Filing requirements

Contents

Chapter 1. Requirements

Section 1.1. Providing a title

1.1.1. Requirement

1.1.2. Sanction

1.1.3. Title established or confirmed by ISA

Section 1.2. Providing an abstract

1.2.1. Requirement

1.2.2. Sanction

1.2.3. Abstract drawn up or confirmed by ISA

Section 1.3. Signature of the request

1.3.1. Requirement

1.3.2. seals

1.3.3. Sanction

Section 1.4. Designation of the applicant

1.4.1. Requirement

1.4.2. Sanction

1.4.3. Subsequent evidence

Section 1.5. Languages of the abstract, drawings and the request

1.5.1. Translation of abstract and drawings

1.5.2. Translation of the request

Section 1.6. Priority claims

1.6.1. Requirement

1.6.2. Correction or addition of priority

1) Principle

2) Time limit

3) Out of time

4) Impact of advance publication

5) Content

6) Effects on calculating deadlines

1.6.3. Restoration of the right of priority by the RO

1.6.4. Requirement for the provision of the official copy

1) Principle and delay

2) Copy format

(3) Exception regarding the surrender of the earlier application

1.6.5. Notification of irregularity and corrections

1) Notification

2) Nullity of the priority claim

3) Non-nullity of the priority claim

1.6.6. Providing a translation of the priority document?

1.6.7. Verification of the validity of the priority claim

1.6.8. Sanction

Section 1.7. taxes

1.7.1. Principle

1.7.2. Taxes to pay

1) Transmission fee

2) Research tax

3) International tax

1.7.3. Reduction

1) Developing country

2) Electronic means of filing

1.7.4. Late payment

1.7.5. Sanction

1.7.6. Refund of taxes

1) Transmission fee

2) Research tax

3) International filing fee

Section 1.8. Material conditions

1.8.1. Request

1) Shape

2) Language

3) Content of the request

4) Special case of the slip

1.8.2. Form of demand

Chapter 2. RO requirements

Section 2.1. Appointment of an agent

2.1.1. Possibility

2.1.2. Secondary agent

2.1.3. Requirement

2.1.4. Designation

2.1.5. Sanction

Section 2.2. Designation of a common representative

Chapter 3. ISA Requirements

Section 3.1. Translation

3.1.1. Translation languages

3.1.2. Time limit

3.1.3. Notification

3.1.4. Sanction

3.1.5. Fee for late delivery

Chapter 4. Requirements for publication

Section 4.1. Translation

4.1.1. Lange translation

4.1.2. Time limit

4.1.3. Notification

4.1.4. Sanction

4.1.5. Fee for late delivery

Chapter 5. Requirements specific to certain national phases

Section 5.1. Designation of the inventors

5.1.1. Requirement

5.1.2. Sanction

5.1.3. Special cases of US

5.1.4. Correction of an incorrect designation of the inventor

Section 5.2. Declaration on the applicant's right to file an application

Section 5.3. Declaration on the right of the applicant to claim priority

Section 5.4. Statement on the status of inventor

Section 5.5. Declaration Regarding Non-Preventable Disclosures

See the latest changes

Chapter 1. Requirements

Section 1.1. Providing a title

1.1.1. Requirement

The application must have a title (R4.1.a PCT, request and R5.1.a PCT, description).

It must be brief (2-7 words) and precise (R4.3 PCT).

1.1.2. Sanction

If the title is missing (A14.1.a.iii PCT), the RO invites the applicant to provide it (A14.1.b PCT) under 2 months from the invitation (A14.1.b PCT together R26.1 PCT together R26.2 PCT).

This period may be extended, on request, even after the expiry of the deadline, as long as no decision on this point has been taken by the RO (A14.1.b PCT together R26.1 PCT together R26.2 PCT).

If the correction is not made in time, the international application is considered withdrawn (A14.1.b PCT).

1.1.3. Title established or confirmed by ISA

If the ISA finds that the application does not contain a title and the RO has not notified it because the applicant has been requested to provide it, the ISA establishes the title (R37.2 PCT).

