International phase procedures
The international phase begins with the filing of an international application and, if the application is not withdrawn, provides for carrying out formal examination, international search, preparation of written opinion, publication of the application and international preliminary examination. At the international phase the national office may start processing or examination of an international application only at the applicant’s special request.
The international phase consists, in particular, of the following procedures, which, though they differ from each other, in practice often concur in realization:
(1) Filing of an international application by the applicant with the designated Receiving Office, i.e. a “request” (for examination of the international application under the Patent Cooperation Treaty (.doc) (PCT), containing the necessary data on the applicants, the inventors, the patent attorneys and formal information on the application, such as the title of the invention and any priority claims, the description of the invention, one or several claims, one or several drawings (if necessary) and the abstract;
(2) Carrying out formal examination by the Receiving Office, establishment of the international filing date and sending of the international application copies to the International Bureau of WIPO (“record copy”) and the International Searching Authority (“search copy”);
(3) Carrying out international search and preparation of the international search report and written opinion of the International Searching Authority on the novelty, inventive step and industrial applicability of the claimed invention;
(4) International publication of the international application, the international search report and the amendments under the Article 19 of the PCT (if any) by the International Bureau of WIPO upon the expiration of 18 months from the earliest priority date of the international application;
(5) Carrying out international preliminary examination, if a demand for international preliminary examination (Chapter II of the PCT) is filed. International preliminary examination is carried out by the International Preliminary Examining Authority that proceeds considering the issues of novelty, inventive step and industrial applicability of the claimed invention, taking into account the applicant's arguments or amendments according to the Articles 19 or 34 of the PCT. The international preliminary examination decision that is called an “international preliminary report on patentability” (Chapter II of the PCT) is made up upon completion of the international preliminary examination;
(6) Drafting of an “international preliminary report on patentability” (Chapter I of the PCT) by the International Bureau of WIPO on behalf of the International Searching Authority if the applicant does not file a demand for international preliminary examination. This decision has the same content as the written opinion of the International Searching Authority;
(7) Communication of the documents to the designated and elected offices by the International Bureau, including the copies of the application, any submitted amendments and the relevant international preliminary report on patentability.
All the above mentioned procedures are strictly mandatory. As regards the international preliminary examination, it is only carried out at the applicant’s request.
Filing of an international application
What is an international application?
An international application is an application for an invention filed under the PCT in a Contracting State and drafted in accordance with the PCT requirements.
Filing of an international application is the first step towards obtaining a patent “in” or “for” the Member States of the PCT (the “Contracting States”). “In the Contracting States” means that the national patent in the State is claimed, “for the Contracting States” implies that a regional patent is sought in the Contracting Parties to the following regional patent treaties: the Agreement of the African Regional Industrial Property Organization (ARIPO), the Eurasian Patent Convention (EA), the European Patent Convention (EP) and the Agreement that established the African Intellectual Property Organization (OAPI).
An international application claims for patents for inventions, utility models, copyright certificates, utility certificates, additional patents and different kinds of certificates. (Providing information on a type of protection for the purposes of the national procedure) (.doc) The international application may not claim those types of protection of industrial property that are outside the notion of “invention”, such as industrial designs.
Who is entitled to file international applications?
Any national or resident of a Contracting State may file an international application. If there are two or more applicants, at least one of them has to meet this requirement.
An international application to which an international filing date is accorded has the force of a regular national application within the meaning of the Paris Convention for the Protection of Industrial Property, i.e. the accorded date is considered to be the date of the actual filing in each designated State and, consequently, may give occasion to claim a priority in a national, regional or other international application within the time period established by the Convention (12 months).
International applications are filed with the designated Receiving Office. As a rule, the Receiving Office for a national of each State is the national patent office of the residency State.
What languages are international applications filed in?
The language of an international application depends on the requirements of the Receiving Office which the application is filed with, and the International Searching Authority that will carry out international search. English, Arabic, Spanish, Chinese, German, Russian, French or Japanese are the main languages international applications may be filed in.
