World Intellectual Property Organization

PCT Case Law Database: All Cases

Last updated: February 2012

Total 120 case(s)

Case NameDecision DateJurisdictionAbstractPCT Legal Reference
ABBOTT LABORATORIES v. ALRA LABORATORIES, INC.20-Oct-1997United States of America
(U.S. District Courts)
Attempting to invalidate Plaintiff's patents, Defendant asserted Plaintiff failed to disclose the 'best mode' in their U.S. application, as required under U.S. law. Defendant supplied as support Plaintiff's PCT application, which disclosed a mode different from the U.S. application mode, and the fact that the PCT application mode was better than the U.S. application mode. The court held that, because of the "stringent" requirements of the 'best mode' doctrine and Applicant's statement in the PCT application that the disclosed mode was 'another method', non-inclusion of the PCT application mode in the U.S. application was not a violation of the 'best mode' doctrine.Article 5
The Description
Rule 5
The Description
ADVANCED CARDIOVASCULAR SYSTEMS, INC., v. MEDTRONIC, INC.,.25-Aug-1999United States of America
(U.S. District Courts)
Attempting to invalidate and deem unenforceable several patents held by Plaintiff, Defendant makes reference to a PCT application as a prior art document for application against the patents. This attempt was unsuccessful as the court held the PCT application was only effective as prior art on its publication (date).Article 21
International Publication
Rule 33
Relevant Prior Art for the International Search
Rule 48
International Publication
ALAMAR BIOSCIENCES, INC., v. DIFCO LABORATORIES, INC., et al.,12-Oct-1995United States of America
(U.S. District Courts)
This case relates to whether Defendant had sufficient notice, following the publication and subsequent database availability, of Plaintiff's PCT application, to start the Statute of Limitations on invention misappropriation complaints (under California law). The court held that, because the publication was locatable via the database by a reasonably diligent person, Defendant had constructive notice of Plaintiff's actions with regards to the invention, thus tolling the Statute of Limitations.Article 21
International Publication
Article 50
Patent Information Services
Rule 48
International Publication
ALLOC, INC., v. INTERNATIONAL TRADE COMMISSION10-Sep-2003United States of America
(Federal Circuit)
To further support an interpretation of a claim limitation and the patent specification, the court relied upon the International Preliminary Examination Report (IPER) issued for the parent PCT application. Specifically, the IPER relied upon the limitation when judging the invention to be 'novel'.Article 35
The International Preliminary Examination Report
Rule 66
Procedure before the International Preliminary Examining Authority
ANTIBALLISTIC SECURITY AND PROTECTION INC. v. CANADA (COMMISSIONER OF PATENTS)09-Dec-2008Canada
(Court of Appeals)
The applicant requested the withdrawal of a priority claim in order to extend the period for national phase entry. The request for withdrawal of the priority claim was refused by the International Bureau of WIPO because it was not made within the prescribed 30 month time limit. The applicant attempted to enter the national phase in Canada outside of the national time limit of 42 months by using a Canadian common law concept of “disclaimer” applied to a priority date. The Canadian Commissioner of Patents rejected the notion of a priority right “disclaimer” because it was a concept not prescribed by the PCT or the Canadian patent regime. This decision was upheld by the Canadian Federal Court of Appeal.Article 2
Definitions
Article 8
Claiming Priority
Rule 90bis
Withdrawals
APPLICANT v. EUROPEAN PATENT OFFICE01-Dec-1992European Patent Organisation (EPO)
(Legal Board of Appeals)
The applicant filed an international application with two errors in the priority claims. The application had been published with erroneous information, and so the Receiving Section refused to allow the errors to be corrected, which would have moved the priority date back one day. On appeal, the Board allowed the corrections since they were both clerical and such that they could have been discovered by any third party inspecting the publication documents. The Board held that the application would be granted the earlier priority date, and that the correct priority document could be provided to the International Bureau even though the deadline for doing so had passed.Article 8
Claiming Priority
Article 48
Delay in Meeting Certain Time Limits
Rule 4
The Request (Contents)
Rule 17
The Priority Document
Rule 91
Obvious Errors in Documents
APPLICANT v. EUROPEAN PATENT OFFICE20-Dec-2001European Patent Organisation (EPO)
(Legal Board of Appeals)
The applicant filed an international application with a description and claims written in a language that was not accepted by its chosen receiving office. The error was not corrected until more than a year after the claimed priority date, and so the priority claim was cancelled by the RO. The court held that the RO should have reviewed the documents for filing sufficiency as soon as it received them, and, had it done so, the applicant would have most likely been able to correct the error within the time limit for claiming priority. The court ruled that the EPO as a designated office should have corrected the mistake of the EPO as an RO, awarded the applicant its original filing date, and reinstated its priority claim.Article 2
Definitions
Article 11
Filing Date and Effects of the International Application
Rule 12
Language of the International Application and Translation for the Purposes of International Search and International Publication
Rule 19
The Competent Receiving Office
Rule 20
Receipt of the International Application
Rule 82ter
Rectification of Errors Made by the Receiving Office or by the International Bureau
APPLICANT v. EUROPEAN PATENT OFFICE24-Mar-1995European Patent Organisation (EPO)
(Legal Board of Appeals)
The issue on appeal was whether the IPEA had misinterpreted certain elections made in a demand under the Chapter II procedure.Article 48
Delay in Meeting Certain Time Limits
Rule 53
The Demand
APPLICANT v. EUROPEAN PATENT OFFICE07-Jul-1981European Patent Organisation (EPO)
(Legal Board of Appeals)
The EPO Legal Board of Appeals confirmed that PCT applicants may utilize and benefit from provisions under the European Patent Convention, in this case, the payment of designation fees after expiry of the prescribed time limit.Article 48
Delay in Meeting Certain Time Limits
APPLICANT v. EUROPEAN PATENT OFFICE22-Nov-2002European Patent Organisation (EPO)
(Legal Board of Appeals)
An applicant filed a letter meant to be a request for immediate entry into the regional phase before the EPO. This letter was followed by a withdrawal of the applicant’s priority claims. Since the letter was not an express entry request made in accordance with Article 40(2) PCT, the Examining Division found that the withdrawal was effective for the EPO. This decision was reversed by the Board of Appeal, which found that Rule 82ter PCT applied by analogy. Since the withdrawal itself was improper by not being unambiguous, the priority claim was ruled to have never been withdrawn.Article 22
Copy, Translation, and Fee, to Designated Offices
Article 23
Delaying of National Procedure
Article 39
Copy, Translation, and Fee, to Elected Offices
Article 40
Delaying of National Examination and Other Processing
Rule 82ter
Rectification of Errors Made by the Receiving Office or by the International Bureau
Rule 90bis
Withdrawals
APPLICANT v. EUROPEAN PATENT OFFICE25-Sep-1984European Patent Organisation (EPO)
(Legal Board of Appeals)
The European regional phase was withdrawn for failure to meet the time limit to pay fees.Article 23
Delaying of National Procedure
Article 40
Delaying of National Examination and Other Processing
APPLICANT v. EUROPEAN PATENT OFFICE23-Jul-1982European Patent Organisation (EPO)
(Legal Board of Appeals)
The Board decided on the consequences of not making fee payments within the time periods prescribed by PCT Article 22(1).Article 22
Copy, Translation, and Fee, to Designated Offices
APPLICANT v. EUROPEAN PATENT OFFICE30-Nov-1981European Patent Organisation (EPO)
(Legal Board of Appeals)
Applicant filed an international application, and then filed a European application claiming priority of the international one. Applicant sought a reduction in the search fee due to the previously completed international search report. On appeal, the Board found that there was no basis for treating a European application like an international one, since international applications are the only ones eligible for the fee reduction. The request for reduction was denied.Article 2
Definitions
APPLICANT v. EUROPEAN PATENT OFFICE13-Feb-1985European Patent Organisation (EPO)
(Legal Board of Appeals)
