Filing an international application under the Patent Cooperation Treaty comes with two phases, the international phase and the national phase. David Reed and Denise Mirandah report from Singapore on what steps a patent owner can take after missing the 30-month deadline for national phase entry.
Upon filing an international application under the Patent Cooperation Treaty, the application begins a two-phase process leading to acceptance or rejection. The first, or international phase, comprises filing, a prior art search, a written opinion by the searching examiner on novelty, inventive step and industrial applicability and publication of the application. The international phase also offers two optional procedures: supplementary searches and international preliminary examination. The international phase ends 30 months from the earliest priority date. Before the end of the international phase, the applicant must decide the PCT member countries where the application will be continued and make the necessary filings to begin the second or national phase in which the application will be examined by the individual national patent offices and the final decision on grant will be made. In the countries where the national phase is not entered, the international application is considered withdrawn or abandoned.
For a variety of reasons, the 30-month deadline for national phase entry occasionally passes without entry being made. What, if anything, can an applicant do to reinstate the international application and enter the national after the deadline has passed?
Individual Country Deadlines
Some countries routinely allow additional time for national phase entry. Under the PCT, the international phase ends 30 months from the earliest priority date and the national phase must be requested in each country of interest by this treaty deadline. While no PCT member state can require an applicant to enter the national phase before 30 months, each country has the option of extending the deadline beyond 30 months.
Many countries have extended the deadline, giving an applicant more time to enter the national phase. For example the European Patent Office, the African Regional Intellectual Property Organization, and IP offices in Australia, South Korea, Indonesia, and the Russian Federation have all set their deadline at 31 months from priority. One PCT state, Bosnia and Herzegovina, has set the deadline at 34 months. Countries that have not extended the entry deadline, like the African Intellectual Property Organization, the United States, Canada, Japan, China and Malaysia, maintain the 30-month treaty deadline. A complete listing of the national phase entry deadlines can be found on the WIPO website at http://www.wipo.int/pct/en/texts/time_limits.html.
Extensions of Time
Some countries offer the option of requesting an extension of time for national entry. Canada (30 month deadline) and Indonesia (31 month deadline) offer extensions of up to 12 months for the payment of a fee. In Canada, the late entry fee is C$200 (US$195). In Indonesia the extension fee is Rp5 million (US$480) plus a notarized affidavit explaining the reasons for the unintentional delay.
Other countries offer shorter extensions; for example, a 2-month extension is available in China for Rmb1,000 (US$165). In the Philippines, a 1-month extension is available for payment equal to 50% of the filing fee. Turkey allows a 3-month extension and Serbia offers a 30-day extension.
While not an extension of time per se, the EPO provides for “further processing” of an international application that failed to timely enter the regional phase. 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]) along with completing all necessary requirements for regional phase entry.
PCT Rule 49.6
Over and above the national provisions of longer deadlines and extensions of time, the PCT provides a means for reinstatement of rights before the national offices in Rule 49.6. If the deadline for national entry is missed either “in spite of due care required by the circumstances having been taken” or “unintentionally” (each participating national office must choose one criterion or apply both), the application may be reinstated. The applicant must request reinstatement in each national office, submit supporting documentation and pay any required fee within the earlier of two months from the removal of the cause for the failure to timely enter the national phase and 12 months from the expiration of the original entry deadline. (Individual national law may extend this deadline.)
All but a few PCT member states have provisions in their laws for reinstatement of rights under PCT Rule 49.6. Those countries that have taken a “reservation” to the rule include Canada, Germany, India, Latvia, Mexico, New Zealand, the Philippines, South Korea, Taiwan and Poland.
One should not assume that a country taking a reservation to Rule 49.6 offers no chance for late entry. Canada has a reservation to the rule because their reinstatement procedure is more “applicant friendly” than Rule 49.6. However, there are countries in this list where the restoration of rights is not possible.
Even in those countries that follow PCT Rule 49.6, there is enough room for interpretation of the rule that applicants have a degree of uncertainty when applying for reinstatement of rights. For countries adopting the “unintentional” standard, the procedure is fairly straight forward. As long as the applicant can state that the entry deadline was unintentionally missed, the application should be reinstated.
It is countries that adopt the “in spite of due care” standard that introduce the uncertainties. The meaning of “in spite of due care” is not defined and the interpretation is left to each of the offices applying the standard. Individual offices can adopt a user friendly interpretation or they can adopt a very strict standard, only allowing reinstatement of rights for certain causes, like force majeure. (Each country, however, must apply the same interpretation used in their domestic practice.) Additionally, relying on either the “unintentional” or the “in spite of due care” standard on a frequent basis may lead the national offices to conclude that future missed entry dates by this applicant are neither “unintentional” nor occurred “in spite of due care having been taken.”
