PCT Notification No. 159
Patent Cooperation Treaty (PCT)
Certified Copy
Amendments to the Regulations under the Patent Cooperation Treaty (PCT)
Adopted by the Assembly of the International Patent Cooperation Union (PCT Union) at its thirty-first (18th extraordinary) session on October 1, 2002, with effect from January 1, 2004
Table of Amendments [*]
Rule 4.1
Rule 4.5
Rule 4.9
Rule 4.11
Rule 4.12
Rule 4.13
Rule 4.14
Rule 12.3
Rule 12.4
Rule 15.1
Rule 15.2
Rule 15.4
Rule 15.5
Rule 15.6
Rule 16.1
Rule 16bis.1
Rule 16bis.2
Rule 17.1
Rule 19.4
Rule 24.2
Rule 26.2bis
Rule 27.1
Rule 29.1
Rule 32.1
Rule 32.2
Rule 36.1
Rule 43bis.1
Rule 44.1
Rule 44bis.1
Rule 44bis.2
Rule 44bis.3
Rule 44bis.4
Rule 44ter.1
Rule 47.1
Rule 47.2
Rule 47.4
Rule 48.6
Rule 49bis.1
Rule 49bis.2
Rule 51.1
Rule 51bis.1
Rule 52.1
Rule 53.4
Rule 53.7
Rule 54bis.1
Rule 56
Rule 57.3
Rule 57.6
Rule 58bis.1
Rule 59.3
Rule 60.1
Rule 60.2
Rule 61.1
Rule 61.2
Rule 61.4
Rule 62.1
Rule 62bis.1
Rule 63.1
Rule 66.1bis
Rule 66.2
Rule 66.7
Rule 69.1
Rule 69.2
Rule 70.15
Rule 72.2bis
Rule 72.3
Rule 73.2
Rule 76.5
Rule 76.6
Rule 78.1
Rule 78.2
Rule 89bis.3
Rule 90.2
Rule 90.4
Rule 90bis.5
Rule 92bis.1
Rule 93bis.1
Rule 94.1
Schedule of Fees
AMENDMENTS [1]
Rule 4
The Request (Contents)
4.1 Mandatory and Optional Contents; Signature
(a) The request shall contain:
(i) to (iii) [No change]
(iv) indications concerning the inventor where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application.
(b) The request shall, where applicable, contain:
(i) and (ii) [No change]
(iii) a reference to a parent application or parent patent,
(iv) an indication of the applicant's choice of competent International Searching Authority.
(c) and (d) [No change]
4.2 to 4.4 [No change]
(a) The request shall indicate:
(i) the name,
(ii) the address, and
(iii) the nationality and residence
of the applicant or, if there are several applicants, of each of them.
(b) to (e) [No change]
4.6 to 4.8 [No change]
4.9 Designation of States; Kinds of Protection; National and Regional Patents
(a) The filing of a request shall constitute:
(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;
(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.
(b) Notwithstanding paragraph (a)(i), if, on October 1, 2002, the national law of a Contracting State provides that the filing of an international application which contains the designation of that State and claims the priority of an earlier national application having effect in that State shall have the result that the earlier national application ceases to have effect with the same consequences as the withdrawal of the earlier national application, any request may, for as long as that national law continues to so provide, contain an indication that the designation of that State is not made, provided that the designated Office informs the International Bureau by January 1, 2003, that this paragraph shall apply in respect of designations of that State. The information received shall be promptly published by the International Bureau in the Gazette.
(c) [Deleted]
4.10 [No change]
4.11 Reference to Earlier Search, Continuation or Continuation-in-Part, or Parent Application or Grant
(a) If:
(i) an international or international-type search has been requested on an application under Article 15(5);
(ii) the applicant wishes the International Searching Authority to base the international search report wholly or in part on the results of a search, other than an international or international-type search, made by the national Office or intergovernmental organization which is the International Searching Authority competent for the international application;
(iii) the applicant intends to make an indication under Rule 49bis.1(a) or (b) of the wish that the international application be treated, in any designated State, as an application for a patent of addition, certificate of addition, inventor's certificate of addition or utility certificate of addition; or
(iv) the applicant intends to make an indication under Rule 49bis.1(c) of the wish that the international application be treated, in any designated State, as an application for a continuation or a continuation-in-part of an earlier application;
the request shall so indicate and shall, as the case may be, identify the application in respect of which the earlier search was made or otherwise identify the search, or indicate the relevant parent application or parent patent or other parent grant.
(b) The inclusion in the request of an indication under paragraph (a)(iii) or (iv) shall have no effect on the operation of Rule 4.9.
4.14bis to 4.18 [No change]
Rule 12
Language of the International Application and Translation for the Purposes of International Search and International Publication
12.1 and 12.2 [No change]
12.3 Translation for the Purposes of International Search
(a) to (d) [No change]
(e) The furnishing of a translation after the expiration of the time limit under paragraph (a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late furnishing fee equal to 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.
12.4 Translation for the Purposes of International Publication
(a) to (d) [No change]
(e) The furnishing of a translation after the expiration of the time limit under paragraph (a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late furnishing fee equal to 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.
Rule 15
The International Filing Fee
15.1 The International Filing Fee
Each international application shall be subject to the payment of a fee for the benefit of the International Bureau ("international filing fee") to be collected by the receiving Office.
(a) The amount of the international filing fee is as set out in the Schedule of Fees.
(b) The international filing fee shall be payable in the currency or one of the currencies prescribed by the receiving Office ("prescribed currency"), it being understood that, when transferred by the receiving Office to the International Bureau, it shall be freely convertible into Swiss currency. The amount of the international filing fee shall be established, for each receiving Office which prescribes the payment of that fee in any currency other than Swiss currency, by the Director General after consultation with the receiving Office of, or acting under Rule 19.1(b) for, the State whose official currency is the same as the prescribed currency. The amount so established shall be the equivalent, in round figures, of the amount in Swiss currency set out in the Schedule of Fees. It shall be notified by the International Bureau to each receiving Office prescribing payment in that prescribed currency and shall be published in the Gazette.
