Chapter 13: Applications under the PCT
Section (13.01 - 13.144) last updated March 2017.
The Patents Cooperation Treaty (PCT) has been signed by over 150 countries (Contracting States) who have agreed to cooperate so as to avoid the need to make a series of national and/or regional applications where protection is sought in several countries. Applicants may make a single “international” application to the International Bureau (IB) of the World Intellectual Property Organisation (WIPO) in Geneva for as many of the PCT Contracting States as they desire. The applicant can then later decide in which of these states they wish to obtain protection by way of a national patent or a regional patent (for example a European Patent).
International applications therefore have an “international phase” during which they are processed under the PCT and its Rules and a “national phase” (or “regional phase”) during which they are processed to grant in accordance with national (or regional) requirements.
The advantage of applying for an international application is that initially, only one application and one set of fees has to be filed as opposed to filing several independent applications and fees at the corresponding national offices.
To enter the international phase the application is filed at a “Receiving Office” (RO) in accordance with the PCT Rules dealing with formal requirements and content. UK residents can choose either the UK Intellectual Property Office, the European Patent Office (EPO) acting as the RO (subject to national security requirements), or the IB itself.
In the international application all countries in which protection can be sought are deemed to be designated. The application is then sent to an International Searching Authority (ISA) which carries out an International Search.
There are several ISA’s however it is the EPO that acts as the ISA for PCT applications filed with the UK Office. Similar to normal UK applications, the search is usually completed and a report (international search) issued. Providing that all formal requirements have been met, the IB publishes the application with the search report, if available, at 18 months from the priority date.
Usually, following this publication the applicant decides in which countries they wish to pursue the application in the ‘national phase’. These national applications are processed under that country’s Act and Rules. Ss.89, 89A and 89B of the Patents Act 1977 govern the national processing of international applications for patents in the UK. Exceptionally, an application will be published ‘first’ in the UK (see 13.19).
Further information about the PCT system can be found in the following documents available from the Patents International Unit (PIU).
- general information - PCT/SEM/91/1
- basic facts About the PCT”
- RO guidelines - PCT/GL/1 Rev.1
- PCT Applicants guide - This is a complex manual (four volumes) but usually has all the answers about the PCT, both nationally and internationally
The PCT Applicants guide may also be found on the WIPO Website.
Designation and election
All countries are now deemed to be ‘designated’ in the international phase. The applicant may then enter the national phase in any of those countries in which he wishes to pursue patent protection.
It should be noted that the Treaty provides for the EPO to be ‘designated’ in addition to those countries listed in Annex 13A - List of EPC and PCT Contracting states and for individual members of the European Patent Convention (EPC) to be nominated for a European Patent.
The PCT provides for all designated states (contracting state) to become ‘elected’ under Chapter II of the Treaty if the applicant so wishes. To do so the applicant must indicate this intention to the appropriate International Preliminary Examination Authority (IPEA) within 3 months from the date of issue of the international search report or 22 months from the priority date, whichever expires later (PCT Rule 54bis).
This ‘election’ entitles the applicant to International Preliminary Examination (IPE) of the application in respect of those countries before it reaches the National Phase stage. This IPE is undertaken by an International Preliminary Examination Authority (IPEA) and is a non-binding opinion on novelty, inventiveness and industrial applicability. It is in addition to the search carried out by the ISA. For applications filed with the UK Office, the EPO acts as the IPEA.
When the IB notifies the UK that it is a ‘designated’ or ‘elected’ state these and other various notifications will be used if the application enters the national phase.
For ‘designated’ countries the relevant documents will include:
IB/304 - The international receipt of the priority documents [Only found on file when documents are filed out of time - see 13.77
IB/308 - The Notification of Communication of international application of designated states
IB/310 - The notification of Transmission of Documents by the IB. [There may be more than one on file]
IASR - International Application Status Report
If the International Preliminary Report on Patentability section on the IASR states “Not available” then the case is ‘designated’. If the IASR states “Chapter II demand received (date)”then the case is ‘elected’.
For ‘elected’ countries, in addition to the above it is also possible that there may be the following on file:
IB/337 - Notification concerning amendments of the claims
IB/349 - Communication of international applications
IPRP - International Preliminary Report on Patentability (IPRP). All IPRP’s should be imported to the dossier for the examiner’s reference. See also 13.52 a et seq.
