Last updated: November 2017
Total 132 case(s)
| Case Name | Decision Date | Jurisdiction | Abstract | PCT Legal Reference |
|---|---|---|---|---|
| ABBOTT LABORATORIES v. ALRA LABORATORIES, INC. | 20-Oct-1997 | United States of America (U.S. District Courts) | Attempting to invalidate Plaintiff's patents, Defendant asserted Plaintiff failed to disclose the 'best mode' in their U.S. application, as required under U.S. law. Defendant supplied as support Plaintiff's PCT application, which disclosed a mode different from the U.S. application mode, and the fact that the PCT application mode was better than the U.S. application mode. The court held that, because of the "stringent" requirements of the 'best mode' doctrine and Applicant's statement in the PCT application that the disclosed mode was 'another method', non-inclusion of the PCT application mode in the U.S. application was not a violation of the 'best mode' doctrine. | Article 5 The Description Rule 5 The Description |
| Actelion Pharmaceuticals v. Matal | 06-Feb-2018 | United States of America (Federal Circuit) | The Court of Appeals for the Federal Circuit affirmed a district court decision regarding the plaintiff’s patent term adjustment. The plaintiff filed a PCT application and entered the national phase four days prior to the expiration of the 30 month time limit for national phase entry. Along with the application, the plaintiff filed a preliminary amendment with the remark “Applicant earnestly solicits early examination and allowance of these claims”. However, in the relevant Form, the plaintiff did not check the box “This is an express request to begin national examination procedures. The last day of the 30 month time limit was a national holiday. The patent office began examination on the following day. The patent was issued with a patent term adjustment. The plaintiff requested recalculation of the patent term adjustment arguing that the adjustment should have been based on the actual date of national phase entry, or at least on the date when the 30-month time limit expired - not taking into consideration the fact that the 30-month date fell on a federal holiday. The Court of Appeals for the Federal Circuit firstly found that the plaintiff failed to make an express request for early national phase examination as its request was inconsistent or ambivalent. Secondly, the Court affirmed that the national phase started the next workday after the expiration of the 30-month period which fell on a public holiday. | Article 22 Copy, Translation, and Fee, to Designated Offices Article 23 Delaying of National Procedure Rule 80 Computation of Time Limits |
| ADVANCED CARDIOVASCULAR SYSTEMS, INC., v. MEDTRONIC, INC.,. | 25-Aug-1999 | United States of America (U.S. District Courts) | Attempting to invalidate and deem unenforceable several patents held by Plaintiff, Defendant makes reference to a PCT application as a prior art document for application against the patents. This attempt was unsuccessful as the court held the PCT application was only effective as prior art on its publication (date). | Article 21 International Publication Rule 33 Relevant Prior Art for the International Search Rule 48 International Publication |
| ALAMAR BIOSCIENCES, INC., v. DIFCO LABORATORIES, INC., et al., | 12-Oct-1995 | United States of America (U.S. District Courts) | This case relates to whether Defendant had sufficient notice, following the publication and subsequent database availability, of Plaintiff's PCT application, to start the Statute of Limitations on invention misappropriation complaints (under California law). The court held that, because the publication was locatable via the database by a reasonably diligent person, Defendant had constructive notice of Plaintiff's actions with regards to the invention, thus tolling the Statute of Limitations. | Article 21 International Publication Article 50 Patent Information Services Rule 48 International Publication |
| ALLOC, INC., v. INTERNATIONAL TRADE COMMISSION | 10-Sep-2003 | United States of America (Federal Circuit) | To further support an interpretation of a claim limitation and the patent specification, the court relied upon the International Preliminary Examination Report (IPER) issued for the parent PCT application. Specifically, the IPER relied upon the limitation when judging the invention to be 'novel'. | Article 35 The International Preliminary Examination Report Rule 66 Procedure before the International Preliminary Examining Authority |
| ANTIBALLISTIC SECURITY AND PROTECTION INC. v. CANADA (COMMISSIONER OF PATENTS) | 09-Dec-2008 | Canada (Court of Appeals) | The applicant requested the withdrawal of a priority claim in order to extend the period for national phase entry. The request for withdrawal of the priority claim was refused by the International Bureau of WIPO because it was not made within the prescribed 30 month time limit. The applicant attempted to enter the national phase in Canada outside of the national time limit of 42 months by using a Canadian common law concept of “disclaimer” applied to a priority date. The Canadian Commissioner of Patents rejected the notion of a priority right “disclaimer” because it was a concept not prescribed by the PCT or the Canadian patent regime. This decision was upheld by the Canadian Federal Court of Appeal. | Article 2 Definitions Article 8 Claiming Priority Rule 90bis Withdrawals |
| APPLICANT V. EUROPEAN PATENT OFFICE | 15-Dec-2016 | European Patent Office (EPO) (Board for Appeal) | The application was deemed withdrawn during the national phase due to non-payment of renewal fees, resulting from a missed docketing entry. The applicant filed a request for re-establishment of rights, but the Examining Division rejected its request for the applicant’s failure to exercise “all due care”. On appeal, Board of Appeal of the European Patent Office dismissed the case finding that “all due care” requires an isolated error in spite of a cross-checking docketing system. The applicant lacked an independent and effective cross-checking docketing system because its docketing system failed to catch missed entries. Moreover, the applicant ignored the communication from its European attorney notifying that the application would be withdrawn if the renewal fee was not paid within the additional six-month grace period. | Article 48 Delay in Meeting Certain Time Limits Rule 82bis Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits |
| APPLICANT V. EUROPEAN PATENT OFFICE | 03-Aug-2017 | European Patent Office (EPO) (Board for Appeal) | The applicant failed to pay the required fees during the international phase, which became apparent only after the national phase entry. As result, the international application was deemed withdrawn. In accordance with PCT Article 24(1)(ii), the European Patent Office (EPO) informed the applicant that the application could not be processed in the European phase since the application was considered withdrawn in the international phase and indicated that the time limit for requesting review of the receiving Office (RO) findings under PCT Articles 24(2) and 25(2)(a) has expired. On appeal, the applicant asserted that once an application validly enters the European phase, it is unaffected by possible deficiencies in the international phase that become apparent later on. Furthermore, the applicant argued that the EPO’s further processing such as recording of applicant transfers and agent changes as well as its receipt of renewal fees over seven years suggested to the applicant that the application was still pending. Thus, the applicant asserted that it could have reasonably assumed the EPO exercised its discretion under PCT Article 24(2) to maintain the effect of the international application despite its deemed withdrawal. The Board of Appeal determined that the loss of rights under PCT Article 24(1)(ii) in the international phase cannot be remedied in the national phase. The Board further noted that the RO has no time limit under PCT Article 14(3)(a) to notify the applicant of the deemed withdrawal for non-payment of fees. Accordingly, the Board regarded the European entry as non effective. Moreover, the Board found that even if the applicant had requested review under PCT Article 25(2), it would not apply here because the RO decision was not the result of an error but the result of the applicant’s non-payment of fees, which is undisputed. Regarding the review under PCT Article 24(2), the Board found that national law governs the time limit for requesting such review (consistent with PCT Article 48(2)(a)), and under the European patent law, no time limit bars the applicant from invoking the protection of legitimate expectations. Nevertheless, the Board found the principle of protection of legitimate expectations could not apply to the applicant(s) here since the applicant(s) failed to act in good faith when, inter alia, it ignored the RO’s invitation to pay the relevant fees. | Article 14 Certain Defects in the International Application Article 24 Possible Loss of Effect in Designated States Article 25 Review by Designated Offices Article 48 Delay in Meeting Certain Time Limits |
| APPLICANT V EUROPEAN PATENT OFFICE | 07-Jul-2015 | European Patent Office (EPO) | Applicant filed a European patent application by telecopier, then sent the original by mail. The telecopier version arrived before the expiration of the priority period; the mailing only arrived after. The Receiving Section considered the date of receipt of the original by mail to be the filing date and therefore the priority claim was rejected. The Board reversed, finding that Article 75(1)(b) EPC allows regional applications to be given as their filing date the date the application is received by the office of a Contracting State. | |
| APPLICANT v. EUROPEAN PATENT OFFICE | 01-Dec-1992 | European Patent Office (EPO) (Legal Board of Appeals) | The applicant filed an international application with two errors in the priority claims. The application had been published with erroneous information, and so the Receiving Section refused to allow the errors to be corrected, which would have moved the priority date back one day. On appeal, the Board allowed the corrections since they were both clerical and such that they could have been discovered by any third party inspecting the publication documents. The Board held that the application would be granted the earlier priority date, and that the correct priority document could be provided to the International Bureau even though the deadline for doing so had passed. | Article 8 Claiming Priority Article 48 Delay in Meeting Certain Time Limits Rule 4 The Request (Contents) Rule 17 The Priority Document Rule 91 Obvious Errors in Documents |
