Important PCT rule change effective July 1, 2019

Each year, July 1 is very often the date upon which PCT rules changes will take effect, and 2019 is no exception.  There is a rule change regarding PCT Demands that will come into force on July 1, 2019.

The single most important thing to keep in mind about this rule change will be the importance of making sure to get one’s Article 34 Amendment (or instructions to take into account one’s Article 19 Amendment) filed with the IPEA no later than the date upon which one hands in the Demand itself and the associated fees.

To make sense of the rule change that will come into force on July 1, 2019 it will be helpful to provide a bit of background.

Putting PCT things on ice.  The designers of any patent system would, of course, need to set up procedures and business process rules so that the participants in the system will know when they are expected to (or required to) do various things.  And when the PCT system was being designed, back in the 1970’s, the designers of the PCT had to do design such things.

A first example of this “things getting put on ice” is the entry into the US national phase.  At what point is the DO/EO/US obligated to carry out the processing of an applicant’s request to enter into the US national phase?  You might think that this obligation to commence the processing would be triggered by the applicant having carried out the minimum requirements for entry into the US national phase (payment of fees, providing oath or declaration of the inventors, providing translation into English).  But the wording of the rules is such that even if an applicant satisfies all of these requirements, the DO/EO/US will put the national-phase submission “on ice” until the 30-month date comes around (the date that is 30 months from the priority date) and only then will the DO/EO/US commence the national-phase processing.

The exception, however, is that if the applicant goes to the extra trouble to file an “Express Request” for immediate national-phase entry, then the DO/EO/US will commence the national-phase processing right away rather than postponing things until the 30-month date.

And indeed this is a trap for the unwary.  The applicant who could have filed an Express Request, but failed to do so, will lose out on possible patent term adjustment, and will lose an early position in the examination queue that would otherwise have been available.

It is easy enough to avoid this trap, by the simple step of checking box number 1 on Form PTO-1390.

So now we turn to a second example of “things getting put on ice”.

For some forty years it has been possible to file PCT applications and it has been possible to file Demands.  When you file a Demand, you are purchasing the services of an International Preliminary Examining Authority (“IPEA”).  The IPEA will, at some point, carry out the work called “Preliminary Examination”.

Which then brings us to the question, after an applicant files a Demand (and pays the associated fees, and files the related documents), when exactly is the IPEA supposed to carry out the Preliminary Examination?

The alert reader will either know, or will be able to guess, where I am going with this.  For forty years now, the rule has been that the IPEA puts the Demand “on ice”, even if all necessary documents have been filed and all necessary fees paid, until some particular date arrives.

(What is that particular date?  The particular date is ISR+3 or P+22, whichever is later.  The date of mailing of the International Search Report plus three months, or the priority date plus 22 months, whichever is later.)

And for forty years now, the exception has been that if the applicant makes an “Express Request” for immediate Preliminary Examination, the IPEA will commence the Preliminary Examination right away rather than putting it “on ice”.

Those who, like me, are old-timers will recall that before about 2004, everybody always filed Demands even if they had no interest at all in purchasing the services of an IPEA.  The reason was to get 30 months instead of 20 months for entry into the national phase.  (Such Demands, to secure the extra ten months, needed to be filed by P+19.)  About 90% of the time, the applicant did not actually have any interest in receiving any services from the IPEA.  In those 90% of cases, there was thus no good reason for the IPEA to rush to do the Preliminary Examination.  In the perhaps 10% of cases where an applicant actually did desire to receive Preliminary Examination services, the applicant could file the Express Request.

In about 2004, most Elected Offices extended their due dates from 20 months to 30 months even in the absence of the filing of a Demand.  The consequence is that nowadays if an applicant files a Demand, almost always the sole reason for filing the Demand is indeed for the old-fashioned reason of wanting to purchase the services of an IPEA.

The point here is that nowadays if one files a Demand, maybe one’s motive for filing the Demand is to try to get some result (a granted patent, for example, or PPH status) sooner than would otherwise happen.  If so, then one would want the Preliminary Examination to happen sooner rather than later.  Which means that once again we are talking about a trap for the unwary if the applicant were to fail to make an Express Request.

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But it is easy to avoid this trap, by the simple step of checking this box (right) in ePCT when carrying out the “action” of filing the Demand.

The rule change.  Which brings us around to the rule change which will take effect on July 1, 2019.  Starting on that date, the way it will work is that the IPEA will commence the Preliminary Examination right away rather than putting the task “on ice”, unless the applicant makes an Express Request that the Preliminary Examination be postponed.

In particular, with this rule change, the IPEA will commence its work as soon as it is in possession of:

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

The alert reader will appreciate that this offers a new and different trap for the unwary, namely the failure to get the Article 34 Amendment handed in at the same time as (or earlier than) the above-mentioned Demand and fees.  It has always been a Best Practice to hand in the Article 34 Amendment no later than the date that one hands in the Demand, but now it is crucial to do so, otherwise there is the risk that the IPEA might carry out the entirety of the Preliminary Examination without taking any amendment into account.

A related possibility is that the applicant might have in mind that the IPEA take into account an Article 19 Amendment for purposes of Preliminary Examination, in which case it would be equally crucial to communicate this instruction to the IPEA at the same time as the filing of the Demand.

Which PCT applications will be affected by this July 1, 2019 rule change?  The answer is that this change will take effect for any PCT application in which the Demand was filed on or after July 1, 2019.  

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