INTERNATIONAL PATENT ATTORNEYS

THE PCT INTERNATIONAL PATENT PHASE
The PCT international patent phase consists of four main steps of which the first three occur automatically and the last is optional for the applicant. The first three steps consist of the filing of the PCT international patent application by the applicant and its processing by the receiving Patent Office, the establishment of the PCT international search report and written opinion by one of the PCT international Searching Authorities, and the publication of the PCT international patent application together with the PCT international search report. The third step includes communication of the published PCT international patent application and the PCT international search report, as well as the PCT international preliminary report on patentability (Chapter I of the PCT), by the PCT international Bureau of WIPO to the national (or regional) Offices which the applicant wishes to grant him a patent on the basis of his PCT international patent application. The communication occurs upon request by the designated Office to the PCT international Bureau.

The optional fourth step involves what is known as PCT international preliminary patent examination (under Chapter II of the PCT), and is concluded with the establishment of the PCT international preliminary report on patentability (Chapter II of the PCT) by one of the PCT international Preliminary Examining Authorities. The PCT international preliminary report on patentability (Chapter II of the PCT) analyzes aspects of the general patentability of the invention. Together with the published PCT international patent application and the PCT international search report, the PCT international preliminary report on patentability (Chapter II of the PCT) is communicated to the Offices which the applicant wishes to grant him a patent on the basis of his PCT international patent application. The communication occurs upon request by the elected Office to the PCT international Bureau.

FAQ – FILING AN PCT international patent application
What is a PCT international patent application?

A patent application is a PCT international patent application when it is filed under and with reference to the Patent Cooperation Treaty (PCT). It is the first step towards obtaining a patent in or for a country that is a signatory (Contracting State) to the PCT.

What may be the subject of a PCT international patent application?

An PCT international patent application must be an application for the protection of an invention. The PCT encompasses the filing of applications for patents for inventions, inventors’ certificates, utility certificates, utility models, and various kinds of patents and certificates. An PCT international patent application thus cannot validly be filed for certain other forms of industrial or intellectual property rights which fall outside the scope of “inventions,” such as, for example, purely ornamental designs.

What are the main effects of an PCT international patent application?

Any PCT international patent application has two main effects. One of those effects, generally speaking, is the same as that of a national (or regional) application. It occurs on the date accorded as the PCT international patent filing date.

Where should an PCT international patent application be filed?

Where there are several applicants who are not all nationals and/or residents of the same Contracting State, any receiving Patent Office of or acting for a Contracting State of which at least one of the applicants is a resident or national is competent to receive an PCT international patent application filed by those applicants. Alternatively, at the applicant’s option, the PCT international patent application may be filed with the PCT international Bureau as receiving Patent Office, regardless of the Contracting State of which the applicant is a resident or national. If there are two or more applicants, the PCT international patent application may be filed with the PCT international Bureau as receiving Patent Office if at least one of the applicants is a resident or national of a Contracting State. Applicants may have a choice between several receiving Patent Offices, for example, where there are two or more applicants whose States of nationality and residence include more than one Contracting State, or where a sole applicant has nationality and/or residence in more than one Contracting State.

What are the elements of a PCT international patent application?

Any PCT international patent application must contain the following elements: request, description, claim or claims, one or more drawings, and abstract.

What is the order of the elements of the PCT international patent application?

The elements of the PCT international patent application must be arranged in the following order: request, description, claims, abstract, drawings.

PROCESSING OF THE PCT international patent application BY THE receiving Patent Office
What are the main procedural steps at the receiving Patent Office?

The main procedural steps that any PCT international patent application goes through at the receiving Patent Office are the following:

(i) the PCT international patent application and the related fees are received by the receiving Patent Office;
(ii) the PCT international patent application is checked by the receiving Patent Office to determine whether it meets the requirements prescribed by the PCT as to the language, form and contents of PCT international patent applications (the checks performed by the receiving Patent Office are of a formal nature and do not go into the substance of the invention);
(iii) where the checks made by the receiving Patent Office show that the PCT international patent application does not meet certain requirements as to fees, language, form and contents, that Office invites the applicant to furnish the necessary corrections;
(iv) where the checks made by the receiving Patent Office show that the PCT international patent application meets the requirements prescribed for that purpose by the PCT, an PCT international patent filing date is accorded to the PCT international patent application by the receiving Patent Office;
(v) copies of the PCT international patent application, its translation, where applicable, and other related documents are transmitted by the receiving Patent Office to the PCT International Patent Searching Authority and to the PCT international Bureau so that they may carry out the procedural steps for which they are responsible in the further processing of the PCT international patent application.