Examples of the latest versions of these IB notifications can be found at:
Entry into the national phase
In a ‘designated’ or ‘elected’ case, entry into the national phase normally occurs at the expiry of the 31 month period, calculated from the earliest declared priority date, or the date of filing of the international application r.66(1) if there is no priority. Both of these periods are extendable under r.108(2) by two months upon filing of F52 and the prescribed fee. Additionally discretionary extensions may be granted under the provisions of r.108(3) but subject to the restrictions of r.108(5) and (7) see 10.31 - 44.
If the international application is not in the English language, then in order to proceed in the national phase the applicant must file a translation of the specification. It is not necessary for the translation to be verified unless there is doubt over the validity, in which case a verified translation may be required under r.115.
Applicants/agents are encouraged to use Form NP1 however this is not a statutory requirement but they are required to pay a £30 fee.
Early entry to the national phase
S.89A(3)(b) gives the applicant the option to expressly request early entry to the national phase as of right. Early entry does not automatically entail any accelerated action. All requests for early entry should be picked up by Indexing and Scanning. See 13.125 - 13.135 for full details on processing of early entry cases. Any application which requests accelerated examination will be treated as an express request to enter the National Phase early. See MoPP 89A.21.
The Section 89 case
When the application enters the national phase a domestic ‘Section 89’ application will be prepared:
a) The application will be treated as filed the date the application was filed at the IB (ie the International filing date), not the date of receipt of the request for national processing.
b) Bibliographic data will be captured on COPS and ADP numbers created.
c) A copy of the WIPO specification should be present if it has already been published in the international phase.
When the national phase application is received, the National Phase Officer (NPO) in Security Section will check Patentscope for the WO published specification and any relevant documents.
The NPO will:
(i) Import the documents into PDAX with the appropriate code and split the WO specification.
(ii) Check whether the prior art listed in any “Third Party Observation” document includes any non-patent literature (NPL), and if so order a copy (see paragraphs 13.22 -13.23 below).
(iii) Record a minute on the dossier to draw attention to any special requirements, observations and related documents.
(iv) Forward the case to Formalities.
In the first instance, the NPO should order any NPL documents through the Ad-hoc Document Order System. This will ensure that the appropriate copyright fees are paid, and the document(s) will be imported into PDAX as usual.
If the NPL is not available through Adhoc, the NPO should instead request paper copies by emailing mailto:firstname.lastname@example.org. Any documents requested in this way should be stored by Index and Scanning, and the minute mentioned in 9(iii) above should state their location.
It should be noted that as no preliminary search is conducted by this Office (see 13.37) and Section 16 publication is deemed to have taken place when the application enters the national phase (s.89B(2)), the application will be “Open to Public Inspection” as soon as it enters the national phase.
National phase formalities examination
After the dossier is created by Indexing and Scanning the case is forwarded to Formalities. Once allocated the Formalities Examiner obtains and imports any necessary documents from the IB via the PATENTSCOPE website. Upon receipt of the IASR the Formalities Examiner will determine whether the UK has been designated or elected and mark cover/checklist accordingly.
Cases that are “elected” have the equivalent of a substantive examination (Chapter II of the PCT) carried out in the international phase of the application. Where a case is “elected” by the applicant they notify the IB of this within 19 months of the earliest date of the application and the details of this will appear on the IASR.
If the Notification of Election was submitted after the 19 month time limit the case must be referred to the (Assistant) Head of Administration via the Formalities Manager.
There is a £30 fee to enter the national phase. National phase formalities examination should be carried out on all legitimately filed applications.
The non-statutory Form NP1 should be checked to ensure that it has been properly completed. Inconsistencies should be checked with the agent.
The details on the NP1, in particular Section 1 of the form, must be checked carefully against the front page of the WIPO specification and against the data on COPS. Where any errors or discrepancies are discovered between the NP1 and the WIPOFP specification, with the exception of a definite change in the name of the applicant/proprietor, the applicant/agent should be contacted and the correct information agreed and confirmed in writing. The NP1 should then be enhanced and annotated accordingly.
It should be noted that a written correction request is not necessary to correct the NP1 in these circumstances.
Patents Form 9A
When the UK is a ‘designated’ or ‘elected’ country (contracting state), the F9A must be filed either :-
a) within the period as set out in rule 22(2) and (7) - 12 months from the (international) filing date or, if priority is claimed, 12 months from the earliest priority date or 2 months from the filing date if that is later. OR
b) within 2 months of the date the application is deemed to have entered the national phase (normally the 31 month date) if that expires later (r.68(3)).
