PCT NATIONAL PHASE

It is up to the applicant to decide whether and when to enter the PCT National Phase before each national (or regional) Office. The PCT International Phase continues, for any particular State, until entry into the PCT National Phase before the national Office concerned or until the expiration of the applicable time limit for entering the PCT National Phase before that Office. Prosecution of the national phase application is subject to the national intellectual property laws and regulations of the national office. Since the PCT National Phase may be entered before different Offices at different times, the international application may simultaneously be in the PCT National Phase for some States as well as being in the PCT International Phase. Where the PCT National Phase processing or examination has begun before a particular Office, any actions taken on the international application remaining in the PCT International Phase have no effect on the proceedings before that Office.

The following acts must be performed for entry into the PCT National Phase for a particular country:

(i) payment of the national fee;
(ii) furnishing of a translation, if needed; and
(iii) furnishing of a copy of the international application, except where not required by that Office.

FAQ – PCT NATIONAL PHASE

What are the consequences of failure to perform the acts required for entry into the PCT National Phase?

The consequences where, on expiration of the applicable time limit for entering the PCT National Phase, the required acts have not been performed, are that the international application loses the effect of a national application and the procedure comes to an end in respect of each Office before which they have not been performed. Non-performance of the required acts in respect of a certain Office does not alter this effect of the international application before the other Offices. The automatic loss of the effect relieves the applicant, where he decides not to pursue the international application in the PCT National Phase, of the need to expressly withdraw the international application or the designation or election of a certain State. Where the applicant fails to perform the required acts in time, he may ask the designated Office to maintain the effect of the international application and to excuse the delay.

NATIONAL FEES

What fees must be paid for entry into the PCT National Phase and when?

The fees to be paid for entry into the PCT National Phase are indicated in each National Chapter (Summary). They must be paid in the currencies and within the time limits that are also indicated there. If annual or renewal fees have become due by the time the PCT National Phase could start, they must be paid before the expiration of the time limit applicable for entering the PCT National Phase. The National Chapters give the necessary information in this respect.

Does the applicant have the right to claim the exemption, reduction or refunding of national fees?

The exemption, reduction or refunding of national fees is granted by various designated Offices. Each National Chapter (Summary) contains information on whether fee exemptions, reductions or refunds can be claimed and, if so, under what circumstances and in what amounts.

TRANSLATION OF THE INTERNATIONAL APPLICATION

In what case must the international application be translated?

A translation of the international application must be furnished if the language in which it was filed or published is not a language admitted by the designated Office.

What is the language into which the international application must be translated?

The language or languages prescribed by the designated Offices are given in the National Chapter (Summary) relating to each Office. Where several languages are given, the applicant may choose the language which suits him best. It should be noted that the language in which the translation of the international application is furnished is usually also the language for the whole procedure before the designated Office.

What must the translation comprise?

The translation must comprise a translation of the description (including the title of the invention), of the claims and of any text matter in the drawings, as originally filed and/or as amended —each National Chapter (Summary) lists what the translation must comprise for the designated Office concerned. For the translation of the abstract and of the request, see the following paragraphs.

Does the abstract require translation? Normally the abstract must also be translated, but some Offices do not require a translation for the PCT National Phase. The National Chapter (Summary) relating to each Office which requires that the abstract be translated contains an indication to that effect.

Does the request require translation?

The designated Offices have the right to require a translation of the request but most of them do not require it. The National Chapter (Summary) relating to each Office which requires that the request be translated contains an indication to that effect.

How does the applicant prepare a translation of the request?

The usual way of translating the request is to transfer the data contained in the request of the international application as filed to a request form in the language of the translation. Every designated Office that requires a translation of the request is obliged to furnish to the applicant—free of charge—a copy of the request form in the language of the translation. It should be noted that the use of the request form in the language of the translation is optional, so that applicants who do not have such a form may present the translation in a different format.

Which are the claims that must be translated where the claims have been amended under Article 19?

