PROCESS OF PATENT COOERATION TREATY

PROJECT PRESENTED IN PARTIAL FULFILMENT OF B.A. LL.B. (HONS.)

SUBMITTED BY

VINAYAK KANWAR MATHUR
B.A. LL.B Hons.

7th SEMESTER, SEC: B, ROLL NO-157

UNDER THE GUIDANCE OF

Mr. P.K. Pandey

INTELLECTUAL PROPERTY RIGHTS

ACKNOWLEDGEMENT

I hereby take this opportunity to thank all those who have been a constant support to me while the preparation of this project. I thank my Intellectual Property law instructor Mr. P.K. Pandey, who through his interactive methodology and enthralling class lectures made all our Intellectual Property law concepts clear. I also thank my parents who have been a constant support while the project work was under work.
Without the support of the above mentioned this work would never have been completed.

CONTENTS * INTRODUCTION * PURPOSE AND OBJECT OF PCT * ADVANTAGES OF PCT * ROLE OF WIPO IN PCT * PROCESS OF PCT * FILING OF INTERNATIONAL PATENT * INTERNATIONAL SEARCH AUTHORITY * SUPPLEMENTARY INTERNATIONAL SEARCH * INTERNATIONAL PRELIMINARY EXAMINATION * DESIGNATED OFFICE * PCT FILING IN INDIA * NATIONAL PHASE IN PCT * TIME LIMIT FOR ENTERING NATIONAL PHASE * ACTS TO BE DONE BEFORE ENTRY INTO NATIONAL PHASE * THE EPC, PCT AND EPO * BIBLIOGRAPHY

INTRODUCTION

The Patent cooperation Treaty is an agreement for international cooperation in the field of the patents that provides a unified procedure for filing patent applications. It is mainly a treaty for rationalization and cooperation with regard to the PCT filing procedure, searching and examination of patent applications and the dissemination of the technical information contained therein. The PCT has 144 contracting states as of July 26th 2011.

The Patent Cooperation Treaty (PCT) is an efficient and cost-effective way to enter into the patenting process in several countries at one time. Although the PCT process does not result directly in the issuance of any national patents, it provides many important benefits for applicants contemplating foreign filing. The most important objective of the PCT is to simplify and to render more effective and more economical in the interests of the users of the patent system and the offices that have responsibility for administering it.

The Patent Cooperation Treaty facilitates the applications of patents on an international level. The treaty negotiations concluded on June 19, 1970 and the treaty is open to all parties to the Paris Convention for the Protection of Industrial Property Rights. At the present time, there are sixty-seven signatories to the Patent Cooperation Treaty.

The Patent Cooperation Treaty permits nationals and domiciles of any contracting country to file an international patent application. The applicant must file with the national patent office of the applicant's country of residence or nationality and designate the member countries in which he seeks patent protection. The Patent Cooperation Treaty provides a standard form and centralized filing procedure, eliminating separate application filings in each of the member countries in which the applicant seeks patent protection. Some questions remain regarding whether the Patent Cooperation Treaty procedure in fact reduces the cost of filing. Certainly, the larger the number of countries designated, the more cost effective. However, the Patent Cooperation Treaty's principal benefit is a longer time period to designate those countries in which the applicant intends to file a patent application. The Patent Cooperation Treaty allows an initial designation of countries at a relatively low cost with up to thirty months to pay filing fees, while the Paris Convention allows only a one-year period to effect filings in the desired countries.

While the Patent Cooperation Treaty establishes minimum standards for patent applications, including the best mode requirement, it does not create any substantive patent law. The Patent Cooperation Treaty is merely a tool to simplify the procedures for obtaining a multinational patent. As long as an application filed in a member country meets the minimum standards, the designated states give the application full effect.

PURPOSE AND OBJECT OF THE PCT
The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. If there appears to be no prospect of obtaining a patent in any country, the international application can be abandoned and the applicant loses only the cost of filing a PCT application instead of the much greater cost of filing applications in every country of interest. In addition, the applicant gets 18 months more than if ordinary convention applications were filed to test the market and/or the product to determine whether or not to proceed with patent applications and in which countries.
The overall objective of the PCT system is thus not only to significantly cut filing costs of patent applicants, but also to ensure that domestic patent offices, that may be incapable of conducting detailed ‘prior-art’ searches are informed about the current developments, thus ensuring that only truly ‘inventive’ inventions are granted patents. As the overall purport of conferment of intellectual property is ultimately the growth of science and technology leading to economic and social development, the PCT subserves this need by facilitating patent filing measures. This is more evident from the fact that till date more than a million applications have been filed under the PCT system.
The Treaty has two principal aims, one in the field of procedures for obtaining legal protection for inventions, the other in the field of the dissemination of technical information and the organization of technical assistance, particularly for developing countries.