If the title was previously provided by the applicant, the ISA approves the title (R44.2 PCT).

Section 1.2. Providing an abstract

1.2.1. Requirement

The application must include an abstract (A14.1.a.iv PCT) including a summary of what is stated in the application (R8 PCT).

This abstract must be concise (about 50 to 150 words, R8.1.b PCT)

1.2.2. Sanction

If the abstract is missing (A14.1.a.iv PCT), the RO invites the applicant to provide it (A14.1.b PCT) within 2 months of the invitation (R26.2 PCT).

This period may be extended, on request, even after the expiry of the deadline, as long as no decision on this point has been taken by the RO (R26.2 PCT).

If the correction is not made in time, the international application is considered withdrawn (A14.1.b PCT).

1.2.3. Abstract drawn up or confirmed by ISA

If the ISA finds that the request does not contain an abstract and the RO has not notified it because the applicant has been requested to provide it or if the ISA finds that the abstract does not comply , the ISA draws up the abstract itself (R38.2 PCT).

If the abstract was previously provided by the applicant, the ISA approves it (R44.2 PCT).

Section 1.3. Signature of the request

1.3.1. Requirement

Normally, the request must be signed by the applicant (A14.1.ai PCT together R4.1.d PCT) or his authorized representative (R2.1 PCT and R90.3 PCT)

If normally the request must be signed by all applicants (R4.15.a PCT), this is not an irregularity at the international stage if only one of them has signed it (R26.2bis.a PCT).

1.3.2. seals

It may happen that some ROs accept "seals" instead of signatures (R2.3 PCT).

This may be the case for the Chinese, Japanese or KoreanGuide for the applicant §5.091).

1.3.3. Sanction

If the signature is missing (A14.1.ai PCT), the RO invites the applicant to provide it (A14.1.b PCT) within 2 months of the invitation (R26.2 PCT).

This period may be extended, on request, even after the expiry of the deadline, as long as no decision on this point has been taken by the RO (R26.2 PCT).

If the correction is not made in time, the international application is considered withdrawn (A14.1.b PCT).

Section 1.4. Designation of the applicant

1.4.1. Requirement

The applicant must be identified by indicating (R4.5.a PCT):

  • his name :
  • his address :
    • in order to allow a correct postal distribution (R4.4.c PCT),
    • a telephone or fax number can complete this address.
  • nationality (the name of the State, R4.5.b PCT) and his home (the name of the state, R4.5.c PCT):
    • this indication is useful to know if the depositor has the quality to file an application with this RO (R19.1.a PCT),
    • when the country of domicile is not indicated, it is assumed that it is the country indicated in the address.
    • the name of the state is indicated (Administrative Instructions 115)
      • be completely
      • either abbreviated
      • either by its two-letter code.

There may be different applicants for different states (R4.5.d PCT).

1.4.2. Sanction

If the name of the applicant is missing (A14.1.a.ii PCT) (at least for the one that allows to file with the RO, R26.2bis.b PCT), the RO invites the applicant to provide it (A14.1.b PCT) within 2 months of the invitation (R26.2 PCT).

This period may be extended, on request, even after the expiry of the deadline, as long as no decision on this point has been taken by the RO (R26.2 PCT).

If the correction is not made in time, the international application is considered withdrawn (A14.1.b PCT).

1.4.3. Subsequent evidence

During the national phase, designated or elected Offices may request proof of the identity of the inventor (R51bis.1.ai PCT).

Section 1.5. Languages of the abstract, drawings and the request

1.5.1. Translation of abstract and drawings

If the abstract or text contained in the drawings is not in the language of the filing (ie description and claims) and these documents are not already in the language in which the application is to be published, the RO invite the applicant to submit a translation of these documents in the language in which the application is to be published (A3.4.i PCT and R26.3ter.a PCT).

However, some Offices do not accept that certain documents are in a language other than that of the description (R26.3ter.b PCT).

1.5.2. Translation of the request

Whatever the language of the description and the claims, the request must be filed in a language of publication accepted by the RO (R12.1.c PCT).

