CHAPTER 9:  INTERNATIONAL PUBLICATION, AMENDMENT OF CLAIMS, AND OTHER PROCESSING OF THE INTERNATIONAL APPLICATION BY THE INTERNATIONAL BUREAU


GENERAL

9.001.   What are the main procedural steps at the International Bureau?  The main procedural steps that any international application goes through at the International Bureau are the following:

Rule 22.1
24.2

(i)  the International Bureau monitors the receipt of the record copy of the international application and notifies the fact, and the date of receipt, to the applicant and the authorities concerned;  for details, see paragraph 9.002;

Article 19
Rule 46

(ii)  the applicant may amend the claims of the international application under Article 19 by means of a communication addressed to the International Bureau;  for details, see paragraphs 9.004 to 9.011;

Article 21
Rule 48

(iii)  the international application is published by the International Bureau (such publication usually takes place just after the expiration of 18 months from the priority date);  for details, see paragraphs 9.012 to 9.024;

Article 20
Rule 43bis
44
47

(iv) copies of the international application, the international search report and the written opinion of the International Searching Authority (in the form of the international preliminary report on patentability (Chapter I of the PCT) (see (v) and (vi) below) pertaining to it are transmitted by the International Bureau to the designated Offices;  for details, see paragraphs 9.028 and 9.029;

Rule 44bis

(v)  where a preliminary examination report (international preliminary report on patentability (Chapter II of the PCT)) has not been established, the International Bureau issues an international preliminary report on patentability (Chapter I of the PCT) (see paragraph 7.031);

Rule 44bis.2
44bis.3

(vi)  copies of that report are transmitted by the International Bureau to the applicant, and to the designated Offices in accordance with Rule 93bis, but not before the expiration of 30 months from the priority date;  the International Bureau may also if so requested by any designated State, transmit a copy of a translation into English of the international preliminary report on patentability (Chapter I of the PCT) to any interested designated Office and to the applicant at the same time as it communicates the report to that Office;

Article 36
Rule 70
71
72
73
74

(vii)  where a demand for international preliminary examination has been filed, the International Bureau notifies the elected Offices, transmits the international preliminary report on patentability (Chapter II of the PCT) to them and makes a translation of that report into English (if required by any elected Office);  for further details, see paragraphs 10.006, 10.045, 10.078 and 10.079.

Rule 24.2
47.1(a-bis)
93bis.1

9.002.   When and to whom does the International Bureau notify its receipt of the record copy of the international application?  When are designated Offices notified?  How the International Bureau receives the record copy and how it monitors that receipt is explained in paragraphs 6.057 and 6.058.  The record copy of the international application should normally reach the International Bureau before the expiration of 13 months from the priority date.  After receiving the record copy, the International Bureau notifies the applicant, the receiving Office and the International Searching Authority (unless it has informed the International Bureau that it wishes not to be so notified) of the fact and of the date of receipt of the record copy.  All those notifications are effected promptly after the International Bureau’s receipt of the record copy.

Rule 24.2(a)
53.7
90bis.2

9.003.   What should be done by the applicant when he receives the notification of receipt of the record copy?  The notification sent to the applicant (Form PCT/IB/301) contains the list of the designated Offices.  This notification will allow the applicant to check whether the fact that certain designations (DE, JP and/or KR) were specifically excluded in the request, and/or any subsequent withdrawal of designations have been properly reflected.  The applicant may wish to withdraw the designation of any designated State at this point, or at any time prior to the expiration of 30 months from the priority date.


AMENDMENT OF THE CLAIMS UNDER ARTICLE 19

Article 19(1)
Rule 46
49.5(a)(ii),
49.5(c),
49.5(c-bis)

9.004.   When and how may the claims of the international application be amended in the international phase?  The applicant is entitled, under Article 19, to one opportunity to amend the claims of the international application in the international phase.  (Further opportunities to amend the claims, and also the description and the drawings, are available during the international phase under Article 34 if, and only if, the applicant files a demand for international preliminary
examination – see paragraphs 9.011, 10.024 to 10.028, and 10.067 to 10.071).  Any amendment to the claims under Article 19 must be filed with the International Bureau – not with the receiving Office nor the International Searching Authority.  The amendments must be in the language in which the international application is published (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish – see paragraphs 9.017 to 9.019).  The opportunity to make amendments under Article 19 is available after the applicant has received the international search report and the written opinion of the International Search Authority, and remains available until the end of 16 months from the priority date or two months after the transmittal (that is, the date of mailing) of that report and opinion, whichever expires later.  Amendments received by the International Bureau after the time limit are still accepted if they have been received before the technical preparations for international publication have been completed.  Amendments to the claims under Article 19 are not allowed where the International Searching Authority has declared, under Article 17(2), that no international search report would be established (see paragraph 7.014).  Upon entry into the national phase, if the claims have been amended under Article 19, a translation of both the claims as filed and as amended (in the form of a translation of the complete set of claims furnished under Rule 46.5(a) in replacement of all the claims originally filed and any statement may have to be furnished to the designated/elected Offices, (see National Chapters (Summary)).  (As to amendments in the national phase, see paragraphs 5.111, 5.127 and 5.162, the National Phase and National Chapters.) The submission of Article 19 amendments should comprise:

(i)  a complete set of claims in replacement of the claims originally filed (see paragraph 9.005)

(ii)  a letter which must indicate the differences between the claims as filed and those as amended plus the basis for the amendments (see paragraphs 9.005 to 9.006A)

(iii)  an optional statement under Article 19 (see paragraphs 9.007 to 9.008)

Rule 6.1
46.5
Section 205

9.005.   When filing amendments to the claims under Article 19, the applicant is required to file a sheet or sheets containing a complete set of claims in replacement of the claims originally filed. The replacement sheet or sheets must be accompanied by a letter drawing attention to the differences between the claims as filed and the claims as amended. It must also indicate the basis for the amendment to the claims with specific references to particular parts of the application (description, claims, drawings) as originally filed (see paragraph 9.006). Where an amendment results in the cancellation of an entire sheet of the international application as originally filed, the amendment (that is, the cancellation) is evidenced only by the letter addressed to the International Bureau. Amendments may consist in the cancellation of one or more entire claims, in the addition of one or more new claims, or in the amendment of the text of one or more of the claims as filed. All the claims appearing on a replacement sheet must be numbered in Arabic numerals (corresponding to the order of the claims). Where a claim is cancelled, no renumbering of the other claims is required. However, where the applicant does renumber claims, they must be renumbered consecutively.

Rule 46.5
Section 205

9.006.   What should the accompanying letter contain? The letter, which must accompany the replacement sheets containing amendments to the claims, must indicate firstly the differences between the claims as filed and those as amended and secondly the basis for the amendments in the application as filed. This should be done by stating, in connection with each claim appearing in the international application, whether:

 

(i)  the claim is unchanged,

 

(ii)  the claim is cancelled;

 

(iii)  the claim is new;

(iv)  the claim replaces one or more claims as filed;

(v)  the claim is the result of the division of a claim as filed, etc.

The replacement sheets containing the amended claims should not, however, contain marked-up text; they should contain clean text only. This should be followed by an indication of the basis for the amendments in the application as filed. The basis for the amendments has to be indicated so that the examiner may, by consulting those precise references in the application, assess whether the amendments contain subject-matter which extends beyond the disclosure of the application as filed. Therefore, non-specific indications such as “see the description as filed” or “see the claims as filed” are generally not considered sufficient for an indication of the basis for the amendment. Example:

“Claim 1 amended; claims 2 to 7 unchanged; claims 8 and 9 amended; claims 10 to 14 cancelled; claims 15 to 17 unchanged; new claim 18 added.

(i)  Basis for the amendment: Claim 1 has been amended at lines 4 and 11 to 14 and now indicates that the filter comprises a periodic backwashing means serially coupled to a first and second chamber. The basis for this amendment can be found in original claims 2 and 4 as filed.

(ii)  Basis for the amendment: Concerning amended claims 8 and 9, the indication of ‘quick-fire piston’ is in paragraph Nos. 2 and 19 in the description as filed.

(iii)  Basis for the amendment: Claim 18 is new, the indication is in drawing No. III of the original application.”

Rule 92.2(d)

9.006A.   What happens where the international application is not in the same language as the accompanying letter?  The accompanying letter should be furnished in English or French. References may, however, be made to the international application in the language of the international application where to do so will facilitate the work of the examiner in finding the reference, for example:

(i)  Basis for the amendment: Concerning amended claim 2, the indication of “請求項1に基づくパーキングアシストシステム” is in paragraph Nos. 23, 46 and 85 in the description as filed.

Article 19(1)
Rule 46.4
48.2(a)(vi)

9.007.   What is a statement accompanying an amendment?  Any amendment may be accompanied by a brief statement by the applicant explaining the amendment and indicating any impact it might have on the description and the drawings.  Such a statement is published together with the international application itself (see paragraphs 9.012 to 9.024).  Statements not referring to a specific amendment are not permitted.  The statement must not exceed 500 words if in English or when translated into English.  It may not contain disparaging comments on the international search report or on the relevance of any of the citations contained in that report.  References to certain citations in the report may be made only in connection with an amendment made to a specific claim.  The statement must be in the language in which the international application is published (see paragraphs 9.017 and 9.018).