In the field of procedures, the Treaty has two principal aims. One is to save effort – time, work, money – both for the applicant and the national Offices in cases where patents are sought for the same invention in a number of countries. The other is to increase the likelihood of granting deserving patents, particularly in countries not having all the facilities necessary for a thorough search and examination. The informational aim, in the language of the Preamble to the Treaty, is “to facilitate and accelerate access by the public to the technical information contained in documents describing new inventions.”

Access to such information is facilitated not only by the publication of the international application but also by the fact that such publication is accompanied by the publication of an abstract and of the international search report. That report allows scientists and industrialists interested in the field, including the applicant’s competitors, to understand the invention more easily and assess its technical and economic significance. The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. If there appears to be no prospect of obtaining a patent in any country, the international application can be abandoned and the applicant loses only the cost of filing a PCT application instead of the much greater cost of filing applications in every country of interest. In addition, the applicant gets 18 months more than if ordinary convention applications were filed to test the market and/or the product to determine whether or not to proceed with patent applications and in which countries.
ADVANTAGES OF PCT
Use of the PCT saves effort – time, work – for any person or firms (“the applicant”) seeking protection for an invention in a number of countries.
Use of the PCT also helps the applicant to make decisions about the prosecution of the application before the various national Patent Offices in the national phase of processing.
The saving arises primarily from the fact that, under the PCT, the applicant files one application – the international application – in one place, in one language and pays one initial set of fees, and that this international application has the effect of a national or regional application, which, without the PCT, he would have to file separately for each country or region.
The help to the applicant in the national phase prosecution of the application follows from the “advice” he obtains from the international search report, a report which is established for each international application, according to high, internationally regulated standards, by one of the Patent Offices that are highly experienced in examining patent applications and that have been specially appointed to carry out international searches. Those Offices are listed in Annex D (“International Searching Authorities”). Detailed advice may also be obtained from the written opinion established by the International Searching Authority which gives a preliminary nonbinding opinion on whether the claimed invention appears to be novel, to involve inventive step and to be industrially applicable.
If the applicant so requests, a supplementary international search may be carried out, by one or more of the participating International Searching Authorities (see Annex SISA) other than the one which carried out the main international search. The supplementary international searches report(s), thus obtained will provide the applicant with a more comprehensive overview of the relevant prior art and enable him to better assess his chances of obtaining patent protection for his invention.
If the applicant files a demand under Chapter II, international preliminary examination is carried out on the basis of the international search report and the written opinion of the International Searching Authority, and concludes with the international preliminary report on patentability. Offices qualified to prepare such reports are specifically appointed to carry out international preliminary examinations and are listed in Annex E (“International Preliminary Examining Authorities”). The additional benefit for applicants of filing a demand for international preliminary examination is that it provides the applicant with an opportunity to enter into a dialogue with the examiner at the International Preliminary Examining Authority and to possibly amend the international application in order to influence the content of the international preliminary report on patentability.
ROLE OF WIPO IN THE PCT
The World Intellectual property Organisation (WIPO) is the nodal agency under the PCT. The WIPO provides a framework for overall coordination of the PCT system. According to official WIPO publications, the WIPO:
• provides assistance to existing, new and potential Contracting States and their Offices;
• provides advice on implementing the PCT in the national legislation and on setting up internal procedures in the Contracting States’ patent Offices;
• publishes the PCT Applicant’s Guide and the PCT Newsletter;
• creates and disseminates PCT information via the PCT web site, paper
• Publications and through telephone and e-mail assistance;
• organizes and gives PCT seminars and training courses. Further, for each PCT application filed, WIPO is responsible for:
• receiving and storing all application documents;
• performing a formalities examination;
• publishing the application;
• publishing the PCT Gazette (data about the application);• translating various portions of the PCT application and certain associated documents into English and/or French, where necessary;
• communicating documents to Offices and third parties; and
• providing legal advice on request to Offices and users.
Thus the WIPO plays a focal role in the PCT system. It is the main facilitating agency for all international applications and is also concerned with educating contracting Parties about the PCT process.

