CHAPTER 11:  MISCELLANEOUS QUESTIONS CONCERNING THE INTERNATIONAL PHASE


REPRESENTATION BY AGENTS AND COMMON REPRESENTATIVES

Rule 90.1

11.001.   For what purposes may an agent be appointed?  The applicant may appoint an agent or agents to represent him before the receiving Office, the International Bureau, the International Searching Authority, any Authority specified for supplementary search and the International Preliminary Examining Authority - that is, for the purposes of the international phase generally.  The applicant may also appoint an agent or agents to represent him specifically before the International Searching Authority, any Authority specified for supplementary search or before the International Preliminary Examining Authority.  Agents appointed for the purposes of the international application during the international phase will not be automatically regarded as agents by national Offices during the national phase;  other agents may thus have to be appointed for the purposes of the national phase before each of the various designated Offices (see National Chapters, (Summaries)).

Article 49
Rule 83.1bis
90.1

11.002.   Who may be appointed as an agent?  A person may be appointed as agent for the international phase generally if he has the right to practice before the Office with which the international application is filed.  Where the international application is filed with the International Bureau as receiving Office (see paragraph 5.008), any person who has the right to practice before the national (or regional) Office of, or acting for, a Contracting State of which the applicant (or, if there are two or more applicants, any of the applicants) is a resident or national (see Annex C) may be appointed as agent.  A person may be appointed as agent to represent the applicant specifically before the International Searching Authority, before any Authority specified for supplementary search, or before the International Preliminary Examining Authority if he has the right to practice before the Office or intergovernmental organization which acts as that Authority.  The right to practice before an Office or organization is governed by the national law applied by the Office or organization concerned.

11.003.   Are all applicants required to have the same agent?  Each applicant is free to appoint his own agent.  Ordinarily, however, it will be convenient for all of two or more applicants to appoint the same person to represent all of them as their “common agent” (or to appoint a number of common agents – for example, the partners in the firm of patent attorneys or patent agents which acts for the applicant).

Rule 90.1(d)

11.004.   Can an agent appoint a sub-agent?  Any agent who has been appointed to represent the applicant for the international phase in general may appoint a sub-agent to represent the applicant, unless there is an indication otherwise in the document by which the original agent was appointed.  Sub-agents may be appointed to represent the applicant either generally or before a specific International Searching Authority, Authority specified for supplementary search or International Preliminary Examining Authority.  A sub-agent’s appointment is subject to the same qualifications as to the right to practice as are set out in paragraph 11.002.

Article 9
Rule 2.2bis
90.2(a)

11.005.   What is a “common representative” of the applicants?  Where there are two or more applicants and they have not appointed a common agent representing all of them for the purposes of the international phase in general, one of the applicants may be appointed by the other applicants as their common representative.  A person may only be appointed as common representative if he is a national or resident of a Contracting State and thus is entitled himself to file an international application.

Rule 2.2bis
90.2(b)
90bis.5

11.006.   What happens if no common agent or common representative is specifically appointed?  If there are two or more applicants and they do not appoint a common agent or a common representative, the first-named applicant who has the right to file an international application with the receiving Office concerned (see paragraphs 5.020 to 5.023) will automatically be considered to be the common representative of all the applicants (“deemed common representative”).  Such “deemed common representative” may do most of the things which an appointed agent or an appointed common representative may do on behalf of all the applicants, including signing the demand and many other documents for the purposes of the PCT.  However, the “deemed common representative” may not validly sign, on behalf of the other applicants, the request itself or a notice effecting withdrawal of the international application, a designation, a priority claim, the demand or an election.  If the “deemed common representative” has himself appointed an agent, that agent is able to perform any act which could be performed by the “deemed common representative” himself on behalf of the other applicants, including the signing of certain documents with effect for all the applicants (but, similarly, not the request or a notice of withdrawal).

Rule 90.4(a)

11.007.   How is an agent or common representative appointed?  The appointment of an agent or common representative may be effected in the request and or the demand (see paragraphs 5.041 to 5.049, and 10.019 to 10.023) in a separate power of attorney (see paragraph 11.008) or in a general power of attorney (see paragraph 11.009).  Where there are two or more applicants, a common agent or common representative, representing all of them, may be appointed by a combination of those methods, provided that each applicant signs either the request, the demand or a power of attorney.

Rule 90.4

11.008.   What are the requirements with respect to a separate power of attorney?  Where the appointment of an agent or common representative is effected by a separate power of attorney, that power of attorney must be submitted to either the receiving Office or the International Bureau.  However, any receiving Office, International Searching Authority, Authority specified for supplementary search, International Preliminary Examining Authority and/or the International Bureau may waive the requirement that a separate power of attorney be submitted to it (details of such waivers are published in the Official Notices (PCT Gazette)) in the PCT Newsletter and on the WIPO website at:  www.wipo.int/pct/en/texts/waivers.html.  It should be noted, however, that a waiver made by an Office, an Authority or the International Bureau does not apply where the agent or the common representative submits any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4.  A suitable model form for a separate power of attorney is available on the WIPO website at:  www.wipo.int/pct/en/forms/pa/index.htm.

Rule 90.5

11.009.   Can an agent be appointed by a general power of attorney to represent the applicant in relation to any international application filed by that applicant?  Yes, such a general appointment can be made.  The original general power of attorney must be filed with the receiving Office if the appointment was for the purposes of the international phase generally, or with the International Searching Authority, the Authority specified for supplementary search, or the International Preliminary Examining Authority if the appointment was specifically to represent the applicant before that Authority.  The appointment will then be effective in relation to any particular application filed by that applicant provided that the general power of attorney is referred to in the request, the demand or a separate notice.  However, any receiving Office, International Searching Authority, Authority specified for supplementary search, and/or International Preliminary Examining Authority may waive the requirement that a copy of the general power of attorney be attached to the request, the supplementary search request, the demand or any separate notice (details of such waivers are published in the Official Notices (PCT Gazette)).  For an Office or Authority that has not made a waiver of the requirement, a copy of the general power of attorney must be attached to the request, supplementary search request, demand or separate notice.  That copy of the signed original need not, itself, be separately signed.  A suitable model form for a general power of attorney is available on the WIPO website at:  www.wipo.int/pct/en/forms/pa/index.htm.  It should be noted that a waiver made by an Office or an Authority does not apply where the agent or the common representative submits any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4.

Rule 90.3

11.010.   What is the legal position of an agent or common representative?  Any act by or in relation to an agent or common representative has the effect of an act by or in relation to the applicant or applicants whom the agent represents for the purposes of the procedure before the receiving Office, International Bureau, International Searching Authority, Authority specified for supplementary search, and/or International Preliminary Examining Authority, depending on whether the appointment was for general purposes or for the purposes of the procedure before a particular authority (see paragraph 11.001).  In particular, an agent or common representative is able to sign documents in connection with the international application on behalf of the applicants.  However, an applicant who is the “deemed common representative” (see paragraph 11.006) may not sign notices of withdrawal on behalf of the other applicants (see paragraphs 11.048, 11.050, 11.056 and 11.060).  If there are two or more agents representing the same applicant or applicants, an act by or in relation to any of those agents has the effect of an act by or in relation to that applicant or those applicants.

Rule 90.6(a)

11.011.   Can the appointment of an agent or a common representative be revoked?  Yes, it can.  The document containing the revocation must be signed by the persons who made the appointment or by their successors in title.  The appointment of a sub-agent may also be revoked by the applicant concerned.  If the appointment of an agent is revoked, any appointment of a sub-agent by that agent is also considered revoked.

Rule 90.6(b)
and (c)

11.012.   The appointment of an agent for the international phase in general automatically has the effect, unless otherwise indicated, of revoking any earlier such appointment of an agent.  The appointment of a common representative similarly has the effect, unless otherwise indicated, of revoking any earlier appointment of a common representative.

11.013.   The rules for signing and submission of a power of attorney apply mutatis mutandis to a revocation of an appointment (see paragraphs 11.007 and 11.008).

Rule 90.6(d)
and (e)
Section 425

11.014.   How can an agent or common representative renounce his appointment?  Renunciation of an appointment may be made by means of a notification signed by the agent or common representative.  The rules for signing and submission of a power of attorney apply mutatis mutandis to a renunciation (see paragraphs 11.007 and 11.008).  The applicant is informed of the renunciation by the International Bureau.


