PCT NEWSLETTER

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September 2017 | No. 09/2017

 

Practical Advice

Certain national requirements allowed in the national phase

Q:  I am the agent for the international phase of an international application that will enter the national phase soon. I have sent instructions to local agents in the countries of interest to the applicant.  One of those agents has asked me to submit a copy of the application with a certified translation, a copy of the priority document with a translation, and a copy of an assignment document relating to the assignment of rights to my client after the international filing date.  Are these requests legitimate?  Please could you explain what designated Offices are allowed to request from applicants?

A:  It is recalled that the requirements for entry into the national phase under PCT Article 22 are: 

  • transmittal of a copy of the international application when the International Bureau (IB) has not already done this, as provided for in PCT Article 20)
  • a translation thereof (if required by the designated or elected Office (hereinafter:   DO)), and
  • payment of the national fee  (if required by the DO). 

Also, where the national law of the designated State requires the indication of the name of and other prescribed data concerning the inventor but permits the applicant to provide these indications at a time later than upon the filing of the international application, the applicant should, unless they were contained in the request, furnish the said indications to the national Office of or acting for the State. 

Information about the requirements that you mention in your question, as well as other requirements which may need to be met before certain DOs, either upon entry into the national phase or afterwards, is given below.

Copy of the PCT application

DOs notify the IB if and when they wish to receive copies of the published international applications.  Some DOs never require such copies, either from the IB or from the applicant.  In the case of other DOs, the IB will communicate a copy of the international application following international publication or at any later point in time specified by the Office (PCT Article 20(1) and PCT Rules 47.1(c) and 93bis.1;  see also Form PCT/IB308 (First and Second Notice)).  As a result, it is only on an exceptional basis, when the national phase is entered early, that an applicant will ever be required to provide a copy of the international application to specific DOs.

Translation of the application

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 DO.  Note that they may also require the translation of other elements in certain circumstances:

PCT Article 19 amendments:  if the applicant has submitted amendments to the claims under PCT Article 19, the DO may require a translation of the claims, both as originally filed and as amended under PCT Article 19.  It may also require that any statement explaining amendments made to the claims be translated.

PCT Article 34 amendments:  where the applicant has submitted amendments under PCT Article 34 and those amendments have been taken into account for the establishment of the international preliminary report on patentability (Chapter II of the PCT), it is the responsibility of the applicant to furnish a translation of those amendments as annexed to that report.

With regard to translations furnished by the applicant, PCT Article 27(2)(ii) and Rule 51bis.1(d)(i) provide that national laws may require that a translation furnished for national phase entry be verified by the applicant or the person having translated the application. 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/her knowledge, the translation is complete and faithful.  There are, however, only a few DOs that require such verification.

Please note that a DO should not systematically require that a translation of the application be certified.  It is only where the Office reasonably doubts the accuracy of the translation that the national law may require that the translation be certified by a public authority or sworn translator (PCT Rules 51bis.1(d)(ii) and 76.5).

The PCT Applicant’s Guide lists in each National Chapter (Summary), where applicable, what the translation must comprise for the DO concerned.

Priority documents

If you have submitted a priority document during the international phase within the applicable time limit, no DO may require an original priority document from you.  It is the IB that communicates a copy of the priority document to any DO which so requests (PCT Rule 17.2(a)).

A translation of a priority document may be required only in very limited circumstances under PCT Article 27 and Rule 51bis.1(e), that is, where the validity of the priority claim is relevant to the determination of whether the invention is patentable, and in certain cases where the RO has accepted certain pages as incorporated by reference.  It is only in those specific circumstances that a simple translation (not a certified one) may be required (PCT Rules 17.2(a), 51bis.1(e) and 76.4).

Assignment documents

In your case, if the assignment you refer to took place after the international filing date, the DO may indeed require a copy of an assignment document as evidence for your substantive rights in relation to the invention concerned.  In the IB’s view, any such assignment document may be required only in the form of a simple copy, and not in any certified or legalized form.1  Note that some DOs do not require such evidence where the change has been the subject of a request for recording of a change and was reflected in a notification from the IB (Form PCT/IB/306 “Notification of the Recording of a Change”).

Special requirements under PCT Rule 51bis

Requirements of the national law, other than those for national phase entry and to the extent that they are admitted under PCT Article 27, are referred to as “special requirements”. They are specifically listed in PCT Rule 51bis and may still be complied with after entry into the national phase.

For the various DOs, any special requirements are reflected in the Summary of the relevant National Chapters of the PCT Applicant’s Guide.  The Summary indicates whether the DO concerned will invite the applicant to comply with the requirement(s), or if there is no invitation, indicates the time limit for compliance.  Note, however, that the IB cannot guarantee that the National Chapters deal with all questions that could arise, particularly where an Office may have changed one or more of their requirements, but has not yet informed the IB of the change(s).

In accordance with PCT Article 27 and Rule 51bis.1(a)), Offices may generally require:

  • any document relating to the identity of the inventor;
  • any document relating to the applicant’s entitlement to apply for or be granted a patent;
  • any document containing proof of the applicant’s entitlement to claim priority of an earlier application where the applicant is not the applicant who filed the earlier application or where the applicant’s name has changed since the date on which the earlier application was filed;
  • any document containing an oath or declaration of inventorship;
  • any evidence concerning non-prejudicial disclosures or exceptions to lack of novelty, such as disclosures resulting from abuse, disclosures at certain exhibitions and disclosures by the applicant during a certain period of time.

Where the applicant has submitted a declaration complying with PCT Rule 4.17(i) to (iv), DOs may not generally require any document or evidence relating to the subject matter of the declaration concerned, unless it reasonably doubts the veracity of the declaration concerned (PCT Rule 51bis.2).  In the case of a declaration as to non-prejudicial disclosures or exceptions to lack of novelty made under PCT Rule 4.17(v), DOs are, however, always entitled to require further evidence.

You should be aware that, regardless of the requirements of the DO concerned, the national agent may, in any case, wish to have a copy of certain documents so as to have a complete file and be in a better position to advise you during the course of the national phase.  It is therefore preferable, wherever possible, to send a copy of such documents to the national agent where requested.  It may, nevertheless, be useful for you to clarify whether the requested documents are for the agent’s file, or whether they are required by the DO.

For further information on the requirements for entry into the national phase, and for further information on special requirements which may still be complied with after entry into the national phase, see the PCT Applicant’s Guide, National Phase, Chapters 4 and 5, respectively, at:

http://www.wipo.int/pct/guide/en/gdvol2/pdf/gdvol2.pdf

1. PCT Rule 51bis.1(d) provides for the only instance in which the PCT currently allows the national law to require that certain documents undergo any sort of legalization – that is, the requirement that the national phase translation of the international application be certified or verified under certain conditions.  There is no comparable provision for other kinds of documents/evidence, such as assignment documents and powers of attorney.
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