PCT or the Patent Co-operation Treaty helps inventors patent their inventions internationally, helps patent offices with their patent granting decisions, and facilitates public access to technical information of the inventions.
By filing one application under PCT, the applicants can seek protection in more than 156 patent contracting countries. Although, the decision related to patent grants still remains under the control of the national or regional patent offices of those countries. This is also known as the national phase which follows the International Phase. The procedure of application processing in the National Phase is the same as processing a national application in the respective countries.
The processing of the applications in the national phase of PCT begins only after the international applications fulfill the requirements for entry into the national phase. These requirements include paying national fees and in some cases filing translations of the applications. But the most important requirement is adherence to the timeline of the respective countries.
These requirements for filing applications in the national phase must comply before the end of 30 or 31st month from the priority date. The International Phase PCT ends within 30/31 months from the earliest priority date and it is imperative that before the end of the International Phase, the applicant must decide on the PCT member countries for the National Phase, otherwise the application is deemed to be abandoned or withdrawn.
While it is in the applicant’s best interest to always strictly adhere to the timelines, but missing this 30 months deadline is also not uncommon. Once the deadline is missed, the guidelines for condonation of delay of individual countries or jurisdictions need to be followed to extend the deadline or condone the delay. Many countries have extended their deadline and set it to 31 months from the earliest priority. Some other countries have set it for 34 months and others maintain the 30-month deadline. The deadlines vary in various jurisdictions.
Provision for extension in the US:
In the US, for the condonation of un-intentional delay following steps need to be followed:
1. Filing petition for revival of unintentional delay under 37 CFR 1.137(b);
2. Petition fee payment under 37CFR 1.17(m);
3. Submit the required document along with the US national application; and
4. Statement mentioning the reason behind the un-intentional delay
Though, the allowance still depends solely on the discretion of the USPTO commissioner. Alternatively, a CIP or Continuing Patent Application may be filed.
Provision of extension in Canada:
One needs to file a request for condonation of unintentional delay within 12 months of the International phase or 42 months from the earliest priority date. Along with the request one needs to pay a fee of 200 Canadian Dollars and a statement mentioning the reason behind the unintentional delay. The allowance solely relies upon the discretion of the commissioner.
Provision of extension in Europe:
In Europe, if the deadline is missed the EPO issues a notice that the application is deemed to be withdrawn. This notice provides the applicant, additional 2 months from the date of mail of notice. The delay can be condoned by fulfilling all the requirements and paying the requisite fee of €240 or $320. Alternatively, the applicant can also seek for re-establishment of rights under Article 122 EPC.
Provision of extension in India:
India has 31 months deadline and there is no provision for late entry into the National phase in India. India is very strict with its patent deadlines and it is imperative that the deadlines be met diligently for National phase patent application processing in India.
Provisions of extension in other countries:
1. China offers a 2-month extension for Rmb 1,000 (US$165).
2. 1-month extension is available in the Philippines on payment of an amount equal to 50% of the filing fee.
3. 3 months extension is allowed in Turkey.
4. 30 days extension is allowed in Serbia.
5. 3 months extension is available in Singapore on payment of S$200 (US$158) for each month of delay along with a statement on the reason for the unintentional delay.
6. 12-month extension is available in Indonesia along with a statement on the reason for the unintentional delay.
7. Thailand is strict on “in spite of due care” norms
8. Malaysia applies strict unintentional standards for such requests. A request for reinstatement with supporting declaration, evidence, other requirements, and a fee of RM 650 (US$200) per month of delay needs to be filed with Malaysian National Office.
9. Vietnam has a 31-month deadline and allows reinstatement for any reason accepted by the National Office of Intellectual Property within 6 months with late entry fee.
You may also be interested in below some of the blog posts:
Have you missed the deadline to file a PCT application? What next?
How to Conduct Patent Search in WIPO Patentscope Database
PCT Patent Application in India
