Table of Contents I INTERNATIONAL PHASE BEFORE THE RECEIVING OFFICE AND INTERNATIONAL BUREAU.. 14

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1 Table of Contents I INTERNATIONAL PHASE BEFORE THE RECEIVING OFFICE AND INTERNATIONAL BUREAU.. 14 I.1. Who can file a PCT application? I.1.1. US law and the applicant (declaration of inventorship) I.1.2. Representation requirements before RO I.2. Where and how to file (which RO, which technical means) I.2.1. The competent Receiving Office I.2.2. The application is filed at a non-competent Receiving Office I.2.3. National security checks by the Receiving Office I.2.4. Technical means for filing an International application I.3. Languages of the PCT application I.3.1. Language of the application I.3.2. Translations of the application (when filed in a language not accepted by the ISA) I Receiving Office invitation to file the translation I Failure to provide translation, deemed withdrawal I.3.3. Translations of the application (when filed in a non-publication language accepted for search by ISA) I Receiving Office invitation to file the translation I Failure to provide translation, deemed withdrawal I.3.4. Applications filed at the Dutch or Belgian office where the EPO is ISA I.3.5. Language of abstract and drawings I.3.6. Applications filed in a language not accepted by the Receiving Office I.3.7. Language of applications filed at SE, ES or AT Office as RO and ISA I.3.8. Language of the Request I.4. Designation of states I.4.1. Designation fees I.4.2. Duplicated protection (designating the state from which priority was claimed) I.4.3. Excluded designation of state of priority I.4.4. Extension/validation of EP patents to/in non-epc states via the PCT I Extension agreements I Validation agreements I.4.5. Closure of the national route - obligatory regional designation I.4.6. Withdrawal of designations I.5. Fees due on filing I.5.1. The transmittal fee I.5.2. The International filing fee I.5.3. The search fee and the Receiving Office Peter Watchorn & Andrea Veronese 1

2 I.6. The filing date I.6.1. Minimum requirements for establishing a filing date I.6.2. The application is not entitled to a filing date I Invitation to correct and time limit therefor I Correction of deficiencies by the applicant of his own volition I Later finding of invalid filing date I.7. Late filing / incorporation by reference to priority of elements or parts of application I.7.1. Late filing / incorporation of description or claims as a whole I Procedure for late filing of whole elements I Procedure for incorporation of whole elements I Outcome of incorporation: Yes/No I Language of late filed description and claims I.7.2. Late filing / incorporation of missing parts or missing drawings I Procedure for late filing of parts or drawing I Procedure for incorporation of parts or drawings I Outcome of incorporation: Yes/No I Language of late filed parts of the description and claims I.7.3. Incompatibilities with certain offices I Incompatibilities with Receiving Office law I Incompatibilities with Designated or Elected Office law I.7.4. Review by, and additional requirements of designated or elected offices I.7.5. Correction of missing documents or parts thereof under R91 PCT I.8. Priority right under the PCT I.8.1. Priority claim I.8.2. Supplying the priority document I.8.3. Time limits calculated from the priority I.8.4. Withdrawal of priority claim I.8.5. Correction or addition of a priority claim I.8.6. Correction of the priority according to R91.1 PCT I.8.7. Restoration of the priority period I Procedure for requesting restoration to the Receiving Office and decision thereon I Information on restoration of priority in published application I Restoration of priority - effect and possible review in national or regional phase I Reservations I.9. Examination of formal requirements before the Receiving Office I.9.1. Contents of the application I.9.2. Formality checks by the Receiving Office under Art.14(1)(a) PCT I Presence of the signature I Proper identification of the applicant I Requirement of a title Peter Watchorn & Andrea Veronese

