PCT Timelines

4.3 PCT Application Timeline

Date Action Extensions / Safeguards

0 months National Filing.

0-12 months Filing of the international application.. Send to rO or IB. If rO is not competent due to residency, nationality or language, then application is passed to IB. R2.4, R80.5: The priority year extends to the next open day. R26bis.3: Can file up to 14 months after priority with rO’s permission if can prove lateness despite due care / unintentional (depending on rO). NB – This gets reassessed in national phase, and not all states will allow it; search WIPO for res_incomp for list

Within 1 month of filing Pay at rO: International Filing Fee (IFF) (sent on to IB), Search fee (sent on to ISA), and Transmittal fee (kept by rO). – New filing procedures automatically designate all states. – ‘Designation fees’ built into

IFF.

File translation if not in an accepted language of ISA.

1-2 months Receive notification from rO of the international filing date and the application number (if filing requirements complied with) – Receive notification from IB of copy – check all correct.

Within 16 months File priority document (certified copy), receive confirmation of receipt from IB. International phase is calculated from priority date. If priority is abandoned, the international phase is recalculated accordingly. R16bis – if late pay within one month of invitation from rO to pay, + late fee of 50%. (If late but paid before invite, then considered received within time limit 16bis.1(d)). If also miss month, but pay before declared withdrawn, then again considered received within extension period (a general approach – 16bis.1(e)). Can file missing pages/figs with rO up to 30 days late – but filing date changes so may lose priority.

R26.2 – request extension to correct filing defects.

R17.1 – deemed received on last day of 16-month limit if received at IB before international publication. Can also file in national phase if mess up in PCT. NB. Have later of 16 months from earliest priority or four months from international filing to correct/add priority.

4.3 PCT Application Timeline (continued)

Date Action Extensions / Safeguards

Within 16 months (or nine months if PCT direct filing) Receive ISR with First Written Opinion, with invited time limit for amending claims (typically two months). If lack of unity found, invited to pay further search fees. Can do so optionally under protest (w/protest fee).

16-18 months Evaluate ISR and either; withdraw (R90bis), amend claims (A19, to IB), or do nothing – later of two months from ISR or 16 months from priority.

18 months Publication of international application, communication to designated offices. Last chance to withdraw without publication is 15 days earlier. Can request early publication.

21 months Receive Written Opinion from IPEA, with invited time limit for amendments (typically two months).

Later of 22 months from priority or 3 months from transmittal of ISR written opinion File Chapter II Demand with IPEA for IPER if wanted. Demand requires ‘electing states’ i.e. redesignation. Can amend claims, description and drawings with demand. Cannot add matter. Signed by all applicants, common representative, or agent if has power of attorney from all applicants.

23 months For demand: Pay preliminary examination fee and handling fee within a month of filing demand. Plus, any additional examination fee and any protest fee. From date of invite to pay fee: Up to 1 month for additional search fee, and one month for protest fee.

Can delay publication by withdrawing earliest priority application before preparations to publish are complete – but risks validity problems due to intervening publications.

Late election of additional states (at IB) can be any time prior to issue of IPER for remaining states. Note that Luxemburg/Tanzania require a Ch. II demand by 19 months and have Ch I national phase entry deadlines of 20/21 months, but can be obtained more conventionally through regional applications (EPO / ARIPO).

R58bis – within one month of invitation by IPEA to pay + with surcharge, for preliminary exam and handling fees. R60 – have one month from invitation to correct defects in the demand.

4.3 PCT Application Timeline (continued)

Date Action Extensions / Safeguards

21-23 months Evaluate WO and either withdraw, amend if desired, or do nothing. Typically have two (max three) months to respond R66.2(d). Can be extended on discretion R66.2(e). Again, any response received late but before Examiner takes the next step will be accepted.

28 months Receive non-binding IPER(IPRP). Decision to enter elected states.

30 months International phase ends If applicable, can withdraw earliest priority at any point and re-calculate date (R90bis.3). NB very risky in terms of prior art and intervening publication.

30 months National phase begins in US, JP, CN, CA.

31 months National phase begins in EP, GB – GB: @31 months File NP1, pay £30 national fee, and any translation + £12 if needed. @33 months, File search, exam requests and fees and PF7. All the above extendable under R108(2) & (3) – s20A reinstatement preferable to R108(3) if miss R108(2) option. EP: @31 months pay national fee and translation if needed (two months further processing and re- establishment possible via R49(6) PCT); pay designation fee, search and exam fees (two months further processing possible); pay third year renewal fee if needed; can pay up to 6m early at entry – R51(1) (plus six month grace if late, and re-establishment possible); once R161(1) or (2) communication is received, file response as appropriate. Late entry to national phase: US: Petition to revive, then file continuation. EP: Further processing within two months of loss of rights. US and EP: R49(6) PCT allows reinstatement of rights within earlier of two months of removal of cause of non compliance or 12 months of loss. GB: R108(2) extension of two months. CN: Up to two months delay to entry on payment of surcharge. CA: Up to one year delay to entry on payment of surcharge; if international filing date was after 30/10/19, must also state failure was unintentional.