(c) Where the amount of the international filing fee set out in the Schedule of Fees is changed, the corresponding amount in the prescribed currencies shall be applied from the same date as the amount set out in the amended Schedule of Fees.
(d) Where the exchange rate between Swiss currency and any prescribed currency becomes different from the exchange rate last applied, the Director General shall establish the new amount in the prescribed currency according to directives given by the Assembly. The newly established amount shall become applicable two months after the date of its publication in the Gazette, provided that the receiving Office referred to in the second sentence of paragraph (b) and the Director General may agree on a date falling during the said two-month period, in which case the said amount shall become applicable from that date.
15.3 [Remains deleted]
15.4 Time Limit for Payment; Amount Payable
The international filing fee shall be paid within one month from the date of receipt of the international application. The amount payable shall be the amount applicable on that date of receipt.
The receiving Office shall refund the international filing fee to the applicant:
(i) to (iii) [No change]
Rule 16
The Search Fee
(a) to (e) [No change]
(f) As to the time limit for payment of the search fee and the amount payable, the provisions of Rule 15.4 relating to the international filing fee shall apply mutatis mutandis.
16.2 and 16.3 [No change]
Rule 16bis
Extension of Time Limits for Payment of Fees
16bis.1 Invitation by the Receiving Office
(a) Where, by the time they are due under Rules 14.1(c), 15.4 and 16.1(f), the receiving Office finds that no fees were paid to it, or that the amount paid to it is insufficient to cover the transmittal fee, the international filing fee and the search fee, the receiving Office shall invite the applicant to pay to it the amount required to cover those fees, together with, where applicable, the late payment fee under Rule 16bis.2, within a time limit of one month from the date of the invitation.
(b) [Deleted]
(c) Where the receiving Office has sent to the applicant an invitation under paragraph (a) and the applicant has not, within the time limit referred to in that paragraph, paid in full the amount due, including, where applicable, the late payment fee under Rule 16bis.2, the receiving Office shall, subject to paragraph (d):
(i) make the applicable declaration under Article 14(3), and
(ii) proceed as provided in Rule 29.
(d) Any payment received by the receiving Office before that Office sends the invitation under paragraph (a) shall be considered to have been received before the expiration of the time limit under Rule 14.1(c), 15.4 or 16.1(f), as the case may be.
(e) Any payment received by the receiving Office before that Office makes the applicable declaration under Article 14(3) shall be considered to have been received before the expiration of the time limit referred to in paragraph (a).
(a) The payment of fees in response to an invitation under Rule 16bis.1(a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late payment fee. The amount of that fee shall be:
(i) 50% of the amount of unpaid fees which is specified in the invitation, or,
(ii) if the amount calculated under item (i) is less than the transmittal fee, an amount equal to the transmittal fee.
(b) The amount of the late payment fee shall not, however, exceed the amount of 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.
Rule 17
The Priority Document
17.1 Obligation to Submit Copy of Earlier National or International Application
(a) Where the priority of an earlier national or international application is claimed under Article 8, a copy of that earlier application, certified by the authority with which it was filed ("the priority document"), shall, unless that priority document has already been filed with the receiving Office together with the international application in which the priority claim is made, and subject to paragraphs (b) and (b-bis), be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date, provided that any copy of the said earlier application which is received by the International Bureau after the expiration of that time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the date of international publication of the international application.
(b) [No change]
(b-bis) Where the priority document is, in accordance with the Administrative Instructions, available to the receiving Office or to the International Bureau from a digital library, the applicant may, as the case may be, instead of submitting the priority document:
(i) request the receiving Office to obtain the priority document from such digital library and transmit it to the International Bureau; or
(ii) request the International Bureau to obtain the priority document from such digital library.
Such request shall be made not later than 16 months after the priority date and may be subjected by the receiving Office or the International Bureau to the payment of a fee.
(c) If the requirements of none of the three preceding paragraphs are complied with, any designated Office may, subject to paragraph (d), disregard the priority claim, provided that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable under the circumstances.
(d) No designated Office shall disregard the priority claim under paragraph (c) if the earlier application referred to in paragraph (a) was filed with it in its capacity as national Office or if the priority document is, in accordance with the Administrative Instructions, available to it from a digital library.
17.2 [No change]
Rule 19
The Competent Receiving Office
19.1 to 19.3 [No change]
19.4 Transmittal to the International Bureau as Receiving Office
(a) and (b) [No change]
(c) For the purposes of Rules 14.1(c), 15.4 and 16.1(f), where the international application was transmitted to the International Bureau under paragraph (b), the date of receipt of the international application shall be considered to be the date on which the international application was actually received by the International Bureau. For the purposes of this paragraph, the last sentence of paragraph (b) shall not apply.
Rule 24
Receipt of the Record Copy by the International Bureau
24.1 [Remains deleted]
24.2 Notification of Receipt of the Record Copy
(a) The International Bureau shall promptly notify:
(i) to (iii) [No change]
of the fact and the date of receipt of the record copy. The notification shall identify the international application by its number, the international filing date and the name of the applicant, and shall indicate the filing date of any earlier application whose priority is claimed. The notification sent to the applicant shall also contain a list of the designated Offices and, in the case of a designated Office which is responsible for granting regional patents, of the Contracting States designated for such regional patent.
(b) [Deleted]
(c) [No change]
Rule 26
Checking by, and Correcting Before, the Receiving Office of Certain Elements of the International Application
26.1 and 26.2 [No change]
26.2bis Checking of Requirements Under Article 14(1)(a)(i) and (ii)
(a) For the purposes of Article 14(1)(a)(i), if there is more than one applicant, it shall be sufficient that the request be signed by one of them.
