PCT Flashcards
Who is titled to file a PCT
a resident or national of a PCT contracting state
What happens when you have joint applicants of a pct?
One of the applicants who is entitled (resident or national of a PCT contracting state) can be nominated by the others as their common representative.
If no explicit nomination, the first listed applicant entitled is treated as such.
the common representative can act for all the applicants in all respects except they cannot withdraw an application on behalf of all the applicants, the signature of all applicants is required
What is Chapter I
The international application and the international search
Where can a PCT be filed?
International Bureau or a receiving office
What is Chapter II
Covers the international preliminary examination
examination is optional and must be requested using a Chapter II Demand
no obligation to respond to the IPER
What happens if a PCT is filed later than 12 months but within 14 months of priority?
The priority claim will not be considered void for the purposes of the international phase only
Any request to restore the priority right must be made within the same two months following the priority period
Requires a fee
Requires evidence that the delay was either in spite of due care (Europe) or unintentional (UK)
A deliberate delay beyond 12 months is unlikely to be salvagable
For the PCT(UK) national phase, a late declaration can be made within one month of the beginning of the national phase
When does Chapter II start?
If a Demand is filed within the later of 22 months of priority or 3 months from transmission of the ISR
What acts are required upon entry or soon after entry into national phases?
Provide a copy of the international application (usually done by IB_ including amendments made during international phase
Provide any required translations of the international application. In UK pay fee to publish translation, typically within 2 months of entry.
Pay filing fee
Pay designation fee if relevant (e.g. for EP regional phase)
Pay supplementary search fee if required
Pay exam fee
In the US file an inventor declaration and if relevant an assignment to the proprietor
Appoint representative and provide address for service
Amend upon entry into national phase if desired
For EP can opt to pay renewal fee for third year only up to 6 months early and hence at national phase
What must you do if you would like early national phase entry?
File and explicit request for early processing
What are the applicant’s options if someone forgot or was unable to enter the national phase?
For US and EP: The PCT allows for re-establishment of rights within 2 months of the removal of the cause of a non-compliance but no later than 12 months from the deadline for completing the act, if you can prove the deadline was missed unintentionally.
For US: The application is treated as a lapsed national filing, so one can file a petition to revive (with a fee) if can show it was unavoidable or unintentional to miss the deadline.
For EP: Can use Further Processing within 2 months of notice of loss of rights.
For GB: Can delay national phase entry as of right by 2 months using R108(2) and further with the Comptroller’s discretion under Rule 108(3).
For GB: Reinstatement is possible if it can be proven that failure was unintentional
What should you do if there’s a mistake in the PCT
Correction of obvious mistakes are allowed providing the request for correction is sent to the relevant competent authority.
Mistakes in the original application request should be sent to the rO, mistakes in the descriptions, claims or drawings should be sent to the ISA, or during Chapter II to the IPEA.
The mistake should be clear and leave no doubt what the proper correction should be
The correction should be requested within 26 months from priority
What happens if the applicant believes the PCT terminated the application in error
They can enter the national phase within 2 months of notification
the designated offices will each determine whether they agree with the PCT’s termination.
Where the cause was the applicant’s error, in particularly missing a deadline, the designated office will apply any safeguards available under their own national law to excuse the error and allow a national application.
When may amendments of a PCT be filed?
One amendment of claims only within 2 months of search report or within 16 months of priority. File at IB.
If deadline missed can file amended claims, description and figures upon filing Chapter II demand until IPER issued if wish to amend during international phase. Demand is due the later of 22 months from priority it 3 months from transmittal of the ISR. File amendments at IPEA.
Can amend claims, drawings and figures in response to Chapter II Written Opinion. File at IPEA.
Can also amend upon entry into the national/regional phase.
When can corrections of a PCT be filed?
Up to 26 months from the priority date
