Numerous articles have been written about the international phase of the Patent Cooperation Treaty (PCT) and the options available to applicants during PCT processing. Equally important is an understanding of the national phase and the options available to applicants as their applications transition to national processing.

The Patent Cooperation Treaty (PCT)

The PCT is an international treaty administered by the World Intellectual Property Organisation (WIPO) in Geneva. The PCT is an international system for filing patent applications (and similar titles) that is made up of two phases. The first, or international, phase is comprised of Chapter I and optionally Chapter II. In Chapter I, the applicant files the international application with the receiving office, a formalities review is performed by the receiving office and an international filing date is accorded. Following this, an international search is conducted by an International Searching Authority (ISA) that issues an international search report and a written opinion by the search examiner as to the novelty, inventive step and industrial applicability of the claimed invention. Finally, the International Bureau (IB) of WIPO publishes the international application and the search report. If the applicant does not wish to formally respond to the written opinion of the ISA, the IB will issue an International Preliminary Report on Patentability (Chapter I of the PCT) by placing a cover sheet onto the written opinion of the ISA. However, if the applicant wants to formally respond to the written opinion of the ISA or wants to make amendments to the description, claims and/or drawings, he must file a demand for international preliminary examination with the International Preliminary Examining Authority (IPEA), thus beginning the optional Chapter II process. The IPEA will consider the amendments and/or arguments and issue an International Preliminary Report on Patentability (IPRP) under Chapter II of the PCT. In the second or national phase, the applicant takes the international application to the national offices. Prosecution before the national offices is conducted in much the same manner as an application filed directly in the national offices. The decision on whether or not to grant a patent belongs to each national office and not to any of the international authorities under the PCT.

The move from the international to the national phase must be made by the applicant within 30 months of the earliest priority date claimed in the application. Some countries give a little more time, allowing for extensions beyond 30 months. No country can require entry before 30 months. This 30-month deadline for deciding where to seek patent protection is 18 months beyond the end of the Paris Convention priority year. Properly used, this additional 18 months can spell the difference between having sufficient commercial, technical and legal information to make well informed patenting decisions and having to decide where to file based on inadequate information.

It is only at the time of entering the national phase that an applicant must file any required translations, hire local agents (if needed), pay the national fees and fulfil any special requirements required by national law. Although a number of PCT requirements continue into the national phase, in general the application moves from being under the auspices of the treaty to being under national law.

The procedures for applicants when entering the national phase are simplified based on the processing during the international phase. For example, a copy of the application as published is supplied to the national offices by WIPO: the applicant generally does not need to supply a copy. Additionally, WIPO will supply the national offices with a copy of the International Search Report (ISR) and the IPRP (Chapter I or II). A translation of the ISR and the IPRP into English will also be supplied by WIPO if they were issued in another language. If a certified copy of a priority document was filed during the international phase, the national offices will receive a copy from WIPO – the applicant does not have to supply a copy. It is important to note that these items are supplied to the national offices by WIPO – they are not supplied to any local agent retained to handle the entry. An applicant must make separate arrangements to get the needed information to the local agent – most of the documents can be downloaded free of charge from the WIPO website: http://www.wipo.int.

While WIPO takes care of some of the requirements, applicants also have obligations. As you might expect, the applicant is responsible for paying any national fees for entry. Additionally, the applicant is responsible for supplying any required translation of the published international application and any amendments made to the application during the international phase. In the countries being discussed here, the application and any amendments must be translated into Indonesian (ID), Vietnamese (VN) or English (IN, MY, PH and SG).

In addition to these generic requirements, each country may have a number of local requirements. These may include items such as assignments, inventor's oath or declaration or appointment of a local agent. Second only to advice from a local agent, the national chapters of the PCT Applicant's Guide are the best places to learn of the special requirements of each PCT member state of interest (see http://www.wipo.int/pct and click on Applicant's Guide). In India and south-east Asia, the key special requirements are as below.

Appointment of an agent for non-residents, assignment where applicant is not the inventor or declaration of inventorship, assignment (if applicant changed after PCT filing) and translations furnished in three copies.

