PCT application regionally designating EP

March 28, 2002
HARAKENZO World Patent & Trademark
(Takamasa ARAI)

1. Extension of the time limit for entering the EP national phase
According to PCT Chapter I, (when a demand for international preliminary examination is not filed), the time limit of a PCT application for entering the national phase is amended to 30 months from 20 months (note that, the effective date differs from a state to another). Accordingly, the time limit of the PCT application regionally designating EP for entering the national phase is amended to 31 months from 21 months. These amendments took effect on January 1, 2002.
Note that, such amendments are applied to an international application in which 20 months, which are the present time limit for entering the national phase when a demand of preliminary examination is not filed, have not expired on the effective date, and the proceeding is not taken for entering the national phase.
As a result, from January 1, 2002, the PCT application regionally designating EP has uniformly 31 months of the time limit for entering the national phase, according to PCT Chapter I and Chapter II.

2. PCT proceedings at the EPO (Rationalization of IPE procedure at the EPO)
Today, at the EPO, a large amount of backlogs are causing a serious problem.
Hence, in order to solve the problem, the EPO rationalizes the proceedings of international search and international preliminary examination. This took effect from January 1, 2002.
Specifically, in the rationalized proceedings, as for the cases in which a demand for international preliminary examination is submitted, the EPO basically carries out a computerized automatic proceeding based on a result of the international search report, and does not produce a substantive international preliminary examination report. In this case, categories (X, Y, A, etc.) of the quoted documents are shown, and indicated is whether they are related to the invention of the claims of the application in terms of novelty and an inventive step.
The rationalized proceedings are applied in the following cases;
(1) the international search report does not include the documents categorized in X or Y, and the applicant does not make amendments after the demand for international preliminary examination.
(2) the international search report includes at least one of the documents categorized in X or Y, and the applicant does not make arguments or amendments against a negative first communication (computerized automatic communication). In this case, the final international preliminary examination report becomes negative, and the applicant can take his own position any time in the EP national phase.
Note that, if the rationalized proceedings as in the above-described cases (1) and (2) are applied, two-thirds of the fee for the international preliminary examination request is refunded. However, the fee for the examination request in the European regional phase (the European examination request fee) is separately required to be paid in full.
The above-described rationalized proceedings offer different opportunities to the PCT applicant.
Namely, the applicant who mainly concerns to gain time by means of the PCT application proceedings can benefit from relatively inexpensive proceedings, because even if the result of the international preliminary examination report is negative, the fee for the international preliminary examination request is refunded in the international phase at the expense of making no argument or amendment.
On the other hand, the applicant who wishes to make the best possible use of the international preliminary examination by the EPO, can make any amendments and/or arguments against the international preliminary examination report as before, so as to gain a positive outcome of the international preliminary examination and to pursue the early granting of the patent in the EP regional phase. In this case, the fee for the international preliminary examination request is not refunded at all.
Instead, 50% of the fee for the European examination request is normally refunded. In other words, the applicant can benefit by the 50% refund of the fee for the European examination request only when the "detailed international preliminary examination report" is produced.
The above-described new system has been applied from January 3, 2002.

