated on another continuation sheet.

Form PCT/RO/101 (continuation sheet) (July 2017) See Notes to the request form
 Sheet No. . . . . . . .

Supplemental Box If the Supplemental Box is not used, this sheet should not be included in the request.

1. If, in any of the Boxes, except Boxes Nos. VIII(i) to (v) for which
a special continuation box is provided, the space is insufficient
to furnish all the information: in such case, write “Continuation
of Box No....” (indicate the number of the Box) and furnish the
information in the same manner as required according to the
captions of the Box in which the space was insufficient, in
particular:
(i) if more than one person is to be indicated as applicant and/or
inventor and no “continuation sheet” is available: in such
case, write “Continuation of Box No. III” and indicate for each
additional person the same type of information as required in
Box No. III. The country of the address indicated in this Box is
the applicant’s State (that is, country) of residence if no State of
residence is indicated below;
(ii) if, in Box No. II or in any of the sub-boxes of Box No. III, the
indication “the States indicated in the Supplemental Box” is
checked: in such case, write “Continuation of Box No. II” or
“Continuation of Box No. III” or “Continuation of Boxes No. II
and No. III” (as the case may be), indicate the name of the
applicant(s) involved and, next to (each) such name, the State(s)
(and/or, where applicable, ARIPO, Eurasian, European or
OAPI patent) for the purposes of which the named person is
applicant;
(iii) if, in Box No. II or in any of the sub-boxes of Box No. III, the
inventor or the inventor/applicant is not inventor for the
purposes of all designated States: in such case, write
“Continuation of Box No. II” or “Continuation of Box No. III”
or “Continuation of Boxes No. II and No. III” (as the case may
be), indicate the name of the inventor(s) and, next to (each)
such name, the State(s) (and/or, where applicable, ARIPO,
Eurasian, European or OAPI patent) for the purposes of which
the named person is inventor;
(iv) if, in addition to the agent(s) indicated in Box No. IV, there are
further agents: in such case, write “Continuation of
Box No. IV” and indicate for each further agent the same type
of information as required in Box No. IV;
(v) if, in Box No. VI, there are more than three earlier applications
whose priority is claimed: in such case, write “Continuation
of Box No. VI” and indicate for each additional earlier
application the same type of information as required
in Box No. VI.
2. If the applicant intends to make an indication of the wish that
the international application be treated, in certain designated
States, as an application for a patent of addition, certificate of
addition, inventor’s certificate of addition or utility certificate
of addition: in such case, write the name or two-letter code of
each designated State concerned and the indication “patent of
addition,” “certificate of addition,” “inventor’s certificate of
addition” or “utility certificate of addition,” the number of the
parent application or parent patent or other parent grant and
the date of grant of the parent patent or other parent grant or
the date of filing of the parent application (Rules 4.11(a)(i)
and 49bis.1(a) or (b)).
3. If the applicant intends to make an indication of the wish that
the international application be treated, in the United States of
America, as a continuation or continuation-in-part of an
earlier application: in such case, write “United States of
America” or “US” and the indication “continuation” or
“continuation-in-part” and the number and the filing date of
the parent application (Rules 4.11(a)(ii) and 49bis.1(d)).

Form PCT/RO/101 (supplemental sheet) (July 2017) See Notes to the request form
 Sheet No. . . . . . . .
Box No. V DESIGNATIONS

The filing of this request constitutes under Rule 4.9(a) the designation of all Contracting States bound by the PCT on the international
filing date, for the grant of every kind of protection available and, where applicable, for the grant of both regional and national patents.
However,
DE Germany is not designated for any kind of national protection
JP Japan is not designated for any kind of national protection
KR Republic of Korea is not designated for any kind of national protection
(The check-boxes above may only be used to exclude (irrevocably) the designations concerned if, at the time of filing or subsequently under
Rule 26bis.1, the international application contains in Box No. VI a priority claim to an earlier national application filed in the particular
State concerned, in order to avoid the ceasing of the effect, under the national law, of this earlier national application.)

Box No. VI PRIORITY CLAIM AND DOCUMENT

The priority of the following earlier application(s) is hereby claimed:

Filing date Number Where earlier application is:

of earlier application of earlier application
national application: regional application: international application:
(day/month/year)
country or Member regional Office receiving Office
of WTO
item (1)

item (2)

item (3)

Further priority claims are indicated in the Supplemental Box.

Furnishing the priority document(s):

The receiving Office is requested to prepare and transmit to the International Bureau a certified copy of the earlier application(s)
(only if the earlier application(s) was filed with the receiving Office which, for the purposes of this international application, is
the receiving Office) identified above as:
all items item (1) item (2) item (3) other, see Supplemental Box
The International Bureau is requested to obtain from a digital library a certified copy of the earlier application(s) identified above,
using, where applicable, the access code(s) indicated below (if the earlier application(s) is available to it from a digital library):
item (1) item (2) item (3) other, see
access code ______________ access code ______________ access code _______________ Supplemental Box

Restore the right of priority: the receiving Office is requested to restore the right of priority for the earlier application(s) identified
above or in the Supplemental Box as item(s) (_________________________________). (See also the Notes to Box No. VI; further
information must be provided to support a request to restore the right of priority.)

Incorporation by reference: where an element of the international application referred to in Article 11(1)(iii)(d) or (e) or a part of
the description, claims or drawings referred to in Rule 20.5(a) is not otherwise contained in this international application but is
completely contained in an earlier application whose priority is claimed on the date on which one or more elements referred to in
Article 11(1)(iii) were first received by the receiving Office, that element or part is, subject to confirmation under Rule 20.6,
incorporated by reference in this international application for the purposes of Rule 20.6.

Box No. VII INTERNATIONAL SEARCHING AUTHORITY

Choice of International Searching Authority (ISA) (if more than one International Searching Authority is competent to carry out the
international search, indicate the Authority chosen; the two-letter code may be used):
ISA/ _____________________________________________________________________________________________________

Form PCT/RO/101 (second sheet) (July 2017) See Notes to the request form
 Sheet No. . . . . . . .
Continuation of Box No. VII USE OF EARLIER SEARCH AND CLASSIFICATION RESULTS
1. Request by the applicant under Rule 4.12
1.1 The ISA indicated in Box No. VII is requested to take into account the results of the earlier search(es) indicated below
(see also Notes to Continuation of Box No. VII, item 1; use of results of more than one earlier search)
Filing date (day/month/year) Application Number Country (or regional Office)

Statement (Rule 4.12(ii)): this international application is the same, or substantially the same, as the application in respect of
which the earlier search was carried out except, where applicable, that it is filed in a different language.
1.2 Submission of the earlier search results, where necessary*
Availability of documents (Rules 12bis.1(c) and (d) and 12bis.2(b)): the following documents are available to the ISA in
a form and a manner acceptable to it, and therefore DO NOT need to be submitted by the applicant to the receiving Office, or
to the ISA.
a copy of the results of the earlier search,
a copy of the earlier application,
a translation of the earlier application into a language which is accepted by the ISA,
a translation of the results of the earlier search into a language which is accepted by the ISA,
a copy of any document cited in the earlier search results (if known, please indicate below the documents available to the
ISA):

Request from the applicant to the receiving Office to transmit to the ISA a copy of the earlier search results
(Rule 12bis.1(b) and (d)): (where the earlier search was not carried out by the ISA indicated in Box No. VII but by the same
Office as that which is acting as receiving Office; or where the earlier search results are otherwise available to the receiving
Office): the applicant requests the receiving Office to prepare and transmit to the ISA a copy of the earlier search results.
* The applicant only needs to furnish a copy of the earlier search results to the receiving Office, or the ISA, if none of the scenarios
mentioned under item 1 applies. (See item 10 in the check-list and also Notes to Continuation of Box No. VII, item 1).
Further earlier searches are indicated on a continuation sheet.
2. Transmission of the earlier search and classification results to the ISA by the receiving Office where the applicant DID NOT
make a request under Rule 4.12
2.1 Where the international application claims priority of an earlier application, subject to Article 30(2)(a) and (3), the receiving Office:
– shall transmit a copy of the earlier search and classification results to the ISA (unless such copy is already available to the ISA),
where the earlier application was filed with the same Office as that which is acting as the receiving Office and that Office has
carried out the earlier search in respect of the earlier application (Rule 23bis.2(a));
– may transmit such a copy if the earlier application was filed with a different Office, but where the results of that earlier search
and classification are nevertheless available to the receiving Office (Rule 23bis.2(c)).
However, where the applicant did not request the receiving Office to transmit to the ISA a copy of the earlier search results under Rule 4.12
(see above item 1), in respect of an earlier search carried out on the following earlier application, the priority of which is subsequently
claimed in this international application, the applicant may consider (see also Notes to Continuation of Box No. VII, item 2; use of more
than one earlier search):
Filing date (day/month/year) Application Number Country (or regional Office)

2.2 Request not to transmit the earlier search results by the receiving Office to the ISA (Rule 23bis.2(b))
to request that the receiving Office DOES NOT transmit the results of the earlier search to the ISA (Rule 23bis.2(b)) (may only
be checked where the international application is filed with the following receiving Offices: DE, FI and SE)
2.3 Authorization to transmit the earlier search and classification results by the receiving Office to the ISA (Rule 23bis.2(a) and (e))
to authorize the receiving Office to transmit the results of the earlier search and classification to the ISA (Rule 23bis.2(e)) (may
only be checked where the international application is filed with the following receiving Offices: AU, CH, CZ, FI, HU, IL, JP,
NO, SE, SG and US)
to authorize the receiving Office to transmit the results of the earlier international search and classification to the ISA
(Rule 23bis.2(a) and Article 30(2)(a) and (3)) (may only be checked where the earlier search concerns an international
application, the priority of which is subsequently claimed in this international application and where the earlier international
search was carried out by a different ISA than the ISA chosen in Box No. VII)
Further earlier searches are indicated on a continuation sheet.
Box No. VIII DECLARATIONS
The following declarations are contained in Boxes Nos. VIII (i) to (v) (mark the applicable Number of
check-boxes below and indicate in the right column the number of each type of declaration): declarations
Box No. VIII (i) Declaration as to the identity of the inventor :
Box No. VIII (ii) Declaration as to the applicant’s entitlement, as at the international filing
date, to apply for and be granted a patent :
Box No. VIII (iii) Declaration as to the applicant’s entitlement, as at the international filing
date, to claim the priority of the earlier application :
Box No. VIII (iv) Declaration of inventorship (only for the purposes of the designation of the
United States of America) :
Box No. VIII (v) Declaration as to non-prejudicial disclosures or exceptions to lack of novelty :

Form PCT/RO/101 (third sheet) (July 2017) See Notes to the request form
 Sheet No. . . . . . . .

Box No. VIII (i) DECLARATION: IDENTITY OF THE INVENTOR

The declaration must conform to the standardized wording provided for in Section 211; see Notes to Boxes Nos. VIII, VIII (i) to (v) (in general)
and the specific Notes to Box No.VIII (i). If this Box is not used, this sheet should not be included in the request.
Declaration as to the identity of the inventor (Rules 4.17(i) and 51bis.1(a)(i)):

This declaration is continued on the following sheet, “Continuation of Box No. VIII (i)”.

Form PCT/RO/101 (declaration sheet (i)) (July 2017) See Notes to the request form
 Sheet No. . . . . . . .

Box No. VIII (ii) DECLARATION: ENTITLEMENT TO APPLY FOR AND BE GRANTED A PATENT
The declaration must conform to the standardized wording provided for in Section 212; see Notes to Boxes Nos. VIII, VIII (i) to (v) (in general)
and the specific Notes to Box No.VIII (ii). If this Box is not used, this sheet should not be included in the request.

Declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent (Rules 4.17(ii)
and 51bis.1(a)(ii)), in a case where the declaration under Rule 4.17(iv) is not appropriate:

This declaration is continued on the following sheet, “Continuation of Box No. VIII (ii)”.

Form PCT/RO/101 (declaration sheet (ii)) (July 2017) See Notes to the request form
 Sheet No. . . . . . . .
Box No. VIII (iii) DECLARATION: ENTITLEMENT TO CLAIM PRIORITY
The declaration must conform to the standardized wording provided for in Section 213; see Notes to Boxes Nos. VIII, VIII (i) to (v) (in general)
and the specific Notes to Box No.VIII (iii). If this Box is not used, this sheet should not be included in the request.

Declaration as to the applicant’s entitlement, as at the international filing date, to claim the priority of the earlier application specified
below, where the applicant is not the applicant who filed the earlier application or where the applicant’s name has changed since the
filing of the earlier application (Rules 4.17(iii) and 51bis.1(a)(iii)):

This declaration is continued on the following sheet, “Continuation of Box No. VIII (iii)”.

Form PCT/RO/101 (declaration sheet (iii)) (July 2017) See Notes to the request form
 Sheet No. . . . . . . .

Box No. VIII (iv) DECLARATION: INVENTORSHIP (only for the purposes of the designation of the United States of America)
The declaration must conform to the following standardized wording provided for in Section 214; see Notes to Boxes Nos. VIII, VIII (i) to (v)
(in general) and the specific Notes to Box No.VIII (iv). If this Box is not used, this sheet should not be included in the request.

Declaration of inventorship (Rules 4.17(iv) and 51bis.1(a)(iv))

for the purposes of the designation of the United States of America:

I hereby declare that I believe I am the original inventor or an original joint inventor of a claimed invention in the application.

This declaration is directed to the international application of which it forms a part (if filing declaration with application).

This declaration is directed to international application No. PCT/ . . . . . . . . . . . . . . . . . . . . . . . . . . . . . (if furnishing declaration pursuant
to Rule 26ter).

I hereby declare that the above-identified international application was made or authorized to be made by me.

I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or
imprisonment of not more than five (5) years, or both.

Name: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Residence: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(city and either US state, if applicable, or country)

Mailing Address: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

.................................................................................

.................................................................................

Inventor’s Signature: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Date: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(The signature must be that of the inventor, not that of the agent)

Name: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Residence: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(city and either US state, if applicable, or country)

Mailing Address: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

.................................................................................

.................................................................................

Inventor’s Signature: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Date: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(The signature must be that of the inventor, not that of the agent)

Name: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Residence: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(city and either US state, if applicable, or country)

Mailing Address: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

.................................................................................

.................................................................................

Inventor’s Signature: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Date: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(The signature must be that of the inventor, not that of the agent)

This declaration is continued on the following sheet, “Continuation of Box No. VIII (iv)”.

Form PCT/RO/101 (declaration sheet (iv)) (July 2017) See Notes to the request form
 Sheet No. . . . . . . .

Box No. VIII (v) DECLARATION: NON-PREJUDICIAL DISCLOSURES OR EXCEPTIONS TO LACK OF NOVELTY
The declaration must conform to the standardized wording provided for in Section 215; see Notes to Boxes Nos. VIII, VIII (i) to (v) (in general)
and the specific Notes to Box No.VIII (v). If this Box is not used, this sheet should not be included in the request.

Declaration as to non-prejudicial disclosures or exceptions to lack of novelty (Rules 4.17(v) and 51bis.1(a)(v)):

This declaration is continued on the following sheet, “Continuation of Box No. VIII (v)”.

Form PCT/RO/101 (declaration sheet (v)) (July 2017) See Notes to the request form
 Sheet No. . . . . . . .

Continuation of Box No. VIII (i) to (v) DECLARATION

If the space is insufficient in any of Boxes Nos. VIII (i) to (v) to furnish all the information, including in the case where more than three
inventors are to be named in Box No. VIII (iv), in such case, write “Continuation of Box No. VIII ...” (indicate the item number of the Box)
and furnish the information in the same manner as required for the purposes of the Box in which the space was insufficient. If additional space
is needed in respect of two or more declarations, a separate continuation box must be used for each such declaration. If this Box is not used,
this sheet should not be included in the request.

Form PCT/RO/101 (continuation sheet for declaration) (July 2017) See Notes to the request form
 Sheet No. . . . . . . .

Box No. IX CHECK LIST for PAPER filings – this sheet is only to be used when filing an international application on PAPER
This international application Number This international application is accompanied by the Number
contains the following: of sheets following item(s) (mark the applicable check-boxes below of items
and indicate in right column the number of each item):
(a) request form 1. fee calculation sheet . . . . . . . . . . . . . . . . . . . . . . . . . . . . :
PCT/RO/101
(including any 2. original separate power of attorney . . . . . . . . . . . . . . . . :
declarations and
supplemental 3. original general power of attorney . . . . . . . . . . . . . . . . . :
sheets) . . . . . . . . . . . . . . . . . . . . . :
4. copy of general power of attorney; reference
number: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :
(b) description
(excluding any 5. priority document(s) identified in Box No. VI
sequence listing as item(s) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :
part of the
description, 6. Translation of international application into
see (f), below) . . . . . . . . . . . . . . . : (language): . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :

(c) claims . . . . . . . . . . . . . . . . . . . . . : 7. separate indications concerning deposited

microorganism or other biological material . . . . . . . . . . :
(d) abstract . . . . . . . . . . . . . . . . . . . . : 8. (only where item (f) is marked in the left column)
copy in electronic form (Annex C/ST.25 text file) on
(e) drawings (if any) . . . . . . . . . . . . : physical data carrier(s) of the sequence listing, not forming
part of the international application, which is furnished only
(f) sequence listing for the purposes of international search under Rule 13ter
part of the (type and number of physical data carriers) . . . . . . . . . .
description (if any) . . . . . . . . . . . : ............................................. :

9. (only where item (f) (in the left column) and item 8 (above)
are marked) a statement confirming that “the information
recorded in electronic form submitted under Rule 13ter is
Total number of sheets : 0 identical to the sequence listing as contained in the
international application” as filed on paper . . . . . . . . . . :

10. copy of results of earlier search(es) (Rule 12bis.1(a)) . . :

11. other (specify): . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :

Figure of the drawings which Language of filing of the

should accompany the abstract: international application:
Box No. X SIGNATURE OF APPLICANT, AGENT OR COMMON REPRESENTATIVE
Next to each signature, indicate the name of the person signing and the capacity in which the person signs (if such capacity is not obvious from reading the request).

For receiving Office use only

1. Date of actual receipt of the purported
international application: 2. Drawings:

3. Corrected date of actual receipt due to later but received:

timely received papers or drawings completing
the purported international application:

4. Date of timely receipt of the required not received:

corrections under PCT Article 11(2):

5. International Searching Authority 6. Transmittal of search copy delayed

(if two or more are competent): ISA / until search fee is paid

For International Bureau use only

Date of receipt of the record copy

by the International Bureau:

Form PCT/RO/101 (last sheet – paper) (July 2017) See Notes to the request form
 Sheet No. . . . . . . .