(b) For the purposes of Article 14(1)(a)(ii), if there is more than one applicant, it shall be sufficient that the indications required under Rule 4.5(a)(ii) and (iii) be provided in respect of one of them who is entitled according to Rule 19.1 to file the international application with the receiving Office.
26.3 to 26.6 [No change]
Rule 27
Lack of Payment of Fees
(a) For the purposes of Article 14(3)(a), "fees prescribed under Article 3(4)(iv)" means: the transmittal fee (Rule 14), the international filing fee (Rule 15.1), the search fee (Rule 16), and, where required, the late payment fee (Rule 16bis.2).
(b) For the purposes of Article 14(3)(a) and (b), "the fee prescribed under Article 4(2)" means the international filing fee (Rule 15.1) and, where required, the late payment fee (Rule 16bis.2).
Rule 29
International Applications Considered Withdrawn
29.1 Finding by Receiving Office
If the receiving Office declares, under Article 14(1)(b) and Rule 26.5 (failure to correct certain defects), or under Article 14(3)(a) (failure to pay the prescribed fees under Rule 27.1(a)), or under Article 14(4) (later finding of non-compliance with the requirements listed in items (i) to (iii) of Article 11(1)), or under Rule 12.3(d) or 12.4(d) (failure to furnish a required translation or, where applicable, to pay a late furnishing fee), or under Rule 92.4(g)(i) (failure to furnish the original of a document), that the international application is considered withdrawn:
(i) to (iv) [No change]
(b) [Deleted]
29.2 [Remains deleted]
29.3 and 29.4 [No change]
Rule 32
Extension of Effects of International Application to Certain Successor States
32.1 Request for Extension of International Application to Successor State
(a) The effects of any international application whose international filing date falls in the period defined in paragraph (b) are extended to a State ("the successor State") whose territory was, before the independence of that State, part of the territory of a Contracting State designated in the international application which subsequently ceased to exist ("the predecessor State"), provided that the successor State has become a Contracting State through the deposit, with the Director General, of a declaration of continuation the effect of which is that the Treaty is applied by the successor State.
(b) [No change]
(c) Information on any international application whose filing date falls within the applicable period under paragraph (b) and whose effect is extended to the successor State shall be published by the International Bureau in the Gazette.
(d) [Deleted]
32.2 Effects of Extension to Successor State
(a) Where the effects of the international application are extended to the successor State in accordance with Rule 32.1,
(i) [No change]
(ii) the applicable time limit under Article 22 or 39(1) in relation to that State shall be extended until the expiration of at least six months from the date of the publication of the information under Rule 32.1(c).
(b) The successor State may fix a time limit which expires later than that provided in paragraph (a)(ii). The International Bureau shall publish information on such time limits in the Gazette.
Rule 36
Minimum Requirements for International Searching Authorities
36.1 Definition of Minimum Requirements
The minimum requirements referred to in Article 16(3)(c) shall be the following:
(i) and (ii) [No change]
(iii) that Office or organization must have a staff which is capable of searching the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated;
(iv) that Office or organization must hold an appointment as an International Preliminary Examining Authority.
Rule 43bis
Written Opinion of the International Searching Authority
(a) Subject to Rule 69.1(b-bis), the International Searching Authority shall, at the same time as it establishes the international search report, establish a written opinion as to:
(i) whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable;
(ii) whether the international application complies with the requirements of the Treaty and these Regulations in so far as checked by the International Searching Authority.
The written opinion shall also be accompanied by such other observations as these Regulations provide for.
(b) For the purposes of establishing the written opinion, Articles 33(2) to (6), 35(2) and 35(3) and Rules 43.4, 64, 65, 66.1(e), 66.2(a), (b) and (e), 66.7, 67, 70.2(b) and (d), 70.3, 70.4(ii), 70.5(a), 70.6 to 70.10, 70.12, 70.14 and 70.15(a) shall apply mutatis mutandis.
(c) The written opinion shall contain a notification informing the applicant that, if a demand for international preliminary examination is made, the written opinion shall, under Rule 66.1bis(a) but subject to Rule 66.1bis(b), be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a), in which case the applicant is invited to submit to that Authority, before the expiration of the time limit under Rule 54bis.1(a), a written reply together, where appropriate, with amendments.
Rule 44
Transmittal of the International Search Report, Written Opinion, Etc.
44.1 Copies of Report or Declaration and Written Opinion
The International Searching Authority shall, on the same day, transmit one copy of the international search report and the written opinion established under Rule 43bis.1, or of the declaration referred to in Article 17(2)(a), to the International Bureau and one copy to the applicant.
44.2 and 44.3 [No change]
Rule 44bis
International Preliminary Report on Patentability by the International Searching Authority
(a) Unless an international preliminary examination report has been or is to be established, the International Bureau shall issue a report on behalf of the International Searching Authority (in this Rule referred to as "the report") as to the matters referred to in Rule 43bis.1(a). The report shall have the same contents as the written opinion established under Rule 43bis.1.
(b) The report shall bear the title "international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty)" together with an indication that it is issued under this Rule by the International Bureau on behalf of the International Searching Authority.
44bis.2 Communication to Designated Offices
(a) Where a report has been issued under Rule 44bis.1, the International Bureau shall communicate it to each designated Office in accordance with Rule 93bis.1 but not before the expiration of 30 months from the priority date.
(b) Where the applicant makes an express request to a designated Office under Article 23(2), the International Bureau shall communicate a copy of the written opinion established by the International Searching Authority under Rule 43bis.1 to that Office promptly upon the request of that Office or of the applicant.
44bis.3 Translation for Designated Offices
(a) Any designated State may, where a report has been issued under Rule 44bis.1 in a language other than the official language, or one of the official languages, of its national Office, require a translation of the report into English. Any such requirement shall be notified to the International Bureau, which shall promptly publish it in the Gazette.
(b) If a translation is required under paragraph (a), it shall be prepared by or under the responsibility of the International Bureau.
