PCT Notification No. 82
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 twenty-first session (ninth ordinary) on September 29, 1993

Table of Amendments

Rule 4.1(b) - Amended
Rule 4.14bis - New
Rule 18.1 - Amended
Rule 18.2 - Deleted
Rule 19.1(a) - Amended
Rule 19.2 - Amended
Rule 19.4 - New
Rule 35.1 - Amended (French text only)
Rule 35.2(a) - Amended (French text only)
Rule 35.3 - New
Rule 54.1 - Amended
Rule 54.3 - New
Rule 59.1 - Amended
Rule 83.1bis - New
Rule 90.1(a) - Amended
Rule 90.1(d) - Amended
Rule 91.1(e) - Amended (English text only)


AMENDMENTS [*]

Rule 4
The Request (Contents)

4.1 Mandatory and Optional Contents; Signature

(a) [No change]

(b) The request shall, where applicable, contain:

(i) to (iv) [No change]

(v) a reference to a parent application or parent patent,

(vi) an indication of the applicant's choice of competent International Searching Authority.

(c) and (d) [No change]

4.2 to 4.14 [No change]

4.14bis Choice of International Searching Authority

If two or more International Searching Authorities are competent for the searching of the international application, the applicant shall indicate his choice of International Searching Authority in the request.

4.15 to 4.17 [No change]

Rule 18
The Applicant

18.1 Residence and Nationality

(a) Subject to the provisions of paragraphs (b) and (c), the question whether an applicant is a resident or national of the Contracting State of which he claims to be a resident or national shall depend on the national law of that State and shall be decided by the receiving Office.

(b) In any case,

(i) possession of a real and effective industrial or commercial establishment in a Contracting State shall be considered residence in that State, and

(ii) a legal entity constituted according to the national law of a Contracting State shall be considered a national of that State.

(c) Where the international application is filed with the International Bureau as receiving Office, the International Bureau shall, in the circumstances specified in the Administrative Instructions, request the national Office of, or acting for, the Contracting State concerned to decide the question referred to in paragraph (a). The International Bureau shall inform the applicant of any such request. The applicant shall have an opportunity to submit arguments directly to the national Office. The national Office shall decide the said question promptly.

18.2 [Deleted]

18.3 and 18.4 [No change]

Rule 19
The Competent Receiving Office

19.1 Where to File

(a) Subject to the provisions of paragraph (b), the international application shall be filed, at the option of the applicant,

(i) with the national Office of or acting for the Contracting State of which the applicant is a resident,

(ii) with the national Office of or acting for the Contracting State of which the applicant is a national, or

(iii) irrespective of the Contracting State of which the applicant is a resident or national, with the International Bureau.

(b) and (c) [No change]

19.2 Two or More Applicants

If there are two or more applicants:

(i) the requirements of Rule 19.1 shall be considered to be met if the national Office with which the international application is filed is the national Office of or acting for a Contracting State of which at least one of the applicants is a resident or national;

(ii) the international application may be filed with the International Bureau under Rule 19.1(a)(iii) if at least one of the applicants is a resident or national of a Contracting State.

19.3 [No change]

19.4 Transmittal to the International Bureau as Receiving Office

(a) Where an international application is filed with a national Office which acts as a receiving Office under the Treaty by an applicant who is a resident or national of a Contracting State, but that national Office is not competent under Rule 19.1 or 19.2 to receive that international application, that international application shall, subject to paragraph (b), be considered to have been received by that Office on behalf of the International Bureau as receiving Office under Rule 19.1(a)(iii).

(b) Where, pursuant to paragraph (a), an international application is received by a national Office on behalf of the International Bureau as receiving Office under Rule 19.1(a)(iii), that national Office shall, unless prescriptions concerning national security prevent the international application from being so transmitted, promptly transmit it to the International Bureau. Such transmittal may be subjected by the national Office to the payment of a fee, for its own benefit, equal to the transmittal fee charged by that Office under Rule 14. The international application so transmitted shall be considered to have been received by the International Bureau as receiving Office under Rule 19.1(a)(iii) on the date of receipt of the international application by that national Office.

Rule 35
The Competent International Searching Authority

35.1 and 35.2 [No change]

35.3 When the International Bureau Is Receiving Office Under Rule 19.1(a)(iii)

(a) Where the international application is filed with the International Bureau as receiving Office under Rule 19.1(a)(iii), an International Searching Authority shall be competent for the searching of that international application if it would have been competent had that international application been filed with a receiving Office competent under Rule 19.1(a)(i) or (ii), (b) or (c) or Rule 19.2(i).

(b) Where two or more International Searching Authorities are competent under paragraph (a), the choice shall be left to the applicant.

