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The main procedural steps that any PCT international patent application goes through at the PCT International Bureau are the following:

(i) the PCT International Bureau monitors the receipt of the record copy of the PCT international application and notifies the fact, and the date of receipt, to the applicant and the authorities concerned;
(ii) the applicant may amend the claims of the PCT international application under Article 19 by means of a communication addressed to the PCT International Bureau;
(iii) the PCT international application is published by the PCT International Bureau (such publication usually takes place just after the expiration of 18 months from the priority date);
(iv) copies of the PCT international application, the PCT international search report and the written opinion of the PCT international Searching Authority (in the form of the PCT international preliminary report on patentability (Chapter I of the PCT) pertaining to it are transmitted by the PCT international Bureau to the designated Offices;
(v) where a preliminary examination report (PCT international preliminary report on patentability (Chapter II of the PCT)) has not been established, the PCT international Bureau issues an PCT international preliminary report on patentability (Chapter I of the PCT);
(vi) copies of that report are transmitted by the PCT international Bureau to the applicant and to the designated Offices, but not before the expiration of 30 months from the priority date; the PCT international Bureau may also if so requested by any designated State, transmit a copy of a translation into English of the PCT international preliminary report on patentability (Chapter I of the PCT) to any interested designated Office and to the applicant at the same time as it communicates the report to that Office; and
(vii) where a demand for PCT international preliminary examination has been filed, the PCT international Bureau notifies the elected Offices, transmits the PCT international preliminary report on patentability (Chapter II of the PCT) to them and makes a translation of that report into English (if required by any elected Office).

FAQ – PCT INTERNATIONAL PUBLICATION

When and to whom does the PCT international Bureau notify its receipt of the record copy of the PCT international application? When are designated Offices notified?

The record copy of the PCT international application should normally reach the PCT international Bureau before the expiration of 13 months from the priority date. After receiving the record copy, the PCT international Bureau notifies the applicant, the receiving Office and the PCT international Searching Authority of the fact and of the date of receipt of the record copy. All those notifications are effected promptly after the PCT international Bureau’s receipt of the record copy.

What should be done by the applicant when he receives the notification of receipt of the record copy? The notification sent to the applicant contains the list of the designated Offices. This notification will allow the applicant to check whether the fact that certain designations (DE, KR, and/or RU) were specifically excluded in the request, and/or any subsequent withdrawal of designations have been properly reflected. The applicant may wish to withdraw the designation of any designated State at this point, or at any time prior to the expiration of 30 months from the priority date.

AMENDMENT OF THE CLAIMS UNDER ARTICLE 19

When and how may the claims of the PCT international application be amended in the PCT international phase?

The applicant is entitled, under Article 19, to one opportunity to amend the claims of the PCT international application in the PCT international phase. Further opportunities to amend the claims, and also the description and the drawings, are available during the PCT international phase under Article 34 if, and only if, the applicant files a demand for PCT international preliminary examination. Any amendment to the claims under Article 19 must be filed with the PCT international Bureau, and must be in the language in which the PCT international application is published. The opportunity to make amendments under Article 19 is available after the applicant has received the PCT international search report and the written opinion of the PCT international Search Authority, and remains available until the end of 16 months from the priority date or two months after the transmittal (that is, the date of mailing) of that report and opinion, whichever expires later. Amendments received by the PCT international Bureau after the time limit are still accepted if they have been received before the technical preparations for PCT international publication have been completed.

When filing amendments to the claims under Article 19, the applicant is required to file a replacement sheet for every sheet containing a claim which is amended. The replacement sheet or sheets must be accompanied by a letter drawing attention to the differences between the replaced sheets and the replacement sheets. Where an amendment results in the cancellation of an entire sheet of the PCT international application as originally filed, the amendment (that is, the cancellation) is evidenced only by the letter addressed to the PCT international Bureau. A mendments may consist in the cancellation of one or more entire claims, in the addition of one or more new claims, or in the amendment of the text of one or more of the claims as filed. All the claims appearing on a replacement sheet must be numbered in Arabic numerals. Where a claim is cancelled, no renumbering of the other claims is required. However, where the applicant does renumber claims, they must be renumbered consecutively.

The letter which must accompany the replacement sheets containing amendments to the claims must indicate the differences between the claims as filed and those as amended. This should be done by stating, in connection with each claim appearing in the PCT international application, whether:

(i) the claim is unchanged,
(ii) the claim is cancelled;
(iii) the claim is new;
(iv) the claim replaces one or more claims as filed;
(v) the claim is the result of the division of a claim as filed, etc.