Normally, only the claims as amended have to be translated. The designated Offices do, however, have the right to require a translation of the claims both as originally filed and as amended under Article 19. Each National Chapter (Summary) contains information on the applicable requirements. As to translations of the claims as amended under Article 19 in a case where the international application has been the subject of international preliminary examination.

Where a designated Office requires a translation of both the claims as filed and of the claims as amended under Article 19, but the applicant furnishes only one of the required two translations, the designated Office either disregards the claims of which a translation has not been furnished or invites the applicant to furnish the missing translation within a time limit which must be reasonable in the circumstances. If such an invitation is issued but the missing translation has still not been furnished within that time limit, the designated Office may either disregard the claims whose translation is missing or consider the international application withdrawn.

Must any statement explaining amendments made to the claims under Article 19 be translated?

This statement must be translated only where required by the designated Office (see the National Chapter (Summary)). Failure to furnish a translation of the explanatory statement has no effect on the international application itself; it can only result in the statement being disregarded by the designated Office.

What must be translated where the international application has been the subject of international preliminary examination?

Amendments to the description, claims or drawings under Article 34 that have been filed with the International Preliminary Examining Authority and have been taken into account for the establishment of the international preliminary examination report will be annexed to that report. Any amendments under Article 19 as well as replacement sheets containing rectifications of obvious errors, will similarly be annexed to the report if they have been taken into account. A translation of the amendments annexed to the report must be furnished together with the translation of the international application within the applicable time limit under Article 39(1).

If there have been any amendments under Article 19 which are not annexed to the international preliminary examination report, a translation of those amendments need not be furnished to most elected Offices. A few elected Offices do, however, require translations of amendments under Article 19 even if they are not annexed to the international preliminary examination report.

Does the translation have to contain drawings?

No applicant is required to furnish original drawings to the designated Offices together with the translation of the international application. Those Offices may require only the furnishing of a copy of the original drawing(s), and few actually do so. The National Chapter (Summary) relating to each of them contains information on that point. If the copy of the drawings is not furnished within the time limit for entering the PCT National Phase, the international application does not lose its effect, but the designated Office invites the applicant to furnish the missing copy.

How must the translation of text matter in drawings be presented?

Where a drawing, a table or the like contains text matter, that text matter must be translated. There are two methods that may be used for the physical presentation of the translated text matter. One is to furnish new sheets of drawings, tables, etc., containing the translated text matter. The other is to paste the translation over the original text matter and to furnish a copy of that sheet. The latter method, however, requires the copy to be of good quality and fit for reproduction by the designated Office. If it is not, the designated Office may invite the applicant to correct the defect. The expression “Fig.” which is frequently used in drawings does not require translation into any language. If the translation of the text matter of the drawings is not furnished within the time limit for entering the PCT National Phase, the international application may lose the effect of a national application.

What are the physical requirements for the translation?

The translation of the international application and any copy of drawings must comply with the physical requirements prescribed by the designated Office. However, no such Office has the right to require compliance with requirements as to the form of the translation of the international application that are different from or additional to those laid down in the PCT and the Regulations for the filing of international applications. Therefore, if the papers furnished to the designated Office comply with the physical requirements for international applications, they must be accepted by that Office.

In how many copies must the translation be furnished?

One copy of the translation is in principle sufficient for entering the PCT National Phase. There are some designated Offices, however, that require two or more copies. Where this is the case, it is mentioned in the National Chapter (Summary). If one or more copies are missing, those Offices give the applicant an opportunity to furnish them once the PCT National Phase has started.

Must the translation be certified?

The translation of the international application furnished for entry into the PCT National Phase does not need to be certified by a public authority or a sworn translator. However, if later the designated Office reasonably doubts the accuracy of the translation, it may require the applicant to furnish a certification of the translation.

Must the translation be verified?

Verification of a translation means that the translation must be accompanied by a statement signed by the applicant or by the translator, to the effect that, to the best of his knowledge, the translation is complete and faithful. There are only a few designated Offices that require verification.

COPY OF THE INTERNATIONAL APPLICATION

Must a copy of the international application be furnished by the applicant to the designated Office for entry into the PCT National Phase?

