Forget the 31 months limit when using early processing

An international patent (PCT) application will enter into the European regional phase after 31 months from the date of filing or from the priority date, if priority is claimed.
The entrance of the PCT application into Europe is effective if the applicable requirements mentioned in Rule 159(1) EPC are fulfilled. One of these requirements relates to the third renewal fee (Rule 159(1)(g)), which is applicable for a PCT application as originally filed. In this case, the due date to pay the renewal fee ends on the date corresponding to the 31 months deadline. However, if the annuity is not paid at this date, it can still be paid after six months with additional fee, from the date corresponding to the 31 months date. This means that the starting point to calculate this period of six months depends on the due date of the renewal fee.
The applicant can accelerate the process of the PCT application by requesting with the EPO as designated/elected office, an “early processing”.
If early processing is requested, the applicant can no longer claim the 31 months time limit under Rule 159(1) EPC. The official communication from the EPO (JO 2013, 156) states that the requirements of Rule 159(1) EPC will depend on the PCT application concerned and on the date at which the early processing is requested.
Consequently, under the early processing procedure, the applicant has to fulfil all the applicable and necessary requirements of Rule 159(1) EPC, at the date at which the early processing is requested, to obtain an effective request, as if the 31 months time limit expired.
Accordingly, when regarding the payment of the third renewal fee, two possibilities can occur for a PCT application, as originally filed, depending on the date at which the early processing is requested.
The first case relates to a renewal fee having a due date ending after the date of the early processing request. In this case, the payment of the third annuity is not a necessary requirement to obtain an effective request.
A drastically different situation occurs when the third annuity ends before the date of the request of the early processing. In this specific situation, the payment of the third renewal fee is a necessary requirement to obtain an effective early processing. The 31 months time limit does not apply for the payment of the third annuity but the applicant has to pay this fee on the date at which the early processing is requested. If the annuity in question is not paid, the applicant can still pay it with a surcharge fee within six months from the date of the request for the early processing. The early processing is effective at the date at which all the requirements of Rule 159(1) EPC are fulfilled.

Authors: Pascal Leroy & Cathy Kourgias - Publisher: Managing IP