Obtaining a filing date

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Chapter 1. Conditions for assigning a filing date

Section 1.1. The "strong" conditions

1.1.1. A description "at first sight"

The application must contain a part which, on its face, constitutes a description (A11.1.iii.d PCT and A3.2 PCT).

There is no form requirement.

1.1.2. A claim "at first sight"

The application must contain a part which, prima facie, constitutes one or more claims (A11.1.iii.e PCT and A3.2 PCT).

There is no form requirement.

1.1.3. Designation of the applicant

The application must include the name of the applicant (A11.1.iii.c PCT) thus making it possible to establish his identity.

It is necessary to indicate only one of the applicants, and this applicant must be at least the one for whom the indication of nationality or domicile makes it possible to make the finding that there is a link with a Contracting State (R26.2bis.b PCT).

Such an irregularity is rare, as it means that at no point in a deposit room is the name of the depositor mentioned (R20.1.b PCT):

  • even if this name is misspelled,
  • even if the first names are not complete,
  • even if, in the case of a legal person, the name is abbreviated or incomplete.

1.1.4. Indication that the application is an international application

The application must include an indication that the application was filed as an international application (A11.1.iii.a PCT).

This mention is indicated if the applicant uses form PCT / RO / 101.

Section 1.2. The "weak" conditions

1.2.1. Nationality / domicile of an applicant

1) Principle

Any person domiciled in a Contracting State or any national of such State may file a PCT application (A9.1 PCT):

At least one of the applicants must have nationality or be domiciled in a Contracting State (A11.1.i PCT and R18.3 PCT).

Normally, this nationality or domiciliation must be in the Contracting State corresponding to the RO, but the safeguard measure (allowing to transfer to the IB any application inadmissible for this reason) and the number of countries being in the PCT make this condition practically without effect (R19.4.ai PCT).

2) Definition of domicile

Even if the question of domicile is decided by the RO (R18.1.a PCT), the term "domicile" shall mean at least the possession of a real and effective industrial or commercial establishment (R18.1.bi PCT).

3) Definition of nationality

Even if the question of nationality is decided by the RO (R18.1.a PCT), "national" means at least a legal person constituted in accordance with the law of a Contracting State (R18.1.b.ii PCT).

1.2.2. Language of the request

1) Principle

The request (description and claim R20.1.c PCT) must be in a prescribed language (A11.1.ii PCT) ie a language accepted by the RO (R12.1.a PCT).

2) Languages accepted by the RO

The languages accepted by the RO must include at leastR12.1.b PCT) a language that is (accepted languages can therefore be more numerous):

  • accepted by at least one of the relevant ISAs for this RO;
  • a language of publication of the R48.3.a PCT :
    • German,
    • English,
    • Arab,
    • Chinese,
    • Korean,
    • Spanish,
    • French,
    • Japanese,
    • Portuguese or
    • Russian.
3) Different languages

If the description and claims are in two different languages (even if they are both accepted by the RO), it would seem that this prevents the assignment of a filing date.

If another part of the application is in a different language, that document may be translated later without modification of the filing date (for the abstract or the drawings, R26.3ter.a PCT) after a possible invitation from the RO.

4) Safeguard measure

Normally, the language must be one of the languages accepted by the RO, but the safeguard measure (allowing to transfer to the IB any request inadmissible for this reason) makes this condition ineffective (R19.4.a.ii PCT), especially that the IB accepts an application in any language, even a language of a non-Contracting State (Applicant's Guide, Appendix C, IB).

1.2.3. Designation of States

The application must include the designation of at least one Contracting State (A11.1.iii.b PCT).

However, this condition is ineffective since, since 2004, the filing of a PCT application involves the designation of all the Member States (R4.9.a PCT).

An exclusion of certain designations is possible in order to prevent the "self-designation effect" provided for by certain national laws (R4.9.b PCT, effect attached to the designation of a particular State where the earlier national application whose priority is claimed had been filed in that State).

The only designations that can be excluded today are:

  • DE: German Patent and Trademark Office
  • JP: Japan Patent Office
  • KR: Korean Intellectual Property Office

The exclusion of a designation is irrevocable and irreversible.