If the application enters the national phase at the normal 31 month point then b) above will always apply. If the application enters the national phase very early then a) may apply but in either case the applicant will always have a minimum of 2 months in which to file the Form 9A.
On both ‘designated’ and ‘elected’ cases the period prescribed by r.68(3) may be extended by 2 months under r.108(2) by filing Form 52 and the fee. A further extension may be possible under the provisions of r.108(3) but subject to the restrictions of r.108(5) and (7).
Where the Form 9A is not filed within the prescribed period as extendable under r.108(2) the application is treated as withdrawn. In these circumstances the case should be referred to the Formalities Manager who will terminate the application.
Even though the application is treated as being withdrawn, the application may still have to be reprinted where a case is revived under the provisions of s.20A (for example, reinstatement).
Although a formalities examination is carried out following the filing of a Form 9A, no search is usually made by the Office apart from topping-up during substantive examination. In exceptional circumstances where a search has not already been conducted by another Office, a full search may need to be made. S.89 applications on which both a Form 9A and Form 10 are filed will not normally be treated as a request for combined search and examination (CSE).
The fee payable with a Form 9A on an international application is reduced compared with normal GB applications (further reductions apply when an application is filed electronically).
A copy of the International Search Report will usually be attached as the last page of the WIPO specification.
If the application has been published by the IB it is not formally published under s.16 as this has deemed to have taken place at the expiry of the 31 months prescribed in r.66(1)). Instead the Office re-publishes the WIPO specification as an “A” document to ensure it receives UK classification and a GB serial number.
If the IB publication was in English the republication consists of the front page of the WIPO specification only. If it was in a foreign language it also includes a translation of the description, claims, International Search Report and any relevant drawings.
Amended claims that the applicant has filed for the national phase only are not included.
Patents Form 10
In accordance with r. 28(1) and (2), a Form 10 and fee have to be filed to enable an international application in the national phase to proceed to substantive examination.
Whether the UK is a ‘designated’ or an ‘elected’ country (contracting state), the Form 10 and fee must be filed either:
a) within 33 months of the earliest declared priority date, or, where there is no declaration of priority, the date of filing the international application (r.68(4)(a))
b) within 2 months of the date the application is deemed to have entered the national phase (normally the 31 month date) if that expires later. (r.68(4)(b)). These dates will normally be the same unless the application has entered the national phase later than 31 months ie with a Form 52 or Form 14.
On both ‘designated’ and ‘elected’ cases the period prescribed by r.68(4) may be extended by two months under r.108(2) by filing F52 and the fee.
A further extension may be possible under the provisions of r108(3) subject to the restrictions of r.108(5) and (7).
Where the Form 10 is not filed within the prescribed period as extendable under r.108(2) the application is treated as withdrawn. In these circumstances the case should be referred to the Formalities Manager who will contact the applicant/agent by telephone and advise that the application will shortly be advertised as withdrawn and indicate the provisions of s.20A (reinstatement).
Where the case can only be continued via reinstatement, and all extensions have passed, the case should then be ‘terminated’.
However, before withdrawal, the Formalities Manager must refer the case to the (Assistant) Head of Administration for consideration of whether prior to advertisement of withdrawal the application should be reprinted.
PCT (UK) Fast Track
Applicants can request accelerated examination in the UK national phase if their PCT application has received a positive International Preliminary Report on Patentability (IPRP). This is to provide an incentive for applicants to get their applications in order whilst in the international phase.
The applicant must make a request in writing indicating a positive IPRP has been received. No further reasons are required. Requests may be made in relation to existing applications which have already entered the national phase.
The Formalities Examiner must check all correspondence for requests for accelerated treatment. On identifying a PCT (UK) Fast Track request the Formalities Examiner should apply the PCT Fast Track label and the accelerated examination label to the dossier cover. Any necessary documents (IPRP) which are not on the dossier should be ordered via Patentscope. If they are not available the Formalities Examiner should inform the agent and diary the case for three months.
The request should then be handled in the same way as any other request for accelerated examination. If the request is refused the PCT Fast Track label must remain on the dossier cover.
A copy of the WIPO specification must be on file to enter the national (see 13.17) phase. This can be sent with the application or can be obtained via Patentscope.