Box No. IX CHECK LIST for EFS-Web filings - this sheet is only to be used when filing an international application with RO/US via EFS-Web

This international application Number This international application is accompanied by the Number
contains the following: of sheets following item(s) (mark the applicable check-boxes below of items
and indicate in right column the number of each item):
(a) request form PCT/RO/101
1. fee calculation sheet . . . . . . . . . . . . . . . . . . . . . . . . . . . . :
(including any declarations
and supplemental sheets) . . . . . . . : 2. original separate power of attorney . . . . . . . . . . . . . . . . :
(b) description (excluding any 3. original general power of attorney . . . . . . . . . . . . . . . . . :
sequence listing part of the
description, see (f), below) . . . . . : 4. copy of general power of attorney; reference
number: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :
(c) claims . . . . . . . . . . . . . . . . . . . . . . :
5. priority document(s) identified in Box No. VI
(d) abstract . . . . . . . . . . . . . . . . . . . . . : as item(s) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :
(e) drawings (if any) . . . . . . . . . . . . . : 6. Translation of international application into
(language): . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :
(f) sequence listing part of the
description in the form of an 7. separate indications concerning deposited
image file (e.g. PDF) . . . . . . . . . . : microorganism or other biological material . . . . . . . . . . :

8. (only where item (f) is marked in the left column)

Total number of sheets (including the copy of the sequence listing in electronic form
sequence listing part of the description (Annex C/ST.25 text file) not forming part of
if filed as an image file) . . . . . . . . . . : 0 the international application but furnished only
for the purposes of international search under
Rule 13ter . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :
(g) sequence listing part of the description
9. (only where item (f) (in the left column) and item 8 (above)
filed in the form of an Annex C/ST.25 text are marked) a statement confirming that “the information
file recorded in electronic form submitted under Rule 13ter
WILL BE filed separately on physical data is identical to the sequence listing as contained in the
carrier(s), on the same day and in the form international application” as filed via EFS-Web: . . . . . . :
of an Annex C/ST.25 text file 10. copy of results of earlier search(es) (Rule 12bis.1(a)) . . :
Indicate type and number of physical data 11. other (specify): . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :
carrier(s) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Figure of the drawings which Language of filing of the

should accompany the abstract: international application:
Box No. X SIGNATURE OF APPLICANT, AGENT OR COMMON REPRESENTATIVE
Next to each signature, indicate the name of the person signing and the capacity in which the person signs (if such capacity is not obvious from reading the request).

For receiving Office use only

1. Date of actual receipt of the purported
international application: 2. Drawings:

3. Corrected date of actual receipt due to later but received:

timely received papers or drawings completing
the purported international application:

4. Date of timely receipt of the required not received:

corrections under PCT Article 11(2):

5. International Searching Authority 6. Transmittal of search copy delayed

(if two or more are competent): ISA / until search fee is paid

For International Bureau use only

Date of receipt of the record copy

by the International Bureau:

Form PCT/RO/101 (last sheet – EFS) (July 2017) See Notes to the request form
 NOTES TO THE REQUEST FORM (PCT/RO/101)

These Notes are intended to facilitate the filling in of the request form. For more detailed information, see the PCT Applicant’s
Guide, a WIPO publication, which is available, together with other PCT related documents, at WIPO’s website:
http://www.wipo.int/pct/en/. The Notes are based on the requirements of the Patent Cooperation Treaty (PCT), the Regulations and
the Administrative Instructions under the PCT. In case of any discrepancy between these Notes and those requirements, the latter
are applicable.

In the request form and these Notes, “Article”, “Rule” and “Section” refer to the provisions of the PCT, the PCT Regulations
and the PCT Administrative Instructions, respectively.

The request form should be typed or printed; check-boxes may be marked by hand with black ink (Rule 11.9(a) and (b)).
The request form and these Notes may be downloaded from WIPO’s website at the address given above.

WHERE TO FILE
THE INTERNATIONAL APPLICATION Check-box “applicant only” (Box No. III): Mark this
check-box if the person named is a legal entity or if the person
The international application (request, description, claims, named is not also inventor.
abstract and drawings, if any) must be filed with a competent
receiving Office (Article 11(1)(i)) – that is, subject to any Check-box “inventor only” (Box No. III): Mark this check-
applicable prescriptions concerning national security, at the box if the person named is inventor but not also applicant.
choice of the applicant, either: This would be the case, for example, where the inventor is
deceased or has assigned the invention and the assignee is the
(i) the receiving Office of, or acting for, a PCT Contracting applicant for all designated States. Do not mark this check-
State of which the applicant or, if there are two or more box if the person is a legal entity.
applicants, at least one of them, is a resident or national
(Rule 19.1(a)(i) or (ii) or (b)), or In Box No. III, one of the three check-boxes must always
be marked for each person named.
(ii) the International Bureau of WIPO in Geneva,
Switzerland, if the applicant or, if there are two or more A person must not be named more than once in Boxes Nos. II
applicants, at least one of the applicants is a resident or national and III, even where that person is both applicant and inventor.
of any PCT Contracting State (Rule 19.1(a)(iii)).
Different Applicants for Different Designated States
CONFIRMATION COPY (Rules 4.5(d), 18.3 and 19.2): It is possible to indicate different
OF THE REQUEST FORM applicants for the purposes of different designated States. At
least one of all the applicants named must be a national or
Where the international application was initially filed by resident of a PCT Contracting State for which the receiving
facsimile with a receiving Office that accepts such filings (see Office acts, irrespective of the designated State(s) for the
the PCT Applicant’s Guide, Annex C) this should be indicated purposes of which that applicant is named.
on the first sheet of the form by the annotation
“CONFIRMATION COPY” followed by the date of the For the indication of the designated States for which a
facsimile transmission. person is applicant, mark the applicable check-box (only one
for each person). If the person is not an applicant for all
APPLICANT’S OR AGENT’S FILE REFERENCE designated States, the check-box “the States indicated in the
Supplemental Box” must be marked, and the name of the
A File Reference may be indicated, if desired. It should not person must be repeated in the Supplemental Box with an
exceed 12 characters. Characters in excess of 12 may be indication of the States for which that person is applicant (see
disregarded by the receiving Office or any International item 1(ii) in that Box).
Authority (Rule 11.6(f) and Section 109).
Naming of Inventor (Rule 4.1(a)(iv) and (c)(i)): It is
BOX No. I strongly recommended to always name the inventor since such
information is generally required in the national phase. For
Title of Invention (Rules 4.3 and 5.1(a)): The title must be details, see the PCT Applicant’s Guide, Annex B.
short (preferably two to seven words when in English or
translated into English) and precise. It must be identical with Different Inventors for Different Designated States
the title heading the description. (Rule 4.6(c)): Different persons may be indicated as inventors
for different designated States (for example, where, in this
BOXES Nos. II AND III respect, the requirements of the national laws of the designated
States are not the same); in such a case, the Supplemental Box
General: At least one of the applicants named must be a must be used (see item 1(iii) in that Box). In the absence of
resident or national of a PCT Contracting State for which the any indication, it will be assumed that the inventor(s) named is
receiving Office acts (Articles 9 and 11(1)(i) and Rules 18 (are) inventor(s) for all designated States.
and 19). If the international application is filed with the
International Bureau under Rule 19.1(a)(iii), at least one of the Names and Addresses (Rule 4.4): The family name
applicants must be a resident or national of any PCT (preferably in capital letters) must be indicated before the
Contracting State. given name(s). Titles and academic degrees must be omitted.
Names of legal entities must be indicated by their full
Indication Whether a Person is Applicant and/or Inventor official designations.
(Rules 4.5(a) and 4.6(a) and (b)):
The address must be indicated in such a way that it allows
Check-box “This person is also inventor” (Box No. II): prompt postal delivery; it must consist of all the relevant
Mark this check-box if the applicant named is also the inventor administrative units (up to and including the indication of the
or one of the inventors; do not mark this check-box if the house number, if any), the postal code (if any), and the name of
applicant is a legal entity. the country.

Check-box “applicant and inventor” (Box No. III): Mark Only one address may be indicated per person. For the
this check-box if the person named is both applicant and indication of a special “address for correspondence”, see the
inventor; do not mark this check-box if the person is a legal notes to Box No. IV.
entity.

Notes to the request form (PCT/RO/101) (page 1) (July 2017)

 page 2
Telephone, Facsimile Numbers and/or E-mail Addresses States), telephone, facsimile numbers and/or e-mail addresses
should be indicated for the persons named in Boxes Nos. II must be indicated, see the notes to Boxes Nos. II and III. Where
and IV in order to allow rapid communication with them (see several agents are listed, the agent to whom correspondence
Rule 4.4(c)). Any telephone or facsimile number should include should be addressed is to be listed first. If there are two or more
the applicable country and area codes. A single e-mail address applicants but no common agent is appointed to represent all of
only should be indicated. them, one of the applicants who is a national or resident of a
PCT Contracting State may be appointed by the other applicants
Unless one of the applicable check-boxes is marked, any as their common representative. If this is not done, the applicant
e-mail address supplied will be used only for the types of first named in the request who is entitled to file an international
communication which might be made by telephone. If one of application with the receiving Office concerned will be
the applicable check-boxes is marked, the receiving Office, the considered to be the common representative.
International Searching Authority, the International Bureau and
the International Preliminary Examining Authority may send Manner of Appointment of Agent or Common
notifications in respect of the international application to the Representative (Rules 90.4 and 90.5 and Section 106): The
applicant, avoiding processing or postal delays. Note that not all appointment of an agent or a common representative may be
Offices will send such notifications by e-mail, (for details about effected by designating the agent or common representative in
each Office’s procedure see the PCT Applicant’s Guide, Box No. IV and by the applicant signing the request or a
Annex B). If the first check-box is marked, any such e-mail separate power of attorney. Where there are two or more
notification will always be followed by the official notification applicants, the appointment of a common agent or common
on paper. Only that paper copy of the notification is considered representative must be effected by each applicant signing, at
the legal copy of the notification and only the date of mailing of his choice, the request or a separate power of attorney. If the
that paper copy will commence any time limit within the separate power of attorney is not signed, or if the required
meaning of Rule 80. If the second check-box is marked, the separate power of attorney is missing, or if the indication of the
applicant requests the discontinuation of the sending of paper name or address of the appointed person does not comply with
copies of notifications and acknowledges that the date of Rule 4.4, the power of attorney will be considered non-existent
mailing indicated on the electronic copy will commence any unless the defect is corrected. However, the receiving Office
time limit within the meaning of Rule 80. may waive the requirement that a separate power of attorney be
submitted to it (for details about each receiving Office, see the
Note that it is the applicant’s responsibility to keep any e-mail PCT Applicant’s Guide, Annex C).
address details up-to-date and to ensure that incoming e-mails
are not blocked for any reason on the recipient’s side. Changes Where a general power of attorney has been filed and is
to the e-mail address indicated in the request should be requested referred to in the request, a copy thereof must be attached to the
to be recorded, preferably directly at the International Bureau, request. Any applicant who did not sign the general power of
under Rule 92bis. Where the e-mail authorization is given both attorney must sign either the request or a separate power of
in respect of the applicant and in respect of an agent or common attorney, unless the receiving Office has waived the requirement
representative, the International Bureau will send e-mail that a separate power of attorney be submitted to it (for details,
communications only to the appointed agent or common see the PCT Applicant’s Guide, Annex C).
representative.
Agent’s Registration Number with the Office (Rule 4.7(b)):
Applicant’s Registration Number with the Office Where the agent is registered with the national or regional
(Rule 4.5(e)): Where the applicant is registered with the Office that is acting as receiving Office, the request may
national or regional Office acting as receiving Office, the indicate the number or other indication under which the agent
request may indicate the number or other indication under is so registered.
which the applicant is so registered.
Address for Correspondence (Rule 4.4(d) and
Nationality (Rules 4.5(a) and (b) and 18.1): For each Section 108): Where an agent is appointed, any correspondence
applicant, the nationality must be indicated by the name or two- intended for the applicant will be sent to the address indicated
letter code of the State (that is, country) of which the person is for that agent (or for the first-mentioned agent, if more than one
a national. A legal entity constituted according to the national is appointed). Where one of two or more applicants is appointed
law of a State is considered a national of that State. The as common representative, the address indicated for that
indication of the nationality is not required where a person is applicant in Box No. IV will be used.
inventor only.
Where no agent or common representative is appointed, any
Residence (Rules 4.5(a) and (c) and 18.1): For each correspondence will be sent to the address, indicated in
applicant, the residence must be indicated by the name or two- Box No. II or III, of the applicant (if only one person is named
letter code of the State (that is, country) of which the person is as applicant) or of the applicant who is considered to be
a resident. If the State of residence is not indicated, it will be common representative (if there are two or more persons named
assumed to be the same as the State indicated in the address. as applicants). However, if the applicant wishes
Possession of a real and effective industrial or commercial correspondence to be sent to a different address in such a case,
establishment in a State is considered residence in that State. that address must be indicated in Box No. IV instead of the
The indication of the residence is not required where a person is designation of an agent or common representative. In this case,
inventor only. and only in this case, the last check-box of Box No. IV must be
marked (that is, the last check-box must not be marked if either
Names of States (Section 115): For the indication of of the check-boxes “agent” or “common representative” has
names of States, the two-letter codes appearing in WIPO been marked).
Standard ST.3 and in the PCT Applicant’s Guide, Annex K,
may be used. Telephone, Facsimile Numbers and/or E-mail Addresses
See Notes to Boxes Nos II and III.
BOX No. IV
BOX No. V
Who Can Act as Agent? (Article 49 and Rule 83.1bis):
For each of the receiving Offices, information as to who can act Designations (Regional and national patents) (Rule 4.9):
as agent is given in the PCT Applicant’s Guide, Annex C. Upon filing of the request, the applicant will obtain an auto-
matic and all-inclusive coverage of all designations available
Agent or Common Representative (Rules 4.7, 4.8, 90.1 under the PCT on the international filing date, in respect of
and 90.2 and Section 108): Mark the applicable check-box in every kind of protection available and, where applicable, in
order to indicate whether the person named is (or has been) respect of both regional and national patents. If the applicant
appointed as “agent” or “common representative” (the wishes the international application to be treated, in a certain
“common representative” must be one of the applicants). For designated or elected State, as an application not for a patent but
the manner in which name(s), address(es) (including names of for another kind of protection available under the national law

Notes to the request form (PCT/RO/101) (page 2) (July 2017)

 page 3
of the designated or elected State concerned, the applicant will provided notice to the International Bureau under Rule 26bis.3(j)
have to indicate his choice directly to the designated or elected of the incompatibility of Rule 26bis.3(a) to (i) with the national
Office when performing the acts, referred to in Articles 22 law applied by that Office. Where the international application
or 39(1), for entry into the national phase. For details about is filed on a date which is later than the date on which the
various kinds of protection available in designated or elected priority period (see Rule 2.4) expired but within the period of
States, see the PCT Applicant’s Guide, Annex B. two months from that date, the applicant may request the
receiving Office to restore the right of priority (Rule 26bis.3).
However, for the reasons explained below, it is possible to Such a request must be filed with the receiving Office within
indicate, by marking the applicable check-box(es), that DE two months from the date on which the priority period expired;
Germany, JP Japan and/or KR Republic of Korea are not it may be included in the request (Rule 4.1(c)(v)) by identifying
designated for any kind of national protection. Each of those the priority claim(s) in Box No. VI. If, in Box No. VI, a priority
States has notified the International Bureau that Rule 4.9(b) claim is identified in respect of which a request to restore the
applies to it since its national law provides that the filing of an right of priority is made, in such case, a separate document
international application which contains the designation of that should be submitted entitled “Statement for Restoration of the
State and claims the priority, at the time of filing or subsequently Right of Priority”. This separate document should indicate, for
under Rule 26bis.1, of an earlier national application (for DE: each earlier application concerned, the filing date, the earlier
for the same kind of protection) having effect in that State shall application number and the name or two-letter code of the
have the result that the earlier national application ceases, where country, Member of WTO, regional Office or receiving Office.
applicable, after the expiration of certain time limits, to have Then, for each earlier application concerned, the applicant
effect with the same consequences as the withdrawal of the should state the reasons for the failure to file the international
earlier national application. The designation of DE Germany application within the priority period (Rules 26bis.3(a) and
for the purposes of a EP European patent is not affected by what 26bis.3(b)(ii)). Note that such a request may be subjected by
is said above. For details see the PCT Applicant’s Guide, in the the receiving Office to the payment to it of a fee, payable within
relevant Annex B. the time limit referred to above (Rule 26bis.3(e)). According
to Rule 26bis.3(d), the time limit for payment of the fee may be
Only the three States mentioned above may be excluded from extended, at the option of the receiving Office, for a period of
the all-inclusive coverage of all designations in Box No. V. For up to two months from the expiration of the time limit applicable
any other PCT Contracting State which the applicant wishes to under Rule 26bis.3(e). Note further that the receiving Office
exclude from the all-inclusive coverage of all designations, the may require the furnishing, within a reasonable time limit, of a
applicant should submit a separate notice of withdrawal of the declaration or other evidence in support of the statement of
designation concerned under Rule 90bis.2. Important: Should reasons; preferably, such declaration or other evidence should
a notice of withdrawal be filed, that notice will have to be already be submitted to the receiving Office together with the
signed by the applicant or, if there are two or more appli- request for restoration (Rule 26bis.3(b) and (f)). The receiving
cants, by all of them (Rule 90bis.5), or by an agent or a Office shall restore the right of priority if it finds that a criterion
common representative whose appointment has been ef- for restoration applied by the Office is satisfied
fected by each applicant signing, at his choice, the request, (Rule 26bis.3(a)). For information on which criteria a receiving
the demand or a separate power of attorney (Rule 90.4(a)). Office applies see the PCT Applicant’s Guide, Annex C.
BOX No. VI Incorporation by Reference (Rules 4.18 and 20): The
procedure for incorporation by reference is not applicable to a
Priority Claim(s) (Rule 4.10): If the priority of an earlier receiving Office which has provided notice to the International
application is claimed, the declaration containing the priority Bureau under Rule 20.8(a) of the incompatibility of
claim must be made in the request. Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 with
the national law applied by that Office. Where the receiving
The request must indicate the date on which the earlier Office finds that any of the requirements of Article 11(1)(iii)(d)
application from which priority is claimed was filed and the and (e) are not or appear not to be fulfilled, it will invite the
number it was assigned. Note that that date must fall within the applicant to either furnish the required correction or confirm
period of 12 months preceding the international filing date. that the element concerned referred to in Article 11(1)(iii)(d)
or (e) is incorporated by reference under Rule 4.18. Where the
Where the earlier application is a national application, the applicant furnishes the required correction under Article 11(2),
country party to the Paris Convention for the Protection of the international filing date will be the date on which the
Industrial Property, or the Member of the World Trade receiving Office receives the required correction (see
Organization that is not a party to that Convention, in which Rule 20.3(a)(ii) and (b)(i)), provided that all other requirements
that earlier application was filed must be indicated. Where the of Article 11(1) are fulfilled. However, where the applicant
earlier application is a regional application, the regional Office confirms the incorporation by reference of an element referred
concerned must be indicated. Where the earlier application is to in Article 11(1)(iii)(d) or (e) which is completely contained
an international application, the receiving Office with which in an earlier application the priority of which is claimed in the
that earlier application was filed must be indicated. international application, that element will be considered to
have been contained in the purported international application
Where the earlier application is a regional application (see on the date on which one or more elements referred to in
however below), or an international application, the priority Article 11(1)(iii) were first received by the receiving Office,
claim may also, if the applicant so wishes, indicate one or more and the international filing date will be the date on which all
countries party to the Paris Convention for which that earlier Article 11(1) requirements are fulfilled (see Rule 20.3(a)(ii)
application was filed (Rule 4.10(b)(i)); such an indication is and (b)(ii)).
not, however, mandatory. Where the earlier application is a
regional application and at least one of the countries party to Where the applicant furnishes a missing part to the receiving
the regional patent treaty is neither party to the Paris Convention Office after the date on which all of the requirements of
nor a Member of the World Trade Organization, at least one Article 11(1) were fulfilled but within the applicable time limit
country party to the Paris Convention or one Member of the under Rule 20.7, that part will be included in the international
World Trade Organization for which that earlier application application and the international filing date will be corrected to
was filed must be indicated (Rule 4.10(b)(ii)) in the the date on which the receiving Office received that part (see
Supplemental Box. Rule 20.5(c)). In such a case, the applicant will be given the
opportunity to request the receiving Office to disregard the
As to the possibility of correcting or adding a priority claim, missing part concerned, in which case the missing part would
see Rule 26bis.1 and the PCT Applicant’s Guide, International be considered not to have been furnished and the correction of
Phase. the international filing date not to have been made (see
Rule 20.5(e)). However, where the applicant confirms the
Restoration of the Right of Priority (Rules 4.1(c)(v) incorporation by reference of a part of the description, claims
and 26bis.3): The procedure for restoration of the right of or drawings under Rule 4.18 and the receiving Office finds that
priority is not applicable to a receiving Office which has all the requirements of Rules 4.18 and 20.6(a) are complied

