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PCT NEWSLETTER

www.wipo.int/pct/en

July-August 2024 | No. 07-08/2024

 

PCT Information Update

CL Chile (telephone number)

The telephone number of the National Institute of Industrial Property (Chile) has changed to the following:

Telephone  (56-2) 28 87 04 00

(Updating of PCT Applicant’s Guide, Annex B (CL))

CY Cyprus (languages accepted for the filing of international applications; number of copies on paper)

The Department of Registrar of Companies and Official Receiver of Cyprus, in its capacity as receiving Office, has notified the International Bureau (IB) that, pursuant to PCT Rule 12.1(a), it no longer accepts Greek as a language in which the international application may be filed.

It is recalled that if the language in which the international application is filed is not accepted by the ISA, the applicant will have to furnish a translation (PCT Rule 12.3).

Furthermore, the Office now requires one copy of the international application if the application is filed on paper, instead of three.

(Updating of PCT Applicant’s Guide, Annex B (CY))

GB United Kingdom (requirements concerning the deposit of microorganisms and other biological material)

The Intellectual Property Office1 (United Kingdom) has notified changes in its requirements concerning the deposit of microorganisms and other biological material, as follows:

Time (if any) earlier than 16 months from priority date by which applicant must furnish:

Where the applicant requests publication earlier than 16 months from the priority date, not later than that request;

  • any additional indications:

At the time of filing.

Additional indications (if any) which must be given besides those prescribed in Rule 13bis.3(a)(i) to (iii) pursuant to notifications from the Office:

The specification of the application as filed must contain such relevant information as is available to the applicant on the characteristics of the biological material.

Additional information:

Deposits may also be made for the purposes of patent procedure before the Intellectual Property Office (United Kingdom) with any depositary institution anywhere in the world. It is the responsibility of the applicant to select the depositary institution with which they wish to make their deposit and to ensure that samples of the biological material deposited will be made available in accordance with Rule 13(1) and Schedule 1 of the UK Patents Rules 2007. The applicant may give notice in writing to the International Bureau before technical preparations for publication of the international application are completed that a sample should be made available only to an expert (preferably by using Form PCT/RO/134).

WARNING: Where the invention involves the use of or concerns biological material which is not available to the public at the date of filing the application and which has been deposited by a person other than the applicant, the applicant must supply the following within 16 months from the priority date (or, if earlier, not later than a request for early publication):

(i) the name and address of the depositor; and

(ii) a statement by the depositor authorizing the applicant to refer to the deposited material in the application and giving the depositor’s irrevocable authorization for the deposited material to be made available to the public in accordance with Schedule 1 to the UK Patents Rules 2007.

(Updating of PCT Applicant’s Guide, Annex L (GB))

GR Greece (means of telecommunication; provisional protection; requirements concerning agent; information relating to power of attorney)

The Industrial Property Organization (OBI) (Greece) has clarified that it accepts the filing of documents by fax and the Office requires that the original of the document be furnished in all cases.

Furthermore, the Office clarified its requirements relating to provisional protection after international publication, as follows:

Where the designation is made for the purposes of a European patent:

  • After international publication or, where that publication was in a language other than one of the official languages of the EPO, after publication by the EPO of the international application translated into one of its official languages, the applicant may, as from the date of publication in the Greek Industrial Property Official Gazette of a notification that a translation of the claims in Greek has been filed with OBI, claim damages and request the description and seizure of the articles infringing the patent and anything used in the making thereof.

In addition, there have been changes in the requirements of the Office as to whether an agent is required by it as receiving Office, as follows:

  • an agent is not required if the applicant has a residence or principal place of business in Greece;
  • an agent is required if the applicant has neither a residence nor principal place of business in Greece.

The Office has also clarified that, relating to its requirements under PCT Rules 90.4(b) and/or 90.5(a)(ii), it continues to require that a separate power of attorney or a copy of a general power of attorney be submitted.

(Updating of PCT Applicant’s Guide, Annex B (GR) and C (GR))

HR Croatia (fax number)

The fax number of the State Intellectual Property Office (Croatia) has changed. The number to be used is now as follows:

Fax:  (385-1) 6109 660

(Updating of PCT Applicant’s Guide, Annex B (HR))

IS Iceland (fees)

The amounts of the following fees, payable to the Icelandic Intellectual Property Office (ISIPO) as receiving Office, have changed with effect from 1 July 2023:

Transmittal fee........................................................................ ISK  20,300

Fee for priority document..................................................... ISK     5,400

Fee for requesting restoration of the right of priority....... ISK  48,700

The amounts of the following national fees, payable to the Office as designated (or elected) Office, have also changed with effect from the same date:

National fee:

Application fee:........................................................... ISK  76,000

Claim fee for each claim in excess of 10:................. ISK    4,900

Additional fee for late furnishing of translation:.... ISK  20,500

Total annual fees for the first three years:.............. ISK  36,000

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

JP Japan (fees)

As from 1 September 2024, there will be a change in the equivalent amounts of the international filing fee and the fee per sheet over 30, payable in JPY to the Japan Patent Office as receiving Office, as well as a change in the equivalent amounts in JPY 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 (JP))

LU Luxembourg (e-mail address; fees; special requirements for entry into the national phase)

The e-mail address of the Intellectual Property Office (Luxembourg) has changed to the following:

E-mail:  bpp@eco.etat.lu

The Office has also notified the IB that there is no longer a fee payable for the priority document.

Furthermore, the Office has clarified its requirements concerning the waiver of power of attorney: the Office has waived the requirements to submit a separate power of attorney and a copy of a general power of attorney.

There has also been a change in the special requirements under PCT Rule 51bis of the Office as designated (or elected) Office. The consolidated list of special requirements is now as follows:

  • name and country indication from address of the inventor, if they have not been furnished in the “Request” part of the international application;
  • deed of assignment of the priority rights, where the applicants are not identical;
  • appointment of an agent if the applicant is not resident in the European Economic Area.

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

SA Saudi Arabia (telephone numbers)

The telephone numbers of the Saudi Authority for Intellectual Property (SAIP) have changed to the following:

Telephone  (966-11) 280 59 76
                     (966-11) 280 59 84
                     (966-11) 280 63 22

(Updating of PCT Applicant’s Guide, Annex B (SA))

UG Uganda (national security provisions)

The Uganda Registration Services Bureau (URSB) has provided additional details to the IB concerning restrictions in its national legislation which are applicable when filing international applications with other Offices – see the PCT Applicant’s Guide, Annex B (UG), and the table entitled “International applications and national security considerations” at:

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

Handling fee (Japan Patent Office)

As from 1 September 2024, there will be a change in the equivalent amount of the handling fee, payable in JPY to the Japan Patent Office (JPO) as International Preliminary Examining Authority (IPEA). The new amount will be JPY 35,700.

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

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

With effect from 1 July 2024, there has been a change 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).

As from 1 September 2024, there will be changes in the equivalent amounts payable in the currencies specified below for international searches carried out by the following Offices:

Japan Patent Office (JPO)................................................... CHF

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

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

  1. Intellectual Property Office is an operating name of the Patent Office.