PCT Notification No. 180
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-fifth (20th extraordinary) session on October 3, 2006, with effect from April 1, 2007
Table of Amendments [1]
Rule 11.9
Rule 12.1ter
Rule 12.2
Rule 20.8
Rule 26.4
Rule 36.1
Rule 43.4
Rule 48.3
Rule 54bis.1
Rule 55.2
Rule 63.1
Rule 76.5
Rule 91.3
AMENDMENTS [2]
Rule 11
Physical Requirements of the International Application
11.1 to 11.8 [No change]
(a) to (c) [No change]
(d) All text matter shall be in characters the capital letters of which are not less than 0.28 cm high, and shall be in a dark, indelible color, satisfying the requirements specified in Rule 11.2, provided that any text matter in the request may be in characters the capital letters of which are not less than 0.21 cm high.
(e) [No change]
11.10 to 11.14 [No change]
Rule 12
Language of the International Application and Translations for the Purposes of International Search and International Publication
12.1 and 12.1bis [No change]
12.1ter Language of Indications Furnished under Rule 13bis.4
Any indication in relation to deposited biological material furnished under Rule 13bis.4 shall be in the language in which the international application is filed, provided that, where a translation of the international application is required under Rule 12.3(a) or 12.4(a), any such indication shall be furnished in both the language in which the application is filed and the language of that translation.
12.2 Language of Changes in the International Application
(a) and (b) [No change]
(c) Any correction under Rule 26 of a defect in the international application shall be in the language in which the international application is filed. Any correction under Rule 26 of a defect in a translation of the international application furnished under Rule 12.3 or 12.4, any correction under Rule 55.2(c) of a defect in a translation furnished under Rule 55.2(a), or any correction of a defect in a translation of the request furnished under Rule 26.3ter(c), shall be in the language of the translation.
12.3 and 12.4 [No change]
Rule 20
International Filing Date
20.1 to 20.7 [No change]
20.8 Incompatibility with National Laws
(a) [No change] If, on October 5, 2005, any of Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 are not compatible with the national law applied by the receiving Office, the Rules concerned shall not apply to an international application filed with that receiving Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.
(a-bis) Where a missing element or part cannot be incorporated by reference in the international application under Rules 4.18 and 20.6 because of the operation of paragraph (a) of this Rule, the receiving Office shall proceed as provided for in Rule 20.3(b)(i), 20.5(b) or 20.5(c), as the case may be. Where the receiving Office proceeds as provided for in Rule 20.5(c), the applicant may proceed as provided for in Rule 20.5(e).
(b) [No change] If, on October 5, 2005, any of Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 are not compatible with the national law applied by the designated Office, the Rules concerned shall not apply in respect of that Office in relation to an international application in respect of which the acts referred to in Article 22 have been performed before that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.
(c) Where an element or part is considered to have been incorporated by reference in the international application by virtue of a finding of the receiving Office under Rule 20.6(b), but that incorporation by reference does not apply to the international application for the purposes of the procedure before a designated Office because of the operation of paragraph (b) of this Rule, the designated Office may treat the application as if the international filing date had been accorded under Rule 20.3(b)(i) or 20.5(b), or corrected under Rule 20.5(c), as the case may be, provided that Rule 82ter.1(c) and (d) shall apply mutatis mutandis.
Rule 26
Checking by, and Correcting before, the Receiving Office of Certain Elements of the International Application
26.1 to 26.3ter [No change]
A correction of the request offered to the receiving Office may be stated in a letter addressed to that Office if the correction is of such a nature that it can be transferred from the letter to the request without adversely affecting the clarity and the direct reproducibility of the sheet on to which the correction is to be transferred; otherwise, and in the case of a correction of any element of the international application other than the request, the applicant shall be required to submit a replacement sheet embodying the correction and the letter accompanying the replacement sheet shall draw attention to the differences between the replaced sheet and the replacement sheet.
26.5 and 26.6 [No change]
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) to (iii) [No change]
(iv) that Office or organization must have in place a quality management system and internal review arrangements in accordance with the common rules of international search;
(v) that Office or organization must hold an appointment as an International Preliminary Examining Authority.
Rule 43
The International Search Report
43.1 to 43.3 [No change]
Every international search report and any declaration made under Article 17(2)(a) shall be in the language in which the international application to which it relates is to be published, provided that:
(i) if a translation of the international application into another language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, the international search report and any declaration made under Article 17(2)(a) may be in the language of that translation;
(ii) if the international application is to be published in the language of a translation furnished under Rule 12.4 which is not accepted by the International Searching Authority and that Authority so wishes, the international search report and any declaration made under Article 17(2)(a) may be in a language which is both a language accepted by that Authority and a language of publication referred to in Rule 48.3(a).