3. Revision of the implementing regulations to the EPC
3-1. Regulations regarding divisional applications According to new Rule 25(1) ( effective date: January 2, 2002 ), an applicant can file a divisional application any time as long as a pending earlier European patent application exists. More specifically, after the text approval is filed, it is possible to determine whether a divisional application is required within an approximately one month after the notification of "the date of grant". Note that, under the existing rules, once the text approval is filed based on Rule 51(4), the applicant cannot file a divisional application.
Furthermore, the new rule prescribes that an applicant can file another divisional application based on a pending divisional application. Under the existing rules, such a divisional application of a divisional application is not always granted.
3-2. Regulations regarding Rule 51
The rationalized proceedings for granting the patent take effect from July 1, 2002.
According to the existing rules, the examiner issues "First Communication" under the rule 51(4), and presents the text and the claims intended for the grant of the patent. Correspondingly, the applicant is required to file the text approval within four months (the extension of the period is not granted). After this, the examiner issues "Second Communication" under the Rule 51(6), and requires the applicant to pay "grant and printing fees" and to submit the claims translated into the official language.
If the applicant cannot approve the text and claims presented by the examiner, the applicant can present amendments and/or arguments to the examiner. If the examiner grants them, the applicant can express the approval. However, if the examiner does not grant the amendments and/or arguments, the application is refused or the examination is resumed. If the examiner approves the amendments and/or arguments, the Rule 51(6) is issued.
The above-described existing proceedings are amended as follows.
Namely, according to the new Rule 51, the examiner issues "First Communication" under the rule 51(4), and (a) presents to the applicant the text and the claims intended for the grant of the patent, as well as requires the applicant (b) to pay the grant and printing fees and (c) to submit the claims translated into the official language (the file of the text approval is not required). Note that, the time limit for responding to the new rule 51(4) is four months, but the period can be extended by a maximum of two months.
By the way, if the applicant cannot approve the text and the claims presented by the examiner, and wishes to make amendments to the claims, the applicant needs to submit a translation of the amended claims into the official language, and to pay the grant and printing fees.
In this case, if the examiner approves such amendments, the patent is granted without further delay.
On the other hand, if the examiner does not approve the claim amendment, the examiner issues "New communication" under the new Rule 51(6), and gives the applicant an opportunity to submit observations and further amendments. In this case, when the claims are newly amended, a translation of the amended claim into the official language needs to be filed together.
Note that, if the application is ultimately refused or withdrawn as a result of the amendment, grant and printing fees are refunded.
As described above, when the claims are amended under the new Rule 51(4) and the new Rule 51(6), a translation of the amended claims into the official language needs to be filed together. Furthermore, a preparation period for a translation of the claims into the official language becomes very short. Accordingly, the time limit needs to be strictly managed.

4. Others
4-1. Full-text translation at each of the member states (ARTICLE 65 EPC)
Full-text translation at each of the member states is agreed by eight states now, but it will take further time before its enforcement.
The agreement is expected to take effect around the end of the year 2003.
According to the agreement, the member states which have one of the EPO official languages (English, German, and French) as an official language no longer need to file the full-text translations of European patents into their official languages to their national patent offices.
The member states which do not have one of the EPO official languages as an official language are obliged to prescribe one of the EPO official languages as an official language in their national laws.
Most of such member states are expected to select English as an official language and so prescribe in their national laws. In such a case, if the granted European patent is described in English, or has been translated into English, the granted European patent becomes valid without submitting the full-text translation to the patent office of the member state in question. However, the claims are required to be translated into the language of the member state in question.
By the way, among the eight states signed the agreement, the member states having English as an official language are France, Germany, Belgium, Switzerland and the United Kingdom. Among the eight states signed the agreement, the member states which do not have one of the EPO official languages as an official language are Denmark, the Netherlands, and Sweden.
Needless to say, the above-described proceedings are not applied to the states which do not ratify or access to the agreement (for example, Spain, Portugal, and Greece).
4-2. Translations in cases regarding disputes
In cases of disputes concerning European patents, upon request of an accused infringer, the patentee must offer a full-text translation of the patent in question into the official language of the member state where the alleged infringement took place. The patentee also must submit the full-text translation to the court.
As described above, the above-described agreement is an important step for reducing the cost regarding the patent protection in Europe. In the member states which have one of the EPO official languages as an official language (the states which ratified the agreement), the United Kingdom, France and Germany in particular, a European patent, when granted, directly becomes valid as a national patent.
Moreover, in the member states which have one of the EPO official languages as an official language other than the above-described three states, when a translation of the claims into the language of the state in question is filed to the patent office of their own state, a European patent becomes valid in the member state in question.