3 I Requirement of an abstract I Physical requirements of an International application I.9.3. Correction of defects detected by the Receiving Office according to Art.14(1)(a) PCT I.9.4. Missing drawings I.9.5. National requirements relating to drawings I.9.6. Use of the standardised request form I.10. Biological sequence listings and the Receiving Office II THE INTERNATIONAL SEARCH, PROCEDURES BEFORE THE ISA AND PUBLICATION II.1. International search and the state of the art II.2. The competent International searching authority (ISA) II.2.1. Cases where more than one ISA is competent II.2.2. The EPO as ISA II.2.3. National offices of EPC states as ISAs II Sweden as ISA II Spain as ISA II Austria as ISA II Finland as ISA II The Nordic Patent Institute as ISA II.3. International type search II.4. The search fee II.5. Refund of International search fee by EPO as ISA II.5.1. Refund of search fee where earlier search report exists on an earlier application II.5.2. Refund of International search fee for formal reasons II.6. Time limit for completing the International search II.7. Application not searched II.7.1. Application not searched due to the presence of certain subject matter II Theories II Plant, animal varieties II Business methods etc II Methods of treatment / diagnosis II Presentations of information II Computer programmes II.7.2. Application not searched due to serious deficiencies II.8. Non-unity in International search II.8.1. Substantive issues II.8.2. Formal issues II The invitation to pay under Art.17(3)(a) PCT and payment of additional fees Peter Watchorn & Andrea Veronese 3

4 II The time limit for paying additional search fees according to Art.17(3)(a) PCT II The content of the invitation under Art.17(3)(a) PCT II The content of the invitation under Art.17(3)(a) PCT - general considerations II The content of the invitation under Art.17(3)(a) PCT - in cases of a posteriori lack of unity II Subsequent invitations to pay additional search fees (cascade a posteriori lack of unity) II.8.3. The protest procedure II Content & language of the protest II The protest fee II Examination of protest by review body [EPO review panel] II Decision on the request for refund of additional search fees II.9. The search report II.10. Written opinion of the ISA (WO-ISA, or Extended International Search Report - EISR) II Basis for the WO-ISA II Amendments and corrections II PCT-Direct [reply to EPO opinion given on priority] II When no WO-ISA is required II Novelty, Inventive Step and Industrial Application in the WO-ISA II Prior art for the WO-ISA II Limitation of examination in the WO-ISA II Language of the WO-ISA II Priority and the WO-ISA II Form of the WO-ISA II Formal defects, clarity, support, disclosure II Applicant's reply to the WO-ISA II Availability of the WO-ISA, report based thereon and translations thereof II Application filed on/after II Application filed before II Translation of the WO-ISA II Translation of the WO-ISA for one or more designated offices II Translation of the WO-ISA for one or more elected offices II Report based on the WO-ISA [IPRP Chapter I] II Translation of the report based on the WO-ISA II Unity and the WO-ISA II Late filed parts/elements and the WO-ISA II.11. Amendment under Art.19 PCT II Time limit for Art.19 PCT amendments II Formalities of Art.19 PCT amendments II The "Brief Statement" according to Art.19(1) PCT II Publication of Art.19 PCT amendments II.12. International publication Peter Watchorn & Andrea Veronese

5 II General II Early publication II Languages of publication II Avoiding publication II Subject matter omitted from International publication II Confidentiality of the application before publication II Reservations preventing publication II Rights conferred by International publication II Steps necessary at the EPO II Steps necessary at the states designated under the EPC II Amendment of claims before publication II.13. Requirements relating to biological inventions II Biological sequence listings and International search II Deposition of biological material II Where to deposit II Requirements specified by the PCT II Requirements specified by national or regional law II Office and time limit for filing information on deposited biological material II Loss of rights with regard to deposited biological material II Reestablishment of rights at EPO for filing information on deposited biological material II Deposits of biological material and the priority right before the EPO II.14. Procedure at the ISA where the abstract and/or title is missing or the title is deficient II.15. Supplementary International Searches (SIS) II Supplementary search request: time limit, contents and accompanying documents II Supplementary search request: defects and their correction II Competent SISA II SIS-related fees II SIS-Handling fee II Supplementary search fee II Documents and translations forming basis for the SIS-search II Transfer of documents from IB to SISA II Start and time limit for completion of the SIS-search II Limitation of the SIS-Search II Unity and the SIS II The SIS-Search Report [contents and language thereof] II Transmittal of SIS-search report to applicant, IB and designated offices II Withdrawal of the SIS-request III PCT CHAPTER II, INTERNATIONAL PRELIMINARY EXAMINATION III.1. Who can demand International preliminary examination? Peter Watchorn & Andrea Veronese 5

