PCT NEWSLETTER

www.wipo.int/pct/en

December 2016 | No. 12/2016

 

PCT Information Update

AE  United Arab Emirates (fees)

The amount of the following national fee, payable to the Industrial Property Directorate, Ministry of Economy (United Arab Emirates) as designated (or elected) Office, has changed:

For patent or utility model:

Filing fee:........................................................................... AED    2,000 (1,000)1

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

AZ  Azerbaijan (fees)

The amounts of the following fees, payable to the State Committee for Standardization, Metrology and Patent of the Republic of Azerbaijan as receiving Office, have changed:

Transmittal fee: ........................................................................ AZN                          35.40

Fee for priority document: ........................................................ AZN                        23.60

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

BA  Bosnia and Herzegovina (location and mailing address)

The location and mailing address of the Institute for Intellectual Property of Bosnia and Herzegovina branch Office in Banja Luka has changed, as follows:

Akademika Jovana Surutke 13/III
78000 Banja Luka
Bosnia and Herzegovina          

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

CU  Cuba (telephone number; evidence of mailing a document; types of protection; number of copies required; requirements concerning agent; special provisions concerning the deposit of microorganisms and other biological material; fees)

The Cuban Intellectual Property Office has deleted two of its telephone numbers and has notified two additional numbers. The telephone numbers to be used are now as follows:

(537) 862 43 79, 862 43 95, 866 05 57, 866 05 59

There has been a change in the requirements as to whether the Office would accept evidence of mailing of a document, in case of loss or delay, where a delivery service other than the postal authorities is used; it no longer accepts such evidence.

The Office has notified the International Bureau (IB) of a change concerning the types of protection available in Cuba via the PCT – patents or utility models are now available (patents of addition, inventors’ certificates and inventors’ certificates of addition are no longer available).  This updates the table of “Types of Protection Available via the PCT in PCT Contracting States” published on the PCT website at:

http://www.wipo.int/pct/en/texts/pdf/typesprotection.pdf

The Office, in its capacity as receiving Office, has changed its requirement concerning the number of copies of the international application on paper to be filed with it:  it now requires one copy, instead of three.  There has also been a change in the requirement of the Office as to whether an agent is required by it as receiving Office:  an agent is required if the applicant does not have a domicile or a real and effective industrial or commercial establishment in Cuba.  Furthermore, the amount of the fee for priority document, payable to the Office as receiving Office, has changed to CUC 100.

The Office has also notified its requirements concerning the deposit of microorganisms and other biological material.  For further information, please see the PCT Applicant’s Guide, Annex L, at:

http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexl/anx_l.pdf

(Updating of PCT Applicant’s Guide, Annex B1 (CU), Annex C (CU) and Annex L)

DJ  Djibouti (competent International Searching and Preliminary Examining Authorities)

The Office of Industrial Property and Commerce of Djibouti (ODPIC) has specified, with effect from 1 December 2016, the Austrian Patent Office, in addition to the Egyptian Patent Office and the European Patent Office, as competent International Searching and Preliminary Examining Authority for international applications filed by nationals and residents of Djibouti with the ODPIC, or with the IB, as receiving Office.

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

EP  European Patent Office (competence to act as International Preliminary Examining Authority)

The European Patent Office (EPO) has notified the IB that the Visegrad Patent Institute should be added to footnote 1 of Annex E (EP) of the PCT Applicant’s Guide, which concerns the conditions under which it is competent to act as International Preliminary Examining Authority.  The footnote should now read as follows: 

The EPO may act as International Preliminary Examining Authority only if the international search is or has been performed by the EPO, the Austrian Patent Office, the Finnish Patent and Registration Office (PRH), the Nordic Patent Institute, the Spanish Patent and Trademark Office, the Swedish Patent and Registration Office or the Visegrad Patent Institute.

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

IS  Iceland (fees)

As from 1 January 2017, there will be a change in the amount of the following fees, payable to the Icelandic Patent Office as receiving Office:

Transmittal fee:................................................................................         ISK         17,300

Fee for priority document:..............................................................          ISK           4,600

Fee for requesting restoration of the right of priority:.....................          ISK         41,400

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

Application fee.................................................................................        ISK         64,400

Claim fee for each claim in excess of 10:.......................................          ISK           4,100

Additional fee for late furnishing of translation:.............................           ISK         17,300

Annual fee for the first three years................................................          ISK         33,000

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

KH  Cambodia (general information)

It is recalled that Cambodia became bound by the PCT on 8 December 2016. General information about Cambodia as a PCT Contracting State has been published in the PCT Applicant’s Guide – see Annex B1 (KH) at:

http://www.wipo.int/pct/guide/en/

PL Poland (language of filing)

The Polish Patent Office, in its capacity as receiving Office, has notified the IB that, with effect from 1 July 2016, it accepts international applications filed in Polish, in addition to English, French and German.  

Note that if the language in which the international application is filed is not accepted by the International Searching Authority, the applicant will have to furnish a translation (PCT Rule 12.3);  if the language in which the international application is filed is not a language of publication and no translation is required for the purposes of international search (PCT Rule 12.3(a)), the applicant will have to furnish a translation of the application into English (PCT Rule 12.4(a)).

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

RO  Romania (provisional protection; fees)

The State Office for Inventions and Trademarks (Romania) has notified changes concerning the provisions relating to provisional protection after international publication, where the designation is made for the purposes of a national patent.  The text should now refer to Articles 22, 33 and 56(3) and (4) of the Patent Law (Law No. 64/1991).

As from 1 January 2017, there will be changes in the amounts of the following fees, payable to the Office as receiving Office:

Transmittal fee:..............................................................................  RON  445

Fee for priority document:.............................................................. RON    89  plus copying costs

(Updating of PCT Applicant’s Guide, Annexes B1 and C (RO))

XV  Visegrad Patent Institute (telephone and fax numbers; means of telecommunication; evidence of mailing a document)

The telephone number of the Visegrad Patent Institute has changed, and the Office has a new fax number, as follows:

Telephone:                     (361) 613 51 30

Fax:                                (361) 799 01 88

The Office has informed the IB that it now accepts the filing of all kinds of documents by fax.  The original of the document must be furnished in all cases within 14 days of the transmission.

The Office has also informed the IB that it now accepts evidence of mailing a document, in case of loss or delay, where a delivery service other than the postal authorities is used.

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

Search fee (Egyptian Patent Office)

As from 1 February 2017, there will be a change in the equivalent amounts payable in CHF, EUR and USD for an international search carried out by the Egyptian Patent Office, as indicated in Fee Table I(b).

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

Preliminary examination fee and other fees relating to international preliminary examination (Visegrad Patent Institute)

As from 1 February 2017, there will be a change in the amount of the following fees, payable in EUR to the Visegrad Patent Institute as International Preliminary Examining Authority:

Preliminary examination fee: ....................................................... EUR             900

Additional preliminary examination fee: ....................................... EUR             900

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

  1. The amount in parentheses is applicable in case of filing by a natural person.
  2. This fee is reduced by 50% where the international application is filed by a natural person.

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