PA 10/2015: Useful PCT Resources which can be consulted when filing PCT applications

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 am a trainee patent administrator and will soon be expected to assist a patent attorney who files PCT applications. I would like to find out all I can about filing PCT applications and wondered whether you could you give me a list of resources that I can refer to?

A: First of all, we would like to stress that it is very important to have a thorough knowledge of the PCT before filing a PCT application. The information outlined below will not explain how to file a PCT application, since this cannot be answered briefly and is already explained in our various information resources on the PCT website, however, it will point you to the resources that will be useful for you to consult. Although regular PCT users will probably already be aware of many of these resources, it is hoped that this will also serve as a useful reminder for them. Most of the resources are continuously kept up-to-date and can be accessed via the PCT website at:

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

Initially, we recommend you to read the PCT FAQs (“Protecting your Inventions Abroad: Frequently Asked Questions About the Patent Cooperation Treaty (PCT)”) which give a brief outline of the PCT procedure from an applicant’s perspective. The FAQs are available at:

http://www.wipo.int/pct/en/faqs/faqs.html

The following information shows you which resources can be consulted when dealing with particular aspects of filing a PCT application. Other more general resources, both basic and advanced, are listed towards the end of this article.

Where to file a PCT application

An applicant can usually file a PCT application with his/her national patent Office or with a regional patent Office (where the applicant is a national or resident of a country (State) which is a member of, or party to, a regional patent organization or agreement). To find out where the application can be filed, you should consult Annex B (General Information) of the PCT Applicant’s Guide at:

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

You should select the cross under the column marked “General Information (Annex B)” corresponding to the State (or States) of which the applicant (or one of the applicants) is a national and/or resident or corresponding to any relevant regional Office (AP, EA, EP or OA), as the case may be; then refer to the question “Competent receiving Office for nationals and residents of […]:” Please note that applicants who are nationals and/or residents of any PCT Contracting State can file PCT applications with the International Bureau of WIPO as receiving Office (RO/IB) – for further information see “Direct filing of PCT applications with the International Bureau as PCT receiving Office (RO/IB)” at:

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

Please note that your options for Office of filing may be limited by national security-related restrictions, depending on the nationality or residence of the applicant(s) or the place in which the invention was made. For further information, see the web page entitled “International applications and national security considerations” at:

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

Filing PCT applications in electronic form

Many PCT receiving Offices accept the filing of international applications in electronic form, and by doing so, applicants can benefit from a reduction in the international filing fee. To find out which Offices accept electronic filings, and in what format, you can consult Annex C of the PCT Applicant’s Guide (http://www.wipo.int/pct/en/appguide/). You can also consult the list “E‑filing Offices” at:

http://www.wipo.int/pct-safe/en/e-filing/index.html

which gives details about accepted formats and accepted digital certificates for many of the Offices listed.

The RO/IB offers two forms of electronic filing:

– ePCT‑Filing (via ePCT private services (see below)) and

– PCT‑SAFE (see: http://www.wipo.int/pct-safe/en/download/download_client.html)

Applicants are especially encouraged to use ePCT‑Filing as this offers many useful features and safeguards, and is very much a learning tool, guiding the user through an application with its validation functionality.

Submitting post‑filing documents and accessing your application file electronically

WIPO’s ePCT private services (which require a WIPO user account and digital certificate) and ePCT public services (which only require a WIPO user account) allow the applicant to file a large number of post-filing documents in electronic form. ePCT private services also allows applicants to easily carry out various actions in relation to their applications and to view the electronic file of their applications as maintained by the IB. For further information, including information on how to obtain and upload a digital certificate, go to the ePCT portal where you can find various information resources relating to ePCT, as well as a link which will enable you to try out the ePCT system in DEMO mode, at:

https://pct.wipo.int/LoginForms/epct.jsp

Finding out which States are designated in a PCT application

The filing of the PCT request form (PCT/RO/101) constitutes the designation of all PCT Contracting States, which are bound by the PCT on the international filing date (PCT Rule 4.9(a)). The list of Contracting States which is included in the PCT Newsletter (“PCT Contracting States and Two-letter Codes”) at:

http://www.wipo.int/pct/en/list_states.pdf

sets out the PCT Contracting States in alphabetical order of their two-letter country code, and gives information on membership of regional patent agreements and on any State which has closed its national route (and for which only a regional patent may be obtained via the PCT).

