Common provisions PCT Flashcards
Who can file?
Any resident or national of a
contracting state (Art.9(1) PCT)
(For example, an Argentinean
alone cannot file a PCT
application.)
However, if there are two or more applicants, it is sufficient if one of them is a resident or national of a contracting state (R.18.3 PCT).
Language of filing
Any language that the receiving Office (rO) accepts (R.12.1(a) PCT). If filed with the International Bureau (IB), any language is accepted. If filed with the EPO as rO, only EN/DE/FR is accepted (R.157(2) EPC).
General languages
R92.2, Art21(4)PCT
Confirmation copy if filed by fax
If an international application is filed with the EPO by fax, a confirmation copy is to be filed (OJ 2019, Art.19). (International applications may be filed by fax, if the receiving Office allows R.92.4 PCT and AG-IP 6.003)
Filing date
Claims are required to accord a filing date (Art. 11(1) PCT).
Remedies
There are no remedies during international phase (but some acts, such as payment of fees at filing or filing of translation can be done during an additional period after the expiry of the time limit provided that a late fee is paid). Furthermore, there is no provision for appeal under PCT (AG-IP 6.054).
Filing by reference to previous application
No
Renewals
No
Representative need for filing
Depends on the receiving Office (rO) (Art.27(7) PCT) See Annex C of any rO if agent is required.
Missing part vs missing elements
Even full missing elements can be filed, such as the entire description and/or complete set of claims and/or all drawings (R.20.5 PCT).
Prior art
Only written disclosures that are made public prior to the international filing date (R. 33.1 PCT)
Technical preparations for publication
The technical preparations for publication are completed by the 15th day prior to the date of publication (AG-IP 9.014).
Further search fee (non-unity)
Additional fee is payable within 1 month (R.40.1(ii) PCT) from the invitation, directly to the ISA. Can be paid under protest. (Only payable if applicant wants the other invention(s) to be covered by a search.) (If not paid, and Euro-PCT phase is entered, EPO will send another invitation under R.164 EPC.)
Date of notification
Date on document, unless applicant proves that document was received more than 7 days from that date (R.80.6 PCT).
Amount applicable in case of fee increase
For filing, search, transmittal and additional search fee: Date of receipt of PCT application is relevant; actual date of payment is not relevant. (R.14.1(c), R.15.3 and R.40.2 PCT) –> If date of receipt is 15 March, and there is a fee increase on 1 April, and the fee is only paid 10 April, the old fee is payable.
