4.001. What must be done by the applicant before the start of the national phase? The following acts must be performed (if applicable):
(i) payment of the national fee (see paragraphs 4.005 to 4.007);
(ii) furnishing of a translation, if prescribed (see paragraphs 4.008 to 4.026);
(iii) in exceptional cases (if a copy of the international application has not been communicated to the designated Office under Article 20), furnishing of a copy of the international application, except where not required by that Office (see paragraphs 4.027 and 4.028);
(iv) in exceptional cases (if the name and address of the inventor were not given in the request when the international application was filed, but the designated Office allows them to be given at a time later than that of the filing of a national application), furnishing of the indication of the name and address of the inventor (see paragraphs 4.030 and 4.031).
4.002. There may be acts in addition to those described in paragraph 4.001 which must be performed for the international application to proceed in the national phase, but none of those acts, which are described further below and in the National Chapter relating to each designated Office, has to be performed within the time limit for entering the national phase.
4.003. What are the consequences of failure to perform the acts required for entry into the national phase? The consequences where, on expiration of the applicable time limit for entering the national phase, the required acts have not (all) been performed, are that the international application loses the effect of a national application and the procedure comes to an end in respect of each Office before which they have not (all) been performed. Non-performance of the required acts in respect of one Office does not alter the effect of the international application before the other Offices. The automatic loss of the effect relieves the applicant, where he decides not to pursue the international application in the national phase, of the need to expressly withdraw the international application or the designation or election of a certain State.
4.004. Where the applicant fails to perform the required acts in time, he may ask the designated Office to maintain the effect of the international application and to excuse the delay (see paragraphs 6.022 to 6.027).
4.005. What fees must be paid for entry into the national phase and when? The fees to be paid for entry into the national phase are indicated in each National Chapter (Summary and fees annex). They must be paid in the currencies and within the time limits that are also indicated there. If annual or renewal fees have become due by the time the national phase could start, they must be paid before the expiration of the time limit applicable for entering the national phase. The National Chapters set out this information.
4.006. How can payment of national fees be effected? The fees annex to each National Chapter contains this information.
4.007. Does the applicant have the right to claim the exemption, reduction or refund of national fees? The exemption, reduction or refund of national fees is granted by various designated Offices. Each National Chapter (Summary) contains information on whether fee exemptions, reductions or refunds can be claimed and, if so, under what circumstances and in what amounts.
TRANSLATION OF THE INTERNATIONAL APPLICATION
4.008. In which case must the international application be translated? A translation of the international application must be furnished if the language in which it was filed or published is not a language accepted by the designated Office.
4.009. What is the language into which the international application must be translated? The language or languages prescribed by the designated Offices are given in the National Chapter (Summary) relating to each Office. Where several languages are given, the applicant may choose the language which suits him best. It should be noted that the language in which the translation of the international application is furnished is usually also the language for the whole procedure before the designated Office.
4.010. What must the translation comprise? The translation must comprise a translation of the description (including the title of the invention), of the claims (see paragraph 4.014) and of any text matter in the drawings (see paragraph 4.022), as originally filed and/or as amended (see paragraphs 4.014 to 4.017, 4.019 and 4.020) – each National Chapter (Summary) lists what the translation must comprise for the designated Office concerned. For the translation of the abstract and of the request, see the following paragraphs.
4.011. Does the abstract require translation? Normally the abstract must also be translated, but some Offices do not require a translation for the national phase. The National Chapter (Summary) relating to each Office which requires that the abstract be translated contains an indication to that effect.
4.012. Does the request require translation? The designated Offices have the right to require a translation of the request but most of them do not require it. The National Chapter (Summary) relating to each Office which requires that the request be translated contains an indication to that effect.
4.013. How does the applicant prepare a translation of the request? The usual way of translating the request is to transfer the data contained in the request of the international application as filed to a request form in the language of the translation. Every designated Office that requires a translation of the request is obliged to furnish to the applicant – free of charge – a copy of the request form in the language of the translation. It should be noted that the use of the request form in the language of the translation is optional, so that applicants who do not have such a form may present the translation in a different format.
4.014. Which are the claims that must be translated where the claims have been amended under Article 19? The designated Offices have the right to require a translation of the claims both as originally filed and as amended under Article 19. Each National Chapter (Summary) contains information on the applicable requirements. As to translations of the claims as amended under Article 19 in a case where the international application has been the subject of international preliminary examination, see paragraph 4.019.