Under normal circumstances, none of the designated Offices requires a copy of the international application to be submitted by the applicant. There are only a few that do require a copy where the communication by the International Bureau of a copy of the international application under Article 20 has not taken place (for details, see the Summary in the National Chapters). That communication is effected by the International Bureau promptly after international publication, during the nineteenth month from the priority date.

On the other hand, where the applicant makes an express request for early processing of the international application before the communication of the international application has taken place, he must either furnish a copy of the international application, and of any amendment filed under Article 19 with the International Bureau, at the same time as he makes the express request for early processing to the designated Office or request the International Bureau to transmit a copy of his international application to the designated Office. The other acts prescribed for entering the PCT National Phase must also be complied with.

USE OF NATIONAL FORMS

Is the use of national forms mandatory for entry into the PCT National Phase?

No applicant may be required to use a national form to perform the acts prescribed for entry into the PCT National Phase. Several Offices do, however, keep such forms at the disposal of applicants, and their use is recommended. The National Chapters contain information about existing forms, and the annexes to the Chapters reproduce samples of them.

SUBSTANTIVE CONDITIONS OF PATENTABILITY

What is the effect of the PCT on the substantive conditions of patentability applied in the PCT National Phase?

The PCT leaves each Contracting State free to prescribe such substantive conditions of patentability as it desires. This is particularly true of what constitutes “prior art.” However, since the requirements of prior art as defined in the PCT and its Regulations for the purposes of the PCT National Phase are generally as strict as, or stricter than, those defined in any national law, the chances of unpleasant surprises by way of previously uncited prior art references being raised during the PCT National Phase are substantially reduced. On the other hand, the PCT does not prevent any national law from requiring the applicant to furnish, in the PCT National Phase, evidence in respect of any substantive condition of patentability prescribed by that law.

CORRECTION OF TRANSLATION

May the applicant correct errors in the translation of the international application?

Where the translation of the international application contains an error, that error may be rectified, during the PCT National Phase, before all designated Offices with the exception of the national Office of the Republic of Korea.

The scope of the translation of the international application may not, however, exceed the scope of the international application in its original language. Where, for example, as a result of incorrect translation, the scope of the international application in the language of the translation is narrower than in its original language, that scope may be broadened but must not exceed the original scope. Where the scope of the translation is broader than that of the international application in its original language, the designated Office or any other competent authority of the designated State may limit accordingly the scope of the international application or of a patent resulting from it.

AMENDMENT OF THE INTERNATIONAL APPLICATION FOR THE PCT NATIONAL PHASE

May the applicant amend the international application for the PCT national phase?

The PCT guarantees that the applicant may amend the claims, the description and the drawings before any designated Office. Although he already has the opportunity to amend the claims in the PCT National Phase, he may wish to make further amendments, which may be different for the purposes of the various designated Offices, in the PCT National Phase, or he may wish to amend also the description or the drawings (which is not possible during the PCT National Phase unless the applicant has made a demand for international preliminary examination). All designated and elected Offices are obliged to permit such amendments for at least one month from the time when the applicant performs the steps necessary to enter the PCT National Phase. In any event, most designated and elected Offices permit amendments at any time during the national examination procedure.

May the applicant correct obvious errors in the international application for the PCT National Phase?

Normally, any obvious error in the description, claims and drawings may be corrected before the designated Office. The correction can be presented as an amendment , provided that the scope of the international application as originally filed is not broadened thereby. Where the rectification concerns an obvious error in the request, some designated Offices may refuse certain rectifications if the request for rectification was not already contained in the international publication of the international application.

Where the authorization of rectification has been refused during the PCT National Phase and the applicant has made a request for publication, he should repeat the request for rectification before each designated Office in a language admitted by that Office. The conditions for allowing the rectification of an obvious error depend on the national law and practice applied by the designated Offices. Applicants are advised to inquire at the Offices concerned regarding the conditions applicable.

