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The Effects of the New PCT Rules on Patenting in South East Asia and India

On 1 April 2007, significant rule changes came into force within the Patent Cooperation Treaty (PCT). These new changes brought the PCT more in line with the Patent Law Treaty (PLT) and provided applicants filing under the PCT with significant new protections and tools. In this article, we will examine two of the new provisions under the PCT and discuss the current situation regarding them and their effect on obtaining patent protection in Southeast Asia and the Indian subcontinent.

The PCT (in General):

About half of the countries in Southeast Asia and the Indian subcontinent are PCT contracting states. Among the ASEAN countries (Brunei Darussalam (BN), Cambodia (KH), Indonesia (ID), Lao Peoples Democratic Republic (LA), Malaysia (MY), Myanmar (MM), Philippines (PH), Singapore (SG), Thailand (TH), Vietnam (VN)), six, ID, LA, MY, PH, SG, and VN, are PCT contracting states. On the Indian subcontinent, consisting of Bangladesh (BD), Bhutan (BT), India (IN), Maldives (MV), Nepal (NP), Pakistan (PK), and Sri Lanka (LK), only IN is a PCT contracting state.

Obtaining patent protection in a non-PCT member state must be accomplished by filing directly in the national patent office of the state of interest (usually within the Paris Convention or WTO priority year). In PCT member states, however, a filing date and priority claim can be secured by filing a single international application under the PCT.

While the following comments are aimed at obtaining patent protection in PCT contracting states in S.E. Asia and India, they are also applicable to obtaining patent protection in other PCT member countries.

The 1 April 2007 Changes and Improvements in the PCT:

Since the PCT came into force there has been a continuing effort to make the Treaty more useful and “user friendly.” On 1 April 2007, the most recent group of improvements came into force. The two most significant changes are incorporation by reference of subject matter contained in the priority document and restoration of the priority right.

Incorporation by Reference:

Prior to 1 April 2007, an application filed with missing parts or elements would either have to be prosecuted without the missing matter, or, if the missing material were filed later, with the loss of the original filing date. (A new filing date would be established on the date when all the elements or parts were received and the application was complete.) Under the new rules, an applicant may get some relief in this situation without loss of the initial filing date provided the missing part or element is contained in the priority document and certain other requirements are met.

For international applications filed on or after 1 April 2007, provided the PCT request form contains the required statement regarding incorporation by reference and the request is made in a timely manner, an applicant can supplement the matter in the originally filed application by adding matter contained in the priority document without loss of the original filing date.

The time limit for requesting the incorporation of matter contained in the priority document is two (2) months from the filing date of the international application. Under some circumstances, a bit more time may be available. If the formalities examination that occurs after filing determines a part or element of the application is missing, the PCT receiving Office (RO) may invite the applicant to supply the missing part or element. If such an invitation is issued, the applicant will have two (2) months from the date of the invitation to request incorporation of the missing part or element. Please note that neither the receiving Offices nor the IB guarantees they will notice a part of the application is missing and issue such an invitation, but if they do, the deadline for incorporation by reference will be based on the date of the invitation and not the filing date. (In my view, it is prudent for an applicant to work against the “two months from filing” deadline, and take advantage of any additional time should an invitation be issued.)

Should an applicant find it necessary to incorporate matter from the priority document into the international application, a request for incorporation by reference must be filed with the competent RO. This filing must include: a notice confirming the incorporation by reference, the sheets containing the matter that is being incorporated from the priority document, a copy of the priority application (unless it has previously been submitted), a translation into the language of the PCT application (if the priority document is not already in the language of the international application), and an indication as to where in the priority document the matter being incorporated is contained. The missing part or element must be completely contained in the priority application.

It is important to note that if a request for incorporation does not meet all of these requirements (such as the matter submitted for incorporation is not completely found in the priority document), the submitted matter will be entered into the application but the initial filing date will be corrected to be the date the incorporation request was received. This can be problematic if the reassigned filing date is outside the priority year; priority will be lost. In this circumstance, the applicant can request the receiving Office to disregard the submitted missing part. This will restore the original filing date to the application.

