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)