REVIEW IN THE PCT NATIONAL PHASE OF CERTAIN DECISIONS MADE DURING THE PCT NATIONAL PHASE

Of what decisions may a review be requested? A review by the designated Office of the following decisions may be requested:

(i) the receiving Office has refused to accord an international filing date to the international application because of certain defects in that application;
(ii) the receiving Office has declared that the international application is considered withdrawn because of certain defects in that application or because of non-payment of the prescribed fees;
(iii) the International Bureau has made a finding that the international application is considered withdrawn because it has not received the record copy within the prescribed time limit;
(iv) the receiving Office has declared that the designation of any given State is considered withdrawn (because of non-payment of the corresponding designation fee).

Thus those decisions that may have been made during the PCT National Phase and affect the international application as such, or a certain designation, are subject to review by each designated Office. Review by the designated Office consists of an examination to ascertain whether the receiving Office’s refusal or declaration or the International Bureau’s finding was the result of an error or omission on the part of the authority concerned.

How may the right to request a review be exercised and when?

In any of the four cases the applicant must, if he wants the decision to be reviewed,

(i) request the International Bureau, with reference to Article 25, to send to each designated Office specified by him a copy of any relevant document in the file; this request must be in English or French;
(ii) request each of those designated Offices, separately, to review the decision affecting his international application, giving the facts and evidence indicating an error or omission on the part of the receiving Office or of the International Bureau, as the case may be; in addition, and at the same time, the applicant must pay to the said designated Office the national fee for entry into the PCT National Phase, and furnish a translation of the international application where required; for details about fees and required translations; the request to the designated Office must be in the language of the translation, where a translation is required; where the review requested concerns the refusal to accord an international filing date, the applicant must attach to his request a copy of the notice informing him of the refusal.

Both the request to the International Bureau and the request to any designated Office must reach the authority concerned within two months from the date of the notification informing the applicant of the unfavorable decision.

What may be the result of a review by the designated Office?

If the applicant has complied with the requirements outlined in the preceding paragraphs, the designated Office will make a finding on whether the decision at issue was justified and, if it finds that it was the result of an error or omission, it must treat the international application as if that error or omission had not occurred, and maintain the effect of the international application as a regular national application as of the international filing date. If it finds that the decision at issue was not the result of an error or omission, it may nevertheless maintain that effect of the international application. The latter may be the case where the decision was the result of failure to meet a prescribed time limit (such as for the furnishing of corrections or the payment of fees); in such a case, the applicant is well advised to request the designated Office not only to review the decision but also to excuse the delay.

EXCUSING OF DELAYS IN MEETING TIME LIMITS

Can a delay in meeting a time limit be excused?

A delay in meeting a time limit which has resulted in the international application being considered withdrawn, during either the PCT National Phase or the PCT National Phase, may be excused under certain circumstances. The excusing of a delay is understood as any decision which has the effect of the international application being treated as if the time limit had not been missed. The excusing of a delay cannot be requested during the PCT National Phase, however. It may be granted only in the PCT National Phase (for delays in both the PCT National Phase and the PCT National Phase) by each designated Office individually, and only as far as that Office is concerned. The conditions laid down by the national law of each designated Office are decisive in determining whether a delay must be or may be excused. All national provisions related to the excusing of delays must be applied to international applications in the same way and under the same conditions as they are to national applications. Examples of such provisions are those that allow reinstatement of rights, restoration, restitution in integrum, revival of abandoned applications, further processing, continuation of proceedings, and so on.

In respect of what time limits may delays in compliance be excused?

The time limits concerned are all those fixed in the PCT (Treaty and Regulations) and also any time limit fixed by a PCT authority and any time limit either fixed by, or in the national law applicable by, the designated Office for the performance of any act by the applicant before that Office, including the time limit for entering the PCT National Phase.

What must be done by an applicant who has missed the time limit to enter the PCT National Phase within the applicable time limit?

