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Patents Regulations 1991 (consolidated as of August 1, 2010), Australia

Back Superseded Text  Go to latest Version in WIPO Lex
Details Details Year of Version 2010 Dates Entry into force: April 30, 1991 Adopted: April 18, 1991 Type of Text Implementing Rules/Regulations Subject Matter Patents (Inventions) Notes The consolidated Patents Regulations 1991, which was made under the Patents Act 1990, was prepared on 12 December 2009 by the Office of Legislative Drafting and Publishing, Attorney-General's Department, Canberra. This compilation consolidates the amendments to the principal Patents Regulations 1991 (Statutory Rules 1991 No. 71) up to Regulations No. 181 of 2010.

See 'Notes' section to the Patents Regulations 1991 on page 167 for a complete list of the consolidated amendments.

Available Materials
Main Text(s) Related Text(s)
Additional Text(s) Volume(s) (1 text(s)) Volume(s) (1 text(s)) English Patents Regulations 1991 (consolidated as of August 1, 2010) 1       2      

Patents Regulations 1991

Statutory Rules 1991 No. 71 as amended

made under the

Patents Act 1990

This compilation was prepared on 1 August 2010 taking into account amendments up to SLI 2010 No. 181

This document has been split into two Volumes Volume 1 contains Chapters 1 to 23 and Schedules 1, 1A and 2, and Volume 2 contains Schedules 2A to 8 and the Notes Each volume has its own Table of Contents

Prepared by the Office of Legislative Drafting and Publishing, Attorney-General’s Department, Canberra

Page

Contents

Schedule 2A Regulations under the Patent Cooperation Treaty 3

Schedule 3 Formal requirements for documents to be filed 143

Schedule 4 Convention countries 150

Schedule 5 Knowledge requirements 153 Part 1 Overall requirement 153 Part 2 Legal process and overview of intellectual property 153 Part 3 Professional conduct 153 Part 4 Intellectual property law 154 Part 5 Intellectual property systems 154

Schedule 7 Fees 155 Part 1 Patent Attorneys 155 Part 2 General fees 155 Part 3 General fees for international applications 161 Part 4 Fees payable for the benefit of the International

Bureau 162

Schedule 8 Costs, expenses and allowances 164 Part 1 Costs 164 Part 2 Expenses and allowances 165

Notes 167

Schedule 2A Regulations under the Patent Cooperation Treaty

(subregulation 1.4 (2))

Adopted on June 19, 1970, and am ended on April 14, 1978, October 3, 1978, May 1, 1979, June 16, 1980, Septem ber 26, 1980, July 3, 1981, September 10, 1982, October 4, 1983, February 3, 1984, Septem ber 28, 1984, October 1, 1985, July 12, 1991, October 2, 1991, Septem ber 29, 1992, September 29, 1993, October 3, 1995, October 1, 1997, September 15, 1998, Septem ber 29, 1999, March 17, 2000, October 3, 2000, October 3, 2001, October 1, 2002, Oc tober 1, 2003, October 5, 2004, October 5, 2005, October 3, 2006, Nove mber 12, 2007, May 15, 2008, September 29, 2008, 1 January, 2009, 1 July, 2009 and 1 July, 2010.

TABLE OF PROVISIONS

Part A: Introductory Rules

Rule 1 Abbreviated Expressions`

1.1 Meaning of Abbreviated Expressions

Rule 2 Interpretation of Certain Words

2.1 “Applicant”

2.2 “Agent”

2.2 bis “Common Representative”

2.3 “Signature”

2.4 “Priority Period”

Part B: Rules Concerning Chapter I of the Treaty

Rule 3 The Request (Form)

3.1 Form of Request

3.2 Availability of Forms

3.3 Check List

  1. Particulars
  2. Mandatory and Optional Contents; Signature

Rule 4 The Request (Contents) 4.2 The Petition

4.3 Title of the Invention

4.4 Names and Addresses

4.5 The Applicant

4.6 The Inventor

4.7 The Agent

4.8 Common Representative

4.9 Designation of States; Kinds of Protection; National and Regional Patents

4.10 Priority Claim

4.11 Reference to Continuation or Continuation-in-Part, or Parent Application or Grant

4.12 Taking into Account Results of Earlier Search

4.14 bis Choice of International Searching Authority

4.15 Signature

4.16 Transliteration or Translation of Certain Words

4.17 Additional Matter

4.18 Statement of Incorporation by Reference

4.19 Additional matter

Rule 5 The Description

5.1 Manner of the Description

5.2 Nucleotide and/or Amino Acid Sequence Disclosure

Rule 6 The Claims

6.1 Number and Numbering of Claims

6.2 References to Other Parts of the International Application

6.3 Manner of Claiming

6.4 Dependent Claims

6.5 Utility Models

Rule 7 The Drawings

7.1 Flow Sheets and Diagrams

7.2 Time Limit

Rule 8 The Abstract

8.1 Contents and Form of the Abstract

8.2 Figure

8.3 Guiding Principles in Drafting

Rule 9 Expressions, Etc., Not to Be Used

9.1 Definition

9.2 Noting of Lack of Compliance

9.3 Reference to Article 21 (6)

Rule 10 Terminology and Signs

10.1 Terminology and Signs

    1. Consistency
    2. Rule 11 Physical Requirements of the International Application
  1. Number of Copies

11.2 Fitness for Reproduction

11.3 Material to be Used

11.4 Separate Sheets, Etc.

11.5 Size of Sheets

11.6 Margins

11.7 Numbering of Sheets

11.8 Numbering of Lines

11.9 Writing of Text Matter

11.10 Drawings, Formulae, and Tables, in Text Matter

11.11 Words in Drawings

11.12 Alterations, Etc.

11.13 Special Requirements for Drawings

11.14 Later Documents

Rule 12 Language of the International Application and Translations for the Purposes of International Search and International Publication

12.1 Languages Accepted for the Filing of International Applications

12.1 bis Language of Elements and Parts Furnished under Rule 20.3, 20.5 or 20.6

12.1 ter Language of Indications Furnished under Rule 13bis.4

12.2 Language of Changes in the International Application

12.3 Translation for the Purposes of International Search

12.4 Translation for the Purposes of International Publication

Rule 12 bis Copy of Results of Earlier Search and of Earlier Application; Translation

12 bis.1 Copy of Results of Earlier Search and of Earlier Application; Translation

Rule 13 Unity of Invention

13.1 Requirement

13.2 Circumstances in Which the Requirement of Unity of Invention Is to Be Considered Fulfilled

13.3 Determination of Unity of Invention Not Affected by Manner of Claiming

13.4 Dependent Claims

13.5 Utility Models

Rule 13 bis Inventions Relating to Biological Material 13 bis.1 Definition 13 bis.2 References (General) 13 bis.3 Ref erences: Contents; Failure to Include Reference or

Indication 13 bis.4 Ref erences: Time Limit for Furnishing Indications 13 bis.5 References and Indications for the Purposes of One or

More Designated States; Different Deposits for Different Designated States; Deposits with Depositary Institutions other than Those Notified

13 bis.6 Furnishing of Samples 13 bis.7 National Requirements: Notification and Publication Rule 13 ter Nucleotide and/or Amino Acid Sequence Listings

13 ter.1 Procedure Before the International Searching Authority

13 ter.2 Procedure Before the International Preliminary Examining Authority

13 ter.3 Sequence Listing for Designated Office

Rule 14 The Transmittal Fee

14.1 The Transmittal Fee

Rule 15 The International Fee

15.1 The International Filing Fee

15.2 Amount

15.3 Time Limit for Payment; Amount Payable

15.4 Refund

Rule 16 The Search Fee

16.1 Right to Ask for a Fee

16.2 Refund

16.3 Partial Refund

Rule 16 bis Extension of Time Limits for Payment of Fees

16 bis.1 Invitation by the Receiving Office

16 bis.2 Late Payment Fee

Rule 17 The Priority Document

17.1 Obligation to Submit Copy of Earlier National or International Application

17.2 Availability of Copies

Rule 18 The Applicant

18.1 Residence and Nationality

18.3 Two or More Applicants

18.4 Information on Requirements Under National Law as to Applicants

Rule 19 The Competent Receiving Office

19.1 Where to File

19.2 Two or More Applicants

19.3 Publication of Fact of Delegation of Duties of Receiving Office

19.4 Transmittal to the International Bureau as Receiving Office

Rule 20 International Filing Date

20.1 Determination under Article 11 (1)

20.2 Positive Determination under Article 11 (1)

20.3 Defects under Article 11 (1)

20.4 Negative Determination under Article 11 (1)

20.5 Missing Parts

20.6 Confirmation of Incorporation by Reference of Elements and Parts

20.7 Time Limit

20.8 Incompatibility with National Laws

Rule 21 Preparation of Copies

21.1 Responsibility of the Receiving Office

21.2 Certified Copy for the Applicant

Rule 22 Transmittal of the Record Copy and Translation

22.1 Procedure

22.3 Time Limit under Article 12 (3)

Rule 23 Transmittal of the Search Copy, Translation and Sequence Listing

    1. Procedure
    2. Rule 24 Receipt of the Record Copy by the International Bureau
  1. Notification of Receipt of the Record Copy

Rule 25 Receipt of the Search Copy by the International

Searching Authority

25.1

Notification of Receipt of the Search Copy

Rule 26 Checking by, and Correcting before, the Receiving Office of Certain Elements of the International Application

26.1 Invitation under Article 14 (1) (b) to Correct

26.2 Time Limit for Correction

26.2 bis Checking of Requirements under Article 14 (1) (a) (i) and (ii)

26.3 Checking of Physical Requirements under Article 14 (1) (a) (v)

26.3 bis Invitation under Article 14 (1) (b) to Correct Defects under Rule 11

26.3 ter Invitation to Correct Defects under Article 3 (4) (i)

26.4 Procedure

26.5 Decision of the Receiving Office

Rule 26 bis Correction or Addition of Priority Claim

26 bis.1 Correction or Addition of Priority Claim

26 bis.2 Defects in Priority Claims

26 bis.3 Restoration of Right of Priority by Receiving Office

Rule 27 Lack of Payment of Fees

27.1 Fees

Rule 28 Defects Noted by the International Bureau

28.1 Note on Certain Defects

Rule 29 International Applications Considered Withdrawn

29.1 Finding by Receiving Office

29.3 Calling Certain Facts to the Attention of the Receiving Office

  1. Notification of Intent to Make Declaration under Article 14 (4)
  2. Time Limit

Rule 30 Time Limit under Article 14 (4)

Rule 31 Copies Required under Article 13

31.1 Request for Copies

31.2

Preparation of Copies

Rule 32 Extension of Effects of International Application to Certain Successor States

32.1 Extension of International Application to Successor State

32.2 Effects of Extension to Successor State

Rule 33 Relevant Prior Art for the International Search

33.1 Relevant Prior Art for the International Search

33.2 Fields to be Covered by the International Search

    1. Orientation of the International Search
    2. Rule 34 Minimum Documentation
  1. Definition

Rule 35 The Competent International Searching Authority

35.1 When Only One International Searching Authority is Competent

35.2 When Several International Searching Authorities are Competent

35.3 When the International Bureau is Receiving Office under Rule 19.1 (a) (iii)

Rule 36 Minimum Requirements for International Searching Authorities

36.1 Definition of Minimum Requirements

Rule 37 Missing or Defective Title

37.1 Lack of Title

37.2 Establishment of Title

Rule 38 Missing or Defective Abstract

38.1 Lack of Abstract

38.2 Establishment of Abstract

38.3 Modification of Abstract
Rule 39 Subject Matter under Article 17 (2) (a) (i)
39.1 Definition
Rule 40 Lack of Unity of Invention (International Search)
40.1 Invitation to Pay Additional Fees; Time Limit
40.2 Additional Fees
Rule 41 Taking into Account Results of Earlier Search
41.1 Taking into Account Results of Earlier Search
Rule 42 Time Limit for International Search
42.1 Time Limit for International Search
Rule 43 The International Search Report
43.1 Identifications
43.2 Dates
43.3 Classification
43.4 Language
43.5 Citations
43.6 Fields Searched

bis

43.6 Consideration of Rectifications of Obvious Mistakes

43.7 Remarks Concerning Unity of Invention

43.8 Authorized Officer

43.9 Additional Matter

43.10 Form

Rule 43 bis Written Opinion of the International Searching Authority

43 bis.1 W ritten Opinion

Rule 44 Transmittal of the International Search Report, Written Opinion, Etc.

44.1 Copies of Report or Declaration and Written Opinion

44.2 Title or Abstract

44.3 Copies of Cited Documents Rule 44 bis International Preliminary Report on Patentability by the

International Searching Authority
44 bis.1 Issuance of Report; Transmittal to the Applicant
44 bis.2 Communication to Designated Offices
44 bis.3 Translation for Designated Offices
44 bis.4 Observations on the Translation

Rule 44 ter Confidential Nature of Written Opinion, Report, Translation and Observations

44 ter.1 Conf idential Nature

Rule 45 Translation of the International Search Report

45.1 Languages

Rule 45bis Supplementary International Searches 45bis.1 Supplem entary Search Request 45bis.2 Supplementary Search Handling Fee

45 bis.3 Supplementary Search Fee

45 bis.4 Checking of Supplementary Search Request; Correction of Defects; Late Payment of Fees; Transmittal to Authority Specified for Supplementary Search

45 bis.5 Start, Basis and Scope of Supplementary International Search

45 bis.6 Unity of Invention

45 bis.7 Supplementary International Search Report

45 bis.8 Transmittal and Effect of the Supplementary International Search Report

45 bis.9 International Searching Authorities Competent to Carry Out Supplementary International Search

Rule 46 Amendment of Claims before the International Bureau

46.1 Time Limit

46.2 Where to File
46.3 Language of Amendments
46.4 Statement
46.5 Form of Amendments
Rule 47 Communication to Designated Offices
47.1 Procedure
47.2 Copies
47.3 Languages
47.4 Express Request under Article 23 (2) Prior to
International Publication
Rule 48 International Publication
48.1 Form and Means
48.2 Contents
48.3 Languages of Publication
48.4 Earlier Publication on the Applicant’s Request
48.5 Notification of National Publication
48.6 Announcing of Certain Facts
Rule 49 Copy, Translation and Fee under Article 22
49.1 Notification
49.2 Languages
49.3 Statements under Article 19; Indications under Rule
13bis.4
49.4 Use of National Form
49.5 Contents of and Physical Requirements for the
Translation
49.6 Reinstatement of Rights After Failure to Perform the
Acts Referred to in Article 22
Rule 49 bis Indications as to Protection Sought for Purposes of

National Processing 49 bis.1 Choice of Certain Kinds of Protection 49 bis.2 Time of Furnishing Indications

Rule 49 ter Effect of Restoration of Right of Priority by Receiving Office; Restoration of Right of Priority by Designated Office

49 ter.1 Effect of Restoration of Right of Priority by Receiving Office

49 ter.2 Restoration of Right of Priority by Designated Office

Rule 50 Faculty under Article 22 (3)

50.1 Exercise of Faculty

Rule 51 Review by Designated Offices

51.1 Time Limit for Presenting the Request to Send Copies

51.2 Copy of the Notification

51.3 Time Limit for Paying National Fee and Furnishing Translation

Rule 51 bis Certain National Requirements Allowed under Article 27

51 bis.1 Certain National Requirements Allowed

51 bis.2 Opportunity to Comply with National Requirements

51 bis.3 Opportunity to Comply with National Requirements

Rule 52 Amendment of the Claims, the Description, and the Drawings, before Designated Offices

52.1 Time Limit

Part C: Rules Concerning Chapter II of the Treaty

Rule 53 The Demand

53.1 Form

53.2 Contents

53.3 The Petition

53.4 The Applicant

53.5 Agent or Common Representative

53.6 Identification of the International Application

53.7 Election of States

53.8 Signature

53.9 Statement Concerning Amendments

Rule 54 The Applicant Entitled to Make a Demand

54.1 Residence and Nationality

54.2 Right to Make a Demand

54.3 International Applications Filed with the International Bureau as Receiving Office

54.4 Applicant Not Entitled to Make a Demand

Rule 54 bis Time Limit for Making a Demand

54 bis.1 Time Limit for Making a Demand

Rule 55 Languages (International Preliminary Examination)

55.1 Language of Demand

55.2 Translation of International Application

55.3 Translation of Amendments

Rule 57 The Handling Fee

57.1 Requirement to Pay

57.2 Amount

57.3 Time Limit for Payment; Amount Payable

57.4 Refund

Rule 58 The Preliminary Examination Fee

58.1 Right to Ask for a Fee

58.3 Refund

Rule 58 bis Extension of Time Limits for Payment of Fees

58 bis.1 Invitation by the International Preliminary Examining Authority

58 bis.2 Late Payment Fee

Rule 59 The Competent International Preliminary Examining Authority

59.1 Demands under Article 31 (2) (a) Searching Authority

59.2 59.3 Demands under Article 31 (2) (b) Transmittal of Demand to the Competent International Preliminary Examining Authority
Rule 60 Certain Defects in the Demand or Elections
60.1 Defects in the Demand
Rule 61 Notification of the Demand and Elections
61.1 61.2 Notification to the International Bureau and the Applicant Notification to the Elected Offices
61.3 61.4 Information for the Applicant Publication in the Gazette
Rule 62 62.1 Copy of the Written Opinion by the International Searching Authority and of Amendments Under Article 19 for the International Preliminary Examining Authority Copy of Written Opinion by International Searching Authority and of Amendments Made before the Demand is Filed
62.2 Amendments Made after the Demand is Filed
Rule 62 bis Translation for the International Preliminary Examining Authority of the Written Opinion of the International

bis.1 Translation and Observations

Rule 63 Minimum Requirements for International Preliminary Examining Authorities

63.1 Definition of Minimum Requirements

Rule 64 Prior Art for International Preliminary Examination

64.1 Prior Art

64.2 Non-Written Disclosures

64.3 Certain Published Documents

Rule 65 Inventive Step or Non-Obviousness

65.1 Approach to Prior Art

65.2 Relevant Date

Rule 66 Procedure before the International Preliminary Examining Authority

66.1 Basis of the International Preliminary Examination

66.1 bis Written Opinion of the International Searching Authority

66.2 Written Opinion of the International Preliminary Examining Authority

66.3 Formal Response to the International Preliminary Examining Authority

66.4 Additional Opportunity for Submitting Amendments or Arguments

66.4 bis Consideration of Amendments, Arguments and Rectifications of Obvious Mistakes

66.5 Amendment

66.6 Informal Communications with the Applicant

66.7 Copy and Translation of Earlier Application Whose Priority is Claimed

66.8 Form of Amendments

66.9 Language of Amendments

Rule 67 Subject Matter under Article 34 (4) (a) (i)

67.1 Definition

Rule 68 Lack of Unity of Invention (International Preliminary Examination)

68.1 No Invitation to Restrict or Pay

68.2 Invitation to Restrict or Pay

68.3 Additional Fees

68.4 Procedure in the Case of Insufficient Restriction of the Claims

68.5 Main Invention

Rule 69 Start of and Time Limit for International Preliminary Examination

69.1 Start of International Preliminary Examination

69.2 Time Limit for International Preliminary Examination

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

70.1 Definition

70.2 Basis of the Report

70.3 Identifications

70.4 Dates

70.5 Classification

70.6 Statement under Article 35 (2)

70.7 Citations under Article 35 (2)

70.8 Explanations under Article 35 (2)

70.9 Non-Written Disclosures

70.10 Certain Published Documents

70.11 Mention of Amendments

70.12 Mention of Certain Defects and Other Matters

70.13 Remarks Concerning Unity of Invention

70.14 Authorized Officer

70.15 Form; Title

70.16 Annexes to the Report

70.17 Languages of the Report and the Annexes

Rule 71 Transmittal of the International Preliminary Examination Report

71.1 Recipients

71.2 Copies of Cited Documents

Rule 72 Translation of the International Preliminary Examination Report and of the Written Opinion of the International Searching Authority

72.1 Languages

72.2 Copy of Translation for the Applicant

72.2 bis Translation of the Written Opinion of the International

Part D: Rules Concerning Chapter III of the Treaty

72.3 Searching Authority Established Under Rule 43bis.1 Observations on the Translation
Rule 73 73.1 73.2 Communication of the International Preliminary Examination Report or the Written Opinion of the International Searching Authority Preparation of Copies Communication to Elected Offices
Rule 74 74.1 Translations of Annexes of the International Preliminary Examination Report and Transmittal Thereof Contents of Translation and Time Limit for Transmittal Thereof
Rule 76 Translation of Priority Document; Application of Certain Rules to Procedures Before Elected Offices
76.4 76.5 Time Limit for Translation of Priority Document Application of Certain Rules to Procedures Before Elected Offices
Rule 77 77.1 Faculty under Article 39 (1) (b) Exercise of Faculty
Rule 78 78.1 Amendment of the Claims, the Description, and the Drawings, before Elected Offices Time Limit
78.3 Utility Models

Rule 79 Calendar

79.1 Expressing Dates

Rule 80 Computation of Time Limits

80.1 Periods Expressed in Years

80.2 Periods Expressed in Months

80.3 Periods Expressed in Days

80.4 Local Dates
80.5 Expiration on a Non-Working Day or Official Holiday
80.6 Date of Documents
80.7 End of Working Day
Rule 81 Modification of Time Limits Fixed in the Treaty
81.1 Proposal
81.2 Decision by the Assembly
81.3 Voting by Correspondence
Rule 82 Irregularities in the Mail Service
82.1 Delay or Loss in Mail
82.2 Interruption in the Mail Service
Rule 82 bis Excuse by the Designated or Elected State of Delays in

Meeting Certain Time Limits

82 bis.1 Meaning of “Time Limit” in Article 48 (2)

82 bis.2 Reinstatement of Rights and Other Provisions to which Article 48 (2) Applies

Rule 82 ter Rectification of Errors Made by the Receiving Office or by the International Bureau

82 ter.1 Errors Concerning the International Filing Date and the Priority Claim

Rule 83 Right to Practice before International Authorities

83.1 Proof of Right

83.1 bis Where the International Bureau is the Receiving Office

83.2 Information

Part E: Rules Concerning Chapter V of the Treaty

Rule 84 Expenses of Delegations

  1. Expenses Borne by Governments
  2. Voting by Correspondence

Rule 85 Absence of Quorum in the Assembly or by Electronic Means

Rule 86 86.1 86.2 86.3 86.4 86.5 86.6 The Gazette Contents Languages; Form and Means of Publication; Timing Frequency Sale Title Further Details
Rule 87 87.1 Communication of Publications Communication of Publications on Request
Rule 88 88.1 88.3 88.4 Amendment of the Regulations Requirement of Unanimity Requirement of Absence of Opposition by Certain States Procedure
Rule 89 89.1 89.2 89.3 Administrative Instructions Scope Source Publication and Entry into Force
Rule 89 bis Filing, Processing and Communication of International Applications and Other Documents in Electronic Form

89 bis.1 International Applications

89 bis.2 Other Documents

89 bis.3 Communication Between Offices Part F: Rules Concerning Several Chapters of the Treaty

Rule 90 Agents and Common Representatives

90.1 Appointment as Agent

90.2 Common Representative

90.3 Effects of Acts by or in Relation to Agents and Common Representatives

90.4 Manner of Appointment of Agent or Common
Representative
90.5 General Power of Attorney
90.6 Revocation and Renunciation

Rule 90 bis W ithdrawals 90 bis.1 Withdrawal of the International Application 90 bis.2 Withdrawal of Designations 90 bis.3 Withdrawal of Priority Claims 90 bis.3bis Withdrawal of Supplementary Search Request 90 bis.4 Withdrawal of the Demand, or of Elections 90 bis.5 Signature 90 bis.6 Effect of Withdrawal 90 bis.7 Faculty under Article 37 (4) (b)

Rule 91 Rectification of Obvious Mistakes in the International Application and Other Documents

91.1 Rectification of Obvious Mistakes

91.2 Requests for Rectification

91.3 Authorization and Effect of Rectifications

Rule 92 Correspondence

92.1 Need for Letter and for Signature

92.2 Languages

92.3 Mailings by National Offices and Intergovernmental Organizations

92.4 Use of Telegraph, Teleprinter, Facsimile Machine, Etc.

Rule 92 bis Recording of Changes in Certain Indications in the Request or the Demand

92 bis.1 Recording of Changes by the International Bureau

Rule 93 Keeping of Records and Files

93.1 The Receiving Office

93.2 The International Bureau

93.3 The International Searching and Preliminary Examining Authorities

93.4 Reproductions

Rule 93 bis Manner of Communication of Documents

93 bis.1 Communication on Request; Communication via Digital Library

Rule 94 Access to Files

94.1 Access to the File Held by the International Bureau

94.2 Access to the File Held by the International Preliminary Examining Authority

  1. Access to the File Held by the Elected Office
  2. Furnishing of Copies of Translations
  3. Schedule of Fees Annexed to Regulations

Rule 95 Availability of Translations

Rule 96 The Schedule of Fees

Schedule of Fees

REGULATIONS UNDER THE PATENT COOPERATION TREATY

PART A

Introductory Rules

Rule 1 Abbreviated Expressions

1.1 Meaning of Abbreviated Expressions

(a)
In these Regulations, the word “Treaty” means the Patent Cooperation Treaty.
(b)
In these Regulations, the words “Chapter” and “Article” refer to the specified Chapter or Article of the Treaty.

Rule 2 Interpretation of Certain Words

2.1 “Applicant” Whenever the word “applicant” is used, it shall be construed as meaning also the agent or other representative of the applicant, except where the contrary clearly follows from the wording or the nature of the provision, or the context in which the word is used,

such as, in particular, where the provision refers to the residence or nationality of the applicant.

2.2 “Agent” Whenever the word “agent” is used, it shall be construed as meaning an agent

appointed under Rule 90.1, unless the contrary clearly follows from the wording or the nature of the provision, or the context in which the word is used.

2.2bis “Common Representative”

Whenever the expression “common representative” is used, it shall be construed as meaning an applicant appointed as, or considered to be, the common representative under Rule 90.2.

2.3 “Signature” Whenever the word “signature” is used, it shall be understood that, if the national law applied by the receiving Office or the competent International Searching or Preliminary

Examining Authority requires the use of a seal instead of a signature, the word, for the purposes of that Office or Authority, shall mean seal.

2.4 “Priority Period”

(a)
Whenever the term “priority period” is used in relation to a priority claim, it shall be construed as meaning the period of 12 months from the filing date of the earlier application whose priority is so claimed. The day of filing of the earlier application shall not be included in that period.
(b)
Rule 80.5 shall apply mutatis mutandis to the priority period.

PART B

Rules Concerning Chapter I of the Treaty

Rule 3 The Request (Form)

3.1 Form of Request

The request shall be made on a printed form or be presented as a computer print-out.

3.2 Availability of Forms

Copies of the printed form shall be furnished free of charge to the applicants by the receiving Office, or, if the receiving Office so desires, by the International Bureau.

3.3 Check List

(a)
The request shall contain a list indicating:
(i)
the total number of sheets constituting the international application and the number of the sheets of each element of the international application: request, description (separately indicating the number of sheets of any sequence listing part of the description), claims, drawings, abstract;
(ii)
where applicable, that the international application as filed is accompanied by a power of attorney (i.e., a document appointing an agent or a common representative), a copy of a general power of attorney, a priority document, a sequence listing in electronic form, a document relating to the payment of fees, or any other document (to be specified in the check list);

(iii) the number of that figure of the drawings which the applicant suggests should accompany the abstract when the abstract is published; in exceptional cases, the applicant may suggest more than one figure.

(b)
The list shall be completed by the applicant, failing which the receiving Office shall make the necessary indications, except that the number referred to in paragraph
(a)
(iii) shall not be indicated by the receiving Office.

3.4 Particulars

Subject to Rule 3.3, particulars of the printed request form and of a request presented as a computer print-out shall be prescribed by the Administrative Instructions.

Rule 4 The Request (Contents)

4.1 Mandatory and Optional Contents; Signature

(a)
The request shall contain:
(i)
a petition,
(ii)
the title of the invention,

(iii) indications concerning the applicant and the agent, if there is an agent,

(iv)
indications concerning the inventor where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application.
(b)
The request shall, where applicable, contain:
(i)
a priority claim,
(ii)
indications relating to an earlier search as provided in Rules 4.12 (i) and 12bis.1 (c) and (f),

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

(iv)
an indication of the applicant’s choice of competent International Searching Authority.
(c)
The request may contain:
(i)
indications concerning the inventor where the national law of none of the designated States requires that the name of the inventor be furnished at the time of filing a national application,
(ii)
a request to the receiving Office to prepare and transmit the priority document to the International Bureau where the application whose priority is claimed was filed with the national Office or intergovernmental authority which is the receiving Office,

(iii) declarations as provided in Rule 4.17,

(iv)
a statement as provided in Rule 4.18,
(v)
a request for restoration of the right of priority,
(vi)
a statement as provided in Rule 4.12 (ii).
(d)
The request shall be signed.

4.2 The Petition The petition shall be to the following effect and shall preferably be worded as follows:

“The undersigned requests that the present international application be processed according to the Patent Cooperation Treaty.”

4.3 Title of the Invention

The title of the invention shall be short (preferably from two to seven words when in English or translated into English) and precise.

4.4 Names and Addresses

(a)
Names of natural persons shall be indicated by the person’s family name and given name(s), the family name being indicated before the given name(s).
(b)
Names of legal entities shall be indicated by their full, official designations.
(c)
Addresses shall be indicated in such a way as to satisfy the customary requirements for prompt postal delivery at the indicated address and, in any case, shall consist of all the relevant administrative units up to, and including, the house number, if any. Where the national law of the designated State does not require the indication of the house number, failure to indicate such number shall have no effect in that State. In order to allow rapid communication with the applicant, it is recommended to indicate any teleprinter address, telephone and facsimile machine numbers, or corresponding data for other like means of communication, of the applicant or, where applicable, the agent or the common representative.
(d)
For each applicant, inventor, or agent, only one address may be indicated, except that, if no agent has been appointed to represent the applicant, or all of them if more than one, the applicant or, if there is more than one applicant, the common representative, may indicate, in addition to any other address given in the request, an address to which notifications shall be sent.

4.5 The Applicant

(a)
The request shall indicate:
(i)
the name,
(ii)
the address, and

(iii) the nationality and residence of the applicant or, if there are several applicants, of each of them.

(b)
The applicant’s nationality shall be indicated by the name of the State of which he is a national.
(c)
The applicant’s residence shall be indicated by the name of the State of which he is a resident.
(d)
The request may, for different designated States, indicate different applicants. In such a case, the request shall indicate the applicant or applicants for each designated State or group of designated States.
(e)
Where the applicant is registered with the national Office that is acting as receiving Office, the request may indicate the number or other indication under which the applicant is so registered.

4.6 The Inventor

(a)
Where Rule 4.1 (a) (iv) or (c) (i) applies, the request shall indicate the name and address of the inventor or, if there are several inventors, of each of them.
(b)
If the applicant is the inventor, the request, in lieu of the indication under paragraph (a), shall contain a statement to that effect.
(c)
The request may, for different designated States, indicate different persons as inventors where, in this respect, the requirements of the national laws of the designated States are not the same. In such a case, the request shall contain a separate statement for each designated State or group of States in which a particular person, or the same person, is to be considered the inventor, or in which particular persons, or the same persons, are to be considered the inventors.

4.7 The Agent

(a)
If an agent is appointed, the request shall so indicate, and shall state the agent’s name and address.
(b)
Where the agent is registered with the national Office that is acting as receiving Office, the request may indicate the number or other indication under which the agent is so registered.

4.8 Common Representative If a common representative is appointed, the request shall so indicate.

4.9 Designation of States; Kinds of Protection; National and Regional Patents

(a)
The filing of a request shall constitute:
(i)
the designation of all Contracting States that are bound by the Treaty on the international filing date;
(ii)
an indication that the international application is, in respect of each designated State to which Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State;

(iii) an indication that the international application is, in respect of each designated State to which Article 45(1) applies, for the grant of a regional patent and also, unless Article 45(2) applies, a national patent.

(b) Notwithstanding paragraph (a) (i), if, on October 5, 2005, the national law of a Contracting State provides that the filing of an international application which contains the designation of that State and claims the priority of an earlier national application having effect in that State shall have the result that the earlier national application ceases to have effect with the same consequences as the withdrawal of the earlier national application, any request in which the priority of an earlier national application filed in that State is claimed may contain an indication that the designation of that State is not made, provided that the designated Office notifies the International Bureau by January 5, 2006, that this paragraph shall apply in respect of designations of that State and that the notification is still in force on the international filing date. The information received shall be promptly published by the International Bureau in the Gazette.

4.10 Priority Claim

(a)
Any declaration referred to in Article 8 (1) (“priority claim”) may claim the priority of one or more earlier applications filed either in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for any Member of the World Trade Organization that is not party to that Convention. Any priority claim shall be made in the request; it shall consist of a statement to the effect that the priority of an earlier application is claimed and shall indicate:
(i)
the date on which the earlier application was filed;
(ii)
the number of the earlier application;

(iii) where the earlier application is a national application, the country party to the Paris Convention for the Protection of Industrial Property or the Member of the World Trade Organization that is not party to that Convention in which it was filed;

(iv)
where the earlier application is a regional application, the authority entrusted with the granting of regional patents under the applicable regional patent treaty;
(v)
where the earlier application is an international application, the receiving Office with which it was filed.
(b)
In addition to any indication required under paragraph (a) (iv) or (v):
(i)
where the earlier application is a regional application or an international application, the priority claim may indicate one or more countries party to the Paris Convention for the Protection of Industrial Property for which that earlier application was filed;
(ii)
where the earlier application is a regional application and at least one of the countries party to the regional patent treaty is neither party to the Paris Convention for the Protection of Industrial Property nor a Member of the World Trade Organization, the priority claim shall indicate at least one country party to that Convention or one Member of that Organization for which that earlier application was filed.
(c)
For the purposes of paragraphs (a) and (b), Article 2 (vi) shall not apply.
(d)
If, on September 29, 1999, paragraphs (a) and (b) as amended with effect from January 1, 2000, are not compatible with the national law applied by a designated Office, those paragraphs as in force until December 31, 1999, shall continue to apply after that date in respect of that designated Office for as long as the said paragraphs as amended

continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by October 31, 1999. The information received shall be promptly published by the International Bureau in the Gazette.

4.11 Reference to Continuation or Continuation-in-Part, or Parent Application or Grant

(a) If:
(i) the applicant intends to make an indication under Rule 49bis.1 (a) or (b) of
the wish that the international application be treated, in any designated
State, as an application for a patent of addition, certificate of addition,
inventor’s certificate of addition or utility certificate of addition; or
(ii) the applicant intends to make an indication under Rule 49bis.1 (d) of the
wish that the international application be treated, in any designated State,
as an application for a continuation or a continuation-in-part of an earlier
application;

the request shall so indicate and shall indicate the relevant parent application or parent patent or other parent grant.

(b) The inclusion in the request of an indication under paragraph (a) shall have no effect on the operation of Rule 4.9.

4.12 Taking into Account Results of Earlier Search If the applicant wishes the International Searching Authority to take into account, in carrying out the international search, the results of an earlier international,

international-type or national search carried out by the same or another International Searching Authority or by a national Office (“earlier search”):

(i)
the request shall so indicate and shall specify the Authority or Office concerned and the application in respect of which the earlier search was carried out;
(ii)
the request may, where applicable, contain a statement to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language.

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 Signature

(a)
Subject to paragraph (b), the request shall be signed by the applicant or, if there is more than one applicant, by all of them.
(b)
Where two or more applicants file an international application which designates a State whose national law requires that national applications be filed by the inventor and where an applicant for that designated State who is an inventor refused to sign the request or could not be found or reached after diligent effort, the request need not be signed by that applicant if it is signed by at least one applicant and a statement is furnished explaining, to the satisfaction of the receiving Office, the lack of the signature concerned.

4.16 Transliteration or Translation of Certain Words

(a)
Where any name or address is written in characters other than those of the Latin alphabet, the same shall also be indicated in characters of the Latin alphabet either as a mere transliteration or through translation into English. The applicant shall decide which words will be merely transliterated and which words will be so translated.
(b)
The name of any country written in characters other than those of the Latin alphabet shall also be indicated in English.

4.17 Declarations Relating to National Requirements Referred to in Rule 51bis.1 (a) (i) to

(v)

The request may, for the purposes of the national law applicable in one or more designated States, contain one or more of the following declarations, worded as prescribed by the Administrative Instructions:

(i)
a declaration as to the identity of the inventor, as referred to in Rule 51bis.1 (a) (i);
(ii)
a declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent, as referred to in Rule 51bis.1 (a) (ii);

(iii) a declaration as to the applicant’s entitlement, as at the international filing date, to claim priority of the earlier application, as referred to in Rule 51bis.1 (a) (iii);

(iv)
a declaration of inventorship, as referred to in Rule 51bis.1 (a) (iv), which shall be signed as prescribed by the Administrative Instructions;
(v)
a declaration as to non-prejudicial disclosures or exceptions to lack of novelty, as referred to in Rule 51bis.1 (a) (v).

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) 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 Additional Matter

(a)
The request shall contain no matter other than that specified in Rules 4.1 to 4.18, provided that the Administrative Instructions may permit, but cannot make mandatory, the inclusion in the request of any additional matter specified in the Administrative Instructions.
(b)
If the request contains matter other than that specified in Rules 4.1 to 4.18 or permitted under paragraph (a) by the Administrative Instructions, the receiving Office shall ex officio delete the additional matter.

Rule 5 The Description

5.1 Manner of the Description

(a)
The description shall first state the title of the invention as appearing in the request and shall:
(i)
specify the technical field to which the invention relates;
(ii)
indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, cite the documents reflecting such art;

(iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art;

(iv)
briefly describe the figures in the drawings, if any;
(v)
set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any; where the national law of the designated State does not require the description of the best mode but is satisfied with the description of any mode (whether it is the best contemplated or not), failure to describe the best mode contemplated shall have no effect in that State;
(vi)
indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the way in which it can be used; the term “industry” is to be understood in its broadest sense as in the Paris Convention for the Protection of Industrial Property.
(b)
The manner and order specified in paragraph (a) shall be followed except when, because of the nature of the invention, a different manner or a different order would result in a better understanding and a more economic presentation.
(c)
Subject to the provisions of paragraph (b), each of the parts referred to in paragraph (a) shall preferably be preceded by an appropriate heading as suggested in the Administrative Instructions.

5.2 Nucleotide and/or Amino Acid Sequence Disclosure

(a)
Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the description shall contain a sequence listing complying with the standard provided for in the Administrative Instructions and presented as a separate part of the description in accordance with that standard.
(b)
Where the sequence listing part of the description contains any free text as defined in the standard provided for in the Administrative Instructions, that free text shall also appear in the main part of the description in the language thereof.

Rule 6 The Claims

6.1 Number and Numbering of Claims

(a)
The number of the claims shall be reasonable in consideration of the nature of the invention claimed.
(b)
If there are several claims, they shall be numbered consecutively in arabic numerals.
(c)
The method of numbering in the case of the amendment of claims shall be governed by the Administrative Instructions.

6.2 References to Other Parts of the International Application

(a)
Claims shall not, except where absolutely necessary, rely, in respect of the technical features of the invention, on references to the description or drawings. In particular, they shall not rely on such references as: “as described in part . . . of the description,” or “as illustrated in figure . . . of the drawings.”
(b)
Where the international application contains drawings, the technical features mentioned in the claims shall preferably be followed by the reference signs relating to such features. When used, the reference signs shall preferably be placed between parentheses. If inclusion of reference signs does not particularly facilitate quicker understanding of a claim, it should not be made. Reference signs may be removed by a designated Office for the purposes of publication by such Office.

6.3 Manner of Claiming

(a)
The definition of the matter for which protection is sought shall be in terms of the technical features of the invention.
(b)
Whenever appropriate, claims shall contain:
(i)
a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art,
(ii)
a characterizing portion—preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect—stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect.
(c)
Where the national law of the designated State does not require the manner of claiming provided for in paragraph (b), failure to use that manner of claiming shall have no effect in that State provided the manner of claiming actually used satisfies the national law of that State.

6.4 Dependent Claims

(a)
Any claim which includes all the features of one or more other claims (claim in dependent form, hereinafter referred to as “dependent claim”) shall do so by a reference, if possible at the beginning, to the other claim or claims and shall then state the additional features claimed. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such claims in the alternative only. Multiple dependent claims shall not serve as a basis for any other multiple dependent claim. Where the national law of the national Office acting as International Searching Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the preceding two sentences, failure to use that manner of claiming may result in an indication under Article 17 (2) (b) in the international search report. Failure to use the said manner of claiming shall have no effect in a designated State if the manner of claiming actually used satisfies the national law of that State.
(b)
Any dependent claim shall be construed as including all the limitations contained in the claim to which it refers or, if the dependent claim is a multiple dependent claim, all the limitations contained in the particular claim in relation to which it is considered.
(c)
All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.

6.5 Utility Models Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 6.1 to 6.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least 2 months from the expiration of the time limit

applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.

Rule 7 The Drawings

7.1 Flow Sheets and Diagrams Flow sheets and diagrams are considered drawings.

7.2 Time Limit The time limit referred to in Article 7 (2) (ii) shall be reasonable under the circumstances of the case and shall, in no case, be shorter than 2 months from the date

of the written invitation requiring the filing of drawings or additional drawings under the said provision.

Rule 8 The Abstract

8.1 Contents and Form of the Abstract

(a)
The abstract shall consist of the following:
(i)
a summary of the disclosure as contained in the description, the claims, and any drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention;
(ii)
where applicable, the chemical formula which, among all the formulae contained in the international application, best characterizes the invention.
(b)
The abstract shall be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English).
(c)
The abstract shall not contain statements on the alleged merits or value of the claimed invention or on its speculative application.
(d)
Each main technical feature mentioned in the abstract and illustrated by a drawing in the international application shall be followed by a reference sign, placed between parentheses.

8.2 Figure

(a)
If the applicant fails to make the indication referred to in Rule 3.3 (a) (iii), or if the International Searching Authority finds that a figure or figures other than that figure or those figures suggested by the applicant would, among all the figures of all the drawings, better characterize the invention, it shall, subject to paragraph (b), indicate the figure or figures which should accompany the abstract when the latter is published by the
International Bureau. In such case, the abstract shall be accompanied by the figure or figures so indicated by the International Searching Authority. Otherwise, the abstract shall, subject to paragraph (b), be accompanied by the figure or figures suggested by the applicant.
(b)
If the International Searching Authority finds that none of the figures of the drawings is useful for the understanding of the abstract, it shall notify the International Bureau accordingly. In such case, the abstract, when published by the International Bureau, shall not be accompanied by any figure of the drawings even where the applicant has made a suggestion under Rule 3.3 (a) (iii).

8.3 Guiding Principles in Drafting The abstract shall be so drafted that it can efficiently serve as a scanning tool for purposes of searching in the particular art, especially by assisting the scientist, engineer

or researcher in formulating an opinion on whether there is a need for consulting the international application itself.

Rule 9 Expressions, Etc., Not To Be Used

9.1 Definition The international application shall not contain:

(i)
expressions or drawings contrary to morality;
(ii)
expressions or drawings contrary to public order;

(iii) statements disparaging the products or processes of any particular person other than the applicant, or the merits or validity of applications or patents of any such person (mere comparisons with the prior art shall not be considered disparaging per se);

(iv) any statement or other matter obviously irrelevant or unnecessary under the circumstances.

9.2 Noting of Lack of Compliance The receiving Office and the International Searching Authority may note lack of compliance with the prescriptions of Rule 9.1 and may suggest to the applicant that he voluntarily correct his international application accordingly. If the lack of compliance was noted by the receiving Office, that Office shall inform the competent International Searching Authority and the International Bureau; if the lack of compliance was noted by

the International Searching Authority, that Authority shall inform the receiving Office and the International Bureau.

9.3 Reference to Article 21 (6)

“Disparaging statements,” referred to in Article 21 (6), shall have the meaning as defined in Rule 9.1 (iii).

Rule 10 Terminology and Signs

10.1 Terminology and Signs

(a)
Units of weights and measures shall be expressed in terms of the metric system, or also expressed in such terms if first expressed in terms of a different system.
(b)
Temperatures shall be expressed in degrees Celsius, or also expressed in degrees Celsius if first expressed in a different manner.
(d)
For indications of heat, energy, light, sound, and magnetism, as well as for mathematical formulae and electrical units, the rules of international practice shall be observed; for chemical formulae, the symbols, atomic weights, and molecular formulae, in general use, shall be employed.
(e)
In general, only such technical terms, signs and symbols should be used as are generally accepted in the art.
(f)
When the international application or its translation is in Chinese, English or Japanese, the beginning of any decimal fraction shall be marked by a period, whereas, when the international application or its translation is in a language other than Chinese, English or Japanese, it shall be marked by a comma.

10.2 Consistency

The terminology and the signs shall be consistent throughout the international application.

Rule 11 Physical Requirements of the International Application

11.1 Number of Copies

(a)
Subject to the provisions of paragraph (b), the international application and each of the documents referred to in the check list (Rule 3.3 (a) (ii)) shall be filed in one copy.
(b)
Any receiving Office may require that the international application and any of the documents referred to in the check list (Rule 3.3 (a) (ii)), except the receipt for the fees paid or the check for the payment of the fees, be filed in two or three copies. In that case, the receiving Office shall be responsible for verifying the identity of the second and the third copies with the record copy.

11.2 Fitness for Reproduction

(a)
All elements of the international application (i.e., the request, the description, the claims, the drawings, and the abstract) shall be so presented as to admit of direct reproduction by photography, electrostatic processes, photo offset, and microfilming, in any number of copies.
(b)
All sheets shall be free from creases and cracks; they shall not be folded.
(c)
Only one side of each sheet shall be used.
(d)
Subject to Rule 11.10 (d) and Rule 11.13 (j), each sheet shall be used in an upright position (i.e., the short sides at the top and bottom).

11.3 Material to be Used

All elements of the international application shall be on paper which shall be flexible, strong, white, smooth, non-shiny, and durable.

11.4 Separate Sheets, Etc.

(a)
Each element (request, description, claims, drawings, abstract) of the international application shall commence on a new sheet.
(b)
All sheets of international application shall be so connected that they can be easily turned when consulted, and easily separated and joined again if they have been separated for reproduction purposes.

11.5 Size of Sheets The size of the sheets shall be A4 (29.7 cm x 21 cm). However, any receiving Office may accept international applications on sheets of other sizes provided that the record

copy, as transmitted to the International Bureau, and, if the competent International Searching Authority so desires, the search copy, shall be of A4 size.

11.6 Margins

(a) The minimum margins of the sheets containing the description, the claims, and the abstract, shall be as follows:

—
top: 2 cm
—
left side: 2.5 cm
—
right side: 2 cm
—
bottom: 2 cm

(b) The recommended maximum, for the margins provided for in paragraph (a), is as follows:

—
top: 4 cm
—
left side: 4 cm
—
right side: 3 cm
—
bottom: 3 cm

(c) On sheets containing drawings, the surface usable shall not exceed 26.2 cm x

17.0 cm. The sheets shall not contain frames around the usable or used surface. The minimum margins shall be as follows:

—
top: 2.5 cm
—
left side: 2.5 cm
—
right side: 1.5 cm
—
bottom: 1.0 cm
(d)
The margins referred to in paragraphs (a) to (c) apply to A4-size sheets, so that, even if the receiving Office accepts other sizes, the A4-size record copy and, when so required, the A4-size search copy shall leave the aforesaid margins.
(e)
Subject to paragraph (f) and to Rule 11.8 (b), the margins of the international application, when submitted, must be completely blank.
(f)
The top margin may contain in the left-hand corner an indication of the applicant’s file reference, provided that the reference appears within 1.5 cm from the top of the sheet. The number of characters in the applicant’s file reference shall not exceed the maximum fixed by the Administrative Instructions.

11.7 Numbering of Sheets

(a)
All the sheets contained in the international application shall be numbered in consecutive arabic numerals.
(b)
The numbers shall be centered at the top or bottom of the sheet, but shall not be placed in the margin.

11.8 Numbering of Lines

(a)
It is strongly recommended to number every fifth line of each sheet of the description, and of each sheet of claims.
(b)
The numbers should appear in the right half of the left margin.

11.9 Writing of Text Matter

(a)
The request, the description, the claims and the abstract shall be typed or printed.
(b)
Only graphic symbols and characters, chemical or mathematical formulae, and certain characters in the Chinese or Japanese language may, when necessary, be written by hand or drawn.
(c)
The typing shall be 1-spaced.
(d)
All text matter shall be in characters the capital letters of which are not less than 0.28 cm high, and shall be in a dark, indelible color, satisfying the requirements specified in Rule 11.2, provided that any text matter in the request may be in characters the capital letters of which are not less than 0.21 cm high.
(e)
As far as the spacing of the typing and the size of the characters are concerned, paragraphs (c) and (d) shall not apply to texts in the Chinese or Japanese language.

11.10 Drawings, Formulae, and Tables, in Text Matter

(a)
The request, the description, the claims and the abstract shall not contain drawings.
(b)
The description, the claims and the abstract may contain chemical or mathematical formulae.
(c)
The description and the abstract may contain tables; any claim may contain tables only if the subject matter of the claim makes the use of tables desirable.
(d)
Tables and chemical or mathematical formulae may be placed sideways on the sheet if they cannot be presented satisfactorily in an upright position thereon; sheets on which tables or chemical or mathematical formulae are presented sideways shall be so presented that the tops of the tables or formulae are at the left side of the sheet.

11.11 Words in Drawings

(a)
The drawings shall not contain text matter, except a single word or words, when absolutely indispensable, such as “water,” “steam,” “open,” “closed,” “section on AB,” and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catch words indispensable for understanding.
(b)
Any words used shall be so placed that, if translated, they may be pasted over without interfering with any lines of the drawings.

11.12 Alterations, Etc. Each sheet shall be reasonably free from erasures and shall be free from alterations, overwritings, and interlineations. Non-compliance with this Rule may be authorized if the

authenticity of the content is not in question and the requirements for good reproduction are not in jeopardy.

11.13 Special Requirements for Drawings

(a)
Drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without colorings.
(b)
Cross-sections shall be indicated by oblique hatching which should not impede the clear reading of the reference signs and leading lines.
(c)
The scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty.
(d)
When, in exceptional cases, the scale is given on a drawing, it shall be represented graphically.
(e)
All numbers, letters and reference lines, appearing on the drawings, shall be simple and clear. Brackets, circles or inverted commas shall not be used in association with numbers and letters.
(f)
All lines in the drawings shall, ordinarily, be drawn with the aid of drafting instruments.
(g)
Each element of each figure shall be in proper proportion to each of the other elements in the figure, except where the use of a different proportion is indispensable for the clarity of the figure.
(h)
The height of the numbers and letters shall not be less than 0.32 cm. For the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used.
(i)
The same sheet of drawings may contain several figures. Where figures on two or more sheets form in effect a single complete figure, the figures on the several sheets shall be so arranged that the complete figure can be assembled without concealing any part of any of the figures appearing on the various sheets.
(j)
The different figures shall be arranged on a sheet or sheets without wasting space, preferably in an upright position, clearly separated from one another. Where the figures are not arranged in an upright position, they shall be presented sideways with the top of the figures at the left side of the sheet.
(k)
The different figures shall be numbered in arabic numerals consecutively and independently of the numbering of the sheets.
(l)
Reference signs not mentioned in the description shall not appear in the drawings, and vice versa.
(m)
The same features, when denoted by reference signs, shall, throughout the international application, be denoted by the same signs.
(n)
If the drawings contain a large number of reference signs, it is strongly recommended to attach a separate sheet listing all reference signs and the features denoted by them.

