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EQE: Paper M2 - Applying EPC and PCT Law to a Mixed Scenario

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Paper M2 - Applying EPC and PCT Law to a Mixed Scenario

M2 tests application of both substantive EPC law and PCT procedure in one scenario. You are typically asked to take a position on claim amendments and to identify the procedural steps and deadlines under the PCT route, so the two bodies of law must be kept apart and used together.

Substantive core

  • Art. 123(2) EPC: an amendment is allowable only if directly and unambiguously derivable from the application as filed, including the drawings.
  • Art. 123(3) EPC: after grant the protection conferred may not be extended - no broadening of the claimed subject-matter.
  • Art. 54(3) EPC with Art. 153(5) EPC: a Euro-PCT application is prior art for novelty only, from its international filing date, once it has validly entered the European phase and designates the state concerned.
  • Priority: twelve months under Art. 87(1) EPC; partial priority is available for alternatives covered by the earlier disclosure.

PCT procedure

  • Art. 19 PCT amendments: claims only, filed with the International Bureau within 19 months from the priority date.
  • Art. 34 PCT amendments: filed with the demand for international preliminary examination, within 22 months from priority or three months from transmittal of the search report, whichever expires later.
  • R. 26bis.1 PCT: correction or addition of a priority claim within 16 months from the priority date.
  • R. 90bis PCT: withdrawals, which are irrevocable once effected.

Worked example

A PCT application claims priority from 20 May 2022 and was filed 20 May 2023. The applicant wants to replace the claims before the search report is issued. Reasoning: under Art. 19 PCT the amendment must reach the International Bureau within 19 months of the priority date, i.e. by 20 December 2023; the 22-month date, 20 March 2024, is the Chapter II limit and does not help. Answer: file under Art. 19 by 20 December 2023, and keep a basis table for the amended claims.

Traps

  • Confusing the 19-month Art. 19 date with the 22-month Chapter II date.
  • Invoking Art. 123(3) EPC during examination, where only Art. 123(2) applies.
  • Using an Art. 54(3) EPC document when assessing inventive step.
  • Treating a Euro-PCT application as prior art without checking designation and entry into the European phase.