| APPLICANT v. EUROPEAN PATENT OFFICE | 20-Dec-2001 | European Patent Office (EPO) (Legal Board of Appeals) | The applicant filed an international application with a description and claims written in a language that was not accepted by its chosen receiving office. The error was not corrected until more than a year after the claimed priority date, and so the priority claim was cancelled by the RO. The court held that the RO should have reviewed the documents for filing sufficiency as soon as it received them, and, had it done so, the applicant would have most likely been able to correct the error within the time limit for claiming priority. The court ruled that the EPO as a designated office should have corrected the mistake of the EPO as an RO, awarded the applicant its original filing date, and reinstated its priority claim. | Article 2 Definitions Article 11 Filing Date and Effects of the International Application Rule 12 Language of the International Application and Translation for the Purposes of International Search and International Publication Rule 19 The Competent Receiving Office Rule 20 Receipt of the International Application Rule 82ter Rectification of Errors Made by the Receiving Office or by the International Bureau |
| APPLICANT v. EUROPEAN PATENT OFFICE | 24-Mar-1995 | European Patent Office (EPO) (Legal Board of Appeals) | The issue on appeal was whether the IPEA had misinterpreted certain elections made in a demand under the Chapter II procedure. | Article 48 Delay in Meeting Certain Time Limits Rule 53 The Demand |
| APPLICANT v. EUROPEAN PATENT OFFICE | 07-Jul-1981 | European Patent Office (EPO) (Legal Board of Appeals) | The EPO Legal Board of Appeals confirmed that PCT applicants may utilize and benefit from provisions under the European Patent Convention, in this case, the payment of designation fees after expiry of the prescribed time limit. | Article 48 Delay in Meeting Certain Time Limits |
| APPLICANT v. EUROPEAN PATENT OFFICE | 22-Nov-2002 | European Patent Office (EPO) (Legal Board of Appeals) | An applicant filed a letter meant to be a request for immediate entry into the regional phase before the EPO. This letter was followed by a withdrawal of the applicant’s priority claims. Since the letter was not an express entry request made in accordance with Article 40(2) PCT, the Examining Division found that the withdrawal was effective for the EPO. This decision was reversed by the Board of Appeal, which found that Rule 82ter PCT applied by analogy. Since the withdrawal itself was improper by not being unambiguous, the priority claim was ruled to have never been withdrawn. | Article 22 Copy, Translation, and Fee, to Designated Offices Article 23 Delaying of National Procedure Article 39 Copy, Translation, and Fee, to Elected Offices Article 40 Delaying of National Examination and Other Processing Rule 82ter Rectification of Errors Made by the Receiving Office or by the International Bureau Rule 90bis Withdrawals |
| APPLICANT v. EUROPEAN PATENT OFFICE | 25-Sep-1984 | European Patent Office (EPO) (Legal Board of Appeals) | The European regional phase was withdrawn for failure to meet the time limit to pay fees. | Article 23 Delaying of National Procedure Article 40 Delaying of National Examination and Other Processing |
| APPLICANT v. EUROPEAN PATENT OFFICE | 23-Jul-1982 | European Patent Office (EPO) (Legal Board of Appeals) | The Board decided on the consequences of not making fee payments within the time periods prescribed by PCT Article 22(1). | Article 22 Copy, Translation, and Fee, to Designated Offices |
| APPLICANT v. EUROPEAN PATENT OFFICE | 30-Nov-1981 | European Patent Office (EPO) (Legal Board of Appeals) | Applicant filed an international application, and then filed a European application claiming priority of the international one. Applicant sought a reduction in the search fee due to the previously completed international search report. On appeal, the Board found that there was no basis for treating a European application like an international one, since international applications are the only ones eligible for the fee reduction. The request for reduction was denied. | Article 2 Definitions |
| APPLICANT v. EUROPEAN PATENT OFFICE | 13-Feb-1985 | European Patent Office (EPO) (Legal Board of Appeals) | This case was consolidated with Case No. J 0009/83. Applicant filed an international application designating the EPO. After receiving the supplementary European search report the applicant decided to withdraw its application and requested a refund of the examination fee. On appeal, the Board found that Article 96 EPC gave direct European applicants the ability to withdraw their applications after receiving the European search report without having to pay the examination fee. The Board thus found that based on Article 150(3) EPC, and the fact that the examination section never had responsibility for this application, the applicant should have had the opportunity to withdraw the application after receiving the supplementary European search report. A refund of the examination fee was ordered. | Article 18 The International Search Report Article 23 Delaying of National Procedure Article 40 Delaying of National Examination and Other Processing |
| APPLICANT v. EUROPEAN PATENT OFFICE | 13-Feb-1985 | European Patent Office (EPO) (Legal Board of Appeals) | The EPO Legal Board of Appeal decided that the examination fee may be refunded when a “Euro-PCT” application is withdrawn after receipt of the supplementary European search report. | Article 23 Delaying of National Procedure Article 40 Delaying of National Examination and Other Processing |
| APPLICANT v. EUROPEAN PATENT OFFICE | 01-Dec-1991 | European Patent Office (EPO) (Legal Board of Appeals) | Applicant filed an international application designating the EPO and claiming no priority. Realizing the error a few months later, applicant requested correction of the application to include a priority claim. After entering the regional phase the Receiving Section refused the correction and the applicant appealed. The Board found that a request to correct a mistake under Rule 88 EPC should be made early enough to include a warning of a pending correction request with the international publication. An appropriate warning was published and the correction was permitted. | Article 21 International Publication Article 25 Review by Designated Offices Article 27 National Requirements Rule 91 Obvious Errors in Documents |
| APPLICANT v. EUROPEAN PATENT OFFICE | 29-Feb-1984 | European Patent Office (EPO) (Legal Board of Appeals) | Applicant filed an international application designating the EPO but failed to pay the national fee, the search fee, or the designation fee upon entering the regional phase. He subsequently requested a re-establishment of his rights after paying the fees. The Receiving Section denied the request. The Board upheld the decision of the Receiving Section finding that the applicant had not exercised “all due care” under Article 122 EPC. | Article 22 Copy, Translation, and Fee, to Designated Offices |
| APPLICANT v. EUROPEAN PATENT OFFICE | 11-Jun-1981 | European Patent Office (EPO) (Legal Board of Appeals) | A priority claim based on an industrial design for a subsequent European application was denied by the Receiving Section; the applicant appealed. The Board rejected the appeal, finding that Article 87 EPC did not allow for a priority claim based on an industrial design. Additionally, the Board found that Article 4 of the Paris Convention did not suggest that an industrial design should be the basis of a priority claim since a design discloses the look of an invention, not the invention itself. | Article 1 Establishment of a Union Article 2 Definitions Article 8 Claiming Priority Rule 4 The Request (Contents) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 16-Dec-1992 | European Patent Office (EPO) (Legal Board of Appeals) | The applicant filed an international application, and after the expiry of the 19 month time limit to do so the applicant submitted a demand for international preliminary examination and a request for a re-establishment of rights, arguing that the examination fee paid at the time of filing should be viewed as an implicit demand for an international preliminary examination. The EPO, acting as the International Preliminary Examination Authority, found that there were no grounds to re-establish the applicant’s rights and refused the demand. On appeal, the Board found that there was no jurisdiction for it to consider the case. | Article 31 Demand for International Preliminary Examination Article 34 Procedure Before the International Preliminary Examining Authority Rule 40 Lack of Unity of Invention (International Search) Rule 68 Lack of Unity of Invention (International Preliminary Examination) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 15-Dec-1997 | European Patent Office (EPO) (Legal Board of Appeals) | Applicant filed an international application designating several EPC Contracting States for national protection but without any check mark in the box signifying a desire for a European patent. The Board found that Article 4(1) PCT and Article 153(1) EPC, in the forms in force at the time of filing, required that any designation for a European patent occur at the time of filing. | Article 4 The Request Article 27 National Requirements Article 45 Regional Patent Treaties Rule 4 The Request (Contents) Rule 91 Obvious Errors in Documents |
| APPLICANT v. EUROPEAN PATENT OFFICE | 24-Mar-1986 | European Patent Office (EPO) (Legal Board of Appeals) | Applicant filed a European patent application by facsimile, then sent the original by mail. The facsimile version arrived before the expiration of the priority period; the mailing only arrived after. The Receiving Section considered the date of receipt of the original by mail to be the filing date and therefore the priority claim was rejected. The Board reversed, finding that Article 75(1)(b) EPC allows regional applications to be given as their filing date the date the application is received by the office of a Contracting State. | Article 11 Filing Date and Effects of the International Application Rule 92 Correspondence |
