An international application is normally sent directly by the applicant or his representative to the International Bureau. However, a number of exceptions to that principle are provided for by the 1960 and the 1999 Acts.
Under the 1960 Act, an international application may be filed through the Office of a Contracting State if such State so permits. In addition, a Contracting State may require that, where it is considered to be the State of origin, the deposit be filed through its national Office. To the extent that such requirement is not required to be notified to the Director General of WIPO under the 1960 Act, the International Bureau does not check whether an international application governed exclusively or partly by the 1960 Act has been presented through the Office of the State of origin pursuant, where applicable, to the law of that Contracting State. Non-compliance with this requirement shall not prejudice the effects of the international deposit in the other Contracting States.
Under the 1999 Act, it is possible for Contracting Parties to prohibit the indirect route, but they are not allowed to impose it. Where an international application is presented to the International Bureau through the intermediary of an Office, that Office may fix, and collect for its own benefit, a fee to cover the cost of the work involved in handling the international application. An Office that requires a transmittal fee must notify the International Bureau of the amount of such fee, which should not exceed the administrative costs of receiving and transmitting the international application, and its due date.
Where an international application governed exclusively or partly by the 1999 Act is addressed to the International Bureau through the Office of the applicant’s Contracting Party, it must be received by the International Bureau within a period of one month from the date of receipt by that Office. However, that period may not be sufficient for a Contracting Party whose law requires a security clearance. The possibility has therefore been provided for such a Contracting Party to notify the replacement of the period of one month by a period of six months. If the applicable time limit is not complied with, the filing date of the international application is the date of its receipt by the International Bureau.
The United States of America and the Russian Federation are the only Contracting Parties that have made the notification under Rule 13(4) to replace a period of one month by a period of six months. It is a requirement under the law of the United States of America that, for designs created in the United States of America, the applicant first obtains an export license before filing outside of the United States of America. If the applicant needs to obtain such a license, alternatively, he may file an international application through the USPTO (in most cases the security clearance will be performed within a couple of days) or through the International Bureau once he has received the said license (it is the responsibility of the applicant to comply with any national security provisions before filing the international application).
More information on foreign filing is available on the USPTO website.
It is a requirement under the law of the Russian Federation that designs created in the Russian Federation by Russian legal entities or nationals are subject to a security clearance procedure by the Federal Service for Intellectual Property (ROSPATENT) to ensure that the designs do not contain state secrets.
More information on foreign filing is available on the ROSPATENT website.
Provided that the international application does not contain any irregularities entailing a postponement of the filing date (refer to “Irregularities entailing a postponement of the filing date of the international application”), the International Bureau allocates to the international application a filing date in accordance with the following principles:
If the International Bureau finds that the international application does not, at the time of its receipt by the International Bureau, fulfill the applicable requirements, it invites the applicant to make the required corrections within three months from the date of the invitation sent by the International Bureau. Where an irregularity is not remedied within this three-month time limit, the international application is considered abandoned and the International Bureau refunds any fees paid in respect of that application, after deduction of an amount corresponding to the basic fee.
Where the international application has, on the date on which it is received by the International Bureau, an irregularity which is prescribed as an irregularity entailing a postponement of the filing date, the filing date is the date on which the correction of such irregularity is received by the International Bureau. The irregularities which are prescribed as entailing a postponement of the filing date of the international application are the following:
Where a Contracting Party designated under the 1999 Act, whose Office is an Examining Office, has made the declaration prohibiting its self-designation (refer to “Prohibition on self-designation” and is indicated in an international application both as the applicant’s Contracting Party and as a designated Contracting Party, the International Bureau disregards the designation of that Contracting Party.
In the case of an irregularity which relates either:
if the applicant does not remedy such irregularity within the prescribed time limit of three months, the international application is deemed not to contain the designation of the Contracting Party in question.
Furthermore, if the applicant does remedy an irregularity which relates to Article 5(2) of the 1999 Act, the date of the international registration is the date on which the correction of such irregularity is received by the International Bureau or the filing date of the international application, whichever is the later.