Upon entering the national phase, each national/regional Office should accept the application, including any matter added via this procedure. To a limited extent, each national/regional Office has the right to review the decision made by the receiving Office. For example, a national/regional Office may verify whether the sheets which were incorporated by reference are completely contained in the priority application.

A number of countries have informed the IB that the new provisions relating to incorporation of the priority document matter by reference are incompatible with their national law, including two in S.E. Asia, ID and PH. Until these contracting states change their national law and remove their reservation to the new provisions, matter in the priority document incorporated into an international application by reference will have no effect in these states. (See further discussion to follow.)

Restoration of the Priority Right:

The new rules allowing for the restoration of the priority right if the international application is filed outside of the priority year are a welcome addition to the PCT. A request for restoration of the priority right, however, does not assure the right will be restored. To qualify for restoration of priority, the applicant must make a showing that the reason the filing was not made within the priority year was either 1) “unintentional,” or 2) that the priority deadline was missed “in spite of due care required by the circumstances” having been taken. Additionally, both the filing date of the international application and the filing of the request for restoration with the RO must be made within the time limits set forth in the rules.

In both instances, the time limit is two (2) months from the date of expiration of the priority year. In other words, counting from the filing date of the priority application, the international application must be filed within 14 months and the request for restoration must be filed with the RO within that same period. (This issue may also be taken before the national offices in the national phase.)

The rules implementing this new PCT feature can be confusing due to the two different standards utilized to judge whether a request for restoration should be granted. During deliberations on these new provisions, some countries held the restoration of the priority right should be granted only if the applicant could show that the one year deadline for filing was missed in spite of the due care required by the circumstances having been taken. Other countries held the restoration should be granted if missing the deadline was unintentional. Both standards were adopted.

Each receiving Office and each national/regional Office is required to inform the International Bureau which standard they will apply; any Office may accept either one or both standards. A complete list of the standards adopted by each receiving Office and national/regional office can be found on the WIPO website at www.wipo.int. In S.E. Asia, MY has informed the IB that they will utilize the “unintentional” standard. SG will apply both standards. The standard adopted by VN and LA have not yet been published and applicants seeking this information should contact the LA and/or VN national office(s). A discussion regarding the remaining PCT member countries in the region, ID, IN, and PH follows.

Under the PCT rules, any request for restoration of the priority right granted under the more stringent “in spite of due care” standard will have effect in all PCT member states. However, restoration made under the “unintentional” standard need only be honored by those countries applying the “unintentional” standard. In all cases, a national/regional Office has a limited right to review a decision made by a receiving Office. (If a request for restoration of the priority right is denied during the international phase, the applicant may take the case before the national/regional Offices.)

In an international application in which priority right restoration has been requested, it is important to note that the timing of all PCT events will be based upon the priority date requested to be restored. This is in effect during international phase regardless of whether the request for restoration is granted. The timing of publication, national phase entry and all other PCT events will be based on the priority date for which restoration was requested. Additionally, regardless of the RO’s final decision regarding restoration, any claimed priority for which restoration has been requested will remain with the application and will be published. (This is important for applicants wanting to take the issue before the national/regional Offices in the national phase.)

In order to make a request for restoration of the priority right during the international phase of the PCT, the applicant must secure a filing date within the two-month period following the missed priority deadline, file with the RO a request for restoration along with a statement of the reasons for which the applicant failed to meet the original deadline, preferably with declarations or other evidence supporting the reasons for the failure to timely file, and, in some Offices, a fee.

As was the case with the new rules on incorporation by reference discussed above, the restoration of the priority right is not currently compatible with the national laws of some PCT contracting states. These states have notified the IB of the incompatibilities and the new rules (any resultant restoration) will not apply in these states until such a time as the national laws are amended and the notification is withdrawn.

