Archive for the ‘PCT’ Category
This is hopefully a solution to a problem that has driven me mad for years.
When attaching PDF documents you often see errors from patent online filing software. For PCT applications a usual one is that a set of PDF Figures are not ‘Annex F compliant’ or the page numbers are not calculated properly.
One way around this is to use the Amyuni PDF printer driver that is supplied with the European Patent Office online filing software. However, this also tends to garble a PDF document .
I think there is another, better way:
– Choose to print the document.
– Select an AdobePDF ‘printer’ (assuming you have an Acrobat print driver installed).
– Select the ‘properties’ of this printer.
– Where it says “Default Settings” change “Standard” to one of the “PDF/A” options.
– Also, while you are here, click the “Paper/Quality” tab and select “Black & White”.
– Click OK and print.
The document should then print (better than the Amyuni driver). You should then be able to upload it without errors and it should pass the online filing validation checks.
Update: My US colleagues advise that for US Patent Office compliance CutePDF is recommend – http://www.cutepdf.com/ .
Having found myself needing to quickly understand Korean, I note that a cheap machine translation service is available ($30/23 Euros) – either through the Korean Patent Office (http://eng.kipris.or.kr/eng/main/main_eng.jsp) or the European Patent Office (EPO) (http://www.epo.org/searching/asian/translation/K2E-PAT.html). The EPO’s service looks more user friendly and would probably allow for debiting from a deposit account.
May be useful for those dealing with prior art from an ex-PCT application with a Korean search.
- UK, or
These will be exchanged between the patent offices automatically. In most cases, US, British and Japanese attorneys (and the majority of their clients) can thus let out a sigh of relief.
Still from January it is worth checking the state in which a priority application was filed as a general procedural step.
The case of Abaco Machines (Australasia) Pty Ltd, Re Patent Application  EWHC 347 concerned an unfortunate group of Australian patent agents who managed to make a mess of a priority filing. In a cruel twist of fate, the case was heard in the UK only a few months before reforms of the Regulations of the PCT came into force that might have alleviated their errors.
Original Facts of the Case
A Vietnamese priority application was filed on 7 January 2004. The applicants wanted to file a PCT application before the end of the priority year. The Australian patent agents mistakenly timetabled the end of the priority year as one of 14 or 17 January 2005; both dates being after the actual deadline of 7 January 2005. The patent agents only began to prepare the PCT application on 8 January 2005 and by 13 January 2005 they had realised they had missed the 12-month priority window.
At the time, UK patent law allowed a request for a late declaration of priority under s.5(2B). A late priority claim could be made if, inter alia, a UK application was filed within two months of the expired priority period (i.e. by 7 March 2005) and it could be shown that the applicant’s failure to file the application was unintentional.
The Judge agreed with the hearing office’s finding that there was no unintentional failure to file a UK application, the failure related to a PCT application and the filing of the UK application was intentional based on this failure. At the time there was no mechanism to request a late declaration of priority under the PCT.
Let us see what happens when we take the Abaco facts while adding 5 years to the dates:
A Vietnamese priority application was filed on 7 January 2009. The applicants want to file a PCT application before the end of the priority year. The Australian patent agents mistakenly timetable the end of the priority year as one of 14 or 17 January 2010. The patent agents only begin to prepare the PCT application on 8 January 2010 and by 13 January 2010 they realise they have missed the 12-month priority window.
What can we do?
1. Restore the right of priority upon filing the PCT application under PCT Rule 26bis.3:
- As set out here, Australia as a Receiving Office (RO) under the PCT accepts requests for restoration of the right of priority under Rule 26bis.3. Hence, the Australian patent agents can file a PCT application with the Australian Patent Office (APO) as RO. The application must be filed, and the request must be made, within two months of the expiration of the priority period, i.e. by 7 March 2010. The APO applies national standards relating to missed time limits (see page 7 of the AU PCT Guide), which are equivalent to at least the “unintentional” standard. The APO charges a fee for making the request. Prima facie it is likely the request will be accepted.
- When the application enters the national phase in the UK, the UK Intellectual Property Office (UKIPO) should accept the late declaration under 49ter.1 (presuming the UKIPO does not dispute the APO’s findings). See paragraphs 6.26 and 13.73 of the UKIPO’s Formalities Manual.
2. Restore the right of priority upon filing the UK national phase application under PCT Rule 49ter.2:
- File a Form 3 within one month of entering the UK national phase, together with a fee (£150) and evidence of the Australian agents’ errors. Prima facie, the facts would likely support a finding that the failure to file the PCT application was unintentional. Ideally, the evidence should be in the form of an affidavit or witness statement signed by the Australian agents.
- This can also be performed if the RO were to refuse the restoration request.
There you go. Just one of the reasons why the world we live in today is not as bad as yesteryear.
[Photo with thanks to Francesco Marino / FreeDigitalPhotos.net]
The eagle-eyed among you may have noticed some minor changes to the PCT Rules that came into force on 1 July 2010. Changes to practice appear negligible.
Amendments (to keep the EPO happy):
- You need to provide basis for claim amendments (Rules 46.5(iii) , 66.8(a),(c)).
- Penalty for non-compliance: International Preliminary Examination Authority (IPEA) may ignore your amendments when drawing up the International Preliminary Examination Report (IPER – Rule 70.2(c-bis) ).
Supplementary International Search (SIS – this came in on 1 January 2009: keep up):
- The Supplementary International Search Authority (SISA) may consider a SIS-request not to have been made if it covers claims it will/can not search (Rule 45bis.5(g),(h)). For example, EPO will not search business methods from the US.
- SISA may limit the number of claims they search (Rule 45bis.9(c)).
Fee Amounts (stop reading – not important):
- The calculations used to come up with non-Swiss currency equivalents have changed.
The PCT Applicant’s Guide has been updated – mostly autumn cleaning as far as I can see – use the updated versions of the Annexes at http://bit.ly/1UuxEJ.