| APPLICANT v. EUROPEAN PATENT OFFICE | 27-Nov-1989 | European Patent Office (EPO) (Legal Board of Appeals) | Applicant filed an international application, made a demand for international preliminary examination by facsimile, and sent the original by mail. The original was lost in transit, and the EPO, acting as the appointed IPEA but neither a designated or elected Office, informed the applicant that the demand would not be accepted. The applicant appealed, but the Board determined that there was no jurisdiction to hear the appeal. | Article 17 Procedure Before the International Searching Authority Article 34 Procedure Before the International Preliminary Examining Authority Article 39 Copy, Translation, and Fee, to Elected Offices Article 48 Delay in Meeting Certain Time Limits |
| APPLICANT v. EUROPEAN PATENT OFFICE | 24-Mar-1986 | European Patent Office (EPO) (Legal Board of Appeals) | Applicant filed a European patent application by telecopier, then sent the original by mail. The telecopier version arrived before the expiration of the priority period; the mailing only arrived after. The Receiving Section considered the date of receipt of the original by mail to be the filing date and therefore the priority claim was rejected. The Board reversed, finding that Article 75(1)(b) EPC allows regional applications to be given as their filing date the date the application is received by the office of a Contracting State. | Article 11 Filing Date and Effects of the International Application Rule 92 Correspondence |
| APPLICANT v. EUROPEAN PATENT OFFICE | 09-Nov-1987 | European Patent Office (EPO) (Legal Board of Appeals) | Applicant, a Japanese company, filed an international application at the Japanese Patent Office in Japanese requesting a European patent. The applicant neither furnished a translation into English nor paid the requisite fees in time to enter the regional phase. The applicant applied for restitutio in integrum, arguing both that due to an error at the post office it never received the mailings from the EPO indicating the deadlines for entering the regional office. The Board determined that the there were no grounds for restitutio in integrum, finding that it is the responsibility of the applicant to be aware of the deadlines. | Article 22 Copy, Translation, and Fee, to Designated Offices |
| APPLICANT v. EUROPEAN PATENT OFFICE | 23-Aug-1994 | European Patent Office (EPO) (Legal Board of Appeals) | While entering the regional phase before the EPO, the applicant failed to file a translation of the application into an acceptable language for the EPO. After being notified by the Receiving Section that the application was being considered withdrawn because of this oversight the applicant requested a re-establishment of rights under Article 122 EPC (due care). The Receiving Section denied this request and the applicant appealed. The Board reversed this decision on the basis that the applicant had in fact exercised due care. | Article 22 Copy, Translation, and Fee, to Designated Offices |
| APPLICANT v. EUROPEAN PATENT OFFICE | 03-Jun-1991 | European Patent Office (EPO) (Legal Board of Appeals) | Applicant filed an international application requesting a European patent for all countries for which it was possible to seek one at the time and a national patent in Denmark. In the period between the filing and the deadline for entering the national phase the EPC came into force in Denmark. Applicant then entered the regional phase and included a designation and fee for Denmark. The Receiving Section refused the additional designation for Denmark as the EPC was not in effect there at the time of filing. The refusal was upheld by the Board. | Article 4 The Request |
| APPLICANT v. EUROPEAN PATENT OFFICE | 30-Oct-1991 | European Patent Office (EPO) (Legal Board of Appeals) | Applicants submitted an international application requesting a European patent (Euro-PCT application). A European application was subsequently submitted claiming priority of the Euro-PCT application. The fees for entry into the regional phase were not paid in time, and the PCT application was considered withdrawn. Applicants requested restitutio in integrum for the PCT application and that the European application be recognized as having performed certain procedural steps necessary for the PCT application to enter the regional phase. This was rejected by the Board on appeal. | Article 22 Copy, Translation, and Fee, to Designated Offices Rule 49 Copy, Translation and Fee under Article 22 |
| APPLICANT v. EUROPEAN PATENT OFFICE | 21-May-1987 | European Patent Office (EPO) (Legal Board of Appeals) | Applicant filed a Euro-PCT application. The EPO examination fees were not paid within the prescribed time limit. The Receiving Section deemed the European application withdrawn. This decision was upheld by the Board on appeal. | Article 27 National Requirements |
| APPLICANT v. EUROPEAN PATENT OFFICE | 29-Apr-1993 | European Patent Office (EPO) (Technical Board Appeals) | The EPC is closely linked to the PCT, with which it was harmonized even while it was being drawn up. If a citation, which is partly written in a programming language, is available to the European Patent Office at the search or examination stage, and the Office is equipped to perform such a search or examination, the PCT cannot in the Board's view prevent the Office from considering that citation. | Rule 39 Subject Matter under Article 17(2)(a)(i) Rule 67 Subject Matter under Article 34(4)(a)(i) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 25-Jul-2000 | European Patent Office (EPO) (Technical Board Appeals) | The claims of the application were amended during the preliminary examination of the application under the PCT. The question of inventive step was raised by the Examining Division in the official communication pursuant to Article 96 (2) and Rule 51 (2) EPC when referring to the IPER (International Preliminary Examination Report under the PCT). Since, however, it merely mentioned that document (1) was relevant to the assessment of inventive step and that the problem underlying the present invention could have been solved in an obvious way, the Board cannot consider that an extensive examination of this issue was performed by the first-instance department. | Article 34 Procedure Before the International Preliminary Examining Authority Article 35 The International Preliminary Examination Report Rule 70 International Preliminary Report on Patentability by the International Preliminary Examining Authority (International Preliminary Examination Report) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 16-Mar-2000 | European Patent Office (EPO) (Technical Board Appeals) | The international preliminary examination report (IPER) cited only one prior art reference. In the subsequent regional phase, the EPO elected Office (EO/EP) issued an office action containing two prior art references. The Board gave their opinion on this situation. | Article 35 The International Preliminary Examination Report Rule 70 International Preliminary Report on Patentability by the International Preliminary Examining Authority (International Preliminary Examination Report) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 12-Sep-2002 | European Patent Office (EPO) (Technical Board Appeals) | The Board said that an IPER established by an International Preliminary Examining Authority other than the EPO can be cited, provided that it constitutes a reasoned statement as required by Rule 51(3) EPC. The Board determined that the IPER established by the USPTO in this particular instance did not constitute a reasoned statement. | Article 35 The International Preliminary Examination Report Rule 70 International Preliminary Report on Patentability by the International Preliminary Examining Authority (International Preliminary Examination Report) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 05-Jun-1984 | European Patent Office (EPO) (Examining Division) | Applicant's request to maintain his international application in a designated office following withdrawal by the receiving office was permitted. This was based on PCT Rule 51.1 and 51.3. | Article 14 Certain Defects in the International Application Article 24 Possible Loss of Effect in Designated States Article 25 Review by Designated Offices Article 48 Delay in Meeting Certain Time Limits Rule 26 Checking by, and Correcting before, the Receiving Office of Certain Elements of the International Application Rule 51 Review by Designated Offices |
| APPLICANT v. EUROPEAN PATENT OFFICE | 12-Jun-1987 | European Patent Office (EPO) (Board for Appeal) | The Board of Appeal decided that a protest was inadmissible because it was filed after the expiry of the prescribed time limit. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 14-Nov-1997 | European Patent Office (EPO) (Board for Appeal) | Protest of the payment of an additional search fee. Appeal of the decision by the IPEA on lack of unity of invention. Protest was unjustified. | Article 34 Procedure Before the International Preliminary Examining Authority Rule 13 Unity of Invention Rule 68 Lack of Unity of Invention (International Preliminary Examination) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 28-Feb-1992 | European Patent Office (EPO) (Board for Appeal) | Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. Protest was unjustified. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 09-Apr-2001 | European Patent Office (EPO) (Board for Appeal) | Protest of the payment of an additional search fee. Appeal of the decision by the IPEA on lack of unity of invention. Protest was only partly justified. | Article 34 Procedure Before the International Preliminary Examining Authority Rule 13 Unity of Invention Rule 68 Lack of Unity of Invention (International Preliminary Examination) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 25-Nov-1987 | European Patent Office (EPO) (Board for Appeal) | The Board of Appeal is of the opinion that the features of Claims 2-10 are interwoven with those of Claim 1 to such an extent that even when the subject-matter of Claim 1 or of Claim 1 and some other claims were known, that is not novel, the remaining claims would not fall apart in different subject-matters, which could be considered as constituting independent inventions in a meaningful way. All the three inventions according to the three sets of claims, therefore, not only exhibit unity of invention a priori, but also a posteriori. Thus, the requirement of Rule 13(1) PCT is met. The invitation to pay additional search fees was not justified. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 03-Jun-2003 | European Patent Office (EPO) (Board for Appeal) | Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. Protest was justified. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 29-Nov-1994 | European Patent Office (EPO) (Board for Appeal) | Protest of the payment of an additional search fee. Appeal of the decision by the IPEA on lack of unity of invention. Protest was unjustified for lack of a reasoned statement. | Article 34 Procedure Before the International Preliminary Examining Authority Rule 13 Unity of Invention Rule 68 Lack of Unity of Invention (International Preliminary Examination) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 10-Dec-2001 | European Patent Office (EPO) (Board for Appeal) | Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. Protest was unjustified. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 02-May-2002 | European Patent Office (EPO) (Board for Appeal) | As the unifying concept underlying the present claims lacks novelty, "a special technical feature" in the sense of Rule 13.2 PCT no longer links the claims together. Under these circumstances, the claims related to a plurality of inventions, each being in relation to a different solution for a different or alternative technical problem. The Board found that the invitation to pay the additional fees was justified. | Article 34 Procedure Before the International Preliminary Examining Authority Rule 13 Unity of Invention Rule 68 Lack of Unity of Invention (International Preliminary Examination) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 20-Oct-1999 | European Patent Office (EPO) (Board for Appeal) | The fact that a single document discloses all the claimed subject matters is a very strong indication that there is a technical relationship between them, such that, in these circumstances, no invitation to pay further examination fees may be issued. | Article 34 Procedure Before the International Preliminary Examining Authority Rule 13 Unity of Invention Rule 68 Lack of Unity of Invention (International Preliminary Examination) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 29-Jun-1989 | European Patent Office (EPO) (Board for Appeal) | The Enlarged Board of Appeal was asked to clarify whether a substantive examination in respect of novelty and inventive step is necessary in situations where there is lack of unity. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 33 Relevant Prior Art for the International Search Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 11-Apr-1988 | European Patent Office (EPO) (Board for Appeal) | The additional search fees and the protest fee must be paid in the allotted timeframe. Failure to due so will lead to a denial of the protest. | Article 17 Procedure Before the International Searching Authority Article 40 Delaying of National Examination and Other Processing Article 48 Delay in Meeting Certain Time Limits Rule 40 Lack of Unity of Invention (International Search) Rule 82bis Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits |
| APPLICANT v. EUROPEAN PATENT OFFICE | 27-Jan-1992 | European Patent Office (EPO) (Board for Appeal) | The ISA has a duty, where lack of unity has become apparent a posteriori, to carry out a comprehensive search for all the inventions, provided the additional time required is minimal. It is a matter for the ISA to decide whether the time required for a complete search is negligible. Since in the present case the execution of a search, which might be considered comprehensive, presupposes further searches, the Board has no reason to doubt that the ISA exercised its judgment correctly. Thus, the Board denied the protest against the invitation for additional fees. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 29-Nov-1989 | European Patent Office (EPO) (Board for Appeal) | The invitation to pay an additional search fee was not justified because the application complied with PCT Rule 13. The additional fee was thus returned to applicant. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 06-May-1992 | European Patent Office (EPO) (Board for Appeal) | The protest against the payment of additional ISA search fees was denied because the comment that "in our view the claims do not lack unity" is only an unsubstantiated assertion, and cannot be regarded as a reasoned statement within the meaning of Rule 40.2.(c) PCT as it does not give any reasons showing why the applicants take that view. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 14-Apr-1989 | European Patent Office (EPO) (Board for Appeal) | The invitation by the ISA to pay additional search fees was unjustified for lack of reasoning and proper legal basis. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 14-Feb-2002 | European Patent Office (EPO) (Board for Appeal) | Protest against the payment of additional search fees was deemed justified because, in the invitation, the argument supporting the additional fees included a paraphrase of a claim. The paraphrase led to an incorrect interpretation of the claim. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 30-Sep-2003 | European Patent Office (EPO) (Board for Appeal) | Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. Protest was justified. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 10-Feb-1992 | European Patent Office (EPO) (Board for Appeal) | Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. Protest was justified. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 12-Nov-2001 | European Patent Office (EPO) (Board for Appeal) | The protest against the payment of additional ISA search fees was determined justified, because the invitation contained no reasoning as to why the documents cited in the international search report destroy novelty of the claims that were searched. Further, the posteriori objection of lack of unity was not justified. | Article 17 Procedure Before the International Searching Authority Article 33 The International Preliminary Examination Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) Rule 64 Prior Art for International Preliminary Examination |
| APPLICANT v. EUROPEAN PATENT OFFICE | 09-Nov-1990 | European Patent Office (EPO) (Board for Appeal) | Two additional search fees were charged in response to a lack of unity determination. The Board reiterated a lack of unity of invention may become apparent a posteriori, i.e. after taking the prior art into consideration, e.g. a document discovered in the international search shows that there is lack of novelty in a main claim, leaving two or more dependent claims without a single general inventive concept. The Board held one additional search fee requirement to be justified and one to be unjustified. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 14-Sep-1992 | European Patent Office (EPO) (Board for Appeal) | The Boards of Appeal declined to consider Applicant's protest against payment of additional fees for searching because the statement was not considered sufficiently "reasoned". | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 07-Nov-1990 | European Patent Office (EPO) (Board for Appeal) | Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. Protest was justified because invitation was issued improperly. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 07-Nov-1990 | European Patent Office (EPO) (Board for Appeal) | The Board held that searching in separate classification units for the dependant claims, because the novelty or inventive step of the main claim is questionable, is normal practice and does not as such justify the charging of additional search fees for the International Searching Authority. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 14-Apr-1989 | European Patent Office (EPO) (Board for Appeal) | In ordering the refund of additional search fees to applicant, the Boards of Appeal held that because the invitation issued by the ISA did not allow applicant to determine whether it was proper or not, on its face, it was in violation of Rule 40.1 of the PCT and thus lacked legal effect. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 19-Feb-1992 | European Patent Office (EPO) (Board for Appeal) | The issuance of two invitations to pay additional fees, resulting from a lack of unity of invention determination, was procedurally incorrect because the second invitation, cancelling the first invitation, was outside the allowable time limit for an ISA to deliver such an invitation. The additional fees were thus reimbursable to the applicant. | Article 17 Procedure Before the International Searching Authority Article 18 The International Search Report Rule 40 Lack of Unity of Invention (International Search) Rule 42 Time Limit for International Search |
| APPLICANT v. EUROPEAN PATENT OFFICE | 09-Apr-1992 | European Patent Office (EPO) (Board for Appeal) | The Boards of Appeal, in rejecting Applicant's protest to a lack of unity of invention rejection, set forth that because the two inventions are classified in different international patent classification units, a separate search would be required for each invention. Therefore, the claims lacked unity of invention. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 22-Mar-1991 | European Patent Office (EPO) (Board for Appeal) | Applicant filed a protest following a lack of unity of invention determination. The lack of unity of invention was upheld because the two independent claims failed to contain a single inventive concept that links the two subject matters. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| APPLICANT v. EUROPEAN PATENT OFFICE | 21-Sep-2009 | European Patent Office (EPO) (Board for Appeal) | Protest of the payment of an additional search fee. Appeal of the decision by the ISA on lack of unity of invention. The protest was justified because the multiple inventions were conceptually very close and the international search could be carried out with negligible additional effort. | Article 6 The Claims Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 40 Lack of Unity of Invention (International Search) |