CORRESPONDENCE TO THE APPLICANT

Section 108(b)

11.015.   To whom will correspondence be addressed by the various authorities under the PCT?  Where there is a sole applicant in relation to an international application, correspondence will be sent to the applicant at his indicated address;  or, if he has appointed one or more agents, to that agent or the first-mentioned of those agents;  or, if he has not appointed an agent but has indicated a special address for notifications (see paragraphs 5.030 and 5.051), at that address.

Section 108(c)

11.016.   Where there are two or more applicants who have appointed one or more common agents, correspondence will be addressed to that agent or the first-mentioned of those agents.  Where no common agent has been appointed, correspondence will be addressed to the common representative (either the appointed common representative or the applicant who is the “deemed common representative” – see paragraphs 11.005 and 11.006) at his indicated address;  or, if the common representative has appointed one or more agents, to that agent or the first-mentioned of those agents;  or, if the common representative has not appointed an agent but has indicated a special address for notifications, at that address.

Section 108(d)

11.017.   Where one or more agents have been appointed specifically to represent the applicant(s) before the International Searching Authority, the Authority specified for supplementary search, or the International Preliminary Examining Authority, correspondence will be addressed by the Authority concerned to that agent or the first-mentioned of those agents.


CHANGES CONCERNING THE APPLICANT, INVENTOR, AGENT OR COMMON REPRESENTATIVE

Rule 92bis
Section 422

11.018.   What should be done where there is a change in the person, name, residence, nationality or address of the applicant, or in the person, name or address of the inventor, agent or common representative?  Where there is a change in the person, name, residence, nationality or address of the applicant, or in the person, name or address of the inventor, agent or common representative, the applicant or the receiving Office should ask the International Bureau to record the change.  If so requested, the International Bureau records the change and notifies all Offices and PCT Authorities interested in the change accordingly.  Any such recording is free of charge.  If the request for a change in the person of the applicant is made by the applicant himself or by his agent, it is not necessary to produce for the International Bureau any assignment or other document by means of which the change in the person of the applicant was effected.  Assignments and other documents relating to the right to file the international application may, however, be required by the designated Offices once national processing has started;  the National Chapters give details on this matter.

11.019.   It is not necessary, in order for a change in the person of the applicant to be recorded, that the new applicant be a resident or national of a PCT Contracting State;  the PCT does not contain any restriction as to whom an international application may be assigned.  The applicant’s right to file the international application is determined on the basis of the applicant(s) indicated in the request at the time when the international application is filed (see paragraph 5.020).  However, the residence and nationality of the new applicant must be borne in mind in considering whether that applicant has the right to file a demand for international preliminary examination (see paragraphs 10.017 and 10.018).

Article 22(1)
39(1)(a)
Section 422(a)(iii)

11.020.   The request for recording of the change must be made in writing and may be sent either to the receiving Office or to the International Bureau.  The International Bureau records the change if the request for recording is received by it before the expiration of 30 months (regardless of the precise time limit applicable, Office by Office, such as 31 months or later) from the priority date, regardless of whether a demand for Chapter II has been filed before the expiration of 19 months from the priority date, and regardless of whether any of the Offices designated has notified the International Bureau that the modification of PCT Article 22(1) is incompatible with its applicable national law.  The International Bureau will also notify all designated Offices of any such changes.  The legal effect of the recorded change will vary from Office to Office.  In any case, as is generally the case, Offices are entitled to require additional evidence or documents in the national phase regarding any change requested during the international phase (for information on the Offices which require additional documents in the national phase, including a new request for change specifically for the national phase before a particular Office, see the relevant Summary in the National Chapters).  If the request is made shortly before the expiration of the time limit indicated above, it is recommended that it be sent directly to the International Bureau so as to be actually received by the latter on time.

Rule 90.3

11.021.   Where the request for a change in the person of the applicant is made by a person not yet named in the request (hereinafter referred to as “the new applicant”) without the written consent of the applicant, a copy of an assignment or other documentary evidence supporting the change in person must be filed with the request for the change.  Where the request for a change in the person of the applicant is made by an agent of the new applicant, a power of attorney signed by the new applicant must be furnished at the same time unless the Office or Authority with which the request is filed has waived the requirement that a separate power of attorney, or a copy of a general power of attorney, has to be submitted (see paragraphs 11.008 and 11.009).

Rule 90.3
92bis.1(a)

11.022.   Where the request for a change in the person of the applicant is made by the agent of record, a power of attorney appointing the agent, signed by the new applicant, should be furnished at the same time, if the agent is to represent the new applicant unless the Office or Authority with which the request is filed has waived the requirement that a separate power of attorney, or a copy of a general power of attorney, has to be submitted (see paragraphs 11.008 and 11.009).


DEATH OF APPLICANT OR INVENTOR

Article 27(2)
Rule 92bis.1(a)

11.023.   What should be done in the case of the death of the applicant during the international phase?  The answer to this question depends on the national law applicable in such a case.  The successor to the rights of the applicant (whether his heir, a legal representative, the estate represented by a legal representative, etc.) should be indicated as the new applicant, and a request for such a change to be recorded accordingly should be made under Rule 92bis.1 (see the procedure outlined in paragraphs 11.018 to 11.022).  The reason for the requested change must be indicated.  Documentary evidence proving the right to the application is not required during the international phase (although it may be required by any designated Office for the purposes of the national phase of processing).

11.024.   [Deleted]

Article 9
Rule 18.1

11.025.   What should be done if the inventor died before the international application was filed?  In such a case, the request must indicate the name of the deceased inventor with an indication that he is deceased, for instance:  “JONES, Bernard (deceased).”

11.026.   What should be done in the case of the death of the inventor during the international phase?  In such a case, no action is required.


APPLICANT UNAVAILABLE OR UNWILLING TO SIGN THE INTERNATIONAL APPLICATION OR OTHER DOCUMENTS

Article 14(1)(a)(i)
14(1)(b)
Rule 26.2
26.2bis
Section 316

11.027.   What must be done if the applicant is temporarily unavailable to sign the international application?  Where an applicant is temporarily unavailable, the international application can be filed without his signature.  The lack of an applicant’s signature or of a power of attorney signed by him, where either of these might be required, are correctable defects under Article 14(1)(a)(i) and (b), and can be remedied by filing a copy of the request (or, where the request has been signed by an agent, of a power of attorney (where this might be necessary)), duly signed by the applicant within the time limit fixed by the receiving Office for the correction of these potential defects (see paragraph 6.032).

11.028. – 11.032.   [Deleted]


RECTIFICATION OF OBVIOUS MISTAKES

Rule 91.1(a)
and (g)

11.033.   Can obvious mistakes be rectified by the applicant?  Obvious mistakes in the international application or other documents submitted by the applicant may generally be rectified if the rectification is requested within the applicable time limit.  Any such rectification is effected free of charge.  Rule 91 considers certain mistakes to be not “rectifiable” (see paragraph 11.037) and requires applicants to rely on other means of correction (see Rules 20.4, 20.5, 26bis and 38.3).

Rule 91.1(c)

11.034.   What types of mistakes can be rectified?  Only obvious mistakes can be rectified.  A mistake is considered obvious if it is obvious to the competent authority that, at the relevant date (see paragraph 11.036), something else was intended than what appears in the document concerned, and that nothing else could have been intended other than the proposed rectification.  In other words, both the mistake and the rectification of that mistake have to be obvious to the competent authority.

Rule 91.1(d)
and (e)

11.035.  Is there any limitation on the kind of documents which an authority could consider when determining whether a mistake is obvious?  If the mistake is contained in the description, the claims or the drawings, or in a correction or any amendment thereof, the competent authority is limited, for the purposes of determining whether both the mistake and the proposed rectification are obvious (see paragraph 11.034), to only take into account the contents of the description, the claims and the drawings and, where applicable, of the correction or amendment concerned.  If the mistake is contained in the request or a correction thereof or in any other document mentioned in
Rule 91.1(b)(iv), the competent authority should, for the purposes of determining whether both the mistake and the proposed rectification are obvious, take into account not only the content of the international application itself and, where applicable, the correction concerned and any other document referred to in Rule 91.1(b)(iv), but also any other document submitted by the applicant together with the request, correction or document, as the case may be, including any priority document that is available to that competent authority.  Furthermore, the authority should also take into account any other document contained in the authority’s international application file at the relevant date (see paragraph 11.036).

