PCT Notification No. 195
Patent Cooperation Treaty (PCT)
Certified Copy
Amendments to the Regulations under the Patent Cooperation Treaty (PCT)
Adopted on October 1, 2009, by the Assembly of the International Patent Cooperation Union (PCT Union) at its fortieth (17th ordinary) session held from September 22 to October 1, 2009, with effect from July 1, 2010
Table of Amendments [1]
Rule 15.2
Rule 15.3
Rule 15.4
Rule 16.1
Rule 16bis.1
Rule 19.4
Rule 45bis.1
Rule 45bis.2
Rule 45bis.3
Rule 45bis.4
Rule 45bis.5
Rule 45bis.6
Rule 45bis.9
Rule 46.5
Rule 57.2
Rule 57.4
Rule 66.8
Rule 70.2
Rule 96.1
AMENDMENTS [2]
Rule 15
The International Filing Fee
15.1 [No change]
(a) [No change]
(b) The international filing fee shall be payable in the currency or one of the currencies prescribed by the receiving Office ("prescribed currency").
(c) Where the prescribed currency is the Swiss franc, the receiving Office shall promptly transfer the said fee to the International Bureau in Swiss francs.
(d) Where the prescribed currency is a currency other than the Swiss franc and that currency:
(i) is freely convertible into Swiss francs, the Director General shall establish, for each receiving Office which prescribes such a currency for the payment of the international filing fee, an equivalent amount of that fee in the prescribed currency according to directives given by the Assembly, and the amount in that currency shall promptly be transferred by the receiving Office to the International Bureau;
(ii) is not freely convertible into Swiss francs, the receiving Office shall be responsible for the conversion of the international filing fee from the prescribed currency into Swiss francs and shall promptly transfer that fee in Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau. Alternatively, if the receiving Office so wishes, it may convert the international filing fee from the prescribed currency into euros or US dollars and promptly transfer the equivalent amount of that fee in euros or US dollars, as established by the Director General according to directives given by the Assembly as referred to in item (i), to the International Bureau.
15.3 Time Limit for Payment; Amount Payable
The international filing fee shall be paid to the receiving Office 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) if the determination under Article 11(1) is negative,
(ii) if, before the transmittal of the record copy to the International Bureau, the international application is withdrawn or considered withdrawn, or
(iii) if, due to prescriptions concerning national security, the international application is not treated as such.
Rule 16
The Search Fee
(a) [No change]
(b) The search fee shall be collected by the receiving Office. The said fee shall be payable in the currency prescribed by that Office ("prescribed currency").
(c) Where the prescribed currency is the currency in which the International Searching Authority has fixed the said fee ("fixed currency"), the receiving Office shall promptly transfer the said fee to that Authority in that currency.
(d) Where the prescribed currency is not the fixed currency and that currency:
(i) is freely convertible into the fixed currency, the Director General shall establish, for each receiving Office which prescribes such a currency for the payment of the search fee, an equivalent amount of that fee in the prescribed currency according to directives given by the Assembly, and the amount in that currency shall promptly be transferred by the receiving Office to the International Searching Authority;
(ii) is not freely convertible into the fixed currency, the receiving Office shall be responsible for the conversion of the search fee from the prescribed currency into the fixed currency and shall promptly transfer that fee in the fixed currency, in the amount fixed by the International Searching Authority, to the International Searching Authority.
(e) Where, in respect of the payment of the search fee in a prescribed currency, other than the fixed currency, the amount actually received under paragraph (d)(i) of this Rule by the International Searching Authority in the prescribed currency is, when converted by it into the fixed currency, less than that fixed by it, the difference will be paid to the International Searching Authority by the International Bureau, whereas, if the amount actually received is more, the difference will belong to the International Bureau.
(f) As to the time limit for payment of the search fee and the amount payable, the provisions of Rule 15.3 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), 15.3 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, subject to paragraph (d), 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) and (c) [No change]
(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), 15.3 or 16.1(f), as the case may be.
