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PCT Newsletter Practical Advice

PCT Newsletter - Practical Advice

X PA 01/2008: Consequence of excluding a designation of a State under PCT Rule 4.9(b) where there is no claim of priority of an earlier national application filed in that State

X PA 02/2008: Filing an international application with a national receiving Office, and relying on that Office to transmit the application to the International Bureau as receiving Office under PCT Rule 19.4

X PA 03/2008: Right to practice before an International Searching Authority and International Preliminary Examining Authority (where the agent is appointed for the whole of the international phase)

X PA 04/2008: Appointing agents before the International Searching and Preliminary Examining Authority

X PA 05/2008: The transmittal of notifications to applicants by e‑mail

X PA 06/2008: Signature requirements for withdrawals of designations

X PA 07/2008: Withdrawal of an international application after international publication but before the issuance of the ISR.

X PA 08/2008: The consequences of a finding by the ISA of lack of unity of invention

X PA 09/2008: The consequences of a finding of lack of unity of invention of an international application on (i) the international preliminary examination and (ii) the national phase

X PA 10/2008: Seeking patent protection via the PCT in respect of States which have recently joined a regional patent organization

X PA 11/2008: Payment of fees to the International Bureau as receiving Office when filing international applications with that Office on a regular basis

X PA 12/2008: International applications in respect of which a supplementary international search may be requested; how to request such a search.

X PA 01/2009: Assignment of an international application to an applicant who is neither a national nor a resident of a PCT Contracting State

X PA 02/2009: The appointment of agents having the right to practice before an Authority specified for supplementary international search

X PA 03/2009: Payment of additional preliminary examination fees in case of earlier finding of lack of unity of invention by the International Searching Authority

X PA 04/2009: Modes of filing documents/correspondence after filing the international application electronically

X PA 05/2009: Declaration of non-establishment of international search report: possible actions in the case of other related PCT applications filed later

X PA 06/2009: (no title)

X PA 07/2009: The options available for the filing of international applications containing sequence listings

X PA 09/2009: Requesting the restoration of the right of priority under PCT Rule 26bis.3 where the receiving Office does not apply such provisions

X PA 10/2009: Choosing a receiving Office as a function of the criterion applied by it for restoring the right of priority

X PA 11/2009: How to file international applications electronically using the PCT-SAFE software

X PA 12/2009: Requesting the reinstatement of rights after missing the time limit for entry into the national phase

X PA 01/2010: Expiration of a time limit where an Office is situated in more than one locality

X PA 02/2010: Adding a priority claim which extends the period between the earliest priority date and the international filing date to over 12 months

X PA 03/2010: Making Enquiries at the International Bureau about the Filing of PCT Applications

X PA 04/2010: Factors to be considered when deciding whether or not to file a demand for international preliminary examination

X PA 05/2010: Factors to be considered when deciding whether or not to file a demand for international preliminary examination – Part 2

X PA 06/2010: Filing amendments under PCT Article 19 after the publication of the international application; language requirements for such amendments.

X PA 07/2010: Recording of an e-mail address for PCT notifications issued by the International Bureau

X PA 09/2010: Indicating the basis for amendment of the international application

X PA 10/2010: (no title)

X PA 11/2010: (no title)

X PA 12/2010: The different options available for furnishing priority documents

X PA 01/2011: Amendments to the title of the invention

X PA 02/2011: The extent to which PCT‑PPH possibilities may influence the applicant’s choice of ISA/IPEA

X PA 03/2011: The (continuing) requirement to submit drawings (and where applicable, photographs) in black and white

X PA 04/2011: The circumstances in which an applicant may wish to request that a supplementary international search be carried out

X PA 05/2011: Actions which can be taken to maximize the chances of an international application being processed without delay during the international phase

X PA 07/2011: Measures that are being taken by the International Bureau against fraudulent requests for payment of fees, and actions that can be taken by the applicant or agent

X PA 09/2011: The consequences of filing the international application between 12 and 14 months from the priority date

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

X PA 11/2011: Consequences of attempting to file an international application (or documents related thereto) with the International Bureau on a day on which it was unexpectedly closed for business.