Requirements to the elements of an international application
How are the elements arranged? How are the sheets numbered?
The elements of the international application must be arranged in the following order: request, description (except the sequence listings part, if there are any), claim(s), abstract, drawings (if any); the sequence listings part (if any) of the description.
All the sheets constituting the international application must be numbered in consecutive Arabic numerals with three or, where the international application contains sequence listings, four separate series of numbers: the first applying to the request, the second applying to the part consisting of the description, the claims and the abstract, the third applying to the drawings, and the fourth applying to the sequence listings part (if any) of the description.
The numbers must be centered at the top or the bottom of the sheet, but not in the margin that must remain blank. The number of each sheet of the drawings must contain 2 numerals separated by an oblique stroke: the first numeral designates the sheet number, the second denotes the total number of sheets of drawings (for instance, 1/3, 2/3, 3/3).
Requirements to the request
The application must be made on a printed form and filled in according to the requirements of the PCT Regulations.
The minimum application takes three sheets denominated on the left under the bottom frame: “first sheet”, “second sheet”, “last sheet”.
The first sheet contains the applicant’s or agent’s file reference, the title the invention, the information on two applicants or one applicant and one inventor who is not an applicant, as well as the information on the agent or common representative (or the address for correspondence).
The second sheet is used to indicate the States in which the legal protection for an invention is sought on the basis of the international application, the information on the priority claim of earlier application(s), the information on the choice of an International Searching Authority and the possible use of the results of the earlier search, as well as the information on inclusion in the application of declarations for the purposes of meeting the requirements of national legislation of one or more designated States.
The last sheet contains the check list, the indication of the figure of the drawings which should accompany the abstract and the language of filing of the international application (i.e. the language in which the description, the claims and the text of the drawings are submitted), as well as the box for signature(s).
The maximum application may take as many sheets as it is necessary, i.e. one first sheet, one second sheet and one last sheet, as well as the required number of “declaration sheets”, “continuation sheets” and “supplemental boxes”.
The Box 3 “Further Applicants And/Or (Further) Inventor(s)” continues on the “continuation sheet” where the information on four further applicants or inventors is to be indicated. There will be as many continuation sheets as it is necessary for providing information on each applicant or inventor in a separate sub-box.
If, in any of the Boxes, except Boxes 8(i) to 8(v) for which a special continuation box is provided, the space is insufficient to furnish all the information, a “supplemental box” is used. It represents the only box that does not possess a number and is denominated as supplemental where all the necessary information is put in the same order as it is provided by the box in which the space is insufficient. The cases in which the supplemental box may be used and the order of arrangement of the information in it are indicated in the left column of the box.
The “declaration sheets” are used if the application includes one or more of the following declarations: Declaration as to the Identity of the Inventor; Declaration as to the Applicant’s Entitlement to Apply for and Be Granted a Patent; Declaration as to the Applicant’s Entitlement to Claim Priority of the Earlier Application; Declaration as of Inventorship (only for the purpose of indicating the USA); Declaration as to Non-prejudicial Disclosures or Exceptions to Lack of Novelty. There will be as many “declaration sheets” as declarations of each type indicated in the right column of the Box 8.
Requirements to the description
The description must disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art. It must begin with the title of the invention given in the Box 1 of the request. Rule 5 of the PCT Regulations contains detailed requirements to the manner and order of the description, which usually consists of six parts. For the purpose of uniformity at the publication of the international application and facilitation of access to information it contains, it is strongly recommended that those parts have the following headings: “Technical Field”, “Background Art”, “Disclosure of Invention”, “Brief Description of Drawings”, “Best Mode for Carrying Out the Invention” or, where applicable, “Mode(s) for Carrying Out the Invention”, “Industrial Applicability” and, where applicable, “Sequence Listing” and “Sequence Listing Free Text”.
