PCT NEWSLETTER

www.wipo.int/pct/en

April 2018 | No. 04/2018

 

PCT Information Update

BE  Belgium (Internet address;  national security provisions)

The Internet address of the Intellectual Property Office (Belgium) has changed, as follows:

Internet:                            https://economie.fgov.be/fr/themes/propriete-
                                         intellectuelle/institutions-et-acteurs/office-belge-de-la-propriete

The Office provided additional details to the International Bureau (IB) concerning restrictions in its national legislation which are applicable when filing international applications with other Offices, as follows:  nationals or residents of Belgium or legal persons having a principal place of business in Belgium must file an international application which may be of interest for national defense or security with the Intellectual Property Office (Belgium).

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

CA  Canada (required contents of the translation for national phase entry;  furnishing of copies of international applications;  special requirements for entry into the national phase)

Further to the information published in PCT Newsletter No. 02/2018, the Canadian Intellectual Property Office, in its capacity as designated (or elected) Office has notified the IB that the applicant is only required to send a translation of the request (where applicable), and a copy of the international application, if the application enters the national phase prior to the publication of the international application.  This may be the case where the applicant expressly requests an earlier start of the national phase under PCT Article 23(2).

The Office has clarified one of its requirements under PCT Rule 51bis as follows:  if the applicant is not the applicant originally identified in the international application, evidence that the applicant is the legal representative of the originally identified applicant should be submitted to the Office. If the evidence has not already been submitted the Office will invite the applicant to provide it.  Acceptable forms of evidence include Form PCT/IB/306, an assignment, or a change of name document. 

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

CN  China (fees)

The State Intellectual Property Office of the People’s Republic of China, in its capacity as receiving Office, has notified the fee for furnishing copies of documents contained in the file of the international application, in accordance with PCT Rule 94.1bis, payable with effect from 1 July 2017. The amount of that fee is CNY 2 per page.

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

EP  European Patent Office (fees;  language accepted for international search)

The European Patent Office (EPO) has notified the IB that information for users on the availability of DOCX filing and corresponding changes to the filing fee, fee for grant and transmittal fee, which entered into force on 1 April 2018, are available on the website of the Office at:

http://www.epo.org/law-practice/legal-texts/official-journal/2018/03/a28/2018-a28.pdf

The EPO in its capacity as International Searching Authority has also notified the IB that it will search international applications in Dutch only where the international application was filed with the Netherlands Patent Office.

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

GB  United Kingdom  (fees)

The amounts of the following national fees, payable to the Intellectual Property Office1 (United Kingdom) as designated (or elected) Office, have changed with effect from 6 April 2018, and the Office has notified new fees payable from the same date, as follows:

Excess claims fee for each claim in excess of 25:2...................          GBP               20

Excess pages fees for each page of description over 35:2.......           GBP               10

Search fee:

– where a search has already been made by an
International Searching Authority in accordance
with the PCT:....................................................................             GBP           1503

– in other cases:..................................................................          GBP           1803

Substantive examination fee:.......................................................       GBP           130     

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

KR  Republic of Korea (types of electronic carrier for nucleotide and/or amino acid sequence listings in electronic form)

The Korean Intellectual Property Office, in its capacity as International Searching Authority (ISA), has specified the types of electronic medium that it accepts for the furnishing of nucleotide and/or amino acid sequence listings in electronic form: it accepts diskettes, CD‑ROM, CD-R, DVD or DVD-R.

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

NL  Netherlands (telephone number)

The telephone number of the Netherlands Patent Office has changed, as follows:

Telephone:                      (31-88) 042 66 60

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

NO  Norway (name of Office;  mailing address)

The name of the Norwegian Industrial Property Office in Norwegian has changed to Patentstyret, and the mailing address of the Office will change with effect from 1 May 2018, as follows:

Mailing address:             Postboks 4863 Nydalen
                                       0422 Oslo
                                       Norway

(Updating of PCT Applicant’s Guide, Annex B1 (NO))

SG  Singapore (fees)

The Intellectual Property Office of Singapore has notified the amount of the fee for an electronic copy of the priority document – the fee is SGD 28.  The amount for a paper copy has not changed.

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

TT  Trinidad and Tobago (competent International Searching and Preliminary Examining Authorities)

The Intellectual Property Office, Ministry of the Attorney General and Legal Affairs (Trinidad and Tobago) has specified with effect from 19 March 2018 the National Institute of Industrial Property (Chile), in addition to the Austrian Patent Office, the European Patent Office, the Swedish Patent and Registration Office and the United States Patent and Trademark Office, as competent International Searching and Preliminary Examining Authority for international applications filed by nationals and residents of Trinidad and Tobago with the Intellectual Property Office, Ministry of the Attorney General and Legal Affairs (Trinidad and Tobago), or with the International Bureau (IB), as receiving Office.

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

US  United States of America (fax number)

One of the fax numbers of the United States Patent and Trademark Office has changed, as follows:

Fax:                                   (1-571) 273 83 00 (PCT Operations –
                                           only available for certain documents)4

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

Search fee and other fees relating to international search (Australian Patent Office, Canadian Intellectual Property Office, European Patent Office, Japan Patent Office, State Intellectual Property Office of the People’s Republic of China)

As from 1 June 2018, 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.................................................................      EUR

Canadian Intellectual Property Office............................................      EUR

Japan Patent Office.......................................................................       KRW, USD

The Canadian Intellectual Property Office has also notified changes to the conditions for refund of the search fee:  where the applicant requests the Authority to take into account the results of an earlier search, and the Authority benefits from that earlier search, there is a refund of 25% of the fee, depending upon the extent to which the Authority benefits from that earlier search.

With effect from 1 December 2017, there have been changes to the conditions for refund of the search fee payable to the European Patent Office where the international search report drawn up by the Office is based on an earlier search report prepared by the Office on an application the priority of which is claimed for the international application, as follows:

  • for a European search (EPC Article 92), an international search (PCT Article 15(1)), a supplementary international search (PCT Rule 45bis) or a search made on behalf of a national Office on a national application (BE,5 CY, FR, GR, IT, LT, LU, LV,6 MC,6 MT, NL,5 SM, TR):

full benefit: ............................................................................. refund of 100%

partial benefit: ........................................................................ refund of 25%

  • for an international-type search (PCT Article 15(5)):

full benefit: ............................................................................. refund of 70%

partial benefit: ........................................................................ refund of 17.5%

The State Intellectual Property Office of the People’s Republic of China, in its capacity as ISA, has notified the fee for furnishing copies of documents contained in the file of the international application, in accordance with PCT Rule 94.1ter, payable with effect from 1 April 2018.  The amount of that fee is CNY 2 per page.

(Updating of PCT Applicant’s Guide, Annex D (AU, CA, CN, EP, JP))

  1. Intellectual Property Office is an operating name of the Patent Office.
  2. Excess claims and excess pages fees may also be payable at grant if the number of claims and pages increase during the processing of the application. If this is the case the Office will invite the applicant to pay a grant fee by filing a Form 34.
  3. This fee is reduced by GBP 30 when search/substantive examination is requested electronically.
  4. All documents 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.
  5. Includes international-type searches covered by an agreement between the Authority and that Office.
  6. Applies to search requests in respect of national applications filed as of 1 October 2016 for Latvia and as of 1 April 2017 for Monaco.
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