EPAC 2026 Module 4: International phase and Euro-PCT
Dear all,
Here are our answers to the final exam: EPAC 2026 Module 4.
This exam seems a reasonable balance of PCT fundamentals (languages, representation, competent rO and failsafe of R. 19.4) and few more exotic topics such as informal comments to the IB followed by formal comments in the form of a demand. The main difficulty for candidates was probably fatigue, after having done 3 exams already in the same day.
Also in this Module, there some statements in a couple of questions which, in our opinion, are open to interpretation and lack the necessary details to answer with certainty.
Please feel free to comment, preferably not 'anonymously'; you can use an alias.
We welcome your opinions!
Diane Tweedlie, Jelle Hoekstra, Tanja la Cour Hoekstra
EPAC 2026 - Module M4
PCT procedure and entry into national or regional phases
10 questions, 30 points, 75 minutes
Question 1 (2 points) – Roles of
different international authorities
Under the PCT, there are several actors,
each with defined competence. Which authority or authorities are responsible
for the following cases?
Check all relevant boxes.
1.1 Art. 11(1) PCT: the receiving Office accords the international filing date when the necessary conditions are satisfied.
- An applicant’s request to record any change in indications is preferably submitted directly to the IB, but may also be submitted to the rO, which forwards the request to the IB [AG- IP 11.018A]
- In Chapter II, where a demand for international preliminary examination has been filed, the notice may also be submitted to the IPEA, but we are in Chapter I.
Comment
The wording
of statements 1.4 and 1.6 is poor
Filing a SIS
request is done by the applicant; the IB is responsible for the processing
The applicant
also requests a certified copy; the rO is responsible for furnishing them.
Question 2 (2 points) – Competent
receiving Office
An Italian company filed an international
application with the European Patent Office (EPO) in Italian. The application
validly claims priority from an earlier Italian application. All required fees
have been paid to the EPO.
Are the following statements about the
receiving Office, fees and the ISA true or false?
Statements 2.1 & 2.2
- R. 12.1(a): IA must be filed in a language accepted by the rO, so the EPO will not act as rO since it does not accept Italian.
- The EPO as rO accepts only English, French and German [R. 157(2) EPC; Annex C-EP], so IA is transmitted under R.19.4(a)(ii) to the IB.
- Applicant is from a PCT state, so IB is competent under R. 19.1(a)(iii), and the IB as rO accepts any language [Annex C-IB],
- so IB will act as rO.
- IA is deemed received by EPO on behalf of the IB acting as rO and filing date is kept [R. 19.4(a) final sentence]
Statements 2.3 & 2.4
- The fees due at filing must be paid to the rO [R.14.1(c), 15.3 and 16.1(f)], which is the IB.
- When IA has been transmitted to the IB under R. 19.4, the fees must be paid to the IB within 1m of date of actual receipt by IB [R. 19.4(c)].
- Any fees which have already been paid to the EPO are refunded
Statements 2.5 & 2.6
- The Italian Office is not an international searching authority.
- Annex C-IT indicates that the EPO is the only competent ISA.
- When IB acts as rO, the competent ISA(s) remain the same as if the applicant had filed at their competent rO by virtue of residency/nationality [R. 35.3 PCT]
- Italian applicant could have filed at rO = IT or rO = EPO [Annex B-IT].
- In either case, the only competent ISA is the EPO.
Question 3 (4 points in total) – Filing
of an international application
Art. 11(1) PCT sets out the minimum elements that are required for accordance of an international filing date.
From the list above, only the following elements are defined:
- Name of the applicant - A. 11(1)(iii)(c)
- Description - A. 11(1)(iii)(d)
- A claim or claims – A. 11(1)(iii)(e)
Comments
- As seen from Q2, the fact that the IA has not been filed in a language accepted by the EPO as rO does not affect the international filing date. The IB will act as rO and will accord as IFD the date on which the minimum elements were first received by the EPO [R. 19.4(a)].
- Assuming that the applicant is a resident or national of a PCT state, which is a further requirement of Art. 11(1)(i) for accordance of a filing date.
- Fees, full applicant details, title of invention, name of inventor(s); any necessary translation of the IA for search and/or publication are formal requirements which can be complied with later without affect the accorded IFD [AG-IP 6.032 “Defects that do not affect IFD”]
- International applications must be filed using the PCT request form (PCT/RO/101).
- They can be filed online in electronic form, or by delivery by hand or by post in paper form.
- The EPO no longer accepts international applications filed by fax (a change with effect from 1 July 2024). Nor does it accept international applications filed by email, telegram, telex or teletext.
- Online Filing 2.0
- EPO Contingency Upload Service
- In addition, applicants may use ePCT, an electronic filing tool offered by WIPO.
