PCT Newsletter 02/2008: Practical Advice

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Filing an international application with a national receiving Office, and relying on that Office to transmit the application to the International Bureau as receiving Office under PCT Rule 19.4

Q: I am a US agent and have been asked by my client, who is resident in US and is a national of Mexico, to file an international application (which does not claim the priority of an earlier national application). The description and claims of the application are in Spanish, but the United States Patent and Trademark Office as receiving Office (RO/US) only accepts international applications filed in English. Since we do not wish to incur the expense of translating the international application into English at this stage of the procedure, I will be filing it with the International Bureau as receiving Office (RO/IB), which accepts international applications in any language. Can I nevertheless file the international application with RO/US on the presumption that it will, in any case, transmit the application to RO/IB under PCT Rule 19.4, or should I file directly with RO/IB?

A: Where an international application is filed with a national (or regional) Office that acts as a PCT receiving Office but the application is not in a language accepted under Rule 12.1(a) by that Office, the safeguard procedure under PCT Rule 19.4 applies. Under this procedure the national Office transmits the international application to RO/IB unless prescriptions concerning national security prevent the international application from being so transmitted. Filing with RO/IB gives applicants more flexibility as it accepts international applications filed in any language (noting that in some cases a translation may have to be furnished for the purposes of international search, depending on the competent International Searching Authority (ISA) and the language(s) accepted by the ISA concerned) and nationals and residents of any PCT Contracting State may file an international application with it. If the international application is filed with a national Office and is then transmitted to RO/IB under PCT Rule 19.4, the application is considered to have been received by the national Office concerned on behalf of RO/IB and the date of receipt of the international application by the national Office is considered to be the date of receipt for the purposes of the international filing date (PCT Rule 19.4(b)). The same procedure applies where an international application is filed with a PCT receiving Office which is not competent on account of the nationality and residence of the applicant(s) under Rule 19.1 or 19.2, or in cases where the national Office and the IB agree, for any reason other than those specified above, and with the authorization of the applicant, that the procedure under Rule 19.4 should apply.

If you file your international application with a national receiving Office, and that Office transmits the application to RO/IB under PCT Rule 19.4, you may have to pay the equivalent of two transmittal fees – one to RO/IB, and also the national receiving Office may require the applicant to pay a fee equal to the transmittal fee charged by that Office under PCT Rule 14 (see PCT Rule 19.4(b)). At the time of writing, the United States Patent and Trademark Office (USPTO) charges this fee. If the applicant has already paid the international filing fee and international search fee to the national Office, those fees will be refunded to the applicant, who will then have to pay them, together with the (second) transmittal fee, to RO/IB. Note that, for the calculation of the time limit for payment of fees, the date of receipt of the international application will be considered to be the date on which the international application was actually received at RO/IB and not the date on which it was received by the national Office. If you file with a national receiving Office, it will be in a position, where applicable, to check the application for compliance with national security prescriptions before transmitting it to RO/IB (see below for information in this respect if the international application is filed directly with RO/IB).

If you know that the national receiving Office cannot accept your international application (for example, for language reasons), it is recommended that you file it directly with RO/IB rather than relying on it being processed under PCT Rule 19.4. If you file directly, you will only pay one transmittal fee. Also, by filing directly, time will be saved in the processing of the international application: there are fewer administrative steps involved, for example, the issuing of a notification to the applicant informing him/her that the application is being transmitted to RO/IB under PCT Rule 19.4 (Form PCT/RO/151), the refunding of fees paid to the national Office, and although the national receiving Office should transmit the international application to RO/IB promptly, there is a risk that there may be a delay in such transmittal. However, it is the applicant’s responsibility to comply with any national security provisions before filing an international application with RO/IB, since RO/IB will not check for such compliance. Before filing the international application, you should therefore check with the national Office(s) that is (are) competent on account of the nationality and residence of the applicant.

In addition, please note the following about filing with RO/IB in general:

  • Although RO/IB does not require the applicant to be represented by an agent, if any agent is appointed, he or she must be a person who has the right to practice before the national Office of, or acting for, a Contracting State of which the applicant (or, if there are two or more applicants, any of the applicants) is a resident or national. (You would meet these requirements since, presumably, you have the right to practice before the Office of the country of residence of the applicant, the USPTO.)
  • The International Searching Authority(ies) and International Preliminary Examining Authority(ies) which would be competent for searching/examining the international application are those which would have been competent if the international application had been filed with any other receiving Office of, or acting for, the PCT Contracting State of which the applicant is (or applicants are) a resident or national. In your case, the applicant is a resident of US and a national of Mexico; the competent ISAs and IPEAs for the USPTO are: the USPTO, the European Patent Office (subject to certain restrictions) or the Korean Intellectual Property Office. Those competent for the Mexican Institute of Industrial Property are: the European Patent Office, the Spanish Patent and Trademark Office, the Swedish Patent and Registration Office or the USPTO. The only one of the aforementioned ISAs and IPEAs which will search and examine applications in Spanish is the Spanish Patent and Trademark Office. If you want to choose another ISA and/or IPEA, you would have to translate the international application into another language accepted by your chosen Authority. Information on the competence of the various ISAs and IPEAs and languages accepted by those authorities can be found in Annexes C, D and E of the PCT Applicant’s Guide ( www.wipo.int/pct/guide/en/).

Note that, being a national of Mexico, the applicant would also be entitled to file an international application in Spanish with the Mexican Institute of Industrial Property, however, you would not be entitled to act as agent before that Office (it requires that the agent be resident in or a national of Mexico), but rather, you would be considered as an address for correspondence (for further details on this kind of situation, see the “Practical Advice” published in PCT Newsletter No. 06/2006 entitled: “Consequence of the agent not being entitled to practice before the Office of the country of residence and/or nationality of the applicant”).

Information on filing with RO/IB, in particular: accepted modes of filing, fees payable, accepted currencies and modes of payment, special features of filing with RO/IB, and contact details of the PCT Receiving and Processing Team (for example, to check receipt and status of payment of a PCT application) can be found by going to the link entitled “Direct filing at WIPO” on the PCT Resources page of Patentscope® at:

www.wipo.int/pct/en/filing/filing.htm