On the very rare occasions when the Article 20 Communication from the IB has not been received in this Office in time, a specially extended period is allowed for filing the documents for a PCT Application (‘designated’ or ‘elected’) to enter the national phase.
Translation of the WIPO specification and/or the international application
Where the WIPO specification is in a foreign language a translation of the specification or the international application must be filed in accordance with Section 89A(3) within the period set by r.66(1) (31 months). (For translation of textual matter in drawings see 13.103 - 13.105)
This period is extendable by two months under r.108(2) by filing Form 52 and fee. A further extension may be possible under the provisions of r.108(3).
It should be noted that this translation does not need to be a verified (see 13.17). However, if there are any doubts about the accuracy of the translation r.115 may be used to request a verified translation.
Publication of the translation
When an international application is published by the IB in a language other than English, ss.89A(3) and (5) require a translation in English to be filed in order to enter the national phase. In such instances the Office automatically prints the translation in full. This republication is purely an administrative act and does not constitute publication under s.16.
However, s.89A(6) provides for any translation supplied in accordance with ss.89A(3) or (5) to be published under s.16 on payment of the prescribed fee. There is no obligation on the applicant to file such a request, the purpose of which is to secure certain rights under s.55 and s.69 of the Patents Act as set out in s.89B(3). The onus is entirely upon the applicant to request publication though failure to do so does not prevent the application from being republished. Requests may be made in writing or by completing part 6 of Form NP1. Each request will need to be advertised in the Patents Journal and recorded in the register.
Action to be taken by the Formalities Examiner
(1) The NP1 (Part 6) and all agent letters etc must be checked for a request to have the translation of the WIPO document published under s.89A(6).
(2) If a request has been filed, check the fee sheet to ensure that the fee (currently £12) has been paid.
(3) If a request has been filed send a message to the Formalities Manager to record REG PCT action on COPS.
(4) If a request has been filed without a fee, contact the agent/applicant and allow a period of two weeks for payment. The case should then be diarised accordingly. A message should be sent to the Patent Examiner via the ESO in the normal manner. However the application should not be forwarded for republication until the fee has been paid or the request withdrawn. On receipt of the fee or the expiry of the two week period a message should be sent to the Formalities Manager.
Action to be taken by the Formalities Manager
(1) If the request and fee have been filed use the COPS function REG PCT to make the following automatic entry on the register and Patents Journal: “Request for publication of translation under s.89A(6) filed on ………….”
Note the minute in the TOC “Reg PCT action taken”.
(2) If the fee is paid after the filing of the NP1 then the Journal and Register entry must reflect that later date and not the date when the NP1 was lodged.
(3) Where the case is referred by the Formalities Examiner due to failure to file the appropriate fee, advise the agent/applicant in writing and ask for the fee to be paid or the request withdrawn. A further period of two weeks should be allowed and the case diarised accordingly.
(4) If the fee is not paid nor the request withdrawn within the period set, then the case should be referred to the (Assistant) Head of Administration for advice.
Amendments to the international application
An international application that has entered the national phase may contain amendments of the following kind:
- amendments submitted to the IB prior to the application entering the national phase
- amendments filed in response to the written opinion during the international preliminary examination process (elected cases only)
- amendments submitted with NP1 purely for purposes of the UK national phase
All amendments filed during the substantive examination stage MUST be incorporated for the working copy (See Chapter 9 for general procedure)
On ‘elected’ cases the Formalities Examiner must, in all cases where amended pages are attached to the IPRP, indicate the action to be taken in the s.89 and Post Pub checklist.
Care must be taken when any amendments to the international application or annexed to the IPRP have been made.
The period for filing amendments and their translations is the same as for filing the application and amendments at this Office. However, where the applicant is required to file a translation of the amendments, but has not supplied this, in order to satisfy the requirements of s.89A(3) and (5) he will be allowed a period of 3 months from the date of notification (r.69(4) and(5) and r.66(2)) to file the translation.
In all cases where amendments (other than in response to the IPRP) are filed late or without the appropriate translation the FE should request that these are provided. If there is any doubt as to whether or not they should be reprinted, the case must be referred to the (Assistant) Head of Administration via the Formalities Manager.
Declaration of priority
An international application entering the national phase may contain a declaration of priority made under the PCT. Such a declaration will be accepted and treated as a declaration under s.5(2) in accordance with s.89B(1)(b). Details of ‘continuation in part’ applications appearing on the WIPO document should be ignored.
