Flashcards in PCT Deck (27)
What Juristictions enter the national phase at 30M
What Jurisdictions enter the national phase at 31M
When is the deadline for requesting CHII examination? under ART31
22m from priority or 3m from issue of the ISR
Applicant requirements for PCT entry?
At least one applicant must be a resident or national of a PCT contracting state.
If Joint applicants are listed who will represent the applicants?
A common representative will represent the applicants. This will be either a nominated applicant or the first applicant listed who fulfils the PCT applicant requirements. i.e. is a resident or national of a PCT contracting state.
National phase entry requirements?
Provide a copy of the international application (automatic by IB)
provide any translations - UK pay £12 to publish translation - deadline 2m from entry
Pay Filing fee and form NP1 - deadline 1m from entry
Pay supplementary search fee if applicable
Pay exam fee on later of filling or 6M from publication of ISR
What are the renewal fee options when entering the EP national phase?
It is possible to pay the 3rd year renewal fee 6m early thus can be paid on 30m national phase entry.
What extra requirement is there on US national phase entry?
And what will occur if this is not met?
The USPTO require filing of a designation of inventor form and will issue an invitation to file missing parts if not filed on entry.
What communication will be recieved on EP entry if the ISA was the EPO?
A R161 communication will be issued inviting the applicant to respond to the ISR or the IPER if issued within six months of the communication. Therefore avoiding repetition of the objections raised in said reports.
What is required for an application to enter the national phase in any jurisdiction?
A national office will not begin to process a national phase aplicaiton unless a request is filed under A23(2) or A40(2)
What situation would require early national phase entry and what is required to do so?
If an applicant wishes to pursue early grant in a jurisdiction to assert a monopoly right then early national phase entry is sensible.
This must be explicitly requested under Article 23(2) after the ISR and Article 40(2) if CHii has been requested.
What possible actions are available for late national phase entry?
During PCT phase i.e. before 30m the earliest priority claim can be abandoned. Beware interim disclosure.
After 30m - in national phase:
PCT provisions (EP & US applicable NOT GB JP):
re-establishment of rights possible within 2m of the removal of cause of non-compliance upto 12m from failure to complete an act. i.e. 30/31m+12m if missed deadline can be proved to be unintentional. Also under Art 122 EPC
- as of right retrospective 2m extension to national phase entry is available under R108(2) and further extensions under R108(3) at the comptrollers extension.
- if extensions missed reinstatement under S20A may be possible if failure to enter national phase can be shown to be unintentional.
- treated as a national filing thus can apply to revive if unavoidable or unintentional
-Can use further processing A121 EPC inc fee within 2m of communication of loss of rights
-A122 re-establishment can be used within 12m of the missed deadline, Missed deadline must be inspite of due care and re-establishment must occur within 2m of the removal of the cause of the missed deadline.
When must Priority be claimed when filing a PCT application?
Within 12m of filing of the previous application
What are the requirements of claiming priority if PCT filed late after 12m ?
This depends on the RO and will be reassessed on entry to the national phase.
IF filing in GB
Priority must be declared upto 14m from the filing of the original application and the delay must have been unintentional, declaration of prioirty must be at the same time as making the request for claiming late priority - note EP and JP require due care so unintentional will be insufficient.
IF Filing EP
Priority must be declared upto 14m from the filing of the original application and the delay must have been despite due care
If priority is not declared/claimed on filing of PCT can this be claimed later?
On filing a GB national phase an application for late filing of declaration of priority S5(2B) can be made within one month of entering the GB national phase R66(3)
What fees are due on filling of PCT
filing fee, search fee and transmittal fee - payable within one month
What occurs if any fees are not paid by the deadline on PCT filing?
If the filing fee, search fee or transmittal fee have not been paid by the one month deadline IB will issue an invitation to pay+50% late fee with a deadline of 1 month
-possible to pay late but before issue of invitation to pay and be considered paid.
-also if miss 1 month extended period and pay before declared withdrawn then considered paid in time.
What are the translation requirements of the IB
The IB have none. However the language must be accepted by the ISA. thus if EP must be french German or English. Deadline for filing one month
If the IB requests defects in the application be recitied what time period will they set
They will give two months from issue of hte communication.
What is the deadline for filing priority documents with the IB
the later of 16 months from priority or 4 months from international phase entry
Note deemed received within 16 months if received before international publication.
What is the time limit for amending claims in response to the ISR?
normally 2 months from receipt of the ISR for Article 19 amendments
When is the last point that an application can be withdrawn to avoid publicatoin?
15 days before publication
Can 3rd party observations be filed during the international phase?
YES from publication until 28 months by ePCT
What is the deadline for filing CHII examination demand?
22m or 3m from transmittal of the full ISR if it is delayed for example by extra searches due to non unity
Examination fee and handling fee must be paid within 1 month of filing
-if not paid in one month pay within on month of invitation to pay from IB
-Also 1m deadline to correct defects if any are present.
for multiple inventions may require additional examineation fee that may be paid under protest with protest fee.
What countries have a deadline of 30m for entering the national phase?
US, JP, CN, CA
What countries have a deadline of 31m for entering the national phase?