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Notice relating to filing by reference

The EPO issued a Notice on the website relating to the filing of a certified copy when an application is filed by reference.

Filing by reference is allowed under Rule 40(1), but the applicant is required to file a certified copy of the previous application under Rule 40(3). If such a copy is not filed the “application” is not accorded a filing date, see Rule 40(1). Further processing under Article 121(1) is not available, however the applicant may request re-establishment under Article 122(1). If no filing date is accorded the application shall not be dealt with as a European Patent Application, Article 90(2). According to Rule 40(3) last sentence, R53(2), relating to the filing of a priority document, applies mutatis mutandis.

The notice concerns the situation where the EPO already has a copy of the earlier application in it’s files. Filing of a certified copy is not required if the previous application is:

(a) a European patent application,
(b) an international application filed with the European Patent Office as receiving Office under the Patent Cooperation Treaty (PCT),
(c) a Japanese patent or utility model application,
(d) a Korean patent or utility model application,
(e) a United States provisional or non-provisional patent application.

See the decision in OJ 2009, 236 copied in the OJ 2009 Summary.

Please note that the decision in the above mentioned OJ reference replaces the decision dated 12 July 2007 on the filing of priority documents (Special edition No. 3, OJ EPO 2007, B.1). If necessary update your reference books !

So, what’s the lesson here? Well, failure to file a priority document will not have any effect on a later application other than loss of the priority right. Failure to file the “reference” application will result in that the later application will not be treated as a European Patent Application. As a filing date was not accorded it is not possible to file a new application and claim priority from this "later application". (I hope this is not too confusing)

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  1. What's the lesson here?

    The Guidelines (GL AIV,1.3.1) sensibly state that for a European divisional,there is no need to file a certified copy of the parent.

    According to the Notice, the EPO's Legal Division has apparently come to the strange conclusion that if the divisional emanated from a PCT application where the RO was not the EPO, the "earlier application" for which a copy is required is not the European parent application but the PCT application. So a certified copy of the PCT application is now called for.

    Applicants who in good faith, based on the Guidelines, filed divisionals based on a European application which emanated from PCT applications that were not filed via the EPO will presumably find themselves in a belated loss of rights situation, contrived by the Legal Division.

    The lesson then is that you can't trust the Office to abide by a perfectly sensible provision of the Guidelines.

  2. Indeed the provision in the Guidelines is misleading, I missed that. I would like to make a small comment, as in the sentence above the misleading part in the Guidelines it is said:

    "The divisional application may be filed by reference to the earlier application from which it derives (the parent application). The procedures are as provided for in Rule 40(1)(c), (2) and (3) (see II,"

    Given the reference to A-II which in turn refers to the decision in OJ 2007, SE 3 B.1 (now OJ 2009, 236) the Guidelines at the same time thus are "correct".

    Could you say that this apparently strange situation seems to arise from the fact that the aforementioned decision in fact relates to the filing of priority documents, thus documents that have to be filed way before expiry of the 31m period ? Whether or not a PCT application entered the European Regional Phase does not play any role in that case.....

    Anyway, all of you preparing for the EQE 2010, annotate your textbooks and/or copy of the Guidelines !

  3. Reading the notice 14/09/09, I understood that only the two options a and b apply to the certified copy when filing by reference from now on and a,b,c,d and e apply to the filing of a priority document.

    That's it ?

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