Question
You have timely requested the USPTO acting as Receiving Office to prepare and transmit the priority document to the International Bureau by crossing the relevant box in the PCT request form and paying the prescribed fee. Upon entry into the European phase, the priority document has been furnished neither to the International Bureau nor to the EPO.
What are the consequences for substantive examination?
Proposed Reply
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The EPO shall not request that you provide the priority document, Rule 17.2 (a) PCT (exception to Rule 163(2) EPC), since the requirements of Rule 17.1 (b) PCT (request timely, i.e. not later than 16 months and payment of the fee) are fulfilled.
The EPO should start substantive examination despite the missing priority document (Guidelines E-IX-2.3.5)
If the result of substantive examination is that the patentability requirements are not met the application can be refused without priority document.
If the application is allowable, the applicant is informed that the decision to grant will not be taken as long as the priority document is missing.
This proposed reply is not a legal opinion and does not engage the responsibility of Cabinet Novitech and should not replace the consultation of a Patent Attorney.
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