PCT Information Update

AG Antigua and Barbuda (competent International Searching and Preliminary Examining Authorities)

The Intellectual Property and Commerce Office (Antigua and Barbuda), in its capacity as receiving Office, has specified, with effect from 14 April 2010, the Canadian Intellectual Property Office as competent International Searching and Preliminary Examining Authority for international applications filed by nationals and residents of Antigua and Barbuda.

AT Austria (fees)

As from 1 July 2010, there will be a change in the amount of the fee for priority document, which will change from a page-dependent fee to a flat-rate fee, payable to the Austrian Patent Office as receiving Office, as follows:

Fee for priority document:                                   EUR    100

The amount of the following fees, payable to the Office as designated (or elected) Office, will also change with effect from the same date:

For patent:

Document fee (Schriftengebühr):         EUR    50

For utility model:

Document fee (Schriftengebühr):         EUR    50

(Updating of PCT Applicant’s Guide, Annex C (AT) and National Chapter, Summary (AT))

EP European Patent Office (special requirements for entry into the national phase)

The European Patent Office, in its capacity as designated (or elected) Office, has notified a new special requirement under PCT Rule 51bis:  the Office may require the address, nationality and residence of the applicant if they have not been furnished in the “Request” part of the international application.

(Updating of PCT Applicant’s Guide, National Chapter, Summary (EP))

GB United Kingdom (requirements concerning agent;  deposits of microorganisms and other biological material; fees)

There has been a change in the requirements as to who can act as agent before the United Kingdom Intellectual Property Office (an operating name of the Patent Office) as receiving Office, as follows:

Any individual, partnership or body corporate who resides in or has a place of business in the United Kingdom, the Isle of Man or another Member State of the European Economic Area (EEA).  A list of registered patent attorneys may be obtained from the following address:  The Registrar, c/o The Chartered Institute of Patent Attorneys, 95 Chancery Lane, London WC2A 1DT

The text of Annex L concerning the requirements of the Office with regard to the making of deposits of microorganisms and other biological material has changed, as follows:

Deposits may also be made for the purposes of patent procedure before the United Kingdom Intellectual Property Office with “any depositary institution anywhere in the world.” It is the responsibility of the applicant to select the depositary institution with which he wishes to make his deposit and to ensure that samples of the culture deposited will be made available in accordance with Rule 13(1) of and Schedule 1 to the UK Patents Rules 2007. The applicant may give notice in writing to the International Bureau before technical preparations for publication of the international application are completed that a sample should be made available only to an expert.

Warning:  Where the invention involves the use of or concerns biological material which is not available to the public at the date of filing the application and which has been deposited by a person other than the applicant, the applicant must supply, earlier than 16 months from the priority date (or, if earlier, not later than a request for early publication), the name and address of the depositor and must file a statement by the depositor authorizing the applicant to refer to the deposited material in the application and giving his unreserved and irrevocable authorization to the deposited material being made available to the public in accordance with Schedule 1 to the UK Patents Rules 2007.

The amounts of the following national fees, payable to the Office as designated (or elected) Office, have changed:

Search fee:

– where a search has already been made by an
International Searching Authority in accordance
with the PCT:                                                                    GBP                120

– in other cases:                                                              GBP                150

Substantive examination fee:                                                     GBP                100

The following text has been added regarding reductions in the national fee:

GBP 20 reduction in the search fee or examination fee where the request for search or substantive examination is filed in electronic form using a method of electronic communication accepted by the Office. ¹

The Office, in its capacity as designated (or elected) Office, has deleted the following requirement under PCT Rule 51bis:

Translation of priority document into English, or declaration that the international application is a complete translation of the priority document into English.

(Updating of PCT Applicant’s Guide, Annexes C (GB), Annex L and National Chapter, Summary (GB))

IS Iceland (filing of PCT-EASY requests together with PCT-EASY physical media;  restoration of the right of priority:  criterion applicable and fees)

For the purposes of filing PCT-EASY requests together with PCT-EASY physical media, the Icelandic Patent Office as receiving Office has notified the International Bureau (IB) that it accepts the following PCT-EASY physical media:  

- 3.5 inch diskette

- CD-R

- CD-ROM

- DVD

- DVD-R

The Office, in its capacity as receiving Office and designated (or elected) Office, has also notified the IB under PCT Rules 26bis.3(i) and 49ter.2(g) that, in respect of requests for the restoration of the right of priority, it applies the “due care” criterion, and that the fee for requesting the restoration of the right of priority, payable to it in its capacity as receiving Office or designated (or elected) Office is ISK 20,000.

In accordance with a special agreement, the Danish Patent and Trademark Office carries out search and examination on Icelandic patent applications.  The Icelandic Patent Office has informed the IB that it may also take into consideration searches and examinations carried out by other patent Offices.

(Updating of PCT Applicant’s Guide, Annex C (IS) and National Chapter (IS))

Search fee (Australian Patent Office, Austrian Patent Office, Canadian Intellectual Property Office (corrigendum), Federal Service for Intellectual Property, Patents and Trademarks (Rospatent))

As from 1 July 2010, there will be changes in the equivalent amounts payable in the currencies specified below for international searches carried out by the following Offices:

Australian Patent Office                                                NZD

Austrian Patent Office                                                   KRW  

Federal Service for Intellectual Property, Patents
and Trademarks (Rospatent)                                     EUR

Furthermore, as from 1 August 2010, there will be a change in the equivalent amount payable in EUR for an international search carried out by the Australian Patent Office.

The above-mentioned changes are indicated in Fee Table I(b).

(Updating of PCT Applicant’s Guide, Annex D (AT, AU and RU))

Please note that the change in the equivalent amount payable in EUR for an international search carried out by the Canadian Intellectual Property Office will enter into effect on 15 May 2010, and not on 1 June 2010, as was indicated in PCT Newsletter No. 04/2010, page 3.

Supplementary search fee (European Patent Office)

The equivalent amount payable in CHF for a supplementary international search carried out by the European Patent Office has been established, with effect from 1 July 2010:

Supplementary search fee   CHF                2,628

 

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1         See http://www.ipo.gov.uk/p-apply-online.htm for further details of the methods of electronic filing accepted by the Office.