PCT

Question 1

How is a PCT application treated under the UKPA?

Answer 1

A PCT application is treated as a GB application, unless the application or GB designation is withdrawn or deemed so in the PCT stage.

Question 2

Under what exceptional circumstances can a withdrawn/refused PCT still be treated as a GB application?

Answer 2

If withdrawal of the application or the GB designation was due to an error by a PCT body
Failure of the receiving office to forward the application to the IB in time
Where a corresponding deadline could have been extended under equivalent UK Rules (R107/108)
NB make request at IB and UKIPO (and pay applicaiton fee + translation) within 2 months of notification of withdrawal.

Further there is always the option for reinstatment (unintentional criteria)

S89(3)

Question 3

Again - Under what exceptional circumstances can a withdrawn/refused PCT still be treated as a GB application?

Answer 3

Where a corresponding deadline could have been extended under equivalent UK Rules (R107/108)
NB make request at IB and UKIPO (and pay application fee + translation) within 2 months of notification of withdrawal.

Further there is always the option for reinstatement (unintentional criteria)

S89(3)

Question 4

When does the international phase end?

Answer 4

Strictly speaking, the international phase ends at 30 months from priority.

30 month deadlines for US and JP

31 month deadlines for UK and EP

Question 5

Can the 31-month deadline be extended?

Answer 5

Yes, under R108(2) the 31-month deadline of R66(1) can be extended by 2 months as of right. File FORM + FEE.

Using R108(3) you can obtain a further discretionary extension (limited to an additional 2 months - R108(5)). File FORM + FEE (if request granted).

NB the discretionary extension can be requested after the normal deadline to extend has passed (e.g. the R108(2) deadline), but no later than 2 months after expiry of the extended period - in most cases if you miss the R108(2) deadline you won’t get a discretionary extension.

Question 6

How long does an applicant have to file an English translated amendment upon entry to the national phase?

Answer 6

The amendment should be filed upon entry into the national phase (e.g. an Article 19 amendment) along with an English translation;

provided that the application itself was translated and filed by the 31-month deadline then an applicant has three months from notification by the Comptroller to file a translation of the amendment

otherwise the amendment is disregarded.

Question 7

National PCT - 54(3) eligibility

Answer 7

A euro-pct application does not need to fulfil all conditions for entry to EP phase to be considered conflicting under art 54(3). App only needs to have paid filing fee under r159(1)(c) and filed a translation to an official epo language.

Question 8

How and why might you request early national/regional phase entry?

Answer 8

Typically done to secure rapid grant to bring infringement proceedings.

Early entry can be requested at any time. The request must be made, otherwise the national/regional offices will not begin to process the application.

For UK, just pay the national entry fee and file form (and provide a translation if necessary).

For the EPO, request in writing or file Form 1200 and tick the relevant box. Must also comply with the normal requirements as if filed at 31 months - search request and fee, application fee, filing fee, excess page fees and translation (and possibly also exam request and fee, designation fees and renewal fees but these might not be due).

Question 9

Scenario:

Accidentally missed EP regional phase entry

Answer 9

PCT allows for re-establishment of rights within 2 months of removal of the cause of non-compliance and no later than 12 months, if the deadline was missed **unintentionally ** (File EP entry and request re-establishment of rights)

You can also rely on the further processing procedure at the EPO within 2 months of the communication of loss of rights.

Question 10

Scenario:

Accidentally missed GB national phase entry

Answer 10

Cannot use PCT re-establishment in this case (GB and JP have resgistered incompatibilities)

However, you can extend the national phase entry deadline retrospectively by up to 2 months, as of right using R108(2) and further with discretion using R108(3)

Beyond this, reinstatement at the UK would possible if the failure was unintentional.

Question 11

Scenario:

Missed US national phase entry deadline

Answer 11

PCT allows for re-establishment of rights within 2 months of removal of the cause of non-compliance and no later than 12 months, if the deadline was missed unintentionally.

Otherwise, as the application is treated as a lapsed national filing in the US, you can file a petition to revive (with fee) if you can show that failure was unavoidable or unintentional, and can file a continuation.

Question 12

How are late declarations of priority/late filing dealt with for PCT applications?

Answer 12

If PCT application filed within 14 months with a priority claim the priority claim will not be considered void in the international phase (although will need to be substantiated at the regional receiving office at filing)
Pay fee and provide evidence that the delay was unintentional (UKIPO) or in spite of all due care (EPO) - RO will apply its own criteria
However, at n/r entry each office will apply its own criteria - so may get by in UK but lose priority in Europe/JP.
For a PCT(UK) national phase, a late declaration can also be made within one month of beginning the national phase.

Question 13

Which countries can’t be entered into from a PCT application?

Answer 13

(Among others?)

Cannot enter Taiwan or Argentina.

Also cannot enter France directly, but must go via EP(FR)