PROCESS OF PCT
Under the PCT, an applicant can apply to an international office and get an international search and an international preliminary examination. Once this is carried out the application is sent to the designated national offices to decide whether to grant national patents. The centralised procedure is particularly useful for countries where the patent office is not capable of carrying out its own examination. The patent cooperation system is attractive because it reduces the fees payable and because of the lengthy period between the initial application to the international office and the time when that application is forwarded to the relevant national offices. The extra time, which varies between eight and eighteen months, gives applicants time to decide whether the invention is likely to be successful enough to warrant the translation costs that arise when the application is transferred to the national offices.
PCT applications may be filed either in a local approved Receiving Office or directly at the International Bureau in Geneva which is administered by the World Intellectual Property Organisation. On filing a PCT application, applicants must designate the countries in which they wish to retain the option to file a patent application. There is a fee per country designated up to the first 5 countries and after that any number of further countries may be designated without fee. Most applicants therefore designate all countries. It is also possible to designate multi-country regional patent systems such as the European Patent Convention.
When the applicant requests the extension, it is here that the best mode requirement surfaces again. To receive the time extension from twenty to thirty months, the applicant must request an international preliminary examination report that gives the applicant a nonbinding opinion on patentability as determined by the International Preliminary Examining Authority, either the U.S. or European Patent Office. Rule 5 of the Patent Cooperation Treaty, governing the description of the invention, requires the applicant to describe the best mode contemplated for carrying out the invention. The rule requires that "(w)here the national law of the designated State does not require the description of the best mode, but is satisfied with the description of any mode (whether it is the best contemplated or not), failure to describe the best mode contemplated shall have no effect in that state."

FILING OF THE INTERNATIONAL PATENT
An application is “international” when it is filed under and with reference to the PCT. It is the first step towards obtaining a patent in or for a State party to the PCT: “in” such a State when a national patent is desired; “for” such a State when a regional patent is desired. An international application must be an application for the protection of an invention. The PCT encompasses the filing of applications for patents for inventions, inventors’ certificates, utility certificates, utility models, and various kinds of patents and certificates of addition. An international application thus cannot validly be filed for certain other forms of industrial property rights which fall outside the scope of “inventions,” such as, for example, purely ornamental designs.
Any international application has two main effects. One of those effects, generally speaking, is the same as that of a national (or regional) application. It occurs on the date accorded as the international filing date. It is produced in or for the “designated States,” that is, the States in which or for which the applicant wishes to obtain a patent by filing an international application. For the prior art effect of international applications in the United States of America, see National Chapter (US).
Designated States in respect of which international preliminary examination has been demanded by the applicant are called “elected States” in the terminology of the PCT.
Subject to what is said in the following paragraph, the other main effect of an international application is that, normally, no designated Office may process or examine the international application prior to the expiration of 30 months from the priority date and that any fees due to a designated Office and any translation of the international application to be furnished to a designated Office will have to be paid and furnished, respectively, only by the expiration of that 30-month period. In respect of certain designated Offices (currently three), the applicable time limit is the former 20-month time limit, not the new 30-month time limit because, due to the incompatibility, for the time being, of the modified PCT provision with the relevant national law, those Offices made a declaration of incompatibility which will remain in effect until it is withdrawn by the respective Offices. Furthermore, certain designated Offices have fixed time limits expiring even later than 30 months, or 20 months, as the case may be. This effect of the international application is normally referred to as the effect of “delaying” the patent examination and granting procedure before the national (or regional) Offices.
If international preliminary examination has been demanded before the expiration of 19 months from the priority date, the delaying effect in respect of any State whose designated Office has notified the International Bureau that the 30-month time limit under Article 22(1), as in force from April 1, 2002, is incompatible with the national law applied by that Office, is 10 months longer, so that any fees due to an elected Office and any translation of the international application will have to be paid and furnished, respectively, only by the expiration of 30 months from the priority date.
An international application which has been accorded an international filing date is the equivalent of a “regular national filing” within the meaning of the Paris Convention for the Protection of Industrial Property and, consequently, may be invoked as the basis of a priority claim in a national, regional or other international application filed subsequently within the time limit and subject to the conditions provided for in that Convention.
Annexes B indicate, for each Contracting State, the authorities with which its nationals and residents may, as applicants, file international applications. In the terminology of the PCT, these authorities are called “receiving Offices” (because they receive international applications). They are listed with their full names and addresses, their telephone, facsimile and/or teleprinter numbers and, where available, their e-mail and/or Internet addresses, in Annexes B, and the requirements of each receiving Office are listed in Annex C. Where there are several applicants who are not all nationals and/or residents of the same Contracting State, any receiving Office of or acting for a Contracting State of which at least one of the applicants is a resident or national is competent to receive an international application filed by those applicants. Alternatively, at the applicant’s option, the international application may be filed with the International Bureau as receiving Office, regardless of the Contracting State of which the applicant is a resident or national. If there are two or more applicants, the international application may be filed with the International Bureau as receiving Office if at least one of the applicants is a resident or national of a Contracting State. Residents or nationals of States which are party to the PCT and also to the ARIPO Harare Protocol, to the Eurasian Patent Convention, to the European Patent Convention, or to the OAPI Agreement generally also have the option of filing an international application with the ARIPO Office, the Eurasian Patent Office, the European Patent Office, or the OAPI Office, respectively. Compliance with any national security prescriptions applicable under national law is the applicant’s responsibility. As to measures which may be applied by receiving Offices in connection with such prescriptions.