4.015. Where a designated Office requires a translation of both the claims as filed and of the claims as amended under Article 19, but the applicant furnishes only one of the required two translations, the designated Office either disregards the claims of which a translation has not been furnished or invites the applicant to furnish the missing translation within a time limit which must be reasonable in the circumstances. If such an invitation is issued but the missing translation has still not been furnished within that time limit, the designated Office may either disregard the claims whose translation is missing or consider the international application withdrawn.
4.016. The procedures outlined in paragraph 4.015 do not apply in all designated Offices. The various National Chapters (Summary) indicate, for each designated Office which requires a translation of both the claims as filed and of the claims as amended under Article 19, whether an invitation is issued where both translations are not filed and what the consequences are if the missing claims are not furnished in response to such an invitation.
4.017. Must any statement explaining amendments made to the claims under Article 19 be translated? This statement must be translated only where required by the designated Office (see the National Chapter (Summary)). Failure to furnish a translation of the explanatory statement has no effect on the international application itself; it can only result in the statement being disregarded by the designated Office.
4.018. Must a reference to deposited biological material be translated? Where such a reference is contained in the description, its translation is part of the translation of the description. Where the reference is not contained in the description but has been furnished on the optional sheet (see International Phase, paragraph 11.075) or in a later communication, a translation must be furnished together with the translation of the international application. Where the applicant fails to furnish the translation of the reference, the designated Office may invite him to do so if it deems necessary.
4.019. What must be translated where the international application has been the subject of international preliminary examination? Amendments to the description, claims or drawings under Article 34 that have been filed with the International Preliminary Examining Authority and have been taken into account for the establishment of the international preliminary report on patentability (Chapter II of the PCT) will be annexed to that report. Any amendments under Article 19 as well as replacement sheets containing rectifications of obvious mistakes authorized under Rule 91.1(b)(iii), will similarly be annexed to the report if they have been taken into account (that is, they will in general not be annexed to the report if they have been superseded by later amendments or considered as reversed by an amendment under Article 34. However, exceptionally where the International Preliminary Examining Authority considers that a superseding or reversing amendment goes beyond the disclosure in the international application as filed, the replacement sheet superseded or reversed by the most recent superseding or reversing amendment will nevertheless be annexed to the report, and the report will contain an indication of this as referred to in Rule 70.2(c)). A translation of the amendments annexed to the report must be furnished together with the translation of the international application within the applicable time limit under Article 39(1).
4.020. If there have been any amendments under Article 19 which are not annexed to the international preliminary report on patentability (Chapter II of the PCT), a translation of those amendments need not be furnished to most elected Offices. A few elected Offices do, however, require translations of amendments under Article 19 even if they are not annexed to the international preliminary report on patentability (Chapter II of the PCT) – see the various National Chapters (Summary) for details.
4.021. Does the translation have to contain drawings? No applicant is required to furnish original drawings to the designated Offices together with the translation of the international application. Offices may require only the furnishing of a copy of the original drawing(s), and few actually do so. The National Chapter (Summary) relating to each designated Office indicates this information. If the copy of the drawings is not furnished within the time limit for entering the national phase, the international application does not lose its effect, but the designated Office invites the applicant to furnish the missing copy.
4.022. How must the translation of text matter in drawings be presented? Where a drawing, a table or the like contains text matter, that text matter must be translated. There are two methods that may be used for the physical presentation of the translated text matter. One is to furnish new sheets of drawings, tables, etc., containing the translated text matter. The other is to paste the translation over the original text matter and to furnish a copy of that sheet. The latter method, however, requires the copy to be of good quality and fit for reproduction by the designated Office. If it is not, the designated Office may invite the applicant to correct the defect. The expression Fig. which is frequently used in drawings does not require translation into any language. If the translation of the text matter of the drawings is not furnished within the time limit for entering the national phase, the international application may lose the effect of a national application.
4.023. What are the physical requirements for the translation? The translation of the international application and any copy of drawings must comply with the physical requirements prescribed by the designated Office. However, no such Office has the right to require compliance with requirements as to the form of the translation of the international application that are different from or additional to those laid down in the PCT and the Regulations for the filing of international applications. Therefore, if the papers furnished to the designated Office comply with the physical requirements for international applications, they must be accepted by that Office. For details of those physical requirements, see International Phase, paragraphs 5.177, 6.032, 6.051 and 11.097.