Contracting States are required to provide the possibility to reinstate the rights of the applicant with respect to an international application where the applicant failed to comply with the requirements of Article 22 or 39.1. Some Contracting States have notified the International Bureau, under Rule 49.6(f), of the incompatibility of this Rule with their national laws. A table of such notifications is available online on WIPO’s website. Once a State has taken the necessary actions to amend its national law, notification of this will be published in the PCT Gazette and the table of notifications updated accordingly. Moreover, even if a Contracting State has made a notification under Rule 49.6(f), the applicant is advised to refer to the relevant national chapter and/or to check with the Office concerned whether a system to reinstate the rights with respect to an application exists or not. Some States have made notifications only because their national laws already contain provisions for the reinstatement of rights but said provisions are not in line with the contents of Rule 49.6. Some States therefore have no procedure in place to reinstate the rights with respect to an application whereas others do have such systems, either more or less favorable to the applicant than Rule 49.6.

What must be done by the applicant who has missed a time limit?

The applicant must perform all acts required for entry into the PCT National Phase. He must at the same time request the designated Office to excuse the delay and to maintain the effect of the international application before it. The procedure depends on the national requirements applicable, including any time limit for filing a request to excuse the delay. Those requirements are indicated in the National Chapters. Applicants can usually be sure of meeting any such time limit when the request to excuse is made and the acts for entering the PCT National Phase are performed either within two months from the date of the notification of the unfavorable decision or within two months from the date on which the missed time limit (such as the time limit for entering the PCT National Phase) expired.

The request for a delay to be excused should be made in addition to, and together with, any request for the review of a decision made by the receiving Office declaring the international application withdrawn for failure to comply with any requirement within a certain time limit. Should the designated Office confirm the decision made by the receiving Office, it may nevertheless maintain the effect of the international application because, under its national law, the delay may be excused under provisions on the reinstatement of rights, the revival of an abandoned application, the continuation of proceedings or the like. It should be noted that, as outlined in the preceding paragraphs, the applicant must, before each Office concerned, fulfill all the conditions specified in the applicable national law, including the making of the request for excusing within any time limit that may be prescribed by the national law.

Must the late arrival of a document caused by irregularities in the mail service be excused?

If a time limit fixed in the Treaty or the Regulations is missed because of the delayed arrival of a document or letter, it must be excused if it was caused by a delay in the mail or by an interruption of the mail service, provided that sufficient evidence is produced and the mailing was by mail registered with the postal authorities. Similarly, and under the same conditions, a new copy of a document or letter may be substituted for a document or letter lost in the mail, provided that the replacement document or letter is proved to be identical with the one lost.

RECTIFICATION OF ERRORS MADE BY THE RECEIVING OFFICE OR BY THE INTERNATIONAL BUREAU

What are the errors made by the receiving Office or the International Bureau that may be rectified?

If the receiving Office has made an error in fixing the international filing date or if the priority claim in the request has been erroneously by the receiving Office or the International Bureau, the designated Office must rectify the error if it is one that it would have rectified in accordance with national law or national practice had it made it itself.

What must be done to request rectification of such an error and when?

The applicant must request the designated Office to rectify the error and must prove, to the satisfaction of the Office, that the international filing date accorded by the receiving Office is incorrect owing to an error made by the latter Office, or that a priority claim has been by the receiving Office or the International Bureau. The request should be made on entering the PCT National Phase.

ACTS TO BE PERFORMED DURING THE PCT NATIONAL PHASE

What has to be done by the applicant once the PCT National Phase has started?

The usual national procedure applies to international applications during the PCT National Phase. What is said in the foregoing text concerns only the acts that must be performed for entry into the PCT National Phase and those acts that should be performed on entering the PCT National Phase but may still be performed once it has started. What has to be done thereafter—at least the main procedural steps—is outlined for each designated Office in the National Chapter dealing with that Office. Applicants who are not familiar with the patent procedure before a certain designated Office should seek professional advice even where they are not obliged to be represented before that Office by an agent.

CORRESPONDENCE WITH AND PAYMENTS TO DESIGNATED OFFICES

How should the international application be identified?

All documents sent and all payments of fees to a designated Office (and any letter accompanying such documents or payments) should indicate—if already known—the national serial number given to the international application by the designated Office. Where the national number is not yet known (or not given), the international application number should be indicated, preferably together with the international filing date, the name of the applicant and the title of the invention.

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.