PA 11/2013: Communication of copies of the international application to the designated (or elected) Offices

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 have received Form PCT/IB/308 (First Notice informing the applicant of the communication of the international application…) from the International Bureau. Why is that Form referred to as “First Notice” and what is the purpose of the form? Do I need to take any action?

A: In accordance with PCT Article 20(1)(a), the international application1 is communicated by the International Bureau (IB) to each designated Office which has requested to receive it. When the IB communicates the international application to those designated Offices, it informs the applicant about that fact via Form PCT/IB/308. The form lists the designated Offices to which the international application has been communicated, and the date on which that communication was effected. Two versions of the form are sent to applicants:

– the “First notice”, which is sent promptly after the expiration of 19 months from the priority date. This notifies the applicant that the international application has been communicated to the designated Offices that apply a 20-month time limit for national phase entry2 and have requested such a copy;

– the “Second and supplementary notice”, which is sent promptly after the expiration of 28 months from the priority date. This notifies the applicant that the international application has been communicated to all designated (or elected) Offices that apply the 30-month time limit under PCT Article 22(1) and have requested such a copy.

The purpose of Form PCT/IB/308 is to

– notify the applicant that the IB has communicated the application, on the date indicated on the notice, to the designated Offices listed in paragraph 2 of that Form (PCT Rule 47.1(c)(i)); this notice should be accepted by those designated Offices as conclusive evidence that the communication provided for in PCT Article 20 was effected on the date indicated, and that no copy of the international application is required to be furnished by the applicant to the designated Office(s);

– notify the applicant of the designated Offices, listed in paragraph 3 of the Form, which have not requested to receive a copy of the international application from the IB (PCT Rule 47.1(c)(ii)); this notice should be accepted by the designated Office(s) concerned as conclusive evidence that the Contracting State for which each Office acts as designated Office does not require the furnishing, under PCT Article 22, by the applicant of a copy of the international application.

Receipt of these forms means that you do not have to send a copy of the international application to any of the designated Offices. Although you do not have to take any particular action when you receive the forms, please bear in mind that it is your responsibility to monitor the time limit for national phase entry, and carry out all the actions that are required by each of the designated Offices in respect of which you wish to enter the national phase.

Although the communication of the international application is not usually made to the designated (or elected) Offices concerned prior to international publication (PCT Rule 47.1(a)), the applicant may at any time transmit, or ask the IB to transmit, a copy of the international application to any designated Office, for example if the applicant wishes to make an express request to a designated Office to enter the national phase earlier than the time limit under PCT Article 22(1) (or 39(1)(a)) (see PCT Rule 47.4).
Note that a number of Offices, in particular those where many applications enter the national phase, have “standing orders” for certain documents, that is, they automatically receive copies of these documents for all applications in which they are designated. Other Offices specifically request copies of certain documents in the file when the application enters the national phase before the Offices concerned, and others simply access such documents through one of WIPO’s data bases.

In order to facilitate the communication of international applications and certain other documents, WIPO uses a secure electronic batch document transfer mechanism (PCT-EDI) and is encouraging Offices to use an ePCT Portal document notification system as a routing mechanism for individual documents. In addition, IB forms addressed to receiving Offices, International Authorities and designated (or elected) Offices can be transmitted in this way, and PCT Offices can also communicate documents to the IB using this system.

Information on the circumstances under which copies of the international application may be required by a particular designated Office can be found in the relevant National Chapter of the PCT Applicant’s Guide at:

http://www.wipo.int/pct/en/appguide/index.jsp#I

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  1. Together with the international search report, if that report has been established.
  2. Currently, this applies to only three offices – the designated Offices of Luxembourg, Uganda and the United Republic of Tanzania. These Offices do not yet apply the 30-month time limit for entering the national phase because they have notified the IB of the non-applicability of the 30-month time limit under PCT Article 22(1), as modified with effect from 1 April 2002. Note, however, that they are also designated automatically for a regional patent (EP, AP and AP, respectively), therefore, provided that those regional designations are not withdrawn, a 31-month time limit for entry into the regional phase before those Offices is applicable.

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