(c) The International Bureau shall transmit a copy of the translation to any interested designated Office and to the applicant at the same time as it communicates the report to that Office.
(d) In the case referred to in Rule 44bis.2(b), the written opinion established under Rule 43bis.1 shall, upon request of the designated Office concerned, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to the designated Office concerned within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.
44bis.4 Observations on the Translation
The applicant may make written observations as to the correctness of the translation referred to in Rule 44bis.3(b) or (d) and shall send a copy of the observations to each of the interested designated Offices and to the International Bureau.
Rule 44ter
Confidential Nature of Written Opinion, Report, Translation and Observations
(a) The International Bureau and the International Searching Authority shall not, unless requested or authorized by the applicant, allow access by any person or authority before the expiration of 30 months from the priority date:
(i) to the written opinion established under Rule 43bis.1, to any translation thereof prepared under Rule 44bis.3(d) or to any written observations on such translation sent by the applicant under Rule 44bis.4;
(ii) if a report is issued under Rule 44bis.1, to that report, to any translation of it prepared under Rule 44bis.3(b) or to any written observations on that translation sent by the applicant under Rule 44bis.4.
(b) For the purposes of paragraph (a), the term "access" covers any means by which third parties may acquire cognizance, including individual communication and general publication.
Rule 47
Communication to Designated Offices
(a) The communication provided for in Article 20 shall be effected by the International Bureau to each designated Office in accordance with Rule 93bis.1 but, subject to Rule 47.4, not prior to the international publication of the international application.
(a-bis) The International Bureau shall notify each designated Office, in accordance with Rule 93bis.1, of the fact and date of receipt of the record copy and of the fact and date of receipt of any priority document.
(a-ter) [No change]
(b) Any amendment received by the International Bureau within the time limit under Rule 46.1 which was not included in the communication provided for in Article 20 shall be communicated promptly to the designated Offices by the International Bureau, and the latter shall notify the applicant accordingly.
(c) The International Bureau shall, promptly after the expiration of 28 months from the priority date, send a notice to the applicant indicating:
(i) the designated Offices which have requested that the communication provided for in Article 20 be effected under Rule 93bis.1 and the date of such communication to those Offices; and
(ii) the designated Offices which have not requested that the communication provided for in Article 20 be effected under Rule 93bis.1.
(c-bis) The notice referred to in paragraph (c) shall be accepted by designated Offices:
(i) in the case of a designated Office referred to in paragraph (c)(i), as conclusive evidence that the communication provided for in Article 20 was effected on the date specified in the notice;
(ii) in the case of a designated Office referred to in paragraph (c)(ii), as conclusive evidence that the Contracting State for which that Office acts as designated Office does not require the furnishing, under Article 22, by the applicant of a copy of the international application.
(d) [No change]
(e) Where any designated Office has not, before the expiration of 28 months from the priority date, requested the International Bureau to effect the communication provided for in Article 20 in accordance with Rule 93bis.1, the Contracting State for which that Office acts as designated Office shall be considered to have notified the International Bureau, under Rule 49.1(a-bis), that it does not require the furnishing, under Article 22, by the applicant of a copy of the international application.
The copies required for communication shall be prepared by the International Bureau. Further details concerning the copies required for communication may be provided for in the Administrative Instructions.
(b) [Deleted]
(c) [Deleted]
47.3 [No change]
47.4 Express Request Under Article 23(2) Prior to International Publication
Where the applicant makes an express request to a designated Office under Article 23(2) prior to the international publication of the international application, the International Bureau shall, upon request of the applicant or the designated Office, promptly effect the communication provided for in Article 20 to that Office.
Rule 48
International Publication
48.1 to 48.5 [No change]
48.6 Announcing of Certain Facts
(a) If any notification under Rule 29.1(ii) reaches the International Bureau at a time later than that at which it was able to prevent the international publication of the international application, the International Bureau shall promptly publish a notice in the Gazette reproducing the essence of such notification.
(b) [Remains deleted]
(c) [No change]
Rule 49bis
Indications as to Protection Sought for Purposes of National Processing
49bis.1 Choice of Certain Kinds of Protection
(a) If the applicant wishes the international application to be treated, in a designated State in respect of which Article 43 applies, as an application not for the grant of a patent but for the grant of another kind of protection referred to in that Article, the applicant, when performing the acts referred to in Article 22, shall so indicate to the designated Office.
(b) If the applicant wishes the international application to be treated, in a designated State in respect of which Article 44 applies, as an application for the grant of more than one kind of protection referred to in Article 43, the applicant, when performing the acts referred to in Article 22, shall so indicate to the designated Office and shall indicate, if applicable, which kind of protection is sought primarily and which kind is sought subsidiarily.
(c) In the cases referred to in paragraphs (a) and (b), if the applicant wishes the international application to 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, the applicant, when performing the acts referred to in Article 22, shall indicate the relevant parent application, parent patent or other parent grant.
(d) If the applicant wishes the international application to be treated, in a designated State, as an application for a continuation or a continuation-in-part of an earlier application, the applicant, when performing the acts referred to in Article 22, shall so indicate to the designated Office and shall indicate the relevant parent application.
(e) Where no express indication under paragraph (a) is made by the applicant when performing the acts referred to in Article 22 but the national fee referred to in Article 22 paid by the applicant corresponds to the national fee for a particular kind of protection, the payment of that fee shall be considered to be an indication of the wish of the applicant that the international application is to be treated as an application for that kind of protection and the designated Office shall inform the applicant accordingly.
49bis.2 Time of Furnishing Indications
(a) No designated Office shall require the applicant to furnish, before performing the acts referred to in Article 22, any indication referred to in Rule 49bis.1 or, where applicable, any indication as to whether the applicant seeks the grant of a national patent or a regional patent.
(b) The applicant may, if so permitted by the national law applicable by the designated Office concerned, furnish such indication or, if applicable, convert from one kind of protection to another, at any later time.
