World Intellectual Property Organization

Chapter 6, National Phase of the PCT Applicant's Guide

CHAPTER 6: MISCELLANEOUS QUESTIONS CONCERNING THE NATIONAL PHASE


SUBSTANTIVE CONDITIONS OF PATENTABILITY

Article 27(5)
and (6)
33(5)

6.001.   What is the effect of the PCT on the substantive conditions of patentability applied in the national phase?  The PCT leaves each Contracting State free to determine substantive conditions of patentability.  This is particularly true for what constitutes "prior art." However, since the requirements of prior art as defined in the PCT and its Regulations for the purposes of the international phase are generally as strict as, or stricter than, those defined in any national law, the chances of unpleasant surprises by way of previously uncited prior art references being raised during the national phase are substantially reduced.  On the other hand, the PCT does not prevent any national law from requiring the applicant to furnish, in the national phase, evidence in respect of any substantive condition of patentability in that law.


CORRECTION OF TRANSLATION

6.002.   May the applicant correct errors in the translation of the international application?  Where the translation of the international application contains an error, that error may be rectified, during the national phase, before all designated Offices.

Article 46

6.003.   The scope of the translation of the international application may not, however, exceed the scope of the international application in its original language.  Where, for example, as a result of incorrect translation, the scope of the international application in the language of the translation is narrower than in its original language, that scope may be broadened but must not exceed the original scope.  Where the scope of the translation is broader than that of the international application in its original language, the designated Office or any other competent authority of the designated State may limit accordingly the scope of the international application or of a patent resulting from it.


RESTORATION OF THE RIGHT OF PRIORITY

Rule 49ter.1

6.004.  What are the effects of a decision by a receiving Office to restore the right of priority on designated Offices?  A decision by a receiving Office to restore a right of priority based on the criterion of “due care” will, as a general rule, be effective in all designated Offices, unless the designated Office submitted a notification of incompatibility under Rule 49ter.1(g) (see paragraph 6.005).  A decision by a receiving Office to restore a right of priority based on the criterion of “unintentionality” will be effective only in those designated States the applicable laws of which provided for restoration of the right of priority based on that criterion or on a criterion which, from the viewpoint of applicants, is more favorable than that criterion.  A decision by a receiving Office to refuse to restore the right of priority can always be reviewed by a designated Office (see paragraph 6.006), unless it has submitted a notification of incompatibility under Rule 49ter.1(g), such that restoration is not possible in that jurisdiction.

In addition, a review of a positive decision may be made by a designated Office in the limited situation where it reasonably doubts that one of the substantive requirements for restoration was complied with.  No review is permitted on purely formal grounds, such as, for example, the ground that the relevant fee in the international phase might not have been paid.

Rule 49ter.1(g)

6.005.  What are the consequences of a decision by a receiving Office to restore the right of priority on a designated Office which has made a notification of incompatibility?  Several designated Offices have notified the International Bureau under Rule 49ter.1(g) of the incompatibility of Rule 49ter.1(a) to (d) with the national law applied by that Office.  As a result, these designated Offices will not be obliged to give effect to the decision by a receiving Office to restore the right of priority for the purposes of the procedure before that designated Office as outlined above.  A list of Offices which have notified the International Bureau of incompatibility of their national law with Rule 49ter.1 can be found on WIPO’s website at www.wipo.int/pct/en/texts/reservations/res_incomp.html#R_49ter_1_g.

Rule 49ter.2

6.006.  Can a request to restore the right of priority also be filed directly with a designated Office?  A request to restore the right of priority can also be filed directly with a designated Office once the applicant has entered the national phase before that Office.  An applicant may wish to rely on this opportunity if he could not file a request to restore the right of priority with the receiving Office because of the operation of Rule 26bis.3(j), or obtain the restoration of the priority right on the desired criterion because of the criterion for restoration applied by the receiving Office, or because the receiving Office has refused the request to restore filed with it (see Rule 49ter.1(e)).  Several designated Offices have, however, notified the International Bureau under Rule 49ter.2(h) of the incompatibility of Rule 49ter.2(a) to (g) with the national law applied by that Office.  As a result, these designated Offices will not accept a request to restore the right of priority filed with it.  A list of Offices which have notified the International Bureau of the incompatibility of their national law with Rule 49ter.2 can be found on WIPO’s website at www.wipo.int/pct/en/texts/reservations/res_incomp.html#R_49ter_2_h.