Notes to the request form (PCT/RO/101) (page 3) (July 2017)

 page 4
with, that part will be considered to have been contained in the national or regional Office (Rule 4.12). Where the applicant
purported international application on the date on which one or has made such a request and complied with the requirements
more elements referred to in Article 11(1)(iii) were first received under Rule 12bis, and where the earlier search was carried out
by the receiving Office, and the international filing date will be by the same ISA or by the same national or regional Office as
the date on which all of the requirements of Article 11(1) are that which is acting as the ISA, the ISA shall, to the extent
fulfilled (see Rule 20.5). possible, take into account the results of the earlier search. If,
on the other hand, the earlier search was carried out by another
Furnishing the priority document(s) (Rule 17.1): A ISA or by a national or regional Office other than that is acting
certified copy of each earlier application the priority of which as the ISA, the ISA may, but is not obliged to, take the results
is claimed (priority document) must be submitted by the of the earlier search into account (Rule 41.1). Where the ISA
applicant, irrespective of whether that earlier application is a takes into account the results of an earlier search, it shall
national, regional or international application. The priority (partially) refund the search fee to the extent and under the
document must be submitted to the receiving Office or to the conditions provided for in the agreement under Article 16(3)(b)
International Bureau before the expiration of 16 months from (see, for each ISA, the PCT Applicant’s Guide, Annex D).
the (earliest) priority date or, where an early start of the national
phase is requested, not later than at the time such request is Any request to take into account the results of an earlier
made. Any priority document received by the International search should identify: the filing date and number of the
Bureau after the expiration of the 16-month time limit but application in respect of which the earlier search was carried out
before the date of international publication shall be considered and the Authority or Office which carried out the earlier search
to have been received on the last day of that time limit (Rules 4.1(b)(ii) and 4.12(i)).
(Rule 17.1(a)).
The applicant shall submit to the receiving Office, together
Where the priority document was issued by the receiving with the international application at the time of filing, a copy of
Office, the applicant may, instead of submitting the priority the results of the earlier search (Rule 12bis.1(a)), except:
document, request the receiving Office (not later than 16
months after the priority date) to prepare and transmit the – where the earlier search was carried out by the same Office
priority document to the International Bureau (Rule 4.1(c)(ii)). as that which is acting as the receiving Office or where the
Such requests may be made by marking the applicable check- earlier search results are otherwise available to the receiving
boxes in Box No. VI. Note that where such a request is made, Office, the applicant may, instead of submitting a copy of the
the applicant must, where applicable, pay to the receiving results of the earlier search, request the receiving Office to
Office the fee for priority document, otherwise, the request will transmit a copy of those results to the ISA by marking the
be considered not to have been made (see Rule 17.1(b)). appropriate check-box (Rule 12bis.1(b) and (d));

Where the priority document is available from an Office that – where the earlier search was carried out by the same Authority
participates in the WIPO Digital Access Service for Priority or Office as that which is acting as ISA, no copy of the results
Documents (DAS) (http://www.wipo.int/das/en), the applicant of the earlier search is required to be submitted to the receiving
may use DAS to provide the priority document to the International Office or to the ISA (Rules 12bis.1(c) and 12bis.2(b));
Bureau. Once the applicant requests the depositing Office to
provide a copy of the priority document to DAS (see PCT – where a copy of the results of the earlier search is available
Applicant’s Guide, Annex B of the DAS depositing Office for to the receiving Office or to the ISA in a form and manner
further indications of the procedure to be followed), the applicant acceptable to it, and if so indicated in the request form by the
will receive an access code (unless the applicant has already applicant by marking the appropriate check-box, no copy of the
automatically received the access code from the depositing results is required to be submitted to the receiving Office or to
Office in the priority application filing process). The applicant the ISA (Rules 12bis.1(d) and 12bis.2(b));
should then mark the applicable check-boxes in Box No. VI,
and indicate the access code for each specific priority document. Where the applicant has made a request under Rule 4.12, the
earlier search results to be submitted by the receiving Office to
Information concerning whether and which priority the ISA shall include, where applicable, a copy of any earlier
documents are available to the International Bureau from a classification results (Rule 23bis.1(b)).
digital library is published in the Official Notices (PCT Gazette)
pursuant to Section 715(c) and the PCT Applicant’s Guide, Use of Results of more than one Earlier Search: Where
Annex B(IB). the ISA is requested to use the results of more than one earlier
search, please mark the relevant check-box, and furnish
Dates (Section 110): Dates must be indicated by the Arabic duplicates of this page, marked “continuation sheet of item 1 of
number of the day, the name of the month and the Arabic Continuation of Box No. VII”, attached to the request form.
number of the year – in that order; after, below or above such
indication, the date should be repeated in parentheses, using Continuation of BOX NO. VII, item 2
two-digit Arabic numerals each for the number of the day and
for the number of the month followed by the number of the year Transmission of the Earlier Search and Classification
in four digits, in that order and separated by periods, slants or Results to the ISA by the Receiving Office where the applicant
hyphens, for example, “26 October 2012 (26.10.2012)”, did not make a request under Rule 4.12 Where the international
“26 October 2012 (26/10/2012)” or “26 October 2012 application claims priority of an earlier application, subject to
(26-10-2012)”. Article 30(2) and (3), the receiving Office shall transmit to the
BOX No. VII ISA a copy of the results of the earlier search and classification
(unless such copy is already available to the ISA) if the earlier
Choice of International Searching Authority (ISA) application was filed with the same national or regional Office
(Rules 4.1(b)(iv) and 4.14bis): If two or more International as that which is acting as the receiving Office, and that Office
Searching Authorities are competent for carrying out the has carried out the earlier search in respect of the earlier
international search in relation to the international application – application (Rule 23bis.2(a)); the receiving Office may transmit
depending on the language in which that application is filed a copy of the results of the earlier search and classification if the
and the receiving Office with which it is filed – the name of the earlier application was filed with a different Office but where
competent Authority chosen by the applicant must be indicated the results of that earlier search and classification are nevertheless
in the space provided, either by its full name or two-letter code. available to the receiving Office (Rule 23bis.2(c)).
Continuation of BOX No. VII, item 1 Request not to Transmit the Earlier Search Results by
the receiving Office to the ISA: Where the international
Request to Use Results of Earlier Search; Submission of application is filed with a receiving Office which has notified
Earlier Search Results (Rules 4.12, 12bis, 16.3 and 41.1). The the International Bureau under Rule 23bis.2(b) that it may, on
applicant may request the ISA to take into account, in carrying request of the applicant, decide not to transmit the results of an
out the international search, the results of an earlier search earlier search to the ISA, the applicant may check the check-box
carried out either by that Authority, by another ISA or by a in item 2.2 of Continuation of Box No. VII. This only concerns
Notes to the request form (PCT/RO/101) (page 4) (July 2017)
 page 5
international applications filed with the following receiving Instructions pursuant to Rule 4.17, any designated Office may
Offices: DE, FI and SE (see http://www.wipo.int/pct/en/texts/ accept that declaration for the purposes of the applicable
reservations/res_incomp.html). national law, but is not required to do so.
Authorization to Transmit the Earlier Search and Details as to National Law Requirements: For information
Classification Results by the receiving Office to the ISA: on the declarations required by each designated Office, see the
Where the international application is filed with a receiving PCT Applicant’s Guide, in the relevant National Chapter.
Office which has notified the International Bureau under
Rule 23bis.2(e) that the transmission of copies of earlier search Effect in Designated Offices (Rule 51bis.2): Where the
and classification results without the authorization of the applicant submits any of the declarations provided for in
applicant is not compatible with the national law applied by the Rule 4.17(i) to (iv) containing the required standardized
receiving Office, the applicant may check the first check-box in wording (either with the international application, or to the
item 2.3 of Continuation of Box No. VII to nevertheless authorize International Bureau within the relevant time limit under
the receiving Office to transmit the earlier search and Rule 26ter, or directly to the designated Office during the
classification results to the ISA. This only concerns international national phase), the designated Office may not, in the national
applications filed with the following receiving Offices: AU, phase, require further documents or evidence on the matter to
CH, CZ, FI, HU, IL, JP, NO, SE, SG and US. (see http:// which the declaration relates, unless that designated Office
www.wipo.int/pct/en/texts/reservations/res_incomp.html). may reasonably doubt the veracity of the declaration concerned.
In respect of all receiving Offices, the second check-box in Incompatibility of Certain Items of Rule 51bis.2(a) with
item 2.3 of Continuation of Box No. VII may also be used to National Laws (Rule 51bis.2(c)): Certain designated Offices
expressly authorize the receiving Office to transmit the earlier have informed the International Bureau that the applicable
search and classification results where the earlier search was national law is not compatible in respect of certain declarations
carried out in respect of an international application, the priority provided in Rule 4.17(i), (ii) and (iii). Those designated
of which is subsequently claimed in this international application Offices are therefore entitled to require further documents or
and where the earlier international search was carried out by a evidence on the matters to which those declarations relate. For
different ISA than the ISA chosen in Box No. VII. regularly updated information on such Offices, see the WIPO
website: http://www.wipo.int/pct/en/texts/reservations/
Use of Results of more than one Earlier Search: Where the res_incomp.html.
international application claims priority of more than one earlier
application, and where the applicant is entitled and wishes to BOXES Nos. VIII (i) TO (v)
make an indication under item 2.2 or 2.3 (Rule 23bis.2(a)(b) (IN GENERAL)
and (e)) for each earlier application, please mark the relevant
check-box, and furnish duplicates of this page that lists each Different Declaration Boxes: There are six different
priority claim concerned, marked “continuation sheet of item 2 declaration boxes in the pre-printed request form – one box for
of Continuation of Box No. VII”, attached to the request form. each of the five different types of declarations provided for in
Rule 4.17 (Box No. VIII (i) to Box No. VIII (v)) and a
BOX No. VIII continuation sheet (Continuation of Box No. VIII (i) to (v)) to
be used in case any single declaration does not fit in the
Declarations Containing Standardized Wording corresponding box. The title of each type of declaration which
(Rules 4.1(c)(iii) and 4.17): At the option of the applicant, the is found in the standardized wording provided for in the
request may, for the purposes of the national law applicable in Administrative Instructions is pre-printed on the appropriate
one or more designated States, contain one or more of the sheet of the request.
following declarations:
Separate Sheet for Each Declaration: Each declaration
(i) declaration as to the identity of the inventor; must start on a separate sheet of the request form in the
(ii) declaration as to the applicant’s entitlement, as at the appropriate Declaration Box.
international filing date, to apply for and be granted a
patent; Titles, Items, Item Numbers, Dotted Lines, Words in
(iii) declaration as to the applicant’s entitlement, as at the Parentheses and Words in Brackets: The prescribed
international filing date, to claim the priority of the standardized wording of the declarations includes titles, various
earlier application; items, item numbers, dotted lines, words in parentheses and
(iv) declaration of inventorship (only for the purposes of the words in brackets. Except for Box No. VIII (iv) which contains
designation of the United States of America); the pre-printed standardized wording, only those items which
(v) declaration as to non-prejudicial disclosures or are applicable should be included in a declaration where
exceptions to lack of novelty; necessary to support the statements in that declaration (that
is, omit those items which do not apply) and item numbers
which must conform to the standardized wording provided for need not be included. Dotted lines indicate where information
in Sections 211 to 215, respectively, and which must be set is required to be inserted. Words in parentheses are
forth in Boxes Nos. VIII (i) to (v), as detailed below. Where instructions to applicants as to the information which may
any such declarations are included, the appropriate check- be included in the declaration depending upon the factual
boxes in Box No. VIII should be marked and the number of circumstances. Words in brackets are optional and should
each type of declaration should be indicated in the right-hand appear in the declaration without the brackets if they apply;
column. As to the possibility of correcting or adding a if they do not apply, they should be omitted together with
declaration, see Rule 26ter, Section 216 and the PCT Applicant’s the corresponding brackets.
Guide, International Phase.
Naming of Several Persons: More than one person may be
If the circumstances of a particular case are such that the named in a single declaration. In the alternative, with one
standardized wordings are not applicable, the applicant should exception, a separate declaration may be made for each person.
not attempt to make use of the declarations provided for in With respect to the declaration of inventorship set forth in
Rule 4.17 but rather will have to comply with the national Box No. VIII (iv), which is applicable only for the purposes of
requirements concerned upon entry into the national phase. the designation of the United States of America, all inventors
must be indicated in a single declaration (see Notes to
The fact that a declaration is made under Rule 4.17 does not Box No. VIII (iv), below). The wording of declarations to be
of itself establish the matters declared; the effect of those set forth in Boxes Nos. VIII (i), (ii), (iii) and (v) may be adapted
matters in the designated States concerned will be determined from the singular to the plural as necessary.
by the designated Offices in accordance with the applicable
national law. BOX No. VIII (i)
Even if the wording of a declaration does not conform to the Declaration as to the Identity of the Inventor (Rule 4.17(i)
standardized wording provided for in the Administrative and Section 211): The declaration must be worded as follows:
Notes to the request form (PCT/RO/101) (page 5) (July 2017)
 page 6
“Declaration as to the identity of the inventor (Rules 4.17(i) “Combined declaration as to the applicant’s entitlement, as
and 51bis.1(a)(i)): at the international filing date, to apply for and be granted a
patent (Rules 4.17(ii) and 51bis.1(a)(ii)) and as to the identity
in relation to [this] international application [No. PCT/…], of the inventor (Rules 4.17(i) and 51bis.1(a)(i)), in a case where
the declaration under Rule 4.17(iv) is not appropriate:”
... (name) of … (address) is the inventor of the
subject matter for which protection is sought by way The remainder of the combined declaration must be worded
of [the] [this] international application” as indicated in the preceeding paragraphs.
Such a declaration is not necessary in respect of any inventor For details as to the declaration as to the identity of the
who is indicated as such (either as inventor only or applicant inventor, see the Notes to Box No. VIII (i), above.
and inventor) in Box No. II or No. III in accordance with
Rule 4.5 or 4.6. However, where the inventor is indicated as BOX No. VIII (iii)
applicant in Box No. II or No. III in accordance with Rule 4.5,
a declaration as to the applicant’s entitlement to apply for and Declaration as to the Applicant’s Entitlement to Claim
be granted a patent (Rule 4.17(ii)) may be appropriate. Where Priority of the Earlier Application (Rule 4.17(iii) and
indications regarding the inventor in accordance with Rule 4.5 Section 213): The declaration must be worded as follows, with
or 4.6 are not included in Box No. II or No. III, this declaration such inclusion, omission, repetition and re-ordering of the
may be combined with the prescribed wording of the declaration matters listed as items (i) to (viii) as is necessary to explain the
as to the applicant’s entitlement to apply for and be granted a applicant’s entitlement:
patent (Rule 4.17(ii)). For details on such a combined
declaration, see Notes to Box No. VIII (ii), below. For details “Declaration as to the applicant’s entitlement, as at the
as to the declaration of inventorship for the purposes of the international filing date, to claim the priority of the earlier
designation of the United States of America, see Notes to application specified below, where the applicant is not the
Box No. VIII (iv), below. applicant who filed the earlier application or where the
applicant’s name has changed since the filing of the earlier
BOX No. VIII (ii) application (Rules 4.17(iii) and 51bis.1(a)(iii)):
Declaration as to the Applicant’s Entitlement to Apply in relation to [this] international application [No. PCT/…],
for and Be Granted a Patent (Rule 4.17(ii) and Section 212):
The declaration must be worded as follows, with such inclusion, … (name) is entitled to claim priority of earlier application
omission, repetition and re-ordering of the matters listed as No. … by virtue of the following:
items (i) to (viii) as is necessary to explain the applicant’s
entitlement: (i) the applicant is the inventor of the subject matter for
which protection was sought by way of the earlier
“Declaration as to the applicant’s entitlement, as at the application
international filing date, to apply for and be granted a patent
(Rules 4.17(ii) and 51bis.1(a)(ii)), in a case where the (ii) … (name) [is] [was] entitled as employer of the
declaration under Rule 4.17(iv) is not appropriate: inventor, … (inventor’s name)
(iii) an agreement between … (name) and … (name),
in relation to [this] international application [No. PCT/…], dated …
(iv) an assignment from … (name) to … (name), dated …
... (name) is entitled to apply for and be granted a patent by (v) consent from … (name) in favor of … (name), dated …
virtue of the following: (vi) a court order, issued by … (name of court), effecting a
transfer from … (name) to … (name), dated …
(i) ... (name) of … (address) is the inventor of the (vii) transfer of entitlement from … (name) to … (name) by
subject matter for which protection is sought by way way of … (specify kind of transfer), dated …
of [the] [this] international application
(viii) the applicant’s name changed from … (name)
(ii) ... (name) [is] [was] entitled as employer of the to … (name) on … (date)”
inventor, ... (inventor’s name)
(iii) an agreement between … (name) and … (name), Items (i) to (viii) may be incorporated as is necessary to
dated … explain the applicant’s entitlement. This declaration is only
(iv) an assignment from … (name) to … (name), dated … applicable to those events which have occurred prior to the
(v) consent from … (name) in favor of … (name), dated … international filing date. In addition, this declaration is only
applicable where the person or name of the applicant is different
(vi) a court order issued by … (name of court), effecting from that of the applicant who filed the earlier application from
a transfer from … (name) to … (name), dated … which priority is claimed. For example, this declaration may be
(vii) transfer of entitlement from … (name) to … (name) applicable where only one applicant out of five is different
by way of … (specify kind of transfer), dated … from the applicants indicated in respect of an earlier application.
(viii) the applicant’s name changed from … (name) to … The possible kinds of transfer of entitlement in item (vii)
(name) on … (date)” include merger, acquisition, inheritance, donation, etc. Where
there has been a succession of transfers from the applicant in
Items (i) to (viii) may be incorporated as is necessary to respect of the earlier application, the order in which transfers
explain the applicant’s entitlement. This declaration is only are listed should follow the actual succession of transfers, and
applicable to those events which have occurred prior to the items may be included more than once, as necessary to explain
international filing date. The possible kinds of transfer of the applicant’s entitlement.
entitlement in item (vii) include merger, acquisition, inheritance,
donation, etc. Where there has been a succession of transfers BOX No. VIII (iv)
from the inventor, the order in which transfers are listed
should follow the actual succession of transfers, and items Declaration of Inventorship (Rule 4.17(iv) and
may be included more than once, as necessary to explain the Section 214): The standardized wording for the declaration is
applicant’s entitlement. Where the inventor is not indicated in pre-printed in Box No. VIII (iv).
Box No. II or No. III, this declaration may be presented as a
combined declaration explaining the applicant’s entitlement The name, residence and address must be included for each
to apply for and be granted a patent and identifying the inventor. If the name and address of an inventor is not written
inventor. In such a case, the introductory phrase of the in the Latin alphabet, the name and address must be indicated in
declaration must be as follows: the Latin alphabet. All inventors must sign and date the

