Captain IP

Examination reply deadline

Wed, 20 May 2026 07:05:47 -0700

Legal framework

A communication under Article 94(3) EPC invites the applicant to file observations and, where appropriate, amendments. If the applicant fails to reply in due time, the European patent application is deemed withdrawn under Article 94(4) EPC.

Since the abolition of the old 10-day notification rule, Rule 126(2) EPC provides that a postal communication is deemed delivered on the date it bears, unless it fails to reach the addressee or is delivered more than seven days after that date. No late delivery is indicated in this question, so the relevant date is 26 February 2025.

Periods expressed in months are calculated under Rule 131 EPC. If a period expires on a day on which the EPO filing offices are not open, it is extended under Rule 134(1) EPC to the next day on which they are open. Rule 134(2) EPC also provides for extension where there is a general dislocation in delivery or transmission of mail in a contracting state, for parties resident in that state or represented by a representative with a place of business there.

Statement a)

False.

The communication is dated 26 February 2025. Under current Rule 126(2) EPC, it is deemed to be delivered on the date it bears, namely 26 February 2025.

The old 10-day rule no longer applies. Therefore, the communication is not deemed delivered on 8 March 2025.

Statement...Read More

PCT non-unity

Wed, 20 May 2026 02:33:53 -0700

Legal framework
If the EPO as International Searching Authority considers that a PCT application lacks unity, it invites the applicant to pay additional international search fees. Under PCT Rule 40.1, the invitation must specify the reasons for non-unity and invite payment of the additional fees within one month from the date of the invitation. Under PCT Rule 40.2(c), the applicant may pay the additional fees under protest, but the protest must be accompanied by a reasoned statement. The protest may also be subject to payment of a protest fee under PCT Rule 40.2(e).
For the EPO as ISA, the Euro-PCT Guide confirms that an additional search fee may be paid under protest and that, where additional fees are paid under protest and the protest fee is duly paid, the protest is referred to a review panel. See Euro-PCT Guide 3.3.020–3.3.022.
In the European phase, Article 153(7) EPC provides for a supplementary European search report for Euro-PCT applications, but the Administrative Council has dispensed with this report where the international search report was drawn up by the EPO. However, this does not mean that there is no possibility of a further search in the European phase. Since the amendment of Rule 164 EPC, if the supplementary European search report is dispensed with and the examining division considers that an unsearched invention is claimed in the documents forming the basis for examination, it must inform the applicant that a search will be performed for any such invention for which a search fee is paid within two months: Rule 164(2)(a) EPC.
Statement a)
Legal framework
For a Euro-PCT application, the acts for entry into the European phase must normally be performed within 31 months from the international filing date or, if priority has been claimed, from the priority date: Rule 159(1) EPC. Since PCT-M was filed on 6 March 2023 and claims no priority, the 31-month period expires on 6 October 2025 under Rule 131(4) EPC.
If required acts for entry into the European phase are not performed in due time, the application may be deemed withdrawn, but further processing is generally available under Article 121 EPC and Rule 135 EPC, subject to the excluded time limits.
Where the EPO acted as ISA and issued a written opinion with objections, the applicant must respond under Rule 161(1) EPC after entry into the European phase. The response may consist of amendments, comments, or both; amended claims are not mandatory.
Statement a)
False.
The latest date for entering the European phase without further processing was not 6 September 2025.
PCT-M was filed on 6 March 2023 and claims no priority. The relevant period is therefore:
6 March 2023 + 31 months = 6 October 2025.
Thus, the normal Euro-PCT entry deadline under Rule 159(1) EPC was 6 October 2025.
Statement...Read More

Partial priority

Wed, 20 May 2026 02:16:25 -0700

Legal framework
Under Article 87(1) EPC, a first filing for a patent, utility model or utility certificate may give rise to a right of priority for a later European patent application filed within twelve months, but only for the same invention. A German utility model application can therefore serve as a valid priority application.
The “same invention” test requires the claimed subject-matter to be directly and unambiguously derivable from the priority application as a whole, using common general knowledge. This follows from G 2/98 and is reflected in Guidelines F-VI, 2.2.
Under Article 88(3) EPC, the priority right covers only those elements of the European application which are included in the priority application. The EPC also allows multiple or partial priorities for one claim.
According to G 1/15 and Guidelines F-VI, 1.5, a generic “OR” claim may enjoy partial priority for subject-matter disclosed in the priority document, even if the claim is broader than that disclosure. The claim is then conceptually divided into a priority-entitled part and a non-priority-entitled part.
Finally, Article 54(2) EPC provides that the state of the art comprises everything made available to the public before the relevant filing date, by written description, oral description, use or any other way.
Statement a)
False.
Claim 2 is directed to a solution of substance X in water. This subject-matter is directly disclosed in...Read More

Late notification

Wed, 20 May 2026 02:08:18 -0700

Legal framework
Under Article 94(3) EPC, where examination reveals that the application does not meet the requirements of the EPC, the examining division invites the applicant to file observations and, where appropriate, amendments. If the applicant fails to reply in due time, the application is deemed withdrawn under Article 94(4) EPC.
For postal notification, Rule 126(2) EPC provides that a document is deemed delivered on the date it bears, unless it fails to reach the addressee. If the EPO establishes that the document was delivered more than seven days after the date it bears, the period triggered by deemed receipt is extended by the number of days by which those seven days were exceeded.
The Guidelines give the same example-based rule in E-II, 2.4: if a document is delivered ten days after the date it bears, the period is extended by three days.
Calculation
The communication is dated 26 February 2025. Under the normal rule, it is deemed delivered on that date.
A four-month period from 26 February 2025 expires on 26 June 2025 under Rule 131(4) EPC.
However, actual delivery took place on 10 March 2025. This is 12 days after 26 February 2025. The seven-day safeguard is therefore exceeded by 5 days.
So the deadline is:
26 June 2025 + 5 days = 1 July 2025.
Statement a)
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...Read More

