National Phase for PCT Patent Applications

By Francisco Espinosa

The requirements for PCT international Patent applications entering the National Phase in Peru were detailed in the new Texto Único de Procedimientos Administrativos (TUPA) of INDECOPI published on August 19, 2010.

Those requirements establish that:

- The application should be filed using the form provided for this type of patent application (recommended but not mandatory)
- The same government fees and terms in regards to the patent application proceeding will be applied as if they were conventional Patent or Utility Models applications.

General Information about the National Phase:

1. Maximum term to enter the National Phase
Thirty (30) months since the priority date claimed on the PCT application (articles 22 (1) and 39 (1)(a) PCT ).

2. Language for filing the application
Spanish

3. Documents required:
a. Articles 22 and 39 (1) of PCT
i. Description
ii. Claims
iii. Drawings
iv. Summary
v. If the claims have been modified, than the new modified claim must be filed. In fact all modifications and/or changes to any of these documents must be filed at this time.

4. International application
It is mandatory to present a copy of the International Application only in the cases were the International Office has not provided one, accordingly to article 20 of the PCT.

5. Special requirements:
a. Name and address of the inventor in case it was not specified in the international application
b. Documentation which evidences the change of name of the applicant in case it has occurred after filling the international application and this change is not reflected in the notification from the International Office (PCT/IB/306)
c. Declaration of the rights of the applicant to file the application and claim priority, only in case the declarations established in Rule 4.17 of the PCT have not been previously filed in due time.
d. The translation of the application must be filed in duplicate.
e. If necessary, the Power of Attorney must be submitted
f. If necessary, the List of Sequences must be submitted in electronic format

6. Representation
Any person or company domiciled in Peru can act as legal representative. It must submit its Power of Attorney.

7. National Phase procedure
a. Filling of the application by the interested party
b. Verification of the requirements (formal examination)
c. Publication of the application
d. Opposition period
e. Examination on the merits
f. Issuance of the Resolution granting or denying the patent

A special government fee is provided for the “Restoration of Priority Rights“ (approximately US$ 147.-) for the cases where the requirements mentioned in article 22 of the PCT have not been met within the legal deadline.

In those cases the Peruvian Direction of Inventions will apply the criteria of the due diligence in order to determine if such restoration of rights will be accepted.