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.
Considerations for requesting early publication of an international application
Q: I have filed an international application and am wondering if I should request early publication of the application, as I heard that my competitor has a similar product to my invention in development. Are there any factors I should take into consideration before I request early publication by the International Bureau, and what should I do if I want to?
A: International publication of an international application is required to take place promptly after the expiration of 18 months from the priority date (PCT Article 21(2)(a)). This 18-month period gives you a chance to further consider whether to proceed with the application and is in line with the practice of most jurisdictions. You may, however, request early publication of the international application under PCT Article 21(2)(b)), but before doing so, you should think carefully about whether this is of interest to you.
Factors to consider before requesting early publication
There can be certain advantages that can be gained in having your international application published before 18 months from the priority date:
- it may, as in your case, be important to have it published before your competitors file an application on a related subject matter so that your published application can be used as a prior art when deciding patentability of your competitor’s application;
- earlier publication may confer earlier provisional protection before certain designated (or elected) Offices under certain conditions. Examples of such rights include the entitlement of the applicant under some national laws to be paid royalties for infringements made from the earlier publication date provided that a patent is granted afterwards, and the right of the applicant under some national laws to send a cease and desist letter to the competitor to stop manufacture of the infringing product;
- where the applicant wishes to obtain a patent grant in some Contracting States as soon as possible, international publication of the application may be a pre-condition under certain national laws to start national examination (though it is not a condition for national phase entry) and it would thus be desirable to have it published early; and
- a published patent application can be cited by the applicant more readily in advertisements, in negotiations with business partners, or for attracting investors.
However, there are also some potential negative impacts that you should also consider before making such a request:
- early publication of the international application will push certain important decision-making processes to an earlier stage. Without a request for early publication, you can always withdraw your application before completion of technical preparations for international publication without disclosing its content to the public (see PCT Rule 90bis.1(c)) if, for example, you find that the chance of getting a patent is low and you still want to keep the content secret, or you wish to further improve the invention so as to file an application later, or you believe that trade secret protection may be more appropriate for your particular innovation. In other words, once the international publication has taken place, it cannot be undone and your application will remain disclosed even if you withdraw your application afterwards. You should, therefore, carefully evaluate the particular circumstances of your application when considering to make a request for early publication; and
- early publication may allow a competitor in the market to design around your pending patent application from an earlier date, either to avoid the risk of infringement or to further build on the disclosed technology.
Other relevant issues to consider
Once you have decided that you really want to request early publication, there may also be some other relevant procedural issues you need to consider before or even after you file the request. Examples of such issues include:
Do you have any bibliographical changes that need to be reflected in the international publication? If so, a request for the recording of a change under Rule 92bis, for example, should be submitted before the request for early publication.
Do you need to correct any physical defects in the international application? If you submit a correction after completion of technical preparations for early publication, but within the time limit given by the receiving Office, such correction would not be reflected in the early publication and would be the subject of a republication.
Is a correction or addition of priority claim under PCT Rule 26bis.1(a) required? Such a correction/addition should be made before requesting the early publication, otherwise it will be considered not to have been submitted unless the request for early publication is withdrawn before completion of technical preparations (see Rule 26bis.1(b)).
Do you wish to include references to deposited biological material? These should also be submitted before requesting early publication (see Rule 13bis.4(c)).
How to request early publication and applicable fees
Any request for early publication of an international application must be submitted directly to the International Bureau (IB) (see PCT Article 21(2)(b) and Rule 48.4). To do so, you can either upload a signed letter requesting early publication of your international application via ePCT with or without strong authentication, or by completing an ePCT Action “Request for Early Publication” in ePCT if you have access to the application with strong authentication.
If a request for early publication is submitted and the international search report or the declaration under PCT Article 17(2)(a) is not yet available for publication with the international application, you will need to pay a special publication fee of CHF 200 (see PCT Rule 48.4(a) and Section 113(a) of the Administrative Instructions under the PCT) before publication can take place. This is to cover the cost of separately publishing the international search report or declaration once it is received. If, on the other hand, the report has already been provided, no fee will be payable (see PCT Rule 48.4(a)).
Result of the request
The publication will not be immediate – once the IB has received your request for early publication together with the fee under Rule 48.4(a) if applicable, international publication will take place as soon as the translations (where applicable) and technical preparations have been completed. You will then be notified by the IB of the scheduled date of publication via Form PCT/IB/345. On average, the preparation work can be expected to be completed by the IB within four to eight weeks from the date of the request for early publication. Where a special publication fee is due and you have not paid the fee, you will be invited by the IB to pay the fee, failing which the request will not be acted upon.
All applicants are urged to use ePCT to follow the status of their applications. The ‘timeline’ link at the top of your application’s page in ePCT provides a graphical view of the key PCT dates and time limits for your international application. If you have any questions regarding your application, you should contact the Operations Team in charge of your application.