Section 89b

Adaptation of provisions in relation to international application

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89B.-(1) Where an international application for a patent (UK) is accorded a filing date under the Patent Co -operation Treaty -

  • (a) that date, or if the application is re-dated under the Treaty to a later date that later date, shall be treated as the date of filing the application under this Act,
  • (b) any declaration of priority made under the Treaty [PCT Article 8] shall be treated as made under section 5(2) above, and where in accordance with the Treaty any extra days are allowed, the period of 12 months allowed under section 5(2A)(a) above shall be treated accordingly, and
  • (c) any statement of the name of the inventor under the Treaty shall be treated as a statement filed under section 13(2) above.

(2) If the application, not having been published under this Act, is published in accordance with the Treaty [PCT Article 21] it shall be treated, for purposes other than those mentioned in subsection (3), as published under section 16 above when the national phase of the application begins or, if later, when published in accordance with the Treaty.

(3) For the purposes of section 55 (use of invention for service of the Crown) and section 69 (infringement of rights conferred by publication) the application, not having been published under this Act, shall be treated as published under section 16 above -

  • (a) if it is published in accordance with the Treaty in English, on its being so published; and
  • (b) if it is so published in a language other than English -
    • (i) on the publication of a translation of the application in accordance with section 89A(6) above, or
    • (ii) on the service by the applicant of a translation into English of the specification of the application of the government department concerned or, as the case may be, on the person committing the infringing act.

The reference in paragraph (b)(ii) to the service of a translation on a government department or other person is to its being sent by post or delivered to that department or person.

(4) During the international phase of the application, section 8 above does not apply (determination of questions of entitlement in relation to application under this Act) and section 12 above (determination of entitlement in relation to foreign and convention patents) applies notwithstanding the application; but after the end of the international phase, section 8 applies and section 12 does not.

(5) When the national phase begins the comptroller shall refer the application for so much of the examination and search under sections 15A, 17 and 18 above as he considers appropriate in view of any examination or search carried out under the Treaty.

Notes:
Manual of Patent Practice

Subsection 2 amended by Schedule 1 of the Patents Act 2004, commencing from 13 December 2007.

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