The languages of publication are (R48.3.a PCT):

  • German,
  • English,
  • Arab,
  • Chinese,
  • Korean,
  • Spanish,
  • French,
  • Japanese,
  • Portuguese or
  • Russian.

If the request does not meet this requirement, the RO notifies the applicant (R26.3ter.c PCT) and invites it to remedy this irregularity and / or to submit comments within a 2 months from the invitation (R26.3ter.c PCT together R26.1 PCT together R26.2 PCT).

Section 1.6. Priority claims

1.6.1. Requirement

Any request may include a declaration that one or more priority of applications previously filed in a CUP Member State (A8.1 PCT) or a member of the WTO (R4.10.a PCT).

Any claim of priority must be included in the request (R4.10.a PCT) and must indicate for the earlier application:

  • the filing date (R4.10.ai PCT);
  • the deposit number (R4.10.a.ii PCT);
  • the place of the deposit:
    • The CUP State or WTO Member in which the deposit was made (R4.10.a.iii PCT)
    • the issuing administration (if regional application, R4.10.a.iv PCT) and at least one CUP Member State or WTO Member for which this application has been made (R4.10.b.ii PCT) if the regional application is not aimed at States of this type only;
    • RO (if international application, R4.10.av PCT).

If a state is not a member of the WTO and a priority is claimed outside the CUP, that state may disregard the priority that has been claimed (Guide for the applicant, §5.057).

1.6.2. Correction or addition of priority

1) Principle

It is possible to correct an existing priority claim or to add one by sending a communication to the IB or RO (R26bis.1.a PCT).

2) Time limit

This correction or addition can be done (R26bis.1.a PCT):

  • in a delay of sixteen months from the earliest date from:
    • the earliest priority date before correction / addition and,
    • the earliest priority date after correction/ addition ;
  • in a delay of four months from the international filing date.

In addition, the deadline is deemed to be respected if the correction is received within one month of the RO or IB's declaration that the priority claim is deemed not to have been submitted (R26bis.2.b PCT, for correction only).

3) Out of time

If a correction or addition arrives after the expiration of this period in the IB, but not more than 30 months from the priority, the IB may publish this information on payment of a fee (R26bis.2.e PCT).

4) Impact of advance publication

Any request for correction / addition will be considered as not received if it occurs after the request of the applicant for advance publication of the application (unless this request for advance publication is withdrawn before the completion of the technical preparations, R26bis.1.b PCT, ie 15 days before publication, Guide for the applicant, §9.013).

5) Content

Any correction or addition of priority must comply with the R4.10.a PCT and must mention, for the previous application:

  • the filing date (R4.10.ai PCT);
  • the deposit number (R4.10.a.ii PCT);
  • the place of the deposit:
    • The CUP State or WTO Member in which the deposit was made (R4.10.a.iii PCT)
    • the issuing administration (if regional application, R4.10.a.iv PCT) and at least one CUP Member State or WTO Member for which this application has been made (R4.10.b.ii PCT) if the regional application is not aimed at States of this type only;
    • RO (if international application, R4.10.av PCT).
6) Effects on calculating deadlines

Any delay calculated from the priority date that has not expired is recalculated (R26bis.1.c PCT).

1.6.3. Restoration of the right of priority by the RO

The RO may decide to grant a restoration of the right of priority if the period between the priority date and the granted filing date exceeds 12 months but without exceeding 14 months (R26bis.3.a PCT).

To do this, the RO must at least apply a restoration criterion among (R26bis.3.a PCT):

  • due diligence in this case;
  • the unintentional nature of the failure.

A catering fee may be requested (R26bis.3.d PCT).

