PA 10/2011: Entering the national phase early where the international application has not yet been published

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: My company is relatively new, and we are interested in getting our latest products onto the global market as soon as possible, as well as encouraging investment by demonstrating a growing international patent portfolio. We have filed a number of international applications for which the international search report (ISR) and written opinion have been issued, but which have not yet been published. May we request early entry into the national phase in respect of those applications, or do we have to wait until they have been published?

A: According to PCT Articles 23(1) and 40(1), designated/elected Offices may not start national processing before the time limits indicated under PCT Articles 22(1) and 39(1) (in most cases, this is at least 30 months from the priority date, but for details of exceptions, see the table of time limits at: http://www.wipo.int/pct/en/texts/time_limits.html).

However, PCT Articles 23(2) and 40(2) provide that any designated/elected Office may, at the express request of the applicant, process or examine the international application at any time. You are, therefore, entitled to enter the national phase earlier than at the expiration of the above-mentioned time limits; there is no requirement that an international application be published in order to enter the national phase.

Since your international applications have not yet been published, the designated Office will usually require copies of the international applications concerned. In some cases, however, this will not be necessary for Offices which have notified the International Bureau (IB), under PCT Article 13, that they do not wish to receive copies of the international application (see the relevant National Chapter Summary of the PCT Applicant’s Guide (http://www.wipo.int/pct/en/appguide/index.jsp) for this information). In all other cases, when you make an express request to a designated Office under PCT Article 23(2) prior to international publication of the international application, your request will be considered only if you have furnished a copy of the international application. For this, you may request the IB to transmit a copy of the international application to the designated Office(s) concerned in accordance with PCT Rule 47.4.

The other acts prescribed for entering the national phase under PCT Article 22 (furnishing of a translation, where necessary, and payment of the national fee, if any, for each international application in respect of which you are requesting early entry into the national phase) must naturally also be complied with before your request for early entry into the national phase will be considered. Also, where the name and address of the inventor(s) were not included in the request form, the national law of the designated State may require that you furnish these indications upon entry into the national phase (for details, see the relevant Annex B of the PCT Applicant’s Guide). Note that it is not sufficient to simply fulfill all the requirements for entry into the national phase – you must also specifically request immediate processing, otherwise the designated Office may wait until the usual time limit of 30 months from the priority date, or longer, before it starts processing the application.

Note also that normally, the IB transmits the written opinion of the ISA to the designated Office (in the form of the “international preliminary report on patentability by the International Searching Authority” (IPRP Chapter I)) only after the expiration of 30 months from the priority date (see PCT Rule 44bis.2(a)). However, if you request early national processing under PCT Article 23(2), the IB will transmit a copy of the written opinion of the ISA promptly to the designated Office if requested to do so by either you or the designated Office (see PCT Rule 44bis.2(b)). (Please refer to PCT Rule 44bis.3 in the case where translations of the written opinion into English are required by the designated Office.)

Please note that, although the PCT provides for the making of express requests for early entry into the national phase, it is up to the designated Office concerned to decide when it will actually begin processing such an application. In fact, certain Offices may not process the application before international publication has taken place. Also note that if such a request is made only in respect of certain designated Offices, the international phase for that international application will continue in respect of all the other designated States.

Once you have entered the national phase, you may also be able to request accelerated processing under the PCT-Patent Prosecution Highway (PCT-PPH) program before some of the designated Offices, provided that you have, in respect of the international application concerned, written opinions of either the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), or an international preliminary report on patentability (Chapter II of the PCT), which are positive at least in relation to some claims, and that the ISA/IPEA has entered into a PCT-PPH agreement with the designated Offices concerned. For further information on the PCT-PPH program, see the “Practical Advice” published in PCT Newsletter No. 02/2011 and the relevant page of the PCT website at:

http://www.wipo.int/pct/en/filing/pct_pph.html

For further information on PPH programs in general, see:

http://www.jpo.go.jp/ppph-portal/index.htm

If you are going to file more international applications in the future, or in case you have pending international applications for which the ISR and written opinion have not yet been established, you may be interested in consulting the “Practical Advice” in PCT Newsletter No. 05/2011 which gives information on actions that can be taken to maximize the chances of an international application being processed without delay during the international phase.


 

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