What is a statement accompanying an amendment?

Any amendment may be accompanied by a brief statement by the applicant explaining the amendment and indicating any impact it might have on the description and the drawings. Such a statement is published together with the PCT international application itself. Statements not referring to a specific amendment are not permitted. The statement must not exceed 500 words if in English or when translated into English. It may not contain disparaging comments on the PCT international search report or on the relevance of any of the citations contained in that report. References to certain citations in the report may be made only in connection with an amendment made to a specific claim. The statement must be in the language in which the PCT international application is published.

A statement explaining the amendment is not to be confused with and must be clearly distinguished from the letter indicating the differences between the claims as filed and as amended and from the statement concerning amendments which must be included in a demand for PCT international preliminary examination. Where the statement does not comply with the requirements, it is neither published by the PCT international Bureau nor communicated to the designated Offices.

May the amended claims include new matter?

The PCT provides that amendments are not to go beyond the disclosure in the PCT international application as filed. This requirement is not directly enforceable during Chapter I of the PCT international phase, but failure to comply with it may have adverse consequences for the applicant during the PCT international preliminary examination and in the national phase.

Should a copy of amendments under Article 19 be filed with the PCT international Preliminary Examining Authority?

If the applicant submits a demand for PCT international preliminary examination, he should file a copy of the amendment to the claims under Article 19 with the PCT international Preliminary Examining Authority with the demand (if the amendment has already been filed) or at the same time as he files the amendment with the PCT international Bureau (if the amendment is filed after the demand). The PCT international Bureau transmits a copy of any amendment received prior to the filing of the demand to the PCT international Preliminary Examining Authority unless that Authority indicates that it has already received a copy. If an amendment is received after the demand has been filed, the PCT international Bureau transmits a copy to the PCT international Preliminary Examining Authority in any event, but timely filing of a copy by the applicant direct with that Authority ensures that the PCT international preliminary examination will proceed without undue delay or uncertainty.

In what circumstances should the claims be amended under Article 19?

Since any amendments of the claims under Article 19 are published with the PCT international application, such amendment may be useful to the applicant if there is a reason to better define the scope of the claims for the purposes of provisional protection in those designated States whose national law provides for such protection.

PCT INTERNATIONAL PUBLICATION

When and how is the PCT international application published by the PCT international Bureau?

PCT international applications are published by the PCT international Bureau except in any of the following cases:

(i) if the PCT international application is not accorded an PCT international filing date by the receiving Office;
(ii) if the PCT international application is considered withdrawn before the technical preparations for publication have been completed;
(iii) if the PCT international application is withdrawn by the applicant before the technical preparations for publication have been completed;
(iv) if the only designated State, or the only designated State remaining at the time of the completion of the technical preparations for publication, is the United States of America.

When are the technical preparations for PCT international publication completed?

The technical preparations for publication are generally completed by the 15th day prior to the date of publication.

When does PCT international publication take place?

PCT international publication takes place promptly after the expiration of 18 months from the priority date. However, when the applicant asks the PCT international Bureau to publish his PCT international application earlier, the PCT international Bureau does so.

What constitutes PCT international publication?

PCT international publication is effected in the form of a pamphlet containing the PCT international application and, if available at the time of publication, the PCT international search report or declaration by the PCT international Searching Authority to the effect that no PCT international search report will be established, and also any amendment, including any statement, under Article 19. Where the time limit for amending the claims has not expired at the time of the completion of the technical preparations for publication, the PCT international application is published with an annotation accordingly, and any amendment received within the time limit is published later. Similarly, if the PCT international search report or declaration by the PCT international Searching Authority is not available, the PCT international application is published with an annotation accordingly and the report or declaration is published separately after it has been received by the PCT international Bureau. Each published PCT international application is assigned an PCT international publication number consisting of the code WO followed by an indication of the year and a serial number (for example, WO 2004/123456).

On the same date as that on which the pamphlet is published, a corresponding entry is published in the PCT Gazette, a publication of the PCT international Bureau. The PCT Gazette is published in electronic form and in paper form. In the PCT Gazette in electronic form, the entry corresponding to each published PCT international application contains bibliographic data, the title of the invention, the abstract and a characteristic drawing (if any) of the PCT international application; in the PCT Gazette in paper form, each entry contains the bibliographic data and the title of the invention.

In what language is the PCT international application published?