A second list of States, which is included in the PCT Applicant’s Guide, is in alphabetical order of the name of the Contracting State and gives information on the date on which the State became bound by the PCT, any relevant territorial applicability and certain declarations. See:

http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf

Types of protection available in the national/regional Offices

Not only does the filing of Form PCT/RO/101 constitute the designation of all PCT Contracting States, but it also constitutes the designation of those States for the grant of every kind of protection available in the State concerned, and where applicable, for the grant of both regional and national patents. However, please note that some Offices have closed the national route and only offer protection via a regional patent, and that some Offices offer other types of protection either instead of, or in addition to, a national or regional patent. For details of the protection available in each PCT Contracting State, see the table “Types of Protection Available via the PCT in PCT Contracting States” at:

http://www.wipo.int/pct/en/texts/pdf/typesprotection.pdf

This information is also available in the relevant Annex B of the PCT Applicant’s Guide (“Types of protection available via the PCT”) at:

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

Information specifically on the States for which a regional patent may be obtained is contained in the table entitled “PCT Contracting States for which a Regional Patent can be Obtained” at:

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

How to find out which Office may act as International Searching Authority (ISA)/International Preliminary Examining Authority (IPEA)

There are currently 17 national patent Offices and two regional patent Offices which operate as ISA and IPEA. The Office (or Offices, as the case may be) which is competent to act as ISA and IPEA is indicated in the relevant part of Annex C of the PCT Applicant’s Guide (http://www.wipo.int/pct/en/appguide/)—select the cross under the column marked “Receiving Offices (Annex C)” in respect of the two-letter country code of the receiving Office with which the PCT application will be filed, and refer to the question “Competent International Searching Authority” and, if a demand for international preliminary examination is going to be filed, “Competent International Preliminary Examining Authority”. You may have the choice of more than one ISA or IPEA, but please bear in mind that some IPEAs will only act as IPEA if the international search has been carried out by a particular ISA (this information, where applicable, is given in a footnote). Note that, if you file using ePCT‑Filing, your choice of ISAs and IPEAs will appear automatically.

Which language(s) the international application can be filed in

You can consult Annex C of the PCT Applicant’s Guide (http://www.wipo.int/pct/en/appguide/) in respect of your Office of filing, bearing in mind that, if the language in which the international application is filed is not accepted by the ISA (see Annex D), the applicant will have to furnish a translation (PCT Rule 12.3). Also, if the language in which the international application is filed is not a language of publication1 and no translation is required for the purposes of international search (PCT Rule 12.3(a)), the applicant will have to furnish a translation of the application into one of the languages of publication (PCT Rule 12.4(a)).

How to find out what fees need to be paid in the international phase

Information on the fees payable upon filing an international application can be found in Annex C of the PCT Applicant’s Guide (http://www.wipo.int/pct/en/appguide/) in respect of your Office of filing. You will also need to consult Annex D, for the amount of the search fee payable to your chosen ISA, and if applicable, Annex E, for the amount of the preliminary examination fee and handling fee payable to your chosen IPEA. The main fees can also be found in one place in the “PCT Fee Tables” at:

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

You should be aware that PCT applicants and agents are receiving invitations to pay fees that do not come from the International Bureau of WIPO and are unrelated to the processing of international applications under the PCT. For further information, see “WARNING: Requests for Payment of Fees” at:

http://www.wipo.int/pct/en/warning/pct_warning.html

How to check whether an Office has made a reservation, declaration or notified the IB of the incompatibility of a particular PCT Article or Rule with its applicable national law

In order to check whether there are any PCT Articles or Rules that do not apply to a particular receiving Office or designated (or elected) Office, please consult the table “PCT Reservations, Declarations, Notifications and Incompatibilities” at:

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

How to find out the time limits for entry into the national phase

The default time limit for entry into the national phase is 30 months from the priority date (see PCT Articles 22(1) and 39(1)(a)), however, in some cases, the national or regional Office may have notified the IB that a longer time limit applies under PCT Article 22(3) and 39(1)(b). Furthermore, three Offices have filed a notification of incompatibility with their national law of PCT Article 22(1), and only apply the 20‑month time limit for PCT applications entering the national phase before them as a designated Office. The table entitled “Time Limits for Entering National/Regional Phase under PCT Chapters I and II” gives the time limits for all designated (or elected) Offices and is available at:

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

This information is also available in the National Chapter, Summary page of the relevant country in the PCT Applicant’s Guide (http://www.wipo.int/pct/en/appguide/index.jsp).

