The European Patent Office as International Preliminary ...

PCT Update

Online seminar

Paola Giancane, Lawyer, PCT Affairs – Emmanuelle Tang, Lawyer, PCT Affairs – Erik Veillas, Examiner ICT 18 November 2020

European Patent Office 2

Presenting today

Lawyer in the PCT Affairs Department

EPO Munich

Joined the EPO in 2017

Project manager for the IP5 Collaborative Search & Examination

(CS&E) pilot

Masters of Law from Paris-I Panthéon Sorbonne

LL.M from the University of California in Berkeley

Emmanuelle Tang (FR)


Presenting today

Lawyer in PCT Affairs Department

EPO Munich

Joined the EPO in 2013

Law degree in European and International Law at the University of Pisa (Italy)

LLM in European Law at the College of Europe (Bruges -Belgium)

Paola Giancane (IT)


Presenting today

Patent examiner in Dir 1218 (ICT)

EPO Munich

At the EPO since 2002

Engineering Degree at the ENAC (French National School of

Civil Aviation) and EQE 2007

Member of the CII Guidelines drafting group

Erik Veillas (FR)


PCT Update

1. Latest News

a) Facts & Figures

b) PCT Procedures at the EPO

2. Amendments to the Regulations under the PCT

3. COVID-19 – remedies in case of non-observance of time limits

4. Further safety nets and options for corrections

Agenda

European Patent Office

Facts and Figures – 153 PCT Contracting States

• Latest membership: Samoa

(02.01.2020)

• 40 non-PCT countries, but negotiations

currently ongoing with: Argentina,

Paraguay, Uruguay

6


Facts and Figures

• Record number of PCT applications

filed worldwide in 2019

• Applicants from 127 countries filed

PCT applications in 2019

• Applicants from China are the

biggest users of the PCT system

• The majority of PCT filings originated

from Asia in 2019

7


Facts and figures

The EPO as ISA in 2019

ISRs established in 2019

23 International Searching Authorities

Australia - AU

Austria - AT

Brazil - BR

Canada - CA

Chile - CL

Chine - CN

Egypt - EG

Spain - ES

Finland - FI

India - IN

Israel - IS

Japan - JP

Republic of Korea - KR

Philippines - PH

Russian Federation - RU

Sweden - SE

Singapore - SG

Turkey - TR

Ukraine - UA

United States of America - US

European Patent Office – EP

Nordic Patent Institute – XN

Visegrad Patent Institute - XV


Facts and figures

The EPO as IPEA in 2019

IPERs established in 2019


PCT Update

1. Latest News

a) Facts & Figures





Agenda


PCT Update

PCT Procedures at the EPO

▪ PCT Direct

▪ CNIPA-EPO Pilot on ISA Files

▪ Online Filing 2.0 Pilot Project


PCT Direct (1/5)

▪ 1st filing application searched by EPO

➔ EPO issues search report and written opinion – 6m

▪ PCT application with EPO as International Searching

Authority claiming priority from the 1st filing application

▪ Amendments in response to the search report and opinion

established by the EPO for the 1st filing

▪ EPO establishes a new search report and written opinion

based on your reply letter and addressing the points raised

Letter

accompanying

your 2nd filingPCT Direct


PCT Direct (2/5)

Contents of the PCT Direct letter

▪ A reply to the search opinion for the 1st filing

e.g. remarks or rebuttals regarding specific objections

▪ An explanation of amendments and their significance

May include marked-up copies for improved clarity

▪ An indication of subject-matter of particular interest

Is there something you want the examiner to focus on?


PCT Direct (3/5)

Key advantages of PCT Direct

▪ Solid basis for proper and early decision-making

Provides early clarity on patentable subject-matter before

publication

Focusing on the matters you highlight in your letter

▪ Significantly more likely to lead to positive opinion in

PCT

Expedited grant in Europe and access to Patent Prosecution

Highway

▪ Simple and cost-efficient procedure

Possibility of partial or full refund of 2nd search fee

May avoid need to file demand under PCT Chapter II


PCT Direct (4/5)

PCT Direct timeline


▪ Required form of submission

− Separate (PDF) document accompanying PCT application

− Should be titled ‘PCT Direct / informal comments’

− Preferably enclosing marked-up copy of amended documents

▪ Letter must be self-contained

− Earlier opinion annexed to PCT Direct letter if direct reference made

▪ Must be indicated in form PCT/RO/101

− Online: Box IX, point 19, choose option ‘Letter to ISA concerning...’