(e) [No change]
16bis.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), 15.3 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 45bis
Supplementary International Searches
45bis.1 Supplementary Search Request
(a) to (c) [No change]
(d) Where the International Searching Authority has found that the international application does not comply with the requirement of unity of invention, the supplementary search request may contain an indication of the wish of the applicant to restrict the supplementary international search to one of the inventions as identified by the International Searching Authority other than the main invention referred to in Article 17(3)(a).
(e) [No change]
45bis.2 Supplementary Search Handling Fee
(a) to (c) [No change]
(d) The International Bureau shall refund the supplementary search handling fee to the applicant if, before the documents referred to in Rule 45bis.4(e)(i) to (iv) are transmitted to the Authority specified for supplementary search, the international application is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or is considered not to have been submitted under Rule 45bis.1(e).
45bis.3 Supplementary Search Fee
(a) to (c) [No change]
(d) The International Bureau shall refund the supplementary search fee to the applicant if, before the documents referred to in Rule 45bis.4(e)(i) to (iv) are transmitted to the Authority specified for supplementary search, the international application is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or is considered not to have been submitted under Rules 45bis.1(e) or 45bis.4(d).
(e) The Authority specified for supplementary search shall, to the extent and under the conditions provided for in the applicable agreement under Article 16(3)(b), refund the supplementary search fee if, before it has started the supplementary international search in accordance with Rule 45bis.5(a), the supplementary search request is considered not to have been submitted under Rule 45bis.5(g).
45bis.4 Checking of Supplementary Search Request; Correction of Defects; Late Payment of Fees; Transmittal to Authority Specified for Supplementary Search
(a) to (f) [No change]
45bis.5 Start, Basis and Scope of Supplementary International Search
(a) [No change]
(b) The supplementary international search shall be carried out on the basis of the international application as filed or of a translation referred to in Rule 45bis.1(b)(iii) or 45bis.1(c)(i), taking due account of the international search report and the written opinion established under Rule 43bis.1 where they are available to the Authority specified for supplementary search before it starts the search. Where the supplementary search request contains an indication under Rule 45bis.1(d), the supplementary international search may be restricted to the invention specified by the applicant under Rule 45bis.1(d) and those parts of the international application which relate to that invention.
(c) to (f) [No change]
(g) If the Authority specified for supplementary search finds that carrying out the search is entirely excluded by a limitation or condition referred to in Rule 45bis.9(a), other than a limitation under Article 17(2) as applicable by virtue of Rule 45bis.5(c), the supplementary search request shall be considered not to have been submitted, and the Authority shall so declare and shall promptly notify the applicant and the International Bureau accordingly.
(h) The Authority specified for supplementary search may, in accordance with a limitation or condition referred to in Rule 45bis.9(a), decide to restrict the search to certain claims only, in which case the supplementary international search report shall so indicate.
(a) to (e) [No change]
(f) Paragraphs (a) to (e) shall apply mutatis mutandis where the Authority specified for supplementary search decides to restrict the supplementary international search in accordance with the second sentence of Rule 45bis.5(b) or with Rule 45bis.5(h), provided that any reference in the said paragraphs to the "international application" shall be construed as a reference to those parts of the international application which relate to the invention specified by the applicant under Rule 45bis.1(d) or which relate to the claims and those parts of the international application for which the Authority will carry out a supplementary international search, respectively.
45bis.7 and 45bis.8 [No change]
45bis.9 International Searching Authorities Competent to Carry Out Supplementary International Search
(a) and (b) [No change]
(c) The limitations referred to in paragraph (a) may, for example, include limitations as to the subject matter for which supplementary international searches will be carried out, other than limitations under Article 17(2) as applicable by virtue of Rule 45bis.5(c), limitations as to the total number of supplementary international searches which will be carried out in a given period, and limitations to the effect that the supplementary international searches will not extend to any claim beyond a certain number of claims.
Rule 46
Amendment of Claims before the International Bureau
46.1 to 46.4 [No change]
(a) [No change]
(b) The replacement sheet or sheets shall be accompanied by a letter which:
(i) [no change]
(ii) shall identify the claims originally filed which, on account of the amendments, are cancelled;
(iii) shall indicate the basis for the amendments in the application as filed.
Rule 57
The Handling Fee
57.1 [No change]
(a) [No change]
(b) The handling fee shall be payable in the currency or one of the currencies prescribed by the International Preliminary Examining Authority ("prescribed currency").