The declaration will be considered to have been made in time where the provisions of PCT r.4.10(a) and (b) have been complied with (subject to PCT r.26bis.1, r.26bis.2(b) and PCT r.17.1) before the international application enters the national phase as required by UK.
There will be no declared priority date if all the priority claims made on an international application are withdrawn or disregarded before the application enters the national phase (rule 3(2)(b) and 3(3)(b) refer).
Late declarations of priority
Late claims to priority and late declarations of priority are now permitted on international applications under the PCT (PCT rules 26bis.3 and 49ter.2). The same principles apply as those set out for national applications in rule 6 and s.5(2B) see Chapter 6.
For a late declaration of priority (ie where the international application is filed more than 12 months after the priority application) the applicant can make a request in two ways:-
a) with the Receiving Office (RO) when filing the international application, the International Unit will deal with these requests.
b) with the Designated Office (DO) within 1 month of entering the national phase r.66(3). This time period cannot be extended. In either case the international application must have been filed within 2 months of the end of the priority year see 6.22 - 23. The request should be made on a Form 3 with fee and actioned as in 6.21 – 35.
The ‘unintentional’ criterion is applied by the UK IPO acting as both RO and DO and therefore any late declaration allowed as RO should be maintained when an application enters the GB national phase. However, an applicant may make a request to the UK IPO as DO where a request has been refused by the RO.
Where it is found that the priority document was filed with the IB outside the prescribed period of 16 months from the earliest declared priority date under PCT r.17(1)(a) or (b) no immediate action should be taken to cancel the declaration of priority. The Formalities Examiner must allow the applicant reasonable time under PCT r.17(1)(c) to file the outstanding priority document (see 13.76 - 13.85 setting an initial diary of 3 months.
In an international application containing a declaration of priority under PCT Article 8(1), the applicant should already have supplied (under PCT r.17.1) the IB with a copy of the priority document and therefore does not have to submit a copy to the National Office. In accordance with PCT r.17(2)(a), the IB will supply the National Office with a certified copy of the priority document via Patentscope.
The Formalities Examiner must determine whether or not the priority document was filed with the IB within the prescribed period of PCT r.17.1. This period is either:-
a) 16 months from the earliest priority date, the same as r.8 for applications filed under the Act, or
b) Where a request has been made to the IB or the RO for a certified copy of the priority document within the 16 month period, if the copy does not arrive with the IB until after that period but before international publication, the priority document will be treated as being filed on the last day of the 16 month period specified in (a).
When a copy of the priority document has been requested on Patentscope and the IB advises that the document has not been supplied by the RO then, provided the priority document is already available to the comptroller the requirements of r.8(4)(a) are deemed to have been met.
If the application is otherwise in order for grant then the Formalities Examiner should contact the agent and request a certified copy of the priority document. If the agent is unable to supply the requested copy then the application may be sent for grant without delay. The Formalities Examiner should set a diary date of 6 months after grant to monitor receipt of the outstanding certified copy from the IB.
If a priority document has not been requested or filed in time the IB notify each designated office via an IB304.
Where it is found that the priority document was filed with the IB outside the prescribed period the applicant must be allowed an opportunity to file the priority document under PCT r.17(1)(c).
The Formalities Examiner should issue the PROSE letter S89 outstanding P/Doc(s) see Annex 13B - Section 89 no priority document at WIPO letter. The case should be diaried for 3 months from the date of the letter.
If the diary matures without a response or a priority document having been filed the case should be forwarded to the Assistant Head of Administration via the Formalities Manager with an explanatory minute. The Assistant Head of Administration will authorise the cancellation of the relevant priority documents, and make a suitable annotation against the WIPO Specification in the TOC.
The Formalities Examiner must amend the COPS record as appropriate and inform the customer of the cancellation via a LFH letter, which is available on PROSE See Chapter 6. The application will proceed with either its filing date or the earliest remaining priority date.
It should be remembered that ALL prescribed time limits will be calculated from this new date on COPS. The Patent Examiner should be informed by a minute highlighting the cancellation action and revised dates.
Translation of the priority document
Translations of the priority document(s) are not required for the application to progress to substantive examination. A translation of the priority document will only be required in accordance with r.9 if the Patent Examiner needs it.
Amendment or correction of priority details
Where a request for the deletion of a priority declaration is received subsequent to reprinting the case should be referred to the (Assistant) Head of Administration via the Formalities Manager with an explanatory minute.
