13) PCT

Question 1

Section 89
Effects of International Application for Patent

Answer 1

(1) Subject to s89A and s89B, a PCT application is treated as a GB application under this Act.

(2) If the application of UK designation is withdrawn during the international phase, it shall be treated as withdrawn under this Act…

(3) … unless it was only withdrawn because of an error by PCT body or because a copy of the application was not received by the IB in time for reasons outside of the applicant’s control.

…

(5) If a PCT application is refused an international filing date because of an error by a PCT body, the Comptroller may direct that the application nonetheless be treated as a GB application under this Act, with a filing date as he may direct.

Question 2

Section 89A
International and National Phases of Application

Answer 2

(1) PCT provisions for publication, search, examination and amendment apply during the international phase.

(2) The international phase means the period from PCT filing until the national phase.

(3) The national phase begins
(a) [31 months from (beginning immediately after) the priority date (R66)], provided that any necessary English translation of the application has been filed at the UKIPO, and with payment of the fee; or
(b) when the applicant requests early entry into the national phase and files a copy of the application (if not already sent to the UKIPO under the PCT) and, if necessary, a translation, at the UKIPO, and pays the fee.

(4) If the above is not done by the end of the [31 months (R66)], the application is considered withdrawn.

(5) A translation of any amendments made during the international phase should also be filed on entry to the national phase, otherwise the amendment will be disregarded under this Act. [Provided that a translation of the application was filed by the 31 month deadline, if a translation of amendments has not been filed by this deadline the Comptroller will give the applicant a further three months from notification to file such a translation. (R66, 69)]

(6) On payment of the fee the Comptroller will publish any filed English translation of the application or amendments.

[NB a request for a late priority declaration under s5(2B) can be made up to one month after the date of national phase entry. (R66)]

Question 3

Section 89B
Adaptation of Provisions in Relation to International Application

Answer 3

(1) A filing date, priority declaration and statement of the name of the inventor that are valid under the PCT are accepted as those under this Act.

(2) If an application is published under the PCT during the international phase, it shall be treated as published under this Act when the national phase begins. If the application is published under the PCT after national phase entry, it will be treated as published under this Act at the same time once it is published under the PCT.

(3) However, for the purposes of rights conferred upon publication (s69), it is treated as published under this Act when
(a) it is published under the PCT in English; or
(b) when it is published in a language other than English and an English translation thereof has been published under s89A(6), or an English translation has been sent to the infringer.

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(5) When the national phase begins the Comptroller will refer the application for search and examination to the extent he considers appropriate in view of any international search and examination.