World Intellectual Property Organization

PCT NEWSLETTER

www.wipo.int/pct/en

October 2014 | No. 10/2014

 

PCT Information Update

AM Armenia (telephone number)

The telephone numbers of the Intellectual Property Agency of the Republic of Armenia have changed to: (374-11) 59 75 34, 59 75 30

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

AU Australia (fees)

As from 1 December 2014, there will be a change in the equivalent amounts of the international filing fee and the fee per sheet over 30, payable in AUD to the Australian Patent Office as receiving Office, as well as a change in the equivalent amounts in AUD of the applicable fee reductions listed in item 4 of the Schedule of Fees, as indicated in Fee Table I(a).

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

BE Belgium (provisions concerning international-type search)

There has been a change in the provisions of the law of Belgium concerning international type search. The relevant provisions are now: Article XI.23, paragraph 10, of the Code of Economic Law.

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

CL Chile (fees, information on requirements of the Office as International Searching and Preliminary Examining Authority)

Further to the notification by the National Institute of Industrial Property (Chile) that it will start functioning as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) with effect from 22 October 2014, information on the fees payable to the Office as well as the requirements of the Office is now available in the PCT Applicant’s Guide, Annexes D and E at, respectively:

http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexd/ax_d_cl.pdf

http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexe/ax_e_cl.pdf

Also, the amounts of the following fees that will be payable to the Office as ISA and IPEA with effect from 22 October 2014 are included in the PCT Fee Tables:

– Search fee (in USD, CHF and EUR)

– Preliminary examination fee (in USD)

– Handling fee (in USD)

CR Costa Rica (criterion applied for requests for restoration of the right of priority; national provisions)

The Registry of Industrial Property (Costa Rica), in its capacity as receiving Office and designated (or elected) Office, has notified the International Bureau (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 will apply only the “due care” criterion with effect from 15 November 2014.

The Office has also notified the provisions of the law of Costa Rica concerning national fees and who can act as agent. The relevant provisions are, respectively:

Law No. 6867 on Patents, Industrial Designs and Utility Models, Article 33(a) and Regulations to the Law on Patents, Industrial Designs and Utility Models, Article 47

Law No. 6867 on Patents, Industrial Designs and Utility Models, Article 34

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

EA Eurasian Patent Office (fees; agents)

Further to the information published in PCT Newsletter No 09/2014 concerning the preparedness of the Eurasian Patent Office to receive and process international applications in electronic form with effect from 1 September 2014, equivalent amounts, payable in USD to the Eurasian Patent Office as receiving Office, have now been established for the electronic filing fee reductions listed in item 4 of the Schedule of Fees, and are included in Fee Table I(a).

The Office has notified the IB that the list of registered patent attorneys who can act as agents is available at:

http://www.eapo.org/en/attorneys.php

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

EE Estonia (criterion applied in respect of requests for restoration of the right of priority)

The Estonian Patent Office, in its capacity as receiving Office and designated (or elected) Office, has 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 now applies the “due care” criterion instead of the “unintentional” criterion.

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

EG Egypt (filing of PCT-EASY requests together with PCT-EASY physical media, fees)

The Egyptian Patent Office, in its capacity as receiving Office, has notified the IB that it no longer accepts international applications with requests in PCT-EASY format. Consequently, the corresponding reduction under item 4 of the PCT Schedule of Fees no longer applies.

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

GE Republic of Georgia (competent International Searching and Preliminary Examining Authorities)

The National Intellectual Property Center of Georgia (Sakpatenti) has specified, with effect from 1 January 2015, the Israel Patent Office (ILPO), in addition to the Austrian Patent Office, the European Patent Office, the Federal Service for Intellectual Property (Rospatent) (Russian Federation) and the United States Patent and Trademark Office (USPTO), as competent International Searching and Preliminary Examining Authority for international applications filed in English by nationals and residents of Georgia with the National Intellectual Property Center as receiving Office. The ILPO will be competent provided that the application concerned does not contain one or more claims relating to the field of technology indicated under the International Patent Classification as:

G06Q – Data processing systems or methods, specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes; Systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes, not otherwise provided for.