Rule 49ter.2(b)(i)
49ter.2(f)

6.007.  What is the applicable time limit to request restoration of the right of priority with a designated Office?  The time limit for complying with the requirements for requesting the restoration of the right of priority is at least one month from the applicable time limit under Article 22 for entering the national phase, though designated Offices are free to apply longer time limits where permitted under their national law (Rule 49ter.2(f)).  If the designated Office requires the applicant to provide a declaration or evidence in support of the statement of reasons for failure to timely file the international application, it allows the applicant a reasonable time under the circumstances to furnish such documents.

Rule 49ter.2(b)
and (f)

6.008.  How should a request for the restoration of the right of priority be filed with the designated Office?  The request to restore the right of priority must be submitted by way of a letter to the designated Office.

For the request to restore the right of priority to be successful, the following requirements must be met:

– the international application must contain a priority claim to an earlier application and the international application must have been filed within two months from the expiration of the priority period.  If the international application did not contain the relevant priority claim at the time of filing, such a claim must have been added, pursuant to Rule 26bis.1(a) (see International Phase, paragraphs 6.038 to 6.040), before the expiration of the time limit under Rule 26bis.3(e) (Rule 26bis.3(c));

– the request to restore should state the reasons for the failure to file the international application within the priority period (see paragraph 6.010).  The statement of reasons should be drafted in light of the restoration criterion which the applicant seeks to satisfy, from among those applied by the Office (see paragraph 6.009);

– the request must be accompanied by any fee for requesting restoration required by the designated Office (see National Chapter, Annex I for whether a particular designated Office requires such a fee);

– if required by the designated Office and subject to an invitation by the Office, a declaration or other evidence in support of the statement of reasons must be furnished (Rule 49ter.2(c)) (for the applicable time limit, see paragraph 6.007).

Rule 49ter.2(a)
and (f)

6.009.  What are the criteria for restoration applied by the designated Office?  There are generally two criteria for restoration: either the failure to file the international application within the priority period occurred in spite of due care required by the circumstances having been taken or the failure to file the international application within the priority period was unintentional.  All designated Offices to which these Rules are applicable (see paragraph 6.006) must apply at least one of these criteria, or else one more favorable from the point of view of the applicant.  If a designated Office wishes, it may apply both criteria for restoration.

Rule 49ter.2(b)(ii)

6.010.  What needs to be included in the statement of reasons for the request to restore the right of priority?  The statement should indicate the reasons for the failure to file the international application within the priority period.  It should contain all the relevant facts and circumstances which would allow the designated Office to determine that the failure to file the international application within the priority period occurred in spite of due care required by the circumstances having been taken or was unintentional.

Rule 49ter.2(e)

6.011.  Will there be an opportunity to convince the designated Office that it should not refuse the request?  If the designated Office intends to refuse the request for the restoration of the priority claim, it is required to notify the applicant of its intention.  The applicant must be given an opportunity to make observations on the intended refusal within a reasonable time limit, specified in the notification of intended refusal.  Note that this notification may in practice be sent to the applicant together with an invitation to file a declaration or other evidence.


INCORPORATION BY REFERENCE OF MISSING ELEMENTS OR PARTS

Rule 82ter.1

6.012.  Will pages which have been accepted as incorporated by reference by the receiving Office be accepted by the designated or elected Office?  Designated and elected Offices may, to a limited extent, review decisions by receiving Offices which have allowed incorporation by reference (Rule 82ter.1(b)).  If the designated or elected Office finds that the applicant did not comply with its obligation to furnish or arrange for the furnishing of a priority document;  the statement of incorporation was missing or not submitted with the request;  no written notice confirming incorporation by reference was submitted;  no required translation furnished;  or the element or part in question was not completely contained in the priority document, the designated or elected Office may treat the international application as if the international filing date had been accorded on the basis of the date on which the sheets containing the missing elements or parts were submitted, but only after having given the applicant the opportunity to make observations on this outcome and/or to request that, at least, the missing parts which had been furnished be disregarded, in accordance with Rule 82ter.1(d).  Similarly, those designated Offices which have submitted notifications of incompatibility under Rule 20.8(b) (see International Phase, paragraph 6.027) may also treat the international application as if the international filing date had been accorded without the benefit of the incorporation by reference but also only after having given the applicant the opportunity to make observations on this outcome and/or to request that, at least the missing parts which had been furnished be disregarded, pursuant to Rule 20.8(c).


