EPC vs. PCT
Updated and re-published in August 2023
In this post I listed the most important differences between EPC and PCT that can be relevant for the EQE. The post and the downloadable pdf are both updated for EPAC 2023 and EQE 2024.
EPC
PCT
Who can file?
Anyone (Art.58 EPC)
Any resident or national of a contracting state (Art.9(1) PCT)
For example, an Argentinean alone cannot file a PCT application.
However, if there are two or more applicants, it is sufficient if one of them is a resident or national of a contracting state (R.18.3 PCT).
Language of filing
Any language (Art.14(2) EPC)
Any language that the receiving Office (rO) accepts (R.12.1(a) PCT). If filed with the International Bureau (IB), any language is accepted. If filed with the EPO as rO, only EN/DE/FR is accepted (R.157(2) EPC).
Confirmation copy if filed by fax
Not required (only in case of inferior quality, if EPO sends invitation) (OJ 2019, Art.18, Art.6 and 7)
If an international application is filed with the EPO by fax, a confirmation copy is to be filed (OJ 2019, Art.19).
(International applications may be filed by fax, if the receiving Office allows R.92.4 PCT and AG-IP 6.003)
Filing date
Claims are not required to accord a filing date (R.40(1) EPC).
At least one claim is required to accord a filing date (Art.11(1)(iii)(e) PCT).
More precisely, “a part which on the face of it appears to be a claim or claims”.
Translation
If application not filed in EN/DE/FR (Art.14(1) EPC), a translation is required within 2 months (Art.14(2) and R.6(1) EPC).
If the language of filing is not accepted by the International Searching Authority (ISA), a translation is to be filed within 1 month of date of receipt (R.12.3(a) PCT).
If the language of filing is accepted by the ISA but is not a language of publication, a translation is to be filed within 14 months of the priority date (R.12.4 PCT).
Remedies
Depending on the situation:
- further processing (Art.121 EPC) or
- re-establishment (Art.122 EPC).
There are no remedies during international phase (but some acts, such as payment of fees at filing or filing of translation can be done during an additional period after the expiry of the time limit provided that a late fee is paid).
Furthermore, there is no provision for appeal under PCT (AG-IP 6.054).
Representative needed for filing
No (Art.133(1) EPC)
Depends on the receiving Office (rO) (Art.27(7) PCT) See Annex C of any rO if it requires an agent for filing.
Missing parts vs. missing elements
Only missing parts are allowed (R.56(1) EPC).
Even full missing elements can be filed or incorporated, such as the entire description and/or complete set of claims and/or all drawings (R.20.3 PCT).
Prior art
Everything made available to the public by means of written or oral description, by use, or in any other way before filing (Art.54(2) EPC)
Only written disclosures that are made public prior to the international filing date (R. 33.1 PCT)
Technical preparations for publication
At the end of the day that comes 5 weeks before the expiry of the 18th month (from the earliest priority) (OJ 2007, SE3, D.1).
The technical preparations for publication are completed by the 15th day prior to the date of publication (AG-IP 9.014).
Further search fee (non-unity)
Further search fee payable within 2 months (R.64(1) EPC)
(Only payable if applicant wants the other invention(s) to be covered by a search.)
Additional fee is payable within 1 month (R.40.1(ii) PCT) from the invitation, directly to the ISA. Can be paid under protest.
(Only payable if applicant wants the other invention(s) to be covered by a search.)
(If not paid, and Euro-PCT phase is entered, EPO will send another invitation under R.164 EPC.)
Date of notification
Deemed to be delivered on the 10th day following its handover to the postal service provider (R.126(2) EPC).
This 10-day rule will be abolished from 1 November 2023. Since the cut-off date for the applicable law for EQE 2024 is 31 October 2023, you can still use the 10-day rule in the next exam, but only if you explicitly indicate it.
Date on document, unless applicant proves that document was received more than 7 days from that date (R.80.6 PCT).
Renewal fees
Yes, at first for the 3rd year (Art.86 EPC).
There are no renewal fees during the international phase.
Amount applicable in case of fee increase
Due date is irrelevant; the date of payment is set as the relevant date for determining the amount of the fees (GL A-X 5.1.2)
–> If due date is 15 March, there is a fee increase on 1 April, and the fee is only paid 10 April, the new, increased fee is payable.
For filing, search, transmittal and additional search fee:
Date of receipt of PCT application is relevant; actual date of payment is not relevant. (R.14.1(c), R.15.3 and R.40.2 PCT)
–> If date of receipt is 15 March, there is a fee increase on 1 April, and the fee is only paid 10 April, the old fee is payable.
Filing by reference to a previously filed application
It is possible (R.40(1)(c) and R.40(2) EPC).
Filing by reference is not possible in PCT.
Third party observations
Although lack of novelty and/or inventive step are the most common observations, third-party observations may also be directed to clarity (Art. 84), sufficiency of disclosure (Art. 83), patentability (Art. 52(2) and (3), 53 or 57) and unallowable amendments (Art. 76(1), 123(2) and 123(3)).
Must be filed in writing in English, French or German (GL E-VI 3).
Can only relate to novelty and/or inventive step (AG-IP 11.109).
Must be in a language of publication (AG-IP 11.113).
Please kindly note that this is not an exhaustive list of differences. Furthermore, to keep the summary compact, I did not include the whole wording of the Articles and Rules, but always linked them so that you can read them for the full context.
I was asked to prepare this article in a printable PDF format, so, here you go. (The links also work in the pdf.) You can download and print it for the EQE by clicking on the button below.
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