National phase opening deadline
With a designated office
States designated with reservation
- United Republic of Tanzania.
These two States, however, are each part of a system of regional patent accessible through the PCT, the applicable deadline is the new 30-month period (CBE for Luxembourg, ARIPO for Tanzania).
For information, Uganda withdrew its reservation as of 1 April 2015.
A longer period may be provided for by national legislation (A22.3 PCT).
Recall / non-recall
Most designated Offices do not send a reminder on phase entry.
Therefore, it is up to the applicant to monitor the applicable deadlines (Guide for the applicant, national chapter §3.003).
With an elected office
If the applicant submits a request for preliminary examination before the expiry of the 19th month from the priority date, the period of entry into the national phase is 30 months (even for States which have made a reservation, see supra) (A39.1.a PCT).
The national examination can not begin before the expiry of this period (A40.1 PCT).
Early opening of the national phase
National proceedings may be initiated in advance if the applicant expressly so requests the Office concerned (A23.2 PCT and R47.4 PCT for designated Offices and A40.2 PCT and R61.2.d PCT for elected offices).
If the express request for early entry is made prior to the publication of the international application, the applicant or the designated Office must also request the IB to submit the documents of the application in accordance with theA20 PCT (A23.2 PCT or A40.2 PCT together R47.4 PCT).
However, it remains necessary for the applicant to perform the prescribed acts indicated below (Guide for the applicant, national chapter §3.004).
Acts to be performed for entry into phase
The payment of national taxes is prescribed by theA22.1 PCT and A39.1.a PCT : this tax is indicated (as well as cases of reduction, exemptions, etc., Guide for the applicant, national chapter §4.007) in the applicant's guide, because the designated Offices, respectively elected, must notify the amount of the fee to the IB (R49.1.a.ii PCT respectively R76.5 PCT together R49.1.a.ii PCT).
National fees are to be paid in the currency and within the time limits prescribed by the national offices (Guide for the applicant, national chapter §4.005).
Annual fees and renewal fees, which became due on entry into the national phase, must be paid before the expiry of the phase-in period (Guide for the applicant, national chapter §4.005).
A translation of the international patent application must be submitted if the language of filing or publication is not admitted by the designated Office (A22.1 PCT together R49.2 PCT) or by the elected Office (A39.1.a PCT together R76.5 PCT together R49.2 PCT).
The prescribed language (s) is indicated in the applicant's guide, since the office concerned must notify the IB (A22.1 PCT together R49.1.ai PCT for the designated Office or A39.1.a PCT together R76.5 PCT together R49.1.ai PCT for the elected office).
The language of the translation may be that of the procedure (Guide for the applicant, national chapter §4.009).
Content of the translation (for all offices)
- the description (including title) filed or amended, if applicable;
- the claims deposited or amended (under theA19 PCT or fromA34 PCT), if applicable (for modifications during the examination A36.2.b PCT, A39.1 PCT together R74.1 PCT and R76.5 PCT);
- the text of the drawings filed or amended, as appropriate;
- the translation of the drawings may consist ofR49.5.d PCT for the designated Office R76.5 PCT together R49.5.d PCT for the elected office):
- the delivery of new redesigned boards;
- the delivery of copies of the drawings on which the translation is pasted.
- the term "Fig. Does not have to be translated (R49.5.f PCT for the designated Office R76.5 PCT together R49.5.f PCT for the elected office).
- the translation of the drawings may consist ofR49.5.d PCT for the designated Office R76.5 PCT together R49.5.d PCT for the elected office):
If the translation is not delivered within the period of entry into the national phase, the international application may lose the effects of a regular national filing (A24.1.iii PCT together A22.1 PCT together R49.5.d PCT for designated Offices and A39.2 PCT together A39.1.a PCT together R76.5 PCT together R49.5.d PCT for elected offices).