Rule 91.1(f)

11.036.  What is the relevant date applied by the competent authority for the determination of whether a mistake and its rectification are obvious?  Where the mistake appears in the international application as filed, the relevant date is the international filing date;  where the mistake appears in any document other than the international application as filed, including any mistake in a correction or an amendment of the international application, the relevant date is the date on which the document (correction and/or amendment) concerned was submitted.

Rule 91.1(g)

11.037.  Which mistakes cannot be rectified?  The following mistakes cannot be rectified under Rule 91:

– omissions of entire elements or sheets of the international application, even if clearly resulting from inattention at the stage of filing of the international application, for example, when copying or assembling sheets;

– mistakes in the abstract;

– mistakes in an amendment under Article 19, unless the International Preliminary Examining Authority is the competent authority to authorize the rectification of such mistakes under Rule 91.1(b)(iii);

– mistakes in a priority claim or in a notice correcting or adding a priority claim if the rectification of the mistake would cause a change in the priority date (see paragraph 6.038 concerning whether such mistakes can instead be corrected under Rule 26bis.1(a));

Rule 91.1(b)

11.038.   Do rectifications of obvious mistakes need to be authorized by a particular Office?  Yes, rectifications must be authorized by the competent PCT authority, that is:

(i)  if the mistake is in the request or in any correction thereof – by the receiving Office;

(ii)  if the mistake is in the description, the claims or the drawings or in any correction
thereof – by the International Searching Authority, or by the International Preliminary Examining Authority where a demand for international preliminary examination has been made and has not been withdrawn and the date on which the international preliminary examination should start pursuant to Rule 69.1 has passed;

(iii)  if the mistake is in the description, the claims or the drawings or any correction thereof, or in any amendment under Article 19 or 34, and if a demand for international preliminary examination has been made and has not been withdrawn and if the date on which the international preliminary examination should start pursuant to Rule 69.1 has passed – by the International Preliminary Examining Authority;

(iv)  if the mistake is in any document other than those referred to in item (i) to (iii) above submitted to the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau, other than a mistake in the abstract or in an amendment under Article 19 – by that Office, Authority or Bureau, as the case may be.

Rule 91.2

11.039.   Where and when must a request for rectification be sent?  The request for rectification must be addressed to the authority competent to authorize the rectification (see paragraph 11.038).  It must be filed within 26 months from the priority date.  The request must specify the mistake to be rectified and the proposed rectification;  it can also contain a brief explanation if the applicant so wishes.  The procedure provided for in Rule 26.4 (see paragraph 6.052) applies as to the manner in which the proposed rectification should be indicated.

Rule 91.1(h)

11.040.   Can a competent authority invite the applicant to correct an obvious mistake?  Where the receiving Office, the International Searching Authority, the International Preliminary Authority or the International Bureau discovers what appears to be a rectifiable obvious mistake in the international application or in any other document, it may invite the applicant to file a request for rectification under Rule 91.

Rule 48.2(i)
70.16(a)(iii)
91.3(a)
and (b)

11.041.   What steps will the competent authority take once a request for rectification of an obvious mistake has been filed?  Once the applicant has filed a request for rectification of an obvious mistake, the competent authority promptly decides whether to authorize or to refuse the requested rectification and promptly notifies its decision to the applicant and the International Bureau.  In case of a refusal, the competent authority should also inform the applicant and the International Bureau of the reasons for the refusal.  Where the competent authority has authorized the rectification of an obvious mistake under Rule 91, the document concerned shall be rectified in accordance with Sections 325, 413bis, 511 and 607 of the Administrative Instructions.  Where the rectification has been authorized by the receiving Office, the International Searching Authority or the International Bureau, the International Bureau publishes the rectified sheets as part of the international application if the authorization is received or given by the International Bureau before completion of technical preparations for international publication.  Where such authorization is received or given only after technical preparations have been completed, the International Bureau will republish the international application in accordance with Rule 48.2(i).  Where the rectification is authorized by the International Preliminary Examining Authority, the rectified sheets and the request for rectification of an obvious mistake submitted by the applicant are annexed to the IPRP (Chapter II of the PCT).

Rule 91.3(c)

11.042.   When does the rectification of an obvious mistake become effective?  If the mistake appears in the international application as filed, the rectification becomes effective as from the international filing date;  if the mistake appears in any document other than the international application as filed, including any mistake in a correction or any amendment to the international application, the rectification becomes effective as from the date on which that document was submitted.

Rule 91.3(d) Section 113(b)

11.043.   What can be done if the authorization of a rectification is refused?  If the authorization of a rectification is refused, the applicant may request the International Bureau, within two months from the date of the refusal, in writing, to publish the request for rectification, the reasons for refusal by the authority and any further brief comments that may be submitted by the applicant, together with the international application.  This request is subject to the payment at the same time of a special fee, the amount of which is indicated in Annex B (IB).  Once the request for rectification and the reasons for refusal have been published, the applicant may pursue it further before the designated Offices under their national law and practice for the rectification of obvious mistakes.  Refused requests for rectification are not annexed to the IPRP except in certain circumstances as set out in paragraph 10.076.

Rule 91.3(e)
and (f)

11.044.   What are the effects of the authorization of an obvious mistake on the designated and elected Offices?  Generally, designated and elected Offices must process the international application in the national phase “as rectified”, unless that designated or elected Office has already started the processing or examination of the international application before the date on which that Office is notified under Rule 91.3(a) by the International Bureau of the authorization of the rectification concerned.  Otherwise, a designated or elected Office may only disregard a rectification that was authorized under Rule 91.1 if it finds that it would not have authorized the rectification of the obvious mistake if it had been the competent authority. In the latter case, the designated Office may, however, only disregard any rectification that was authorized during the international phase, if it has given the applicant an opportunity to make observations, within a reasonable time limit, on the Office’s intention to disregard the rectification.


AMENDMENTS OF THE CLAIMS, DESCRIPTION AND DRAWINGS

Article 19
34(2)(b)

11.045.   How, and at what stages, may the claims, description and drawings in an international application be amended?  As described elsewhere in this text, during the international phase the applicant has one opportunity to amend the claims under Article 19 after receiving the international search report (see paragraphs 9.004 to 9.011).  Amendments may also be made under Article 34(2)(b) to the description, claims and drawings before and during the international preliminary examination procedure (see paragraphs 10.024 to 10.028, and 10.067 to 10.071).  Such amendments are in addition to the possibilities for correction of defects under Article 11 and Rule 20 (see paragraphs 6.024 to 6.026) and Article 14 and Rule 26 (see paragraph 6.032), and to the possibility for rectification of obvious mistakes under Rule 91.1 (see paragraphs 11.033 to 11.044).  Applicants are also guaranteed the opportunity to amend the international application for the purposes of the national phase by virtue of Articles 28 and 41 (see National Chapters).

Rule 46.3
55.3

11.046.   In what language should amendments be submitted during the international phase?  Concerning the language in which amendments of the claims under Article 19 must be submitted, see paragraphs 9.004 and 9.017 to 9.019;  concerning the language in which amendments of the description, claims and/or drawings under Article 34 must be submitted, see paragraph 10.071.

