The last Monday, we published the first part of a set of posts dedicated to analyzing the Patent Cooperation Treaty. It is vital to remember that according to WIPO’s Applicant Guide, the international procedure for prosecuting an international patent application may be split into two major phases: 1) the international and 2) the national.
In the international phase, there are five stages. Three of them are obligatory, and the other two are optional: 1) filing an international application, 2) international search, 3) international publication, 4) supplementary international search (optional), and 5) international preliminary examination (optional).
Now, we will analyze the first stage of the international phase of the PCT’s patent application: filing an international application. While in other posts, we will explore each of the steps that set out the international phase. Further, the national stage will also be examined through this post series.
The International Application
According to Article 2 (vii) of the Patent Cooperation Treaty (the PCT from now on), an International Application (IA after this) “means an application filed under [the PCT].” It is necessary to distinguish between the applications filed before any national or regional patent Office and the IA. Some fundamental differences between both applications are: 1) while the national law rules the national patent application, the PCT sets forth the IA’s regulation, and 2) the scope of the protection of each patent application, in the case of national applications, is national or regional, while in the case of PCT’applications is global.
The right for filing an IA is of “any resident or national of a Contracting State [of the PCT]” following Article 9 (1). However, there is one exception according to Article 9 (2), and it entails that the Assembly of the Union “may decide to allow the residents and nationals of any country party to [the Paris Convention] which is not party to [the PCT].”
Content and requirements
Following Article 3 (2), all IA shall contain the following five elements: 1) a request, 2) a description, 3) one or more claims, 4) one or more drawings, and 5) an abstract. Furthermore, all the IA must comply with some requirements [Article 3 (4)], such as: 1) be written in a prescribed language, 2) the prescribed physical requirements, 3) the prescribed requirement of unity of invention, and 4) “be subject to the payment of the prescribed fees.“
The request, the description, and the claims
Among the data that the request must contain following Article 4 (1) are 1) a petition to process the IA according to the PCT, 2) “the designation of the Contracting State or States in which protection for the invention is desired,” 3) the name and other data of the applicant and the agent, 4) the title of the invention, and 5) the name and other data of the inventor.
According to Article 5, the aim of the description is “to disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.“
By Article 6, the claim or claims of the IA “shall define the matter for which protection is sought.” These claims must be “clear and concise” and “be fully supported by the description.”
The drawings
According to Article 7 (1), the drawings “shall be required when they are necessary for the understanding of the invention.” If the drawings were not necessary “for the understanding of the invention,” the applicant may include them in the IA, or any designated Office may require them.
The procedure for filing the IA
The receiving Office is “the national Office or the intergovernmental organization with which the international application has been filed” following Article 2 (xv). This Office will check the fulfillment of the IA’s requirements and prosecute the IA according to the rules of the PCT and the Regulations.
After the receiving Office has reviewed it, it must send a “record copy” of the IA to the WIPO’s International Bureau and a “search copy” of the IA to the competent International Searching Authority. The “record copy” is available to any designated Office which may ask it to the International Bureau “prior to the communication provided for in Article 20.”
Furthermore, the applicant may present a copy of the IA to any designated Office or “ask the International Bureau to transmit a copy of his IA to any designated Office.” Nonetheless, by Article 13 (2) (c), any national Office may require “the International Bureau that it does not wish to receive copies” according to subparagraph (b).
The international filing date
The receiving Office will determine following Article 11 (1) “the date of receipt of the IA” as the “international filing date” when the applicant fulfills the following requirements: 1) the applicant does not lack the right to file an IA, 2) the IA is written in the prescribed language, 3) the IA contains an indication such as document, the designation of one Contracting State, the name of the applicant, a description, and a claim or claims.
When the receiving Office realizes that the IA does not fulfill the fundamental requirements, “it shall invite the applicant to file the required correction” according to Article 11 (2) (a). If the applicant complies with the requirement, the receiving Office will consider the “international filing date” as “the date of receipt of the required correction.”
Any IA which fulfills the requirements of Article 11 (1) and contains an “international filing date” by Article 11 (3) “shall have the effect of a regular national application in each designated State as of the international filing date.”
Defects in the International Application
The receiving Office must check that the IA does not contain any defect such as: 1) it is not signed, 2) it does not contain “the prescribed indications concerning the applicant,” a title, or an abstract, and 3) “it does not comply to the extent provided in the Regulations with the prescribed physical requirements.”
When the receiving Office finds any of the previous defects in the IA, by Article 14 (1) (b), “it shall invite the applicant to correct the IA within the prescribed time limit.” If the applicant does not comply with the receiving Office’s requirements, “that application shall be considered withdrawn, and the receiving Office shall so declare.”
The right of priority
According to Article 8 (1), any IA may contain a declaration “claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.”
It is essential to remember that the Paris Convention sets forth in Article 4 A (1) the right of priority, which entails knowing if somebody has previously submitted another patent application for the same invention’s claims in different Countries of the Paris Convention.
In the next post of this International Patent Law series, at IP Consultores, we will analyze the different concepts and rules concerning international searching, which -according to the WIPO’s Applicant Guide– is the second stage of the international phase of a PCT’s patent application.
*** This post series does not constitute legal advice. Instead, it only pretends to contribute to understanding the central concepts of International Patent Law. Please get in touch with us for legal advice on this or any related topic.
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