This case was consolidated with Case No. J 0009/83. Applicant filed an international application designating the EPO. After receiving the supplementary European search report the applicant decided to withdraw its application and requested a refund of the examination fee. On appeal, the Board found that Article 96 EPC gave direct European applicants the ability to withdraw their applications after receiving the European search report without having to pay the examination fee. The Board thus found that based on Article 150(3) EPC, and the fact that the examination section never had responsibility for this application, the applicant should have had the opportunity to withdraw the application after receiving the supplementary European search report. A refund of the examination fee was ordered.Article 18
The International Search Report
Article 23
Delaying of National Procedure
Article 40
Delaying of National Examination and Other Processing
APPLICANT v. EUROPEAN PATENT OFFICE13-Feb-1985European Patent Organisation (EPO)
(Legal Board of Appeals)
The EPO Legal Board of Appeal decided that the examination fee may be refunded when a “Euro-PCT” application is withdrawn after receipt of the supplementary European search report.Article 23
Delaying of National Procedure
Article 40
Delaying of National Examination and Other Processing
APPLICANT v. EUROPEAN PATENT OFFICE01-Dec-1991European Patent Organisation (EPO)
(Legal Board of Appeals)
Applicant filed an international application designating the EPO and claiming no priority. Realizing the error a few months later, applicant requested correction of the application to include a priority claim. After entering the regional phase the Receiving Section refused the correction and the applicant appealed. The Board found that a request to correct a mistake under Rule 88 EPC should be made early enough to include a warning of a pending correction request with the international publication. An appropriate warning was published and the correction was permitted.Article 21
International Publication
Article 25
Review by Designated Offices
Article 27
National Requirements
Rule 91
Obvious Errors in Documents
APPLICANT v. EUROPEAN PATENT OFFICE29-Feb-1984European Patent Organisation (EPO)
(Legal Board of Appeals)
Applicant filed an international application designating the EPO but failed to pay the national fee, the search fee, or the designation fee upon entering the regional phase. He subsequently requested a re-establishment of his rights after paying the fees. The Receiving Section denied the request. The Board upheld the decision of the Receiving Section finding that the applicant had not exercised “all due care” under Article 122 EPC.Article 22
Copy, Translation, and Fee, to Designated Offices
APPLICANT v. EUROPEAN PATENT OFFICE11-Jun-1981European Patent Organisation (EPO)
(Legal Board of Appeals)
A priority claim based on an industrial design for a subsequent European application was denied by the Receiving Section; the applicant appealed. The Board rejected the appeal, finding that Article 87 EPC did not allow for a priority claim based on an industrial design. Additionally, the Board found that Article 4 of the Paris Convention did not suggest that an industrial design should be the basis of a priority claim since a design discloses the look of an invention, not the invention itself.Article 1
Establishment of a Union
Article 2
Definitions
Article 8
Claiming Priority
Rule 4
The Request (Contents)
APPLICANT v. EUROPEAN PATENT OFFICE16-Dec-1992European Patent Organisation (EPO)
(Legal Board of Appeals)
The applicant filed an international application, and after the expiry of the 19 month time limit to do so the applicant submitted a demand for international preliminary examination and a request for a re-establishment of rights, arguing that the examination fee paid at the time of filing should be viewed as an implicit demand for an international preliminary examination. The EPO, acting as the International Preliminary Examination Authority, found that there were no grounds to re-establish the applicant’s rights and refused the demand. On appeal, the Board found that there was no jurisdiction for it to consider the case.Article 31
Demand for International Preliminary Examination
Article 34
Procedure Before the International Preliminary Examining Authority
Rule 40
Lack of Unity of Invention (International Search)
Rule 68
Lack of Unity of Invention (International Preliminary Examination)
APPLICANT v. EUROPEAN PATENT OFFICE15-Dec-1997European Patent Organisation (EPO)
(Legal Board of Appeals)
Applicant filed an international application designating several EPC Contracting States for national protection but without any check mark in the box signifying a desire for a European patent. The Board found that Article 4(1) PCT and Article 153(1) EPC, in the forms in force at the time of filing, required that any designation for a European patent occur at the time of filing.Article 4
The Request
Article 27
National Requirements
Article 45
Regional Patent Treaties
Rule 4
The Request (Contents)
Rule 91
Obvious Errors in Documents
APPLICANT v. EUROPEAN PATENT OFFICE24-Mar-1986European Patent Organisation (EPO)
(Legal Board of Appeals)
Applicant filed a European patent application by facsimile, then sent the original by mail. The facsimile version arrived before the expiration of the priority period; the mailing only arrived after. The Receiving Section considered the date of receipt of the original by mail to be the filing date and therefore the priority claim was rejected. The Board reversed, finding that Article 75(1)(b) EPC allows regional applications to be given as their filing date the date the application is received by the office of a Contracting State.Article 11
Filing Date and Effects of the International Application
Rule 92
Correspondence
APPLICANT v. EUROPEAN PATENT OFFICE27-Nov-1989European Patent Organisation (EPO)
(Legal Board of Appeals)
Applicant filed an international application, made a demand for international preliminary examination by facsimile, and sent the original by mail. The original was lost in transit, and the EPO, acting as the appointed IPEA but neither a designated or elected Office, informed the applicant that the demand would not be accepted. The applicant appealed, but the Board determined that there was no jurisdiction to hear the appeal.Article 17
Procedure Before the International Searching Authority
Article 34
Procedure Before the International Preliminary Examining Authority
Article 39
Copy, Translation, and Fee, to Elected Offices
Article 48
Delay in Meeting Certain Time Limits
APPLICANT v. EUROPEAN PATENT OFFICE24-Mar-1986European Patent Organisation (EPO)
(Legal Board of Appeals)
Applicant filed a European patent application by telecopier, then sent the original by mail. The telecopier version arrived before the expiration of the priority period; the mailing only arrived after. The Receiving Section considered the date of receipt of the original by mail to be the filing date and therefore the priority claim was rejected. The Board reversed, finding that Article 75(1)(b) EPC allows regional applications to be given as their filing date the date the application is received by the office of a Contracting State.Article 11
Filing Date and Effects of the International Application
Rule 92
Correspondence
APPLICANT v. EUROPEAN PATENT OFFICE09-Nov-1987European Patent Organisation (EPO)
(Legal Board of Appeals)
Applicant, a Japanese company, filed an international application at the Japanese Patent Office in Japanese requesting a European patent. The applicant neither furnished a translation into English nor paid the requisite fees in time to enter the regional phase. The applicant applied for restitutio in integrum, arguing both that due to an error at the post office it never received the mailings from the EPO indicating the deadlines for entering the regional office. The Board determined that the there were no grounds for restitutio in integrum, finding that it is the responsibility of the applicant to be aware of the deadlines.Article 22
Copy, Translation, and Fee, to Designated Offices
APPLICANT v. EUROPEAN PATENT OFFICE23-Aug-1994European Patent Organisation (EPO)
(Legal Board of Appeals)
While entering the regional phase before the EPO, the applicant failed to file a translation of the application into an acceptable language for the EPO. After being notified by the Receiving Section that the application was being considered withdrawn because of this oversight the applicant requested a re-establishment of rights under Article 122 EPC (due care). The Receiving Section denied this request and the applicant appealed. The Board reversed this decision on the basis that the applicant had in fact exercised due care.Article 22
Copy, Translation, and Fee, to Designated Offices
APPLICANT v. EUROPEAN PATENT OFFICE03-Jun-1991European Patent Organisation (EPO)
(Legal Board of Appeals)
Applicant filed an international application requesting a European patent for all countries for which it was possible to seek one at the time and a national patent in Denmark. In the period between the filing and the deadline for entering the national phase the EPC came into force in Denmark. Applicant then entered the regional phase and included a designation and fee for Denmark. The Receiving Section refused the additional designation for Denmark as the EPC was not in effect there at the time of filing. The refusal was upheld by the Board.Article 4