What are the additional procedural steps at the receiving Patent Office for processing a request form printout prepared using the PCT-SAFE software?

For those receiving Patent Offices which have indicated that they are prepared to accept such requests, in addition to those procedural steps listed in paragraph 219, the receiving Patent Office will review each request form printout prepared using the PCT-SAFE software to ensure that:

(i) the request is presented as a computer print-out prepared using the PCT-SAFE software;
(ii) the request is filed together with a computer diskette prepared using the PCT-SAFE software; and
(iii) the computer diskette contains a copy in electronic form of the data contained in the request and the abstract.

How does the PCT international patent application reach the receiving Patent Office?

The PCT international patent application may be deposited with or mailed to the receiving Patent Office. It may also be filed by other means of rapid communication, notably by facsimile machine, provided that the receiving Patent Office places such facilities at the disposal of applicants and that the original is furnished within 14 days, if so required by the receiving Patent Office.

Is the PCT international patent application treated as confidential by the receiving Patent Office?

Yes, it is. Third parties are not permitted to have access to the PCT international patent application, unless requested or authorized by the applicant, before the date of PCT international publication. Designated Offices are, however, permitted to publish the fact that they have been designated, together with a limited amount of bibliographic data.

PCT INTERNATIONAL PATENT FILING DATE
What are the conditions that must be fulfilled for the PCT international patent application to be entitled to an PCT international patent filing date? The receiving Patent Office must accord an “PCT international patent filing date” to the PCT international patent application if it finds that the following conditions are fulfilled:

(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an PCT international patent application with the receiving Patent Office;
(ii) the PCT international patent application is in the prescribed language;
(iii) the PCT international patent application contains at least the following elements:

(a) an indication that it is intended as PCT international patent application,
(b) a request which constitutes the designation of a Contracting State bound by the PCT on the PCT international patent filing date,
(c) the name of the applicant,
(d) a part which on the face of it appears to be a description, and
(e) a part which on the face of it appears to be a claim or claims.

What is the effect of failing to file a paper copy of the PCT international patent application when the request is prepared as a printout using the PCT-SAFE software?

A PCT-EASY diskette filed alone—without any corresponding patent application papers—does not meet the requirements for according an PCT international patent filing date. The paper form of the PCT international patent application remains the legally determinative version. Thus, the paper form of the PCT international patent application which accompanies a request prepared using PCT-SAFE must contain the required elements in order to receive an PCT international patent filing date.

What date is accorded as the PCT international patent filing date?

The reply to this question depends on whether the requirements for according an PCT international patent filing date were fulfilled on the date on which the PCT international patent application was received by the receiving Patent Office or—following correction of defects in relation to those requirements—on a later date. The PCT international patent filing date will, in the former case, be the date on which the PCT international patent application was received by the receiving Patent Office and, in the latter case, the date on which the correction was received by the receiving Patent Office. Naturally, any correction has to comply with some conditions; in particular it has to be filed within a certain time limit.

Does non-payment, incomplete payment or late payment of fees influence the PCT international patent filing date?

No, however, those defects will eventually lead the receiving Patent Office to declare that the PCT international patent application is considered withdrawn. Although an PCT international patent application which has not been accorded an PCT international patent filing date and an PCT international patent application which is considered withdrawn are both excluded from further processing in the PCT international patent phase, an PCT international patent application which fulfills the requirements necessary for it to be accorded an PCT international patent filing date may be invoked as a priority application under the Paris Convention for the Protection of Industrial Property (if the conditions laid down by that Convention are fulfilled) even where the PCT international patent application is considered withdrawn under the PCT (for non-payment of fees or other reasons).

Can the receiving Patent Office refuse to treat a PCT international patent application as such for reasons of national security?

