Delayed PCT entry in National Phase
Patent Cooperation treaty or PCT is an international agreement that simplifies the process of filing patent applications in different countries. Administered by the WIPO, PCT is a seamless route to file an International application, provide an international filing date for a patent application and to facilitate the Applicant to formulate a suitable IP strategy before embarking into different jurisdictions. Moreover, filing a PCT application is cost-effective in terms of reducing filing costs and also obviates the need of keeping a tab on multiple individual applications filed in an alternative scenario.
A PCT patent application has two phases: namely International Phase and a National Phase. The National Phase follows the International Phase and consists processing the PCT National Phase application in the respective patent offices of the country where the Applicant wishes to enter. Deadlines play a crucial role in each every stage of a patent application right from filing a priority application. In most cases, the statutory deadline that needs to be followed for each and every patent application is non-negotiable barring a few instances of lenience that varies from jurisdiction to jurisdiction.
This article aims to provide a bird’s eye view regarding the avenues that may be followed, if an Applicant misses out unintentionally on the crucial National Phase statutory deadlines. A list of time limits for National Phase entry in different contracting states can be found here https://www.wipo.int/pct/en/texts/time_limits.html.
India follows the 31 month National Phase entry deadline and there is absolutely no provision of recourse for a delayed PCT entry. This has come into force under the amended Patents Rules, as on 15th May 2016, the 31 month deadline and has made this expressly clear by specifically excluding rule 24(4)(i) from the purview of the Controller to extend any prescribed time limits (by way of a petition under rule 138).
In US, the Applicant can request to condone in unintentional delay in the National Phase entry by fulfilling the below four requirements:
1) File a petition for revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b);
2) Pay a petition fee 37 CFR 1.17(m) based on the Applicant status;
3) Provide a proper reply (i.e., the US national application and all necessary documents and fees associated with entering the US national phase);
4) Provide a statement that the entire delay was unintentional (contained in Form PTO/SB64/PCT):
“The entire delay in filing the required reply from the due date for the required reply until the filing of a grantable petition under 37 CFR 1.137(b) was unintentional.” The approval of this petition is solely on the discretion of the USPTO Commissioner.
Canada on the other hand follows a simplified way to request condonation of unintentional delay in Canadian National Phase entry for up to 12 months (42 months from its priority date) by paying a fee of 200 Canadian Dollars without a requirement to present a statement declaring unintentional delay. However, as per the recent amendments under the proposed new Rule 150(4)(a)(i), it will no longer be adequate to merely pay the late national phase entry fee, without any explanation, in order to enter national phase in Canada after the expiry of 30 months from the priority date.
The Applicant will be required to submit to the Commissioner a declaration that the delayed PCT entry was unintentional and a statement of reasons for the failure. Moreover, reinstatement of the right to enter national phase will be discretionary on the part of the Commissioner. The amended rule 150(4)(a)(i), is due to come into effect from November 1, 2019.
In Europe, although there is no specific provision, the EPO provides for “further processing” under Article 121 EPC of an international application that failed to enter the regional phase in a timely manner (delayed PCT entry). If the 31-month deadline is missed, the EPO will issue a notice that the application is considered withdrawn.
This notice will provide the applicant with a period of two months from the mailing of the notice to request further processing of the application along with payment of the required fee (€240, [US$320]) and completing all necessary requirements for regional phase entry. If this is not available, an Applicant can seek re-establishment of rights under Article 122 EPC. However, this is accompanied by a level of uncertainty as the re-establishment criteria are more stringent and need to be justified or met in an appropriate manner.
To summarize, although there may be a consensus that in most cases there are provisions to request condonation in PCT National Phase entry in a few jurisdictions, it does not hurt to be more diligent with docketing of various statutory deadlines and take diligent steps to ensure that the unfortunate circumstances may be avoided altogether.