PCT Notification No. 216
Patent Cooperation Treaty (PCT)
Certified Copy
Amendments to the Regulations under the Patent Cooperation Treaty (PCT)
Adopted on October 9, 2019, by the Assembly of the International Patent Cooperation Union (PCT Union) at its Fifty-First (22nd Ordinary) Session held from September 30 to October 9, 2019, with effect from July 1, 2020
Table of Amendments [1]
Rule 4.18
Rule 12.1bis
Rule 15.2
Rule 16.1
Rule 20.5
Rule 20.5bis
Rule 20.6
Rule 20.7
Rule 20.8
Rule 26quater
Rule 40bis
Rule 48.2
Rule 51bis.1
Rule 55.2
Rule 57.2
Rule 71.1
Rule 82ter.1
Rule 82quater.2
Rule 94.1
Rule 96.2
AMENDMENTS [2]
Rule 4
The Request (Contents)
4.1 to 4.17 [No change]
4.18 Statement of Incorporation by Reference
Where the international application, on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, claims the priority of an earlier application, the request may contain a statement that, where an element of the international application referred to in Article 11(1)(iii)(d) or (e), or a part of the description, claims or drawings referred to in Rule 20.5(a), or an element or part of the description, claims or drawings referred to in Rule 20.5bis(a) is not otherwise contained in the international application but is completely contained in the earlier application, that element or part is, subject to confirmation under Rule 20.6, incorporated by reference in the international application for the purposes of Rule 20.6. Such a statement, if not contained in the request on that date, may be added to the request if, and only if, it was otherwise contained in, or submitted with, the international application on that date.
4.19 [No change]
Rule 12
Language of the International Application and Translations for the Purposes of International Search and International Publication
12.1 [No change]
12.1bis Language of Elements and Parts Furnished under Rule 20.3, 20.5, 20.5bis or 20.6
An element referred to in Article 11(1)(iii)(d) or (e) furnished by the applicant under Rule 20.3(b), 20.5bis(b), 20.5bis(c) or 20.6(a) and a part of the description, claims or drawings furnished by the applicant under Rule 20.5(b), 20.5(c), 20.5bis(b), 20.5bis(c) or 20.6(a) shall be in the language of the international application as filed or, where a translation of the application is required under Rule 12.3(a) or 12.4(a), in both the language of the application as filed and the language of that translation.
12.1ter to 12.4 [No change]
Rule 15
The International Filing Fee
15.1 [No change]
(a) and (b) [No change]
(c) Where the prescribed currency is the Swiss franc, the receiving Office shall transfer the said fee to the International Bureau in Swiss francs in accordance with Rule 96.2.
(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 be transferred by the receiving Office to the International Bureau in accordance with Rule 96.2;
(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 transfer that fee in Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau in accordance with Rule 96.2. Alternatively, if the receiving Office so wishes, it may convert the international filing fee from the prescribed currency into euros or US dollars and 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 in accordance with Rule 96.2.
15.3 and 15.4 [No change]
Rule 16
The Search Fee
(a) and (b) [No change]
(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 transfer the said fee to that Authority in that currency in accordance with Rule 96.2.
(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 be transferred by the receiving Office to the International Searching Authority in accordance with Rule 96.2;
(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 transfer that fee in the fixed currency, in the amount fixed by the International Searching Authority, to the International Searching Authority in accordance with Rule 96.2.
(e) and (f) [No change]
16.2 and 16.3 [No change]
Rule 20
International Filing Date
20.1 to 20.4 [No change]
(a) Where, in determining whether the papers purporting to be an international application fulfill the requirements of Article 11(1), the receiving Office finds that a part of the description, claims or drawings is or appears to be missing, including the case where all of the drawings are or appear to be missing ("missing part") but not including the case where an entire element referred to in Article 11(1)(iii)(d) or (e) is or appears to be missing and not including the case referred to in Rule 20.5bis(a), it shall promptly invite the applicant, at the applicant’s option:
(i) to complete the purported international application by furnishing the missing part; or
(ii) to confirm, in accordance with Rule 20.6(a), that the part was incorporated by reference under Rule 4.18;
and to make observations, if any, within the applicable time limit under Rule 20.7. If that time limit expires after the expiration of 12 months from the filing date of any application whose priority is claimed, the receiving Office shall call that circumstance to the attention of the applicant.