11.14 Later Documents Rules 10, and 11.1 to 11.13, also apply to any document—for example, replacement

sheets, amended claims, translations—submitted after the filing of the international application.

Rule 12 Language of the International Application and Translations for the Purposes of International Search and International Publication

12.1 Languages Accepted for the Filing of International Applications

(a)
An international application shall be filed in any language which the receiving Office accepts for that purpose.
(b)
Each receiving Office shall, for the filing of international applications, accept at least one language which is both:
(i)
a language accepted by the International Searching Authority, or, if applicable, by at least one of the International Searching Authorities,
competent for the international searching of international applications filed with that receiving Office, and
(ii)
a language of publication.
(c)
Notwithstanding paragraph (a), the request shall be filed in any language of publication which the receiving Office accepts for the purposes of this paragraph.
(d)
Notwithstanding paragraph (a), any text matter contained in the sequence listing part of the description referred to in Rule 5.2 (a) shall be presented in accordance with the standard provided for in the Administrative Instructions.

12.1bis Language of Elements and Parts Furnished under Rule 20.3, 20.5 or 20.6

An element referred to in Article 11 (1) (iii) (d) or (e) furnished by the applicant under Rule 20.3 (b) or 20.6 (a) and a part of the description, claims or drawings furnished by the applicant under Rule 20.5 (b) 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 Language of Indications Furnished under Rule 13bis.4

Any indication in relation to deposited biological material furnished under Rule 13bis.4 shall be in the language in which the international application is filed, provided that, where a translation of the international application is required under Rule 12.3 (a) or

12.4 (a), any such indication shall be furnished in both the language in which the application is filed and the language of that translation.

12.2 Language of Changes in the International Application

(a) Any amendment of the international application shall, subject to Rules 46.3,

55.3 and 66.9, be in the language in which the application is filed.

(b)
Any rectification under Rule 91.1 of an obvious mistake in the international application shall be in the language in which the application is filed, provided that:
(i)
where a translation of the international application is required under Rule 12.3 (a), 12.4 (a) or 55.2 (a), rectifications referred to in Rule 91.1 (b) (ii) and (iii) shall be filed in both the language of the application and the language of that translation;
(ii)
where a translation of the request is required under Rule 26.3ter (c), rectifications referred to in Rule 91.1 (b) (i) need only be filed in the language of that translation.
(c)
Any correction under Rule 26 of a defect in the international application shall be in the language in which the international application is filed. Any correction under Rule 26 of a defect in a translation of the international application furnished under Rule 12.3 or 12.4, any correction under Rule 55.2 (c) of a defect in a translation furnished under Rule 55.2 (a), or any correction of a defect in a translation of the request furnished under Rule 26.3ter (c), shall be in the language of the translation.

12.3 Translation for the Purposes of International Search

(a)
Where the language in which the international application is filed is not accepted by the International Searching Authority that is to carry out the international search, the applicant shall, within one month from the date of receipt of the international application by the receiving Office, furnish to that Office a translation of the international application into a language which is all of the following:
(i)
a language accepted by that Authority, and
(ii)
a language of publication, and

(iii) a language accepted by the receiving Office under Rule 12.1 (a), unless the international application is filed in a language of publication.

(b)
Paragraph (a) shall not apply to the request nor to any sequence listing part of the description.
(c)
Where, by the time the receiving Office sends to the applicant the notification under Rule 20.2 (c), the applicant has not furnished a translation required under paragraph (a), the receiving Office shall, preferably together with that notification, invite the applicant:
(i)
to furnish the required translation within the time limit under paragraph (a);
(ii)
in the event that the required translation is not furnished within the time limit under paragraph (a), to furnish it and to pay, where applicable, the late furnishing fee referred to in paragraph (e), within one month from the date of the invitation or two months from the date of receipt of the international application by the receiving Office, whichever expires later.
(d)
Where the receiving Office has sent to the applicant an invitation under paragraph (c) and the applicant has not, within the applicable time limit under paragraph (c) (ii), furnished the required translation and paid any required late furnishing fee, the international application shall be considered withdrawn and the receiving Office shall so declare. Any translation and any payment received by the receiving Office before that Office makes the declaration under the previous sentence and before the expiration of 15 months from the priority date shall be considered to have been received before the expiration of that time limit.
(e)
The furnishing of a translation after the expiration of the time limit under paragraph (a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late furnishing fee equal to 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.

12.4 Translation for the Purposes of International Publication

(a)
Where the language in which the international application is filed is not a language of publication and no translation is required under Rule 12.3 (a), the applicant shall, within 14 months from the priority date, furnish to the receiving Office a translation of the international application into any language of publication which the receiving Office accepts for the purposes of this paragraph.
(b)
Paragraph (a) shall not apply to the request nor to any sequence listing part of the description.
(c)
Where the applicant has not, within the time limit referred to in paragraph (a), furnished a translation required under that paragraph, the receiving Office shall invite the applicant to furnish the required translation, and to pay, where applicable, the late furnishing fee required under paragraph (e), within 16 months from the priority date. Any translation received by the receiving Office before that Office sends the invitation under the previous sentence shall be considered to have been received before the expiration of the time limit under paragraph (a).
(d)
Where the applicant has not, within the time limit under paragraph (c), furnished the required translation and paid any required late furnishing fee, the international application shall be considered withdrawn and the receiving Office shall so declare. Any translation and any payment received by the receiving Office before that Office makes the declaration under the previous sentence and before the expiration of 17 months from
the priority date shall be considered to have been received before the expiration of that time limit.
(e)
The furnishing of a translation after the expiration of the time limit under paragraph (a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late furnishing fee equal to 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.

Rule 12bis Copy of Results of Earlier Search and of Earlier Application; Translation

12bis.1

Copy of Results of Earlier Search and of Earlier Application; Translation

(a)
Where the applicant has, under Rule 4.12, requested the International Searching Authority to take into account the results of an earlier search carried out by the same or another International Searching Authority or by a national Office, the applicant shall, subject to paragraphs (c) to (f), submit to the receiving Office, together with the international application, a copy of the results of the earlier search, in whatever form (for example, in the form of a search report, a listing of cited prior art or an examination report) they are presented by the Authority or Office concerned.
(b)
The International Searching Authority may, subject to paragraphs (c) to (f), invite the applicant to furnish to it, within a time limit which shall be reasonable under the circumstances:
(i)
a copy of the earlier application concerned;
(ii)
where the earlier application is in a language which is not accepted by the International Searching Authority, a translation of the earlier application into a language which is accepted by that Authority;

(iii) where the results of the earlier search are in a language which is not accepted by the International Searching Authority, a translation of those results into a language which is accepted by that Authority;

(iv)
a copy of any document cited in the results of the earlier search.
(c)
Where the earlier search was carried out by the same Office as that which is acting as the receiving Office, the applicant may, instead of submitting the copies referred to in paragraphs (a) and (b) (i) and (iv), indicate the wish that the receiving Office prepare and transmit them to the International Searching Authority. Such request shall be made in the request and may be subjected by the receiving Office to the payment to it, for its own benefit, of a fee.
(d)
Where the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, no copy or translation referred to in paragraphs (a) and (b) shall be required to be submitted under those paragraphs.
(e)
Where the request contains a statement under Rule 4.12 (ii) to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language, no copy or translation referred to in paragraphs (b) (i) and (ii) shall be required to be submitted under those paragraphs.
(f)
Where a copy or translation referred to in paragraphs (a) and (b) is available to the International Searching Authority in a form and manner acceptable to it, for example, from a digital library or in the form of the priority document, and the applicant so indicates in the request, no copy or translation shall be required to be submitted under those paragraphs.

Rule 13 Unity of Invention

13.1 Requirement The international application shall relate to one invention only or to a group of

inventions so linked as to form a single general inventive concept (“requirement of unity of invention”).

13.2 Circumstances in Which the Requirement of Unity of Invention Is to Be Considered Fulfilled

Where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.

13.3 Determination of Unity of Invention Not Affected by Manner of Claiming The determination whether a group of inventions is so linked as to form a single

general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.

13.4 Dependent Claims Subject to Rule 13.1, it shall be permitted to include in the same international application a reasonable number of dependent claims, claiming specific forms of the

invention claimed in an independent claim, even where the features of any dependent claim could be considered as constituting in themselves an invention.

13.5 Utility Models Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 13.1 to 13.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least 2 months from the expiration of the

time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.

Rule 13bis Inventions Relating to Biological Material

13bis.1 Definition

For the purposes of this Rule, “reference to deposited biological material” means particulars given in an international application with respect to the deposit of biological material with a depositary institution or to the biological material so deposited.

13bis.2 References (General)

Any reference to deposited biological material shall be made in accordance with this Rule and, if so made, shall be considered as satisfying the requirements of the national law of each designated State.

13bis.3 References: Contents; Failure to Include Reference or Indication

(a)
A reference to deposited biological material shall indicate:
(i)
the name and address of the depositary institution with which the deposit was made;
(ii)
the date of deposit of the biological material with that institution;

(iii) the accession number given to the deposit by that institution; and

(iv)
any additional matter of which the International Bureau has been notified pursuant to Rule 13bis.7 (a) (i), provided that the requirement to indicate that matter was published in the Gazette in accordance with Rule 13bis.7 (c) at least two months before the filing of the international application.
(b)
Failure to include a reference to deposited biological material or failure to include, in a reference to deposited biological material, an indication in accordance with paragraph (a), shall have no consequence in any designated State whose national law does not require such reference or such indication in a national application.

13bis.4 References: Time Limit for Furnishing Indications

(a)
Subject to paragraphs (b) and (c), if any of the indications referred to in Rule 13bis.3 (a) is not included in a reference to deposited biological material in the international application as filed but is furnished to the International Bureau:
(i)
within 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished in time;
(ii)
after the expiration of 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished on the last day of that time limit if it reaches the International Bureau before the technical preparations for international publication have been completed.
(b)
If the national law applicable by a designated Office so requires in respect of national applications, that Office may require that any of the indications referred to in Rule 13bis.3 (a) be furnished earlier than 16 months from the priority date, provided that the International Bureau has been notified of such requirement pursuant to Rule 13bis.7 (a) (ii) and has published such requirement in the Gazette in accordance with Rule 13bis.7 (c) at least two months before the filing of the international application.
(c)
Where the applicant makes a request for early publication under Article 21 (2) (b), any designated Office may consider any indication not furnished before the technical preparations for international publication have been completed as not having been furnished in time.
(d)
The International Bureau shall notify the applicant of the date on which it received any indication furnished under paragraph (a), and
(i)
if the indication was received before the technical preparations for international publication have been completed, publish the indication furnished under paragraph (a), and an indication of the date of receipt, together with the international application;
(ii)
if the indication was received after the technical preparations for international publication have been completed, notify that date and the relevant data from the indication to the designated Offices.

13bis.5 References and Indications for the Purposes of One or More Designated States; Different Deposits for Different Designated States; Deposits with Depositary Institutions other than Those Notified

(a)
A reference to deposited biological material shall be considered to be made for the purposes of all designated States, unless it is expressly made for the purposes of certain of the designated States only; the same applies to the indications included in the reference.
(b)
References to different deposits of the biological material may be made for different designated States.
(c)
Any designated Office may disregard a deposit made with a depositary institution other than one notified by it under Rule 13bis.7 (b).

13bis.6 Furnishing of Samples

Pursuant to Articles 23 and 40, no furnishing of samples of the deposited biological material to which a reference is made in an international application shall, except with the authorization of the applicant, take place before the expiration of the applicable time limits after which national processing may start under the said Articles. However, where the applicant performs the acts referred to in Articles 22 or 39 after international publication but before the expiration of the said time limits, the furnishing of samples of the deposited biological material may take place, once the said acts have been performed. Notwithstanding the previous provision, the furnishing of samples of the deposited biological material may take place under the national law applicable by any designated Office as soon as, under that law, the international publication has the effects of the compulsory national publication of an unexamined national application.

13bis.7 National Requirements: Notification and Publication

(a)
Any national Office may notify the International Bureau of any requirement of the national law:
(i)
that any matter specified in the notification, in addition to those referred to in Rule 13bis.3 (a) (i), (ii) and (iii), is required to be included in a reference to deposited biological material in a national application;
(ii)
that one or more of the indications referred to in Rule 13bis.3 (a) are required to be included in a national application as filed or are required to be furnished at a time specified in the notification which is earlier than 16 months from the priority date.
(b)
Each national Office shall notify the International Bureau of the depositary institutions with which the national law permits deposits of biological materials to be made for the purposes of patent procedure before that Office or, if the national law does not provide for or permit such deposits, of that fact.
(c)
The International Bureau shall promptly publish in the Gazette requirements notified to it under paragraph (a) and information notified to it under paragraph (b).

Rule 13ter Nucleotide and/or Amino Acid Sequence Listings

13ter.1 Procedure Before the International Searching Authority

(a)
Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the International Searching Authority may invite the applicant to furnish to it, for the purposes of the international search, a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, unless such listing in electronic form is already available to it in a form and manner acceptable to it, and to pay to it, where applicable, the late furnishing fee referred to in paragraph (c), within a time limit fixed in the invitation.
(b)
Where at least part of the international application is filed on paper and the International Searching Authority finds that the description does not comply with Rule 5.2 (a), it may invite the applicant to furnish, for the purposes of the international search, a sequence listing in paper form complying with the standard provided for in the Administrative Instructions, unless such listing in paper form is already available to it in a form and manner acceptable to it, whether or not the furnishing of a sequence listing in electronic form is invited under paragraph (a), and to pay, where applicable, the late furnishing fee referred to in paragraph (c), within a time limit fixed in the invitation.
(c)
The furnishing of a sequence listing in response to an invitation under paragraph (a) or (b) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a late furnishing fee whose amount shall be determined by the International Searching Authority but shall not exceed 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets, provided that a late furnishing fee may be required under either paragraph (a) or (b) but not both.
(d)
If the applicant does not, within the time limit fixed in the invitation under paragraph (a) or (b), furnish the required sequence listing and pay any required late furnishing fee, the International Searching Authority shall only be required to search the international application to the extent that a meaningful search can be carried out without the sequence listing.
(e)
Any sequence listing not contained in the international application as filed, whether furnished in response to an invitation under paragraph (a) or (b) or otherwise, shall not form part of the international application, but this paragraph shall not prevent the applicant from amending the description in relation to a sequence listing pursuant to Article 34 (2) (b).
(f)
Where the International Searching Authority finds that the description does not comply with Rule 5.2 (b), it shall invite the applicant to submit the required correction. Rule 26.4 shall apply mutatis mutandis to any correction offered by the applicant. The International Searching Authority shall transmit the correction to the receiving Office and to the International Bureau.

13ter.2 Procedure Before the International Preliminary Examining Authority

Rule 13ter.1 shall apply mutatis mutandis to the procedure before the International Preliminary Examining Authority.

13ter.3 Sequence Listing for Designated Office

No designated Office shall require the applicant to furnish to it a sequence listing other than a sequence listing complying with the standard provided for in the Administrative Instructions.

Rule 14 The Transmittal Fee

14.1 The Transmittal Fee

(a)
Any receiving Office may require that the applicant pay a fee to it, for its own benefit, for receiving the international application, transmitting copies to the International Bureau and the competent International Searching Authority, and performing all the other tasks which it must perform in connection with the international application in its capacity of receiving Office (“transmittal fee”).
(b)
The amount of the transmittal fee, if any, shall be fixed by the receiving Office.
(c)
The transmittal fee shall be paid 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.

Rule 15 The International Fee

15.1 The International Filing Fee

Each international application shall be subject to the payment of a fee for the benefit of the International Bureau (“international filing fee”) to be collected by the receiving Office.

15.2 Amount

(a)
The amount of the international filing fee is as set out in the Schedule of Fees.
(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.

15.4 Refund 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

16.1 Right to Ask for a Fee

(a)
Each International Searching Authority may require that the applicant pay a fee (“search fee”) for its own benefit for carrying out the international search and for performing all other tasks entrusted to International Searching Authorities by the Treaty and these Regulations.
(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 Refund The receiving Office shall refund the search fee to the applicant:

(i)
if the determination under Article 11 (1) is negative,
(ii)
if, before the transmittal of the search copy to the International Searching Authority, 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.

16.3 Partial Refund Where the International Searching Authority takes into account, under Rule 41.1, the results of an earlier search in carrying out the international search, that Authority shall refund the search fee paid in connection with the international application

to the extent and under the conditions provided for in the agreement under Article 16 (3) (b).

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.
(c)
Where the receiving Office has sent to the applicant an invitation under paragraph (a) and the applicant has not, within the time limit referred to in that paragraph, paid in full the amount due, including, where applicable, the late payment fee under Rule 16bis.2, the receiving Office shall, subject to paragraph (e):
(i)
make the applicable declaration under Article 14 (3), and
(ii)
proceed as provided in Rule 29.
(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)
Any payment received by the receiving Office before that Office makes the applicable declaration under Article 14 (3) shall be considered to have been received before the expiration of the time limit referred to in paragraph (a).

16bis.2 Late Payment Fee

(a)
The payment of fees in response to an invitation under Rule 16bis.1 (a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late payment fee. The amount of that fee shall be:
(i)
50% of the amount of unpaid fees which is specified in the invitation, or,
(ii)
if the amount calculated under item (i) is less than the transmittal fee, an amount equal to the transmittal fee.
(b)
The amount of the late payment fee shall not, however, exceed the amount of 50% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.

Rule 17 The Priority Document

17.1 Obligation to Submit Copy of Earlier National or International Application

(a)
Where the priority of an earlier national or international application is claimed under Article 8, a copy of that earlier application, certified by the authority with which it
was filed (“the priority document”), shall, unless that priority document has already been filed with the receiving Office together with the international application in which the priority claim is made, and subject to paragraphs (b) and (bbis), be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date, provided that any copy of the said earlier application which is received by the International Bureau after the expiration of that time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the date of international publication of the international application.
(b)
Where the priority document is issued by the receiving Office, the applicant may, instead of submitting the priority document, request the receiving Office to prepare and transmit the priority document to the International Bureau. Such request shall be made not later than 16 months after the priority date and may be subjected by the receiving Office to the payment of a fee.

(bbis) Where the priority document is, in accordance with the Administrative Instructions, available to the receiving Office or to the International Bureau from a digital library, the applicant may, as the case may be, instead of submitting the priority document:

(i)
request the receiving Office to obtain the priority document from such digital library and transmit it to the International Bureau; or
(ii)
request the International Bureau to obtain the priority document from such

digital library. Such request shall be made not later than 16 months after the priority date and may be subjected by the receiving Office or the International Bureau to the payment of a fee.

(c)
If the requirements of none of the three preceding paragraphs are complied with, any designated Office may, subject to paragraph (d), disregard the priority claim, provided that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable under the circumstances.
(d)
No designated Office shall disregard the priority claim under paragraph (c) if the earlier application referred to in paragraph (a) was filed with it in its capacity as national Office or if the priority document is, in accordance with the Administrative Instructions, available to it from a digital library.

17.2 Availability of Copies

(a)
Where the applicant has complied with Rule 17.1 (a), (b) or (bbis) the International Bureau shall, at the specific request of the designated Office, promptly but not prior to the international publication of the international application, furnish a copy of the priority document to that Office. No such Office shall ask the applicant himself to furnish it with a copy. The applicant shall not be required to furnish a translation to the designated Office before the expiration of the applicable time limit under Article 22. Where the applicant makes an express request to the designated Office under Article 23 (2) prior to the international publication of the international application, the International Bureau shall, at the specific request of the designated Office, furnish a copy of the priority document to that Office promptly after receiving it.
(b)
The International Bureau shall not make copies of the priority document available to the public prior to the international publication of the international application.
(c)
Where the international application has been published under Article 21, the International Bureau shall furnish a copy of the priority document to any person upon request and subject to reimbursement of the cost unless, prior to that publication:
(i)
the international application was withdrawn,
(ii)
the relevant priority claim was withdrawn or considered, under Rule 26bis.2 (b), not to have been made.

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 as 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.

18.3 Two or More Applicants If there are two or more applicants, the right to file an international application shall

exist if at least one of them is entitled to file an international application according to Article 9.

18.4 Information on Requirements Under National Law as to Applicants

(c) The International Bureau shall, from time to time, publish information on the various national laws in respect of the question who is qualified (inventor, successor in title of the inventor, owner of the invention, or other) to file a national application and shall accompany such information by a warning that the effect of the international application in any designated State may depend on whether the person designated in the international application as applicant for the purposes of that State is a person who, under the national law of that State, is qualified to file a national application.

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)
Any Contracting State may agree with another Contracting State or any intergovernmental organization that the national Office of the latter State or the intergovernmental organization shall, for all or some purposes, act instead of the national Office of the former State as receiving Office for applicants who are residents or nationals of that former State. Notwithstanding such agreement, the national Office of the former State shall be considered the competent receiving Office for the purposes of Article 15 (5).
(c)
In connection with any decision made under Article 9 (2), the Assembly shall appoint the national Office or the intergovernmental organization which will act as receiving Office for applications of residents or nationals of States specified by the Assembly. Such appointment shall require the previous consent of the said national Office or intergovernmental organization.

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 a 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 Publication of Fact of Delegation of Duties of Receiving Office

(a)
Any agreement referred to in Rule 19.1 (b) shall be promptly notified to the International Bureau by the Contracting State which delegates the duties of the receiving Office to the national Office of or acting for another Contracting State or an intergovernmental organization.
(b)
The International Bureau shall, promptly upon receipt, publish the notification in the Gazette.

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 but
(i)
that national Office is not competent under Rule 19.1 or 19.2 to receive that international application, or
(ii)
that international application is not in a language accepted under Rule 12.1 (a) by that national Office but is in a language accepted under that Rule by the International Bureau as receiving Office, or

(iii) that national Office and the International Bureau agree, for any reason other than those specified under items (i) and (ii), and with the authorization of the applicant, that the procedure under this Rule should apply,

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.
(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 20 International Filing Date

20.1 Determination under Article 11 (1)

(a)
Promptly after receipt of the papers purporting to be an international application, the receiving Office shall determine whether the papers fulfill the requirements of Article 11 (1).
(b)
For the purposes of Article 11 (1) (iii) (c), it shall be sufficient to indicate the name of the applicant in a way which allows the identity of the applicant to be established even if the name is misspelled, the given names are not fully indicated, or, in the case of legal entities, the indication of the name is abbreviated or incomplete.
(c)
For the purposes of Article 11 (1) (ii), it shall be sufficient that the part which appears to be a description (other than any sequence listing part thereof) and the part which appears to be a claim or claims be in a language accepted by the receiving Office under Rule 12.1 (a).
(d)
If, on October 1, 1997, paragraph (c) is not compatible with the national law applied by the receiving Office, paragraph (c) shall not apply to that receiving Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1997. The information received shall be promptly published by the International Bureau in the Gazette.

20.2 Positive Determination under Article 11 (1)

(a)
If the receiving Office determines that, at the time of receipt of the papers purporting to be an international application, the requirements of Article 11 (1) were fulfilled, the receiving Office shall accord as the international filing date the date of receipt of the international application.
(b)
The receiving Office shall stamp the request of the international application which it has accorded an international filing date as prescribed by the Administrative Instructions. The copy whose request has been so stamped shall be the record copy of the international application.
(c)
The receiving Office shall promptly notify the applicant of the international application number and the international filing date. At the same time, it shall send to the International Bureau a copy of the notification sent to the applicant, except where it has already sent, or is sending at the same time, the record copy to the International Bureau under Rule 22.1 (a).

20.3 Defects under Article 11 (1)

(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 any of the requirements of Article 11 (1) are not, or appear not to be, fulfilled, it shall promptly invite the applicant, at the applicant’s option:

(i)
to furnish the required correction under Article 11 (2); or
(ii)
where the requirements concerned are those relating to an element referred to in Article 11 (1) (iii) (d) or (e), to confirm in accordance with Rule 20.6 (a) that the element is 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:
(i)
the applicant furnishes to the receiving Office the required correction under Article 11 (2) after the date of receipt of the purported international application but on a later date falling within the applicable time limit under Rule 20.7, the receiving Office shall accord that later date as the international filing date and proceed as provided in Rule 20.2 (b) and (c);
(ii)
an element referred to in Article 11 (1) (iii) (d) or (e) is, under Rule 20.6 (b), considered 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, 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)
If the receiving Office later discovers, or on the basis of the applicant’s reply realizes, that it has erred in issuing an invitation under paragraph (a) since the requirements of Article 11 (1) were fulfilled when the papers were received, it shall proceed as provided in Rule 20.2.

20.4 Negative Determination under Article 11 (1) If the receiving Office does not receive, within the applicable time limit under Rule 20.7, a correction or confirmation referred to in Rule 20.3 (a), or if a correction or

confirmation has been received but the application still does not fulfill the requirements of Article 11 (1), the receiving Office shall:

(i)
promptly notify the applicant that the application is not and will not be treated as an international application and shall indicate the reasons therefor;
(ii)
notify the International Bureau that the number it has marked on the papers will not be used as an international application number;

(iii) keep the papers constituting the purported international application and any correspondence relating thereto as provided in Rule 93.1; and

(iv) send a copy of the said papers to the International Bureau where, pursuant to a request by the applicant under Article 25 (1), the International Bureau needs such a copy and specially asks for it.

20.5 Missing 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 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 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, 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 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)
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 missing part referred to in paragraph (a) so as to complete the international application, that part shall be included in the application, and the receiving Office shall correct the international filing date to the date on which the receiving Office received that 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 part referred to in paragraph (a) 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 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).
(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 missing part concerned be disregarded, in which case the missing part shall be considered not to have been furnished and the correction of the international filing date under that paragraph 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)
The applicant may submit to the receiving Office, within the applicable time limit under Rule 20.7, a written notice confirming that an element or part is incorporated by reference in the international application under Rule 4.18, accompanied by:
(i)
a sheet or sheets embodying the entire element as contained in the earlier application or embodying the part concerned;
(ii)
where the applicant has not already complied with Rule 17.1 (a), (b) or (bbis) in relation to the priority document, a copy of the earlier application as filed;

(iii) where the earlier application is not in the language in which the international application is filed, a translation of the earlier application into that language or, where a translation of the international application is required under Rule 12.3 (a) or 12.4 (a), a translation of the earlier application into both the language in which the international application is filed and the language of that translation; and

(iv)
in the case of a part of the description, claims or drawings, an indication as to where that part is contained in the earlier application and, where applicable, in any translation referred to in item (iii).
(b)
Where the receiving Office finds that the requirements of Rule 4.18 and paragraph (a) have been complied with and that the element or part referred to in paragraph (a) is completely contained in the earlier application concerned, that element or part shall be 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.
(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) or 20.5 (c), as the case may be.

20.7 Time Limit

(a)
The applicable time limit referred to in Rules 20.3 (a) and (b), 20.4, 20.5 (a), (b) and (c), and 20.6 (a) shall be:
(i)
where an invitation under Rule 20.3 (a) or 20.5 (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)
Where a correction under Article 11 (2) or a notice under Rule 20.6 (a) confirming the incorporation by reference of an element referred to in Article 11 (1) (iii) (d) or (e) is received by the receiving Office after the expiration of the applicable time limit under paragraph (a) but before that Office sends a notification to the applicant under Rule 20.4 (i), that correction or notice shall be considered to have been received within that time limit.

20.8 Incompatibility with National Laws

(a)
If, on October 5, 2005, any of Rules 20.3 (a) (ii) and (b) (ii), 20.5 (a) (ii) and (d), and 20.6 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 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.
(abis) Where a missing element or part cannot be incorporated by reference in the international application under Rules 4.18 and 20.6 because of the operation of paragraph (a) of this Rule, the receiving Office shall proceed as provided for in Rule 20.3 (b) (i), 20.5 (b) or 20.5 (c), as the case may be. Where the receiving Office proceeds as provided for in Rule 20.5 (c), the applicant may proceed as provided for in Rule 20.5 (e).
(b)
If, on October 5, 2005, any of Rules 20.3 (a) (ii) and (b) (ii), 20.5 (a) (ii) and (d), and 20.6 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 5, 2006. 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) 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) or 20.5 (b), or corrected under Rule 20.5 (c), as the case may be, provided that Rule 82ter.1 (c) and (d) shall apply mutatis mutandis.

Rule 21 Preparation of Copies

21.1 Responsibility of the Receiving Office

(a)
Where the international application is required to be filed in one copy, the receiving Office shall be responsible for preparing the home copy and the search copy required under Article 12 (1).
(b)
Where the international application is required to be filed in two copies, the receiving Office shall be responsible for preparing the home copy.
(c)
If the international application is filed in less than the number of copies required under Rule 11.1 (b), the receiving Office shall be responsible for the prompt preparation of the number of copies required, and shall have the right to fix a fee for performing that task and to collect such fee from the applicant.

21.2 Certified Copy for the Applicant Against payment of a fee, the receiving Office shall furnish to the applicant, on

request, certified copies of the international application as filed and of any corrections thereto.

Rule 22 Transmittal of the Record Copy and Translation

22.1 Procedure

(a)
If the determination under Article 11 (1) is positive, and unless prescriptions concerning national security prevent the international application from being treated as such, the receiving Office shall transmit the record copy to the International Bureau. Such transmittal shall be effected promptly after receipt of the international application or, if a check to preserve national security must be performed, as soon as the necessary clearance has been obtained. In any case, the receiving Office shall transmit the record copy in time for it to reach the International Bureau by the expiration of the 13th month from the priority date. If the transmittal is effected by mail, the receiving Office shall mail the record copy not later than 5 days prior to the expiration of the 13th month from the priority date.
(b)
If the International Bureau has received a copy of the notification under Rule 20.2 (c) but is not, by the expiration of 13 months from the priority date, in possession of the record copy, it shall remind the receiving Office that it should transmit the record copy to the International Bureau promptly.
(c)
If the International Bureau has received a copy of the notification under Rule 20.2 (c) but is not, by the expiration of 14 months from the priority date, in possession of the record copy, it shall notify the applicant and the receiving Office accordingly.
(d)
After the expiration of 14 months from the priority date, the applicant may request the receiving Office to certify a copy of his international application as being identical with the international application as filed and may transmit such certified copy to the International Bureau.
(e)
Any certification under paragraph (d) shall be free of charge and may be refused only on any of the following grounds:
(i)
the copy which the receiving Office has been requested to certify is not identical with the international application as filed;
(ii)
prescriptions concerning national security prevent the international application from being treated as such;

(iii) the receiving Office has already transmitted the record copy to the International Bureau and that Bureau has informed the receiving Office that it has received the record copy.

(f)
Unless the International Bureau has received the record copy, or until it receives the record copy, the copy certified under paragraph (e) and received by the International Bureau shall be considered to be the record copy.
(g)
If, by the expiration of the time limit applicable under Article 22, the applicant has performed the acts referred to in that Article but the designated Office has not been informed by the International Bureau of the receipt of the record copy, the designated Office shall inform the International Bureau. If the International Bureau is not in possession of the record copy, it shall promptly notify the applicant and the receiving Office unless it has already notified them under paragraph (c).
(h)
Where the international application is to be published in the language of a translation furnished under Rule 12.3 or 12.4, that translation shall be transmitted by the receiving Office to the International Bureau together with the record copy under paragraph (a) or, if the receiving Office has already transmitted the record copy to the International Bureau under that paragraph, promptly after receipt of the translation.

22.3 Time Limit under Article 12 (3)

The time limit referred to in Article 12 (3) shall be 3 months from the date of the notification sent by the International Bureau to the applicant under Rule 22.1 (c) or (g).

Rule 23 Transmittal of the Search Copy, Translation and Sequence Listing

23.1 Procedure

(a)
Where no translation of the international application is required under Rule 12.3 (a), the search copy shall be transmitted by the receiving Office to the International Searching Authority at the latest on the same day as the record copy is transmitted to the International Bureau unless no search fee has been paid. In the latter case, it shall be transmitted promptly after payment of the search fee.
(b)
Where a translation of the international application is furnished under Rule 12.3, a copy of that translation and of the request, which together shall be considered to be the search copy under Article 12 (1), shall be transmitted by the receiving Office to the International Searching Authority, unless no search fee has been paid. In the latter case, a copy of the said translation and of the request shall be transmitted promptly after payment of the search fee.
(c)
Any sequence listing in electronic form which is furnished for the purposes of Rule 13ter but submitted to the receiving Office instead of the International Searching Authority shall be promptly transmitted by that Office to that Authority.

Rule 24 Receipt of the Record Copy by the International Bureau

24.2 Notification of Receipt of the Record Copy

(a)
The International Bureau shall promptly notify:
(i)
the applicant,
(ii)
the receiving Office, and

(iii) the International Searching Authority (unless it has informed the

International Bureau that it wishes not to be so notified), of the fact and the date of receipt of the record copy. The notification shall identify the international application by its number, the international filing date and the name of the applicant, and shall indicate the filing date of any earlier application whose priority is claimed. The notification sent to the applicant shall also contain a list of the designated Offices and, in the case of a designated Office which is responsible for granting regional patents, of the Contracting States designated for such regional patent.

(c) If the record copy is received after the expiration of the time limit fixed in Rule 22.3, the International Bureau shall promptly notify the applicant, the receiving Office, and the International Searching Authority, accordingly.

Rule 25 Receipt of the Search Copy by the International Searching Authority

25.1 Notification of Receipt of the Search Copy The International Searching Authority shall promptly notify the International Bureau, the applicant, and—unless the International Searching Authority is the same as the

receiving Office—the receiving Office, of the fact and the date of receipt of the search copy.

Rule 26 Checking by, and Correcting before, the Receiving Office of Certain Elements of the International Application

26.1 Invitation under Article 14 (1) (b) to Correct The receiving Office shall issue the invitation to correct provided for in Article 14 (1) (b) as soon as possible, preferably within one month from the receipt of the international application. In the invitation, the receiving Office shall invite the applicant to

furnish the required correction, and give the applicant the opportunity to make observations, within the time limit under Rule 26.2.

26.2 Time Limit for Correction The time limit referred to in Rule 26.1 shall be two months from the date of the

invitation to correct. It may be extended by the receiving Office at any time before a decision is taken.

26.2bis Checking of Requirements Under Article 14(1)(a)(i) and (ii)

(a)
For the purposes of Article 14(1)(a)(i), if there is more than one applicant, it shall be sufficient that the request be signed by one of them.
(b)
For the purposes of Article 14(1)(a)(ii), if there is more than one applicant, it shall be sufficient that the indications required under Rule 4.5(a)(ii) and (iii) be provided in respect of one of them who is entitled according to Rule 19.1 to file the international application with the receiving Office.

26.3 Checking of Physical Requirements Under Article 14 (1) (a) (v)

(a)
Where the international application is filed in a language of publication, the receiving Office shall check:
(i)
the international application for compliance with the physical requirements referred to in Rule 11 only to the extent that compliance therewith is necessary for the purpose of reasonably uniform international publication;
(ii)
any translation furnished under Rule 12.3 for compliance with the physical requirements referred to in Rule 11 to the extent that compliance therewith is necessary for the purpose of satisfactory reproduction.
(b)
Where the international application is filed in a language which is not a language of publication, the receiving Office shall check:
(i)
the international application for compliance with the physical requirements referred to in Rule 11 only to the extent that compliance therewith is necessary for the purpose of satisfactory reproduction;
(ii)
any translation furnished under Rule 12.3 or 12.4 and the drawings for compliance with the physical requirements referred to in Rule 11 to the extent that compliance therewith is necessary for the purpose of reasonably uniform international publication.

26.3bis Invitation under Article 14 (1) (b) to Correct Defects Under Rule 11

The receiving Office shall not be required to issue the invitation under Article 14 (1) (b) to correct a defect under Rule 11 where the physical requirements referred to in that Rule are complied with to the extent required under Rule 26.3.

26.3ter Invitation to Correct Defects Under Article 3(4)(i)

(a)
Where the abstract or any text matter of the drawings is filed in a language which is different from the language of the description and the claims, the receiving Office shall, unless
(i)
a translation of the international application is required under Rule 12.3 (a), or
(ii)
the abstract or the text matter of the drawings is in the language in which

the international application is to be published, invite the applicant to furnish a translation of the abstract or the text matter of the drawings into the language in which the international application is to be published. Rules 26.1, 26.2, 26.3, 26.3bis, 26.5 and 29.1 shall apply mutatis mutandis.

(b)
If, on October 1, 1997, paragraph (a) is not compatible with the national law applied by the receiving Office, paragraph (a) shall not apply to that receiving Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1997. The information received shall be promptly published by the International Bureau in the Gazette.
(c)
Where the request does not comply with Rule 12.1(c), the receiving Office shall invite the applicant to file a translation so as to comply with that Rule. Rules 3, 26.1, 26.2, 26.5 and 29.1 shall apply mutatis mutandis.
(d)
If, on October 1, 1997, paragraph (c) is not compatible with the national law applied by the receiving Office, paragraph (c) shall not apply to that receiving Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1997. The information received shall be promptly published by the International Bureau in the Gazette.

26.4 Procedure A correction of the request offered to the receiving Office may be stated in a letter addressed to that Office if the correction is of such a nature that it can be transferred from the letter to the request without adversely affecting the clarity and the direct reproducibility of the sheet on to which the correction is to be transferred; otherwise, and in the case of a correction of any element of the international application other than the request, the applicant shall be required to submit a replacement sheet embodying the

correction and the letter accompanying the replacement sheet shall draw attention to the differences between the replaced sheet and the replacement sheet.

26.5 Decision of the Receiving Office The receiving Office shall decide whether the applicant has submitted the correction within the applicable time limit under Rule 26.2, and, if the correction has been submitted within that time limit, whether the international application so corrected is or is not to be considered withdrawn, provided that no international application shall be considered withdrawn for lack of compliance with the physical requirements referred to in Rule 11 if

it complies with those requirements to the extent necessary for the purpose of reasonably uniform international publication.

Rule 26bis Correction or Addition of Priority Claim

26bis.1 Correction or Addition of Priority Claim

(a)
The applicant may correct a priority claim or add a priority claim to the request by a notice submitted to the receiving Office or the International Bureau within a time limit of 16 months from the priority date or, where the correction or addition would cause a change in the priority date, 16 months from the priority date as so changed, whichever 16-month period expires first, provided that such a notice may be submitted until the expiration of four months from the international filing date. The correction of a priority claim may include the addition of any indication referred to in Rule 4.10.
(b)
Any notice referred to in paragraph (a) received by the receiving Office or the International Bureau after the applicant has made a request for early publication under Article 21 (2) (b) shall be considered not to have been submitted, unless that request is withdrawn before the technical preparations for international publication have been completed.
(c)
Where the correction or addition of a priority claim causes a change in the priority date, any time limit which is computed from the previously applicable priority date

and which has not already expired shall be computed from the priority date as so changed.

26bis.2 Defects in Priority Claims

(a)
Where the receiving Office or, if the receiving Office fails to do so, the International Bureau, finds in relation to a priority claim:
(i)
that the international application has an international filing date which is later than the date on which the priority period expired and that a request for restoration of the right of priority under Rule 26bis.3 has not been submitted;
(ii)
that the priority claim does not comply with the requirements of Rule 4.10; or

(iii) that any indication in the priority claim is inconsistent with the

corresponding indication appearing in the priority document; the receiving Office or the International Bureau, as the case may be, shall invite the applicant to correct the priority claim. In the case referred to in item (i), where the international filing date is within two months from the date on which the priority period expired, the receiving Office or the International Bureau, as the case may be, shall also notify the applicant of the possibility of submitting a request for the restoration of the right of priority in accordance with Rule 26bis.3, unless the receiving Office has notified the International Bureau under Rule 26bis.3 (j) of the incompatibility of Rule 26bis.3 (a) to (i) with the national law applied by that Office.

(b)
If the applicant does not, before the expiration of the time limit under Rule 26bis.1 (a), submit a notice correcting the priority claim, that priority claim shall, subject to paragraph (c), for the purposes of the procedure under the Treaty, be considered not to have been made (“considered void”) and the receiving Office or the International Bureau, as the case may be, shall so declare and shall inform the applicant accordingly. Any notice correcting the priority claim which is received before the receiving Office or the International Bureau, as the case may be, so declares and not later than one month after the expiration of that time limit shall be considered to have been received before the expiration of that time limit.
(c)
A priority claim shall not be considered void only because:
(i)
the indication of the number of the earlier application referred to in Rule 4.10 (a) (ii) is missing;
(ii)
an indication in the priority claim is inconsistent with the corresponding indication appearing in the priority document; or

(iii) the international application has an international filing date which is later than the date on which the priority period expired, provided that the international filing date is within the period of two months from that date.

(d)
Where the receiving Office or the International Bureau has made a declaration under paragraph (b) or where the priority claim has not been considered void only because paragraph (c) applies, the International Bureau shall publish, together with the international application, information concerning the priority claim as prescribed by the Administrative Instructions, as well as any information submitted by the applicant concerning such priority claim which is received by the International Bureau prior to the completion of the technical preparations for international publication. Such information shall be included in the communication under Article 20 where the international application is not published by virtue of Article 64 (3).
(e)
Where the applicant wishes to correct or add a priority claim but the time limit under Rule 26bis.1 has expired, the applicant may, prior to the expiration of 30 months from the priority date and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, request the International Bureau to publish information concerning the matter, and the International Bureau shall promptly publish such information.

26bis.3 Restoration of Right of Priority by Receiving Office

(a)
Where the international application has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the receiving Office shall, on the request of the applicant, and subject to paragraphs (b) to (g) of this Rule, restore the right of priority if the Office finds that a criterion applied by it (“criterion for restoration”) is satisfied, namely, that the failure to file the international application within the priority period:
(i)
occurred in spite of due care required by the circumstances having been taken; or
(ii)
was unintentional.

Each receiving Office shall apply at least one of those criteria and may apply both of them.

(b)
A request under paragraph (a) shall:
(i)
be filed with the receiving Office within the time limit applicable under paragraph (e);
(ii)
state the reasons for the failure to file the international application within the priority period; and

(iii) preferably be accompanied by any declaration or other evidence required under paragraph (f).

(c)
Where a priority claim in respect of the earlier application is not contained in the international application, the applicant shall submit, within the time limit applicable under paragraph (e), a notice under Rule 26bis.1 (a) adding the priority claim.
(d)
The submission of a request under paragraph (a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a fee for requesting restoration, payable within the time limit applicable under paragraph (e). The amount of that fee, if any, shall be fixed by the receiving Office. The time limit for payment of the fee may be extended, at the option of the receiving Office, for a period of up to two months from the expiration of the time limit applicable under paragraph (e).
(e)
The time limit referred to in paragraphs (b) (i), (c) and (d) shall be two months from the date on which the priority period expired, provided that, where the applicant makes a request for early publication under Article 21 (2) (b), any request under paragraph (a) or any notice referred to in paragraph (c) submitted, or any fee referred to in paragraph (d) paid, after the technical preparations for international publication have been completed shall be considered as not having been submitted or paid in time.
(f)
The receiving Office may require that a declaration or other evidence in support of the statement of reasons referred to in paragraph (b) (iii) be filed with it within a time limit which shall be reasonable under the circumstances. The applicant may furnish to the International Bureau a copy of any such declaration or other evidence filed with the receiving Office, in which case the International Bureau shall include such copy in its files.
(g)
The receiving Office shall not refuse, totally or in part, a request under paragraph (a) without giving the applicant the opportunity to make observations on the

intended refusal within a time limit which shall be reasonable under the circumstances. Such notice of intended refusal by the receiving Office may be sent to the applicant together with any invitation to file a declaration or other evidence under paragraph (f).

(h)
The receiving Office shall promptly:
(i)
notify the International Bureau of the receipt of a request under paragraph (a);
(ii)
make a decision upon the request;

(iii) notify the applicant and the International Bureau of its decision and the criterion for restoration upon which the decision was based.

(i)
Each receiving Office shall inform the International Bureau of which of the criteria for restoration it applies and of any subsequent changes in that respect. The International Bureau shall promptly publish such information in the Gazette.
(j)
If, on October 5, 2005, paragraphs (a) to (i) are not compatible with the national law applied by the receiving Office, those paragraphs shall not apply in respect of 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 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.

Rule 26ter Correction or Addition of Declarations Under Rule 4.17

26ter.1

Correction or Addition of Declarations

The applicant may correct or add to the request any declaration referred to in Rule

4.17 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 it reaches it before the technical preparations for international publication have been completed.

26ter.2 Processing of Declarations

(a)
Where the receiving Office or the International Bureau finds that any declaration referred to in Rule 4.17 is not worded as required or, in the case of the declaration of inventorship referred to in Rule 4.17 (iv), is not signed as required, the receiving Office or the International Bureau, as the case may be, may invite the applicant to correct the declaration within a time limit of 16 months from the priority date.
(b)
Where the International Bureau receives any declaration or correction under Rule 26ter.1 after the expiration of the time limit under Rule 26ter.1, the International Bureau shall notify the applicant accordingly and shall proceed as provided for in the Administrative Instructions.

Rule 27 Lack of Payment of Fees

27.1 Fees

(a)
For the purposes of Article 14 (3) (a), “fees prescribed under Article 3 (4) (iv)” means: the transmittal fee (Rule 14), the international filing fee (Rule 15.1), the search fee (Rule 16), and, where required, the late payment fee (Rule 16bis.2).
(b)
For the purposes of Article 14 (3) (a) and (b), “the fee prescribed under Article 4 (2)” means the international filing fee (Rule 15.1) and, where required, the late payment fee (Rule 16bis.2).

Rule 28 Defects Noted by the International Bureau

28.1 Note on Certain Defects

(a)
If, in the opinion of the International Bureau, the international application contains any of the defects referred to in Article 14 (1) (a) (i), (ii), or (v), the International Bureau shall bring such defects to the attention of the receiving Office.
(b)
The receiving Office shall, unless it disagrees with the said opinion, proceed as provided in Article 14 (1) (b) and Rule 26.

Rule 29 International Applications Considered Withdrawn

29.1 Finding by Receiving Office

If the receiving Office declares, under Article 14 (1) (b) and Rule 26.5 (failure to correct certain defects), or under Article 14 (3) (a) (failure to pay the prescribed fees under Rule

27.1 (a)), or under Article 14 (4) (later finding of non-compliance with the requirements listed in items (i) to (iii) of Article 11 (1)), or under Rule 12.3 (d) or 12.4 (d) (failure to furnish a required translation or, where applicable, to pay a late furnishing fee), or under Rule 92.4 (g) (i) (failure to furnish the original of a document), that the international application is considered withdrawn:

(i)
the receiving Office shall transmit the record copy (unless already transmitted), and any correction offered by the applicant, to the International Bureau;
(ii)
the receiving Office shall promptly notify both the applicant and the International Bureau of the said declaration, and the International Bureau shall in turn notify each designated Office which has already been notified of its designation;

(iii) the receiving Office shall not transmit the search copy as provided in Rule 23, or, if such copy has already been transmitted, it shall notify the International Searching Authority of the said declaration;

(iv)
the International Bureau shall not be required to notify the applicant of the receipt of the record copy;
(v)
no international publication of the international application shall be effected if the notification of the said declaration transmitted by the receiving Office reaches the International Bureau before the technical preparations for international publication have been completed.

29.3 Calling Certain Facts to the Attention of the Receiving Office If the International Bureau or the International Searching Authority considers that the

receiving Office should make a finding under Article 14 (4), it shall call the relevant facts to the attention of the receiving Office.

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 national law applied by that Office.

Rule 30 Time Limit under Article 14 (4)

30.1 Time Limit

The time limit referred to in Article 14 (4) shall be 4 months from the international filing date.

Rule 31 Copies Required under Article 13

31.1 Request for Copies

(a)
Requests under Article 13 (1) may relate to all, some kinds of, or individual international applications in which the national Office making the request is designated. Requests for all or some kinds of such international applications must be renewed for each year by means of a notification addressed by that Office before November 30 of the preceding year to the International Bureau.
(b)
Requests under Article 13 (2) (b) shall be subject to the payment of a fee covering the cost of preparing and mailing the copy.

31.2 Preparation of Copies

The preparation of copies required under Article 13 shall be the responsibility of the International Bureau.

Rule 32 Extension of Effects of International Application to Certain Successor States

32.1 Extension of International Application to Successor State

(a)
The effects of any international application whose international filing date falls in the period defined in paragraph (b) are extended to a State (“the successor State”) whose territory was, before the independence of that State, part of the territory of a Contracting State designated in the international application which subsequently ceased to exist (“the predecessor State”), provided that the successor State has become a Contracting State through the deposit, with the Director General, of a declaration of continuation the effect of which is that the Treaty is applied by the successor State.
(b)
The period referred to in paragraph (a) starts on the day following the last day of the existence of the predecessor State and ends two months after the date on which the declaration referred to in paragraph (a) was notified by the Director General to the Governments of the States party to the Paris Convention for the Protection of Industrial Property. However, where the date of independence of the successor State is earlier than the date of the day following the last day of the existence of the predecessor State, the successor State may declare that the said period starts on the date of its independence; such a declaration shall be made together with the declaration referred to in paragraph (a) and shall specify the date of independence.
(c)
Information on any international application whose filing date falls within the applicable period under paragraph (b) and whose effect is extended to the successor State shall be published by the International Bureau in the Gazette.

32.2 Effects of Extension to Successor State

(a)
Where the effects of the international application are extended to the successor State in accordance with Rule 32.1,
(i)
the successor State shall be considered as having been designated in the international application, and
(ii)
the applicable time limit under Article 22 or 39 (1) in relation to that State shall be extended until the expiration of at least six months from the date of the publication of the information under Rule 32.1(c).
(b)
The successor State may fix a time limit which expires later than that provided in paragraph (a)(ii). The International Bureau shall publish information on such time limits in the Gazette.

Rule 33 Relevant Prior Art for the International Search

33.1 Relevant Prior Art for the International Search

(a)
For the purposes of Article 15 (2), relevant prior art shall consist of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) and which is capable of being of assistance in determining that the claimed invention is or is not new and that it does or does not involve an inventive step (i.e., that it is or is not obvious), provided that the making available to the public occurred prior to the international filing date.
(b)
When any written disclosure refers to an oral disclosure, use, exhibition, or other means whereby the contents of the written disclosure were made available to the public, and such making available to the public occurred on a date prior to the international filing date, the international search report shall separately mention that fact and the date on which it occurred if the making available to the public of the written disclosure occurred on a date which is the same as, or later than, the international filing date.
(c)
Any published application or any patent whose publication date is the same as, or later than, but whose filing date, or, where applicable, claimed priority date, is earlier than the international filing date of the international application searched, and which would constitute relevant prior art for the purposes of Article 15 (2) had it been published prior to the international filing date, shall be specially mentioned in the international search report.