Assignment where the applicant is not the inventor or declaration of inventorship, statement listing corresponding filing in other countries, power of attorney for any agent used, address for service in India, verification of translation (into English) and application or translation to be furnished in three copies.

Appointment of an agent for non-residents, a statement justifying the applicant's right to a patent if the applicant is not the inventor, evidence of the right to claim priority if the applicants are not the same and the nucleotide and/or amino acid sequence in a computer-readable format.

Appointment of an agent for non-residents, translation (into English) to be furnished in duplicate, assignment if the applicant is not the inventor, assignment of the priority application where applicants are not identical and the nucleotide and/or amino acid sequence in a computer-readable format.

Verified translation (into English) and address for service in SG.

Appointment of an agent for non-residents, assignment if the applicant is not the inventor, assignment or priority application where applicants are not identical, the nucleotide and/or amino acid sequence in a computer-readable format and a translation to be furnished in three copies.

See the PCT Applicant's Guide for a complete listing of national phase entry requirements.

Even though some countries do not require the use of a local agent, it is strongly recommended that a competent agent be retained to help navigate your national phase entry through the maze of local laws, rules, prosecution and practice.

PCT provisions applicable in the national phase

There are several important provisions under the PCT that apply in the national phase.

• PCT formal requirements for the application are applicable during the national phase.

• In general, no translation of the priority document can be required unless the validity of the priority claim is relevant to patentability.

• If the national office does not receive a copy of the priority document from the IB, they must request a copy from the IB and not the applicant (assuming the applicant arranged for a copy to be filed in the international phase).

• If the applicant fails to make arrangements to supply a certified copy of the priority document during the international phase, no national office may invalidate the priority claim without first giving the applicant an opportunity to supply the document directly to the national office.

• If the applicant receives an unfavourable decision on any number of matters during the international phase, those issues may be revisited before the national offices during the national phase.

• In general, no legalised or certified translation of the international application can be required.

• Some countries require specific actions to be taken within a specified time after filing. Since the international (PCT) filing date is the filing date in each designated state, some national requirements may fall due during the international phase of the PCT. Under the treaty, any national requirement that falls due during the international phase is postponed until national phase entry. Check with your local agent to determine the deadline for filling any such requirement, as it may be different from the deadline under national practice.

• An applicant is guaranteed an opportunity to amend the application before examination begins in the national phase. Most countries offer multiple opportunities to amend during prosecution.

• In most PCT contracting states, an applicant may request reinstatement of an application that failed to enter the national phase within the set time limits. An indication that the reason for missing the time limit was unintentional or in spite of due care required by the circumstances will be required. Each PCT country decides the criterion that applies (the PCT provision does not apply in IN or PH. However, under PH national law, applications may still be filed within 31 months of priority upon payment of a surcharge equal to 50% of the filing fee).

• An applicant may request restoration of the right of priority where the international application was not filed within the priority period. Applicants can request that priority be restored if missing the priority filing deadline was unintentional or in spite of due care required by the circumstances having been taken (each country will set the criterion to be used: some countries use both criteria). A request for restoration of the priority claim may be made during the international phase or before the national office during the national phase (this provision does not apply in IN, ID or PH).

• It is important to note that national law applies in many substantive areas including the definition of novelty, inventive step and industrial applicability, grace periods for public exposures, adequacy of description, patentable subject matter and style of claiming. Any definitions under the PCT (such as in Article 33) do not apply during the determination of patentability before the national offices.

• Be sure to enter the national phase within the applicable time limit. Even though some countries give more than 30 months, if you docket your entries for 30 months you will never go wrong. Also, some countries, such as ID, have different deadlines depending on whether one is entering from Chapter I (no international preliminary examination) or Chapter II. The deadline in ID is 30 months for cases entering from Chapter I and 31 months for cases entering from Chapter II. In IN and VN, both Chapter I and Chapter II applications are due 31 months from the priority date. In PH, applications may be filed between 30 and 31 months from the priority date provided a surcharge of 50% of the filing fee is paid. In SG, late entry up to 42 months from priority is allowed provided extension fees are paid and a statutory declaration/affidavit is submitted giving the reason for late filing.

