For a Euro-PCT application entering the regional phase at the EPO as a designated or elected Office and where the Euro-PCT application claims priority, the applicant is required to furnish a certified copy of the previous application (the priority document) to the EPO. Where the priority document was not submitted upon entry into the European phase, the applicant will be invited to furnish the document within two months from the date of a notification. This time limit cannot be extended. If the priority document is not submitted within that time limit, the priority right is lost.

However, the EPO will not send a request for the priority document where the document is otherwise available. For a PCT application, there are two cases in which the EPO will not send a request:

In the first case, the priority document will be transmitted to the EPO. During the international phase, the applicant can submit the priority document to the International Bureau (IB) or to the Receiving Office (RO). In the event the priority document was filed with the RO, the applicant can either request the RO to transmit the priority document to the IB or request the IB to retrieve the document from a digital library, if available. The IB will then transmit the priority document to the EPO. Accordingly, the EPO may not ask the applicant to furnish the priority document.

If the EPO is not furnished with priority document by the IB but the applicant has requested the RO to forward the priority document to the IB or requested the IB to obtain the priority document from a digital library, no loss of rights will occur. In such case substantive examination may nevertheless begin, but the decision to grant will not be taken unless the priority document is furnished. The applicant will be informed accordingly.

In the second case, the priority document is deemed duly filed if the EPO can retrieve a copy from its own files or from the CN patent office acting as the RO. The applicant is informed of the inclusion of the priority document. This service is provided on condition that the applicant has informed the EPO of the application number and only if the priority application is a Chinese patent or utility model application. Accordingly, in this instance also the EPO may not ask the applicant to furnish the priority document.

It should be noted that the EPO does not participate in the Digital Access Service (DAS) system. Accordingly, the obligation to furnish the priority document cannot be met by a request to the IB under the Digital Access Service (DAS) to retrieve the document from an electronic library.

Where the priority document is not in English, French or German, a translation is required only when the validity of the priority claim becomes relevant for determining whether the invention concerned is patentable. In this case, the EPO will send a communication requesting a translation of the priority document into one of the languages. If the applicant does not provide the translation in time, the right of priority will be lost and the applicant will be informed accordingly.


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ISSN 2531-4483