33.2 Fields to be Covered by the International Search

(a)
The international search shall cover all those technical fields, and shall be carried out on the basis of all those search files, which may contain material pertinent to the invention.
(b)
Consequently, not only shall the art in which the invention is classifiable be searched but also analogous arts regardless of where classified.
(c)
The question what arts are, in any given case, to be regarded as analogous shall be considered in the light of what appears to be the necessary essential function or use of the invention and not only the specific functions expressly indicated in the international application.
(d)
The international search shall embrace all subject matter that is generally recognized as equivalent to the subject matter of the claimed invention for all or certain of its features, even though, in its specifics, the invention as described in the international application is different.

33.3 Orientation of the International Search

(a)
International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any) and with particular emphasis on the inventive concept towards which the claims are directed.
(b)
In so far as possible and reasonable, the international search shall cover the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended.

Rule 34 Minimum Documentation

34.1 Definition

(a)
The definitions contained in Article 2 (i) and (ii) shall not apply for the purposes of this Rule.
(b)
The documentation referred to in Article 15 (4) (“minimum documentation”) shall consist of:
(i)
the “national patent documents” as specified in paragraph (c),
(ii)
the published international (PCT) applications, the published regional applications for patents and inventors’ certificates, and the published regional patents and inventors’ certificates,

(iii) such other published items of non-patent literature as the International Searching Authorities shall agree upon and which shall be published in a list by the International Bureau when agreed upon for the first time and whenever changed.

(c)
Subject to paragraphs (d) and (e), the “national patent documents” shall be the following:
(i)
the patents issued in and after 1920 by France, the former Reichspatentamt of Germany, Japan, the former Soviet Union, Switzerland (in the French and German languages only), the United Kingdom, and the United States of America,
(ii)
the patents issued by the Federal Republic of Germany, the Republic of Korea and the Russian Federation,

(iii) the patent applications, if any, published in and after 1920 in the countries referred to in items (i) and (ii),

(iv)
the inventors’ certificates issued by the former Soviet Union,
(v)
the utility certificates issued by, and the published applications for utility certificates of, France,
(vi)
such patents issued by, and such patent applications published in, any other country after 1920 as are in the English, French, German or Spanish language and in which no priority is claimed, provided that the national Office of the interested country sorts out these documents and places them at the disposal of each International Searching Authority.
(d)
Where an application is republished once (for example, an Offenlegungschrift as an Auslegeschrift) or more than once, no International Searching Authority shall be obliged to keep all versions in its documentation; consequently, each such Authority shall be entitled not to keep more than one version. Furthermore, where an application is granted and is issued in the form of a patent or a utility certificate (France), no International Searching Authority shall be obliged to keep both the application and the patent or utility certificate (France) in its documentation; consequently, each such
Authority shall be entitled to keep either the application only or the patent or utility certificate (France) only.
(e)
Any International Searching Authority whose official language, or one of whose official languages, is not Japanese, Korean, Russian or Spanish is entitled not to include in its documentation those patent documents of Japan, the Republic of Korea, the Russian Federation and the former Soviet Union as well as those patent documents in the Spanish language, respectively, for which no abstracts in the English language are generally available. English abstracts becoming generally available after the date of entry into force of these Regulations shall require the inclusion of the patent documents to which the abstracts refer no later than six months after such abstracts become generally available. In case of the interruption of abstracting services in English in technical fields in which English abstracts were formerly generally available, the Assembly shall take appropriate measures to provide for the prompt restoration of such services in the said fields.
(f)
For the purposes of this Rule, applications which have only been laid open for public inspection are not considered published applications.

Rule 35 The Competent International Searching Authority

35.1 When Only One International Searching Authority is Competent Each receiving Office shall, in accordance with the terms of the applicable agreement referred to in Article 16 (3) (b), inform the International Bureau which International

Searching Authority is competent for the searching of the international applications filed with it, and the International Bureau shall promptly publish such information.

35.2 When Several International Searching Authorities are Competent

(a)
Any receiving Office may, in accordance with the terms of the applicable agreement referred to in Article 16 (3) (b), specify several International Searching Authorities:
(i)
by declaring all of them competent for any international application filed with it, and leaving the choice to the applicant, or
(ii)
by declaring one or more competent for certain kinds of international applications filed with it, and declaring one or more others competent for other kinds of international applications filed with it, provided that, for those kinds of international applications for which several International Searching Authorities are declared to be competent, the choice shall be left to the applicant.
(b)
Any receiving Office availing itself of the faculty provided in paragraph (a) shall promptly inform the International Bureau, and the International Bureau shall promptly publish such information.

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 36 Minimum Requirements for International Searching Authorities

36.1 Definition of Minimum Requirements The minimum requirements referred to in Article 16 (3) (c) shall be the following:

(i)
the national Office or intergovernmental organization must have at least 100 full-time employees with sufficient technical qualifications to carry out searches;
(ii)
that Office or organization must have in its possession, or have access to, at least the minimum documentation referred to in Rule 34, properly arranged for search purposes, on paper, in microform or stored on electronic media;

(iii) that Office or organization must have a staff which is capable of searching the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated;

(iv)
that Office or organization must have in place a quality management system and internal review arrangements in accordance with the common rules of international search;
(v)
that Office or organization must hold an appointment as an International Preliminary Examining Authority.

Rule 37 Missing or Defective Title

37.1 Lack of Title If the international application does not contain a title and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international

search unless and until it receives notification that the said application is considered withdrawn.

37.2 Establishment of Title If the international application does not contain a title and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish a title, or if the said Authority finds that the title does not comply with Rule 4.3, it shall itself establish a title. Such title shall be established in the language in which the international application is to be published or, if a translation

into another language was transmitted under Rule 23.1 (b) and the International Searching Authority so wishes, in the language of that translation.

Rule 38 Missing or Defective Abstract

38.1 Lack of Abstract If the international application does not contain an abstract and the receiving Office

has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.

38.2 Establishment of Abstract If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall itself establish an abstract. Such

abstract shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule

23.1 (b) and the International Searching Authority so wishes, in the language of that translation.

38.3 Modification of Abstract

The applicant may, until the expiration of one month from the date of mailing of the international search report, submit to the International Searching Authority:

(i)
proposed modifications of the abstract; or
(ii)
where the abstract has been established by the Authority, proposed modifications of, or comments on, that abstract, or both modifications and comments;

and the Authority shall decide whether to modify the abstract accordingly. Where the Authority modifies the abstract, it shall notify the modification to the International Bureau.

Rule 39 Subject Matter under Article 17 (2) (a) (i)

39.1 Definition

No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following:

(i)
scientific and mathematical theories,
(ii)
plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,

(iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,

(iv)
methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
(v)
mere presentations of information,
(vi)
computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs.

Rule 40 Lack of Unity of Invention (International Search)

40.1 Invitation to Pay Additional Fees; Time Limit The invitation to pay additional fees provided for in Article 17 (3) (a) shall:

(i)
specify the reasons for which the international application is not considered as complying with the requirement of unity of invention;
(ii)
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; and

(iii) invite the applicant to pay, where applicable, the protest fee referred to in Rule 40.2 (e) within one month from the date of the invitation, and indicate the amount to be paid.

40.2 Additional Fees

(a)
The amount of the additional fees due for searching under Article 17 (3) (a) shall be determined by the competent International Searching Authority.
(b)
The additional fees due for searching under Article 17 (3) (a) shall be payable direct to the International Searching Authority.
(c)
Any applicant may pay the additional fees under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the amount of the required additional fees is excessive. Such protest shall be examined by a review body constituted in the framework of the International Searching Authority, which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fees. On the request of the applicant, the text of both the protest and the decision thereon shall be notified to the designated Offices together with the international search report. The applicant shall submit any translation thereof with the furnishing of the translation of the international application required under Article 22.
(d)
The membership of the review body referred to in paragraph (c) may include, but shall not be limited to, the person who made the decision which is the subject of the protest.
(e)
The examination of a protest referred to in paragraph (c) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a protest fee. Where the applicant has not, within the time limit under Rule 40.1 (iii), paid any required protest fee, the protest shall be considered not to have been made and the International Searching Authority shall so declare. The protest fee shall be refunded to the applicant where the review body referred to in paragraph (c) finds that the protest was entirely justified.

Rule 41 Taking into Account Results of Earlier Search

41.1 Taking into Account Results of Earlier Search Where the applicant has, under Rule 4.12, requested the International

Searching Authority to take into account the results of an earlier search and has complied with Rule 12bis.1 and:

(i)
the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, the International Searching Authority shall, to the extent possible, take those results into account in carrying out the international search;
(ii)
the earlier search was carried out by another International Searching Authority, or by an Office other than that which is acting as the International Searching Authority, the International Searching Authority may take those results into account in carrying out the international search.

Rule 42 Time Limit for International Search

42.1 Time Limit for International Search

The time limit for establishing the international search report or the declaration referred to in Article 17 (2) (a) shall be 3 months from the receipt of the search copy by the International Searching Authority, or 9 months from the priority date, whichever time limit expires later.

Rule 43 The International Search Report

43.1 Identifications The international search report shall identify the International Searching Authority which established it by indicating the name of such Authority, and the international

application by indicating the international application number, the name of the applicant, and the international filing date.

43.2 Dates The international search report shall be dated and shall indicate the date on which the international search was actually completed. It shall also indicate the filing date of

any earlier application whose priority is claimed or, if the priority of more than one earlier application is claimed, the filing date of the earliest among them.

43.3 Classification

(a)
The international search report shall contain the classification of the subject matter at least according to the International Patent Classification.
(b)
Such classification shall be effected by the International Searching Authority.

43.4 Language Every international search report and any declaration made under Article 17 (2) (a)

shall be in the language in which the international application to which it relates is to be published, provided that:

(i)
if a translation of the international application into another language was transmitted under Rule 23.1 (b) and the International Searching Authority so wishes, the international search report and any declaration made under Article 17 (2) (a) may be in the language of that translation;
(ii)
if the international application is to be published in the language of a translation furnished under Rule 12.4 which is not accepted by the International Searching Authority and that Authority so wishes, the international search report and any declaration made under Article 17 (2) (a) may be in a language which is both a language accepted by that Authority and a language of publication referred to in Rule 48.3 (a).

43.5 Citations

(a)
The international search report shall contain the citations of the documents considered to be relevant.
(b)
The method of identifying any cited document shall be regulated by the Administrative Instructions.
(c)
Citations of particular relevance shall be specially indicated.
(d)
Citations which are not relevant to all the claims shall be cited in relation to the claim or claims to which they are relevant.
(e)
If only certain passages of the cited document are relevant or particularly relevant, they shall be identified, for example, by indicating the page, the column, or the lines, where the passage appears. If the entire document is relevant but some passages are of particular relevance, such passages shall be identified unless such identification is not practicable.

43.6 Fields Searched

(a)
The international search report shall list the classification identification of the fields searched. If that identification is effected on the basis of a classification other than the International Patent Classification, the International Searching Authority shall publish the classification used.
(b)
If the international search extended to patents, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, utility certificates of addition, or published applications for any of those kinds of protection, of States, periods, or languages, not included in the minimum documentation
as defined in Rule 34, the international search report shall, when practicable, identify the kinds of documents, the States, the periods, and the languages to which it extended. For the purposes of this paragraph, Article 2 (ii) shall not apply.
(c)
If the international search was based on, or was extended to, any electronic data base, the international search report may indicate the name of the data base and, where considered useful to others and practicable, the search terms used.

43.6bis Consideration of Rectifications of Obvious Mistakes

(a)
A rectification of an obvious mistake that is authorized under Rule 91.1 shall, subject to paragraph (b), be taken into account by the International Searching Authority for the purposes of the international search and the international search report shall so indicate.
(b)
A rectification of an obvious mistake need not be taken into account by the International Searching Authority for the purposes of the international search if it is authorized by or notified to that Authority, as applicable, after it has begun to draw up the international search report, in which case the report shall, if possible, so indicate, failing which the International Searching Authority shall notify the International Bureau accordingly and the International Bureau shall proceed as provided for in the Administrative Instructions.

43.7 Remarks Concerning Unity of Invention If the applicant paid additional fees for the international search, the international search report shall so indicate. Furthermore, where the international search was made on the main invention only or on less than all the inventions (Article 17 (3) (a)), the

international search report shall indicate what parts of the international application were and what parts were not searched.

43.8 Authorized Officer

The international search report shall indicate the name of the officer of the International Searching Authority responsible for that report.

43.9 Additional Matter The international search report shall contain no matter other than that specified in Rules 33.1 (b) and (c), 43.1 to 43.3, 43.5 to 43.8, and 44.2, and the indication referred to in Article 17(2) (b), provided that the Administrative Instructions may permit the inclusion in the international search report of any additional matter specified in the Administrative Instructions. The international search report shall not contain, and the Administrative

Instructions shall not permit the inclusion of, any expressions of opinion, reasoning, arguments, or explanations.

43.10 Form

The physical requirements as to form of the international search report shall be prescribed by the Administrative Instructions.

Rule 43bis Written Opinion of the International Searching Authority

43bis.1 Written Opinion

(a)
Subject to Rule 69.1(bbis), the International Searching Authority shall, at the same time as it establishes the international search report or the declaration referred to in Article 17 (2) (a), establish a written opinion as to:
(i)
whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable;
(ii)
whether the international application complies with the requirements of the Treaty and these Regulations in so far as checked by the International Searching Authority.

The written opinion shall also be accompanied by such other observations as these Regulations provide for.

(b) For the purposes of establishing the written opinion, Articles 33 (2) to (6) and 35 (2) and (3) and Rules 43.4, 43.6bis, 64, 65, 66.1 (e), 66.7, 67, 70.2 (b) and (d), 70.3,

70.4 (ii), 70.5 (a), 70.6 to 70.10, 70.12, 70.14 and 70.15 (a) shall apply mutatis mutandis.

(c) The written opinion shall contain a notification informing the applicant that, if a demand for international preliminary examination is made, the written opinion shall, under Rule 66.1bis(a) but subject to Rule 66.1bis(b), be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a), in which case the applicant is invited to submit to that Authority, before the expiration of the time limit under Rule 54bis.1(a), a written reply together, where appropriate, with amendments.

Rule 44 Transmittal of the International Search Report, Written Opinion, Etc.

44.1 Copies of Report or Declaration and Written Opinion The International Searching Authority shall, on the same day, transmit one copy of the international search report or of the declaration referred to in Article 17 (2) (a), and

one copy of the written opinion established under Rule 43bis.1 to the International Bureau and one copy to the applicant.

44.2 Title or Abstract The international search report shall either state that the International Searching Authority approves the title and the abstract as submitted by the applicant or be

accompanied by the text of the title and/or abstract as established by the International Searching Authority under Rules 37 and 38.

44.3 Copies of Cited Documents

(a)
The request referred to in Article 20 (3) may be presented any time during 7 years from the international filing date of the international application to which the international search report relates.
(b)
The International Searching Authority may require that the party (applicant or designated Office) presenting the request pay to it the cost of preparing and mailing the copies. The level of the cost of preparing copies shall be provided for in the agreements referred to in Article 16 (3) (b) between the International Searching Authorities and the International Bureau.
(d)
Any International Searching Authority may perform the obligations referred to in paragraphs (a) and (b) through another agency responsible to it.

Rule 44bis International Preliminary Report on Patentability by the International Searching Authority

44bis.1 Issuance of Report; Transmittal to the Applicant

(a)
Unless an international preliminary examination report has been or is to be established, the International Bureau shall issue a report on behalf of the International Searching Authority (in this Rule referred to as “the report”) as to the matters referred to in Rule 43bis.1(a). The report shall have the same contents as the written opinion established under Rule 43bis.1.
(b)
The report shall bear the title “international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty)” together with an indication that it is issued under this Rule by the International Bureau on behalf of the International Searching Authority.
(c)
The International Bureau shall promptly transmit one copy of the report issued under paragraph (a) to the applicant.

44bis.2 Communication to Designated Offices

(a)
Where a report has been issued under Rule 44bis.1, the International Bureau shall communicate it to each designated Office in accordance with Rule 93bis.1 but not before the expiration of 30 months from the priority date.
(b)
Where the applicant makes an express request to a designated Office under Article 23(2), the International Bureau shall communicate a copy of the written opinion established by the International Searching Authority under Rule 43bis.1 to that Office promptly upon the request of that Office or of the applicant.

44bis.3 Translation for Designated Offices

(a)
Any designated State may, where a report has been issued under Rule 44bis.1 in a language other than the official language, or one of the official languages, of its national Office, require a translation of the report into English. Any such requirement shall be notified to the International Bureau, which shall promptly publish it in the Gazette.
(b)
If a translation is required under paragraph (a), it shall be prepared by or under the responsibility of the International Bureau.
(c)
The International Bureau shall transmit a copy of the translation to any interested designated Office and to the applicant at the same time as it communicates the report to that Office.
(d)
In the case referred to in Rule 44bis.2(b), the written opinion established under Rule 43bis.1 shall, upon request of the designated Office concerned, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to the designated Office concerned within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.

44bis.4

Observations on the Translation

The applicant may make written observations as to the correctness of the translation referred to in Rule 44bis.3(b) or (d) and shall send a copy of the observations to each of the interested designated Offices and to the International Bureau.

Rule 44ter Confidential Nature of Written Opinion, Report, Translation and Observations

44ter.1 Confidential Nature

(a)
The International Bureau and the International Searching Authority shall not, unless requested or authorized by the applicant, allow access by any person or authority before the expiration of 30 months from the priority date:
(i)
to the written opinion established under Rule 43bis.1, to any translation thereof prepared under Rule 44bis.3(d) or to any written observations on such translation sent by the applicant under Rule 44bis.4;
(ii)
if a report is issued under Rule 44bis.1, to that report, to any translation of it prepared under Rule 44bis.3(b) or to any written observations on that translation sent by the applicant under Rule 44bis.4.
(b)
For the purposes of paragraph (a), the term “access” covers any means by which third parties may acquire cognizance, including individual communication and general publication.

Rule 45 Translation of the International Search Report

45.1 Languages

International search reports and declarations referred to in Article 17 (2) (a) shall, when not in English, be translated into English.

Rule 45bis Supplementary International Searches

45bis.1 Supplementary Search Request

(a)
The applicant may, at any time prior to the expiration of 19 months from the priority date, request that a supplementary international search be carried out in respect of the international application by an International Searching Authority that is competent to do so under Rule 45bis.9. Such requests may be made in respect of more than one such Authority.
(b)
A request under paragraph (a) (“supplementary search request”) shall be submitted to the International Bureau and shall indicate:
(i)
the name and address of the applicant and of the agent (if any), the title of the invention, the international filing date and the international application number;
(ii)
the International Searching Authority that is requested to carry out the supplementary international search (“Authority specified for supplementary search”); and

(iii) where the international application was filed in a language which is not accepted by that Authority, whether any translation furnished to the receiving Office under Rule 12.3 or 12.4 is to form the basis of the supplementary international search.

(c)
The supplementary search request shall, where applicable, be accompanied by:
(i)
where neither the language in which the international application was filed nor that in which a translation (if any) has been furnished under Rule 12.3 or 12.4 is accepted by the Authority specified for supplementary search, a translation of the international application into a language which is accepted by that Authority;
(ii)
preferably, a copy of a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, if required by the Authority specified for supplementary search.
(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)
The supplementary search request shall be considered not to have been submitted, and the International Bureau shall so declare:
(i)
if it is received after the expiration of the time limit referred to in paragraph (a); or
(ii)
if the Authority specified for supplementary search has not stated, in the applicable agreement under Article 16(3)(b), its preparedness to carry out such searches or is not competent to do so under Rule 45bis.9(b).

45bis.2 Supplementary Search Handling Fee

(a)
The supplementary search request shall be subject to the payment of a fee for the benefit of the International Bureau (“supplementary search handling fee”) as set out in the Schedule of Fees.
(b)
The supplementary search handling fee shall be paid in the currency in which the fee is set out in the Schedule of Fees or in any other currency prescribed by the International Bureau. The amount in such other currency shall be the equivalent, in round figures, as established by the International Bureau, of the amount as set out in the Schedule of Fees, and shall be published in the Gazette.
(c)
The supplementary search handling fee shall be paid to the International Bureau within one month from the date of receipt of the supplementary search request. The amount payable shall be the amount applicable on the date of payment.
(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)
Each International Searching Authority carrying out supplementary international searches may require that the applicant pay a fee (“supplementary search fee”) for its own benefit for carrying out such a search.
(b)
The supplementary search fee shall be collected by the International Bureau. Rules 16.1(b) to (e) shall apply mutatis mutandis.
(c)
As to the time limit for payment of the supplementary search fee and the amount payable, the provisions of Rule 45bis.2(c) shall apply mutatis mutandis.
(d)
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)
Promptly after receipt of a supplementary search request, the International Bureau shall check whether it complies with the requirements of Rule 45bis.1(b) and (c)(i) and shall invite the applicant to correct any defects within a time limit of one month from the date of the invitation.
(b)
Where, by the time they are due under Rules 45bis.2(c) and 45bis.3(c), the International Bureau finds that the supplementary search handling fee and the supplementary search fee have not been paid in full, it shall invite the applicant to pay to it the amount required to cover those fees, together with the late payment fee under paragraph (c), within a time limit of one month from the date of the invitation.
(c)
The payment of fees in response to an invitation under paragraph (b) shall be subject to the payment to the International Bureau, for its own benefit, of a late payment fee whose amount shall be 50% of the supplementary search handling fee.
(d)
If the applicant does not furnish the required correction or does not pay the amount in full of the fees due, including the late payment fee, before the expiration of the time limit applicable under paragraph (a) or (b), respectively, the supplementary search request shall be considered not to have been submitted and the International Bureau shall so declare and shall inform the applicant accordingly.
(e)
On finding that the requirements of Rule 45bis.1(b) and (c)(i), 45bis.2(c) and 45bis.3(c) have been complied with, the International Bureau shall promptly, but not before the date of receipt by it of the international search report or the expiration of 17 months from the priority date, whichever occurs first, transmit to the Authority specified for supplementary search a copy of each of the following:
(i)
the supplementary search request;
(ii)
the international application;

(iii) any sequence listing furnished under Rule 45bis.1(c)(ii); and

(iv) any translation furnished under Rule 12.3, 12.4 or 45bis.1(c)(i) which is to

be used as the basis of the supplementary international search; and, at the same time, or promptly after their later receipt by the International Bureau:

(v)
the international search report and the written opinion established under Rule 43bis.1;
(vi)
any invitation by the International Searching Authority to pay additional fees referred to in Article 17(3)(a); and

(vii) any protest by the applicant under Rule 40.2(c) and the decision thereon by the review body constituted in the framework of the International Searching Authority.

(f) Upon request of the Authority specified for supplementary search, the written opinion referred to in paragraph (e)(v) shall, when not in English or in a language accepted by that Authority, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to that Authority within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.

45bis.5 Start, Basis and Scope of Supplementary International Search

(a)
The Authority specified for supplementary search shall start the supplementary international search promptly after receipt of the documents specified in Rule 45bis.4(e)(i) to (iv), provided that the Authority may, at its option, delay the start of the search until it has also received the documents specified in Rule 45bis.4(e)(v) or until the expiration of 22 months from the priority date, whichever occurs first.
(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)
For the purposes of the supplementary international search, Article 17(2) and Rules 13ter.1, 33 and 39 shall apply mutatis mutandis.
(d)
Where the international search report is available to the Authority specified for supplementary search before it starts the search under paragraph (a), that Authority may exclude from the supplementary search any claims which were not the subject of the international search.
(e)
Where the International Searching Authority has made the declaration referred to in Article 17(2)(a) and that declaration is available to the Authority specified for supplementary search before it starts the search under paragraph (a), that Authority may decide not to establish a supplementary international search report, in which case it shall so declare and promptly notify the applicant and the International Bureau accordingly.
(f)
The supplementary international search shall cover at least the documentation indicated for that purpose in the applicable agreement under Article 16(3)(b).
(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.

45bis.6 Unity of Invention

(a)
If the Authority specified for supplementary search finds that the international application does not comply with the requirement of unity of invention, it shall:
(i)
establish the supplementary international search report on those parts of the international application which relate to the invention first mentioned in the claims (“main invention”);
(ii)
notify the applicant of its opinion that the international application does not comply with the requirement of unity of invention and specify the reasons for that opinion; and

(iii) inform the applicant of the possibility of requesting, within the time limit referred to in paragraph (c), a review of the opinion.

(b)
In considering whether the international application complies with the requirement of unity of invention, the Authority shall take due account of any documents received by it under Rule 45bis.4(e)(vi) and (vii) before it starts the supplementary international search.
(c)
The applicant may, within one month from the date of the notification under paragraph (a)(ii), request the Authority to review the opinion referred to in paragraph (a). The request for review may be subjected by the Authority to the payment to it, for its own benefit, of a review fee whose amount shall be fixed by it.
(d)
If the applicant, within the time limit under paragraph (c), requests a review of the opinion by the Authority and pays any required review fee, the opinion shall be reviewed by the Authority. The review shall not be carried out only by the person who made the decision which is the subject of the review. Where the Authority:
(i)
finds that the opinion was entirely justified, it shall notify the applicant accordingly;
(ii)
finds that the opinion was partially unjustified but still considers that the international application does not comply with the requirement of unity of invention, it shall notify the applicant accordingly and, where necessary, proceed as provided for in paragraph (a)(i);

(iii) finds that the opinion was entirely unjustified, it shall notify the applicant accordingly, establish the supplementary international search report on all parts of the international application and refund the review fee to the applicant.

(e)
On the request of the applicant, the text of both the request for review and the decision thereon shall be communicated to the designated Offices together with the supplementary international search report. The applicant shall submit any translation thereof with the furnishing of the translation of the international application required under Article 22.
(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 Supplementary International Search Report

(a)
The Authority specified for supplementary search shall, within 28 months from the priority date, establish the supplementary international search report, or make the declaration referred to in Article 17(2)(a) as applicable by virtue of Rule 45bis.5(c) that no supplementary international search report will be established.
(b)
Every supplementary international search report, any declaration referred to in Article 17(2)(a) as applicable by virtue of Rule 45bis.5(c) and any declaration under Rule 45bis.5(e) shall be in a language of publication.
(c)
For the purposes of establishing the supplementary international search report, Rules 43.1, 43.2, 43.5, 43.6, 43.6bis, 43.8 and 43.10 shall, subject to paragraphs (d) and (e), apply mutatis mutandis. Rule 43.9 shall apply mutatis mutandis, except that the references therein to Rules 43.3, 43.7 and 44.2 shall be considered non-existent. Article 20(3) and Rule 44.3 shall apply mutatis mutandis.
(d)
The supplementary international search report need not contain the citation of any document cited in the international search report, except where the document needs to be cited in conjunction with other documents that were not cited in the international search report.
(e)
The supplementary international search report may contain explanations:
(i)
with regard to the citations of the documents considered to be relevant;
(ii)
with regard to the scope of the supplementary international search.

45bis.8 Transmittal and Effect of the Supplementary International Search Report

(a)
The Authority specified for supplementary search shall, on the same day, transmit one copy of the supplementary international search report or the declaration that no supplementary international search report shall be established, as applicable, to the International Bureau and one copy to the applicant.
(b)
Subject to paragraph (c), Article 20(1) and Rules 45.1, 47.1(d) and 70.7(a) shall apply as if the supplementary international search report were part of the international search report.
(c)
A supplementary international search report need not be taken into account by the International Preliminary Examining Authority for the purposes of a written opinion or the international preliminary examination report if it is received by that Authority after it has begun to draw up that opinion or report.

45bis.9 International Searching Authorities Competent to Carry Out Supplementary International Search

(a)
An International Searching Authority shall be competent to carry out supplementary international searches if its preparedness to do so is stated in the applicable agreement under Article 16(3)(b), subject to any limitations and conditions set out in that agreement.
(b)
The International Searching Authority carrying out the international search under Article 16(1) in respect of an international application shall not be competent to carry out a supplementary international search in respect of that application.
(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 Time Limit The time limit referred to in Article 19 shall be 2 months from the date of transmittal of the international search report to the International Bureau and to the applicant by the International Searching Authority or 16 months from the priority date, whichever time limit expires later, provided that any amendment made under Article 19 which is received by the International Bureau after the expiration of the applicable time limit shall be considered to have been received by that Bureau on the last day of that time limit if it

reaches it before the technical preparations for international publication have been completed.

46.2 Where to File

Amendments made under Article 19 shall be filed directly with the International Bureau.

46.3 Language of Amendments If the international application has been filed in a language other than the language in

which it is published, any amendment made under Article 19 shall be in the language of publication.

46.4 Statement

(a)
The statement referred to in Article 19 (1) shall be in the language in which the international application is published and shall not exceed 500 words if in the English language or if translated into that language. The statement shall be identified as such by a heading, preferably by using the words “Statement under Article 19 (1)” or their equivalent in the language of the statement.
(b)
The statement shall contain no disparaging comments on the international search report or the relevance of citations contained in that report. Reference to citations, relevant to a given claim, contained in the international search report may be made only in connection with an amendment of that claim.

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;

(iii) shall indicate the basis for the amendments in the application as filed.

Rule 47 Communication to Designated Offices

47.1 Procedure

(a)
The communication provided for in Article 20 shall be effected by the International Bureau to each designated Office in accordance with Rule 93bis.1 but, subject to Rule 47.4, not prior to the international publication of the international application.
(abis) The International Bureau shall notify each designated Office, in accordance with Rule 93bis.1, of the fact and date of receipt of the record copy and of the fact and date of receipt of any priority document.
(b)
Any amendment received by the International Bureau within the time limit under Rule 46.1 which was not included in the communication provided for in Article 20 shall be communicated promptly to the designated Offices by the International Bureau, and the latter shall notify the applicant accordingly.
(c)
The International Bureau shall, promptly after the expiration of 28 months from the priority date, send a notice to the applicant indicating:
(i)
the designated Offices which have requested that the communication provided for in Article 20 be effected under Rule 93bis.1 and the date of such communication to those Offices; and
(ii)
the designated Offices which have not requested that the communication provided for in Article 20 be effected under Rule 93bis.1.

(cbis) The notice referred to in paragraph (c) shall be accepted by designated Offices:

(i)
in the case of a designated Office referred to in paragraph (c)(i), as conclusive evidence that the communication provided for in Article 20 was effected on the date specified in the notice;
(ii)
in the case of a designated Office referred to in paragraph (c)(ii), as conclusive evidence that the Contracting State for which that Office acts as designated Office does not require the furnishing, under Article 22, by the applicant of a copy of the international application.
(d)
Each designated Office shall, when it so requires, receive the international search reports and the declarations referred to in Article 17 (2) (a) also in the translation referred to in Rule 45.1.
(e)
Where any designated Office has not, before the expiration of 28 months from the priority date, requested the International Bureau to effect the communication provided for in Article 20 in accordance with Rule 93bis.1, the Contracting State for which that Office acts as designated Office shall be considered to have notified the International Bureau, under Rule 49.1(abis), that it does not require the furnishing, under Article 22, by the applicant of a copy of the international application.

47.2 Copies The copies required for communication shall be prepared by the International

Bureau. Further details concerning the copies required for communication may be provided for in the Administrative Instructions.

47.3 Languages

(a)
The international application communicated under Article 20 shall be in the language in which it is published.
(b)
Where the language in which the international application is published is different from the language in which it was filed, the International Bureau shall furnish to any designated Office, upon the request of that Office, a copy of that application in the language in which it was filed.

47.4 Express Request Under Article 23(2) Prior to International Publication Where the applicant makes an express request to a designated Office under Article 23(2) prior to the international publication of the international application, the

International Bureau shall, upon request of the applicant or the designated Office, promptly effect the communication provided for in Article 20 to that Office.

Rule 48 International Publication

48.1 Form and Means

The form in which and the means by which international applications are published shall be governed by the Administrative Instructions.

48.2 Contents

(a)
The publication of the international application shall contain:
(i)
a standardized front page;
(ii)
the description;

(iii) the claims;

(iv)
the drawings, if any;
(v)
subject to paragraph (g), the international search report or the declaration under Article 17 (2) (a);
(vi)
any statement filed under Article 19 (1), unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4;

(vii) where the request for publication under Rule 91.3 (d) was received by the International Bureau before the completion of the technical preparations for international publication, any request for rectification of an obvious mistake, any reasons and any comments referred to in Rule 91.3 (d);

(viii) the indications in relation to deposited biological material furnished under Rule 13bis separately from the description, together with an indication of the date on which the International Bureau received such indications;

(ix)
any information concerning a priority claim referred to in Rule 26bis.2 (d);
(x)
any declaration referred to in Rule 4.17, and any correction thereof under Rule 26ter.1, which was received by the International Bureau before the expiration of the time limit under Rule 26ter.1;
(xi)
any 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, including information as to the criterion for restoration upon which the decision was based.
(b)
Subject to paragraph (c), the front page shall include:
(i)
data taken from the request sheet and such other data as are prescribed by the Administrative Instructions;
(ii)
a figure or figures where the international application contains drawings, unless Rule 8.2 (b) applies;

(iii) the abstract; if the abstract is both in English and in another language, the English text shall appear first;

(iv)
where applicable, an indication that the request contains a declaration referred to in Rule 4.17 which was received by the International Bureau before the expiration of the time limit under Rule 26ter.1;
(v)
where the international filing date has been accorded by the receiving Office under Rule 20.3 (b) (ii) or 20.5 (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 (bbis) in relation to the priority document or on a separately submitted copy of the earlier application concerned;
(vi)
where applicable, an indication that the published international application contains information under Rule 26bis.2 (d);

(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 the applicant has, under Rule 26bis.3 (f), furnished copies of any declaration or other evidence to the International Bureau.

(c)
Where a declaration under Article 17 (2) (i) has issued, the front page shall conspicuously refer to that fact and need include neither a drawing nor an abstract.
(d)
The figure or figures referred to in paragraph (b) (ii) shall be selected as provided in Rule 8.2. Reproduction of such figure or figures on the front page may be in a reduced form.
(e)
If there is not enough room on the front page for the totality of the abstract referred to in paragraph (b) (iii), the said abstract shall appear on the back of the front page. The same shall apply to the translation of the abstract when such translation is required to be published under Rule 48.3 (c).
(f)
If the claims have been amended under Article 19, the publication of the international application shall contain the full text of the claims both as filed and as amended. Any statement referred to in Article 19 (1) shall be included as well, unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4. The date of receipt of the amended claims by the International Bureau shall be indicated.
(g)
If, at the time of the completion of the technical preparations for international publication, the international search report is not yet available, the front page shall contain an indication to the effect that that report was not available and that the international search report (when it becomes available) will be separately published together with a revised front page.
(h)
If, at the time of the completion of the technical preparations for international publication, the time limit for amending the claims under Article 19 has not expired, the front page shall refer to that fact and indicate that, should the claims be amended under Article 19, then, promptly after receipt by the International Bureau of such amendments within the time limit under Rule 46.1, the full text of the claims as amended will be published together with a revised front page. If a statement under Article 19 (1) has been filed, that statement shall be published as well, unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4.
(i)
If the authorization of a rectification of an obvious mistake in the international application referred to in 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)
If, at the time of completion of the technical preparations for international publication, a request under Rule 26bis.3 for restoration of the right of priority is still pending, the published international application shall contain, in place of the decision by the receiving Office upon that request, an indication to the effect that such decision was not available and that the decision, when it becomes available, will be separately published.
(k)
If a request for publication under Rule 91.3 (d) was received by the International Bureau after the completion of the technical preparations for international publication, the request for rectification, any reasons and any comments referred to in that Rule shall be promptly published after the receipt of such request for publication, and the front page shall be republished.

48.3 Languages of Publication

(a)
If the international application is filed in Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish (“languages of publication”), that application shall be published in the language in which it was filed.
(abis) If the international application is not filed in a language of publication and a translation into a language of publication has been furnished under Rule 12.3 or 12.4, that application shall be published in the language of that translation.
(c)
If the international application is published in a language other than English, the international search report to the extent that it is published under Rule 48.2 (a) (v), or the declaration referred to in Article 17 (2) (a), the title of the invention, the abstract and any text matter pertaining to the figure or figures accompanying the abstract shall be published both in that language and in English. The translations, if not furnished by the applicant under Rule 12.3, shall be prepared under the responsibility of the International Bureau.

48.4 Earlier Publication on the Applicant’s Request

(a)
Where the applicant asks for publication under Articles 21 (2) (b) and 64 (3) (c) (i) and the international search report, or the declaration referred to in Article 17 (2) (a), is not yet available for publication together with the international application, the International Bureau shall collect a special publication fee whose amount shall be fixed in the Administrative Instructions.
(b)
Publication under Articles 21 (2) (b) and 64 (3) (c) (i) shall be effected by the International Bureau promptly after the applicant has asked for it and, where a special fee is due under paragraph (a), after receipt of such fee.

48.5 Notification of National Publication Where the publication of the international application by the International Bureau is governed by Article 64 (3) (c) (ii), the national Office concerned shall, promptly after

effecting the national publication referred to in the said provision, notify the International Bureau of the fact of such national publication.

48.6 Announcing of Certain Facts

(a)
If any notification under Rule 29.1 (ii) reaches the International Bureau at a time later than that at which it was able to prevent the international publication of the international application, the International Bureau shall promptly publish a notice in the Gazette reproducing the essence of such notification.
(c)
If the international application, the designation of any designated State or the priority claim is withdrawn under Rule 90bis after the technical preparations for international publication have been completed, notice of the withdrawal shall be published in the Gazette.

Rule 49 Copy, Translation and Fee under Article 22

49.1 Notification

(a)
Any Contracting State requiring the furnishing of a translation or the payment of a national fee, or both, under Article 22, shall notify the International Bureau of:
(i)
the languages from which and the language into which it requires translation,
(ii)
the amount of the national fee.

(abis) Any Contracting State not requiring the furnishing, under Article 22, by the applicant of a copy of the international application (even though the communication of the copy of the international application by the International Bureau under Rule 47 has not taken place by the expiration of the time limit applicable under Article 22) shall notify the International Bureau accordingly.

(ater) Any Contracting State which, pursuant to Article 24 (2), maintains, if it is a designated State, the effect provided for in Article 11 (3) even though a copy of the international application is not furnished by the applicant by the expiration of the time limit applicable under Article 22 shall notify the International Bureau accordingly.

(b)
Any notification received by the International Bureau under paragraphs (a), (abis) or (ater) shall be promptly published by the International Bureau in the Gazette.
(c)
If the requirements under paragraph (a) change later, such changes shall be notified by the Contracting State to the International Bureau and that Bureau shall promptly publish the notification in the Gazette. If the change means that translation is required into a language which, before the change, was not required, such change shall be effective only with respect to international applications filed later than 2 months after the publication of the notification in the Gazette. Otherwise, the effective date of any change shall be determined by the Contracting State.

49.2 Languages The language into which translation may be required must be an official language of the designated Office. If there are several of such languages, no translation may be required if the international application is in one of them. If there are several official languages and a translation must be furnished, the applicant may choose any of those languages. Notwithstanding the foregoing provisions of this paragraph, if there are

several official languages but the national law prescribes the use of one such language for foreigners, a translation into that language may be required.

49.3 Statements under Article 19; Indications under Rule 13bis.4

For the purposes of Article 22 and the present Rule, any statement made under Article 19 (1) and any indication furnished under Rule 13bis.4 shall, subject to Rule 49.5 (c) and (h), be considered part of the international application.

49.4 Use of National Form

No applicant shall be required to use a national form when performing the acts referred to in Article 22.

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 (abis)), 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), (cbis) and (e),
(i)
contain the request,
(ii)
if the claims have been amended under Article 19, contain both the claims as filed and the claims as amended, and

(iii) be accompanied by a copy of the drawings.

(abis) No designated Office shall require the applicant to furnish to it a translation of any text matter contained in the sequence listing part of the description if such sequence listing part complies with Rule 12.1 (d) and if the description complies with Rule 5.2 (b).

(b)
Any designated Office requiring the furnishing of a translation of the request shall furnish copies of the request form in the language of the translation free of charge to the applicants. The form and contents of the request form in the language of the translation shall not be different from those of the request under Rules 3 and 4; in particular, the request form in the language of the translation shall not ask for any information that is not in the request as filed. The use of the request form in the language of the translation shall be optional.
(c)
Where the applicant did not furnish a translation of any statement made under Article 19 (1), the designated Office may disregard such statement.
(cbis) Where the applicant furnishes, to a designated Office which requires under paragraph (a) (ii) a translation of both the claims as filed and the claims as amended, only one of the required two translations, the designated Office may disregard the claims of which a translation has not been furnished or invite the applicant to furnish the missing translation within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation. Where the designated Office chooses to invite the applicant to furnish the missing translation and the latter is not furnished within the time limit fixed in the invitation, the designated Office may disregard those claims of which a translation has not been furnished or consider the international application withdrawn.
(d)
If any drawing contains text matter, the translation of that text matter shall be furnished either in the form of a copy of the original drawing with the translation pasted on the original text matter or in the form of a drawing executed anew.
(e)
Any designated Office requiring under paragraph (a) the furnishing of a copy of the drawings shall, where the applicant failed to furnish such copy within the time limit applicable under Article 22, invite the applicant to furnish such copy within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
(f)
The expression “Fig.” does not require translation into any language.
(g)
Where any copy of the drawings or drawing executed anew which has been furnished under paragraph (d) or (e) does not comply with the physical requirements referred to in Rule 11, the designated Office may invite the applicant to correct the defect within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
(h)
Where the applicant did not furnish a translation of the abstract or of any indication furnished under Rule 13bis.4, the designated Office shall invite the applicant to furnish such translation, if it deems it to be necessary, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
(i)
Information on any requirement and practice of designated Offices under the second sentence of paragraph (a) shall be published by the International Bureau in the Gazette.
(j)
No designated Office shall require that the translation of the international application comply with physical requirements other than those prescribed for the international application as filed.
(k)
Where a title has been established by the International Searching Authority pursuant to Rule 37.2, the translation shall contain the title as established by that Authority.
(l)
If, on July 12, 1991, paragraph (cbis) or paragraph (k) is not compatible with the national law applied by the designated Office, the paragraph concerned shall not apply to that designated Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1991. The information received shall be promptly published by the International Bureau in the Gazette.

49.6 Reinstatement of Rights After Failure to Perform the Acts Referred to in Article 22

(a)
Where the effect of the international application provided for in Article 11 (3) has ceased because the applicant failed to perform the acts referred to in Article 22 within the applicable time limit, the designated Office shall, upon request of the applicant, subject to paragraphs (b) to (e) of this Rule, reinstate the rights of the applicant with respect to that international application if it finds that any delay in meeting that time limit was unintentional or, at the option of the designated Office, that the failure to meet that time limit occurred in spite of due care required by the circumstances having been taken.
(b)
The request under paragraph (a) shall be submitted to the designated Office, and the acts referred to in Article 22 shall be performed, within whichever of the following periods expires first:
(i)
two months from the date of removal of the cause of the failure to meet the applicable time limit under Article 22; or
(ii)
12 months from the date of the expiration of the applicable time limit under

Article 22; provided that the applicant may submit the request at any later time if so permitted by the national law applicable by the designated Office.

(c)
The request under paragraph (a) shall state the reasons for the failure to comply with the applicable time limit under Article 22.
(d)
The national law applicable by the designated Office may require:
(i)
that a fee be paid in respect of a request under paragraph (a);
(ii)
that a declaration or other evidence in support of the reasons referred to in paragraph (a) be filed.
(e)
The designated Office shall not refuse a request under paragraph (a) without giving the applicant the opportunity to make observations on the intended refusal within a time limit which shall be reasonable under the circumstances.
(f)
If, on October 1, 2002, paragraphs (a) to (e) are not compatible with the national law applied by the designated Office, those paragraphs shall not apply in respect of that designated 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 January 1, 2003. The information received shall be promptly published by the International Bureau in the Gazette.

Rule 49bis Indications as to Protection Sought for Purposes of National Processing

49bis.1 Choice of Certain Kinds of Protection

(a)
If the applicant wishes the international application to be treated, in a designated State in respect of which Article 43 applies, as an application not for the grant of a patent but for the grant of another kind of protection referred to in that Article, the applicant, when performing the acts referred to in Article 22, shall so indicate to the designated Office.
(b)
If the applicant wishes the international application to be treated, in a designated State in respect of which Article 44 applies, as an application for the grant of more than one kind of protection referred to in Article 43, the applicant, when performing the acts referred to in Article 22, shall so indicate to the designated Office and shall indicate, if applicable, which kind of protection is sought primarily and which kind is sought subsidiarily.
(c)
In the cases referred to in paragraphs (a) and (b), if the applicant wishes the international application to be treated, in a designated State, as an application for a patent of addition, certificate of addition, inventor’s certificate of addition or utility certificate of addition, the applicant, when performing the acts referred to in Article 22, shall indicate the relevant parent application, parent patent or other parent grant.
(d)
If the applicant wishes the international application to be treated, in a designated State, as an application for a continuation or a continuation-in-part of an earlier application, the applicant, when performing the acts referred to in Article 22, shall so indicate to the designated Office and shall indicate the relevant parent application.
(e)
Where no express indication under paragraph (a) is made by the applicant when performing the acts referred to in Article 22 but the national fee referred to in Article 22 paid by the applicant corresponds to the national fee for a particular kind of protection, the payment of that fee shall be considered to be an indication of the wish of the applicant that the international application is to be treated as an application for that kind of protection and the designated Office shall inform the applicant accordingly.

49bis.2 Time of Furnishing Indications

(a)
No designated Office shall require the applicant to furnish, before performing the acts referred to in Article 22, any indication referred to in Rule 49bis.1 or, where applicable, any indication as to whether the applicant seeks the grant of a national patent or a regional patent.
(b)
The applicant may, if so permitted by the national law applicable by the designated Office concerned, furnish such indication or, if applicable, convert from one kind of protection to another, at any later time.

Rule 49ter Effect of Restoration of Right of Priority by Receiving Office; Restoration of Right of Priority by Designated Office

49ter.1 Effect of Restoration of Right of Priority by Receiving Office

(a)
Where the receiving Office has restored a right of priority under Rule 26bis.3 based on a finding by it that the failure to file the international application within the priority period occurred in spite of due care required by the circumstances having been taken, that restoration shall, subject to paragraph (c), be effective in each designated State.
(b)
Where the receiving Office has restored a right of priority under Rule 26bis.3 based on a finding by it that the failure to file the international application within the priority period was unintentional, that restoration shall, subject to paragraph (c), be effective in any designated State whose applicable national law provides for restoration of the right of priority based on that criterion or on a criterion which, from the viewpoint of applicants, is more favorable than that criterion.
(c)
A decision by the receiving Office to restore a right of priority under Rule 26bis.3 shall not be effective in a designated State where the designated Office, a court or any other competent organ of or acting for that designated State finds that a requirement under Rule 26bis.3 (a), (b) (i) or (c) was not complied with, taking into account the reasons stated in the request submitted to the receiving Office under Rule 26bis.3 (a) and any declaration or other evidence filed with the receiving Office under Rule 26bis.3 (b) (iii).
(d)
A designated Office shall not review the decision of the receiving Office unless it may reasonably doubt that a requirement referred to in paragraph (c) was complied with, in which case the designated Office shall notify the applicant accordingly, indicating the reasons for that doubt and giving the applicant an opportunity to make observations within a reasonable time limit.
(e)
No designated State shall be bound by a decision of the receiving Office refusing a request under Rule 26bis.3 for restoration of the right of priority.
(f)
Where the receiving Office has refused a request for the restoration of the right of priority, any designated Office may consider that request to be a request for restoration submitted to that designated Office under Rule 49ter.2 (a) within the time limit under that Rule.
(g)
If, on October 5, 2005, paragraphs (a) to (d) are not compatible with the national law applied by the designated Office, those paragraphs shall not apply in respect of 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 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.

49ter.2 Restoration of Right of Priority by Designated Office

(a)
Where the international application claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the designated Office shall, on the request of the applicant in accordance with paragraph (b), restore the right of priority if the Office finds that a criterion applied by it (“criterion for restoration”) is satisfied, namely, that the failure to file the international application within the priority period:
(i)
occurred in spite of due care required by the circumstances having been taken; or
(ii)
was unintentional.

Each designated Office shall apply at least one of those criteria and may apply both of them.

(b)
A request under paragraph (a) shall:
(i)
be filed with the designated Office within a time limit of one month from the applicable time limit under Article 22;
(ii)
state the reasons for the failure to file the international application within the priority period and preferably be accompanied by any declaration or other evidence required under paragraph (c); and

(iii) be accompanied by any fee for requesting restoration required under paragraph (d).

(c)
The designated Office may require that a declaration or other evidence in support of the statement of reasons referred to in paragraph (b) (ii) be filed with it within a time limit which shall be reasonable under the circumstances.
(d)
The submission of a request under paragraph (a) may be subjected by the designated Office to the payment to it, for its own benefit, of a fee for requesting restoration.
(e)
The designated Office shall not refuse, totally or in part, a request under paragraph (a) without giving the applicant the opportunity to make observations on the intended refusal within a time limit which shall be reasonable under the circumstances. Such notice of intended refusal may be sent by the designated Office to the applicant together with any invitation to file a declaration or other evidence under paragraph (c).
(f)
Where the national law applicable by the designated Office provides, in respect of the restoration of the right of priority, for requirements which, from the viewpoint of applicants, are more favorable than the requirements provided for under paragraphs (a) and (b), the designated Office may, when determining the right of priority, apply the requirements under the applicable national law instead of the requirements under those paragraphs.
(g)
Each designated Office shall inform the International Bureau of which of the criteria for restoration it applies, of the requirements, where applicable, of the national law applicable in accordance with paragraph (f), and of any subsequent changes in that respect. The International Bureau shall promptly publish such information in the Gazette.
(h)
If, on October 5, 2005, paragraphs (a) to (g) are not compatible with the national law applied by the designated Office, those paragraphs shall not apply in respect of 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 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.

Rule 50 Faculty under Article 22 (3)

50.1 Exercise of Faculty

(a)
Any Contracting State allowing a time limit expiring later than the time limits provided for in Article 22 (1) or (2) shall notify the International Bureau of the time limits so fixed.
(b)
Any notification received by the International Bureau under paragraph (a) shall be promptly published by the International Bureau in the Gazette.
(c)
Notifications concerning the shortening of the previously fixed time limit shall be effective in relation to international applications filed after the expiration of 3 months computed from the date on which the notification was published by the International Bureau.
(d)
Notifications concerning the lengthening of the previously fixed time limit shall become effective upon publication by the International Bureau in the Gazette in respect of international applications pending at the time or filed after the date of such publication, or, if the Contracting State effecting the notification fixes some later date, as from the latter date.

Rule 51 Review by Designated Offices

51.1 Time Limit for Presenting the Request to Send Copies

The time limit referred to in Article 25 (1) (c) shall be two months computed from the date of the notification sent to the applicant under Rule 20.4 (i), 24.2 (c) or 29.1 (ii).