Each Contracting State is free to apply measures deemed necessary for the preservation of its national security. For example, each receiving Patent Office has the right not to treat an PCT international patent application as such and not to transmit the record copy to the PCT international Bureau and the search copy to the PCT International Patent Searching Authority. Compliance with national security prescriptions where the PCT international patent application is filed with the PCT international Bureau as receiving Patent Office will not be checked by the PCT international Bureau; such compliance is the applicant’s responsibility. Where an PCT international patent filing date has been accorded but national security considerations prevent transmittal of the record copy, the receiving Patent Office must so declare to the PCT international Bureau before the expiration of 13, or at the latest 17, months from the priority date.

How does the applicant know whether his application has been accorded an PCT international patent filing date or that his application is not treated as an PCT international patent application or is considered to have been withdrawn?

Where the receiving Patent Office accords an PCT international patent filing date to the PCT international patent application, it promptly notifies the applicant of that date and of the PCT international patent application number; where it decides that the PCT international patent application is not to be treated as an PCT international patent application (because of a negative determination for lack of compliance with Article 11, or because national security considerations prevent it from being treated as such) or is to be considered withdrawn, it promptly notifies the applicant accordingly.

Can an PCT international patent filing date once accorded be “taken away”?

If, after having accorded an PCT international patent filing date, the receiving Patent Office finds that it should not have accorded it, the PCT international patent application is considered withdrawn and the receiving Patent Office so declares and promptly notifies the applicant. However, such a finding may validly occur only during the four months following the PCT international patent filing date and must be preceded by notification to the applicant of the intention to make the declaration. The applicant has the right to submit arguments within one month from the notification. For the rectification of errors made by the receiving Patent Office in according the PCT international patent filing date, see Rule 82ter.1 and Volume II.

TRANSLATION OF PCT INTERNATIONAL PATENT APPLICATIONS
When is a translation of the PCT international patent application required? Every receiving Patent Office must accept, for the purpose of filing PCT international patent applications, at least one language which is both a language of publication and a language accepted by the PCT International Patent Searching Authority, or, if applicable, by at least one of the PCT international Searching Authorities, competent for the PCT international searching of PCT international patent applications filed with that receiving Patent Office. In addition, any receiving Patent Office may accept one or more other languages for the purpose of filing PCT international patent applications. A translation of the PCT international patent application is required when the language in which the PCT international patent application is filed is a language which is not a language of publication and/or a language accepted by the PCT International Patent Searching Authority which is to carry out the PCT international search.

What are the translation requirements if the PCT international patent application is filed in a language which is not accepted by the PCT International Patent Searching Authority?

Where the language in which the PCT international patent application is filed is not accepted by the PCT International Patent Searching Authority that is to carry out the PCT international search, the applicant must furnish, to the receiving Patent Office, a translation of the PCT international patent application into a language which is both a language accepted by that Authority and a language of publication. Moreover, unless the PCT international patent application was filed in a language of publication, the language into which the PCT international patent application is translated must also be a language in which PCT international patent applications may be filed with the receiving Patent Office concerned.

The translation of the PCT international patent application must be furnished to the receiving Patent Office within one month from the date on which the PCT international patent application was received by that Office. Where, by the time the receiving Patent Office notifies the applicant of the PCT international patent application number and PCT international patent filing date, the applicant has not furnished the required translation, the receiving Patent Office will, preferably together with that notification, invite the applicant to furnish the required translation either within the time limit of one month from the date on which the PCT international patent application was received by the receiving Patent Office, or, in the event that the required translation is not furnished within that time limit, to furnish it and to pay, where applicable, the late furnishing fee, within one month from the date of the invitation or two months from the date of receipt of the PCT international patent application by the receiving Patent Office, whichever expires later.

Where the receiving Patent Office has sent to the applicant an invitation to furnish the translation and, where applicable, pay the late furnishing fee, and the applicant has not done so within the applicable time limit, the PCT international patent application will be considered withdrawn and the receiving Patent Office will so declare. However, any translation and any payment which are received by the receiving Patent Office before that Office makes the declaration that the PCT international patent application is considered withdrawn, and before the expiration of 15 months from the priority date, will be considered to have been received before the expiration of the applicable time limit.

The late furnishing fee which any receiving Patent Office may collect for translations which are furnished after the expiration of the time limit of one month from the date on which the PCT international patent application is received by the receiving Patent Office, is equal to 25% of the PCT international patent filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the PCT international patent application in excess of 30 sheets.

CORRECTION OF DEFECTS
What defects in the PCT international patent application may be corrected and within what time limits?