As discussed above, the EPO has a procedure for further processing which will allow relief from a missed entry deadline provided the request is made within the 2-month window following mailing of the notice of withdrawal. The EPO has also adopted Rule 49.6 to cover situations where reinstatement is the required action. The EPO uses only the “in spite of due care” standard.
In the United States, Rule 49.6 takes the form of revival of an unavoidably or unintentionally abandoned application. Failing to meet the minimum requirements of 35 USC 371 for national stage entry within the 30-month deadline will result in the international application being declared abandoned insofar as the US is concerned. The applicant may also choose to begin US prosecution by filing a continuing application claiming the benefit of the PCT US designation under 35 USC 120 (the so-called “bypass” route). If this is the selected strategy, the continuing application must be filed before the international application goes abandoned at 30 months. In either case, if the 30-month deadline is missed, revival insofar as the US is concerned can be requested by filing the appropriate petition under 37 CFR 1.137 and paying the requisite petition fee.
ASEAN and India
The situation on late national phase entry in India and S.E. Asia varies widely. Both India and the Philippines have taken reservations to PCT Rule 49.6 so the reinstatement provisions provided do not apply. We have already learned that Philippine law provides for a one month extension of the 30-month deadline for payment of a fee equivalent to 50% of the filing fee. Beyond this extension there are no other options available in the Philippines. (The provisions for reinstatement of an application deemed withdrawn for failure to prosecute do not apply to national phase entries.)
A stricter situation exists in India (31-month deadline). There are no provisions for late entry into the national phase in India. If India is an important country for obtaining patent protection, it is critical that India’s 31-month deadline be met. Applicants should not expect any recourse for a late entry.
Singapore offers a 3-month extension from the 30-month deadline. No reasons for the delay are required, but paying a fee of S$200 (US$158) for each month of delay is necessary. Beyond the available three months, any further extension granted will be at the discretion of the Registrar and must be accompanied by a statutory declaration or affidavit detailing the grounds for the longer extension of time. Singapore does apply PCT Rule 49.6 for reinstatement of rights. They will consider requests for reinstatement based on either the “unintentional” or the “in spite of due care” standard.
Indonesia’s 12-month extension was discussed earlier. There is no further recourse if national phase entry is not affected within the available 43 months (31-month deadline plus 12-month extension). For requests to reinstatement under PCT Rule 49.6, Indonesia applies the unintentional standard,
Thailand (30-month deadline) relies on PCT Rule 49.6 using the stricter “in spite of due care” standard. If the 30-month deadline for entry is missed, the applicant must apply to the Department of Intellectual Property (DIP) in a timely manner and submit a statutory declaration or affidavit detailing the reasons the deadline was missed. If the DIP concludes deadline was missed “in spite of due care having been taken,” the international application will be reinstated in the Thai national phase.
Malaysia (30-month deadline), like Thailand, uses Rule 49.6 as the basis for reinstatement of rights, but Malaysia applies the unintentional standard for judging reinstatement requests. If the deadline is missed, a request for reinstatement should be filed including supporting declaration or other evidence and all the requirements for national phase entry and the fee of RM650 (US$200) per month of delay. The request must be made within the time limits set in Rule 49.6.
The PCT Applicant’s Guide indicates Vietnam (31-month deadline) allows reinstatement for any reason accepted by the National Office of Industrial Property (NOIP): “… Where, during the international phase or before the Office, the applicant has missed a time limit for performing any act in relation to the international application, such time limit may be extended by the Office upon request by the applicant and where justified.”
If the deadline is missed, the request for reinstatement of rights should be filed with the NOIP within six months of the deadline and must include a letter explaining why the deadline was missed (financial difficulties, time required for market research, etc.) along with a late entry fee.
The initial question was: “Late national phase entry: can it be done?” The answer is “Yes” in many cases. There are a few countries that have no provisions for late entry. Others routinely offer additional time or have provisions for paid extensions of time. Still others consider the international application withdrawn if entry is not timely made. In many of these countries, reinstatement of rights is available under PCT Rule 49.6 or similar national provisions. For reinstatement, a showing that the deadline was missed unintentionally or in spite of due care is generally required (along with any associated fees). The details of the procedures for each PCT contracting state can be found in the National Chapter annexed to the PCT Applicant’s Guide coupled with the details according to local practice supplied by a local patent agent.
One parting thought: Even though many countries give extra time beyond the treaty’s 30-month deadline, it is the best practice to always docket entry for 30 months. You always have at least 30 months to enter the national phase, and if more time or extensions are available in some countries, the additional time may allow your foreign agents to do a better job for you, perhaps at a lower cost.
This article was first published in Asia IP magazine, Vol.5 Issue 7, August 2013, pp62-65.