(b) Where, following an invitation under paragraph (a) or otherwise, the applicant furnishes to the receiving Office, on or before the date on which all of the requirements of Article 11(1) are fulfilled but within the applicable time limit under Rule 20.7, a missing part referred to in paragraph (a) so as to complete the purported international application, that part shall be included in the application, and the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2(b) and (c).
(c) to (e) [No change]
20.5bis Erroneously Filed Elements and Parts
(a) Where, in determining whether the papers purporting to be an international application fulfill the requirements of Article 11(1), the receiving Office finds that an entire element referred to in Article 11(1)(iii)(d) or (e) has or appears to have been erroneously filed, or that a part of the description, claims or drawings has or appears to have been erroneously filed, including the case where all drawings have or appear to have been erroneously filed ("erroneously filed element or part"), it shall promptly invite the applicant, at the applicant’s option:
(i) to correct the purported international application by furnishing the correct element or part; or
(ii) to confirm, in accordance with Rule 20.6(a), that the correct element or part was incorporated by reference under Rule 4.18;
and to make observations, if any, within the applicable time limit under Rule 20.7. If that time limit expires after the expiration of 12 months from the filing date of any application whose priority is claimed, the receiving Office shall call that circumstance to the attention of the applicant.
(b) Where, following an invitation under paragraph (a) or otherwise, the applicant furnishes to the receiving Office, on or before the date on which all of the requirements of Article 11(1) are fulfilled but within the applicable time limit under Rule 20.7, a correct element or part so as to correct the purported international application, that correct element or part shall be included in the application, the erroneously filed element or part concerned shall be removed from the application and the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2(b) and (c) and as provided for in the Administrative Instructions.
(c) Where, following an invitation under paragraph (a) or otherwise, the applicant furnishes to the receiving Office, after the date on which all of the requirements of Article 11(1) were fulfilled but within the applicable time limit under Rule 20.7, a correct element or part so as to correct the international application, that correct element or part shall be included in the application, the erroneously filed element or part concerned shall be removed from the application, and the receiving Office shall correct the international filing date to the date on which the receiving Office received that correct element or part, notify the applicant accordingly and proceed as provided for in the Administrative Instructions.
(d) Where, following an invitation under paragraph (a) or otherwise, a correct element or part is, under Rule 20.6(b), considered to have been contained in the purported international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, the erroneously filed element or part concerned shall remain in the application, and the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2(b) and (c) and as provided for in the Administrative Instructions.
(e) Where the international filing date has been corrected under paragraph (c), the applicant may, in a notice submitted to the receiving Office within one month from the date of the notification under paragraph (c), request that the correct element or part be disregarded, in which case the correct element or part shall be considered not to have been furnished, the erroneously filed element or part concerned shall be considered not to have been removed from the application and the correction of the international filing date under paragraph (c) shall be considered not to have been made, and the receiving Office shall proceed as provided for in the Administrative Instructions.
20.6 Confirmation of Incorporation by Reference of Elements and Parts
(a) and (b) [No change]
(c) Where the receiving Office finds that a requirement under Rule 4.18 or paragraph (a) has not been complied with or that the element or part referred to in paragraph (a) is not completely contained in the earlier application concerned, the receiving Office shall proceed as provided for in Rule 20.3(b)(i), 20.5(b), 20.5(c), 20.5bis(b) or 20.5bis(c), as the case may be.