Rule 11 of the PCT Regulations contains detailed requirements to drafting of the description which have to be met by an international application. The paper must be of A4 size, white and durable. The minimum margins of the sheets: the top, the bottom and the right side - 2 cm, the left side - 2.5 cm. The maximum size margins of the sheets: the bottom and the right side - 3 cm, the top and the left side - 4cm. The margins must be completely blank, except that a file reference may be placed in the left-hand corner of the top margin within 1.5 cm from the top of the sheet.
The page number must be centered at the top or the bottom of the sheet, but not in the 2 cm margin (that is, a page number, if at the top of the sheet, must be below the 2 cm margin, and if at the bottom of the sheet, above the 2 cm margin). It is strongly recommended that every fifth line of each sheet be numbered in the right half of the left margin. The description must be typewritten or printed. The typing must be 1.5 spaced and in dark indelible color so as to permit direct reproduction. The capital letters of the characters must be a minimum of 0.21 cm high.
Obvious mistakes made by the applicant in the description may be rectified. The omission of entire sheets of the description can be rectified on no account. Changes other than the rectification of obvious mistakes are considered amendments.
The description can be amended during the international phase only if the applicant files a demand for international preliminary examination, but it can be amended during the national phase.
Requirements to the claims
The claims must define the matter for which protection is sought. Claims must be clear and precise. They must be fully supported by the description. Rule 6 of the PCT contains detailed requirements to the number and numbering of claims, the references to other elements of the international application in the claims, the manner of claiming and dependent claims. The claims must, whenever appropriate, be in two distinct parts, namely, the statement of the prior art and the statement of the features for which protection is sought (the “characterizing portion”).
The requirements to the claims are the same as those for the description. Be aware that the claims must commence on a new sheet.
If the applicant made obvious mistakes in spelling while drafting the claims, they may request their rectification. The omission of entire sheets of the claims can be rectified on no account. It is recommended that a request for the rectification of obvious mistakes in the claims be made only if the mistake is liable to affect the international search; otherwise, the rectification should be made by amending the claims.
The claims may be amended under the Article 19 of the PCT on receipt of the international search report. They may also be amended during international preliminary examination if the applicant has filed a demand and during the national phase.
Requirements to the drawings
Drawings are submitted when they are necessary for the understanding of the invention. Moreover where, without drawings being actually necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings, the applicant may include such drawings and any designated Office may require the applicant to file such drawings during the national phase. Charts and diagrams are considered to be drawings.
Drawings must be presented on one or more separate sheets. They may not be included in the description, the claims or the abstract. They may not contain text matter, except a single word or words when absolutely indispensable. Points 10 to 13 of the rule 11 of the PCT Regulations contain detailed requirements to drafting of drawings. Any drawing meeting those requirements must be accepted during the national phase by the designated Offices. Thus, re-drafting of drawings according to the national requirements is not required during the national phase.
As far as possible, all figures of the drawings should be set out upright on the sheets. Where the drawings cannot be presented satisfactorily in an upright position, they may be placed sideways, with the tops of the drawings on the left-hand side of the sheet.
The usable surface of sheets must not exceed 26.2 cm x 17.0 cm. The minimum margins which must be observed are: the top and the left side - 2.5 cm; the right side - 1.5 cm; the bottom - 1.0 cm.
The drawings can be amended during the international phase only if the applicant files a demand for international preliminary examination, but they can be amended during the national phase.
Requirements to the abstract
The abstract must consist of a summary of the disclosure as contained in the description, the claims and the drawings. It must be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English). It can be said that the volume of the text of the abstract, including one of the figures from the drawings (if any), should not exceed what can be accommodated on an A4 sheet of typewritten matter, 1.5 spaced. The requirements to the abstract correspond to those for the description
The abstract should be primarily related to what is new in the art to which the invention pertains. Phrases should not be used which are implicit (for instance, “the invention relates to …”), as well as statements on the alleged merits or value of the claimed invention or on its speculative application.
The abstract must be presented on a separate sheet which must appear after the claims.