Rule 51
Review by Designated Offices
51.1 Time Limit for Presenting the Request to Send Copies
The time limit referred to in Article 25(1)(c) shall be two months computed from the date of the notification sent to the applicant under Rule 20.7(i), 24.2(c) or 29.1(ii).
51.2 and 51.3 [No change]
Rule 51bis
Certain National Requirements Allowed Under Article 27
51bis.1 Certain National Requirements Allowed
(a) Subject to Rule 51bis.2, the national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish, in particular:
(i) to (iv) [No change]
(v) any evidence concerning non-prejudicial disclosures or exceptions to lack of novelty, such as disclosures resulting from abuse, disclosures at certain exhibitions and disclosures by the applicant during a certain period of time;
(vi) the confirmation of the international application by the signature of any applicant for the designated State who has not signed the request;
(vii) any missing indication required under Rule 4.5(a)(ii) and (iii) in respect of any applicant for the designated State.
(b) to (f) [No change]
51bis.2 and 51bis.3 [No change]
Rule 52
Amendment of the Claims, the Description, and the Drawings, Before Designated Offices
(a) In any designated State in which processing or examination starts without special request, the applicant shall, if he so wishes, exercise the right under Article 28 within one month from the fulfillment of the requirements under Article 22, provided that, if the communication under Rule 47.1 has not been effected by the expiration of the time limit applicable under Article 22, he shall exercise the said right not later than four months after such expiration date. In either case, the applicant may exercise the said right at any later time if so permitted by the national law of the said State.
(b) [No change]
Rule 53
The Demand
53.1 to 53.3 [No change]
As to the indications concerning the applicant, Rules 4.4 and 4.16 shall apply, and Rule 4.5 shall apply mutatis mutandis.
53.5 and 53.6 [No change]
The filing of a demand shall constitute the election of all Contracting States which are designated and are bound by Chapter II of the Treaty.
53.8 and 53.9 [No change]
Rule 54bis
Time Limit for Making a Demand
54bis.1 Time Limit for Making a Demand
(a) A demand may be made at any time prior to the expiration of whichever of the following periods expires later:
(i) three months from the date of transmittal to the applicant of the international search report and the written opinion established under Rule 43bis.1, or of the declaration referred to in Article 17(2)(a); or
(ii) 22 months from the priority date.
(b) Any demand made after the expiration of the time limit applicable under paragraph (a) shall be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.
Rule 57
The Handling Fee
57.1 and 57.2 [No change]
57.3 Time Limit for Payment; Amount Payable
(a) Subject to paragraphs (b) and (c), the handling fee shall be paid within one month from the date on which the demand was submitted or 22 months from the priority date, whichever expires later.
(b) Subject to paragraph (c), where the demand was transmitted to the International Preliminary Examining Authority under Rule 59.3, the handling fee shall be paid within one month from the date of receipt by that Authority or 22 months from the priority date, whichever expires later.
(c) Where, in accordance with Rule 69.1(b), the International Preliminary Examining Authority wishes to start the international preliminary examination at the same time as the international search, that Authority shall invite the applicant to pay the handling fee within one month from the date of the invitation.
(d) The amount of the handling fee payable shall be the amount applicable on the date of payment.
57.4 and 57.5 [Remain deleted]
The International Preliminary Examining Authority shall refund the handling fee to the applicant:
(i) [No change]
(ii) if the demand is considered, under Rule 54.4 or 54bis.1(b), not to have been submitted.
Rule 58bis
Extension of Time Limits for Payment of Fees
58bis.1 Invitation by the International Preliminary Examining Authority
(a) Where the International Preliminary Examining Authority finds:
(i) that the amount paid to it is insufficient to cover the handling fee and the preliminary examination fee; or
(ii) by the time they are due under Rules 57.3 and 58.1(b), that no fees were paid to it;
the Authority shall invite the applicant to pay to it the amount required to cover those fees, together with, where applicable, the late payment fee under Rule 58bis.2, within a time limit of one month from the date of the invitation.
(b) to (d) [No change]
58bis.2 [No change]
Rule 59
The Competent International Preliminary Examining Authority
59.1 and 59.2 [No change]
59.3 Transmittal of the Demand to the Competent International Preliminary Examining Authority
(a) and (b) [No change]
(c) Where the demand is transmitted to the International Bureau under paragraph (a) or submitted to it under paragraph (b), the International Bureau shall promptly:
(i) [No change]
(ii) if two or more International Preliminary Examining Authorities are competent, invite the applicant to indicate, within the time limit applicable under Rule 54bis.1(a) or 15 days from the date of the invitation, whichever is later, the competent International Preliminary Examining Authority to which the demand should be transmitted.
(d) to (f) [No change]
Rule 60
Certain Defects in the Demand
(a) Subject to paragraphs (a-bis) and (a-ter), if the demand does not comply with the requirements specified in Rules 53.1, 53.2(a)(i) to (iv), 53.2(b), 53.3 to 53.8 and 55.1, the International Preliminary Examining Authority shall invite the applicant to correct the defects within a time limit which shall be reasonable under the circumstances. That time limit shall not be less than one month from the date of the invitation. It may be extended by the International Preliminary Examining Authority at any time before a decision is taken.
(a-bis) For the purposes of Rule 53.4, if there are two or more applicants, it shall be sufficient that the indications referred to in Rule 4.5(a)(ii) and (iii) be provided in respect of one of them who has the right according to Rule 54.2 to make a demand.
(a-ter) For the purposes of Rule 53.8, if there are two or more applicants, it shall be sufficient that the demand be signed by one of them.
(b) to (g) [No change]
Rule 61
Notification of the Demand and Elections
61.1 Notification to the International Bureau and the Applicant
(a) and (b) [No change]
(c) [Deleted]
61.2 Notification to the Elected Offices
(a) [No change]
(b) The notification shall indicate the number and filing date of the international application, the name of the applicant, the filing date of the application whose priority is claimed (where priority is claimed) and the date of receipt by the International Preliminary Examining Authority of the demand.
