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.
Actions which can be taken to maximize the chances of an international application being processed without delay during the international phase
Q: I am acting as agent on behalf of an inventor who wishes to be granted a patent as quickly as possible in a large number of countries. Filing a PCT application would therefore be more advantageous than filing separately in each country under the
A: In general, there is no provision under the PCT to enable accelerated processing during the international phase, whether before the International Bureau (IB), the receiving Office (RO), the International Searching Authority (ISA) or the International Preliminary Examining Authority (IPEA) (subject to a few exceptions which will be discussed below) given that the time limits under the PCT are too tight for that to be feasible. There are, however, a number of actions that you can take to maximize the chances of your application being searched without delay, increasing the likelihood of you entering the national phase as soon as possible with a written opinion on which you may be able to base a PPH (
Filing strategies that will favor accelerated processing in the international phase
(1) If you have not filed an earlier national application, start with a PCT application
You do not say whether you already filed a national application, but in the case where there is no earlier application and it is your intention to file an international application under the PCT, you could start with an international application rather than a regular national application. Using the PCT in this manner will allow you to obtain the international search report (ISR) and written opinion as early as possible. This is because, according to PCT Rules 42 and 43bis, the ISR and written opinion should be established nine months from the priority date or three months from the receipt of the international application by the ISA (that is the search copy), whichever is the latest. For example, if you were to file your first application under the PCT on 1 June 2011, the ISR and written opinion would be due on 1 March 2012. If you were to file a national application on 1 June 2011, and then filed your international application, say, ten months later, on 1 April 2012, the ISR and written opinion would only be due on 1 July 2012 at the earliest.
(2) Choice of RO and ISA
Requesting accelerated processing in the national phase under the PCT-Patent Prosecution Highway (PCT‑PPH) program can only be done once a (positive) written opinion has been issued. Since no international application can be searched until the ISA has received a copy of the international application from the receiving Office (the “search copy”), you could reduce the possibility of delays in the transmission to the ISA of the search copy by the receiving Office by filing your international application with a receiving Office which also acts as an ISA.
If your choice of receiving Office(s) does not include one that also acts as an ISA, you could choose a receiving Office which has a good record for transmitting the search copy to the ISA quickly. Statistics on the timeliness of selected receiving Offices to transmit copies of the international application to the IB (and thus presumably also to the ISA) are available on pages 8 to 9 of the document entitled “The International Patent System: Performance Indicators” (see table entitled: “Timeliness of Receiving Offices (RO) to transmit copies of PCT application to the International Bureau: Selected Receiving Offices”) on the WIPO website at:
https://www.wipo.int/ipstats/en/statistics/pct/pdf/performance_indicators.pdf
It should be noted here that although the International Bureau as RO (RO/IB) is among the quickest to transmit the search copy where there are no problems with the international application (shown by the very steep initial rise of the curve), they do, however, receive a significant number of problem cases which can take a long time to resolve, including some very late transfers from non-competent ROs under PCT Rule 19.4 (shown by the very long tail end of the curve).
If you have a choice of more than one ISA (your choice of ISA is, in accordance with PCT Rule 35, determined by the receiving Office with which you file the international application), you could choose an ISA which has a tendency to deliver the ISR more rapidly, and thereby increase your chances of receiving an ISR and written opinion earlier (the written opinion is normally established at the same time as the ISR). The timeliness statistics which are available in the above-mentioned document may be helpful for determining this; see the table on pages 16 to 21 entitled “Timeliness of International Searching Authorities (ISAs) to transmit International Search Reports (ISRs) to the International Bureau”. Note, however, that such statistics may be biased by any delays which may occur at the various receiving Offices from which the ISAs receive the search copies with which they work, and also, the time that it takes for an ISA to establish a written opinion might depend on the technical field of the invention.
