World Intellectual Property Organization

Chapter 3, International Phase of the PCT Applicant's Guide

CHAPTER 3:  THE “INTERNATIONAL PHASE” AND THE “NATIONAL PHASE ” OF THE PCT PROCEDURE

3.001.   The PCT procedure consists of two main phases.  It begins with the filing of an international application and ends (in the case of a favorable outcome for the applicant) with the grant of a number of national and/or regional patents:  hence the terms “international phase” and “national phase.”  (The expression “national phase” is used even if the Office before which it takes place is a regional Office.)  The expressions “international phase” and “national phase” are not actually used in the PCT, but they are convenient, short expressions which have become customary and are therefore used in this Guide.

3.002.   The international phase, which is the subject of this part of the Guide, consists of five stages.  The first three occur automatically for all international applications and the last two are optional.  The first three steps consist of the filing of the international application by the applicant and its processing by the “receiving Office” (see Annex C), the establishment of the international search report and written opinion by one of the “International Searching Authorities” (see Annex D), and the publication of the international application together with the international search report by the International Bureau of WIPO (hereinafter referred to as “the International Bureau”). The fourth step includes the establishment of a supplementary international search which may be carried out by one or more of the International Searching Authorities (other than the one that carried out the main international search) resulting in the establishment of a supplementary international search report (see Annex SISA). Hereinafter, reference to the “(main) international search” alone does not include reference to the “supplementary international search”, and reference to “international search report” alone does not include reference to “supplementary international search report”, except where otherwise indicated.  The third step includes communication of the published international application and the international search report and, where applicable, the supplementary international search report(s), as well as the international preliminary report on patentability (Chapter I of the PCT), by the International Bureau to the national (or regional) Offices which the applicant wishes to grant him a patent on the basis of his international application (the so-called “designated Offices”).  The communication occurs upon request by the designated Office to the International Bureau.

3.003.   The optional fifth step involves what is known as international preliminary examination (under Chapter II of the PCT), and is concluded with the establishment of the international preliminary report on patentability (Chapter II of the PCT) by one of the “International Preliminary Examining Authorities” (see Annex E).  The international preliminary report on patentability (Chapter II of the PCT) analyzes aspects of the general patentability of the invention.  Together with the published international application, the international search report and any supplementary international search report, the international preliminary report on patentability (Chapter II of the PCT) is communicated to the national (or regional) Offices which the applicant wishes to grant him a patent on the basis of his international application (the so-called “elected Offices”).  The communication occurs upon request by the elected Office to the International Bureau.  International preliminary examination is available subject to certain conditions and qualifications being met;  those are discussed in detail in paragraph 10.005.

3.004.   On completion of the international phase, further action is required before and in each of the national (or regional) Offices which the applicant wishes to grant him a patent on the basis of his international application.  In particular, the applicant has to pay to those Offices 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 (see paragraphs 4.014 to 4.016, 5.005 and 5.006).  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.  The national (or regional) Offices then examine the application and grant or refuse the national (or regional) patent on the basis of their national laws.  (In the PCT and in this Guide, any reference to “national law” is also a reference to a regional treaty such as the ARIPO Harare Protocol, the Eurasian Patent Convention, the European Patent Convention and the OAPI Agreement – see paragraph 2.002.)  These procedures before the national (or regional) Offices constitute what is usually referred to as the “national phase” of the PCT procedure and are considered in that part of this Guide.

3.005.   It is up to the applicant to decide whether and when to enter the national phase before each national (or regional) Office.  The international phase continues, for any particular State, until entry into the national phase before the national (or regional) Office concerned or until the expiration of the applicable time limit for entering the national phase before that Office.  Since the national phase may be entered before different Offices at different times, the international application may simultaneously be in the international phase for some States and the national phase for others.  Where national phase processing or examination has begun before a particular Office, any actions taken on the international application remaining in the international phase have no effect on the proceedings before that Office.

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