The following paragraphs attempt to give general answers to those questions in the characteristic cases of possible defects.

What defects influence the PCT international patent filing date?

(i) Where the receiving Patent Office finds that the PCT international patent application does not comply with the requirements for according an PCT international patent filing date—in other words:

(a) that the applicant obviously lacks, for reasons of residence and nationality, the right to file an PCT international patent application with the receiving Patent Office,
(b) that the PCT international patent application does not contain an indication that it is intended as an PCT international patent application,
(c) that the PCT international patent application does not contain a request which constitutes the designation of all Contracting States bound by the PCT on the PCT international patent filing date,
(d) that the PCT international patent application does not contain the name of the applicant or does not contain at least the minimum indications concerning the name of the applicant,
(e) that the PCT international patent application does not contain a part which, on the face of it, appears to be a description and a part which, on the face of it, appears to be a claim or claims,

The receiving Patent Office may invite the applicant to correct the defect. The time limit for filing the correction is fixed by the receiving Patent Office. It must be reasonable under the circumstances; it may not be less than 10 days and not more than one month from the date of the invitation to correct. If the correction is made within the time limit, the date of receipt of the correction becomes the PCT international patent filing date; otherwise, the application is not treated as an PCT international patent application. Where the required elements of the PCT international patent application are not in a language accepted by the receiving Patent Office, that Office will transmit the PCT international patent application to the PCT international Bureau as receiving Patent Office.

What happens if all sheets of the PCT international patent application are not received on the same day?

The receipt of further sheets after an invitation to correct has been sent generally results in the date of receipt of those further sheets being accorded as the PCT international patent filing date, provided that they are received within the applicable time limit (. If no invitation to correct has been sent but all the sheets relating to the same purported PCT international patent application (apart from the abstract) are not received on the same day by the receiving Patent Office, that Office corrects the request by marking on it the date on which the papers completing the PCT international patent application were received, and that later date is accorded as the PCT international patent filing date, provided that the later sheets were received within 30 days from the date on which sheets were first received. Each sheet is marked with the date on which it was actually received. The absence or late receipt of the abstract does not, of itself, result in correction of the date marked on the request or in the according of a later PCT international patent filing date.

What defects do not influence the PCT international patent filing date?

Where the receiving Patent Office finds that
(i) the PCT international patent application is not signed,
(ii) the PCT international patent application does not contain the name of the applicant presented in the prescribed way , or the prescribed indications in respect of at least one of the applicants, in particular, the applicant’s address, residence and nationality,
(iii) the PCT international patent application does not contain a title (that is, a title for the claimed invention),
(iv) the PCT international patent application does not contain an abstract,
(v) the PCT international patent application and, where applicable, the translation of the PCT international patent application, does not comply, to the extent provided for in the Regulations, with the prescribed physical requirements,
(vi) any element of the PCT international patent application, other than the description and claims, is not in an admitted language,

The receiving Patent Office may invite the applicant to correct the defect . The time limit for filing the correction is fixed by the receiving Patent Office. It must be reasonable under the circumstances; it may not be less than one month and normally not more than two months from the date of the invitation. If the correction is made within the time limit, the PCT international patent filing date remains the date on which the PCT international patent application was received by the receiving Patent Office; otherwise, the PCT international patent application is considered withdrawn.

What defects in request form printouts prepared using the PCT-SAFE software do not affect the PCT international patent filing date?

The following defects in requests prepared using the PCT-SAFE software do not affect the PCT international patent filing date:

(i) the request in PCT-SAFE format is filed without the PCT-EASY diskette;
(ii) the PCT-EASY diskette does not contain an abstract; or
(iii) the PCT-EASY diskette, accompanying a paper copy of the request, is defective or incomplete.

Can defects in priority claims be corrected?

Any defective priority claim may be corrected and any missing priority claim added by a notice which may be submitted to the receiving Patent Office or the PCT international Bureau. The time limit for correcting or adding a priority claim is 16 months from the priority date or, where the correction or addition would cause a change in the priority date, 16 months from the priority date as so changed, whichever 16-month period expires first, provided that a notice correcting or adding a priority claim may in any event be submitted until the expiration of four months from the PCT international patent filing date. To correct a priority claim, any indication relating to that priority claim may be changed, added or deleted.

