Section 89A: International and national phases of application

Section (89A.01 - 89A.26) last updated: January 2023.

89A.01

This is the second of the three sections concerned specifically with international applications for patents. Section 89 makes provision for an international application for a patent (UK) to be treated as an application under the 1977 Act, subject to sections 89A and 89B (see 89.01-05). Section 89A was introduced by the CDP Act and clarifies the relationship between the international phase, initiated by filing under the PCT, and the UK national phase. In particular, it relates to what is often known as “entry” into the latter phase.

 
Section 89A(1)
The provisions of the Patent Co-operation Treaty relating to publication, search, examination and amendment, and not those of this Act, apply to an international application for a patent (UK) during the international phase of the application.

89A.02

PCT provisions relating to publication, search, examination and amendment, rather than those of the 1977 Act, apply to the application during the international phase.

 
Section 89A(2)
The international phase of the application means the period from the filing of the application in accordance with the Treaty until the national phase of the application begins.

89A.03

The international phase runs from filing under the PCT until the national phase begins, the beginning of the national phase being defined in subsection (3).

 
Section 89A(3)
The national phase of the application begins-
(a) when the prescribed period expires, provided any necessary translation of the application into English has been filed at the Patent Office and the prescribed fee has been paid by the applicant; or
(b) on the applicant expressly requesting the comptroller to proceed earlier with the national phase of the application, filing at the Patent Office
(i) a copy of the application, if none has yet been sent to the Patent Office in accordance with the Treaty, and
(ii) any necessary translation of the application into English,

and paying the prescribed fee.

89A.03.1

PCT a.3(2) is also relevant

For this purpose a “copy of the application” includes a copy published in accordance with the Treaty in a language other than that in which it was originally filed. Where the application has not been published in accordance with the Treaty, the “copy of the application” must include a copy of the PCT request form (Form PCT/RO/101), the specification and the abstract.

Entering the National Phase

89A.04

PCT r.49.4 is also relevant

Applicants are strongly recommended to enter the national phase by filing Form NP1, which has spaces for details of the international application, details of the applicant and the required address for service. However, the use of this form is not obligatory.

89A.04.1

If, as in the vast majority of cases, there is no request for early entry into the national phase, the application enters the national phase at the expiry of the prescribed period in accordance with s.89A(3)(a) provided that the requirements of this sub-section are satisfied.

[ On receipt, the application is allocated a UK application number and the appropriate label is applied to the cover of the PDAX dossier. A check is made as to whether early entry into the national phase under s.89A(3)(b) has been expressly requested (see also 89A.21). If it has, the procedure outlined in 89A.16-21 should be followed. If there is any uncertainty in the matter, the case should be referred to the appropriate legal adviser in the Registered Rights Legal Team for instructions on the subsequent procedure. ]

89A.05

r.66(1) and PCT a.22 is also relevant

The prescribed period for entry into the national phase is (since 1 April 2002) thirty- one months from the priority date declared under the PCT or from the date of filing of the international application if there is no declared priority date. This period is extensible in two month tranches, but not after the expiry of the period as extended, in accordance with r.108(2) or (3) and (4) to (7) - see 123.34-41 and in particular see the discussion of Meunier’s International Application (BL O/013/01) in 123.37.

Entry into the national phase at the expiry of the prescribed period

89A.06

r.65(1) and r.66(1) is also relevant

Where there is no express request for early entry into the national phase, the application is examined by a formalities examiner to determine whether it complies with the requirements of s.89A(3)(a). When the international application is in English or Welsh, the only requirement for entry into the national phase at the end of the prescribed period under s.89A(3)(a) is the payment of the prescribed fee before the expiry of the prescribed period. However, if the international application is not in English or Welsh, the applicant must also file any necessary translations (see 89A.08) before the expiry of the prescribed period. As noted in 89A.05 this period may be extended.