Article 19(2)
and (3)
34(2)(b)
Rule 66.2(a)(iv)
70.2(c)

11.047.   May amendments to the claims, description or drawings during the international phase introduce new matter into the international application?  Article 19(2) and Article 34(2)(b) both provide that amendments are not to go beyond the disclosure in the international application as filed. Compliance will not be checked during the international phase unless the applicant requests international preliminary examination.  If the International Preliminary Examining Authority considers that any amendments go beyond the original disclosure, it will comment accordingly in any written opinion of the International Preliminary Examining Authority and in the international preliminary report on patentability (Chapter II of the PCT), and the report will be established as if such amendment had not been made (see paragraphs 10.064(iv) and 10.070).  Compliance with the requirement may be important during the national phase, when it may be checked by the designated Offices, and non‑compliance may result at that stage in adverse consequences such as disallowance of the amendments or the according of a later filing date for any new matter claimed as a result of the amendments concerned.  On the other hand, if the national law applicable in a designated Office permits amendments to go beyond the disclosure in the application as filed, non-compliance with the requirement has no consequence in the State concerned.  Although customary in most national laws and contained in the European Patent Convention, the requirement is not one which – by virtue of the PCT – would bind any of the Contracting States.  It is contained in the PCT because most laws provide for it, and it therefore seems to be a useful warning to all applicants planning to make amendments in the international phase.

Article 19(1)
34(2)(b)
Rule 46.5(b)(iii)
66.8
70.2(c-bis)

11.047A. What happens where the claims, description or drawings have been amended, but the replacement sheets were not accompanied by a letter? The PCT requires that replacement sheets submitted with Article 19 or Article 34 amendments must be accompanied by a letter indicating the basis for the amendment in the application as filed (see paragraph 9.005, 9.006 and 10.071). Substantive compliance with this requirement is not checked during the international phase unless the applicant requests international preliminary examination. If the International Preliminary Examining Authority finds that the replacement sheets were either not accompanied by such a letter or that the letter failed to indicate the basis for the amendment, the International Preliminary Examining Authority may establish the international preliminary report on patentability (Chapter II of the PCT) as if such amendment had not been made. Compliance with this requirement may also be important during the national phase, when it may be checked by the designated Offices, and failure to comply may result in disallowance of the amendments.


WITHDRAWALS

Rule 90.4(e)
90.5(d)
90bis.1
90bis.5

11.048.   Can the applicant withdraw the international application?  The applicant may withdraw the international application by a notice addressed to the International Bureau or to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority, and received before the expiration of 30 months (see paragraph 5.005) from the priority date.  Any such withdrawal is free of charge.  A notice of withdrawal must be signed by all the applicants.  An appointed agent or appointed common representative may sign such a notice on behalf of the applicant or applicants who appointed him, but an applicant who is the “deemed common representative” (see paragraph 11.006) may not sign such a notice on behalf of the other applicants.  Where an Office or Authority has waived the requirement that a separate power of attorney, or a copy of a general power of attorney, has to be furnished, the waiver does not apply in respect of any notice of withdrawal.

Rule 90bis.1(c)

11.049.   How can international publication be prevented? The applicant may prevent international publication by withdrawing the international application, provided that the applicant submits a notice of withdrawal and that the notice of withdrawal reaches the International Bureau before the completion of technical preparations for that publication (see paragraph 9.013). The notice of withdrawal may state that the withdrawal is to be effective only on the condition that international publication can still be prevented. In such a case the withdrawal is not effective if this condition cannot be met – that is, if the technical preparations for international publication have already been completed. The same effect may possibly be achieved if, for example through non-payment of the applicable fees, the international application is considered withdrawn and the receiving Office so declares (Form PCT/RO/117). Issuance of this declaration by the receiving Office alone, however, will not prevent international publication unless the declaration is also received by the International Bureau before completion of technical preparations for international publication (Rule 29.1(v)).

International publication may be postponed by withdrawing the priority claim as outlined in paragraphs 11.050 and 11.057.

Rule 90bis.2
90bis.5

11.050.   Can the applicant withdraw designations?  The applicant may withdraw the designation of any State, and in respect of any kind of protection available, or only in respect of some of the kinds of protection available, by a notice addressed to the International Bureau or to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority, and received before the expiration of 30 months (see paragraph 5.005) from the priority date.  Any such withdrawal is free of charge.  A notice of withdrawal must be signed by all the applicants.  An appointed agent or appointed common representative may sign such a notice on behalf of the applicant or applicants who appointed him, but an applicant who is the "deemed common representative" (see paragraph 11.006) may not sign such a notice on behalf of the other applicants.

Rule 90bis.2(a)

11.051.   Withdrawal of the designation of a State which has been elected for the purposes of international preliminary examination automatically results in withdrawal of the corresponding election.

Rule 90bis.2(b)

11.052.   Where a State has been designated for the purposes of obtaining both a national patent and a regional patent (see paragraphs 4.022 to 4.026, and 5.052 to 5.053), withdrawal of the designation of that State is taken to mean withdrawal only of the designation for the purpose of obtaining a national patent, unless otherwise indicated.  In practice, the applicant should always make it clear which of the designations is intended to be withdrawn.

Rule 90bis.2(c)

11.053.   If all designations are withdrawn, the international application itself will be treated as withdrawn.

Rule 90bis.2(e)

11.054.   A designation will not be published if the notice of its withdrawal reaches the International Bureau before the technical preparations for international publication have been completed (see paragraph 9.013).

11.055.   Where the international application indicates different applicants for different designated States, the withdrawal of a designation may result in the applicant for the designation which is withdrawn being no longer an applicant for any designated State.  In such a case, replacement sheets for the request indicating only the remaining applicants, namely those for the States the designations of which have not been withdrawn, should be furnished together with the notice of withdrawal.  Should the applicant fail to submit a replacement sheet, the request is corrected by the receiving Office or by the International Bureau.  Whichever authority makes the correction notifies the other and the applicant accordingly.

Rule 90bis.3
90bis.5

11.056.   Can the applicant withdraw priority claims made in the international application?  The applicant may withdraw a priority claim made in the international application by a notice addressed to the International Bureau or to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority, and received before the expiration of 30 months (see paragraph 5.005) from the priority date.  Any or all of the priority claims may be so withdrawn.  Any such withdrawal is free of charge.  A notice of withdrawal must be signed by all the applicants.  An appointed agent or appointed common representative may sign such a notice on behalf of the applicant or applicants who appointed him, but an applicant who is the “deemed common representative” (see paragraph 11.006) may not sign such a notice on behalf of the other applicants.

Rule 90bis.3(d)
and (e)

11.057.   Where the withdrawal of a priority claim causes a change in the priority date of the international application, any time limit which is computed from the original priority date and which has not yet expired – for example, the time limit before which processing in the national phase cannot start – is computed from the priority date resulting from the change.  (It is not possible to extend the time limit concerned if it has already expired when the priority claim is withdrawn.)  However, if the notice of withdrawal reaches the International Bureau after the completion of the technical preparations for international publication, the International Bureau may proceed with the international publication on the basis of the time limit for international publication as computed from the original priority date.

Rule 90bis.3bis

11.058.   Can the applicant withdraw a supplementary search request? The applicant may withdraw a supplementary search request at any time prior to the date of transmittal to the applicant of the supplementary international search report or the declaration that no such report will be established. However, withdrawal of the request will only result in a refund of any fees paid if the International Bureau has not yet transmitted any document to the Authority specified for supplementary search. A notice of withdrawal may be addressed either to the International Bureau or to the Authority specified for supplementary search, and the withdrawal will be effective on receipt of the notice by that Authority or the International Bureau. However, if the notice does not reach the Authority specified for supplementary search in sufficient time to prevent the transmittal of the report or declaration, the report or declaration will still be communicated to each designated Office as required. Where there are two or more supplementary search requests that have been submitted in respect of the same international application, the notice must specify which, of any such requests, is intended to be withdrawn.

11.059.   The notice of withdrawal of the supplementary search request must be signed by the applicant or, if there are two or more applicants, by all of them, or by the agent or common representative whose appointment has been effected by each applicant signing, at his choice, the request, the supplementary search request, the demand, or a power of attorney.

Article 37
Rule 90bis.4
90bis.5

11.060.   Can the applicant withdraw the demand for international preliminary examination or the election of any State?  The applicant may withdraw the demand or the election of any State at any time prior to the expiration of 30 months from the priority date by a notice addressed to the International Bureau.  Any such withdrawal is free of charge.  A notice of withdrawal must be signed by all the applicants.  An appointed agent or appointed common representative may sign such a notice on behalf of the applicant or applicants who appointed him, but an applicant who is the “deemed common representative” (see paragraph 11.006) may not sign such a notice on behalf of the other applicants.

