PCT Procedure and Quirks

Question 1

How is a PCT application treated under the UKPA?

Answer 1

A PCT application is treated as a GB application, unless the application or GB designation is withdrawn or deemed so in the PCT stage.

Question 2

Under what exceptional circumstances can a withdrawn/refused PCT still be treated as a GB application under s89(3)?

Answer 2

• If withdrawal of the application or the GB designation was due to an error by a PCT body
• Failure of the receiving office to forward the application to the IB in time
• Where a corresponding deadline could have been extended under equivalent UK Rules (R107/108)

NB make request at IB and UKIPO (and pay applicaiton fee + translation) within 2 months of notification of withdrawal.

Further there is always the option for reinstatment (unintentional criteria)

Question 3

What happens if a PCT application designating GB was refused due to an error by a PCT body?

Answer 3

The Comptroller can decide to allow a GB filing with a filing date as he directs.

Question 4

When does the international phase end?

Answer 4

Strictly speaking, the international phase ends at 30 months from priority.

30 month deadlines for US and JP

31 month deadlines for UK and EP

Question 5

Can the 31-month deadline be extended?

Answer 5

Yes, under R108(2) the 31-month deadline of R66(1) can be extended by 2 months as of right. File FORM + FEE.

Using R108(3) you can obtain a further discretionary extension (limited to an additional 2 months - R108(5)). File FORM + FEE (if request granted).

NB the discretionary extension can be requested after the normal deadline to extend has passed (e.g. the R108(2) deadline), but no later than 2 months after expiry of the extended period - in most cases if you miss the R108(2) deadline you won’t get a discretionary extension.

Question 6

When does the UK national phase begin?

Answer 6

Begins when:

• the 31-month period expires AND (if needed) an English translation is filed with the UKIPO; or
• a request for early entry into the national phase is filed AND an English translation if filed

In either case, payment of the national entry fee is required.

Question 7

Scenario:

An amendment was filed during the international phase

Answer 7

The amendment should be filed upon entry into the national phase (e.g. an Article 19 amendment) along with an English translation;

provided that the application itself was translated and filed by the 31-month deadline then an applicant has three months from notification by the Comptroller to file a translation of the amendment

otherwise the amendment is disregarded.

Question 8

What are the requirements for the Comptroller to publish a translation of PCT after national phase entry?

Answer 8

Must pay the translation publishing fee (£12) and provide a translation on filing.

For foreign applications, this may be the first time the application is published in English (s69 rights will on accrue from this point if so).

NB sequence listings are exempt from requiring translation.

Question 9

What details of a PCT application are treated the same as for a UK patent application under s89B(1)?

Answer 9

• The filing date (also if re-dated during the international phase)
• Priority claims are respected (including additional days under the Treaty)
• Declarations of inventorship are treated the same

Question 10

Under which section should entitlement proceedings be brought for a PCT application?

Answer 10

Use s12 during the international phase, and then s8 in the national phase (for the GB).

Question 11

What fees need to be paid for a PCT application, and when do they need to be paid?

Answer 11

International filing fee, international search fee, and transmittal fee.

They are all due within one month of filing.

If the deadline is missed/not all fees paid the RO will send an invitation to pay the fees (with penalty fees) within an additional one month.

Invitation is not immediate - if you pay the fees after the normal one month deadline, but before the invitation is issued, there is no penalty fee.

After invitation, there is an additional one month to pay (with a 50% surcharge on the filing fee and search fee only).

If paid after the one month extension, but before the withdrawal declared, it will be treated as being paid in the extension period.

If not otherwise paid, the application will be deemed withdrawn.

Question 12

What are the bare minimum requirements for entry into the EPO/UK national phase of a PCT?

Answer 12

On filing, must provide the national fee to the UK (there is no application fee when entering the UK, just the national fee).

For the EPO, need to: pay the fiilng fee, designation fee, search fee (if EPO not ISA), search request, examination fee and examination request and page fees (for any page above 35) - failure to pay any will result in it being deemed withdrawn but further processing is available.

A translation of the appliation is also required on filing for EPO and UK, if necessary.

(For entry into UK - filing an exhibition certificate, designation of inventor, search fee, exam fee and excess claim and pages fees are due 2 months from national phase entry)

Question 13

What are due within 2 months of entry into the UK national phase under R68/69?

Answer 13

Due on filing:

• Pay the national fee
• Provide a translation, if necessary

Due within 2 months:

• Filing an international exhibition certificate
• Designation of inventor
• Supplementary search fee (if necessary) and request
• Examination fee and request (or 33 months from priority, if later)
• Excess page/claim fees

Also do the following:

• Provide a copy of the international application (WIPO may do this automatically)
• Provide an address for service

Question 14

What is the deadline to file translations of any amendments made in the international phase in the UK national phase?

Answer 14

3 months from notification from the Comptroller.

Question 15

What is the receiving office and when might where you file the PCT be important?

Answer 15

Any national/regional office competent to receive a PCT filing can act as a receiving office for a PCT application.

We can file at the UKIPO or the EPO. The International Bureau (IB) is also a receiving office.

If the receiving office is not competent because of the langauge, the application will be automatically passed to the IB.