AMENDMENT OF THE INTERNATIONAL APPLICATION FOR THE NATIONAL PHASE

Article 19
28
34(2)(b)
41
Rule 46
52.1
66.1
78

6.013.   May the applicant amend the international application for the national phase?  The PCT guarantees that the applicant may amend the claims, the description and the drawings before any designated Office.  Although he already has had the opportunity to amend the claims in the international phase, he may wish to make further amendments, which may be different for the purposes of the various designated Offices, in the national phase, or he may wish to amend also the description or the drawings (which is not possible during the international phase unless the applicant has made a demand for international preliminary examination).  All designated and elected Offices are obliged to permit such amendments for at least one month from the time when the applicant performs the steps necessary to enter the national phase.  That minimum time limit may be later in certain exceptional circumstances specified in Rules 52.1 and 78.  In any event, most designated and elected Offices permit amendments at any time during the national examination procedure (if applicable).  The National Chapters give additional indications in this respect.

Rule 91.3(f)

6.014.   May the applicant correct obvious mistakes in the international application for the national phase?  Normally, any obvious mistake in the description, claims and drawings may be corrected before the designated Office.  The correction can be presented as an amendment (see paragraph 6.013), provided that the scope of the international application as originally filed is not thereby broadened.

Rule 91.3(e)
and (f)

6.015.  What are the effects of the authorization of an obvious mistake on the designated and elected Offices?  Generally, designated and elected Offices must process the international application in the national phase “as rectified”, unless that designated or elected Office has already started the processing or examination of the international application before the date on which that Office is notified under Rule 91.3(a) by the International Bureau of the authorization of the rectification concerned.  Otherwise, a designated or elected Office may disregard a rectification that was authorized under Rule 91.1 if it finds that it would not have authorized the rectification if it had been the competent authority (see Rule 91.3(f)).  The designated Office may, however, only disregard any rectification that was authorized during the international phase, if it has given the applicant an opportunity to make observations, within a reasonable time limit, on the Office’s intention to disregard the rectification.

6.016.   Where the authorization of rectification has been refused during the international phase and the applicant has made a request for publication under Rule 91.3(d) (see International Phase, paragraph 11.043), he should repeat the request for rectification before each designated Office in a language admitted by that Office.

6.017.   The conditions for allowing the rectification of an obvious mistake depend on the national law and practice applied by the designated Offices.  Applicants are advised to inquire at the Offices concerned regarding the conditions applicable.


REVIEW IN THE NATIONAL PHASE OF CERTAIN DECISIONS MADE DURING THE INTERNATIONAL PHASE

Article 25

6.018.   In which case may a request for review be made?  A review by the designated Office of the following decisions may be requested:

(i) the receiving Office has refused to accord an international filing date to the international application because of certain defects in that application;

(ii) the receiving Office has declared that the international application is considered withdrawn because of certain defects in that application or because of non-payment of the prescribed fees;

(iii) the International Bureau has made a finding that the international application is considered withdrawn because it has not received the record copy within the prescribed time limit.

Article 25(2)(a)

Thus, those decisions that may have been made during the international phase and affect the international application as such are subject to review by each designated Office.  Review by the designated Office consists of an examination to ascertain whether the receiving Office’s refusal or declaration or the International Bureau’s finding was the result of an error or omission on the part of the authority concerned.

6.019.   How may the right to request a review be exercised and when?  In any of the three cases referred to in paragraph 6.018, the applicant must, if he wants the decision to be reviewed,

Article 25(1)(b)

(i) request the International Bureau, under Article 25, to send to each designated Office specified by him a copy of any relevant document in the file;  this request must be in English or French;

Article 25(2)(a)
Rule 51.2

(ii) request each of those designated Offices, separately, to review the decision affecting his international application, giving the facts and evidence indicating an error or omission on the part of the receiving Office or of the International Bureau, as the case may be;  in addition, and at the same time (see paragraph 6.020), the applicant must pay to the said designated Office the national fee for entry into the national phase, and furnish a translation of the international application where required;  for details about fees and required translations, see the National Chapters (Summary);  the request to the designated Office must be in a language accepted by that Office;  where the review requested concerns the refusal to accord an international filing date, the applicant must attach to his request a copy of the notice informing him of the refusal.

Rule 51.1
51.3

6.020.   Both the request to the International Bureau and the request to any designated Office together with any required translation and fee must reach the authority concerned within two months from the date of the notification informing the applicant of the unfavorable decision.