4.024. In how many copies must the translation be furnished? One copy of the translation is in principle sufficient for entering the national phase. There are some designated Offices, however, that require two or more copies. Where this is the case, it is mentioned in the National Chapter (Summary). If one or more copies are missing, those Offices will give the applicant an opportunity to furnish them once the national phase has started.
4.025. Must the translation be certified? The translation of the international application furnished for entry into the national phase does not need to be certified by a public authority or a sworn translator. However, if later the designated Office reasonably doubts the accuracy of the translation, it may require the applicant to furnish a certification of the translation.
4.026. Must the translation be verified? Verification of a translation means that the translation must be accompanied by a statement signed by the applicant or by the translator, to the effect that, to the best of his knowledge, the translation is complete and faithful. There are only a few designated Offices that require verification. For each such Office, the National Chapter (Summary) contains an indication to that effect and gives further details (including forms).
COPY OF THE INTERNATIONAL APPLICATION
4.027. Must a copy of the international application be furnished by the applicant to the designated Office for entry into the national phase? Under normal circumstances, none of the designated Offices requires a copy of the international application to be submitted by the applicant. There are only a few that do require a copy where the communication by the International Bureau of a copy of the international application under Article 20 has not, or could not yet have, taken place (for details, see the National Chapters (Summary)). That communication is effected by the International Bureau in accordance with Rule 93bis.1 but not prior to the international publication of the international application. The applicant is notified accordingly by means of Form PCT/IB/308 (First notice informing the applicant of the communication of the international application (to designated Offices which do not apply the 30 month time limit under Article 22(1)), and Form PCT/IB/308 (Second and supplementary notice informing the applicant of the communication of the international application (to designated Offices which apply the 30 month time limit under Article 22(1)). When the applicant receives these Forms, he does not have to furnish a copy of the international application to any of the designated Offices, since the notices are accepted by all of them as conclusive evidence that the communication has duly taken place on the date specified in the notice.
4.028. On the other hand, where the applicant makes an express request for early processing of the international application (see paragraphs 2.006 and 3.004) before the communication of the international application has taken place, he must either furnish a copy of the international application, and of any amendment filed under Article 19 with the International Bureau, at the same time as he makes the express request for early processing to the designated Office or request the International Bureau to transmit a copy of his international application to the designated Office in accordance with Article 13(2)(b). The other acts prescribed for entering the national phase must naturally also be complied with.
CHOICE OF CERTAIN KINDS OF PROTECTION
|4.029. The filing of a request constitutes an indication that the international application is, in respect of each designated Office to which Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State. As a result, if the applicant wishes the international application to be treated in a designated Office as an application not for the grant of a patent but for the grant of another kind of protection available for the designated Office, or for the grant of more than one kind of protection, the applicant is required to indicate his choice of protection to the designated Office when performing the acts to enter the national phase. Similarly and within the same time limits, the applicant is required to make such indications also in cases where he wishes the international application to be treated in a designated Office as an application for a patent of addition, a certificate of addition, inventor's certificate of addition, a utility certificate of addition or as a continuation or a continuation-in-part. Although some designated Offices may require the applicant to furnish any such indications at the time the acts referred to in Article 22 or Article 39 are performed, many designated Offices would allow the applicant to furnish such indications or, where applicable, convert from one kind of protection to another, at a later time as provided by national law.|
NAMING OF INVENTOR
4.030. In which case must the name and address of the inventor be indicated for entry into the national phase? If the name or address of the inventor or inventors has not been indicated in the request at the time of filing, that information must be furnished to the designated Offices at the time of entry into the national phase. If such indications are required, most of the designated Offices will invite the applicant to furnish them if he fails to do so on entering the national phase, but some of them will not. Details are given in the National Chapters (Summary).
4.031. The indication of the name and address of the inventor is to be distinguished from other declarations of or concerning the inventor or the invention, etc. The latter are considered "special requirements" (see paragraphs 5.001 to 5.005) which may be complied with after entry into the national phase.
USE OF NATIONAL FORMS
4.032. Is the use of national forms mandatory for entry into the national phase? No applicant may be required to use a national form to perform the acts prescribed for entry into the national phase. Several Offices do, however, keep such forms at the disposal of applicants, and their use is recommended. The National Chapters contain information about existing forms, and the annexes to the Chapters reproduce samples of them.