PCT Notification No. 196
Patent Cooperation Treaty (PCT)
Certified Copy
Amendments to the Regulations under the Patent Cooperation Treaty (PCT)
Adopted on September 29, 2010, by the Assembly of the International Patent Cooperation Union (PCT Union) at its forty-first (24th extraordinary) session held from September 20 to 29, 2010, with effect from July 1, 2011
Table of Amendments [1]
Rule 12.2
Rule 48.2
Rule 49.5
Rule 53.9
Rule 55.3
Rule 62.1
Rule 62.2
Rule 66.9
Rule 70.2
Rule 70.16
Rule 92.2
AMENDMENTS [2]
Rule 12
Language of the International Application and Translations for the Purposes of International Search and International Publication
12.1 to 12.1ter [No change]
12.2 Language of Changes in the International Application
(a) Any amendment of the international application shall, subject to Rules 46.3 and 55.3, be in the language in which the application is filed.
(b) and (c) [No change]
12.3 and 12.4 [No change]
Rule 48
International Publication
48.1 [No change]
(a) to (h) [No change]
(i) If the authorization by the receiving Office, the International Searching Authority or the International Bureau of a rectification of an obvious mistake in the international application under Rule 91.1 is received by or, where applicable, given by the International Bureau after completion of the technical preparations for international publication, a statement reflecting all the rectifications shall be published, together with the sheets containing the rectifications, or the replacement sheets and the letter furnished under Rule 91.2, as the case may be, and the front page shall be republished.
(j) and (k) [No change]
48.3 to 48.6 [No change]
Rule 49
Copy, Translation and Fee under Article 22
49.1 to 49.4 [No change]
49.5 Contents of and Physical Requirements for the Translation
(a) For the purposes of Article 22, the translation of the international application shall contain the description (subject to paragraph (a-bis)), the claims, any text matter of the drawings and the abstract. If required by the designated Office, the translation shall also, subject to paragraphs (b), (c-bis) and (e),
(i) [no change]
(ii) if the claims have been amended under Article 19, contain both the claims as filed and the claims as amended (the claims as amended shall be furnished in the form of a translation of the complete set of claims furnished under Rule 46.5(a) in replacement of all the claims originally filed), and
(iii) [no change]
(a-bis) to (l) [No change]
49.6 [No change]
Rule 53
The Demand
53.1 to 53.8 [No change]
53.9 Statement Concerning Amendments
(a) If amendments under Article 19 have been made, the statement concerning amendments shall indicate whether, for the purposes of the international preliminary examination, the applicant wishes those amendments:
(i) to be taken into account, in which case a copy of the amendments and of the letter required under Rule 46.5(b) shall preferably be submitted with the demand; or
(ii) [no change]
(b) and (c) [No change]
Rule 55
Languages (International Preliminary Examination)
55.1 and 55.2 [No change]
55.3 Language and Translation of Amendments and Letters
(a) Subject to paragraph (b), if the international application has been filed in a language other than the language in which it is published, any amendment under Article 34, as well as any letter referred to in Rule 66.8(a), Rule 66.8(b) and Rule 46.5(b) as applicable by virtue of Rule 66.8(c), shall be submitted in the language of publication.
(b) Where a translation of the international application is required under Rule 55.2:
(i) any amendment and any letter referred to in paragraph (a); and
(ii) any amendment under Article 19 which is to be taken into account under Rule 66.1(c) or (d) and any letter referred to in Rule 46.5(b);
shall be in the language of that translation. Where such amendments or letters have been or are submitted in another language, a translation shall also be submitted.
(c) If an amendment or letter is not submitted in a language as required under paragraph (a) or (b), the International Preliminary Examining Authority shall invite the applicant to submit the amendment or letter in the required language 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 fails to comply, within the time limit under paragraph (c), with the invitation to furnish an amendment in the required language, the amendment shall not be taken into account for the purposes of the international preliminary examination. If the applicant fails to comply, within the time limit under paragraph (c), with the invitation to furnish a letter referred to in paragraph (a) in the required language, the amendment concerned need not be taken into account for the purposes of the international preliminary examination.
