EPC vs. PCT
Updated and re-published in October 2024
In this post I listed the most important differences between EPC and PCT that can be relevant for the EQE. The post is updated for EQE 2025. You can find the downloadable PDF here.
EPC
PCT
Who can file?
Anyone (Art.58 EPC)
Any resident or national of a contracting state (Art.9(1) PCT)
For example, an Argentinean alone cannot file a PCT application.
However, if there are two or more applicants, it is sufficient if one of them is a resident or national of a contracting state (R.18.3 PCT).
Language of filing
Any language (Art.14(2) EPC)
Any language that the receiving Office (rO) accepts (R.12.1(a) PCT). If filed with the International Bureau (IB), any language is accepted. If filed with the EPO as rO, only EN/DE/FR is accepted (R.157(2) EPC).
Filing at a wrong office
Vienna sub-office is not a filing office (R.35(1) EPC). If an application is filed there, it will be forwarded to an EPO filing office and will only be accorded a filing date on receipt by the latter (OJ 2017, A11, Art.1(2)).
Under R.19.4(b) PCT, if IA is transmitted to the IB under R.19.4(a) PCT, date of receipt at wrong office becomes the filing date (if Art.11(1) PCT is fulfilled).
Filing date
Claims are not required to accord a filing date (R.40(1) EPC).
At least one claim is required to accord a filing date (Art.11(1)(iii)(e) PCT).
More precisely, “a part which on the face of it appears to be a claim or claims”.
Translation
If application not filed in EN/DE/FR (Art.14(1) EPC), a translation is required within 2 months (Art.14(2) and R.6(1) EPC).
If the language of filing is not accepted by the International Searching Authority (ISA), a translation is to be filed within 1 month of date of receipt (R.12.3(a) PCT).
If the language of filing is accepted by the ISA but is not a language of publication, a translation is to be filed within 14 months of the priority date (R.12.4 PCT).
Remedies
Depending on the situation:
- further processing (Art.121 EPC) or
- re-establishment (Art.122 EPC).
There are no remedies during international phase (but some acts, such as payment of fees at filing or filing of translation can be done during an additional period after the expiry of the time limit provided that a late fee is paid).
Furthermore, there is no provision for appeal under PCT (AG-IP 6.054).
Representative needed for filing
No (Art.133(1) EPC)
Depends on the receiving Office (rO) (Art.27(7) PCT) See Annex C of any rO if it requires an agent for filing.
Missing parts vs. missing elements
Only missing parts are allowed (R.56(1) EPC).
Even full missing elements can be filed or incorporated, such as the entire description and/or complete set of claims and/or all drawings (R.20.3 PCT).
Prior art
Everything made available to the public by means of written or oral description, by use, or in any other way before filing (Art.54(2) EPC)
Only written disclosures that are made public prior to the international filing date (R. 33.1 PCT)
Technical preparations for publication
At the end of the day that comes 5 weeks before the expiry of the 18th month (from the earliest priority) (OJ 2007, SE3, D.1).
The technical preparations for publication are completed by the 15th day prior to the date of publication (AG-IP 9.014).
Further search fee (non-unity)
Further search fee payable within 2 months (R.64(1) EPC)
(Only payable if applicant wants the other invention(s) to be covered by a search.)
Additional fee is payable within 1 month (R.40.1(ii) PCT) from the invitation, directly to the ISA. Can be paid under protest.
(Only payable if applicant wants the other invention(s) to be covered by a search.)
(If not paid, and Euro-PCT phase is entered, EPO will send another invitation under R.164 EPC.)
Renewal fees
Yes, at first for the 3rd year (Art.86 EPC).
There are no renewal fees during the international phase.
Amount applicable in case of fee increase
Due date is irrelevant; the date of payment is set as the relevant date for determining the amount of the fees (GL A-X 5.1.2)
–> If due date is 15 March, there is a fee increase on 1 April, and the fee is only paid 10 April, the new, increased fee is payable.
For filing, search, transmittal and additional search fee:
Date of receipt of PCT application is relevant; actual date of payment is not relevant. (R.14.1(c), R.15.3 and R.40.2 PCT)
–> If date of receipt is 15 March, there is a fee increase on 1 April, and the fee is only paid 10 April, the old fee is payable.
Filing by reference to a previously filed application
It is possible (R.40(1)(c) and R.40(2) EPC).
Filing by reference is not possible in PCT.
Third party observations
Although lack of novelty and/or inventive step are the most common observations, third-party observations may also be directed to clarity (Art. 84), sufficiency of disclosure (Art. 83), patentability (Art. 52(2) and (3), 53 or 57) and unallowable amendments (Art. 76(1), 123(2) and 123(3)).
Must be filed in writing in English, French or German (GL E-VI 3).
Can only relate to novelty and/or inventive step (AG-IP 11.109).
Must be in a language of publication (AG-IP 11.113).
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