89A.06.1

Between 1 October 1998 and 3 May 1999 inclusive, the national fee prescribed under s.89A(3) was zero (The Patents (Fees) Rules 1998, amended by The Patents (Fees) (Amendment) Rules 1999). As a consequence, any international application in the English language which designated the UK whose s.89A(3)(a) prescribed period ended within these dates will have entered the national phase in the UK, and thus will form part of the state of the art for the purposes of s.2(3), without further action by the applicant, unless the application or the designation of the UK in it was withdrawn before the expiry of the prescribed period. The Office allotted application numbers to such applications only if the applicant filed Form NP1 (see 89A.04) or indicated in writing in some other way that they intended to enter the UK national phase.

89A.07

PCT a.20 and PCT a.36(3)(a) is also relevant

The applicant is not required to file a copy of the international application or of the International Search Report as these are communicated to designated Offices by making them available on WIPO’s Patentscope database database, normally in the form of a WO pamphlet. The documents made available on Patentscope will also include the International Preliminary Report on Patentability (IPRP) and annexes thereto; any amendments to the claims filed with WIPO under PCT a.19 and a copy of any statement under a.19 explaining the amendments and indicating any impact on the description and drawings (these documents are included in the WO pamphlet); any Supplementary International Search Reports; and any third party observations submitted in the international phase. If the WO pamphlet is not available when national processing is due to commence, the National Phase Officer will establish with WIPO when it can be expected.

89A.08

r.69, r.70 ,PCT r.48.3, PCT r.47.1(c), PCT r.49.5(d) is also relevant

Where the international application has been filed in a foreign language other than Arabic, Chinese, French, German, Japanese, Korean, Portuguese, Russian or Spanish, and has been published by WIPO as a WO pamphlet in English translation and the WO pamphlet has been communicated to the Office under PCT a.20 before the expiry of the thirty-one month period for entry into the national phase, then no further translation of the application or of any amendments under PCT a.19 need be filed. A notice under PCT r.47 is sent by WIPO to the applicant indicating the designated Offices to which the communication under PCT a.20 has been sent and the date of the communication. This notice must be accepted as conclusive evidence that the communication was sent on the date specified. In other instances where the application is not published in English, or exceptionally the WO pamphlet has not been communicated, the applicant must provide a translation into English of the application as published under the PCT (including any textual matter in the drawings) and of any amendments before the expiry of the prescribed period in order to gain entry into the national phase, subject to the exceptions set out in 89A.09.

89A.09

Exceptions to the requirement to file a translation of the application as originally filed and of any amendments are:

r. 69(2), (3) is also relevant

(a) the request for the international application on Form PCT/RO/101 and the abstract. A translation of these must be included when the applicant expressly requests the comptroller to proceed with the national phase before the end of the period prescribed by rule 66(1) but not where a copy of the application, as published in accordance with the PCT is available to the comptroller (since the request and abstract are always published in English in the WO pamphlet).

r.70(4) is also relevant

(b) the original title if this has since been amended by the international searching authority; however, a translation of the amended title must be supplied instead.

r.70(5), PCTr.49.5(a-bis) is also relevant

(c) any sequence listing complying with the relevant requirements of the PCT (PCT r.12.1(d)), provided any free text in the sequence listing also appears in the main part of the description in accordance with PCT r.5.2(b).

89A.09.1

r.69(5), r.66(2) is also relevant

Where the application has been amended and the applicant has filed a translation of the application as originally filed but not of the amendment, and the prescribed fee has been paid, notice is given to the applicant that a necessary translation is missing and requiring the necessary translation to be filed within three months of the date of such notice, in accordance with rule 66(2). (See also 89A.25)

[ The formalities examiner should notify the applicant that the necessary translation should be filed whenever the application has been amended and the applicant has not filed a translation of the amendment. ]

89A.10

PR Sch.1, para 3(2) r.69(1) r.66(2) is also relevant.

