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Navigating the European Regional Phase (ERP) of your patent application

Navigating the European Regional Phase (ERP) of your patent application

News 01/03/2023

During the Patent Cooperation Treaty (PCT) application procedure, a PCT applicant may seek a granted European patent, by entering the European Regional Phase at the European Patent Office (EPO). Following entry into the European Regional phase, a European patent application will be examined by the EPO to assess whether the patent application complies with the provisions laid down in European Patent Convention.

There are a number of steps that must be taken before and after an international patent application enters the European Regional Phase – and also some voluntary steps which can help facilitate European prosecution. Below, we outline some of these steps and discuss how approaches can vary depending on territories of interest, desired scope of protection, and how urgently a European patent is required.

Are you ready for the 31-month deadline?

If you (or your client) wish to obtain a European patent via an International application under the Patent Cooperation Treaty (PCT), the deadline for entering the European Regional Phase is 31 months from the earliest priority date. There are a number of factors to consider when/before entering the European Regional Phase, several of which are outlined below. Validation and Extension states

Under so called “extension” and “validation” agreements, the protection conferred by a granted European patent may be “extended” or “validated” within a defined time-limit to include particular states which are not a party to the European Patent Convention (EPC).

The extension agreement is currently in force with:

  • Bosnia and Herzegovina (BA)

The validation agreement is currently in force with:

  • Cambodia (KH)
  • Republic of Moldova (MD)
  • Morocco (MA)
  • Tunisia (TN)

The request for extension or validation to the above states is automatically deemed to be made for any application filed on or after the entry into force of said state in the extension or validation agreements.

However, protection in any of the extension or validation states will only occur following payment of the relevant official fee for each state. The deadline for paying extension and/or validation fees falls 31 months from the earliest priority (Rule 159(1)(d) EPC).

If the necessary extension/validation fee is not paid in due time, the request for extension and/or validation is deemed withdrawn. Missing the abovementioned deadline can be remedied by completing the omitted payment along with a 50% surcharge within two months of the expiry date.

To avoid paying unnecessary additional fees or missing out potential patent protection in a desired extension or validation state, we suggest deciding on whether patent protection in any of the extension or validation states is sought as early as possible. If possible, instructions for extension and/or validation fee payments may be included as part of European Regional Phase entry instructions.

  • Excess claims fees

Under Rule 162 EPC, claims fees are due for the sixteenth claim and each subsequent claim within the period under Rule 161 (six months from notification of communication pursuant to Rules 161 and 162 EPC). To avoid (or at least minimize) any excess claims fees payable, voluntary claim amendments to reduce the total claim number can be made upon entry into the European regional phase or within the period under Rule 161. The number of claims can be reduced by either combining certain dependent claims using optional language or deleting certain dependent claims (especially if claimed subject matter is excluded under the EPC).

Any claims not paid for within the aforementioned time limit are deemed to be abandoned. A notice of loss of rights will be issued in respect of the abandoned claims, this loss of rights may be remedied by requesting further processing within two months of receiving said notice. To complete the omitted act, excess claims fee(s) must be paid alongside a further processing fee, which will be a 50% surcharge of the unpaid excess claims fee(s).

  • Wait for communication pursuant to Rules 161 and 162 EPC

Although excess claims fees can be paid (and/or amended claims filed) when entering the European regional phase, in some circumstances it may be beneficial to wait until issuance of a communication pursuant to Rules 161 and 162 EPC (R161/162 communication). The R161/162 communication sets a six month period from notification of communication to pay any necessary excess claims fees (and/or file a reduced claim set) and if the EPO was the International Search Authority (ISA) respond to deficiencies noted in the ISA’s Written Opinion.

In certain circumstances, there might be advantages to waiting for the R161/162 communication before paying excess claims fees, filing voluntary amendments and/or responding to the deficiencies of the ISA’s Written Opinion, for example:

  • delaying costs, in respect of both immediate costs (e.g., excess claims fees or attorney fees for preparing response) and later patent prosecution costs (e.g., costs associated with grant and validation);
  • providing time for prosecution of a counterpart patent application in another jurisdiction (e.g., US) to proceed, thereby allowing a general ‘patent family’ prosecution strategy to be developed.

Are your claims ready for Europe?

When considering whether or not your claims are ready for prosecution in Europe, it is often beneficial to take a pro-active approach rather than waiting for any potential issues to be raised by the Examiner.  The period for filing voluntary claim amendments at the European Patent Office – which includes amending the claims upon entry of European Regional Phase or within six months from notification of communication pursuant to Rules 161 and 162 EPC – therefore provides a useful opportunity to make any necessary amendments to ensure the claims are EPC compliant and maximize the possible scope of protection in Europe. Below are a few points to consider, and potentially action, before the end of this period..

  • Multiple Dependent Claims

Claims with multiple dependencies are allowable under the EPC. In particular under Rule 43(4) EPC, a dependent claim may refer back to one or more independent and/or dependent claims. As a result, a so-called “unlimited multiple dependent claim format” is allowable in Europe; for example, a claim set of a European patent application can comprise multiple dependent claims depending on other multiple dependent claims.

