PCT

Question 1

You have become aware of a non-typographical error in the main claim of a PCT patent application filed last week at the end of the priority period. The same error occurs in the description of the application.

What are the options to amend this application during the international phase?

For each option note any restriction on amendment?

Answer 1

There are three possibilities:
Seek correction of the error under Rule 91 PCT. Both the error and the correction
must be obvious.

Amend under Art 19 PCT, due date 16 months from earliest priority or 2 months from transmission of the search report, whichever is the later. (Note, although only the claims can be amended at this stage, the Examiners did not require this as part of the answer. Also, since search reports are generally issued late, no marks were deducted if the date of 16 months from priority was not mentioned).

Amend under Art 34 PCT, either with IPE demand or before the IPER is established.

No amendment can add subject matter to the application.

Question 2

What is the deadline to enter the NP in the Uk?

Answer 2

31 months

Question 3

Can the deadline to enter the NP in the UK be delayed?

Answer 3

Yes, request as of right Rule 110 extention and pay fee within two months of the expired 31 month deadline to extend to 33 months.

Any further extensions are at the discretion of the Comptroller and should not be relied upon.

Question 4

What fees are due upon the 31 month deadline to enter the UK NP from a PCT application?

Answer 4

S and E request and fee within two months.
Application request and fee, can be delayed again to within two months using as of right extension.

Question 5

What is the deadline to withdraw a priority claim in a PCT application?

Answer 5

30 months, write to IB.

Question 6

What are the consequences of missing the 12m priority period and filing a PCT at the EPO with 14m?

Answer 6

All due care will need to be shown rather than unintentional requirement of UKIPO etc.

Question 7

Deadline for filing translation if not in language of ISA?

Answer 7

1 month of filing

Question 8

If the filing fees are not paid within one month from invitation by rO to pay (+50%), can the PCT be saved?

Answer 8

Yes - if outside the 1m but before the PCT is declared withdrawn, the payment is considered received within extension period.

Question 9

What happens if the 16m deadline to file priority document (certified copy) is missed for a PCT application? (2)

Answer 9

1. it would be deemed recieved if it is received at IB before international publication;
2. Can also file it in the NP if not.

Question 10

What is the deadline to correct/add priority to PCT?

Answer 10

16m from earliest priority OR 4m from IFD, whichever is later.

Question 11

What is the deadline to pay additional search fees for a PCT?

Answer 11

1m from invite to pay, 1m for protest fee

Question 12

What is the last chance to withdraw a PCT application before publication?

Answer 12

15 days before 18m period.

Question 13

What is the deadline for receipt of ChII request?

Answer 13

22m from priority or 3m from ISRWO, whichever is later.

Question 14

What is the deadline for payment of ChII preliminary examination fee and handling fee?

Answer 14

1m of filing request, i.e. 23m from priority or 4m from ISRWO, whichever is later.

Question 15

What is the deadline for receipt of non-binding IPER (IPRP)?

Answer 15

28m from priority

Question 16

When does the NP begin in US, CA, JP and CN?

Answer 16

30 months.

Question 17

How can late entry into US NP be achieved? (2)

Answer 17

Petition to revive, then file continuation
Reinstatement of rights within ealier of 2m of removal of non-compliance or 12m from loss.

Question 18

How can late entry into EP be achieved? (2)

Answer 18

FP within 2m of loss of rights communication (10 days).
Reinstatement of rights within ealier of 2m of removal of non-compliance or 12m from loss.

Question 19

How can late entry into GB be achieved?

Answer 19

R108(2) extension of two months, form and fee?

Question 20

How can late entry into CN be achieved?

Answer 20

Up to 2m delay to entry on payment of surcharge

Question 21

How can late entry into CA be achieved?

Answer 21

up to 1yr dealy to entry on paymeny of surcharge, if IFD after 30/10/19 must also state unintentional failure.

Question 22

When do search and exam requests, and fees, and also statement of inventorship need to be filed after entry into the NP in UK from a PCT?

Answer 22

Within 2m of entry, so by 33m from priority, extendable using form and fee as of right.
Reinstatement is better option than discretionary extension if missed original 2m extension period.

Question 23

When must transactions be registered at the IB by?

Answer 23

30 months, not 31 months, this is the ‘end’ of the International Phase.

Question 24

We have filed a PCT application in French at WIPO. The application does not claim priority. The application has 20 pages of description and 15 claims. We amended the claims in the international phase reducing the claims to 10.

What steps would you take to enter the PCT application into the GB national phase and to expedite prosecution? (12)

When must things be done by?

Answer 24

(1) Explicitly request early processing;
(2) Pay Application fee and file form [on filing, extendable to 2m with as of right];
(3) File English translation of PCT and (4) claims [within 1 month];
(5) File search request and pay (6) fee [within 2 months, extendable]
(7) File exam request and pay (8) fee [within 2 months, extendable];
(9) Request early publication to get (10) provisional protection;
(11) request expedited examination for free but (12) providing a reason.