PCT Receiving Office Guidelines

Chapter VI: Article 14 Check and Other Formal Requirements

Designation of States

100. States. Under Rule 4.9(a), the filing of a request constitutes:

(i) the designation of all Contracting States that are bound by the Treaty on the international filing date;

(ii) an indication that the international application is, in respect of each designated State to which Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State (see paragraphs 108 to 111); and

(iii) an indication that the international application is, in respect of each designated State to which Article 45(1) applies, for the grant of a regional patent and also, unless Article 45(2) applies, a national patent.

This is also valid where the applicant does not use the request Form PCT/RO/101, where the applicant uses an old request form, issued before 1 January 2004, that does not list all Contracting States, or where the international filing date is changed to a date on or after 1 January 2004. Consequently, the receiving Office does not check whether all Contracting States are designated and is not required to make any ex officio corrections by adding designated States.

101. Exclusion of Certain States from Designation. Under Rule 4.9(b), the applicant may, by marking the applicable check-box(es), indicate that Germany, Japan and/or the Republic of Korea are not designated for any kind of national protection. This possibility is restricted to those three States.  Therefore, no other State can be excluded from the automatic and all-inclusive coverage of designations and no withdrawals of designations are allowed in the request. If the applicant adds in the request explicit indications as to the designation of a specific contracting State or a withdrawal of a designation, such indication should be deleted ex officio by the receiving Office, as provided in Rule 4.19(b) and Section 303 (paragraphs 161 to 165). However, the applicant may submit a separate notice of withdrawal of designation under Rule 90bis.2. The designation of Germany for the purposes of a European patent is not affected so that this State remains designated for regional protection if the checkbox is marked. Regarding further details concerning the indication that Germany, Japan and/or the Republic of Korea shall not be designated for any kind of national protection, see the Notes to the request form relating to Box No. V.

102. Priority Claim from Excluded State. Under Rule 4.9(b), the applicant may only exclude the designation of Germany, Japan and/or the Republic of Korea in Box No. V, if the priority of an earlier national application filed, respectively, in Germany, Japan and/or the Republic of Korea, is claimed in Box No. VI. If, on the date of filing, the request contains an indication under Rule 4.9(b) that the designation of a State is not made, but does not contain a priority claim to an earlier national application filed in that State, the applicant shall be promptly notified and his attention drawn to Rule 26bis (Form PCT/RO/132). In accordance with Section 319, if, by the expiration of the time limit under Rule 26bis.1(a), no notice correcting or adding such a priority claim has been received, the indication in Box No. V shall be enclosed in square brackets and a line drawn between the square brackets, which leaves the indication legible, and in the margin, shall be indicated the words “CANCELLED EX OFFICIO BY RO”. The receiving Office shall promptly notify the applicant and the International Bureau accordingly (Form PCT/RO/146).

103. States Not Bound by the PCT on the International Filing Date. States which are not Contracting States on the date of filing the international application are not designated by filing a request and cannot be designated in the request or subsequently. If the applicant has added in Box No. V of the printed request form States which have become party to the PCT after the international filing date, the receiving Office cancels ex officio the purported designation of any State which is not a Contracting State (Section 318 paragraphs 161 to 165).

104. [Deleted]

105. [Deleted]

106. [Deleted]

107. [Deleted]