Article 37(4)

11.061.   In respect of designated Offices which do not apply the 30-month time limit, the applicant should exercise care in withdrawing the demand or elections after the expiration of the time limit under Article 22 for entry into the national phase, since such withdrawal is treated in each of the elected States concerned as a withdrawal of the international application for that State unless the national phase has already started in that State.  If withdrawal of the demand or elections is effected before the expiration of that time limit, however, the international application will not be considered withdrawn, but the applicant will, of course, have to take the usual steps before the expiration of that time limit to enter the national phase (see paragraph 5.005 and National Phase, paragraph 3.001).  For further details, see Article 37(4).


COMPUTATION OF TIME LIMITS

Rule 80

11.062.   What are the rules concerning the computation of time limits?  There are detailed provisions in Rule 80 concerning the computation of time limits (whether expressed in years, months or days), including the case where a time limit expires on a non-working day.  The days which are non-working days for the International Bureau are published periodically in the Official Notices (PCT Gazette) and in the PCT Newsletter.  The PCT Time Limit Calculator is designed to assist applicants in computing PCT time limits and is available on the WIPO website at:  www.wipo.int/pct/en/calculator/pct-calculator.html. International applications or other documents may be filed up to midnight Geneva time and receive the date of the day it was received (irrespective of whether it is filed by fax, online, etc.).  Please note that the last page must have been received before midnight Geneva time (Central European time);  see Rule 80.4.  Where a period starts on the date of a notification, that period may be extended if the notification was actually mailed on a later date or was received more than seven days after the date it bears;  see Rule 80.6 for details.  For computation of time limits based on the priority date in cases where the priority claim is withdrawn, see paragraph 11.057.


IRREGULARITIES IN THE MAIL SERVICE

Article 48(1)
Rule 82.1

11.063.   Can a delay or loss in the mail be excused?  Rule 82 contains detailed provisions governing the situation where a letter arrives late or gets lost due to irregularities in the mail service, for example, because the mail service was interrupted due to a strike.  The provisions operate to excuse failure to meet a time limit for filing a document for up to six months after the expiration of the time limit concerned, provided that the document was mailed at least five days before the expiration of the time limit.  In order to take advantage of these provisions, the mailing must have been by registered airmail or, where surface mail would normally arrive at the destination concerned within two days of mailing, by registered surface mail.  Evidence is required to satisfy the Office or organization concerned, and a substitute document must be filed promptly – see Rule 82.1(b) and (c) for details.

Rule 82.1(d)
and (e)

11.064.   Can a delay or loss be excused where a delivery service is used?  Some national Offices and intergovernmental organizations also apply these provisions where a delivery service other than the postal authorities is used to mail documents or letters – see Rule 82.1(d) and (e) for details, and Annexes B for information about which Offices and organizations recognize use of delivery services for this purpose, and in what circumstances Rule 82.1 will apply to such use.


EXCUSE OF DELAY IN MEETING TIME LIMITS

Rule 82quater
Section 111

11.065.   Can a delay in meeting time limits caused by “force majeure” circumstances be excused?  The provisions of Rule 82quater provide a basis for a general excuse of delay in meeting time limits before Offices, Authorities or the International Bureau during the international phase, when resulting from force majeure circumstances like war, revolution, civil disorder, strike, natural calamity or other like reason in the locality where the applicant resides, has his place of business or is staying.  The excuse of delay only applies to time limits fixed in the Regulations and therefore it neither applies to the priority period, since the priority period is set by Article 4C of the Paris Convention (for restoration of the right of priority see paragraphs 5.062 to 5.068), nor to the time limit for entering the national phase in accordance with Articles 22 and 39 (see paragraphs 5.005 and 5.006).

11.065A.   What steps must be taken when an applicant fails to meet a time limit?  The applicant must take the relevant actions (submission of documents, responses to invitations or the payment of fees) as soon as reasonably possible.  Generally, this means within a short period of the cause of the delay ceasing to apply.  For example, in cases where a strike prevented an agent from reaching his office, it would be expected that the action should, in most cases, be taken either the next working day or shortly thereafter, depending on how much preparatory work had been disrupted.  On the other hand, where a disaster has resulted in the complete destruction of an agent’s files, it would reasonably be expected to take longer to reassemble all the necessary documents and systems to allow the necessary action to be taken.  The request for the excusing of the delay and the relevant evidence must be submitted to the competent Office or Authority or the International Bureau as soon as reasonably possible and, in any case, not later than six months after the expiration of the applicable time limit.


FILING OF LETTERS, DOCUMENTS AND PAPERS

Rule 12.1
55.2
92
Section 104

11.066.   What are the rules concerning the filing of letters, documents and papers?  There are detailed provisions in Rule 92 concerning letters, documents or papers submitted by the applicant in the course of the international procedure:  letters must be signed;  any other paper submitted must be accompanied by a letter;  letters and documents from the applicant to the receiving Office, the International Searching Authority, the Authority specified for supplementary search, and the International Preliminary Examining Authority must generally be in the language of the international application or, where a translation of the international application has been transmitted or furnished for the purposes of the international search, supplementary international search, international publication or international preliminary examination (see paragraphs 5.013, 6.020, 8.012, 9.018 and 10.011), in the language of that translation.  However, any letter addressed to the International Bureau must be in English or French.  As to the language of any amendments to the claims under Article 19 (and their accompanying statement), see paragraphs 9.004 and 9.007.  As to the language of the demand and of any amendments under Article 34, see paragraphs 10.013 and 10.071.

Rule 92.4

11.067.   Can documents be filed by telegraph, teleprinter, facsimile machine, etc?  Rule 92.4 governs the use of telegraph, teleprinter, facsimile machine and other like means of communication resulting in the filing of a printed or written document.  These means of communication may only be used where the national Office or intergovernmental organization concerned is prepared to receive correspondence by these means.  Some Offices and organizations require, for certain or all kinds of documents, that a communication by such admitted means of communication must, in any event, be confirmed by the applicant within 14 days;  otherwise the communication may be considered not to have been made.  However, failure to comply with such a requirement may be waived in some cases.  Even where there is no standing requirement for originals to be furnished, an Office or organization may require the originals in any particular case.  Further details on these requirements are set out in Rule 92.4, and information as to the practice and requirements applied in particular Offices and organizations is given in Annexes B.

11.068.   Applicants should, before sending a document by a means of telecommunication, check in Annexes B to ascertain what the requirements of the addressee are.  Where the papers to be submitted are documents making up the international application or replacement sheets containing amendments or corrections to the international application, the original should in any event be mailed as a matter of course on the same or the following day.

Rule 92.4(d)

11.069.   Where an original is sent to an Office or organization of a document previously transmitted to that Office or organization by a means of telecommunication, the original must be accompanied by a letter identifying the date and means of the earlier transmission.

11.070.   If part or all of a document received by such means of transmission is illegible, or if part of the document is not received, the document is treated as not having been received to the extent that it is illegible or that the attempted transmission failed, and the Office or organization promptly notifies the applicant accordingly.

Section 109

11.071.   May a file reference be used in correspondence?  The applicant or his agent may mark a file reference in the box provided for that purpose on the first sheet of the request form (see paragraph 5.017), on each page of the other elements of the international application (see paragraphs 5.105, 5.124 and 5.129), on the first sheet of the supplementary search request form (see paragraph 8.013), on the first sheet of the demand form (see paragraph 10.015), and in any other correspondence relating to the international application.  The file reference may be composed either of letters of the Latin alphabet or Arabic numerals, or both.  It may not exceed 12 characters.  The receiving Office, the International Bureau, the International Searching Authority, the Authority specified for supplementary search and the International Preliminary Examining Authority will use the file reference in correspondence with the applicant.


CONFIDENTIALITY OF INTERNATIONAL APPLICATIONS

Article 30
38
Rule 94.1(a)

11.072.   To what extent are international applications treated as confidential?  An international application is confidential in relation to third parties until the international publication date, with only limited and specified exceptions (see Article 30).  The International Bureau will at any time, at the request of the applicant or any person authorized by the applicant, furnish copies of any document contained in its file, subject to reimbursement of the cost of the service.  An order for access made by a court with competent jurisdiction would be taken by the International Bureau as substituting for the applicant’s authorization.

