PCT NEWSLETTER

www.wipo.int/pct/en

June 2017 | No. 06/2017

 

Amendments to the PCT Regulations and Consequential Modifications to Other PCT Texts and Forms

It is recalled that the Assembly of the PCT Union adopted, during its sessions which were held in Geneva from 5 to 14 October 2015 and from 3 to 11 October 2016, amendments to the PCT Regulations which will enter into force on 1 July 2017.  The main changes are as follows:

1.   Amendments to PCT Rules 86 and 95 – designated (or elected) Offices will be required to send to the IB the following national phase entry and other related data, preferably within two months from the event:

  • date national phase entered;
  • national application number;
  • number and date of national publication; and
  • date of grant, and number and date of national publication as granted.

The provision of this information by the designated Offices will enable the status of the PCT application during the national phase to be viewed on PATENTSCOPE under the “National phase” tab.  The information will also be made available in bulk format to patent information service providers.  The amendments will be effective as from 1 July 2017 for applications in respect of which the acts referred to in PCT Article 22 or 39 are performed on or after that date.

2.   New PCT Rule 23bis and amendments to PCT Rules 12bis and 41 – receiving Offices (ROs) will be required to forward details of search or classification results from earlier applications to the International Searching Authority (ISA), in general without the express permission of the applicant.  However, ROs which have notified the International Bureau (IB) (before 14 April 2016) of the incompatibility with their applicable national law of sending this information are not required to do so1.  Also, even in cases in which the RO in principle applies the above‑mentioned procedure, it may allow applicants to request, at the time of filing of the PCT application, not to have the earlier search results forwarded to the ISA if the RO has notified the IB accordingly (before 14 April 2016).  These amendments will apply to all international applications filed on or after 1 July 2017.

3.    Amendment to PCT Rule 45bis.1 – an extension of the deadline for requesting supplementary international search from 19 to 22 months from the priority date.  This will be effective for international applications in respect of which the 19‑month time limit for filing a supplementary search request has not yet expired on 1 July 2017.

Consequential modifications have been made, effective 1 July 2017, to:

  • the Administrative Instructions under the PCT
  • certain forms relating to the RO, the IB, the ISA, the Authority specified for Supplementary International Search and the International Preliminary Examining Authority (specifically, Forms PCT/RO/101 (Request form), PCT/RO/102, PCT/RO/118, PCT/ISA/238, PCT/IB/372, PCT/IB/311, PCT/IB/375, PCT/IB/379, and PCT/ISA/220, PCT/ISA/233);
  • the PCT Receiving Office Guidelines (ROGLs); and
  • the PCT International Search and Preliminary Examination Guidelines (ISPEGLs).

For further information on the modifications, please see PCT Circulars C. PCT 1498 and C. PCT 1511 at:

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

The consolidated versions of the modified PCT Regulations and Administrative Instructions, and the ROGLs and ISPEGLs, as in force from 1 July 2017, are available at, respectively:

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

http://www.wipo.int/pct/en/texts/gdlines.html

The modified forms are available under “Forms in force from 1 July 2017” at:

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

  1. 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: RO/AU, RO/CH, RO/CZ, RO/DE, RO/FI, RO/HU, RO/IL, RO/JP, RO/NO, RO/SE, RO/SG and RO/US. 

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