The language in which an international application must be filed depends on the receiving Office. Some receiving Offices allow the applicant to choose between two or more languages. The language or languages which may be used for filing an international application with a given receiving Office are indicated in Annex C. If the international application is filed in a language other than Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish, or if the language in which the international application is filed is not accepted by the International Searching Authority which is to carry out the international search, a translation of the international application will need to be furnished for the purposes of international search and/or international publication. A translation may also be required for the purposes of the supplementary international search if neither the language in which the international application is filed or published nor that in which the translation is furnished for the purposes of the main international search is accepted by the Authority which is to carry out the supplementary international search. Furthermore, a translation may also be required for the purposes of the international preliminary examination if the language in which the international application is filed or published is not accepted by the International Preliminary Examining Authority which is to carry out the international preliminary examination. Those requirements operate, in most cases; in such a way that only one translation would need to be furnished for the purposes of the international phase of processing. All elements of the international application must normally be in the same language. However, the request must be in a language of publication which the receiving Office accepts for that purpose, and the text matter of the drawings (if any) and the abstract may be in the language in which the international application is to be published

INTERNATIONAL SEARCH AUTHORITY

The main procedural steps involved in the International Searching Authority are the following:
(i) Conducting the international search,
(ii) Preparing the international search report, and
(iii) Establishing a written opinion.

Each receiving Office (except the International Bureau as receiving Office) specifies one or more International Searching Authorities as competent to carry out international searches on international applications filed with it. For some receiving Offices, different International Searching Authorities are competent depending on the language in which the international application is filed or, where the international application is filed in a language accepted by the receiving Office but not by the International Searching Authority, translated. Where several International Searching Authorities are specified as competent by the receiving Office, the applicant may choose between them (subject to any such language restriction). Annex C indicates the International Searching Authority or Authorities specified as competent by each receiving Office, and the languages in which international applications filed with that Office are accepted for international search by those Authorities. Where the international application is filed with the International Bureau as receiving Office, the competent International Searching Authority (or Authorities) is that (or are those) which would have been competent if the international application had been filed with a competent national (or regional) Office as receiving Office. All of the languages accepted for search by each International Searching Authority are set out in Annex D. Where two or more International Searching Authorities are competent to carry out the international search, the applicant must indicate the Authority of his choice in the request form and should also indicate it in the fee calculation sheet. Finally, within the framework of the respective agreements relating to the functioning of certain Offices as International Searching Authorities, these Authorities may provide for limitations of their competence in respect of certain international applications.

