No Dividing of Euro-PCT without Paying Fees for the Parent

Under the EPC 2000, unsearched subjectmatter in a PCT application, for which the EPO is the International Searching Authority, is lost from the Euro-PCT application. An applicant must file one or more divisional applications in the European regional phase to recover the subject-matter (see Autumn 2007 edition of this newsletter at http://www.jenkins.eu/pi-autumn-2007/ early-effects-of-epc-2000.asp). What if the applicant has lost interest in the claims that have been searched and wants to proceed in the European phase with claims that have not been searched? This has become an important question.

Regrettably, the answer is that a Euro-PCT application cannot be divided until the PCT application has entered the European phase, and this requires payment of the national fee, and (subject to certain exceptions) the designation fees and the examination fee. If the fees for the parent are not paid, it is deemed withdrawn at the same moment as it enters the European phase. Requesting early entry without paying the fees has no effect.

Entering the European regional phase and paying the necessary fees is a waste of money if the application is to be abandoned after it has served to provide basis for a divisional application.

If, therefore, you receive an International Search Report from the EPO raising a lack of unity problem, carefully evaluate the relevant matters in the application before the chance for having them searched at the International phase is gone.

The situation is different if the EPO is not the ISA (e.g. where the USPTO or JPO conducted the International Search). In such cases, the applicant still has a chance to have the subject-matter searched in the European phase by presenting it first in the claims on EP entry.

 

At what point does the International application become a pending European application? 

Rule 36(1) EPC2000 says a divisional application may be filed "relating to any pending earlier European patent application."  (The word "any" indicates that it is irrelevant what kind of patent application the parent case is.  It may be a normal European application, or a Euro-PCT application or a divisional application divided out of either of these.)  The word "pending" sets a condition on the status of the parent application.  When can a PCT application be considered as a "pending earlier European patent application"?

The Guidelines (Guidelines A-IV-1.1.1) are not very helpful, merely saying the Euro-PCT application must have entered the European phase. 

 

What about Early EP Phase Entry?

Can one request early entry into the European phase without paying the fees, before the expiry of the 31-month period?

Rule 159(1) requires that a Euro-PCT application shall enter the European phase and that the filing fee and other fees have to be paid within the 31-month period.  There is no provision in the EPC for early European phase entry, but the PCT says an applicant can request early entry and, if so requested, the EPO should "commence early processing", provided the fees are paid.

Merely requesting early entry without paying the fees has no defined effect.  Rule 159 is entitled "Requirements for entry into the European Phase", implying that entry does not occur until the fees are paid.  Rule 160(1) says that if the fees are not paid in due time, the application is deemed withdrawn.  This seems to imply that the application must have entered the European phase even if the fees are not paid, but it appears that at the same moment as it enters, it is deemed withdrawn, and the legal consequences follow unless the remedy of further processing is invoked (i.e. payment of the fees and more).  In the meantime, the Euro-PCT application cannot be considered as pending before the EPO.

In conclusion, a European divisional application can only be filed from a PCT after European phase has been entered when the filing fee, designation fee and examination fee have been paid and the other requirements set by Rule 159(1) EPC have been met. (If the ISR is late, the examination and designation fees may not yet fall due at the time of European phase entry.)

An applicant who finds out at the expiry of the 31-month period that the invention in a PCT application that has been searched by the EPO (as the ISA) is of no value, and what is of interest has not been searched during the International phase, has to file a divisional application for the unsearched invention.  However, he cannot file the divisional application until the current PCT application has become a pending Euro-PCT application, i.e. the EP phase has been entered and the fees have been paid. 

 

Are the Guidelines ultra vires?

Art 153(2) EPC2000 says "An international application for which the European Patent Office is a designated or elected Office, and which has been accorded an international date of filing, shall be equivalent to a regular European application (Euro-PCT application)."  This seems to suggest that a PCT application is considered as a European application as long as it has a filing date and designates the EPO, even before it has entered the European phase.  This would contradict the Guidelines.  We know of no decision that clarifies this inconsistency.

Nevertheless, the Guidelines represent the current practice of the EPO, viz. a European divisional application can only be filed at the EPO after a PCT application has entered the European phase.