WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Time limit for requesting the recording of changes under PCT Rule 92bis

Q: Further to the modification of the time limit under PCT Article 22(1) from 20 to 30 months, I would like to know whether this change extends to the term for the recording of a change under PCT Rule 92bis, and, if so, whether any such change requested after 20 months from the priority date will be communicated to any of the designated Offices that have notified the International Bureau that the modification of the time limit under PCT Article 22(1) is not compatible with the national law applied by them.

For example, I, as agent for the applicant, have filed an international application, the priority date of which is 10 October 2000 and in respect of which a demand is not going to be filed. The international application is likely to be assigned to a new applicant in July 2002, that is, after 20 months from the priority date. Will the International Bureau record this change, and if so, will it inform all designated States, including those for which the new 30 month time limit under PCT Article 22(1) does not apply?

A: According to PCT Rule 92bis.1, the International Bureau (IB) will record a change if the request for recording is received by it before the expiration of the time limit under PCT Article 22(1), where PCT Article 39(1) is not applicable with respect to any Contracting State, or before the expiration of the time limit under PCT Article 39(1), where PCT Article 39(1) is applicable with respect to at least one Contracting State.

In view of the fact that the time limit under PCT Article 22(1) has been modified, with effect from April 1, 2002, from 20 to 30 months, the IB will now, in respect of applications for which the period of 20 months from the priority date expires on or after April 1, 2002, record all requests for changes up to the expiration of 30 months from the priority date, regardless of whether a demand for Chapter II has been filed before the expiration of 19 months from the priority date, and regardless of whether any of the Offices designated has notified the IB that the modification of PCT Article 22(1) is incompatible with its applicable national law. The IB will also notify all designated Offices concerned via a copy of Form PCT/IB/306 of any such changes (see Section 422 of the Administrative Instructions under the PCT), regardless of whether any of those States have notified the IB that the modification of PCT Article 22(1) is incompatible with the applicable national law. Therefore, in your example, even though you are not going to file a demand for international preliminary examination, and even if the new 30-month time limit does not apply in respect of some of the designated Offices, the IB will record the change of applicant and inform all designated Offices concerned of the change, provided your request for recording of a change is received by it on or before 10 April 2003 (that is, 30 months from the priority date).

In respect of any change under PCT Rule 92bis which is recorded after 20 months from the priority date, where any of the designated Offices has notified the IB of the incompatibility of modified PCT Article 22(1) with its national law, and in respect of which the national phase has or will be entered by the applicant, each of these Offices will decide whether or not to accept the change requested. Therefore, the legal effect of the change recorded under PCT Rule 92bis.1 will vary from Office to Office. In any case, as is generally the case, Offices are entitled to require additional evidence or documents in the national phase regarding any change requested during the international phase (for information on the Offices which require additional documents in the national phase, including a new request for change specifically for the national phase before a particular Office, see PCT Applicant’s Guide, Vol. II, National Chapter Summaries).

Note that even where a designated Office has informed the IB under PCT Article 22(3) that a later time limit for entry into the national phase applies, such as 31 months from the priority date, the applicable time limit for requesting the recording of a change remains, as stated in PCT Rule 92bis.1, the time limit referred to in PCT Article 22(1), that is, 30 months, not 31 months, from the priority date.