(3) Formality requirements
In order to minimize delays in processing, you should, before filing, ensure that the international application meets all the necessary requirements under PCT Article 11, and you should check the application carefully to ensure that it does not contain any defects under PCT Article 14, to avoid loss of time through correction. If you file the international application electronically, you will be able to benefit from e‑filing software validations that will possibly prevent some formality errors. Moreover, if you e‑file the international application with RO/IB, the step of scanning the international application is bypassed, which could potentially speed up RO processing. Where you are notified that the international application needs to be corrected before the receiving Office (whether filed electronically or on paper), you should respond quickly, sending documents by fax rather than post, or, in the case of filings with the RO/IB, take advantage of the PCT Online Document Upload service (https://webaccess.wipo.int/pctservice/en/). Using Online Document Upload further reduces the processing time as the IB can omit the scanning step and automatically route the document in question to the correct person.
If the international application contains sequence listings, it is preferable for them to be filed as a text file as part of the electronically‑filed international application – in addition to being cheaper to file them in this way (see Section 707(a-bis) of the Administrative Instructions under the PCT), it eliminates the risk that there will be problems relating to a second copy needed for the purposes of international search.
Ensure that you file the international application in a language that is accepted by the ISA (as well as the RO), or else supply the required translation at the time of filing – if the international application is not in a language accepted by the ISA, the ISA will not be able to start the international search until it has received the necessary translation (for further information on the language of the international application, see PCT Rule 12).
(4) Unity of invention
To avoid delays in the carrying out of the international search (and, where applicable, the preliminary examination), ensure that your application does not lack unity of invention (see PCT Rules 40 and 68). If it does lack unity of invention, this will lengthen the procedure as an invitation to pay additional fees will have to be issued and the applicant will have to pay the fees before further processing can take place.
(5) Prompt payment of fees
You should pay the transmittal fee, international filing fee and search fee at the time of filing and make sure that you have paid the currently applicable amounts. Note, in particular, that the search copy will only be sent to the ISA once the search fee has been paid (PCT Rule 23.1(a)). Take special care with fees that you will be paying in currencies in which the fees were not established, as fluctuations in exchange rates result in fairly frequent changes in the equivalent amounts of those fees. (For the latest fees, see the PCT Fee Tables in the PCT Newsletter, or contact the receiving Office directly.) If filing at RO/IB, payment by credit card (PCT E‑payment) accelerates the fee payment process; as does payment by charging a deposit or current account, provided that there are sufficient funds in the account.
Specific actions for “accelerated processing” in the international phase
You may initiate some actions that permit certain aspects of the international phase to be processed more rapidly:
- If you intend to file a demand for international preliminary examination (which may be of particular interest to you if the written opinion of the ISA does not provide a positive report on a sufficient number of claims and you want to make use of the possibility of amending the claims under PCT Article 34), it is possible to make use of one form of acceleration – you can check item number 4 of Box No. IV of the demand (Form PCT/IPEA/401) (“The applicant expressly wishes the international preliminary examination to start earlier than at the expiration of the applicable time limit under Rule 54bis.1(a)”). If you do not check this box, the IPEA may wait until 22 months from the priority date before starting work, and you will want to be in possession of the international preliminary report on patentability (Chapter II of the PCT) before entry into the national phase.
- It is possible to request early publication of the international application under PCT Article 21(2)(b) and Rule 48.4. However, this will not affect the time at which the national processing can commence under PCT-PPH if the ISR and written opinion are not yet available. Note also that where the ISR is not available for publication at the same time as the international application, the request for early publication will be subject to a special publication fee, as indicated in the PCT Applicant’s Guide, Annex B2 (IB).
- Once the ISR and written opinion have been issued, you could consider already entering the national phase by making an express request to the designated (or elected) Office(s) concerned for early national processing, provided that you have performed the acts prescribed in PCT Article 22 (or 39) (see PCT Article 23(2)). Note that normally, the IB transmits the written opinion to the designated Office (in the form of the “international preliminary report on patentability by the International Searching Authority” (IPRP Chapter I)) only after the expiration of 30 months from the priority date (see PCT Rule 44bis.2(a)). However, if you request early national processing under PCT Article 23(2), the IB will transmit the IPRP (Chapter I) promptly to the designated Office if requested to do so by either you or the designated Office (see PCT Rule 44bis.2(b)). (Please refer to PCT Rule 44bis.3 in the case where translations into English are required by the designated Office.)
For further information on PCT-PPH, see the “practical advice” published in PCT Newsletter No. 02/2011.