(c) Where the prescribed currency is the Swiss franc, the Authority shall promptly transfer the said fee to the International Bureau in Swiss francs.
(d) Where the prescribed currency is a currency other than the Swiss franc and that currency:
(i) is freely convertible into Swiss francs, the Director General shall establish, for each Authority which prescribes such a currency for the payment of the handling fee, an equivalent amount of that fee in the prescribed currency according to directives given by the Assembly, and the amount in that currency shall promptly be transferred by the Authority to the International Bureau;
(ii) is not freely convertible into Swiss francs, the Authority shall be responsible for the conversion of the handling fee from the prescribed currency into Swiss francs and shall promptly transfer that fee in Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau. Alternatively, if the Authority so wishes, it may convert the handling fee from the prescribed currency into euros or US dollars and promptly transfer the equivalent amount of that fee in euros or US dollars, as established by the Director General according to directives given by the Assembly as referred to in item (i), to the International Bureau.
57.3 [No change]
The International Preliminary Examining Authority shall refund the handling fee to the applicant:
(i) if the demand is withdrawn before the demand has been sent by that Authority to the International Bureau, or
(ii) if the demand is considered, under Rule 54.4 or 54bis.1(b), not to have been submitted.
Rule 66
Procedure before the International Preliminary Examining Authority
66.1 to 66.7 [No change]
(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, shall indicate the basis for the amendment in the application as filed and shall preferably also explain the reasons for the amendment.
(b) and (c) [No change]
66.9 [No change]
Rule 70
International Preliminary Report on Patentability by the International Preliminary Examining Authority (International Preliminary Examination Report)
70.1 [No change]
(a) to (c) [No change]
(c-bis) If the claims, description or drawings have been amended but the replacement sheet or sheets were not accompanied by a letter indicating the basis for the amendment in the application as filed, as required under Rule 46.5(b)(iii) as applicable by virtue of Rule 66.8(c), or Rule 66.8(a), as applicable, the report may be established as if the amendment had not been made, in which case the report shall so indicate.
(d) and (e) [No change]
70.3 to 70.17 [No change]
Rule 96
The Schedule of Fees
96.1 Schedule of Fees Annexed to Regulations
The amounts of the fees referred to in Rules 15, 45bis.2 and 57 shall be expressed in Swiss currency. They shall be specified in the Schedule of Fees which is annexed to these Regulations and forms an integral part thereof.
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 October 1, 2009, by the Assembly of the International Patent Cooperation Union (PCT Union) at its fortieth (17th ordinary) session held from September 22 to October 1, 2009, with effect from July 1, 2010.
Francis Gurry
Director General
World Intellectual Property Organization
December 18, 2009
Footnotes:
1. The amendments of Rules 45bis and 96 shall apply to any international application, regardless of its international filing date, in respect of a supplementary search request under Rule 45bis.1(a) made on or after July 1, 2010.
The amendments of Rules 46, 66 and 70 shall apply to any international application, regardless of its international filing date, in respect of an amendment of the claims, description or drawings made on or after July 1, 2010.
The amendments of Rules 15, 16, 16bis, 19 and 57:
(a) shall apply to the establishment of equivalent amounts which, in accordance with the Regulations under the PCT and the Directives of the Assembly of the PCT Union Relating to the Establishment of Equivalent Amounts of Certain Fees as in force as of July 1, 2010, are established according to an exchange rate prevailing on, or on a date after, July 1, 2010;
(b) shall not apply to the establishment of equivalent amounts which, in accordance with the Regulations under the PCT and the Directives of the Assembly of the PCT Union Relating to the Establishment of Equivalent Amounts of Certain Fees as in force prior to July 1, 2010, are established according to an exchange rate prevailing on a date prior to July 1, 2010; in respect of the establishment of such equivalent amounts, the said Regulations and the said Directives as in force prior to July 1, 2010, shall continue to apply until the new equivalent amounts so established become applicable.
2. The following reproduces, for each Rule that was amended, the amended text. Where a paragraph or item of any such Rule has not been amended, the indication "[No change]" appears.