PCT AG-NP 4.027 Must a copy of the international application be furnished by the applicant to the designated Office for entry into the national phase?

Article 22(1)
39(1)(a)
Rule 47.1(a)
49.1(a-bis)
and (a-ter)
76.5
93bis.1

4.027.   Must a copy of the international application be furnished by the applicant to the designated Office for entry into the national phase?  Under normal circumstances, none of the designated Offices requires a copy of the international application to be submitted by the applicant.   There are only a few that do require a copy where the communication by the International Bureau of a copy of the international application under Article 20 has not, or could not yet have, taken place (for details, see the National Chapters (Summary)).   That communication is effected by the International Bureau in accordance with Rule 93bis.1 but not prior to the international publication of the international application.  The applicant is notified accordingly by means of Form PCT/IB/308 (First notice informing the applicant of the communication of the international application (to designated Offices which do not apply the 30 month time limit under Article 22(1)), and Form PCT/IB/308 (Second and supplementary notice informing the applicant of the communication of the international application (to designated Offices which apply the 30 month time limit under Article 22(1)).  When the applicant receives these Forms, he does not have to furnish a copy of the international application to any of the designated Offices, since the notices are accepted by all of them as conclusive evidence that the communication has duly taken place on the date specified in the notice.

Article 13(2)(b)
22(1)
23(2)
39(1)(a)
40(2)
Rule 47.4

4.028.   On the other hand, where the applicant makes an express request for early processing of the international application (see paragraphs 2.006 and 3.004) before the communication of the international application has taken place, he must either furnish a copy of the international application, and of any amendment filed under Article 19 with the International Bureau, at the same time as he makes the express request for early processing to the designated Office or request the International Bureau to transmit a copy of his international application to the designated Office in accordance with Article 13(2)(b).  The other acts prescribed for entering the national phase must naturally also be complied with.

Rule 49bis.1
76.5

4.029.   The filing of a request constitutes an indication that the international application is, in respect of each designated Office to which Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State.  As a result, if the applicant wishes the international application to be treated in a designated Office as an application not for the grant of a patent but for the grant of another kind of protection available for the designated Office, or for the grant of more than one kind of protection, the applicant is required to indicate his choice of protection to the designated Office when performing the acts to enter the national phase.  Similarly and within the same time limits, the applicant is required to make such indications also in cases where he wishes the international application to be treated in a designated Office as an application for a patent of addition, a certificate of addition, inventor's certificate of addition, a utility certificate of addition or as a continuation or a continuation-in-part.  Although some designated Offices may require the applicant to furnish any such indications at the time the acts referred to in Article 22 or Article 39 are performed, many designated Offices would allow the applicant to furnish such indications or, where applicable, convert from one kind of protection to another, at a later time as provided by national law. 

Source: http://www.wipo.int/pct/en/appguide/text.jsp?page=np04.html

Date retrieved: 24 November 2017

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