− Paper: Box IX, right hand column, point 11 (‘Other’): specify ‘PCT Direct’

16

Formal aspects of PCT DirectOJ EPO 2017, A21


Question 1

Question

The EPO found very pertinent prior art against my first

filing, an EP direct application. I then filed a PCT

application claiming priority from this application,

where I added subject-matter to further distinguish

some of the claims from the prior art cited. Can I still

use PCT direct ?

yes no


Question 1 – solution

Solution

Lorem ipsum etc. ?The EPO found very pertinent prior art against my first

filing, an EP direct application. I then filed a PCT

application claiming priority from this application,

where I added subject-matter to further distinguish

some of the claims from the prior art cited. Can I still

use PCT direct ?

→ The correct answer is: yes


Question 2

Question

I filed a PCT application under the PCT Direct service

that now enters the European phase. Can I amend the

description of this Euro-PCT application by

incorporating certain comments that I made in the PCT

direct letter, noting that the PCT direct letter was duly

filed together with the original PCT application ?

yes no



Solution

Lorem ipsum etc. ?I filed a PCT application under the PCT Direct service

that now enters the European phase. Can I amend the

description of this Euro-PCT application by

incorporating certain comments that I made in the PCT

direct letter, noting that the PCT direct letter was duly

filed together with the original PCT application ?

→ The correct answer is: no


PCT Update


▪ PCT Direct




▪ A historic agreement was reached in November 2019 between the Heads of Office of the

EPO and the CNIPA to enhance their bilateral cooperation in the framework of the PCT.

▪ The CNIPA has specified to WIPO with effect from 1 December 2020 the European

Patent Office, in addition to the CNIPA itself, as competent International Searching

Authority (ISA) and International Preliminary Examining Authority (IPEA) for international

applications filed by nationals and residents of P.R China.

▪ EPO honoured to become the first foreign patent office to be recognised as ISA and IPEA

by the CNIPA.

22

CNIPA-EPO Pilot for ISA Files (1/6)


▪ The pilot project will be of a duration of two years;

▪ Applicable to international applications filed in English only;

▪ The pilot will apply to international applications filed with the CNIPA (RO/CN) and

with the International Bureau (RO/IB) as receiving Offices;

▪ A maximum of 2,500 international applications will be accepted in the first 12 months

of the pilot, and 3,000 in the second 12 months (first-come-first serve basis)

▪ For a transitional period, applicants filing at RO/CN will need to pay the international

search fee directly with the EPO in € via credit card or their EPO account if they

have one. International search fee due to ISA/EP: 1 775 €

23

CNIPA-EPO Pilot for ISA Files (2/6)


CNIPA-EPO Pilot – Payment of the international search fee (5/6)

▪ Exception to Rule 16.1(b) PCT for a temporary period: CNIPA acting

as receiving Office is not yet able to collect the search fee due to

ISA/EP.

▪ For a transitional period, applicants will thus need to pay the

international search fee directly with the EPO in € via credit card or

their EPO account if they have one.

▪ Payment of the international search fee are not possible via bank

transfer nor via the EPO Online Fee Payment platform.


CNIPA-EPO Pilot Roadmap (3/6)

01.12.2020

Launch of the 2-year pilot

Operational phasePreparatory phase

12.11.2019

13th Conference of the CNIPA-EPO Heads of Office

Joint Communiqué

(agreement to launch a pilot)

30.11.2022

End of pilot

Monitoring

max. 2500 applications

in the first 12 months

max. 3000 applications

in the second 12 months

First-come first-serve basis

20.10.2020

Joint Communiqué announcing launch of the

pilot on 1 December 2020


PCT Timeline if EPO acts as ISA and/or IPEA (3/6)

International phase European phase

26

Entry into

European

phase (form

1200)

Examination

Rule

161/

162

30 mo.18 months0 months 12 months

PCT Chapter II

With EPO as

IPEA

(optional)

22.4 months

ISR

by

ISA/EP

6-7 months

Priority Grant

31 months

Exam fee reduced

by 75% if EPO

acted as IPEA

No search fee as

the EPO acted as

ISA


(6 months)

Amend

application

(R.161 /

162 EPC)

6 months

Suppl.

Search

6 months Approx. 20 months

exam start

1st Communication

grantProceed

w/ exam?

(R.70(2))

31 months or

earlier in case of

early entry

Priority

Filing

Means of accelerating the grant procedure with the EPO as ISA

Save 30 months or even more!

International Search

Report by EPO ✓

IPER by

EPO(optional)

ISR by

EPOwith

written

opinionR.