Of course, some countries have put a Reserve these provisions (R26bis.3.j PCT):

  • BE Office for Intellectual Property (Belgium)
  • BR National Institute of Industrial Property (Brazil)
  • CO Superintendence of Industry and Commerce (Colombia)
  • CU Cuban Office of Industrial Property
  • CZ Office of Industrial Property (Czech Republic)
  • DE German Patent and Trademark Office
  • DZ Algerian National Institute of Industrial Property
  • GR Industrial Property Organization (OBI) (Greece)
  • ID Directorate General of Intellectual Property (Indonesia)
  • IN Patent Office (India)
  • IT Office of Patents and Trademarks
  • JP Patent Office of Japan
  • KR Korean Intellectual Property Office
  • NO Norwegian Patent Office
  • PH Intellectual Property Office (Philippines)

1.6.4. Requirement for the provision of the official copy

1) Principle and delay

An official copy of the priority document must also be provided to the IB or RO:

  • in a delay of 16 months from the priority date (R17.1.a PCTif the application reaches the IB when the application is not yet published, such a copy is deemed to have arrived within that time)
  • or before the application for advance processing (R17.2.a PCTbecause otherwise the designated or elected Offices may not take into account the priority R17.1.c PCT).
2) Copy format

The copy must be certified by the administration with which the earlier application was filed.

(3) Exception regarding the surrender of the earlier application

It is not necessary to provide a copy of the previous application:

  • where the RO is the office with which the earlier application was filed, and if an application is made (within the time limits applicable above) to that office to forward it to the IB (R17.1.b PCT);
    • a tax may be payable;
    • a box is provided in the form for this purpose (R4.1.c.ii PCT).
  • when the previous application is accessible from a "digital library" and if a request is made to the IB to obtain the document in that library (R17.1.b-bis PCT). Offices participating in this library are (PCT Newsletter n ° 1/2010):
    • Austria;
    • Spain;
    • Britain ;
    • International Bureau;
    • Japan;
    • South Korea ;
    • United States.

1.6.5. Notification of irregularity and corrections

1) Notification

When the RO or IB finds that a priority claim does not meet the conditions of the R4.10 PCT (mention date, number and place), this administration invites the applicant to correct this irregularity (R26bis.2.a.ii PCT).

The same invitation is sent if the administration finds a contradiction between the priority document provided and the indications given (R26bis.2.a.iii PCT).

2) Nullity of the priority claim

If the applicant does not correct his priority, as regards the mention of the dated and place priority, within the time allowed for the correction or addition of priority, the irregular priority claim shall be considered as not having been submitted (R26bis.2.b PCT) and the administration notifies the applicant. The correction period is extended until notification by the administration, but not more than one month after the deadline for correction or addition of priority (R26bis.2.b PCT).

3) Non-nullity of the priority claim

Certain irregularities do not invalidate the priority claim (R26bis.2.c PCT):

  • the deposit number is missing;
  • the information in the priority document is contradictory to the information given;
  • the date of the priority exceeds by more than 12 months the date of filing of the international application (but not exceeding 12 + 2 months, because there is a possibility of restoration).

1.6.6. Providing a translation of the priority document?

If the validity of a priority is important as regards the patentability of an international application and if that priority is not in a language accepted by ISA or IPEA, that authority may invite the applicant to submit a translation of the priority into an appropriate language within 2 months (R43bis.1.b PCT for ISA, R66.7.b PCT for the IPEA).

Otherwise, the priority is considered invalid for the purpose of preparing the search and examination reports (R43bis.1.b PCT for ISA, R66.7.b PCT for the IPEA).

1.6.7. Verification of the validity of the priority claim

The validity of a priority claim is not determined during the international phase.

This validity will have to be decided during the national phase. For example, if a state is not a member of the WTO and priority is claimed outside the CUP, that state may disregard the priority that has been claimed (Guide for the applicant, §5.057).

1.6.8. Sanction

If no surrender of the priority document is made, any designated or elected Office may disregard the priority claim, but not before giving the applicant the opportunity to correct the defect within a reasonable time (R17.1.c PCT), unless the priority application has been filed with or accessible to that national office (R17.1.d PCT).

Section 1.7. taxes

1.7.1. Principle

Each international application is subject to the payment of prescribed fees (A3.4.iv PCT).