The Request
APPLICANT v. EUROPEAN PATENT OFFICE30-Oct-1991European Patent Organisation (EPO)
(Legal Board of Appeals)
Applicants submitted an international application requesting a European patent (Euro-PCT application). A European application was subsequently submitted claiming priority of the Euro-PCT application. The fees for entry into the regional phase were not paid in time, and the PCT application was considered withdrawn. Applicants requested restitutio in integrum for the PCT application and that the European application be recognized as having performed certain procedural steps necessary for the PCT application to enter the regional phase. This was rejected by the Board on appeal.Article 22
Copy, Translation, and Fee, to Designated Offices
Rule 49
Copy, Translation and Fee under Article 22
APPLICANT v. EUROPEAN PATENT OFFICE21-May-1987European Patent Organisation (EPO)
(Legal Board of Appeals)
Applicant filed a Euro-PCT application. The EPO examination fees were not paid within the prescribed time limit. The Receiving Section deemed the European application withdrawn. This decision was upheld by the Board on appeal.Article 27
National Requirements
APPLICANT v. EUROPEAN PATENT OFFICE29-Apr-1993European Patent Organisation (EPO)
(Technical Board Appeals)
The EPC is closely linked to the PCT, with which it was harmonized even while it was being drawn up. If a citation, which is partly written in a programming language, is available to the European Patent Office at the search or examination stage, and the Office is equipped to perform such a search or examination, the PCT cannot in the Board's view prevent the Office from considering that citation.Rule 39
Subject Matter under Article 17(2)(a)(i)
Rule 67
Subject Matter under Article 34(4)(a)(i)
APPLICANT v. EUROPEAN PATENT OFFICE25-Jul-2000European Patent Organisation (EPO)
(Technical Board Appeals)
The claims of the application were amended during the preliminary examination of the application under the PCT. The question of inventive step was raised by the Examining Division in the official communication pursuant to Article 96 (2) and Rule 51 (2) EPC when referring to the IPER (International Preliminary Examination Report under the PCT). Since, however, it merely mentioned that document (1) was relevant to the assessment of inventive step and that the problem underlying the present invention could have been solved in an obvious way, the Board cannot consider that an extensive examination of this issue was performed by the first-instance department.Article 34
Procedure Before the International Preliminary Examining Authority
Article 35
The International Preliminary Examination Report
Rule 70
International Preliminary Report on Patentability by the International Preliminary Examining Authority (International Preliminary Examination Report)
APPLICANT v. EUROPEAN PATENT OFFICE16-Mar-2000European Patent Organisation (EPO)
(Technical Board Appeals)
The international preliminary examination report (IPER) cited only one prior art reference. In the subsequent regional phase, the EPO elected Office (EO/EP) issued an office action containing two prior art references. The Board gave their opinion on this situation.Article 35
The International Preliminary Examination Report
Rule 70
International Preliminary Report on Patentability by the International Preliminary Examining Authority (International Preliminary Examination Report)
APPLICANT v. EUROPEAN PATENT OFFICE12-Sep-2002European Patent Organisation (EPO)
(Technical Board Appeals)
The Board said that an IPER established by an International Preliminary Examining Authority other than the EPO can be cited, provided that it constitutes a reasoned statement as required by Rule 51(3) EPC. The Board determined that the IPER established by the USPTO in this particular instance did not constitute a reasoned statement.Article 35
The International Preliminary Examination Report
Rule 70
International Preliminary Report on Patentability by the International Preliminary Examining Authority (International Preliminary Examination Report)
APPLICANT v. EUROPEAN PATENT OFFICE05-Jun-1984European Patent Organisation (EPO)
(Examining Division)
Applicant's request to maintain his international application in a designated office following withdrawal by the receiving office was permitted. This was based on PCT Rule 51.1 and 51.3.Article 14
Certain Defects in the International Application
Article 24
Possible Loss of Effect in Designated States
Article 25
Review by Designated Offices
Article 48
Delay in Meeting Certain Time Limits
Rule 26
Checking by, and Correcting before, the Receiving Office of Certain Elements of the International Application
Rule 51
Review by Designated Offices
APPLICANT v. EUROPEAN PATENT OFFICE12-Jun-1987European Patent Organisation (EPO)
(Board for Appeal)
The Board of Appeal decided that a protest was inadmissible because it was filed after the expiry of the prescribed time limit.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE14-Nov-1997European Patent Organisation (EPO)
(Board for Appeal)
Protest of the payment of an additional search fee. Appeal of the decision by the IPEA on lack of unity of invention. Protest was unjustified.Article 34
Procedure Before the International Preliminary Examining Authority
Rule 13
Unity of Invention
Rule 68
Lack of Unity of Invention (International Preliminary Examination)
APPLICANT v. EUROPEAN PATENT OFFICE28-Feb-1992European Patent Organisation (EPO)
(Board for Appeal)
Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. Protest was unjustified.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE09-Apr-2001European Patent Organisation (EPO)
(Board for Appeal)
Protest of the payment of an additional search fee. Appeal of the decision by the IPEA on lack of unity of invention. Protest was only partly justified.Article 34
Procedure Before the International Preliminary Examining Authority
Rule 13
Unity of Invention
Rule 68
Lack of Unity of Invention (International Preliminary Examination)
APPLICANT v. EUROPEAN PATENT OFFICE25-Nov-1987European Patent Organisation (EPO)
(Board for Appeal)
The Board of Appeal is of the opinion that the features of Claims 2-10 are interwoven with those of Claim 1 to such an extent that even when the subject-matter of Claim 1 or of Claim 1 and some other claims were known, that is not novel, the remaining claims would not fall apart in different subject-matters, which could be considered as constituting independent inventions in a meaningful way. All the three inventions according to the three sets of claims, therefore, not only exhibit unity of invention a priori, but also a posteriori. Thus, the requirement of Rule 13(1) PCT is met. The invitation to pay additional search fees was not justified.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE03-Jun-2003European Patent Organisation (EPO)
(Board for Appeal)
Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. Protest was justified.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE29-Nov-1994European Patent Organisation (EPO)
(Board for Appeal)
Protest of the payment of an additional search fee. Appeal of the decision by the IPEA on lack of unity of invention. Protest was unjustified for lack of a reasoned statement.Article 34
Procedure Before the International Preliminary Examining Authority
Rule 13
Unity of Invention
Rule 68
Lack of Unity of Invention (International Preliminary Examination)
APPLICANT v. EUROPEAN PATENT OFFICE10-Dec-2001European Patent Organisation (EPO)
(Board for Appeal)
Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. Protest was unjustified.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE02-May-2002European Patent Organisation (EPO)
(Board for Appeal)
As the unifying concept underlying the present claims lacks novelty, "a special technical feature" in the sense of Rule 13.2 PCT no longer links the claims together. Under these circumstances, the claims related to a plurality of inventions, each being in relation to a different solution for a different or alternative technical problem. The Board found that the invitation to pay the additional fees was justified.Article 34
Procedure Before the International Preliminary Examining Authority
Rule 13
Unity of Invention
Rule 68
Lack of Unity of Invention (International Preliminary Examination)
APPLICANT v. EUROPEAN PATENT OFFICE20-Oct-1999European Patent Organisation (EPO)
(Board for Appeal)
The fact that a single document discloses all the claimed subject matters is a very strong indication that there is a technical relationship between them, such that, in these circumstances, no invitation to pay further examination fees may be issued.Article 34
Procedure Before the International Preliminary Examining Authority
Rule 13
Unity of Invention
Rule 68
Lack of Unity of Invention (International Preliminary Examination)