In addition, where information in a language other than English regarding the deposit of biological material has been provided and a translation thereof has not been filed within the period prescribed by rule 66(1), the comptroller must notify the applicant that this translation is missing and should be filed within three months of the date the notification is sent. The information in question is the name of the depositary institution and the accession number of the deposit, and (where the biological material has been deposited by a person other than the applicant) the name and address of the depositor and the statement referred to in paragraph 3(2)(b)(ii) of Schedule 1 to the Patents Rules 2007.

[ When information concerning the deposit of biological material is filed after the international filing date, the date this information was received is published on the front page of the PCT pamphlet. The formalities examiner will check the PCT pamphlet to see whether such information has been received after the international filing date. If it has and this information is not in English, the formalities examiner will notify the applicant that a translation of that information must be filed, in accordance with rule 69(1), within three months of the date on which the notice is sent. ]

89A.11

If the formalities examiner is of the opinion that at the end of the prescribed period (including any extension under r.107 or r.108) the requirements of s.89A(3)(a) are not satisfied, the applicant should be notified accordingly and informed that, subject to any comments received within one month of the notification, it is proposed to treat the application as withdrawn.

89A.12

r.68(3), r.68(2) is also relevant.

In order for the application to proceed, the following should be provided:

(i) a request for search on Patents Form 9A accompanied by the appropriate fee, including any excess claims fees, – these should be filed before the end of the period prescribed by rule 22(2) and (7) or, if it expires later, the period of two months after the national phase begins;

(ii) a statement of inventorship on Patents Form 7 (no fee), if the name(s) and address(es) of the inventor(s) have not been disclosed in the request for international processing made in accordance with Article 4 of the PCT. The statement of inventorship should be filed before the end of the period prescribed by rule 10(3) or, if it expires later, the period of two months after the national phase begins (see 13.12);

89A.12.1

r.5, r.67 is also relevant

Where the invention has been displayed at an international exhibition within the period of six months immediately preceding the filing date of the application, a certificate and statement identifying the invention should be filed in accordance with rule 5. The certificate and statement should be filed within four months of the date of filing, except where the applicant, on filing the application, informed the receiving office under the PCT in writing of the display at an international exhibition, in which case the certificate and statement should be filed within two months of the date the national phase begins. This time period may be extended at the comptroller’s discretion under r.108(1) - see 123.34-42.

89A.12.2

r.9 is also relevant

A translation of any priority document in a language other than English or Welsh may also be required within the normal period (see 5.11 to 5.13.2).

89A.13

[deleted]

89A.14

When the formalities examiner is satisfied that the requirements for entry into the national phase have been met and Patents Form 9A has been filed, the application is allocated to an examiner assistants for CPC classification to be applied, the IPC to be checked and necessary data capture. However, if there is no CPC data available or the application is accepted for acceleration, then reclassification is instead carried out by an examiner.

[If there is no CPC data available or where an application is accepted for accelerated examination (see 18.07-18.07.2 and 17.05.1), the application will be forwarded by the examiner assistant to an examination group. In this case, CPC classifications will be handled by an examiner.]

89A.14.1

The examiner assistant should check Patentscope for the presence of an International Search Report and International Preliminary Report on Patentability (IPRP), where these have not already been received from the International Bureau and imported onto the PDAX dossier. A check should also be made for any Supplementary International Search Reports, third party observations and applicant comments in response to such observations. If such documents are found, the examiner assistant should import these documents onto the dossier

[The EA should apply the Field of Search, Citations & IPC symbols from the WIPO front page to the GB application in PROSE. If there is CPC data on Espacenet but there is not a CPC symbol in the primary IPC subclass, a PDAX message should be sent to the ESO “REALLOCATE TO [GROUP] FOR [FIRST CPC SUBCLASS]”. The ESO will then reallocate the case on PAFS and send a message back to the EA PCT mailbox. If there isn’t any CPC data on Espacenet, a minute should be added to the PDAX dossier and an urgent PDAX message sent to the subclass mailbox “URGENT [SUBCLASS] PCT RECLASS REQUIRED + PSM” for examiner action.]

