PCT NEWSLETTER

www.wipo.int/pct/en

October 2019 | No. 10/2019

 

Assembly of the PCT Union

The 51st session of the Assembly of the PCT Union (PCT Assembly) was held in Geneva during the period from 30 September to 9 October 2019, as part of the meetings of the Assemblies of the Member States of WIPO.  The documents referred to in the summary of the meeting, below, are available from the WIPO website at: 

PCT Assembly documents (including the report once it becomes available):

www.wipo.int/meetings/en/details.jsp?meeting_code=pct/a/51

PCT Working Group documents:

www.wipo.int/meetings/en/details.jsp?meeting_code=pct/wg/12

The Assembly adopted amendments to the PCT Regulations, as set out in the annexes to document PCT/A/51/2.  The amendments consist of the following:

–    PCT Rule 82quater:  Providing a legal basis in the PCT for an Office to excuse delays in meeting a time limit due to the unavailability of any permitted electronic means of communication at that Office, such as unforeseen outages or scheduled maintenance.  For further information, refer to document PCT/WG/12/17.

–    PCT Rule 26quater:  Providing a legal basis in the PCT for the correction or addition of indications in the request provided for in PCT Rule 4.11 during the international phase.  Applicants will be able to submit a notice to the International Bureau (IB), within 16 months from the priority date, to correct or add an indication of the wish that the application be treated in a designated State as an application for a patent of addition, certificate of addition, inventor’s certificate of addition or utility certificate of addition, or as a continuation or a continuation‑in‑part of an earlier application.  For further information, refer to document PCT/WG/12/8.

PCT Rules 4, 12, 20, 40bis, 48, 51bis, 55 and 82ter:  In the case of erroneously filed elements and parts in an international application, permitting the exchange of the erroneously filed element or part with the correct one, or, through incorporation by reference, permitting the addition of the correct element or part.  New PCT Rule 20.5bis “Erroneously Filed Elements and Parts” covers the following scenarios:

  • the furnishing of a correct element or part on or before the date on which all filing date requirements are fulfilled (new PCT Rule 20.5bis(b));
  • the furnishing of a correct element or part after the date on which all filing requirements were fulfilled (new PCT Rule 20.5bis(c));
  • the valid incorporation by reference of a correct element or part as contained in an earlier application (new PCT Rule 20.5bis(d))

For further information, refer to document PCT/WG/12/9 and paragraphs 100 to 110 of document PCT/WG/12/24

–    PCT Rules 15, 16, 57 and 96:  Providing a legal basis in the PCT for the transfer via the IB of fees collected by one Office for the benefit of another Office.  For further information, refer to document PCT/WG/12/20.

–    PCT Rules 71 and 94:  Introducing a basis for requiring the International Preliminary Examining Authority to copy certain documents from its file to the IB, which the IB would make available to the public on behalf of the elected Office.  For further information, refer to document PCT/WG/12/12.  

These amendments will enter into force on 1 July 2020.

The Assembly also adopted two Understandings relating to erroneously filed elements and parts of an international application, as follows:

–    In adopting PCT Rule 20.8(a-bis), the Assembly agreed that, where a receiving Office could not incorporate a correct element or part because that Office had submitted a notice of incompatibility under this Rule, the receiving Office concerned and the IB should agree, with the authorization of the applicant, that the procedures under PCT Rule 19.4 should apply.  In this case, subject to PCT Rule 19.4(b), the application would be considered as received by the receiving Office on behalf of the IB on the date of receipt at that Office.

–    In adopting PCT Rule 20.5bis, the Assembly agreed that, where a correct element or part had been incorporated by reference under PCT Rule 20.5bis(d), the International Searching Authority (ISA) would not need to take into account any erroneously filed element or part which remained in the application.  In addition, where an applicant had not paid additional fees following an invitation under PCT Rule 40bis (when the ISA had received a notification that a correct element or part had been included in the international application or incorporated by reference only after it had begun to draw up the international search report), the ISA would not need to take into account that correct element or part for the purposes of international search.  

The Assembly reviewed the criteria set out in item 5 of the Schedule of Fees for establishing the lists of States whose nationals and residents are eligible for PCT fee reductions, and decided to maintain these criteria and review the criteria again in five years’ time, as required by the Schedule (refer to document PCT/A/51/3).  

The Assembly also noted a report (document PCT/A/51/1) on the work being undertaken by the PCT Working Group, as reported in PCT Newsletter No. 06/2019.