The main procedural steps that any international application goes through at the receiving Office are the following: (i) the international application and the related fees are received by the receiving Office; (ii) the international application is checked by the receiving Office to determine whether it meets the requirements prescribed by the PCT as to the language, form and contents of international applications (the checks performed by the receiving Office are of a formal nature and do not go into the substance of the invention); (iii) where the checks made by the receiving Office show that the international application does not meet certain requirements as to fees, language, form and contents, that Office invites the applicant to furnish the necessary corrections; (iv) where – possibly after correction– the checks made by the receiving Office show that the international application meets the requirements prescribed for that purpose by the PCT, an international filing date is accorded to the international application by the receiving Office; (v) copies of the international application, its translation, where applicable, and other related documents are transmitted by the receiving Office to the International Searching
Authority and to the International Bureau so that they may carry out the procedural steps for which they are responsible in the further processing of the international application.

The receiving Office must accord an “international filing date” to the international application if it finds that the following conditions are fulfilled: (i) The applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office.

(ii) The international application is in the prescribed language;

(iii) The international application contains at least the following elements:

(a) An indication that it is intended as an international application,

(b) A request which constitutes the designation of a Contracting State bound by the
PCT on the international filing date,

(c) the name of the applicant (for this purpose it is sufficient if the name of the applicant is indicated in a way which allows his identity to be established, even if the name is misspelled, or the given names are not fully indicated, or, in the case of legal entities, the indication of the name is abbreviated or incomplete),

(d) A part which on the face of it appears to be a description,

(e) A part which on the face of it appears to be a claim or claims.

SUPPLEMENTARY INTERNATIONAL SEARCH

Supplementary international search permits the applicant to request, in addition to the international search carried out under Article 15(1), one or more supplementary international searches each to be carried out by an International Authority (the “Authority specified for supplementary search”) other than the International Searching Authority that carries out the main international search.

Requesting supplementary international search reduces the risk of new prior art being cited in the national phase. The increasing diversity of prior art in different languages and different technical fields means that the Authority carrying out the main international search is not always capable of discovering the entire relevant prior art. Requesting one or more supplementary international searches, during this early phase of the patent prosecution, expands both the linguistic and technical scope of the search. In addition, it may also be possible to have the supplementary search carried out in a State where they are likely to enter the national phase later on.
Only an International Searching Authority that has stated its preparedness to carry out supplementary international searches and which is not the International Searching Authority that carried out the main international search, can be requested to carry out a supplementary international search.

INTERNATIONAL PRELIMINARY EXAMINATION

International preliminary examination of an international application may be requested under Chapter II of the PCT to obtain “a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable”. It is carried out by an “International Preliminary Examining Authority” at the request – called “demand” – of the applicant, for use before the “elected” Offices, that is, the designated Offices which are elected by the applicant for that purpose. Not every applicant who has the right to file an international application has the right to demand international preliminary examination; the following paragraphs explain who may make a demand.

Since the criteria on which the international preliminary examination is based correspond to internationally accepted criteria for patentability, the international preliminary report on patentability gives the applicant the opportunity to evaluate the chances of obtaining patents in elected Offices before incurring the expense and trouble of entering the national phase. Moreover, the fact that the carrying out of such an examination has been demanded has the result that the national phase in each elected State is normally delayed until the expiration of 30 months from the priority date (longer times apply in some elected Offices), provided that the demand is submitted before the expiration of 19 months from the priority date.

With the exception of the fact that a demand has been filed and the names of those designated States for which a notice of withdrawal has been submitted to the International Bureau or to the International Preliminary Examining Authority are available on the WIPO website, the international preliminary examination procedure remains confidential between the applicant, the International Preliminary Examining Authority and the International Bureau. In respect of international applications filed before 1 July 1998, a copy of the international preliminary examination report, when it has been established, is sent by the International Bureau to each elected Office as well as the applicant, but is not available from the International Preliminary Examining Authority or the International Bureau to any other persons or Offices.