Notes to the request form (PCT/RO/101) (page 6) (July 2017)

 page 7
declaration even if they do not all sign the same copy of the check-boxes Nos. 8 and 9 must be marked in Box No. IX. In
declaration (Section 214(b)). addition, the type and number of carriers such as diskettes, CD-
ROMs, CD-Rs or other data carriers accepted by the ISA,
If there are more than three inventors, those other inventors should be indicated in item 8.
must be indicated on the “Continuation of Box No. VIII (i) _________________________________________________
to (v)” sheet. The continuation sheet should be entitled
“Continuation of Box No. VIII (iv),” must indicate the name, For EFS-Web filing with RO/US
residence and address for those other inventors, and at least the
name and address in the Latin alphabet. In such a case, the Nucleotide and/or amino acid sequences: Electronic
“complete declaration” includes Box No. VIII (iv) and the Filings via EFS-Web with RO/US: There exist two alternative
continuation sheet. All inventors must sign and date a complete last sheets of the request form which contain two distinct
declaration even if they do not all sign the same copy of the Boxes No. IX. The sheet “last sheet – paper”, described earlier,
complete declaration, and a copy of each separately signed should be used if the applicant intends to file the international
complete declaration must be submitted (Section 214(b)). application on paper. The sheet “last sheet – EFS” should only
be used if the request form is filed online with the receiving
Where the declaration was not included in the request, but Office of the United States of America via EFS-Web.
is furnished later, the PCT application number MUST be
indicated within the text of Box No. VIII (iv). (a) EFS-Web and text file: Where the international
application is filed via EFS-Web (using the sheet “last sheet -
BOX No. VIII (v) EFS”) and contains disclosure of one or more nucleotide and/
or amino acid sequences, a sequence listing must be presented
Declaration as to Non-prejudicial Disclosures or as a separate part of the description (“sequence listing part of
Exceptions to Lack of Novelty (Rule 4.17(v) and Section 215): description”) in accordance with the standard contained in
The declaration must be worded as follows, with such inclusion, Annex C of the Administrative Instructions, that is, in compliance
omission, repetition and re-ordering of the matters listed as with WIPO Standard ST.25. The sequence listing should
items (i) to (iv) as is necessary: preferably be furnished as an Annex C/ST.25 text file; in such
cases, the first check-box of check-box (g) in Box No. IX
“Declaration as to non-prejudicial disclosures or exceptions should be marked. When furnished in this manner, the number
to lack of novelty (Rules 4.17(v) and 51bis.1(a)(v)): of sheets of the sequence listing is not included in the total
number of sheets making up the international application.
in relation to [this] international application [No. PCT/…], Whenever the sequence listing is furnished as an Annex C/
ST.25 text file, there is no need to file another copy of the text
… (name) declares that the subject matter claimed in [the] file for search purposes under Rule 13ter since the text file
[this] international application was disclosed as follows: submitted will be used for both disclosure of the international
application and for search purposes.
(i) kind of disclosure (include as applicable):
(a) international exhibition (b) EFS-Web and image file: If the sequence listing is
(b) publication filed online via EFS-Web as an image file (e.g. PDF file) rather
(c) abuse than the recommended text file, the corresponding boxes in
(d) other: … (specify) check-box (f) in Box No. IX should be marked. The number of
sheets of the sequence listing must be included in the total
(ii) date of disclosure: … number of sheets making up the international application.
(iii) title of disclosure (if applicable): … Where the sequence listing is filed in image format, a copy of
(iv) place of disclosure (if applicable): …” the sequence listing in the form of an Annex C/ST.25 text file
(together with the required statement) should accompany the
Either (a), (b), (c) or (d) of item (i) should always be international application, if so required by the ISA but only for
included in the declaration. Item (ii) should also always be the purposes of international search under Rule 13ter. In such
included in the declaration. Items (iii) and (iv) may be cases, check-boxes Nos. 8 and 9 must be marked in Box No. IX.
incorporated depending upon the circumstances.
(c) EFS-Web and physical data carriers: The receiving
BOX No. IX Office of the United States of America has two distinct limitations
on the size of the sequence listing file it can accept via EFS-
Sheets Constituting the International Application: The Web. If the text file containing the sequence listing is larger
number of sheets of the various parts of the international than 100MB, or if the image file (e.g. PDF file) containing the
application must be indicated in the check list using Arabic sequence listing is larger than 25MB, the applicant must file the
numerals. Sheets containing any of the Boxes Nos. VIII(i) to (v) sequence listings as an Annex C/ST.25 text file on physical data
(declaration sheets) must be counted as part of the request. It is carrier(s). The receiving Office does not accept the filing of
noted that any tables, including those related to a sequence image (e.g. PDF file) on physical data carrier(s). In such cases,
listing, should be an integral part of the description and the the data carrier(s) must be furnished on the same day that the
pages containing such tables will be counted as sheets of the international application is filed online. This may be furnished
international application. There is no longer any provision for via “Express Mail Post Office to Addressee” with a date-in by
submission of those tables separately or a reduced fee for such the United States Postal Service the same date as the online
a submission. filing date, or via commercial delivery services or by hand,
provided that it reaches the receiving Office on the same day as
Nucleotide and/or amino acid sequences: Paper Filings: the international application filed online. In such cases, the
Where the international application is filed on paper (using the corresponding check-boxes in check-box (g) in Box No. IX
sheet “last sheet - paper”) and contains disclosure of one of must be marked. The number and type of carrier(s) should be
more nucleotide and/or amino acid sequences, a sequence indicated in check-box (g). Whenever the sequence listing is
listing must be presented as a separate part of the description furnished as an Annex C/ST.25 text file, there is no need to file
(“sequence listing part of description”) in accordance with the another copy of the text file for search purposes under Rule 13ter
standard contained in Annex C of the Administrative since the text file submitted will be used for both disclosure of
Instructions, that is, in compliance with WIPO Standard ST.25. the international application and for search purposes.
The number of pages of the sequence listing must be indicated __________________________________________________
under item (f) in Box No. IX and included in the total number
of sheets. Furthermore, where the sequence listing is filed on Items Accompanying the International Application:
paper, a copy of the sequence listing in the form of an Annex C/ Where the international application is accompanied by certain
ST.25 text file saved on physical data carrier(s) (together with items, the applicable check-boxes must be marked, any
the required statement) should accompany the international applicable indication must be made on the dotted line after the
application, if so required by the ISA but only for the purposes applicable item, and the number of such items should be
of international search under Rule 13ter. In such cases therefore, indicated at the end of the relevant line; detailed explanations

Notes to the request form (PCT/RO/101) (page 7) (July 2017)

 page 8
are provided below only in respect of those items which so Where the signature on the request is not that of the applicant
require. but that of the agent, or the common representative, a separate
power of attorney appointing the agent or the common
Check-box No. 4: Mark this check-box where a copy of a representative, respectively, or a copy of a general power of
general power of attorney is filed with the international appli- attorney already in the possession of the receiving Office, must
cation; where the general power of attorney has been deposited be furnished. The power of attorney must be signed by the
with the receiving Office, and that Office has accorded to it a applicant, or if there is more than one applicant, by at least one
reference number, that number may be indicated. of them. If the power is not filed with the request, the
receiving Office will invite the applicant to furnish it, unless it
Check-box No. 6: Mark this check-box where a translation has waived the requirement for a separate power of attorney
of the international application for the purposes of international (for details about each receiving Office, see the PCT Applicant’s
search (Rule 12.3) is filed together with the international Guide, Annex C).
application and indicate the language of that translation.
SUPPLEMENTAL BOX
Check-box No. 7: Mark this check-box where a filled-in
Form PCT/RO/134 or any separate sheet containing The cases in which the Supplemental Box may be used and
indications concerning deposited microorganisms and/or other the manner of making indications in it are explained in the left
biological material is filed with the international application. column of that Box.
If Form PCT/RO/134 or any sheet containing the said indications
is included as one of the sheets of the description (as required Items 2 and 3: Even if an indication is made in respect of
by certain designated States (see the PCT Applicant’s Guide, items 2 and 3 under Rule 49bis.1(a), (b) or (d), the applicant
Annex L)), do not mark this check-box (for further information, will be required to make an indication to this effect upon entry
see Rule 13bis and Section 209). into the national phase before the designated offices concerned.
Check-boxes Nos. 8 and 9: Where the sequence listing If the applicant wishes to specify that the international
part of the description is submitted on paper, a copy of the application be treated in any designated State as an application
sequence listing in the form of an Annex C/ST.25 text file for a utility model, see Notes to Box No. V.
(together with the required statement) should accompany the
international application, if so required by the ISA, but only GENERAL REMARKS
for the purposes of international search under Rule 13ter. In
this case, check-boxes Nos. 8 and 9, must be marked in Language of Correspondence (Rule 92.2 and
Box No. IX. Section 104): Any letter from the applicant to the receiving
Office must be in the language of filing of the international
Language of Filing of the International Application application provided that, where the international application
(Rules 12.1(a) and 20.4(c) and (d)): With regard to the is to be published in the language of a translation required
language in which the international application is filed, for the under Rule 12.3, such letter should be in the language of that
purposes of according an international filing date, it is, subject translation; however, the receiving Office may authorize the
to the following sentence, sufficient that the description and use of another language.
the claims are in the language, or one of the languages,
accepted by the receiving Office for the filing of international Any letter from the applicant to the International Bureau
applications; that language should be indicated in that check- must be in the same language as the international application if
box (as regards the language of the abstract and any text matter that language is English or French; otherwise, it must be in
in the drawings, see Rule 26.3ter(a) and (b); as regards the English or French, at the choice of the applicant.
language of the request, see Rules 12.1(c) and 26.3ter(c)
and (d)). Note that where the international application is filed Any letter from the applicant to the ISA must be in the same
with the United States Patent and Trademark Office as receiving language as the international application, provided that, where
Office, all elements of the international application (request, a translation of the international application for the purposes
description, claims, abstract, text matter of drawings) must, for of international search has been transmitted under Rule 23.1(b),
the purposes of according an international filing date, be in such letter is in the language of that translation. However, the
English except that the free text in any sequence listing part of ISA may authorize the use of another language.
the description, complying with the standard set out in Annex C
of the Administrative Instructions, may be in a language other Arrangement of Elements and Numbering of Sheets of
than English. the International Application (Rule 11.7 and Section 207):
The elements of the international application must be placed in
BOX No. X the following order: the request, the description (excluding
the sequence listing part, if any), the claim(s), the abstract, the
Signature (Rules 4.1(d), 4.15, 26.2bis(a), 51bis.1(a)(vi) drawings (if any), the sequence listing part of the description
and 90): The signature must be that of the applicant; if there (if any).
are several applicants, all must sign. However, if the signature
of one or more of the applicants is missing, the receiving All sheets of the description (excluding the sequence listing
Office will not invite the applicant to furnish the missing part), claims and abstract must be numbered in consecutive
signature(s) provided that at least one of the applicants signed Arabic numerals, which must be placed at the top or bottom of
the request. the sheet, in the middle, but not in the margin which must
remain blank. The number of each sheet of the drawings must
Important: Should a notice of withdrawal be filed at consist of two Arabic numerals separated by an oblique stroke,
any time during the international phase, that notice will the first being the sheet number and the second being the total
have to be signed by the applicant or, if there are two or number of sheets of drawings (for example, 1/3, 2/3, 3/3). For
more applicants by all of them (Rule 90bis.5), or by an numbering of the sheets of the sequence listing part of the
agent or a common representative whose appointment has description, see Section 207.
been effected by each applicant signing, at his choice, the
request, the demand, a separate power of attorney Indication of the Applicant’s or Agent’s File Reference
(Rule 90.4(a)) or a general power of attorney (Rule 90.5(a)). on the sheets of the description (excluding the sequence listing
part, if any), claim(s), abstract, drawings and sequence listing
Furthermore, for the purposes of the national phase part of the description (Rule 11.6(f)): The file reference
processing, each designated Office will be entitled to require indicated on the request may also be indicated in the left-hand
the applicant to furnish the confirmation of the international corner of the top margin, within 1.5 cm from the top of any
application by the signature of any applicant for the designated sheet of the international application.
State concerned, who has not signed the request.

Notes to the request form (PCT/RO/101) (page 8) (July 2017)

Annex VII
Form PCT/RO/101 Fee Calculation Sheet and Notes

145
 This sheet is not part of and does not count as a sheet of the international application.

PCT For receiving Office use only

FEE CALCULATION SHEET
International Application No.
Annex to the Request

Applicant’s or agent’s
file reference Date stamp of the receiving Office
Applicant

CALCULATION OF PRESCRIBED FEES

(Applicants may be entitled to a reduction of certain fees as indicated in the PCT Fee Tables
(http://www.wipo.int/pct/en/fees.pdf))

T
1. TRANSMITTAL FEE: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

2. SEARCH FEE: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . S

International search to be carried out by: ______

3. INTERNATIONAL FILING FEE

Enter total number of sheets indicated in Box No IX: ______

i1 Fixed amount for the first 30 sheets . . . . . . . . . i1

i2 _________________ x __________________ = i2
number of sheets fee per sheet
in excess of 30

Add amounts entered at i1 and i2 and enter total at I: . . . . . . . . . . . . . . . . . . . I

(Applicants from certain States are entitled to a reduction of 90% of the international filing fee (see
http://www.wipo.int/pct/en/fees/fee_reduction.pdf). Where the applicant is (or all applicants are) so entitled,
the total to be entered at I is 10% of the international filing fee.)

P
4. FEE FOR PRIORITY DOCUMENT (if applicable): . . . . . . . . . . . . . . . . . .

5. FEE FOR RESTORATION OF THE RIGHT OF PRIORITY (if

applicable): . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . RP

ES
6. FEE FOR EARLIER SEARCH DOCUMENTS (if applicable): . . . . . . . . .

7. TOTAL FEES PAYABLE . . . . . . . . . . . .

Add amounts entered at T, S, I, P, RP and ES,
and enter total in the TOTAL box TOTAL

MODE OF PAYMENT (Not all modes of payment may be available at all receiving Offices)
credit card (details should authorization to charge deposit bank transfer cash
not be included on this sheet) or current account (see below)

postal money order check revenue stamps other (specify):

AUTHORIZATION TO CHARGE (OR CREDIT) DEPOSIT OR CURRENT ACCOUNT

(This mode of payment may not be available at all receiving Offices) Receiving Office: RO/ __________________________

Authorization to charge the total fees indicated above. Deposit or Current Account No.: __________________
(This check-box may be marked only if the conditions for deposit or current Date: ________________________________________
accounts of the receiving Office so permit) Authorization to charge any
deficiency or credit any overpayment in the total fees indicated above. Name: _______________________________________
Authorization to charge the fee for priority document. Signature: ____________________________________

Form PCT/RO/101 (Annex) (July 2017) See Notes to the fee calculation sheet
 NOTES TO THE FEE CALCULATION SHEET
(ANNEX TO FORM PCT/RO/101)

The purpose of the fee calculation sheet is to help the applicant to identify the prescribed fees and to calculate the amounts to
be paid. It is strongly recommended that the applicant complete the sheet by entering the appropriate amounts in the boxes provided
and submit the fee calculation sheet at the time of filing the international application. This will help the receiving Office to verify
the calculations and to identify any error in them.

Information about the applicable fees payable can be obtained from the receiving Office and the International Bureau at
http://www.wipo.int/pct/en/fees.pdf. The amounts of the international filing and search fees may change due to currency
fluctuations. Applicants are advised to check what are the latest applicable amounts. All fees, must be paid within one month from
the date of receipt of the international application.

