Legal framework
The European Patent Bulletin mentioned the publication of the European search report on 12 March 2025. Under Rule 70(1) EPC, the applicant may request examination up to six months after that date. Applying Rule 131(4) EPC, the six-month period expires on 12 September 2025. The request for examination is not deemed filed until the examination fee has been paid: Article 94(1) EPC. If no request for examination is made in due time, the application is deemed withdrawn under Article 94(2) EPC.
The designation fee must also be paid within six months of the date on which the European Patent Bulletin mentions the publication of the European search report. If it is not paid in due time, the European patent application is deemed withdrawn: Rule 39(1) and (2) EPC.
Where the search opinion accompanying the European search report mentions deficiencies, the applicant must respond under Rule 70a(1) EPC within the Rule 70(1) period. However, Rule 70a(3) EPC provides that deemed withdrawal occurs only if the applicant neither complies with nor comments on the invitation. The Guidelines explain that a response may consist of amendments, observations on the objections raised, or both: Guidelines B-XI, 8.
Statement a)
False.
EP-A has 20 claims, so claims fees were due for claims 16 to 20, i.e. five claims fees in total. However, those claims fees are not due at the six-month post-search deadline of 12 September 2025.
Under Rule 45(2) EPC, claims fees are payable within one month of filing the first set of claims. If not paid, they may still be paid within one month of a communication under Rule 45(2) EPC. If a claims fee is not paid in due time, the claim concerned is deemed abandoned under Rule 45(3) EPC. This does not cause the whole application to be deemed withdrawn. The Guidelines confirm this in A-III, 9.
Therefore, paying five claims fees is not one of the actions that must be done by 12 September 2025 to avoid EP-A being deemed withdrawn.
Statement b)
False.
The applicant must respond to the opinion accompanying the European search report, but does not necessarily have to correct the deficiencies by 12 September 2025.
Under Rule 70a(1) EPC, the applicant is given the opportunity to comment and, where appropriate, is invited to correct deficiencies and amend the application. Under Rule 70a(3) EPC, the application is deemed withdrawn only if the applicant neither complies with nor comments on the invitation. Therefore, filing substantive comments explaining disagreement with the search opinion may be enough to avoid deemed withdrawal, provided the response addresses the objections.
Thus, “correcting the deficiencies” is not mandatory by that date, even though an inadequate response may lead to problems later in examination.
Statement c)
True.
The examination fee must be paid by 12 September 2025 to avoid EP-A being deemed withdrawn.
Under Rule 70(1) EPC, the request for examination must be filed within six months of the Bulletin mention of the publication of the European search report. Under Article 94(1) EPC, the request is not deemed filed until the examination fee has been paid. If no request for examination is made in due time, the application is deemed withdrawn under Article 94(2) EPC.
Statement d)
True.
The designation fee must also be paid by 12 September 2025.
Under Rule 39(1) EPC, the designation fee is due within six months of the date on which the European Patent Bulletin mentions the publication of the European search report. Under Rule 39(2) EPC, if the designation fee is not paid in due time, the European patent application is deemed withdrawn.
Exam tip
At the six-month post-search deadline, think of three main requirements: request examination/pay the examination fee, pay the designation fee, and respond to the search opinion if it is negative. Claims fees are different: for a direct European application, they are handled earlier under Rule 45 EPC, and non-payment leads to deemed abandonment of the relevant claims, not deemed withdrawal of the whole application.
Legal Disclaimer
The information provided in this post is for general informational purposes only and does not constitute legal advice. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.