43.5 to 43.10 [No change]
Rule 48
International Publication
48.1 and 48.2 [No change]
(a) and (b) [No change]
(c) If the international application is published in a language other than English, the international search report to the extent that it is published under Rule 48.2(a)(v), or the declaration referred to in Article 17(2)(a), the title of the invention, the abstract and any text matter pertaining to the figure or figures accompanying the abstract shall be published both in that language and in English. The translations, if not furnished by the applicant under Rule 12.3, shall be prepared under the responsibility of the International Bureau.
48.4 to 48.6 [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 or the declaration referred to in Article 17(2)(a), and of the written opinion established under Rule 43bis.1; or
(ii) 22 months from the priority date.
(b) [No change]
Rule 55
Languages (International Preliminary Examination)
55.1 [No change]
55.2 Translation of International Application
(a) [No change]
(a-bis) A translation of the international application into a language referred to in paragraph (a) shall include any element referred to in Article 11(1)(iii)(d) or (e) furnished by the applicant under Rule 20.3(b) or 20.6(a) and any part of the description, claims or drawings furnished by the applicant under Rule 20.5(b) or 20.6(a) which is considered to have been contained in the international application under Rule 20.6(b).
(a-ter) The International Preliminary Examining Authority shall check any translation furnished under paragraph (a) for compliance with the physical requirements referred to in Rule 11 to the extent that compliance therewith is necessary for the purposes of the international preliminary examination.
(b) [No change]
(c) If a requirement referred to in paragraphs (a), (a-bis) and (a-ter) is not complied with and paragraph (b) does not apply, the International Preliminary Examining Authority shall invite the applicant to furnish the required translation or the required correction, as the case may be, 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.
(d) If the applicant complies with the invitation within the time limit under paragraph (c), the said requirement shall be considered to have been complied with. If the applicant fails to do so, the demand shall be considered not to have been submitted and the International Preliminary Examining Authority shall so declare.
55.3 [No change]
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) to (iii) [No change]
(iv) that Office or organization must have in place a quality management system and internal review arrangements in accordance with the common rules of international preliminary examination;
(v) that Office or organization must hold an appointment as an International Searching Authority.
Rule 76
Translation of Priority Document; Application of Certain Rules to Procedures before Elected Offices
76.1, 76.2 and 76.3 [Remain deleted]
76.4 [No change]
76.5 Application of Certain Rules to Procedures before Elected Offices
Rules 13ter.3, 20.8(c), 22.1(g), 47.1, 49, 49bis, 49ter and 51bis shall apply, provided that:
(i) to (v) [No change]
Rule 91
Rectification of Obvious Mistakes in the International Application and Other Documents
91.1 and 91.2 [No change]
91.3 Authorization and Effect of Rectifications
(a) to (e) [No change]
(f) A designated Office may disregard a rectification that was authorized under Rule 91.1 only if it finds that it would not have authorized the rectification under Rule 91.1 if it had been the competent authority, provided that no designated Office shall disregard any rectification that was authorized under Rule 91.1 without giving the applicant the opportunity to make observations, within a time limit which shall be reasonable under the circumstances, on the Office's intention to disregard the rectification.
I hereby certify that the foregoing is a true copy of the original text in English of the 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-fifth (20th extraordinary) session on October 3, 2006, with effect from April 1, 2007.
(signed)
Kamil Idris
Director General
World Intellectual Property Organization
November 3, 2006
Footnotes:
1. The Rules as amended:
(1) shall enter into force on April 1, 2007, and shall apply to international applications whose international filing date is on or after April 1, 2007, provided that Rules 20.8(a-bis) and (c), 55.2(a-bis) and 76.5 as amended shall not apply to international applications in respect of which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office before April 1, 2007;
(2) shall not apply to international applications whose international filing date is before April 1, 2007, provided that:
(a) Rule 43.4 as amended shall apply to any international application in respect of which an international search report is established on or after April 1, 2007, whether the international filing date is before, on or after April 1, 2007;
(b) Rule 48.3(c) as amended shall apply to any international application which is published under Article 21 on or after April 1, 2007, whether the international filing date is before, on or after April 1, 2007;
(c) Rules 54bis.1 and 55.2(a-ter), (c) and (d) as amended shall apply to any international application in respect of which a demand for international preliminary examination is made on or after April 1, 2007, whether the international filing date is before, on or after April 1, 2007.
2. 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]" or "[Remains deleted]" appears.