CALCULATION OF PRESCRIBED FEES applicant is a natural person from certain States. These two
types of fees reduction are fully explained below.
Box T: Transmittal Fee for the benefit of the receiving
Office (Rule 14.1): The amount of the transmittal fee, if any, Reduction of the International Filing Fee Where the
is fixed by the receiving Office. It must be paid within one International Application Is Filed in Electronic Form:
month from the date of receipt of the international application Where the international application is filed in electronic form,
by the receiving Office. Information about this fee is contained the total amount of the international filing fee is reduced
in the PCT Applicant’s Guide, Annex C. depending on the electronic formats used. The international
filing fee is reduced by: 100 Swiss francs (or the equivalent in
Box S: Search Fee for the benefit of the International the currency in which the international filing fee is paid to the
Searching Authority (ISA) (Rule 16.1): The amount of the receiving Office) in respect of international applications where
search fee is fixed by the ISA. It must be paid within one month the request is not in character coded format (see PCT Schedule
from the date of receipt of the international application by the of Fees, item 4(b)); 200 Swiss francs (or the equivalent in the
receiving Office. Information about this fee is contained in the currency in which the international filing fee is paid to the
PCT Applicant’s Guide, Annex D. receiving Office) where the request is in character coded
format (see PCT Schedule of Fees, item 4(c)); and 300 Swiss
Where two or more ISAs are competent, the applicant must francs (or the equivalent in the currency in which the
indicate his choice in the space provided for this purpose and international filing fee is paid to the receiving Office) where
pay the amount of the international search fee fixed by the ISA the request, description, claims and abstract are all in character
chosen. Information on the competent ISA and whether the coded format (see PCT Schedule of Fees, item 4(d)). For
applicant has a choice between two or more ISAs is contained further details, see the PCT Applicant’s Guide, International
in the PCT Applicant’s Guide, Annex C. Phase and Annex C, as well as information published in the
Official Notices (PCT Gazette) and the PCT Newsletter. Since
Box I: International Filing Fee: The amount of the international applications filed in electronic form will contain
international filing fee depends on the number of sheets of the the Request Form and Fee Calculation Sheet in such electronic
international application indicated in Box No. IX of the request form, no provision is made for this fee reduction in the Fee
as explained below. Calculation Sheet annexed to Form PCT/RO/101.
That number is the Total number of sheets indicated in Reduction of the International Filing Fee for Applicants
Box No. IX of the request, which includes the actual number of from Certain States: An applicant who is a natural person and
sheets of the sequence listing part of the description, if the who is a national of and resides in a State that is listed as being
listing is filed on paper and not as an Annex C/ST.25 text file. a State whose per capita gross domestic product is below
________________________________________________________ US$ 25,000 (according to the most recent ten year average per
capita gross domestic product figures at constant 2005 US$
For EFS-Web filing with RO/US values published by the United Nations), and whose nationals
and residents who are natural persons have filed less than 10
Nucleotide and/or amino acid sequences: via EFS-Web: international applications per year (per million population) or
Where the international application is filed via EFS-Web and less than 50 international applications per year (in absolute
contains a sequence listing filed in an Annex C/ST.25 text file, numbers) according to the most recent 5-year average yearly
even when, due to the size of the text file, the sequence listing filing figures published by the International Bureau; or an
has to be submitted on a data carrier, no fee is due for filing the applicant, whether a natural person or not, who is a national of
sequence listing. and resides in a State that is listed as being classified by the
United Nations as a least developed country, is entitled, in
Where the sequences listing is an image file (e.g. PDF) the accordance with the Schedule of Fees, to a reduction of 90% of
actual number of sheets that make up this part of the description certain PCT fees including the international filing fee. If there
must be included. are several applicants, each must satisfy the above-mentioned
__________________________________________________ criteria. The reduction of the international filing fee will be
automatically available to any applicant (or applicants) who is
The international filing fee must be paid within one month (or are) so entitled on the basis of the indications of name,
from the date of receipt of the international application by the nationality and residence given in Boxes Nos. II and III of the
receiving Office. request.
Reductions: Applicants may be entitled to reductions to The fee reduction is available even if one or more of the
certain fees, which are indicated in the PCT Fee Tables applicants are not from PCT Contracting States, provided that
(http://www.wipo.int/pct/en/fees.pdf) and the relevant Annex C each of them is a national and resident of a State that meets the
of the PCT Applicants Guide. If reduced fees apply, the above-mentioned requirements and that at least one of the
reduced amount should be indicated in the fee calculation applicants is a national or resident of a PCT Contracting State
sheet. These include reductions that apply where the and thus is entitled to file an international application.
international application is filed in electronic form and/or if the

Notes to the fee calculation sheet (Annex to Form PCT/RO/101) (page 1) (July 2017)
 page 2
Information about PCT Contracting States whose nationals Box ES: Fee for earlier search documents (Rule 12bis.1(b)
and residents are entitled to a reduction of 90% of certain PCT and (d)): Where the applicant has requested, by marking the
fees, including the international filing fee, is contained in the appropriate check-box in item 1.2 of Continuation of
PCT Applicant’s Guide, Annex C and on the WIPO website Box No. VII, of the request, that the receiving Office prepare
(see http://www.wipo.int/pct/en/), and is also published and and transmit to the ISA copies of the results of an earlier search,
regularly updated in the Official Notices (PCT Gazette) and which are requested by the applicant to be taken into
the PCT Newsletter. consideration by the ISA (such a request may only be filed if the
earlier search was carried out by the same Office as that which
Calculation of the International Filing Fee in Case of is acting as the receiving Office (Rule 12bis.1(b)) or where the
Fee Reduction: Where the applicant is (or all applicants are) earlier search results are otherwise available to the receiving
entitled to a reduction of the international filing fee, the total to Office (Rule 12bis.1(d)), the amount of the fee prescribed by
be entered in box I is 10% of the international filing fee (see the receiving Office for such service may be entered (for
below). information, see the PCT Applicant’s Guide, Annex C).

Box P: Fee for Priority Document (Rule 17.1(b)): Where Total Box: The total of the amounts entered in boxes T, S,
the applicant has requested, by marking the applicable check- I, P, RP and ES should be entered in this box. If the applicant
box in Box No. VI of the request, that the receiving Office so wishes, the currency, or currencies, in which the fees are
prepare and transmit to the International Bureau a certified paid may be indicated next to or in the total box.
copy of the earlier application the priority of which is claimed,
the amount of the fee prescribed by the receiving Office for MODE OF PAYMENT
such service may be entered (for information, see the PCT
Applicant’s Guide, Annex C). In order to help the receiving Office identify the mode of
payment of the prescribed fees, it is recommended that the
If that fee is not paid at the latest before the expiration of applicable check-box(es) be marked. Credit card details should
16 months from the priority date, the receiving Office may not be included on the fee calculation sheet. They should be
consider the request under Rule 17.1(b) as not having been furnished separately and by secure means acceptable to the
made. receiving Office.

Box RP: Fee for the restoration of the right of priority AUTHORIZATION TO CHARGE
(Rule 26bis.3(d)): Where the applicant has requested within (OR CREDIT) DEPOSIT OR CURRENT ACCOUNT
the applicable time limit under Rule 26bis.3(e) that the receiving
Office restore the right of priority in connection with any earlier The receiving Office will not charge (or credit) fees to
application the priority of which is claimed in the international deposit or current accounts unless the deposit or current account
application, the amount of the fee prescribed by the receiving authorization is signed and indicates the deposit or current
Office for such service may be entered (for information, see the account number.
PCT Applicant’s Guide, Annex C).

Notes to the fee calculation sheet (Annex to Form PCT/RO/101) (page 2) (July 2017)
Annex VIII
EPO Form 1003 Authorisation

151
 Bitte vor dem Ausfüllen des Formblatts Rückseite beachten. /
Vollmacht 1 Please read the notes overleaf before completing the form. /
Veuillez lire les remarques au verso avant de remplir le formulaire.
Authorisation 1
Pouvoir 1

Zeichen des Anmelders / Applicant’s reference / Référence du demandeur Anmelde-/Patentnummer / Application /Patent No. /
(max. 15 Positionen / max. 15 spaces / 15 caractères au maximum) No de la demande (du brevet)

Ich (Wir) 2 /
I (We) 2 /
Je (Nous) 2

bevollmächtige(n) hiermit 3 /
do hereby authorise 3 /
autorise (autorisons) par la présente 3

sowie weitere auf einem gesonderten Blatt angegebene Vertreter / and additional representatives indicated
on a separate sheet / ainsi que d’autres mandataires mentionnés sur une feuille supplémentaire

mich (uns) zu vertreten als / to represent me (us) as / à me (nous) représenter en tant que

Anmelder oder Patentinhaber, / applicant(s) or patent proprietor(s), / Einsprechenden (Einsprechende), / opponent(s), /

demandeur(s) ou titulaire(s) du brevet, opposant(s),

und in den durch das Europäische Patentübereinkommen geschaffenen Verfahren

betreffend die folgende(n) europäische(n) Patentanmeldung(en) oder das (die)
folgende(n) europäische(n) Patent(e) 4 für mich (uns) zu handeln und Zahlungen
für mich (uns) in Empfang zu nehmen: /
to act for me (us) in all proceedings established by the European Patent Convention
concerning the following European patent application(s) or patent(s) 4 and to receive
payments on my (our) behalf: /
à agir en mon (notre) nom dans toute procédure instituée par la Convention sur
le brevet européen et concernant la (les) demande(s) de brevet ou le (les)
brevet(s) européen(s) 4 suivant(s) et à recevoir des paiements en mon (notre) nom :
Fortsetzung auf einem gesonderten Blatt. / Additional applications or patents are
indicated on a supplementary sheet. / Suite sur une feuille supplémentaire.

Diese Vollmacht gilt auch für Verfahren nach dem Vertrag über die internationale Zusammenarbeit auf dem Gebiet des Patentwesens. /
This authorisation also applies to any proceedings established by the Patent Cooperation Treaty. /
Ce pouvoir s’applique également à toute procédure instituée par le Traité de coopération en matière de brevets.

Diese Vollmacht gilt auch für etwaige europäische Teilanmeldungen. / This authorisation also covers any European divisional applications. /
Ce pouvoir vaut également pour toute demande divisionnaire européenne.

Es kann eine Untervollmacht erteilt werden. / A sub-authorisation may be given. / Ce pouvoir peut être délégué.

Ich (Wir) widerrufe(n) hiermit frühere Vollmachten in Bezug auf die oben genannte(n) Anmeldung(en) oder das (die) oben genannte(n) Patent(e) 5. /
I (We) hereby revoke all previous authorisations in respect of the above application(s) or patent(s) 5. /
Je révoque (Nous révoquons) par la présente tout pouvoir antérieur, donné pour la (les) demande(s) ou le (les) brevet(s) mentionné(e)(s) ci-dessus 5.

Ort / Place / Lieu Datum / Date

Unterschrift(en) 6 / Signature(s) 6
EPA/EPO/OEB 1003 11.11

Das Formblatt muss vom (von den) Vollmachtgeber(n) eigenhändig unterzeichnet sein (bei juristischen Personen vom Unterschriftsberechtigten). Nach der Unterschrift bitte den (die) Namen
des (der) Unterzeichneten in Druckschrift wiederholen und bei juristischen Personen die Stellung des Unterschriftsberechtigten innerhalb der Gesellschaft angeben. /
The form must bear the personal signature(s) of the authoriser(s) (in the case of legal persons, that of the officer empowered to sign). After the signature, please print the name(s) of the
signatory(ies) adding, in the case of legal persons, his (their) position within the company. /
Le formulaire doit être signé de la propre main du (des) mandant(s) (dans le cas de personnes morales, de la personne ayant qualité pour signer).
Veuillez ajouter en caractères d'imprimerie, après la signature, le (les) nom(s) du (des) signataire(s) en mentionnant, dans le cas de personnes
morales, ses (leurs) fonctions au sein de la société. bitte wenden / P.T.O. / T.S.V.P.

1
I. Fußnoten zur Vorderseite I. Footnotes to text overleaf I. Renvois concernant le texte
figurant au recto
1 a) Die Verwendung dieses Formblatts wird 1 (a) The use of this form is recommended for 1 a) Il est recommandé d’utiliser ce formulaire
empfohlen für die Bevollmächtigung von authorising representatives before the pour mandater des représentants devant
Vertretern vor dem Europäischen Patent- European Patent Office – professional re- l’Office européen des brevets – manda-
amt – zugelassene Vertreter, Rechtsan- presentatives, legal practitioners under Ar- taires agréés, avocats au sens de l’article
wälte im Sinne des Artikels 134 (8) und ticle 134(8) and associations of represen­ 134(8) et groupements de mandataires
Zusammenschlüsse von Vertretern nach tatives pursuant to Rule 152(11) – and for conformément à la règle 152(11) – ainsi
Regel 152 (11) – sowie für die Bevollmäch- authorising employees under Article 133(3), que pour mandater des employés au sens
tigung von Angestellten im Sinne des first sentence; as regards the second de l’article 133(3), première phrase; il
Artikels 133 (3) Satz 1; zu Satz 2 sind sentence, no implementing regulation has n’a pas encore été arrêté de dispositions
bisher keine Ausführungsbestimmungen yet been issued. d’application relatives à la deuxième phra-
ergangen. Professional representatives who identify se. En vertu de la règle 152(1) en liaison
Zugelassene Vertreter, die sich als solche themselves as such are required under avec la décision de la Présidente de l’OEB
zu erkennen geben, müssen nach Regel Rule 152(1), in conjunction with the en date du 12 juillet 2007, les mandataires
152 (1) in Verbindung mit dem Beschluss decision of the President of the EPO dated agréés qui se font connaître comme tels
der Präsidentin des EPA vom 12. Juli 2007 12 July 2007, to file a signed authorisation ne sont tenus de déposer un pouvoir signé
nur in bestimmten Fällen eine unterzeich- only in particular cases (Special edition que dans certains cas (Edition spéciale
nete Vollmacht einreichen (Sonderausgabe No. 3, OJ EPO 2007, L.1.). However, a legal n° 3, JO OEB 2007, L.1.). En revanche,
Nr. 3, ABl. EPA 2007, L.1.). Hingegen practitioner entitled to act as a professional les avocats habilités à agir en qualité de
müssen nach Artikel 134 (8) vertretungs- representative in accordance with Article mandataires en vertu de l’article 134(8),
berechtigte Rechtsanwälte sowie Ange- 134(8), or an employee acting for an appli- ainsi que les employés qui agissent pour
stellte, die für einen Anmelder gemäß cant in accordance with Article 133(3), le compte d’un demandeur conformément
Artikel 133 (3) Satz 1 handeln und keine first sentence, but who is not a professional à l’article 133(3), 1ère phrase, et qui ne sont
zugelassenen Vertreter sind, eine unter- representative, must file a signed pas des mandataires agréés, doivent dépo-
zeichnete Vollmacht einreichen. authorisation. ser un pouvoir signé.
b) Zutreffendes ist anzukreuzen. (b) Where applicable place a cross in the box. b) Faire une croix dans la case si nécessaire.

2 Name(n) und Anschrift(en) sowie Staat des 2 Name(s) and address(es) of the party (parties) 2 Nom(s) et adresse(s), Etat du siège ou du
Sitzes oder Wohnsitzes des Vollmachtgebers giving the authorisation and the State in which domicile du (des) mandant(s), dans les condi-
(der Vollmachtgeber) nach Maßgabe der nach- his (their) residence or principal place of busi- tions prévues à la règle 41(2) c) et reproduites
stehenden Regel 41 (2) c): „Bei natürlichen ness is located, in accordance with Rule 41(2) ci-après : «Les personnes physiques doivent
Personen ist der Familienname vor den Vor- (c): „Names of natural persons shall be indica- être désignées par leur nom suivi de leurs
namen anzugeben. Bei juristischen Personen ted by the person’s family name, followed by prénoms. Les personnes morales et les socié-
und Gesellschaften, die juristischen Personen his given names. Names of legal persons, as tés assimilées aux personnes morales en ver-
gemäß dem für sie maßgebenden Recht well as of bodies equivalent to legal persons tu du droit dont elles relèvent doivent figurer
gleichgestellt sind, ist die amtliche Bezeich- under the law governing them, shall be indica- sous leur désignation officielle. Les adresses
nung anzugeben. Anschriften sind gemäß ted by their official designations. Addresses doivent être indiquées selon les exigences
den üblichen Anforderungen für eine schnelle shall be indicated in accordance with applica- usuelles en vue d’une distribution postale ra-
Postzustellung an die angegebene Anschrift ble customary requirements for prompt postal pide à l’adresse indiquée et comporter en tout
anzugeben und müssen in jedem Fall alle delivery and shall comprise all the relevant état de cause toutes les indications administra-
maßgeblichen Verwaltungseinheiten, gegebe- administrative units, including the house tives pertinentes, y compris, le cas échéant,
nenfalls bis zur Hausnummer einschließlich, number, if any.“ le numéro de la maison.»
enthalten.“

3 Name(n) und Geschäftsanschrift des Vertre- 3 Name(s) and address of place of business of 3 Nom(s) et adresse professionelle du (des)
ters (der Vertreter) nach Maßgabe der in Ziff. 2 the representative(s) in accordance with Rule mandataire(s), dans les conditions prévues à
wiedergegebenen Regel 41 (2) c). 41(2)(c) (cf. note 2 above). la règle 41(2) c) et mentionnées au point 2.

4 Nummer der Anmeldung(en) (falls bekannt) 4 Application No(s). or patent No(s). (if known) 4 Numéro de la (des) demande(s) (s’il est connu)
oder des Patents (der Patente) und Bezeich­ and title(s) of the invention(s). ou du (des) brevet(s) et titre(s) de l’invention
nung(en) der Erfindung(en). (des inventions).

5 Der Widerruf erfasst nicht eine gegebenenfalls 5 The revocation does not extend to any general 5 La révocation ne s’étend pas à un pouvoir gé-
erteilte allgemeine Vollmacht. authorisation which may have been given. néral éventuellement donné.

