A Euro-PCT is shorthand term for the European Regional Phase entry of an International patent application (PCT) at the European Patent Office (EPO).

1. Background

The Implementing Regulations to the European Patent Convention (EPC) which apply to Euro-PCTs are the provisions of Part X of the EPC entitled “International applications under the Patent Cooperation Treaty – Euro-PCT applications”.

An international application which designates Europe is given a European application number and this is communicated to the applicant with the requirements for entry into the European Regional Phase generally 10 months after publication of the international application.

2. European Regional Phase

The deadline for entering the European Regional Phase is thirty-one (31) months from the date of filing, or if priority has been claimed, from the earliest priority date of the PCT.

The EPO will act as designated office if the PCT was only processed under PCT Chapter 1 proceedings meaning it underwent international search and publication of the application.   If the PCT was processed under Chapter II proceedings meaning it also underwent international preliminary examination, then the EPO will act as the elected office.

For the following states patent protection based on a PCT can only be obtained via a European Regional patent: Belgium (BE), Cyprus (CY), France (FR), Greece (GR), Ireland (IE), Italy (IT), Latvia (LV), Lithuania (LT), Monaco (MC), Malta (MT), Netherlands (NL), San Marino (SM) and Slovenia (SI).

All contracting states are automatically designated in a Euro-PCT upon payment of the designation fee of €610 and there are currently 38 contracting states.

European patents may also take effect in extension states of Bosnia and Herzegovina (BA) and/or Montenegro (ME) upon payment of the relevant extension fee of €102 per extension state requested on filing.  In addition, it may also take effect in validation states of Morocco (MA), Moldova (MD), Tunisia (TN) and/or Cambodia (KH) upon payment of the relevant validation fee of €240, €200, €180, €180 respectively requested on filing.

3. Euro PCT Filing

The EPO has three official languages, English, French and German and the application needs to be filed in one of these languages. However, you can enter the European Regional Phase in any other language the PCT application was filed in, but a translation into one of the official languages of the EPO must be filed within 2 months of filing the application.

To enter the European Regional Phase a form 1200 must be completed. You must provide representative details (must appoint a European Patent Agent), request examination, (this is automatically ticked on the form) designate the states (again this is automatically ticked on the form) and pay required fees. The fees which must be paid on filing are filing, search, examination, designation, and excess pages.   Excess page fees are payable for each page over 35 in the application.  The current fees for Euro -PCT filing can be found here: https://my.epoline.org/epoline-portal/classic/epoline.Scheduleoffees

Excess claims fees are also payable for each claim over 15.  However, an applicant has some options in relation to excess claims. On filing the applicant can pay the excess claims fees or file amended claims to reduce the number of claims to 15 or they can defer the previous two options until the EPO issues a Communication under Rule 161/162 which gives a 6-month deadline to respond. The excess claims fee is €245 per claim for claims 16 to 50 and €610 per claim for claims 51 onwards. So you can see why you may want to defer the decision regarding the payment of these fees.

The Rule 161/162 Communication is discussed in more detail below in the prosecution section.

The applicant also now has the option to pay the third-year renewal on entry into the European Regional Phase. This is discussed below in the renewal section.

4. Prosecution

For a Euro-PCT the first stage after filing will be the issuances of an EPO Rule 161/162 Communication. As stated above the deadline for response to this communication if 6-months from the date of the communication. The need for response will depend on if the EPO was the International Searching Authority (ISA) or not.

If the EPO was not the ISA then the applicant has the option to make voluntary amendments at this stage.  As discussed above you can either pay the excess claims fees or amend the claims to reduce the number of claims to 15 if possible.   If excess claims fees are not payable then there is no need to respond to the Rule 161/162 Communication and the EPO will issue its ‘supplementary’ search report based on the claims on file.   Upon issuance of this supplementary search report you will have 6-months to respond to the objections in the opinion and filing a response is required.

If the EPO was the ISA then a search had already been conducted by the EPO during the PCT application process.   In addition to addressing any excess claims fees you are also required to file a response to the Rule 161/162.  The response must address any objections which were raised in the International Search Report by the 6-month deadline.

Once the requirements in relation to the Rule 161/162 Communication are completed the application will proceed to examination.  During examination the examiner raises objections in relation to the application highlighting where it does not meet the requirements to proceed to grant (patentability).  Such objections can be that the application is not novel and/or is obvious in light of prior art.   Usually, a term of 4 months is set for response to the Examination Report.   A response will consist of an argument against the objections and/or amendments to the application to overcome the objections.  This process will continue until the examiner is convinced that the application meets the requirements or that the application has been rejected.

5. Allowance/Intention to Grant

If the examiner is convinced that the application meets the requirements for grant it will proceed to allowance and a Communication under Rule 71(3) (Intention to Grant) will be issued.   A response to the Rule 71(3) Communication must be filed within 4 months from the date of the communication. The response consists of approving the text intended for grant, paying the print and grant fees, and filing translation of the claims.   The claims need to be in all three official languages of the EPO so as part of the grant process the claims need to be translated into the two other languages which are not the language of the application.   Therefore if the application is in English, the claims needs to be translated in French and German, if in German then the claims need to be translated into English and French and if the application is in French then the claims need to be translated in English and German.

6. Grant

Once the requirements for the Rule 71(3) are met a Decision to Grant will be issued.   The European Patent is now granted but for it to take effect in the national states it needs to be validated in the states required.

7. Validation

The deadline for validation is 3 months from the date of grant.  Each national state has their own requirements for validation which may include translation of the full specification or just the claims into the national language.

8. London Agreement

The London Agreement deals with translation requirements for validation and entered into force on 1 May 2008.   As a result of the London Agreement the following states did away with the requirements for translations – Belgium (BE), France (FR), Germany (DE), Ireland (IE), Liechtenstein (LI), Luxembourg (LU), Monaco (MC), Switzerland (CH), and United Kingdom (GB).  The following states only require the claims to be translated into their national language – Albania (AL), Croatia (HR), Denmark (DK), Finland (FI), Macedonia (MK), Hungary (HU), Iceland (IS), Latvia (LV), Lithuania (LT), Netherlands (NL), Norway (NO), Sweden (SE) and Slovenia (SI).   The remainder of the states require a full translation of the granted patent.

9. Opposition

The date of grant also opens the window for any third party to file an opposition.  This window is 9 months from grant.   If the application is not opposed by the end of the 9-month period, then the EPO will issue a Communication confirming no opposition has been filed.

If the patent is opposed, you will have an opportunity to defend it during opposition proceedings at the EPO.  The possible outcomes are the patent is maintained as granted, it is maintained in amended form or the opposition is successful, and the patent is revoked.

10. Renewal

European patent renewals are payable every year while the application is pending.  The first renewal fee is due from the third anniversary of the filing date of the application and is payable on the last day of the month containing the anniversary of the filing date.  For Euro-PCT applications, European regional phase entries of a Patent Cooperation Treaty application, if the third-year renewal fee would be due earlier than the 31-month entry deadline for entry into the European regional phase, the renewal will not fall due until the expiry of the 31-month deadline.

According to Rule 51(1) with effect from 1 April 2018 the third-year renewal fee can be paid up to 6 months before the renewal deadline.  For example, an application with a filing date of 15 December 2017 the third-year renewal fee is due 31 December 2019 but can be paid starting from 30 June 2019.

All subsequent renewals can be paid up to 3 months before the renewal deadline.

For more on renewals please refer to the article Everything you need to know about Renewals.

* all fees and states mentioned are accurate as at March 2021