Where priority is claimed from an earlier application, the EPO requires a certified copy of the earlier application (priority document). Currently, where the priority document is an earlier Chinese, Korean, or United States patent application, the EPO includes a certified copy of the priority document in the file automatically and free of charge.
Following a recent decision of the EPO, from 1 January 2022, the EPO will no longer automatically include certified copies of earlier Chinese, Korean, or US patent applications in the file. Instead, applicants claiming priority from earlier Chinese, Korean, or US patent applications will be required to take positive action to support their priority claim. Applicants may use the WIPO’s DAS system free of charge by supplying the DAS access code, or file a certified copy of the priority document issued by the Chinese, Korean, or United States patent office.
This change affects applicants filing directly with the EPO and PCT applicants who, for whatever reason, fail to file their priority document validly during the international phase. PCT applicants who file their priority documents validly during the international phase and subsequently enter the European regional phase are unaffected.
The new rules apply to applications filed or entering the European regional phase on or after 1 January 2022. Until 1 January 2022, the EPO will continue to include a certified copy of the priority document automatically and free of charge.
EPO applicants claiming priority from Chinese, Korean and United States patent applications should discuss with their European patent attorney whether this change affects them. Applicants who are affected should review their procedures to ensure that they provide their European patent attorney with certified copies of priority documents or DAS access codes.
The EPO has issued a notice providing further information on the background and practical impact.