(a) The applicable time limit referred to in Rules 20.3(a) and (b), 20.4, 20.5(a), (b) and (c), 20.5bis(a), (b) and (c), and 20.6(a) shall be:
(i) where an invitation under Rule 20.3(a), 20.5(a) or 20.5bis(a), as applicable, was sent to the applicant, two months from the date of the invitation;
(ii) where no such invitation was sent to the applicant, two months from the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office.
(b) [No change]
20.8 Incompatibility with National Laws
(a) [No change]
(a-bis) If, on October 9, 2019, any of Rules 20.5bis(a)(ii) and (d) 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 9, 2020. The information received shall be promptly published by the International Bureau in the Gazette.
(a-ter) Where an element or a part cannot be incorporated by reference in the international application under Rules 4.18 and 20.6 because of the operation of paragraph (a) or paragraph (a-bis) of this Rule, the receiving Office shall proceed as provided for in Rule 20.3(b)(i), 20.5(b), 20.5(c), 20.5bis(b) or 20.5bis(c), as the case may be. Where the receiving Office proceeds as provided for in Rule 20.5(c) or 20.5bis(c), the applicant may proceed as provided for in Rule 20.5(e) or 20.5bis(e), as the case may be.
(b) [No change]
(b-bis) If, on October 9, 2019, any of Rules 20.5bis(a)(ii) and (d) 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 9, 2020. 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) or
paragraph (b-bis) 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), 20.5(b) or 20.5bis(b), or corrected under Rule 20.5(c) or 20.5bis(c), as the case may be, provided that Rule 82ter.1(c) and (d) shall apply mutatis mutandis.
Rule 26quater
Correction or Addition of Indications under Rule 4.11
26quater.1 Correction or Addition of Indications
The applicant may correct or add to the request any indication referred to in Rule 4.11 by a notice submitted to the International Bureau within a time limit of 16 months from the priority date, provided that any notice which is received by the International Bureau after the expiration of that time limit shall be considered to have been received on the last day of that time limit if the notice reaches the International Bureau before the technical preparations for international publication have been completed.
26quater.2 Late Correction or Addition of Indications
Where any correction or addition of an indication referred to in Rule 4.11 is not timely received under Rule 26quater.1, the International Bureau shall notify the applicant accordingly and shall proceed as provided for in the Administrative Instructions.
Rule 40bis
Additional Fees in Case of Missing Parts or Correct Elements and Parts Included in the International Application or Considered to Have Been Contained in the International Application
40bis.1 Invitation to Pay Additional Fees
The International Searching Authority may invite the applicant to pay additional fees where the fact that a missing part or a correct element or part:
(i) is included in the international application under Rule 20.5(c) or Rule 20.5bis(c), respectively; or
(ii) is considered, under Rule 20.5(d) or Rule 20.5bis(d), respectively, to have been contained in the international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office;
is notified to that Authority only after it has begun to draw up the international search report. The invitation shall invite the applicant to pay the additional fees within one month from the date of the invitation and indicate the amount of those fees to be paid. The amount of the additional fees shall be determined by the International Searching Authority but shall not exceed the search fee; the additional fees shall be payable directly to that Authority. Provided any such additional fees have been paid within the prescribed time limit, the International Searching Authority shall establish the international search report on the international application including any such missing part or any such correct element or part.
Rule 48
International Publication
48.1 [No change]
(a) [No change]
(b) Subject to paragraph (c), the front page shall include:
(i) to (iv) [No change]
(v) where the international filing date has been accorded by the receiving Office under Rule 20.3(b)(ii), 20.5(d) or 20.5bis(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part, an indication to that effect, together with an indication as to whether the applicant, for the purposes of Rule 20.6(a)(ii), relied on compliance with Rule 17.1(a), (b) or (b-bis) in relation to the priority document or on a separately submitted copy of the earlier application concerned;
(vi) [No change]
(vii) where applicable, an indication that the published international application contains information concerning a request under Rule 26bis.3 for restoration of the right of priority and the decision of the receiving Office upon such request;
(viii) where applicable, an indication that an erroneously filed element or part has been removed from the international application in accordance with Rule 20.5bis(b) or (c).