Rule 46.4(a)
48.2(a)(vi)

9.008.   A statement explaining the amendment is not to be confused with and must be clearly distinguished from the letter indicating the differences between the claims as filed and those as amended and the basis for the amendment (see paragraph 9.006).  It is also distinct from the statement concerning amendments which must be included in a demand for international preliminary examination (see paragraphs 10.024 to 10.027).  It must therefore be identified as such by a heading “Statement under Article 19(1).”  Where the statement does not comply with the requirements, it is neither published by the International Bureau nor communicated to the designated Offices.

Article 19(2)
and (3)
Rule 66.2(a)(iv)

9.009.   May the amended claims include new matter?  The PCT provides that amendments are not to go beyond the disclosure in the international application as filed.  This requirement is not directly enforceable during Chapter I of the international phase, but failure to comply with it may have adverse consequences for the applicant during the international preliminary examination and in the national phase (see paragraphs 10.070 and 11.047 below).

Rule 46.5(b)
70.2(c-bis)

9.009A.   What happens where the replacement sheets were not accompanied by a letter?  The PCT requires that replacement sheets filed with Article 19 amendments must be accompanied by a letter indicating the basis for the amendment to the claims (see paragraph 9.006). Substantive compliance with this requirement is not checked during the international phase unless the applicant requests international preliminary examination but failure to comply with it may have adverse consequences for the applicant during international preliminary examination and in the national phase (see also paragraph 11.047A below).

Rule 53.9(a)(i)
55.3
62.1
62.2

9.010.   Should a copy of amendments under Article 19 be filed with the International Preliminary Examining Authority?  If the applicant submits a demand for international preliminary examination, he should file a copy of the amendments to the claims under Article 19, the letter which accompanied the amended claims and the statement under Article 19(1) (if any) with the International Preliminary Examining Authority with the demand (if the amendment has already been filed) or at the same time as he files the amendment with the International Bureau (if the amendment is filed after the demand). Where the International Preliminary Examining Authority requires a translation of the international application under Rule 55.2, the applicant should also furnish a translation of any amendments made under Article 19 and any letter that accompanied the amendments if he wishes those amendments to be taken into account for international preliminary examination. The International Bureau transmits a copy of any amendment, accompanying letter and any statement under Article 19 received prior to the filing of the demand to the International Preliminary Examining Authority unless that Authority indicates that it has already received a copy. If an amendment, the accompanying letter and any statement under Article 19 are received after the demand has been filed, the International Bureau transmits a copy to the International Preliminary Examining Authority in any event, but timely filing of a copy of these documents by the applicant direct with that Authority ensures that the international preliminary examination will proceed without undue delay or uncertainty. See paragraphs 10.024 to 10.028 in connection with the demand form.

Article 34(2)(b)
Rule 48.2(f)
66.1(b)

9.011.   In what circumstances should the claims be amended under Article 19?  Since any amendments of the claims under Article 19 are published with the international application (see paragraph 9.015), such amendment may be useful to the applicant if there is a reason to better define the scope of the claims for the purposes of provisional protection in those designated States whose national law provides for such protection (see paragraph 9.024).  It is to be noted that, where international preliminary examination takes place, the applicant has the right under Article 34(2)(b) to file amendments to the claims (as well as to the description and the drawings) with the International Preliminary Examining Authority, regardless of whether or not he has filed amendments to the claims under Article 19 with the International Bureau (see paragraphs 10.024, 10.028, 10.067 to 10.071, and 11.045 to 11.047).  There is therefore normally no need to amend the claims under Article 19 where a demand for international preliminary examination is filed, unless there is a particular reason related to provisional protection or otherwise for amending the claims before international publication.


INTERNATIONAL PUBLICATION

9.012.   When and how is the international application published by the International Bureau?  International applications are published by the International Bureau except in any of the following cases:

Rule 20.4

(i)  if the international application is not accorded an international filing date by the receiving Office (see paragraphs 6.005 to 6.012);

Article 21(5)

(ii)  if the international application is considered withdrawn before the technical preparations for publication have been completed;

Article 21(5)

(iii)  if the international application is withdrawn by the applicant (see paragraphs 11.048 and 11.049) before the technical preparations for publication have been completed;

Article 64(3)

(iv)  if the only designated State remaining at the time of the completion of the technical preparations for publication, is the United States of America (since the United States of America made a declaration under Article 64(3)(a)), unless any of the exceptions specified in Article 64(3)(c) applies.