161/162

can be

waived

Request PACE

acceleration

Request PACE

for examination* ✓

Rule 161/162 waiver ✓

Early entry ✓

International phase European phase

* PACE requests permit accelerated treatment of the file, only if the workload of the examiners allows.

31 MEarly entryDFIL

12M 4-6M


Where to find more information on the CNIPA-EPO

Pilot?

➢Frequently Asked Questions (FAQ) on the EPO

website

➢Guidance for applicants on the CNIPA website

➢Or contact the EPO at [email protected] and/or

CNIPA at [email protected], by

mentioning CNIPA-ISA Pilot in the title of your

query.

FAQ in English Guidance for

applicants in Chinese

mailto:[email protected]



PCT Update


▪ PCT Direct




Online Filing 2.0 – Pilot Phase 1

Phase 1

Start 4 May 2020 – 1 November 2020

Scope • EP application (EP1001)

• Application for entry into European Phase (EP1200)

• PCT application (PCT/RO/101) via ePCT

• DocX filing only for EP applications

Participan

ts

100 registered organisations, 204 users

Users • 85% law firms, 15% industry

Feedback • About 100 issues reported by users

*Figures of 18.09.2020


Online Filing 2.0 – Pilot Phase 2

Phase 2

Start 2 November 2020

Scope

NEW

• EP application (EP1001)

• Application for entry into European Phase (EP1200)

• PCT application (PCT/RO/101) via ePCT

• DocX filing only for EP applications

• EP1038 (letter accompanying subsequently filed items inc.

documents in opposition, limitation/revocation)

• Letter accompanying subsequently filed items in appeal proceedings

before EBoA

• Subsequently Filed Documents (PCT-SFD) via ePCT

• PCT Demand (PCT/IPEA/401) via ePCT



Online Filing 2.0 Pilot – How to register



PCT Update

1. Latest News

a) Facts & Figures





Agenda


▪ Amended Rules 4, 12, 20, 48, 51bis, 55 and 82ter PCT and new

Rules 20.5bis and 40bis PCT

Legal basis for the correction of an erroneously filed element or

part of the international application

Correct element or part furnished for the purpose of

incorporation by reference or not

Applicable to any international application filed on or after 1

July 2020

Amendments to PCT Regulations


▪ Amended Rule 82quater PCT

Allows an office to excuse delays in meeting a time limit due to

the unavailability of electronic means of communication

permitted by it, in particular in cases of unforeseen outages or

scheduled maintenance

Does not apply to the priority period or to the time limit for

entering the national phase

Applies to any time limit fixed in the Regulations that expires on

or after 1 July 2020



▪ Amended Rules 71 and 94 PCT

Require that the International Preliminary Examining Authority

transmit copies of certain documents in its file to the

International Bureau, which will make them available to the

public on the elected Office's behalf

Apply to any document received or established by the

International Preliminary Examining Authority on or after 1 July

2020



▪ Amended Rules 15, 16, 57 and 96 PCT

Expressly allow for the transfer, via the International Bureau, of

fees collected by one office for the benefit of another

Apply to any application for which fees are transferred by the

collecting office on or after 1 July 2020



PCT Update

1. Latest News

a) Facts & Figures





Agenda


COVID-19: available remedies

▪ 11 March 2020: WHO declares COVID-19 outbreak as a

health emergency with global impact and as a pandemic

▪ Many countries declared a state of emergency

→ consequences/restrictions in the movement of people,

having considerable effects on various services and public life

as such

Disruptions caused by the COVID-19 outbreak



▪ First OJ Notice published in May extended periods expiring

on or after 15 March 2020 until 2 June 2020 for all parties

and their representatives (EPO OJ, 2020 A60)

▪ New OJ Notice of 10 November 2020 :

➔ Rule 134(5) EPC: document late is deemed received in due time if evidence are

offered that on any of the 10 days preceding the expiry of the time limit,

exceptional occurrence affected the locality of the applicant/party/representative

and the mailing or transmission was effected at the latest on the 5th day after the

end of the disruption.

➔ Rule 82quater.1 PCT: delay excused if evidence that a time limit was not met

due to natural calamity or other like reason in the locality of the interested party

and that the relevant action was taken as soon as reasonably possible (no later

than 6 months after expiry of the time limit).