Rule 17.2
48
94.1(b)

11.073.   After international publication, the international application itself is publicly available, as are any published amendments under Article 19 (see Rule 48.2(f)), the international search report (see Article 21(3) and Rule 48.2(a)(v)) (these elements are included in the published international application) and copies of priority documents (noting the exceptions mentioned in paragraph 9.023;  see Rule 17.2).  Additionally, in respect of international applications filed on or after 1 July 1998, the International Bureau will, after international publication, furnish copies of any document contained in its file at the request of any person and upon reimbursement of the cost of the service, but subject to the restrictions imposed by Article 38 in respect of documents relating to the international preliminary examination.

Article 36(3)(a)
38
Rule 94.1
94.2
94.3

11.074.   To what extent is the international preliminary examination confidential?  Where the applicant requests international preliminary examination, Article 38 expressly provides that the International Bureau and the International Preliminary Examining Authority may not allow unauthorized access to the file of the international preliminary examination.  Access by third parties to papers relating to the international preliminary examination held in the files of the International Bureau and the International Preliminary Examining Authority thus will be permitted only if that is requested or authorized by the applicant.  Once the international preliminary report on patentability (Chapter II of the PCT) has been established, the report is communicated to elected Offices.  Third parties may be able, if the national law applicable by an elected Office so provides or permits, to gain access to the report as part of the application file of the elected Office.  Furthermore, the International Bureau will, if so requested by an elected Office (details of such requests are published in the Official Notices (PCT Gazette)), furnish copies of the international preliminary report on patentability (Chapter II of the PCT) on behalf of an elected Office that has made such a request.  After the international preliminary report on patentability (Chapter II of the PCT) has been established, elected Offices may gain access to the file of the International Preliminary Examining Authority.  In addition, in respect of international applications filed on or after 1 July 1998, an elected Office may, in turn, allow access by any person to documents on its file which relate to the international preliminary examination.  Such access may be allowed only to the same extent as provided by the national law for access to the file of a national application, and may not be given before the international publication of the international application.  The furnishing of copies of documents may be subject to reimbursement of the cost of the service.


REFERENCES TO DEPOSITED BIOLOGICAL MATERIAL

Rule 13bis.1
48.2(a)(viii)

11.075.   When must an international application include a reference to biological material and/or to its deposit with a depositary institution?  The PCT does not require the inclusion of such a reference in an international application;  it merely prescribes the contents of any “reference to deposited biological material” (defined as “particulars given … with respect to the deposit of biological material … or to the biological material so deposited”) which is included in an international application, and when such a reference must be furnished.  It follows that the applicant will see a need to make such a reference only when it is required for the purpose of disclosing the invention claimed in the international application in a manner sufficient for the invention to be carried out by a person skilled in the art – that is, when the law of at least one of the designated States provides for the making, for this purpose, of a reference to deposited biological material if the invention involves the use of biological material that is not available to the public.  Annex L lists those national (or regional) Offices of, or acting for, the Contracting States whose national law provides for the making of a reference to deposited biological material for the purposes of patent procedure;  those national (or regional) Offices whose laws do not provide for such references are indicated in Annexes B (in some cases together with information given by those Offices on the possibility of referring in the international application to deposits of biological material even though the applicable national law does not provide specially for it).  Where any indications are furnished separately from the description and are received by the International Bureau before the completion of technical preparations for international publication, the date of receipt by the International Bureau and the indication will be included in the published international application.

Rule 13bis.2

11.076.   What effect does the PCT give to such a reference?  A reference to deposited biological material made in accordance with the requirements of the PCT must be regarded by each of the designated Offices as satisfying the requirements of the national law applicable in that Office with regard to the contents of such references and the time for furnishing them.

Rule 13bis.5

11.077.   May the reference be made for the purposes of only some of the designated States?  A reference may be made for the purposes of all designated States or for one or only some of the designated States.  A reference is considered to be made for the purpose of all designated States unless it is expressly made for certain designated States only.  References to different deposits may be made for the purposes of different designated States.

Rule 13bis.3
12.1ter

11.078.   What are the indications which must be given in the reference with regard to the deposit of biological material?  There are two kinds of indication which may have to be given, namely:

(i)  indications specified in the PCT Regulations themselves;  and

(ii)  additional indications which have been notified by the national (or regional) Office of (or acting for) a State designated in the international application and which have been published in the Official Notices (PCT Gazette);  these additional indications may relate not only to the deposit of the biological material but also to the biological material itself (see paragraph 11.079).

The indications in the first category are:

(i)  the name and address of the depositary institution with which the deposit was made;

(ii)  the date of the deposit with that institution;  and

(iii)  the accession number given to the deposit by that institution.

Annex L sets out, for each national (or regional) Office, the additional indications (if any) in the second category which are required to be given.  These indications must be furnished both in the language in which the international application is filed and, where a translation of the international application is required under Rule 12.3(a) or 12.4(a), in the language of that translation.

Rule 13bis.3(a)(iv)
13bis.7(a)

11.079.   What are the indications concerning biological material itself which must be given in the reference?  The national laws of some of the national (or regional) Offices require that, besides indications concerning the deposit of biological material, an indication be given concerning the biological material itself, such as, for example, a short description of its characteristics, at least to the extent that this information is available to the applicant.  These requirements must be met in the case of international applications for which any such Office is a designated Office, provided that the requirements have been notified to the International Bureau and published in the Official Notices (PCT Gazette)Annex L indicates, for each of the national (or regional) Offices, the requirements (if any) of this kind which have been so notified and published.

Rule 13bis.4
13bis.7(a)(ii)

11.080.   At what time must the reference (with the indications which must be contained therein) be made?  If any indication is not included in a reference to deposited biological material contained in the international application as filed, it may be furnished to the International Bureau within 16 months from the priority date unless the International Bureau has been notified (and, at least two months prior to the filing of the international application, has published in the Official Notices (PCT Gazette)) that the national law applicable by a designated Office requires in relation to national applications that the indication be furnished earlier.  If any of the indications are furnished to the International Bureau after the expiration of 16 months from the priority date but before the technical preparations for international publication have been completed, those indications will be considered by any designated Office to have been furnished on the last day of the 16-month time limit.  If the applicant makes a request for early publication (see paragraph 9.014), all indications should be furnished by the time the request is made, since any designated Office may regard any indication not furnished when the request is made as not having been furnished in time.  Annex L specifies, for each national (or regional) Office whose national law requires a reference to deposited biological material to be furnished earlier than 16 months after the priority date, the applicable time limit(s) for furnishing such indications.

Rule 13bis.3(b)
13bis.4
48.2(a)(viii)

11.081.   What is the consequence of failure to furnish an indication on time?  No check is made in the international phase to determine whether a reference has been furnished within the prescribed time limit.  However, where the indications were received after the technical preparations for international publication have been completed, the International Bureau notifies the designated Offices of the  date(s) on which indications not included in the international application as filed were furnished to it.  Failure to include a reference to deposited biological material (or any indication required in such a reference) in the international application as filed, or failure to furnish it (or the indication) within the prescribed time limit, has no consequence if the national law does not require the reference (or indication) to be furnished in a national application.  Where there is a consequence, it is the same as that which applies under the national law.

Section 209

11.082.   Where should the reference be made?  To the extent that indications relating to the deposit of biological material are not given in the description, they may be furnished on a separate sheet, for which purpose Form PCT/RO/134 (see WIPO website at:  www.wipo.int/pct/en/forms/) should preferably be used.  That separate sheet may be filed after the international application is filed.  If the sheet is submitted when the international application is filed, a reference to it should be made in the check list contained on the last sheet of the request form (see website address above ).  Certain designated Offices require that the indications relating to the deposit of biological material must be included in the description at the time of filing (see Annex L) so the sheet, if submitted when the international application is filed, may need to be included as one of the sheets of the description;  otherwise the indications given in it will not be taken into account by those Offices in the national phase.  If the sheet is furnished to the International Bureau later (see paragraph 11.080), it must be enclosed with a letter.  Form PCT/RO/134 may also be prepared using the PCT-SAFE software (see paragraph 5.015).