89A.14.2

The application is then forwarded for re-publication under a UK Adocument publication number with the re-published document bearing relevant bibliographic information from the WO pamphlet including IPC (revised if necessary), field of search and citations as reported by the international searching authority. If the PCT application is in English and the national phase has started at the end of the prescribed period the re-published A-document consists of a front page only. If it is not in English, the A-document includes the translation of the specification together with any translation filed under s.89A(5) of amendments included in the WO pamphlet, the front page and the ISR in English. However, any amendments to the claims which are not included in the WO pamphlet (including claims filed at the Office in its capacity as designated office under PCT a.28 or elected office under PCT a.41) should not be included in the re-published document. This re-publication is an administrative act, ie it is not required by the 1977 Act or the Rules or the PCT. It thus does not constitute publication under s.16. Publication under s.16 is deemed to have occurred by virtue of publication of the WO pamphlet by WIPO and once the conditions for entering the national phase are met - see 89B.04.

[ In general, applications should not be retained in an examining group longer than 2 weeks for classification. Classification and re-publication should not be delayed if priority documents or an International Preliminary Report on Patentability (IPRP) are not on file. Formalities should issue any necessary reminders to WIPO in respect of outstanding documents. On receipt the documents should be sent to Index & Scan to be scanned onto the dossier. ]

[ Where the WIPO specification is in the form of an ‘A2’ document (that is, published without a search report) then classification and re-publication should not be delayed to await the publication of the international search report as an ‘A3’ document (‘A3’ documents are not normally sent to examining groups). Nevertheless, the examiner assistant should check on EPOQUE to see if an International Search Report has become available, and if so should enter the data from it in PROSE. If it is not available, “Not yet advised” should be entered for ‘Field of Search’ and ‘Citations’ on PROSE. In such cases, it will be necessary to check for a search report at the examination stage and to enter the field of search and citation information into COPS as data for B-publication. The examiner assistant should therefore create a minute reminding the substantive examiner to enter the necessary data. After checking for CPC data on Espacenet, if classification to IPC and CPC is not possible based on available information, the case should be sent to an examiner for reclassification.]

[If a “Declaration of Non-establishment of International Search Report” has been made by the International Search Authority, this should be reflected in the ‘Field of search’ entry on PROSE with reference to the relevant PCT Article indicated in the Declaration; e.g. “No search performed: PCT Article 17(2)(a)”. For the ‘citations’ field, “None” should be entered. ]

[ If only a partial search has been performed by the International Search Authority (ISA) then details of the fields searched should still be recorded on PROSE. If the ISA has performed only a partial search or no search at all and the substantive examiner considers that the claims may relate to a patentable invention, then it is likely that a complete search will be required at the substantive examination stage.]

[Where there is a Supplementary International Search Report on file, the fields of search and citations indicated in that report should also be recorded on PROSE.]

[ The abstract title will already have been input into OPTICS by New Applications Section, and should not be amended. If the title has been incorrectly input, the matter should be referred to Index & Scan for correction. ]

[ If any drawing accompanying the abstract on the front page of a WIPO specification includes text in a foreign language, the formalities examiner should (a) ensure that translated drawings are on file, (b) identify the translated drawing corresponding to that shown on the front page of the WIPO specification, (c) flag the relevant drawing and (d) minute the case examiner for confirmation that the flagged drawing is the one that should accompany the abstract for re-publication. The case examiner should confirm that the correct drawing has been identified or indicate which is the correct drawing. On return to the formalities examiner the application should be forwarded for re-publication with the correct drawing flagged for the attention of Publication Section. ]

[ If the wrong abstract has been used on the front page of the WIPO specification (i.e. where the abstract does not relate to invention described in the specification), the examiner should notify formalities. The formalities examiner should contact WIPO to inform them of the error and to request that the correct abstract be made available on Patentscope (contact details for the relevant processing team at WIPO can be obtained from www.wipo.int/pctdb/en/iateamlookup.jsp). Once the correct abstract is available the formalities examiner should import a copy into the dossier from Patentscope, giving it a document code WIPOFP so that the correct abstract is used for republication. The examiner should be consulted if the formalities examiner is in any doubt about whether the abstract on Patentscope is the correct one. ]

