United Kingdom Intellectual Property Office (an Operating Name of the Patent Office): Problems Concerning Fee Payable under PCT Rule 12bis.1(c)

It is recalled that, under PCT Rule 12bis, applicants may request that the International Searching Authority (ISA) take into account the results of an earlier search.  PCT Rule 12bis.1(c) provides that, if the receiving Office (RO) carried out the earlier search, the applicant may request the RO to prepare and transmit to the ISA a copy of

(a)     the results of the earlier search;

(b)     the earlier application; and/or

(c)     any document cited in the results of the earlier search.

Note that the fee of GBP 5, which the United Kingdom IPO introduced in the case of situation (b), above, and was notified in PCT Newsletter No. 07‑08/2009, is not payable in situations (a) and (c).  Although this fee has been incorporated into the PCT‑SAFE software, as well as the European Patent Office (EPO) Online Filing software, please note that when calculating the fees payable, the software does not currently distinguish between the three options and will therefore automatically charge a fee of GBP 5, even in the two cases where no fee is required. 

The International Bureau (IB) is reviewing the fee payment practice for earlier search documents, and it is expected that the above-mentioned distinction will be taken into account in a future release of PCT‑SAFE and of the EPO Online Filing software.  In the meantime, if the applicant pays this fee unnecessarily, the IPO will refund it to the applicant.

Further information was published in the IPO’s Patent Journal Notice No. 6285 on 4 November 2009 at:

http://www.ipo.gov.uk/2009-6285-special.pdf

Any queries to the IPO should be addressed to Mr. Phil Jones, Patent International Filings Manager by e-mail at: phil.jones@ipo.gov.uk or by telephone: +44 1633 81 49 33.