World Intellectual Property Organization

 

PCT NEWSLETTER

www.wipo.int/pct/en

December 2012 | No. 12/2012 

 

PCT Information Update

DE Germany (requirements concerning agent)

Further to the information published in PCT Newsletter No. 07-08/2012, there have been changes in the requirements as to who can act as agent before the German Patent and Trade Mark Office as designated (or elected) Office, as follows:

Who can act as agent?

In case an agent is required (because the applicant is a non-resident), any patent attorney or attorney-at-law1 resident in Germany or a national of a member State of the European Union or of a State party to the Agreement on the European Economic Area authorized to pursue certain professional activities (see Law on the Qualifying Examination for Gaining Admission to the Profession of Patent Attorney and Law on the Professional Activities of European Lawyers in Germany); otherwise, the above-mentioned persons and any natural person resident in Germany2

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

EE Estonia (filing of PCT-EASY requests together with PCT-EASY physical media)

For the purposes of filing, under Section 102bis(a) of the Administrative Instructions, PCT EASY requests together with PCT-EASY physical media, the Estonian Patent Office, in its capacity as receiving Office, has notified the International Bureau that it accepts the following PCT EASY physical media: 3.5 inch diskette, CD-R, CD-ROM, DVD or DVD-R.

(Updating of PCT Applicant’s Guide, Annex C (EE))

FR France (location and mailing address; fax number)

The location and mailing address and the fax number of the National Institute of Industrial Property (France) have changed with effect from 22 October 2012, as follows:

Location and mailing address:     15, rue des Minimes
                                                             92400 Courbevoie
                                                             France

Fax:                                                     (33) 1 56 65 86 00

(Updating of PCT Applicant’s Guide, Annex B1 (FR))

IL Israel (fees)

As from 1 January 2013, there will be a change in the amount of the following fees, payable to the Israel Patent Office as receiving Office:

Transmittal fee: ..............…………………………………………………….ILS 546

Fee for priority document: ………………………………....……………….ILS 86

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

For patent:

Filing fee: ………………………………………….........………….ILS 2,0003

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

SG Singapore (competent International Searching and Preliminary Examining Authorities)

The Intellectual Property Office of Singapore has specified, with effect from 1 December 2012, the Japan Patent Office, in addition to the Australian Patent Office, the Austrian Patent Office, the European Patent Office and the Korean Intellectual Property Office, as competent International Searching and Preliminary Examining Authority for international applications filed by nationals and residents of Singapore with the Intellectual Property Office of Singapore as receiving Office.

(Updating of PCT Applicant’s Guide, Annex C (SG))

US United States of America (Internet address; types of documents which can be sent by fax; deletion of warning about applicant/inventor provision; time when name and address of inventor must be given)

The United States Patent and Trademark Office has notified a change in the Internet address which contains PCT content, as follows:

Internet: http://www.uspto.gov/go/pct


The types of documents which may be sent by fax to the Office have also changed. All documents can now be so transmitted, except the following:

certified documents including priority documents; documents needed to receive an international filing date under PCT Article 11; authorizations charging the basic national fee to a deposit account; when necessary, a copy of the international application for entry into the national phase; documents directly related to a secrecy order.

As a consequence of the entry into force of changes to the US patent law under the Leahy Smith America Invents Act, the Office has deleted, under the heading “WARNING” in Annex B1 (US) of the PCT Applicant’s Guide, the provision according to which all applicants must be inventors to be entitled to file an international application designating the United States of America.

Furthermore, the Office has notified changes as to the time when the name and address of the inventor must be given if the United States of America is designated (or elected), as follows:

May be in the request or may be furnished later. If the data concerning the inventor is missing at the expiration of the time limit under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation.

(Updating of PCT Applicant’s Guide, Annex B1 (US))

Search fee and other fees relating to the international search (Japan Patent Office, Israel Patent Office)

A new equivalent amount has been established in SGD, with effect from 1 December 2012, for an international search carried out by the Japan Patent Office, as indicated in Fee Table I(b).

As from 1 January 2013, there will be a change in the amount of the following fee payable to the Israel Patent Office in its capacity as International Searching Authority:

Fee for copies of documents cited in the international
search report (PCT Rule 44.3), per document:  …………………….............…………....……………….ILS 43

(Updating of PCT Applicant’s Guide, Annex D (JP and IL))

Fees payable to the International Preliminary Examining Authority (Israel Patent Office)

As from 1 January 2013, there will be a change in the amount of the following fees payable to the Israel Patent Office in its capacity as International Preliminary Examining Authority:

Fee for copies of documents cited in the international
preliminary examination report (PCT Rule 71.2), per document:  ………………….......……………….ILS 43

Fee for copies of documents contained in the file of the
international application (PCT Rule 94.2), per document:  ………………………………....…...……….ILS 43

(Updating of PCT Applicant’s Guide, Annex E (IL))
 

______________________

1  The list of patent attorneys may be obtained from the Patentanwaltskammer (Chamber of Patent Attorneys), Postfach 260108, 80058 Munich, Germany, and the list of attorneys at law from the Bundesrechtsanwaltskammer (Chamber of Attorneys at Law), Littenstrasse 9, 10179 Berlin, Germany.

2  In accordance with the provisions of the Legal Services Act (Rechtsdienstleistungsgesetz – RDG).

3  A 40% reduction in the fee will be applicable for applications first filed in Israel for an individual applicant or for a corporate entity with a turnover of less than 10 million ILS in the last calendar year.

______________________________________ 

  • Receive notifications of the latest issue of the PCT Newsletter and other important PCT News Go
  • Back to Contents page

 

Explore WIPO