In our previous blog post of the IP International Law series at IP Consultores, we analyzed the second stage of the international patent procedure under the Patent Cooperation Treaty (the PCT from now on). Now we will examine the third stage of this international patent procedure.
The International Publication
Article 21 (1) states that the WIPO’s International Bureau “shall publish international applications.” In a general way, the International Bureau must publish the international application “after the expiration of 18 months from the priority date of that application” by Article 21 (2) (a).
Nonetheless, the general time frame to publish the international application is established in Article 21 (2) (a); subparagraph (b) sets out the possibility for applicants to ask “the International Bureau to publish his international application any time before the expiration of the time limit referred to in subparagraph (a).”
The International Search Report or the declaration referred to in Article 17 (2) (a) shall also be published by the International Bureau by Article 21 (3). Furthermore, according to Article 21 (5), when “the international application is withdrawn or is considered withdrawn before the technical preparations for publication have been completed,” there shall be no international publication.
When the International Bureau considers -following article 21 (6)- that international application “contains expressions or drawings which […] are contrary to morality or public order or […] contains disparaging statements […],” the Bureau is entitled to “omit such expressions, drawings, and statements, from its publications.”
By Article 22 (1), the applicant must furnish the following documents to each designated Office “not later at the expiration of 30 months from the priority date“: 1) a copy of the international application, 2) a translation, and 3) the payment of the national fee (if any).
When the International Searching Authority makes a declaration that no International Search Report will be established under Article 17 (2) (a), “the time limit for performing the acts referred to in paragraph (1)” will be the same.
Moreover, when according to the national law of the designated State, the applicant may furnish “the indication of the name of and other prescribed data concerning the inventor” “at a time later than that of the filing of a national application” -by Article 22 (1)- this time frame cannot be “later than at the expiration of 30 months from the priority date.”
Following Article 23 (1), any designated Office “shall process or examine the international application prior to the expiration of the applicable time limit under Article 22.” Nonetheless, this general rule has one exception when the applicant requests any designated Office to “process or examine the international application at any time.”
Review by Designated Offices
By Article 25 (1) (a), the International Bureau shall send “copies of any document in the file to any of the designated Offices named by the applicant” in the three following cases: 1) when the receiving Office “has refused to accord an international filing date,” 2) when the receiving Office “has declared that the international application is considered withdrawn,” and 3) when the International Bureau “has made a finding under Article 12 (3).”
According to Article 25 (2) (a), each designated Office shall review the following issues: 1) “that the national fee (if any) has been paid,” 2) “the appropriate translation (as prescribed) has been furnished within the prescribed time limit,” 3) “decide whether the refusal, declaration or finding, referred to in paragraph (1) was justified.“
When any designated Office realizes -following Article 26- that an international application does not comply with the requirements of the Treaty or the Regulations, it cannot reject the application “without first giving the applicant the opportunity to correct the said application to the extent and according to the procedure provided by the national law.”
National requirements
According to Article 27 (1), the Contracting states cannot outline in their own national law “requirements relating to the form or contents of the international application different from or additional to those which are provided for [the] Treaty and the Regulations.”
Moreover, following Article 27 (5), the Contracting states are entitled to apply “the criteria of its national law in respect of prior art and other conditions of patentability not constituting requirements as to the form and contents or applications.” Furthermore, Article 27 (6) states, “the national law may require that the applicant furnish evidence in respect of any substantive condition of patentability prescribed by such law.”
The receiving Office or the designated Office may apply the national law in the following cases: 1) “it relates to any requirement that the applicant be represented by an agent having the right to represent applicants before the said Office,” and 2) “the applicant has an address in the designated State for the purpose of receiving notifications.”
Amendment of the Claims, the Description, and the Drawings before Designated Offices
By Article 28 (1), any applicant has a right “to amend the claims, the description, and the drawings, before each designated Office within the prescribed time limit.” Furthermore, the same provision states that the designated Office cannot “grant a patent, or refuse the grant of a patent before such time limit has expired except with the express consent of the applicant.“
There are some constraints -according to Article 28 (3) and (2)- for the amendments: 1) “shall be in accordance with the national law of the designated State,” and 2) “shall not go beyond the disclosure in the international application as filed” with the exception that the national law applicable “permits them to go beyond.”
Effects of the International Publication
Following Article 29 (1), “the effects […] of the international publication of an international application shall […] be the same as those which the national law of the designated State provides for the compulsory national publication of unexamined national applications as such.”
Likewise, according to Article 29 (3), when “the international publication has been effected […] before the expiration of 18 months from the priority date, the effects provided for in paragraph (1) shall be applicable only from the expiration of 18 months from the priority date.”
Confidentiality of the International Application
The International Bureau and the International Searching Authority -according to Article 30 (1)- “shall not allow access by any person or authority to the international application before the international publication of that application.” The exception to this rule is when the applicant grants authorization to disclosure.
In our next blog post at IP Consultores, we will continue reviewing the fourth stage of the international patent procedure under the PCT. It is essential to point out that until now, we have reviewed the first three stages, and all of them are obligatory. Nonetheless, according to the PCT, the fourth and fifth stages are optional for the applicant.
*** This post series does not constitute legal advice. Instead, it only pretends to contribute to understanding the central concepts of International Patent Law. Please contact us for legal advice on this or any related topic.
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