World Intellectual Property Organization

FAQs: Effects of modification of PCT Article 22(1) time limit

How can I find out which States have made notifications that the newly modified Article 22(1) time limit does not apply to them?

Notifications which are made by designated Offices that the 30-month time limit (under modified Article 22(1), with effect from April 1, 2002), does not apply to them due to incompatibility with their current national laws have been announced in Section IV of the PCT Gazette, in the PCT Newsletter and a list on the PCT website. Contracting States had until January 31, 2002 to submit those notifications.

If I designate States which have notified the International Bureau of the incompatibility of their national law with the newly modified 30-month time limit for national phase entry under Chapter I (with the effect that the national phase entry time limit is 20 months from the priority date), and at the same time designate States in relation to which the Chapter I national phase entry time limit is 30 months from the priority date, what is my deadline for entering the national phase--do I have a time limit of 30 months for all of the designated States or do I still have to enter the national phase by 20 months in those designated States which have notified the International Bureau of the national law incompatibility?

If you plan to enter the national phase under Chapter I, you would need to do so before the expiration of 20 months from the priority date in those States which have made notifications to the effect that the modified Article 22 time limit does not apply to them and within 30 months from the priority date in those States in relation to which the Chapter I time limit of 30-months applies. However, you should be aware that if you file a demand for international preliminary examination before the expiration of 19 months from the priority date, you are entitled to take advantage of the 30-month time limit in relation to all of the designated States, as is presently the case.

What does the modification to the Article 22 time limit do to my ability to file a demand for international preliminary examination? When can I file a demand?

Your ability to file a demand does not change as a result of this modification. However, you may want to evaluate whether you want or need to file a demand.

You can file a demand at any time but, as indicated in the answer to question 2, above, in order to take advantage of a national phase entry time limit of at least 30-months from the priority date in relation to all of the States which you designated in your international application, you would need to file a demand before the expiration of 19 months from the priority date.

Since a demand does not have to be filed before the expiration of 19 months from the priority date in order to get the benefit of 30 months from the priority date to enter the national phase (in a State in which the modified Chapter I time limit applies), if I want to file a demand so that I can ensure that I obtain an international preliminary examination report (IPER) in sufficient time to be able to use it in my national phase filing decisions, when should I file it?

In order to increase the likelihood that the IPEA will be able to establish the IPER within a time frame that will enable you to make national phase entry decisions based on it, it is our recommendation that you continue to file your demand as early as possible, taking into account PCT Rule 69 in relation to when international preliminary examination will start and the time limits for establishing the report.

When will all PCT Contracting States have withdrawn their notifications concerning the incompatibility of this change with their national laws?

Unfortunately, that is impossible to predict. The PCT Assembly has recommended that any Contracting State in relation to which the modification to Article 22 is not compatible with the national law take urgent action to amend its law in order to make it compatible so that such notifications can be withdrawn as soon as possible.

In relation to those national and regional Offices which have extended the Chapter II national phase entry time limit (under Article 39(1)(b)) past the 30 months provided for in Article 39(1)(a), (for example, an elected Office in which the national phase entry time limit is 31 months), will that longer time limit be the valid one after April 1, 2002, irrespective of whether a demand has been filed within 19 months or not—that is, for both Chapter I and Chapter II national phase entries?

No. For a Chapter II national phase entry in the case you describe, the applicable time limit would be the one which had been extended under Article 39(1)(b) (for example, 31 months). However, for a Chapter I national phase entry under Article 22(1), the applicable time limit would be 30 months. That is because the recent modification which was agreed to by the PCT Assembly was to the Chapter I time limit in Article 22(1)—from 20 to 30 months. If a Contracting State wishes to extend that 30-month time limit, it will have to notify the International Bureau in accordance with Article 22(3).

Among those countries which have notified the International Bureau of the incompatibility of the modification of the time limit under PCT Article 22(1) with their national law is Luxembourg. Since this country is also bound by the European Patent Convention (EPC) and is included in the regional "EP" designation, when do we have to enter the national/regional phase in relation to Luxembourg—must we separately enter the European regional phase in relation to this country at 20 months from the priority date or is it possible to keep it together with the remaining EPC countries and enter the European regional phase within 31 months from the priority date?

The time limit for national or regional phase entry before the designated Office of or acting for Luxembourg as a PCT Contracting State also party to the EPC depends on whether it is designated in the PCT application for the purposes of a national patent and/or a regional patent. If it is designated in the PCT application for a national patent, then the time limit for national phase entry under Chapter I in that State will be the time limit under Article 22(1) (20 months). If it is designated for the purposes of an "EP" designation, then it benefits from the time limit set by the European Patent Office in its capacity as a designated Office, that is, 31 months from the priority date, which is the time limit as fixed by the EPO under Article 22(3), as from January 2, 2002. If it is designated for both purposes, it is up to you to decide which route to follow.

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