[ The full data for OPTICS that has to be entered on PROSE to allow the case to proceed to republication in the national phase is:

  • Field of Search
  • Citations
  • IPC classification
  • Processing status

CPC classification should also be entered. ClassTool should be used to enter IPC and CPC classification data. Classification to the UKC is no longer required.

Field of search and citation data should be entered using the PROSE entry screens. Any IPC field of search information on the International Search Report (and any Supplementary International Search Reports) should be entered after selecting the IPC tab. All other field of search data including US classification terms and databases (but not search words used) should be entered under the Other tab. See 17.75 for the formats which should be used for different types of citation.

The examiner assistant should ensure that the 5 data markers have been activated at the bottom right of the PROSE screen.

A REPUBP checklist should be created on PROSE and signed off to set the processing status for republication.]

[ Although Form 9A has been filed, no search is made at this stage since the results of the international search (updated at the substantive examination stage) are utilised during substantive examination. Nevertheless, the examiner assistant should record a search as having been done. ]

[ It is no longer possible to issue an abbreviated examination report (AER) based upon an international preliminary report on patentability at PCT reclassification stage.]

89A.15

If the formalities examiner is of the opinion that any of the requirements listed in 89A.12 or 89A.12.1 have not been complied with, the applicant should be informed as soon as possible of the need for compliance within the prescribed period. Any request for extension under r.108(1) in respect of requirement to file an international exhibition certificate should be considered on its merits (see 123.36-123.39).

Early entry into the national phase

89A.16

s.89A(3) is also relevant

Where the applicant has expressly requested early entry into the national phase, the formalities examiner should establish whether the requirements prescribed in s.89A(3)(b) have been satisfied, namely whether

  • the prescribed fee has been paid

  • a copy of the application has either been communicated to the Office by WIPO (see 89A.07) or has been filed directly with the Office by the applicant; and

  • any necessary translation of the application into English has been filed at the Office.

PCT a.3(2) is also relevant

The copy of the application may be a copy published in accordance with the PCT (ie a WO pamphlet) in a language other than that in which it was originally filed. Where the application has not been published in accordance with the Treaty, the “copy of the application” must include a copy of the PCT request form (Form PCT/RO/101), the specification and the abstract. A translation of the application into English is required where the application is in Arabic, Chinese, French, German, Japanese, Korean, Portuguese, Russian or Spanish or where the WO pamphlet containing the English translation referred to in 89A.08 has not been published or has not been communicated to the Office under PCT a.20 (see 89A.09-89A.10).

89A.17

Where any of these requirements have not been met, the applicant should be notified accordingly and informed that early entry into the national phase cannot occur until they are met. The applicant should also be informed that the application will be treated as withdrawn under s.89A(4) if the requirements are not met before the expiry of the prescribed period of Section 89A(3)(a), including any extension (see 89A.05).

89A.18

r.68(1)-(3) is also relevant

In order for the application to proceed once it has gained early entry into the national phase, it is also necessary for the relevant requirements listed in 89A.12 and 89A.12.1 to be satisfied. However, the periods for paying the application fee and filing Patents Form 7 and 9A are determined by r.68. Form 7 should be filed within the last to expire of the period prescribed by r.10(3) or two months from the date on which the national phase begins. Similarly, the application fee (currently set at zero for international applications) and Form 9A should be filed within the last to expire of the period prescribed by r.22(2) and (7) or two months from the date on which the national phase begins. These periods are extensible in two month tranches, but any extension is not available after the end of the period of two months beginning immediately after the expiry of the period to be extended, in accordance with r.108(2) or (3) and (4) to (7) - see 123.34-41.