• Work with your local agent to submit a preliminary amendment to the claims to help reduce excess claims fees. In IN, there is an Re800 ($19) fee for each claim in excess of 10 (Re200 excess claim for an individual). In PH, there is a P300 ($7) fee (P150 for a small entity) for each claim in excess of five. In ID, the fee is Rp40,000 ($4) for each claim over 10. In MY, the fee is RM10 ($3) for each claim in excess of 10. In some offices, such as the US and EP, the excess claim fees can be very high.

• If there are any negative findings in the IPRP (Chapter I) or the IPRP (Chapter II), it is recommended that a preliminary argument and/or amendment be submitted with (or just after) national phase entry. This will allow the examiner to initially look at the case in light of your arguments and/or amendments and should speed prosecution and reduce the number of official actions issued in the case.

The PCT has become the preferred method of patent filing for applicants with a broad spectrum of geographic interests. The many features and safeguards available during the international phase of the PCT are well known and utilised by PCT practitioners. The second part of the PCT process (entering the national phase) may not be as well known. Having a firm grasp on the provisions of the PCT that extend over into the national phase, as well as the requirements and options available under national law, is important in helping to ensure that your application enters the national phase smoothly and proceeds through national examination and grant quickly, efficiently and in the most cost effective manner.

Gladys Mirandah

Gladys Mirandah is admitted to practice in Singapore, England, Wales and Brunei. She brings with her 30 years of IP experience in Asia. She is a director of pmc Singapore, Malaysia and Indonesia and senior partner in gladys mirandah co. She is also a registered patent agent in Singapore. She is an active member of INTA and has also participated in several international forums, including being a guest speaker at the Shanghai International Symposium, the Japan group of APAA, the Customs Intellectual Property Information Center (CIPIC), the Institute of Trademark and Patent Attorneys of Australia (IPTA) and the Bayerische Patentanwaltsverein in Munich. Her publication credits include contributions to Intellectual Property Protection in Asia, Worldwide Trade Secrets Law, Managing Intellectual Property Patent and Design Yearbook, Trade Mark Yearbook and IP Litigation Yearbook. She has for several years contributed regularly to Managing Intellectual Property for the MIP Week and International Briefing columns. Gladys is on the advisory board of the World Intellectual Property Report (BNA) for Singapore, Indonesia, Vietnam and India. She is also appointed as the country correspondent covering the ASEAN region for MARQUES. Gladys is based in the Singapore office of pmc and oversees its operations in Indonesia and Vietnam and works closely with its Indian affiliate office.

David Reed

David hails from Chicago and was with Procter & Gamble (P&G) for almost 40 years before being appointed as pmc's consultant. He graduated from Northwestern University in Evanston, Illinois with a bachelor of science degree in chemical engineering and completed postgraduate training in chemical engineering at the University of Cincinnati. His introduction to the legal field came in 1980 when he was placed on special assignment as the technical adviser to outside counsel in relation to a number of product liability lawsuits and eventually several patent litigation cases. He then became registered before the United States Patent and Trademark Office as a patent agent in 1988 and was promoted to manage the foreign filing and prosecution department, with responsibility for filing and prosecution in Canada, Latin America, the Middle East, Asia and the Pacific regions. David has gained a tremendous amount of experience in the provisions of the PCT. Over the course of managing the preparation, filing and national/regional phase entry of over 8,000 PCT applications, he has used all of the available features of the PCT and has probably stumbled into and successfully managed his way out of most issues that exist under the PCT. Because of this experience, he has been invited to speak on foreign patent practice, with concentration on PCT practice, for various organisations. He also teaches the basic and advanced PCT courses for the Patent Resources Group (PRG). David works with top-level management in promoting the services of pmc in Singapore, Malaysia, India, Vietnam, Indonesia and Asia generally.