These taxes are (R27.1 PCT):

1.7.2. Taxes to pay

1) Transmission fee

The transmission tax is collected by the RO for the RO (A3.4.iv PCT together R14.1.a PCT) to cover the costs of carrying out its tasks.

The amount is fixed by the RO (R14.1.b PCT) which fixes the currency in which this tax is to be paid.

This tax is due within a 1 month from the time of deposit (R14.1.c PCT).

2) Research tax

The search fee is collected by the RO for the ISA (A3.4.iv PCT together R16.1.a PCT) to cover the costs of the research.

The amount is fixed by the ISA (R16.1.a PCT) but must be paid to the RO (R16.1.b PCT) which fixes the currency in which this tax is to be paid.

This tax is due within a 1 month from the time of deposit (R16.1.f PCT).

3) International tax

The international filing fee is collected by RO for the IB (A3.4.iv PCT together R15.1 PCT) to cover his various expenses.

The amount is fixed by Fee Schedule (R15.2.a PCT):

  • 1330 Swiss francs (about 1090 euros);
  • 15 Swiss francs per additional page starting from the 31st (taking into account: the request including the declarations, the description, the drawings, the claims, the abstract, the sequence listing).

RO sets the currency in which this tax must be paid (R15.2.b PCT).

This tax is due within a 1 month from the time of deposit (R15.3 PCT).

1.7.3. Reduction

1) Developing country

A 90% reduction of the processing fee is possible if the applicant is a national or resident:

  • in a country with a per capita national income of less than US $ 3,000 (Fee Schedulepoint 5.a) or
  • in a country classified as a least developed country by the United Nations (Fee Schedulepoint 5.b).

For an applicant benefiting from this reduction, and if the RO is the IB, there will be no transmission fee.

All applicants (even if they are not part of the PCT system) must satisfy this criterion in order to benefit from the reduction (Fee Schedulepoint 5).

This reduction applies after the reduction in the means of deposit if it is applicable (Fee Schedulepoint 5).

At present, WIPO indicates that the following States benefit (90% tax reduction for the PCT):

States benefiting from a reduction under the PCT
States benefiting from a reduction under the PCT States benefiting from a reduction under the PCT
States benefiting from a reduction under the PCT (on the United Nations list)
States benefiting from a reduction under the PCT (on the United Nations list) States benefiting from a reduction under the PCT (on the United Nations list)
2) Electronic means of filing

A reduction in the international filing fee is foreseen if (Fee Schedule, point 4):

  • the request and the abstract are filed in a printed form paper produced using PCT-EASY software (Fee Schedulepoint 4.a):
    • an electronic copy (diskette) in character encoded format (eg XML) must be attached;
    • this mode is called "PCT-EASY presentation mode request";
    • the reduction is 100 Swiss francs;
  • the application is filed electronically, the request is not in a character-encoded format (eg scanned PDF, Fee Schedulepoint 4.b):
    • the reduction is 100 Swiss francs;
  • the application is filed in electronic form, the request being in a character-encoded format (eg XML, Fee Schedulepoint 4.c):
    • the reduction is 200 Swiss francs;
  • the application is filed in electronic form, the request, the description, the claims and the abstract being in a character-encoded format (eg XML, Fee Schedulepoint 4.d):
    • the reduction is 300 Swiss francs;

This reduction applies before the reduction for developing countries if it is applicable (Fee Schedulepoint 5).

1.7.4. Late payment

In the event of late payment (or insufficient payment), the RO shall invite the applicant to pay the outstanding amount within one month of the notification (R16bis.1.a PCT).

A payment is not considered late if the payment is received by the RO before the latter sends the notification indicating the late payment (R16bis.1.d PCT).

A late payment fee may be required by the RO (R16bis.2.a PCT) for his benefit. This late payment fee is the maximum of the following two taxes:

  • 50% of the minimum between:
    • the amount remaining to be paid;
    • the international filing fee (R16bis.2.b PCT).
  • the amount of the transmission tax.

1.7.5. Sanction

If, despite the notification, the applicant does not pay in due time, the international application is considered withdrawn and the RO informs the applicant (A14.3.a PCT together R16bis.1.ci PCT together R27.1 PCT together R29 PCT).