Article 24(2)
25(2)(a)
48(2)

6.021.   What may be the result of a review by the designated Office?  If the applicant has complied with the requirements outlined in the preceding paragraphs, the designated Office will make a finding on whether the decision was justified and, if it finds that it was the result of an error or omission, it must treat the international application as if that error or omission had not occurred, and maintain the effect of the international application as a regular national application as of the international filing date.  If it finds that the decision was not the result of an error or omission, it may nevertheless maintain the effect of the international application under Article 24(2).  The latter may be the case where the decision was the result of failure to meet a prescribed time limit (such as for the furnishing of corrections or the payment of fees);  in such a case, the applicant is advised to request the designated Office not only to review the decision but also to excuse the delay.  Details on the excusing of delays in meeting time limits are given in the following paragraphs.


EXCUSING OF DELAYS IN MEETING TIME LIMITS

Article 48(2)
Rule 82bis

6.022.   Can a delay in meeting a time limit be excused?  A delay in meeting a time limit which has resulted in the international application being considered withdrawn, during either the international phase or the national phase, may be excused under certain circumstances.  The excusing of a delay is understood as any decision which has the effect of the international application being treated as if the time limit had not been exceeded.  The excusing of a delay cannot be requested during the international phase, however.  It may be granted only in the national phase (for delays in both the international phase and the national phase) by each designated Office individually, and only as far as that Office is concerned.  The conditions laid down by the national law of each designated Office are paramount in determining whether a delay must be or may be excused.  All national provisions related to the excusing of delays must be applied to international applications in the same way and under the same conditions as they are to national applications.  Examples of such provisions are those that allow for the reinstatement of rights, restoration, restitutio in integrum, revival of abandoned applications, further processing, continuation of proceedings, and so on.

Rule 82bis.1

6.023.   In respect of which time limits may delays be excused?  The time limits concerned are all those fixed in the PCT (Treaty and Regulations) and also any time limit fixed by a PCT authority and any time limit either fixed by, or in the national law applicable by, the designated Office for the performance of any act by the applicant before that Office, including the time limit for entering the national phase.

Article 48(2)
Rule 49.6
82bis.2

6.024.  What must be done by an applicant who has exceeded the time limit for entering the national phase and/or who failed to perform the acts referred to in Article 22 or 39.1 within the applicable time limit?  Contracting States are required under Rule 49.6 to provide for the possibility to reinstate the rights of the applicant with respect to an international application where the applicant failed to comply with the requirements of Article 22 or 39.1.  Details of this possibility are given in Rule 49.6.  Some Contracting States have notified the International Bureau, under Rule 49.6(f), of the incompatibility of this Rule with their national laws.  A table of such notifications is available on WIPO’s website at: www.wipo.int/pct/en/texts/reservations/res_incomp.html#R_49_6_f.  Once a State has taken the necessary actions to amend its national law, notification of this will be published in the Official Notices (PCT Gazette) and the table will be updated.  Moreover, even if a Contracting State has made a notification under Rule 49.6(f), the applicant is advised to check with the Office concerned whether a system to reinstate rights with respect to an application exists or not.  Some States have made notifications only because their national laws already contain provisions for the reinstatement of rights but these provisions are not in line with the contents of Rule 49.6.  Some States therefore have no procedure in place to reinstate rights with respect to an application whereas others do have such systems, either more or less favorable to the applicant than Rule 49.6.

Article 48(2)
Rule 51.1
51.3

6.025.   What must be done by the applicant who has exceeded a time limit?  The applicant must perform all acts required for entry into the national phase (see paragraphs 4.001 to 4.031).  He must at the same time request the designated Office to excuse the delay and to maintain the effect of the international application before it.  The procedure depends on the national requirements applicable, including any time limit for filing a request to excuse the delay.  Those requirements are indicated in the National Chapter.  Applicants can usually be sure of meeting any such time limit when the request to excuse is made and the acts for entering the national phase are performed either within two months from the date of the notification of the unfavorable decision or within two months from the date on which the time limit (such as the time limit for entering the national phase) expired.

Article 24(2)
48(2)

6.026.   The request for a delay to be excused should be made in addition to, and together with, any request for the review of a decision made by the receiving Office declaring the international application withdrawn for failure to comply with any requirement within a certain time limit (see paragraphs 6.018 to 6.021).  Should the designated Office confirm the decision made by the receiving Office, it may nevertheless maintain the effect of the international application because, under its national law, the delay may be excused in accordance with provisions for the reinstatement of rights, the revival of an abandoned application, the continuation of proceedings or the like.  It should be noted that, as outlined in the preceding paragraphs, the applicant must, before each Office concerned, fulfill all the conditions in the applicable national law, including the making of the request for a delay to be excused within any time limit prescribed by the national law.