APPLICANT v. EUROPEAN PATENT OFFICE29-Jun-1989European Patent Organisation (EPO)
(Board for Appeal)
The Enlarged Board of Appeal was asked to clarify whether a substantive examination in respect of novelty and inventive step is necessary in situations where there is lack of unity.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 33
Relevant Prior Art for the International Search
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE11-Apr-1988European Patent Organisation (EPO)
(Board for Appeal)
The additional search fees and the protest fee must be paid in the allotted timeframe. Failure to due so will lead to a denial of the protest.Article 17
Procedure Before the International Searching Authority
Article 40
Delaying of National Examination and Other Processing
Article 48
Delay in Meeting Certain Time Limits
Rule 40
Lack of Unity of Invention (International Search)
Rule 82bis
Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits
APPLICANT v. EUROPEAN PATENT OFFICE27-Jan-1992European Patent Organisation (EPO)
(Board for Appeal)
The ISA has a duty, where lack of unity has become apparent a posteriori, to carry out a comprehensive search for all the inventions, provided the additional time required is minimal. It is a matter for the ISA to decide whether the time required for a complete search is negligible. Since in the present case the execution of a search, which might be considered comprehensive, presupposes further searches, the Board has no reason to doubt that the ISA exercised its judgment correctly. Thus, the Board denied the protest against the invitation for additional fees.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE29-Nov-1989European Patent Organisation (EPO)
(Board for Appeal)
The invitation to pay an additional search fee was not justified because the application complied with PCT Rule 13. The additional fee was thus returned to applicant.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE06-May-1992European Patent Organisation (EPO)
(Board for Appeal)
The protest against the payment of additional ISA search fees was denied because the comment that "in our view the claims do not lack unity" is only an unsubstantiated assertion, and cannot be regarded as a reasoned statement within the meaning of Rule 40.2.(c) PCT as it does not give any reasons showing why the applicants take that view.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE14-Apr-1989European Patent Organisation (EPO)
(Board for Appeal)
The invitation by the ISA to pay additional search fees was unjustified for lack of reasoning and proper legal basis.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE14-Feb-2002European Patent Organisation (EPO)
(Board for Appeal)
Protest against the payment of additional search fees was deemed justified because, in the invitation, the argument supporting the additional fees included a paraphrase of a claim. The paraphrase led to an incorrect interpretation of the claim.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE30-Sep-2003European Patent Organisation (EPO)
(Board for Appeal)
Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. Protest was justified.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE10-Feb-1992European Patent Organisation (EPO)
(Board for Appeal)
Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. Protest was justified.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE12-Nov-2001European Patent Organisation (EPO)
(Board for Appeal)
The protest against the payment of additional ISA search fees was determined justified, because the invitation contained no reasoning as to why the documents cited in the international search report destroy novelty of the claims that were searched. Further, the posteriori objection of lack of unity was not justified.Article 17
Procedure Before the International Searching Authority
Article 33
The International Preliminary Examination
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
Rule 64
Prior Art for International Preliminary Examination
APPLICANT v. EUROPEAN PATENT OFFICE09-Nov-1990European Patent Organisation (EPO)
(Board for Appeal)
Two additional search fees were charged in response to a lack of unity determination. The Board reiterated a lack of unity of invention may become apparent a posteriori, i.e. after taking the prior art into consideration, e.g. a document discovered in the international search shows that there is lack of novelty in a main claim, leaving two or more dependent claims without a single general inventive concept. The Board held one additional search fee requirement to be justified and one to be unjustified.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE14-Sep-1992European Patent Organisation (EPO)
(Board for Appeal)
The Boards of Appeal declined to consider Applicant's protest against payment of additional fees for searching because the statement was not considered sufficiently "reasoned".Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE07-Nov-1990European Patent Organisation (EPO)
(Board for Appeal)
Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. Protest was justified because invitation was issued improperly.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE07-Nov-1990European Patent Organisation (EPO)
(Board for Appeal)
The Board held that searching in separate classification units for the dependant claims, because the novelty or inventive step of the main claim is questionable, is normal practice and does not as such justify the charging of additional search fees for the International Searching Authority.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE14-Apr-1989European Patent Organisation (EPO)
(Board for Appeal)
In ordering the refund of additional search fees to applicant, the Boards of Appeal held that because the invitation issued by the ISA did not allow applicant to determine whether it was proper or not, on its face, it was in violation of Rule 40.1 of the PCT and thus lacked legal effect.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE19-Feb-1992European Patent Organisation (EPO)
(Board for Appeal)
The issuance of two invitations to pay additional fees, resulting from a lack of unity of invention determination, was procedurally incorrect because the second invitation, cancelling the first invitation, was outside the allowable time limit for an ISA to deliver such an invitation. The additional fees were thus reimbursable to the applicant.Article 17
Procedure Before the International Searching Authority
Article 18
The International Search Report
Rule 40
Lack of Unity of Invention (International Search)
Rule 42
Time Limit for International Search
APPLICANT v. EUROPEAN PATENT OFFICE09-Apr-1992European Patent Organisation (EPO)
(Board for Appeal)
The Boards of Appeal, in rejecting Applicant's protest to a lack of unity of invention rejection, set forth that because the two inventions are classified in different international patent classification units, a separate search would be required for each invention. Therefore, the claims lacked unity of invention.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE22-Mar-1991European Patent Organisation (EPO)
(Board for Appeal)
Applicant filed a protest following a lack of unity of invention determination. The lack of unity of invention was upheld because the two independent claims failed to contain a single inventive concept that links the two subject matters.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
APPLICANT v. EUROPEAN PATENT OFFICE 21-Sep-2009European Patent Organisation (EPO)
(Board for Appeal)
Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. The protest was justified because the multiple inventions were conceptually very close and the international search could be carried out with negligible additional effort.Article 6
The Claims
Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 40
Lack of Unity of Invention (International Search)
ARCHIBALD KENRICK & SONS LTD.'s international application22-Jul-1994United Kingdom
(Queen's Bench Division)
Applicant's PCT application failed to reach the United Kingdom (UK) Patent Office within the priority period due to a delay by the mail service. The court, applying PCT Articles and Rules, held this type of delay does not qualify as an "interruption" to justify an excuse for the arrival delay of the application. In applying PCT law as opposed to UK law, the court asserted that as the UK Office was serving as the PCT receiving office, PCT law should apply.Article 11
Filing Date and Effects of the International Application
Article 48
Delay in Meeting Certain Time Limits
Rule 82
Irregularities in the Mail Service
ARISTOCRAT v. IGT22-Sep-2008United States of America
(Federal Circuit)
The Court of Appeals reversed the judgment of the District Court that a patent, granted from a national filing of a PCT application, is held invalid because it was improperly revived after it was abandoned during prosecution. The Court of Appeals held that “improper revival” is not a cognizable defense in an action involving the validity or infringement of a patent.