The payment is considered valid (even though a late fee may be due) if the RO receives the payment before sending the RO notification informing the applicant that his application is deemed to be withdrawn (R16bis.1.e PCT).

1.7.6. Refund of taxes

1) Transmission fee

Nothing in the PCT allows for the refund of the transmission tax.

2) Research tax

The search fee is totally refunded if:

  • no filing date is granted by the RO (R16.2.i PCT);
  • the application is withdrawn or deemed withdrawn before the copy of the application is transmitted to the ISA (R16.2.ii PCT);
  • the international application is not treated as such for reasons of national defense (R16.2.iii PCT).

The search fee is partially refunded if:

  • previous research is taken into account for the establishment of the RRI (but the terms and conditions are set out in an agreement between ISA and WIPO) (R16.3 PCT) and R41.1 PCT).

The search fee can be partially or totally refunded if:

  • the application is withdrawn or deemed withdrawn after the copy of the application is sent to the ISA, but before the ISA starts work (Guide for the applicant §5.198), but this depends on the provisions applicable to this ISA.
3) International filing fee

The search fee is totally refunded if:

  • no filing date is granted by the RO (R15.4.i PCT);
  • the application is withdrawn or deemed withdrawn before the copy of the application is transmitted to the ISA (R15.4.ii PCT);
  • the international application is not treated as such for reasons of national defense (R15.4.iii PCT);

Section 1.8. Material conditions

The material conditions prescribed by the Regulation must be respected (A14.1.av PCT) failing which, the application is rejected (A14.1.b PCT).

1.8.1. Request

1) Shape

The request must be established, at choice:

2) Language

Normally, all elements of the international application must be in the same language.

Nevertheless, the request must be written in a language of publication that the RO accepts for this purpose (R12.1.c PCT) amongR48.3.a PCT):

  • German,
  • English,
  • Arab,
  • Chinese,
  • Korean,
  • Spanish,
  • French,
  • Japanese,
  • Portuguese or
  • Russian.
3) Content of the request

The petition contains a petition stating that the request is processed in accordance with the PCT (A4.1.i PCT and R4.1.ai PCT) preferentially written "The undersigned requires that this international application be processed in accordance with the Patent Cooperation Treaty” (R4.2 PCT).

It must also contain (R4.1.a PCT):

  • the title of the invention;
  • indications concerning the applicant and, where appropriate, the representative;
  • indications relating to the inventor, where the national law of at least one designated State requires disclosure of the name of the inventor when filing a national application.

It must contain, where appropriate (R4.1.b PCT):

  • a priority claim;
  • indications of previous research;
  • the mention of a main application or a main patent;
  • the indication of the competent authority responsible for the international search chosen by the applicant.

It can contain (R4.1.c PCT):

  • indications relating to the inventor;
  • a request to the RO to prepare the priority document and forward it to the IB (if the priority has been filed with the RO);
  • declarations made to meet national requirements (R4.17 PCT);
  • a declaration of incorporation by reference (R4.18 PCT);
  • a request for restoration of the right of priority;
  • a statement that the international application is identical or substantially identical to the application for which the previous search was made (R4.12.ii PCT).
4) Special case of the slip

Normally, the applicant must fill in the application form (R3.3 PCT) even if the sanction is weak: if the bill is incomplete, the RO must complete it (R3.3.b PCT).

The information that must appear on the form is:

  • the total number of sheets of the application
  • the number of sheets of each element of this application:
    • request,
    • description (by treating separately the possible sequence listing),
    • claims,
    • drawings
    • abridged;
  • the fact that is attached:
    • a power
    • a copy of a general power,
    • a priority document,
    • a sequence listing,
    • a document relating to the payment of taxes
    • any other document;
  • the number of the figure that the applicant proposes to publish with the abstract.

1.8.2. Form of demand

The description must begin with the title of the invention as indicated in the request (R5.1.a PCT).

