Euro PCT patent application

Euro PCT application

A European patent (EP) can be obtained from a PCT patent application filed outside Europe. The European Patent Office calls this a Euro PCT application. We will be happy to take care of the European phase of your PCT applications.

After entry in the European phase, your Euro-PCT patent application is equivalent to a regular patent application in Europe. This means that you then also benefit from the provisional protection of a European patent application. In particular, this means that infringers are liable to pay damages.

Please contact us for details.

Translations

A Euro PCT application needs to be in English, French or German. If your application is in one of the other languages of the PCT, in Europe a translation is compulsory. You can either supply such a translation or we can ask our translators. Translations take time! When you instruct us to handle your PCT application in Europe, please keep this in mind.

A PCT publication in English, French or German will take the place of the official European publication of the Euro-PCT application. For a PCT application in another language, the EPO will publish the translation.

Euro-PCT deadline

The EPO applies a deadline of 31 months after the priority date for entry in the European phase of PCT patent applications. This is one month more than the 30 months provided in the PCT. In case you are unable to meet this deadline: A legal remedy called ‘further processing’ is available for about two further months.  However, this is expensive. Therefore we kindly request you to submit your Euro-PCT applications well on time.

Representation for Euro PCT applications

For a PCT in Europe the same rules apply as for other European patent applications: Unless an applicant is based in one of the EPC member states, they need a European Patent Attorney to represent them.

Claims amendments for Euro-PCT applications

It is possible to amend the application upon entry in the European phase. Mostly, applicants limit amendments to the claims. There are usually two reasons for making amendments. The first reason is that the applicant knows that unamended claims are not novel or inventive. The second reason is that the applicant can avoid excess claims fees.

We can file amended claims upon entry in the European phase. The EPO will however also issue a communication which explicitly offers this possibility with a deadline of six months. So, we can file amendments within this six month period, but this will incur additional attorney fees.

Making claims amendments is always relatively risky in Europe.  The amended claims need to be clearly and unambiguously disclosed in the original PCT application. In practice, this means that (nearly) only amendments by combining claims, or by combining claims with clearly identified preferred embodiments, are allowed. To be safe, the applicant needs to stick to the literal wording that is present in the Euro-PCT application as filed.

The examiner will likely refuse other claim amendments. If the examiner does not refuse them, this may present an even greater risk. In post-grant invalidity proceedings (opposition at EPO or legal proceedings in a court of law) the evaluation of allowability of an amendment is usually stricter. A non-allowable amendment can then easily be fatal for the patent.

Avoiding excess claims fees

In Europe, you need to pay excess claims fees if there are more than 15 claims. These excess claims fees are very significant, because the EPO wants to avoid applications with a large number of claims. Luckily, claims with multiple dependencies are allowed, more or less without restrictions. If no excess claims fees are paid, the EPO will simply not examine the claims above 15.

This is also applicable to Euro-PCT applications. It is therefore advisable to reduce the number of claims to 15  or less.

Renewal fees

For Euro-PCT applications the first annuity payment, for patent year 3, is due two years after the filing date. Depending on the priority date, this can be either before or after the Euro-PCT deadline of 31 months.

This means that, depending on the priority date, you may have to pay the first renewal fee already upon entry in the European phase.

Requirement to file earlier search results

Unlike in some other countries, the applicant does not need to file all prior art that he is aware of. However, it is compulsory to file the search results of any priority applications. If no such search report exists, the applicant will need to explicitly state this fact.

Direct patent applications via the PCT in EuropeHeading of Euro PCT patent application

You can apply for a patent application under the PCT in Europe at the European Patent Office. This can be instead of a regular European patent application. This is only possible if at least one of the applicants has the comes from an EPC contracting state.

The applicant then has at least 30 months from the priority date to determine the desired countries for patent protection. Nearly all countries worldwide cooperate in the PCT.