Rule 13bis.7(b)

11.083.   How does the applicant decide on the depositary institution with which to deposit the biological material?  Each national (or regional) Office whose national law provides for deposits of biological material for the purposes of patent procedure notifies the International Bureau of the depositary institutions with which the national law permits such deposits to be made.  Information on the institutions notified by each of those Offices is published by the International Bureau in the Official Notices (PCT Gazette)Annex L indicates the institutions with which deposits may be made.

Rule 13bis.5(c)

11.084.   A reference to a deposit cannot be disregarded by a designated Office for reasons pertaining to the institution with which the biological material was deposited if the deposit referred to is one made with a depositary institution notified by that Office.  Thus, by consulting the Official Notices (PCT Gazette) (or Annex L), the applicant can be sure that he has deposited the biological material with an institution which will be accepted by the designated Office.

Rule 13bis.6

11.085.   Does a reference in an international application to the deposit of biological material involve the possibility of a sample being obtained by the International Searching Authority or the International Preliminary Examining Authority?  International Searching Authorities and International Preliminary Examining Authorities may not require the furnishing of a sample of deposited biological material for the purposes of international search or international preliminary examination, respectively.

Rule 13bis.6

11.086.   What possibility is there, when a reference is made in an international application to the deposit of biological material, of third persons obtaining a sample?  The furnishing of samples is governed by the national laws applicable in the designated Offices.  Rule 13bis.6, however, provides for the delaying of any furnishing of samples under the national law applicable in each of the designated (or elected) Offices until the start of the national phase, subject to the ending of this “delaying effect” brought about by the occurrence of either of the following two events:

(i) the applicant has, after international publication of the international application, taken the steps necessary to enter the national phase before the designated Office (see National Phase, paragraph 4.001);

(ii)  international publication of the international application has been effected, and that publication has the same effects, under the national law applicable in the designated Office, as the compulsory national publication of an unexamined national application (in other words, the international application has qualified for the grant of “provisional protection”);  for the Contracting States whose national laws provide for “provisional protection,” and the conditions which have to be met for an international application to qualify for that protection, see Annexes B.

11.087.   With respect to certain designated Offices (for instance, the European Patent Office), the applicant may take advantage of the procedure whereby, until the occurrence of a certain event, the biological material may be made available only by the issue of a sample to an expert nominated by the requester.  For details, see Annex L.


REQUIREMENTS FOR SEQUENCE LISTINGS

Rule 5.2
13ter
Section 208
Annex C of the Administrative Instructions

11.088.   What special requirements apply to nucleotide and/or amino acid sequences disclosed in international applications?  See paragraphs 5.099 to 5.104, 7.005 to 7.012, and 10.063.  See National Phase, paragraph 6.033 and National Chapters in relation to the national phase.


EXTENSION OF INTERNATIONAL APPLICATIONS
TO SUCCESSOR STATES OF FORMER CONTRACTING STATES

Rule 32.1(a)

11.089.   What is a successor State?  A successor State is a State whose territory was, before its independence, part of the territory of a PCT Contracting State that subsequently ceased to exist (the predecessor State), and which (successor State) has deposited with the Director General of WIPO a declaration indicating that the PCT continues to be applicable in that State (“declaration of continuation”).  As from the date of the deposit of such a declaration, the successor State may be designated in international applications.  Moreover, the effects of international applications filed during a certain period are extended to the successor State.

Rule 32.1(b)

11.090.   Which are the international applications whose effects are extended to a successor State? Rule 32 provides that the effects of any international application filed during a certain period are extended to a successor State, irrespective of which States have been designated in the international application.  This period, for those successor States whose date of independence is later than the date of the day following the last day of the existence of the predecessor State, begins on the day following the last day of the existence of the predecessor State and ends two months after the date on which the Director General notifies the Governments of the States party to the Paris Convention for the Protection of Industrial Property of the successor State’s declaration of continuation.  For those States whose date of independence is earlier than the date of the day following the last day of the existence of the predecessor State, the successor State may, in conjunction with its declaration of continuation, declare that the period referred to above starts on the date of its independence.

Rule 32.1(c)

11.091.   How will an applicant know that the effects of his international application have been extended to a successor State?  Information on any international application whose filing date falls within the applicable period (see paragraph 11.090) and whose effect is extended to the successor State shall be published by the International Bureau in the Official Notices (PCT Gazette).

Rule 32.2

11.092.   What is the effect of an extension?  A successor State is considered as having been designated in the international application on the international filing date.  The applicable time limits under Article 22 or 39(1) in relation to that State shall be extended until the expiration of at least six months from the date of the publication of the information under Rule 32.1(c) (see paragraph 11.091).  A successor State may fix time limits which expire later than the time limits given in the previous sentence of this paragraph and, if it does so, the International Bureau will publish this information in the Official Notices (PCT Gazette).

11.093.   The procedure for extension of the effects of international applications to certain successor States (as explained above) should not be confused with the extension of European patents to States which are bound by the PCT and which have Extension Agreements with the European Patent Organisation (see paragraph 5.054 and Annex B (EP)).


FILING OF REQUEST FORM PRINT-OUTS PRODUCED BY THE PCT-SAFE SOFTWARE

Article 11(1)
Rule 3.1
11.3
20
89ter
Section 102(i)

11.094.   Together with a paper copy of an international application, an applicant may prepare and file a request form print-out using the PCT-SAFE software (see paragraph 5.015).  An applicant who files a request form print-out prepared using the PCT-SAFE software and also files a copy of the abstract and the data contained on the request in electronic form may be eligible to receive a fee reduction (see paragraph 5.189 for details about the fee reduction for use of the PCT-SAFE software.  However, a diskette containing that data filed alone – without any corresponding application papers – does not meet the requirements for according an international filing date.  For information on what defects in request form print-outs prepared using the PCT-SAFE software do not affect the international filing date, see paragraph 6.033.  For information on how to correct defects in the filing of request form print-outs generated using the PCT-SAFE software, see paragraphs 11.095 to 11.101, below.  For further information on the PCT-SAFE software, to download the software, report bugs, resolve other problems and suggest improvements, please visit the PCT-SAFE website at www.wipo.int/pct-safe/en/.

Rule 3.1
11.3
89ter
Section 102(i)

11.095.   Can defects in the filing of request form print-outs generated using the PCT-SAFE software be corrected?  Although request form print-outs generated from the PCT-SAFE software are filed together with a computer diskette containing the request and abstract, it is the paper copy of the request and abstract which is the legally determinative version.  Thus, the general procedures for correction of defects in the paper applications should be followed (see paragraphs 6.024 to 6.056).  See paragraph 6.002 for details on the procedural steps at the receiving Office for request form print-outs prepared using the PCT-SAFE software.

11.096.   How should defects in the request form print-out generated using the PCT-SAFE software be corrected?  To correct a defect in such a request form print-out, the applicant should submit a replacement print-out of the entire request prepared using the PCT-SAFE software.  A correction which is stated in a letter and is not accompanied by a replacement print-out of the entire request prepared using the PCT-SAFE software is acceptable only if it is of such a nature that it can be transferred from the letter to the record copy without affecting the clarity and direct reproducibility of the sheet onto which the correction is to be transferred.  A replacement diskette should not be furnished when correcting defects in the request or abstract.

Article 11(1)
14(1)
Rule 20
89ter

11.097.   What happens where the receiving Office does not accept request form print-outs generated using the PCT-SAFE software?  If the receiving Office does not accept the filing of request form print-outs generated using the PCT-SAFE software but the request is filed in that format, the international application does not comply with the requirements of Article 14 and the receiving Office will invite the applicant to file a request which does comply with Article 14.  The international application in such cases is treated like any other international application containing a request which does not comply with the physical requirements under Article 14.  It should be noted that the use of the request form print-out generated using the PCT-SAFE software does not, of itself, have any adverse effect in connection with the according of an international filing date.

Rule 19.4(a)(iii)

11.098.   Instead of inviting the applicant to file an application in paper form, any receiving Office which does not accept the filing of request form print-outs generated using the PCT-SAFE software may decide to seek the authorization of the applicant to transmit the international application to the International Bureau as receiving Office under Rule 19.4(a)(iii) (see paragraph 6.035).