(c) [No change]
(d) Where the applicant makes an express request to an elected Office under Article 40(2) prior to the international publication of the international application, the International Bureau shall, upon request of the applicant or the elected Office, promptly effect the communication provided for in Article 20 to that Office.
61.3 [No change]
61.4 Publication in the Gazette
The International Bureau shall, promptly after the filing of the demand but not before the international publication of the international application, publish in the Gazette information on the demand and the elected States concerned, as provided in the Administrative Instructions.
Rule 62
Copy of the Written Opinion by the International Searching Authority and of Amendments Under Article 19 for the International Preliminary Examining Authority
62.1 Copy of Written Opinion by International Searching Authority and of Amendments Made Before the Demand Is Filed
Upon receipt of a demand, or a copy thereof, from the International Preliminary Examining Authority, the International Bureau shall promptly transmit to that Authority:
(i) a copy of the written opinion established under Rule 43bis.1, unless the national Office or intergovernmental organization that acted as International Searching Authority is also acting as International Preliminary Examining Authority; and
(ii) a copy of any amendment under Article 19, and any statement referred to in that Article, unless that Authority has indicated that it has already received such a copy.
62.2 [No change]
Rule 62bis
Translation for the International Preliminary Examining Authority of the Written Opinion of the International Searching Authority
62bis.1 Translation and Observations
(a) Upon request of the International Preliminary Examining Authority, the written opinion established under Rule 43bis.1 shall, when not in English or in a language accepted by that Authority, be translated into English by or under the responsibility of the International Bureau.
(b) The International Bureau shall transmit a copy of the translation to the International Preliminary Examining Authority within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.
(c) The applicant may make written observations as to the correctness of the translation and shall send a copy of the observations to the International Preliminary Examining Authority and to the International Bureau.
Rule 63
Minimum Requirements for International Preliminary Examining Authorities
63.1 Definition of Minimum Requirements
The minimum requirements referred to in Article 32(3) shall be the following:
(i) and (ii) [No change]
(iii) that Office or organization must have a staff which is capable of examining in the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated;
(iv) that Office or organization must hold an appointment as an International Searching Authority.
Rule 66
Procedure Before the International Preliminary Examining Authority
66.1 [No change]
66.1bis Written Opinion of the International Searching Authority
(a) Subject to paragraph (b), the written opinion established by the International Searching Authority under Rule 43bis.1 shall be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a).
(b) An International Preliminary Examining Authority may notify the International Bureau that paragraph (a) shall not apply to the procedure before it in respect of written opinions established under Rule 43bis.1 by the International Searching Authority or Authorities specified in the notification, provided that such a notification shall not apply to cases where the national Office or intergovernmental organization that acted as International Searching Authority is also acting as International Preliminary Examining Authority. The International Bureau shall promptly publish any such notification in the Gazette.
(c) Where the written opinion established by the International Searching Authority under Rule 43bis.1 is not, by virtue of a notification under paragraph (b), considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a), the International Preliminary Examining Authority shall notify the applicant accordingly in writing.
(d) A written opinion established by the International Searching Authority under Rule 43bis.1 which is not, by virtue of a notification under paragraph (b), considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a) shall nevertheless be taken into account by the International Preliminary Examining Authority in proceeding under Rule 66.2(a).
66.2 Written Opinion of the International Preliminary Examining Authority
(a) to (c) [No change]
(d) The notification shall fix a time limit for the reply. The time limit shall be reasonable under the circumstances. It shall normally be two months after the date of notification. In no case shall it be shorter than one month after the said date. It shall be at least two months after the said date where the international search report is transmitted at the same time as the notification. It shall, subject to paragraph (e), not be more than three months after the said date.
(e) The time limit for replying to the notification may be extended if the applicant so requests before its expiration.
66.3 to 66.6 [No change]
66.7 Copy and Translation of Earlier Application Whose Priority is Claimed
(a) If the International Preliminary Examining Authority needs a copy of the earlier application whose priority is claimed in the international application, the International Bureau shall, on request, promptly furnish such copy. If that copy is not furnished to the International Preliminary Examining Authority because the applicant failed to comply with the requirements of Rule 17.1, and if that earlier application was not filed with that Authority in its capacity as a national Office or the priority document is not available to that Authority from a digital library in accordance with the Administrative Instructions, the international preliminary examination report may be established as if the priority had not been claimed.
(b) [No change]
66.8 and 66.9 [No change]
Rule 69
Start of and Time Limit for International Preliminary Examination
69.1 Start of International Preliminary Examination
(a) Subject to paragraphs (b) to (e), the International Preliminary Examining Authority shall start the international preliminary examination when it is in possession of all of the following:
(i) the demand;
(ii) the amount due (in full) for the handling fee and the preliminary examination fee, including, where applicable, the late payment fee under Rule 58bis.2; and
(iii) either the international search report and the written opinion established under Rule 43bis.1 or a notice of the declaration by the International Searching Authority under Article 17(2)(a) that no international search report will be established;
provided that the International Preliminary Examining Authority shall not start the international preliminary examination before the expiration of the applicable time limit under Rule 54bis.1(a) unless the applicant expressly requests an earlier start.
(b) If the national Office or intergovernmental organization that acts as International Searching Authority also acts as International Preliminary Examining Authority, the international preliminary examination may, if that national Office or intergovernmental organization so wishes and subject to paragraphs (d) and (e), start at the same time as the international search.
(b-bis) Where, in accordance with paragraph (b), the national Office or intergovernmental organization that acts as both International Searching Authority and International Preliminary Examining Authority wishes to start the international preliminary examination at the same time as the international search and considers that all of the conditions referred to in Article 34(2)(c)(i) to (iii) are fulfilled, that national Office or intergovernmental organization need not, in its capacity as International Searching Authority, establish a written opinion under Rule 43bis.1.