Safety nets at the EPO



▪ Extension are granted to all actions to be performed within a

certain period before the EPO as laid down in the PCT

Exception: Priority period

Restoration of priority right under R. 26bis.3 PCT

▪ Extensions also applicable to payment of fees during the intl.

phase (cf Notice from the EPO dated 30 March 2020, OJ

EPO 2020, A38).

Safety nets at the EPO



EPO proposal for new PCT rule (I)

Legal certaintyAutomatic effect(without declaration)

Convergence of practices

Discretion for each PCT Authority

to apply, declare, extend etc. in

case of a general disruption

Flexibility

Extension of periods to be declared

by a PCT Authority and information

– incl. period - published

In case of a general disruption:

same practice under

national/regional law as under

PCT

Proper legal basis in the PCT; no

need to apply national/regional

law for extension of periods



EPO proposal for new PCT rule (II)

The publication of applicability of

new rule could serve as evidence

for applicants to substantiate

requests under R. 82quater.1 PCT

Transparency Evidence

Due to publication by the respective

PCT Authority/International Bureau

of WIPO, applicants, 3rd parties and

designated Offices are informed



▪ Time limit not fixed in the PCT regulations

▪ Request under R. 26bis.3 PCT

▪ Statement of reasons

▪ Exceptional circumstances

Restoration of the right of priority


Question 3

Question

The 31 months time limit to enter the European phase

expired on 15 May 2020. May an applicant enter the

European phase on 2 June 2020 without losing rights

and without paying further fees?

yes no



Solution

Lorem ipsum etc. ?The 31 months time limit to enter the European phase

expired on 15 May 2020. May an applicant enter the

European phase on 2 June 2020 without losing rights

and without paying further fees?



Question 4

Question

An applicant filed a DE national patent application on

20 May 2019. She/he wants to file a subsequent PCT

application with the EPO as receiving Office claiming

the priority from the DE application. Can she/he file the

international application on 2 June 2020 without losing

the priority right?

yes no



Solution

Lorem ipsum etc. ?An applicant filed a DE national patent application on

20 May 2019. He wants to file a subsequent PCT

application with the EPO as receiving Office claiming

the priority from the DE application. Can he file the

international application on 2 June 2020 without losing

the priority right?




Additional information

Up-to-date information from the EPO regarding COVID-19

➢ https://www.epo.org/news-events/covid-19.html

Further information from WIPO:

➢https://www.wipo.int/pct/en/covid_19/covid_update.html

➢https://www.wipo.int/pct/en/news/2020/news_0009.html

https://www.epo.org/news-events/covid-19.html

https://www.wipo.int/pct/en/covid_19/covid_update.html

https://www.wipo.int/pct/en/news/2020/news_0009.html


PCT Update

1. Latest News

a) Facts & Figures





Agenda


PCT Update

Further safety nets and options for corrections

▪ Incorporation by reference of missing element or part

▪ Erroneously filed element or part

▪ Restoration of the priority right


▪ The Patent Law Treaty (PLT, signed 1 June 2000 in

Geneva) introduced the concept of incorporation by

reference in Article 5

▪ Since 1 April 2007 in force under the PCT

▪ Enable the inclusion of accidentally omitted elements or

parts that are contained in an earlier application of which

priority is validly claimed, without affecting the international

filing date

History and context


▪ To date, 6 Offices acting as receiving Office have not yet

withdrawn their notification of incompatibility with their

national law: CU, CZ, DE, ID, KR, MX

▪ To date, 8 Offices acting as designated Office (DO) have not

yet withdrawn their notification of incompatibility with their

national law: CN, CU, CZ, DE, ID, KR, MX, TR

▪ Updated information may be found at:

https://www.wipo.int/pct/en/texts/reservations/res_incomp.html

Incompatibility with national law

R. 20.8(a) PCT

R. 20.8(b) PCT



▪ The whole description or the full set of claims

▪ If the RO finds that an element is missing in the papers purporting to be

an international application, it invites the applicant (PCT/RO/103):

− to furnish the required element: the international filing date

changes into the day the requirements for filing an international

application are fulfilled (Article 11(2)(b) and Rule 20.3(b)(i) PCT)

or

− to confirm that the element is incorporated by reference: if the

conditions of incorporation by reference are met, the international

filing date is maintained (Rule 20.6(b) and 20.3(b)(ii) PCT)

Missing element

Art. 11(1)(iii)(d) or (e) PCT

R. 20.3 PCT


▪ Definition: part of the description, part of the claims, part or all of the

drawings

▪ Where the RO finds a part is missing, it invites the applicant (PCT/RO/107):

