For any PCT practitioner who has filed a PCT patent application and is now tending a pending PCT application, the questions that are constantly in mind are, of course:
- should I file a Demand, and
- should I file the Demand by the 19th month after the priority date, or can I postpone it until later?
There are two possible reasons why a PCT applicant might file a Demand for Preliminary Examination. One reason would be to purchase the services of an International Preliminary Examining Authority, perhaps to try to obtain a more favorable result than that reflected in the Written Opinion of the International Searching Authority. A second possible reason would be to extend by about ten months the due date for entry into the national phase (for example from 20 months from the priority date to 30 months from the priority date) for particular Offices.
In 2018 I expect that nearly always when a PCT applicant files a Demand it is for the former reason. In 2018 I’d guess that it is fairly infrequent that a PCT applicant files a Demand for the latter reason. Nonetheless, any discussion of the PCT would be incomplete unless one were to keep in mind that there are certain Offices for which the filing of a Demand does make a difference of about ten months in the due date for national-phase entry.
Importantly the due date for filing of a Demand is quite different depending upon whether the Demand is being filed for that first reason or for that second reason. If the Demand is being filed for the first reason (to purchase the services of an IPEA) then the due date is P+22 (priority date plus 22 months) or ISR+3 (mailing date of International Search Report plus 3 months) whichever is later. If the Demand is being filed for the second reason (to get about another ten months for national-phase entry for certain Offices) then the due date is P+19 (priority date plus 19 months).
(The PCT filer who is being trendy, modern, and up-to-date will of course be managing the pending PCT application in his or her ePCT workbench. The ePCT workbench provides a “timeline” tab which calculates all of these time limits so that the filer can cross-check with the filer’s own calculations of these time limits.)
The list of Offices for which this second possible reason might apply has, for many years, comprised three Offices, namely Tanzania, Uganda, and Luxembourg.
The news of September 7, 2018 is that Uganda is no longer on this list.
Now this list has only two Offices — Tanzania and Luxembourg.
WIPO provides on its web site a very helpful table entitled Time Limits for Entering National/Regional Phase under PCT Chapters I and II which details, Office by Office, the due date for national- or regional-phase entry as a function of whether a Demand had or had not been filed by the nineteenth month after the priority date.
The reader who has stayed with me all the way down to this point in this blog article might join me in fascination to see a particularly obscure fact revealed by that table on the WIPO web site. The particularly obscure fact is that there are nine Offices for which the due date for entering the national phase changes by one month as a function of whether a Demand had or had not been filed by P+19. Yes, there are Offices in which the due date for entry into the national phase is P+30 if a Demand had not been filed by P+19, but is P+31 if a Demand has filed by P+19. Those Offices are:
- Trinidad and Tobago
The chief takeaway from this point is that the practitioner should always carefully consult this “Time Limits” table on the WIPO web site when counseling clients about deciding when to file a Demand (filing the Demand by the 19th month or postponing the filing of the Demand to a later date).