PCT non-unity

Wed, 20 May 2026 01:50:24 -0700

Legal framework
Where the International Searching Authority considers that the international application lacks unity of invention, it may invite the applicant to pay additional search fees. Under PCT Rule 40.1(ii), the applicant is invited to pay those fees within one month from the date of the invitation. The additional fees are payable directly to the International Searching Authority under PCT Rule 40.2(b).
For PCT time limits expressed in months, PCT Rule 80.2 provides that the period expires in the subsequent month on the day having the same number as the day of the relevant event. PCT Rule 80.5 extends a period expiring on a non-working day or official holiday of the relevant Office or organisation to the next subsequent day on which the relevant obstacle no longer exists.
For priority, PCT Article 8(2)(a) refers to Article 4 of the Paris Convention for the conditions and effect of a priority claim. Under Paris Convention Article 4C(1), the priority period for patents is twelve months.
Statement a)
False.
The invitation to pay the additional search fee is dated 1 September 2025. Under PCT Rule 40.1(ii), the additional search fee must be paid within one month from the date of the invitation. Applying PCT Rule 80.2, the period expires on 1 October 2025.
The fact that the invitation was received on 3 September 2025 does not move the deadline to 3 October 2025. There is no general PCT “ten-day rule” comparable to the former EPC notification rule.
Read More

Opponent identity

Wed, 20 May 2026 01:42:02 -0700

Legal framework
Under Article 99(1) EPC, within nine months of publication of the mention of grant, “any person” may give notice of opposition to a European patent, provided the opposition fee is paid. However, G 9/93 confirms that a patent proprietor cannot oppose its own patent.
The expression “any person” is broad. The opponent does not need to show a commercial interest, a legal interest, or any particular reason for filing the opposition. Opposition is therefore available to competitors, private individuals, inventors, former employees and even persons acting for training purposes, provided the formal requirements are met.
A “straw-man” opposition is also generally admissible. In G 3/97, the Enlarged Board held that an opposition is not inadmissible merely because the named opponent is acting on behalf of a third party. It is inadmissible only if the arrangement circumvents the law by abuse of process, especially where the straw man acts on behalf of the patent proprietor.
Appeals are governed by Article 107 EPC. Only a party to proceedings who is adversely affected by a decision may appeal.
Statement a)
True.
Ms Smith is mentioned as the inventor, but she is not the patent proprietor. The proprietor is company CE.
Being named as inventor does not prevent a person from filing an opposition. Under Article 99(1) EPC, any person may oppose, subject to the exclusion of the patent proprietor under G 9/93. Since...Read More

Opposition language

Tue, 19 May 2026 08:25:28 -0700

Legal framework
An opposition must be filed within nine months of publication of the mention of grant in the European Patent Bulletin: Article 99(1) EPC. Periods expressed in months are calculated under Rule 131(4) EPC, meaning that the period expires in the relevant subsequent month on the day having the same number as the day of the relevant event.
The official languages of the EPO are English, French and German: Article 14(1) EPC. Under Article 14(4) EPC, certain persons may file documents subject to a time limit in an official language of a contracting state other than English, French or German, but a translation into an EPO official language must be filed.
For such translations, Rule 6(2) EPC provides that the translation of a notice of opposition may be filed within the opposition period if that period expires later than the normal one-month period. However, the current fee reduction provisions do not provide a reduction of the opposition fee. The reduction under Rule 7a(1) EPC concerns the filing fee or examination fee, not the opposition fee.
Statement a)
True.
The mention of grant of EP-Z was published on 17 December 2024.
The opposition period under Article 99(1) EPC is nine months from that publication. Applying Rule 131(4) EPC, the nine-month period expires on 17 September 2025.
Therefore, the notice of opposition must be filed, and the opposition fee paid, at the latest on 17 September 2025.
Read More

Euro-PCT language

Tue, 19 May 2026 08:16:44 -0700

Legal framework
The official languages of the EPO are English, French and German: Article 14(1) EPC. Under Article 14(3) EPC, the official language in which the European patent application is filed, or into which it is translated, is used as the language of the proceedings before the EPO.
For Euro-PCT applications, the position is specific. If the international application was published in one of the EPO official languages, that language is the language of proceedings before the EPO. The language of proceedings cannot be changed later. This is confirmed by G 4/08 and Guidelines A-XII, 5.1.
The PCT Applicant’s Guide for the EPO as designated/elected Office states the same principle: if the international application has been published in English, French or German, that language is the language of proceedings, and it cannot be changed subsequently.
Statement a)
False.
The international application is in English. English is one of the official languages of the EPO.
Since the international application was filed and published under the PCT in an EPO official language, the applicant cannot, on entry into the European phase, file a German translation in order to make German the language of the proceedings. This is exactly the situation addressed in G 4/08.
Statement b)
False.
If the application enters the European phase in English, English remains the language of the proceedings.
A European divisional application must be filed in the language of the proceedings of...Read More