- The EPO no longer accepts international applications filed with it as receiving Office using the PCT-SAFE filing software. This has been the case since 1 July 2020.
Question 3.3 (1 point)
You filed an international application at
the European Patent Office on 20.10.2026 using Form PCT/RO/101. It includes a
description and formal drawings. It was filed without claiming priority and
without paying the required fees.
On 29.10.2026 you filed a set of claims.
On 10.11.2026 you paid the required fees.
On 20.11.2026 you filed the abstract.
What date is accorded as the international
filing date?
Select the date from the dropdown list.
Date: [dd-mm-yyyy]
- Art. 11(1): accorded date of filing is date on which minimum elements are first received.
- A part that appears to be claim or claims is required, so date on which you filed the set of claims will be the IFD: 29.10.2026
Question 4 (3 points in total) – Art. 19
amended claims
Question 4.1 (2 points) – Where and how
to file
The claims of an international application
may be amended under Article 19 PCT after receipt of the international search
report from the European Patent Office.
Which of the following statements are true
and which are false?
A. False
- Article 19(1) sets out that after receipt of the ISR, applicant has one opportunity to amend the claims of an IA by filing amendments with the IB.
- They are to be filed directly with the IB – R. 46.2 PCT (no mention of rO)
- The amendments must be in the same language as the language of publication – R. 46.3 PCT
- It is possible to indicate on the Demand form (IPEA/401) that preliminary examination should be based on already-filed A19 claims and a copy of these claims (and statement) can be submitted to the IPEA together with the Demand – R. 53.9(a)
- But the actual filing of the A. 19 claims must be done with the IB.
- If one assumes that A. 19 claims have already been validly filed, then the statement is True
- In the case where the statement is considered to mean that the filing of A. 19 claims is part the process for entering Chapter II,
- the answer would be False.
Question 4.2 (1 point) – time limit to
file
An international application was filed with the European Patent Office (EPO) on 6.5.2026, claiming priority of a German patent application filed on 24.7.2025. The claims of this international patent application will be amended under Article 19 PCT in light of the international search report issued by the EPO on 9.10.2026.
What is the latest date for filing the amendments under Article 19 PCT?
Select the date from the dropdown list.
Date: [dd-mm-yyyy)]
- R. 46.1 PCT sets the time limit as the later of 2m from transmittal ISR and 16m from earliest priority
- 2m period expires: 9.10.2026 + 2m --> 9:12.2026 (Wed; EPO open)
- 16m period expires: 24.7.2025 + 16m --> 27.11.2026
- 9 December 2026 is later, so in principle that is when the time limit expires.
Comment
- R. 46.1 also allows for A. 19 claims to be filed after this date. Provided they are received by the IB before the technical preparations for publication
have been completed,
Question 5 (4 points) - Non-unity and
protest procedure
The EPO as ISA finds that international
application PCT/US-X does not meet the requirements of unity of invention. On
18.9.2026, the EPO as ISA issues an invitation to pay three additional search
fees. The applicant, represented by a US agent, does not agree with the
findings and wishes to pay the additional fees under protest.
For each statement, indicate whether it is
true or false.
5.1: False
- Time limit to pay additional search fees and protest fee is 1m from invitation: 18.10.2026 (Sun) extended to 19.10.2026 [R. 40.1(ii) & (iii)]
5.2: True
- R. 90.1(d); AG-IP 11.004 “Any agent who has been appointed to represent the applicant for the international phase in general may appoint a sub-agent to represent the applicant. Sub-agents may be appointed to represent the applicant either generally or before a specific International Searching Authority”
- US agent represents the applicant in the international phase and may appoint a sub-agent.
Statements 5.3 & 5.4: both false
- The additional search fees must be paid within 1m from invitation, or the additional inventions will not be searched [R. 40.1(ii)]
- The fees can be paid under protest and the ISA may subject the examination of the protest to a protest fee – R. 40.2(e).
- The protest fee is a single amount, and does not depend on number of inventions identified by the ISA.
- EPO as ISA charges 1070 euros [Annex D-EP; RFees 2(1).21]
Legal basis: R. 48.3 PCT
- Spanish is a language of publication
- The IA has been filed in a language of publication and will be published in that language, so in Spanish [R. 48.3(a)].
- Statements 6.1 and 6.2 are therefore false
- The IA will not be published in English.
- In that case, the search report will be published in the language of publication (Spanish) and in English [R. 48.3(c)].
- Statement 6.3 is therefore correct
Question 7 (3 points) – International
preliminary examination
An international application was filed in Spanish on 10.9.2024 without claiming any priority.
The Spanish Patent and Trademark Office is
the ISA. The international search report was issued on 20.8.2026.
On 5.11.2026, the applicant considers
filing a demand for international preliminary examination and chooses the EPO
as IPEA.
