PCT rule changes came into force on April 1, 2007 allowing:

• Late filing of a PCT application with a valid claim to priority, after the normal 12 month priority period has expired (provided that the missed deadline was unintentional or in spite of all due care having been taken); and
• Filing a PCT Application with missing parts, even whole sections, and still obtaining a filing date, so long as the missing parts were contained in the priority application(s).

On the face of it, these reforms would appear to provide a “quick fix” for applicants in cases where a PCT application is filed late or incomplete. However, these PCT reforms may lull applicants into a false sense of security because the European Patent Office (EPO) had considered these proposed PCT reforms to be incompatible with European patent law.

In practical terms, for PCT Applications filed before the entry into force of the revised European Patent Convention (EPC 2000), December 13, 2007, the priority claim of a PCT application filed outside the normal priority period will not be recognised in Europe. Similarly, upon entering the European procedure, the filing date of a PCT patent application filed with parts missing will be corrected to the date when the missing parts were actually filed. Alternatively, in order to retain the original PCT filing date, all references to the missing parts must be deleted. Both of these effects could be devastating to the validity of such patent applications.

In summary, patent applicants need to be aware of the potential pitfalls, if they have taken advantage of one or more of the PCT rule changes from April 2007 onwards. Applicants should also be aware that a number of patent offices other than the European Patent Office have similarly declared their laws to be incompatible with the new PCT rules. Of course, some or all of these patent offices may withdraw their reservations, and we can only wait and see what happens in due course. In the meantime, patent applicants should be continue to remain alert to these changes both in the PCT and European patent systems and the potential consequences involved.

For a list of the countries having declared their incompatibility with the PCT reforms, click here.

For a more detailed article discussing these PCT reforms and EPC 2000, click here.