(c) Rules 35.1 and 35.2 shall not apply to the International Bureau as receiving Office under Rule 19.1(a)(iii).

Rule 54
The Applicant Entitled to Make a Demand

54.1 Residence and Nationality

(a) Subject to the provisions of paragraph (b), the residence or nationality of the applicant shall, for the purposes of Article 31(2), be determined according to Rule 18.1(a) and (b).

(b) The International Preliminary Examining Authority shall, in the circumstances specified in the Administrative Instructions, request the receiving Office or, where the international application was filed with the International Bureau as receiving Office, the national Office of, or acting for, the Contracting State concerned to decide the question whether the applicant is a resident or national of the Contracting State of which he claims to be a resident or national. The International Preliminary Examining Authority shall inform the applicant of any such request. The applicant shall have an opportunity to submit arguments directly to the Office concerned. The Office concerned shall decide the said question promptly.

54.2 [No change]

54.3 International Applications Filed with the International Bureau as Receiving Office

Where the international application is filed with the International Bureau as receiving Office under Rule 19.1(a)(iii), the International Bureau shall, for the purposes of Article 31(2)(a), be considered to be acting for the Contracting State of which the applicant is a resident or national.

54.4 [No change]

Rule 59
The Competent International Preliminary Examining Authority

59.1 Demands Under Article 31(2)(a)

(a) For demands made under Article 31(2)(a), each receiving Office of or acting for a Contracting State bound by the provisions of Chapter II shall, in accordance with the terms of the applicable agreement referred to in Article 32(2) and (3), inform the International Bureau which International Preliminary Examining Authority is or which International Preliminary Examining Authorities are competent for the international preliminary examination of international applications filed with it. The International Bureau shall promptly publish such information. Where several International Preliminary Examining Authorities are competent, the provisions of Rule 35.2 shall apply mutatis mutandis.

(b) Where the international application was filed with the International Bureau as receiving Office under Rule 19.1(a)(iii), Rule 35.3(a) and (b) shall apply mutatis mutandis. Paragraph (a) of this Rule shall not apply to the International Bureau as receiving Office under Rule 19.1(a)(iii).

59.2 [No change]

Rule 83
Right to Practice Before International Authorities

83.1 [No change]

83.1bis Where the International Bureau Is the Receiving Office

(a) Any person who has the right to practice before the national Office of, or acting for, a Contracting State of which the applicant or, if there are two or more applicants, any of the applicants is a resident or national shall be entitled to practice in respect of the international application before the International Bureau in its capacity as receiving Office under Rule 19.1(a)(iii).

(b) Any person having the right to practice before the International Bureau in its capacity as receiving Office in respect of an international application shall be entitled to practice in respect of that application before the International Bureau in any other capacity and before the competent International Searching Authority and competent International Preliminary Examining Authority.

83.2 [No change]

Rule 90
Agents and Common Representatives

90.1 Appointment as Agent

(a) A person having the right to practice before the national Office with which the international application is filed or, where the international application is filed with the International Bureau, having the right to practice in respect of the international application before the International Bureau as receiving Office may be appointed by the applicant as his agent to represent him before the receiving Office, the International Bureau, the International Searching Authority and the International Preliminary Examining Authority.

(b) and (c) [No change]

(d) An agent appointed under paragraph (a) may, unless otherwise indicated in the document appointing him, appoint one or more sub-agents to represent the applicant as the applicant's agent:

(i) before the receiving Office, the International Bureau, the International Searching Authority and the International Preliminary Examining Authority, provided that any person so appointed as sub-agent has the right to practice before the national Office with which the international application was filed or to practice in respect of the international application before the International Bureau as receiving Office, as the case may be;

(ii) [No change]

90.2 to 90.6 [No change]

Rule 91
Obvious Errors in Documents

91.1 Rectification

(a) to (d) [No change]

(e) No rectification shall be made except with the express authorization:

(i) and (ii) [No change]

(iii) of the International Preliminary Examining Authority if the error is in any part of the international application other than the request or in any paper submitted to that Authority,

(iv) [No change]

(f) to (g-quater) [No change]


I hereby certify that the foregoing text is a true copy of the amendments to the Regulations under the Patent Cooperation Treaty (PCT), done at Washington on June 19, 1970, as adopted by the Assembly of the International Patent Cooperation Union (PCT Union) on September 29, 1993, during its twenty-first session (ninth ordinary) held in Geneva from September 20 to 29, 1993, with effect on January 1, 1994.

(signed)
Arpad Bogsch
Director General
World Intellectual Property Organization


Footnote:

[*] 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]" appears.