Beware PCT Notices of Incompatibility

L. Steenbeek writes in EPI Information that patent applicants should consider Notices of Incompatibility (statements filed by offices that they will not apply certain PCT Rules because they deviate from their local law) when they select a PCT Receiving Office. He reports that the PCT Rules are not yet fully applied by the following PCT Receiving Offices in the EPC Contracting States:

• Rule 20.8(a): reference to earlier application to repair missing parts or instead of certain parts: EP, BE, CZ, DE, ES, HU, IT.
• Rule 26bis.3(j): restoration of priority term: EP, BE, CZ, DE, ES, FR, GR, HU, IT, PT.

and the following Notices of incompatibility have been submitted by Designated Offices:

• Rule 20.8(b): reference to earlier application to repair missing parts or instead of certain parts: EP, CZ, DE, ES, HU, LT, TR + CN, CU, ID, JP, KR, MX, PH.
• Rule 49ter(1)(g): restoration of priority term: EP, CZ, DE, ES, HU, LT, PT, TR + BR, CA, CN, CO, CU, DZ, ID, IN, JP, KR, MX, NO, PH, US.

According to Steenbeek,

In the above cases, using WIPO as PCT Receiving Office does not cause problems in the international phase. Of course, applicants who can file PCT applications with Receiving Offices that have not filed a notice of incompatibility (such as the NL patent office) may continue using that office.

. . . It should [also] be noted that while the PCT Receiving Office may accept something, after the international phase, in the national phase, a Designated Office may still not accept it. So, the Notices of incompatibility filed by Designated Offices should also be considered. However, where the choice is between a worldwide problem caused by a PCT Receiving Office’s non-application of certain PCT Rules, and a local problem because some Designated Offices’ non-application of certain PCT Rules, in many circumstances it is preferred to keep at least a right for some states rather than no right at all.

. . . It may be assumed that the EPO will drop its Notices of incompatibility after the entry into force of the EPC2000, and that the same holds for other offices when they join the Patent Law Treaty.