In addition, the application must respect certain material conditions (R11 PCT) especially :

  • to be filed in the number of copies prescribed by the RO (R11.1.b PCT);
  • allow reproduction (R11.2 PCT);
  • be placed on "flexible, strong, white, smooth, not shiny and durable" paper (R11.3 PCT);
  • use A4 white sheets (R11.5 PCT);
  • the margins can not be smaller than the following diagram (R11.6 PCT) for the description, the claims and the abstract:
  • the margins can not be smaller than the following diagram (R11.6 PCT) for the drawings:
  • the pages must be numbered consecutively in Arabic numerals, off-margin, up or down (R11.7 PCT);
  • line numbers can appear in the right half of the left margin (R11.8 PCT);
  • the request, the description, the claims and the abstract must be typed or printed with a 1.5 line spacing (R11.9 PCT);
  • all texts must be in characters whose capital letters are at least 0.28 cm high (R11.9 PCT).

Chapter 2. RO requirements

Section 2.1. Appointment of an agent

2.1.1. Possibility

The applicant may appoint an attorney (who has the right to practice at the RO) to represent him before the RO, IB, ISA and IPEA (A49 PCT together R90.1.a PCT).

If the IB is RO, any person, who could have been a proxy for a RO based on the nationality or domicile of an applicant, may be an attorney before the IB (R83.1bis PCT).

It is also possible to specifically appoint a proxy (but this is never mandatory, A27.7 PCT):

  • before the ISA (R90.1.b PCT, and who has the right to practice with the ISA),
  • before HIFIS (R90.1.b-bis PCT, and who has the right to practice with the SISA), or
  • before the IPEA (R90.1.c PCT, and who has the right to practice with IPEA).

2.1.2. Secondary agent

An agent may, in turn, appoint secondary representatives (R90.1.d PCT). This agent must be authorized to:

  • either the RO (R90.1.di PCT) and can then act before the RO, IB, ISA, IPEA or SISA;
  • either in front of ISA, IPEA or SISA (R90.1.d.ii PCT) and he can then act before this administration.

2.1.3. Requirement

During the national phase, only RO may require a representation (A27.7 PCT) if its national legislation so provides.

2.1.4. Designation

In order to appoint the agent, it is possible:

  • to indicate it in the request (R4.7.a PCT, essential if the RO requires an agent for the deposit),
  • to provide a separate power of attorney deposited with the RO, IB, ISA, IPEA or SISA (R90.4.b PCT).

The provision of power may be non-compulsory if the administration has waived this power (R90.4.d PCT).

A reference to a general power may be possible (R90.5.a PCT).

2.1.5. Sanction

There is no sanction in the PCT for a lack of representation, but the RO can apply the sanctions of its national legislation (A27.7 PCT).

Section 2.2. Designation of a common representative

In case of plurality of applicants and if no common representative is constituted, it is necessary to appoint a common representative (R90.2.a PCT).

If no common representative is appointed by the applicants (R90.2.a PCT), the first applicant who is entitled to submit an application to the RO is considered as the common representative (R90.2.b PCT).

Chapter 3. ISA Requirements

Section 3.1. Translation

3.1.1. Translation languages

If the language of the application is not accepted by the ISA, the applicant must submit a translation of the application in a language that is both:

The languages of publication are (R48.3.a PCT):

  • German,
  • English,
  • Arab,
  • Chinese,
  • Korean,
  • Spanish,
  • French,
  • Japanese,
  • Portuguese or
  • Russian.

3.1.2. Time limit

This translation must be submitted 1 month after filing the application with RO (R12.3.a PCT) knowing:

  • a time limit with surcharge is provided (see below "Notification");
  • that a receipt fiction on time is provided (see below "Sanction");

3.1.3. Notification

When notifying the deposit number, the RO invites the depositor to provide, where appropriate, this translation:

  • under 1 month after filing the application with RO (R12.3.ci PCT together R12.3.a PCT) without paying a surcharge;
  • under the two following deadlines, possibly paying a surcharge (R12.3.c.ii PCT):
    • 1 month from the notification;
    • 2 months from the deposit.

