15) PCT procedure

Question 1

What is the DL for file a cert. copy at the IB

Answer 1

PD + 16M

Question 2

If you file a cert. copy:
(i) after the PD+16M period; but
(ii) before the date of international publication (~2M later)

What is the effect?

Answer 2

The cert. copy is deemed as “received on the last day of the 16M period”

Question 3

Who does a cert. copy of Priority doc need to be sent to?
What options exist?

Answer 3

To the International Bureau (IB)

1) Request the National PO (UKIPO) as RO to transmit it
OR
2) Provide IB with PDAS code

Question 4

What remedy exists if not cert. copy has been provided to IB?

Answer 4

Provide copy to each Designated state (during National phase)

Question 5

What is the consequence if cert. copy is still not filed by NPE/RPE?

Answer 5

PCT will lose it claim to priority-forming application

Later EFD –> intervening prior art

Question 6

What happens if no AFS on PCT(GB) at NPE?

Answer 6

If no AFS and:

1. Applicant /Representative still contactable –> 2M to provide an AFS (+ R108 extendable)
2. No one is contactable… –> PCT is deemed withdrawn

Question 7

What is the DL for NPE into the UK? Is it extendable, and if so on what legal basis?

Answer 7

31M

Extendable based on R108(2) + R102(3)
For discretionary, 1M is ‘generally’ allowable by UKIPO

Question 8

What are the 3 fees necessary for entering PCT NPE? Who are they payable to?

Answer 8

Filing fee (International Bureau)
Search fee (ISA)
Transmittal (RO)

Question 9

What is the PCT DL for paying the 3 ‘entrance’ fees?

What happens if not paid?

Answer 9

1M from NPE

IB will issue an invitation to pay (+50% surcharge)

Invitation sets another 1M DL for payment.

Question 10

What is the DL for filing amendments to the claims (Art.19) during the international phase?

Clue = think Publication

Answer 10

The latest of:
1. Issue of ISR + 2M
2. PD +16M

Question 11

Under what situation would Art.19 claim amendments not be allowed?

Answer 11

If the ISA has declared that no international search report can be established [Art.17(2)(a)]

Question 12

What is the DL for a Demand for international preliminary examination?

Answer 12

The latest of:
1. Issue of ISR + 3M
2. PD + 22M

Question 13

What are NPE for US, JP, EP and UK?

Answer 13

JP and US –> 30M
UK and EP –> 31M

Question 14

How must you ensure that the national/regional patent office begins to process an application that you filed before the 30/31M deadlines?

Answer 14

1. Explicitly request Early Processing
2. Make sure that all fees are paid on making the request

Question 15

What is the DL for correcting obvious mistakes (R91.2 PCT) during the international phase? Who should the request be sent to?

Answer 15

PD+26M
Depends on the stage:
1. If early –> rO
2. If during Chap 1 –> ISA
3. If during Chap 2 –> IPEA

Question 16

By when are the technical preps for international publication completed? Contrast with EPO/UK preps?

Answer 16

Completed by the 15th day prior to the date of publication (PD+18M).

Much later than the preps in EP and UK which close 5 weeks prior to PD+18M (i.e., 16M and 3 weeks)