2) The patent application process via the PCT – the international phase

Question 1

What is the PCT system and why file a PCT?

Answer 1

The PCT is a centralised filing system that allows an applicant to get pending patent protection in 153 countries.

It is not a granting authority.

Question 2

Advantages of filing a PCT

Answer 2

o PCT filing = bundle of potential national applications
o Need only file one application in one language → application with effect of national or
regional filing for many states
o Deferred costs and decision making
o Early search and examination

Question 3

Disadvantages of filing a PCT

Answer 3

o Delays national phase entry

o Unnecessary cost if you know which countries you wish to file in and do not need to delay

Question 4

Recent joiners to PCT?

Answer 4

o Samoa – 2 October 2019
o Jordan – 9 March 2017
o Cambodia – 8 Sept 2016
o Djibouti – 23 June 2016
o Kuwait – 9 June 2016
o Iran – 4 July 2013
o Saudi Arabia – 3 May 2013
o Panama – 7 September 2012

Question 5

Notable countries not in PCT

Answer 5

Argentina and Taiwan

Question 6

Countries that can only be designated in a European patent application?

Answer 6

France, the Netherlands (and also Belgium, Cyprus, Greece, Ireland (since 1 July 2020),
Latvia, Malta, Monaco Slovenia, Lithuania)

Question 7

Countries that can only be designated via another country.

Answer 7

Hong Kong via GB, EP(UK) or Chinese application

Question 8

Who can apply?

Answer 8

• The PCT system can be used by a “resident or national of a PCT contracting state”. Residency and nationality is determined by the law of the particular contracting state.

o Possession of economic activity = residency
o Legal entity in a state = national

Question 9

More than one applicant?

Answer 9

o Only one applicant need be entitled to file. Therefore provided there is at least one entitled applicant, it is ok for the application to include non-entitled applications (for example
patentees from Taiwan or Hong Kong).

Question 10

What happens if you only have non-entitled applicant(s)?

Answer 10

What happens if you only have non-entitled applicant(s)?
o Make entitled person e.g. agent in Contracting State, further applicant and:
▪ Either make agent applicant for a non-relevant country like Chad and do nothing; or
▪ Transfer rights to non-entitled applicant
▪ Notify IB
▪ No issue once filing date established

Question 11

Change Applicant Details?

Answer 11

• If you want to change the name, address, residence etc. of the applicant(s) you can notify the RO or preferably IB
• IB must have received request in writing by 30 months from priority date. Therefore, if close to this deadline file the request directly with the IB
• If you miss this date, you have to change the details in the national phase in each country – this can be expensive and is certainly time consuming.

Question 12

Where to File (RO)?

Answer 12

The PCT application must be filed at a competent Receiving Office (RO).

However, importantly, if the PCT application is filed at RO at which the applicant is not entitled to file the application, it is forwarded to the International Bureau, which then acts as RO and the date of filing at noncompetent RO is retained.

Thus, filing at the wrong RO does not adversely affect the filing.

Question 13

What is a “competent” Receiving Office?

Answer 13

o Based on the nationality/residence of the applicant;
o Applicants must almost always use the national/regional office of their country of
nationality/residence;
o In addition, any national/resident of a PCT country can use the International Bureau;
o For joint applicants of different nationality/residence, there is usually a choice of
national/regional offices;
o Nationals and residents of all EPC countries can use the EPO (NB national security)
[Art.151 EPC].

Question 14

Requirements for a Filing Date (clenid)

Answer 14

• To be entitled to file the application at a receiving office (therefore if you are a Taiwanese national and resident, don’t file a PCT application solely in your own name);
• To use a prescribed language (although remember that the IB accepts any language so, in
practice, this is not a meaningful requirement); and
• To include:
o an indication that international patent application is intended
o the name of the applicant
o designation of at least one contracting state
o a description and one or more claims (however, now see missing element provisions
and incorporation by reference if this is not done – it may not affect the filing date

Question 15

Fees - what are they, when are they due, any extensions? (sist)

Answer 15

• Within one month of date of receipt of international application, it is necessary to pay:
o The transmittal fee appropriate to the RO;
o The search fee appropriate to the ISA; and
o The international fee (including the fee per sheet over 30)

• If any or all of the fees are not paid, the RO sends an invitation to the applicant to pay the
missing fees:
o within one month of invitation;
o with a surcharge which is 50%, but not less than the transmittal fee or more than 50%
of the international filing fee

• If the applicant misses the initial one month deadline but sends the fees before the
invitation is sent to the applicant, the fees are deemed to have been received on time.

