PCT Patent Rules (do not use, not ready) Flashcards
- What do the following terms stand for?
- WIPO
- Contracting States
- RO
- IB
- ISA
- ISR
- SIS
- WIPO – World Intellectual Property Organisation
- Contracting States – states that are signatories to the PCT
- RO – Receiving Office
- IB – International Bureau
- ISA – International Searching Authority
- ISR – International Search Report
- SIS – Supplementary International Search
When a PCT application is filed, what official fees need to be paid and when are they due?
Which office do you need to pay the official fees too? (e.g. RO, ISA or WIPO)
The following official fees need to be paid within one month of the filing date:
F Filing fee
A Additional page fees (above 30 pages)
S Search fee
T Transmittal fee
The official fees need to be paid to the Receiving office
For a PCT application, what is the deadline for filing certified copies of the priority application?
- 16 months from the earliest priority date
For a PCT convention application, when are the following due?
- Request for International Examination (Chap II Demand)?
- Chapter II official fees?
Chapter II Demand is due the later of:
- 3 months from International Search Report
- 22 months from the earliest priority date
Chapter II official fees are due the later of:
- 1 month from the filing of the Chap II demand
- 22 months from the earliest priority date
For a PCT application which does not claim priority (first filing), when are Article 19 amendments due?
Article 19 amendments are due the later of:
- 2 months from the International Search Report
- 16 months from the filing date
- What do the following terms stand for?
- WO
- WO-ISA
- IPE
- IPEA
- IPRP
- Chapter I
- Chapter II
- International Phase
- WO – Written Opinion
- WO-ISA = Written Opinion of the International Searching Authority
- IPE – International Preliminary Examination
- IPEA – International Preliminary Examining Authority
- IPRP – International Preliminary Report on Patentability
- Chapter I – where the application proceeds without international preliminary examination
- Chapter II – where the application proceeds with international preliminary examination being carried out (filing of a PCT Demand form and any amendments if required)
- International Phase – that part of the PCT process that covers the initial filing, search, publication and (optional) examination
For a PCT convention application, when are Article 19 amendments due?
Article 19 amendments are due the later of:
- 2 months from the International Search Report
- 16 months from the earliest priority date
- State 3 advantages of using the PCT system (there are 5 answers)
- The process is convenient as a single application can be filed at the outset, which can later be extended to cover any or all PCT contracting states (153 at the time of writing)
- The application can be filed in English or Welsh at the UK IPO, English, French or German at the EPO, or at the IB, which will accept any language
- The process effectively postpones the decision as to where to seek protection and, as such, delays major costs involved with filing overseas
- Can save time during national prosecution as the results of the WO/IPRP may be taken into account by the local patent offices
- Should an inadvertent error be made in the filing process, there is a centralised process for identifying and correcting these errors
- When is the UKIPO competent to act as Receiving Office?
- When is the EPO competent to act as Receiving Office?
- When is the IB competent to act as Receiving office?
- When is the UKIPO competent to act as Receiving Office?
- At least one of the applicants must be a UK national or resident and the specification must be in English or Welsh*
- When is the EPO competent to act as Receiving Office?
- At least one of the applicants must be a national or resident of an EPC contracting state and the specification must be in English, French or German*
- When is the IB competent to act as Receiving office?
- One of the applicants must be a national or resident of any PCT state and the specification can be filed in any language*
If the applicant decides to file Article 19 amendments, which office to the amendments need to be filed with?
- Receiving Office or International Search authority or WIPO
- Article 19 amendments must be filed with WIPO
Tip to remember this…
- If you file Article 19 amendments, they are published with the PCT application. So the clue is to think about which office is responsible for publishing the application
If the applicant decides to Request International Examinaiton, which office must the Chapter II Demand be filed with?
- Receiving office or EPO or WIPO
Which office does do the Chapter II official fees need to be paid too?
- Receiving office or EPO or WIPO
- The Chapter II demand must be filed with the EPO
- Tip: for PCT cases which we handle, the examination authority will always be the EPO, so this is where the Chapter II Demand must be filed*
- The Chapter II official fees must be paid to the EPO
For a PCT application which does not claims priority (e.g. first filing), when are the following due?
- Request for International Examination (Chap II Demand)?
- Chapter II official fees?
Chapter II Demand is due the later of:
- 3 months from International Search Report
- 22 months from the PCT filing date
Chapter II official fees are due the later of:
- 1 month from the filing of the Chap II demand
- 22 months from the PCT filing date
For the following countries, indicate the deadline for entering the national/regional phase (i.e. 30 or 31 months)…
- US
- JP
- IN
- GB
- EP
- CN
- US - 30 months
- JP - 30 months
- GB - 31 months
- IN - 31 months
- EP - 31 months
- CN - 30 months
What are the minimum filing requirements to obtain a PCT filing date?
- The applicant must have the right to file a PCT application. This means they must be a national or resident of a contracting state
- Indication that the application is a PCT application – filing of PCT Application Form RO/101 satisfies this
- Filed in a prescribed language of the RO
- Designation of at least one PCT member state
- Name of the applicant
- Description and drawings (if applicable)
- One or more claims.