(c) [No change]
(d) Where the statement concerning amendments contains an indication that the start of the international preliminary examination is to be postponed (Rule 53.9(b)), the International Preliminary Examining Authority shall not start the international preliminary examination before whichever of the following occurs first:
(i) it has received a copy of any amendments made under Article 19;
(ii) it has received a notice from the applicant that he does not wish to make amendments under Article 19; or
(iii) the expiration of the applicable time limit under Rule 54bis.1(a).
(e) [No change]
69.2 Time Limit for International Preliminary Examination
The time limit for establishing the international preliminary examination report shall be whichever of the following periods expires last:
(i) 28 months from the priority date; or
(ii) six months from the time provided under Rule 69.1 for the start of the international preliminary examination; or
(iii) six months from the date of receipt by the International Preliminary Examining Authority of the translation furnished under Rule 55.2.
Rule 70
International Preliminary Report on Patentability by the International Preliminary Examining Authority (International Preliminary Examination Report )
70.1 to 70.14 [No change]
(a) The physical requirements as to the form of the report shall be prescribed by the Administrative Instructions.
(b) The report shall bear the title "international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)" together with an indication that it is the international preliminary examination report established by the International Preliminary Examining Authority.
70.16 and 70.17 [No change]
Rule 72
Translation of the International Preliminary Examination Report and of the Written Opinion of the International Searching Authority
72.1 and 72.2 [No change]
72.2bis Translation of the Written Opinion of the International Searching Authority Established Under Rule 43bis.1
In the case referred to in Rule 73.2(b)(ii), the written opinion established by the International Searching Authority under Rule 43bis.1 shall, upon request of the elected Office concerned, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to the elected Office concerned within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.
72.3 Observations on the Translation
The applicant may make written observations as to the correctness of the translation of the international preliminary examination report or of the written opinion established by the International Searching Authority under Rule 43bis.1 and shall send a copy of the observations to each of the interested elected Offices and to the International Bureau.
Rule 73
Communication of the International Preliminary Examination Report or the Written Opinion of the International Searching Authority
73.1 [No change]
73.2 Communication to Elected Offices
(a) The International Bureau shall effect the communication provided for in Article 36(3)(a) to each elected Office in accordance with Rule 93bis.1 but not before the expiration of 30 months from the priority date.
(b) Where the applicant makes an express request to an elected Office under Article 40(2), the International Bureau shall, upon the request of that Office or of the applicant,
(i) if the international preliminary examination report has already been transmitted to the International Bureau under Rule 71.1, promptly effect the communication provided for in Article 36(3)(a) to that Office;
(ii) if the international preliminary examination report has not been transmitted to the International Bureau under Rule 71.1, promptly communicate a copy of the written opinion established by the International Searching Authority under Rule 43bis.1 to that Office.
(c) Where the applicant has withdrawn the demand or any or all elections, the communication provided for in paragraph (a) shall nevertheless be effected, if the International Bureau has received the international preliminary examination report, to the elected Office or Offices affected by the withdrawal.
Rule 76
Copy, Translation and Fee Under Article 39(1); Translation of Priority Document
76.1, 76.2 and 76.3 [Remain deleted]
76.4 [No change]
76.5 Application of Rules 22.1(g), 47.1, 49, 49bis and 51bis
Rules 22.1(g), 47.1, 49, 49bis and 51bis shall apply, provided that:
(i) to (iii) [No change]
(iv) for the purposes of Article 39(1), where an international preliminary examination report has been established, a translation of any amendment under Article 19 shall only be required if that amendment is annexed to that report;
(v) the reference in Rule 47.1(a) to Rule 47.4 shall be construed as a reference to Rule 61.2(d).
Rule 78
Amendment of the Claims, the Description, and the Drawings, Before Elected Offices
(a) The applicant shall, if he so wishes, exercise the right under Article 41 to amend the claims, the description and the drawings, before the elected Office concerned within one month from the fulfillment of the requirements under Article 39(1)(a), provided that, if the transmittal of the international preliminary examination report under Article 36(1) has not taken place by the expiration of the time limit applicable under Article 39, he shall exercise the said right not later than four months after such expiration date. In either case, the applicant may exercise the said right at any later time if so permitted by the national law of the said State.
(b) In any elected State in which the national law provides that examination starts only on special request, the national law may provide that the time limit within or the time at which the applicant may exercise the right under Article 41 shall be the same as that provided by the national law for the filing of amendments in the case of the examination, on special request, of national applications, provided that such time limit shall not expire prior to, or such time shall not come before, the expiration of the time limit applicable under paragraph (a).
78.3 [No change]
Rule 89bis
Filing, Processing and Communication of International Applications and Other Documents in Electronic Form or by Electronic Means
89bis.1 and 89bis.2 [No change]
89bis.3 Communication Between Offices
Where the Treaty, these Regulations or the Administrative Instructions provide for the communication, notification or transmittal ("communication") of an international application, notification, communication, correspondence or other document by one national Office or intergovernmental organization to another, such communication may, where so agreed by both the sender and the receiver, be effected in electronic form or by electronic means.
Rule 90
Agents and Common Representatives
90.1 [No change]
(a) Where there are two or more applicants and the applicants have not appointed an agent representing all of them (a "common agent") under Rule 90.1(a), one of the applicants who is entitled to file an international application according to Article 9 and in respect of whom all indications required under Rule 4.5(a) have been provided may be appointed by the other applicants as their common representative.
(b) Where there are two or more applicants and all the applicants have not appointed a common agent under Rule 90.1(a) or a common representative under paragraph (a), the applicant first named in the request who is entitled according to Rule 19.1 to file an international application with the receiving Office and in respect of whom all indications required under Rule 4.5(a) have been provided shall be considered to be the common representative of all the applicants.
