tag:blogger.com,1999:blog-4665971923360779136.post5965912991870411922..comments2024-03-25T10:31:40.979+00:00Comments on Tufty the Cat: J 18/09: When is a Euro-PCT application pending?Tufty the Cathttp://www.blogger.com/profile/09803006996232662500noreply@blogger.comBlogger5125tag:blogger.com,1999:blog-4665971923360779136.post-42492346344445427202013-02-23T21:18:07.191+00:002013-02-23T21:18:07.191+00:00Along came J4/11 - not pending in period for reque...Along came J4/11 - not pending in period for requesting FP if FP is not succesfully requested.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-55348322974803373212012-07-27T13:00:23.170+00:002012-07-27T13:00:23.170+00:00Myshkin said:
"Most likely, it is sufficient ...Myshkin said:<br />"Most likely, it is sufficient to file an express request to enter the European phase before the expiry of the 31 month period (Art. 23(2) PCT). The time period for paying the various fees only expires at the end of this period, so this gives time to file a divisional while the parent is pending, not yet deemed to be withdrawn, and Art. 23 PCT is not preventing the EPO from processing the parent."<br /><br />Visser (17th ed), sentence bridging pages 664 and 665, says:<br />"However, the EPO requires that all acts in R.159(1)(a)-(g) be completed to initiate the European regional phase (How to get a European patent, Part 2, Euro-PCT ยง301)."<br /><br />If Visser's correct, Myshkin isn't.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-65602096526520467412011-03-24T08:12:29.562+00:002011-03-24T08:12:29.562+00:00Thanks Myshkin for the comments, and the reminder ...Thanks Myshkin for the comments, and the reminder of the IPKat post I had forgotten about. It does look like you were right at the time. I agree that the Boards are only trying to interpret the law, and I think they probably got it right. The ridiculous part of it is the way the rules are arranged to make this way of doing things necessary.Tufty the Cathttps://www.blogger.com/profile/09803006996232662500noreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-63991126910766376812011-03-24T02:46:03.002+00:002011-03-24T02:46:03.002+00:00Btw, I have a feeling that the existince of J 18/0...Btw, I have a feeling that the existince of J 18/09 is not entirely unrelated to the existence of <a href="http://ipkitten.blogspot.com/2009/06/tricky-european-patent-question.html" rel="nofollow">this</a> IPKat post.<br /><br />(Assuming my interpretation of J 18/09 and G 1/09 given above is somewhat correct, my answer of June 24, 2009 12:04 AM wasn't too far off ;-).)Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-33314546285559861042011-03-24T02:33:07.441+00:002011-03-24T02:33:07.441+00:00Note that the reasoning in J 18/09 is quite differ...Note that the reasoning in J 18/09 is quite different from and in fact contradictory to the reasoning in G 1/09. Most importantly, according to J 18/09 for an application to be "pending" it is required that (grant) proceedings are pending. G 1/09 specifically states that this is not required. The final outcome of J 18/09 is the same as suggested by point 3.2.5 of G 1/09, but the way to get there is not.<br /><br />"Allocating a European application number to the PCT application did not mean that the application was pending at the EPO, because this was just an administrative act to make it easier for the EPO to handle incoming applications (reasons, para. 17)."<br /><br />It follows from G 1/09 that the European application was in fact pending. That filing a divisional was anyway not possible is due to Art. 23(1) PCT taking precedence over R. 36(1) EPC.<br /><br />"(it does not seem, by the way, that it would have made any difference if it had been after the deadline)"<br /><br />It might have made a difference, depending on whether it is possible to file a divisional during the time period in which the parent is deemed to be withdrawn and requesting further processing is still possible. G 1/09 does not seem to give a definite answer on this question.<br /><br />"The only option in such cases, as many will already have suspected but until now could not be sure about, is to enter the EP regional phase for the parent application, paying all relevant fees, and then to file a divisional application for the application that is actually wanted and abandon the parent."<br /><br />Most likely, it is sufficient to file an express request to enter the European phase before the expiry of the 31 month period (Art. 23(2) PCT). The time period for paying the various fees only expires at the end of this period, so this gives time to file a divisional while the parent is pending, not yet deemed to be withdrawn, and Art. 23 PCT is not preventing the EPO from processing the parent.<br /><br />"This may seem like a ridiculous way to proceed, but is unfortunately the way the EPO apparently wants it to be."<br /><br />Come on, the Boards are only trying to interpret the law, not looking for ways to make the life of applicants unpleasant. (And filing an express request does not seem to much to ask in any case.)Myshkinnoreply@blogger.com