Unlike other patent offices (e.g., USPTO and CNIPA), there is no multiple dependent fee (or equivalent fee) at the EPO. In addition, when determining the total claim number – for calculating whether any excess claims fees are due – each dependency (in a multiple dependent claim) is not considered a separate claim, but rather the multiple dependent claim is counted as one claim. Therefore, in Europe, there are no official fees associated with multiple dependent claims.

  • Numerous independent claims in same category

Under Rule 43(2) EPC, there are four categories of independent claims, namely: product, process, apparatus or use. Generally, the number of independent claims is limited to one independent claim in each category.

There are limited exceptions to this rule; in particular, circumstances where the subject-matter of the application involves: a plurality of interrelated products, different uses of a product or apparatus, or alternative solutions to a particular problem. However, outside the three exceptions, overcoming an objection to multiple independent claims in the same category will almost always require claim amendments to limit the number of independent claims in each category to one.

To expedite prosecution in Europe it may be appropriate to consider making voluntary claim amendments (either upon entry or during the period under Rule 161) to limit the claim set to a single independent claim in each category.

  • Exclusions under Articles 53(b) and 53(c) EPC

Under the EPC, there are a number of exceptions to patentability, with subject matter falling within these exceptions being excluded from patentability in Europe. For example, European patents shall not be granted in respect of:

  • plant or animal varieties or essentially biological processes for the production of plants or animals (Article 53(b) EPC); or
  • methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body (Article 53(c) EPC).

European Examiners will object to claims directed to plant/animal varieties, method of treatments (of the human or animal body) or diagnostic methods (practiced on the human or animal body). In order to expedite prosecution, it may be useful to make voluntary claim amendments, for example to delete excluded subject matter.

It is also sometimes possible to circumvent the exclusion by redrafting the excluded subject matter’s claim format, for instance Article 53(c) EPC does not extend to products for use in such method, hence an excluded method of treatment (e.g., “Method of treating Y by administering X”) can be redrafted into an allowable purpose-limited product claim (e.g., “X for use in the treatment of Y”).

If your international phase claims are directed to subject matter excluded from patentability under the EPC, we suggest getting in touch as early as possible so we can advise on the best strategy for proceeding with the application in Europe.

Are you in a rush?

If you are after a European patent as a matter of urgency (e.g., to take legal action against an alleged infringer), there are a number of steps that can be taken to expedite the route to grant for a European patent application – a few of which are outlined below..

  • Early entry into European regional phase

Under Article 23(2)/40(2) PCT, an applicant may request the EPO (as designated/elected office) start processing the international application before the 31 month time-limit by filing an explicit request for early processing. Such a request for early processing must comply with Rule 159(1) EPC, for example the request for early processing must request examination, provide any required translation and pay all necessary fees – such fees include: filing fee, search fee (if EPO not ISA), third year renewal fee (if due), designation fee, examination fee and excess page fees.

  • Accelerated prosecution of European patent applications (PACE)

Applicants may request to have their applications processed under the accelerated prosecution European patent applications (PACE). Participation in PACE is requested using a single form (EPO Form 1005) during any stage of the prosecution procedure (e.g., search or examination). The use of a standardized form simplifies the process for requesting PACE compared to other jurisdictions/programmes, for example the Patent Prosecution Highway programme requires a number of accompanying/supporting documents including a declaration of claim correspondence, copies of national or PCT work products (along with any cited prior art) and a copy of the allowable claims.

For example, accelerated examination may be requested any time after the Examining division has assumed responsibility for the application. Where the EPO acted as the ISA or SISA accelerated examination can be requested on entry into the European Regional Phase or together with a response to WO-ISA, IPER or SISR under Rule 161(1). Following a request for accelerated examination, the EPO makes every effort to issue the next office action within three months of (i) receipt of application by examining division, (ii) end of Rule 161(1) period, (iii) applicant’s response under Rule 70a, or (iv) request for accelerated prosecution, whichever is later. Unlike other jurisdictions, there is no official fee associated with requesting accelerated prosecution at the EPO.

  • Waive invitation under Rule 70(2) EPC

The applicant, before receiving the search report, can request examination unconditionally and so waive the invitation under Rule 70(2) EPC. Waiving the invitation under Rule 70(2) EPC will avoid this round of communication with the EPO and thereby accelerate prosecution proceedings by around six months.

After waiving the Rule 70(2) EPC invitation, if the application is not in order for grant, a European search report will be issued with the first examination report (under Article 94(3) EPC) in place of a European search opinion. If the application is in order for grant – and a search for conflicting European patent applications (according to 54(3) EPC) has been completed – then a communication under Rule 71(3) will be issued.

  • Waive communication under Rules 161 and 162 EPC

The applicant may waive their right to the communication under Rules 161 and 162 EPC. For the EPO not to issue said communication, the applicant must have fulfilled the requirements of Rules 161 and 162 EPC – i.e no outstanding claims fees due and any response required under Rule 161(1) EPC submitted. Waiving the communication under Rules 161 and 162 EPC will avoid this round of communication with the EPO and thereby accelerate prosecution proceedings by around six months.

Please get in touch if you would like advice on preparing for European Regional Phase entry; whether your claims are ready for Europe; or how to accelerate the European patent grant procedure.