ASM AMERICA, INC., Plaintiff, v. GENUS, INC.,15-Aug-2002United States of America
(U.S. District Courts)
In a dispute involving claim construction, Plaintiff's attempt at supporting their interpretation of a (claim) limitation via a PCT Authority's written opinion (receiving office, U.S.) was unsuccessful. While acknowledging the opinion of the Authority, the court did not lend weight to it for lack of a written analysis.Article 18
The International Search Report
Rule 43bis
Written Opinion of the International Searching Authority
ASTRAZENECA v. EUROPEAN PATENT OFFICE 21-Sep-2009European Patent Organisation (EPO)
(Legal Board of Appeals)
The EPO Enlarged Board of Appeal asked whether priority could be claimed from a non-Paris Convention country and whether the TRIPS Agreement could provide support for a claim to priority from a State not member of the Paris Convention. Article 1
Establishment of a Union
Article 8
Claiming Priority
Rule 4
The Request (Contents)
AUGUSTO ODONE v. CRODA INTERNATIONAL PLC.15-Jan-1997United States of America
(U.S. District Courts)
The international filing date is considered the U.S. national filing date with 35 USC 102(e) exceptions (circa. 1997).Article 11
Filing Date and Effects of the International Application
BAXTER INTERNATIONAL, INC., v. MCGAW, INC.30-Jun-1998United States of America
(Federal Circuit)
The court held that a PCT publication is a public document, suitable for use as a prior art that can be used against the PCT applicant if it is published more than 1 year before the filing of the applicant's U.S. national application. Here, applicant was unable to invoke a priority date due to not meeting the minimum National statutory filing requirements necessary to secure the earlier date, which was ahead of the PCT publication date.Article 21
International Publication
Article 29
Effects of the International Publication
Article 50
Patent Information Services
Rule 48
International Publication
BIACORE v. THERMO BIOANALYSIS CORP.,30-Dec-1999United States of America
(U.S. District Courts)
The international publication of a PCT application within a family of patents was used for claim scope interpretation in a U.S. patent.Article 21
International Publication
Article 29
Effects of the International Publication
Rule 48
International Publication
BROADCAST INNOVATION, L.L.C. and IO RESEARCH PTY LTD. v. CHARTER COMMUNICATIONS, INC. and COMCAST CORPORATION19-Aug-2005United States of America
(Federal Circuit)
The Court of Appeals for the Federal Circuit (CAFC) reversed a district court’s determination regarding the invalidity of a priority claim to a PCT application. The district court had determined that a priority claim should be based on the U.S. filing date. The priority claim was deemed invalid because it was outside of the 12-month priority period. The CAFC reversed this ruling and confirmed that the international filing date of a PCT application is also the U.S. filing date for the corresponding national stage application, resulting in an earlier effective filing date within the 12-month priority period.Article 8
Claiming Priority
Article 11
Filing Date and Effects of the International Application
CARLOS ALBERTO PEREZ LAFUENTE V. UNION OF INDIA AND OTHERS23-Sep-2011India
(Court of Appeals)
The High Court of Delhi has set aside an order by the patent office treating a PCT application entering the national phase in India as withdrawn because the request for examination was made too late. A request for examination has to be filed within 48 from the date of priority or date of filing, whichever expires earlier (according to Rule 24B(1)(i) of the Indian Patent Rules), respectively whichever expires later (according to the PCT Guidelines IN 09). The applicant argued that there was a conflict between the Rules and the Guidelines, and thus confusion, when the request for examination has to be filed. The Court directed the patent office to reconsider the patent application.Article 8
Claiming Priority
Article 22
Copy, Translation, and Fee, to Designated Offices
Article 27
National Requirements
Article 48
Delay in Meeting Certain Time Limits
Rule 82bis
Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits
CATERPILLAR TRACTOR CO. v. COMMISSIONER OF PATENTS AND TRADEMARKS29-May-1986United States of America
(U.S. District Courts)
In implying its understanding based on national law of the unity of invention requirement, the court held the Office in violation of Article 27 of the PCT. The interpretation of the standard must be in line with the PCT's interpretation.Article 27
National Requirements
Rule 13
Unity of Invention
CHRISTOPHER J. STEVENS v. SHIGERU TAMAI04-May-2004United States of America
(Federal Circuit)
Applicant failed to prove his entitlement to the benefit of a PCT application. Therefore the USPTO Board of Patent Appeals and Interferences erred in awarding the applicant the benefit of the priority application, as the applicant had failed to file a translation of the PCT application within the prescribed time limit.Article 20
Communication to Designated Offices
Article 22
Copy, Translation, and Fee, to Designated Offices
DAVID A. KOSOWER v. HOWARD GUTOWITZ, EATONI ERGONOMICS, INC. and EATONI ERGONOMICS, LLC18-Nov-2001United States of America
(U.S. District Courts)
Jurisdiction of a U.S. district court over the inventorship of a PCT application.Article 4
The Request
Rule 4
The Request (Contents)
DR. CHACKO P. ZACHARIAH v. COMMISSIONER OF PATENTS AND TRADEMARKS and UNITED STATES ATTORNEY GENERAL08-Aug-2000United States of America
(Federal Circuit)
The Court supported the U.S. Patent Office's rejection of inventor's oath due to the fact that the U.S. national application was different from the PCT application. The support was given due to the fact that the submitted oath did not satisfy 35 U.S.C. sec. 371(c)(4).Article 27
National Requirements
DURECT CORPORATION V. UNION OF INDIA01-May-2011India
(Court of Appeals)