51.2 Copy of the Notification Where the applicant, after having received a negative determination under Article 11 (1), requests the International Bureau, under Article 25 (1), to send copies of the file of the purported international application to any of the named Offices he has

attempted to designate, he shall attach to his request a copy of the notification referred to in Rule 20.4 (i).

51.3 Time Limit for Paying National Fee and Furnishing Translation

The time limit referred to in Article 25 (2) (a) shall expire at the same time as the time limit prescribed in Rule 51.1.

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)
any document relating to the identity of the inventor,
(ii)
any document relating to the applicant’s entitlement to apply for or be granted a patent,

(iii) any document containing any proof of the applicant’s entitlement to claim priority of an earlier application where the applicant is not the applicant who filed the earlier application or where the applicant’s name has changed since the date on which the earlier application was filed,

(iv)
where the international application designates a State whose national law requires that national applications be filed by the inventor, any document containing an oath or declaration of inventorship,
(v)
any evidence concerning non-prejudicial disclosures or exceptions to lack of novelty, such as disclosures resulting from abuse, disclosures at certain exhibitions and disclosures by the applicant during a certain period of time;
(vi)
the confirmation of the international application by the signature of any applicant for the designated State who has not signed the request;

(vii) any missing indication required under Rule 4.5(a)(ii) and (iii) in respect of any applicant for the designated State.

(b)
The national law applicable by the designated Office may, in accordance with Article 27 (7), require that
(i)
the applicant be represented by an agent having the right to represent applicants before that Office and/or have an address in the designated State for the purpose of receiving notifications,
(ii)
the agent, if any, representing the applicant be duly appointed by the applicant.
(c)
The national law applicable by the designated Office may, in accordance with Article 27 (1), require that the international application, the translation thereof or any document relating thereto be furnished in more than one copy.
(d)
The national law applicable by the designated Office may, in accordance with Article 27 (2) (ii), require that the translation of the international application furnished by the applicant under Article 22 be:
(i)
verified by the applicant or the person having translated the international application in a statement to the effect that, to the best of his knowledge, the translation is complete and faithful;
(ii)
certified by a public authority or sworn translator, but only where the designated Office may reasonably doubt the accuracy of the translation.
(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)
where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable; or
(ii)
where the international filing date has been accorded by the receiving Office under Rule 20.3 (b) (ii) or 20.5 (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.
(f)
If, on March 17, 2000, the proviso in paragraph (e) is not compatible with the national law applied by the designated Office, that proviso shall not apply in respect of that Office for as long as that proviso continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.

51bis.2 Certain Circumstances in Which Documents or Evidence May Not Be Required

(a)
Where the applicable national law does not require that national applications be filed by the inventor, the designated Office shall not, unless it may reasonably doubt the veracity of the indications or declaration concerned, require any document or evidence:
(i)
relating to the identity of the inventor (Rule 51bis.1 (a) (i)), if indications concerning the inventor, in accordance with Rule 4.6, are contained in the request or if a declaration as to the identity of the inventor, in accordance with Rule 4.17 (i), is contained in the request or is submitted directly to the designated Office;
(ii)
relating to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent (Rule 51bis.1 (a) (ii)), if a declaration as to that matter, in accordance with Rule 4.17 (ii), is contained in the request or is submitted directly to the designated Office;

(iii) relating to the applicant’s entitlement, as at the international filing date, to claim priority of an earlier application (Rule 51bis.1 (a) (iii)), if a declaration as to that matter, in accordance with Rule 4.17 (iii), is contained in the request or is submitted directly to the designated Office.

(b)
Where the applicable national law requires that national applications be filed by the inventor, the designated Office shall not, unless it may reasonably doubt the veracity of the indications or declaration concerned, require any document or evidence:
(i)
relating to the identity of the inventor (Rule 51bis.1 (a) (i)) (other than a document containing an oath or declaration of inventorship (Rule 51bis.1 (a) (iv)), if indications concerning the inventor, in accordance with Rule 4.6, are contained in the request;
(ii)
relating to the applicant’s entitlement, as at the international filing date, to claim priority of an earlier application (Rule 51bis.1 (a) (iii)), if a declaration as to that matter, in accordance with Rule 4.17 (iii), is contained in the request or is submitted directly to the designated Office;

(iii) containing an oath or declaration of inventorship (Rule 51bis.1 (a) (iv)), if a declaration of inventorship, in accordance with Rule 4.17 (iv), is contained in the request or is submitted directly to the designated Office.

(c) If, on March 17, 2000, paragraph (a) is not compatible, in relation to any item of that paragraph, with the national law applied by the designated Office, paragraph (a) shall not apply in respect of that Office in relation to that item for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.

51bis.3 Opportunity to Comply with National Requirements

(a)
Where any of the requirements referred to in Rule 51bis.1 (a) (i) to (iv) and (c) to (e), or any other requirement of the national law applicable by the designated Office which that Office may apply in accordance with Article 27 (1) or (2), is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the designated Office shall invite the applicant to comply with the requirement within a time limit which shall not be less than two months from the date of the invitation. Each designated Office may require that the applicant pay a fee for complying with national requirements in response to the invitation.
(b)
Where any requirement of the national law applicable by the designated Office which that Office may apply in accordance with Article 27 (6) or (7) is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the applicant shall have an opportunity to comply with the requirement after the expiration of that period.
(c)
If, on March 17, 2000, paragraph (a) is not compatible with the national law applied by the designated Office in relation to the time limit referred to in that paragraph, the said paragraph shall not apply in respect of that Office in relation to that time limit for as long as the said paragraph continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.

Rule 52 Amendment of the Claims, the Description, and the Drawings, before Designated Offices

52.1 Time Limit

(a)
In any designated State in which processing or examination starts without special request, the applicant shall, if he so wishes, exercise the right under Article 28 within one month from the fulfilment of the requirements under Article 22, provided that, if the communication under Rule 47.1 has not been effected by the expiration of the time limit applicable under Article 22, he shall exercise the said right not later than 4 months after such expiration date. In either case, the applicant may exercise the said right at any later time if so permitted by the national law of the said State.
(b)
In any designated State in which the national law provides that examination starts only on special request, the time limit within or the time at which the applicant may exercise the right under Article 28 shall be the same as that provided by the national law for the filing of amendments in the case of the examination, on special request, of national applications, provided that such time limit shall not expire prior to, or such time shall not come before, the expiration of the time limit applicable under paragraph (a).

PART C

Rules Concerning Chapter II of the Treaty

Rule 53 The Demand

53.1 Form

(a)
The demand shall be made on a printed form or be presented as a computer print-out. The particulars of the printed form and of a demand presented as a computer print-out shall be prescribed by the Administrative Instructions.
(b)
Copies of printed demand forms shall be furnished free of charge by the receiving Office or by the International Preliminary Examining Authority.

53.2 Contents

(a)
The demand shall contain:
(i)
a petition,
(ii)
indications concerning the applicant and the agent if there is an agent,

(iii) indications concerning the international application to which it relates,

(iv)
where applicable, a statement concerning amendments.
(b)
The demand shall be signed.

53.3 The Petition The petition shall be to the following effect and shall preferably be worded as follows: “Demand under Article 31 of the Patent Cooperation Treaty: The undersigned requests

that the international application specified below be the subject of international preliminary examination according to the Patent Cooperation Treaty.”

53.4 The Applicant

As to the indications concerning the applicant, Rules 4.4 and 4.16 shall apply, and Rule 4.5 shall apply mutatis mutandis.

53.5 Agent or Common Representative

If an agent or common representative is appointed, the demand shall so indicate. Rules 4.4 and 4.16 shall apply, and Rule 4.7 shall apply mutatis mutandis.

53.6 Identification of the International Application The international application shall be identified by the name and address of the applicant, the title of the invention, the international filing date (if known to the applicant) and the international application number or, where such number is not known to the

applicant, the name of the receiving Office with which the international application was filed.

53.7 Election of States

The filing of a demand shall constitute the election of all Contracting States which are designated and are bound by Chapter II of the Treaty.

53.8 Signature

(a)
Subject to paragraph (b), the demand shall be signed by the applicant or, if there is more than one applicant, by all applicants making the demand.
(b)
Where two or more applicants file a demand which elects a State whose national law requires that national applications be filed by the inventor and where an applicant for that elected State who is an inventor refused to sign the demand or could not be found or reached after diligent effort, the demand need not be signed by that applicant (“the applicant concerned”) if it is signed by at least one applicant and
(i)
a statement is furnished explaining, to the satisfaction of the International Preliminary Examining Authority, the lack of signature of the applicant concerned, or
(ii)
the applicant concerned did not sign the request but the requirements of Rule 4.15 (b) were complied with.

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 shall preferably be submitted with the demand, or
(ii)
to be considered as reversed by an amendment under Article 34.
(b)
If no amendments under Article 19 have been made and the time limit for filing such amendments has not expired, the statement may indicate that, should the International Preliminary Examining Authority wish to start the international preliminary examination at the same time as the international search in accordance with Rule 69.1 (b), the applicant wishes the start of the international preliminary examination to be postponed in accordance with Rule 69.1 (d).
(c)
If any amendments under Article 34 are submitted with the demand, the statement shall so indicate.

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 Right to Make a Demand The right to make a demand under Article 31 (2) shall exist if the applicant making the demand or, if there are two or more applicants, at least one of them is a resident or

national of a Contracting State bound by Chapter II and the international application has been filed with a receiving Office of or acting for a Contracting State bound by Chapter II.

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 Applicant Not Entitled to Make a Demand If the applicant does not have the right to make a demand or, in the case of two or

more applicants, if none of them has the right to make a demand under Rule 54.2, the demand shall be considered not to have been submitted.

Rule 54bis Time Limit for Making a Demand

54bis.1 Time Limit for Making a Demand

(a)
A demand may be made at any time prior to the expiration of whichever of the following periods expires later:
(i)
three months from the date of transmittal to the applicant of the international search report or the declaration referred to in Article 17 (2) (a), and of the written opinion established under Rule 43bis.1; or
(ii)
22 months from the priority date.
(b)
Any demand made after the expiration of the time limit applicable under paragraph (a) shall be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.

Rule 55 Languages (International Preliminary Examination)

55.1 Language of Demand

The demand shall be in the language of the international application or, if the international application has been filed in a language other than the language in which it is published, in the language of publication. However, if a translation of the international application is required under Rule 55.2, the demand shall be in the language of that translation.

55.2 Translation of International Application

(a)
Where neither the language in which the international application is filed nor the language in which the international application is published is accepted by the International Preliminary Examining Authority that is to carry out the international preliminary examination, the applicant shall, subject to paragraph (b), furnish with the demand a translation of the international application into a language which is both:
(i)
a language accepted by that Authority, and
(ii)
a language of publication.

(abis)

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) or 20.6(a) and any part of the description, claims or drawings furnished by the applicant under Rule 20.5(b) or 20.6(a) which is considered to have been contained in the international application under Rule 20.6(b).

(ater) The International Preliminary Examining Authority shall check any translation furnished under paragraph (a) for compliance with the physical requirements referred to in Rule 11 to the extent that compliance therewith is necessary for the purposes of the international preliminary examination.

(b)
Where a translation of the international application into a language referred to in paragraph (a) was transmitted to the International Searching Authority under Rule 23.1 (b) and the International Preliminary Examining Authority is part of the same national Office or intergovernmental organization as the International Searching Authority, the applicant need not furnish a translation under paragraph (a). In such a case, unless the applicant furnishes a translation under paragraph (a), the international preliminary examination shall be carried out on the basis of the translation transmitted under Rule 23.1 (b).
(c)
If a requirement referred to in paragraphs (a), (abis) and (ater) is not complied with and paragraph (b) does not apply, the International Preliminary Examining Authority shall invite the applicant to furnish the required translation or the required correction, as the case may be, 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 complies with the invitation within the time limit under paragraph (c), the said requirement shall be considered to have been complied with. If the applicant fails to do so, the demand shall be considered not to have been submitted and the International Preliminary Examining Authority shall so declare.

55.3 Translation of Amendments

(a)
Where a translation of the international application is required under Rule 55.2, any amendments which are referred to in the statement concerning amendments under Rule 59.3 and which the applicant wishes to be taken into account for the purposes of the international preliminary examination, and any amendments under Article 19 which are to be taken into account under Rule 66.1 (c), shall be in the language of that translation. Where such amendments have been or are filed in another language, a translation shall also be furnished.
(b)
Where the required translation of an amendment referred to in paragraph (a) is not furnished, the International Preliminary Examining Authority shall invite the applicant to furnish the missing translation 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.
(c)
If the applicant fails to comply with the invitation within the time limit under paragraph (b), the amendment shall not be taken into account for the purposes of the international preliminary examination.

Rule 57 The Handling Fee

57.1 Requirement to Pay Each demand for international preliminary examination shall be subject to the payment of a fee for the benefit of the International Bureau (“handling fee”) to be

collected by the International Preliminary Examining Authority to which the demand is submitted.

57.2 Amount

(a)
The amount of the handling fee is as set out in the Schedule of Fees.
(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 Time Limit for Payment; Amount Payable

(a)
Subject to paragraphs (b) and (c), the handling fee shall be paid within one month from the date on which the demand was submitted or 22 months from the priority date, whichever expires later.
(b)
Subject to paragraph (c), where the demand was transmitted to the International Preliminary Examining Authority under Rule 59.3, the handling fee shall be paid within one month from the date of receipt by that Authority or 22 months from the priority date, whichever expires later.
(c)
Where, in accordance with Rule 69.1(b), the International Preliminary Examining Authority wishes to start the international preliminary examination at the same time as the international search, that Authority shall invite the applicant to pay the handling fee within one month from the date of the invitation.
(d)
The amount of the handling fee payable shall be the amount applicable on the date of payment.

57.4 Refund

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 58 The Preliminary Examination Fee

58.1 Right to Ask for a Fee

(a)
Each International Preliminary Examining Authority may require that the applicant pay a fee (“preliminary examination fee”) for its own benefit for carrying out the international preliminary examination and for performing all other tasks entrusted to International Preliminary Examining Authorities under the Treaty and these Regulations.
(b)
The amount of the preliminary examination fee, if any, shall be fixed by the International Preliminary Examining Authority. As to the time limit for payment of the preliminary examination fee and the amount payable, the provisions of Rule 57.3 relating to the handling fee shall apply mutatis mutandis.
(c)
The preliminary examination fee shall be payable directly to the International Preliminary Examining Authority. Where that Authority is a national Office, it shall be payable in the currency prescribed by that Office, and where the Authority is an intergovernmental organization, it shall be payable in the currency of the State in which the intergovernmental organization is located or in any other currency which is freely convertible into the currency of the said State.

58.3 Refund The International Preliminary Examining Authorities shall inform the International Bureau of the extent, if any, to which, and the conditions, if any, under which, they will refund any amount paid as a preliminary examination fee where the demand is

considered as if it had not been submitted, and the International Bureau shall promptly publish such information.

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Rule 58bis. Extension of Time Limits for Payment of Fees

58bis.1 Invitation by the International Preliminary Examining Authority

(a)
Where the International Preliminary Examining Authority finds:
(i)
that the amount paid to it is insufficient to cover the handling fee and the preliminary examination fee; or
(ii)
by the time they are due under Rules 57.3 and 58.1(b), that no fees were

paid to it; the Authority shall invite the applicant to pay to it the amount required to cover those fees, together with, where applicable, the late payment fee under Rule 58bis.2, within a time limit of one month from the date of the invitation.

(b)
Where the International Preliminary Examining Authority has sent an invitation under paragraph (a) and the applicant has not, within the time limit referred to in that paragraph, paid in full the amount due, including, where applicable, the late payment fee under Rule 58bis.2, the demand shall, subject to paragraph (c), be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.
(c)
Any payment received by the International Preliminary Examining Authority before that Authority sends the invitation under paragraph (a) shall be considered to have been received before the expiration of the time limit under Rule 57.3 or 58.1 (b), as the case may be.
(d)
Any payment received by the International Preliminary Examining Authority before that Authority proceeds under paragraph (b) shall be considered to have been received before the expiration of the time limit under paragraph (a).

58bis.2 Late Payment Fee

(a)
The payment of fees in response to an invitation under Rule 58bis.1 (a) may be subjected by the International Preliminary Examining Authority to the payment to it, for its own benefit, of a late payment fee. The amount of that fee shall be:
(i)
50% of the amount of unpaid fees which is specified in the invitation, or,
(ii)
if the amount calculated under item (i) is less than the handling fee, an amount equal to the handling fee.
(b)
The amount of the late payment fee shall not, however, exceed double the amount of the handling fee.

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 Demands under Article 31 (2) (b) As to demands made under Article 31 (2) (b), the Assembly, in specifying the International Preliminary Examining Authority competent for international applications filed with a national Office which is an International Preliminary Examining Authority, shall give preference to that Authority; if the national Office is not an International

Preliminary Examining Authority, the Assembly shall give preference to the International Preliminary Examining Authority recommended by that Office.

59.3 Transmittal of Demand to the Competent International Preliminary Examining Authority

(a)
If the demand is submitted to a receiving Office, an International Searching Authority, or an International Preliminary Examining Authority which is not competent for the international preliminary examination of the international application, that Office or Authority shall mark the date of receipt on the demand and, unless it decides to proceed under paragraph (f), transmit the demand promptly to the International Bureau.
(b)
If the demand is submitted to the International Bureau, the International Bureau shall mark the date of receipt on the demand.
(c)
Where the demand is transmitted to the International Bureau under paragraph (a) or submitted to it under paragraph (b), the International Bureau shall promptly:
(i)
if there is only one competent International Preliminary Examining Authority, transmit the demand to that Authority and inform the applicant accordingly, or
(ii)
if two or more International Preliminary Examining Authorities are competent, invite the applicant to indicate, within the time limit applicable under Rule 54bis.1(a) or 15 days from the date of the invitation, whichever is later, the competent International Preliminary Examining Authority to which the demand should be transmitted.
(d)
Where an indication is furnished as required under paragraph (c) (ii), the International Bureau shall promptly transmit the demand to the competent International Preliminary Examining Authority indicated by the applicant. Where no indication is so furnished, the demand shall be considered not to have been submitted and the International Bureau shall so declare.
(e)
Where the demand is transmitted to a competent International Preliminary Examining Authority under paragraph (c), it shall be considered to have been received on behalf of that Authority on the date marked on it under paragraph (a) or (b), as applicable, and the demand so transmitted shall be considered to have been received by that Authority on that date.
(f)
Where an Office or Authority to which the demand is submitted under paragraph (a) decides to transmit that demand directly to the competent International Preliminary Examining Authority, paragraphs (c) to (e) shall apply mutatis mutandis.

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Rule 60 Certain Defects in the Demand

60.1 Defects in the Demand

(a) Subject to paragraphs (abis) and (ater), if the demand does not comply with the requirements specified in Rules 53.1, 53.2 (a) (i) to (iii), 53.2 (b), 53.3 to 53.8 and 55.1, the International Preliminary Examining Authority shall invite the applicant to correct the defects 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.

(abis) For the purposes of Rule 53.4, if there are two or more applicants, it shall be sufficient that the indications referred to in Rule 4.5(a)(ii) and (iii) be provided in respect of one of them who has the right according to Rule 54.2 to make a demand.

(ater) For the purposes of Rule 53.8, if there are two or more applicants, it shall be sufficient that the demand be signed by one of them.

(b)
If the applicant complies with the invitation within the time limit under paragraph (a), the demand shall be considered as if it had been received on the actual filing date, provided that the demand as submitted permitted the international application to be identified; otherwise, the demand shall be considered as if it had been received on the date on which the International Preliminary Examining Authority receives the correction.
(c)
If the applicant does not comply with the invitation within the time limit under paragraph (a), the demand shall be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.
(e)
If the defect is noticed by the International Bureau, it shall bring the defect to the attention of the International Preliminary Examining Authority, which shall then proceed as provided in paragraphs (a) to (c).
(f)
If the demand does not contain a statement concerning amendments, the International Preliminary Examining Authority shall proceed as provided for in Rules 66.1 and 69.1 (a) or (b).
(g)
Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand (Rule 53.9 (c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Authority shall invite the applicant to submit the amendments within a time limit fixed in the invitation and shall proceed as provided for in Rule 69.1 (e).

Rule 61 Notification of the Demand and Elections

61.1 Notification to the International Bureau and the Applicant

(a)
The International Preliminary Examining Authority shall indicate on the demand the date of receipt or, where applicable, the date referred to in Rule 60.1 (b). The International Preliminary Examining Authority shall promptly either send the demand to the International Bureau and keep a copy in its files or send a copy to the International Bureau and keep the demand in its files.
(b)
The International Preliminary Examining Authority shall promptly notify the applicant of the date of receipt of the demand. Where the demand has been considered under Rules 54.4, 55.2 (d), 58bis.1 (b) or 60.1 (c) as if it had not been submitted, the

International Preliminary Examining Authority shall notify the applicant and the International Bureau accordingly.

61.2 Notification to the Elected Offices

(a)
The notification provided for in Article 31 (7) shall be effected by the International Bureau.
(b)
The notification shall indicate the number and filing date of the international application, the name of the applicant, the filing date of the application whose priority is claimed (where priority is claimed) and the date of receipt by the International Preliminary Examining Authority of the demand.
(c)
The notification shall be sent to the elected Office together with the communication provided for in Article 20. Elections effected after such communication shall be notified promptly after they have been made.
(d)
Where the applicant makes an express request to an elected Office under Article 40(2) prior to the international publication of the international application, the International Bureau shall, upon request of the applicant or the elected Office, promptly effect the communication provided for in Article 20 to that Office.

61.3 Information for the Applicant

The International Bureau shall inform the applicant in writing of the notification referred to in Rule 61.2 and of the elected Offices notified under Article 31 (7).

61.4 Publication in the Gazette The International Bureau shall, promptly after the filing of the demand but not before the international publication of the international application, publish in the Gazette

information on the demand and the elected States concerned, as provided in the Administrative Instructions.

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, and any statement referred to in that Article, 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 and any statement referred to in that Article. In

any case, the International Bureau shall promptly transmit a copy of such amendments and statement to that Authority.

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Rule 62bis Translation for the International Preliminary Examining Authority of the Written Opinion of the International Searching Authority

62bis.1 Translation and Observations

(a)
Upon request of the International Preliminary Examining Authority, the written opinion established under Rule 43bis.1 shall, when not in English or in a language accepted by that Authority, be translated into English by or under the responsibility of the International Bureau.
(b)
The International Bureau shall transmit a copy of the translation to the International Preliminary Examining Authority within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.
(c)
The applicant may make written observations as to the correctness of the translation and shall send a copy of the observations to the International Preliminary Examining Authority and to the International Bureau.

Rule 63 Minimum Requirements for International Preliminary Examining Authorities

63.1 Definition of Minimum Requirements The minimum requirements referred to in Article 32 (3) shall be the following:

(i)
the national Office or intergovernmental organization must have at least 100 full-time employees with sufficient technical qualifications to carry out examinations;
(ii)
that Office or organization must have at its ready disposal at least the minimum documentation referred to in Rule 34, properly arranged for examination purposes;

(iii) that Office or organization must have a staff which is capable of examining in the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated;

(iv)
that Office or organization must have in place a quality management system and internal review arrangements in accordance with the common rules of international preliminary examination;
(v)
that Office or organization must hold an appointment as an International Searching Authority.

Rule 64 Prior Art for International Preliminary Examination

64.1 Prior Art

(a)
For the purposes of Article 33 (2) and (3), everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) shall be considered prior art provided that such making available occurred prior to the relevant date.
(b)
For the purposes of paragraph (a), the relevant date shall be:
(i)
subject to items (ii) and (iii), the international filing date of the international application under international preliminary examination;
(ii)
where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is within the priority period, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid;

(iii) where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid for reasons other than the fact that the international application has an international filing date which is later than the date on which the priority period expired.

64.2 Non-Written Disclosures In cases where the making available to the public occurred by means of an oral disclosure, use, exhibition or other non-written means (“non-written disclosure”) before the relevant date as defined in Rule 64.1 (b) and the date of such non-written disclosure is indicated in a written disclosure which has been made available to the public on a date which is the same as, or later than, the relevant date, the non-written disclosure shall not be considered part of the prior art for the purposes of Article 33 (2) and (3).

Nevertheless, the international preliminary examination report shall call attention to such non-written disclosure in the manner provided for in Rule 70.9.

64.3 Certain Published Documents In cases where any application or any patent which would constitute prior art for the purposes of Article 33 (2) and (3) had it been published prior to the relevant date referred to in Rule 64.1 was published on a date which is the same as, or later than, the relevant date but was filed earlier than the relevant date or claimed the priority of an earlier application which had been filed prior to the relevant date, such published application or patent shall not be considered part of the prior art for the purposes of Article 33 (2) and

(3). Nevertheless, the international preliminary examination report shall call attention to such application or patent in the manner provided for in Rule 70.10.

Rule 65 Inventive Step or Non-Obviousness

65.1 Approach to Prior Art For the purposes of Article 33 (3), the international preliminary examination shall take into consideration the relation of any particular claim to the prior art as a whole. It shall take into consideration the claim’s relation not only to individual documents or parts

thereof taken separately but also its relation to combinations of such documents or parts of documents, where such combinations are obvious to a person skilled in the art.

65.2 Relevant Date

For the purposes of Article 33 (3), the relevant date for the consideration of inventive step (non-obviousness) is the date prescribed in Rule 64.1.

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Rule 66 Procedure before the International Preliminary Examining Authority

66.1 Basis of the International Preliminary Examination

(a)
Subject to paragraphs (b) to (d), the international preliminary examination shall be based on the international application as filed.
(b)
The applicant may submit amendments under Article 34 at the time of filing the demand or, subject to Rule 66.4bis, until the international preliminary examination report is established.
(c)
Any amendments under Article 19 made before the demand was filed shall be taken into account for the purposes of the international preliminary examination unless superseded, or considered as reversed, by an amendment under Article 34.
(d)
Any amendments under Article 19 made after the demand was filed and any amendments under Article 34 submitted to the International Preliminary Examining Authority shall, subject to Rule 66.4bis, be taken into account for the purposes of the international preliminary examination.

(dbis)

A rectification of an obvious mistake that is authorized under Rule 91.1 shall, subject to Rule 66.4bis, be taken into account by the International Preliminary Examining Authority for the purposes of the international preliminary examination.

(e) Claims relating to inventions in respect of which no international search report has been established need not be the subject of international preliminary examination.

66.1bis Written Opinion of the International Searching Authority

(a)
Subject to paragraph (b), the written opinion established by the International Searching Authority under Rule 43bis.1 shall be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a).
(b)
An International Preliminary Examining Authority may notify the International Bureau that paragraph (a) shall not apply to the procedure before it in respect of written opinions established under Rule 43bis.1 by the International Searching Authority or Authorities specified in the notification, provided that such a notification shall not apply to cases where the national Office or intergovernmental organization that acted as International Searching Authority is also acting as International Preliminary Examining Authority. The International Bureau shall promptly publish any such notification in the Gazette.
(c)
Where the written opinion established by the International Searching Authority under Rule 43bis.1 is not, by virtue of a notification under paragraph (b), considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a), the International Preliminary Examining Authority shall notify the applicant accordingly in writing.
(d)
A written opinion established by the International Searching Authority under Rule 43bis.1 which is not, by virtue of a notification under paragraph (b), considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a) shall nevertheless be taken into account by the International Preliminary Examining Authority in proceeding under Rule 66.2(a).

66.2 Written Opinion of the International Preliminary Examining Authority

(a)
If the International Preliminary Examining Authority
(i)
considers that any of the situations referred to in Article 34 (4) exists,
(ii)
considers that the international preliminary examination report should be negative in respect of any of the claims because the invention claimed therein does not appear to be novel, does not appear to involve an inventive step (does not appear to be non-obvious), or does not appear to be industrially applicable,

(iii) notices that there is some defect in the form or contents of the international application under the Treaty or these Regulations,

(iv)
considers that any amendment goes beyond the disclosure in the international application as filed,
(v)
wishes to accompany the international preliminary examination report by observations on the clarity of the claims, the description, and the drawings, or the question whether the claims are fully supported by the description,
(vi)
considers that a claim relates to an invention in respect of which no international search report has been established and has decided not to carry out the international preliminary examination in respect of that claim, or

(vii) considers that a nucleotide and/or amino acid sequence listing is not available to it in such a form that a meaningful international preliminary examination can be carried out,

the said Authority shall notify the applicant accordingly in writing. Where the national law of the national Office acting as International Preliminary Examining Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the second and third sentences of Rule 6.4 (a), the International Preliminary Examining Authority may, in case of failure to use that manner of claiming, apply Article 34 (4) (b). In such case, it shall notify the applicant accordingly in writing.

(b)
The notification shall fully state the reasons for the opinion of the International Preliminary Examining Authority.
(c)
The notification shall invite the applicant to submit a written reply together, where appropriate, with amendments.
(d)
The notification shall fix a time limit for the reply. The time limit shall be reasonable under the circumstances. It shall normally be two months after the date of notification. In no case shall it be shorter than one month after the said date. It shall be at least two months after the said date where the international search report is transmitted at the same time as the notification. It shall, subject to paragraph (e), not be more than three months after the said date.
(e)
The time limit for replying to the notification may be extended if the applicant so requests before its expiration.

66.3 Formal Response to the International Preliminary Examining Authority

(a)
The applicant may respond to the invitation referred to in Rule 66.2 (c) of the International Preliminary Examining Authority by making amendments or—if he disagrees with the opinion of that Authority—by submitting arguments, as the case may be, or do both.
(b)
Any response shall be submitted directly to the International Preliminary Examining Authority.

66.4 Additional Opportunity for Submitting Amendments or Arguments

(a)
If the International Preliminary Examining Authority wishes to issue one or more additional written opinions, it may do so, and Rules 66.2 and 66.3 shall apply.
(b)
On the request of the applicant, the International Preliminary Examining Authority may give him one or more additional opportunities to submit amendments or arguments.

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66.4bis Consideration of Amendments, Arguments and Rectifications of Obvious Mistakes

Amendments, arguments and rectifications of obvious mistakes need not be taken into account by the International Preliminary Examining Authority for the purposes of a written opinion or the international preliminary examination report if they are received by, authorized by or notified to that Authority, as applicable, after it has begun to draw up that opinion or report.

66.5 Amendment Any change, other than the rectification of an obvious mistake, in the claims, the

description, or the drawings, including cancellation of claims, omission of passages in the description, or omission of certain drawings, shall be considered an amendment.

66.6 Informal Communications with the Applicant The International Preliminary Examining Authority may, at any time, communicate informally, over the telephone, in writing, or through personal interviews, with the applicant. The said Authority shall, at its discretion, decide whether it wishes to grant

more than one personal interview if so requested by the applicant, or whether it wishes to reply to any informal written communication from the applicant.

66.7 Copy and Translation of Earlier Application Whose Priority is Claimed

(a)
If the International Preliminary Examining Authority needs a copy of the application whose priority is claimed in the international application, the International Bureau shall, on request, promptly furnish such copy. If that copy is not furnished to the International Preliminary Examining Authority because the applicant failed to comply with the requirements of Rule 17.1, and if that earlier application was not filed with that Authority in its capacity as a national Office or the priority document is not available to that Authority from a digital library in accordance with the Administrative Instructions, the international preliminary examination report may be established as if priority had not been claimed.
(b)
If the application whose priority is claimed in the international application is in a language other than the language or one of the languages of the International Preliminary Examining Authority, that Authority may, where the validity of the priority claim is relevant for the formulation of the opinion referred to in Article 33 (1), invite the applicant to furnish a translation in the said language or one of the said languages within 2 months from the date of the invitation. If the translation is not furnished within that time limit, the international preliminary examination report may be established as if the priority had not been claimed.

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, shall indicate the basis for the amendment in the application as filed and shall preferably also explain the reasons for the amendment.
(b)
Where the amendment consists in the deletion of passages or in minor alterations or additions, the replacement sheet referred to in paragraph (a) may be a copy of the relevant sheet of the international application containing the alterations or additions, provided that the clarity and direct reproducibility of that sheet are not adversely affected. To the extent that any amendment results in the cancellation of an entire sheet, that amendment shall be communicated in a letter which shall preferably also explain the reasons for the amendment.
(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 Language of Amendments

(a)
Subject to paragraphs (b) and (c), if the international application has been filed in a language other than the language in which it is published, any amendment, as well as any letter referred to in Rule 66.8, shall be submitted in the language of publication.
(b)
If the international preliminary examination is carried out, pursuant to Rule 55.2, on the basis of a translation of the international application, any amendment, as well as any letter referred to in paragraph (a), shall be submitted in the language of that translation.
(c)
Subject to Rule 55.3, if an amendment or a letter is not submitted in a language as required under paragraph (a) or (b), the International Preliminary Examining Authority shall, if practicable having regard to the time limit for establishing the international preliminary examination report, invite the applicant to furnish the amendment or letter in the required language within a time limit which shall be reasonable under the circumstances.
(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 67 Subject Matter under Article 34 (4) (a) (i)

67.1 Definition No International Preliminary Examining Authority shall be required to carry out an

international preliminary examination on an international application if, and to the extent to which, its subject matter is any of the following:

(i)
scientific and mathematical theories,
(ii)
plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,

(iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,

(iv)
methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
(v)
mere presentations of information,
(vi)
computer programs to the extent that the International Preliminary Examining Authority is not equipped to carry out an international preliminary examination concerning such programs.

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Rule 68 Lack of Unity of Invention (International Preliminary Examination)

68.1 No Invitation to Restrict or Pay Where the International Preliminary Examining Authority finds that the requirement of unity of invention is not complied with and chooses not to invite the applicant to restrict the claims or to pay additional fees, it shall proceed with the international preliminary examination, subject to Article 34 (4) (b) and Rule 66.1 (e), in respect of the entire international application, but shall indicate, in any written opinion and in the international

preliminary examination report, that it considers that the requirement of unity of invention is not fulfilled and it shall specify the reasons therefor.

68.2 Invitation to Restrict or Pay Where the International Preliminary Examining Authority finds that the requirement of

unity of invention is not complied with and chooses to invite the applicant, at his option, to restrict the claims or to pay additional fees, the invitation shall:

(i)
specify at least one possibility of restriction which, in the opinion of the International Preliminary Examining Authority, would be in compliance with the applicable requirement;
(ii)
specify the reasons for which the international application is not considered as complying with the requirement of unity of invention;

(iii) invite the applicant to comply with the invitation within one month from the date of the invitation;

(iv)
indicate the amount of the required additional fees to be paid in case the applicant so chooses; and
(v)
invite the applicant to pay, where applicable, the protest fee referred to in Rule 68.3 (e) within one month from the date of the invitation, and indicate the amount to be paid.

68.3 Additional Fees

(a)
The amount of the additional fees due for international preliminary examination under Article 34 (3) (a) shall be determined by the competent International Preliminary Examining Authority.
(b)
The additional fees due for international preliminary examination under Article 34 (3) (a) shall be payable direct to the International Preliminary Examining Authority.
(c)
Any applicant may pay the additional fees under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the amount of the required additional fees is excessive. Such protest shall be examined by a review body constituted in the framework of the International Preliminary Examining Authority which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fees. On the request of the applicant, the text of both the protest and the decision thereon shall be notified to the elected Offices as an annex to the international preliminary examination report.
(d)
The membership of the review body referred to in paragraph (c) may include, but shall not be limited to, the person who made the decision which is the subject of the protest.
(e)
The examination of a protest referred to in paragraph (c) may be subjected by the International Preliminary Examining Authority to the payment to it, for its own benefit, of a protest fee. Where the applicant has not, within the time limit under Rule 68.2 (v), paid any required protest fee, the protest shall be considered not to have been made and the International Preliminary Examining Authority shall so declare. The protest fee shall be refunded to the applicant where the review body referred to in paragraph (c) finds that the protest was entirely justified.

68.4 Procedure in the Case of Insufficient Restriction of the Claims If the applicant restricts the claims but not sufficiently to comply with the requirement

of unity of invention, the International Preliminary Examining Authority shall proceed as provided in Article 34 (3) (c).

68.5 Main Invention In case of doubt which invention is the main invention for the purposes of

Article 34 (3) (c), the invention first mentioned in the claims shall be considered the main invention.

Rule 69 Start of and Time Limit for International Preliminary Examination

69.1 Start of International Preliminary Examination

(a)
Subject to paragraphs (b) to (e), the International Preliminary Examining Authority shall start the international preliminary examination when it is in possession of all of the following:
(i)
the demand;
(ii)
the amount due (in full) for the handling fee and the preliminary examination fee, including, where applicable, the late payment fee under Rule 58bis.2; and

(iii) either the international search report or the declaration by the International Searching Authority under Article 17 (2) (a) that no international search report will be established, and the written opinion established under Rule 43bis.1;

provided that the International Preliminary Examining Authority shall not start the international preliminary examination before the expiration of the applicable time limit under Rule 54bis.1 (a) unless the applicant expressly requests an earlier start.

(b) If the national Office or intergovernmental organization that acts as International Searching Authority also acts as International Preliminary Examining Authority, the international preliminary examination may, if that national Office or intergovernmental organization so wishes and subject to paragraphs (d) and (e), start at the same time as the international search.

(bbis)

Where, in accordance with paragraph (b), the national Office or intergovernmental organization that acts as both International Searching Authority and International Preliminary Examining Authority wishes to start the international preliminary examination at the same time as the international search and considers that all of the conditions referred to in Article 34(2)(c)(i) to (iii) are fulfilled, that national Office or intergovernmental organization need not, in its capacity as International Searching Authority, establish a written opinion under Rule 43bis.1.

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(c)
Where the statement concerning amendments contains an indication that amendments under Article 19 are to be taken into account (Rule 53.9 (a) (i)), the International Preliminary Examining Authority shall not start the international preliminary examination before it has received a copy of the amendments concerned.
(d)
Where the statement concerning amendments contains an indication that the start of the international preliminary examination is to be postponed (Rule 53.9(b)), the International Preliminary Examining Authority shall not start the international preliminary examination before whichever of the following occurs first:
(i)
it has received a copy of any amendments made under Article 19;
(ii)
it has received a notice from the applicant that he does not wish to make amendments under Article 19; or

(iii) the expiration of the applicable time limit under Rule 46.1.

(e) Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand (Rule 53.9 (c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Authority shall not start the international preliminary examination before it has received the amendments or before the time limit fixed in the invitation referred to in Rule 60.1 (g) has expired, whichever occurs first.

69.2 Time Limit for International Preliminary Examination

The time limit for establishing the international preliminary examination report shall be whichever of the following periods expires last:

(i)
28 months from the priority date; or
(ii)
six months from the time provided under Rule 69.1 for the start of the international preliminary examination; or

(iii) six months from the date of receipt by the International Preliminary Examining Authority of the translation furnished under Rule 55.2.

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

70.1 Definition

For the purposes of this Rule, “report” shall mean international preliminary examination report.

70.2 Basis of the Report

(a)
If the claims have been amended, the report shall issue on the claims as amended.
(b)
If, pursuant to Rule 66.7 (a) or (b), the report is established as if the priority had not been claimed, the report shall so indicate.
(c)
If the International Preliminary Examining Authority considers that any amendment goes beyond the disclosure in the international application as filed, the report shall be established as if such amendment had not been made, and the report shall so indicate. It shall also indicate the reasons why it considers that the amendment goes beyond the said disclosure.

(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)
Where claims relate to inventions in respect of which no international search report has been established and have therefore not been the subject of international preliminary examination, the international preliminary examination report shall so indicate.
(e)
If a rectification of an obvious mistake is taken into account under Rule 66.1, the report shall so indicate. If a rectification of an obvious mistake is not taken into account pursuant to Rule 66.4bis, the report shall, if possible, so indicate, failing which the International Preliminary Examining Authority shall notify the International Bureau accordingly and the International Bureau shall proceed as provided for in the Administrative Instructions.

70.3 Identifications The report shall identify the International Preliminary Examining Authority which established it by indicating the name of such Authority, and the international application

by indicating the international application number, the name of the applicant, and the international filing date.

70.4 Dates The report shall indicate:

(i)
the date on which the demand was submitted, and
(ii)
the date of the report; that date shall be the date on which the report is completed.

70.5 Classification

(a)
The report shall repeat the classification given under Rule 43.3 if the International Preliminary Examining Authority agrees with such classification.
(b)
Otherwise, the International Preliminary Examining Authority shall indicate in the report the classification, at least according to the International Patent Classification, which it considers correct.

70.6 Statement under Article 35 (2)

(a)
The statement referred to in Article 35 (2) shall consist of the words “YES” or “NO,” or their equivalent in the language of the report, or some appropriate sign provided for in the Administrative Instructions, and shall be accompanied by the citations, explanations and observations, if any, referred to in the last sentence of Article 35 (2).
(b)
If any of the three criteria referred to in Article 35 (2) (that is, novelty, inventive step (non-obviousness), industrial applicability) is not satisfied, the statement shall be negative. If, in such a case, any of the criteria, taken separately, is satisfied, the report shall specify the criterion or criteria so satisfied.

70.7 Citations under Article 35 (2)

(a)
The report shall cite the documents considered to be relevant for supporting the statements made under Article 35 (2), whether or not such documents are cited in the international search report. Documents cited in the international search report need only be cited in the report when they are considered by the International Preliminary Examining Authority to be relevant.
(b)
The provisions of Rule 43.5 (b) and (e) shall apply also to the report.

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70.8 Explanations under Article 35 (2) The Administrative Instructions shall contain guidelines for cases in which the

explanations referred to in Article 35 (2) should or should not be given and the form of such explanations. Such guidelines shall be based on the following principles:

(i)
explanations shall be given whenever the statement in relation to any claim is negative;
(ii)
explanations shall be given whenever the statement is positive unless the reason for citing any document is easy to imagine on the basis of consultation of the cited document;

(iii) generally, explanations shall be given if the case provided for in the last sentence of Rule 70.6 (b) obtains.

70.9 Non-Written Disclosures Any non-written disclosure referred to in the report by virtue of Rule 64.2 shall be mentioned by indicating its kind, the date on which the written disclosure referring to the

non-written disclosure was made available to the public, and the date on which the non-written disclosure occurred in public.

70.10 Certain Published Documents Any published application or any patent referred to in the report by virtue of Rule 64.3 shall be mentioned as such and shall be accompanied by an indication of its date of publication, of its filing date, and its claimed priority date (if any). In respect of the priority

date of any such document, the report may indicate that, in the opinion of the International Preliminary Examining Authority, such date has not been validly claimed.

70.11 Mention of Amendments If, before the International Preliminary Examining Authority, amendments have been

made, this fact shall be indicated in the report. Where any amendment has resulted in the cancellation of an entire sheet, this fact shall also be specified in the report.

70.12 Mention of Certain Defects and Other Matters

If the International Preliminary Examining Authority considers that, at the time it prepares the report:

(i)
the international application contains any of the defects referred to in Rule
66.2 (a) (iii), it shall include this opinion and the reasons therefor in the report;
(ii)
the international application calls for any of the observations referred to in Rule 66.2 (a) (v), it may include this opinion in the report and, if it does, it shall also indicate in the report the reasons for such opinion,

(iii) any of the situations referred to in Article 34 (4) exists, it shall state this opinion and the reasons therefor in the report;

(iv) a nucleotide and/or amino acid sequence listing is not available to it in such a form that a meaningful international preliminary examination can be carried out, it shall so state in the report.

70.13 Remarks Concerning Unity of Invention If the applicant paid additional fees for the international preliminary examination, or if the international application or the international preliminary examination was restricted

under Article 34 (3), the report shall so indicate. Furthermore, where the international preliminary examination was carried out on restricted claims (Article 34 (3) (a)), or on the main invention only (Article 34 (3) (c)), the report shall indicate what parts of the international application were and what parts were not the subject of international preliminary examination. The report shall contain the indications provided for in Rule 68.1, where the International Preliminary Examining Authority chose not to invite the applicant to restrict the claims or to pay additional fees.

70.14 Authorized Officer

The report shall indicate the name of the officer of the International Preliminary Examining Authority responsible for that report.

70.15 Form; Title

(a)
The physical requirements as to the form of the report shall be prescribed by the Administrative Instructions.
(b)
The report shall bear the title “international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)” together with an indication that it is the international preliminary examination report established by the International Preliminary Examining Authority.

70.16 Annexes to 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.

(abis) 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 rules 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) Not withstanding paragraphs (a) and (abis), 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 Languages of the Report and the Annexes The report and any annex shall be in the language in which the international application to which they relate is published, or, if the international preliminary

examination is carried out, pursuant to Rule 55.2, on the basis of a translation of the international application, in the language of that translation.

Rule 71 Transmittal of the International Preliminary Examination Report

71.1 Recipients 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.

71.2 Copies of Cited Documents

(a)
The request under Article 36 (4) may be presented any time during 7 years from the international filing date of the international application to which the report relates.
(b)
The International Preliminary Examining Authority may require that the party (applicant or elected Office) presenting the request pay to it the cost of preparing and mailing the copies. The level of the cost of preparing copies shall be provided for in the agreements referred to in Article 32 (2) between the International Preliminary Examining Authorities and the International Bureau.
(d)
Any International Preliminary Examining Authority may perform the obligations referred to in paragraphs (a) and (b) through another agency responsible to it.

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Rule 72 Translation of the International Preliminary Examination Report and of the Written Opinion of the International Searching Authority

72.1 Languages

(a)
Any elected State may require that the international preliminary examination report, established in any language other than the official language, or one of the official languages, of its national Office, be translated into English.
(b)
Any such requirement shall be notified to the International Bureau, which shall promptly publish it in the Gazette.

72.2 Copy of Translation for the Applicant The International Bureau shall transmit a copy of the translation referred to in Rule 72.1 (a) of the international preliminary examination report to the applicant at the

same time as it communicates such translation to the interested elected Office or Offices.

72.2bis Translation of the Written Opinion of the International Searching Authority Established Under Rule 43bis.1

In the case referred to in Rule 73.2(b)(ii), the written opinion established by the International Searching Authority under Rule 43bis.1 shall, upon request of the elected Office concerned, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to the elected Office concerned within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.

72.3 Observations on the Translation The applicant may make written observations as to the correctness of the translation of the international preliminary examination report or of the written opinion established by the International Searching Authority under Rule 43bis.1 and shall send a

copy of the observations to each of the interested elected Offices and to the International Bureau.

Rule 73 Communication of the International Preliminary Examination Report or the Written Opinion of the International Searching Authority

73.1 Preparation of Copies

The International Bureau shall prepare the copies of the documents to be communicated under Article 36 (3) (a).

73.2 Communication to Elected Offices

(a)
The International Bureau shall effect the communication provided for in Article 36(3)(a) to each elected Office in accordance with Rule 93bis.1 but not before the expiration of 30 months from the priority date.
(b)
Where the applicant makes an express request to an elected Office under Article 40(2), the International Bureau shall, upon the request of that Office or of the applicant,
(i)
if the international preliminary examination report has already been transmitted to the International Bureau under Rule 71.1, promptly effect the communication provided for in Article 36(3)(a) to that Office;
(ii)
if the international preliminary examination report has not been transmitted to the International Bureau under Rule 71.1, promptly communicate a copy of the written opinion established by the International Searching Authority under Rule 43bis.1 to that Office.
(c)
Where the applicant has withdrawn the demand or any or all elections, the communication provided for in paragraph (a) shall nevertheless be effected, if the International Bureau has received the international preliminary examination report, to the elected Office or Offices affected by the withdrawal.

Rule 74 Translations of Annexes of the International Preliminary Examination Report and Transmittal Thereof

74.1 Contents of Translation and Time Limit for Transmittal Thereof

(a)
Where the furnishing of a translation of the international application is required by the elected Office under Article 39 (1), the applicant shall, within the time limit applicable under Article 39 (1), transmit a translation of any replacement sheet referred to in Rule 70.16 which is annexed to the international preliminary examination report, unless such sheet is in the language of the required translation of the international application. The same time limit shall apply where the furnishing of a translation of the international application to the elected Office must, because of a declaration made under Article 64 (2) (a) (i), be effected within the time limit applicable under Article 22.
(b)
Where the furnishing under Article 39 (1) of a translation of the international application is not required by the elected Office, that Office may require the applicant to furnish, within the time limit applicable under that Article, a translation into the language in which the international application was published of any replacement sheet referred to in Rule 70.16 which is annexed to the international preliminary examination and is not in that language.

Rule 76 Translation of Priority Document; Application of Certain Rules to Procedures before Elected Offices

76.4 Time Limit for Translation of Priority Document

The applicant shall not be required to furnish to any elected Office a translation of the priority document before the expiration of the applicable time limit under Article 39.

76.5 Application of Certain Rules to Procedures Before Elected Offices

Rules 13ter.3, 20.8(c), 22.1(g), 47.1, 49, 49bis, 49ter and 51bis shall apply, provided that:

(i)
any reference in the said Rules to the designated Office or to the designated State shall be construed as a reference to the elected Office or to the elected State, respectively;
(ii)
any reference in the said Rules to Article 22 or Article 24 (2) shall be construed as a reference to Article 39 (1) or Article 39 (3), respectively;

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(iii) the words “international applications filed” in Rule 49.1 (c) shall be replaced by the words “a demand submitted”;

(iv)
for the purposes of Article 39 (1), where an international preliminary examination report has been established, a translation of any amendment under Article 19 shall only be required if that amendment is annexed to that report;
(v)
the reference in Rule 47.1(a) to Rule 47.4 shall be construed as a reference to Rule 61.2(d).

Rule 77 Faculty under Article 39 (1) (b)

77.1 Exercise of Faculty

(a)
Any Contracting State allowing a time limit expiring later than the time limit provided for in Article 39 (1) (a) shall notify the International Bureau of the time limit so fixed.
(b)
Any notification received by the International Bureau under paragraph (a) shall be promptly published by the International Bureau in the Gazette.
(c)
Notifications concerning the shortening of the previously fixed time limit shall be effective in relation to demands submitted after the expiration of 3 months computed from the date on which the notification was published by the International Bureau.
(d)
Notifications concerning the lengthening of the previously fixed time limit shall become effective upon publication by the International Bureau in the Gazette in respect of demands pending at the time or submitted after the date of such publication, or, if the Contracting State effecting the notification fixes some later date, as from the latter date.

Rule 78 Amendment of the Claims, the Description, and the Drawings, before Elected Offices

78.1 Time Limit

(a)
The applicant shall, if he so wishes, exercise the right under Article 41 to amend the claims, the description and the drawings, before the elected Office concerned within one month from the fulfilment of the requirements under Article 39 (1) (a), provided that, if the transmittal of the international preliminary examination report under Article 36 (1) has not taken place by the expiration of the time limit applicable under Article 39, he shall exercise the said right not later than four months after such expiration date. In either case, the applicant may exercise the said right at any later time if so permitted by the national law of the said State.
(b)
In any elected State in which the national law provides that examination starts only on special request, the national law may provide that the time limit within or the time at which the applicant may exercise the right under Article 41 shall be the same as that provided by the national law for the filing of amendments in the case of the examination, on special request, of national applications, provided that such time limit shall not expire prior to, or such time shall not come before, the expiration of the time limit applicable under paragraph (a).