Reference to biological material
If a reference to biological material does not appear in the description, a translation must be submitted:
- together with the translation of the application (R49.3 PCT for the designated Office R76.5 PCT together R49.3 PCT for the elected office)
- or, in case of forgetfulness, at the invitation of the Office which deems it necessary (R49.5.h PCT for the designated Office R76.5 PCT together R49.5.h PCT for the elected office).
Content of the translation (depends on the offices)
Theabstract must also be translated (R49.5.a PCT for the designated Office R76.5 PCT together R49.5.a PCT elected Office), but some Offices do not require this translation (Guide for the applicant, national chapter §4.011).
It is possible to require the translation of the requestbut most offices do not require it (R49.5.ai PCT for the designated Office R76.5 PCT together R49.5.ai PCT for the elected Office): if a translation is required, the Office provides a blank application form in the requested language free of charge (R49.5.b PCT for the designated Office R76.5 PCT together R49.5.b PCT for the elected office).
Normally, only the amended claims must be translated.
- the translation of the set of claims filed and
- the translation of the amended claim set under theA19 PCT.
Failing this, the Office shall either disregard claims that have not been translated or invite the applicant to submit the missing translation within a reasonable time, and if the applicant does not respond to the request, the Office shall the claims whose translation has not been delivered, or consider the request as withdrawn (R49.5.c-bis PCT for the designated Office R76.5 PCT together R49.5.c-bis PCT for the elected office).
Statement justifying the modifications A19 PCT
An Office may require the submission of a translation of the declaration justifying the modifications made under theA19 PCT (R49.3 PCT for the designated Office R76.5 PCT together R49.3 PCT for the elected office).
The only consequence of the non-delivery of this translation is that the Office does not take this statement into account (R49.5.c PCT for the designated Office R76.5 PCT together R49.5.c PCT for the elected office).
Copy of the original drawings
An Office may require the delivery of a copy of the original drawings (but not the originals) at the same time as the translation of the application (R49.5.a.iii PCT for the designated Office R76.5 PCT together R49.5.a.iii PCT for the elected office).
There are few offices that actually ask for it.
Material conditions of translation / copy of drawings
The material conditions of translations and copies of the drawings shall be determined by the designated Office (Guide for the applicant, national chapter §4.023), but these must be compatible with those of the PCT and can not therefore be more restrictive (R49.5.j PCT for the designated Office R76.5 PCT together R49.5.j PCT for the elected office).
Number of copies of translations
Only one copy of the translations is required in most cases, but some offices require more (A27.1 PCT together R51bis.1.c PCT for designated Offices and A27.1 PCT together R76.5 PCT together R51bis.1.c PCT for elected offices).
If copies are missing, the Offices give the applicant the opportunity to correct the irregularity after the entry into the national phase (Guide for the applicant, national chapter §4.024).
In principle, it is not essential to provide a certification (by a public authority or a sworn translator) of the translation (Guide for the applicant, national chapter §4.025).
However, if the Office subsequently doubts the accuracy of the translation, the Office may request a certification (A27.2.ii PCT together R51bis.1.d.ii PCT for designated Offices and A27.2.ii PCT together R76.5 PCT together R51bis.1.d.ii PCT for elected offices).
Some (few) Offices may require that the translation be verified (ie signed statement indicating that, to the knowledge of that person, the translation is accurate and consistent (A27.2.ii PCT together R51bis.1.di PCT for designated Offices and A27.2.ii PCT together R76.5 PCT together R51bis.1.di PCT for elected offices).
Supply of copy of international application
If an Office so requires, a copy of the international application may be required (A22.1 PCT for designated Offices, or A39.1.a PCT elected Offices) if the IB has not transmitted this copy under theA20 PCT.
If the applicant requests early entry and advance processing of the application (under theA23.2 PCT or fromA40.2 PCT), and if the communication of the copy by the IB has not yet taken place, the applicantGuide for the applicant, national chapter §4.028):
- give this copy itself as well as any amendment filed under theA19 PCT at the same time as the request for advance processing;
- ask the IB to forward the copy under theA13.2.b PCT.