9.013.   When are the technical preparations for international publication completed?  The technical preparations for publication are completed by the 15th day prior to the date of publication.

Article 21(2)
Rule 48.2(h)
48.4
Section 113

9.014.   When does international publication take place?  International publication takes place promptly after the expiration of 18 months from the priority date.  However, when the applicant asks the International Bureau to publish his international application earlier, the International Bureau does so.  If the applicant asks for early publication and the international search report, or the declaration referred to in Article 17(2)(a), is not available for publication with the international application, a special fee, the amount of which is indicated in Annex B (IB), is payable to the International Bureau.

Article 21(3)
Rule 48.1
48.2(a), (g)
and (h)
Section 404
406(b)

9.015.   What constitutes international publication?  Since 1 April 2006, publication of international applications filed under the PCT takes place wholly in electronic form.  The published international application will include any declaration filed under Rule 4.17 and, if available at the time of publication, the international search report or declaration by the International Searching Authority to the effect that no international search report will be established, and also any amendment, including any statement, under Article 19.  Where the time limit for amending the claims has not expired at the time of the completion of the technical preparations for publication, the international application is published with an annotation accordingly, and any amendment received within the time limit is published later.  Similarly, if the international search report or declaration by the International Searching Authority is not available, the international application is published with an annotation accordingly and the report or declaration is published separately after it has been received by the International Bureau.  Each published international application is assigned an international publication number consisting of the code WO followed by an indication of the year and a serial number (for example, WO 2004/123456).  For further details governing international publication, see Article 21 and Rule 48.

Rule 86.1(i)
Section 407(b)

9.016.   On the same date the international application is published, the bibliographic data, the title of the invention, the abstract and a characteristic drawing (if any) of each published international application are made available on the WIPO website at:  www.wipo.int/patentscope/search/en/structuredSearch.jsf.

Article 21(4)
Rule 45.1
48.3

9.017.   In what language is the international application published?  If the international application is filed in Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish, it is published in the language in which it was filed.  Where the language of publication is Arabic, Chinese, French, German, Japanese, Korean, Portuguese, Russian or Spanish, the International Bureau prepares English translations of the title of the invention, the abstract and the international search report (or the declaration referred to in paragraph 7.014) and includes the translations in the published international application.  The International Bureau also prepares, where applicable, French translations of the title and the abstract.  The title and abstract are published on the WIPO website at:  www.wipo.int/patentscope/search/en/structuredSearch.jsf (see paragraph 9.020).

Rule 48.3(b)

9.018.   If the international application is filed in a language which is a language other than Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish and is a language accepted by the International Searching Authority for international search, the applicant must furnish a translation of the international application into a language of publication accepted by the receiving Office for that purpose.  The international application will be published in that language of translation only (see paragraphs 6.020 to 6.023).

9.019.   If the international application is filed in a language which is neither a language of publication (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish) nor a language accepted by the International Searching Authority for international search, it is published in the language of the translation furnished by the applicant (see paragraphs 6.013 to 6.020).

Rule 86.2(a)

9.020.   The bibliographic data, titles and abstracts, and any figure which appears on the front page of each published international application are published in English and in French on the WIPO website at:  www.wipo.int/patentscope/search/en/structuredSearch.jsf.

Rule 86.1(i)
86.4

9.021.   How can copies of the published international application be obtained?  In addition to  downloading the published international application from the WIPO website anyone may obtain a copy of the published international application by ordering it from the International Bureau, preferably referring to its international publication number (if available).

Rule 86.1(i)
86.4

9.022.   How can the published international application in electronic form be accessed?  The published international application in electronic form is available via WIPO website at www.wipo.int/patentscope/search/en/structuredSearch.jsf.

Rule 4.10(b)
17.2(c)

9.023.   How can copies of the priority document be obtained?  Third parties who wish to receive a copy of the priority document may apply to the Office with which the earlier application was filed, to certain designated Offices or to the International Bureau.  The International Bureau makes copies of priority documents, after international publication of the international application available on the WIPO website at:  www.wipo.int/patentscope/search/en/structuredSearch.jsf, or on paper upon request and subject to reimbursement of the cost.  However, the International Bureau does not furnish such copies if, prior to the international publication, the international application was withdrawn, or the relevant priority claim was withdrawn or was considered not to have been made, or the relevant declaration of the priority claim was cancelled.

