PA 05/2016: Note about this month’s Practical Advice author and invitation to contribute to future articles

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.

This month, the Practical Advice column was kindly authored by an experienced, US-based patent attorney with many years of PCT experience, to whom we are very grateful.  Other experienced PCT practitioners are welcome to contribute proposed Practical Advice articles as it could be very useful for readers to see things from the user’s perspective.  Please send any proposals to the PCT Legal Division of WIPO at: pct.legal@wipo.int

The importance of monitoring deadlines and events in respect of an international application during the international phase, and suggestions for which events to monitor

Q:  I am new to the PCT system and I have been asked to monitor deadlines and the receipt of certain forms during the international phase in respect of a number of PCT applications. Can you give me some guidance as to what I should monitor?

A:  There are many deadlines and events to be aware of during the international phase of the PCT, and it is for this reason that it is very useful to have an efficient monitoring system set up in order to avoid missing any of those deadlines, especially for firms with very large patent portfolios. Such a monitoring system, usually referred to as a “docketing system”, often takes the form of software specifically designed to monitor deadlines, and alert the applicant (or his or her agent) of such deadlines.  The extent to which an applicant wishes to docket events is a matter of preference.  Below are some suggestions as to which events it may be useful to docket during the international phase.

First, before filing an international application, if an earlier application was filed the priority of which is to be claimed in a later-filed PCT application, you should docket a date quite some time prior to 12 months from the date of filing of that earlier application, in order to ensure that the PCT application is filed within that 12‑month priority period.

Once the PCT application has been filed, you may wish to check for the subsequent arrival of the following forms:

  • Form PCT/RO/105, which records the international filing date and the international application number, and is sent promptly after the according of that date and number.
  • Form PCT/RO/102, which confirms that the fees have been paid, or notifies the applicant that either the fees paid were incorrect or were not paid at all, whatever the case may be; if the transmittal fee (if any), search fee and/or international filing fee have still not been paid by the expiration of the time limit indicated in that form, you will receive Form PCT/RO/133 and will need to monitor the new time limit of one month from the date of mailing of the latter form, and ensure that the fees are paid within that new time limit to avoid the international application being considered withdrawn.
  • Form PCT/IB/301, which confirms that the International Bureau (IB) has received the Record Copy from the receiving Office.
  • Form PCT/IB/304, which notifies you of the date of receipt by the IB of the certified copy of an earlier application, the priority of which is claimed.
  • Form PCT/ISA/202, which notifies you of the date of receipt by the International Searching Authority (ISA) of the Search Copy. This date is useful as it allows you to calculate the expected date for the establishment of the international search report (ISR) and Written Opinion of the ISA (the time limit is either three months from the receipt of the search copy by the ISA, or nine months from the priority date, whichever time limit expires later (PCT Rule 42.1)).  You may then wish to docket the “estimated establishment date”.

As for each of these documents, upon its arrival, you may wish to check whether the information listed on the forms matches your own information, where you have such information, for example as to the international filing date that has been accorded.  For the purposes of any follow-up, note that the form number indicates the Office which prepares the form.  For example, Forms PCT/RO/105 and PCT/RO/102 are prepared by the receiving Office, Form PCT/IB/301 is prepared by the IB, and Form PCT/ISA/202 is prepared by the ISA.  With regard to possible time periods for docketing of those forms:

  • Forms PCT/RO/105 and PCT/RO/102: depending upon processing time at the receiving Office involved, the applicant might wish to docket one or two weeks after the filing date to check for their arrival; and
  • Forms PCT/IB/301 and PCT/ISA/202: the applicant might wish to docket to check for their arrival one or two weeks after arrival of the Forms PCT/RO/105 and PCT/RO/102.

You may also wish to docket the following deadlines:

  • 16 months from the priority date: for the filing of amendments to the claims under PCT Article 19.  Once the ISR has been received, you should add two months to the date of transmittal indicated on the report, check whether this falls later than the 16‑month time limit, and change the docketed date where applicable.
  • 18 months from the priority date: for the scheduled date for international publication of the international application, which should take place promptly thereafter, provided that early publication has not been requested (PCT Article 21(2)).
  • 22 months from the priority date: for the filing of a demand for international preliminary examination.  You should bear in mind, however, that the applicable time limit may be later where the expiration of three months from the date of transmittal of the ISR (and the written opinion of the ISA) falls later than that 22‑month time limit.  Once the ISR has been received, you should add three months to the date of transmittal, check whether this falls later than the 22‑month time limit, and change the docketed date where applicable. 
  • 30 months from the priority date: for entry into the national (or regional) phase (in respect of most designated (or elected) Offices).  You should be aware of the time limit applicable in respect of each Office before which you wish to enter the national phase, and ensure that all the necessary requirements for entry into the national phase are met within that time limit.  The 30‑month time limit also marks the end of the time limit for requesting changes under PCT Rule 92bis– any such requests will not be recorded if received by the IB after this time limit.

It is, of course, very advantageous to make use of the ePCT system to assist in managing the PCT application during the international phase.  Thus, after Form PCT/IB/301 arrives, you may wish to check to make sure that you have access to the PCT application in the ePCT system.

It is recalled that ePCT has a very useful “Timeline” function which calculates the above‑mentioned dates (and others) automatically.  For example after the IB has processed the ISR, the “Timeline” function will show the (possibly recalculated) due date for the filing of Article 19 amendments and for the filing of the demand and Article 34 amendments.  Moreover, you can set up automated e‑mail notifications to remind you in advance about time limits that are about to expire, or important events that are imminent in your international applications, for example, “The time limit for submitting Article 19 amendments expires in 2 weeks” or “Technical preparations for publication are scheduled to close in 2 weeks.”  This is, of course, yet another reason why it is desirable to make use of the ePCT system.  For further information on the ePCT Timeline, and examples of other deadlines that you can also docket, see the ePCT User Guide at:

http://www.wipo.int/pct/en/epct/pdf/pct_wipo_accounts_user_guide.pdf

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