If the request is allowed the (Assistant) Head of Administration will authorise the deletion of the relevant priority declaration, annotate the WIPO specification in the TOC and arrange for a suitable Register entry on COPS.
The Formalities Examiner must inform the applicant/agent of the allowance of the request in writing. Time limits are still calculated from the earliest originally declared priority date. As details of the declaration of priority remain on the Register the certified copy of the priority document and translation, if any, remain on the open part of the dossier.
The matter for consideration is quite complex and may require referral to Legal Section. However if the request is allowed the (Assistant) Head of Administration will advise the Formalities Examiner on what action, if any, is necessary with regard to the following points:
(a) Note the WIPO Specification in the TOC
(b) Inform the applicant/agent of allowance of the request
(c) COPS action
(d) Issue of erratum slip on the re-print
Extension to prescribed periods of international application
If the period for entering the National Phase under r66(1) is extended under the provisions of r.108 or r.107 the time period for filing Forms 7, 9A and 10 will always be 2 months from the date of actual entry to the national phase. (r.68).
In addition, r.72 allows specific provision for the ‘rescue’ of applications deemed withdrawn under the PCT when in equivalent circumstances a domestic application could have been allowed to continue. Any such request for discretion under r.107, r.108 or r.110 in relation to r.72 should be referred to the Head of Administration via the Formalities Manager.
In granting any extension under r.108 of the period for entering the national phase the Head of Administration will need to consider whether third party terms should be applied.
The period for which third party terms will apply will depend on whether GB has been designated within the EP regional designation. This affects the time period during which a third party might reasonably expect the application to have been advertised as terminated. See 10.68
For further general information on extension of time limits and the application of third party terms see Chapter 10.
Reinstatement of international applications
Where there is a request to enter the national phase after the prescribed period (and no automatic extension to the period is available under r108) the applicant must apply for the application to be reinstated.
Reinstatement is requested by filing a Form 14 plus a fee of £150. The request should be accompanied by supporting evidence as to why the application did not enter the national phase within the prescribed period. For further details of the procedure for reinstating an application see chapter 10.45-76.
Patents form 7
A Statement of Inventorship Form 7 is not required under the provisions of s.89, providing the inventor(s) name(s) appears on the WIPO specification (s.89B(1)(c)). On the rare occasion when the inventor’s name is not given on the WIPO specification a Form 7 will be required under the provisions of r.68(2) to comply with the requirements of s.13(2). This must be provided within 16 months of the earliest date or 2 months from entry into the national phase if later.
Problems may arise with regard to details of inventorship when the WIPO Specification is not in English. Rule 69 requires the applicant to provide a translation of the application excluding the Request (R0/101) and the abstract. As a result inventors’ addresses may not be identifiable and an ADP number cannot be allocated by Indexing and Scanning.
In these circumstances some agents/applicants supply the relevant information either by letter, by filing a Form 7, or by including a translation of the Request (R0/101) in their translation of the application. The IASR may also be used to confirm details.
Only the information about details of inventorship supplied in this manner may be used by the Formalities Examiner to request Indexing and Scanning Section to allocate an ADP number.
Where the information has not been supplied the Formalities Examiner should contact the Applicant/Agent and request that the inventors’ full details be supplied within one month. The basis for this request is to be found in the provisions of r.82(1)(a). Should any problems be encountered in making the request the matter should be referred to the (Assistant) Head of Administration via the Formalities Manager. In conjunction with PD Legal, they will advise of the next appropriate step.
For the purpose of reprinting of the international application in the national phase, Publication Section will use the drawings attached to the WIPO print. Formal drawings will not be required.
In the case where the drawings contain textual matter/annotations in a foreign language it will be necessary for drawings to be supplied with the text in English. Drawings filed with the national phase application with textual matter translated into English will be covered by the ‘application’ translation.
If such drawings have not been supplied with the national phase application then the requirements for entry to the national phase (s.89A(3)) are not met and the application is deemed to be withdrawn.
The time limit for entry to the national phase and therefore for filing the translated drawings may be extended under rule 108(2) and (3) by filing Form 52.
The function ADD NP1 is used to delog the Form 9A and put an AFS on the system, it is also used to record the details of inventorship.
If there is a Form 10 on the file, then the form should be de-logged by using the REC PRE function.