Article 29

9.024.   What are the legal effects of international publication?  Article 29 has the effect of ensuring, with certain qualifications, that provisional protection is available after the international publication of an international application in the same way as it is after national publication of unexamined national applications.  The qualifications are such as to enable Contracting States to make such protection conditional on the furnishing of translations (in some circumstances), on the expiration of 18 months from the priority date, and/or on receipt by the designated Office of a copy of the international application as published under the PCT.  For further details, see Article 29Annexes B indicate what the position is in each Contracting State.

Rule 94

9.025.   Can access be gained at the International Bureau to the file of an international application?  For international applications filed before 1 July 1998, the applicant or any person authorized by the applicant may, subject to reimbursement of the cost of the service, obtain copies from the International Bureau of any document contained in its file.  For international applications filed on or after 1 July 1998, the International Bureau makes certain documents in its file available on WIPO’s website together with the published international application.  In addition, it will, at the request of any person but not before the international publication of the international application and subject to Article 38, furnish, upon reimbursement of the cost of the service, copies of any document contained in its file (see paragraphs 11.072 to 11.074 for details concerning the confidentiality of international applications).

Rule 44ter

9.026.   In addition to the general Article 38 exception referred to above, for international applications filed on or after 1 January 2004, the International Bureau will not, unless requested or authorized by the applicant, provide access by any person or authority to:

(i)  the written opinion of the International Searching Authority;

(ii)  any informal comments submitted by the applicant on the written opinion of the International Searching Authority;

(iii)  the international preliminary report on patentability (Chapter I of the PCT);  or

(iv)  any translations of those documents or written observations by the applicant on those translations;

before the expiration of 30 months from the priority date.

Rule 94.1(c)

9.027.   Concerning access to the international preliminary report on patentability, the International Bureau will, as of 1 January 2004 and if so requested by an elected Office, make copies of that report available on the WIPO website at:  www.wipo.int/patentscope/search/en/structuredSearch.jsf to third parties on behalf of that Office.  A number of elected Offices have made this request to the International Bureau, see www.wipo.int/pct/en/texts/access_iper.html.


COMMUNICATION OF COPIES TO THE DESIGNATED OFFICES

Article 20(1)(a)
22(1)
Rule 47.1(a)
47.2
47.3
93bis

9.028.   How and when do the designated Offices receive copies of the international application?  Subject to what is said in this paragraph and in paragraph 9.029, the International Bureau communicates a copy of the international application in the language in which the international application is published, to each designated Office upon their request and at the time specified by that Office, pursuant to Rule 93bis, but not prior to the international publication.  Where the language in which the international application is published is different from the language in which it was filed, the International Bureau will furnish to any designated Office, upon the request of that Office, a copy of that application in the language in which it was filed.  In practice, the communication is effected by sending a copy of the published international application (for details concerning the contents of published international applications, see paragraph 9.015).  The International Bureau also sends, promptly after the expiration of 19 months from the priority date in respect of designated Offices which do not apply the 30-month time limit, and again promptly after the expiration of 28 months from the priority date in respect of designated Offices which do apply the 30-month time limit, a notice (Form PCT/IB/308 (First Notice) (19 months) and Form PCT/IB/308 (Second and Supplementary Notice) (28 months)) to the applicant informing him of the Offices to which the communication has been effected and of the date of such communication.  The notices must be accepted by all designated Offices as conclusive evidence that the communication has duly taken place on the date specified in the notices.  On receiving the notices, the applicant knows that he does not have to send a copy of the international application to any of the designated Offices indicated on them as having been sent the communication.

Article 13
23(2)
40(2)
Rule 31
47.4
61.2(d)

9.029.   A copy of the international application (albeit without the international search report) is communicated by the International Bureau, prior to the communication referred to in the preceding paragraphs, to any designated Office which so requests;  this transmittal may not be done before the expiration of one year from the priority date.  It should be noted that, to date, no national or regional Office has asked for a copy of all the international applications designating it to be the subject of such an early communication.  If he wishes, the applicant may at any time transmit, or ask the International Bureau to transmit, a copy of his international application to any designated Office.  Such special transmittal by the International Bureau requires the payment of a fee, the amount of which is indicated in Annex B (IB).  Further details are to be found in Article 13 and Rule 31.  It is to be noted that transmittal in this way does not, unless expressly requested by the applicant, entitle the designated Office to start its processing of the international application.  If, however, the applicant makes an express request to a designated or elected Office (under Article 23(2) or 40(2), respectively) for early commencement of national processing, the International Bureau then promptly effects the communication to the Office concerned upon request by the applicant or the designated or elected Office.