X PA 12/2011: Including additional information when filing a PCT application using the PCT-SAFE software

X PA 01/2012: The benefits of requesting supplementary international search

X PA 02/2012: Options for recording a change of applicant around the time of national phase entry

X PA 03/2012: Recording a change of applicant when there is also a change of agent

X PA 04/2012: Changing access rights in ePCT when there is a change of agent

X PA 05/2012: The requirement to indicate the same person as applicant for a national designation as for the regional designation of that State

X PA 06/2012: Making use of the export/import functionality when preparing international applications using PCT-SAFE

X PA 08/2012: Making third party observations

X PA 10/2012: Situation where it may still be beneficial to indicate the inventor(s) as applicant(s) in an international application

X PA 11/2012: Withdrawing the international application in order to prevent international publication

X PA 12/2012: Indication of the inventor’s name and address in the request form

X PA 01/2013: Requesting the recording of a change in respect of multiple international applications using ePCT

X PA 02/2013: Publication of information relating to the applicant’s wish to make a correction (or addition) of a priority claim, where the applicable time limit for making such a correction (or addition) in the international phase has expired

X PA 03/2013: Modifying the abstract of an international application

X PA 04/2013: Action to be taken when an international application is transmitted by a non-competent receiving Office to the International Bureau as receiving Office for further processing

X PA 05/2013: Requirements regarding user account names in view of eOwnership rights in ePCT

X PA 06/2013: Filing a demand with an International Authority which is not the Authority which carried out the international search

X PA 07/2013: Amending the international application in order to address a finding of lack of unity of invention

X PA 09/2013: The importance of ensuring that there is an applicant named who is entitled to file a PCT application (especially in view of the fact that inventors no longer have to be named as applicants)

X PA 10/2013: Importance of the timely receipt of valid signatures or powers of attorney for withdrawals

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

X PA 12/2013: Indicating a particular applicant for a new PCT Contracting State which is not yet included in e-filing software

X PA 01/2014: Filing the demand form electronically using ePCT

X PA 02/2014: Acceptance of declarations under PCT Rule 4.17 by designated Offices

X PA 03/2014: Submitting declarations of inventorship under PCT Rule 4.17(iv) after the filing of the international application

X PA 04/2014: Entitlement to file with a particular receiving Office; indicating applicants for specific designations: the example of filing with the European Patent Office

X PA 05/2014: The differences between using the PCT-SAFE software and the ePCT-Filing system when filing international applications electronically

X PA 06/2014: The need to take into account national security provisions when filing an international application

X PA 07/2014: The importance of the order in which applicants are named in the request form where no common agent has been appointed

X PA 09/2014: Requests for recording of a new agent of record where the new agent makes the request (non-applicability of power of attorney waivers)

X PA 10/2014: Withdrawing an international application actively rather than waiting for the receiving Office to consider it withdrawn due to lack of payment of fees

X PA 11/2014: The filing of international applications containing references to microorganisms (or other biological material)

X PA 12/2014: Conditions to be met when confirming incorporation by reference of a missing part of the international application

X PA 01/2015: Information on submitting informal comments to address issues raised in the written opinion of the International Searching Authority*

X PA 02/2015: What can be done if a request for rectification of an obvious mistake has been refused by the competent authority?

X PA 03/2015: Accessing and managing an international application via ePCT private services when that application has not been filed electronically

X PA 04/2015: Indicating an address for correspondence where a person is not entitled to represent the applicant before the receiving Office

X PA 05/2015: Late payment fees when the PCT fees are paid more than one month after the date of receipt of the international application by the receiving Office

X PA 06/2015: Entitlement to reductions in PCT fees for applicants from certain countries

X PA 07/2015: Diverging practices of receiving Offices regarding the incorporation of missing parts

X PA 09/2015: How to make a request for restoration of the right of priority, and the furnishing of declarations and evidence relating to such requests

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

X PA 11/2015: Assignment by the agent of eViewer rights to the applicant when preparing and filing international applications using ePCT‑Filing

X PA 12/2015: Submitting sequence listings as part of the international application and for the purpose of international search

X PA 01/2016: Best practice for filing requests for recording changes under PCT Rule 92bis

X PA 02/2016: Best practice for filing requests for recording changes under PCT Rule 92bis

X PA 03/2016: The extent to which the physical requirements prescribed in the PCT Regulations must be complied with, and possible inconsistencies in the way in which such compliance is checked.

