Patent Co-operation Treaty

2.3 Patent Co-operation Treaty

The main sections relating to the PCT in the UK are covered by s89, 89A & 89B and s79 of the UKPA. Some additional aspects relevant to FD1 are outlined below, and timelines are provided in Part 4. For a more complete summary, consider the section on the PCT in Visser.

Terminology

• The receiving Office (rO) – Any national or regional office competent to receive a PCT filing (A10, R19 PCT) – which includes the UKIPO and EPO. If an rO receives a PCT application in a language it is not competent to process, it will forward it to the IB (see below). • International Bureau (IB) – Central WIPO office. Can also act as the rO for any application. • International Search Authority (ISA) – A national or regional office competent to search an international application (A16, R35 PCT) and generate an international search report (ISR), subject to language restrictions. • International Preliminary Examining Authority (IPEA) – a national or regional office competent to examine an international application (A32, R59 PCT) and generate an international preliminary examination report (IPER). • The designated Office (dO) – The national or regional patent office of a designated state or region (used for Chapter I national/regional phase entry). • The elected Office (eO) – The national or regional patent office of a state effectively re- designated upon entry into the Chapter II phase.

Basic procedure

• The basic PCT procedure is outlined in the timelines of Part 4.

Representation

• Since different entities are responsible for different stages of the PCT process, different agents may be used before each entity (R90.1 PCT). Typically, however, GB and EP qualifications cover the relevant rO, ISA, and IPEA (UKIPO and EPO) for UK originating inventions. An agent is appointed by (each) applicant signing the request or the demand and a power of attorney (R90.4 PCT). Such a power can be specific to a case or general (R90.5 PCT). Some authorities waive the need for such powers, but not if the agent intends to withdraw an application (R90.4(e) PCT). • For joint applicants, one of the applicants who is entitled to file a PCT application can be nominated by the others as their common representative (to be entitled, one must be a resident or national of a PCT contracting state). If there is no explicit nomination, then the first listed applicant so entitled is treated as such (R90.2 PCT). The common representative can act for the applicants in all respects except that they cannot withdraw an application on

behalf of the all the applicants; rather, the signature of all the applicants is required (R90.3 PCT and R90bis5 PCT).

Prosecution

• See the PCT application timeline at section 4.3 of this book for details of prosecution. • Note that replying to the international search report is optional. Similarly, demanding an international preliminary examination report (a ‘Chapter II demand’) is also optional.

Entry into national phase

There are two standard points of entry into national phase: i) Chapter I National Phase (A22 PCT) – Occurs where no demand for examination is filed. Can wait until 30 months (US, JP) or 31 months (EP, UK) from priority, or can request to enter national phase early (A23(2) PCT). ii) Chapter II National Phase (A39 PCT) – If a Demand (A31 PCT) is filed within the later of 22 months of priority or three months from transmission of the ISR (R54bis.1 PCT), the application enters ‘Chapter II’ (substantive examination). Again, can wait 30 months (US, JP) or 31 months (EP, UK) from priority to enter the national phase, or can request to enter national phase early (A40(2) PCT). However, in this case if you enter the national phase early you might waste your exam fee, depending on when the examination starts.

Selection of acts required upon or soon after entry into national phases

i. Provide a copy of the international application (usually done by IB), including amendments made during international phase. ii. Provide any necessary translation of the international application (and any amendments made during PCT prosecution), and in UK pay £12 to publish translation, typically within two months of entry. iii. Pay a filing fee (in the UK use Form NP1 and pay £30). iv. Pay designation fees if applicable (e.g. for EP regional phase). v. Pay supplementary search fee if required. vi. Pay exam fee (due on entry or possibly if early by six months from publication of ISR for

EP, or from publication of application for UK). vii. In the US, file an inventor declaration and if relevant an assignment to the proprietor; the

USPTO will invite you to file missing parts if this is not done on entry to the US. viii.Appoint representative, and provide an address for service. ix. Amend upon entry into national phase if desired. x. For EP, can opt to pay renewal fee for third year (only) up to six months early and hence at national phase entry -R51(1).

• See R159(1) EPC and s89A/B UKPA for corresponding national provisions. • Rule R161 EPC requires that if the EPO was the ISA or IPEA, then after entry into the EP phase the applicant must respond within six months of notification to an invitation under

R161 to correct any deficiencies in the later of the ISA or IPER written opinion, or else the application is deemed withdrawn. The purpose of the rule is to avoid a repetition of the ISA / IPER objections in the first EPO examination report, and so streamline prosecution.

Early national phase entry

• As noted above, early entry for any particular designated/elected state/region can be requested at any point. • The most common reason is to secure rapid grant in order to bring infringement proceedings in one or more states. • Note that the national or regional patent office won’t begin to actually process the application early unless an explicit request is made under A23(2) PCT (for Chapter I cases) or A40(2)

PCT (for Chapter II cases).

