PCT Notification No. 191
Patent Cooperation Treaty (PCT)

Certified Copy
Amendments to the Regulations under the Patent Cooperation Treaty (PCT)

Adopted on September 29, 2008, by the Assembly of the International Patent Cooperation Union (PCT Union) at its thirty-eighth (22nd extraordinary) session held from September 22 to 30, 2008, with effect from July 1, 2009

Table of Amendments [1]

Rule 29.4
Rule 46.5
Rule 66.8
Rule 70.16


AMENDMENTS [2]

Rule 29
International Applications Considered Withdrawn

29.1 to 29.3 [No change]

29.4 Notification of Intent to Make Declaration under Article 14(4)

(a) Before the receiving Office issues any declaration under Article 14(4), it shall notify the applicant of its intent to issue such declaration and the reasons therefor. The applicant may, if he disagrees with the tentative finding of the receiving Office, submit arguments to that effect within two months from the date of the notification.

(b) Where the receiving Office intends to issue a declaration under Article 14(4) in respect of an element mentioned in Article 11(1)(iii)(d) or (e), the receiving Office shall, in the notification referred to in paragraph (a) of this Rule, invite the applicant to confirm in accordance with Rule 20.6(a) that the element is incorporated by reference under Rule 4.18. For the purposes of Rule 20.7(a)(i), the invitation sent to the applicant under this paragraph shall be considered to be an invitation under Rule 20.3(a)(ii).

(c) Paragraph (b) shall not apply where the receiving Office has informed the International Bureau in accordance with Rule 20.8(a) of the incompatibility of Rules 20.3(a)(ii) and (b)(ii) and 20.6 with the national law applied by that Office.

Rule 46
Amendment of Claims before the International Bureau

46.1 to 46.4 [No change]

46.5 Form of Amendments

(a) The applicant, when making amendments under Article 19, shall be required to submit a replacement sheet or sheets containing a complete set of claims in replacement of all the claims originally filed.

(b) The replacement sheet or sheets shall be accompanied by a letter which:

(i) shall identify the claims which, on account of the amendments, differ from the claims originally filed, and shall draw attention to the differences between the claims originally filed and the claims as amended;

(ii) shall identify the claims originally filed which, on account of the amendments, are cancelled.

Rule 66
Procedure before the International Preliminary Examining Authority

66.1 to 66.7 [No change]

66.8 Form of Amendments

(a) Subject to paragraph (b), when amending the description or the drawings, the applicant shall be required to submit a replacement sheet for every sheet of the international application which, on account of an amendment, differs from the sheet previously filed. The replacement sheet or sheets shall be accompanied by a letter which shall draw attention to the differences between the replaced sheets and the replacement sheets and shall preferably also explain the reasons for the amendment.

(b) [No change]

(c) When amending the claims, Rule 46.5 shall apply mutatis mutandis. The set of claims submitted under Rule 46.5 as applicable by virtue of this paragraph shall replace all the claims originally filed or previously amended under Articles 19 or 34, as the case may be.

66.9 [No change]

Rule 70
International Preliminary Report on Patentability by the International Preliminary Examining Authority (International Preliminary Examination Report)

70.1 to 70.15 [No change]

70.16 Annexes to the Report

(a) Each replacement sheet under Rule 66.8(a) or (b) shall, unless superseded by later replacement sheets under Rule 66.8(a) or (b) or amendments resulting in the cancellation of entire sheets under Rule 66.8(b), be annexed to the report.

(a-bis) Replacement sheets under Rule 46.5(a) shall, unless superseded or considered as reversed by replacement sheets under Rule 66.8(c), be annexed to the report. Replacement sheets under Rule 66.8(c) shall, unless superseded by later replacement sheets under Rule 66.8(c), be annexed to the report. Letters under Rule 46.5(b) or Rule 66.8(a) or (c) shall not be annexed to the report.

(b) Notwithstanding paragraphs (a) and (a-bis), each superseded or reversed replacement sheet referred to in those paragraphs shall also be annexed to the report where the International Preliminary Examining Authority considers that the relevant superseding or reversing amendment goes beyond the disclosure in the international application as filed and the report contains an indication referred to in Rule 70.2(c). In such a case, the superseded or reversed replacement sheet shall be marked as provided by the Administrative Instructions.

70.17 [No change]


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 on September 29, 2008, by the Assembly of the International Patent Cooperation Union (PCT Union) at its thirty-eighth (22nd extraordinary) session held from September 22 to 30, 2008, with effect from July 1, 2009.

Francis Gurry
Director General
World Intellectual Property Organization

December 2, 2008


Footnotes:

1. The amendments of Rule 29.4 shall apply to any international application whose international filing date is on or after July 1, 2009; the amendments of Rules 46.5, 66.8 and 70.16 shall apply to any international application in respect of which an amendment under PCT Article 19 or 34 is made on or after July 1, 2009.

2. The following reproduces the text, as amended, of each Rule that was amended. Where a paragraph of any such Rule has not been amended, the indication "[No change]" appears.