78.3 Utility Models The provisions of Rules 6.5 and 13.5 shall apply, mutatis mutandis, before elected Offices. If the election was made before the expiration of the 19th month from the priority

date, the reference to the time limit applicable under Article 22 is replaced by a reference to the time limit applicable under Article 39.

PART D

Rules Concerning Chapter III of the Treaty

Rule 79 Calendar

79.1 Expressing Dates

Applicants, national Offices, receiving Offices, International Searching and Preliminary Examining Authorities, and the International Bureau, shall, for the purposes of the Treaty and the Regulations, express any date in terms of the Christian era and the Gregorian calendar, or, if they use other eras and calendars, they shall also express any date in terms of the Christian era and the Gregorian calendar.

Rule 80 Computation of Time Limits

80.1 Periods Expressed in Years When a period is expressed as one year or a certain number of years, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent year in the month having the same name and on the day having the same number as the month and the day on which the said

event occurred provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.

80.2 Periods Expressed in Months When a period is expressed as one month or a certain number of months, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent month on the day which has the same number as the day on which the said event occurred, provided that if the

relevant subsequent month has no day with the same number the period shall expire on the last day of that month.

80.3 Periods Expressed in Days When a period is expressed as a certain number of days, computation shall start on

the day following the day on which the relevant event occurred, and the period shall expire on the day on which the last day of the count has been reached.

80.4 Local Dates

(a)
The date which is taken into consideration as the starting date of the computation of any period shall be the date which prevails in the locality at the time when the relevant event occurred.
(b)
The date on which any period expires shall be the date which prevails in the locality in which the required document must be filed or the required fee must be paid.

80.5 Expiration on a Non-Working Day or Official Holiday

If the expiration of any period during which any document or fee must reach a national Office or intergovernmental organization falls on a day:

(i)
on which such Office or organization is not open to the public for the purposes of the transaction of official business;
(ii)
on which ordinary mail is not delivered in the locality in which such Office or organization is situated;

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(iii) which, where such Office or organization is situated in more than one locality, is an official holiday in at least one of the localities in which such Office or organization is situated, and in circumstances where the national law applicable by that Office or organization provides, in respect of national applications, that, in such a case, such period shall expire on a subsequent day; or

(iv) which, where such Office is the government authority of a Contracting State entrusted with the granting of patents, is an official holiday in part of that Contracting State, and in circumstances where the national law applicable by that Office provides, in respect of national applications, that, in such a case, such period shall expire on a subsequent day;

the period shall expire on the next subsequent day on which none of the said four circumstances exists.

80.6 Date of Documents Where a period starts on the day of the date of a document or letter emanating from a national Office or intergovernmental organization, any interested party may prove that the said document or letter was mailed on a day later than the date it bears, in which case the date of actual mailing shall, for the purposes of computing the period, be considered to be the date on which the period starts. Irrespective of the date on which such a document or letter was mailed, if the applicant offers to the national Office or intergovernmental organization evidence which satisfies the national Office or intergovernmental organization that the document or letter was received more than 7 days after the date it bears, the national Office or intergovernmental organization shall treat the period starting from the date of the document or letter as expiring later by an

additional number of days which is equal to the number of days which the document or letter was received later than 7 days after the date it bears.

80.7 End of Working Day

(a)
A period expiring on a given day shall expire at the moment the national Office or intergovernmental organization with which the document must be filed or to which the fee must be paid closes for business on that day.
(b)
Any Office or organization may depart from the provisions of paragraph (a) up to midnight on the relevant day.

Rule 81 Modification of Time Limits Fixed in the Treaty

81.1 Proposal

(a)
Any Contracting State or the Director General may propose a modification under Article 47 (2).
(b)
Proposals made by a Contracting State shall be presented to the Director General.

81.2 Decision by the Assembly

(a)
When the proposal is made to the Assembly, its text shall be sent by the Director General to all Contracting States at least 2 months in advance of that session of the Assembly whose agenda includes the proposal.
(b)
During the discussion of the proposal in the Assembly, the proposal may be amended or consequential amendments proposed.
(c)
The proposal shall be considered adopted if none of the Contracting States present at the time of voting votes against the proposal.

81.3 Voting by Correspondence

(a)
When voting by correspondence is chosen, the proposal shall be included in a written communication from the Director General to the Contracting States, inviting them to express their vote in writing.
(b)
The invitation shall fix the time limit within which the reply containing the vote expressed in writing must reach the International Bureau. That time limit shall not be less than 3 months from the date of the invitation.
(c)
Replies must be either positive or negative. Proposals for amendments or mere observations shall not be regarded as votes.
(d)
The proposal shall be considered adopted if none of the Contracting States opposes the amendment and if at least one-half of the Contracting States express either approval or indifference or abstention.

Rule 82 Irregularities in the Mail Service

82.1 Delay or Loss in Mail

(a)
Any interested party may offer evidence that he has mailed the document or letter 5 days prior to the expiration of the time limit. Except in cases where surface mail normally arrives at its destination within 2 days of mailing, or where no airmail service is available, such evidence may be offered only if the mailing was by airmail. In any case, evidence may be offered only if the mailing was by mail registered by the postal authorities.
(b)
If the mailing, in accordance with paragraph (a), of a document or letter is proven to the satisfaction of the national Office or intergovernmental organization which is the addressee, delay in arrival shall be excused, or, if the document or letter is lost in the mail, substitution for it of a new copy shall be permitted, provided that the interested party proves to the satisfaction of the said Office or organization that the document or letter offered in substitution is identical with the document or letter lost.
(c)
In the cases provided for in paragraph (b), evidence of mailing within the prescribed time limit, and, where the document or letter was lost, the substitute document or letter as well as the evidence concerning its identity with the document or letter lost, shall be submitted within 1 month after the date on which the interested party noticed—or with due diligence should have noticed—the delay or loss, and in no case later than 6 months after the expiration of the time limit applicable in the given case.
(d)
Any national Office or intergovernmental organization which has notified the International Bureau that it will do so shall, where a delivery service other than the postal authorities is used to mail a document or letter, apply the provisions of paragraphs (a) to
(c)
as if the delivery service was a postal authority. In such a case, the last sentence of paragraph (a) shall not apply but evidence may be offered only if details of the mailing were recorded by the delivery service at the time of mailing. The notification may contain an indication that it applies only to mailings using specified delivery services or delivery services which satisfy specified criteria. The International Bureau shall publish the information so notified in the Gazette.
(e)
Any national Office or intergovernmental organization may proceed under paragraph (d):
(i)
even if, where applicable, the delivery service used was not one of those specified, or did not satisfy the criteria specified, in the relevant notification under paragraph (d), or
(ii)
even if that Office or organization has not sent to the International Bureau a notification under paragraph (d).

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82.2 Interruption in the Mail Service

(a)
Any interested party may offer evidence that on any of the 10 days preceding the day of expiration of the time limit the postal service was interrupted on account of war, revolution, civil disorder, strike, natural calamity, or other like reason, in the locality where the interested party resides or has his place of business or is staying.
(b)
If such circumstances are proven to the satisfaction of the national Office or intergovernmental organization which is the addressee, delay in arrival shall be excused, provided that the interested party proves to the satisfaction of the said Office or organization that he effected the mailing within 5 days after the mail service was resumed. The provisions of Rule 82.1 (c) shall apply mutatis mutandis.

Rule 82bis. Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits

82bis.1 Meaning of “Time Limit” in Article 48 (2)

The reference to “any time limit” in Article 48 (2) shall be construed as comprising a reference:

(i)
to any time limit fixed in the Treaty or these Regulations;
(ii)
to any time limit fixed by the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau or applicable by the receiving Office under its national law;

(iii) to any time limit fixed by, or in the national law applicable by, the designated or elected Office, for the performance of any act by the applicant before that Office.

82bis.2 Reinstatement of Rights and Other Provisions to which Article 48 (2) Applies

The provisions of the national law which is referred to in Article 48 (2) concerning the excusing, by the designated or elected State, of any delay in meeting any time limit are those provisions which provide for reinstatement of rights, restoration, restitutio in integrum or further processing in spite of non-compliance with a time limit, and any other provision providing for the extension of time limits or for excusing delays in meeting time limits.

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)
If the applicant proves to the satisfaction of any designated or elected Office that the international filing date is incorrect due to an error made by the receiving Office or that the priority claim has been erroneously considered void by the receiving Office or the International Bureau, and if the error is an error such that, had it been made by the designated or elected Office itself, that Office would rectify it under the national law or national practice, the said Office shall rectify the error and shall treat the international
application as if it had been accorded the rectified international filing date or as if the priority claim had not been considered void.
(b)
Where the international filing date has been accorded by the receiving Office under Rule 20.3 (b) (ii) or 20.5 (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 (bbis) 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) or 20.5 (b), or corrected under Rule 20.5 (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) or 20.5 (b), or corrected under Rule 20.5 (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), 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 be disregarded for the purposes of national processing before that Office, in which case that 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 83 Right to Practice before International Authorities

83.1 Proof of Right The International Bureau, the competent International Searching Authority, and the

competent International Preliminary Examining Authority, may require the production of proof of the right to practice referred to in Article 49.

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.

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83.2 Information

(a)
The national Office or the intergovernmental organization which the interested person is alleged to have a right to practice before shall, upon request, inform the International Bureau, the competent International Searching Authority, or the competent International Preliminary Examining Authority, whether such person has the right to practice before it.
(b)
Such information shall be binding upon the International Bureau, the International Searching Authority, or the International Preliminary Examining Authority, as the case may be.

PART E

Rules Concerning Chapter V of the Treaty

Rule 84 Expenses of Delegations

84.1 Expenses Borne by Governments

The expenses of each Delegation participating in any organ established by or under the Treaty shall be borne by the Government which has appointed it.

Rule 85 Absence of Quorum in the Assembly

85.1 Voting by Correspondence In the case provided for in Article 53 (5) (b), the International Bureau shall communicate the decisions of the Assembly (other than those concerning the Assembly’s own procedure) to the Contracting States which were not represented and shall invite them to express in writing their vote or abstention within a period of 3 months from the date of the communication. If, at the expiration of that period, the number of Contracting States having thus expressed their vote or abstention attains the number of Contracting States which was lacking for attaining the quorum in the session itself, such

decisions shall take effect provided that at the same time the required majority still obtains.

Rule 86 The Gazette

86.1 Contents The Gazette referred to in Article 55 (4) shall contain:

(i)
for each published international application, the data specified by the Administrative Instructions taken from the front page of the publication of the international application, the drawing (if any) appearing on the said front page, and the abstract;
(ii)
the schedule of all fees payable to the receiving Offices, the International Bureau, and the International Searching and Preliminary Examining Authorities;

(iii) notices the publication of which is required under the Treaty or these Regulations;

(iv) information, if and to the extent furnished to the International Bureau by the designated or elected Offices, on the question whether the requirements provided for in Articles 22 or 39 have been complied with in respect of the international applications designating or electing the Office concerned;

(v) any other useful information prescribed by the Administrative Instructions, provided access to such information is not prohibited under the Treaty or these Regulations.

86.2 Languages; Form and Means of Publication; Timing

(a)
The Gazette shall be published in English and French at the same time. The translations shall be ensured by the International Bureau in English and French.
(b)
The Assembly may order the publication of the Gazette in languages other than those referred to in paragraph (a).
(c)
The form in which and the means by which the Gazette is published shall be governed by the Administrative Instructions.
(d)
The International Bureau shall ensure that, for each published international application, the information referred to in Rule 86.1 (i) is published in the Gazette on, or as soon as possible after, the date of publication of the international application.

86.3 Frequency

The frequency of publication of the Gazette shall be determined by the Director General.

86.4 Sale

The subscription and other sale prices of the Gazette shall be determined by the Director General.

86.5 Title The title of the Gazette shall be determined by the Director General.

86.6 Further Details

Further details concerning the Gazette may be provided for in the Administrative Instructions.

Rule 87 Communication of Publications

87.1 Communication of Publications on Request The International Bureau shall communicate, free of charge, every published international application, the Gazette and any other publication of general interest published by the International Bureau in connection with the Treaty or these Regulations, to International Searching Authorities, International Preliminary Examining Authorities and national Offices upon request by the Authority or Office concerned. Further details

concerning the form in which and the means by which publications are communicated shall be governed by the Administrative Instructions.

Rule 88 Amendment of the Regulations

88.1 Requirement of Unanimity

Amendment of the following provisions of these Regulations shall require that no State having the right to vote in the Assembly vote against the proposed amendment:

(i) Rule 14.1 (Transmittal Fee),

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(iii) Rule 22.3 (Time Limit Under Article 12 (3)),

(iv)
Rule 33 (Relevant Prior Art for International Search),
(v)
Rule 64 (Prior Art for International Preliminary Examination),
(vi)
Rule 81 (Modification of Time Limits Fixed in the Treaty),

(vii) the present paragraph (i.e., Rule 88.1).

88.3 Requirement of Absence of Opposition by Certain States Amendment of the following provisions of these Regulations shall require that no

State referred to in Article 58 (3) (a) (ii) and having the right to vote in the Assembly vote against the proposed amendment:

(i)
Rule 34 (Minimum Documentation),
(ii)
Rule 39 (Subject Matter Under Article 17 (2) (a) (i)),

(iii) Rule 67 (Subject Matter Under Article 34 (4) (a) (i)),

(iv) the present paragraph (i.e., Rule 88.3).

88.4 Procedure Any proposal for amending a provision referred to in Rules 88.1 or 88.3 shall, if the proposal is to be decided upon in the Assembly, be communicated to all Contracting

States at least 2 months prior to the opening of that session of the Assembly which is called upon to make a decision on the proposal.

Rule 89 Administrative Instructions

89.1 Scope

(a)
The Administrative Instructions shall contain provisions:
(i)
concerning matters in respect of which these Regulations expressly refer to such Instructions,
(ii)
concerning any details in respect of the application of these Regulations.
(b)
The Administrative Instructions shall not be in conflict with the provisions of the Treaty, these Regulations, or any agreement concluded by the International Bureau with an International Searching Authority, or an International Preliminary Examining Authority.

89.2 Source

(a)
The Administrative Instructions shall be drawn up and promulgated by the Director General after consultation with the receiving Offices and the International Searching and Preliminary Examining Authorities.
(b)
They may be modified by the Director General after consultation with the Offices or Authorities which have a direct interest in the proposed modification.
(c)
The Assembly may invite the Director General to modify the Administrative Instructions, and the Director General shall proceed accordingly.

89.3 Publication and Entry Into Force

(a)
The Administrative Instructions and any modification thereof shall be published in the Gazette.
(b)
Each publication shall specify the date on which the published provisions come into effect. The dates may be different for different provisions, provided that no provision may be declared effective prior to its publication in the Gazette.

PART F

Rules Concerning Several Chapters of the Treaty

Rule 89bis Filing, Processing and Transmission of International Applications and Other Documents in Electronic Form or by Electronic Means

89bis.1 International Applications

(a)
International applications may, subject to paragraphs (b) to (e), be filed and processed in electronic form or by electronic means, in accordance with the Administrative Instructions, provided that any receiving Office shall permit the filing of international applications on paper.
(b)
These Regulations shall apply mutatis mutandis to international applications filed in electronic form or by electronic means, subject to any special provisions of the Administrative Instructions.
(c)
The Administrative Instructions shall set out the provisions and requirements in relation to the filing and processing of international applications filed, in whole or in part, in electronic form or by electronic means, including but not limited to, provisions and requirements in relation to acknowledgment of receipt, procedures relating to the according of an international filing date, physical requirements and the consequences of non-compliance with those requirements, signature of documents, means of authentication of documents and of the identity of parties communicating with Offices and authorities, and the operation of Article 12 in relation to the home copy, the record copy and the search copy, and may contain different provisions and requirements in relation to international applications filed in different languages.
(d)
No national Office or intergovernmental organization shall be obliged to receive or process international applications filed in electronic form or by electronic means unless it has notified the International Bureau that it is prepared to do so in compliance with the applicable provisions of the Administrative Instructions. The International Bureau shall publish the information so notified in the Gazette.
(e)
No receiving Office which has given the International Bureau a notification under paragraph (d) may refuse to process an international application filed in electronic form or by electronic means which complies with the applicable requirements under the Administrative Instructions.

89bis.2 Other Documents

Rule 89bis.1 shall apply mutatis mutandis to other documents and correspondence relating to international applications.

89bis.3 Communication Between Offices

Where the Treaty, these Regulations or the Administrative Instructions provide for the communication, notification or transmittal (“communication”) of an international application, notification, communication, correspondence or other document by one national Office or intergovernmental organization to another, such communication may, where so agreed by both the sender and the receiver, be effected in electronic form or by electronic means.

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Rule 89ter . Copies in Electronic Form of Documents Filed on Paper

89ter.1

Copies in Electronic Form of Documents Filed on Paper

Any national Office or intergovernmental organization may provide that, where an international application or other document relating to an international application is filed on paper, a copy thereof in electronic form, in accordance with the Administrative Instructions, may be furnished by the applicant.

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, any Authority specified for supplementary search and the International Preliminary Examining Authority.
(b)
A person having the right to practice before the national Office or intergovernmental organization which acts as the International Searching Authority may be appointed by the applicant as his agent to represent him specifically before that Authority.
(b-bis) A person having the right to practice before the national Office or intergovernmental organization which acts as the Authority specified for supplementary search may be appointed by the applicant as his agent to represent him specifically before that Authority.
(c)
A person having the right to practice before the national Office or intergovernmental organization which acts as the International Preliminary Examining Authority may be appointed by the applicant as his agent to represent him specifically before that Authority.
(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, any Authority specified for supplementary search 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)
specifically before the International Searching Authority, any Authority specified for supplementary search or the International Preliminary Examining Authority, provided that any person so appointed as sub-agent has the right to practice before the national Office or intergovernmental organization which acts as the International Searching Authority, the Authority specified for supplementary search or International Preliminary Examining Authority, as the case may be.

90.2 Common Representative

(a)
Where there are two or more applicants and the applicants have not appointed an agent representing all of them (“a common agent”) under Rule 90.1 (a), one of the applicants who is entitled to file an international application according to Article 9 may be appointed by the other applicants as their common representative.
(b)
Where there are two or more applicants and all the applicants have not appointed a common agent under Rule 90.1 (a) or a common representative under paragraph (a), the applicant first named in the request who is entitled according to Rule 19.1 to file an international application with the receiving Office shall be considered to be the common representative of all the applicants.

90.3 Effects of Acts by or in Relation to Agents and Common Representatives

(a)
Any act by or in relation to an agent shall have the effect of an act by or in relation to the applicant or applicants concerned.
(b)
If there are two or more agents representing the same applicant or applicants, any act by or in relation to any of those agents shall have the effect of an act by or in relation to the said applicant or applicants.
(c)
Subject to Rule 90bis.5 (a), second sentence, any act by or in relation to a common representative or his agent shall have the effect of an act by or in relation to all the applicants.

90.4 Manner of Appointment of Agent or Common Representative

(a)
The appointment of an agent shall be effected by the applicant signing the request, the demand or a separate power of attorney. Where there are two or more applicants, the appointment of a common agent or common representative shall be effected by each applicant signing, at his choice, the request, the demand or a separate power of attorney.
(b)
Subject to Rule 90.5, a separate power of attorney shall be submitted to either the receiving Office or the International Bureau, provided that, where a power of attorney appoints an agent under Rule 90.1(b), (b-bis), (c) or (d)(ii), it shall be submitted to the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, as the case may be.
(c)
If the separate power of attorney is not signed, or if the required separate power of attorney is missing, or if the indication of the name or address of the appointed person does not comply with Rule 4.4, the power of attorney shall be considered non-existent unless the defect is corrected.
(d)
Subject to paragraph (e), any receiving Office, any International Searching Authority, any Authority competent to carry out supplementary searches, any International Preliminary Examining Authority and the International Bureau may waive the requirement under paragraph (b) that a separate power of attorney be submitted to it, in which case paragraph (c) shall not apply.
(e)
Where the agent or the common representative submits any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4, the requirement under paragraph (b) for a separate power of attorney shall not be waived under paragraph (d).

90.5 General Power of Attorney

(a) Appointment of an agent in relation to a particular international application may be effected by referring in the request, the demand or a separate notice to an existing separate power of attorney appointing that agent to represent the applicant in relation to

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any international application which may be filed by that applicant (i.e., a “general power of attorney”), provided that:

(i)
the general power of attorney has been deposited in accordance with paragraph (b), and
(ii)
a copy of it is attached to the request, the demand or the separate notice, as the case may be; that copy need not be signed.
(b)
The general power of attorney shall be deposited with the receiving Office, provided that, where it appoints an agent under Rule 90.1(b), (b-bis), (c) or (d)(ii), it shall be deposited with the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, as the case may be.
(c)
Any receiving Office, any International Searching Authority, any Authority competent to carry out supplementary searches and any International Preliminary Examining Authority may waive the requirement under paragraph (a)(ii) that a copy of the general power of attorney is attached to the request, the demand or the separate notice, as the case may be.
(d)
Notwithstanding paragraph (c), where the agent submits any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 to the receiving Office, the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, as the case may be, a copy of the general power of attorney shall be submitted to that Office or Authority.

90.6 Revocation and Renunciation

(a)
Any appointment of an agent or common representative may be revoked by the persons who made the appointment or by their successors in title, in which case any appointment of a sub-agent under Rule 90.1 (d) by that agent shall also be considered as revoked. Any appointment of a sub-agent under Rule 90.1 (d) may also be revoked by the applicant concerned.
(b)
The appointment of an agent under Rule 90.1 (a) shall, unless otherwise indicated, have the effect of revoking any earlier appointment of an agent made under that Rule.
(c)
The appointment of a common representative shall, unless otherwise indicated, have the effect of revoking any earlier appointment of a common representative.
(d)
An agent or a common representative may renounce his appointment by a notification signed by him.
(e)
Rule 90.4 (b) and (c) shall apply, mutatis mutandis, to a document containing a revocation or renunciation under this Rule.

Rule 90bis Withdrawals

90bis.1

Withdrawal of the International Application

(a)
The applicant may withdraw the international application at any time prior to the expiration of 30 months from the priority date.
(b)
Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39 (1) applies, to the International Preliminary Examining Authority.
(c)
No international publication of the international application shall be effected if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the

International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.

90bis.2 Withdrawal of Designations

(a)
The applicant may withdraw the designation of any designated State at any time prior to the expiration of 30 months from the priority date. Withdrawal of the designation of a State which has been elected shall entail withdrawal of the corresponding election under Rule 90bis.4.
(b)
Where a State has been designated for the purpose of obtaining both a national patent and a regional patent, withdrawal of the designation of that State shall be taken to mean withdrawal of only the designation for the purpose of obtaining a national patent, except where otherwise indicated.
(c)
Withdrawal of the designations of all designated States shall be treated as withdrawal of the international application under Rule 90bis.1.
(d)
Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39 (1) applies, to the International Preliminary Examining Authority.
(e)
No international publication of the designation shall be effected if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.

90bis.3 Withdrawal of Priority Claims

(a)
The applicant may withdraw a priority claim, made in the international application under Article 8 (1), at any time prior to the expiration of 30 months from the priority date.
(b)
Where the international application contains more than one priority claim, the applicant may exercise the right provided for in paragraph (a) in respect of one or more or all of the priority claims.
(c)
Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39 (1) applies, to the International Preliminary Examining Authority.
(d)
Where the withdrawal of a priority claim causes a change in the priority date, any time limit which is computed from the original priority date and which has not already expired shall, subject to paragraph (e), be computed from the priority date resulting from that change.
(e)
In the case of the time limit referred to in Article 21 (2) (a), the International Bureau may nevertheless proceed with the international publication on the basis of the said time limit as computed from the original priority date if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau after the completion of the technical preparations for international publication.

90bis.3bis Withdrawal of Supplementary Search Request

(a)
The applicant may withdraw a supplementary search request at any time prior to the date of transmittal to the applicant and to the International Bureau, under Rule 45bis.8(a), of the supplementary international search report or the declaration that no such report will be established.
(b)
Withdrawal shall be effective on receipt, within the time limit under paragraph (a), of a notice addressed by the applicant, at his option, to the Authority specified for supplementary search or to the International Bureau, provided that, where the notice does not reach the Authority specified for supplementary search in sufficient time to prevent the transmittal of the report or declaration referred to in paragraph (a), the communication of that report or declaration under Article 20(1), as applicable by virtue of Rule 45bis.8(b), shall nevertheless be effected.

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90bis.4 Withdrawal of the Demand, or of Elections

(a)
The applicant may withdraw the demand or any or all elections at any time prior to the expiration of 30 months from the priority date.
(b)
Withdrawal shall be effective upon receipt of a notice addressed by the applicant to the International Bureau.
(c)
If the notice of withdrawal is submitted by the applicant to the International Preliminary Examining Authority, that Authority shall mark the date of receipt on the notice and transmit it promptly to the International Bureau. The notice shall be considered to have been submitted to the International Bureau on the date marked.

90bis.5 Signature

(a)
Any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 shall, subject to paragraph (b), be signed by the applicant or, if there are two or more applicants, by all of them. An applicant who is considered to be the common representative under Rule 90.2(b) shall, subject to paragraph (b), not be entitled to sign such a notice on behalf of the other applicants.
(b)
Where two or more applicants file an international application which designates a State whose national law requires that national applications be filed by the inventor and where an applicant for that designated State who is an inventor could not be found or reached after diligent effort, a notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 need not be signed by that applicant (“the applicant concerned”) if it is signed by at least one applicant and
(i)
a statement is furnished explaining, to the satisfaction of the receiving Office, the International Bureau, the Authority carrying out the supplementary international search or the International Preliminary Examining Authority, as the case may be, the lack of signature of the applicant concerned, or
(ii)
in the case of a notice of withdrawal referred to in Rule 90bis.1 (b), 90bis.2 (d), 90bis.3 (c) or 90bis.3bis (b) the applicant concerned did not sign the request but the requirements of Rule 4.15 (b) were complied with, or

(iii) in the case of a notice of withdrawal referred to in Rule 90bis.4 (b), the applicant concerned did not sign the demand but the requirements of Rule 53.8 (b) were complied with.

90bis.6 Effect of Withdrawal

(a)
Withdrawal under Rule 90bis of the international application, any designation, any priority claim, the demand or any election shall have no effect in any designated or elected Office where the processing or examination of the international application has already started under Article 23 (2) or Article 40 (2).
(b)
Where the international application is withdrawn under Rule 90bis.1, the international processing of the international application shall be discontinued.
(b-bis) Where a supplementary search request is withdrawn under Rule 90bis.3bis, the supplementary international search by the Authority concerned shall be discontinued.
(c)
Where the demand or all elections are withdrawn under Rule 90bis.4, the processing of the international application by the International Preliminary Examining Authority shall be discontinued.

90bis.7 Faculty under Article 37 (4) (b)

(a)
Any Contracting State whose national law provides for what is described in the second part of Article 37 (4) (b) shall notify the International Bureau in writing.
(b)
The notification referred to in paragraph (a) shall be promptly published by the International Bureau in the Gazette, and shall have effect in respect of international applications filed more than one month after the date of such publication.

Rule 91 Rectification of Obvious Mistakes in the International Application and Other Documents

91.1 Rectification of Obvious Mistakes

(a)
An obvious mistake in the international application or another document submitted by the applicant may be rectified in accordance with this Rule if the applicant so requests.
(b)
The rectification of a mistake shall be subject to authorization by the “competent authority”, that is to say:
(i)
in the case of a mistake in the request part of the international application or in a correction thereof—by the receiving Office;
(ii)
in the case of a mistake in the description, claims or drawings or in a correction thereof, unless the International Preliminary Examining Authority is competent under item (iii)—by the International Searching Authority;

(iii) in the case of a mistake in the description, claims or drawings or in a correction thereof, or in an amendment under Article 19 or 34, where a demand for international preliminary examination has been made and has not been withdrawn and the date on which international preliminary examination shall start in accordance with Rule 69.1 has passed—by the International Preliminary Examining Authority;

(iv)
in the case of a mistake in a document not referred to in items (i) to (iii) submitted to the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau, other than a mistake in the abstract or in an amendment under Article 19—by that Office, Authority or Bureau, as the case may be.
(c)
The competent authority shall authorize the rectification under this Rule of a mistake if, and only if, it is obvious to the competent authority that, as at the applicable date under paragraph (f), something else was intended than what appears in the document concerned and that nothing else could have been intended than the proposed rectification.
(d)
In the case of a mistake in the description, claims or drawings or in a correction or amendment thereof, the competent authority shall, for the purposes of paragraph (c), only take into account the contents of the description, claims and drawings and, where applicable, the correction or amendment concerned.
(e)
In the case of a mistake in the request part of the international application or a correction thereof, or in a document referred to in paragraph (b) (iv), the competent authority shall, for the purposes of paragraph (c), only take into account the contents of the international application itself and, where applicable, the correction concerned, or the document referred to in paragraph (b) (iv), together with any other document submitted with the request, correction or document, as the case may be, any priority document in respect of the international application that is available to the authority in accordance with the Administrative Instructions, and any other document contained in the authority’s international application file at the applicable date under paragraph (f).
(f)
The applicable date for the purposes of paragraphs (c) and (e) shall be:
(i)
in the case of a mistake in a part of the international application as filed— the international filing date;
(ii)
in the case of a mistake in a document other than the international application as filed, including a mistake in a correction or an amendment of the international application—the date on which the document was submitted.
(g)
A mistake shall not be rectifiable under this Rule if:
(i)
the mistake lies in the omission of one or more entire elements of the international application referred to in Article 3 (2) or one or more entire sheets of the international application;
(ii)
the mistake is in the abstract;

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(iii) the mistake is in an amendment under Article 19, unless the International Preliminary Examining Authority is competent to authorize the rectification of such mistake under paragraph (b) (iii); or

(iv) the mistake is in a priority claim or in a notice correcting or adding a priority claim under Rule 26bis.1 (a), where the rectification of the mistake would cause a change in the priority date;

provided that this paragraph shall not affect the operation of Rules 20.4, 20.5, 26bis and

38.3.

(h) Where the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau discovers what appears to be a rectifiable obvious mistake in the international application or another document, it may invite the applicant to request rectification under this Rule.

91.2 Requests for Rectification A request for rectification under Rule 91.1 shall be submitted to the competent authority within 26 months from the priority date. It shall specify the mistake to be rectified and the proposed rectification, and may, at the option of the applicant, contain a

brief explanation. Rule 26.4 shall apply mutatis mutandis as to the manner in which the proposed rectification shall be indicated.

91.3 Authorization and Effect of Rectifications

(a)
The competent authority shall promptly decide whether to authorize or refuse to authorize a rectification under Rule 91.1 and shall promptly notify the applicant and the International Bureau of the authorization or refusal and, in the case of refusal, of the reasons therefor. The International Bureau shall proceed as provided for in the Administrative Instructions, including, as required, notifying the receiving Office, the International Searching Authority, the International Preliminary Examining Authority and the designated and elected Offices of the authorization or refusal.
(b)
Where the rectification of an obvious mistake has been authorized under Rule 91.1, the document concerned shall be rectified in accordance with the Administrative Instructions.
(c)
Where the rectification of an obvious mistake has been authorized, it shall be effective:
(i)
in the case of a mistake in the international application as filed, from the international filing date;
(ii)
in the case of a mistake in a document other than the international application as filed, including a mistake in a correction or an amendment of the international application, from the date on which that document was submitted.
(d)
Where the competent authority refuses to authorize a rectification under Rule 91.1, the International Bureau shall, upon request submitted to it by the applicant within two months from the date of the refusal, and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, publish the request for rectification, the reasons for refusal by the authority and any further brief comments that may be submitted by the applicant, if possible together with the international application. A copy of the request, reasons and comments (if any) shall if possible be included in the communication under Article 20 where the international application is not published by virtue of Article 64 (3).
(e)
The rectification of an obvious mistake need not be taken into account by any designated Office in which the processing or examination of the international application has already started prior to the date on which that Office is notified under Rule 91.3 (a) of the authorization of the rectification by the competent authority.
(f)
A designated Office may disregard a rectification that was authorized under Rule 91.1 only if it finds that it would not have authorized the rectification under Rule 91.1 if it had been the competent authority, provided that no designated Office shall disregard any rectification that was authorized under Rule 91.1 without giving the applicant the opportunity to make observations, within a time limit which shall be reasonable under the circumstances, on the Office’s intention to disregard the rectification.

Rule 92 Correspondence

92.1 Need for Letter and for Signature

(a)
Any paper submitted by the applicant in the course of the international procedure provided for in the Treaty and these Regulations, other than the international application itself, shall, if not itself in the form of a letter, be accompanied by a letter identifying the international application to which it relates. The letter shall be signed by the applicant.
(b)
If the requirements provided for in paragraph (a) are not complied with, the applicant shall be informed as to the non-compliance and be invited to remedy the omission within a time limit fixed in the invitation. The time limit so fixed shall be reasonable in the circumstances; even where the time limit so fixed expires later than the time limit applying to the furnishing of the paper (or even if the latter time limit has already expired), it shall be not less than 10 days and not more than one month from the mailing of the invitation. If the omission is remedied within the time limit fixed in the invitation, the omission shall be disregarded; otherwise, the applicant shall be informed that the paper has been disregarded.
(c)
Where non-compliance with the requirements provided for in paragraph (a) has been overlooked and the paper taken into account in the international procedure, the non-compliance shall be disregarded.

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92.2 Languages

(a)
Subject to Rules 55.1 and 66.9 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)
Any letter from the applicant to the International Searching Authority or the International Preliminary Examining Authority may be in a language other than that of the international application, provided the said Authority authorized the use of such language.
(d)
Any letter from the applicant to the International Bureau shall be in English or French.
(e)
Any letter or notification from the International Bureau to the applicant or to any national Office shall be in English or French.

92.3 Mailings by National Offices and Intergovernmental Organizations Any document or letter emanating from or transmitted by a national Office or an intergovernmental organization and constituting an event from the date of which any time limit under the Treaty or these Regulations commences to run shall be sent by air mail, provided that surface mail may be used instead of air mail in cases where surface mail

normally arrives at its destination within two days from mailing or where air mail service is not available.

92.4 Use of Telegraph, Teleprinter, Facsimile Machine, Etc.

(a)
A document making up the international application, and any later document or correspondence relating thereto, may, notwithstanding the provisions of Rules 11.14 and 92.1 (a), but subject to paragraph (h), be transmitted, to the extent feasible, by telegraph, teleprinter, facsimile machine or other like means of communication resulting in the filing of a printed or written document.
(b)
A signature appearing on a document transmitted by facsimile machine shall be recognized for the purposes of the Treaty and these Regulations as a proper signature.
(c)
Where the applicant has attempted to transmit a document by any of the means referred to in paragraph (a) but part or all of the received document is illegible or part of the document is not received, the document shall be treated as not having been received to the extent that the received document is illegible or that the attempted transmission failed. The national Office or intergovernmental organization shall promptly notify the applicant accordingly.
(d)
Any national Office or intergovernmental organization may require that the original of any document transmitted by any of the means referred to in paragraph (a) and an accompanying letter identifying that earlier transmission be furnished within 14 days from the date of the transmission, provided that such requirement has been notified to the International Bureau and the International Bureau has published information thereon in the Gazette. The notification shall specify whether such requirement concerns all or only certain kinds of documents.
(e)
Where the applicant fails to furnish the original of a document as required under paragraph (d), the national Office or intergovernmental organization concerned may, depending on the kind of document transmitted and having regard to Rules 11 and 26.3,
(i)
waive the requirement under paragraph (d), or
(ii)
invite the applicant to furnish, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation, the original of the document transmitted,

provided that, where the document transmitted contains defects, or shows that the original contains defects, in respect of which the national Office or intergovernmental organization may issue an invitation to correct, that Office or organization may issue such an invitation in addition to, or instead of, proceeding under item (i) or (ii).

(f)
Where the furnishing of the original of a document is not required under paragraph (d) but the national Office or intergovernmental organization considers it necessary to receive the original of the said document, it may issue an invitation as provided for under paragraph (e) (ii).
(g)
If the applicant fails to comply with an invitation under paragraph (e) (ii) or (f):
(i)
where the document concerned is the international application, the latter shall be considered withdrawn and the receiving Office shall so declare;
(ii)
where the document concerned is a document subsequent to the international application, the document shall be considered as not having been submitted.
(h)
No national Office or intergovernmental organization shall be obliged to receive any document submitted by a means referred to in paragraph (a) unless it has notified the International Bureau that it is prepared to receive such a document by that means and the International Bureau has published information thereon in the Gazette.

Rule 92bis Recording of Changes in Certain Indications in the Request or the Demand

92bis.1 Recording of Changes by the International Bureau

(a)
The International Bureau shall, on the request of the applicant or the receiving Office, record changes in the following indications appearing in the request or demand:
(i)
person, name, residence, nationality or address of the applicant,
(ii)
person, name or address of the agent, the common representative or the inventor.
(b)
The International Bureau shall not record the requested change if the request for recording is received by it after the expiration of 30 months from the priority date.

Rule 93 Keeping of Records and Files

93.1 The Receiving Office Each receiving Office shall keep the records relating to each international application or purported international application, including the home copy, for at least 10 years from

the international filing date or, where no international filing date is accorded, from the date of receipt.

93.2 The International Bureau

(a)
The International Bureau shall keep the file, including the record copy, of any international application for at least 30 years from the date of receipt of the record copy.
(b)
The basic records of the International Bureau shall be kept indefinitely.

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93.3 The International Searching and Preliminary Examining Authorities Each International Searching Authority and each International Preliminary Examining

Authority shall keep the file of each international application it receives for at least 10 years from the international filing date.

93.4 Reproductions For the purposes of this Rule, records, copies and files may be kept as photographic,

electronic or other reproductions, provided that the reproductions are such that the obligations to keep records, copies and files under Rules 93.1 to 93.3 are met.

Rule 93bis Manner of Communication of Documents

93bis.1 Communication on Request; Communication via Digital Library

(a)
Where the Treaty, these Regulations or the Administrative Instructions provide for the communication, notification or transmittal (“communication”) of an international application, notification, communication, correspondence or other document (“document”) by the International Bureau to any designated or elected Office, such communication shall be effected only upon request by the Office concerned and at the time specified by that Office. Such request may be made in relation to individually specified documents or a specified class or classes of documents.
(b)
A communication under paragraph (a) shall, where so agreed by the International Bureau and the designated or elected Office concerned, be considered to be effected at the time when the International Bureau makes the document available to that Office in electronic form in a digital library, in accordance with the Administrative Instructions, from which that Office is entitled to retrieve that document.

Rule 94 Access to Files

94.1 Access to the File Held by the International Bureau

(a)
At the request of the applicant or any person authorized by the applicant, the International Bureau shall furnish, subject to reimbursement of the cost of the service, copies of any document contained in its file.
(b)
The International Bureau shall, at the request of any person but not before the international publication of the international application and subject to Article 38 and Rule 44ter.1, furnish, subject to the reimbursement of the cost of the service, copies of any document contained in its file.
(c)
The International Bureau shall, if so requested by an elected Office, furnish copies of the international preliminary examination report under paragraph (b) on behalf of that Office. The International Bureau shall promptly publish details of any such request in the Gazette.

94.2 Access to the File Held by the International Preliminary Examining Authority At the request of the applicant or any person authorized by the applicant, or, once the international preliminary examination report has been established, of any elected Office,

the International Preliminary Examining Authority shall furnish, subject to reimbursement of the cost of the service, copies of any document contained in its file.

94.3 Access to the File Held by the Elected Office If the national law applicable by any elected Office allows access by third parties to the file of a national application, that Office may allow access to any documents relating to the international application, including any document relating to the international preliminary examination, contained in its file, to the same extent as provided by the national law for access to the file of a national application, but not before the international

publication of the international application. The furnishing of copies of documents may be subject to reimbursement of the cost of the service.

Rule 95 Availability of Translations

95.1 Furnishing of Copies of Translations

(a)
At the request of the International Bureau, any designated or elected Office shall provide it with a copy of the translation of the international application furnished by the applicant to that Office.
(b)
The International Bureau may, upon request and subject to reimbursement of the cost, furnish to any person copies of the translations received under paragraph (a).

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.

SCHEDULE OF FEES

Fees Amounts

    1. International filing fee: 1,330 Swiss francs plus
    2. (Rule 15.2) 15 Swiss francs for each sheet of the international application in excess of 30 sheets
  1. Handling fee: 200 Swiss francs (Rule 57.2)

Reductions

3. The international filing fee is reduced by the following amount if the international application is, as provided for in the Administrative Instructions, filed:

(a) on paper together with a copy in electronic form, in character coded format, of the request and the abstract: 100 Swiss francs
(b) in electronic form, the request not being in character coded format: 100 Swiss francs
(c) in electronic form, the request being in character coded format: 200 Swiss francs

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Fees Amounts

(d) in electronic form, the request, description, 300 Swiss francs claims and abstract being in character coded format:

4. The international filing fee (where applicable, as reduced under item 3) and the handling fee are reduced by 90% if the international application is filed by:

(a)
an applicant who is a natural person and who is a national of and resides in a State whose per capita national income is below US$3,000 (according to the average per capita national income figures used by the United Nations for determining its scale of assessments for the contributions payable for the years 1995, 1996 and 1997) or, until December 31, 2009, one of the following States: Antigua and Barbuda, Bahrain, Barbados, Libyan Arab Jamahiriya, Oman, Seychelles, Singapore, Trinidad & Tobago and United Arab Emirates; or
(b)
an applicant, whether a natural person or not, who is a national of and resides in a State that is classed as a least developed country by the United Nations;

provided that, if there are several applicants, each must satisfy the criteria set out in either sub-item (a) or (b).

Schedule 3 Formal requirements for documents to be filed

(paragraph 3.2A (1) (c), paragraph 3.2A (2) (c), subparagraph 3.2B (1) (a) (ii), paragraph 10.2 (1) (a) and subregulation 22.16 (2))

1 Terminology and signs

In a document:

(a)
units of description m ust be expressed in term s of the metric system or, if first expressed in other terms, must be expressed also in terms of that system; and
(b)
temperatures m ust be expr essed in degrees Celsius or, if first expressed in another m anner, must be exp ressed also in degrees Celsius; and
(c)
to indicate units of measurement, the rules of international practice must be observed; and
(d)
in chem ical form ulas, the sym bols, atom ic weights and molecular formulas in general use must be employed; and
(e)
other terms, signs and symbols that are generally accepted in the ar t to which the docum ent principally relates must be employed; and
(f)
if the docum ent is expressed in E nglish — the beginning of any decimal fraction must be marked by a period; and
(g)
units, signs, sym bols and other term s m ust be used consistently.

1A Title of specification

A specification must commence with a short and precise title.

2 Fitness for reproduction

Each sheet comprising a document or part of a document:

(a)
must be presented in a m anner that allows any num ber of copies of the sheet to be reproduced directly by means of photography, an electrostatic or photo-offset process and microfilming; and
(b)
must not be folded, creased or cracked; and
(c)
subject to subclause 8 (4) (‘drawings, formulas and tables in tex tual m atter’) an d subclaus e 11 (14) (‘spec ial requirements for draw ings’), m ust be presented in a vertical format; and
(d)
must be durable, flexible, sm ooth, strong, white and have a matt finish; and
(e)
must be international sheet size A4; and
(f)
must be printed on only one side of the sheet.

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3 Separate sheets

(1)
The patent request, the descri ption of the invention, the clai m or claims, any drawing, and an abstract, must each commence on a separate sheet.
(2)
The sheets com prising a docum ent must be connected so that they may be readily:
(a)
turned to be read; and
(b)
separated for the purpos es of reproduction and then rejoined.

4 Margins

(1)
Subject to subclause (2), each sheet of a specification, o r an abstract, must have a margin that is not less than:
(a)
at the top — 2 cm; and
(b)
on the left — 2.5 cm; and
(c)
on the right — 2 cm; and
(d)
at the bottom — 2 cm.
(2)
A sheet of drawings:
(a)
must have a margin that is not less than:
(i)
at the top — 2.5 cm; and
(ii)
on the left — 2.5 cm; and
(iii) on the right — 1.5 cm; and (iv) at the bottom — 1 cm; and
(b)
must not contain a frame surrounding the drawings.

5 Numeration

(1)
The par ts o f a paten t applic ation must be pr esented in the following order:
(a)
patent request;
(b)
description of the inve ntion, other than any sequence listing part of the description;
(c)
claim or claims;
(d)
abstract;
(e)
drawing or drawings;
(f)
sequence listing part of the description, if applicable.
(2)
Subject to subclause (3), if a specification is num bered in accordance with subclause 6 (2), the sheets of the specification must be numbered consecutively in arabic num erals beginning with ‘1 ’ th at are placed at the top, and in the m iddle, of the sheet, but not within the margins of the sheet.
(3)
The sheets of a specification that contain drawings m ust be numbered by m eans of sets of 2 arabic num erals separated by an oblique stroke, the first num eral in each set being the consecutive num ber of each sh eet, beginning with the arabic number ‘1’, and the second being the total number of the sheets containing the drawings.
(4)
If there is m ore than 1 claim referred to in a com plete specification, the claim s m ust be num bered consecutively in arabic numerals beginning with ‘1’.
(5)
In a statement of proposed amendments:
(a)
the propo sed am endments must be num bered consecutively; and
(b)
if the statem ent is a subsequent one, the num bering must be consecutive with the num bers in the previous statement.

6 Numbering of lines or paragraphs

(1)
A specification m ust be numbered in accordance with subclause (2) or (3).
(2)
Every fifth line on each sheet of the specification m ust be numbered:
(a)
in arabic numerals beginning with ‘1’; and
(b)
on the left side of the sheet to the right of the margin.
(3)
The paragraphs of the specification must be numbered:
(a)
sequentially from the first paragraph of the description of the specification; and
(b)
in arabic numerals beginning with ‘1’; and
(c)
on the left side of the sheet to the right of the margin; and
(d)
on the first line of each paragraph.

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7 Writing of textual matter

(1)
Subject to subclause (2), except with the consent of the Commissioner, a patent request, specification and any abstract relating to a paten t applic ation m ust be typewritten or otherwise machine printed.
(2)
If necessary, symbols relating to graphic matter, or chemical or mathematical form ulas, m ay be handwritten or drawn, as the case may be.
(3)
The lines of text in a typewritten document must be 11/2 spaced or double spaced.
(4)
The text in a document must be presented in letters the capitals of which are not less than 0.21 cm high, in a dark colour and be indelible.

8 Drawings, formulas and tables in textual matter

(1)
A patent request must not include a drawing.
(2)
The description of an invention or an abstract:
(a)
must not include a drawing; and
(b)
may include chemical or mathematical formulas or tables.
(3)
A claim:
(a)
must not include a drawing; and
(b)
may include chemical or mathematical formulas; and
(c)
if, in the reasonable opinion of the Commissioner, the subject m atter of the claim makes the use of a table desirable — may include tables.
(4)
A table or a chem ical or m athematical formula m ay be presented in a horizontal form at if it cannot be presented in a vertical format in a satisfactory manner.
(5)
If a table or a chemical or mathematical formula is presented in a horizontal form at, the top of the table or formula m ust be placed on the left side of the paper.

9 Words in drawings

A drawing must not include te xt, other than a word or words indispensable to the understanding of the drawing.

10 Alterations

(1)
Subject to subclause (2), a docu ment m ust be free from erasures, alterations, overwritings and interlineations.
(2)
If, in the reasonable opinion of the Comm issioner, f ailure to comply with subclause (1) would not:
(a)
compromise the authenticity; or
(b)
jeopardise the likelihood of clear reproduction;

of a docum ent, the Comm issioner m ay excuse it from compliance with subclause (1).

11 Special requirements for drawings

(1)
A drawing must be executed in durable, black, dense, dark, uniformly t hick and well-defined, lines and strokes without colouring.
(2)
A cross-section m ust be i ndicated by oblique hatching that does not impede the clear reading of reference letters, numbers or signs and leading lines.
(3)
The scale o f a drawing and the distinctness o f its execution must enable all the details to be distinguished without difficulty on a photographic reproduction of the drawing with a two-thirds linear reduction in size.
(4)
If the scale of a drawing is given on the drawing, it m ust be represented graphically.
(5)
A letter, number or reference line that is show n on a draw ing must be presented simply and be clear.
(6)
Brackets, braces, circles or i nverted commas m ust not be u sed in association with letters or numbers.
(7)
A line in a drawing m ust ordinarily be drawn with the aid of drafting instruments.
(8)
A sheet of drawings may include more than 1 drawing.
(9)
Each element of a drawing must be shown in proper proportion to each other element of the drawing, other than where the use of a different proportion is indispensable for the clarity of the drawing.
(10)
The height of a letter or a number in a drawing must not be less than 0.32 cm.
(11)
For the lettering of a drawi ng, the Latin or, if custom ary, the Greek alphabet must be used.
(12)
If drawings on 2 or more sheet s of drawings form in effect a single draw ing, the drawings m ust be so arranged that the single drawing can be assem bled without concealing any part of the other drawings.
(13)
Subject to subclause (14), if there is m ore than 1 drawing on a sheet of drawings, the drawings m ust be presented on the sheet of drawings in a vertical format and separate from each other.
(14)
If the drawings on a sheet of drawings cannot be presented in a vertical format, they must be presented in a horizon tal format with the to ps of the drawings on the lef t of the sheet of drawings.
(15)
The drawings m ust be num bered consecutiv ely in arab ic numerals beginning with ‘1’.
(16)
A reference sign that is not mentioned in the description of the invention must not be referred to in a drawing.
(17)
A reference sign that is not mentioned in a drawing must not be referred to in the description.
(18)
A feature of a drawing that is denoted by a reference sign m ust be so denoted consistently.

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12 Amino acid sequences and nucleotide sequences

An amino acid sequence or a nucleotide sequence that is part of a specification m ay be filed in a form at approved by the Commissioner on a com pact disk or by other electronic m eans approved by the Commissioner.

13 Electronic documents

A docum ent that is f iled in elec tronic f orm must be in the approved form.

14 Scandalous matter

A com plete application m ust not contain or consist of scandalous matter.

