The national phase is the final stage of processing an international application originally filed in the receiving Office of one of the contracting states of the PCT.

The receiving Office accords an international filing date to the international application after checking for compliance with Article 11. The receiving Office then sends a record copy of the international application to the International Bureau (IB) and a search copy to the ISA. The receiving Office also checks the international application for defects under Article 14(1). These defects include it not being signed, not having a title, not containing an abstract and not complying with the prescribed physical requirements (as set out in Rule 11).

A PAMS record is created for every PCT application having an AU designation. The record includes an allocated Australian patent application number, title and details of one applicant. The application number has ten numerals, wherein the first four numbers represent the current calendar year, the fifth number designates the type of patent (with 2 up to 7 designating a standard application) and the remaining five numbers are taken from a five digit series.

Search and Publication

The ISA competent for the receiving Office will conduct an international search and establish an ISR and ISO for the international application. The ISR will be published when the international application is published in a document called "the pamphlet", which is sent to each designated office. The pamphlet is published with a WO number identification for the application and may be in a foreign language. Publication usually takes place 18 months after the priority date of the application.

The ISO will be published by the IB 30 months after the priority date of the application as an IPRPI, but only if there is no demand for IPE. If the applicant has filed comments in respect of the ISO, the IB will publish these as well. Where the applicant files a demand for IPE, an IPRPII will be established and published 30 months after the priority date.

For national phase applications filed on or after 1 January 2004 and which enter the national phase more than 18 months from the priority date, the OPI date is the date upon which the PCT pamphlet is published under Article 21. For all national phase applications filed before 1 January 2004 and for national phase applications filed on or after 1 January 2004 which enter the national phase less than 18 months from the priority date, the OPI date is the date upon which it is advertised as such in the Official Journal (s90(b) and s92(3); see also 2.17.2 Date of Publication).

National Phase Entry

Article 22 and Article 39 allow applicants a period of 30 months from the priority date for their PCT applications to enter the national phase. Contracting states may, however, allow a longer period and in the case of Australia the period is 31 months (reg 8.1(4)).

To enter the national phase in Australia:

The national phase entry fee specified at item 214A of schedule 7 of the Regulations must have been paid. It should be noted that there is no requirement for an examination fee to be paid at this stage.
If the PCT application has not been published under Article 21 of the PCT, a copy of the application must be filed (see also Copy of the International Application Furnished by Applicant below).
If the PCT application was not filed with a Receiving Office in English, a translation of the application must be filed (unless a translation was filed in the international phase and published under Article 21).

Before applicants can request that any action be taken in relation to an application, they must also have filed:

A document stating an address for service in Australia.
A certificate of verification for any translation.

The above matters will be checked by COG before case files are forwarded to examination sections. However, where examiners notice deficiencies in any of these matters, the case file is to be referred to COG for action. Examiners should note that COG will only check that these actions have been done and will not check for content, e.g. there will be no check made on the verification of any translation.

Copy of the International Application Furnished by Applicant

The situation where an applicant is required to furnish a copy of the international application to enter the national phase usually arises where the applicant requests early national phase entry of an application, e.g. less than 18 months from the priority date.

Examination Practice

Where the applicant furnishes a copy of the international application, this copy remains a proxy specification for the actual PCT application (pamphlet) that will eventually be published by WIPO. Before commencing examination on a case with a proxy specification, examiners should check Patentscope to see whether a copy of the pamphlet is available. If the pamphlet is not available, examination should be carried out on the proxy specification. If the pamphlet is available, examiners should download a copy and import it into the PAMS case file. The downloaded version then becomes the official specification which is used for examination purposes and the proxy specification is disregarded.

See also 2.20.7 National Examination Where the ISR is Missing.

Note: When importing the pamphlet into PAMS, it should be separated into its component parts, i.e. Abstract, Description, Claims, Drawings and Gene Sequence. The front page of the PCT pamphlet forms the Abstract. The 'Document Status' for all documents should be 'Filed' (see 5.6.7 Document Manipulation).

Note: An Assembly Note should also be added to the case file to alert COG that the pamphlet is the official version of the specification (see 5.10.11.3 Assembly).

8.15.2 National Phase Preliminaries

Also in this Chapter:

Key Legislation:

Related Chapters:

On this page

Overview

Search and Publication

National Phase Entry

Copy of the International Application Furnished by Applicant

Examination Practice