• If the fees are not paid in response to the invitation, the RO issues a declaration that the
application is deemed withdrawn. However, if the fees are paid (with surcharge) before the
declaration actually issues, the fees are deemed to have been filed on time and the
application remains alive.

Question 16

What are the recent updates to fees?

Answer 16

• As from 1 April 2020, the search fee and preliminary examination fee for the EPO will be reduced by 75% if the international application, the request for supplementary international search or the demand for international preliminary examination, as the case may be, is filed:

o by a natural person who is a national of and resident in a State which is not a Contracting
State of the European Patent Convention, and which, on the date of filing of the application
or on the date of payment of the supplementary search fee or of the preliminary
examination fee, is classed by the World Bank as a low-income or lower-middle-income
economy; or
o by a natural or legal person who, within the meaning of PCT Rule 18, is a national of and
resident in a state in which a validation agreement with the European Patent Organisation
is in force.
• If there are several applicants, each must satisfy one of these criteria.
• The reduction in the search fee will apply to all international applications filed on or after 1 April
2020, and the reduction in the supplementary search fee or in the preliminary examination fee
will apply in respect of payments made on or after 1 April 2020.

Question 17

Defects in the application that do not affect filing date (PASTA)

Answer 17

• When the RO receives the application, it also carries out a preliminary check to make sure
that everything has been filed correctly. If the RO identifies defects, it will contact the
applicant.
• Certain defects do not affect the filing date of the application and the RO writes to the
applicant inviting them to correct the defect within 2 months (the 2 month deadline was set
on 1 July 2009). Failure to correct these defects results in the application being deemed
withdrawn.

Defects falling into this category include:
• Lack of signature (if more than one applicant, request only needs signing by one applicant
entitled to file)
• Applicants’ details not presented in the prescribed manner (if more than one applicant,
details of only one applicant entitled to file need be given)
• No title
• No abstract
• Physical requirements of application not met (e.g. margins and drawings)

Question 18

What can PCT applications claim priority from?

Answer 18

As for normal applications, a PCT application can claim priority from an earlier application
within 12 months of filing the earlier application. PCT applications can claim priority from:
o Earlier national filing in Paris Convention (PC) or WTO country
o An earlier EP filing (because equivalent to a regular national filing)
o An earlier PCT filing (equivalent to regular national filing)

Question 19

What are the requirements to validly claim priority?

Answer 19

• As for normal applications, a PCT application can claim priority from an earlier application
within 12 months of filing the earlier application. PCT applications can claim priority from:
o Earlier national filing in Paris Convention (PC) or WTO country
o An earlier EP filing (because equivalent to a regular national filing)
o An earlier PCT filing (equivalent to regular national filing)

• To validly claim priority, a certified copy of the priority application is required by 16 months
from the priority date.
o But any certified copy that reached the IB before the publication date is deemed to
have been received within the 16 month period
o And, regardless, the national/regional offices must give the applicant an opportunity to
file a copy of the priority document at the start of the national/regional phase

Question 20

Discuss how the priority date may change?

Answer 20

• The RO will invite an applicant to correct any obvious defect in a priority claim. The
applicant can also voluntarily change or add priority claim (R26bis1(a)):
o At least up to 4 months from international filing date
o Or, if later, the earlier of:
▪ 16 months from priority date
▪ 16 months from priority date as changed or corrected expires after 4 month time
limit can add or change priority claim up to expiry of 16 month time limit
• If the earliest priority date is changed, any PCT time limits that have not already expired
are recalculated from the new priority date.
• Most importantly, it is possible to extend the National phase deadlines by withdrawing a
priority claim

Question 21

Discuss restoration in the context of priority.

