Legal framework
For a Euro-PCT application entering the European phase, Rule 159(1) EPC lists the acts to be performed within 31 months from the filing date or, where priority has been claimed, from the priority date. These include, where applicable, supplying a translation, specifying the application documents, paying the filing fee, designation fee, search fee, filing the request for examination, paying the third-year renewal fee, and filing any certificate of exhibition.
However, the EPO Guidelines draw an important distinction. They explain that not every act listed in Rule 159(1) EPC is, strictly speaking, a minimum requirement for effective entry into the European phase. In particular, failure to specify the application documents under Rule 159(1)(b) EPC does not block the start of the European grant proceedings.
Statement a)
Statement a) is false.
Supplying a translation is a minimum requirement where the Euro-PCT application was not published in one of the EPO’s official languages.
This requirement is expressly listed in Rule 159(1)(a) EPC. The Guidelines also list the translation under Rule 159(1)(a) EPC as one of the applicable minimum requirements for effective entry into the European phase.
Therefore, it is incorrect to say that this step is not a minimum requirement.
Statement b)
Statement b) is true.
Specifying the application documents on which the European grant procedure is to be based is indeed mentioned in Rule 159(1)(b) EPC. However, the Guidelines state that this requirement is, strictly speaking, not a minimum requirement for effective entry into the European phase. If no specification is filed, there is no legal consequence blocking entry; the EPO will take the available documents and amendments as the basis for the proceedings. See Guidelines A-XII, 4.3.
Statement c)
Statement c) is true.
Filing the designation of inventor is not listed in Rule 159(1) EPC as a requirement for entry into the European phase.
The designation of inventor may still be required later. The WIPO PCT Applicant’s Guide for the EPO explains that if the inventor has not been designated, or certain required inventor information is missing, the EPO will invite the applicant to file the missing information under Rule 163 EPC. Failure to comply with that later invitation may lead to refusal, but this is not a minimum requirement for effective entry into the European phase.
Therefore, statement c) is true.
Statement d)
Statement d) is false.
Paying the search fee is a minimum requirement where a supplementary European search report has to be drawn up.
This requirement is expressly listed in Rule 159(1)(e) EPC, and the Guidelines identify it as one of the applicable minimum requirements for effective entry into the European phase.
Exam tip
Do not simply equate “listed in Rule 159(1) EPC” with “minimum requirement for effective entry”. Most Rule 159(1) acts are minimum requirements if applicable, such as the translation and search fee. But Rule 159(1)(b) EPC is the classic exception: specifying the application documents is listed in Rule 159, yet it does not block effective entry if omitted.
Legal Disclaimer
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