6 III.2. The competent IPEA III.2.1. When does the EPO act as IPEA? III.2.2. The EPO as IPEA for non EPC Receiving Offices III.2.3. Where the EPO is the IPEA but was not the ISA III.2.4. Other EPC contracting states as IPEAs III.3. The Demand for preliminary examination III.3.1. Where & how to file the Demand III.3.2. The applicant files the Demand at the wrong office - procedure III Demand erroneously filed at the International Bureau III Demand filed at non-competent office III.3.3. When to File the Demand III.3.4. Language of the Demand III.3.5. Content of the demand III Content of the Demand - The petition III Content of the Demand - identify the applicant III Content of the Demand - identify the agent or common representative III Content of the Demand - indicate the International application III Content of the Demand - the election of states III Content of the Demand - statement concerning amendments III Content of the Demand - signature of the Demand III.3.6. Defects in the Demand III.4. Election of states III.5. Withdrawal of the Demand or of an election III.6. Language of the application in preliminary examination III.6.1. Language of the application itself III.6.2. Language of amendments in preliminary examination III Language, in preliminary examination, of amendments filed under Art.19 PCT & Art.34 PCT III Language of letter accompanying amendments under Art.19 PCT and Art.34 PCT III.6.3. Corrections of form and/or content of translations of the application in Preliminary Examination III.7. Fees due when entering Chapter II III.7.1. Handling fee III Handling fee - general III Handling fee - refunds III.7.2. Preliminary examination fee III.7.3. Late or no payment of handling and preliminary examination fees III.8. Substantive issues of preliminary examination III.8.1. Opinions of the IPEA on substantive issues III.8.2. Prior art for preliminary examination III.9. Basis of preliminary examination and filing of amendments Peter Watchorn & Andrea Veronese

7 III.9.1. Based on the application as originally filed and corrections thereof III.9.2. Based on amendments under Art.19(1) PCT III.9.3. Based on the application as amended under Art.34 PCT III.10. Procedure before the IPEA in preliminary examination III General III The start of International preliminary examination III First written opinion III WO-ISA is considered to be the first written opinion of the IPEA III WO-ISA is not considered to be the first written opinion of the IPEA III Translation of the WO-ISA requested by the IPEA III The content of the written opinion III Reply to written opinion III Subsequent written opinions III Informal communications (telephone, interview) III The International preliminary examination report III Statement on novelty, inventive step and industrial application III Prior art cited in the International preliminary examination report III Mention formal defects, clarity, support III Limitation of examination on the report III Unity and the report III Late filed missing parts/elements and the report III Basis of the report III Language of the report III Indication that the priority is deemed not to be valid III Formal content of the report III Annexes to report III Time limit for preparation of the International preliminary examination report III Translation of the International preliminary examination report III Translation of annexes to the International preliminary examination report III Transmittal of International preliminary examination report to applicant, IB and elected offices III Biological sequence listings in preliminary examination III Top-up search in preliminary examination III.11. Priority in preliminary examination III.12. Unity in preliminary examination III Substantive issues III Formal issues III Invitation to restrict the claims or pay additional examination fees under Art.34(3)(a) PCT III The time limit for paying additional fees or restricting the claims III The content of the invitation according to Art.34(3)(a) PCT III The content of the invitation according to Art.34(3)(a) PCT - general considerations Peter Watchorn & Andrea Veronese 7

8 III The content of the invitation according to Art.34(3)(a) PCT - a posteriori lack of unity III The protest procedure III Content and language of the protest III The protest fee III Examination of protest by review body [EPO review panel] III Decision on the request for refund of additional examination fees III Non-unity cases passing from the ISA to the IPEA III.13. Application not examined III Application not examined due to the presence of certain subject matter III Application not examined due to serious deficiencies III.14. Confidentiality of International preliminary examination IV ENTRY INTO THE REGIONAL PHASE BEFORE THE EPO (ART.22 PCT AND ART.39 PCT) 280 IV.1. Time limit for entry into the European phase IV.1.1. Normal time limit for entry, and possible extensions thereof IV.1.2. Early processing in the national or regional phase IV The request for early processing IV Items always required for early processing IV Items sometimes required for early processing IV Items never required for early processing IV Effects of early processing IV Accelerated processing [PACE] and early processing IV Request for restoration of priority and early processing IV.1.3. Accelerated prosecution in the European phase [PACE] IV PACE request IV PACE in supplementary search IV PACE in examination IV Start of examination no supplementary search IV Start of examination supplementary search without waiver IV Start of examination supplementary search with waiver IV Termination of PACE IV Suspension of PACE [non-payment of renewal fee] IV.2. Acts to be performed to enter the European phase, general remarks IV.3. Representation before the EPO IV.4. Furnish a copy of the application IV.4.1. Communication of the application by the IB to the designated offices IV.4.2. Communication of the amendments to the designated offices IV.5. Documents on which the European granting procedure is to be based IV.5.1. Specifying documents on which the procedure is to be based, when entering European phase Peter Watchorn & Andrea Veronese