6 Übliche Unterschrift des (der) Vollmachtgeber(s). 6 Usual signature(s) of person(s) giving the aut- 6 Signature(s) habituelle(s) du (des) mandant(s).
Wird die Vollmacht für eine juristische Person horisation. Where the authorisation is signed Lorsque le pouvoir est signé au nom d’une per-
unterzeichnet, so dürfen nur solche Personen on behalf of a legal person, only such persons sonne morale, seules sont habilitées à signer
unterzeichnen, die nach Gesetz und/oder as are entitled to sign by law and/or in accor- les personnes auxquelles cette qualité est
Satzung der juristischen Person dazu berech- dance with the articles of association or equi- reconnue en vertu de la loi et/ou du statut de
tigt sind (Artikel 58, Regel 152 (1)). Es ist ein valent of the legal person may do so (Article la personne morale concernée (article 58, rè-
Hinweis auf die Unterschriftsberechtigung des 58, Rule 152(1)). An indication is to be given of gle 152(1)). Il convient d’indiquer la qualité du
Unterzeichneten zu geben (z. B. Geschäfts­ the signatory’s entitlement to sign (e.g. presi- signataire (par exemple: président, directeur,
führer, Prokurist, Handlungsbevollmächtigter; dent, director, company secretary; Geschäfts- fondé de pouvoir; Geschäftsführer, Prokurist,
president, director, company secretary; prési- führer, Prokurist, Handlungsbevollmächtigter; Handlungsbevollmächtigter; president, direc-
dent, directeur, fondé de pouvoir). président, directeur, fondé de pouvoir). If any tor, company secretary).
Unterzeichnet ein sonstiger Angestellter einer other employee of a legal person signs by vir- Il y a lieu de signaler les cas où un autre em-
juristischen Person aufgrund einer speziellen tue of a special authorisation conferred by the ployé d’une personne morale signe en vertu
Vollmacht der juristischen Person, so ist dies legal person, this is to be indicated and a copy d’un pouvoir spécial conféré par la personne
anzugeben; von der speziellen Vollmacht of the special authorisation, which need not morale et de fournir alors une copie, qui peut
ist eine Kopie, die nicht beglaubigt zu sein be certified, is to be supplied. An authorisation ne pas être certifiée conforme, de ce pouvoir
braucht, beizufügen. Eine Vollmacht mit der bearing the signature of a person not entitled spécial. Un pouvoir portant la signature d’une
Unterschrift einer nicht zeichnungsberech- so to sign will be treated as an unsigned aut- personne non habilitée à signer sera considéré
tigten Person wird als nicht unterzeichnete horisation. comme non signé.
Vollmacht behandelt.

II. Hinweise II. Notices II. Notes

a) Erstreckt sich die Vollmacht auf mehrere (a) Authorisations covering more than one a) Si le pouvoir est donné pour plusieurs
Anmeldungen oder Patente, so ist sie in application or patent are to be filed in the demandes ou plusieurs brevets, il doit
der entsprechenden Stückzahl einzurei- corresponding number of copies être fourni un nombre correspondant
chen (vgl. Regel 152 (2)). (cf. Rule 152(2)). d’exemplaires (cf. règle 152(2)).
b) Alle Entscheidungen, Ladungen, Be- (b) All decisions, summonses and communi- b) Toutes les décisions, citations, notifications
scheide und Mitteilungen werden an den cations will be sent to the representative seront adressées au mandataire (voir
Vertreter übersandt (vgl. Regel 130). Im (cf. Rule 130). In cases where employees règle 130). Dans le cas où des employés
EPA/EPO/OEB 1003 11.11

Fall der Bevollmächtigung von Angestellten are authorised under Article 133(3), these au sens de l’article 133(3) sont mandatés,
im Sinne des Artikels 133 (3) werden die documents will be sent to the applicant. les pièces mentionnées sont envoyées au
genannten Schriftstücke dem Anmelder (c) Rule 152(9) states: ”Unless it expressly demandeur.
übersandt. provides otherwise, an authorisation shall c) La règle 152(9) stipule: «Sauf s’il en dis­
c) Regel 152 (9) bestimmt: „Sofern die Voll- not terminate vis-à-vis the European Patent pose autrement, le pouvoir ne prend pas
macht nichts anderes bestimmt, erlischt sie Office upon the death of the person who fin, à l’égard de l’Office européen des bre-
gegenüber dem Europäischen Patentamt gave it.“ vets, au décès du mandant.»
nicht mit dem Tod des Vollmachtgebers.“ (d) See also Communication on matters con- d) Pour le reste, se reporter à la Communi-
d) Im Übrigen vgl. die Mitteilung zu Fragen cerning representation before the EPO in cation concernant les questions relatives
der Vertretung vor dem EPA im Amtsblatt the Official Journal EPO 4/1978, 281 ff. à la représentation près l’OEB, parue au
EPA 4/1978, 281 ff. Journal officiel de l’OEB, 4/1978, 281 s.
Annex IX
Form PCT/IPEA/401 Demand and Notes

155
 The demand must be filed directly with the competent International Preliminary Examining Authority or, if two or more Authorities are competent,
with the one chosen by the applicant. The full name or two-letter code of that Authority may be indicated by the applicant on the line below:
IPEA/

PCT CHAPTER II
DEMAND
under Article 31 of the Patent Cooperation Treaty:
The undersigned requests that the international application specified below be the subject of
international preliminary examination according to the Patent Cooperation Treaty.

For International Preliminary Examining Authority use only

Identification of IPEA Date of receipt of DEMAND

Applicant’s or agent’s file reference

Box No. I IDENTIFICATION OF THE INTERNATIONAL APPLICATION

International application No. International filing date (day/month/year) (Earliest) Priority date (day/month/year)

Title of invention

Box No. II APPLICANT(S)

Name and address: (Family name followed by given name; for a legal entity, full official designation. Telephone No.
The address must include postal code and name of country.)

Facsimile No.

Applicant’s registration No. with the Office

E-mail authorization: Marking one of the check-boxes below authorizes the International Bureau and the International Preliminary Examining
Authority to use the e-mail address indicated in this Box to send notifications issued in respect of this international application if those offices
are willing to do so.
as advance copies followed by paper notifications; or exclusively in electronic form (no paper notifications will be sent).
E-mail address: __________________________________________________________________________
State (that is, country) of nationality: State (that is, country) of residence:

Name and address: (Family name followed by given name; for a legal entity, full official designation. The address must include postal code and name of country.)

State (that is, country) of nationality: State (that is, country) of residence:

Further applicants are indicated on a continuation sheet.

Form PCT/IPEA/401 (first sheet) (July 2016) See Notes to the demand form
 International application No.
Sheet No. . . .

Continuation of Box No. II APPLICANT(S)

If none of the following sub-boxes is used, this sheet should not be included in the demand.

Name and address: (Family name followed by given name; for a legal entity, full official designation. The address must include postal code and name of country.)

State (that is, country) of nationality: State (that is, country) of residence:

Name and address: (Family name followed by given name; for a legal entity, full official designation. The address must include postal code and name of country.)

State (that is, country) of nationality: State (that is, country) of residence:

Name and address: (Family name followed by given name; for a legal entity, full official designation. The address must include postal code and name of country.)

State (that is, country) of nationality: State (that is, country) of residence:

Name and address: (Family name followed by given name; for a legal entity, full official designation. The address must include postal code and name of country.)

State (that is, country) of nationality: State (that is, country) of residence:

Further applicants are indicated on another continuation sheet.

Form PCT/IPEA/401 (continuation sheet) (July 2016) See Notes to the demand form
 International application No.
Sheet No. . . .

Box No. III AGENT OR COMMON REPRESENTATIVE; OR ADDRESS FOR CORRESPONDENCE

The following person is agent common representative

and has been appointed earlier and represents the applicant(s) also for international preliminary examination.
is hereby appointed and any earlier appointment of (an) agent(s)/common representative is hereby revoked.
is hereby appointed, specifically for the procedure before the International Preliminary Examining Authority, in addition to
the agent(s)/common representative appointed earlier.
Name and address: (Family name followed by given name; for a legal entity, full official designation. Telephone No.
The address must include postal code and name of country.)

Facsimile No.

Agent’s registration No. with the Office

E-mail authorization: Marking one of the check-boxes below authorizes the International Bureau and the International Preliminary Examining
Authority to use the e-mail address indicated in this Box to send notifications issued in respect of this international application if those offices
are willing to do so.
as advance copies followed by paper notifications; or exclusively in electronic form (no paper notifications will be sent).
E-mail address: ___________________________________________________________________________
Address for correspondence: Mark this check-box where no agent or common representative is/has been appointed and the
space above is used instead to indicate a special address to which correspondence should be sent.
Box No. IV BASIS FOR INTERNATIONAL PRELIMINARY EXAMINATION

Statement concerning amendments:*

1. The applicant wishes the international preliminary examination to start on the basis of:
the description as originally filed, or
as amended under Article 34
the sequence listing as originally filed, or
(if any)
as amended under Article 34:
in the form of an Annex C/ST.25 text file
on paper or in the form of an image file
the claims as originally filed, or
as amended under Article 19, and/or
as amended under Article 34
the drawings as originally filed, or
(if any)
as amended under Article 34
2. The applicant wishes any amendment to the claims under Article 19 to be considered as reversed.
3. Where the IPEA wishes to start the international preliminary examination at the same time as the international search in
accordance with Rule 69.1(b), the applicant requests the IPEA to postpone the start of the international preliminary
examination until the expiration of the applicable time limit under Rule 69.1(d).
4. The applicant expressly wishes the international preliminary examination to start earlier than at the expiration of the applicable
time limit under Rule 54bis.1(a).
* Where no check-box is marked, international preliminary examination will start on the basis of the international application
as originally filed or, where a copy of amendments to the claims under Article 19 and/or amendments of the international application
under Article 34 are received by the International Preliminary Examining Authority before it has begun to draw up a written opinion
or the international preliminary examination report, as so amended.
Language for the purposes of international preliminary examination: _______________________________________________
which is the language in which the international application was filed.
which is the language of a translation furnished for the purposes of international search.
which is the language of publication of the international application.
which is the language of the translation (to be) furnished for the purposes of international preliminary examination.

Box No. V ELECTION OF STATES

The filing of this demand constitutes the election of all Contracting States which are designated and are bound by Chapter II of the PCT.
Form PCT/IPEA/401 (second sheet) (July 2016) See Notes to the demand form
 International application No.
Sheet No. . . .

Box No. VI CHECK LIST

The demand is accompanied by the following elements, in the language referred to in For International Preliminary
Box No. IV, for the purposes of international preliminary examination: Examining Authority use only
received not received
1. translation of international application : sheets
2. amendments under Article 34 : sheets
3. letter accompanying the amendments
under Article 34 (Rule 66.8) : sheets
4. copy (or, where required, translation) of
amendments under Article 19 : sheets
5. copy of the letter accompanying the amendments
under Article 19 (Rules 46.5(b) and 53.9) : sheets
6. copy (or, where applicable, translation) of any
statement under Article 19 (Rule 62.1(ii)) : sheets
7. other (specify) : sheets
The demand is also accompanied by the item(s) marked below:
1. fee calculation sheet 5. sequence listing in the form of an Annex C/ST.25 text file
2. original separate power of attorney 6. other (specify): _____________________________________
_________________________________________________
3. original general power of attorney
_________________________________________________
4. copy of general power of attorney; _________________________________________________
reference number, if any: _________________________________________________

Box No. VII SIGNATURE OF APPLICANT, AGENT OR COMMON REPRESENTATIVE

Next to each signature, indicate the name of the person signing and the capacity in which the person signs (if such capacity is not obvious from reading the demand).

For International Preliminary Examining Authority use only

1. Date of actual receipt of DEMAND:

2. Adjusted date of receipt of demand due

to CORRECTIONS under Rule 60.1(b):

3. The date of receipt of the demand is AFTER the 6. The date of receipt of the demand is AFTER the
expiration of 19 months from the priority date and expiration of the time limit under Rule 54bis.1(a) and
item 4 or 5, below, does not apply. item 7 or 8, below, does not apply.
The applicant has been informed accordingly. 7. The date of receipt of the demand is WITHIN the time
4. The date of receipt of the demand is WITHIN the time limit under Rule 54bis.1(a) as extended by virtue of
limit of 19 months from the priority date as extended Rule 80.5.
by virtue of Rule 80.5.
8. Although the date of receipt of the demand is after the
5. Although the date of receipt of the demand is after the expiration of the time limit under Rule 54bis.1(a), the
expiration of 19 months from the priority date, the delay in arrival is EXCUSED pursuant to Rules 82 or
delay in arrival is EXCUSED pursuant to Rules 82 or 82quater.
82quater.

For International Bureau use only

Demand received from IPEA on:

Form PCT/IPEA/401 (last sheet) (July 2016) See Notes to the demand form
 NOTES TO THE DEMAND FORM (PCT/IPEA/401)
These Notes are intended to facilitate the filling in of the demand form and to give some information concerning international
preliminary examination under Chapter II of the Patent Cooperation Treaty (PCT). For more detailed information, see the
PCT Applicant’s Guide, a WIPO publication, which is available, together with other PCT related documents, at WIPO’s website:
http://www.wipo.int/pct/en/. The Notes are based on the requirements of the PCT, the Regulations and the Administrative
Instructions under the PCT. In case of any discrepancy between these Notes and those requirements, the latter are applicable.

In the demand form and these Notes, “Article”, “Rule” and “Section” refer to the provisions of the PCT, the PCT Regulations
and the Administrative Instructions, respectively.

The demand form shall be typed or printed; check-boxes may be marked by hand with dark ink (Rules 11.9(a) and (b) and 11.14).

The demand form and these Notes may be downloaded from WIPO’s website at the address given above.

IMPORTANT GENERAL INFORMATION What is the Language of Correspondence? (Rules 55.3

and 92.2 and Section 104): Any letter from the applicant to the
Who May File a Demand? (Article 31(2)(a) and Rule 54): IPEA must be in the same language as the international
A demand (for international preliminary examination) may only application to which it relates. However, where the international
be filed by an applicant who is a national or resident of a PCT preliminary examination will be carried out on the basis of a
Contracting State which is bound by Chapter II of the PCT; translation (see Notes to Box No. IV), any letter from the
furthermore, the international application must have been filed applicant to the IPEA must be in the language of the translation.
with a receiving Office of, or acting for, a State bound by The IPEA may authorize the use of other languages for letters
Chapter II. Where there are two or more applicants (for the which do not contain or relate to amendments of the international
same or different elected States) at least one of them must application. Any letter from the applicant to the International
qualify. Bureau must be in English or French, at the choice of the
applicant. However, if the language of the international
Where Must the Demand Be Filed? (Article 31(6)(a)): application is English, the letter must be in English; if the
The demand must be filed with a competent International language of the international application is French, the letter
Preliminary Examining Authority (IPEA). The receiving Office must be in French.
with which the international application was filed will, upon
request, give information about the competent IPEA (or see the
PCT Applicant’s Guide, Annex C). If several IPEAs are
competent, the applicant has the choice and the demand must be BOX No. I
filed with (and the fees must be paid to) the IPEA chosen by the
applicant. The IPEA chosen by the applicant may be identified, Applicant’s or Agent’s File Reference: A file reference
preferably by an indication of the name or two-letter code of the may be indicated, if desired. It should not exceed 12 characters.
IPEA, at the top of the first sheet of the demand in the space Characters in excess of 12 may be disregarded (Section 109).
provided for that purpose.
Identification of the International Application
When Must the Demand Be Filed? (Article 39(1) and (Rule 53.6): The international application number must be
Rule 54bis.1): As long as certain designated Offices are still not indicated in Box No. I. Where the demand is filed at a time
bound by the 30-month time limit under Article 22 for entry into when the international application number has not yet been
the national phase, the demand – because it contains the notified by the receiving Office, the name of that Office must
required election of designated States – must be filed within be indicated instead of the international application number.
19 months from the priority date if the applicant wishes to
postpone entry into the national phase from 20 to 30 months International Filing Date and (Earliest) Priority Date
from the priority date in respect of those designated Offices. For (Section 110): Dates must be indicated by the Arabic number
updated information about those Offices, see the PCT Applicant’s of the day, the name of the month and the Arabic number of the
Guide, National Chapters, Summaries, available on the WIPO year – in that order; after, below or above such indication, the
website at the address indicated above. It is recalled that the date should be repeated in parentheses, using two-digit Arabic
time limit of 30 months from the priority date applies to all other numerals each for the number of the day and for the number of
designated Offices regardless of whether or not a demand is the month followed by the number of the year in four digits, in
filed. that order, and separated by periods, slants or hyphens, for
example, “26 October 2012 (26.10.2012)”, “26 October 2012
If the applicant wishes to file a demand, but not because of (26/10/2012)” or “26 October 2012 (26-10-2012)”. Where the
the reason explained above, the applicable time limit for filing international application claims the priority of several earlier
such demand is three months from the date of transmittal of the applications, the filing date of the earliest application whose
international search report or of the declaration referred to in priority is claimed must be indicated as the priority date.
Article 17(2)(a), and the written opinion established by the
International Searching Authority or 22 months from the priority Title of the Invention: If a new title has been established
date, whichever expires later (see Rule 54bis.1(a)). by the International Searching Authority, that title must be
indicated in Box No. I.
Any demand made after the expiration of the applicable
time limit will be considered as if it had not been submitted and BOX No. II
the IPEA shall so declare.
Applicant(s) (Rule 53.4): All the applicants for the elected
In Which Language Must the Demand Be Filed? States must be indicated in the demand. It should be noted that
(Rule 55.1): The demand must be filed in the language in which those persons named as “inventor only” in the request need not
international preliminary examination will be carried out (see be named in the demand.
Notes to Box No. IV).
Notes to the demand form (PCT/IPEA/401) (page 1) (July 2016)
 page 2

Insert in Box No. II of the demand the required indications Where an additional person is appointed specifically for the
as in Boxes Nos. II and III of the request. The Notes to the procedure before the IPEA, all notifications issued by the IPEA
request apply mutatis mutandis. If there are two or more will be addressed only to that additional person.
applicants for the States elected in the demand, give the required
indications for each of them; if there are more than three A separate power of attorney must be filed with the IPEA,
applicants, make the required indications on the “Continuation the International Bureau or the receiving Office, if the person
Sheet”. appointed at the time the demand is filed (i.e., was not appointed
earlier) signs the demand on behalf of the applicant (Rule 90.4).
If different applicants were indicated in the request for However, the receiving Office, the International Bureau or the
different designated States, there is no need to again indicate in IPEA may waive the requirement that a separate power of
the demand the States for which a person is applicant, because attorney be filed. For details, see the PCT Applicant’s Guide,
those indications have been made in the request. Annex B(IB), Annex C and Annex E.

Applicant’s registration number with the Office Agent’s registration number with the Office (Rule 53.5):
(Rule 53.4): Where the applicant is registered with the national Where the agent is registered with the national or regional Office
or regional Office that is acting as International Preliminary that is acting as International Preliminary Examining Authority,
Examining Authority, the demand may indicate the number or the demand may indicate the number or other indication under
other indication under which the applicant is so registered. which the agent is so registered.