Designation of the inventor
An Office may require that the name or address of the inventors be provided at the time of the opening of the national phases (if they are missing during the international phase A22.1 PCT).
Some States also provide for a notification in case of forgetting, but this is not mandatory and this oversight may result in the application being considered withdrawn (A24.1.iii PCT).
Indication of the protection sought
Upon entering the phase, the applicant must indicate the title (s) of protection sought in the event that he wishes to have his application processed:
- like a non-patent application ;
- as a request for the grant of several titles protection ;
- as a request for the grant of a additional protection ;
- as a request for the grant of a continuation or a continuation-in-part a previous application;
If no indication is given at the entry into phase, the application is treated as a request for the issuance of a patent (R49bis.1.e PCT for designated Offices and R76.5 PCT together R49bis.1.e PCT for elected offices) unless the tax paid corresponds to another title of protection, in which case the application is considered to be an application for that title.
Specific national requirements
Other national requirements may be required, but these must be able to be met outside the phase-in period (R51bis.3.b PCT for designated Offices and R76.5 PCT together R51bis.3.b PCT for elected offices).
The office can (R51bis.3.a PCT for designated Offices and R76.5 PCT together R51bis.3.a PCT for elected Offices) send an invitation inviting the applicant to comply with the particular requirements of the national phase within a minimum period of 2 months.
Declaration relating to the inventor, assignments and the right to file
Some Offices may require the applicant
- any document relating to theidentity of the inventor ;
- any document relating to the applicant's right to file a patent ;
- any document proving the right to priority (if the applicant or his name is different)
- any sworn affidavit or statement relating to the inventor quality ;
- all evidence relating to non-opposable disclosures (abuse, fairs, etc.);
This declaration must be sent to the national office with these special requirements: the IB does not transmit these documents to the offices concerned if they receive them (Guide for the applicant, national chapter §5.003).
International phase anticipation
A statement according to the R4.17 PCT can be done in the filing request in order to anticipate the national requirements.
In this case (except for reservations), the Office can no longer require them unless it can probably doubt the veracity of the declaration (R51bis.2 PCT for designated Offices and R76.5 PCT together R51bis.2 PCT for elected offices).
However, in the case of supporting documents concerning non-prejudicial disclosures, Offices may require any additional evidence as the R51bis.1.av PCT does not appear in the exclusions of the R51bis.2 PCT.
Missing indications concerning certain applicants
When filing with multiple applicants, the PCT does not require full disclosure for all.
A national Office may require at the time of entry that the signature of all applicants is provided (A27.2.ii PCT together R51bis.1.a.vi PCT for designated Offices and A27.2.ii PCT together R76.5 PCT together R51bis.1.a.vi PCT for elected offices).
In addition, this office may require that missing information depositors are provided (A27.2.ii PCT together R51bis.1.a.vii PCT for designated Offices and A27.2.ii PCT together R76.5 PCT together R51bis.1.a.vii PCT for elected offices).
Most designated Offices require depositors domiciled abroad to be represented by a representative local (A27.7 PCT together R51bis.1.bi PCT for designated Offices and A27.7 PCT together R76.5 PCT together R51bis.1.bi PCT for elected offices).
Others require depositors domiciled abroad to have service address in the State concerned (A27.7 PCT together R51bis.1.bi PCT for designated Offices and A27.7 PCT together R76.5 PCT together R51bis.1.bi PCT for elected offices).
For the phase entry itself, it is not necessary to have an agent (R51bis.3.b PCT for designated Offices and R76.5 PCT together R51bis.3.b PCT for elected offices) and the designation must be made after the phase entry deadline.
After the entry into phase, the representative may have to be designated in a signed power by the applicant (s) (A27.7 PCT together R51bis.1.b.ii PCT for designated Offices and A27.7 PCT together R76.5 PCT together R51bis.1.b.ii PCT for elected offices).