Where the applicant has made a request for early publication of the PCT international patent application, any notice to correct or add a priority claim received by the receiving Patent Office or the PCT international Bureau after that request was made will be considered not to have been submitted, unless that request is withdrawn before the technical preparations for PCT international publication have been completed. Where the correction or addition of a priority claim causes a change in the priority date, any time limit which is computed from the previously applicable priority date and which has not already expired will be computed from the priority date as so changed.

Can defects in declarations be corrected? Can declarations be added?

Any defective declaration may be corrected and any new (missing) declaration may be added by a notice submitted to the PCT international Bureau by the applicant, either in response to an invitation to correct or on his own initiative. The time limit for correcting or adding a declaration is 16 months from the priority date. Any correction or addition which is received by the PCT international Bureau after that time limit is considered to have been received on the last day of the time limit if it reaches the PCT international Bureau before the technical preparations for PCT international publication have been completed.

Can failure to meet a time limit in the proceedings before the receiving Patent Office or a delay in furnishing documents to that Office be excused?

The PCT provides that any Contracting State must, as far as that State is concerned, excuse, for reasons allowed by the national law, any delay in meeting any time limit. Moreover, any Contracting State may, as far as it is concerned, excuse for other reasons any delay in meeting any time limit. Finally, any designated Office may maintain the effect of an PCT international patent application , even where the decision of the receiving Patent Office to the effect that the PCT international patent application, or the designation of the State concerned, is considered withdrawn is found to be correct.

RECORD COPY AND SEARCH COPY
How does the record copy reach the PCT International Bureau? What are the consequences if it does not reach the PCT international Bureau within the prescribed time limit?

The record copy, must reach the PCT international Bureau in time because, if the record copy has not been received by that Bureau within the prescribed time limit, the PCT international patent application is considered withdrawn. However, no PCT international patent application is considered withdrawn in such a case without the applicant having been informed beforehand. Failure to transmit the record copy does not relieve the applicant of the obligation to enter the PCT National Phase before the designated Offices within the applicable time limit.

How does the PCT international Bureau monitor the receipt of the record copy?

The PCT International Bureau, once informed by the receiving Patent Office of the PCT international patent application number and of the PCT international patent filing date, monitors the receipt of the record copy. If the PCT international Bureau has not received the record copy within 13 months from the priority date, it urges the receiving Patent Office to send it. If, one month later, the record copy has still not been received, the PCT international Bureau notifies the applicant of the fact. The applicant can then ask the receiving Patent Office either to transmit the record copy or to issue—and this must be done free of charge—a certified copy of the PCT international patent application which he can himself transmit to the PCT international Bureau. Only after the expiration of three months from the above-mentioned notification from the PCT international Bureau to the applicant may the PCT international Bureau make the finding that no record copy has been received within the prescribed time limit. Thus the applicant will always have been warned and offered the possibility of taking care of the transmittal of the record copy himself before any loss of rights can occur. The certification of a copy of the PCT international patent application must be made free of charge in such a case, and may be refused only in certain cases (for instance where national security considerations prevent the PCT international patent application from being treated as such; for details, see Rule 22.1(e)).

How does the search copy reach the PCT International Patent Searching Authority?

The search copy is transmitted by the receiving Patent Office to the PCT International Patent Searching Authority. The search copy is only transmitted if the PCT international search fee has been fully paid to the receiving Patent Office, and, where the PCT international patent application was filed in a language not accepted by the PCT International Patent Searching Authority, only after the required translation has been furnished. Therefore, it is in the applicant’s interests to pay the search fee promptly, and, where applicable, furnish the translation promptly, in order to avoid any delay in establishment of the PCT international search report. The PCT International Patent Searching Authority notifies the PCT international Bureau, the applicant and the receiving Patent Office of the fact and date of receipt of the search copy.

Can the applicant obtain certified copies of the PCT international patent application?

On payment of a fee, the receiving Patent Office must furnish to the applicant, at his request, certified copies of the PCT international patent application as filed and of any corrections to it. The certified copy of the PCT international patent application is the priority document where the applicant claims the priority of that PCT international patent application.

The PCT System offers many advantages, however, the procedural requirements and application formalities frequently change and strategic considerations can vary widely depending on individual circumstances. For legal advice on the PCT, consult a registered patent attorney qualified to assist you in international patent filing matters.