Filing a Demand if no ISR has been established?

I recently blogged about an imminent PCT rules change.  The rules change, which will take effect July 1, 2019, changes the timing of when an International Preliminary Examining Authority (“IPEA”) will commence its preliminary examination activity after receiving a Demand from an applicant.

  • The present situation is that the IPEA will put the activity “on ice” until the last possible date (P+22 or ISR+3, whichever is later) unless the applicant makes an express request for the activity to be commenced sooner.
  • The situation on and after July 1, 2019 will be that the IPEA will commence the preliminary examination right away unless the applicant makes an express request that the activity be postponed.

Which naturally enough raises the question of what exactly counts as “right away”?  And as I explained in the blog post, “right away” is defined as the date upon which the IPEA is for the first time in possession of all of the following:

  • the Demand;
  • the Preliminary Examination fee and the handling fee (and late fee if applicable);  and
  • the ISR/WO (or declaration of non-establishment).

Every now and then someone will suggest that the PCT has the potential to be a bit dry.  And whenever that happens, others will point out particularly fascinating aspects of the PCT that show how wrong that suggestion could be.  And so it is today, as one alert reader on the PCT listserv (which of course you should join if you have not already done so) reminded listserv members a few minutes ago.  She wondered why one would ever file a Demand if one had received a Declaration of non-establishment of an international search report.  Her comment was informed by the fact that as a general rule, IPEAs usually will not carry out preliminary examination for any subject matter for which an international search has not been carried out.

Indeed why, despite having received a declaration of non-establishment, might one nonetheless feel the need to file a Demand?

We must first remind ourselves that generally speaking, there are two possible reasons why an applicant would file a Demand.

A first reason why an applicant would file a Demand is to purchase the services of an IPEA.  For this, yes it is true you will likely only wish to proceed if an ISR had been established.  If you have a declaration of non-establishment then you will likely not receive any preliminary examination services in which case it would be a waste of money to file the Demand.

I should point out that the PCT rules do not tie the hands of an IPEA on this.  If an IPEA were to choose to do so, it could carry out preliminary examination services for claims for which no search report had been established, and this would not violate any PCT rules.  But as a general matter an IPEA will decline to carry out preliminary examination for any subject matter for which a search report has not been established.

I’d guess that in 2019, the vast majority of times that someone files a Demand, it is prompted by this first reason, namely the goal of purchasing the services of an International Preliminary Examining Authority.

But there is a second and distinct reason why an applicant might file a Demand.  An applicant might file a Demand so as to get an extra ten or eleven months for entry into the national phase in Tanzania or Luxembourg.  To see this, look at the “chapter I” column at Time Limits for Entering National/Regional Phase under PCT Chapters I and II .

  • In the case of Luxembourg, if you want to have the flexibility of being able to wait until 30 months to enter the national phase in Luxembourg, you would need to have filed a Demand by P+19 (priority date plus 19 months).
  • In the case of Tanzania, if you want to have the flexibility of being able to wait until 31 months to enter the national phase in Tanzania, you would likewise need to have filed a Demand by P+19.

This situation for Luxembourg and Tanzania obtains regardless of whether one has received an ISR on the one hand or has received a Declaration of Non-Establishment on the other hand.

The folks at the Luxembourg patent office tell me that Real Soon Now they plan to “close the national route”.  By this they mean that it would only be possible to pursue patent protect from a PCT application in Luxembourg by means of European regional-phase entry.  Were Luxembourg to carry out this step of “closing the national route”, it would join the following countries that are part of EPO that have already done so:

  • Belgium
  • Cyprus
  • France
  • Greece
  • Ireland
  • Italy
  • Lithuania
  • Latvia
  • Monaco
  • Malta
  • Netherlands
  • Slovenia

When this happens, then there will be only one country remaining (Tanzania) as a place where one might wish to file a Demand by the 19th month for purposes of getting an extra nine months for entry into the national phase.

Yes, yes, the alert reader will already be reaching to slap the buzzer to point out that even if somehow an applicant had succumbed to this trap for the unwary and had allowed the P+19 date to pass without filing a Demand, there would still be filing paths available for pursuing patent protection in Luxembourg and Tanzania.  For the applicant that snoozed through the P+19 Demand date, patent protection in Luxembourg may nonetheless be pursued by means of a filing in the EPO (which may be pursued by regional-phase entry up to P+31 even if no Demand has been filed).  For the applicant that snoozed through the P+19 Demand date, patent protection in Tanzania may nonetheless be pursued by means of a filing in the African Regional Intellectual Property Office (which may be pursued by regional-phase entry up to P+31 even if no Demand has been filed).

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