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, any statement referred to in that Article, and the letter required under Rule 46.5(b), unless that Authority has indicated that it has already received such a copy.
62.2 Amendments Made after the Demand Is Filed
If, at the time of filing any amendments under Article 19, a demand has already been submitted, the applicant shall preferably, at the same time as he files the amendments with the International Bureau, also file with the International Preliminary Examining Authority a copy of such amendments, any statement referred to in that Article and the letter required under Rule 46.5(b). In any case, the International Bureau shall promptly transmit a copy of such amendments, statement and letter to that Authority.
Rule 66
Procedure before the International Preliminary Examining Authority
66.1 to 66.8 [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), Rule 46.5(b)(iii) being 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 70.15 [No change]
(a) The following replacement sheets and letters shall be annexed to the report:
(i) each replacement sheet under Rule 66.8 containing amendments under Article 34 and each letter under Rule 66.8(a), Rule 66.8(b) and Rule 46.5(b) as applicable by virtue of Rule 66.8(c);
(ii) each replacement sheet under Rule 46.5 containing amendments under Article 19 and each letter under Rule 46.5; and
(iii) each replacement sheet under Rule 26.4 as applicable by virtue of Rule 91.2 containing a rectification of an obvious mistake authorized by that Authority under Rule 91.1(b)(iii) and each letter under Rule 26.4 as applicable by virtue of Rule 91.2;
unless any such replacement sheet has been superseded or considered reversed by a later replacement sheet or an amendment resulting in the cancellation of an entire sheet under Rule 66.8(b); and
(iv) where the report contains an indication referred to in Rule 70.2(e), any sheet and letter relating to a rectification of an obvious mistake which is not taken into account pursuant to Rule 66.4bis.
(b) Notwithstanding paragraph (a), each superseded or reversed replacement sheet referred to in that paragraph and any letter referred to in that paragraph relating to such superseded or reversed sheet shall also be annexed to the report where:
(i) 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);
(ii) the relevant superseding or reversing amendment was not accompanied by a letter indicating the basis for the amendment in the application as filed and the report is established as if the amendment had not been made and contains an indication referred to in Rule 70.2(c‑bis).
In such a case, the superseded or reversed replacement sheet shall be marked as provided by the Administrative Instructions.
Rule 92
Correspondence
92.1 [No change]
(a) Subject to Rules 55.1 and 55.3 and to paragraph (b) of this Rule, any letter or document submitted by the applicant to the International Searching Authority or the International Preliminary Examining Authority shall be in the same language as the international application to which it relates. However, where a translation of the international application has been transmitted under Rule 23.1(b) or furnished under Rule 55.2, the language of such translation shall be used.
(b) [No change]
(c) [Remains deleted]
(d) and (e) [No change]
92.3 and 92.4 [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, 2010, by the Assembly of the International Patent Cooperation Union (PCT Union) at its forty-first (24th extraordinary) session held from September 20 to 29, 2010, with effect from July 1, 2011.
Francis Gurry
Director General
World Intellectual Property Organization
December 14, 2010
Footnotes:
1. The amendments of Rules 12.2, 48.2, 53.9, 55.3, 62.1, 62.2, 66.9, 70.2 and 92.2 shall apply to international applications whose international filing date is on or after July 1, 2011.
The amendments of Rule 49.5 shall apply to international applications in respect of which the applicant has performed the acts referred to in Article 22 or Article 39 on or after July 1, 2011, and in respect of which an amendment under Article 19 or Article 34 was filed on or after July 1, 2009.
The amendments of Rule 70.16 shall apply to any international preliminary examination report which is completed in accordance with Rule 70.4 on or after July 1, 2011, irrespective of the international filing date of the international application concerned.
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]" or "[Remains deleted]" appears.