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Wednesday February 20, 2002
EPO ABOLISHES 21 MONTH NATIONAL FILING DEADLINE, AND OTHER PCT MEMBER COUNTRIES TO FOLLOW
Under the PCT, if a PCT Request is filed designating "EP," then the Applicant is required to file one of:(a) a Demand before the 19th month from the PCT priority date, or (b) a National filing in the EPO before 21 months from the PCT priority date. As of 01 April, 2002, the PCT has abolished the 20 or 21 (EPO) month deadline in which to complete a National filing. The EPO has already implemented the changes, effective January 2002, and the United States will implement the changes effective 01 April, 2002.
Under the new PCT rules, an Applicant can omit filing a Demand before 19 months, but will still be able to complete National filings before 30 or 31 (EPO) months. Essentially, the Applicant can extend the time limit for National filings up to 30 or 31 (EPO) months from the PCT priority date, however, no examination will be performed during Chapter II. In essence, an Applicant can file a Request under Chapter I, NOT file a Demand at 19 months, and still be allowed to file a National application before the expiration of 30 or 31 (EPO) months.
For Applicants that simply want to use the PCT as a vehicle for delay, and the EPO is the only national filing of interest, then this new rule is a great way to delay. However, caution must be taken not to extend this new change to other PCT member countries, as this change (Article 22(1) of the PCT) has not yet been adopted by all member states.
As of 31 January, 2002, countries such as Japan, South Korea, Singapore, China, and several others have not amended their national laws to implement the PCT changes. The PCT will recognize a transition period, essentially allowing member countries to follow national laws, until all member countries have implemented the changes. For all currently pending PCT applications, the new 30-month time limit will be applicable to those applications for which the 20-month time limit expires on or after 01 April 2002 (or January 2002 for EPO designations) for those member countries that have implemented the changes. All other countries will continue to require a Demand before 19 months as in current practice until their respective national laws are amended to implement the changes.
In the meantime, we will caution clients to only utilize this delayed National filing option in the EPO if they are aware that no International Preliminary Examination will take place, and that other countries may not have adopted the change to Article 22(1). More importantly, if no Demand is filed to enter Chapter II, countries that have not yet adopted the change will not be available for National filings at 30 months. That is, most PCT member countries will still adhere to National filing at 20 months under Chapter I, and 30 months National filing ONLY if a Demand is filed before the 19 month Demand filing deadline.
If you have any questions, please feel free to contact us.
Al Penilla and Rick von Wohld
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