What is a “Euro-PCT” application?
A “Euro-PCT” application is an international patent application filed under the Patent Cooperation Treaty (PCT) which has transitioned from the international to the European procedural stage. In other words, a Euro-PCT is a PCT application that has entered the European regional phase by taking appropriate steps at the European Patent Office (EPO). It is generally cheaper to use the Euro-PCT route rather than filing separately at each of the relevant national patent offices if you want to obtain patent protection in three or more EPC countries. All EU Member States are currently members of the EPC together with some additional countries such as Switzerland, Norway and Turkey. A full list of states is shown below. All EPC states can be designated by the payment of a single fee of €580. Further, the non-contracting states of Bosnia and Herzegovina and Montenegro can also be designated for a fee of approximately €100 per state.
It is no longer possible to obtain a national patent via the PCT without entering the European regional phase and obtaining a European patent for some of the EPC Contracting States. In particular, Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Lithuania, Malta, Monaco, the Netherlands and Slovenia have closed their national route.
PCT-EP, through Atherton Knowles, can handle all aspects of obtaining a European Patent via the Euro-PCT route.
Time limit for entering the European regional phase
The time limit for a Euro-PCT filing is 31 months from the earliest claimed priority date of the PCT application, or the filing date if no priority is claimed. This is in contrast to many other jurisdictions, where a 30 month deadline applies.
Although it is possible to enter late within a two month time limit from receipt of a communication from the EPO, this requires extra procedural steps and additional fees. You can also request early processing if you would like the EPO to begin processing your application before the 31 month time limit, or request accelerated prosecution of the application.
The time limit for initiating regional processing at the EPO (entering the European regional phase) is 31 months from the earliest claimed priority date of the PCT application, or from the filing date if no priority is claimed. If you want the EPO to process your application before the 31-month date, then you can request early processing. You can also request accelerated prosecution of your application in the European phase (this may also be requested in the international phase).
What to do if the deadline is missed
If you miss the 31 month time limit, then it is still possible to validly enter the European phase within a two month time limit set by the EPO shortly after the 31 month date has passed. Late entry into the European phase involves taking additional procedural steps and paying significant additional fees. Contact us.
The EPO official fees (assuming the EPO is not ISA) add up to around €3500. These official fees are a filing fee, a designation fee (a single fee covers all EPC states) and an examination fee (the amount depends on the ISA). Additional fees that may be due are a search fee (if the EPO was not the ISA), page fees (for each page over 35), claims fees (for each claim over 15), extension state fees (if wanted) and a renewal fee (if due).
The page fees are €15 per page for each page of the patent application over 35 (previously this fee was payable on grant) and excess claims fees are €235 per claim for each claim in excess of 15 claims (and €580 for each claim in excess of 50). The excess claims fees can significantly increase the cost of a Euro-PCT filing and therefore it is advisable to try and reduce the number of claims filed at the EPO.
The claims may be amended to reduce the number before filing the Euro-PCT. However, shortly after filing, the applicant is given a further six month period to amend the claims before the claims are searched or examined. There is no need to pay the excess claims fees by the 31 month deadline. Any excess claims fees due on the reduced claim set filed within this six month period and can be paid within the same period.
Once the Euro-PCT has been filed, the EPO will carry out a search of the claims (if they have not already carried out such a search during the International PCT phase).
The EPO does not allow more than one invention to be protected by the claims of a European application and will initially only search the invention first mentioned in the claims. Therefore, if necessary the claims should be amended before Euro-PCT entry so that the most important subject-matter is first in the claim set when the EPO carry out the search.
What is required in order to enter the European regional phase?
You can initiate regional processing at the EPO by providing details of the PCT application documents on which the European regional phase is to be based and paying official fees. A translation of the application will need to be filed in English, French or German if the PCT application was not published in an official language of the EPO. You might also take other procedural steps, such as filing information about the results of a patent office search on an earlier application from which priority is claimed. You will also need to appoint a European Patent Attorney as your representative if you do not have either a residence or principal place of business in an EPC country.
The members of the EPC as of August 2015, according to the date of accession are:
Belgium, Germany, France, Luxembourg, Netherlands, Switzerland, United Kingdom, Sweden, Italy, Austria, Liechtenstein, Greece, Spain, Denmark, Monaco, Portugal, Ireland, Finland, Cyprus, Turkey, Bulgaria, Czech Republic, Estonia, Slovakia, Slovenia, Hungary, Romania, Poland, Iceland, Lithuania, Latvia, Malta, Croatia, Norway, Former Yugoslav Republic of Macedonia, San Marino, Albania and Serbia.
Any or all of the above countries can be designated in a European Patent application.
Please note that Liechtenstein and Switzerland together count as a single designation. A European Patent can also be “extended” to Bosnia & Herzegovina and/or Montenegro. Although these “extension” countries cannot be designated as such in a European Patent application, their national law allows for “extension” into that country of the rights conferred by a granted European patent.