PCT NEWSLETTER

www.wipo.int/pct/en

December 2018 | No. 12/2018

 

PCT Information Update

AE  United Arab Emirates (competent International Searching and Preliminary Examining Authorities)

The International Center for Patent Registration, Ministry of Economy (United Arab Emirates) has specified the Korean Intellectual Property Office, in addition to the Australian Patent Office and the Austrian Patent Office, as a competent International Searching and Preliminary Examining Authority, for international applications filed on or after 6 January 2019 by nationals and residents of the United Arab Emirates with the International Bureau (IB) as receiving Office.

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

BH  Bahrain (who can act as agent; furnishing of copies of international applications; special requirements for entry into the national phase)

There has been a change in the requirements as to who can act as agent before the National Patent Office (Bahrain) as receiving Office and as designated (or elected) Office:  any attorney or lawyer registered to practice before the Office may now act as agent.

The Office in its capacity as designated (or elected) Office has removed the requirement for a copy of the international application to be furnished to it, and it has also deleted one of its special requirements under PCT Rule 51bis – it no longer requires the furnishing of two copies of the translation of the international application (only one is sufficient).

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

BZ  Belize (e-mail address; means of telecommunication; evidence of mailing a document)

The Belize Intellectual Property Office has deleted one of its e-mail addresses. The e-mail addresses to be used are now as follows:

E-mail:                         belipo@btl.net
                                    info@belipo.bz

Furthermore, the Office has notified the IB that it now accepts the submission of documents by e-mail, in addition to fax.

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 will now accept such evidence only if the delivery service is DHL or Federal Express

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

GE  Georgia (Internet address; special requirements for entry into the national phase; fees)

The Internet address of the National Intellectual Property Center of Georgia (SAKPATENTI) has changed, as follows:

www.sakpatenti.gov.ge

The Office as designated (or elected) Office has changed one of its requirements under PCT Rule 51bis for entry into the national phase – the translation of the international application should now be furnished within two months from the date of request for entry into the national phase.

Furthermore, there has been a change in the amounts of the following national fees payable to the Office as designated (or elected) Office:

For patent:

– Filing fee1:........................................................................... [no change]

– Fee for determination of object of protection:........................ USD 90

– Fee for determination of state of the art:

– for one independent claim:.................................................... USD 180

– for each independent claim in excess of one:....................... USD 120

For utility model:

– Filing fee1:............................................................................ [no change]

– Fee for determination of object of protection and novelty:... USD 90

Fees are reduced by 70% where the applicant is the inventor, a higher educational institution or an independent scientific research unit, by 90% where the applicant is a student, pupil or retiree, and by 20% for applications filed electronically.

The Office has also notified a change concerning the exemptions, reductions or refunds of the national fee – the fee for determination of state of the art is reduced by 50% where an international search report or an international preliminary examination report has been established and a Georgian translation thereof is submitted.

(Updating of PCT Applicant’s Guide, Annex B1 (GE) and National Chapter, Summary (GE))

ID  Indonesia (telephone and fax numbers; e-mail address; number of copies required; fees)

The Directorate General of Intellectual Property (Indonesia) has deleted one of its telephone and fax numbers and one of its e-mail addresses. The numbers and e-mail address to be used are now as follows:

Telephone:                   (62-21) 5790 5611 (Patents), 5790 5619 (Secretariat)

Fax:                             (62-21) 5790 5611 (Patents), 5790 5619 (Secretariat)

E-mail:                         patent.administration@gmail.com

The Office as receiving Office has notified the IB that it now requires two copies of the international application on paper, instead of three.

There has also been a change in the amounts of the following national fees payable to the Office as designated (or elected) Office:

Filing fee:

– electronic filing:........................................................... IDR 1,250,000

– paper filing:................................................................. IDR 1,500,000

Claim fee for each claim in excess of 10:............................ IDR 50,000

(Updating of PCT Applicant’s Guide, Annex B1 (ID), Annex C (ID) and National Chapter, Summary (ID))

IS  Iceland (fees)

As from 1 February 2019, there will be a change in the equivalent amounts of the international filing fee and the fee per sheet over 30, payable in ISK to the Icelandic Patent Office as receiving Office, as well as a change in the equivalent amounts in ISK 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 (IS))

JO  Jordan (competent International Searching and Preliminary Examining Authorities)

The Industrial Property Protection Directorate, Ministry of Industry, Trade and Supply (Jordan) has specified, with effect from 1 January 2019, the United States Patent and Trademark Office, in addition to the Australian Patent Office, the Austrian Patent Office and the European Patent Office, as competent International Searching and Preliminary Examining Authority for international applications filed by nationals and residents of Jordan with the Industrial Property Protection Directorate, Ministry of Industry, Trade and Supply, or with the IB, as receiving Office.

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

UG  Uganda (who can act as agent; special requirements for entry into the national phase; fees)

There has been a change in the requirements as to who can act as agent before the Uganda Registration Services Bureau (URSB) as receiving Office and as designated (or elected) Office:  any advocate of the High Court of Uganda may now act as agent.

There has been a change in the amounts of the following national fees, payable to the Office as designated (or elected) Office:

For patent:

– National processing fee:.................... UGX 60,000 ....... USD 150

– Publication fee:.................................. UGX 50,000 ....... USD   50

– Grant fee:.......................................... UGX 90,000 ....... USD 100

– Annual fee for the second year:........ UGX 50,000 ....... USD   50

For utility certificate:

– National processing fee:......................... UGX 30,000 ....... USD   50

Please note that natural persons or legal entities not having their residence or principal place of business in Uganda must effect payment in US dollars.

Furthermore, the Office as designated (or elected) Office has notified an additional requirement under PCT Rule 51bis:  a translation of the application is now required in triplicate.

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

Search fee and other fees relating to international search (Austrian Patent Office, European Patent Office, National Institute of Industrial Property (Brazil))

As from 1 January 2019, there will be a change in the amount payable in EUR, as well as in the equivalent amounts in CHF, KRW, SGD, USD and ZAR for an international search carried out by the Austrian Patent Office, as indicated in Fee Table I(b).  There will also be a change in the amount of the following fee payable from the same date:

Additional search fee:.............................................................         EUR 1,775

As from 1 February 2019, there will be changes in the equivalent amounts payable in the currencies specified below for international searches carried out by the following Offices:

European Patent Office..........................................................         ISK

National Institute of Industrial Property (Brazil)......................         CHF, EUR, USD

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

(Updating of PCT Applicant’s Guide, Annex D (AT, BR and EP)

  1. Must be paid within one month from the date of request for entry into the national phase.
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