Answer 21

• Discretionary right and is not available for all countries. LAST RESORT.
• Maximum extension of priority period: two months.
• Request restoration at RO (although can also request during national phase)
• Must include statement of reasons for failure to comply with the time limit (preferably with
declaration/evidence in support)
• Judged under one of two criteria:
1. failure to file the application within the priority period occurred in spite of due care
required by the circumstances having been taken
2. failure to file the application within the priority period was unintentional

• A) Incompatibility with priority restoration as RO [rule 26bis.3(j)] :
• BR (Brazil); CO (Colombia); CU (Cuba); CZ (Czech Republic); DE (Germany); DZ (Algeria);
GR (Greece); ID (Indonesia); IN (India); IT (Italy); KR (Korea); NO (Norway); PH (Philippines).
• * Norway no longer incompatible since 1 July 2019: applies “unintentional”
• B) Incompatibility of the effect of decision of RO on DO [49ter.1(g)]:
• BR (Brazil); CA (Canada); CN (China); CO (Colombia); CU (Cuba); CZ (Czech Republic); DE
Germany); DZ (Algeria); ID (Indonesia); IN (India); KR (Korea); LT (Lithuania); MX (Mexico);
NO (Norway); PH (Philippines); TR (Turkey)
• C) Incompatibility with Restoration of Right of Priority by Designated Office [49ter.2(h)]:
• BR (Brazil); CA (Canada); CN (China); CO (Colombia); CU (Cuba); CZ (Czech Republic); DE
(Germany); DZ (Algeria); ID (Indonesia); IN (India); KR (Korea); MX (Mexico); NO (Norway);
PH (Philippines); TR (Turkey)

Question 22

Discuss the recent changes to the requirement for re-establishment of rights in Norway?

Answer 22

• From 1 July 2019, the “due care” requirement for re-establishment of rights after failure to
meet a deadline has been replaced by “unintentional” criterion.
• From 1 July 2019, the Norwegian Industrial Property Office, being PCT receiving office and
designated office, started considering requests to restore right of priority if an international
application fails to meet the deadline on or after 1 July 2019. It also started accepting such
requests made by another receiving office if the requests meet other necessary conditions.
• In addition, it will apply criterion of “unintentional” for restoration requests for a payment of
a restoration fee.

Question 23

What is the International Searching Authority (ISA)?

Answer 23

• The International Searching Authority (ISA) is the body that carries out a search of the
invention in the PCT application. The selection of ISA depends on which RO are
competent ROs for the applicant(s). For example, for a PCT application filed at the UK
IPO as RO with a UK applicant, the applicant must use the EPO as competent ISA.

• If the International Bureau is used as RO, then the ISA depends on the ROs at which the
application should have been filed (i.e. it will be determined which ROs are competent and
the ISA is selected on this basis).

Question 24

Discuss earlier searches conducted prior to the search by the ISA.

Answer 24

• Applicants can request ISA to take into account the results of earlier searches:
o If earlier search carried out by same Office that is acting as ISA they must take it into account
o If earlier search carried out by another Office, they may take it into account

• Why?
o May get partial refund of the search fee if the ISA took the search results into account

• Formalities requirements:
o Request must be made in request form and earlier search results provided unless:
o ISA carried out search / RO carried out search (can ask them to provide results to ISA / earlier
search results are available to ISA in acceptable manner (e.g. digital) and this is indicated on form

• Additional formalities:
o ISA may require
o Copy of earlier application (plus translation)
o Translation of search results
o Copy of documents cited in earlier search reports

Question 25

What are the requirements for unity?

Answer 25

• It is necessary for a PCT application to be “unified” and this will be considered during the search stage and, if a demand is filed, during examination. A PCT application meets requirements of unity if the claims relate to a single invention or to a group of inventions so linked as form a single inventive concept. • If the ISA determines the application is not unified, the applicant is invited to pay one or more additional fees (one fee for each extra invention) within time limit of 1 month from invitation. • Payment of these fees is optional. If no further fees paid the search is performed on first invention only. Alternatively an applicant can contest the lack of unity by paying extra fees under protest.