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Schedule 4 Convention countries

(subregulation 8.5 (1) and regulation 11.1)

Albania Algeria Andorra Angola Antigua and Barbuda Argentina Armenia Austria Azerbaijan Bahamas Bahrain Bangladesh Barbados Belarus Belgium Belize Benin Bhutan Bolivia Bosnia and Herzegovina Botswana Brazil Brunei Darussalam Bulgaria Burkina Faso Burundi Cambodia Cameroon Canada Cape Verde Central African Republic Chad Chile China Colombia

Comoros

Congo

Costa Rica

Côte d’Ivoire

Croatia

Cuba

Cyprus

Czech Republic

Democratic Republic of the Congo

Denmark (including Faroe Islands)

Djibouti

Dominica

Dominican Republic

Ecuador

Egypt

El Salvador

Equatorial Guinea

Estonia

Fiji

Finland

France (including all Overseas Departments and Territories)

Gabon

Gambia

Georgia

Germany

Ghana

Greece

Grenada

Guatemala

Guinea Guinea-Bissau

Guyana

Haiti

Holy See

Honduras

Hong Kong, China

Hungary

Iceland

India

Indonesia

Iran, Islamic Republic of

Iraq

Ireland

Israel

Italy

Jamaica

Japan

Jordan

Kazakhstan

Kenya

Korea, Democratic People’s Republic of

Korea, Republic of

Kuwait

Kyrgyzstan

Lao People’s Democratic Republic

Latvia

Lebanon

Lesotho

Liberia

Libyan Arab Jamahiriya

Liechtenstein

Lithuania

Luxembourg

Macau, China

Madagascar

Malawi

Malaysia Maldives

Mali

Malta

Mauritania

Mauritius

Mexico

Moldova

Monaco

Mongolia

Montenegro

Morocco

Mozambique

Myanmar

Namibia

Nepal

Netherlands (including the Netherlands Antilles and Aruba)

New Zealand (excluding the Cook Islands, Niue and Tokelau)

Nicaragua

Niger

Nigeria

Norway

Oman

Pakistan

Panama

Papua New Guinea

Paraguay

Peru

Philippines

Poland

Portugal

Qatar

Romania

Russian Federation

Rwanda

Saint Kitts and Nevis Saint Lucia

Saint Vincent and the Grenadines

San Marino

Sao Tome and Principe

Saudi Arabia

Senegal

Serbia

Seychelles

Sierra Leone

Singapore

Slovak Republic

Slovenia

Solomon Islands

South Africa

Spain

Sri Lanka

Sudan

Suriname

Swaziland

Sweden

Switzerland

Syrian Arab Republic

Taiwan

Tajikistan

Tanzania

Thailand

The former Yugoslav Republic of Macedonia

Togo

Tonga

Trinidad and Tobago

Tunisia

Turkey

Turkmenistan

Uganda

Ukraine

United Arab Emirates United Kingdom (including the

Isle of Man) United States of America

(including all territories and

possessions, including the

Commonwealth

of Puerto Rico) Uruguay Uzbekistan Venezuela Viet Nam Yemen Zambia Zimbabwe

Schedule 5 Knowledge requirements

(regulation 20.8)

Part 1 Overall requirement

1. A course of study m ust provi de for a student to have an appropriate level of:

(a)
knowledge and practical appl ication so that the student can give advice about applicable categories of protection for particular activities; and
(b)
appreciation of the advantages of each for m of protection for a client; and
(c)
understanding of how to get and m aintain appropriate protection for a client; and
(d)
understanding of the requi red standard of professional conduct.

Part 2 Legal process and overview of intellectual property

2. A course of study m ust provi de for a student to have an appropriate level of understand ing of the Australian legal system and how intellectual prope rty rights m ay be protected, including by reference to:

(a)
the Australian legal system; and
(b)
intellectual property rights.

Part 3 Professional conduct

3. A course of study m ust provi de for a student to have an appropriate level of understanding of the rights, privileges and responsibilities of a patent attorney or trade marks attorney.

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Part 4 Intellectual property law

4. A course of study m ust provi de for a student to have an appropriate level of understandin g of the principles of trade marks, patents, designs and copyright.

Part 5 Intellectual property systems

5. A course of study m ust provi de for a student to have an appropriate level of understandi ng of the system of protecting and exploiting trade m arks, patents and designs, both in Australia and other countries. This includes:

(a)
the ability to draft patent specifications; and
(b)
an understanding of patent specifications; and
(c)
the ability to advise on the interpretation, validity and infringement of patent specifications.

Schedule 7 Fees

(regulations 22.2, 22.3 and 22.4)

Part 1 Patent Attorneys

Item Matter Fee ($)

101 Applying for admission to sit for an 400 examination conducted by the Board

102 Applying for grant of a supplementary 200 examination conducted by the Board

103 Applying for a report of reasons for failure 200 of an examination conducted by the Board

104 Applying for registration as a patent 200 attorney

105 Annual registration of a patent attorney 350

106 Annual registration fee payable for 450

combined registration as a patent attorney

and trade marks attorney

107 Applying under regulation 20.29, 20.30 or 160

20.31

Part 2 General fees

Item Matter Fee

201 Filing a request for a patent accompanied by a provisional specification:
(a) by an electronic means approved by the Commissioner for this paragraph; $80
(b) by another means $110
202 Filing a request for an innovation patent accompanied by a complete specification:
(a) by an electronic means approved by the Commissioner for this paragraph $150
(b) by another means $180

Item Matter Fee

203 Filing a request for a standard patent accompanied by a complete specification:

(a)
by an electronic means approved by the Commissioner for this paragraph
(b)
by another means

204 Filing a request for an examination, under section 45 of the Act, of a standard patent request and complete specification for a PCT application if the Patent Office has established an international preliminary examination report under Article 35 of the PCT, other than a report under Rule 44bis.1 of the PCT, in respect of the application

205 Filing a request for an examination, under section 45 of the Act, of a standard patent request and complete specification if item 204 does not apply

206 Filing a request for a modified examination, under section 48 of the Act, of a standard patent request and complete specification

207 Filing a request under paragraph 101A (b) of the Act, by the patentee of an innovation patent, for examination of the complete specification relating to the innovation patent

208 Filing a request under paragraph 101A (b) of the Act, by a person other than the patentee of an innovation patent, for examination of the complete specification relating to the innovation patent:

(a)
payable by the person making the request; and
(b)
payable by the patentee

209 Filing a request under subsection 44 (3) of the Act requiring the Commissioner to direct an applicant to request examination

210 Filing a request under subsection 97 (2) or paragraph 101G (1) (b) of the Act for re-examination of a complete specification

Patents Regulations 1991

156

$340

$370 $300

$450

$300 $400

$200 $200 $100

$800

Item Matter Fee
211 Continuation fee under paragraph 142 (2) (d) of the Act, or renewal fee under paragraph 143 (a) of the Act, for:
(a) the fifth anniversary $250
(b) the sixth anniversary $250
(c) the seventh anniversary $250
(d) the eighth anniversary $250
(e) the ninth anniversary $250
(f) the tenth anniversary $450
(g) the eleventh anniversary $450
(h) the twelfth anniversary $450
(i) the thirteenth anniversary $450
(j) the fourteenth anniversary $450
(k) the fifteenth anniversary $1 020
(l) the sixteenth anniversary $1 020
(m) the seventeenth anniversary $1 020
(n) the eighteenth anniversary $1 020
(o) the nineteenth anniversary $1 020
(p) if an extension of the term of a standard patent is granted under section 76 of the Act:
(i) the twentieth anniversary $2 000
(ii) each subsequent anniversary during the period of extension $2 000
and, in addition, if the fee is not paid on or before the anniversary but is paid within 6 months after the anniversary $100 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid
212 Renewal fee under paragraph 143A (d) of the Act for:
(a) the second anniversary $100
(b) the third anniversary $100
(c) the fourth anniversary $100
(d) the fifth anniversary $200

Item Matter Fee

(e)
the sixth anniversary
(f)
the seventh anniversary

and, in addition, if the fee is not paid on or before the anniversary but is paid within 6 months after the anniversary

213 Acceptance of a patent request and complete specification under section 49 of the Act:

(a)
for acceptance; and
(b)
if more than 20 claims are contained in the specification at acceptance

214 Filing an application or request under section 17, 32 or 36 of the Act

214A National phase entry of a PCT application under paragraph 89 (3) (b) of the Act

215 Filing a request under subregulation

3.25 (1) for the certification referred to in Rule 11.3 (a) of the Budapest Treaty

216 Filing a notice of opposition under regulation 5.3 or 5.3AA

217 Filing a request under subregulation 5.5 (1) for dismissal of opposition

218 Filing an application under subregulation

5.10 (2) for an extension of time

219 Making a representation to the Commissioner, under regulation 5.3A or 5.3B or subregulation 5.9 (3), objecting to a proposed amendment

220 Making a representation to the Commissioner under subparagraph

5.10 (5) (c) (i) objecting to an application or proposed action

Patents Regulations 1991

$200 $200

$100 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid

$200 $100 for each claim in excess of 20

$600

$340

$550

$600

$600

$500 for each month or part of a month for which the extension is sought

$600

$600

Item Matter Fee

221 Filing an application under section 66 of the Act for a duplicate of a patent to be sealed

222 Filing a request for leave to amend:

(a)
a complete specification relating to an application for a standard patent, before a request for examination is filed or after the complete specification is accepted; or
(b)
a complete specification relating to a standard patent

222A Grant of leave to amend a complete specification relating to a standard patent, or relating to an application for a standard patent, after the complete specification is accepted, if:

(a)
more than 20 claims are contained in the complete specification as proposed to be amended; and
(b)
the effect of the proposed amendment would be to increase the number of claims in the complete specification

223 Filing a request for leave to amend a patent request for an innovation patent to make it a patent request for a standard patent

224 Filing a request for leave to amend an innovation patent:

(a)
after the patent is granted but before a request for examination is filed; or
(b)
after the patent is certified

225 Filing a request under subsection 150 (1) of the Act to restore a lapsed application

226 Filing an application for an extension of time under subsection 223 (2) of the Act on a ground specified in paragraph 223 (2) (a) of the Act

$250 $250

$100 for each additional claim that arises as described in paragraph (b)

$190

$250

$100

$100 for each month or part of a month for which the extension is sought

Item Matter Fee

227 Filing an application under subsection 223 (2) of the Act for an extension of time on the ground specified in paragraph 223 (2) (b) of the Act

228 Filing an application for an extension of time under subsection 223 (2A) of the Act

229 Filing a request under regulation 22.22 for the exercise of discretionary power

230 Filing a request for a hearing

231 Appearing at a hearing:

(a)
for the first day
(b)
if the hearing runs for more than a day

232 Filing a response to the Commissioner’s report under section 45 or 48 of the Act, if filed more than 12 months, but within 21 months, after the date of the first report on the examination

233 Requesting the supply of a copy of a patent specification

234 Requesting the supply of a copy of a document other than a patent specification:

(a)
for more than 6 documents from a single source and supplied at the same time
(b)
otherwise

235 Requesting the supply of a certificate by the Commissioner

Patents Regulations 1991

$100

$100 for each month or part of a month for which the extension is sought

$600

$600

$600 less any amount paid under item 219, 220, 229 or 230 in relation to the hearing

$600 for each day, or part of a day, after the first day

$100 for each month or part of a month, after the 12 months (other than a month in respect of which a fee was paid under this item in relation to the examination)

$50

$200 plus $1 per page for each document in excess of 6 documents

$50 per document

$50

Fees Schedule 7
General fees for international applications Part 3
Item Matter Fee

236 Filing a request under subregulation $1 400

19.2 (2) for information that requires an international-type search

237 Filing a substitute page or pages in $200 compliance with a direction under subregulation 3.2A (2), if filed more than 3 months after the day when the direction was given but before the application becomes open to public inspection

238 Filing an application under subsection $2 000 70 (1) of the Act for the grant of an extension of the term of a standard patent

239 Filing an application to the Commissioner, for an extension of time under subregulation 3.17A (5):

(a)
if the application is filed on or before $100 per month or part the date on which notice of of a month acceptance is published
(b)
if the application is filed after the date $150 per month or part on which notice of acceptance is of a month published
Part 3 General fees for international
applications
Item Matter Fee

301 Transmittal fee under Rule 14 of the PCT $150

302 Search fee under Rule 16 of the PCT $1 900

303 Additional fee for search under Article $1 900 17 (3) (a) of the PCT

304 Preliminary examination fee under Rule 58 of the PCT

(a)
if the international search report was $550 issued by the Patent Office in respect of the international application
(b)
in other cases $780

Item Matter Fee

305 Additional fee for international preliminary examination under Article 34 (3) (a) of the PCT

306 For a copy of a document in accordance with Rule 44.3 (b) or 71.2 (b) of the PCT

307 Late payment fee under Rule 16bis.2 of the PCT

308 For processing a request for restoration of priority under Rule 26bis of the PCT.

$550

$50

the greater of:

(a)
50% of the amount of the unpaid fees specified in the invitation; and
(b)
the amount of the transmittal fee;

but not more than 50% of the international filing fee, not taking into account any fee for each sheet of the international application in excess of 30 sheets

$200

Part 4 Fees payable for the benefit of the International Bureau

Item Matter Fee

401 International filing fee: (Rule 15.2 of the PCT)

402 Handling fee: (Rule 57.2 of the PCT) 1,330 Swiss francs plus 15 Swiss francs for each sheet of the international application in excess of 30 sheets

200 Swiss francs

Fees Schedule 7
Fees payable for the benefit of the International Bureau Part 4
Item Matter Fee

Reductions

403 The international filing fee is reduced by the following amount if the international application is, as provided for in the Administrative Instructions, filed:

(a) on paper together with a copy in 100 Swiss francs

electronic form, in character coded format, of the request and the abstract:

(b) in electronic form, the request not being in 100 Swiss francs

character coded format:

(c) in electronic form, the request being in 200 Swiss francs

character coded format:

(d) in electronic form, the request, 300 Swiss francs

description, claims and abstract being in character coded format:

404 The international filing fee (where applicable, as reduced under item 403) and the handling fee are reduced by 90% if the international application is filed by:

(a)
an applicant who is a natural person and who is a national of and resides in a State whose per capita national income is below US$3,000 (according to the average per capita national income figures used by the United Nations for determining its scale of assessments for the contributions payable for the years 1995, 1996 and 1997) or, until December 31, 2009, one of the following States: Antigua and Barbuda, Bahrain, Barbados, Libyan Arab Jamahiriya, Oman, Seychelles, Singapore, Trinidad & Tobago and United Arab Emirates; or
(b)
an applicant, whether a natural person or not, who is a national of and resides in a State that is classed as a least developed country by the United Nations;

provided that, if there are several applicants, each must satisfy the criteria set out in either sub-item (a) or (b).

Schedule 8 Costs, expenses and allowances

(subregulation 20.30 (2) and regulation 22.8)

Part 1 Costs

Column 1 Column 2 Column 3 Item Matter Amount

1 Notice of opposition $200 2 Statement of grounds and particulars $750 3 Receiving and perusing statement of $500

grounds and particulars

4 Evidence in support $1 500 5 Receiving and perusing notice of opposition $200 6 Receiving and perusing evidence in support $750 7 Evidence in answer $1 500 8 Receiving and perusing evidence in answer $750 9 Evidence in reply $750 10 Receiving and perusing evidence in reply $350 11 Preparation of case for hearing $1 000 12 Attendance at hearing by registered patent $260 an hour, but

attorney or solicitor without counsel not more than

$1 170 a day 13 Attendance at hearing by registered patent $200 an hour, but attorney or solicitor instructing counsel not more than $900 a day

14 Counsel fees for attendance at a hearing $300 an hour, but not more than $1 350 a day

Part 2 Expenses and allowances

Division 1 Expenses

1 A person who has paid a fee prescribed in these Regulations in relation to proceedin gs before the Commi ssioner o r the Disciplinary Tribunal may be paid the amount of the fee.

2 A person attending pro ceedings before the Commissioner or the Disciplinary Tribunal must be paid:

(a)
a reasonable am ount for allo wances for transport between the usual place of residence of the person and the place that he or she attends for that purpose; and
(b)
if the person is required to be absent overnight from his or her usu al p lace of resid ence — a reasonable amount for allowances up to a daily m aximum of $700 for m eals and accommodation.

Division 2 Allowances

3 A person who, because of his or her professional, scientific or other special skill or knowledge, is summoned to appear before the Comm issioner or the Disciplinary Tribunal as a witness must be paid:

(a)
if the person is rem unerated in his or her occupation by wages, salary or fees — an amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; or
(b)
in any other case — an amount of not less than $140, or more than $700, for each day on which he or she so attends.

4 A person summoned to appear before the Commissioner or the Disciplinary Tribunal as a witness, other than a witness referred to in clause 3, must be paid:

(a)
if the person is rem unerated in his or her occupation by wages, salary or fees — an amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; or
(b)
in any other case — an am ount of not less than $80, or more than $130, for each day on which he or she so attends.

165

Table of Instruments

Notes to the Patents Regulations 1991 Note 1

The Patents Regulations 1991 (in f orce under the Patents Act 1990) as shown in this com pilation com prise Statutory Rules 1991 No. amended as indicated in the Tables below.

All relevant information pertaining to applica tion, saving or transitional provisions prior to 9 Decem ber 1997 is not included in this com pilation. For subsequent information see Table A.

Table of Instruments

Year and number Date of notification in Gazette or FRLI registration Date of commencement Application, saving or transitional provisions
1991 No. 71 26 Apr 1991 30 Apr 1991
1991 No. 456 19 Dec 1991 Rr. 3, 5 and 7: 1 Jan —
1992
Remainder: 19 Dec 1991
1992 No. 148 9 June 1992 R. 5: 9 June 1992 R. 7
Remainder: 1 July 1992
1993 No. 113 3 June 1993 1 July 1993 R. 9
1993 No. 227 26 Aug 1993 Rr. 3.1, 4.1 and 4.4: 1 Oct 1992 —
Remainder: 1 Jan 1993
1993 No. 340 10 Dec 1993 10 Dec 1993 R. 8
1993 No. 341 10 Dec 1993 1 Jan 1994 —
1994 No. 182 16 June 1994 29 June 1994 —
1994 No. 317 6 Sept 1994 1 Oct 1994 R. 10
1994 No. 387 21 Nov 1994 Rr. 9 and 10: 30 May 1995 R. 10
Remainder: 21 Nov 1994
1995 No. 16 14 Feb 1995 R. 38: 30 Apr 1991 Remainder: 14 Feb 1995 R. 45
1995 No. 20 22 Feb 1995 23 Feb 1995 —
1995 No. 82 9 May 1995 Rr. 4–9, 11.2 and 12–14: 1 July 1995 Remainder: 9 May 1995 R. 14
1995 No. 427 22 Dec 1995 1 Jan 1996 —
1996 No. 271 11 Dec 1996 11 Dec 1996 —
1997 No. 192 4 July 1997 4 July 1997 —

167

Table of Instruments

Year and number Date of notification in Gazette or FRLI registration Date of commencement Application, saving or transitional provisions
1997 No. 345 9 Dec 1997 Rr. 3, 4, 8–10, 13 and 14: 1 Jan 1998 Remainder: 9 Dec 1997 R. 3 [see Table A]
1998 No. 45 25 Mar 1998 25 Mar 1998 —
1998 No. 56 8 Apr 1998 8 Apr 1998 Rr. 13–17 [see Table A]
1998 No. 141 25 June 1998 Rr. 3–5: 1 July 1998 Remainder: 25 June —
1998
1998 No. 241 31 July 1998 31 July 1998 —
1998 No. 257 12 Aug 1998 12 Aug 1998 —
1998 No. 264 26 Aug 1998 Rr. 7.1, 7.2 and 7.4: 1 Nov 1998 —
Remainder: 26 Aug 1998
1998 No. 291 7 Sept 1998 7 Sept 1998 —
1998 No. 319 1 Dec 1998 27 Jan 1999 (see r. 2) —
1998 No. 342 22 Dec 1998 1 Jan 1999 —
1998 No. 345 22 Dec 1998 27 Jan 1999 —
1999 No. 154 14 July 1999 14 July 1999 —
1999 No. 184 1 Sept 1999 Rr. 1–3 and Schedule 1: 1 Sept 1999 Remainder: 6 Sept 1999 —
1999 No. 261 27 Oct 1999 Rr. 1–4 and Schedule 1: 27 Oct 1999 Remainder: 1 Jan 2000 R. 4 [see Table A]
1999 No. 349 22 Dec 1999 Rr. 1–3 and Schedule 1: —
22 Dec 1999
Remainder: 1 Jan 2000
2000 No. 317 29 Nov 2000 Rr. 1–3 and Schedule 1: —
29 Nov 2000
Schedule 2: 1 Jan 2001
Remainder: 1 Mar 2001
2001 No. 98 23 May 2001 24 May 2001 (see r. 2) —
2001 No. 184 5 July 2001 5 July 2001 —
2001 No. 345 21 Dec 2001 Schedule 2: 1 Jan 2002 —
Remainder: 21 Dec 2001
2002 No. 59 28 Mar 2002 1 Apr 2002 R. 4 [see Table A]
2002 No. 100 23 May 2002 23 May 2002 —
2002 No. 173 11 July 2002 Rr. 1–5 and Schedules 1–3: 11 July 2002 Remainder: 1 Sept 2002 —
168 Patents Regulations 1991

Table of Instruments

Year and number Date of notification in Gazette or FRLI registration Date of commencement Application, saving or transitional provisions
2002 No. 263 6 Nov 2002 6 Nov 2002 —
2002 No. 317 19 Dec 2002 Rr. 1–3 and Schedule 1: 19 Dec 2002 Remainder: 1 Jan 2003 R. 4 [see Table A]
2003 No. 71 28 Apr 2003 28 Apr 2003 —
2003 No. 213 21 Aug 2003 Rr. 1–3 and Schedule 1: 21 Aug 2003 Remainder: 26 Aug 2003 (see r. 2 (b)) —
2003 No. 316 11 Dec 2003 Rr. 1–4 and Schedule 1: 11 Dec 2003 Remainder: 1 Jan 2004 R. 4 [see Table A]
2004 No. 23 26 Feb 2004 11 Mar 2004 —
2004 No. 193 1 July 2004 1 July 2004 R. 4 [see Table A]
2004 No. 250 20 Aug 2004 20 Aug 2004 —
2004 No. 395 23 Dec 2004 23 Dec 2004 R. 4 [see Table A]
2005 No. 51 29 Mar 2005 (see F2005L00753) Rr. 1–4 and Schedule 1: 30 Mar 2005 Schedule 2: 1 Apr 2005 Schedule 3: 3 Apr 2005 R. 4 [see Table A]
2006 No. 55 22 Mar 2006 (see F2006L00846) 1 Apr 2006 R. 4 [see Table A]
2006 No. 355 15 Dec 2006 (see F2006L03971) 1 Mar 2007 —
2007 No. 40 23 Mar 2007 (see F2007L00650) Rr. 1–10 and Schedules 1, 2, 3, 5 and 6: 27 Mar 2007 R. 8 [see Table A]
Schedules 4 and 8:
1 Apr 2007 (see r. 2 (b)) Schedule 7: 27 Mar 2007
(see r. 2 (c))
2007 No. 357 18 Oct 2007 (see F2007L04114) 22 Oct 2007 —
2008 No. 122 23 June 2008 (see F2008L02119) 1 July 2008 R. 5 [see Table A]
2008 No. 178 2 Sept 2008 (see F2008L03228) 1 July 2008 —
2008 No. 279 19 Dec 2008 (see F2008L04588) 1 Jan 2009 R. 3 [see Table A]
2009 No. 150 26 June 2009 (see F2009L02472) 1 July 2009 R. 3 [see Table A]
Patents Regulations 1991 169

Table of Instruments

Year and number Date of notification in Gazette or FRLI registration Date of commencement Application, saving or transitional provisions
2009 No. 332 27 Nov 2009 (see F2009L04297) 12 Dec 2009 —
2010 No. 181 30 June 2010 (see F2010L01791) Rr. 1–3 and Schedule 1: 1 July 2010 R. 4 and Schedule 2: —
1 Aug 2010

Table of Amendments

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

Chapter 1

R. 1.1 .................................. rs. 1998 No. 257

R. 1.3 .................................. am. 1998 No. 345; 2001 No. 98; 2004 No. 395; 2008 Nos. 122 and 279; 2009 No. 332

R. 1.3A ................................ ad. 2003 No. 213

R. 1.4 .................................. am. 1991 No. 456; 1992 No. 148; 1993 Nos. 227 and 341 rs. 1995 Nos. 16 and 427 am. 1997 No. 345; 1998 Nos. 141 and 342; 1999 No. 349;

2000 No. 317; 2001 No. 345; 2002 Nos. 59 and 317; 2003 No. 316; 2005 No. 51; 2006 No. 55; 2007 No. 40; 2008 No. 279; 2009 No. 150; 2010 No. 181

R. 1.5 .................................. am. 1995 No. 16

rs. 2001 No. 98 Heading to r. 1.6.................. rs. 2009 No. 332

R. 1.6 .................................. am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2008 No. 279

R. 1.7 .................................. am. 2001 No. 98

R. 1.8 .................................. ad. 2009 No. 332

Chapter 2

R. 2.1 .................................. am. 2001 No. 98 Heading to r. 2.2.................. rs. 2002 No. 59

R. 2.2 .................................. am. 1995 No. 16; 2001 No. 98; 2002 No. 59 Heading to r. 2.3.................. rs. 2002 No. 59

R. 2.3 .................................. am. 1995 No. 16; 2001 No. 98; 2002 No. 59

R. 2.4 .................................. rs. 1995 No. 16 am. 2001 No. 98

R. 2.5 .................................. am. 2001 No. 98 rs. 2007 No. 357

R. 2.6 .................................. rs. 2001 No. 98

R. 2.7 .................................. am. 1995 No. 16 rs. 2001 No. 98

Chapter 3 Part 1

R. 3.1 .................................. am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2003 No. 316

R. 3.1A ................................ ad. 2001 No. 98

R. 3.2 .................................. am. 1995 No. 16; 2000 No. 317 rs. 2001 No. 98

171

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

R. 3.2A ................................ ad. 2001 No. 98 rs. 2009 No. 332

R. 3.2B ................................ ad. 2001 No. 98 am. 2002 No. 59

R. 3.3 .................................. am. 1995 No. 16; 2002 No. 59

R. 3.4 .................................. am. 1995 No. 16; 2002 No. 59

R. 3.5 .................................. am. 2000 No. 317 rs. 2001 No. 98

R. 3.5A ................................ ad. 2001 No. 98 am. 2002 No. 59; 2008 No. 279

R. 3.5B ................................ ad. 2001 No. 98

R. 3.6 .................................. rs. 2001 No. 98

R. 3.7 .................................. am. 2001 No. 98

R. 3.8 .................................. rs. 1995 No. 16 am. 2001 No. 98

R. 3.9 .................................. rs. 2001 No. 98

R. 3.10 ................................ am. 2001 No. 98

R. 3.11 ................................ rep. 2001 No. 98

R. 3.12 ................................ am. 1995 No. 16; 2001 No. 98; 2007 No. 40

R. 3.13 ................................ rs. 2001 No. 98

R. 3.14 ................................ am. 2001 No. 98

R. 3.15 ................................ am. 2001 No. 98

R. 3.16 ................................ am. 2001 No. 98

R. 3.17 ................................ am. 2001 No. 98

R. 3.17A .............................. ad. 2002 No. 59 am. 2002 No. 263, 2003 No. 71 rs. 2003 No. 213

R. 3.17B .............................. ad. 2003 No. 213 am. 2007 No. 357

R. 3.18 ................................ am. 1995 No. 16; 2001 No. 98; 2007 No. 357; 2008 No. 279 Heading to r. 3.19................ rs. 2001 No. 98

R. 3.19 ................................ am. 1995 No. 16; 2001 No. 98

R. 3.20 ................................ am. 2001 No. 98; 2008 No. 279

R. 3.21 ................................ am. 1995 No. 16; 2001 No. 98

R. 3.22 ................................ am. 1995 No. 16 rep. 2001 No. 98 ad. 2008 No. 279 rs. 2009 No. 332

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

Part 2

R. 3.23 ................................ am. 1995 No. 16; 2001 No. 98

R. 3.24 ................................ am. 1995 No. 16

R. 3.25 ................................ am. 1995 No. 16; 2001 No. 98

R. 3.26 ................................ am. 2001 No. 98

R. 3.27 ................................ am. 2001 No. 98

R. 3.28 ................................ am. 2001 No. 98

R. 3.29 ................................ am. 2001 No. 98

R. 3.30 ................................ am. 1995 No. 16; 2001 No. 98

R. 3.31 ................................ am. 2001 No. 98

Chapter 4

R. 4.1 .................................. am. 2001 No. 98

R. 4.2 .................................. am. 1995 Nos. 16 and 82; 2001 No. 98

R. 4.3 .................................. am. 1995 No. 16; 1998 No. 45; 1999 No. 261; 2002 No. 100; 2009 No. 332

Chapter 5

R. 5.1 .................................. am. 1995 Nos. 16 and 82; 1997 No. 192; 1998 No. 319; 2001 No. 98

R. 5.2 .................................. am. 2001 No. 98 Heading to r. 5.3.................. rs. 2001 No. 98

R. 5.3 .................................. am. 1995 Nos. 16 and 82; 1998 No. 319; 2001 No. 98

R. 5.3AA.............................. ad. 2001 No. 98 Heading to r. 5.3A ............... rs. 2001 No. 98

R. 5.3A ................................ ad. 1995 No. 16

R. 5.3B ................................ ad. 2001 No. 98

R. 5.4 .................................. am. 1993 No. 113; 1995 No. 82 rs. 2001 No. 98

R. 5.5 .................................. am. 2001 No. 98

R. 5.6 .................................. am. 2001 No. 98

R. 5.7 .................................. am. 2001 No. 98

R. 5.8 .................................. am. 1995 Nos. 16 and 82; 2001 No. 98; 2002 No. 59

R. 5.9 .................................. am. 1995 No. 16; 2000 No. 317; 2001 No. 98

R. 5.9A ................................ ad. 2004 No. 250

R. 5.10 ................................ am. 1993 Nos. 113 and 340; 2000 No. 317; 2001 No. 98; 2002 No. 59; 2004 No. 250

R. 5.11 ................................ am. 2001 No. 98

R. 5.12 ................................ rs. 2001 No. 98

R. 5.13 ................................ am. 1995 No. 16 rs. 2001 No. 98

R. 5.14 ................................ rs. 2001 No. 98

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

Chapter 6 Part 1

Heading to Part 1 of ............ ad. 1998 No. 319 Chapt. 6

R. 6.1 .................................. am. 2001 No. 98

R. 6.2 .................................. am. 2001 No. 98

R. 6.3 .................................. am. 1999 No. 261 rs. 2001 No. 98

R. 6.4 .................................. am. 2001 No. 98 Rr. 6.5, 6.6 .......................... rep. 2001 No. 98

Part 2

R. 6.7 .................................. am. 1995 No. 16 rep. 1995 No. 82 Part 2 of Chapt. 6................ ad. 1998 No. 319

R. 6.7 .................................. ad. 1998 No. 319

R. 6.8 .................................. ad. 1998 No. 319

R. 6.9 .................................. ad. 1998 No. 319

R. 6.10 ................................ ad. 1998 No. 319

R. 6.11 ................................ ad. 1998 No. 319 am. 2001 No. 98

Chapter 6A

Chapter 6A.......................... ad. 2001 No. 98

R. 6A.1 ................................ ad. 2001 No. 98

R. 6A.2 ................................ ad. 2001 No. 98 rs. 2007 No. 40

Chapter 7

R. 7.1 .................................. am. 2001 No. 98

R. 7.2 .................................. am. 2001 No. 98

Chapter 8 Part 1

R. 8.1 .................................. am. 1995 No. 16; 2001 No. 98; 2002 No. 59

R. 8.1A ................................ ad. 1999 No. 184

R. 8.1B ................................ ad. 2003 No. 213 rep. 2004 No. 395

R. 8.2 .................................. am. 1995 No. 16; 2001 No. 98

R. 8.3 .................................. am. 1995 No. 16; 1999 No. 261; 2001 No. 98; 2003 No. 316; 2004 Nos. 193 and 395; 2007 No. 40

R. 8.4 .................................. am. 1995 No. 16; 2001 Nos. 98 and 345; 2002 No. 100; 2004 No. 193; 2010 No. 181

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

Part 2

R. 8.5 .................................. am. 2001 No. 98 Heading to r. 8.6.................. rs. 2009 No. 332

R. 8.6 .................................. am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2008 No. 279

R. 8.6A ................................ ad. 2009 No. 332

R. 8.7 .................................. am. 2001 No. 98

Chapter 9

R. 9.1 .................................. am. 2001 No. 98 rs. 2002 No. 59

R. 9.2 .................................. am. 2001 No. 98

R. 9.3 .................................. am. 2001 No. 98

R. 9.4 .................................. am. 1995 No. 16; 2001 No. 98

R. 9.5 .................................. am. 2001 No. 98

Chapter 9A

Chapter 9A.......................... ad. 2001 No. 98

R. 9A.1 ................................ ad. 2001 No. 98

R. 9A.2 ................................ ad. 2001 No. 98

R. 9A.2A.............................. ad. 2002 No. 59 am. 2002 No. 173; 2003 No. 213

R. 9A.2B.............................. ad. 2003 No. 213 am. 2007 No. 357

R. 9A.3 ................................ ad. 2001 No. 98

R. 9A.4 ................................ ad. 2001 No. 98 am. 2002 No. 59; 2008 No. 279

R. 9A.5 ................................ ad. 2001 No. 98

Chapter 10

R. 10.1 ................................ am. 1995 No. 16; 2001 No. 98; 2003 No. 316

R. 10.2 ................................ am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2004 No. 395

R. 10.3 ................................ am. 1997 No. 345; 2001 No. 98

R. 10.4 ................................ am. 2001 No. 98

R. 10.5 ................................ am. 1995 No. 16; 2001 No. 98

R. 10.6 ................................ rs. 1995 No. 16

R. 10.7 ................................ am. 2005 No. 51

R. 10.8 ................................ rs. 2001 No. 98

R. 10.9 ................................ rep. 2001 No. 98

R. 10.10 .............................. am. 2001 No. 98

R. 10.11 .............................. am. 2001 No. 98

R. 10.12 .............................. am. 2001 No. 98

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

R. 10.13 .............................. rep. 2001 No. 98

R. 10.14 .............................. am. 2001 No. 98

Chapter 11

R. 11.1 ................................ am. 1997 No. 345

Chapter 12

R. 12.1 ................................ am. 2001 No. 98; 2007 No. 40 Heading to r. 12.2................ rs. 2001 No. 98

R. 12.2 ................................ am. 2001 No. 98

R. 12.3 ................................ am. 2001 No. 98

R. 12.4 ................................ am. 2001 No. 98

Chapter 13

R. 13.1 ................................ am. 2001 No. 98

R. 13.1A .............................. ad. 2001 No. 98 am. 2004 No. 395

R. 13.1B .............................. ad. 2004 No. 395

R. 13.2 ................................ am. 2001 No. 98

R. 13.3 ................................ am. 1994 No. 317; 1998 No. 264; 2001 No. 98; 2002

Nos. 59, 100 and 173 Notes 1, 2 to r. 13.3............. ad. 1998 No. 264

R. 13.4 ................................ rs. 1995 No. 16

am. 2000 No. 317; 2001 No. 98; 2002 No. 59; 2008 No. 279

R. 13.5 ................................ am. 2001 No. 98; 2004 No. 193 Heading to r. 13.6................ rs. 2001 No. 98

R. 13.6 ................................ am. 1994 No. 317; 1995 No. 82; 1998 Nos. 264 and 319;

2001 No. 98; 2002 Nos. 59 and 173 Notes 1, 2 to r. 13.6............. ad. 1998 No. 264

R. 13.7 ................................ ad. 2002 No. 59

Chapter 15

R. 15.1 ................................ rs. 2001 No. 98

R. 15.2 ................................ am. 2001 No. 98

R. 15.3 ................................ am. 1995 No. 16 rs. 2001 No. 98

Chapter 17

R. 17.1 ................................ rs. 2001 No. 98

R. 17.1A .............................. ad. 2001 No. 98

R. 17.2 ................................ am. 1995 No. 16; 2001 No. 98

Chapter 19

R. 19.1 ................................ am. 2001 No. 98

R. 19.2 ................................ am. 1995 No. 16; 2001 No. 98; 2002 No. 59

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

Chapter 20 Part 1

R. 20.1 ................................ am. 1994 No. 387; 1998 Nos. 56 and 345; 2001 No. 98 rs. 2008 No. 122

Part 2

R. 20.2 ................................ rs. 1998 No. 56; 2008 No. 122

R. 20.2A .............................. ad. 1998 No. 345 rep. 2008 No. 122

R. 20.2B .............................. ad. 1998 No. 345 rep. 2008 No. 122

R. 20.3 ................................ rs. 1998 No. 345; 2008 No. 122 am. 2009 No. 150

R. 20.3A .............................. ad. 1998 No. 345 rep. 2008 No. 122

R. 20.4 ................................ am. 1998 No. 345; 2001 No. 98; 2002 No. 173 rs. 2008 No. 122

R. 20.5 ................................ am. 1998 No. 345 rs. 2008 No. 122 Heading to r. 20.6................ rs. 1998 No. 345

R. 20.6 ................................ am. 1998 No. 345 rs. 2008 No. 122 am. 2009 No. 150

R. 20.7 ................................ rs. 1998 No. 345 am. 2001 No. 98 rs. 2008 No. 122 Heading to r. 20.8................ rs. 1998 No. 345

R. 20.8 ................................ am. 1998 No. 345 rs. 2008 No. 122 am. 2009 No. 150 Heading to r. 20.9................ rs. 1998 No. 345

R. 20.9 ................................ am. 1998 No. 345; 1999 No. 154 rs. 2008 No. 122 Heading to r. 20.10.............. rs. 1998 No. 345

R. 20.10 .............................. am. 1998 No. 345 rs. 2008 No. 122

R. 20.11 .............................. rs. 1998 No. 345 rs. 2008 No. 122 Heading to r. 20.12.............. rs. 1998 No. 345

R. 20.12 .............................. am. 1998 No. 345 rs. 2008 No. 122

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

Part 3

R. 20.13 .............................. am. 1998 No. 345 rs. 2008 No. 122 am. 2009 No. 150

R. 20.14 .............................. am. 1998 No. 345 rs. 2008 No. 122

Part 4

Heading to r. 20.15.............. rs. 1998 No. 345

R. 20.15 .............................. am. 1998 No. 345 rs. 2008 No. 122

R. 20.16 .............................. am. 1995 No. 16 rs. 1998 No. 345; 2008 No. 122

Heading to Div. 3 of............. rs. 1998 No. 345 Part 2 of Chapt. 20 rep. 2008 No. 122

R. 20.17 .............................. am. 1998 No. 345 rs. 2008 No. 122

R. 20.18 .............................. am. 1998 No. 345 rs. 2008 No. 122

R. 20.19 .............................. am. 1998 No. 345; 1999 Nos. 184 and 349; 2001 No. 98;

2002 No. 173 rs. 2008 No. 122

R. 20.19A ............................ ad. 1998 No. 345 am. 1999 No. 349; 2002 No. 173 rep. 2008 No. 122

R. 20.20 .............................. am. 1998 No. 345

rs. 2008 No. 122 Heading to r. 20.21.............. rs. 1998 No. 345

R. 20.21 .............................. am. 1998 No. 345; 2001 No. 98 rs. 2008 No. 122

Part 5

R. 20.22 .............................. am. 1998 No. 345 rs. 2008 No. 122

R. 20.23 .............................. am. 1998 No. 345 rs. 2008 No. 122

R. 20.24 .............................. am. 2001 No. 98 rs. 2008 No. 122

R. 20.25 .............................. am. 1998 No. 345; 2001 Nos. 98 and 345 rs. 2008 No. 122

Part 6

R. 20. 26 ............................. rs. 2008 No. 122

R. 20.27 .............................. am. 2001 No. 345 rs. 2008 No. 122

R. 20.28 .............................. rs. 2008 No. 122

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

Part 7

R. 20.29 .............................. am. 1998 No. 345; 2001 No. 345 rs. 2008 No. 122

R. 20.30 .............................. am. 1998 No. 345; 2001 No. 345 rs. 2008 No. 122

R. 20.31 .............................. am. 2001 No. 98 rs. 2008 No. 122

Part 8 Division 1

Heading to Div. 1 of............. rs. 1998 No. 56 Part 5 of Chapt. 20 rep. 2008 No. 122 Heading to Div. 1 of............. ad. 2008 No. 122 Part 8 of Chapt. 20 Heading to r. 20.32.............. rs. 1998 No. 345

R. 20.32 .............................. am. 1994 No. 387; 1995 No. 82 rs. 1998 No. 56 am. 1998 No. 345 rs. 2008 No. 122

R. 20.33 .............................. rep. 1998 No. 56 ad. 2008 No. 122

R. 20.34 .............................. rs. 1998 Nos. 56 and 345; 2008 No. 122

R. 20.35 .............................. rs. 1998 No. 56; 2008 No. 122

Division 2

R. 20.36 .............................. rep. 1998 No. 56 ad. 2008 No. 122

R. 20.37 .............................. am. 1994 No. 387 rs. 2008 No. 122

R. 20.38 .............................. am. 1994 No. 387 rs. 2008 No. 122

R. 20.39 .............................. am. 1994 No. 387 rs. 1998 No. 56; 2008 No. 122

R. 20.40 .............................. am. 1994 No. 387 rs. 1998 No. 56; 2008 No. 122

Heading to Div. 2 of............. rs. 1998 No. 345 Part 5 of Chapt. 20 rep. 2008 No. 122

R. 20.41 .............................. am. 1998 No. 345 rs. 2008 No. 122

R. 20.42 .............................. am. 2001 No. 98 rs. 2008 No. 122

R. 20.43 .............................. am. 1997 No. 345; 2001 No. 98 rs. 2008 No. 122

R. 20.44 .............................. am. 2001 No. 98 rs. 2008 No. 122

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

R. 20.45 .............................. rs. 2008 No. 122

R. 20.46 .............................. ad. 2008 No. 122

R. 20.47 .............................. ad. 2008 No. 122

R. 20.48 .............................. ad. 2008 No. 122

R. 20.49 .............................. ad. 2008 No. 122

R. 20.50 .............................. ad. 2008 No. 122

R. 20.51 .............................. ad. 2008 No. 122

R. 20.52 .............................. ad. 2008 No. 122 Note to r. 20.52 (3).............. am. 2008 No. 279

Part 9

R. 20.53 .............................. ad. 2008 No. 122

Part 10 Division 1

R. 20.54 .............................. ad. 2008 No. 122

R. 20.55 .............................. ad. 2008 No. 122

R. 20.56 .............................. ad. 2008 No. 122

R. 20.57 .............................. ad. 2008 No. 122

R. 20.58 .............................. ad. 2008 No. 122

R. 20.59 .............................. ad. 2008 No. 122

R. 20.60 .............................. ad. 2008 No. 122

Division 2

R. 20.61 .............................. ad. 2008 No. 122

R. 20.62 .............................. ad. 2008 No. 122

R. 20.63 .............................. ad. 2008 No. 122

R. 20.64 .............................. ad. 2008 No. 122

R. 20.65 .............................. ad. 2008 No. 122

Chapter 21

R. 21.1 ................................ am. 1999 No. 184

R. 21.2 ................................ ad. 1994 No. 182 rs. 1998 No. 257; 1999 No. 184

Chapter 22 Part 1 Division 1

R. 22.1 ................................ am. 1998 Nos. 241 and 342

R. 22.2 ................................ am. 1991 No. 456; 1993 No. 113; 1994 No. 317; 1997 No. 345; 2001 No. 98; 2002 No. 173; 2003 No. 316; 2010 No. 181

R. 22.2A .............................. ad. 1998 No. 241 rs. 2001 No. 98

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

R. 22.2B .............................. ad. 2001 No. 98 am. 2002 No. 173

R. 22.2C.............................. ad. 2001 No. 98 am. 2002 Nos. 59 and 173; 2003 No. 213

R. 22.2D.............................. ad. 2001 No. 98 am. 2002 No. 173

R. 22.2E .............................. ad. 2001 No. 98 am. 2002 No. 173

R. 22.2F .............................. ad. 2001 No. 98 am. 2002 No. 173; 2010 No. 181

R. 22.2G.............................. ad. 2001 No. 98 am. 2002 No. 173

R. 22.2H.............................. ad. 2001 No. 98 am. 2002 No. 173

R. 22.2I ............................... ad. 2002 No. 173

R. 22.3 ................................ am. 1995 No. 16; 2001 No. 98; 2002 No. 173

R. 22.4 ................................ am. 1995 Nos. 16 and 427; 1998 No. 342; 2003 No. 316 Note to r. 22.4 (1C) ............. rep. 2003 No. 316

R. 22.5 ................................ am. 1995 No. 16; 2001 No. 98

R. 22.6 ................................ am. 1995 No. 16; 2001 No. 98

R. 22.7 ................................ am. 1995 No. 16

Division 2

R. 22.7A .............................. ad. 1993 No. 340

R. 22.8 ................................ am. 1993 No. 340; 1995 No. 16; 2001 No. 98

Part 2

R. 22.8A .............................. ad. 2001 No. 98 rep. 2009 No. 332

R. 22.9 ................................ am. 2001 No. 98

R. 22.10 .............................. am. 2001 No. 98

R. 22.10A ............................ ad. 2001 No. 98

R. 22.10AA.......................... ad. 2007 No. 40

R. 22.10AB.......................... ad. 2007 No. 40

R. 22.10AC.......................... ad. 2007 No. 40

R. 22.11 .............................. am. 1993 No. 113; 1995 No. 82; 1998 Nos. 241, 264 and 319; 2001 No. 98; 2002 No. 59; 2004 No. 250; 2008 No. 122

R. 22.13 .............................. am. 1995 No. 16; 2009 No. 150

R. 22.15 .............................. am. 1995 No. 16 rs. 1998 No. 141 am. 2003 No. 213

R. 22.16 .............................. am. 2001 No. 98; 2009 No. 332

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

R. 22.20 .............................. am. 1995 No. 16

R. 22.21 .............................. am. 2001 No. 98

R. 22.23 .............................. am. 1995 No. 16

R. 22.26 .............................. am. 1995 No. 16; 1998 Nos. 45, 291 and 345; 2001 No. 98; 2004 No. 395; 2005 No. 51; 2008 No. 122

Chapter 23

R. 23.2 ................................ am. 2001 No. 98

R. 23.3 ................................ am. 1995 No. 16; 2001 No. 98

R. 23.4 ................................ am. 1995 Nos. 16 and 82; 2001 No. 98

R. 23.5 ................................ am. 2001 No. 98

R. 23.6 ................................ am. 2001 No. 98

R. 23.7 ................................ am. 2001 No. 98

R. 23.8 ................................ am. 1995 No. 16

R. 23.9 ................................ am. 1994 No. 317

R. 23.10 .............................. am. 1994 No. 317; 1995 No. 16; 1997 No. 345

R. 23.11 .............................. am. 1995 No. 16; 2001 No. 98

R. 23.12 .............................. am. 2001 No. 98

R. 23.13 .............................. am. 2001 No. 98

R. 23.14 .............................. am. 1995 No. 16

R. 23.16 .............................. am. 2001 No. 98

R. 23.17 .............................. am. 1995 No. 16; 2001 No. 98

R. 23.18 .............................. am. 1995 No. 16

R. 23.19 .............................. am. 2001 No. 98 rep. 2008 No. 122

R. 23.20 .............................. am. 1995 No. 16; 2001 No. 98 rep. 2008 No. 122

R. 23.21 .............................. am. 2001 No. 98 rep. 2008 No. 122

R. 23.22 .............................. am. 2001 No. 98 rep. 2008 No. 122

R. 23.23 .............................. am. 2001 No. 98 rep. 2008 No. 122

R. 23.24 .............................. rep. 2008 No. 122

R. 23.25 .............................. am. 1995 No. 16; 2001 No. 98

R. 23.27 .............................. ad. 1998 No. 345 rep. 2008 No. 122

R. 23.28 .............................. ad. 1998 No. 345 rep. 2008 No. 122

R. 23.29 .............................. ad. 1998 No. 345 rep. 2008 No. 122

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

R. 23.30 .............................. ad. 1998 No. 345 rep. 2008 No. 122

R. 23.31 .............................. ad. 1998 No. 345 rep. 2008 No. 122

R. 23.32 .............................. ad. 2001 No. 98

R. 23.33 .............................. ad. 2001 No. 98

R. 23.34 .............................. ad. 2001 No. 98

R. 23.35 .............................. ad. 2001 No. 98

Schedule 1

Schedule 1 .......................... am. 1995 No. 16

Schedule 1A

Heading to Schedule 1A ..... ad. 1995 No. 16 Schedule 1A........................ am. 1995 No. 16; 2002 No. 317

Schedule 2

Schedule 2 .......................... am. 1991 No. 456 rs. 1992 No. 148 am. 1993 Nos. 227 and 341; 1995 No. 16; 2002 No. 59

Schedule 2A

Heading to Schedule 2A ..... ad. 1995 No. 16 Schedule 2A........................ am. 1995 Nos. 16 and 427; 1997 No. 345 rs. 1998 No. 141 am. 1998 No. 342; 1999 No. 349; 2000 No. 317; 2001 No. 345; 2002 Nos. 59 and 317; 2003 No. 316; 2005 No. 51; 2006 No. 55; 2007 No. 40; 2008 Nos. 178 and 279; 2009 No. 150; 2010 No. 181

Schedule 3

Heading to Schedule 3........ rs. 2001 No. 98; 2009 No. 332 Schedule 3 .......................... am. 1995 No. 16; 1998 No. 141; 2000 No. 317; 2001 No. 98; 2003 No. 213

Schedule 4

Schedule 4 .......................... rs. 1991 No. 456 am. 1992 No. 148 rs. 1993 No. 340 am. 1994 No. 182; 1995 Nos. 20 and 427 rs. 1996 No. 271; 1997 No. 345 am. 1998 Nos. 257 and 342; 1999 No. 349 am. 1994 No. 387 rs. 1998 No. 345 am. 2002 Nos. 173 and 317; 2004 Nos. 23 and 193; 2005

No. 51; 2007 No. 40; 2008 No. 279

Schedule 5

Schedule 5 .......................... rs. 2008 No. 122

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

Provision affected How affected

Schedule 6 .......................... am. 1998 No. 345; 2001 No. 184 rep. 2008 No. 279

Schedule 6A........................ ad. 1994 No. 182 rs. 1997 No. 192 am. 1997 No. 345 rs. 1998 No. 257 rep. 1999 No. 184

Schedule 7

Schedule 7 .......................... am. 1991 No. 456 rs. 1992 No. 148 am. 1993 Nos. 113 and 340; 1994 No. 317; 1995 Nos. 16,

82 and 427; 1997 Nos. 192 and 345; 1998 Nos. 264, 319, 342 and 345; 1999 Nos. 261 and 349; 2000 No. 317; 2001 Nos. 98 and 345; 2002 Nos. 59 and 173; 2003 Nos. 213 and 316; 2006 No. 355; 2007 No. 40; 2008 Nos. 122 and 178; 2010 No. 181

Schedule 8

Schedule 8 .......................... am. 1992 No. 148 rs. 1993 No. 113 am. 1993 No. 340; 1994 No. 317; 1998 No. 345; 1999

No. 184; 2006 No. 355

Note 2

Note 2

Schedule 2 [Item 2] of the Patents Amendment Regulations 2010 (No. 1) (SLI 2010 No. 181) provides as follows:

[2] After regulation 2.22E

insert

22.2EA Failure to pay: fee for grant of leave to amend specification

(1)
This regulation applies if:
(a)
a fee m entioned in item 222A of Sc hedule 7 relating to a grant of leave to am end a com plete specification is not paid when it is payable; and
(b)
within 1 month after the fee is payable, the Commissioner invites the person by whom the fee is payable to pay the fee within 1 m onth after the date on which notice of the grant of leave is published under subregulation 10.5 (2); and
(c)
the fee is not paid within the 1 month period.
(2)
The request for leave to am end the com plete specification is taken not to have been filed.