How to view published international applications

All published PCT applications and associated documents from the IB’s file can be viewed free of charge on WIPO’s PATENTSCOPE search system at:

https://patentscope.wipo.int/search/en/structuredSearch.jsf

In addition, where the information is available to the IB, the “National Phase” tab displays information on national phase entry of a particular PCT application, and in some cases, links to certain status information of that application.

How to find out about the requirements and fees for entry into the national phase

Where this information has been provided to the IB by the national Office concerned, a summary of the requirements for entry into the national phase before each designated (or elected) Office, followed by more details about the procedure before that Office, is available in the relevant National Chapter of the PCT Applicant’s Guide (http://www.wipo.int/pct/en/appguide/index.jsp). The fees payable upon entering the national phase are included in the “Summary”; other national fees can be found further on in the National Chapter.

Resources giving a good general overview of the PCT

Before reading any of the PCT information sources referred to below, it may be useful for you to be aware of the PCT Glossary, which is a useful tool for understanding the terminology used in the PCT. See:

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

For someone who has little knowledge of the PCT, it may be useful to start by consulting some of the less complex PCT resources, as follows:

Basic PCT distance learning course

If you would like to take part, free of charge, in WIPO’s online course, “Introduction to the Patent Cooperation Treaty”, which provides a general overview of the PCT, go to:

http://www.wipo.int/pct/en/distance_learning/index.html

PCT seminar materials

Useful PCT seminar materials, giving information on many aspects of filing PCT applications, are also available at

http://www.wipo.int/pct/en/seminar/basic_1/document.pdf

For those already familiar with the PCT System who have a specific question or would like to find out about updates to the PCT, the following more advanced resources can be consulted.

PCT Applicant’s Guide

For detailed information on the PCT procedure you can consult the PCT Applicant’s Guide – see “Introduction to the International Phase” and “Introduction to the National Phase” at:

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

This is the central resource for applicants, as it also contains comprehensive information on the requirements of PCT Offices and Authorities in the international and national phases.

Videos on the PCT

A series of 29 short videos entitled “Learn the PCT”, providing information on important aspects and issues in the international phase and national phase of PCT processing, explain in more detail many of the topics covered by the PCT seminar materials. The videos are available, free of charge, at:

http://www.wipo.int/pct/en/training/index.html

PCT webinars

Webinars on the PCT are regularly held for training purposes, and for keeping PCT users informed of recent updates to the system. There are also webinars specifically on WIPO’s electronic filing and file management systems (ePCT private and public services and ePCT‑Filing (see below)). For information on upcoming webinars, see the PCT Seminar Calendar at:

http://www.wipo.int/pct/en/seminar/seminar.pdf

To view archives of past webinars, go to:

http://www.wipo.int/pct/en/seminar/webinars/index.html

Important legal texts

The most important legal texts are the “Patent Cooperation TreatyandRegulations under the PCT”, as well as the “Administrative Instructions under the PCT” which provide details of the application of the Regulations. These are available at:

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

Other useful resources

For regular news and updates, see the PCT Newsletter (monthly publication) at:

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

and the Official Notices (PCT Gazette) (weekly publication) at:

http://www.wipo.int/pct/en/official_notices/officialnotices.pdf

The PCT Time Limit Calculator can assist you in computing essential PCT time limits:

http://www.wipo.int/pct/en/calculator/pct-calculator.html

For understanding the procedure before the various PCT authorities, see the “PCT Receiving Office Guidelines” and the “PCT International Search and Preliminary Examination Guidelines” at:

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

_____________

If there is any information that you need before you start working on your first PCT application and that you cannot find on our website, please contact the PCT Information Service at:

E-mail:                             pct.infoline@wipo.int

Tel:                                    (+41–22) 338 8338

Fax:                                   (+41–22) 338 8339

Other contact details for enquiries about filing PCT applications electronically, or filing PCT applications with the RO/IB are available on the PCT website under “Contacts” at:

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

and if you wish to contact the “authorized officer” for a specific PCT application that has already been filed, go to:

https://patentscope.wipo.int/search/en/teamlookup.jsf

___________________________

  1. The languages of publication (PCT Rule 48.3) are: Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish

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