(c) to (n) [No change]
48.3 to 48.6 [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 (vi) [No change]
(vii) any missing indication required under Rule 4.5(a)(ii) and (iii) in respect of any applicant for the designated State;
(viii) in the cases referred to in Rule 82ter.1, a translation of any erroneously filed element or part removed from the international application in accordance with Rule 20.5bis(b) or (c).
(b) to (d) [No change]
(e) The national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish a translation of the priority document, provided that such a translation may only be required:
(i) [No change]
(ii) where the international filing date has been accorded by the receiving Office under Rule 20.3(b)(ii), 20.5(d) or 20.5bis(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part, for the purposes of determining under Rule 82ter.1(b) whether that element or part is completely contained in the priority document concerned, in which case the national law applicable by the designated Office may also require the applicant to furnish, in the case of a part of the description, claims or drawings, an indication as to where that part is contained in the translation of the priority document.
51bis.2 and 51bis.3 [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), 20.5bis(b), 20.5bis(c) or 20.6(a) and any part of the description, claims or drawings furnished by the applicant under Rule 20.5(b), 20.5(c), 20.5bis(b), 20.5bis(c) or 20.6(a) which is considered to have been contained in the international application under Rule 20.6(b).
(a-ter) to (d) [No change]
55.3 [No change]
Rule 57
The Handling Fee
57.1 [No change]
(a) and (b) [No change]
(c) Where the prescribed currency is the Swiss franc, the Authority shall transfer the said fee to the International Bureau in Swiss francs in accordance with Rule 96.2.
(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 be transferred by the Authority to the International Bureau in accordance with Rule 96.2;
(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 transfer that fee in Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau in accordance with Rule 96.2. Alternatively, if the Authority so wishes, it may convert the handling fee from the prescribed currency into euros or US dollars and 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 in accordance with Rule 96.2.
57.3 and 57.4 [No change]
Rule 71
Transmittal of the International Preliminary Examination Report and Related Documents
(a) The International Preliminary Examining Authority shall, on the same day, transmit one copy of the international preliminary examination report and its annexes, if any, to the International Bureau, and one copy to the applicant.
(b) The International Preliminary Examining Authority shall transmit copies of other documents from the file of the international preliminary examination to the International Bureau in accordance with the Administrative Instructions.
71.2 [No change]
Rule 82ter
Rectification of Errors Made by the Receiving Office or by the International Bureau
82ter.1 Errors Concerning the International Filing Date and the Priority Claim
(a) [No change]
(b) Where the international filing date has been accorded by the receiving Office under Rule 20.3(b)(ii), 20.5(d) or 20.5bis(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part but the designated or elected Office finds that:
(i) the applicant has not complied with Rule 17.1(a), (b) or (b-bis) in relation to the priority document;
(ii) a requirement under Rule 4.18, 20.6(a)(i) or 51bis.1(e)(ii) has not been complied with; or
(iii) the element or part is not completely contained in the priority document concerned;
the designated or elected Office may, subject to paragraph (c), treat the international application as if the international filing date had been accorded under Rule 20.3(b)(i), 20.5(b) or 20.5bis(b), or corrected under Rule 20.5(c) or 20.5bis(c), as applicable, provided that Rule 17.1(c) shall apply mutatis mutandis.
(c) The designated or elected Office shall not treat the international application under paragraph (b) as if the international filing date had been accorded under Rule 20.3(b)(i), 20.5(b) or 20.5bis(b), or corrected under Rule 20.5(c) or 20.5bis(c), without giving the applicant the opportunity to make observations on the intended treatment, or to make a request under paragraph (d), within a time limit which shall be reasonable under the circumstances.