Question 26

What does the search report comprise and when is it issued?

Answer 26

• Search report should issue within 3 months of receipt of search copy by ISA or 9 months from priority date (whichever expires later). The search report will: o summarise details of identified relevant prior art including oral disclosures, use or exhibition, and prior rights o Lists claims which have not been searched • Since 2010, a Searching Authority can limit the total number of claims that are searched. • If no search can be drawn up because claims relate to unsearchable matter or a meaningful search cannot be carried out, a declaration stating this is drawn up and replaces the Search Report.

Question 27

What does the written opinion comprise and when is it issued?

Answer 27

• Search report is accompanied by a Written Opinion drawn up by ISA. This is a non-binding opinion on patentability. • The application is able to respond to the written opinion by way of “informal comments”. • For applications filed on/after 1 July 2014, the written opinion is published with the search report at 18 months. For applications filed before this date, the Written Opinion published at 30 months. • Thus, under the current system, if available, the Search Report and Written Opinion, together with any informal comments submitted by the applicant will publish together with the application 18 months after the priority date (as an A1 publication). • If the Search Report is not ready in time, the application will publish as an A2 publication without the search report/WO and the search report/WO will publish at a later date as an A3 publication.

Question 28

Discuss Amendment opportunity 1 – Article 19

Answer 28

• Art 19 amendments are the first opportunity to amend. Amendments can be made: • After receipt of SR and written opinion • Up to the later of: o 16 months from priority date o 2 months from date of transmittal of SR to IB and applicant • But amendments received before technical preparations for publication of application complete deemed received in time • Must be filed at IB in language of publication • Made to claims only • May not add matter and must state where basis can be found • Must file complete claim set rather than replacement pages • May be accompanied by brief statement (<500 English words) explaining amendments • It is not possible to file Article 19 amendments in response to declaration that no search has been performed

Question 29

Discuss the publication of a PCT application.

Answer 29

• Application and search report published promptly after expiration of 18 months from priority date of applications • Applications are published in electronic form only. As of 1 January 2008 publication format has changed slightly • If search report and/or Art 19 amendments not available when preparations for publication complete the application publishes without them and they are published later when they are available • Languages of publication = English, French, German, Japanese, Russian, Spanish, Chinese, Arabic, Korean and Portuguese (since 1 January 2009) • Technical preparations for publication generally completed by 15th day prior to publication (withdrawal notice must have reached IB before this date) • PCT applications generally published on a Thursday.

Question 30

Discuss examination - chapter II. Does the applicant have a choice about whether the application is examined in the international phase?

Answer 30

The applicant has a choice about whether the application is examined during the International Phase. No international examination • If the applicant elects to not file a Demand - application enters “Chapter I Examination”. The written opinion of ISA which was previously created is converted by the IB into an “international preliminary report on patentability” (IPRP – Chapter I). • Applicant can submit written comments to IB on an informal basis if they wish. o Only chance to rebut written opinion o Forwarded to designated offices o Up to individual offices to decide to what extent the comments are taken into account in national phase International examination • To enter chapter II, the applicant must file a “Demand”. The deadline for filing a Demand is the later of: o 3 months from date of transmittal of ISR and written opinion o 22 months from priority date

Question 31

Discuss Amendment opportunity 2 – Article 34

Answer 31

• Within the Demand time limit the applicant can file under Article 34: • Arguments concerning written opinion and/or • Amendments to the description, drawings or claims • need to file complete claim set rather than simply replacement claim pages (same applies for Article 19 amendments)

Question 32

Discuss examination - chapter II in more detail.