DESIGNATED OFFICE
The national Office of a Contracting State is a “designated Office” if the State is “designated” in the international application for national protection. The filing of a request constitutes the designation of all Contracting States that are bound by the Treaty on the international filing date. However, some States may be excluded from this all-inclusive designation where they have notified the International Bureau that Rule 4.9(b) applies to them. Where a PCT Contracting State is party to the ARIPO Harare Protocol, the Eurasian Patent Convention or the European Patent Convention and is designated for a regional (ARIPO, Eurasian or European) patent, the regional Office concerned (the ARIPO Office, the Eurasian Patent Office or the European Patent Office) is the designated Office. Where a State party to the ARIPO Harare Protocol, the Eurasian Patent Convention or the European Patent Convention is designated twice, namely both for national protection and for a regional patent, there are two designated Offices for that State–the national Office of the State itself and the regional Office concerned. However, certain States party to the ARIPO Harare Protocol or the European Patent Convention have “closed the national route” whereby patent protection can be obtained in those countries via an international application only by way of a designation for a regional (ARIPO or European) patent. If any of the States that have “closed the national route” are designated, the designated Office concerned is always the ARIPO Office or the European Patent Office, respectively. The European Patent Office is also, in effect, the designated Office where patent protection is desired for a designated State through the extension of a European patent to that State, a possibility which is only available for countries which have a corresponding agreement with the European Patent Organisation

PCT FILING IN INDIA
All PCT Applications designating India are considered as Indian Patent Applications filed on the date of the International Application. The period for entering into national phase is 21 months if India is designated or 31 months if India is designated as well as elected; from the priority date.
The procedures established in the Patents Act 1970 are to be followed for PCT Applications as well. Thus, provisions concerning pre-grant and post-grant opposition, examination of patent application etc. shall remain the same irrespective of the fact that the patent Application has been preferred under the PCT. Every PCT Application designating India is examined by the Patent Office for the following:
(i) Novelty;
(ii) Obviousness;
(iii) Utility;
(iv) Patentability under the Patents Act, 1970 as amended, and
(v) Anticipation.
NATIONAL PHASE OF PCT APPLICATION
The national phase is the second of the two main phases of the PCT procedure. It follows the international phase and consists in the processing of the international application before each Office of or acting for a Contracting State that has been designated in the international application. In each designated State the international application has the effect of a national (or regional) application as from the international filing date, and the decision to grant protection for the invention is the task of the Office of or acting for that State (the “designated Office”). The national phase of processing the international application by the designated Office is generally delayed until the termination of the international phase on the expiration of the time limits indicated
The national phase starts only if the applicant performs certain acts, either before the expiration of a certain time limit or together with an express request that it start earlier. The applicant should not expect any notification inviting him to perform those acts. He has sole responsibility for performing them in due time. The consequences of failure to do so are fatal to the application in a number of designated States

TIME LIMIT FOR ENTERING NATIONAL PHASE
No designated Office may normally process or examine the international application prior to the expiration of 30 months from the priority date and any fees due to a designated Office and any translation of the international application to be furnished to a designated Office will have to be paid and furnished, respectively, only by the expiration of that 30-month period (“priority date” means, where the international application contains a priority claim, the filing date of the application whose priority is claimed, and, where it does not contain such a claim, the filing date of the international application. Where the international application contains two or more claims, “priority date” means the filing date of the earliest application whose priority is claimed). In respect of certain designated Offices, the applicable time limit is 20 months, not 30 months because of the incompatibility, for the time being, of the modified PCT provision with the relevant national law; those Offices made a declaration of incompatibility which will remain in effect until it is withdrawn by the respective Offices. Furthermore, certain designated Offices have fixed time limits expiring even later than 30 months, or 20 months, as the case may be.
If the applicant files a demand for international preliminary examination prior to the expiration of 22 months (or 19 months in respect of certain Offices that have made a declaration of incompatibility with the modified PCT provision from the priority date, the time limit before the expiration of which the applicant must enter the national phase by performing the prescribed acts indicated below is governed for the elected Offices by Article 39(1). The time limit is normally 30 months from the priority date, the same time limit for entering the national phase as that which applies in the case of a designated Office which has not been elected. The national law applied by each elected Office may fix a time limit which expires later than 30 months from the priority date.
ACTS TO BE DONE BEFORE ENTRY INTO NATIONAL PHASE
The following acts must be performed (if applicable):
(i) Payment of the national fee;
(ii) Furnishing of a translation, if prescribed;
(iii) In exceptional cases (if a copy of the international application has not been communicated to the designated Office under Article 20), furnishing of a copy of the international application, except where not required by that Office
(iv) in exceptional cases (if the name and address of the inventor were not given in the request when the international application was filed, but the designated Office allows them to be given at a time later than that of the filing of a national application), furnishing of the indication of the name and address of the inventor