90.3 [No change]
90.4 Manner of Appointment of Agent or Common Representative
(a) to (c) [No change]
(d) Subject to paragraph (e), any receiving Office, any International Searching Authority, any International Preliminary Examining Authority and the International Bureau may waive the requirement under paragraph (b) that a separate power of attorney be submitted to it, in which case paragraph (c) shall not apply.
(e) Where the agent or the common representative submits any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4, the requirement under paragraph (b) for a separate power of attorney shall not be waived under paragraph (d).
90.5 and 90.6 [No change]
Rule 90bis
Withdrawals
90bis.1 to 90bis.4 [No change]
(a) Any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 shall, subject to paragraph (b), be signed by the applicant or, if there are two or more applicants, by all of them. An applicant who is considered to be the common representative under Rule 90.2(b) shall, subject to paragraph (b), not be entitled to sign such a notice on behalf of the other applicants.
(b) Where two or more applicants file an international application which designates a State whose national law requires that national applications be filed by the inventor and where an applicant for that designated State who is an inventor could not be found or reached after diligent effort, a notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 need not be signed by that applicant ("the applicant concerned") if it is signed by at least one applicant and
(i) and (ii) [No change]
(iii) in the case of a notice of withdrawal referred to in Rule 90bis.4(b), the applicant concerned did not sign the demand but the requirements of Rule 53.8(b) were complied with.
90bis.6 and 90bis.7 [No change]
Rule 92bis
Recording of Changes in Certain Indications
in the Request or the Demand
92bis.1 Recording of Changes by the International Bureau
(a) [No change]
(b) The International Bureau shall not record the requested change if the request for recording is received by it after the expiration of 30 months from the priority date.
Rule 93bis
Manner of Communication of Documents
93bis.1 Communication on Request; Communication via Digital Library
(a) Where the Treaty, these Regulations or the Administrative Instructions provide for the communication, notification or transmittal ("communication") of an international application, notification, communication, correspondence or other document ("document") by the International Bureau to any designated or elected Office, such communication shall be effected only upon request by the Office concerned and at the time specified by that Office. Such request may be made in relation to individually specified documents or a specified class or classes of documents.
(b) A communication under paragraph (a) shall, where so agreed by the International Bureau and the designated or elected Office concerned, be considered to be effected at the time when the International Bureau makes the document available to that Office in electronic form in a digital library, in accordance with the Administrative Instructions, from which that Office is entitled to retrieve that document.
Rule 94
Access to Files
94.1 Access to the File Held by the International Bureau
(a) [No change]
(b) The International Bureau shall, at the request of any person but not before the international publication of the international application and subject to Article 38 and Rule 44ter.1, furnish, subject to the reimbursement of the cost of the service, copies of any document contained in its file.
(c) The International Bureau shall, if so requested by an elected Office, furnish copies of the international preliminary examination report under paragraph (b) on behalf of that Office. The International Bureau shall promptly publish details of any such request in the Gazette.
94.2 and 94.3 [No change]
SCHEDULE OF FEES
| Fees | Amounts | ||
| 1. | International Filing Fee: (Rule 15.2(a)) | 650 Swiss francs plus 15 Swiss francs for each sheet of the international application in excess of 30 sheets | |
| 2. | Handling Fee: (Rule 57.2(a)) | 233 Swiss francs | |
| Reductions | |||
| 3. The international filing fee is reduced by 200 Swiss francs if the international application is, in accordance with and to the extent provided for in the Administrative Instructions, filed: | |||
| (a) | on paper together with a copy thereof in electronic form; or | ||
| (b) | in electronic form. | ||
| 4. All fees payable (where applicable, as reduced under item 3) are reduced by 75% for international applications filed by any applicant who is a natural person and who is a national of and resides in a State whose per capita national income is below US$3,000 (according to the average per capita national income figures used by the United Nations for determining its scale of assessments for the contributions payable for the years 1995, 1996 and 1997); if there are several applicants, each must satisfy those criteria. | |||
I hereby certify that the foregoing is a true copy of the original text in English of the amendments of the Regulations under the Patent Cooperation Treaty (PCT), adopted by the Assembly of the International Patent Cooperation Union (PCT Union) at its thirty-first (18th extraordinary) session on October 1, 2002, with effect from January 1, 2004.
(signed)
Kamil Idris
Director General
World Intellectual Property Organization
February 14, 2003
Footnotes:
(*) The Rules as amended:
(a) shall enter into force on January 1, 2004, and shall apply to any international application whose international filing date is on or after January 1, 2004, provided that:
(i) Rule 15.4 and the Schedule of Fees as worded before their amendment shall continue to apply to any international application which is received by the receiving Office before January 1, 2004, and is accorded an international filing date that is on or after January 1, 2004;
(ii) Rule 47.1(c) and (e) as amended shall apply to any international application whose international filing date is on or after January 1, 2004, in respect of a designated Office which has made a notification under paragraph (2) of the decisions of the Assembly set out in Annex IV of document PCT/A/30/7, and which has not withdrawn that notification under paragraph (3) of those decisions, as though the reference in each of Rule 47.1(c) and (e) to "28 months" was a reference to "19 months," with the consequence that two notifications under Rule 47.1(c) shall, if applicable, be sent in respect of such an application;
(b) shall not apply to any international application whose international filing date is before January 1, 2004, provided that:
(i) Rules 53.4, 53.7, 60.1, 61.2 and 90bis.5(b) as amended, the Rules as amended that are referred to in those Rules and the deletion of Rules 56, 60.2 and 61.1(c) shall apply to any international application in respect of which a demand for international preliminary examination is filed on or after January 1, 2004, whether the international filing date of the international application is before, on or after January 1, 2004;
(ii) new Rule 94.1(c) shall apply to the furnishing on or after January 1, 2004, of copies of the international preliminary examination report in respect of any international application, whether the international filing date of the application is before, on or after January 1, 2004.
1. The following reproduces the text as amended of each Rule that was amended. Where a paragraph or item of any such Rule has not been amended, the indication "[No change]" appears.