Article 48(1)
Rule 82

6.027.   Must the late arrival of a document caused by irregularities in the mail service be excused?  If a time limit fixed in the Treaty or the Regulations is exceeded because of the delayed arrival of a document or letter, it must be excused if it was caused by a delay in the mail or by an interruption of the mail service, provided that sufficient evidence is produced and the mailing was by mail registered with the postal authorities or with any delivery service notified by the designated Office to the International Bureau.  Similarly, and under the same conditions, a new copy of a document or letter may be substituted for a document or letter lost in the mail, provided that the replacement document or letter is proved to be identical with the one lost.  For details, see Rule 82.


RECTIFICATION OF ERRORS MADE BY THE RECEIVING OFFICE OR BY THE INTERNATIONAL BUREAU

Rule 82ter

6.028.   Which errors made by the receiving Office or the International Bureau may be rectified?  If the receiving Office has made an error in according the international filing date or if the priority claim in the request has been erroneously considered by the receiving Office or the International Bureau not to have been made, the designated Office must rectify the error if it is one that it would have rectified in accordance with its national law or national practice had it made the error itself.

6.029.   What must be done to request rectification of such an error and when?  The applicant must request the designated Office to rectify the error and must prove, to the satisfaction of that Office, that the international filing date accorded by the receiving Office is incorrect owing to an error made by the receiving Office, or that a priority claim has erroneously been considered not to have been made by the receiving Office or the International Bureau.  The request should be made on entering the national phase.


ACTS TO BE PERFORMED DURING THE NATIONAL PHASE

6.030.   What has to be done by the applicant once the national phase has started?  The usual national procedure applies to international applications during the national phase.  What is said in the following text and in the National Chapter (Summary) concerns only the acts that must be performed for entry into the national phase and those acts that should be performed on entering the national phase but may still be performed once it has started.  What has to be done thereafter-at least the main procedural steps-is outlined for each designated Office in the relevant National Chapter (Summary).  Applicants who are not familiar with the patent procedure before a certain designated Office should seek professional advice even where they are not obliged to be represented before that Office by an agent.


CORRESPONDENCE WITH AND PAYMENTS TO DESIGNATED OFFICES

6.031.   How should the international application be identified?  All documents sent and all payments of fees to a designated Office (and any letter accompanying such documents or payments) should indicate – if already known – the national serial number given to the international application by the designated Office.  Where the national number is not yet known (or not given), the international application number should be indicated, preferably together with the international filing date, the name of the applicant and the title of the invention.


DEPOSIT OF BIOLOGICAL MATERIAL

6.032.   What are the requirements regarding deposits of biological material?  Annex L contains details of designated Offices’ requirements regarding deposits of biological material.


FURNISHING OF A NUCLEOTIDE AND/OR AMINO ACID SEQUENCE LISTING

Rule 13ter.1(a)
13ter.1(b)
13ter.3
Annex C of the Administrative Instructions

6.033.   What requirements need to be satisfied in relation to the furnishing of a sequence listing?  No designated Office may require that the applicant furnish nucleotide and/or amino acid sequences and the listing of those sequences ("sequence listings") in a format other than that complying with the standard provided for in Annex C of the Administrative Instructions (Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in International Patent Applications under the PCT).  Where the international application contains one or more sequence listings which do not comply with the standard provided for in Annex C of the Administrative Instructions, any designated Office may require that an Annex C compliant sequence listing be furnished.  Designated Offices may also require that an electronic version of a sequence listing be furnished, even if such a listing has been filed as part of the description of an electronically filed international application in an Annex C compliant format, or has been submitted for the purposes of international search under Rule 13ter during the international phase.  This is because the electronic format in which it was filed during the international phase will not necessarily be in a format acceptable to that designated Office.


REQUEST FOR ACCELERATED EXAMINATION PROCEDURE

6.034.   Is an accelerated examination procedure available to all applicants in the national phase?  Where applicants have received a positive international preliminary report on patentability (under Chapter I or II) in respect of their international application, they may request fast-track examination before certain Offices which participate in the Patent Prosecution Highway or offer accelerated examination based on positive PCT work products from other Offices.  For further information see www.wipo.int/pct/en/filing/pct_pph.html.

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