The consequences where, on expiration of the applicable time limit for entering the national phase, the required acts have not (all) been performed, are that the international application loses the effect of a national application and the procedure comes to an end in respect of each Office before which they have not (all) been performed. Non-performance of the required acts in respect of one Office does not alter the effect of the international application before the other Offices. The automatic loss of the effect relieves the applicant, where he decides not to pursue the international application in the national phase, of the need to expressly withdraw the international application or the designation or election of a certain State.
THE EPC, PCT AND EPO
The EPC (European Patent Convention) is a regional treaty for the purposes of the PCT. The PCT provides that where a state which is designated or elected under the PCT is also a party to a regional treaty then that application may be treated as an application for the regional patent. Accordingly the EPC permits the EPO to be a Designated Office and an Elected Office under the PCT. This means that if a PCT applicant is considering obtaining European patents in those countries which are signatories to the EPC, they can obtain European patents in those countries by merely requesting a European patent in their patent application. Once publication of the international application has been completed and the application sent in English, French or German to the EPO, the EPO will process the application and if found patentable, grant European patents for the relevant Member States. This route is called the Euro-PCT route.

BIBLIOGRAPHY 1. www.wipo.int 2. www.ipindia.nic.in 3. PCT Applicant’s Guide- International Phase 4. PCT Applicant’s Guide- National Phase 5. www.wikipedia.org

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[ 2 ]. Patent Cooperation Treaty, June 19, 1970, art. 1, 28 U.S.T. 7645, 7649, 9 I.L.M. 978, 978.
[ 3 ]. id
[ 4 ]. 1160 Off. Gaz. Pat. Office 94
[ 5 ]. Patent Cooperation Treaty, June 19, 1970, art. 1, 28 U.S.T. 7645, 7649, 9 I.L.M. at 979.
[ 6 ]. Id. art. 10, 28 U.S.T. at 7659.9 I.L.M. at 980
[ 7 ]. Id. art. 4(1)(ii), 28 U.S.T. at 7652-53, 9 I.L.M. at 979.
[ 8 ]. Id. art. 4, 28 U.S.T. at 7652-54, 9 I.L.M. at 979.
[ 9 ]. Id. art. 4(1)(ii), 28 U.S.T. at 7653, 9 I.L.M. at 979.
[ 10 ]. Id. art. 4, 28 U.S.T. at 7652-54, 9 I.L.M. at 979.
[ 11 ]. 35 U.S.C. S 119 (1988)
[ 12 ]. Patent Cooperation Treaty, supra note , art. 5, 28 U.S.T. at 7654, 9 I.L.M. at 979. See also 35 U.S.C. S 112 (1988).
[ 13 ]. See Patent Cooperation Treaty, supra note , Introduction, 28 U.S.T. at 7648, 9 I.L.M. at 978.
[ 14 ]. Id. arts. 3-30, 28 U.S.T. at 7652-76, 9 I.L.M. at 979-84.
[ 15 ]. Id. arts. 11(3)-(4), 28 U.S.T. at 7657, 9 I.L.M. at 980.
[ 16 ]. see Form PCT/IB/375
[ 17 ]. see Form PCT/SISA/501
[ 18 ]. Chapter II of the PCT
[ 19 ]. Chapter II of the PCT
[ 20 ]. Id. art. 31, 28 U.S.T. at 7677-78, 9 I.L.M. at 985.
[ 21 ]. Id. Rule 5.1(a)(v), 28 U.S.T. at 7821, 9 I.L.M. at 996.
[ 22 ]. See Article 2(i)
[ 23 ]. PCT Article 22(1)
[ 24 ]. Article 33(1)
[ 25 ]. Chapter II of the PCT
[ 26 ]. However, that the 30-month time limit applies in any case, to a large number of designated Offices even if they have not been elected within the 19-month time limit; see paragraph 5.005 for details).
[ 27 ]. http://www.wipo.int/patentscope/search/en/structuredSearch.jsf
[ 28 ]. see International Phase, paragraph 5.053
[ 29 ]. see International Phase, paragraphs 4.022 to 4.026
[ 30 ]. PCT Article 22(1)
[ 31 ]. see paragraph 3.001
[ 32 ]. PCT, Art. 45(1)
[ 33 ]. See EPC Arts 150-158 and EPC rr. 107-111