PCT Flashcards
Who can apply for a PCT?
PCT
Anyone who is a resident or national of a PCT member state, as determined by the relevant national law of the state.
When filing a PCT, different applicants can be designated in different states. At least one joint applicant in at least one designated state needs to be entitled for the PCT application to be valid.
NB the application must be filed at a competent receiving office, which is the national/regional office of at least one of the applicants. You can also file at the IB directly.
How do you register that there has been a change in applicant details (name, address, the identity of the applicant themselves etc.)?
PCT
You must request the change at the IB or RO. The IB must receive the request within 30 months of priority (so if close to the deadline file at the IB directly and not the RO).
If this deadline is missed the change of details will have to be done in each national phase country individually.
NB the same applies for changes in representative (i.e., if they move to a new office).
NB this is for registering changes, not making corrections.
What are the requirements for a filing date?
PCT
- You must be entitled to file a PCT.
- You must use a prescribed language of the RO (although if you don’t, the application will just be bounced to the IB so this is a meaningless requirement).
- The application must include an indication that an international application is intended; identification of the applicant; designation of at least one contracting state; a description; and one or more claims.
Explain the fees due within 1 month.
PCT
The transmittal fee (determined by RO); search fee (determined by ISA); and the international fee (determined by IB).
NB the international fee includes exceed page fees for pages over 30.
If any of these are not paid the RO will send an invitation to pay within one month with a 50% surcharge (NB the surcharge will be adjusted so it is not less than the transmittal fee and not more than half of the international fee). If not paid by the deadline, the application will be declared withdrawn.
If the fees are paid after the deadline but before the invitation is issued, they are deemed to have been paid on time and so no surcharge is necessary. Similarly, if the fees + surcharge are paid after the invitation deadline but before the declaration is issued, the application will not be withdrawn.
When would you have to file a translation?
PCT
If the application is filed in a language accepted by the RO but not by the ISA (for example, if you file in the UK in Welsh).
NB if the application is field with the IB as RO then the ISA is the ISA of the competent RO. So if you are a UK resident and file at the IB in Arabic (or file at the UKIPO in Arabic and it is bounced to the IB), the EPO will still be your ISA. So your application in Arabic was filed in a language accepted by the RO (IB) but not by the ISA (EPO) and so you still need to file a translation (French, English or German).
In these cases, within one month of the date of receipt of the application by the RO a translation must be filed into a language accepted by both the RO and ISA and which is a language of publication.
If this is not done on time, the RO will invite the applicant to file the translation by the later of one month from the invitation or two months from the filing date, with a fee.
What are the rules for correcting minor defects in the application?
PCT
The RO carries out a preliminary check on the application upon receipt and will give the applicant 2 months to correct any of the below deficiencies. If corrected, the filing date will not be changed. If left uncorrected, the application will be deemed withdrawn.
- Lack of signature (at least one entitled-to-file applicant must sign).
- Applicant’s details not presented in the prescribed manner (at least one entitled-to-file applicant must give their details).
- No title.
- No abstract.
- Physical requirements are not met (e.g., drawing margins).
When must certified copies of priority documents be provided by?
PCT
16 months from priority, same as the UK.
NB any documents received by the IB before publication are deemed to have been filed on time within the 16 months.
NB national/regional offices also give the applicant the opportunity to file priority documents on entry to the national/regional phase.
What are the rules for changing priority claims?
PCT
The applicant can change his priority claim up until the earlier of 16 months from the original priority date and 16 months from the corrected priority date. However, the deadline must be at least four months from the international filing date.
The applicant should request the change in writing to the RO.
All outstanding deadlines are recalculated from the new priority date (which also means deadlines can be extended if a priority claim is removed).
NB if there is an obvious defect in a priority claim, the RO will invite the applicant to correct it.
Explain the rules regarding earlier searches.
PCT
The applicant can request that the ISA take into account the results of an earlier search. This may be useful because it may result in a partial search fee refund.
If the earlier search was carried out by the ISA they must accept the request (and I imagine they would take their earlier search into account anyway). If not, then the ISA does not have to accept.
If the ISA accepts they may require a copy and translation of both the earlier application on which the earlier search was performed and a copy of the search results. They may also require copies of the cited documents.
What should you do if the ISA finds that the claims lack unity?
PCT
The ISA will invite the applicant to pay an additional search fee for each extra invention within one month. There are three options.
- Pay the extra fees - this is useful if you want to see which invention is more patentable and then only file the most patentable claims on national phase entry.
- Pay the extra fees under protest (which may come with an additional protest fee, depending on the ISA) and with comments arguing for unity - the fees will be refunded if the ISA agrees with you.
- Don’t pay the fees - the national offices will still charge you fees if they think the claims lack unity, regardless of whether they were paid at PCT stage (unless they themselves were the ISA, obviously). Some national offices might also disagree with the ISA and consider the claims to be unified. The international phase does not really matter so why pay the fees? Also NB if the ISA is the EPO it is especially not worth it because the fees are lower at EP regional phase than during the international phase.
When do the search report and written opinion issue?
PCT
By the later of 3 months of receipt of the search copy by the ISA or 9 months from priority.
NB If the ISA determines that a search cannot be carried out because the claims relate to unsearchable subject matter or if a meaningful search cannot be carried out for whatever other reason, a declaration stating this is issued instead of a search report.
What are A1-A4 publications?
PCT
A1: International application published with SR/WO.
A2: International application published without SR/WO (if they weren’t ready in time) or with a declaration of no search
A3: Later publication of SR/WO.
A4: Later publication of Article 19 amendments (if not ready in time for A1 publication).
How can you respond to the search report and written opinion?
PCT
The applicant can file informal comments.
He can also file Article 19 amendments to the claims until the later of 16 months from the priority date and 2 months from transmittal of the search report/written opinion from the ISA to the applicant and IB.
NB Article 19 amendments made before technical preparations for publication are complete are deemed to have been received on time.
Article 19 amendments must be filed in the language of publication and must be accompanied by a brief statement (less than 500 words) explaining the amendments.
When are technical preparations for publication complete?
PCT
Approximately 15 days prior to publication.
On what day do PCT applications typically publish?
PCT
Thursday.