Supply of priority document
Normally, the priority document must be provided during the international phase to the RO or IB. In this hypothesis:
- the IB is responsible for transmitting it to designated Offices upon request;
- no office may require the submission of a certified copy by the applicant at the entry intoR17.2.a PCT). A simple photocopy may nevertheless be required (Guide for the applicant, national chapter §5.009) at the same time as a translation.
A translation of the priority document may be required if:
- the validity the priority claim is relevant to patentability (A27.2.ii PCT together R51bis.1.ei PCT for designated Offices and A27.2.ii PCT together R76.5 PCT together R51bis.1.ei PCT for elected offices);
- the filing date has been assigned by the RO following a incorporation of an element or part by reference (A27.2.ii PCT together R51bis.1.e.ii PCT for designated Offices and A27.2.ii PCT together R76.5 PCT together R51bis.1.e.ii PCT for elected offices).
Some States may have had stocks (A27.2.ii PCT together R51bis.1.f PCT for designated Offices and A27.2.ii PCT together R76.5 PCT together R51bis.1.f PCT for elected offices), but today it does not exist anymore.
Use of national form
Failure to perform certain acts
If certain acts have not been completed within the period of entry into the national phase, the application may cease to have the effect of a national filing for the Office concerned (A24.1.iii PCT and A24.2 PCT for designated Offices and A39.2 PCT and A39.3 PCT for elected offices).
Any Office must first give the applicant the opportunity to correct his request if the national legislation so provides in similar or comparable situations for national applications (A26 PCT).
Reinstatement of rights upon entering the phase
See "Provisions applicable after entry into phase> Apology for delays> Special case of acts to be performed for entry into phase".
Provisions applicable after entry into phase
Conditions of substantive patentability law
The PCT leaves Contracting States free to choose any substantive patentability conditions of its choice (A27.5 PCT) for example for the state of the art.
It should simply be remembered that unity of invention is not a material condition of patentability and Contracting States must follow the rules laid down in the PCT of the R13.2 PCT and not their own rules.
Correction of the translation provided
When the translation of the request contains an error, this error must be corrected (Guide for the applicant, national chapter §6.002) during the national phase.
The scope of the translation must of course not exceed that of the original text (A46 PCT).
Changes in demand during the national phase
- for a minimum period of 1 month from the entry into phase;
- for at least 4 months, if the IB has not communicated to the Office the application and the other documents R47.1 PCT and optionally, A36.1 PCT).
Correction of obvious error
Obvious error correction depends on national legislation (Guide for the applicant, national chapter §6.017).
Where the authorization for rectification has been refused in the international phase, and the refusal has been published at the request of the applicant under R91.3.d PCT, it must still represent a request for rectification (Guide for the applicant, national chapter §6.016).
Review of decisions
Decisions subject to review
Normally, in the international phase, there is no way of challenging the decisions of administrations (except with regard to unity of invention).
- refusal to grant a filing date by the RO or has withdrawn the filing date originally granted;
- finding that the application is deemed to be withdrawn by the RO for non-payment of a fee or for non-correction of an irregularity;
- finding that the application is deemed to be withdrawn by the IB for failure to transmit the original copy of the application within the prescribed time.
In order to have a decision reviewed, you must:
- ask the IB (invoking theA25 PCT) send to each designated Office (indicated by the applicant) a copy of any relevant document contained in the file (A25.1.a PCTif the office is well designated for the IB or A25.1.b PCTif the designation of the office is considered withdrawn by the IB)
- ask each of the designated Offices to review the decision (A25.2.a PCT) (Guide for the applicant, national chapter §6.019):
- by bringing any element that can support his approach (proof, etc.);
- by paying the national tax due for the opening of the national phase;
- providing the translation of the international application.
Most of the time, therefore, it is necessary to request an advance treatment of the request.
If the revision is positive, the designated Office treats the request as if this error had never occurred (A25.2.a PCT).
