The PCT prosecution consists in filing a so-called "international" application with the designation of the states selected among the states signatories to the Patent Cooperation Treaty and "buying" an extension of time either of 20 (or 21) months or of 30 (or 31) months before filing national or regional applications. One may designate all the states at the filing, and proceed with the application only in the states of interest, 20 or 30 months later. In order to designate all states it is sufficient to pay the designation fee for 5 states, the supplemental designations being free.
At the beginning, the opening of national phases at 30/31 months needed to request the international preliminary examination. In the absence of such a request, the opening of national phases was at 20/21 months.
Since April 1st, 2002, the opening of national phases is at 30/31 months, even without the request of an examination. Indeed Article 22 PCT has been amended.
However, some national offices do not allow yet the application of this new Article. It is therefore still necessary in some cases to request the preliminary examination to postpone the opening of national phases to 30/31 months (see the recapitulative table).
We approach here only the main issue of this prosecution which is conducted before the World Intellectual Property Organization (WIPO).
Filing
This is a first filing or a filing under priority (namely within a 12-month period from the priority date). The filing is done before a Receptor Office. For example, an Applicant established in France can choose to file his application at INPI, EPO or WIPO if said application is in French.
Notification of the number of the international application and of the date of the international filing
Such a notification is issued by the Receptor Office.
Notification of the receipt of the original exemplar
The International Bureau (WIPO) watches over the transmission of the original exemplar by the Receptor Office and notifies the receipt of it to the Applicant. In case where the original exemplar would not have been received at the end of a 14-month period from the priority date, the International Bureau would warn the Applicant of the situation.
In the Notification of receipt of the original exemplar, the International Bureau reminds the Applicant of :
- the periods within which the national phase must be initiated ;
- the confirmation of the designations indicated as a precaution ;
- the requirements relating to the priority document (if the Bureau has not received it).
Notification relating to the presentation of the priority document
The International Bureau acknowledges receipt of the priority document(s).
Notification of receipt of the search copy
The administration in charge of the international search (ISA) indicates to the Applicant that the period for the establishment of the international search report is of 3 months from the date of receipt of the search copy or of 9 months from the priority date, according to the more belated due date.
Notification of transmission of the international search report
This notification is issued by the Administration in charge of the international search. After receipt of the search report, the Applicant may amend the claims within a 2-month period from the date of transmission of this search report.
At this stage, we have to remind of the 19-month period from the priority date to file a request for an international preliminary examination, necessary for opening the national phases for some states at 30/31 months.
Filing of a request for an international preliminary examination (Chapter II of the PCT)
This request has to be filed directly before the expiration of the aforesaid 19-month period from the priority date so that the period for opening the national phase can switch from 20 months to 30 months from the priority date for the states where the national law does not allow the opening of the national phase at 30/31 months without preliminary examination.
At the time of the filing of the request for the international preliminary examination, it is compulsory to pay the preliminary examination fee (for the benefit of the Administration in charge of the international preliminary examination (IPEA)) and the treatment fee (for the benefit of the International Bureau).
When European Patent Office is the IPEA and when the international preliminary search report reveals document(s) of category X or Y, the Examiner does not study the application, unless a detailed examination has been requested (see news)
Notice informing the Applicant of the communication of the international application to the designated offices
This notice is issued by the International Bureau.
Receipt of the publication of the international application published pursuant to PCT
Notification of the receipt of the request for the international preliminary examination
This notification is issued by the IPEA.
Receipt of written opinions
The IPEA issues a first written opinion, if a detailed examination has been requested, to which the Applicant is invited to answer. A second written opinion may also be issued after the response to the first one.
Notification of transmission of the international preliminary examination report
The IPEA forwards the international preliminary examination report and reminds the 30-month period from the priority date for opening the national phase.
Notification of transmission of copies of the translation of the international preliminary examination report
The International Bureau sends an English translation of the international preliminary examination report to the Applicant and to the Elected Offices which require a translation. The International Bureau reminds that when a translation of the international application has to be lodged with an Elected Office, such a translation must comprise the translation of any annex to the international preliminary examination report and that it falls to the Applicant to establish this translation and to lodge it directly to each interested Elected Office.
Opening of the national/regional phase, European phase said "European or Euro-PCT phase"
The opening of these phases consists in filing the application in the selected states.
Publication
Shortly after the expiration of the 18-month period from the priority date, the international application will be published by the International Bureau. If the Applicant wishes to avoid or postpone the publication, he has to send to the International Bureau a declaration of withdrawal of the international application, or of the priority claim, before the end of the technical preparation of the international publication.
Annual fees
The PCT prosecution does not include the payment of annual fees.
|