Chapter 2. Irregularities or Reference to an Earlier Application

Section 2.1. Non respect of minimum conditions

2.1.1. General principle

Failure to comply with one of the minimum conditions mentioned above entails the sending of a notification from the RO to the applicant (A11.1 PCT together R20.3.a PCT).

From this invitation, the applicant has a deadline of two months (R20.7.ai PCT) from the notification to proceed to the regularization of his deposit:

  • if there is a regularization, the filing date is then that of the date on which the RO receives the correction (R20.3.bi PCT);
  • if there is no regularization, there is no filing date (R20.4 PCT).

In any case, if no invitation is sent (eg the RO does not have the applicant's address or does not identify an error), the two months for the correction runs from the date of delivery of the first coins to the RO (R20.7.a.ii PCT).

Nevertheless, the correction is deemed to be received in time if the RO has not sent a notification that the application is not an international application and will not be processed as such (R20.7.b PCT).

The RO, upon receipt of the correction documents, will inform the applicant that this correction results in a change in the filing date (R20.3.bi PCT together R20.2.c PCT).

2.1.2. Particular case of the description or the claims

Although the existence of a description or claim is a minimum requirement, there are special provisions (see "Incorporation by reference" below) where this requirement is not fulfilled.

Section 2.2. Incorporation by reference (description, claims, drawings)

2.2.1. Principle

It may happen that the applicant:

  • make a mistake when filing:
    • and forgets a part of an element among its description, claims or drawings;
    • and forgets a element complete description, claims and drawings;
  • seeks to file an application returning has a element a previous application (eg description, claims or drawings).

Incorporation by reference may be the answer in these situations.

The PCT therefore deals with the same plan the error of the applicant and his will to make a reference ...

2.2.2. Prerequisite to benefit from this incorporation

This correction is possible only if the request contains a declaration stating that, when the description, the drawings or the claims (in whole or in part) are not present in the international application, but in the priority documentthis element (or part) may be incorporated by reference (A11.1.iii PCT together R4.1.c.iv PCT together R4.18 PCT).

This statement is, by default, written in the request form provided by WIPO.

Incorporation by reference is only possible for applications filed on or after April 1, 2007.

2.2.3. Possible reservations of Contracting States (RO or designated States)

Some States have indicated stocks concerning this possibility of correction after the filing date:

  • BE Office for Intellectual Property (Belgium);
  • Cuban Office of Industrial Property;
  • CZ Office of Industrial Property (Czech Republic);
  • DE German Patent and Trademark Office;
  • ID Directorate General of Intellectual Property (Indonesia);
  • IT Italian Patent and Trademark Office;
  • JP Patent Office of Japan;
  • KR Korean Intellectual Property Office;
  • MX Mexican Institute of Industrial Property;
  • PH Intellectual Property Office (Philippines).

2.2.4. Identification of the error and temporal conditions

At first, the correction is only possible:

  • if the applicant asks for incorporation himself:
    • in a delay of two months after the deposit of the first coins (R20.7.a.ii PCT), or
    • until the RO has sent notification that the application is not an international application and will not be processed as such (R20.7.b PCT).
  • if the RO becomes aware of the applicant's error (R20.5.a PCTif part of the description or claims is missing or all or part of the drawings, R20.3.a PCT, if all the description or all the claims are missing) by sending a notification and that the latter then requests the incorporation:
    • in a delay of two months after notification of RO (R20.7.ai PCT).
    • until the RO has sent notification that the application is not an international application and will not be processed as such (R20.7.b PCT).

2.2.5. Incorporation using a priority document

1) Principle

Once all the preceding conditions are fulfilled (the priority contains the missing elements / parts and the international application contains the declaration of incorporation by reference), the applicant can correct his filing by submitting a confirmation of incorporation (R20.6 PCT).

