Patent Cooperation Treaty (PCT) Chapters I and II

Question 1

When can an international application be filed

Answer 1

At anytime within a priority year, or as a new application

Question 2

How should a PCT be filed

Answer 2

By filing with a competent RO or with the IB. If the RO is not competent it will pass on the application to the IB

Question 3

What type of requirements are made for RO’s

Answer 3

residency, nationality, and language of the application

Question 4

Can the priority year be extended for PCT filings

Answer 4

Yes - you can file up the 14 MONTHS after priority with a RO’s permission if you can prove lateness is despite all due care / unintentional, depending on the RO’s requirements

NB, this is reassessed at national/regional phase entry, and states will put their own restrictions on later filings

Question 5

What fees are due when filing a PCT, and who are the fees for

Answer 5

All paid at the RO:
The International Filing Fee (for the IB)
The Search Fee (ror the ISA)
The Transmittal Fee (for the RO)

Question 6

When are PCT filing fees due

Answer 6

R16bis
At filing
OR within 1M of filing
Then an invitation to pay within 1M will be sent, when a 50% excess is due

If you pay after 1M but before invitation, it is deemed paid in time
If you pay with excess after end of 1M extension, but before declared withdrawn, deemed paid in time

Question 7

In addition to filing fees, what else must be done within a month of filing a PCT

Answer 7

Filing a translation if the language is not accepted by the ISA

Question 8

What is required on filing of a PCT

Answer 8

PCT Art. 14
It should :
be signed
contain an indication as to who the applicant is
have a title
contain an abstract
comply with the relevant physical requirements

Question 9

What happens if the formality requirements are not fulfilled for a PCT on filing

Answer 9

R26
You receive an invitation to correct (preferably within a month of filing) setting a TWO MONTH deadline to correct

Question 10

Can invitations to correct elements before the RO for a PCT be extended

Answer 10

YES - it can be extended by the RO

Question 11

When should priority documents be filed for a PCT

Answer 11

Within 16 MONTHS of the priority date

Question 12

How is the international phase deadlines calculated

Answer 12

From the priority date, if priority is abandoned, the PCT timeline is adjusted

Question 13

Are there any extensions/safeguards for filing a priority document for a PCT

Answer 13

PCT R17
The priority document is deemed received on the last day of the 16 MONTH limit if received at the IB before international publication.

Question 14

Can you correct or add priority

Answer 14

YES - you have the later of 16M from earliest priority or four months from international filing