An E-mail address should be indicated for the person E-mail address (see Notes to Box. No. II).
named in Box No. II in order to allow rapid communication with
the applicant (see Rule 4.4(c)). Any telephone or facsimile Address for Correspondence (Rule 4.4(d) and
number should include the applicable country and area codes. A Section 108): Where an agent is appointed, any correspondence
single e-mail address only should be indicated. intended for the applicant will be sent to the address indicated
for that agent (or for the first-mentioned agent, if more than one
Unless one of the applicable check-boxes is marked, any is appointed). Where one of two or more applicants is appointed
e-mail address supplied will be used only for the types of as common representative, the address indicated for that applicant
communication which might be made by telephone. If one of the in Box No. III will be used.
applicable check-boxes is marked, the International Bureau and
the International Preliminary Examining Authority may, if they Where no agent or common representative is appointed, any
wish to do so, send notifications in respect of the international correspondence will be sent to the address, indicated in Box
application to the applicant by e-mail, thus avoiding processing No. II, of the applicant (if only one person is named as applicant)
or postal delays. Note that not all Offices will send such or of the applicant who is considered to be common representative
notifications by e-mail, (for details about each Office’s procedure (if there are two or more persons named as applicants). However,
see the PCT Applicant’s Guide, Annex B). If the first check-box if the applicant wishes correspondence to be sent to a different
is marked, any such e-mail notification will always be followed address in such a case, that address may be indicated in Box
by the official notification on paper. Only that paper copy of the No. III instead of the designation of an agent or common
notification is considered the legal copy of the notification and representative. In this case, and only in this case, the last check-
only the date of mailing of that paper copy will commence any box of Box No. III must be marked (that is, the last check-box
time limit within the meaning of Rule 80. If the second check- must not be marked if either of the check-boxes “agent” or
box is marked, the applicant requests the discontinuation of the “common representative” in Box No. III has been marked).
sending of paper copies of notifications and acknowledges that
the date of mailing indicated on the electronic copy will BOX No. IV
commence any time limit within the meaning of Rule 80.
Statement Concerning Amendments (Rules 53.2(a)(iv),
Note that it is the applicant’s responsibility to keep any 53.9, 62, 66.1 and 69.1): The international preliminary
e-mail address details up-to-date and to ensure that incoming examination will start on the basis of the international application
e-mails are not blocked, for any reason, on the recipient’s side. as filed or, if amendments have been filed, as amended. Mark
Changes to the e-mail address indicated should be requested to the appropriate check-box(es) to enable the IPEA to determine
be recorded, preferably directly at the International Bureau, when and on what basis it can start international preliminary
under Rule 92bis. Where the e-mail authorization is given both examination.
in respect of the applicant and in respect of an agent or common
representative, the International Bureau and the International Mark the corresponding check-box(es) under No. 1 where
Preliminary Examining Authority will send e-mail the international preliminary examination should start on the
communications only to the appointed agent or common basis of the international application as originally filed or
representative. where amendments are to be taken into account, as the case
may be. Where amendments under Article 19 are to be taken
BOX No. III into account, the applicant should preferably submit a copy of
the amendments made under Article 19, the letter accompanying
Agent or Common Representative (Rules 53.5, 90.1 the amendments (Rules 62.1(ii) and 46.5(b)) and any statement
and 90.2): Mark the applicable check-boxes to indicate first (Rule 62.1(ii)). Where amendments under Article 34 are to be
whether the person named in this Box is agent or common taken into account, the applicant must submit with the Demand
representative, then whether that person has been appointed the amendments of the international application under
earlier (i.e., during the procedure under Chapter I), or is Article 34, together with a letter which must draw attention to
appointed in the demand and any earlier appointment of another the differences caused by the amendments and indicate the
person is revoked, or is appointed specifically for the procedure basis for the amendments in the application as filed and shall
before the IPEA (without revocation of any earlier appointment), also explain the reasons for the amendments (Rule 66.8). If a
in addition to the person(s) appointed earlier. check-box is marked but the demand is not accompanied by the

Notes to the demand form (PCT/IPEA/401) (page 2) (July 2016)

 page 3

documents referred to, the start of international preliminary Time Limit for Furnishing Translation of the
examination will be delayed until the IPEA receives them. International Application (Rule 55.2): Any required
translation of the international application should be furnished
Mark check-box No. 2 if amendments of the claims under (by the applicant) together with the demand. If it is not so
Article 19 have been filed with the International Bureau during furnished, the IPEA will invite the applicant to furnish it
the Chapter I procedure, but the applicant wishes those within a time limit which shall not be less than one month from
amendments to be considered reversed by an amendment under the date of the invitation. That time limit may be extended by
Article 34 (Rule 53.9(a)(ii)). the IPEA.

Mark check-box No. 3 where the applicant wants to keep BOX No. V
the option for the filing of amendments of the claims under
Article 19 open and where the IPEA wishes to start the Election of States (Rule 53.7): The making of a demand
international preliminary examination at the same time as the shall constitute the election of all States which have been
international search in accordance with Rule 69.1(b). The designated and which are bound by Chapter II of the PCT.
applicant may request the IPEA to postpone the start of
international preliminary examination until the expiration of the BOX No. VI
applicable time limit (Rules 46.1, 53.9(b) and 69.1(d)).
Check List: It is recommended that this Box be filled in
Mark check-box No. 4 if the applicant wishes that the carefully in order for the IPEA to determine as soon as possible
international preliminary examination start earlier than at the whether it is in possession of the documents on the basis of
expiration of the applicable time limit under Rule 54bis.1(a). which the applicant wishes international preliminary
examination to start.
Where the ISA and IPEA are not the same Authority,
examination will not commence until the IPEA is in possession Where the international application contains disclosure of
of the international search report, or a notice of the declaration one or more nucleotide and/or amino acid sequences, and a
under Article 17(2)(a) and the written opinion established by the copy of the sequence listing in the form of an Annex C/ST.25
ISA. text file is required by the IPEA, the applicant may furnish
the listing in that form to the IPEA with the demand. If this
The applicable time limit under Rule 54bis.1(a) is three is the case, check-box No. 5 must be marked.
months from the date of transmittal of the international search
report or of the declaration referred to in Article 17(2)(a), and BOX No. VII
the written opinion established by the International Searching
Authority, or 22 months from the priority date, whichever Signature (Rules 53.8, 60.1(a-ter) and 90): The demand
expires later. must be signed by the applicant or by his agent; if there are
several applicants, the demand must be signed by all of them,
If no check-box is marked, refer to the footnote at the or by the common agent or the common representative of all
bottom of the Box. of them. However, if the signature(s) of one or more applicants
is missing, the IPEA will not invite the applicants to furnish the
Language for the Purposes of International Preliminary missing signature(s) provided that at least one of the applicants
Examination (Rule 55.2): Where neither the language in which has signed the demand.
the international application is filed nor the language in which
the international application is published is accepted by the Where the signature on the demand is not that of the
IPEA that is to carry out the international preliminary applicant, but that of the agent or the common representative, a
examination, the applicant must furnish with the demand a separate power of attorney appointing the agent or the common
translation of the international application into a language representative, respectively, or a copy of a general power of
which is both a language accepted by that Authority and a attorney the original of which has already been deposited with
language of publication. the receiving Office or the competent Authority, must be
furnished. The power of attorney must be signed by the
Where such translation has already been furnished to the applicant or, if there is more than one applicant, by at least one
International Searching Authority for the purposes of carrying of them. If the power is not filed with the demand, the IPEA will
out international search and the IPEA is part of the same Office invite the applicant to furnish it, unless it has waived the
or intergovernmental organization as the International Searching requirement for a separate power of attorney (for details about
Authority, the applicant need not furnish another translation. In each IPEA, see the PCT Applicant’s Guide, Annex E).
such a case the international preliminary examination is carried
out on the basis of the translation furnished for the purposes of Important: Should a notice of withdrawal be filed at any
international search. time during the international phase, that notice will have to
be signed by the applicant or, if there are two or more
The language for the purposes of international preliminary applicant’s by all of them (Rule 90bis.5), or by an agent or a
examination should be indicated in Box No. IV and the common representative whose appointment has been effected
corresponding check-box should be marked. by each applicant signing, at his choice, the request, the
demand, a separate power of attorney (Rule 90.4(a)) or a
Language of Amendments (Rule 55.3): Amendments, general power of attorney (Rule 90.5(a)).
letters and statements relating thereto must be in the same
language as that in which the international preliminary
examination is carried out, as explained in the preceding
paragraphs.

Notes to the demand form (PCT/IPEA/401) (page 3) (July 2016)

Annex X
Form PCT/IPEA/401 Fee Calculation Sheet and Notes

165
 CHAPTER II
PCT
FEE CALCULATION SHEET

Annex to the Demand

For International Preliminary Examining Authority use only

International
application No.

Applicant’s or agent’s Date stamp of the IPEA

file reference
Applicant

CALCULATION OF PRESCRIBED FEES

(Applicants may be entitled to a reduction of the preliminary examination fee and the
handling fee as indicated in the PCT Fee Tables (http://www.wipo.int/pct/en/fees.pdf))

P
1. PRELIMINARY EXAMINATION FEE . . . . . . . . .

2. HANDLING FEE . . . . . . . . . . . . . . . . . . . . . . . . . . . . H

3. TOTAL OF PRESCRIBED FEES

Add the amounts entered at P and H
and enter total in the TOTAL box . . . . . . . . . . . . . .
TOTAL

MODE OF PAYMENT
(Not all modes of payment may be available at all IPEAs)

credit card (details should not be postal money order

included on this sheet)
check
authorization to charge deposit or
current account with the IPEA (see below) revenue stamps
bank transfer
other (specify): _____________________
cash _________________________________

AUTHORIZATION TO CHARGE (OR CREDIT) DEPOSIT OR CURRENT ACCOUNT

(This mode of payment may not be available at all IPEAs)
IPEA/ _______________________________________

Authorization to charge the total fees indicated above. Deposit or Current Account No.: __________________

(This check-box may be marked only if the conditions for Date: ________________________________________
deposit or current accounts of the IPEA so permit)
Authorization to charge any deficiency or credit any Name: _______________________________________
overpayment in the total fees indicated above.
Signature: ____________________________________

Form PCT/IPEA/401 (Annex) (July 2016) See Notes to the fee calculation sheet
 NOTES TO THE FEE CALCULATION SHEET
(ANNEX TO FORM PCT/IPEA/401)

The purpose of the fee calculation sheet is to help the applicant to identify the prescribed fees and to calculate the amounts to
be paid. It is strongly recommended that the applicant complete, by entering the appropriate amounts in the boxes provided, and
submit the fee calculation sheet at the time of filing of the demand. This will help the International Preliminary Examining Authority
(IPEA) to verify the calculations and to identify any error in them.

CALCULATION OF PRESCRIBED FEES will be automatically available to any applicant (or applicants)
who is (or are) so entitled on the basis of the indications of
Two fees must be paid for international preliminary name, nationality and residence given in Box No. II of the
examination: demand.

(i) the preliminary examination fee for the benefit of the The fee reduction will be available even if one or more of
IPEA (Rule 58.1); the applicants are not from PCT Contracting States, provided
that each of them is a national and resident of a State that meets
(ii) the handling fee for the benefit of the International the above-mentioned requirements and that at least one of the
Bureau (Rule 57). applicants is a national or resident of a PCT Contracting State
and thus is entitled to file an international application.
Both fees must be paid to the IPEA within one month from
the date on which the demand is submitted or 22 months from Information about PCT Contracting States whose nationals
the priority date, whichever expires later. The amount payable and residents are entitled to a reduction of 90% of certain PCT
is the amount applicable on the date of payment (Rules 57.3 fees, including the handling fee, is contained in the PCT
and 58.1(b). The fees must be paid in a currency acceptable to Applicant’s Guide, Annex C and on the WIPO website (see
the IPEA. http://www.wipo.int/pct/en/), and is also published and regularly
updated in the Official Notices (PCT Gazette) and the PCT
Information about the amount of those fees or about Newsletter.
equivalent amounts in other currencies can be obtained from
the IPEA or the receiving Office. This information is also Calculation of the Handling Fee in Case of Fee
published in the PCT Applicant’s Guide, Annex E, and from Reduction: Where the applicant is (or all applicants are)
time to time in Official Notices (PCT Gazette). entitled to a reduction of the handling fee, the total to be entered
at Box H is 10% of the handling fee.
Box P: The amount of the preliminary examination fee
must be entered in Box P. Total Box: The total of the amounts inserted in Boxes P
and H is the amount which must be paid to the IPEA.
Box H: The amount of the handling fee must be entered in
Box H. MODE OF PAYMENT

Reductions: Applicants may be entitled to reductions to In order to help the IPEA identify the mode of payment of
the preliminary examination fees, which are indicated in the the prescribed fees, it is recommended to mark the applicable
PCT Fee Tables (http://www.wipo.int/pct/en/fees.pdf) and the check-box(es). Credit card details should not be included on
relevant Annex E of the PCT Applicants Guide. If reduced fees the fee calculation sheet. They should be furnished separately.
apply, the reduced amount should be indicated in the fee
calculation sheet. Applicants may also be entitled to a reduction AUTHORIZATION TO CHARGE
to the handling fee, which is explained below. (OR CREDIT) DEPOSIT OR CURRENT ACCOUNT

Reduction of the Handling Fee for Applicants from The applicant should check whether the IPEA allows the
Certain States: An applicant who is a natural person and who use of deposit or current accounts for payment of PCT fees. In
is a national of and resides in a State that is listed as being a State addition, it is recommended that the applicant check what are
whose per capita gross domestic product is below US$ 25,000 the specific conditions applicable to the use of deposit or
(according to the most recent ten year average per capita gross current accounts with the IPEA since not all IPEAs provide the
domestic product figures at constant 2005 US$ values published same services.
by the United Nations), and whose nationals and residents who
are natural persons have filed less than 10 international Finally, if the IPEA is not the same national Office or
applications per year (per million population) or less than 50 intergovernmental organization as that with which the
international applications per year (in absolute numbers) international application was filed, the deposit or current account
according to the most recent 5-year average yearly filing figures with the receiving Office cannot be charged for the purpose of
published by the International Bureau; or an applicant, whether paying the preliminary examination and handling fees due to
a natural person or not, who is a national of and resides in a State the IPEA.
that is listed as being classified by the United Nations as a least
developed country, is entitled, in accordance with the Schedule The IPEA will not charge fees to deposit or current accounts
of Fees, to a reduction of 90% of certain PCT fees including the unless the deposit or current account authorization is signed
handling fee. If there are several applicants, each must satisfy and indicates the deposit or current account number.
the above-mentioned criteria. The reduction of the handling fee

Notes to the fee calculation sheet (Annex to Form PCT/IPEA/401) (July 2016)
Annex XI
Form for entry into the European phase (EPO Form 1200) and Notes

169
Notes on EPA/EPO/OEB Form 1200 for entry into the European phase
(EPO as designated or elected Office)

I. General instructions Use of Form 1200 is recommended. The form

should be typewritten or printed (Rule 50(2) EPC)
These notes explain how to complete to ensure that it is machine-readable.
EPA/EPO/OEB Form 1200. To file international
applications under the Patent Cooperation Treaty If there is not enough space for the required
(PCT) Form PCT/RO/101 should be used. The information, an additional sheet should be filed,
appropriate form to request the grant of a indicating the number and heading (e.g. "2 -
European patent is EPA/EPO/OEB Form 1001. Additional representative(s)"; "6 - Documents
intended for proceedings before the EPO") of
The requirements for entry into the European each section continued in this way.
phase are laid down in the European Patent
Convention (EPC) and its Implementing Filing of documents
Regulations. Further information on entry into the
Form 1200 and attachments must be filed direct
European phase can be obtained from the Euro-
with the EPO.
PCT Guide: PCT procedure at the EPO (10th
edition, January 2017), in particular Section E:
(a) Online
Euro-PCT procedure before the EPO as a
designated (PCT Chapter I) or elected (PCT Form 1200, attached translations and
Chapter II) Office. amendments to the application documents may
be filed in electronic form (OJ EPO 2015, A91),
Forms and brochures
i.e. via EPO online filing, via the EPO case
Forms, brochures, schedules of fees and legal management system (CMS, also referred to as
texts can be downloaded from the EPO's website new online filing) or via the EPO web-form filing
at www.epo.org. service. For more details go to www.epo.org. The
online filing fee is less than the fee for filing in
Accelerated prosecution person, by post or by fax.
For those seeking faster search or examination
for their applications, the "PACE" programme for (b) By fax
accelerated prosecution of European patent
The above documents may also be filed by fax.
applications (OJ EPO 2015, A93) offers effective
Confirmation on paper is required only if the EPO
options for shortening the processing time.
specifically requests it (see Special edition No. 3,
However, PACE requests filed before the end of OJ EPO 2007, A.3.).
the international phase will not be effective unless
accompanied by an express request for early (c) By post or in person
processing under Article 23(2) or 40(2) PCT (see
Form 1200 need only be filed in one copy. The
point 12.1).
same applies to attached translations and
For other ways to expedite the European grant amendments to the application documents.
procedure, see Notice from the EPO dated Special rules apply to sequence listings (see II.9).
30 November 2015 (OJ EPO 2015, A94) and
II. Filling in the form
point 12.
The numbering below corresponds to the sections
Entry into the European phase Form 1200
of the form.
Under Rule 159(1) EPC, on entry into the
European phase before the EPO as designated or 1. Applicant
elected Office applicants must perform the acts If on entry into the European phase the address,
specified in Rules 159(1)(a) to (h) and 162(1) nationality, or country of residence or of place of
EPC within 31 months of the filing date or, if business is missing for any applicant (as may
priority has been claimed, the (earliest) priority occur under Rule 26.2bis(b) PCT), this
date. information must be filed on a separate sheet.