In our target region, ID, IN and PH currently do not honor a decision to restore a priority claim made by any receiving Office nor will these states accept a request for restoration during the national phase. (As of this writing, countries outside S.E. Asia and IN with similar reservations include: BR, CA, CN, CO, CU, CZ, DE, DZ, ES, HU, JP, KR, LT, MX, NO, PT, TR, and US [On 8 December 2007, the United States Senate ratified the Patent Law Treaty (PLT). Provisions for the restoration of the right of priority parallel to those in the new PCT rules are part of the PLT. As soon as the legislation implementing the PLT is enacted, it is expected the US will withdraw its notification, removing its reservation to this feature of the PCT. Additionally, the EPO withdrew their notice of incompatibility for both the restoration of the priority right and the incorporation of the priority document matter by reference as of 13 December 2007 for applications filed on or after that date.])

In Countries Where the New Features Are Not Accepted, What Options Are Available to Applicants?:

Incorporation by Reference:

Both ID and PH have informed the IB that this new feature under the PCT is not compatible with their national law. Matter in the priority document that has been incorporated by reference into the international application will have no effect insofar as ID and PH are concerned. An applicant with interest in obtaining patent protection in ID and/or PH via an international application initially filed with a missing part or element may want to consider:

Has the priority year passed? If the priority year has not passed, an applicant may be able to submit a request to the RO that the missing matter be added to the application. (This does not have to be done under the new “incorporation by reference” procedure.) Alternatively, the entire application, including the missing matter could be re-filed (If the entire case is re-filed, an applicant should consider withdrawing the earlier filed application as soon as possible in help secure the maximum refund of fees paid in relation to the earlier PCT filing). In either case, the filing date of the final application will be the date on which the completed application (with all of the new matter) was in the hands of the RO. Further, if the missing matter was completely contained in the priority document, an applicant could submit the missing part or element under the new “incorporation by reference” procedure and a parallel direct national filing made in ID and/or PH within the priority year. If the priority year has passed, other considerations need to be made.

How critical to patentability is the missing part? If the missing matter is a missing element (all of the description or all of the claims), the situation is serious in those countries that do not accept incorporation by reference. Both a description and a claim are required to secure a filing date under the PCT. If either or both of these elements are missing from the international application at the time of filing, an applicant can incorporate the matter in the priority document to secure the initial filing date with effect in most PCT contracting states, but the incorporation will not have any effect in ID, PH or the other states not accepting the new procedures. If patent protection is desired in ID and/or PH (or one of the other states), then either a subsequent national filing in each state of interest or a subsequent PCT filing containing the missing element will be required. If such a subsequent filing will result in the loss of priority for some or all of the states of interest, the applicant will have to analyze each national law to determine where valid patent protection can still be obtained. This analysis will be required for all PCT contracting states if the missing element is not completely contained in the priority document (If the missing element is the claims, then incorporating the claims from the priority document followed by a claim amendment under PCT Article 19 or 34 would remedy any issues relating to the missing claims).

If the international application was filed with missing matter, a missing page, or one or more missing drawings, the criticality of the omission will depend on the contents of the missing part. The applicant should determine if the application can be successfully prosecuted in ID and/or PH without the missing part. If the applicant concludes the matter is not critical to the case, then national phase entry in ID and/or PH could proceed based on the initially filed PCT application. This also holds true for the other countries, however it would be best if any missing part contained in the priority document were incorporated by reference as it may prove helpful in the countries that accept the new procedure.

If the missing part is critical to one or more claims, steps must be taken to bring the missing part into the international application with effect in all countries of interest. If the missing part is completely contained in the priority document, for most PCT contracting states the missing part can be added through incorporation by reference. If the missing part is not completely contained in the priority document, only the matter that is in the priority document can be added using the new procedure. Assuming the priority deadline has passed, any attempt to add matter not in the priority document will result in a reassignment of the filing date and priority will be lost. Regardless of whether the missing part is contained in the priority document, there is no way in which the missing part can be added for ID, PH or the other countries which do not accept the new procedure without loss of the priority claim insofar as those countries are concerned. If the applicant desires patent protection in these countries, the applicant must look to the provisions of national law and the consequences of the loss of priority. For example, in PH, the national law applies an absolute novelty standard for determining patentability. (Prior art shall consist of everything made available to the public anywhere in the world before the filing or priority date of the application.) However, PH law provides for a 12 month “grace period,” defining certain types of exposures as non-prejudicial to novelty. (The disclosure of information contained in the application shall not prejudice the applicant on the ground of lack of novelty if such disclosure was made by: (a) the inventor … or (c) A third party which obtained the information directly or indirectly from the inventor (“Inventor” also means any person who, at the filing date, had the right to the patent).