Late national phase entry

A common situation in FD1 is that someone forgot or was unable to enter the national phase, or wishes to delay it for financial reasons. Options to achieve this include:

i) During international phase (<30 months from priority) – As a last resort, abandon the earliest priority claim. All PCT dates are shifted back to the new priority date (R26bis.1(c) PCT). This can buy up to a year, but carries the severe risk of intervening publications having occurred during the lost priority period. ii) In national phase (>30 or 31 months) – For US and EP: the PCT allows for re-establishment of rights within two months of the removal of the cause of a non-compliance but no later than 12 months from the deadline for completing the act (30/31 +12 months from priority), if you can prove the deadline was missed unintentionally (R49.6 PCT) – for the EP see also A122 (reestablishment). – GB and JP have registered an incompatibility with this right. – For US: The application is treated as a lapsed national filing, so one can file a petition to revive (with fee) if can show it was unavoidable or unintentional to miss the deadline, and can file a continuation (35 USC 371, 37 CFR 1.137). – For EP: Can use further processing (with fee) within two months of communication of loss of rights (A121 EPC). In light of R49.6 PCT mentioned above, this appears applicable to a failure in any aspect of regional phase entry. – For GB: Can delay national phase entry as of right by two months using R108(2) UKPA, and further with the comptroller’s discretion under R108(3). In addition, reinstatement is possible if it can be proved that failure was unintentional.

Late PCT filing

• In order to validly claim priority of an earlier application, a PCT application must always be filed within the priority period (i.e., 12 months from priority date). • However, if the application is filed within two months of that period (i.e., 14 months from priority), the priority claim will not be considered void for the purposes of the international phase only, whether or not any steps are taken to restore the priority right. • Any request to restore the priority right must be made within that same two months following the priority period, and requires a fee and evidence that the delay was either in spite of due care, or unintentional – depending on which receiving Office you file at. The

EPO requires due care; the UKIPO accepts the lower bar of unintentional (c.f. s5(2C) UKPA for the analogous domestic provision). Meanwhile a deliberate delay beyond 12 months is unlikely to be salvageable. – Note, however, that most designated states will then apply national criteria before recognising the restoration of the priority right. Hence for example if the UKIPO as rO accepts an ‘unintentional’ delay, this may be similarly accepted in the US national phase; but the priority right is likely to be lost in the corresponding EP and JP national phases as these require the higher standard of all due care. • For the PCT(UK) national phase, a late declaration as per s5(2B) can also be made within one month of the beginning of the national phase (R66(3)).

Correction of errors

• Rule 91 PCT allows for the correction of obvious mistakes, providing that the request for correction is sent to the relevant competent authority. Mistakes in the original application request should be sent to the rO. Mistakes in the description, claims or drawings during

Chapter I should be sent to the ISA, or during Chapter II to the IPEA – R91(1)(b) PCT. • The mistake should be clear and should leave no doubt what the proper correction should be (R91.1(c)). Consequently, the omission of whole sections of the application (pages, figures, claims, etc) are not correctable in this manner (R91.1(g)). Rule 91 also can’t be used to rectify mistakes in the abstract or to the priority date (priority corrections use R26bis.2). • The correction should be requested within 26 months from priority (R91.2 PCT).

Review & Excuse Procedure

• The international phase can be terminated if the international application is refused or considered withdrawn, in which case national phase entry under A22 or A39 PCT no longer applies. • However, the PCT gives designated / elective offices discretion to allow a corresponding national application. • Where the applicant believes the PCT terminated the application in error, they can enter the national phase within two months of notification (note no ten-day rule!) under A25(1)&(2)

PCT, and the designated offices will each determine whether they agree with the PCT’s termination. • Where the cause was the applicant’s error, in particular failing a time limit, then under

A24(2) and A48(2) PCT the designated office will apply any safeguards available under their own national law to excuse the error and allow a national application. • The corresponding national provisions are R159(2) EPC and s89 UKPA.

Withdrawal

• You can withdraw the application, priority claim(s) or designations by writing to the rO, IB or if applicable the IPEA, and can withdraw the demand and any elections by writing to the

IB or IPEA, during the 30-month international period (R90bis PCT). • If the application or a designation are withdrawn before publication preparations are complete, then they won’t be published (R90bis.1(c) & .2(e) PCT). – Note that withdrawal of a PCT application, priority or designation requires the signature of all applicants, not just that of a common representative (R90bis.5 PCT). For the US, where the inventor (e.g. an employee) is often an applicant but may later be untraceable, proof of a diligent attempt to locate them can be provided in lieu of a signature. – Also note that withdrawal of a PCT application does not affect any national/regional application having already arisen from an effective request for early national phase entry (R90bis.6(a)); these must be dealt with separately. • If a priority claim is withdrawn, then all dates are recomputed with respect to the new effective priority date (R90bis.3(d) PCT), except for publication if the priority claim is withdrawn after preparations to publish are complete (R90bis.3(e) PCT).