If the revision is negative, the Office may still treat the international application as having the effect of a regular national filing (A24.2 PCT), especially if a delay can be excused.
Apologies for delays
It seems that even to obtain an excuse for delay, it is necessary to request at the same time a review of the decision (Guide for the applicant, national chapter §6.021).
No PCT provision allows an excuse for delay during the international phase (except force majeure R82quater PCT).
Grounds for apology
Each office can freely choose the grounds allowing the excuse of a delay (A48.2.b PCT) but must at least excuse the delays for the reasons provided by national law for national applications (A48.2.a PCT).
For example, the grounds provided by national law may be (R82bis.2 PCT):
- the restoration of rights,
- the restitutio in integrum,
- the continuation of the procedure,
Any delay is excusable:
- if it is fixed in the PCT (R82bis.1.i PCT);
- if it is fixed by an international administration (RO, ISA, IPEA, IB, R82bis.1.ii PCT) (except SISA?);
- if it is fixed by the designated or elected Office (or fixed in the national legislation for that Office) for any act to be performed by the applicant at that Office (R82bis.1.iii PCT).
Special case of acts to be performed for entry into phase
For the acts to be performed upon entry into the phase, the Offices must allow the applicant to restore his rights if he fails to meet the deadlines (R49.6 PCT for designated Offices and R76.5 PCT together R49.6 PCT for elected Offices) except stocks provided by the R49.6.f PCT for designated Offices and R76.5 PCT together R49.6.f PCT for elected offices.
States having made a reservation
- CA Canadian Intellectual Property Office (but if the omission is repaired by paying a recovery tax, it may be good)
- CN State Intellectual Property Office of the People's Republic of China
- DE German Patent and Trademark Office
- IN Patent Office (India)
- KR Korean Intellectual Property Office
- LV Latvian Patent Office
- MX Mexican Institute of Industrial Property
- NZ Intellectual Property Office of New Zealand
- PH Intellectual Property Office (Philippines)
- PL Patent Office of the Republic of Poland
Reason for apology
- not be intentional;
- intervene, although the due diligence required in this case has been exercised.
The request for reinstatement of rights must include proof (R49.6.c PCT for designated Offices and R76.5 PCT together R49.6.c PCT elected offices) or possibly evidence (R49.6.d.ii PCT for designated Offices and R76.5 PCT together R49.6.d.ii PCT for elected offices, if required).
- 2 months from the end of the impediment;
- 12 months from the expiry of the phase entry deadline.
Graphical summary concerning the revision of decisions and the excuse of delays
Correction of RO or IB errors
If the RO or IB has made a mistake, the Office must rectify this mistake (if it had corrected it under its national law and if it had done so itself R82ter.1.a PCT).
Correctable errors are those concerningR82ter.1.a PCT):
- the fixing of the filing date;
- the priority if it has been erroneously rejected by the RO or the IB.
The applicant must request the correction of the error to the designated Office. This request must be submitted at the start of the national phase (Guide for the applicant, national chapter §6.029).
Special case of incorporation by reference
When the filing date has been assigned by the RO following an incorporation by reference of an element (under R20.3.b.ii PCT) or a party (under R20.5.d PCT), an Office may consider the application as if the filing date had been allocated without reference to incorporation by reference if it did not agree with the RO (ie, the filing date was the delivery of the return parts R82ter.1.b PCT).
For example, this may be related to:
- non-delivery of the RO or IB priority document (R82ter.1.bi PCT);
- a formal condition concerning incorporation was not respected (R82ter.1.b.ii PCT);
- the missing part or the missing element does not appear fully in the priority document (R82ter.1.b.iii PCT).
In any case, the Office must give the applicant the time to submit, within a reasonable time:
- observations (R82ter.1.c PCT) or
- a request not to take into account the parts incorporated in the national proceedings (R82ter.1.c PCT together R82ter.1.d PCT).