An application under s.89 will already have been published as an international application and is deemed to have been published for the purposes of s.16 when the application enters the national phase (s.89B(2)).
It should be noted that under PCT Rule 92bis the IB will, at the request of the applicant, record changes to the bibliographic data of the application for example, applicant/Inventor.
For such a request to be allowed it must be filed with the IB before the prescribed period for entry to the national phase expires. The allowance of such a request is notified to the designated office on Form PCT/IB/306.
When such a change has taken place, and the form is present, the Formalities Examiner should add the following footnote:
“This print reflects a change of applicant effected after publication by WIPO but prior to entry into the national phase.”
If there is any need to amend the wording of the above footnote the file should be referred to the Head of Administration for approval. Where the form is not present the matter should be referred to the (Assistant) Head of Administration via the Formalities Manager before contacting the agent.
After the preliminary examination has been completed the case should be forwarded to the examiner in the usual manner.
When the case is forwarded to the appropriate examining group for the necessary recordal of the examiner data onto COPS no search is carried out as it is not required (see 13.37). When returned to the Formalities group via a PDAX message the application dossier is checked by the Formalities Examiner and, if ready for publication, the application is prepared and set to await publication (reprinting like any other application see Chapter 8. It should be noted that with regard to the “Number of pages” to be entered in REC FOR screen 1, ONLY if a request to publish the translation under s.89(6) has been filed should the full number of pages be entered. In all other circumstances only the number of pages included in the WIPOFP are recorded. Only the front page of the WIPO specification is re-published unless a specific request has been made under s.89A(6).
It should be noted that reprinting occurs only to facilitate the allocation of a ‘7 figure’ serial number and to provide a UK-type front page.
If an error is identified on the front page of the PCT publication (for example the wrong abstract has been used) Formalities should contact the relevant processing team at the IB which can be found via http://www.wipo.int/pctdb/en/iateamlookup.jsp and inform them of the error. Once the error has been corrected on Patentscope a copy of the contents of the bibliographical data tab should be imported to the dossier and given the Doc Code WIPOFP. This document will then be used for republication.
Post reprinting formalities examination
A check of the s.89 checklist should be made to see if there is an instruction to associate any amendments. If such amendments are present they should be incorporated and annotated as ‘Working Copy’ using the basic procedures laid down in Chapter 9. The checklists should be suitably completed.
It should be noted that where the F10 is on file at reprinting the published application will be given the COPS processing status ‘A PUBLISHED’.
It will therefore be necessary for the Formalities Examiner to update this status to ‘READY FOR EXAMINATION’ using the function REC PRO (Option 8).
If an Examination has already been issued, the application should be set to ‘Disposed of – not in order’ using CHA CAS.
Even if amendments have been incorporated it must not be given the status ‘AMENDMENT’ See Chapter 9.
For the purposes of substantive examination and any subsequent formalities action the application is treated like any other in accordance with the procedures laid down in Chapter 9 with the ‘Working Copy’ being treated as the working specification.
Documents Listed in the ISR/IPRP and translations thereof
Prior to publication the Patent Examiner may request translations of any documents cited on the ISR (r.113(5)). If the requested translation is filed outside the prescribed period (r.113(6)) the case should be referred to the (Assistant) Head of Administration via the Formalities Manager for consideration of the exercise of the Comptroller’s discretion under r.108(1).
If the requested translation is not filed at all, the case should be referred to the Patent Examiner for consideration of what further action to take. It is likely that the application will held to await expiry of the s.20 period.
Ordering documents from patentscope
The ordering of documents from the IB is made via the on line webpage called patentscope. The Formalities Examiner processing a s89 application should obtain all the necessary documents - the IASR, IPRP, Priority Document and ISR (usually included in the WIPO spec) which can be downloaded via patentscope and imported onto the dossier using the PDAX manual import function. If a document is not available the Formalities Examiner should set a diary and re-check after a suitable time has elapsed (usually 3 months).
Early Entry into the national phase
A PCT application normally enters the UK national phase at 31 months from the earliest priority date. An applicant may specifically request to enter the UK national phase earlier under s.89A(3)(b). Early entry does not necessarily mean that the applicant requires accelerated processing. A specific and clear request for acceleration must be provided. Any request for accelerated examination will be treated as an express request to enter the national phase early. MoPP 89A.21
Minimum requirements for early entry
To enter the UK national phase early an applicant must file the following documentation under s.89A(3)(b) in order to secure a lodge date.
a) Form NP1
b) £30 fee
c) a copy of the international application if not available from the IB
d) an English translation if the international application is in a foreign language.