The proposed am endment was m isdescribed and is not incorporated in this compilation.

185

Table A

Table A Application, saving or transitionalprovisions

Statutory Rules 1997 No. 345

3 Application to certain applications

3.1 The a mendment of Pa rt 4 of Sc hedule 7 of the Patents Regulations by regulation 14 of th ese Regulations applies only to an international application filed on or after 1 January 1998.

Statutory Rules 1998 No. 56

13 Definitions

13.1 In this Part: new Board means the Professional Standards B oard for Patent

and Trade Marks Attorneys established under Chapter 20 of the Patents Regulations as amended by these Regulations. old Board means the Patent Attor neys Professional Standards

Board:

(a)
established under Chapter 20 of the Patents Regulations before the commencement of these Regulations; and
(b)
as constituted at any tim e before the commencem ent of these Regulations.

14 Continuing effect of certain applications

14.1 This regulation applies to an application (inc luding anything accompanying the app lication) made in accordance with regulation 20.2 of the Patents Regulations if:

(a) the application was m ade before the comm encement of these Regulations; and

Table A

(b) anything that could have been done by the old Board under Chapter 20 of the Patents Regulations in relation to the application (unfinished business) was not done before the commencement of these Regulations.

14.2 The application is taken to have been m ade in accordance with regulation 20.2 of the Patents Re gulations as amended by these Regulations.

14.3 The unfinished business m ay be finished by the new Board in accordance with Chapter 20 of the Patents Regulation s as amended by these Regulations.

15 Continuing effect of decisions of old Board

15.1 This regulation applies to a ny act done, or decision m ade, by the old Board under Chapter 20 of the Patents Regulations as amended and in force at any time before the commencement of these Regulations.

15.2 The act or decision has effect as if the act had been done, or decision had been made, by the new Board.

16 Continuing effect of certificates

16.1 This regulation applies to each certificate given by the old Board under Chapter 20 of the Pa tent Regulations as am ended and in force at any tim e before the commencem ent of t hese Regulations.

16.2 The certificate is as valid as it would be if it ha d been given by the new Board.

17 Continuing effect of certain complaints

17.1 This regulation applies to a complaint in writing to the old Board m ade under Part 4 of Chapter 20 of the Patents Regulations as amended and in force at any time, if:

(a)
the com plaint was m ade before the commencem ent of these Regulations; and
(b)
anything that could have been done by the old Board in relation to the com plaint under the Part ( unfinished

187

Table A

business) was not done before the commencement of these Regulations.

17.2 The unfinished business m ay be finished by the new Board in accordance with Part 4 of Chapter 20 o f the Patents Regulations.

17.3 Any reply or further information sought by the old Board under regulation 20.20 of the Patents Regulations, but not given to the old Board before the commencem ent of these Regulations must be giv en to th e new Board in accordan ce with regu lation

20.20 as if the reply or further information had been sought by the new Board.

Statutory Rules 1999 No. 261

4 Transitional

Paragraphs 6.3 (ea) and (e b) as substituted by these Regulations do not apply to a pate nt or patent application f or which, before the comm encement of these Regulations, the Commissioner extended the tim e for m aking an application under section 38 or 94 of the Act.

Statutory Rules 2002 No. 59

4 Transitional

(1)
The am endment m ade by item [3] of Schedule 1 applies to information made publicly available on or after 1 April 2002.
(2)
The am endment m ade by item [19] of Schedule 1 does not apply to an application that has lapsed becaus e of paragraph 142 (2) (f) of the Act.
(3)
The amendment made by item [28] of Schedule 1 applies to an application made on or after 1 April 2002.

Table A

Statutory Rules 2002 No. 317

4 Transitional

(1)
The amendments made by item s [1] to [4] and [6 ] to [15] o f Schedule 2 apply in relation to an inte rnational applica tion if the inte rnational f iling date of the application is a date on or after 1 January 2003.
(2)
The am endments m ade by item s [5] and [16] of Schedule 2 apply in relation to an international application if the applicable time limit under Article 22 or 39(1) of the PCT expires on or after 1 January 2003.

Note international application, international filing date and PCT have the meanings given in the dictionary in Schedule 1 to the Act.

Statutory Rules 2003 No. 316

4 Transitional

(1)
The a mendments m ade by item s [7] to [171] of Schedule 2 apply to an international appli cation if the inter national f iling date of the application is a date on or after 1 January 2004.
(2)
However:
(a)
the amendments made by item s [50] and [171] of Schedule 2 do not apply to an international application that is filed before 1 Ja nuary 2004 but is given an international filing date that is on or after 1 January 2004; and
(b)
the amendments made by ite ms [44], [104], [105], [106], [108], [114] to [125] and [166] of Schedule 2 also apply to an international application that was filed before 1 January 2004 if a de mand for international prelim inary examination of the a pplication is f iled on or af ter 1 January 2004; and

189

Table A

(c)
the am endments m ade by item s [143] to [145] of Schedule 2 also apply to an in ternational application that was filed before 1 January 2004, for which an international preliminary examination report is established on or after 1 January 2004; and
(d)
the am endment m ade by ite m [170] of Schedule 2 also applies to the giving, on or af ter 1 January 2004, of copies of an intern ational preliminary examination report for an application that was filed before 1 January 2004.

Statutory Rules 2004 No. 193

4 Transitional — amendments made by Schedule 2

(1)
This regula tion applies to a PCT applica tion that, bef ore 1 July 2004 was not open to public inspection.
(2)
If the PCT application was fil ed before 1 January 2004, regulations 8.3, 8.4 and 13.5 of the Patents Regulations 1991, as in force immediately before 1 July 2004, continue to apply in relation to the application.
(3)
If the PCT application wa s filed after 31 December 2003 and published under Article 21 of the PCT before 1 July 2004, it is taken, for paragraph 90 (b) of the Act as modified under regulation 8.3 of the Patents Regulations 1991, to have been published on 1 July 2004.

Statutory Rules 2004 No. 395

4 Transitional

(1) The am endments m ade by item s [2] and [4] of Schedule 1 apply to an applic ation in rela tion to which the applic ant had not m et the requ irements of subsection 89 (3 ) of the Patents Act 1990 before these Regulations commence.

Table A

(2)
The amendment made by item [3] of Schedule 1 applies to an application in relation to which a patent request and complete specification had not been accep ted under section 49 of the Patents Act 1990 before these Regulations commence.
(3)
The amendments made by items [5] to [8] of Schedule 1 apply to requests f or leave to am end in relatio n to which the Commissioner had not granted leave under regulation 10.5, and in resp ect of which the corr esponding patent request and complete specification had not been accepted under section 49 of the Patents Act 1990, before these Regulations commence.
(4)
The amendment made by item [10] of Schedule 1 applies to an application f or an inno vation pate nt in re lation to whic h a patent request and complete specification had not been accepted under section 52 of the Patents Act 1990 before these Regulations commence.

Select Legislative Instrument 2005 No. 51

4 Transitional

(1)
The amendments made by Schedule 1 apply to an entry in the Register made:
(a)
on or after the commencement of these Regulations; and
(b)
before the commencement of these Regulations.
(2)
The am endments m ade by item s [2] to [23] of Schedule 2 apply to an international appli cation if the inter national f iling date of the application is a date on or after 1 April 2005.
(3)
However, the amendments made by items [10] and [18] to [21] of Schedule 2 also apply to an international ap plication th at was filed before 1 April 2005 if a dem and for international preliminary examination of the application is filed on or after 1 April 2005.

191

Table A

Select Legislative Instrument 2006 No. 55

Transitional

(1)
The am endments m ade by Part 2 of Schedule 1 apply in relation to:
(a)
an international application:
(i)
the filing date of which occurred before 1 April 2006; and
(ii)
that is published under Article 21 of the Patent Cooperation Treaty on or after 1 April 2006; and
(b)
an intern ational applic ation the f iling date o f which occurs on or after 1 April 2006.
(2)
The am endments m ade by Part 3 of Schedule 1 apply in relation to:
(a)
an international application:
(i)
the filing date of which occurred before 1 April 2006; and
(ii)
that is communicated under Article 20 of the Patent Cooperation Treaty on or after 1 April 2006; and
(b)
an intern ational applic ation the f iling date o f which occurs on or after 1 April 2006.
(3)
The am endments m ade by Part 4 of Schedule 1 apply in relation to the issue, on or af ter 1 April 2006, of a Gazette in relation to an international application the filing date of which occurred at any time.
(4)
The am endments m ade by Part 5 of Schedule 1 apply in relation to:
(a)
the comm unication, on or after 1 April 2006, of an international application the filing date of which occurred at any time; and
(b)
the communication, on or after 1 April 2006, of a Gazette in relation to an interna tional application the f iling date of which occurred at any time; and

Table A

(c) the communication, on or after 1 April 2006, of another publication in relation to an intern ational application the filing date of which occurred at any time.

Select Legislative Instrument 2007 No. 40

Transitional provisions for Schedule 4 — amendments of Patents Regulations 1991 commencing on 1 April 2007

(1)
Subject to subregulation (2), the am endments m ade by Schedule 4 apply to an internat ional app lication whose f iling date is on or after 1 April 2007.
(2)
An amendment made by an item of Schedule 4 mentioned in an item in table 1, to a provision of the Rules mentioned in that table, does not apply to an inte rnational application in respect of which 1 or m ore elements referred to in Article 11 (1) (iii) were first received by the receiving Office before 1 April 2007.

Table 1

Item Item of Schedule 4 Provision of the Rules

1 29 Rule 4.1 (c) (iv)
2 31 Rule 4.18
Rule 4.19
3 35 Rule 12.1bis
4 38 Rule 12.3
5 39 Rule 20.1
Rule 20.2
Rule 20.3
Rule 20.4
Rule 20.5
Rule 20.6
Rule 20.7
Rule 20.8
6 40 Rule 21.2
Patents Regulations 1991 193

Table A

Item Item of Schedule 4 Provision of the Rules
7 41 Rule 22.1
8 42 Rule 26.1
Rule 26.2
9 43 and 44 Rule 26.3ter
10 45 Rule 26.4
Rule 26.5
11 55 Rule 48.2 (b) (v)
12 58 Rule 51.1
Rule 51.2
13 59 Rule 51bis.1 (e)
14 61 Rule 55.2
15 69 and 70 Rule 76.5
16 71 Rule 82ter.1
(3)
The am endments m ade by Schedule 4 do not apply to an international applica tion whose f iling date is bef ore 1 April 2007, except as mentioned in subregulation (4).
(4)
For subreg ulation (3), an am endment m ade by an item of Schedule 4 m entioned in an item in table 2, to a provision of the Rules mentioned in that tab le, a pplies to an inte rnational application whose filin g date is b efore 1 April 2007, in the circumstance or subject to the condition m entioned in the item in table 2.

Table 2

Item Item of Provision of the Circumstance or condition Schedule 4 Rules

48 and 49 Rule 34.1 Applies in relation to any international search carried out on or after 1 April 2007

Table A

Item Item of Provision of the Circumstance or condition
Schedule 4 Rules
2 52 Rule 43.4 Applies in relation to an international application in respect of which an international search report is established on or after
1 April 2007
3 53 54 65 66 67 Rule 43.6bis Rule 43bis.1 (b) Rule 66.1 (d) Rule 66.4bis Rule 70.2 (e) Apply in relation to international search reports, written opinions and international preliminary examination reports established on or after 1 April 2007, as if references to
rectifications of obvious
mistakes authorised under Rule
91.1 were references to
rectifications of obvious errors
authorised under that Rule
before 1 April 2007
4 56 Rule 48.3 (c) Applies in relation to an international application that is published under Article 21 on or after 1 April 2007
5 57 Rule 49ter.2 Applies in respect of acts mentioned in Article 22 (1) that are performed on or after 1 April 2007
6 60 61 62 62 Rule 54bis.1 (a) Rule 55.2 (ater) Rule 55.2 (c) Rule 55.2 (d) Apply in relation to an international application in respect of which a demand for international preliminary examination is made on or
after 1 April 2007
7 70 Rule 76.5 Applies, to the extent that it has the effect of making Rule 49ter.2 applicable, in respect of acts mentioned in Article
39 (1) (a) that are performed on or after 1 April 2007

Table A

(5)
In relation to the am endment made by item 39 of Schedule 4, information as to inco mpatibility given to th e Inte rnational Bureau under Rule 20.4 (d) befo re 1 April 2007 is taken to remain effective under Rule 20.1 (d) on or after 1 April 2007.
(6)
In relation to the am endment made by item 60 of Schedule 4, information as to inco mpatibility given to th e Inte rnational Bureau und er Rule 51 bis.1 (f) in re lation to Rule 51 bis.1 (e) before 1 April 2007 is taken to rem ain effective under Rule 51bis.1 (f) in relation to Rule 51 bis.1 (e) on or after 1 April 2007.

Select Legislative Instrument 2008 No. 122

Transitional

(1)
The amendments made by Schedules 1 and 2 apply to:
(a)
an application for registra tion received on or after 1 July 2008; and
(b)
a disciplinary proceeding commenced on or after 1 July 2008.
(2)
For paragraph (1) (b), discip linary proceeding s are taken to have commenced on or before 30 June 2008 if, on or before that date, the Board has given written author ity to a complainant to bring proceedings against a reg istered patent attorney.
(3)
If, on or before 30 June 2008:
(a)
a person has been granted an exem ption from a requirement in Schedule 5 to the Patents Regulations 1991; or
(b)
the Board has decided that it is satisfied that a person has an academic qualification; or
(c)
the Board has accredited a course of study;

the exemption, decision or accreditation app lies to that perso n or course, as if it had been exem pted, decid ed or accred ited

Table A

under the relevant provision of the Patents Regulations 1991, as amended by these Regulations.

(4)
If, in the period starting on 1 July 2008 and ending at the end of 30 June 2009:
(a)
a person would have satisfied the employm ent requirements set out in regulation 20.3 of the Patents Regulations 1991 immediately before the commencement of Schedule 1; and
(b)
the person applies for registration as a patent attorney; the person is taken to meet the employment requirements.

Select Legislative Instrument 2008 No. 178

Transitional provision for international applicationsreceived or filed before commencement

(1)
Despite the am endment of Schedule 2A to the Patents Regulations 1991 by Schedule 1 to these Regulations, Schedule 2A to the Patents Regulations 1991, as in force immediately before 1 July 2008, co ntinues to apply in relation to an international application whose international filing date is earlier than 1 July 2008.
(2)
Despite the amendment of:
(a)
the Schedule of Fees in Schedule 2A to the Patent Regulations 1991 by S chedule 1 to these Regulations; and
(b)
Part 4 of Schedule 7 to the Patents Regulations 1991 by

Schedule 1 to these Regulations; the Schedule of Fees in Schedul e 2A, and Part 4 of Schedule 7, to the Patents Regulations 1991, as in force immediately before 1 July 2008, continue to apply in relation to an international application:

(c) whose international filing date is earlier than 1 July 2008; or

197

Table A

(d) that was received by the Patent Office before 1 July 2008.

Select Legislative Instrument 2008 No. 279

3 Amendment of Patents Regulations 1991 — Schedule 1

(1)
Schedule 1 amends the Patents Regulations 1991.
(2)
The amendments made by Sche dule 1 apply in relation to an international application whose international filing date is on or after 1 January 2009.
(3)
The amendments made by item s [1] to [5] and [7 ] to [17] o f Schedule 1 also apply in relation to an international application if:
(a)
the inte rnational f iling date of the applic ation is ear lier than 1 January 2009; and
(b)
the time limit for making a supplementary search request in relation to the application under Rule 45 bis.1(a) of Schedule 2A to the Patents Regulations 1991, as amended by Schedule 1 to th ese Regulations, expires on or after 1 January 2009.

Select Legislative Instrument 2009 No. 150

3 Amendment of Patents Regulations 1991 — Schedule 1

(1)
Schedule 1 amends the Patents Regulations 1991.
(2)
The am endment m ade by item [3] of Schedule 1 applies in relation to an intern ational applic ation whos e intern ational filing date is on or after 1 July 2009.

Table A

(3) The amendments made by items [4] to [7] of Schedule 1 apply in re lation to an in ternational applic ation f or which an amendment under Article 19 or 34 of the PCT is m ade on or after 1 July 2009.

199

Patents Regulations 1991

Statutory Rules 1991 No. 71 as amended

made under the

Patents Act 1990

This compilation was prepared on 1 August 2010 taking into account amendments up to SLI 2010 No. 181

This document has been split into two volumes Volume 1 contains Chapters 1 to 23 and Schedules 1, 1A and 2, and Volume 2 contains Schedules 2A to 8 and the Notes Each volume has its own Table of Contents

Prepared by the Office of Legislative Drafting and Publishing, Attorney-General’s Department, Canberra

Contents

Chapter 1 Introductory

1.1 Name of Regulations [see Note 1] 14

1.2 Commencement 14

1.3 Interpretation 14 1.3A Meaning of completed in relation to a search 16

1.4 English text of treaties 17

1.5 Deposit requirements: prescribed period 17

1.6 Disclosure in basic applications — general 18 1.6A Disclosure in basic applications — use of approved digital library 18

1.7 Verification of translations of international applications 19

1.8 Completion of applications 19

Chapter 2 Patent rights, ownership and validity

2.1 Applications by co-owners for directions 21

2.2 Publication or use: prescribed circumstances 21

2.3 Publication or use: prescribed periods 23

2.4 Prescribed period: patents of addition 24

2.5 Prescribed period: assertion that invention is not a patentable invention 24

2.6 Prescribed period: notification of assertion of invalidity of innovation patent 25

2.7 Documents to accompany notice of assertion of invalidity 25

Chapter 3 From application to acceptance

Part 1 Inventions generally

3.1 Prescribed documents: patent applications 26 3.1A Applicant taken to be nominated person 27

3.2 Provisional specifications 27 3.2A Specifications — standard patents 27 3.2B Specifications: formalities check for innovation patents 28

3.3 Abstracts 30

3.4 Substitute abstracts 31

3.5 Filing date 32 3.5A Filing date: incomplete specifications 33 3.5B Filing of documents outside business hours 34

3.6 Requests to make determinations between interested parties 34

3.7 Form of certain applications 34

3.8 Time within which applications are to be made following certain decisions and declarations 34

3.9 Prescribed period: treatment of complete application as provisional 35

3.10 Prescribed period: making of complete applications 35

3.12 Priority dates generally 35

3.13 Priority dates: certain persons and applications 39

3.14 Priority dates: certain amended claims 39

3.15 Prescribed period and form of request for examination 40

3.16 Prescribed grounds and period for examination 40

3.17 Requirement for Commissioner to direct or expedite examination 40 3.17A Results of documentary searches — foreign patent office 41 3.17B Prescribed documentary searches by or on behalf of a foreign patent office 42

3.18 Report of Commissioner: examination 45

3.19 Conduct of examination: standard patents 46

3.20 Requests for deferment of examination or modified examination 47

3.21 Prescribed foreign countries: requests for deferment of examination and modified examination 48

3.22 Disclosure of patent documents and information to International Bureau etc 48

Part 2 Inventions that are micro-organisms

3.23 Documents in accepted applications and patents involving micro-organisms 50

3.24 Commissioner may request samples and viability statement 50

3.25 Request for Commissioner’s certificate authorising release of sample of a micro-organism 51

3.26 Breach of undertakings given in respect of micro-organisms 54

3.27 Procedure in proceedings for breach of an undertaking 55

3.28 Relief in proceedings for breach of undertakings 55

3.29 Notification that a deposit requirement has ceased to be satisfied 56

3.30 Prescribed period: deposit requirements taken to be satisfied 57

3.31 Application for declaration that deposit requirements are not satisfied 59

Chapter 4 Publication

4.1 Prescribed information: applicants and applications 61

4.2 Notice that specification is open to public inspection 61

4.3 Prescribed documents: public inspection 62

Chapter 5 Opposition

5.1 Application of this Chapter 63

5.2 Interpretation 63

5.3 Filing of opposition (except under section 101M of the Act) 64 5.3AA Filing of opposition under section 101M of Act 65 5.3A Amendment of notice of opposition: correction of error or mistake 65 5.3B Amendment of notice of opposition: change of opponent 66

5.4 Filing of statement 66

5.5 Dismissal of opposition 66

5.6 Determination of opposition 67

5.7 Opponent to serve copy of substitute statement 68

5.8 Time for giving of evidence 68

5.9 Amendment of statement 70 5.9A Amendment of statement: additional ground as a result of amendments of the Act by the US Free Trade Agreement Implementation Act 2004 71

5.10 Conduct of proceedings to which this Chapter applies 72

5.11 Commissioner may inform himself or herself 73

5.12 Hearing of opposition 73

5.13 Representations to Commissioner 74

5.14 Commissioner not required to hold hearing 74

5.15 Withdrawal of opposition 74 Page

Chapter 6 Grant and term of patents

Part 1 Patents generally

6.1 Publication of notice of grant of standard patent 75

6.2 Prescribed period: grant of standard patent 75

6.3 Date of patent 75

6.4 Form of application for sealing of duplicate of patent 77

Part 2 Extension of pharmaceutical patents

6.7 Definitions 78

6.8 Information to accompany application 78

6.9 Application without pre-TGA marketing approval 78

6.10 Application with pre-TGA marketing approval 79

6.11 Further information 79

Chapter 6A Divisional applications 6A.1 Divisional applications: standard patents 81 6A.2 Divisional applications: innovation patents 81

Chapter 7 Patents of addition

7.1 Form of application for grant of patent of addition etc 82

7.2 Form of application for revocation of patent and grant of patent of addition instead 82

Chapter 8 PCT applications and Convention applications

Part 1 PCT applications

8.1 International applications taken to be applications

under the Act 83 8.1A Title of an invention 84

8.2 Prescribed documents: PCT application 84

8.3 Modification of Act to apply to PCT applications 85

8.4 Form of request and prescribed documents: PCT applications 94

Part 2 Convention applications

8.5 Convention countries 95

8.6 Particulars required for Convention application — general 95

8.6A Particulars required for Convention application — use of approved digital library 96

8.7 Form of request in relation to withdrawn, abandoned or refused applications 96

Chapter 9 Re-examination

9.1 Notice of Commissioner’s decision to re-examine complete specification 97

9.2 Request for re-examination of complete specification 97

9.3 Copy of report on re-examination 98

9.4 Prescribed period: statement disputing report by Commissioner 98

9.5 Completion of re-examination 99

Chapter 9A Examination of innovation patents

9A.1 Request for examination 101 9A.2 Examination of complete specification 101 9A.2A Results of documentary searches — innovation patent 102 9A.2B Prescribed documentary searches by or on behalf of a foreign patent office 103 9A.3 Conduct of examination 105 9A.4 Period for examination 106 9A.5 Validity of innovation patent 107

Chapter 10 Amendments

10.1 Form of amendments 108

10.2 Commissioner to consider and deal with requests for leave to amend 109

10.3 Amendments not allowable 112

10.4 Commissioner to refuse request for leave to amend 114

10.5 Commissioner to grant leave to amend 114

10.6 Time for allowance of amendments 115

10.7 Correction of Register or patent 116

10.8 Prescribed decisions: appeal to Federal Court 119

10.10 Prescribed period: filing of court order 119

10.11 Form of direction by Commissioner: patents 119

10.12 Form of direction by Commissioner: applications 119

10.14 Form of request: claim under assignment or agreement 119

Page
Chapter 11 11.1 Infringement Infringement exemptions: prescribed foreign countries 120
Chapter 12 12.1 12.2 12.3 12.4 Compulsory licences and revocation of patents Lodgment of applications for compulsory licences Prescribed period: revocation of patent Form of notice: offer to surrender patent Applications to revoke patents 121122122122

Chapter 13 Withdrawal and lapsing of applications and ceasing of patents

13.1 Publication of notice of withdrawal of application 124 13.1A Period in which standard patent applications may not be withdrawn 124

13.1B Period in which innovation patent applications may not be withdrawn 124

13.2 Prescribed period: request for examination of applications 125

13.3 Prescribed period: continuation fees 125

13.4 Prescribed period: acceptance of request and specification 126

13.5 If applications lapse 128

13.6 Time for payment of renewal fee for patent 128

13.7 Prescribed period: ceasing of innovation patents 130

Chapter 15 Special provisions relating to associated technology

15.1 Time for restoration of application for patent 131

15.2 Requirements for reinstatement of international applications 131

15.3 Prescribed period: order relating to standard patent 131

Chapter 17 The Crown

17.1 Application for declaration: exploitation of

innovation patent 132 17.1A Prescribed period: order relating to standard patent 132

17.2 Prescribed period, document and fee: filing of international applications 132

Chapter 19 The register and official documents

19.1 Particulars to be registered 133

19.2 Request for information from Commissioner 134 Page

Chapter 20 Patent attorneys

Part 1 Introduction

20.1 Interpretation 135

Part 2 Obtaining registration for first time

20.2 Form of application 136

20.3 Evidence that applicant meets registration requirements 136

20.4 Certificate of registration 137

20.5 Evidence of academic qualifications 137

20.6 Academic qualifications 137

20.7 Evidence of knowledge requirements 138

20.8 Knowledge requirements 139

20.9 Exemption from a requirement in Schedule 5 140

20.10 Employment requirements 140

20.11 Statements of skill 141

20.12 Prescribed offences 142

Part 3 Accreditation of courses of study

20.13 Accreditation of courses of study 143

20.14 Provisional accreditation 144

Part 4 Board examinations

20.15 Board examinations 145

20.16 Time for holding Board examinations 145

20.17 Examinable subject matter 145

20.18 Admission to sit for a Board examination 146

20.19 Notification of Board examination results 146

20.20 Reasons for failure of Board examination 146

20.21 Supplementary Board examination 146

Part 5 Maintaining registration

20.22 Requirements for remaining on Register 148

20.23 Payment of annual registration fee 148

20.24 Continuing professional education — number of hours 148

Page
20.25 Method of demonstrating that continuing professional education has been undertaken 149
Part 6 Removal from Register
20.26 20.27 20.28 Voluntary removal of name from Register Failure to pay annual registration fee Failure to comply with continuing professional education requirements 150150150
Part 7 Returning to Register
20.29 20.30 20.31 Restoring attorney’s name to Register Restoring attorney’s name to Register following payment of unpaid fee Returning to Register in other circumstances 152153153
Part 8 Discipline
Division 1 General
20.32 Definitions 155
20.33 20.34 20.35 Role of Board in disciplinary proceedings Board may require attorney to cooperate with investigationCommencing disciplinary proceedings 155 157157
Division 2 Proceedings in Disciplinary Tribunal
20.36 20.37 20.38 Procedure of Disciplinary Tribunal Notification of hearing of disciplinary proceedings Hearings to be public except in special circumstances 157158158
20.39 20.40 20.41 Representation before Disciplinary Tribunal Summoning of witnesses Offences by persons appearing before Disciplinary Tribunal 159159 159
20.42 20.43 20.44 20.45 20.46 20.47 Protection of person constituting Disciplinary Tribunal, witnesses etc Decision of Disciplinary Tribunal Penalties — professional misconduct Penalties — unsatisfactory professional conduct Finding that attorney was unqualified at time of registrationFinding that registration obtained by fraud 161162162163 164164
Patents Regulations 1991 9
Page
20.48 20.49 20.50 20.51 20.52 Matters that may be considered in determining penaltiesFindings of Disciplinary Tribunal Notification and publication of decisions of Disciplinary Tribunal Completion of outstanding business Former attorney may be required to provide assistance 164164165165 166
Part 9 Rights of registered patent attorneys
20.53 Lien 168
Part 10 Administration
Division 1 Professional Standards Board for Patent and Trade Marks Attorneys
20.54 20.55 Constitution of Board (Act s 227A) Term of office of Board members 169169
20.56 20.57 20.58 20.59 20.60 Resignation and removal of members from Board Meetings of Board Member presiding at meetings of Board Quorum for Board meetings Absence of Chairperson from meeting — leave from Board 169170171171171
Division 2 Patent and Trade Marks Attorneys Disciplinary Tribunal
20.61 20.62 20.63 20.64 Establishment of Disciplinary Tribunal Disciplinary Tribunal — substantive appointments Disciplinary Tribunal — acting appointments Disclosure of interest 171171172173
20.65 Qualifications for appointment to, or acting as, Disciplinary Tribunal 174
Chapter 21 21.1 Administration Patent Office and sub-offices 175
21.2 Employees to whom Commissioner may delegate (Act s 209 (1)) 175

Chapter 22 Miscellaneous

Part 1 Fees and costs

Division 1 Fees
22.1 Fees generally 176

22.2 General fees 176 22.2A Failure to pay: patent attorneys fees 177 22.2B Failure to pay: filing fees for patent requests 177 22.2C Failure to pay: certain other filing fees etc 178 22.2D Failure to pay: fees payable by patentee for requests under s 101A (b) of the Act 178 22.2E Failure to pay: response fee 179 22.2F Consequence if Commissioner does not invite payment 179 22.2G Failure to pay: hearing fees 180 22.2H Failure to pay: certain fees for actions by Commissioner 181 22.2I Failure to pay: acceptance fee 181

22.3 General fees for international applications 181

22.4 Fees for international applications payable for the benefit of the International Bureau 182

22.5 PCT Fund 183

22.6 Exemption from fees 183

22.7 Refund of certain fees 183

Division 2 Costs

22.7A Proceedings to which this Division applies 184

22.8 Costs 184

Part 2 Other matters

22.9 Death of applicant or nominated person 186

22.10 Address for service 186 22.10A Address for correspondence 187 22.10AA Period for doing certain acts — office not open for business 187 22.10AB Days when office not open for business 187 22.10AC Period for doing certain acts — acts to which section 222A does not apply 188

22.11 Extension of time 188
22.12 Evidence 189

22.13 Declarations 190

22.14 Directions not otherwise prescribed 191

22.15 Documents to be in English 191

22.16 Documents other than specifications and abstracts 192

22.17 Incapacity of certain persons 192

22.18 Destruction of documents 193

22.19 Copies of certain documents to be supplied 193

22.20 International applications and the Patent Office 194

22.21 Protection or compensation of certain persons 194

22.22 Exercise by Commissioner of certain powers 195

22.23 Hearings 195

22.24 Practice and procedure other than for opposition proceedings 196

22.25 Requirements cannot be complied with for reasonable cause 196

22.26 Review of decisions 197

Chapter 23 Transitional and savings provisions

23.1 Saving: prohibition orders 199

23.2 Delegation: certain matters referred to in this Chapter 199

23.3 Opposition to grant: practice and procedure 199

23.4 Certain opposition: practice and procedure 200

23.5 Fees payable for certain matters relating to opposition 200

23.6 Certain delegations: opposition 200

23.7 Certain undertakings 201

23.8 Restoration of lapsed applications or ceased patents 201

23.9 Certain continuation and renewal fees 202

23.10 Fee taken to have been paid 202

23.11 Supply of product referred to in section 117 of the Act 202

23.12 Certain withdrawn, abandoned or refused applications 203

23.13 Certain certificates of validity 203

23.14 Certain action under the 1952 Act 204

23.15 Amendment of petty patents 204

23.16 Certain applications under 1952 Act: time for acceptance 204

Page
23.17 23.18 23.25 PCT applications to which subsection 89 (5) of the Act does not apply Certain priority dates: saving Fees 205205206
23.26 23.32 23.33 23.34 23.35 Certain actions and proceedings Transitional: priority date and date of patent for innovation patent application that is a divisional application of a petty patent or petty patent applicationTransitional: examination of innovation patents converted from petty patent applications Transitional: certain PCT applications Transitional: payment of fees for petty patents 206 207207208208
Schedule 1 Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure 211
Schedule 1A Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure 229
Schedule 2 Patent Cooperation Treaty 254

Chapter 1 Introductory

1.1 Name of Regulations [see Note 1]

These Regulations are the Patents Regulations 1991.

1.2 Commencement

These Regulations commence on 30 April 1991.

1.3 Interpretation

(1)
In these Regulations, unless the contrary intention appears: abstract means abstract of a complete specification. acceptance means:
(a)
in relation to a patent r equest and com plete specification relating to an applic ation for a standard patent — acceptance of the paten t request an d com plete specification under section 49 of the Act; and
(b)
in relation to a patent r equest and com plete specification relating to an application for an innovation patent — acceptance of the paten t request an d com plete specification under section 52 of the Act.

approved digital library means a library or oth er facility that the Comm issioner specifies as a digital library, for this definition, in the Official Journal.

Example

The library ad ministered by th e In ternational Bureau of th e World Intellectual Pro perty Org anization, kno wn as th e “Dig ital Access Serv ice for Priority Documents” or “DAS”.

basic documents m eans docum ents filed in a Convention country in respect of a basic application. certificate of verification means a statement:

(a) that a docu ment to which the sta tement relate s is a true and com plete trans lation of the acco mpanying docum ent to the best of the knowledge of the person who signs the

statement; and

(b) that is dated and signed. competent authority, in relation to a Convention country, means a person who, under the la ws of the country or the

arrangements in place in the c ountry, is authoris ed to certify copies of specifications of patents for the country. Disciplinary Tribunal m eans the Patent and Trade Marks

Attorneys Disciplinary Tribuna l established under regulation

20.41.

former attorneys Regulations means the follow ing Regulations:

(a)
the Patent Attorneys Regul ations as in force immediately before the commencing day under the 1952 Act;
(b)
the Patents Regulations 1991 as in force imm ediately

before 1 July 2008.

former patents Regulations means the Patents Regulation s in

force immediately before the comm encing day under the 1952

Act.

International Bureau m eans the I nternational Bureau of the World Intellectual Property Organization. the Act means the Patents Act 1990. the Tribunal means the Administrative Appeals Tribunal.

(2)
A reference in these Regulations to:
(a)
the giving of a notice or other document; or
(b)
the making of a request or an application;

to the Comm issioner or the Pate nt Office inclu des a reference to the filing of the document.

(3)
A reference in thes e Regulations to a docum ent that is op en to public inspection is a reference to a docum ent that m ay be inspected by the public at the Patent Office.
(4)
Subject to subregulation (5), if the Commissioner or the Patent Office gives a docum ent to a pe rson, the document is taken to have been given to the pe rson on the day on which the document is dated by the Comm issioner or the Office, unless the contrary intention appears.
(5)
If:
(a)
the Commissioner or the Patent Office m akes a document available electronically for a person; and
(b)
sends a notice to the person telling them that the document

is available for them to collect electronically; the document is taken to have been given to the person on the day on which the notice is dated by Commi ssioner or the Office, unless the contrary intention appears.

(6)
A requirement in th ese Regulations to g ive information to the Commissioner or to another pers on (whether the expression ‘give’, ‘tell’, ‘inform ’ or another expression is used) is a requirement to give the info rmation in writing, unless the contrary intention appears.
(7)
For these Regulations, a period expressed in months is to be worked out in the way described in rule 80.2 of the Regulations under the Patent Cooperation Treaty set out in Schedule 2A.

1.3A Meaning of completed in relation to a search

For these regulations: A search is completed on the earliest of:

(a)
the date, if any, specified in the report as the date that the report was issued; and
(b)
the date, if any, specified in the report as the date that the search was completed; and
(c)
the date that the search results were issued to the applicant or patentee by the foreign patent office.

1.4 English text of treaties

(1)
The English text of the Budapest Treaty as in force for Australia on 1 October 2002 is th e text set out in Schedules 1 (the Treaty) and 1A (the Regulations under the Treaty).
(2)
The Englis h text of the PCT as in f orce for Australia on 1 July 201 0 is the tex t se t out in Schedules 2 (the Treaty) and 2A (the Regulations under the Treaty).

Note This regulation is made for the purposes of subsection 228 (5) of the Act.

1.5 Deposit requirements: prescribed period

(1)
For paragraph 6 (c) of the Act, the prescribed period is:
(a)
if the Commissioner makes a declaration under subsection 42 (1) of the Act in rela tion to the s pecification concerned — the period mentioned in subregulation (2); or
(b)
in any other case:
(i)
for a complete specification in respect of a standard patent application — the period m entioned in subregulation (3); or
(ii)
for a complete specif ication in respect of an innovation patent application — the period mentioned in subregulation (4).
(2)
For paragraph (1) (a), the period begins on the filing date of the application to which the spe cification relates and e nds 3 months from the date taken to be the date of filing of the specification under paragraph 42 (2) (b) of the Act.
(3)
For subparagraph (1) (b) (i), the period begins on the filing date of the application to which the specification relates and ends:
(a)
at the end of the day imm ediately before the day on which the application becomes open to public inspection; or
(b)
if the application is accepted before the end of the day first mentioned in paragraph (a) — i mmediately before acceptance.
(4)
For subparagraph (1) (b) (ii), the period begins on the filing date of the application to which the specification relates to and ends immediately before acceptance.
(5)
If a m atter m entioned in paragraph 6 (c) of the Act has been included in the specif ication, the applicant or patentee is taken to consent to a m icro-organism being obtained by a person to whom the Comm issioner has gr anted the certification und er regulation 3.25 in respect of the deposit:
(a)
after the period m entioned in subregulation (1) for the specification to which the application relates; and
(b)
from the prescrib ed depositary institution with which the micro-organism is deposited.

1.6 Disclosure in basic applications — general

(1)
For section 8 of the Act:
(a)
the prescribed period for docum ents to which paragraph 8 (a) of the Act applies is 3 m onths from the date on which the Comm issioner requests the docum ent; and
(b)
the prescribed period for docum ents to which paragraph 8 (b) of the Act a pplies is 3 m onths from the date on which the Comm issioner requests the translation of a document.

Note A translation of a document into English that is filed must have with it a related certificate of verification (see regulation 22.15).

(2) A m atter th at was c laimed or disclosed in a disclaim er or acknowledgement of prior art in a basic application or in a specification or other docum ent filed in respect of, and at the same tim e as, the basic applic ation is not taken to have been disclosed.

1.6A Disclosure in basic applications — use of approved digital library

(1)
For section 8 of the Ac t, a specification or other docum ent is taken to have been filed in respect of, and at the same time as, a basic application if:
(a)
the Comm issioner is satisf ied that a cop y of th e specification or docum ent has been m ade available for inspection by the Comm issioner in an approved digital library; and
(b)
the specification or do cument was m ade available within the period mentioned in subregulation 1.6 (1).
(2)
However, if the Commissioner is satisfied that the specification or other document:
(a)
was made available for inspection by the Commissioner in the approved digital library within the period mentioned in subregulation 1.6 (1); but
(b)
is no longer available for inspection; the specification or other docum ent is taken to have been filed in respect of, and at the same time as, the basic application only if the specif ication or other doc ument is again m ade available for inspec tion by the Comm issioner in the approved digital library, or given to the Comm issioner, no later than 2 m onths after the day on which the Commissioner notifies the applicant or patentee that the Comm issioner has not been able to inspect

the specification or other doc ument in the approved digital library.

1.7 Verification of translations of international applications

For the purposes of subsection 10 (2) of the Act, the translation of an inter national ap plication th at was not f iled in the receiving O ffice in English m ust have with it a rela ted certificate of verification.

1.8 Completion of applications

(1)
A person who m akes an app lication or request using an application form must:
(a)
comply with any directions given on the form; and
(b)
provide inform ation for each p art of the for m that describes the information as being mandatory.
(2)
A person who m akes an app lication or request using an application procedure other than a form must:
(a)
comply with any directions given as part of the procedure; and
(b)
provide inform ation for each part of the procedure that describes the information as being mandatory.

Example

An online application facility.

Chapter 2 Patent rights, ownership and validity

2.1 Applications by co-owners for directions

(1)
An application under section 17 of the Act must be in the approved form.
(2)
A person making an application under that section must:
(a)
file with the application a notice stating the facts on which the application is based; and
(b)
serve a copy of the application and notice on the other patentee or patentees.

2.2 Publication or use: prescribed circumstances

(1) In this Regulation: Paris Convention m eans the P aris Convention for the

Protection of Industrial Property of 20 March 1883, as in force for Australia on the commencing day. recognised exhibition means:

(a)
an official or officially recognised international exhibition within the m eaning of Article 11 of the Paris Convention or Artic le 1 of the Conventi on relating to International Exhibitions done at Paris on 22 N ovember 1928, as in force for Australia on the commencing day; or
(b)
an international ex hibition recognised by the Commissioner by a notic e published in the Official Journal before the beginning of the exhibition.

(1A) For paragraph 24 (1) (a) of the Act, the circum stance that there was a publication or use of the invention within 12 m onths before the filing date of th e com plete application, is a prescribed circumstance.

(2)
For paragra ph 24 (1) (a) of the Act the follo wing are also prescribed circumstances:
(a)
the showing or use of the invention at a recognised exhibition;
(b)
the publication of the invention during a recognised exhibition at which the invention was shown or used;
(c)
the publication of the invention in a paper written by the inventor and:
(i)
read before a learned society; or
(ii)
published with th e in ventor’s consent by or on behalf of a learned society; or
(d)
the working in public of th e invention within the period of 12 m onths before the priority date of a claim for the invention:
(i)
for the purposes of reasonable trial; and
(ii)
if, because of the nat ure of the invention, it is reasonably necessary for the working to be in public.
(3)
Paragraphs (2) (a) and (b) are prescribed circumstances only if:
(a)
at the tim e the application is m ade for a patent for the invention, the applicant has fi led a notice stating that the invention has been exhibited; and
(b)
the applicant has filed a statement issued by the authority responsible for the exhibition in which:
(i)
the invention and the exhibition are identified; and
(ii)
the date of the opening of the exhibition is given; and

(iii) if the f irst disclosu re o f the invention during the exhibition did not take place on that date — the date of that disclosure.

(4)
For paragraph (3) (b), the statement must be filed:
(a)
for an application for a standard patent — before the complete specification in respect of the application is open to public inspection; or
(b)
for an application for an innovation patent — within 6 months from the filing date of the complete specification in respect of the application.

2.3 Publication or use: prescribed periods

(1A) For information of the kind referred to in paragraph 24 (1) (a) of the Act, if the app licant relies on th e c ircumstance in subregulation 2.2 (1A), the prescr ibed period is the period of 12 m onths after the inform ation was first m ade publicly available.

(1)
For information of the kind referred to in paragraph 24 (1) (a) of the Act, if the applican t re lies on a circum stance in subregulation 2.2 (2), the prescribed period is:
(a)
in the case of a circu mstance mentioned in paragraph

2.2 (2) (a) or (b):

(i)
if the application c laims priority f rom a basic application made within 6 m onths of the date of the first showing or use of t he invention at a recognised exhibition — 12 m onths from the m aking of the basic application; and
(ii)
in any other case — 6 months after the first showing or use of the invention at the exhibition; and
(b)
in the case of the circu mstance m entioned in paragraph

2.2 (2) (c):

(i)
if the application c laims priority f rom a basic application made within 6 m onths of the date of the first readin g or pub lication ref erred to in that paragraph — 12 m onths from the m aking of the basic application; and
(ii)
in any other case — 6 m onths after the first reading or publication; and
(c)
in the case of the circu mstance m entioned in paragraph

2.2 (2) (d) — 12 m onths from the start of the first public working of the invention referred to in that paragraph.

(2)
For the purposes of subsection 24 (1) of the Act, in the case of information of the kind referred to in paragraph 24 (1) (b) of the Act, the prescribed period is 12 months from the day when the information referred to in that paragraph becam e publicly available.
(3)
Subregulation (4) applies:
(a)
if an application for a patent is a divisional application:
(i)
under section 79B of the Act for an invention disclosed in the sp ecification f iled with a p revious application for a standard patent (the originalapplication); or
(ii)
under section 79C of the Act for an invention disclosed in the specif ication f iled in respec t o f an application for an innovation patent (the original application); and
(b)
only to information disclosed in the division al application that was disclosed in the original application.
(4)
For determining the prescribed period for subsection 24 (1) of the Act, the f iling date of the divisional application is taken to be the filing date of the original application.

2.4 Prescribed period: patents of addition

(1)
For the purposes of section 25 of the Act, the prescribed period is the period that commences on the priority date of the claim of the specification of the m ain invention and ends immediately before the priority date of the relevant claim of the specification of the patent of addition.
(2)
In subregu lation (1 ), a referenc e to the c laim of the specification of the main invention is a reference to:
(a)
the claim defining that main invention; or
(b)
if there are 2 or more claim s defining the m ain invention — the claim that ha s the earlier or ea rliest priority date.

2.5 Prescribed period: assertion that invention is not a patentable invention

For subsection 27 (1) of the Ac t, th e presc ribed period is the period:

(a)
beginning immediately after the complete specification filed in r elation to the applic ation f or a s tandard pa tent becomes open to public inspection; and
(b)
ending 3 months after th e date of publication in the Official Journal of the notice of acceptan ce under paragraph 49 (5) (b) of the Act.

2.6 Prescribed period: notification of assertion of invalidity of innovation patent

For subsection 28 (2) of the Act, the prescribed period for an innovation patent is the period from the date that the com plete specification for the patent beco mes open to public inspection to immediately before the Comm issioner decides to certify the patent.

2.7 Documents to accompany notice of assertion of invalidity

Notice of an assertion under s ubsection 27 (1) or 28 (1) of the Act must, if the assertion is based on a document, have with it:

(a)
a copy of the document; and
(b)
if the document is not in English, a copy of:
(i)
a translation of the document into English; and
(ii)
a related certificate of verification; and
(c)
evidence of the date a nd place of publication of the document.
Chapter 3 From application to acceptance
Part 1 Inventions generally
Regulation 3.1
Chapter 3 From application to
acceptance
Part 1 Inventions generally

3.1 Prescribed documents: patent applications

(1)
For the purposes of subsection 29 (1) of the Act, an abstract is required to be filed with a patent request m ade in relation to a complete application.
(2)
For the purposes of subsection 29 (1) of the Act, if a complete application for a standard patent is m ade, the following documents are required to be filed before acceptance:
(a)
a notic e by the app licant stating the entitlement of the nominated person to the grant of the patent; and
(b)
if the applicant claims priority from another application — a notic e by the app licant sta ting the entitlement of the nominated person to claim that priority; and
(c)
if a m icro-organism i s deposited with a prescr ibed depositary institution:
(i)
if the depo sit is an o riginal dep osit within the meaning of Rule 7.3 of the Budapest Treaty or a new deposit within the m eaning of Rule 7.4 of that Treaty — a copy of a receip t issued by the institution under Rule 7 of the Treaty; and
(ii)
if samples of the micro-organism were transferred to that institution under Rule 5.1 (a) (i) of the Treaty — a copy of a receipt issued by the institution under Rule 7 of the Treaty; and

(iii) if a receip t referred to in subparagraph (i) or (ii) is not in English — a translat ion of the rece ipt into English and a related certificate of verification; and

Regulation 3.2A

(d)
if the application relies on section 6 of the Act — a notice by the app licant s tating the en titlement of the n ominated person to rely on the deposit for the purposes of the Act; and
(e)
if the application is an applica tion to which subsection 34 (2) of the Act applies — a copy of the court order declaring the applicant to be an eligible person in relation to the invention so far as claim ed in a claim of the specification; and
(f)
if the application is an applica tion to which subsection 36 (4) of the Act applies — a copy of the declaration of the Commissioner that the applican t is an e ligible person in rela tion to the invention a s disclosed in the specification; and
(g)
if the request is for a patent of addition and is m ade by a person authorised by the a pplicant or patentee — a statement authorising the person that is signed by the applicant or patentee.

3.1A Applicant taken to be nominated person

For an application for a standard patent or an innovation patent, the applicant is taken to be the nominated person.

3.2 Provisional specifications

A provisional specification must be in the approved form.

3.2A Specifications — standard patents

(1)
A patent request for a standard patent must:
(a)
be in the approved form; and
(b)
be in English; and
(c)
comply substantially with the requirements of Schedule 3.
(2)
A complete specification for a standard patent must:
(a)
be in the approved form; and
(b)
be in English; and
(c)
comply substantially with the requirements of Schedule 3.
Regulation 3.2B

(3) If the Commissioner treats an application for a standard patent as having been filed, the Comm issioner may, within 1 m onth from the date of filing of the a pplication, direct the applicant to do anything necessary to ensure that the patent request and complete specif ication com ply with th e requ irements mentioned in subregulations (1) and (2).

Note See regulation 3.5 for what happens if certain information required for an application is not filed.

(4)
If:
(a)
the Comm issioner gives the applicant a direction under subregulation (3) to assist the Comm issioner in deciding whether a filed abstract is in accordance w ith th ese Regulations; and
(b)
the Comm issioner h as s pecified in the direction a period of not less than 1 m onth within which the applicant m ust comply with the direction; and
(c)
the applicant does not comply with the direction before the

end of the period; the com plete applic ation to which the paten t request a nd complete specification relate lapses at the end of the period.

(5)
Subject to subregulation (4 ), if an applic ant to whom a direction has been given unde r subregulation (3) does not comply with the direction within 2 months from the date of the direction, the application lapses.
(6)
If an application lapses unde r subregulation (4 ) or (5), the Commissioner must:
(a)
advertise that fact in the Official Journal; and
(b)
tell the applicant that the complete application has lapsed.

3.2B Specifications: formalities check for innovation patents

(1)
For section 52 of the Act, a complete app lication for an innovation patent pass es th e form alities ch eck only if the application meets all of the following requirements:
(a)
the complete specification for the application must:
(i)
be in the approved form; and

Regulation 3.2B

(ii) be in English; and
(iii) comply substantially with the requirem Schedule 3; ents of
(b) the patent request must be in the approved form;
(c) if the applicant is an el igible person under section 34 of the Act — a copy of the cour t order declaring that the applicant is an elig ible person in re lation to the invention must be filed with the complete application;
(d) the complete application must comply with regulation 3.8, 3.10, 6A.1, 6A.2 or subregulati on 8.5 (2), or subsection 79C (2) of the Act, if applicable;
(e) if the applic ant is re lying on section 41 of the Act — the receipts m entioned in paragraph 3.1 (2) (c) m ust be filed with the complete application;
(f) the complete specification must not be a cross-reference to an ear lier p atent applic ation f iled in Austra lia or in a Convention country;
(g) the com plete sp ecification m ust not contraven subsection 18 (2) or (3) of the Act; e
(h) if the application is a di visional application m ade under section 79B of the Act in relation to an original application that is a PCT applica tion, the com plete sp ecification f or the PCT application must be open to public inspection.
(2)
If the app lication does not meet a requirem ent m entioned in paragraph (1) (a), (b), (c), (d), (e), (f) or (h), the Commissioner must direct the app licant to do any thing necess ary to ensu re that the application meets the requirement.
(3)
If an applicant to whom a direction under subregulation (2) has been given does not comply with the direction within 2 months from the date of the direction, the application lapses.
(4)
If the application does not m eet the requirement mentioned in paragraph (1) (g), the Commissioner m ust direct the applicant to ensure that the application meets the requirement.
(5)
If an applicant to whom a direction under subregulation (4) has been given does not respond to the direction within 2 m onths from the date of the direction, the application lapses.
Regulation 3.3
(6)
If an applicant to whom a direction under subregulation (4) has been given does not comply with the direction within 4 months from the date of the direction, the application lapses.
(7)
If an application lapses under subregulation (3), (5) or (6), the Commissioner must:
(a)
advertise that fact in the Official Journal; and
(b)
tell the applicant of the lapse.

