On February 3rd, the European Patent Office published a preview of the 2025 PCT-EPO Guidelines, which are scheduled to come into effect on April 1st.
The EPO is accepting comments on this preview version until April 7th via the following page, and the comments collected will be taken up at the SACEPO meeting on May 8th.
https://www.epo.org/en/law-practice/consultation/ongoing#GL2025
Below are some of the changes made to the 2025 edition of the PCT-EPO Guidelines.
Source:https://link.epo.org/web/legal/guidelines-pct/en-pct-epo-guidelines-draft-2025.pdf
*The Japanese translation is for reference only.
Part A VII, 13, referenced in Part C II, 1.2.4: Requirements concerning the language of sequence listings
For applications filed on or after 1 July 2022 which contain a sequence listing, the EPO as receiving Office not only accepts sequence listings with language-dependent free text in English or in the same language as used in the international application (French or German) but also permits language-dependent free text to be filed in both English and any other language within a single sequence listing.
For applications filed on or after 1 July 2022 and including a sequence listing, the EPO as receiving Office will not only accept sequence listings containing language-dependent free text in English or the language used in the international application (French or German), but will also allow language-dependent free text to be submitted in both English and the other language within a single sequence listing.
* In Part C, the EPO acts as the International Preliminary Examining Authority.
Part C II, 1.1: Time limit for filing a demand
Pursuant to Rule 54bis PCT, the demand may be validly submitted at any time prior to the expiry of the following time limits, whichever expires 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.
This time limit guarantees that applicants have at least three months from the date of mailing of the ISR to decide on the basis of the results of the international search laid down in the ISR and the WO-ISA whether they want to file a demand with amendments and/or arguments.
If the demand is submitted after expiry of this time limit, the demand is considered to have not been submitted.
Possibilities to withdraw a demand and obtain a refund of the fees paid are limited (see A-III, 9.6 and 9.7, respectively).
Pursuant to PCT Rule 54bis, a demand for international preliminary examination may be validly filed at any time before the expiration of the later of the following time limits:
- Three months from the date of sending the ISR (International Search Report) and WO-ISA by the ISA (International Searching Authority) to the applicant.
or sending us a message on
- 22 months from the (earliest) priority date
This time limit ensures that the applicant can decide whether to file a demand for international preliminary examination, with amendments and/or arguments, based on the ISR and the results of the international search provided for in the WO-ISA, within at least three months from the mailing date of the ISR.
If an invoice is submitted after this deadline, it will be considered as not having been submitted.
Part C II, 1.1.1: Deadline for filing a request for deferral of national phase entry
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 of the (earliest) priority date.
The EPO too applies Article 22 PCT as amended with effect from 1 April 2002. Therefore, the time limit for entry into the European phase is always 31 months from the priority date, irrespective of whether a demand has been filed or not.
However, in respect of a small number of designated Offices, the former wording of Article 22(1) PCT still applies. The list of contracting states for which it is still applicable is published on the WIPO website. According to the latest information from WIPO (status on 1 January 2024), the 20/21-month time limit applies to the following states: Luxembourg (LU) and United Republic of Tanzania (TZ). However, in respect of the regional designation of each of these states, the time limit under amended Article 22 PCT applies.
Therefore, if an applicant wants to enter the national phase for these states, the demand must be received by the competent IPEA within 19 months of 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.
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 bring about a change in the 19-month time limit, since this time limit is exclusively calculated on the basis of the (earliest) priority date.
For states applying Article 22(1) PCT in its former wording, 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 from the priority date for the states in question.
Most Contracting States have applied the revised PCT Article 22 since April 1, 2002. In these States, the 30-month/31-month time limit for entering the national/regional phase applies regardless of whether the applicant files a demand for international preliminary examination within 19 months from the (earliest) priority date.
The EPO also applies PCT Article 22 as amended from April 1, 2002. The deadline for entering the European phase is therefore always 31 months from the priority date, regardless of whether a request has been filed or not.
However, for a small number of designated Offices, the previous wording of PCT Article 22(1) continues to apply. The list of Contracting Parties to which the previous wording continues to apply is published on the WIPO website. According to the latest information from WIPO (status as of January 1, 2024), the 20/21 month time limit applies to Luxembourg (LU) and the United Republic of Tanzania (TZ). However, with regard to territorial designations of these countries, the time limit under the amended PCT Article 22 will apply.
Therefore, if an applicant wishes to enter the national phase in these countries, the request must reach the competent IPEA within 19 months from the (earliest) priority date in order to ensure the right to postpone entry into the national phase until the expiration of 30/31 months from the priority date.
Moreover, in these countries, applicants will need to comply with the 19-month deadline even if the ISR and WO-ISA are not yet available. In other words, a delay in the international search does not alter the 19-month deadline, since this deadline is calculated based on the (earliest) priority date only.
For States which apply PCT Article 22(1) in its previous language, after the expiration of 19 months from the priority date, except:
- Within three months from the date on which the ISR and WO-ISA are sent to the applicant
or sending us a message on
- Within 22 months from the (earliest) priority date
A request filed with the EPO in 2016 is valid but will not have the effect of postponing the start of the national phase in that State to 30 or 31 months from the priority date.
Part C IV, 1: Subject matter not required to be examined by IPEA
A second written opinion will be issued on condition that the applicant files 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. Thus, before issuing a “negative” IPER, the EPO as IPEA will, as a rule, issue a second written opinion, thereby providing the applicant with a further opportunity to submit amendments and/or arguments to overcome any objections raised therein.
The EPO as IPEA will not perform an international preliminary examination on any claim for which no international search was performed. In this context it is not relevant whether the applicant files amendments and/or arguments that, apparently, overcome the reasons for the decision of the ISA not to search the claims concerned (see C-IV, 4). Furthermore, the EPO as IPEA will use its discretion not to carry out preliminary examination if the application relates to subject-matter listed in Rule 67 PCT to the extent that such subject-matter is not regarded as an invention or susceptible of industrial application or is excluded from patentability under the provisions of the EPC (see B-VIII, 2).
Also, if the application fails to comply with the prescribed requirements to such an extent that no meaningful opinion can be formed on novelty, inventive step or industrial applicability, no preliminary opinion on these questions will be established.
The second written opinion is issued on the condition that the applicant files a substantive reply within the deadline either to the WO-ISA established by the EPO or to the first written opinion established by the EPO as IPEA. Thus, the EPO as IPEA will in principle issue a second written opinion before issuing a "negative" IPER, thereby offering the applicant a further opportunity to submit amendments and/or arguments to overcome the objections raised therein. There is no need to submit a request for a second written opinion.
The EPO as IPEA does not carry out an international preliminary examination on claims for which an international search has not been carried out. In this context, it is irrelevant whether the applicant submits amendments and/or arguments which purport to overcome the reasons for the ISA's decision not to search the relevant claims (see C-IV, 4).
Furthermore, the EPO as IPEA exercises its discretion not to conduct a preliminary examination to the extent that an application relates to subject matter enumerated in PCT Rule 67 and that subject matter is not considered an invention, is not susceptible of industrial application or is excluded from patentability under the provisions of the EPC (see B-VIII, 2). Also, if the application does not meet the prescribed requirements and therefore no meaningful opinion can be formed on novelty, inventive step or industrial application, no preliminary opinion on these issues will be established.
For further information on the PCT-EPO Guidelines, please see the following pages:
https://www.epo.org/en/legal/guidelines-pct