The High Court of Delhi has held that a request for condonation of delay of a late national phase entry of a PCT application has to be taken on record by the patent office, that the applicant has to be heard, that the patent office has to consider the reasons provided for the delay, and that a reasoned decision has to be issued by the patent office. Durect Corporation’s PCT application, claiming priority from a former US application, was filed under the National Phase in India, eight months after the 31 month period for national phase entry had expired. The Patent Office of New Delhi refused to accept the application. Durect filed a request for condonation of delay. The High Court of Delhi stated that the patent office’s decisions are open for appeal and that the Indian Intellectual Property Appellate Body (IPAB) has to hear the appeal on merit by taking into consideration the facts and circumstances of each case. This decision confirms the findings of the Madras High Court in Nokia Corporation v Controller of Patents.Article 8
Claiming Priority
Article 22
Copy, Translation, and Fee, to Designated Offices
Article 48
Delay in Meeting Certain Time Limits
Rule 82bis
Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits
EDWARDS LIFESCIENCES AG v. COOK BIOTECH INC.12-Jun-2009United Kingdom
The Paris Convention requires that priority claims be made by the same person who filed the earlier application from which priority is based. Where the first-filed application contains multiple applicants, the later-filed application must be made by all the applicants, or their successor in title. An assignment of rights must be properly executed prior to making a claim to the right of priority.Article 8
Claiming Priority
ELI LILLY CANADA INC. v. APOTEX INC.25-Mar-2009Canada
(Court of Appeals)
The applicant sought to invalidate a Canadian patent that entered the national phase from a PCT application. The patent was invalidated on the grounds of insufficiency of disclosure. The appellant argued that there was sufficiency of disclosure because it complied with the requirements under the PCT. The Court upheld that sufficiency of disclosure was a substantive matter of patentability governed exclusively by national law.Article 27
National Requirements
ELKAY MANUFACTURING COMPANY v. EBCO MANUFACTURING COMPANY and EBTECH CORPORATION10-Jul-1998United States of America
(U.S. District Courts)
The failure to present a PCT application to the patent examiner during examination did constitute inequitable conduct due to the fact that the PCT application did not teach more than the prior art utilized by the examiner.Rule 33
Relevant Prior Art for the International Search
ERNEST OGDEN, JOHN MCKENZIE AND PROJECTILE LTD. v. UK IP OFFICE07-Jun-2007United Kingdom
(Patent Office)
The issue in these cases is the right of entitlement to the PCT application and to the resulting UK patent.Article 4
The Request
Rule 4
The Request (Contents)
FINGER-SHIELD (UK) LTD. v. CANADA (COMMISSIONER OF PATENTS)06-Feb-2006Canada
(Federal Circuit)
The Commissioner of Patents refused the national phase entry of a PCT application because the applicant failed to pay the “late payment fee” within the prescribed time limit of 12 months following the expiry of the 30 month time limit for national entry.Article 22
Copy, Translation, and Fee, to Designated Offices
Rule 16bis
Extension of Time Limits for Payment of Fees
FIRST GREEN PARK PTY. LTD. v. CANADA (ATTORNEY GENERAL)22-Mar-2000Canada
(Court of Appeals)
The applicant failed to enter the national phase in Canada within the 30 month time limit. The time limit for national phase entry may be extended by 42 months upon request for reinstatement and payment of the prescribed fee. Reinstatement and payment must be made within the 12 month period following the expiry of the 30 month time limit. The applicant failed to make such a request within the prescribed time limit and requested that the Commissioner of Patents exercise discretion to extend the time period for requesting reinstatement. This request was refused by the Commissioner of Patents since there was no legal basis for a discretionary extension of the time limit. This decision was upheld by the Federal Court of Canada.Article 8
Claiming Priority
Article 48
Delay in Meeting Certain Time Limits
Rule 82bis
Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits
GORDON NOEL PRANGLEY v. THE UK IP OFFICE01-Mar-1988United Kingdom
(Patent Court)
Modification of the Chapter II demand form was allowed because the modification did not lead to prejudice upon any party, either the applicant or the European Patent Office.Rule 53
The Demand
Rule 60
Certain Defects in the Demand
Rule 91
Obvious Errors in Documents
GORDON NOEL PRANGLEY v. THE UK IP OFFICE25-Mar-1986United Kingdom
(Court of Appeals)
The failure to elect the United Kingdom in a Chapter II demand form was deemed not to be an obvious error.Rule 53
The Demand
Rule 60
Certain Defects in the Demand
Rule 91
Obvious Errors in Documents
GROUP ONE LTD v. HALLMARK CARDS, INC.15-Jun-2001United States of America
(Federal Circuit)
The Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the lower District Court regarding the trade secret issue. The CAFC did not agree with the District Court's analysis of the on-sale bar issue, reversing part of the judgment and remanding to the District Court for further proceedings.Article 11
Filing Date and Effects of the International Application
Article 29
Effects of the International Publication
Rule 48
International Publication
HEDMAN, GIBSON & COSTIGAN, P.C. v. TRI-TECH SYSTEMS INTERNATIONAL, INC.18-Sep-1995United States of America
(U.S. District Courts)
The defendant had obtained several patents before going insolvent. Its law firm, the plaintiff, sued for unpaid legal services and obtained default judgment against the defendant as well as a lien against its patent portfolio. A non-party secured creditor moved to reduce the lien amount and eliminate the lien from certain patents filed after it became a creditor. The court granted the motion, but did hold that the foreign patents filed with the USPTO were to be treated the same as domestic patents for the purposes of determining the scope of plaintiff’s lien. The court also ordered the judicial sale of certain foreign patents as part of the efforts to pay off the lien.
