PCT NEWSLETTER

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November 2016 | No. 11/2016

 

Notifications of Incompatibility under PCT Rule 23bis.2(b) and (e)

It is recalled that in October 2015, the PCT Assembly adopted new PCT Rule 23bis concerning the transmittal by the receiving Office of documents relating to earlier search or classification to the International Searching Authority (ISA), which will enter into force on 1 July 2017.  New PCT Rule 23bis.2(a) states:

“For the purposes of Rule 41.2, where the international application claims the priority of one or more earlier applications filed with the same Office as that which is acting as the receiving Office and that Office has carried out an earlier search in respect of such an earlier application or has classified such earlier application, the receiving Office shall, subject to paragraphs (b), (d) and (e), transmit to the International Searching Authority, together with the search copy, a copy of the results of any such earlier search, in whatever form (for example, in the form of a search report, a listing of cited prior art or an examination report) they are available to the Office, and a copy of the results of any such earlier classification effected by the Office, if already available.  The receiving Office may also transmit to the International Searching Authority any further documents relating to such an earlier search which it considers useful to that Authority for the purposes of carrying out the international search.”

In view of the differences in national laws concerning the making available of information relating to unpublished applications, receiving Offices were given the possibility to submit notifications of incompatibility, as outlined below.

Notification under PCT Rule 23bis.2(b)

New Rule 23bis.2(b) permits a receiving Office to notify the International Bureau (IB) by 14 April 2016 that it may, on request of the applicant submitted together with the international application, decide not to transmit the results of an earlier search to the International Searching Authority.

The Offices (in their capacity as receiving Offices) of the following States have notified the IB of such incompatibility:

DE             Germany

FI               Finland

SE             Sweden

Notification under PCT Rule 23bis.2(e)

New Rule 23bis.2(e) permits the receiving Office to notify the IB by 14 April 2016 if the transmission of the copies referred to in PCT Rule 23bis.2(a), or the transmission of such copies in a particular form, such as those referred to in PCT Rule 23bis.2(a), without the authorization by the applicant is not compatible, on 14 October 2015, with the national law applied by the receiving Office. 

The Offices (in their capacity as receiving Offices) of the following States have notified the IB of such incompatibility, and of the extent to which it applies:

AU             Australia

CH             Switzerland

CZ             Czechia

FI               Finland

HU             Hungary

IL                Israel

JP              Japan

NO             Norway

SE             Sweden

SG             Singapore

US             United States of America

Details on the extent to which such incompatibility applies in the case of each Office concerned were published in the Official Notices (PCT Gazette) on 20 October 2016, at:

http://www.wipo.int/pct/en/official_notices/officialnotices.pdf

This information updates the table of “PCT Reservations, Declarations, Notifications and Incompatibilities” at:

http://www.wipo.int/pct/en/texts/reservations/res_incomp.html

The full text of new PCT Rule 23bis can be seen in document PCT/A/47/9, Annex II, pages 4 and 5, at:

http://www.wipo.int/edocs/mdocs/govbody/en/pct_a_47/pct_a_47_9.pdf

and for background information on new PCT Rule 23bis, see document PCT/WG/8/18 and paragraphs 60 to 70 of document PCT/WG/8/25 at:

http://www.wipo.int/meetings/en/details.jsp?meeting_id=35593

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