For each statement, indicate whether it is
true or false.
7.1: False
- Time limit to file demand is later 3m from ISR transmittal and 22m from priority [R. 54bis.1]
- 3m period expires on: 20.8.2026 + 3m --> 20.11.2026
- 22m period expires: 10.9.2024 + 22m --> 10.7.2026
- 3m period is later and there is still time.
7.2: False
- A late-payment fee is not always requested.
- R. 58bis.1(c) allows for fee payment after expiry of the time limit to be “considered in time”, as long as paid before invitation to pay with late-payment fee is issued.
7.3: True
- IPEA is competent to authorize rectification of obvious mistakes in description when a demand has been filed [R. 91.1(b)(ii)]
- Time limit is 26 months from priority [R. 91.2]: 10.9.2024 + 26m --> 10.11.2026
- Assuming that today is 5/11/2026, then there is still time
7.4: False
- The EPO will act as IPEA when the Spanish Office has been ISA, and Demand Form 401 should be filed directly with the EPO – Art. 31(6)(a) PCT
- The international application will have been published in Spanish [R. 48.3(a)], but the EPO as IPEA accepts only English, French and German [Annex E-EP; GL/PCT-EPO A-VII, 2.3.1]
- The EPO will therefore require a translation of the IA into one of these languages – R. 55.2.
- In this case, the demand shall be in the language of the translation, so not Spanish – R. 55.1; GL/PCT-EPO A-VII, 2.3.3
Question 8 (2 points in total) - Deemed
common representative
- Under R. 90.2(b) PCT, the British national will be considered the common representative as he/she is the first-named applicant in the Request who is entitled to file with the EPO as receiving Office under R. 19.1.
- The EPO is a competent rO under R. 19.1 for residents and nationals of EPC contracting states [R. 157(1) EPC].
- Neither Japan nor Andorra is a member of the EPC.
- When the IB is rO, the first named applicant from any PCT state will be considered the common representative under R. 90.2(b).
- Andorra is not a PCT state, and so the JP applicant will be considered the common representative.
Question 9 (4 points) – PCT Direct, Informal
comments, 3rd party observations
An international application claiming
priority from a national application was filed through ePCT, together with a
PCT Direct letter and a marked-up copy of the claims as a single PDF document.
The EPO acted as ISA.
The international application was searched
by the EPO and published in English. The applicant filed informal comments on
the WO-ISA with the IB, and later filed a demand for international preliminary
examination. A third party filed observations in Spanish through WIPO’s
third-party observation system.
Which of the following statements are
correct?
- The facts of the case and the info in the statement are insufficient to conclude that 9.1 is correct.
- If we assume that the EPO also searched the priority application, then the other conditions set out GL/PCT-EPO A-IV, 1.1 & 1.2 for processing under PCT Direct have been satisfied: priority claimed at filing; PCT Direct letter filed with IA, EPO selected as ISA.
- We are not told that EPO searched the priority application and this is a necessary condition for a valid request for processing under PCT Direct.
- The time limit to request supplementary international search is 22 months from earliest priority – R. 45bis.1(a).
- The SIS Request is deemed not submitted if filed outside of that period – R. 45bis.1(e)
- A demand for preliminary examination has also been filed and this is considered a formal response to the WO-ISA.
- In this case, the earlier informal comments filed with IB are not passed on the elected Offices, but are available on PATENTSCOPE
- Spanish is publication language [R. 48.3(a) PCT] and third party observations can be submitted in any language of publication [AG-IP 11.113]. The first part is correct.
- The applicant may respond, in English or in French or in the language in which the IA has been published.
- It was published in English, so not possible for applicant to respond in Spanish.
Question 10 (4 points) – Claims fees for
a Euro-PCT application
An international application contained 27
claims when the 31-month period under Rule 159(1) EPC expired. The ISA was the
USPTO.
On entry into the European phase, the
filing fee, the search fee, the designation fee, the examination fee and five
excess claims fees were paid.
No amendments to the claims have been filed
after expiry of the 31-month period, and the applicant has confirmed they wish
to proceed with all 27 claims.
The EPO subsequently issues a communication
under Rules 161 and 162 EPC.
For each statement, indicate whether it is
true or false.
Rule 162(1) EPC
- A claims fee is due for each claim in excess of 15 upon entry to the EP phase.
- In this case, 12 excess claims fees are due; 5 have been paid.
- The remaining 7 claims can still be paid within the 6m period of R 161(2), in which the applicant is notified of the possibility to file amendments.
- Statements 10.1, 10.3 and 10.4 are therefore false
- If the remaining 7 claims fees are not paid before expiry of the 6m period, the legal consequence is indeed that these claims are deemed abandoned – R. 162(4) EPC.
- Statement 10.2 is true.