| ARCHIBALD KENRICK & SONS LTD.'s international application | 22-Jul-1994 | United Kingdom (Queen's Bench Division) | Applicant's PCT application failed to reach the United Kingdom (UK) Patent Office within the priority period due to a delay by the mail service. The court, applying PCT Articles and Rules, held this type of delay does not qualify as an "interruption" to justify an excuse for the arrival delay of the application. In applying PCT law as opposed to UK law, the court asserted that as the UK Office was serving as the PCT receiving office, PCT law should apply. | Article 11 Filing Date and Effects of the International Application Article 48 Delay in Meeting Certain Time Limits Rule 82 Irregularities in the Mail Service |
| ARISTOCRAT v. IGT | 22-Sep-2008 | United States of America (Federal Circuit) | The Court of Appeals reversed the judgment of the District Court that a patent, granted from a national filing of a PCT application, is held invalid because it was improperly revived after it was abandoned during prosecution. The Court of Appeals held that “improper revival” is not a cognizable defense in an action involving the validity or infringement of a patent. | |
| ASM AMERICA, INC., Plaintiff, v. GENUS, INC., | 15-Aug-2002 | United States of America (U.S. District Courts) | In a dispute involving claim construction, Plaintiff's attempt at supporting their interpretation of a (claim) limitation via a PCT Authority's written opinion (receiving office, U.S.) was unsuccessful. While acknowledging the opinion of the Authority, the court did not lend weight to it for lack of a written analysis. | Article 18 The International Search Report Rule 43bis Written Opinion of the International Searching Authority |
| ASTRAZENECA v. EUROPEAN PATENT OFFICE | 21-Sep-2009 | European Patent Office (EPO) (Legal Board of Appeals) | The EPO Enlarged Board of Appeal asked whether priority could be claimed from a non-Paris Convention country and whether the TRIPS Agreement could provide support for a claim to priority from a State not member of the Paris Convention. | Article 1 Establishment of a Union Article 8 Claiming Priority Rule 4 The Request (Contents) |
| AUGUSTO ODONE v. CRODA INTERNATIONAL PLC. | 15-Jan-1997 | United States of America (U.S. District Courts) | The international filing date is considered the U.S. national filing date with 35 USC 102(e) exceptions (circa. 1997). | Article 11 Filing Date and Effects of the International Application |
| BAXTER INTERNATIONAL, INC., v. MCGAW, INC. | 30-Jun-1998 | United States of America (Federal Circuit) | The court held that a PCT publication is a public document, suitable for use as a prior art that can be used against the PCT applicant if it is published more than 1 year before the filing of the applicant's U.S. national application. Here, applicant was unable to invoke a priority date due to not meeting the minimum National statutory filing requirements necessary to secure the earlier date, which was ahead of the PCT publication date. | Article 21 International Publication Article 29 Effects of the International Publication Article 50 Patent Information Services Rule 48 International Publication |
| BAYER CROPSCIENCE LP v. THE ATTORNEY GENERAL OF CANADA, AND THE COMMISSIONER OF PATENTS | 13-Apr-2018 | Canada (Court of Appeals) | The appellant filed a national patent application with the United States Patent and Trademark Office (USPTO) on April 3, 2012. The USPTO requested some more documents (diagrams) which were submitted on April 19, 2012. The USPTO assigned April 19, 2012 as the filing date of the national patent application. The appellant filed a PCT application with the International Bureau of WIPO on March 15, 2013, claiming priority from the earlier filed US application and indicating April 3, 2012 as the filing date. The International Bureau of WIPO brought to the appellant’s attention that there was a conflict between the priority date indicated in the request form (April 3, 2012) and the accorded filing date of the national application (April 19, 2012), which is why the appellant corrected the priority date to April 19, 2012. On February 16, 2015, the appellant petitioned the USPTO to accord April 3, 2012 as the correct filing date. The USPTO corrected the filing date of the earlier application to April 3, 2012 acknowledging that the request for diagrams had been an error. On June 26, 2015, the appellant requested the USPTO to correct the priority claim in the PCT application which the USPTO refused arguing that the time limit for correction under PCT Rule 26bis had already expired. The appellant entered the national phase in Canada on August 7, 2015 and requested to enter April 3, 2012 as the priority date. The Commissioner refused that request arguing that the request to correct the priority claim was made outside the 16 month time limit. The Federal Court upheld the decision. | Article 2 Definitions Article 8 Claiming Priority Rule 4 The Request (Contents) Rule 26bis Correction or Addition of Priority Claim, Correction or Addition of Declarations under Rule 4.17 |
| BIACORE v. THERMO BIOANALYSIS CORP., | 30-Dec-1999 | United States of America (U.S. District Courts) | The international publication of a PCT application within a family of patents was used for claim scope interpretation in a U.S. patent. | Article 21 International Publication Article 29 Effects of the International Publication Rule 48 International Publication |
| BROADCAST INNOVATION, L.L.C. and IO RESEARCH PTY LTD. v. CHARTER COMMUNICATIONS, INC. and COMCAST CORPORATION | 19-Aug-2005 | United States of America (Federal Circuit) | The Court of Appeals for the Federal Circuit (CAFC) reversed a district court’s determination regarding the invalidity of a priority claim to a PCT application. The district court had determined that a priority claim should be based on the U.S. filing date. The priority claim was deemed invalid because it was outside of the 12-month priority period. The CAFC reversed this ruling and confirmed that the international filing date of a PCT application is also the U.S. filing date for the corresponding national stage application, resulting in an earlier effective filing date within the 12-month priority period. | Article 8 Claiming Priority Article 11 Filing Date and Effects of the International Application |
| CARLOS ALBERTO PEREZ LAFUENTE V. UNION OF INDIA AND OTHERS | 23-Sep-2011 | India (Court of Appeals) | The High Court of Delhi has set aside an order by the patent office treating a PCT application entering the national phase in India as withdrawn because the request for examination was made too late. A request for examination has to be filed within 48 from the date of priority or date of filing, whichever expires earlier (according to Rule 24B(1)(i) of the Indian Patent Rules), respectively whichever expires later (according to the PCT Guidelines IN 09). The applicant argued that there was a conflict between the Rules and the Guidelines, and thus confusion, when the request for examination has to be filed. The Court directed the patent office to reconsider the patent application. | Article 8 Claiming Priority Article 22 Copy, Translation, and Fee, to Designated Offices Article 27 National Requirements Article 48 Delay in Meeting Certain Time Limits Rule 82bis Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits |
| CATERPILLAR TRACTOR CO. v. COMMISSIONER OF PATENTS AND TRADEMARKS | 29-May-1986 | United States of America (U.S. District Courts) | In implying its understanding based on national law of the unity of invention requirement, the court held the Office in violation of Article 27 of the PCT. The interpretation of the standard must be in line with the PCT's interpretation. | Article 27 National Requirements Rule 13 Unity of Invention |
| CHRISTOPHER J. STEVENS v. SHIGERU TAMAI | 04-May-2004 | United States of America (Federal Circuit) | Applicant failed to prove his entitlement to the benefit of a PCT application. Therefore the USPTO Board of Patent Appeals and Interferences erred in awarding the applicant the benefit of the priority application, as the applicant had failed to file a translation of the PCT application within the prescribed time limit. | Article 20 Communication to Designated Offices Article 22 Copy, Translation, and Fee, to Designated Offices |
| DAVID A. KOSOWER v. HOWARD GUTOWITZ, EATONI ERGONOMICS, INC. and EATONI ERGONOMICS, LLC | 18-Nov-2001 | United States of America (U.S. District Courts) | Jurisdiction of a U.S. district court over the inventorship of a PCT application. | Article 4 The Request Rule 4 The Request (Contents) |
| DR. CHACKO P. ZACHARIAH v. COMMISSIONER OF PATENTS AND TRADEMARKS and UNITED STATES ATTORNEY GENERAL | 08-Aug-2000 | United States of America (Federal Circuit) | The Court supported the U.S. Patent Office's rejection of inventor's oath due to the fact that the U.S. national application was different from the PCT application. The support was given due to the fact that the submitted oath did not satisfy 35 U.S.C. sec. 371(c)(4). | Article 27 National Requirements |
| DURECT CORPORATION V. UNION OF INDIA | 01-May-2011 | India (Court of Appeals) | The High Court of Delhi has held that a request for condonation of delay of a late national phase entry of a PCT application has to be taken on record by the patent office, that the applicant has to be heard, that the patent office has to consider the reasons provided for the delay, and that a reasoned decision has to be issued by the patent office. Durect Corporation’s PCT application, claiming priority from a former US application, was filed under the National Phase in India, eight months after the 31 month period for national phase entry had expired. The Patent Office of New Delhi refused to accept the application. Durect filed a request for condonation of delay. The High Court of Delhi stated that the patent office’s decisions are open for appeal and that the Indian Intellectual Property Appellate Body (IPAB) has to hear the appeal on merit by taking into consideration the facts and circumstances of each case. This decision confirms the findings of the Madras High Court in Nokia Corporation v Controller of Patents. | Article 8 Claiming Priority Article 22 Copy, Translation, and Fee, to Designated Offices Article 48 Delay in Meeting Certain Time Limits Rule 82bis Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits |
| EDWARDS LIFESCIENCES AG v. COOK BIOTECH INC. | 12-Jun-2009 | United Kingdom | The Paris Convention requires that priority claims be made by the same person who filed the earlier application from which priority is based. Where the first-filed application contains multiple applicants, the later-filed application must be made by all the applicants, or their successor in title. An assignment of rights must be properly executed prior to making a claim to the right of priority. | Article 8 Claiming Priority |
| ELI LILLY CANADA INC. v. APOTEX INC. | 25-Mar-2009 | Canada (Court of Appeals) | The applicant sought to invalidate a Canadian patent that entered the national phase from a PCT application. The patent was invalidated on the grounds of insufficiency of disclosure. The appellant argued that there was sufficiency of disclosure because it complied with the requirements under the PCT. The Court upheld that sufficiency of disclosure was a substantive matter of patentability governed exclusively by national law. | Article 27 National Requirements |
| ELKAY MANUFACTURING COMPANY v. EBCO MANUFACTURING COMPANY and EBTECH CORPORATION | 10-Jul-1998 | United States of America (U.S. District Courts) | The failure to present a PCT application to the patent examiner during examination did constitute inequitable conduct due to the fact that the PCT application did not teach more than the prior art utilized by the examiner. | Rule 33 Relevant Prior Art for the International Search |
| ERNEST OGDEN, JOHN MCKENZIE AND PROJECTILE LTD. v. UK IP OFFICE | 07-Jun-2007 | United Kingdom (Patent Office) | The issue in these cases is the right of entitlement to the PCT application and to the resulting UK patent. | Article 4 The Request Rule 4 The Request (Contents) |
| EXCELSIOR MEDICAL CORPORATION V. ATTORNEY GENERAL OF CANADA | 07-Jul-2015 | Canada (Court of Appeals) | Canada Federal Court of Appeal upheld the Federal Court’s decision that the Commissioner of Patents did not err finding the patent applicant in question abandoned because someone other than the “authorized correspondent” requested the reinstatement and paid the fees. Under Canadian rules, the Commissioner shall not have regard to communications other than from an authorized agent. The applicant paid the reinstatement and the maintenance fees within the grace period through a firm other than the authorized correspondent of record. The Office accepted the fees from the unauthorized agent and communicated the reinstatement to the authorized correspondent of record. The appellate court found the Office’s acceptance of fees from a party other than authorized correspondent of record does not reinstate the application and upheld the Federal Court’s decision that the application in question cannot be reinstated. | Article 27 National Requirements |
| FINGER-SHIELD (UK) LTD. v. CANADA (COMMISSIONER OF PATENTS) | 06-Feb-2006 | Canada (Federal Circuit) | The Commissioner of Patents refused the national phase entry of a PCT application because the applicant failed to pay the “late payment fee” within the prescribed time limit of 12 months following the expiry of the 30 month time limit for national entry. | Article 22 Copy, Translation, and Fee, to Designated Offices Rule 16bis Extension of Time Limits for Payment of Fees |
| FIRST GREEN PARK PTY. LTD. v. CANADA (ATTORNEY GENERAL) | 22-Mar-2000 | Canada (Court of Appeals) | The applicant failed to enter the national phase in Canada within the 30 month time limit. The time limit for national phase entry may be extended by 42 months upon request for reinstatement and payment of the prescribed fee. Reinstatement and payment must be made within the 12 month period following the expiry of the 30 month time limit. The applicant failed to make such a request within the prescribed time limit and requested that the Commissioner of Patents exercise discretion to extend the time period for requesting reinstatement. This request was refused by the Commissioner of Patents since there was no legal basis for a discretionary extension of the time limit. This decision was upheld by the Federal Court of Canada. | Article 8 Claiming Priority Article 48 Delay in Meeting Certain Time Limits Rule 82bis Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits |
| GORDON NOEL PRANGLEY v. THE UK IP OFFICE | 01-Mar-1988 | United Kingdom (Patent Court) | Modification of the Chapter II demand form was allowed because the modification did not lead to prejudice upon any party, either the applicant or the European Patent Office. | Rule 53 The Demand Rule 60 Certain Defects in the Demand Rule 91 Obvious Errors in Documents |
| GORDON NOEL PRANGLEY v. THE UK IP OFFICE | 25-Mar-1986 | United Kingdom (Court of Appeals) | The failure to elect the United Kingdom in a Chapter II demand form was deemed not to be an obvious error. | Rule 53 The Demand Rule 60 Certain Defects in the Demand Rule 91 Obvious Errors in Documents |
| GROUP ONE LTD v. HALLMARK CARDS, INC. | 15-Jun-2001 | United States of America (Federal Circuit) | The Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the lower District Court regarding the trade secret issue. The CAFC did not agree with the District Court's analysis of the on-sale bar issue, reversing part of the judgment and remanding to the District Court for further proceedings. | Article 11 Filing Date and Effects of the International Application Article 29 Effects of the International Publication Rule 48 International Publication |
| HEDMAN, GIBSON & COSTIGAN, P.C. v. TRI-TECH SYSTEMS INTERNATIONAL, INC. | 18-Sep-1995 | United States of America (U.S. District Courts) | The defendant had obtained several patents before going insolvent. Its law firm, the plaintiff, sued for unpaid legal services and obtained default judgment against the defendant as well as a lien against its patent portfolio. A non-party secured creditor moved to reduce the lien amount and eliminate the lien from certain patents filed after it became a creditor. The court granted the motion, but did hold that the foreign patents filed with the USPTO were to be treated the same as domestic patents for the purposes of determining the scope of plaintiff’s lien. The court also ordered the judicial sale of certain foreign patents as part of the efforts to pay off the lien. | |
| HELFGOTT & KARAS, P.C., DOV SHEFFER and R.S.R. ADTEC LTD. v. Q. Todd Dickenson, DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE | 14-Apr-2000 | United States of America (Federal Circuit) | The Court of Appeals for the Federal Circuit overturned a decision previously rendered by a District Court. The District Court had affirmed the Commissioner's refusal to allow the applicant to make corrections to his Demand. The Court of Appeals found the Commissioner's refusal to be an abuse of discretion as the applicant should be allowed to suggest corrections to any obvious errors discovered. | Rule 60 Certain Defects in the Demand Rule 91 Obvious Errors in Documents |
| HENRY MERRITT FARNUM, v. HARRY F. MANBECK, JR., Commissioner of Patents and Trademarks | 17-Oct-1991 | United States of America (U.S. District Courts) | The Commissioner not permitted to excuse the time limit for the filing of a demand. | Article 8 Claiming Priority Article 21 International Publication Article 25 Review by Designated Offices Article 26 Opportunity to Correct Before Designated Offices Article 31 Demand for International Preliminary Examination Article 39 Copy, Translation, and Fee, to Elected Offices Article 48 Delay in Meeting Certain Time Limits Rule 4 The Request (Contents) Rule 82 Irregularities in the Mail Service Rule 82bis Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits Rule 90bis Withdrawals |
| IN RE: ARNOLD B. SERENKIN | 06-Mar-2007 | United States of America (Federal Circuit) | The Court supported USPTO’s decision that it is not permissible to claim the benefit of an earlier filing date through the reissue process. The act of choosing a later filing date during prosecution of the PCT application in order to include missing drawings does not constitute an “error” that is correctable under US law. | Article 14 Certain Defects in the International Application Rule 20 Receipt of the International Application |
| In re: BROSSMANN'S APPLICATION | 13-Aug-1982 | United Kingdom (Patent Office) | Applicant's claimed priority to an earlier filed application was not perfected in the International Phase of the PCT due to the fact that the priority document was not filed within the 16 month time limit. Applicant's attempt to restore the priority claim during the national phase based on inadvertent procedures practiced during the national phase was incorrect. This ruling was based on the fact that an improper occurrence during the international phase may not automatically be remedied at the national phase. | Article 8 Claiming Priority Rule 17 The Priority Document |
| In Re: Fletcher | 22-Oct-1998 | United Kingdom (Patent Office) | Subsequent finding by the receiving Office that the PCT application did not comply with the requirements of PCT Article 11 for obtaining a filing date. The PCT application in question did not contain any claims. | Article 25 Review by Designated Offices Rule 51 Review by Designated Offices |
| ISLE FIRESTOP LLD | 14-Oct-2007 | Israel (Patent Office) | The PCT application was filed by the inventors without the knowledge or consent of the employer (applicant in the decision). When the employer Isle Firestop learned about the PCT application, the 30 month time limit to enter the national phase in Israel had already expired. The employer attempted to enter the national phase in Israel in its name. The applicant claimed that the PCT application was illegally filed by the inventors and that clarifying the ownership rights took time. The Deputy Commissioner of Patents stated that the applicant should have filed a new national patent application, and once this PCT application would have been cited against the invention, should have relied on section 6(1) of the Patent Act which allows the patent office to ignore publications made without the consent of the owner. However, the applicant was not able to enjoy the early filing of the PCT application filed by the inventors and enter the national phase outside the 30 month time limit. | Article 22 Copy, Translation, and Fee, to Designated Offices Article 48 Delay in Meeting Certain Time Limits Rule 49 Copy, Translation and Fee under Article 22 Rule 82bis Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits |
| JACK GUTTMAN, INC., v. KOPYKAKE ENTERPRISES, INC. | 30-Aug-2002 | United States of America (Federal Circuit) | The plaintiff obtained a U.S. patent for a cake decorating machine and subsequently sued the defendant for infringement. The defendant argued as a defense to a preliminary injunction that its machine represented an embodiment of the invention that was disclaimed by the plaintiff when it tried to distinguish a PCT application during the prosecution of its U.S. application. The court held that while it could consult the language of both the plaintiff during the patent prosecution and the PCT application itself, here neither prevented the plaintiff’s patent from claiming a device that operated in the same way as the defendant’s machine. | Article 6 The Claims Rule 6 The Claims |
| JOHN MICHAEL GORDON v. UK IP OFFICE | 02-Jan-2008 | United Kingdom (Patent Office) | The applicant filed a PCT application claiming priority from an application which had a filing date 14 months earlier. A request for restoration of the right of priority was made on the basis of the “unintentional” criteria. The applicant argued that he was very busy around the deadline for filing the PCT as he was at the same time, the sole inventor, sole proprietor of the business, and sole administrator. The applicant demonstrated that he did everything to remind himself of the deadline. The restoration request was allowed by the hearing officer. | Article 8 Claiming Priority Rule 26bis Correction or Addition of Priority Claim, Correction or Addition of Declarations under Rule 4.17 |
| JOHNSON & JOHNSON CONSUMER COMPANIES, INC. v. EUROPEAN PATENT OFFICE | 06-Jun-2002 | European Patent Office (EPO) (Legal Board of Appeals) | Applicant not permitted to correct designation error (EPO had not been designated) due to the untimely request for modification. It is in the public interest that published applications possess timely, correct information. | Article 2 Definitions Article 4 The Request Article 11 Filing Date and Effects of the International Application Article 24 Possible Loss of Effect in Designated States Article 26 Opportunity to Correct Before Designated Offices Article 48 Delay in Meeting Certain Time Limits Rule 4 The Request (Contents) Rule 91 Obvious Errors in Documents |
| KAEPA, INC., v. DONALD J. QUIGG, Commissioner of Patents and Trademarks | 16-Aug-1989 | United States of America (U.S. District Courts) | The Court found that the plaintiff's failure to list the parent application in the proper box on the request form for the purposes of claiming priority was an obvious error under PCT Rule 4.10(b). | Article 3 The International Application Rule 4 The Request (Contents) Rule 91 Obvious Errors in Documents |
| LAMPI CORPORATION v. AMERICAN POWER PRODUCTS, INC. | 28-Sep-2000 | United States of America (Federal Circuit) | The Court considered whether a patentee’s own published PCT application could be used as intervening prior art. | Rule 33 Relevant Prior Art for the International Search Rule 48 International Publication |
| LINDAHL, Gunnar v. EUROPEAN PATENT OFFICE | 09-Oct-1998 | European Patent Office (EPO) (Technical Board Appeals) | A Euro-PCT applicant who has not carried out a certain procedural act within the time limit prescribed in the PCT can take advantage of the relevant provisions of the EPC concerning re-establishment of rights (Article 122 EPC) in all cases where the direct European applicant too may invoke them if he fails to observe the relevant time limit. The Board concluded that the provisions of Article 122 EPC are applicable to the time limit set by Rule 28(2)(a) EPC and thus to the time limit of Rule 13bis.4 PCT. | Article 48 Delay in Meeting Certain Time Limits Rule 13bis Inventions Relating to Biological Material |
| MASUDA'S APPLICATION | 13-Dec-1985 | United Kingdom (Patent Court) | Even in light of an unintentional intended error in the submission of a correct translation for an international application, the Court found that the international application was validly withdrawn under PCT rules. | Article 20 Communication to Designated Offices Rule 47 Communication to Designated Offices |
| MATSUSHITA ELECTRIC WORKS LTD.'S APPLICATION | 06-Nov-1981 | United Kingdom (Patent Office) | Effect of not submitting a certified copy of a priority document within the prescribed time limit under PCT rules led to loss of priority right at the national level. | Rule 17 The Priority Document |
| MINDCAKE LLC v REGISTRAR OF PATENTS | 17-Jan-2013 | Israel (Patent Court) | Mindcake requested the reinstatement of rights after entering the national phase in Israel two days after the expiration of the 30 month time limit. The Court upheld the registrars decision who refused the reinstatement arguing the applicant did not meet the due care standard. | Article 22 Copy, Translation, and Fee, to Designated Offices Article 48 Delay in Meeting Certain Time Limits Rule 49 Copy, Translation and Fee under Article 22 Rule 82bis Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits |
| MITCHELL D. FORCIER v. MICROSOFT CORPORATION | 13-Nov-2000 | United States of America (U.S. District Courts) | A PCT application containing trade secrets was published. Defendant utilized the trade secret, and Plaintiff brought suit. Because publication was deemed as publicly disclosing the information, defendant was not held liable for misappropriation. | Article 29 Effects of the International Publication Rule 48 International Publication |
| MITSUBISHI JIDOSHA KOGYO KK's APPLICATION PATENT | 05-May-1988 | United Kingdom (Patent Court) | Propriety of the translation of a PCT application and the communication to designated Offices under PCT Article 20 and Rule 47. PCT application was deemed withdrawn for failure to file translation within the prescribed time limit. | Article 20 Communication to Designated Offices Rule 47 Communication to Designated Offices |
| MR AL PASHA AL BAHDAINI v. UK IP OFFICE | 06-Dec-2006 | United Kingdom (Patent Office) | The applicant was refused national phase entry for failing to pay the requisite fee within the prescribed period (no later than 31 months from the priority date). | Article 22 Copy, Translation, and Fee, to Designated Offices Rule 16bis Extension of Time Limits for Payment of Fees |
| NICHOLS INSTITUTE DIAGNOSTICS, INC. v. SCANTIBODIES | 06-Sep-2002 | United States of America (U.S. District Courts) | This US District Court held in dicta that the PCT provides for international procedures which do not alter the substantive requirements of patentability at the national level. | Article 27 National Requirements |
| NOKIA CORPORATION V. DEPUTY CONTROLLER OF PATENTS AND DESIGNS | 24-Jan-2011 | India (Court of Appeals) | The Madras High Court has held that a request for condonation of delay and extension of time filed within one month of the expiry of the timeline for filing a PCT National Phase application must be considered by the Indian Patent Office and decided on merits. Nokia’s PCT application, claiming priority from a former US application, was filed under the National Phase in India, one week after the 31 month period for national phase entry had expired. The Indian Patent Office refused to take the application on record. The Judge decided that the Indian Patent Office must decide about the petition for condonation of delay on merit by taking into consideration the facts and circumstances of each case. | Article 8 Claiming Priority Article 22 Copy, Translation, and Fee, to Designated Offices Article 48 Delay in Meeting Certain Time Limits Rule 82bis Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits |
| NORRIS'S PATENT | 30-Jul-1987 | United Kingdom (Patent Court) | Dispute on inventorship/ownership at RO/GB. Upon review at the Chancery Division, an ancillary issue was confirmed that the international filing date was the national filing date under PCT Article 11(3). | Article 11 Filing Date and Effects of the International Application |
| OHI SEISAKUSHO CO LTD v. UK IP OFFICE | 11-Aug-1983 | United Kingdom (Patent Court) | Applicant's failure to file a translation of international application led to justifiable withdrawal by the designated office. | Article 20 Communication to Designated Offices Article 22 Copy, Translation, and Fee, to Designated Offices |
| OXONICA ENERGY V. NEUFTEC | 09-Jul-2009 | United Kingdom (Court of Appeals) | Neuftec was in possession of an international patent application concerning fuel additives. Neuftec entered into an exclusive license agreement with Oxonica, based on the claims in the PCT application. During the application process, the scope of the claims was narrowed over the claims as filed in the original PCT application. The PCT application matured into the grant of several national patents, with the narrowed claims, in a number of countries. Oxonica developed and sold a product which was covered by the claims in the PCT application, but not by the (narrowed) claims in the patents granted in several countries. Oxonica stopped paying royalties in respect of sales in these countries arguing that the product did not fall within the licensed claims, and the product was not actually covered by any patent in these countries. The Court of Appeal upheld the interpretation of the license agreement adopted by the judge at first instance whereby royalties have to be paid for any product covered by the claims of the PCT application. | Article 6 The Claims Article 28 Amendment of the Claims, the Description, and the Drawings, Before Designated Offices |