To obtain valid patent protection in PH via an application including the missing part, an applicant could file a separate national application containing all matter without any priority claim, provided any pre-filing exposure qualifies as a “non-prejudicial disclosure” under PH law. For protection in ID (or any other country that does not accept the new incorporation by reference provisions under the PCT, a similar analysis will yield whether or not a parallel, non-priority national filing containing all of the required matter will be successful (If the original PCT application is maintained in parallel with one or more direct, “non-priority” national filings in selected PCT member countries, the applicant should consider withdrawing the designations of the direct filed countries from the PCT application prior to publication. Some (first-to-file) countries may consider a PCT application designating their country and claiming priority as a “prior filed application” on the same subject matter and use the PCT filing as a novelty bar to the later, non-priority-claiming national filing. Whether this is an issue will depend on national law regarding the prior art effect of PCT applications designating the country, but not entering the national phase)

Restoration of Priority Right:

If an international application is filed after the end of (but within 2 months of) the priority year, an applicant may apply for restoration of the priority claim by submitting a showing that the missed 12-month deadline was 1) unintentional or 2) occurred in spite of due care required by the circumstances having been taken. As mentioned earlier, a restoration made under the “in spite of due care” will have effect in all PCT contracting states, but restoration made under the “unintentional” standard will only have effect in those national/regional offices applying that standard. The standard used during the international phase to judge a request for restoration is set by the receiving Office where the application is filed. For example, any request made in the RO/US will be judged only under the “unintentional standard. A request for restoration made in the RO/EP will only be judged under the “in spite of due care’ standard. The receiving Office at the International Bureau (which is available to all applicants from PCT member states) uses both standards at the applicant’s choice. In the event of a filing after the priority year has expired, it is important to utilize a RO that will judge a request for restoration under the standard applicable to the countries of interest.

Regardless of the standards used, ID, IN and PH (and the other countries listed earlier), have notified the International Bureau that the restoration procedure is not compatible with their national law. Until their reservation to the new rules is removed, any restoration decided by a RO will have no effect insofar as these countries are concerned.

When faced with a “late” PCT filing coupled with a request for restoration of priority, an applicant will have to conduct an analysis of the national laws of the countries not accepting restoration of priority to determine if valid patent protection can be obtained in the absence of the priority claim. An example of such an analysis (for PH) is given in the discussion relating to incorporation by reference above. In those countries where valid protection can be obtained in the absence of the priority claim, applicant should enter the national phase at an appropriate time and prosecute the application utilizing the provisions of national law (grace periods and the like) to secure novelty. In those countries that accept restoration of priority, a positive decision on restoration by the RO will be honored by some or all of the countries (depending on the standard used by the RO to restore priority).

Final Remarks:

The new features allowing incorporation by reference of matter in the priority document into an international application and restoration of priority following a post-12-month filing give applicants significant new tools to help secure patent protection through the PCT. Clearly these new features are for use on the rare occasion when an international application is filed with missing parts or elements or is filed after the end of the priority year. They are not designed for casual use in day-to-day practice (One should neither adopt a standard practice of filing without a description or claim, relying on incorporation by reference to add them into the case at a later date, nor should one look upon restoration of the priority right as a way to routinely secure a 14-months priority period). Because the new rules are not compatible with the national laws of some countries, there are states where action taken under the new rules will have no effect. When faced with having to utilize the new procedures in an international application, an applicant should fully utilize the applicable procedure(s) and then carefully analyze the national laws of those countries where the new procedures are not accepted and make any necessary additional filings to help secure valid patent protection.

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