3.1.4. Sanction

If no translation is produced despite the notification, the application is deemed to be withdrawn (R12.3.d PCT) and the RO declares it.

Nevertheless, as long as the RO has not yet declared anything and if the deadline for 15 months from the priority has not expired, the delivery of the translation and / or the payment of the surcharge will be considered valid (R12.3.d PCT).

3.1.5. Fee for late delivery

The late delivery fee is collected by the RO.

This tax (mentioned above) is 25% of the fixed amount (ie not including the surcharge from the 31st page) of the international filing fee (R12.3.e PCT).

Chapter 4. Requirements for publication

Section 4.1. Translation

4.1.1. Lange translation

If the language of the application is not a language of publication, the applicant must submit a translation of the application in a language of publication (R12.4.a PCT).

The languages of publication are (R48.3.a PCT):

  • German,
  • English,
  • Arab,
  • Chinese,
  • Korean,
  • Spanish,
  • French,
  • Japanese,
  • Portuguese or
  • Russian.

4.1.2. Time limit

This translation must be submitted 14 months from the priority date with the RO (R12.4.a PCT).

4.1.3. Notification

If no translation is submitted within this period, the RO invites the applicant to submit the translation within a 16 months from the priority date (R12.4.c PCT) and to pay a late delivery fee.

4.1.4. Sanction

If no translation is produced despite the notification, the application is deemed to be withdrawn (R12.4.d PCT) and the RO declares it.

Nevertheless, as long as the RO has not yet declared anything and if the period of 17 months from the priority has not expired, the delivery of the translation and / or the payment of the surcharge will be considered valid (R12.4.d PCT).

4.1.5. Fee for late delivery

The late delivery fee is collected by the RO.

This tax (mentioned above) is 25% of the fixed amount (ie not including the surcharge from the 31st page) of the international filing fee (R12.3.e PCT).

Chapter 5. Requirements specific to certain national phases

Section 5.1. Designation of the inventors

5.1.1. Requirement

For countries whose national legislation so requests (A4.1.v PCT, R51bis.1.ai PCT, R4.17.i PCT), inventors may be identified, at the time of filing, in the application by indicating (R4.6.a PCT):

  • their name :
  • their address (which is not necessarily their personal address, PCT Newsletter n ° 10/2008):
    • in order to allow a correct postal distribution (R4.4.c PCT),
    • a telephone or fax number can complete this address.

When the applicant is also an inventor, it is sufficient to tick a box in the request (R4.6.b PCT).

If state legislation differs in how to identify inventors, it is possible to mention several groups of inventors according to the state (R4.6.c PCT).

5.1.2. Sanction

There is no sanction (A4.4 PCT), whether or not this information is required by national law.

This requirement simply allows to provide this information after the filing (A4.4 PCT), but this requirement can still be met when entering the national phase (A22.1 PCT).

5.1.3. Special cases of US

Prior to March 16, 2013, it was mandatory to mention the inventors because the depositors were those for the US phase.

5.1.4. Correction of an incorrect designation of the inventor

If the applicant wishes to correct the designations of the inventors, it is necessary to send a request for change to the IB or the RO which transmits it to the IB (R92bis.1.a.ii PCT), the request to be submitted to the IB within 30 months of the priority (R92bis.1.b PCT).

Section 5.2. Declaration on the applicant's right to file an application

This declaration is provided for by R51bis.1.a.ii PCT and the R4.17.ii PCT.

Section 5.3. Declaration on the right of the applicant to claim priority

This declaration is provided for by R51bis.1.a.iii PCT and the R4.17.iii PCT.

Section 5.4. Statement on the status of inventor

This declaration is provided by theA27.3 PCT, the R51bis.1.a.iv PCT and the R4.17.iv PCT.

It applies for the purposes of US designation.

It must be signed (R4.17.iv PCT).

Section 5.5. Declaration Regarding Non-Preventable Disclosures

This declaration is provided for by R51bis.1.av PCT and the R4.17.v PCT.

Leave a Reply

Your e-mail address will not be published. Required fields are marked *