9 IV.5.2. EPO invitation to file amendments after entry in the European phase R161 EPC IV.6. Reply to WO-ISA/IPER/SIS-search report after entry into EP phase IV.6.1. R161(1) EPC communication [EPO was ISA or SISA] IV Mandatory reply and exceptions thereto, where EPO was ISA & no Chapter II IV Mandatory reply and exceptions thereto, where EPO was IPEA and ISA IV Mandatory reply and exceptions thereto, where EPO was ISA and IPEA was another office IV Mandatory reply and exceptions thereto, where EPO was SISA IV Voluntary reply - EPO was IPEA but not ISA IV Voluntary reply - Positive WO-ISA/IPER/SIS-search report IV Waiving the communication under R161(1) EPC IV.6.2. R161(2) EPC communication [EPO was not ISA or SISA] and voluntary reply thereto IV.7. Furnish a translation of the application IV.7.1. Translation required by EPO; which language and procedural language IV.7.2. Which parts of the application must be translated IV Translation of the application as filed IV Translation of Art.19(1) PCT amendments, brief statement and accompanying letter and ISA-unity protest 312 IV Translation of annexes to the IPER IV Translation of the request/drawings IV Translations of sequence listings IV Translations of references to biological material IV Translation of requests for correction made in PCT IV.7.3. Failure to supply the translation of the application or of amendments IV.7.4. Correction of translation IV.7.5. Republication of the international application in an EPO official language IV.8. Fees payable on entering the European regional phase IV.8.1. Fees - general remarks IV.8.2. The EPO filing fee IV.8.3. European designation fee IV.8.4. Fees for extension and validation states IV Fees for extension states IV Fees for validation states IV.8.5. The claims fee IV.8.6. Fee for the supplementary European search IV.8.7. The examination fee IV.8.8. The renewal fee IV Due date under R51(1) EPC IV Thirty-one month period under R159(1) EPC IV Late payment plus surcharge IV Failure to pay a renewal fee - loss and re-establishment of rights Peter Watchorn & Andrea Veronese 9

10 IV.9. The supplementary search IV.9.1. Supplementary search report and search opinion IV The supplementary search report IV The Search Opinion [ESOP] & mandatory response thereto IV.9.2. Supplementary search fee and time limit IV.9.3. Failure to pay the supplementary search fee: sanctions / legal remedies IV.9.4. Supplementary search fee - refunds and reductions IV.9.5. Partial supplementary search reports IV Partial report due to multiple independent claims in the same category IV Partial report due to serious non-compliance with the EPC requirements IV.10. The request for examination IV The written request and the fee IV Time limit for filing the request for examination IV Confirmation of the request for examination where a supplementary search report is prepared IV The waiver case where a supplementary search report is prepared IV Failure to request examination or to confirm it in time / Legal remedies IV Refund of the examination fee IV Full refund of examination fee IV Partial refund of examination fee (75%) IV Reductions in examination fee IV Reduction when EPO drew up an IPER IV Reduction for language privilege IV "Double reduction": language privilege & EPO drew up IPER IV.11. Formal requirements entering in the EPO regional phase IV Non-prejudicial disclosures IV Disclosure at certain exhibitions IV Disclosures resulting from an abuse IV Disclosure by the applicant IV Subsequent identification of the inventor IV Missing signature/particulars of the applicant IV Priority claim when entering the regional phase before the EPO IV Copy of the priority document IV Priority document already rendered available in the International phase IV Priority document not rendered available in the International phase IV Priority document available to EPO IV EPO invitation to supply the priority file number IV Translation of the priority document IV Failure to meet 12 month priority period / legal remedies IV Review by EPO of positive decision on restoration of priority made by RO IV Review by EPO of negative decision on restoration of priority made by RO IV Restoration requested in regional phase before EPO Peter Watchorn & Andrea Veronese