89A.19

S.89A(1) is also relevant

If the international application has been published with an international search report by the International Bureau by the date of early entry into the national phase, the application is re-published in the normal way (see 89A.14-89A14.2). If however the international search report is not available, either from the International Bureau or from the applicant, and the applicant has not requested a full search under s.17, classification and re-publication should not be delayed to await publication of the international search report.

[If the international search report is not available and the applicant has not requested a full search under s.17, “Not yet advised” should be entered for ‘Field of Search’ and ‘Citations’ on PROSE. In such cases, it will be necessary to check for a search report at the examination stage and to enter the field of search and citation information into COPS as data for B-publication. The examiner should therefore create a minute reminding the substantive examiner to enter the necessary data.]

89A.19.1

Where the international search report is not available, the applicant has the option of requesting that a full search be done under s.17, as for a domestic UK application. The full search fee will be payable (see 89B.08). Re-publication of the whole WO specification together with the UK external search report will then take place. This practice remains the same even if the international search report has become available after the s.17 search was commenced but before preparations for publication are complete. However, a request for a full search under s.17 should not be accepted if the international search report is available; in such cases the examiner should arrange for the excess fee to be refunded. Similarly, if the international search report becomes available after the request for a full search under s.17, but before the examiner commences the search, the excess fee should be refunded - see 89B.08.

[In cases where a full UK search under s.17 is carried out on a PCT application without an ISR, the search, citation and classification data reported by the UK search examiner should be entered via PROSE in the usual way for inclusion on the front page of the specification.]

89A.20

If the international application has not been published by the International Bureau by the date of early entry into the national phase, then, in the absence of a request for accelerated publication, the usual re-publication of the application will have to wait until the WO pamphlet becomes available. On no account should it be assumed that accelerated publication is required unless an explicit request has been made. In accelerated cases where it is not clear whether earlier publication is desired in order to secure early grant, the applicant should be contacted by telephone to clarify their intentions (see also 18.07).

89A.20.1

Where the applicant does not wish to await publication by the International Bureau they may explicitly request accelerated publication of the application. If the international search report is available, then the application should have accelerated publication under s.16 in the same way as a domestic UK application, but including the international search report instead of a domestic external search report (even if the international search report has not yet been published by the International Bureau). No subsequent re-publication of the WO pamphlet is required. If the international search report has been established in a language other than English and no translation is available at the time that accelerated publication is requested, the applicant should be asked under rule 113(1) to provide such a translation for publication. Otherwise, publication must wait until the English translation is available from WIPO. If the international search report is not available, then accelerated publication cannot take place until the international search report becomes available, unless the applicant also makes a request for a full search under s.17. The full search fee will then be payable (see 89B.08), and the application will be published under s.16 in the usual way for domestic UK applications, including the UK external search report. Again, no subsequent re-publication of the WO pamphlet is required. However, see 89B.08 for the situation where the international search report becomes available before the examiner commences the search. Where the applicant has requested a full search, the application may be processed as a CS&E if Forms 9A and 10 have been filed on the same date or a specific request has been made when filing Form 10 (see 18.03) For restrictions on the earliest date a s.18(4) report may be issued, including allowing time for third party observations, see 18.07.2.

[In cases where accelerated publication of an unpublished PCT application is requested and the international search report is available, classification data (revised if necessary), field of search and citations as reported by the international search authority will be entered via PROSE by the examiner assistant and the abstract should be reframed by the examiner (see 14.170-191). If the international search report is not available and a full UK search under s.17 is carried out, the search, citation and classification data should be entered via PROSE in the normal way, and again the abstract should be reframed (if necessary).]

