EPO National Phase Procedures
In this blog, we describe the early stage procedure for International Patent Applications entering the regional phase at the European Patent Office (EPO).
When an International Patent Application has been filed, the deadline for entering the EPO Regional Phase is 31 months from the date of priority or the date of the international application (if no priority is claimed).
The EPO Regional Phase is filed online at the EPO. Unless any changes are required on filing i.e., change of Applicants or Inventor’s Address, then the details for the EPO Application will be identical to the details as shown at the World Intellectual Property Organization (WIPO). It is always important to check the WIPO website to ensure no changes have been made which you are not aware of.
Amendments to the claims can be filed on entry. There is an opportunity, however, to file amendments at a later stage which we explain below. On entry, the Filing, Search, Designation and Examination Fees are paid, and where applicable, if the renewal fee is also due, this can be paid on filing. Any additional claims fees (over 15) and additional pages (over 35) are also payable at this time.
The first annuity (third year) is due two years from the international filing date, and annually on the anniversary of the filing date until the patent has been granted, at which time it is then payable in the validated countries.
Designation fees cover all current 39 EPO member states (see the list below) but does not include the extension state, Bosnia and Herzegovina. Fees for this state can also be paid on filing.
Soon after entry, the EPO will issue a Communication under Rule 161 and 162 European Patent Convention (EPC). This gives the Applicant an opportunity to file voluntary amendments to the application and claims, and to pay the excess claims fees if these were not paid on entry. The deadline for responding to this communication is six months from the date of the communication.
If the EPO was not designated as the International Searching Authority (ISA), then the EPO will draw up a supplementary European Search Report (ESR).
The EPO will invite the Applicant to file comments and/or file amendments in response to any objections raised in the ESR. The time limit for responding is six months from the communication and is not extendable. A response must be filed by the deadline. If no response is filed, the application will be deemed to have been withdrawn.
Should your company require any advice on International Patent Applications entering the regional phase at the EPO, please contact us.
List of EPO member states (source: EPO website):
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Albania |
France |
Luxembourg |
San Marino |
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Austria |
Germany |
Malta |
Serbia |
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Belgium |
Greece |
Monaco |
Slovakia |
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Bulgaria |
Hungary |
Montenegro |
Slovenia |
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Croatia |
Iceland |
Netherlands |
Spain |
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Cyprus |
Ireland |
North Macedonia |
Sweden |
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Czech Republic |
Italy |
Norway |
Switzerland |
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Denmark |
Latvia |
Poland |
Turkey |
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Estonia |
Liechtenstein |
Portugal |
United Kingdom |
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Finland |
Lithuania |
Romania |
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