This confirmation must contain:

  • a letter of confirmation of the declaration of incorporation by reference (R20.6.a PCT),
  • the sheets that were missing from the international application at the time of filing, these sheets to be provided (R20.6.ai PCT together R12.1bis PCT):
    • in the language of the application as filed and,
    • where applicable, in the language required for the purposes of the international search and / or publication.
  • an indication of where the missing parts appear in the priority document and any translation required (R20.6.a.iv PCT),
  • if the priority document has not already been submitted, a copy of the earlier application as filed (R20.6.a.ii PCT),
  • a translation of the priority document (R20.6.a.iii PCT):
    • in the language of the application as filed if it is not in the language of the application and,
    • where applicable, in the language required for the purposes of the international search and / or publication.

No other information is required (eg justification).

2) Priority claim present at the depot

Contrary to what is possible before the EPO, it is not possible to add or correct a priority claim after the filing and then to request incorporation by reference. The priority claim must exist on the day of filing (Applicant's Guide §6.028).

3) Case of a RO having not notified reservations

If the above conditions are met, the correction is accepted and the deposit date will be :

  • the date on which the minimum requirements have been met (R20.6.b PCT together R20.5.b PCT if part of the description or claims is missing or all or part of the drawings)
  • the date when the minimum requirements were met, considering that the missing elements were contained in the firstR20.6.b PCT together R20.3.b.ii PCTif the whole description or all the claims are missing)

An indication of this fact is indicated on the front page of the publication (R48.2.bv PCT).

If the confirmation is not received within the deadline, the correction can not be made:

  • it is not an international application if the minimum conditions are not met (R20.4 PCT);
  • the missing parts (knowing that the minimum requirements are met) can not be added to the existing international application.

Designated or elected Offices are not bound by the RO's decision.

4) Case of a RO having notified reservations

The RO can not accept confirmation of incorporation, as it is not bound by the provisions, but it can process the incoming sheets.

The RO will then treat the change as a "further correction" within the meaning of the next paragraph.

Nevertheless, the applicant may request the RO to transmit to the IB the application pursuant to the R19.4.a.iii PCT.

Section 2.3. Other corrections (description, claims, drawings)

In all other cases (ie no priority, no declaration or absence of the missing content in the priority), the applicant can not proceed to the correction without changing the filing date.

If the RO receives a request to correct the request within a 2 months from the date of filing or, where appropriate, the notification of the RO (R20.7 PCT), the filing date is fixed on that date:

  • if the whole description or all the claims are missing (R20.3.bi PCT);
  • if part of the description or claims is missing or all or part of the drawings:
    • and if the date is not yet fixed (R20.5.b PCT),
    • and if the date is already set at another date, then there is a re-fixation of the filing date (R20.5.c PCT).

The RO, upon receipt of the correction documents, will inform the applicant that this correction results in a change in the filing date (R20.3.bi PCT or R20.5.b PCT or R20.5.c PCT together R20.2.c PCT).

If the filing date has been corrected (R20.5.c PCTmissing part and the filing date previously fixed), the applicant a period of one month to oppose (R20.5.e PCT) and thus renounce the corrections he himself proposed.

Chapter 3. Procedure following the filing

Section 3.1. Assignment of a date by the RO

When the RO assigns a filing date to a request, the applicant shall be notified promptly of that date and the number of the patent application (R20.2.c PCT).

The IB is informed of this notification and the original of the application is sent to it (R20.2.c PCT).

Section 3.2. Receipt of the original copy by the IB

The original copy should normally reach the IB within 13 months from the priority date (R22.1.b PCT).

Upon receipt of this copy (as soon as possible), the IB notifies:

This notification contains (R24.2.a PCT):

  • the number of the application;
  • the filing date;
  • the name of the applicant;
  • the priority dates claimed;
  • designated States (in the notification of the applicant only).

Section 3.3. Withdrawal by the RO of a filing date

If, after the issuance of a filing date, the RO finds that in fact the conditions are not fulfilled, the application is considered withdrawn (A14.4 PCT together R29.1.ii PCT).

Thus, the application retains its filing date and can therefore be used as a basis for a priority claim.

Nevertheless, this finding can not be made after the expiry of a period of 4 months after the filing (A14.4 PCT together R30.1 PCT) and must be preceded by a notification to the applicant indicating the intention of the RO to make this finding (R29.4.a PCT): the applicant then has two months to make submissions or confirm incorporation by reference.

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