PA 02/2017: Delays in meeting the time limit for entering the national phase – consequences and possible remedial action

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q:  I would like to proceed with my international application in the national phase before a number of Offices, but unfortunately, due to events which were beyond my control, I missed the 30‑month time limit for doing this.  Will I still be able to enter the national phase before the Offices concerned, and if so, what do I need to do?

A:  According to PCT Article 22 (or 39(1) if you have filed a demand for international preliminary examination before the expiration of 19 months from the priority date), the applicant must perform the following acts before each designated (or elected) Office not later than at the expiration of 30 months from the priority date1

– furnish a translation (where the language in which the international application was filed or published is not accepted by the Office concerned);

– pay any national fee that may be required by the Office (which is the case in most Offices);

– furnish a copy of the international application to each Office concerned (unless the International Bureau (IB) has already provided a copy of the international application under PCT Article 20); and,

– in some cases, furnish the name and address of the inventor if this information was not given in the request when the international application was filed (although some Offices will invite the applicant to furnish this information if the applicant fails to do so upon entering the national phase).

If, upon expiration of the applicable time limit for entering the national phase, the required acts have not been performed, the international application will lose the effect of a national application and the procedure will come to an end in respect of each Office before which they have not been performed (see PCT Article 24(1)(iii)).

You do not say by how much you have missed the time limit, however, and so it may be that you still have some extra time before some designated (or elected) Offices, as many Offices have, in accordance with PCT Article 22(3) (or 39(1)), fixed time limits which expire later than the 30‑month time limit.  At the time of writing, 57 of the 123 Offices before which applicants can enter the national (or regional) phase have informed the IB that they have fixed time limits later than 30 months in accordance with PCT Article 39(1)(b).  Additionally, seven Offices have notified the IB that they will extend the 30‑month time limit if the applicant pays an additional fee, and one Office has notified the IB that it will extend the time limit simply upon written request of the applicant.  Details of the time limits applicable before each designated (or elected) Office can be found in the table entitled “Time Limits for Entering National/Regional Phase under PCT Chapters I and II” at:

http://www.wipo.int/pct/en/texts/time_limits.html

or in the relevant National Chapter Summary of the PCT Applicant’s Guide at:

http://www.wipo.int/pct/en/appguide/

If you have missed the time limit under PCT Article 22(3) (or 39(1)) and any of the designated (or elected) Offices before which you wish to enter the national phase do not provide for an extended time limit, it may be possible for you to have your rights reinstated.  Contracting States are required under PCT Rule 49.6 (subject to certain exceptions that will be explained below) to provide for the possibility to reinstate the rights of the applicant with respect to an international application where the applicant failed to comply with the requirements of PCT Article 22 or 39(1), provided that you can show the Office that you missed the time limit to enter the national phase either unintentionally or in spite of due care required by the circumstances having been taken (depending on the criteria applied by the Office). 

In order for a request for reinstatement of rights to be considered, you must:

(1)     Submit to each designated Office individually your request for reinstatement of rights under PCT Rule 49.6, as well as ensuring that the necessary acts referred to in PCT Article 22 (translation, fees and copy of application) have been performed, within whichever of the following periods expires first:

– two months from the date of removal of the cause of the failure to meet the applicable time limit under PCT Article 22; or

– 12 months from the date of the expiration of the applicable time limit under PCT Article 22.

The national law applicable by some Offices may, however, permit you to submit the request at a later time (PCT Rule 49.6(b)).

The request must state the reasons for the failure to comply with the applicable time limit under PCT Article 22 (or 39(1)) (PCT Rule 49.6(c)).  The designated Office(s) concerned may also require that a declaration or other evidence be submitted in support of those reasons (PCT Rule 49.6(d)(ii)).

(2)     Pay any necessary fee in respect of the request for reinstatement of rights (PCT Rule 49.6(d)(i)).

Note, however, that the following States have notified the IB under PCT Rule 49.6(f) at the time of its adoption that the Rule was not compatible with their national laws:  Canada, China, Germany, India, Latvia, Mexico, New Zealand, the Philippines, Poland and the Republic of Korea – see the table of “Reservations and Incompatibilities” at:

http://www.wipo.int/pct/en/texts/reservations/res_incomp.html

Note that even if a State has made such a notification, reinstatement might still be possible under the applicable national law of the State concerned, and in some cases, this may be more permissive than under PCT Rule 49.6.  In such a case, the Office concerned will apply its own national law standards, and not PCT Rule 49.6.  You are therefore advised to check with the Offices concerned whether a system to reinstate rights with respect to an application exists or not.

Information as to any possibilities of reinstatement where the time limit for national phase entry was missed, as well as details of the applicable requirements of the various designated Offices can be found in the corresponding National Chapter of the PCT Applicant’s Guide, under the heading “Excuse of delays in meeting time limits”.  It is, nevertheless, recommended that you seek assistance from local patent attorneys who will be familiar with the various national laws and procedures applicable in such situations.

  1. The 30‑month time limit, as in force from 1 April 2002, does not apply in respect of the Offices of Luxembourg, Uganda, and the United Republic of Tanzania which have notified the International Bureau of the incompatibility of the time limit under PCT Article 22(1) with the national law applied by those Offices.  The 20‑month time limit as in force until 31 March 2002 continues to apply in respect of the Office of Luxembourg and the 21-month time limit continues to apply in respect of the Offices of Uganda and the United Republic of Tanzania.  However, if the applicant files a demand for international preliminary examination prior to the expiration of 19 months from the priority date, the time limit of 30 months applies (see PCT Article 39(1)).  Also, if those countries are designated for a regional patent, the time limit of 31 months applicable before the respective regional Office concerned (the European Patent Office and the African Regional Intellectual Property Organization) applies.

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