Article 12
14
Rule 89ter
Section 102(i)

11.099.   What happens when the request form print-out generated using the PCT-SAFE software is filed without a corresponding diskette?  The use of the PCT-SAFE software for generating the request form print-out is not permitted if the corresponding diskette is not filed together with the request.  Thus, if the applicant fails to provide a corresponding diskette when filing the request form print-out generated using the PCT-SAFE software, the applicant will be invited to furnish a request in paper form which complies with the requirements of Article 14.  Only if the applicant furnishes the diskette immediately after filing the request – that is, before the receiving Office transmits the record copy to the International Bureau – is the use of the PCT-SAFE software permissible and the fee reduction related to the use of the PCT-SAFE software applicable.  If the missing diskette is not filed before transmission of the record copy of the international application to the International Bureau, the applicant is not entitled to the fee reduction.

Article 11
12
Rule 3.1
11.3
89ter
Section 102(i)

11.100.   What happens when the request form print-out is not in the format provided by the PCT-SAFE software but it is filed with a corresponding diskette?  If the international application contains a request form print-out which is not in the format generated by the PCT-SAFE software, but is in another format such as Form PCT/RO/101, and a corresponding diskette is furnished together with the application papers, the applicant will be notified that the conditions for applying the fee reduction related to the use of the PCT-SAFE software are not satisfied and that the fee reduction is not applicable since the request form print-out is not in the format provided by the PCT-SAFE software.  However, if the applicant responds by furnishing the request form print-out in the format provided by the PCT-SAFE software before the receiving Office transmits the record copy to the International Bureau, the applicant is entitled to the appropriate fee reduction resulting from filing the application using the PCT-SAFE software.  A diskette filed alone, without any application papers, does not meet the requirements for according a filing date.

Section 102(i)

11.101.   What happens when the diskette is incomplete or defective?  A diskette must contain the appropriate data, including the text of the abstract, and be readable if the appropriate fee reduction related to the use the PCT-SAFE software is to apply.  If the receiving Office finds that a diskette contains incomplete data or is unreadable, the receiving Office will proceed as though the request form print-out in the format provided by the PCT-SAFE software had been filed without a diskette. 


LICENSING INDICATIONS

11.102.   How can applicants indicate their interest in licensing the invention(s) contained in their international application?  Applicants can file a request to that effect either (and preferably) by completing Form PCT/IB/382 “Request for indication of availability for licensing purposes” available at:  www.wipo.int/pct/en/forms/ib/editable/ed_ib382.pdf or by way of a letter addressed to the International Bureau.  Details of the licensing terms may also be included in the form or letter.  All such requests should be sent directly to the International Bureau which does not charge a fee for this service.

11.103.   When should a request for indication of availability for licensing purposes be filed?  Requests for indication of availability for licensing purposes can be submitted at any time until the expiration of 30 months from the priority date.

11.104.   Is it possible to file multiple licensing requests or modify those already filed?  Where applicants file multiple requests or want to modify those already filed, they must ensure their latest request is always a self-contained document, comprising complete information about any requests or modifications.

11.105.   In which language can the request for indication of availability for licensing purposes be filed?  Form PCT/IB/382 will shortly be available in all ten publication languages (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish) and the International Bureau is ready to accept the request for indication of availability for licensing purposes by way of a letter in any of those languages.

11.106.   How are licensing indications made available?  The processing of the licensing request by the International Bureau generates a statement in the bibliographic data indicating the applicant’s interest in concluding licensing agreements.  In addition, this is linked to the filed request for indication of availability for licensing purposes (either Form PCT/IB/382 or the letter containing the licensing indications) which is available, under a dedicated tab, in PATENTSCOPE.  Applicants are reminded that if they want to publish licensing indications in relation to their international application at a very early stage, they should also consider filing a request for early international publication as provided under Article 21(2)(b).

11.107.   Can the licensing indications be removed?  Applicants can request that the International Bureau remove the licensing indications from the “PCT Bibliographic Data” tab in PATENTSCOPE at any time during the international or national phase.  In addition, the processing of the request for removal of the licensing availability indications removes the dedicated “Licensing” tab in PATENTSCOPE.  Once removed, the licensing request and the related correspondence remain part of the file history under the related “Documents” tab in PATENTSCOPE.

11.108.   How can you search for international applications for which licensing indications are available?  In addition to being published with the international application to which it relates, the licensing indications are also a search criterion within PATENTSCOPE Search Service www.wipo.int/patentscope/search/en/structuredSearch.jsf allowing third parties to identify those applicants who have expressed their interest in licensing the invention(s) contained in their international application.  The search criterion can also be used in combination/multi-field searches and RSS feeds.


THIRD PARTY OBSERVATIONS

Section 801(a)
804(b)

11.109.   What is the third party observation system?  This system allows third parties to make observations through ePCT public services (https://pct.wipo.int/LoginForms/pctpublic.jsp) referring to prior art which they believe to be relevant to the question of whether the invention claimed in the international application is novel and/or involves an inventive step.  There is no fee for this service.  For a comprehensive user guide, see ePCT Third Party Observations (www.wipo.int/pct/en/epct/pdf/epct_observations.pdf)

Section 802(a)(ii)
804(b)

11.110.   What is the time limit for submitting observations?  Third party observations may be submitted at any time after the date of publication of the international application and before the expiration of 28 months from the priority date, provided that the application is not withdrawn or considered withdrawn.

Section 802(a)(i)

11.111.   How should observations be submitted by third parties?  All observations must be submitted through ePCT public services, either directly or through a link on the bibliographical data tab of the published international application.  The use of the system requires a standard WIPO user account (see https://pct.wipo.int/wipoaccounts/ePCT/public/register.jsf).  Each observation must include at least one citation that refers to a document published before the international filing date, or a patent document having a priority date before the international filing date, together with a brief explanation of how each document is considered to be relevant to the questions of novelty and/or inventive step of the claimed invention.  Observations should preferably be accompanied by a copy of each cited document.

Section 801(b)(i)

11.112.   Can third parties remain anonymous?  Yes, when a third party observation is submitted, the person making the observation may indicate that they wish to remain anonymous.

Section 802(a)(iii)
804(b)

11.113.   In what languages should observations be submitted?  Observations should be submitted in a language of publication (see paragraph 5.013), with the exception that copies of prior art documents may be in any language.

Section 804(b)

11.114.   Can the applicant comment on third party observations?  The applicant will be notified about the first published observation, and all subsequent observations will be promptly notified after the expiration of 28 months from the priority date.  The applicant may comment on third party observations until the expiration of 30 months from the priority date.  These comments must be submitted through ePCT private services or by sending a letter to the International Bureau.  All submissions via ePCT private services also require a digital certificate.  The applicant’s comments should be submitted in English, French or the language of publication of the international application.  The comments will be made publicly available on PATENTSCOPE.

Section 801(b)(iii)
801(b)(iv)

11.115.   What restrictions exist concerning third party observations?  A third party may only submit a single observation for any international application, and once submitted, it cannot be retracted or modified.  There is also an upper limit of ten observations per international application.

Section 802(b)
803(a)
804(a)

11.116.   How are observations processed?  Each observation will be examined by the International Bureau to determine if it is an observation on the questions of novelty and/or inventive step.  It will then be made publicly available on PATENTSCOPE.  It should be noted that only the observations and not the uploaded documents are made publicly available.  Uploaded documents are only made available to the applicant, the competent International Authorities and designated Offices.  If the observation is rejected by the International Bureau, the third party will be notified and provided with a reason.

Section 805

11.117.   Will third party observations be taken into account by the International Authorities and designated Offices?  Observations will be transmitted to any competent International Searching Authority, and/or International Preliminary Examining Authority involved in the processing of the application during the international phase, if the International Bureau has not yet received the international search report, supplementary international search report or international preliminary report on patentability (Chapter II of the PCT) respectively.  To the extent that the observations are received by those Authorities in time to be taken into account in drawing up their respective reports, any prior art referred to in the observations should be considered, provided that either a copy of the prior art is included, or it is otherwise immediately available to the examiner.  The observations will also be transmitted to the designated Offices promptly after the expiration of 30 months from the priority date.  The designated Offices are, however, not obliged to take them into account during national processing.