11 IV Priority claim: corrections in the regional phase before EPO IV Applicant s request to correct a priority in the regional phase before EPO IV EPO rectification of errors w.r.t priority claims made by RO/ IB IV Information on prior art IV Provision of search results on claimed priority IV Discretionary invitation to provide information on prior art in examination IV.12. Lack of unity passing into the regional phase before EPO IV Non-Unity: procedure where EPO carries out a supplementary search IV Non-Unity: procedure where no supplementary search is carried out IV No non-unity raised by EPO as ISA/SISA IV Invitation to pay additional search fee(s) for inventions not searched by EPO as ISA/SISA IV Communication of results of the search IV Limiting the claims to a searched invention IV Review of unity in examination and fee refunds IV Admissibility of amendments in relation to cases under R164(2) EPC IV.13. Filing Divisional applications IV.14. Biological sequence listings - passage into the European phase IV.15. Reinstatement of rights lost in the International phase IV Reinstatement of rights under Art.25 PCT & under Art.24(2) PCT IV Reinstatement under Art.48(2) PCT IV Remedy applicable cf Art.48(2) PCT to rights lost in International phase - Art.121 EPC/Art.122 EPC IV Failure to correct certain defects IV Failure to pay prescribed fees IV Later finding of non-compliance with filing date requirements IV Failure to supply translation IV Correction of errors of International authorities concerning filing date or priority claim IV Incorrect filing date / priority claim IV Review of findings concerning filing by reference IV.16. Re-instating rights lost for failure to meet a time limit on entry into the European phase IV Reinstatement under R49.6 PCT: procedure and applicability IV Applicability of further processing under Art.121 EPC IV Applicability of re-establishment under Art.122 EPC IV.17. Procedure for requesting Further Processing (Art 121 EPC) and Re-establishment (Art.122 EPC) IV Further Processing - Art.121 EPC IV Further processing: request / period IV Exclusions from further processing IV Re-establishment of rights [formerly Restitutio in integrum] IV The request for re-establishment [grounds, facts, fee, omitted act] IV All due care Peter Watchorn & Andrea Veronese 11

12 IV Time limit for requesting re-establishment IV Removal of cause of non compliance IV The one year maximum period for requesting re-establishment IV Time limits to which re-establishment applies and exclusions IV Consequence of granting the request IV Re-establishment and protection of third parties IV Application of re-establishment by contracting states IV.18. Type of protection and entry into the Regional / National phase IV Types of protection under the PCT IV Effect of the Request form IV Requesting certain kinds of protection IV Request to identify the parent application V COMMON PROVISIONS V.1. Time limits under the PCT V.1.1. Computation of time limits V.1.2. End of the working day V.1.3. Extension of time limits V Holidays at PCT authorities V Postal delays - late posting or late arrival of a document/notification at the applicant V Late arrival of applicant's submissions at PCT authority V Posted five days before time limit expiry V War, revolution, natural disaster etc V.2. Representation V.2.1. Mandatory representation before the Receiving Office V.2.2. Agents qualified to act in the International phase V Agents qualified before Receiving Offices (& throughout International phase) V Agents competent to act only before the ISA, SISA or IPEA V Sub-agents appointed by the agent V.2.3. The common representative V.2.4. How to appoint an agent, a common agent or a common representative V Separate power of attorney V General power of attorney V Power of attorney waiver V.2.5. Revocation and renunciation of appointment of an agent or common representative V.2.6. Effect of acts by or in relation to an agent or a common representative V.2.7. Request or demand signed by incorrectly appointed agent V.2.8. Representation requirements before the EPO in the regional phase V Persons qualified to undertake professional representation before EPO V Appointment of a representative in the regional phase before EPO Peter Watchorn & Andrea Veronese

13 V Failure to appoint a representative in the European phase V.3. Form and languages of documents and letters filed by the applicant V.4. Technical means for filing documents V.4.1. Fax, teleprinter, telegraph V.4.2. Electronic filing V.5. Registering changes of details of applicant V.5.1. Assignment of the application to a new applicant V.5.2. Death of applicant or inventor V.6. Withdrawal of the International application V.7. Withdrawal of other rights: designations, priority, SIS-request, Demand and elections V.8. Correction of obvious mistakes V.9. Third party observations Peter Watchorn & Andrea Veronese 13