The Agreement between the ILPO and the International Bureau of WIPO in relation to the functioning of the ILPO as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty will be updated accordingly on 1 January 2015 at:

http://www.wipo.int/pct/en/texts/agreements/ag_il.pdf

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

IS Iceland (fees)

As from 1 December 2014, there will be a change in the amounts of the following national fees, payable to the Icelandic Patent Office as designated (or elected) Office:

Application fee: ........................................................................................ISK 56,000

Claim fee for each claim in excess of 10: .................................................ISK 3,500

Additional fee for late furnishing of translation: ....................................ISK 15,000

Annual fees for the first three years: ........................................................ISK 28,500

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

MY Malaysia (electronic filing)

For information on the acceptance by the Intellectual Property Corporation of Malaysia as receiving Office of international applications filed using the ePCT-Filing function in the ePCT Portal, as well as its announcement concerning the ceasing of its acceptance of applications filed using the PCT-SAFE software, see “Electronic Filing and Processing of International Applications”, above.

NZ New Zealand (fees)

For information on the acceptance by the Intellectual Property Office of New Zealand as receiving Office of international applications filed using the ePCT-Filing function in the ePCT Portal, as well as information on the electronic filing fee reductions listed in item 4 of the Schedule of Fees that are now applicable, see “Electronic Filing and Processing of International Applications”, above.

SK Slovakia (filing of PCT-EASY requests together with PCT-EASY physical media; fees)

The Industrial Property Office (Slovakia) has notified the IB that it no longer accepts 3.5 inch diskettes for the purposes of filing PCT-EASY requests together with PCT-EASY physical media.

The amount of the fee for priority document, payable to the Office as receiving Office, is now as follows: EUR 20.

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

US United States of America: clarification about the specification by the USPTO of the Israel Patent Office as International Searching and Preliminary Examining Authority

Reference is made to the specification of the Israel Patent Office (ILPO) by the United States Patent and Trademark Office (USPTO) as competent International Searching and Preliminary Examining Authority for certain international applications filed by nationals and residents of the United States of America with the USPTO as receiving Office (RO/US), with effect from 1 October 2014. Given that, for the moment, the ILPO will only accept a maximum of 75 international applications per fiscal quarter, the availability of ILPO as International Searching Authority (ISA/IL) is limited to US applicants who file at RO/US; for a transitional period, it will not be available as an ISA for US applicants filing at the International Bureau as receiving Office (RO/IB).

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

Search fee (Austrian Patent Office, Australian Patent Office, Federal Service for Intellectual Property (Rospatent) (Russian Federation), Korean Intellectual Property Office, National Institute of Industrial Property (Chile))

For information on the fees that will be payable, with effect from 22 October 2014, to the National Institute of Industrial Property (Chile) for an international search, see “CL Chile”, above.

As from 1 November 2014, 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 ............................................................CHF, EUR

Korean Intellectual Property Office ..........................................CHF, EUR

As from 1 December 2014, there will be changes in the equivalent amounts payable in the currencies specified below for international searches carried out by the following Offices:

Austrian Patent Office ..............................................................KRW, SGD, USD

Federal Service for Intellectual Property (Rospatent)
(Russian Federation) ................................................................USD

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

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

Preliminary examination fee (National Institute of Industrial Property (Chile))

For information on the fees that will be payable, with effect from 22 October 2014, to the National Institute of Industrial Property (Chile) for international preliminary examination, see “CL Chile”, above.

Handling Fee (Australian Patent Office, Korean Intellectual Property Office, National Institute of Industrial Property (Chile))

For information on the handling fee that will be payable, with effect from 22 October 2014, to the National Institute of Industrial Property (Chile), see “CL Chile”, above.

As from 1 December 2014, there will be changes in the equivalent amounts of the handling fee, payable in AUD to the Australian Patent Office and in KRW to the Korean Intellectual Property Office as International Preliminary Examining Authorities. The new amounts will be AUD 237 and KRW 222,000, respectively.

(Updating of PCT Applicant’s Guide, Annex E (AU) and (KR)

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