- to complete the purported international application by furnishing the

missing part: the international filing date changes into the date of receipt of

the missing part (Rule 20.5(c) PCT)

or

- to confirm that the part was incorporated by reference: if the conditions for

incorporation by reference are met, the international filing date is

maintained (Rule 20.6(b) and 20.5(d) PCT)

Missing part

R. 20.5 PCT


▪ Where an invitation was issued by the RO: two months

from the date of the invitation

- the RO informs the applicant if in these two months the

priority period expires

▪ Where no invitation was sent to the applicant by the RO:

two months from the filing date

Formal requirements: time limit

R. 20.7 PCT


▪ The omitted element or part must be completely contained

in the earlier application from which the priority was validly

claimed:

- must be identical to the corresponding text/drawing in

the priority document

▪ The PCT request must contain a statement of

incorporation by reference of the priority application(s).

A statement to that effect is already provided in Box VI of the

PCT request form.

Condition: 'completely contained'

R. 4.18 PCT


▪ Written notice confirming that the element or part in

question is incorporated by reference in the international

application accompanied by:

The sheet(s) embodying the entire element or part as

contained in the priority document

A copy of the priority document, if not already submitted

A translation if the earlier application is not in the

language of the international application

An indication of where the missing part is in the priority

document

Formal requirements: confirmation

R. 20.6 PCT


Example: Rule 20.5 PCT

Question 5

May I request incorporation by reference of missing

pages completely contained in the priority document

claimed one week after the date of filing?

yes no


Example: Rule 20.5 PCT

R. 4.18 PCT

Solution

Lorem ipsum etc. ?May I request incorporation by reference of missing

pages completely contained in the priority document

claimed one week after the date of filing?


→ Rule 4.18 PCT requires that the priority of the earlier

application is claimed on the filing date. Thus,

incorporation by reference would not be allowed in

this case.


Practical example: missing element/part

Question 6

Is the RO in both cases expected to spot the missing element or

part?

yes no


Practical example: missing element/part

Solution

yes es


Practical example: missing drawings

Question 7

Is the RO in both cases expected to spot the missing part?

yes no


Practical example: missing drawings

Solution

no es


Example: Rule 20.5 PCT?

Question 8

If the international application as filed is complete

(description and set of claims) but some of the

pages of the description are wrong, may I request

the incorporation by reference under Rule 20.5 PCT

of the correct pages of the description contained in a

priority document validly claimed on the date of

filing?

yes no


Example: Rule 20.5 PCT?

R. 20.5bis PCT

Solution

Lorem ipsum etc. ?

If the international application as filed is complete

(description and set of claims) but some of the

pages of the description are wrong, may I request

the incorporation by reference under Rule 20.5 PCT

of the correct pages of the description contained in a

priority document validly claimed on the date of

filing?


→ Rule 20.5 PCT covers only cases where parts are truly

missing. New legal basis as of 01.07.2020 for the case of

erroneous filings: Rule. 20.5bis PCT.


PCT Update






▪ New R. 20.5bis PCT: adopted by PCT Union Assembly in

2019 - entered into force on 01.07.2020

▪ Background: different interpretation of R. 20.5 PCT among

receiving Offices - ‘truly’ missing vs not filed

▪ Now clear differenciation between these two situations:

increased legal certainty

▪ New R. 20.5bis PCT allows the applicant to correct an

erroneously filed element or part of the international

application

History and context


▪ Definitions:

Erroneously filed element: the whole description or the full set

of claims

Erroneously filed part: part of the description, part of the claims

or part of the drawings (including all drawings)

History and context

R. 20.5bis PCT


▪ Receiving and designated Offices had the possibility to file a

notification of incompatibility:

if the incorporation by reference of a correct element or

part is not compatible with their national law

▪ 10 receiving Offices notified incompatibility under R. 20.8(a-

bis) PCT: CL, CU, CZ, DE, EP, ES, FR, ID, KR, MX

▪ 11 designated Offices notified incompatibility under R. 20.8(b-

bis) PCT: CL, CN, CU, CZ, DE, EP, ES, ID, KR, MX, TR



Incompatibility with national law: overview

R. 20.5bis(a)(ii) and (d) PCT

R. 20.8(a-bis) and (b-bis) PCT



▪ The EPO filed a notification of incompatibility as receiving

and designated Office:

incompatibility with R. 56 EPC

inc. by reference of correct element or part not

possible

▪ However, no impact on file processing by the EPO as ISA

search in principle based on correct element or part

Incompatibility: procedure before the EPO

R. 20.5bis(a)(ii) and (d) PCT

R. 20.8(a-bis) and (b-bis) PCT

R. 56 EPC

OJ EPO 2020, A81

Please do not use photos for which the

EPO does not have copyright. If you need

any images, please contact:

[email protected]

or

[email protected]


New Rule 20.5bis PCT: possible scenarios

72



Please do not use photos for which the

EPO does not have copyright. If you need

any images, please contact:

[email protected]

or

[email protected]


Procedure before the EPO as RO

73




Procedure before the EPO as RO


Practical example: procedure before the EPO as RO

Question 9

Would you request in both cases incorporation by reference of the

correct description under R. 20.5bis(d)?

yes no


Practical example: procedure before the EPO as RO

Solution

yes no


Procedure before the EPO as ISA


Practical example: procedure before the EPO as ISA

Question 10

Would the search in these cases be based on the correct claims?

yes no


Practical example: procedure before the EPO as ISA

Solution

yes no


PCT Update






▪ The Patent Law Treaty (PLT) introduces the concept of

restoration of the right of priority in Art. 13

▪ Since 1 April 2007, the restoration of the right of priority was

implemented in the PCT e.g. Rule 26bis.3

▪ Objective: maintain the right of priority even if the

international application is filed after the expiry of the priority

year, for a period of up to 2 months from the 12-month time

limit under Paris Convention

Background and purpose

Art. 13 PLT

R. 26bis.3 PCT


▪ Incompatibility with the national law:

−To date 11 Offices acting as RO: BR, CO, CU, CZ, DE, DZ,

GR, ID, IN, KR, PH

−To date 13 Offices acting as DO: BR, CA, CN, CO, CU, CZ,

DE, DZ, ID, IN, KR, MX, PH



Incompatibility with national law: overview

R. 26bis.3(j) PCT

R. 49ter.1(g) PCT



▪ International application filed within 2 months from the date

on which the priority period expired

AND

▪Within the two-month period:

−A request for restoration is filed

−The fee for restoration is paid (RO/EP: 640 EUR)

−A statement of reasons is furnished (which could be

supported by declarations or other evidence)

Procedure at the RO/EP – Admissibility

R. 26bis.3(a) PCT

R. 26bis.3(b), (d) and (e) PCT



Question 11

If a priority claim is not contained in the PCT

request, may the applicant subsequently add the

priority claim after requesting restoration of the right

of priority?

yes no



R. 26bis.3(c) PCT

R. 26bis.3(e) PCT

Solution

Lorem ipsum etc. ?

If a priority claim is not contained in the PCT

request, may the applicant subsequently add the

priority claim after requesting restoration of the right

of priority?


→ Provided the notice adding the priority claim is submitted

within 2 months from the expiry of the priority period


▪ Any RO applies at least one of these two criteria:

− failure to file within the priority period occurred in spite of

due care required by the circumstances having been taken

− failure to file within the priority period was unintentional

Procedure at the RO/EP –

Decision on the merits of the case

R. 26bis.3(a) PCT

PCT/GL/RO 166H-166J


▪ RO/EP applies the “due care” criterion

▪ Non-compliance with the priority period must result either

from:

−an exceptional circumstance, or

−an isolated mistake within a normally satisfactory system

for monitoring time limits



Rule 26bis.3(a)(i) PCT

PCT/GL/RO 166J


▪ Primary responsibility lies with the applicant:

- takes all steps that can be expected of a reasonably

diligent person

- provides proper instructions to agent: if appointed, agent

has also to show “due care”

▪ 'Due care' of the agent in dealing with an assistant -

priority deadline is not met because of a mistake by the

assistant dealing with a routine task, and:

- suitable person chosen for the work

- properly instructed in the tasks

- reasonably supervised



PCT/GL/RO 166M(f)


Practical example: COVID-19 outbreak vs. filing software issues

Question 12

Is the “due care” criterion met in both cases? yes no


Practical example: COVID-19 outbreak vs. filing software issues

Solution no


Practical example: Represented applicant

Question 13

Would the EPO as RO grant both requests? yes no


Practical example: Represented applicant

Solution no


Practical example: Cross-check mechanism

Question 14

Is the cross-check mechanism required in both cases? yes no


Practical example: Cross-check mechanism

Solution no


Practical example: Agent with assistant

Question 15

Is the “due care” criterion met in both cases? yes no


Practical example: agent with assistant

Solution no


Further questions

Question & answer

session

via chat to "All Panelists"now

later

Questions

via mail ➔

[email protected]

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