Answer 32

• Where a demand is filed the IPEA will, in respect of the claims on file, conduct a top-up search to attempt to uncover prior art published after establishment of ISR (unless lack of novelty already demonstrated for entire subject matter). • New for 1 July 2019: PCT Rule 69.1(a) amended on 1 July 2019 to provide for the International Preliminary Examining Authority to start the international preliminary examination upon receipt of the demand (as long as fees have been paid for and ISR and written opinion have been issued and sent to IPEA), instead of waiting until the expiration of the applicable time limit for filing a demand, unless the applicant expressly requests for the IPEA to postpone the start of the Examination until the deadline. • The IPEA will then issue a written opinion which will take into account any arguments/amendments filed under Article 34. If no amendments or arguments were filed under Article 34, the written opinion of ISA generally forms first written opinion of IPEA. • The applicant can they respond to the written opinion of the IPEA with further argument and/or amendment. This deadline is usually 2 months. It is unlikely that the IPEA will engage in any further dialogue with the applicant and an international preliminary report on patentability (IPRP) Chapter II is expected to issue thereafter.

Question 33

Discuss the provisions for obvious mistakes.

Answer 33

• Mistake must be obvious to “the competent Authority” and not “anyone” • Deadline: request for rectification must be submitted within 26 months from the priority date • Mistakes which are not rectifiable under Rule 91: o missing pages and parts o mistake in the abstract o mistake in Article 19 amendments o mistake in the priority claims • DO may disregard a rectification “if it finds that it would not have authorized the rectification if it had been the competent authority”, but must give the applicant an opportunity to make observations (Rule 91.3(f))

Question 34

Discuss "erroneously filed elements and parts"

Answer 34

• New PCT Rule 20.5bis “Erroneously Filed Elements and Parts” covers the following scenarios”. In the case of erroneously filed elements and parts in an international application, the new rule permits the exchange of the erroneously filed element or part with the correct one, or, through incorporation by reference, permitting the addition of the correct element or part. This new rule covers the following scenarios: o the furnishing of a correct element or part on or before the date on which all filing date requirements are fulfilled o the furnishing of a correct element or part after the date on which all filing requirements were fulfilled o the valid incorporation by reference of a correct element or part as contained in an earlier application

Question 35

Discuss the PCT changes from July 2020.

Answer 35

The following changes will come into force on 1 July 2020: • in the case of erroneously filed elements and parts in an international application, provisions to incorporate by reference the correct elements or parts; • provision of a legal basis for the transfer via the International Bureau (IB) of fees collected by one Office for the benefit of another Office; • a requirement for the International Preliminary Examining Authority (IPEA) to copy certain documents from its file to the IB, which the IB would make available to the public on behalf of the elected Office; • provision of a legal basis for an Office to excuse delays in meeting a time limit due to the unavailability of any permitted electronic means of communication at that Office, such as unforeseen outages or scheduled maintenance; and • provision of a legal basis for the correction or addition of indications in the request provided for in PCT Rule 4.11 during the international phase

Question 36

Discuss national phase entry.

Answer 36

• At the end of the International procedure, the applicant must choose which countries they wish the application to proceed in. The process of converting an international patent application into a national patent application is called National Phase Entry. • In the early days of the PCT system, the national phase entry deadline under Chapter I was 20 months, whereas the deadline under Chapter II was 30 or 31 months. This led to a large number of applicants filing demands purely to gain the extra time for national phase entry. • This system was changed so that now, the deadline for entering the national phase is generally the same under Chapter I or Chapter II and is 30/31 months from the earliest priority date. As such there is no need to file a demand to defer national phase entry.

Question 37

What happens if a national/regional office receives an application in the wrong language:

Answer 37

o It is forwarded to the International Bureau | o It is awarded the date it was received at the national/regional office as a filing date

Question 38

What happens if the application is filed in a language accepted by the RO, but not the ISA:

Answer 38

o the applicant must file within one month of the date of receipt of application by RO a translation into a language that is: ▪ accepted by the ISA; and ▪ a language of publication; and ▪ accepted by the RO, unless the application was filed in a language of publication.

Question 39

What happens if not furnished within this time limit, RO invite applicant to supply translation with payment of a late furnishing fee within later of:

Answer 39

o One month from the invitation or | o Two months from the filing date