(d) Where the designated or elected Office, in accordance with paragraph (c), has notified the applicant that it intends to treat the international application as if the international filing date had been corrected under Rule 20.5(c) or 20.5bis(c), the applicant may, in a notice submitted to that Office within the time limit referred to in paragraph (c), request that the missing part concerned, or the correct element or part concerned, be disregarded for the purposes of national processing before that Office, in which case that missing part, or that correct element or part, shall be considered not to have been furnished and that Office shall not treat the international application as if the international filing date had been corrected.
Rule 82quater
Excuse of Delay in Meeting Time Limits
82quater.1 [No change]
82quater.2 Unavailability of Electronic Means of Communication at the Office
(a) Any national Office or intergovernmental organization may provide that, where a time limit fixed in the Regulations for performing an action before that Office or organization is not met due to the unavailability of any of the permitted electronic means of communication at that Office or organization, delay in meeting that time limit shall be excused, provided that the respective action was performed on the next working day on which the said electronic means of communication were available. The Office or organization concerned shall publish information on any such unavailability including the period of the unavailability, and notify the International Bureau accordingly.
(b) The excuse of a delay in meeting a time limit under paragraph (a) need not be taken into account by any designated or elected Office before which the applicant, at the time the information referred to in paragraph (a) is published, has already performed the acts referred to in Article 22 or Article 39.
Rule 94
Access to Files
94.1 Access to the File Held by the International Bureau
(a) and (b) [No change]
(c) The International Bureau shall, if so requested by an elected Office, but not before the international preliminary examination report has been established, furnish on behalf of that Office copies under paragraph (b) of any document transmitted to it under Rule 71.1(a) or (b) by the International Preliminary Examining Authority. The International Bureau shall promptly publish details of any such request in the Gazette.
(d) to (g) [No change]
94.1bis to 94.3 [No change]
Rule 96
The Schedule of Fees; Receipt and Transfer of Fees
96.1 [No change]
96.2 Notification of Receipt of Fees; Transfer of Fees
(a) For the purposes of this Rule, "Office" shall mean the receiving Office (including the International Bureau acting as receiving Office), the International Searching Authority, an Authority specified for supplementary international search, the International Preliminary Examining Authority or the International Bureau.
(b) Where, in accordance with these Regulations or the Administrative Instructions, a fee is collected by one Office ("collecting Office") for the benefit of another Office ("beneficiary Office"), the collecting Office shall promptly notify the receipt of each such fee in accordance with the Administrative Instructions. Upon receipt of the notification, the beneficiary Office shall proceed as if it had received the fee on the date on which the fee was received by the collecting Office.
(c) The collecting Office shall transfer any fees collected for the benefit of a beneficiary Office to that Office in accordance with the Administrative Instructions.
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 9, 2019, by the Assembly of the International Patent Cooperation Union (PCT Union) at its fifty first (22nd ordinary) session held from September 30 to October 9, 2019, with effect from July 1, 2020.
Francis Gurry
Director General
World Intellectual Property Organization
January 31, 2020
1. The amendments to Rule 82quater shall apply to any time limit to which Rule 82quater.2(a) applies that expires on or after July 1, 2020.
New Rule 26quater shall apply to any international application the international filing date of which is on or after July 1, 2020.
The amendments to Rules 4, 12, 20, 48, 51bis, 55 and 82ter and new Rule 40bis shall apply to any international application in respect of which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office on or after July 1, 2020.
The amendments to Rules 15, 16, 57 and 96 shall apply to any international application for which fees will be transferred by the collecting office on or after July 1, 2020, including those collected under Rule 16 as it applies by virtue of Rule 45bis.3(b).
The amendments to Rules 71 and 94 shall apply to any document received at or established by the International Preliminary Examining Authority on or after July 1, 2020.
2. The following reproduces, for each Rule that was amended, the amended text. Where a part of any such Rule has not been amended, the indication "[No change]" appears.