CHAPTER 5: SPECIAL REQUIREMENTS TO BE COMPLIED WITH IN CONNECTION WITH THE NATIONAL PHASE
GENERAL |
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5.001. What is the meaning of special requirements and when do they have to be complied with? No designated Office is allowed to require, before the expiration of the applicable time limit for entering the national phase, the performance of acts other than those referred to in Article 22(1), namely the payment of the national fee, the furnishing of a translation (if prescribed) and, in exceptional cases, the furnishing of a copy of the international application, and the indication of the name and address of the inventor (see paragraph 4.001). All other requirements of the national law, to the extent that they are admitted under Article 27, are referred to in this publication as "special requirements." They may still be complied with after entry into the national phase. Rule 51bis indicates the most common of those requirements and provides that the applicant must be given an opportunity to comply with any such special requirement after the start of the national phase. This opportunity is usually given either by sending an invitation to comply with a certain special requirement within a time limit indicated in the invitation or by providing in the national law for a certain time limit within which the applicant must, without invitation, comply with the requirement. |
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5.002. For each designated Office, the National Chapter (Summary) lists the special requirements, if any, which must be complied with in connection with entry into the national phase, and indicates whether the Office concerned will invite the applicant to comply or, if there is no invitation, what the time limit is within which he must comply should he not have done so already. It is highly recommended that any special requirement indicated in the National Chapter (Summary) be complied with at the time of performing the acts for entry into the national phase, because this is more economical and avoids the risk of forgetting to comply with the requirement later. The most common of the special requirements are explained in general terms in the following paragraphs. Details are given in each National Chapter (Summary). |
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CERTAIN DECLARATIONS CONCERNING THE INVENTOR, ASSIGNMENTS, ETC. |
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5.003. What must be done to prove inventorship, the right to file the application or the like? Depending on national law and practice, some designated Offices require the applicant to furnish: |
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(i) any document relating to the identity of the inventor; |
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(ii) any document relating to the applicant’s entitlement to apply for or be granted a patent; |
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(iii) 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; |
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(iv) any document containing an oath or declaration of inventorship; |
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(v) 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. |
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However, in general, a document referred to above will not be required if the applicant has furnished a declaration under Rule 4.17 (see paragraph 5.005). What may be required by a particular designated Office is indicated in the National Chapters (Summary). The annexes to the National Chapters contain forms that must or may be used for this purpose. Documents (other than declarations under Rule 4.17) required by designated Offices, must always be sent by the applicant to the designated Office concerned and should not be sent to the International Bureau, which, if it does receive them, keeps them in its files but does not transmit them to the designated Offices. |
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5.004. When must requirements relating to matters such as inventorship, right to file, etc. be complied with? In general, such requirements must be complied with within a time limit of at least two months from the date of an invitation that the designated Office must send to the applicant, in case the requirement concerned was not already complied with within the time limit for entering the national phase (see paragraphs 3.001 and 3.002). Certain designated Offices have, however, informed the International Bureau that the time limit of two months was not compatible with the applicable national law (see the relevant National Chapters (Summary)). |
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5.005. What can be done in the international phase to simplify the processing of international applications in the national phase? The applicant may include in Box No. VIII of the request form one or more of the following declarations under Rule 4.17: |
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- Box No. VIII(i): declaration as to the identity of the inventor (noting that such declaration need not be made in Box No. VIII(i) if the name and address of the inventor are indicated in the request, that is, usually in Boxes No. II and/or III); |
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- Box No. VIII(ii): declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent; |
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- Box No. VIII(iii): declaration as to the applicant’s entitlement, as at the international filing date, to claim priority of the earlier application; |
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- Box No. VIII(iv): declaration of inventorship (only for the purposes of the United States of America), noting that that declaration must be signed; |
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- Box No. VIII(v): declaration as to non-prejudicial disclosures or exceptions to lack of novelty. |
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Where the request contains a declaration complying with Rule 4.17(i) to (iv), a designated Office may not (except if it has informed the International Bureau to the contrary) require any document or evidence relating to the subject matter of that declaration (see paragraph 5.003) unless it reasonably doubts the veracity of the declaration concerned. In the case of a declaration as to non-prejudicial disclosures or exceptions to lack of novelty made under Rule 4.17(v), the designated Offices concerned are always entitled to require further documents of evidence. For further details, see International Phase, paragraphs 5.074 to 5.080. |
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REPRESENTATION |
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5.006. Must the applicant be represented by an agent for the national phase? Most designated Offices require non-resident applicants to be represented by an agent; others require non-resident applicants to have an address for service in the country. The National Chapters (Summary) indicate whether an agent must be appointed or whether an address for service is required. |
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5.007. When and how must the agent be appointed? It is highly recommended that an agent be appointed for the performance of the acts for entry into the national phase. An address for service, where required, should also be indicated at the time of performing those acts. As for any obligation to be represented by an agent or to have an address for service, it applies only once the national phase has started. The appointment of an agent must be made in a power of attorney signed by the applicant(s). Model powers of attorney are contained in the annexes to the National Chapters and on the website at www.wipo.int/pct/en/forms/pa/index.htm. |
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5.008. Who may act as an agent for the national phase? The reply to this question is given for each designated Office in the National Chapter (Summary). Lists with names and addresses of agents may be obtained from the designated Offices, but not from the International Bureau. |
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PRIORITY DOCUMENT: COPY AND TRANSLATION |
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5.009. When must a copy of the priority document be furnished for the national phase? The priority document must be submitted during the international phase to the receiving Office or to the International Bureau, and the International Bureau makes it available to designated Offices (for details, see International Phase, paragraph 5.070). Where the priority document has been submitted within the time limit during the international phase to the receiving Office or to the International Bureau, no designated Office may require an original priority document (that is, an original certified copy of the earlier application) from the applicant. What may be required, however, is a copy of the priority document, that is, a simple photocopy of the original priority document (consisting of a copy of both the earlier application and the certificate of its filing date), together with a translation of the priority document (see paragraph 5.010). |
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5.010. When must a translation of the priority document be furnished for the national phase? A designated Office may require the applicant to furnish a translation of the priority document only where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable; and for the determination of whether an element or part that has been incorporated by reference, pursuant to Rules 4.18 and 20.6, is completely contained in the priority document concerned. In addition, where a part of the description, claims or drawings was incorporated by reference, the designated Office may also require the applicant to furnish an indication as to where the given part is contained in the translation of the priority document. |