The RO applies their own standard of unintentional/all due care. Therefore, in some instances, it may be best to file at the UKIPO instead of the EPO - however the EPO will apply their higher standard once it reaches the national phase.

Question 16

How and why might you request early national/regional phase entry?

Answer 16

Typically done to secure rapid grant to bring infringement proceedings.

Early entry can be requested at any time. The request must be made, otherwise the national/regional offices will not begin to process the application.

For UK, just pay the national entry fee and file form (and provide a translation if necessary).

For the EPO, request in writing or file Form 1200 and tick the relevant box. Must also comply with the normal requirements as if filed at 31 months - search request and fee, application fee, filing fee, excess page fees and translation (and possibly also exam request and fee, designation fees and renewal fees but these might not be due).

Question 17

How can you delay entering the national phase during the international phase?

Answer 17

During International Phase:

Formally, nothing much can be done. However, you can withdraw your priority claim which would buy you an extra year - but this is risky as any intervening disclosures will become prior art.

Question 18

Scenario:

Accidentally missed EP regional phase entry

Answer 18

PCT allows for re-establishment of rights within 2 months of removal of the cause of non-compliance and no later than 12 months, if the deadline was missed unintentionally. (File EP entry and request re-establishment of rights)

You can also rely on the further processing procedure at the EPO within 2 months of the communication of loss of rights.

Question 19

Scenario:

Accidentally missed GB national phase entry

Answer 19

Cannot use PCT re-establishment in this case (GB and JP have resgistered incompatibilities)

However, you can extend the national phase entry deadline retrospectively by up to 2 months, as of right using R108(2) and further with discretion using R108(3)

Beyond this, reinstatement at the UK would possible if the failure was unintentional.

Question 20

Scenario:

Missed US national phase entry deadline

Answer 20

PCT allows for re-establishment of rights within 2 months of removal of the cause of non-compliance and no later than 12 months, if the deadline was missed unintentionally.

Otherwise, as the application is treated as a lapsed national filing in the US, you can file a petition to revive (with fee) if you can show that failure was unavoidable or unintentional, and can file a continuation.

Question 21

How are late declarations of priority/late filing dealt with for PCT applications?

Answer 21

• If PCT application filed within 14 months with a priority claim the priority claim will not be considered void in the international phase (although will need to be substantiated at the regional receiving office at filing)
  
  • Pay fee and provide evidence that the delay was unintentional (UKIPO) or in spite of all due care (EPO) - RO will apply its own criteria
• However, at n/r entry each office will apply its own criteria - so may get by in UK but lose priority in Europe/JP.
• For a PCT(UK) national phase, a late declaration can also be made within one month of beginning the national phase.

Question 22

Which countries can’t be entered into from a PCT application?

Answer 22

(Among others?)

Cannot enter Taiwan or Argentina.

Also cannot enter France directly, but must go via EP(FR)

Question 23

Can errors be corrected in the international phase?

Answer 23

R91 allows for the correction of obvious mistakes i.e. the mistake should be clear and leave no doubt as to what the correction should be. Consequently, omission of whole sections of the specification are not correctable this way (also can’t use to rectify abstract or priority date). Must be requested within 26 months of priority.

Mistakes in the original application request should go the the receiving office.

Mistakes in the description, claims or drawings should be sent to the ISA, or during Chapter II to the IPEA.

(Alternatively if there is basis to do so use A19 to simply amend the application to correct the error, but this has a deadline of the later of 16 months from priority or 2 months from ISR issue).

Question 24

What is the review and excuse procedure for PCT applications?

Answer 24

International phase can be terminated if refused or deemed withdrawn, and then can’t enter national/regional phases in the normal way.

PCT gives designated office discretion to allow a corresponding national application.

If the applicant believes the PCT terminated the application in error, they can enter the national phase within two months of notification (no ten-day rule!) and each designated office will determine if its acceptable.

Where the termination was due to the applicant’s error, then designated offices will apply any safeguards available under their own national law to excuse the error and allow a national application (see R159(2) EPC and s89 UKPA).

Question 25

What and how can be withdrawn in the international phase?

Answer 25

The applicaiton, a priority declaration, or designation can be withdrawn by writing to the rO, IB, or if applicable the IPEA.

Note - this requires the signatures of all applicants not just a common representative.

If the application or a designation is withdrawn before publication preperations are complete, then they won’t be published.

A demand can be withdrawn by writing to the IB or IPEA.

Must be done during the 30 month international period.

Question 26

What is the effect of withdrawing a PCT on already filed national/regional phase applications?

Answer 26

Withdrawal won’t affect applications already entered into the national/regional phases.

Question 27

What is the deadline to request amendment under Art. 19?

Answer 27

Request A19 amendments within later of 16 months from priority or 2 months from of receipt of the international search report.

Question 28

What is the deadline to file a certified copy of the priority document(s) for a PCT?

Answer 28

Must file within 16 months from priority a certified copy with either the IB or the receiving office.

Any copy of the certified copy transmitted after the time limit but before international publication of the application, will be considered to have been filed on the last day of the time limit (unless requested early publication).

If these requirements are not met any designated offices may disregard the priority claim but not until they give the applicant a reasonable opportunity to supply it.