PCT APPLICATION - A TWO PHASE PROCESS
PCT Offers Common Procedures. The PCT specifies
common procedures carried out first on all international applications
during the international phase of processing under the PCT. The
formalities check, the international search and (optionally) the
international preliminary examination carried out during the international
phase. These formalities give the applicant more time and a better basis
for deciding whether and in what countries to further pursue the
PCT EXPLANATION BREAKOUT
LAYOUT. The PCT is a complex subject are that
requires more than one page of explanation. The PCT discussion is on
5 web pages:
--- explains what the PCT process is and some reasons for filing.
--- explains how the PCT process works. You are on this page
--- explains the U.S. National Stage of the PCT process.
Four Steps in Phase I. The international phase
consists of four main steps of which the first three occur automatically
and the last is optional:
(1) Filing. The applicant files the
international application in the "Receiving Office."
(2) Search. The applicable
"International Searching Authority" produces an international
search report and written opinion on patentability.
(3) Publication. The International Bureau
of WIPO publishes the international application together with the
international search report and sends the application to the designated
national offices for further processing. And,
(4) Preliminary Examination. The applicant
decides whether or not to request ("demand") an international
preliminary examination before the later of (1) three months from
the date of transmittal to the applicant of the international search
report (or the declaration that no International Search Report will be
established); or (2) 22 months from the priority date. For all countries
but three, the demand must be filed within 30 or 31 months of the priority
date. The U.S. limit is 30 months.
A demand for a preliminary examination essentially asks for the
preparation of an international preliminary examination report on
patentability by one of the "International Preliminary Examining
Authorities." The international preliminary report on patentability
analyzes aspects of the general patentability of the invention.
Who may be appointed as my attorney? An
attorney or agent may be appointed to prepare and file your application in
the international phase when that attorney or agent has the right to
practice before the Office with which the international application will
be filed. Generally, an international application is filed in a
Contracting State of which any of the applicants is a resident or a
national. This is specified in section 19.1 of the Patent
Phase II (National Phase). On completion of the
international phase, further action is required before and in each of the
national (or regional) Office that the applicant wishes to grant him a
patent on the basis of his international application. In particular, the
applicant has to pay each such Office the required national (or regional)
fees, furnish them with any translations that are required and appoint a
representative (patent agent) where required. There are time limits by
which those steps must be taken if the application is to proceed in the
national phase. If the steps are not taken within the applicable time
limit, the effect of the international application may cease in any State
where the time limit has not been met.
Deadline Dates. As of
April 1, 2002, the national stage requirements are due not later than at
the expiration of 30 or 31 months from the priority date even if no demand
for preliminary examination has been filed. Previously, one had to
file a demand for a preliminary examination before the expiration of 19
months from the priority date in order to extend the national phase to 30
months (31-months for some countries or regions). This 19 month filing is
no longer required.
Three countries (Luxembourg, United Republic of Tanzania, and Uganda)
currently do not honor the 30 or 31-month time limit for national
applications. However, they will honor it if the applicant chooses a
regional designation to which they are a party, which specify a 31-month
time limit. These regional patenting authority is the African Regional
Industrial Property Association. Coverage by the regional authority
enables applicants to enter the regional phase (as distinct from the
national phase) in those States within the time limit of 31 months. If an
applicant wants only a national patent in one of these 3 countries, then
the applicant must file the national stage application within 19 months
from the priority date or file a demand for preliminary examination within
that period. WIPO offers a download
of a web page listing each country's national stage deadline.
While the minimum deadline dates are mandatory, countries may have longer
periods in national laws. It is easy, even for
professionals, to make a mistake on deadline dates for the PCT. Be very
careful and be sure to consult an attorney on them. See the Frequently Asked
Questions page for an example.
The national (or regional) patent offices then examine the application and
grant or refuse the national (or regional) patent on the basis of their
controlling national laws.
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This file last modified 07/09/11.
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