X PA 04/2016: Time limit for correcting physical defects in the international application

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

X PA 06/2016: Requests for recording of changes under PCT Rule 92bis using ePCT: situations where access to the international application will be suspended, and the extent to which access will be blocked

X PA 07/2016: Omission of certain information from public file access

X PA 09/2016: Differences between international search and supplementary international search

X PA 10/2016: Requesting early publication of an international application

X PA 11/2016: Situations where declarations under PCT Rule 4.17 should not be submitted

X PA 12/2016: Furnishing of assignment documents where there is a change of applicant

X PA 01/2017: PCT and PPH-PROSUR for efficient patent seeking in Latin America

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

X PA 03/2017: Subsequent provision of an e-mail address for delivery of notifications regarding an international application

X PA 04/2017: The importance of careful drafting of the abstract in a PCT application

X PA 05/2017: Filing and managing international applications in ePCT – in particular by a person who is not an authorized signatory

X PA 06/2017: Recording of a change of agent under PCT Rule 92bis in respect of multiple applications: the difference between submitting a power of attorney relating to a list of PCT applications and the furnishing of a general power of attorney

X PA 09/2017: Certain national requirements allowed in the national phase

X PA 10/2017: Indicating that an international application is available for licensing

X PA 11/2017: How to make sure that applicants’ comments on earlier search results are taken into account by examiners at the European Patent Office as International Searching Authority under “PCT Direct”

X PA 12/2017: Minimizing the risk of incorrect or unintended information in the published PCT application

X PA 01/2018: The differences between the various reports produced during the international search and preliminary examination procedures

X PA 02/2018: Transmittal by the receiving Office of the results of an earlier search to the International Searching Authority (ISA), and use of such results by the ISA without having been requested to do so by the applicant

X PA 03/2018: Fees payable when filing an international application

X PA 04/2018: Seeking utility model protection instead of patent protection

X PA 05/2018: How to find out which designated Offices offer utility model protection and how to request such protection in respect of an international application

X PA 06/2018: Consequences of not submitting nucleotide and/or amino acid sequence listings in the correct format to the International Searching Authority

X PA 07/2018: An alternative to submitting faxes to the International Bureau, for example, in the case of failure of a fax transmission

X PA 09/2018: The differences between the various reports produced during the international search and preliminary examination procedures

X PA 10/2018: Requesting customized PCT training

X PA 11/2018: Translation of the written opinion/IPRP Chapter I

X PA 12/2018: Finding out when an international application will be published

X PA 01/2019: The extent to which the priority claim will be checked in the international phase

X PA 02/2019: Requesting the addition of a missing priority claim

X PA 03/2019: Filing strategies: factors to consider when deciding whether to file an international application with a national (or, where applicable, regional) Office or the International Bureau as receiving Office – an example of a US resident [..]

X PA 04/2019: Issues to be aware of when submitting drawings in color

X PA 05/2019: Possible implications of submitting informal drawings when filing the international application

X PA 06/2019: The timing of the start of the international preliminary examination (following the amendment to PCT Rule 69.1(a))

X PA 07/2019: Same day corrections before the International Bureau as receiving Office

X PA 10/2019: Submitting declarations under PCT Rule 4.17 using ePCT, and obtaining the signatures of the inventors for the declaration of inventorship

X PA 11/2019: Furnishing priority documents using the WIPO Digital Access Service (DAS) – Part I: Requesting an Office of First Filing to make a priority document available in the DAS system

X PA 12/2019: Furnishing priority documents using the WIPO Digital Access Service (DAS) – Part II: Requesting the International Bureau to retrieve a priority document available in the DAS system

X PA 01/2020: Signatures in the case where no agent has been appointed and there is more than one applicant; appointment of a common representative

X PA 02/2020: Meeting the requirements for restoration of the right of priority under the “due care” criterion

X PA 03/2020: Practical Advice

X PA 04/2020: Alternatives to paper transmittal and receipt of PCT-related documents

X PA 05/2020: Excuse of delay in meeting time limits – an example of a missed time limit for filing amendments to the claims under PCT Article 19

X PA 06/2020: Entitlement to practice before the International Bureau as receiving Office (when an international application is assigned to an applicant from a different country).

X PA 07/2020: The furnishing of a correct element of an international application where the originally filed element was filed erroneously

X PA 09/2020: Access by third parties to information in the file of the international preliminary examination

X PA 10/2020: Access by third parties to the inventor’s address that was included in the request form upon filing, but is subsequently changed following a request under PCT Rule 92bis

X PA 11/2020: The cost of filing an international application – finding out what fees are due when using ePCT‑Filing

X PA 12/2020: The cost of filing an international application – finding out what fees are due by consulting WIPO’s online resources

X PA 01/2021: Switching from PCT-SAFE to ePCT (the example of an applicant filing with the United States Patent and Trademark Office as receiving Office)

X PA 02/2021: Best Practice for Withdrawing International Applications

X PA 03/2021: Practical Advice

X PA 04/2021: Late receipt of documents from a PCT Office: calculation of a time limit where PCT Rule 80.6 applies

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