HELFGOTT & KARAS, P.C., DOV SHEFFER and R.S.R. ADTEC LTD. v. Q. Todd Dickenson, DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE14-Apr-2000United States of America
(Federal Circuit)
The Court of Appeals for the Federal Circuit overturned a decision previously rendered by a District Court. The District Court had affirmed the Commissioner's refusal to allow the applicant to make corrections to his Demand. The Court of Appeals found the Commissioner's refusal to be an abuse of discretion as the applicant should be allowed to suggest corrections to any obvious errors discovered.Rule 60
Certain Defects in the Demand
Rule 91
Obvious Errors in Documents
HENRY MERRITT FARNUM, v. HARRY F. MANBECK, JR., Commissioner of Patents and Trademarks17-Oct-1991United States of America
(U.S. District Courts)
The Commissioner not permitted to excuse the time limit for the filing of a demand.Article 8
Claiming Priority
Article 21
International Publication
Article 25
Review by Designated Offices
Article 26
Opportunity to Correct Before Designated Offices
Article 31
Demand for International Preliminary Examination
Article 39
Copy, Translation, and Fee, to Elected Offices
Article 48
Delay in Meeting Certain Time Limits
Rule 4
The Request (Contents)
Rule 82
Irregularities in the Mail Service
Rule 82bis
Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits
Rule 90bis
Withdrawals
IN RE: ARNOLD B. SERENKIN06-Mar-2007United States of America
(Federal Circuit)
The Court supported USPTO’s decision that it is not permissible to claim the benefit of an earlier filing date through the reissue process. The act of choosing a later filing date during prosecution of the PCT application in order to include missing drawings does not constitute an “error” that is correctable under US law.Article 14
Certain Defects in the International Application
Rule 20
Receipt of the International Application
In re: BROSSMANN'S APPLICATION13-Aug-1982United Kingdom
(Patent Office)
Applicant's claimed priority to an earlier filed application was not perfected in the International Phase of the PCT due to the fact that the priority document was not filed within the 16 month time limit. Applicant's attempt to restore the priority claim during the national phase based on inadvertent procedures practiced during the national phase was incorrect. This ruling was based on the fact that an improper occurrence during the international phase may not automatically be remedied at the national phase.Article 8
Claiming Priority
Rule 17
The Priority Document
In Re: Fletcher22-Oct-1998United Kingdom
(Patent Office)
Subsequent finding by the receiving Office that the PCT application did not comply with the requirements of PCT Article 11 for obtaining a filing date. The PCT application in question did not contain any claims.Article 25
Review by Designated Offices
Rule 51
Review by Designated Offices
JACK GUTTMAN, INC., v. KOPYKAKE ENTERPRISES, INC.30-Aug-2002United States of America
(Federal Circuit)
The plaintiff obtained a U.S. patent for a cake decorating machine and subsequently sued the defendant for infringement. The defendant argued as a defense to a preliminary injunction that its machine represented an embodiment of the invention that was disclaimed by the plaintiff when it tried to distinguish a PCT application during the prosecution of its U.S. application. The court held that while it could consult the language of both the plaintiff during the patent prosecution and the PCT application itself, here neither prevented the plaintiff’s patent from claiming a device that operated in the same way as the defendant’s machine.Article 6
The Claims
Rule 6
The Claims
JOHN MICHAEL GORDON v. UK IP OFFICE02-Jan-2008United Kingdom
(Patent Office)
The applicant filed a PCT application claiming priority from an application which had a filing date 14 months earlier. A request for restoration of the right of priority was made on the basis of the “unintentional” criteria. The applicant argued that he was very busy around the deadline for filing the PCT as he was at the same time, the sole inventor, sole proprietor of the business, and sole administrator. The applicant demonstrated that he did everything to remind himself of the deadline. The restoration request was allowed by the hearing officer.Article 8
Claiming Priority
Rule 26bis
Correction or Addition of Priority Claim, Correction or Addition of Declarations under Rule 4.17
JOHNSON & JOHNSON CONSUMER COMPANIES, INC. v. EUROPEAN PATENT OFFICE06-Jun-2002European Patent Organisation (EPO)
(Legal Board of Appeals)
Applicant not permitted to correct designation error (EPO had not been designated) due to the untimely request for modification. It is in the public interest that published applications possess timely, correct information.Article 2
Definitions
Article 4
The Request
Article 11
Filing Date and Effects of the International Application
Article 24
Possible Loss of Effect in Designated States
Article 26
Opportunity to Correct Before Designated Offices
Article 48
Delay in Meeting Certain Time Limits
Rule 4
The Request (Contents)
Rule 91
Obvious Errors in Documents
KAEPA, INC., v. DONALD J. QUIGG, Commissioner of Patents and Trademarks16-Aug-1989United States of America
(U.S. District Courts)
The Court found that the plaintiff's failure to list the parent application in the proper box on the request form for the purposes of claiming priority was an obvious error under PCT Rule 4.10(b).Article 3
The International Application
Rule 4
The Request (Contents)
Rule 91
Obvious Errors in Documents
LAMPI CORPORATION v. AMERICAN POWER PRODUCTS, INC.28-Sep-2000United States of America
(Federal Circuit)
The Court considered whether a patentee’s own published PCT application could be used as intervening prior art.Rule 33
Relevant Prior Art for the International Search
Rule 48
International Publication
LINDAHL, Gunnar v. EUROPEAN PATENT OFFICE09-Oct-1998European Patent Organisation (EPO)
(Technical Board Appeals)
A Euro-PCT applicant who has not carried out a certain procedural act within the time limit prescribed in the PCT can take advantage of the relevant provisions of the EPC concerning re-establishment of rights (Article 122 EPC) in all cases where the direct European applicant too may invoke them if he fails to observe the relevant time limit. The Board concluded that the provisions of Article 122 EPC are applicable to the time limit set by Rule 28(2)(a) EPC and thus to the time limit of Rule 13bis.4 PCT.Article 48
Delay in Meeting Certain Time Limits
Rule 13bis
Inventions Relating to Biological Material
MASUDA'S APPLICATION13-Dec-1985United Kingdom
(Patent Court)
Even in light of an unintentional intended error in the submission of a correct translation for an international application, the Court found that the international application was validly withdrawn under PCT rules.Article 20
Communication to Designated Offices
Rule 47
Communication to Designated Offices
MATSUSHITA ELECTRIC WORKS LTD.'S APPLICATION06-Nov-1981United Kingdom
(Patent Office)
Effect of not submitting a certified copy of a priority document within the prescribed time limit under PCT rules led to loss of priority right at the national level.Rule 17
The Priority Document
MITCHELL D. FORCIER v. MICROSOFT CORPORATION13-Nov-2000United States of America
(U.S. District Courts)
A PCT application containing trade secrets was published. Defendant utilized the trade secret, and Plaintiff brought suit. Because publication was deemed as publicly disclosing the information, defendant was not held liable for misappropriation.Article 29
Effects of the International Publication
Rule 48
International Publication
MITSUBISHI JIDOSHA KOGYO KK's APPLICATION PATENT05-May-1988United Kingdom
(Patent Court)
Propriety of the translation of a PCT application and the communication to designated Offices under PCT Article 20 and Rule 47. PCT application was deemed withdrawn for failure to file translation within the prescribed time limit.Article 20
Communication to Designated Offices
Rule 47
Communication to Designated Offices
MR AL PASHA AL BAHDAINI v. UK IP OFFICE06-Dec-2006United Kingdom
(Patent Office)
The applicant was refused national phase entry for failing to pay the requisite fee within the prescribed period (no later than 31 months from the priority date).Article 22
Copy, Translation, and Fee, to Designated Offices
Rule 16bis
Extension of Time Limits for Payment of Fees
NICHOLS INSTITUTE DIAGNOSTICS, INC. v. SCANTIBODIES06-Sep-2002United States of America
(U.S. District Courts)
This US District Court held in dicta that the PCT provides for international procedures which do not alter the substantive requirements of patentability at the national level.Article 27
National Requirements
NOKIA CORPORATION V. DEPUTY CONTROLLER OF PATENTS AND DESIGNS24-Jan-2011India
(Court of Appeals)