| PARIKUMAR V. CONTROLLER GENERAL OF PATENTS | 07-Jul-2015 | India | The Indian Intellectual Property Appellate Board reversed the Indian Patent Office’s decision to reject the applicant’s international application national phase entry for insufficient fees, improper format, and subsequently, as untimely when the application re-submitted the application. Under the Indian Patent Act Section 15, Controller may refuse a deficient application or require the applicant to amend the application before proceeding with the application. Upon national phase entry, the applicant timely submitted fees sufficient for only 17 claims, whereas the application contained 20 claims. The Controller rejected the application for insufficient fees, and when the applicant subsequently resubmitted the application, the Controller rejected as untimely. The Board found the Controller’s rejection based on insufficient fees unreasonable because the Controller failed to provide the applicant with an opportunity to rectify his deficiency, which could have been a result of miscalculation. The Board felt unnecessary to analyze whether the Office should have allowed 1 month time to rectify insufficient fees like the EPO practice because the applicant was willing to delete 3 of his claims. Further, the 31-month national phase entry deadline had passed and the applicant had no way to correct his deficiency and re-file. Accordingly, the Board granted the applicant’s appeal and ordered the Patent Office to allow the applicant to delete 3 claims as he wished and permit national stage entry with 17 remaining claims in accordance with the fees paid. | Article 22 Copy, Translation, and Fee, to Designated Offices |
| PHILIP JONES ET AL v. UK IP OFFICE | 23-Jan-2009 | United Kingdom (Patent Office) | The applicant filed a PCT application just less than 14 months after the filing date of an earlier application. Restoration of the right of priority under PCT rule 26bis.3 was requested on the basis of the “unintentional” criteria due to problems encountered with the PCT electronic filing software. The request was refused. | Article 8 Claiming Priority Rule 26bis Correction or Addition of Priority Claim, Correction or Addition of Declarations under Rule 4.17 |
| PUNEET KAUSHIK & ANR. V. UNION OF INDIA & ORS | 19-Dec-2014 | India (Patent Court) | The petitioners filed a PCT application with the patent office in New Delhi. The patent office did not grant an international filing date because a foreign filing license was not obtained beforehand as required by Section 39 of the Indian Patents Act. The High Court of Delhi High upheld the order of the patent office, which refused to treat the PCT application as an Indian application and to grant an international filing date until a foreign filing license was obtained. | Article 3 The International Application Article 11 Filing Date and Effects of the International Application |
| QUESTIONS REFERRED TO THE ENLARGED BOARD OF APPEALS | 02-May-1990 | European Patent Office (EPO) (Enlarged Board of Appeals) | The agreement between the European Patent Organisation and WIPO dated 7 October 1987, including the obligation under its Article 2 for the EPO to be guided by the PCT guidelines for international search, is binding upon the EPO. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 33 Relevant Prior Art for the International Search Rule 40 Lack of Unity of Invention (International Search) |
| QUESTIONS REFERRED TO THE ENLARGED BOARD OF APPEALS | 02-May-1990 | European Patent Office (EPO) (Enlarged Board of Appeals) | The applicant had filed a PCT application which was found to disclose two inventions after an initial inquiry into whether his invention was patentable. On appeal, the Enlarged Board of Appeal held that the international search authority responsible for the search may provisionally determine patentability in order to inform its decision on unity of invention. If after such a determination multiple inventions were disclosed by the applicant then multiple search fees may be charged by the ISA. | Article 17 Procedure Before the International Searching Authority Rule 13 Unity of Invention Rule 33 Relevant Prior Art for the International Search Rule 40 Lack of Unity of Invention (International Search) |
| QUESTIONS REFERRED TO THE ENLARGED BOARD OF APPEALS | 18-Jan-1994 | European Patent Office (EPO) (Enlarged Board of Appeals) | The applicant appealed a decision of not excusing a failure to meet the time limit to pay fees. | Article 48 Delay in Meeting Certain Time Limits |
| R v THE COMPTROLLER-GENERAL OF PATENTS ex parte CELLTECH LIMITED | 21-May-1991 | United Kingdom (Queen's Bench Division) | In reviewing an administrative decision, the Court supported the omission of the selection of 2 designated offices as being a “not obvious” error. | Rule 91 Obvious Errors in Documents |
| RESEARCH IN MOTION LTD. v. UK IP OFFICE | 22-Jan-2008 | United Kingdom (Patent Office) | The international application was filed with all national states designated, but due to a clerical error, the EP regional phase was not designated. This resulted in the applicant not entering the EP regional phase or UK national phase within the prescribed period of 31 months. The applicant then sought to reinstate the legal effect of the international application in the UK on the basis of the unintentionality criteria. The UK IPO ruled against reinstatement as the clerical error did not satisfy the unintentionality criteria. | Article 4 The Request Rule 4 The Request (Contents) |
| SCHNEIDER (EUROPE) AG and SCHNEIDER (USA) INC. v. SCIMED LIFE SYSTEMS, INC. | 04-Mar-1994 | United States of America (U.S. District Courts) | The international filing date is considered the U.S. national filing date with 35 USC 102(e) exceptions (circa. 1994). | Article 11 Filing Date and Effects of the International Application |
| SONIC TAPE PLC v. Roy William KNOTT | 19-Jan-1987 | United Kingdom (Patent Office) | Confidentiality and a claim to privilege. Views of the British Patent Office on national law vs. PCT procedure. | Rule 94 Access to Files |
| STEPHEN D. PODD, ET AL. v. UNITED STATES COMMISSIONER OF INTERNAL REVENUE | 30-Jun-1998 | United States of America (U.S. Tax Court) | Rights to a PCT application in a tax dispute. A PCT application was recognized as a property right for tax purposes. | Article 27 National Requirements |
| TEC ARMECH LTD. ET AL v. UK IP OFFICE | 26-Jul-2007 | United Kingdom (Patent Office) | The applicant was charged late payment fees for three PCT applications. The late payment fees were caused by a missing fee sheet (payment instructions). The fee sheet was not communicated at the same time as the funds transfer and was received only after the expiry of the prescribed period for payment. The applicant paid the late payment fees but requested a refund on the basis that the funds were available in the deposit account at the time payment was due. The refund was refused because the payments could not be processed due to the missing fee sheet. | Article 22 Copy, Translation, and Fee, to Designated Offices Rule 16bis Extension of Time Limits for Payment of Fees |
| THINKSTREAM INC. v. CANADA (COMMISSIONER OF PATENTS) | 23-Jun-2005 | Canada (Federal Circuit) | The Commissioner of Patents refused the national phase entry of a PCT application because the applicant failed to meet the time limit for the payment of maintenance fees. | Article 22 Copy, Translation, and Fee, to Designated Offices Article 39 Copy, Translation, and Fee, to Elected Offices Rule 16bis Extension of Time Limits for Payment of Fees |
| TOUCHCOM, INC. and TOUCHCOM TECHNOLOGIES, INC., V. BERESKIN & PARR and H. SAMUEL FROST | 03-Aug-2009 | United States of America (Court of Appeals) | The United States Court of Appeals for the Federal Circuit (CAFC) reversed the finding of a district court which had dismissed a suit for lack of personal jurisdiction. At issue was a PCT application that entered the national phase in the United States in which certain essential elements were unintentionally omitted but were contained in the priority application. This omission led to the invalidation of the resulting patent in the United States. A malpractice suit was subsequently filed but was dismissed by the district court because the defendant was foreign and therefore lacked personal jurisdiction | Article 49 Right to Practice Before International Authorities Rule 2 Interpretation of Certain Words Rule 90 Agents and Common Representatives |
| TRYTON MEDICAL INC. V. UNION OF INDIA & ORS | 10-Jul-2017 | India (Court of Appeals) | The petitioners entered the national phase in India 8 days too late and requested excuse of the delay. The respondent rejected the petitioner’s national phase application stating that the delay by a period of 8 days could not be excused. The petitioner appealed before the Intellectual Property Appellate Board (IPAB), which opined that the delay of 8 days in filing the application could be excused. However, the respondent did not take any steps to comply with the directions issued by IPAB. The High Court of Delhi held that the respondent has to comply with the orders passed by IPAB and examine the petitioner’s national phase entry. | Article 22 Copy, Translation, and Fee, to Designated Offices Article 48 Delay in Meeting Certain Time Limits Rule 49 Copy, Translation and Fee under Article 22 |
| UNICROP LTD. V. ATTORNEY GENERAL OF CANADA | 11-Feb-2011 | Canada (Court of Appeals) | Canada Federal Court of Appeal upheld the Federal Court’s decision that the Commissioner of Patents did not err finding the patent applicant in question abandoned because someone other than the “authorized correspondent” requested the reinstatement and paid the fees. Under the Canadian rules, the Commissioner shall not have regard to communications other than from an authorized agent. The applicant sought reinstatement through a firm other than the appointed agent of record when the application became abandoned due to missed maintenance fee payment. The Office denied reinstatement by the unauthorized agent, and the applicant sought a retroactive appointment of agent asserting the firm failed to submit the Appoint of Agent document due to inadvertent clerical error. The Court upheld the Federal Court decision and found the language of the rule “clear and inescapable” that the Commissioner may only regard communications from an authorized correspondent. | Article 27 National Requirements |
| VAPOCURE TECHNOLOGIES LTD v. UK IP OFFICE | 25-Jul-1989 | United Kingdom (Court of Appeals) | Applicant was unable to add additional designated countries before publication because authorization of a rectification under Rule 91.1(e)(i) cannot, upon the true construction of Rule 91.1(g-bis), be effective unless its notification to the International Bureau reaches the Bureau before completion of the technical preparations for international publication of the relevant international application. | Article 26 Opportunity to Correct Before Designated Offices Article 48 Delay in Meeting Certain Time Limits Rule 91 Obvious Errors in Documents |