If the PCT international application is filed in Chinese, English, French, German, Japanese, Russian or Spanish, it is published in the language in which it was filed. Where the language of publication is Chinese, French, German, Japanese, Russian or Spanish, the PCT international Bureau prepares English translations of the title of the invention, the abstract and the PCT international search report (or the declaration referred to in paragraph 280) and includes the translations in the pamphlet. The PCT international Bureau also prepares, where applicable, French translations of the title and the abstract.

How can copies of the pamphlet containing the published PCT international application be obtained?

Anyone may obtain a copy of the pamphlet by ordering it from the PCT international Bureau, preferably referring to its PCT international publication number. Published PCT international applications are also available in CD-ROM form; details are available from the PCT international Bureau.

How can copies of the PCT Gazette in paper form be obtained?

The PCT Gazette in paper form may be obtained by subscription from the PCT international Bureau. Single issues of the PCT Gazette, including special issues containing information of a general character, may also be obtained.

How can the PCT Gazette in electronic form be accessed?

The PCT Gazette in electronic form is available on-line directly at www.wipo.int/ipdl/en/search/pct/search-adv.jsp or via WIPO’s Internet website at http://www.wipo.int/pct/en/. Information from the PCT Gazette in electronic form is reproduced also on CD-ROM; details are available from the PCT international Bureau.

How can copies of the priority document be obtained?

Third parties who wish to receive a copy of the priority document may apply to the Office with which the earlier application was filed, to certain designated Offices or to the PCT international Bureau. The PCT international Bureau furnishes copies of priority documents, after PCT international publication of the PCT international application, to any person upon request and subject to reimbursement of the cost. However, the PCT international Bureau does not furnish such copies if, prior to the PCT international publication, the PCT international application was withdrawn, or the relevant priority claim was withdrawn or was considered not to have been made, or the relevant declaration of the priority claim was cancelled.

What are the legal effects of PCT international publication?

Article 29 has the effect of ensuring, with certain qualifications, that provisional protection is available after the PCT international publication of an PCT international application in the same way as it is after national publication of unexamined national applications. The qualifications are such as to enable Contracting States to make such protection conditional on the furnishing of translations, on the expiration of 18 months from the priority date, and/or on receipt by the designated Office of a copy of the PCT international application as published under the PCT.

Can access be gained at the PCT international Bureau to the file of an PCT international application?

For PCT international applications filed before 1 July 1998, the applicant or any person authorized by the applicant may, subject to reimbursement of the cost of the service, obtain copies from the PCT international Bureau of any document contained in its file. For PCT international applications filed on or after 1 July 1998, the PCT international Bureau will, at the request of any person but not before the PCT international publication of the PCT international application upon reimbursement of the cost of the service, copies of any document contained in its file.

PCT international applications filed on or after 1 January 2004, the PCT international Bureau will not, unless requested or authorized by the applicant, provide access by any person or authority to:

(i) the written opinion of the PCT international Searching Authority;
(ii) any informal comments submitted by the applicant on the written opinion of the PCT international Searching Authority;
(iii) the PCT international preliminary report on patentability (Chapter I of the PCT); or
(iv) any translations of those documents or written observations by the applicant on those translations;
before the expiration of 30 months from the priority date.

COMMUNICATION OF COPIES TO THE DESIGNATED OFFICES

How and when do the designated Offices receive copies of the PCT international application?

Subject to what is said in this paragraph and in paragraph 321, the PCT international Bureau communicates a copy of the PCT international application in the language in which the PCT international application is published, to each designated Office upon their request and at the time specified by that Office, but not prior to the PCT international publication. Where the language in which the PCT international application is published is different from the language in which it was filed, the PCT international Bureau will furnish to any designated Office, upon the request of that Office, a copy of that application in the language in which it was filed. In practice, the communication is effected by sending a copy of the pamphlet . The PCT international Bureau also sends, promptly after the expiration of 19 months from the priority date in respect of designated Offices which do not apply the 30-month time limit, and again promptly after the expiration 28 months from the priority date in respect of designated Offices which do apply the 30-month time limit, a notice at 19 months and a second notice at 28 months to the applicant informing him of the Offices to which the communication has been effected and of the date of such communication. The notices must be accepted by all designated Offices as conclusive evidence that the communication has duly taken place on the date specified in the notices. On receiving the notices, the applicant knows that he does not have to send a copy of the PCT international application to any of the designated Offices indicated on them as having been sent the communication.

The PCT System offers many advantages, however, the procedural requirements and application formalities frequently change and strategic considerations can vary widely depending on individual circumstances. For legal advice on the PCT, consult a registered patent attorney qualified to assist you in international patent filing matters.