The Madras High Court has held that a request for condonation of delay and extension of time filed within one month of the expiry of the timeline for filing a PCT National Phase application must be considered by the Indian Patent Office and decided on merits. Nokia’s PCT application, claiming priority from a former US application, was filed under the National Phase in India, one week after the 31 month period for national phase entry had expired. The Indian Patent Office refused to take the application on record. The Judge decided that the Indian Patent Office must decide about the petition for condonation of delay on merit by taking into consideration the facts and circumstances of each case.Article 8
Claiming Priority
Article 22
Copy, Translation, and Fee, to Designated Offices
Article 48
Delay in Meeting Certain Time Limits
Rule 82bis
Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits
NORRIS'S PATENT30-Jul-1987United Kingdom
(Patent Court)
Dispute on inventorship/ownership at RO/GB. Upon review at the Chancery Division, an ancillary issue was confirmed that the international filing date was the national filing date under PCT Article 11(3).Article 11
Filing Date and Effects of the International Application
OHI SEISAKUSHO CO LTD v. UK IP OFFICE11-Aug-1983United Kingdom
(Patent Court)
Applicant's failure to file a translation of international application led to justifiable withdrawal by the designated office.Article 20
Communication to Designated Offices
Article 22
Copy, Translation, and Fee, to Designated Offices
PHILIP JONES ET AL v. UK IP OFFICE23-Jan-2009United Kingdom
(Patent Office)
The applicant filed a PCT application just less than 14 months after the filing date of an earlier application. Restoration of the right of priority under PCT rule 26bis.3 was requested on the basis of the “unintentional” criteria due to problems encountered with the PCT electronic filing software. The request was refused.Article 8
Claiming Priority
Rule 26bis
Correction or Addition of Priority Claim, Correction or Addition of Declarations under Rule 4.17
QUESTIONS REFERRED TO THE ENLARGED BOARD OF APPEALS02-May-1990European Patent Organisation (EPO)
(Enlarged Board of Appeals)
The agreement between the European Patent Organisation and WIPO dated 7 October 1987, including the obligation under its Article 2 for the EPO to be guided by the PCT guidelines for international search, is binding upon the EPO.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 33
Relevant Prior Art for the International Search
Rule 40
Lack of Unity of Invention (International Search)
QUESTIONS REFERRED TO THE ENLARGED BOARD OF APPEALS02-May-1990European Patent Organisation (EPO)
(Enlarged Board of Appeals)
The applicant had filed a PCT application which was found to disclose two inventions after an initial inquiry into whether his invention was patentable. On appeal, the Enlarged Board of Appeal held that the international search authority responsible for the search may provisionally determine patentability in order to inform its decision on unity of invention. If after such a determination multiple inventions were disclosed by the applicant then multiple search fees may be charged by the ISA.Article 17
Procedure Before the International Searching Authority
Rule 13
Unity of Invention
Rule 33
Relevant Prior Art for the International Search
Rule 40
Lack of Unity of Invention (International Search)
QUESTIONS REFERRED TO THE ENLARGED BOARD OF APPEALS18-Jan-1994European Patent Organisation (EPO)
(Enlarged Board of Appeals)
The applicant appealed a decision of not excusing a failure to meet the time limit to pay fees.Article 48
Delay in Meeting Certain Time Limits
R v THE COMPTROLLER-GENERAL OF PATENTS ex parte CELLTECH LIMITED21-May-1991United Kingdom
(Queen's Bench Division)
In reviewing an administrative decision, the Court supported the omission of the selection of 2 designated offices as being a “not obvious” error.Rule 91
Obvious Errors in Documents
RESEARCH IN MOTION LTD. v. UK IP OFFICE22-Jan-2008United Kingdom
(Patent Office)
The international application was filed with all national states designated, but due to a clerical error, the EP regional phase was not designated. This resulted in the applicant not entering the EP regional phase or UK national phase within the prescribed period of 31 months. The applicant then sought to reinstate the legal effect of the international application in the UK on the basis of the unintentionality criteria. The UK IPO ruled against reinstatement as the clerical error did not satisfy the unintentionality criteria.Article 4
The Request
Rule 4
The Request (Contents)
SCHNEIDER (EUROPE) AG and SCHNEIDER (USA) INC. v. SCIMED LIFE SYSTEMS, INC.04-Mar-1994United States of America
(U.S. District Courts)
The international filing date is considered the U.S. national filing date with 35 USC 102(e) exceptions (circa. 1994).Article 11
Filing Date and Effects of the International Application
SONIC TAPE PLC v. Roy William KNOTT19-Jan-1987United Kingdom
(Patent Office)
Confidentiality and a claim to privilege. Views of the British Patent Office on national law vs. PCT procedure.Rule 94
Access to Files
STEPHEN D. PODD, ET AL. v. UNITED STATES COMMISSIONER OF INTERNAL REVENUE30-Jun-1998United States of America
(U.S. Tax Court)
Rights to a PCT application in a tax dispute. A PCT application was recognized as a property right for tax purposes.Article 27
National Requirements
TEC ARMECH LTD. ET AL v. UK IP OFFICE26-Jul-2007United Kingdom
(Patent Office)
The applicant was charged late payment fees for three PCT applications. The late payment fees were caused by a missing fee sheet (payment instructions). The fee sheet was not communicated at the same time as the funds transfer and was received only after the expiry of the prescribed period for payment. The applicant paid the late payment fees but requested a refund on the basis that the funds were available in the deposit account at the time payment was due. The refund was refused because the payments could not be processed due to the missing fee sheet.Article 22
Copy, Translation, and Fee, to Designated Offices
Rule 16bis
Extension of Time Limits for Payment of Fees
THINKSTREAM INC. v. CANADA (COMMISSIONER OF PATENTS)23-Jun-2005Canada
(Federal Circuit)
The Commissioner of Patents refused the national phase entry of a PCT application because the applicant failed to meet the time limit for the payment of maintenance fees.Article 22
Copy, Translation, and Fee, to Designated Offices
Article 39
Copy, Translation, and Fee, to Elected Offices
Rule 16bis
Extension of Time Limits for Payment of Fees
TOUCHCOM, INC. and TOUCHCOM TECHNOLOGIES, INC., V. BERESKIN & PARR and H. SAMUEL FROST03-Aug-2009United States of America
(Court of Appeals)
The United States Court of Appeals for the Federal Circuit (CAFC) reversed the finding of a district court which had dismissed a suit for lack of personal jurisdiction. At issue was a PCT application that entered the national phase in the United States in which certain essential elements were unintentionally omitted but were contained in the priority application. This omission led to the invalidation of the resulting patent in the United States. A malpractice suit was subsequently filed but was dismissed by the district court because the defendant was foreign and therefore lacked personal jurisdictionArticle 49
Right to Practice Before International Authorities
Rule 2
Interpretation of Certain Words
Rule 90
Agents and Common Representatives
UNICROP LTD. V. ATTORNEY GENERAL OF CANADA11-Feb-2011Canada
(Court of Appeals)
Canada Federal Court of Appeal upheld the Federal Court’s decision that the Commissioner of Patents did not err finding the patent applicant in question abandoned because someone other than the “authorized correspondent” requested the reinstatement and paid the fees. Under the Canadian rules, the Commissioner shall not have regard to communications other than from an authorized agent. The applicant sought reinstatement through a firm other than the appointed agent of record when the application became abandoned due to missed maintenance fee payment. The Office denied reinstatement by the unauthorized agent, and the applicant sought a retroactive appointment of agent asserting the firm failed to submit the Appoint of Agent document due to inadvertent clerical error. The Court upheld the Federal Court decision and found the language of the rule “clear and inescapable” that the Commissioner may only regard communications from an authorized correspondent.Article 27
National Requirements
VAPOCURE TECHNOLOGIES LTD v. UK IP OFFICE25-Jul-1989United Kingdom
(Court of Appeals)
Applicant was unable to add additional designated countries before publication because authorization of a rectification under Rule 91.1(e)(i) cannot, upon the true construction of Rule 91.1(g-bis), be effective unless its notification to the International Bureau reaches the Bureau before completion of the technical preparations for international publication of the relevant international application.Article 26
Opportunity to Correct Before Designated Offices
Article 48
Delay in Meeting Certain Time Limits
Rule 91
Obvious Errors in Documents

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