1
 An address for correspondence may be given resident abroad, may file the request for
only by applicants who are not obliged to appoint examination in an admissible non-EPO language
a professional representative authorised to act (Article 14(4) EPC), using the space provided.
before the EPO (Article 133 EPC) and have not
own 4.1 Second check box
address, and in an EPC contracting state. For applicants who file the request for
Addresses for correspondence accepted for examination in an admissible non-EPO language
proceedings in the international phase but which in addition to the (pre-crossed) request in the
do not fulfil those conditions will not be accepted language of the proceedings, the examination fee
in proceedings before the EPO in the European is reduced by 30% provided they are an SME, a
phase (see OJ EPO 2014, A99). natural person, a non-profit organisation, a
2. Representative (Articles 133 and 134 EPC) university or a public research organisation
(Rule 6(4) EPC, Article 14(1) RFees).
Applicants not having their residence or principal
place of business in an EPC contracting state Under Rule 6(6) EPC, applicants wishing to
must be represented by a professional benefit from the fee reduction must declare that
representative and act through him in all they are an entity or natural person covered by
proceedings established by the EPC Rule 6(4) EPC. They must file this declaration at
(Article 133(2) EPC). the latest by the time of payment of the fee in
question, either by crossing this box or separately
3. Authorisation (Rule 152 EPC) (for this purpose, non-mandatory EPA/EPO/OEB
Form 1011 is available from the EPO website). If
Under Rule 152(1) to (3) EPC in conjunction with
there are multiple applicants, for the reduction to
the decision of the President of the EPO dated
apply each one must be an entity or a natural
12 July 2007, professional representatives who
person within the meaning of Rule 6(4) EPC and
identify themselves as such are required to file a
entitled to file documents in an admissible non-
signed authorisation only in particular
EPO language (Article 14(4), Rule 6(3) EPC). For
circumstances (see Special edition No. 3,
more details see Notice from the EPO dated
OJ EPO 2007, L.1). However, a legal practitioner
10 January 2014 concerning amended Rule 6
entitled to act as professional representative
EPC and Article 14(1) RFees (OJ EPO, 2014,
under Article 134(8) EPC or an employee acting
A23).
for an applicant under Article 133(3), first
sentence, EPC who is not a professional The request for examination is available in all
representative must file a signed authorisation admissible non-EPO languages on the EPO
unless an authorisation which expressly website.
empowers him to act in proceedings established
by the EPC has previously been filed with the The request for examination (i.e. written request
EPO as receiving Office. plus payment of the examination fee) must be
filed either up to six months from the date on
If an association registered with the EPO is which the international search report (or the
appointed as representative (Rule 152(11) EPC) declaration under Article 17(2)(a) PCT) was
(see OJ EPO published (Article 153(6) EPC) or within
registered name and registration number must be 31 months from the filing date or, where
indicated. applicable, the (earliest) priority date, whichever
period ends later. In practice this means that the
If an authorisation is required, the use of
request for examination must be submitted within
EPA/EPO/OEB Form 1003 is recommended for
the 31-month period (Rule 159(1)(f) EPC), unless
individual authorisations and EPO Form 1004 for
the international search report was published late.
general authorisations.
5. Additional copies of the documents cited in
4. Request for examination (Articles 150(2) and
the supplementary European search report
94 and Rule 70 EPC)
4.1 First check box One or more additional sets of copies of the
documents cited in the supplementary European
The request for examination is not deemed to be search report (see Rule 65 EPC) can be ordered
filed until the examination fee has been paid against payment of the flat-rate fee(s).
(Article 94(1) and Rule 70(1) EPC). The box for
the request is pre-crossed in section 4.1 of 6. Documents intended for proceedings before
Form 1200. the EPO (Rule 159(1)(b) EPC) and response to
the written opinion established by the EPO
Persons having their residence or principal place (Rule 161(1) EPC)
of business in an EPC contracting state with an
When an application enters the European phase
official language other than English, French or
applicants must specify the application
German, and nationals of that state who are
documents, as originally filed or as amended, on

2
which the European grant procedure is to be The applicant must therefore clearly indicate the
based (Rule 159(1)(b) EPC). Section 6 allows documents which are to form the basis for further
them to clarify whether they wish to proceed with prosecution of the application by crossing the
appropriate boxes in section 6.1 or 6.2 as
the published documents, whereby any applicable.
amended claims filed with the International
Bureau under Article 19 PCT replace the In all cases, the applicant should specify in the
originally filed claims, unless expressly stated table on page 8 of Form 1200 the documents
to the contrary in proceedings before the which are to be used for the European phase and
EPO as designated Office without PCT therefore form the basis for calculation of any
Chapter II (section 6.1), or additional fee. Any exceptional circumstances
which may need further explanation must be
the documents on which the international clarified on an additional sheet.
preliminary examination report is based in
proceedings before the EPO as elected Office The applicant can also amend the application at
under PCT Chapter II (section 6.2). any time within a non-extendable period of six
months from the communication (Forms 1226AA,
Sections 6.1 and 6.2 also provide the possibility to 1226BB, 1226CC) under Rule 161(1) and (2)
indicate that amended documents filed on entry EPC, which is issued shortly after effective entry
into the European phase are to form the basis for into the European phase.
the grant procedure.
Pages of amendments filed during the six-month
For Euro-PCT applications where a period under Rule 161 EPC are not taken into
supplementary European search report will not be account in the calculation of the additional fee as
prepared, the following applies (see Guidelines for part of the filing fee. Consequently, if
Examination in the EPO, E-IX, 3.2, for details): amendments are filed at this stage which reduce
the number of pages already paid for, no refund of
Where the EPO has acted as the International the additional fee will be made.
Searching Authority (ISA) and, if a demand under
Article 31 PCT was filed, also as the International If application documents filed on entry into the
Preliminary Examining Authority (IPEA), or as the European phase contain handwritten
Supplementary International Searching Authority amendments, an invitation to remedy this
(SISA), the applicant will be required to respond deficiency will be issued, and in case of non-
to any negative written opinion (WO-ISA) compliance the application will be refused (see
prepared by the EPO as ISA, or, where Notice from the EPO dated 8 November 2013
applicable, to the negative international concerning application of Rules 49 and 50 EPC to
preliminary examination report (IPER) prepared handwritten amendments, OJ EPO 2013, 603).
by the EPO as IPEA, or to the objections raised in
the explanations given in the Supplementary Whenever amendments are filed, the applicant
International Search Report (SISR) under must identify them and indicate the basis for them
Rule 45bis.7(e) PCT, as the case may be. The in the application as filed (Rule 137(4) EPC) (see
time limit for response is six months from the Guidelines for Examination in the EPO, E-VIX,
invitation under Rule 161(1) EPC (see OJ EPO 3.4, and H-III, 2.1 and 2.1.1). If he fails to do so,
2010, 634). Failure to respond in due time will the examining division may issue a
lead to the application being deemed to be communication under Rule 137(4) EPC
withdrawn (Rule 161(1) EPC). requesting the correction of the deficiency within a
non-extendable period of one month. If he then
New amendments (Articles 28 and 41 PCT) fails to reply within that period, the application will
and/or comments which are filed on entry into the be deemed to be withdrawn under Article 94(4)
regional phase before the EPO will be considered EPC.
to constitute a response to the WO-ISA, or to the
IPER or the explanations given in the SISR, as If the applicant has supplied test reports in
the case may be, if the applicant indicates on proceedings before the EPO as International
Form 1200 that such amendments and/or Preliminary Examining Authority, the EPO
comments are to form the basis for further assumes that it may also use them in the
prosecution of the application. Similarly, European grant proceedings.
amendments under Article 19 and/or 34 PCT filed
in the international phase and maintained on entry 6.3 Copies of the search results (Rule 141(1) EPC)
into the European phase by making the For each of the previous applications whose
appropriate entries on Form 1200 may constitute priority is claimed, a copy of the search results
a response, subject to certain requirements (see produced by the authority with which the
Guidelines for Examination in the EPO, C-III, 2.2, application was filed (Rule 141(1) EPC) has to be
and E-IX, 3, for details). supplied. This obligation applies to European
patent applications and international applications

3
 filed on or after 1 January 2011 (see 8. Biological material
OJ EPO 2010, 410, OJ EPO 2011, 64, and
To enable the EPO to check compliance with
OJ EPO 2013, 217).
Rule 31 EPC, the receipt issued by the depositary
This box is to be crossed only if the copies of the institution is to be submitted to the EPO.
documents are indeed supplied when filing the Applicants are strongly advised to submit the
form for entry into the European phase. If, receipt when filing this form.
however, a copy of the search results is included
Waiver under Rule 33(1) and (2) EPC
in the file by the EPO, no action is required on the
part of the applicant (see OJ EPO 2016, A19). Applicants may waive their right under Rule 33(1)
and (2) EPC to an undertaking from the requester
7. Translations to issue a sample of the biological material,
7.1 Translation of the international application provided that they are the depositor of the
biological material concerned. This waiver must
If the international application was not published be expressly declared to the EPO in the form of a
in an EPO official language, the applicant must separate, signed statement. It must specify the
furnish the EPO with a translation of that biological material concerned (depositary
application in such a language within 31 months institution and accession number or depositor's
of the filing date or, where applicable, the reference number as shown in the application
(earliest) priority date. documents). It may be submitted at any time.
The proceedings in the European phase will be 9. Nucleotide and amino acid sequences
conducted in the language of the translation. The
translation must include the description, the 9.1 If the application discloses one or more nucleotide
and/or amino acid sequences, a sequence listing
claims as originally filed, any text in the drawings,
in electronic form complying with the
and the abstract. It must also include any
Administrative Instructions under the PCT (WIPO
indications under Rule 13bis.3 and 13bis.4 PCT in Standard ST.25) is normally available to the EPO
the case of inventions relating to biological as designated/elected Office if such sequence
material and any published request for listing was contained in the international
rectification (Rule 91.3(d) PCT). application in accordance with Rule 5.2(a) PCT,
furnished to the EPO as International Authority
7.2 Translation of the priority application under Rule 13ter.1(a) PCT, or otherwise made
Under Rule 53(3) EPC, applicants may be invited available to it, e.g. by WIPO.
by the EPO to file a translation of the previous
9.2 If the application discloses one or more nucleotide
(priority) application (see also OJ EPO 2013, and/or amino acid sequences and a sequence
150). listing in electronic form complying with the
Administrative Instructions under the PCT (WIPO
Alternatively, they can submit a declaration under Standard ST.25) is not available to the EPO as
Rule 53(3) that the European patent application is designated/elected Office, a standardised
a complete translation of the previous application. electronic sequence listing must be filed on entry
They can do this by crossing the box in into the European phase; otherwise, the EPO will
section 7.3. In this case, no invitation to file a invite the applicant to file the sequence listing
translation of the priority application will be issued. (Rule 163(3) EPC). In this case, a late furnishing
fee is payable. For further information, see
7.4 Claims amended under Article 19 PCT Rules 163(3) and 30(3) EPC, as well as the
decision of the President of the EPO dated
If the applicant wishes the subsequent
28 April 2011 and the Notice from the EPO dated
proceedings to be based on the claims as
18 October 2013 concerning the filing of
amended under Article 19 PCT, the translation sequence listings (OJ EPO 2011, 372, and
must also include those claims, together with any OJ EPO 2013, 542).
explanatory statement (Rule 49.5(a)(ii), 49.5(c)
and (c-bis) PCT) and, in any event, the If the standardised sequence listing is submitted
accompanying letter under Rule 46.5(b) PCT. on entry into the European phase, the applicant
must declare that the subsequently filed sequence
7.5 Translation of annexes listing does not include matter which goes beyond
Where PCT Chapter II applies, applicants must the content of the application as originally filed.
prepare and file translations of all annexes to the The declaration can be made by crossing the
international preliminary examination report relevant box in section 9.2.
(Article 36(2)(b) and (3)(b), Rule 70.16(a) PCT,
10. Designation of contracting states
Rule 74.1 PCT), regardless of whether they are
seeking patent protection for the same version of All the contracting states designated in the
the application documents as was the subject of international patent application and party to the
that report. EPC at the time of its filing are deemed to be
designated (see Article 79(1) EPC). Thus the EPC

4
 contracting states that can be validly designated A request for early processing is effective on the
on entry into the European phase are already date of its filing only if the requirements of
specified in the international phase Rule 159(1) EPC applicable on that date have
(Rule 4.9(a) PCT). For international applications been complied with. The nature of the
entering the regional phase on or after requirements to be met depends on the date on
1 April 2009, payment of the flat-rate designation which the request for early processing is filed (see
fee covers all the EPC contracting states, unless Notice from the EPO dated 21 February 2013
individual designations are expressly withdrawn concerning the request for early processing,
(Article 2, item 3, RFees) (see OJ EPO 2009, OJ EPO 2013, 156, II.7 and 8).
118).
Applicants must take note of the consequences
11. Extension/validation of an effective request for early processing (see
OJ EPO 2013, 156, III.9 and 10). Crossing box
The application and the European patent granted
12.1 must therefore be carefully considered.
in respect of it are extended or validated, in
accordance with section 11 of Form 1200, to An effective request for early processing
those non-EPC contracting states designated for terminates the international phase in respect of
a national patent in the international application the EPO as designated/elected Office. This
with which extension or validation agreements means that the application will be processed
were in force at the time of filing of the immediately as a European application as from
international application. the date the request for early processing is
effective, and reversion to the 31-month time limit
The request for extension or validation for a state
is excluded. This implies, for instance, that the
is deemed withdrawn if the extension/validation
time limits for filing the request for examination
fee is not paid to the EPO within the time limit laid
and paying the examination fee, the designation
down in the EPC for paying the designation fee
fee and the third renewal fee are those applying to
(Rule 159(1)(d) EPC) (see Guidelines for
a European application, and are no longer
Examination in the EPO, A-III, 12).
deferred to expiry of the 31-month time limit under
11.1 Extension of European patent applications and Rule 159(1) EPC.
the resulting European patents may be requested
The automatic debiting of all relevant fees is
for countries with which the EPO has extension
available for requests for early processing filed on
agreements (as at March 2018: Bosnia and
or after 1 November 2017 (see Arrangements for
Herzegovina and Montenegro).
the automatic debiting procedure (AAD,
11.2 Validation of European patent applications and Annexes A.1 and A.2 to the ADA)). However,
the resulting European patents may be requested automatic debiting can only be performed if the
for countries with which the EPO has validation documents referred to in Article 20 PCT are
agreements (as at March 2018: Morocco, the available to the EPO, so that it can establish
Republic of Moldova, Tunisia and Cambodia). The whether or not a page fee for the 36th and each
EPO publishes the necessary information about subsequent page must be debited. These
such agreements on its website and in its Official documents are normally available to the EPO if
Journal in good time before their entry into force.
the international application has already been
12. Acceleration of procedure
published,
The ways in which the European grant procedure
can be expedited in addition to the "PACE" the EPO is the receiving Office, or
request are listed in the Notice from the EPO
dated 30 November 2015 (OJ EPO 2015, A94). the EPO acts as (S)ISA or IPEA.
The options available on entry into the European
In all other cases, if they want the request to take
phase are gathered together in this section for
effect immediately, applicants must pay the
ease of selection.
relevant fees due on filing the request for early
12.1 Early processing processing by a means of payment other than
automatic debiting. Otherwise the request will only
Request for the early start of processing in the take effect on the day on which the EPO receives
European phase ("early entry") the documents referred to in Article 20 PCT from
the IB in accordance with Rule 47.4 PCT.
Applicants who wish the EPO as designated or
elected Office to start processing an application
before expiry of the 31-month time limit under
Rule 159(1) EPC must file an express request for
early processing. The request can be made by
crossing box 12.1.

5
 Applicants are recommended to read the section 12.2, in which case confirmation is
Notice from the EPO dated 21 February 2013 deemed to be given when the supplementary
concerning the request for early processing European search report is transmitted to them.
(OJ EPO 2013, 156). Further information is With regard to the legal consequences, see
available in the Guidelines for Examination in Guidelines for Examination in the EPO, C-VI, 3.
the EPO, E-IX, 2.8, and the Euro-PCT Guide,
10th edition, 427-440. 13. Payment
12.2 Waivers Fees due in respect of a patent application can be
Waiver of communication pursuant to Rules 161 paid in a number of different ways, i.e. by debiting
and 162 EPC a deposit account, by credit card or by bank
transfer. For more information, see "Making
The time limit under Rules 161 and 162 EPC is payments" on the EPO website.
six months (see OJ EPO 2010, 634).
Debiting a deposit account/automatic debiting
In order to accelerate the European grant
procedure applicants can, in addition to filing a The procedure for paying by debiting a deposit
"PACE" request, expressly waive their right to account or by automatic debiting is set out in
the communication under Rules 161(1) or (2) detail in the Arrangements for deposit accounts
and 162 EPC by crossing the first box in (ADA), the Arrangements for the automatic
section 12.2. debiting procedure (AAD, Annex A.1 to the ADA)
and the Information from the EPO concerning the
The EPO will not issue a communication under automatic debiting procedure (Annex A.2 to the
Rules 161(1) or (2) and 162 EPC only if, in ADA) published in the supplementary publication
addition to the "waiver", on entry into the
European phase the applicant has also fulfilled all
the requirements of Rules 161 and 162 EPC (i.e. Careful attention should be paid to the conditions
payment of any claims fees due and, where applicable to the filing of debit orders.
required, submission of a response under
Payment by credit card
Rule 161(1) EPC) for the application to proceed
directly to the supplementary European search or Payments by credit card must be made via the
to examination. To accelerate the processing of
the application further, the applicant can request on the EPO website, using a credit card accepted
accelerated search or examination under the by the EPO (as at December 2017: Master Card
PACE programme (see Notice from the EPO and VISA). The procedure is set out in detail in
dated 30 November 2015 concerning the the Notice from the European Patent Office
programme for accelerated prosecution of concerning the payment of fees by credit card
European patent applications ("PACE"), OJ EPO
2015, A93).
Bank transfers
Where the right to the communication under
Rules 161(1) or (2) and 162 EPC has not been The procedure for paying by bank transfer is set
validly waived, the communication will be issued out in detail in the Notice from the European
and the application will be processed only after Patent Office concerning fee payments via bank
expiry of the six-month period provided for under transfer
those rules, even if a request under the PACE
Payments by bank transfer should be made to the
programme has been filed.
following account with the Commerzbank in
See also Notices from the EPO dated 5 April 2011 Germany:
and 30 November 2015 (OJ EPO 2011, 354 and
Account No. 3 338 800 00 / Sort code 700 800 00
OJ EPO 2015, A94).
IBAN DE20 7008 0000 0333 8800 00
Waiver of the invitation under Rule 70(2) EPC
BIC DRESDEFF700
Applicants who file the request for examination
before receiving the supplementary European Commerzbank AG
search report are asked by the EPO, after the Leopoldstrasse 230
search report has been sent, to confirm within a 80807 Munich
six-month period that they wish to proceed further Germany
with the application (Rule 70(2) EPC). Where they
also have to respond to the search opinion, their For fee information, see "Guidance for the
response is required within this same period payment of fees, costs and prices", which is
(Rule 70a(2) EPC). To accelerate the procedure, published regularly in the EPO's Official Journal.
they can waive their right to be asked for such
confirmation by crossing the second box in

6
 For the fee amounts, see the publication
"Schedule of fees and expenses" or the
"Interactive schedule of fees" available on the
EPO website "European (EPC) fees".

14. Refunds
Any refunds due to an applicant who has a
deposit account with the EPO may be credited to
that account. Applicants who wish this to be done
must indicate the account number and the
If the
account is held by a representative, refunds will
be made to him. Refunds will not be made to
third-party payers, except for the fee for file
inspection or at the express request of a party to
proceedings.

See also Guidelines for Examination in the EPO,

A-X, 10.4.

III. Table for section 6 of Form 1200.3

Documents intended for proceedings
before the EPO
The table is used for calculating the additional fee
for applications comprising more than 35 pages
(Article 2, item 1a, RFees). For further information
see the Euro-PCT Guide, part E-VII.

7
Annex XII
EPO Form 1201 Entry into the European phase before the EPO

187
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