89A.21

A specific request for accelerated examination made before the expiry of the prescribed period is considered to be an express request for early entry into the national phase. However, accelerated processing does not follow early entry into the national phase unless a specific request is made and allowed for accelerated search (see 17.05-12), accelerated publication (see 16.04) or accelerated examination (see 18.07-18.07.1). Where a request for accelerated examination has been accepted then the examination may be carried out at the same time as the search (or classification). Where an acceleration request is accepted on a PCT application, the substantive examiner (rather than the examiner assistant) is required to carry out reclassification procedures (see 89A.14 and 89A.20.1). For accelerated processing under the PCT(UK) Fast Track, see 89B.17. For restrictions on the earliest date a s.18(4) report may be issued, including allowing time for third party observations, see 18.07.2.

 
Section 89A(4)
If the prescribed period expires without the conditions mentioned in subsection (3)(a) being satisfied, the application shall be taken to be withdrawn.

89A.22

The application for a UK national patent is taken to be withdrawn if the conditions in subsection (3)(a) are not met within the prescribed period to which 89A.05 refers.

 
Section 89A(5)
Where during the international phase the application is amended in accordance with the Treaty, the amendment shall be treated as made under this Act if
(a) when the prescribed period expires, any necessary translation of the amendment into English has been filed at the Patent Office, or
(b) where the applicant expressly requests the comptroller to proceed earlier with the national phase of the application, there is then filed at the Patent Office
(i) a copy of the amendment, if none has yet been sent to the Patent Office in accordance with the Treaty, and
(ii) any necessary translation of the amendment into English;

otherwise the amendment shall be disregarded.

89A.23

PCT aa.19 & 34 is also relevant

Any amendments made during the international phase should be taken into account during examination in the national phase, providing the amendments and any necessary translations have either been communicated to the Office by the International Bureau, or filed at the Office by the applicant. If the application has been amended during the international phase but the amendments and any necessary translations have neither been communicated to the Office by the International Bureau, nor filed at the Office by the applicant, the application is allowed to proceed in its unamended form into the national phase – see 89A.25.

89A.24

r.66(2) is also relevant

Where an applicant is required to file a translation into English both of an application as originally filed and of the amendment to it and where at the expiry of the 31 month period for entry into the national phase (see 89A.05) the prescribed fee has been paid and a translation of the application has been filed but a translation of the amendment has not been filed, the comptroller gives notice to the applicant requiring that the required translation be filed within three months of the date on which the notice is sent, and the 31 month period is treated in respect of that translation as not expiring until the end of the period specified in the notice. The period for filing a missing translation is extensible in two month tranches, but any extension is not available after the end of the period of two months beginning immediately after the expiry of the period to be extended, in accordance with r.108(2) or (3) and (4) to (7) - see 123.34-41.

89A.25

r.69, 70 is also relevant

The amendments are disregarded unless the requirements of subsection (5) are met; if they are met, such amendments are treated as if made under the 1977 Act. The requirements in question are set out under (a) or (b) in the subsection and are concerned in effect with the amendment and any necessary translation being available at the time of entry into the national phase. Amendments other than in English are marked “to be disregarded” if a translation has not been received in the Office when the national phase starts. If an amendment is to be disregarded the applicant should be notified accordingly and invited to re-submit it (in duplicate for applications filed before 26 June 2006), under s.19 and r.66A.

[ Where a translation of an amendment is not filed by the end of the prescribed period, the application should be referred to the appropriate Formalities Manager who may decide to consult the appropriate heading examiner before marking the amendment as disregarded. ]

89A.25.1

For details of when an international application may be amended upon entry to or during the national phase, see 19.15.1.

 
Section 89A(6)
The comptroller shall on payment of the prescribed fee publish any translation filed at the Patent Office under subsection (3) or (5) above.

89A.26

In order to secure certain rights as set out in subsection (3) of s.89B, the applicant may under subsection (6) of s.89A pay a prescribed fee for publication of a translation filed under section 89A(3) or (5). The Office automatically publishes translations supplied in accordance with s.89A(3) or (5) (see 89A.14.2 above) but, in order to obtain the protection to which s.89B(3) refers when the international application was not in English, the applicant should file a written request, accompanied by the appropriate fee, that publication for the purposes of s.89A(6) is sought.