If no copy of the international application/English translation is filed by the applicant and the published specification is not available from WIPO then the application cannot enter the national phase. When such a defective application is lodged a letter will be issued by Security Section advising the applicant that they must file a copy or translation of the international application to enter the national phase and secure a lodge date. If these cases are received in Formalities, they should be returned to Security Section.
Upon the filing of a copy of the international application or translation Security Section should refer the application to Indexing and Scanning to be re-dated to the date the specification was lodged.
If no copy or translation of the international application is filed within two months the case should have remained with Indexing and Scanning where it should be treated as a ‘no case’.
Once an early entry application arrives in Formalities, before taking any action the Formalities Examiner should refer to the minute on the dossier for any instructions.
All s.89 applications which enter the national phase early will require publication in order to proceed.
WO specification published
International applications are usually published by WIPO around 18 months from the filing or declared priority date and will be supplied by the IB on request to national offices. The National Phase Officer in Security Section will obtain a copy of the published WO specification for the s.89 early entry application which may then be sent for re-publication in the normal manner. The special early entry footnote 1 should be recorded on COPS using REC FOO. (See Annex 13C - Early entry to National phase - Footnotes for early entry footnotes)
WO specification not yet published
If the international application has not been published by WIPO then no published specification will be available from the IB via Patentscope. In such a situation the applicant will have to file a copy of the international application themselves in order to enter the national phase early. This usually happens when a s.89 application enters the national phase less than 18 months from the international filing date or priority date.
If the WO specification is due to be published within two months of receipt of the s.89 application the case should be diarised. Once the diary has matured the WO specification should be requested from the IB via Patentscope. Upon receipt of the WO specification the s.89 application may be sent for re-publication in the normal manner. The special early entry footnote 1 should be recorded on COPS using REC FOO.
If the international application is unlikely to be published by WIPO and the WO specification will not be available from the IB for some time then the Formalities Examiner should check whether accelerated processing has being requested. If accelerated processing has not been requested then the Formalities Examiner should set a suitable diary date to mature when the WO specification becomes available. Once the WO specification has been published it may be requested from the IB via Patentscope . Upon receipt the case should be sent for re-publication with special early entry footnote 1.
If the applicant has requested accelerated processing the Formalities Examiner should establish whether accelerated search, examination or grant has been requested and that reasons for accelerated processing have been provided. See also 13.52-53 for PCT (UK) Fast Track procedure.
If the WO specification, international search report (ISR) and international preliminary examination report (IPRP/IPRP) are all available then a minute should be sent to the Examiner to note the accelerated request and for classification. If the Examiner agrees to the request for accelerated processing the application should be sent for re-publication with special early entry footnote 1 and, once published, referred to the Examiner for accelerated action.
If accelerated processing has been requested and the ISR is not available, from the IB then the application should be minuted to the Examiner to establish whether the Examiner agrees to the accelerated processing and that a search under s.17 will be carried out. If the Examiner allows the request then the Formalities Examiner should request an additional fee of £30 to be paid on Form 9A using letter at Annex 13D - Early entry to National phase - Letter.
If the applicant pays the additional search fee then the application should be sent to the Examiner to conduct a search under s.17. Once the search has issued the case may be sent for re-publication with special early entry footnote 2.
If the applicant does not pay the additional fee then the case may be re-published but the accelerated request should be cancelled and the ISR awaited from the IB.
If the Examiner has performed a full search and the international application has been published by WIPO the specification should be republished but with the UK external search report appended. Early entry footnote 2 should be used.
Occasionally a very early entry s.89 application may be filed which requests accelerated processing but the international application has not been published by WIPO and the ISR is not available. If the Examiner agrees to the accelerated processing and the applicant files the additional fee of £30 for a search under s.17 then the case may be published using special early entry footnote 3.
WO publication number
When an early entry s.89 application is received and WO publication has not occurred then no WO publication number is available. In such circumstances Indexing and Scanning Section will input on COPS the words “Not Published” when using the function REC NP1.
When using ADD NP1 the Formalities Examiner should not enter an international publication date for a case recorded as “Not published” by WIPO. When the publication details become available action should be taken on COPS using CHA CAS to enter the international publication number, international publication date and language of publication (Annex 13E - Languages of filing).