3.3 Abstracts

(1)
An abstract must consist of:
(a)
a summ ary of the d isclosure a s conta ined in the description, the claims and any drawings, being a summary:
(i)
that indicates the t echnical f ield to which the invention pertains; and
(ii)
that is dra fted in a way that a llows the clea r understanding of the technical problem , the gist of the solution of that problem through the invention, and the principal use or uses of the invention; and
(b)
if applicable, any chem ical formula that, among all the formulas contained in the sp ecification, best characterises the invention.
(2)
An abstract m ust be as concise as the disclosure perm its, preferably 50 to 150 words.
(3)
An abstract must not co ntain statements on the alleg ed merits or value of the claim ed inve ntion or on its speculative application.
(4)
Each m ain technical featur e m entioned in th e abstract and illustrated by a drawing in the spe cification must be f ollowed by a reference sign placed between parentheses.
(5)
An abstract must be so drafted that it can efficiently serve as a scanning tool for the purposes of searching in the particular art, especially by assisting in the formulation of a n opinion on whether there is a need to con sult the spe cification itself f or those purposes.

Regulation 3.4

(6)
An abstract is not taken into account in construing the nature of the inven tion that is the subject of the specif ication to whic h the abstract relates.
(7)
Information in an abstract f iled with the com plete application may be taken into account in determ ining, for subsection 102 (1) of the Act, whether a matter was in substance disclosed in the specification as filed.

3.4 Substitute abstracts

(1)
If a filed abstract is not in accordance with these Regulations, the Comm issioner m ay prepare a draft of a new abstract in substitution for the filed abstract.
(2)
A copy of the draft of a new abstract m ust be given to the applicant who may give the Comm issioner written comments on the draft within 1 m onth of th e draft being given to him or her.
(3)
The Commissioner must take the comments into account in the final preparation of the new abstract.
(4)
If the Comm issioner prepares a new abstract, the new abstract is taken to be the abstrac t of the specif ication to which it relates.
(5)
If an applicant who files a complete specification does not file with it an a bstract, th e Comm issioner, within 1 m onth of the date of filing of the com plete specification, m ay direct the applicant to file an abstract within 1 month of the day on which the direction is given.
(6)
If an abstract is not filed within 1 month from the day on which the direction was given, the application lapses.
(7)
If an application lapses under subregulation (6), the Commissioner must:
(a)
advertise that fact in the Official Journal; and
(b)
advise the applicant of the lapse.

Regulation 3.5

3.5 Filing date

(1)
Subject to this regulation, the filing date of a patent application is the date on which the following information is filed:
(a)
information in English that indicates tha t what is f iled is intended to be an application for a patent;
(b)
information that a llows the identity of the applicant to be established or allows th e applicant to be contacted by the Patent Office;
(c)
information that appears to be a description.
(2)
For paragraph (1) (c), a description:
(a)
does not have to be in English; and
(b)
may be a drawing; and
(c)
may be a reference, in E nglish, to an ear lier pa tent application filed in Australia or in a Convention country.
(3)
For paragra ph (2) (c), the ear lier patent application does not have to be in English.
(4)
If all of the information mentioned in subregulation (1) is not filed in respect of an applica tion, the Comm issioner must give the applicant notice in writing:
(a)
telling the applicant that all of the information mentioned in subregulation (1) was not filed in respect of the application; and
(b)
asking the applic ant to f ile the addition al in formation required.
(5)
If an applicant to whom a notice under subregulation (4) has been given does not file the a dditional inf ormation within 2 months from the date of the noti ce, the application is taken not to have been filed.
(6)
Subregulation (7) app lies if an app licant to whom a notice under subregulation (4) has been given files the additional information within 2 months from the date of the notice.
(7)
For section 30 of the Act, the f iling da te of the pa tent application is the da te o n which the additional inf ormation is filed.

Regulation 3.5A

3.5A Filing date: incomplete specifications

(1)
This regula tion applie s if the inf ormation m entioned in subregulation 3.5 (1) has been fi led in respect of a patent application but a part of the patent specification is missing.
(2)
If the Comm issioner notices that a part of the specification is missing, the Comm issioner m ust gi ve the applicant notice in writing:
(a)
telling the applic ant th at a p art o f the specification is missing; and
(b)
asking the applicant to file the missing part.
(3)
The missing part must be incorporated into the specification if, within the period applying und er subregu lation (4 ), the applicant:
(a)
files the missing part; or
(b)
if the applicant claim s priority from an earlier basic application or associated provisional application — files:
(i)
the missing part; and
(ii)
a copy of t he earlier application that contains, and indicates the location of, the missing part; and

(iii) if the e arlier app lication is no t in English — a translation of the application in to English tog ether with a related certificate of verification.

(4)
For subregulation (3), the period is:
(a)
if a notice is given under subregulation (2) — 2 months from the date of the notice; or
(b)
in any other case — the period ending on the earlier of:
(i)
2 months after the filing date; and
(ii)
the time of acceptance.
(5)
For section 30 of the Act, the filing date of the application is:
(a)
if paragrap h (3) (a) a pplies — the date on which the missing part is filed; and
(b)
if paragraph (3) (b) app lies — the date that would have been the filing date if the m issing part had not been incorporated.
Regulation 3.5B
(6)
If parag raph (5) (a) ap plies, the Comm issioner m ust tell the applicant of the new filing date.
(7)
Despite paragraph (5) (a), if within 1 month after being told of the new f iling date, th e applic ant withdraws the m issing part from the specification, the filing date of the application, for section 30 of the Act, is the da te that would have been the filing date if the missing part had not been incorporated.

3.5B Filing of documents outside business hours

The Patent Office and each sub-office of the Patent Office may provide facilities for the filing of documents when the Office or sub-office is not open to the public for business.

3.6 Requests to make determinations between interested parties

For section 32 of the Act, a request must:

(a)
be in the approved form; and
(b)
have with it a notice, by the person m aking the request, stating the grounds on which the request is made.

3.7 Form of certain applications

For the purposes of paragraphs 35 (1) (b) and 3 6 (1) (b) of the Act, an application must:

(a)
be in the approved form; and
(b)
have with it a notice by the applicant stating the grounds on which the application is made.

3.8 Time within which applications are to be made following certain decisions and declarations

An application under section 29 of the Act must be made:

(a)
in the case of an appli cation of the kind described in section 33 of the Act — within 3 months of the decision of the Comm issioner referred to in paragraph 33 (1) (c),
(2)
(c), (3) (c) or (4) (b) of the Act, as the case requires; or

Regulation 3.12

(b)
in the case of an application of the kind described in section 34 of the Act — within 3 months of the declaration of a court under subsection 34 (1) of the Act; or
(c)
in the case of an appli cation of the kind described in section 35 of the Act — within 3 months of the declaration of the Comm issioner under subsection 35 (1) of the Act; or
(d)
in the case of an application of the kind described in section 36 of the Act — within 3 months of the declaration of the Commissioner under subsection 36 (1) of the Act.

3.9 Prescribed period: treatment of complete application as provisional

For subsection 37 (1) of the Act, the prescribed period is:

(a)
for an application for a st andard patent — the period from the date of f iling of the com plete applica tion until th e earlier of:
(i)
the end of 12 months from the f iling date of the complete application; and
(ii)
the day th at is 3 w eeks before the due date for publishing a notice under section 54 of the Act; and
(b)
for an application for an innovation patent — 12 months from the filing date of the complete application.

3.10 Prescribed period: making of complete applications

For the purposes of section 38 of the Act, the period of 12 months from the filing date of the provisional application is prescribed.

3.12 Priority dates generally

(1)
Subject to regulations 3.13 a nd 3.14 and subregulation (2), the priority date of a claim of a sp ecification is the earliest of the following dates:
(a)
the date of filing of the specification;
Regulation 3.12
(b)
if the claim is fairly based on matter disclosed in 1 or more priority do cuments, the date of f iling th e priority document in which the matter was first disclosed;
(c)
if the sp ecification is a com plete specif ication f iled in respect of a divisional application under section 79B of the Act and the claim is fairly based on matter disclosed in the specification referred to in paragra ph 79B (1) (a) of the Act — the date mentioned in subregulation (2C);
(d)
if the sp ecification is a complete specif ication f iled in respect of a divisional application under section 79C of the Act and:
(i)
the claim is f airly based on m atter disclosed in the specification referred to in subsection 79C (1) of the Act; and
(ii)
examination of the divisional application is requested within 2 months from the date of the grant of the divisional application;

the date mentioned in subregulation (2D).

(2)
For the purposes of paragraph (1) (b):
(a)
if the app lication tha t relates to the spe cification containing the claim is a com plete application — a provisional application that is associated with that complete application in accord ance with section 38 of the Act is a priority document; and
(b)
if the app lication tha t relates to the spe cification containing the claim is a Convention application, a document of any of the following kinds is a priority document:
(i)
a basic application that is related to the Convention application;
(ii)
a specification, or another docum ent filed in respect of, and at the same time as, a basic application that is related to that Convention application; or

(iii) a specification in respe ct of a b asic application that is related to that Conv ention application, being a specification that was f iled af ter the ba sic application was made;

Regulation 3.12

(c) if:
(i) the applica tion tha t re lates to th e specif ication containing the claim is a PCT application that, under Article 8 of the PCT, claims the priority of an earlier application; and
(ii) that earlier application is:
(A) an application m ade in Australia not m ore than 12 months before the international filing date of the PCT application; or
(AA) an applica tion m ade in Austra lia more than 12 months before the international filing date of the PCT application, for which:
(I) a rec eiving Office h as res priority under Rule 26bis.3; and tored
(II) the r estored prio rity h as not b een found to be ineffective by the Commissioner or a p rescribed cou rt under Rule 49ter.1; or
(B) a basic application, m ade not more than 12 months before the international filing date of the PCT application, that is the first application made in a Convention country in respect of the invention; or
(BB) a basic application m ade more than 12 months before the international filing date of the PCT application, that is the first application made in a Convention country in respect of the invention, for which:
(I) a rec eiving Office h as res priority under Rule 26bis.3; and tored
(II) the r estored prio rity h as not b een found to be ineffective by the Commissioner or a p rescribed cou rt under Rule 49ter.1; or
Regulation 3.12

(C) a basic application made after a basic application referred to in sub-subparagraph (B);

that earlier application, and a specification filed in relation to tha t ea rlier app lication af ter it was m ade, are p riority documents.

(2A) For the purposes of paragra ph (1) (b) and subregulation (2), ‘filed’ inclu des f iled with the Pa tent Of fice and f iled with a corresponding Office of another country.

(2B) A reference in subregulation (2) to a basic app lication does not include a basic application that has been disregarded by the Commissioner under section 96 of the Act.

(2C) The date for a specificati on to which paragraph 3.12 (1) (c) applies is the date that would have been the priority date of the claim if it had been included in the specification referred to in paragraph 79B (1) (a) of the Act.

(2D) The date for a specification to which paragraph 3.12 (1) (d) applies is the date that would have been the priority date of the claim if it had been included in the specification referred to in subsection 79C (1) of the Act.

(3)
For paragraphs 3.12 (1) (c) and (d), a claim is not fairly based on the specification referred to in paragraph 79B (1) (a) or the specification of the first patent referred to in subsection 79C (1) of the Act if, in order to com ply with paragraph 40 (2) (a) of the Act, the deposit requirements must be satisfied and on the date of making the divisional application:
(a)
the requirement specified in paragraph 6 (a) of the Act is not satisfied in relation to the specif ication referred to in paragraph 79B (1) (a) or the specification o f the f irst patent referred to in subsection 79C (1) of the Act; or
(b)
the period prescribed in subregulation 1.5 (1) has ended and the requirements of paragraph 6 (c) of the Act are not satisfied in relation to the sp ecification ref erred to in paragraph 79B (1) (a) or the specification o f the f irst patent referred to in subsection 79C (1) of the Act.

Regulation 3.14

(4) If a PCT application claims priority from a basic application, a specification or other docum ent filed in respect of, and at the same time as, a basic application, section 96 of the Act is take n to apply to the PCT a pplication as if it were a Convention application.

3.13 Priority dates: certain persons and applications

(1)
This regulation applies if, under subsection 36 (1) of the Act:
(a)
the Comm issioner declares a p erson to be an elig ible person; and
(b)
the person m akes a complete application under section 29 of the Act.
(2)
The prior ity date of a claim of the specif ication in respec t of that application, being a claim that is fairly based on m atter disclosed in the specification referred to in paragraph 36 (1) (c) of the Act and referred to in the declaration, is:
(a)
if that spec ification is a com plete specification — th e priority date of the claim or the date that would have been the priority date of the claim if the claim had been a c laim of the specification; and
(b)
if that spec ification is a provisional specification — the date of filing of the provisional specification.

3.14 Priority dates: certain amended claims

If subsection 114 (1) of the Act applies to a claim of a specification, the priority date of the claim is:

(a)
in the case of an amendment to which subsection 89 (4) or
(5)
of the Act applies — the date on which the amendment is taken to have been made under that subsection; and
(b)
in any other case — the date of filing of the statem ent of proposed am endments that re sulted in the disclosure referred to in subsection 114 (1) of the Act.

Regulation 3.15

3.15 Prescribed period and form of request for examination

(1)
For the purposes of subsectio n 44 (1) of the Ac t, the period of 5 years f rom the f iling date of the com plete applic ation is prescribed.
(2)
For the purposes of subsection 44 (1) of the Act, a request for an examination of a patent requ est and com plete specification must be in the approved form.

3.16 Prescribed grounds and period for examination

(1)
For the purposes of subsection 44 (2) of the Act, the following grounds are prescribed:
(a)
that the Co mmissioner reas onably considers it expedient to give the direction having regard to the progress made in the examination of applications filed before the filing date of the application concerned;
(b)
that the Commissioner reasonabl y considers it to be in the public interest to give the direction;
(c)
that the Co mmissioner reas onably considers it expedient to give the direction, having regard to the examination of another application f or a standard patent or the examination of an innovation patent.
(2)
For the purposes of subsection 44 (2) of the Act, the prescribed period is 6 months from the day on which the direction was given.
(3)
A direction must be given in writing and state the grounds on which it is given.

3.17 Requirement for Commissioner to direct or expedite examination

(1)
For the purposes of subsection 44 (3) of the Act, a person m ay, in the approved for m, r equest the Comm issioner to direct an applicant for a standard patent to ask for an examination of the patent request and com plete specification under subsection 44
(2)
of the Act.

Regulation 3.17A

(2)
If an app licant has ask ed fo r an exam ination of the patent request and com plete specifi cation to be expedited, the Commissioner m ay do so if he or s he is reasonably satisfied that:
(a)
it is in the public interest; or
(b)
there are special circumstances that make it desirable.

3.17A Results of documentary searches — foreign patent office

(1)
For subsec tion 45 (3) of the Act, an app licant inf orms the Commissioner of the results of documentary searches by o r on behalf of a foreign patent o ffice, other than the Europ ean Patent Office or the UK Patent Office, by providing:
(a)
a list of documents, cited by the foreign patent office; or
(b)
a copy of the search repor t issued by the foreign patent office.
(2)
For paragraph (1) (a), it is not nece ssary to refer in a lis t to a document that has been included in a list or report in relation to the application, previously pr ovided to the Commissioner for the Act or these Regulations.
(3)
For subsection 45 (3) of the Act, an app licant inf orms the Commissioner of the results of documentary searches by o r on behalf of the European Patent Office or the UK Patent Office:
(a)
by providing:
(i)
a list of the documents cited by the patent office; and
(ii)
for a list provided on or after 26 August 2003 — the symbols us ed by the patent office to indicate the relevance of the documents; or
(b)
by providing a copy of th e sear ch r eport i ssued by t he patent office.
(4)
The applicant must inform the Commissioner of the results of a documentary search by the latest of:
(a)
the day 6 months after the search is completed; and
(b)
the day 6 m onths after the ap plicant ask s for an examination under section 44 of the Act; and
Regulation 3.17B
(c)
1 February 2004.
(5)
However:
(a)
if an applicant applies for an extension of time:
(i)
after the d ay applicab le to th e applic ant u nder subregulation (4); and
(ii)
on or before the day 3 m onths after the date on which a no tice of accepta nce is published under paragraph 49 (5) (b) of the Act;

the period within whic h the applicant m ust i nform the Commissioner of the results of a d ocumentary search is taken to end on the date on which the application is filed in accordance with subregulation (6); and

(b)
the applicant may inform the Commissioner of the results of the documentary search on that date.
(6)
An application under subregulation (5) must be filed:
(a)
in the approved form; and
(b)
with:
(i)
the search results; and
(ii)
the relevant fee in item 239 in Schedule 7.
(7)
If a single application under subregulation (5) relates to m ore than 1 set of search results:
(a)
the applicant needs to pay only one fee in respect of all the search results; and
(b)
the fee is calculated by reference to the search results that require the longest period of extension.
(8)
For subsection 45 (5) of the Act, completed, in relation to a search, has the meaning given by regulation 1.3A.

3.17B Prescribed documentary searches by or on behalf of a foreign patent office

(1)
For paragraph 45 (3) (a) of the Act, the following docum entary searches by or on behalf of a foreign patent office are prescribed (so that inform ation need not be given to the Commissioner):
(a)
for any application — a search that produces a nil result;

Regulation 3.17B

(b)
if the application is a PC T application — a s earch tha t results in an Inte rnational Sea rch Report and any additional search conducte d during the international preliminary examination;
(c)
if the applic ation (application A) is an app lication which the applicant is perm itted to make under subsection 79B (1) of the Act (a divisional application):
(i)
a search, the result of which was disclosed under subsection 45 (3) of the Act in relation to the first-mentioned applicati on for application A under subsection 79B (1) of the Act (application B); and
(ii)
if application B is also a divisional application — a search, the result of which was disclosed under subsection 45 (3) of the Act in relation to the first-mentioned application under subsection 79B (1) of the Act for application B.

Note Under subsection 79B (1) of the Act, if a complete patent application for a patent is made, the applicant may make a further complete application for a patent for an invention:

(a)
disclosed in t he sp ecification filed i n resp ect of th e first-mentioned application; and
(b)
where t he fi rst-mentioned a pplication i s f or a st andard patent a nd at least 3 months have el apsed si nce t he p ublication of a not ice of acceptance of the relevant patent request and specifi cation in the Official Journal — falling within t he sco pe of th e cl aims o f th e accepted specification.

In paragraph (c), app lication A is th e ‘further co mplete ap plication’mentioned in subsection 79B (1) of the Act. It is described in paragraph (c)as a ‘d ivisional ap plication’. App lication B is th e ‘first-m entioned application’ i n rel ation t o a pplication A. If res ults of sea rches ha ve been disclosed in th e co urse of application B, th e results do not need to b edisclosed again in the course of application A.

However, it is possible under subsection 79B (1) of the Act that applicationB may also be a di visional application in relation to another application. In that case, there will also be a first-mentioned application for applicationB.If results of searc hes ha ve been disclosed i n t he co urse of t hat first-mentioned application, the results do not need to be disclosed again inthe course of application A.

(d) if the application is an application for a patent of addition under Chapter 7 of the Act — a search, the result of which was disclosed under subsecti on 45 (3) of the Act in relation to the application for the main invention;

Regulation 3.17B
(e)
a search, other than a search by or on behalf of the European Patent Office or the UK Patent Office, the result of which:
(i)
has already been give n to the Comm issioner under subsection 45 (3) of the Act in relation to the application; or
(ii)
was contained in the International Search Report;
(f)
a search, the result of which was not received by the applicant.
(2)
If:
(a)
under subsection 45 (3) of the Act, an applicant was required to inf orm the Comm issioner of the r esult of a documentary search by or on behalf of a foreign patent office in relation to a patent request; and
(b)
the app licant did not inf orm the Comm issioner of the result before 22 October 2007; and
(c)
the latest of the following dates had not occurred before 22 October 2007:
(i)
the day 6 months after the docum entary search is completed within the meaning of regulation 1.3A;
(ii)
the day 6 months afte r the applic ant ask ed f or the examination in accordance with section 44 of the Act;

(iii) if the pate nt reques t and com plete spec ification relating to the applicati on were accepted (whether before or after 22 October 2007) — the day 3 months after the notice of acceptan ce was published in the Official Journal under paragraph 49 (5) (b) of the Act;

the documentary search is prescribed (so th at information need not be given to the Commissioner).

(3)
If:
(a)
an applicant asked, in accordance with section 44 of the Act, for an examination of the patent request and complete specification relating to the app lication f or a standa rd patent; and

Regulation 3.18

(b) the app licant ask ed f or th e exa mination on or af ter

22 October 2007; all documentary searches by, or on behalf of, a foreign patent office are prescrib ed (so that in formation need not be given to the Commissioner).

3.18 Report of Commissioner: examination

(2)
For the purposes of paragraph 45 (1) (d) or 48 (1) (c) of the Act, the following matters are prescribed:
(a)
whether, to the best of the knowledge of the Commissioner, the requ est and sp ecification comply with the following provisions of the Act:
(i)
section 15 (‘who may be granted a patent?’);
(ii)
section 29 (‘application for patent’);

(iii) section 38 (‘time for making complete application’);

(iv)
section 79B (divisional applications prior to grant of patent);
(v)
section 81 (‘grant of patent of addition’);
(vi)
section 94 (‘Convention applicants m ay m ake Convention applications’);

(vii) section 95 (‘m anner of m aking Conve ntion applications’);

(c)
whether acceptance of the request and specification should be refused under section 50 of the Act (‘application or grant may be refused in certain cases’);
(d)
whether the invention is not a patentable invention because of subsection 18 (2) of the Act (‘paten table inventions’);
(e)
whether a patent cann ot be granted on the application because of subsection 6 4 (2) of the Act (‘gran t: multiple applications’);
(f)
whether the applicant is entitled to ask that any action be taken, or that he or she be allowed to take any action, because of subsection 89 (3 ) of the Act (‘m odified application of Act’).

Regulation 3.19

(3)
For the purposes of paragra ph 48 (1) (c ) of the Act, the following matters are prescribed:
(a)
in the case of an inven tion to which section 6 of the Act applies — whether, to the be st of the knowledge of the Commissioner, th e requ irements of section 6 of the Act are satisfied;
(b)
whether the specification under m odified exam ination is the sam e as the sp ecification (th e foreign specification) relating to the pa tent granted in the presc ribed f oreign country, apart from:
(i)
matters of form; or
(ii)
the omission of a claim that is m ade in the foreign specification; or

(iii) an amendment of a claim that is consequential on an omission referred to in subparagraph (ii); or

(iv)
an obvious mistake in the foreign specification; or
(v)
if the m icro-organism deposited in respec t of the foreign specification is th e same micro-organism as that depos ited in respe ct of the specif ication, a difference relating to matter referred to in paragraph 6 (c) of the Act that is n ecessary for the application to comply with the deposit requirements.
(4)
If a notice is filed under subsection 27 (1) of the Act before the patent request and com plete sp ecification to which the no tice relates have been accepted under subsection 49 (1) of the A ct, in exam ining the patent request and com plete specification under section 45 or 48 of the Act, the Comm issioner must consider a matter stated in the notice that addresses a claim that the invention concerned does not com ply with paragraph 18 (1) (b) of the Act.

3.19 Conduct of examination: standard patents

(1) If the Comm issioner reasonably believes that there a re lawful grounds of objection to the pa tent request or complete specification, he or she must state the grounds of objection in reporting on an examination.

Regulation 3.20

(2)
The applicant may contest th e objection in writing or ask for leave to amend the patent reques t or complete specification in accordance with Chapter 10.
(3)
If the applicant asks for leave to am end a patent reques t or complete specification in response to, or in anticipation of, a report under section 45 or 48 of the Act, the Comm issioner must exam ine the request and specification and report as if each proposed amendment had been made.
(4)
If the app licant contests the objection, the Comm issioner must examine the reques t an d specifi cation and take note of the matters raised by the applicant.

3.20 Requests for deferment of examination or modified examination

(1) In this regulation:

prescribed foreign country m eans a country prescribed in regulation 3.21.

(2)
For the purposes of paragra ph 46 (1) (b ) of the Act, the following applications are prescribed:
(a)
a basic application in relation to the complete application;
(b)
an application for a patent that claim s the priority of the complete applic ation or a p rovisional applic ation associated with th e complete application under section 38 of the Act;
(c)
an application for a patent m ade in a prescribed foreign country that claims the priority of the application that is a basic application in relation to that complete application.
(3)
For the purposes of paragr aph 47 (1) (b) of the Act, an application prescribed for the purposes of paragraph 46 (1) (b) of the Act in relation to which a patent in English has been granted in a prescribed foreign country is prescribed.
(4)
For the purposes of paragra ph 46 (1) (d ) of the Act, the prescribed ground is that the Comm issioner reasonably considers it expedient to give the direction, having regard to the progres s m ade in the exam ination of applications filed before the filing date of the application concerned.

Regulation 3.21

(5)
For the purposes of subsecti on 46 (2) and subs ection 47 (1) of the Act, a request for each action must be in the approved form.
(6)
The applicant m ust, on request by the Commissioner, file a copy of the specification relating to the patent referred to in paragraph 47 (1) (b) of the Act that is:
(a)
certified by the com petent autho rity of the prescribe d foreign country by which the patent was granted; or
(b)
otherwise v erified to the reasonable satisfaction of the

Commissioner; before acceptance, unless the applicant m akes a request un der subsection 47 (2) of the Act.

3.21 Prescribed foreign countries: requests for deferment of examination and modified examination

For the purposes of paragraphs 46 (1) (b) and 47 (1) (b) of the Act, the following countries are prescribed:

(a)
a country that is a signato ry to the treaty done at Munich on 5 October 1973 entitled the Convention on the Grant of European Patents, as in force from time to time;
(b)
Canada;
(c)
New Zealand (excluding the Cook Islands, Niue and Tokelau);
(d)
United States of America (in cluding all territories and possessions and the Commonwealth of Puerto Rico).

3.22 Disclosure of patent documents and information to International Bureau etc

(1)
The Commissioner may disclose any or all of the following to the International Bureau or a foreign patent office:
(a)
the patent application or patent;
(b)
a document given by the applicant, or another person, to the Commissioner in connec tion with the patent application or patent;
(c)
a document in the Comm issioner’s possession that relates to the patent application or the application of the patent;

Regulation 3.22

(d) any inf ormation in the Commissioner’s possession that relates to a docum ent m entioned in paragraph (a), (b) or (c);

whether or not the application is open for public inspection.

(2) However, if the patent application, document or information is not open for public inspection, the Comm issioner m ust not disclose the application, docum ent or inform ation without the consent of the applicant.

Note Section 194 of th e Act also au thorises th e Co mmissioner to g ive a person cert ain i nformation abo ut pat ents, pat ent ap plications an d ot her documents in certain circumstances.

(3) The Commissioner m ay disclo se the pa tent applica tion, document or information by depositing it in an approved digital library or by any other means.

Regulation 3.23

Part 2 Inventions that are micro-organisms

3.23 Documents in accepted applications and patents involving micro-organisms

(1)
Where a m icro-organism is dep osited with a prescribed depositary institution for the purposes of section 41 of the Act, the f ollowing docum ents m ust be f iled in rela tion to an application that has been accepted under section 49 or 52 of the Act or a patent in respect of the micro-organism:
(a)
if the depos it is an o riginal deposit within the m eaning of Rule 7.3 of the Budapest Tr eaty or a new deposit within the m eaning of Rule 7.4 of that Treaty — a copy of a receipt issued by the institution under Rule 7 of the Treaty;
(b)
if samples of the m icro-organism were transferred to that institution under Rule 5.1 (a) (i) of the Treaty — a copy of a receipt issued by the institution under Rule 7 of the Treaty;
(c)
if a receipt referred to in paragraph (a) or (b) is not in English — a trans lation of the rece ipt into English and a related certificate of verification.
(2)
The docum ents referred to in subregulation (1) m ust be filed within 3 months from the date of receipt of the micro-organism by the prescribed depositary institution.

3.24 Commissioner may request samples and viability statement

(1)
If, in re lation to a pa tent application or patent in respec t of a micro-organism, the m icro-organism is deposited with a prescribed depositary institution, the Commissioner:
(a)
on the order of a court in Australia, must; or

Regulation 3.25

(b)
on his or her own m otion or on application in w riting by
another person, may; for the pu rposes of pro ceedings before the Commissioner or any other legal proceedings in Australia:
(c)
make to that institution a request referred to in Rule 11.1 of the Budapest Treaty for a sam ple of that micro-organism; and
(d)
in re lation to that m icro-organism, m ake the declaration referred to in that Rule.
(2)
Before m aking a request, the Commissioner m ust give the applicant o r patentee concer ned, and any other person who apparently has an intere st in th e request, an opp ortunity to be heard, unless the request is made on the order of a court.
(3)
If the Comm issioner decides to make, or to refuse to m ake, a request, he or she must info rm the applic ant or pate ntee concerned, and any other person who apparently has an interest in the request, of the decision, and of the re asons for the decision, by notice in w riting as soon as practicable after the decision.
(4)
The Comm issioner m ay m ake a request referred to in Rule

10.2 (a) (iii) of the Budapest T reaty for a statement concerning the viability of a micro-o rganism if a sample of the micro-organism has been gi ven to the Commissioner in accordance with a request under subregulation (1).

3.25 Request for Commissioner’s certificate authorising release of sample of a micro-organism

(1) If a m icro-organism is depos ited with a prescribed depositary institution, a person may, in the approved form, request the Commissioner to gran t the cer tification ref erred to in R ule

11.3 (a) of the Budapest Treaty in respect of the deposit.

(2)
As soon as practicable after receiving a request, the Commissioner must decide whether to:
(a)
comply with the request; or
Regulation 3.25
(b)
impose such condition s as are re asonable, in cluding a condition that the person give security for damages for any breach of th e undertaking referred to in parag raph (4) (c) given by:
(i)
the person; or
(ii)
another person who has been nominated as a sk illed addressee; or
(c)
refuse that request.
(3)
If the application is for a standard patent, the applicant may, at any time before the spe cification relating to th e application is open for public inspection, notif y the Commissioner that a sample of the deposited m icro-organism is only to be provided in a period mentioned in subregulation (3A) to a person who is:
(a)
a skilled addressee without an interest in the invention; and
(b)
nominated by the person who made the request.

(3A) For subregulation (3), the period is:

(a)
before the patent is granted on that application; or
(b)
before the application has lapsed or been withdrawn or refused.
(4)
The Commissioner must comply with a request in respect of a patent application or patent:
(a)
if the specification relating to that application or patent is open to public inspection; and
(b)
unless th e Comm issioner is r easonably satisf ied that th e nominated person is not entitle d to rely on the deposit for the purposes of the Act; and
(c)
if the person m aking the request or the person nom inated as a skilled addressee ha s undertaken to use that micro-organism only for experimental purposes or in relation to:
(i)
opposition proceed ings under Chapter 5 of th e Act in relation to the grant of a standard patent on that application; or
(ii)
opposition proceed ings under section 101M of the Act in relation to an innovation patent; or

Regulation 3.25

(iii) relevant proceedings in relation to the patent;
and not to m ake that micro-organism, or a culture derived from that micro-organism, available to another person; and
(d) unless th e Comm issioner is r easonably satisf ied that th e undertaking given by the person making the request or the person nominated as a skilled addressee was not given in good faith; and
(e) if:
(i) the Commissioner has been notified under subregulation (3); and
(ii) the patent referred to been granted; and in that subregulation has not
(iii) the application referred to in that subregulation has not lapsed or been withdrawn or refused; and
(iv) the Comm issioner is reasonably satisfied that the person nominated as a s killed addressee is a skilled addressee without an interest in the invention; and
(f) if:
(i) the request is in respect of a patent; and
(ii) the person m aking that request is a person to whom the patentee has granted a licence under section 133 of the Act; and
(iii) the Comm issioner is r easonably s atisfied that the licence provides that the person m aking the request has a right to obtain a sa mple of that micro-organism; and
(g) if:
(i) the request is in respect of a patent; and
(ii) the person making that request is a person who m ay exploit the invention unde r section 163 of the Act; and
(iii) the Comm issioner is r easonably s atisfied that the terms for the exploitation of the invention provide that the person m aking the request has a right to obtain a sample of that micro-organism.

Regulation 3.26

(5)
Before m aking a decision under subregulation (2), the Commissioner m ust give the pe rson m aking the request, the applicant or patentee concer ned and any other person who apparently has an intere st in th e request, an opp ortunity to be heard.
(6)
If the Commissioner makes a decision under subregulation (2), he or she m ust inform the pe rson who m ade the request, the applicant or patentee concer ned and any other person who apparently has an interest in the request, of the decision, and the reasons for the decis ion, by notice in writin g given as soon as practicable after the date of the decision.

3.26 Breach of undertakings given in respect of micro-organisms

(1)
Where the m icro-organism is de posited with a prescribed depositary institution, proceedings for breach of an undertaking referred to in paragraph 3.25 (4 ) (c) m ay be instituted in a prescribed court by a person who is:
(a)
if a patent has not b een granted on that patent application — the applicant; or
(b)
if:
(i)
a patent has been grante d on that patent application; or
(ii)
the deposit is effected in relation to a patent; the patentee of, or an exclusive licensee under, that patent.
(2)
In proceedings by an exclusive licensee, the patentee must be a party to the proceedings.
(3)
A patentee joined as a defendant in the proceedings by an exclusive licensee is n ot liable for costs un less the pa tentee enters an appearance and takes part in the proceedings.
(4)
It is a defence in proceedings for breach of the undertak ing given in respect of a m icro-organism to which a specification filed in res pect of a patent app lication or patent relates, that when the m atters com plained of to ok place th e specification did not comply with the requirem ents referred to in paragraph 6 (c) or (d) of the Act.

Regulation 3.28

(5)
A defendant m ay not plea d a defence referred to in subregulation (4) unless:
(a)
the defendant, before becom ing a defendant in the proceedings, notified th e Comm issioner under paragraph

3.29 (1) of the deposit requirem ent that has ceased to be satisfied; and

(b) the applicant for the patent or the patentee fails to take the steps referred to in paragraph 41 (4) (b) of the Act within the appropriate period prescribed by subregulation 3.30 (1) for the purposes of that paragraph.

3.27 Procedure in proceedings for breach of an undertaking

In proceedings referred to in subregu lation 3.26 (1) for breach of an undertaking:

(a)
the plaintiff m ust deliver particulars of the breach es complained of:
(i)
with the statement of claim or declaration; or
(ii)
by order of the court, at a later time; and
(b)
the defendant must deliver particulars of any objections on which the defendant relies:
(i)
with the statement of defence or plea; or
(ii)
by order of the court, at a later time.

3.28 Relief in proceedings for breach of undertakings

(1)
In proceedings referred to in subregulation 3.2 6 (1), the court may:
(a)
make an order for inspection; and
(b)
impose term s and give dire ctions with re spect to the inspection.
(2)
In proceedings referred to in subregulation 3.2 6 (1), the court may grant such relief as it thinks fit, including:
(a)
an injunction on such terms as it thinks fit; or
(b)
an order for damages; or
(c)
an order for an account of profits; or

Regulation 3.29

(d)
an order with respect to any security given under paragraph 3.25 (2) (b); or
(e)
an order on such term s as it th inks f it to deliv er to such person as it thinks fit the m icro-organism or any substance or thing derived directly or indirectly f rom that micro-organism as a result of the breach of the undertaking, including:
(i)
any products m ade by us ing that m icro-organism; and
(ii)
any other m icro-organisms derived from that micro-organism; and

(iii) any products m ade by using those other micro-organisms.

3.29 Notification that a deposit requirement has ceased to be satisfied

(1)
If a deposit requirem ent ceases to be satisfied in relation to a micro-organism to which a specif ication f iled in respe ct of a patent application or patent relates, a person other than the applicant o r paten tee m ay, after the specificatio n has become open to public inspection, notify the Commi ssioner in the approved form of the requirement referred to in paragraph 6 (c) or (d) of the Act that has ceased to be satisfied.
(2)
As soon a s practicable after receiving a notice under subregulation (1), the Comm issioner m ust give a copy of the notice to the applicant or patentee.
(3)
If the Commissioner learns, otherwise than by a notice referred to in subregulation (1), of f acts that m ay es tablish that a requirement referred to in that subregulation has ceased to be satisfied, th e Comm issioner m ust cause a notice setting out those facts to be given to the applicant or patentee.
(4)
As soon as practicable af ter the Comm issioner receives a notice under subregulation (1 ) or gives a notice under subregulation (3), a notice of the receipt or giving of that notification must be published in the Official Journal.

Regulation 3.30

(5)
The terms of a notice under subregulation (1) or (3) need not be published, but the notice must be open to public inspection.
(6)
The applicant or patentee m ay file a written reply setting out the facts relied upon to establis h that the requirem ent referred to in subregulation (1) is satisfied.
(7)
If a reply filed under subregulation (6) is in answer to a notification under subregula tion (1) by a person, the Commissioner must, as soon as pr acticable after receiving the reply, give a copy of the reply to that person.
(8)
As soon as practicable after a reply is filed under subregulation (6), a notice of the filing m ust be published in the Official Journal.
(9)
The terms of a reply filed unde r subregulation (6) need not be published, but the reply must be open to public inspection.

3.30 Prescribed period: deposit requirements taken to be satisfied

For the purposes of paragraph 41 (4) (b) of the Act, if, in relation to a patent applic ation or patent relating to a micro-organism:

(a)
that m icro-organism is deposited with a prescribed depositary institution; and
(b)
a requirement referred to in parag raph 6 (c) or (d) of the Act ceases to be satisfied in relation to the micro-organism;

the prescrib ed period is from the day when th e requ irement ceases to be so satisfied to the end of:

(c)
where the step referred to in paragraph 41 (4) (b) of the Act is the m aking of a new deposit of a sample of the micro-organism:
(i)
if the Comm issioner has given under subregulation

3.29 (2) the applicant or pa tentee a copy of a notice of that requirem ent — the period of 3 m onths a fter the copy was given; or

Regulation 3.30

(ii) if the Comm issioner has given under subregulation

3.29 (3) to the applicant or patentee a notice of the requirement — the period of 3 months after the notice was given; or

(iii) if under Article 4 (1) of the Budapest Treaty the authority has notified the depositor of its inability to furnish samples of the m icro-organism and the Commissioner has not, before the notification, given to the applicant or pate ntee under subregulation

3.29 (2) or (3) a copy of the notice, or the notice, as the case may be, of the requirement — the period of 3 months after the depositor received that notification under Article 4 (1) (d) of the Treaty; or

(iv)
in any other case — the day when t hat new deposit is so made; or
(d)
where the step referred to in paragraph 41 (4) (b) of the Act is an amendment of the specification in respect of that patent application or patent — the date of the allowance of the amendment, unless:
(i)
the Comm issioner has given the applicant or patentee a copy of a noti ce under subregulation 3.29
(2) or a notice under subre gulation 3.29 (3), and the applicant or patentee has not asked for leave to amend the specification within the perio d of 3 months after the copy or the notice was given; or
(ii)
the authority has notified the depositor under Article 4 (1) of the Budapest Tr eaty of its inab ility to furnish samples of the micro-organism and:
(A)
the Commissioner has not, before the notification, given to the applicant or patentee under subregulation 3.29 (2) or (3) the notice, or a copy of the notice, as the case may be, of the requirement; and
(B)
the app licant or pa tentee has not asked for leave to am end the specification within the period of 3 m onths after th e deposito r received the notification under Article 4 (1) (d) of the Treaty.

Regulation 3.31

3.31 Application for declaration that deposit requirements are not satisfied

(1)
An application under section 42 of the Act fo r a declaration that a specification does not comply with section 40 of the Act unless the deposit requirem ents are sa tisfied in r elation to a micro-organism, must:
(a)
be made in the approved for m to a prescribed court or the Commissioner; and
(b)
be lodged at the court or filed.
(2)
A person who applies for a declaration under section 42 of the Act must give a copy of the application:
(a)
to the applicant or patentee; and
(b)
to such other person as the court or Commissioner directs.
(3)
If the Comm issioner on his or her own m otion proposes to declare und er sec tion 4 2 of the Act that the s pecification in respect of a patent application or patent does not com ply with the requ irements of section 40 of the Act un less the dep osit requirements are satisfied in relation to a micro-organism, he or she m ust give to the ap plicant or p atentee a statem ent of the facts relied upon to justify the making of that declaration.
(4)
A person to whom:
(a)
a copy of an application under subregulation (2); or
(b)
a statement under subregulation (3); has been given:
(c)
may, within 3 m onths, give to th e cour t to which the application is made or to the Commissioner a reply to that application or statement; and
(d)
must give a copy of the re ply to the applicant or patentee and to such other persons as the court or the Commissioner directs.
(5)
As soon as practicable after:
(a)
a copy of a declaration by a court under subsection 42 (1) of the Act i s given to the Comm issioner under subsection 42 (6) of the Act; or

Regulation 3.31

(b) the m aking of a decisi on of the Comm issioner under

subsection 42 (1) of the Act; notice of the m aking of the decl aration or decision m ust be published in the Official Journal.

(6) The term s of a declarati on or decision referred to in subregulation (5) need not be published, but the declaration or decision must be open to public inspection.

Chapter 4 Publication

4.1 Prescribed information: applicants and applications

For the purposes of section 53 of the Act, the following information is prescribed:

(a)
the num ber allo cated to the applic ation by the Commissioner;
(b)
the name of the applicant;
(c)
in the case of a complete application — the nam e of the nominated person;
(d)
the title, or an abbreviated title, of the invention;
(e)
the date on which the application was filed;
(f)
in the cas e of a com plete application, other than a PCT application — particulars of priority documents.

4.2 Notice that specification is open to public inspection

(1)
A request under subsection 54 (1) of the Act must be in the approved form.
(2)
For the purposes of subs ection 54 (1) of the Act, the Commissioner m ust publish the not ice as soon as practicable after:
(a)
being asked by the applicant to publish the notice; and
(b)
the relevant abstract is finally completed; and
(c)
if a direction has b een given under subregulation 3.2A (2) — the direction has been complied with.
(3)
For the purposes of paragra ph 54 (3) (b ) of the Act, the prescribed period is from the day of filing of the specification to the end of 18 months after:
(a)
that day; or
(b)
the date of making the earliest priority document referred

to in regulation 3.12; whichever is earlier.

4.3 Prescribed documents: public inspection

(1)
For subsection 55 (1) of the Act, all documents that are:
(a)
associated with the applic ation, or with any provisional application associated with the application; and
(b)
in the possession of the Patent Office; are prescribed, other than:
(c)
documents t hat would be privileged from production in legal proceedings on the gr ound of legal professional privilege; and
(e)
the documents mentioned in subregulation (2).
(2)
For paragraphs 55 (2) (a), (b) a nd (c) of the Act, the following documents are prescribed:
(a)
a docum ent that is sub ject to an order of a court or a tribunal that prohibits disc losure of the docum ent or information in the document;
(b)
a docum ent required to be produced under paragraph 210 (c) of the Act, if t he Comm issioner has reasonable grounds for believing that the docum ent or information in the document should not be open to public inspection;
(c)
a document that contain s information from a docum ent to which paragraph (b) applies.

Chapter 5 Opposition

5.1 Application of this Chapter

This Chapter applies if a notice of opposition has been filed for the purposes of:

(a)
the following provisions of the Act:
(i)
section 59 (‘opposition to grant of standard patent’);
(ii)
section 75 (opposition to grant of extension);

(iii) section 101M (opposition to innovation patent);

(iv)
subsection 104 (4) (amendm ents by applicants and patentees), unless the request for leave to am end is in response to a direction of the Comm issioner under section 106 (am endments directed by Commissioner: patents) or section 107 (amendments directed by Commissioner: applications for standard patents);
(v)
subsection 223 (6) (extensions of time); or
(b)
subregulation 22.21 (4) (‘pro tection or com pensation of certain pe rsons’) o r 10. 7 (4) (‘c orrection of Re gister or patent’).

5.2 Interpretation

In this Chapter: applicant means:

(a)
in relation to an opposition under section 101M of the Act — the patentee of the innovation patent; and
(b)
in relation to another opposition — a person who has filed an application or request in respect of which another person has filed a notice of opposition.

opponent means a person who has filed a notice of opposition. party means applicant or opponent.

5.3 Filing of opposition (except under section 101M of the Act)

(1)
The Minister or other person who intends to oppose the grant of a patent under sec tion 59 of the Act m ust file a notice of opposition in the approved form within 3 months of publication in the Official Journal of the notice of acceptance under section 49 of the Act.
(2)
The Minister or other person who intends to oppose the grant of an extension of the term of a standard patent under section 75 of the Act m ust file a notic e of oppositio n in the app roved form within 3 m onths of publication in the Official Journal of the notice of acceptance under section 74 of the Act.
(3)
The Minister or other person who intends to oppose allow ing an amendment under subs ection 104 (4) of th e Act m ust file a notice of opposition in the approve d form within 3 m onths of publication in the Official Journal of a notice referred to in subregulation 10.5 (2).
(4)
A person must not oppose the allowance of a proposed amendment of a com plete specification, except on the grounds that the am endment is not a llowable under section 102 of the Act.
(5)
A person who intends to oppose the grant of an application for an extension of tim e under subs ection 223 (6) of the Act m ust file a notice of opposition in the approved form within 1 month of the advertisement of the application in the Official Journal.

(5A) A person who intends to oppose a request for am endment of the Register or a patent under subregulation 10.7 (4) must file a notice of opposition in the approve d form within 3 m onths of the publication in the Official Journal of the no tice referred to in subregulation 10.7 (3).

(6)
A person:
(a)
on whom a copy of an application for a licence in accordance with subregulation 22.21 (3) has b een served; and
(b)
who intends to oppose the grant of the licence; must file a notice of opposition to the grant of the licence in the

approved form within 1 month from the day on which the copy was served on him or her.

(7) As soon as practicable after a notice of opposition is filed, the opponent must serve a copy of the notice on the applicant.

5.3AA Filing of opposition under section 101M of Act

(1)
The Minister or other person who intends to oppose an innovation patent under section 10 1M of the Act m ust file a notice of opposition in the approved form.
(2)
The notice may be filed at a ny time after the innovation patent is certified.
(3)
The opponent m ust file with the notice of opposition a statement that sets ou t the groun ds of opposition and the particulars relating to each ground.
(4)
Within 7 days of f iling the notic e and the statem ent, the opponent must serve a copy of th e notice and statem ent on the applicant.

5.3A Amendment of notice of opposition: correction of error or mistake

(1)
An oppone nt m ay request the Commissioner in writing to amend a notice of opposition for th e purpose of correcting a clerical error or obvious mistake.
(2)
The Commissioner may grant the request on the term s (if any) that the Commissioner specifies by notice to the opponent making the request.
(3)
The Commi ssioner m ust give the parties an opportunity to make representations concerning the proposed amendment.
(4)
If the Commissioner allows an amendment, he or she must give the applicant a copy of the notice as amended.

5.3B Amendment of notice of opposition: change of opponent

(1)
This regulation applies if a person files a notice of opposition and the right or interest on whic h he or she relied to file the notice is subsequently vest ed in another person (the new opponent).
(2)
The new opponent m ay give to the Comm issioner notice, in writing, that the right or interest is vested in him or her a nd request the Comm issioner, in wr iting, to am end the notice of opposition to record his or her name.
(3)
The Commissioner may grant the request on the term s (if any) that th e Commissioner specif ies by written no tice to th e n ew opponent.
(4)
The Comm issioner m ust give to the parties to the opposition the opportunity to m ake representations concerning the proposed amendment.
(5)
If the Commissioner allows the amendment:
(a)
he or she m ust give the applicant a copy of the notice of opposition as amended; and
(b)
the opposition is to p roceed in th e nam e of the n ew opponent.

5.4 Filing of statement

An opponent (except an opponent under section 101M of the Act) must:

(a)
within 3 months of filing the notice of opposition, serve on the app licant a copy of a st atement th at s ets out the grounds of oppositio n, and the part iculars relating to each ground; and
(b)
as soon as practicable afte r the copy of the statem ent has been served on the applicant, file the statement.

5.5 Dismissal of opposition

(1)
An applicant may:
(a)
within 1 month of being served with a copy of a statement by an opponent under paragraph 5.4 (a); or
(b)
if the com plete specifica tion in relation to an opposed application is re-exam ined under subsection 97 (1) of the Act — within 1 m onth from the day when the re-examination is completed under regulation 9.5;

request the Commissioner in the approved form to dismiss the opposition.

(2)
As soon as practicable after a request is m ade, the Commissioner must inform the opponent of the request having been made.
(3)
The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition.
(4)
Without lim iting subregulation (3), the Commissioner m ay dismiss the opposition:
(a)
for an opposition und er section 101 M of the Act — if the statement of grounds and particulars is not filed with the notice of opposition; or
(b)
for another oppositio n — if th e statement of grounds and particulars is not served with in th e period pr escribed in paragraph 5.4 (a).

5.6 Determination of opposition

(1)
If the complete specif ication in relation to an opposed application is re-exam ined under subsection 97 (1) of the Act, the opponent m ay, within 1 m onth from the day when the re-examination is com pleted under regulation 9.5, request the Commissioner in the approved f orm to determ ine the opposition.
(2)
As soon as practicable after a request is m ade, the Commissioner must inform the applicant of the request having been made.
(3)
The Comm issioner m ay determ ine the opposition whether or not the opponent has requested determination of the opposition.

5.7 Opponent to serve copy of substitute statement

If the specification in relation to the opposed application is

re-examined under subsection 97 (1) of the Act:

(a)
the opponent may, within 1 month from the day when the re-examination is completed under regulation 9.5, serve on the applicant a copy of a stat ement in substitution for the statement to which paragraph 5.4 (a) relates; and
(b)
if a copy of a substitute d statement is served on the applicant, the opponent must, as soon as practicable after the copy of the statement has been so served, file that statement.

5.8 Time for giving of evidence

(1)
If an opponent intends to rely on evidence in support of the opposition, the opponent must:
(a)
serve on the applicant a copy of any evidence in support of the opposition:
(i)
for an opposition under section 101 M of the Act — at the sam e tim e as th e opponent serves on the applicant the notice of opposition and the s tatement of grounds and particulars; or
(ii)
for another oppositio n — within the period mentioned in subregulation (1A); and
(b)
file the ev idence in sup port of the oppositio n as soon as practicable after the co py of the evidence has b een served on the applicant.

(1A) For subparagraph (1) (a) (ii), the period is within 3 months after the day when the opponent served on the applicant a copy of the statement mentioned in paragraph 5.4 (a).

(2)
Subject to subregulation (3), if an applicant intends to rely on evidence in answer to th e evidence in support of the opposition, the applicant must:
(a)
serve on the opponent a copy of any evidence in answer to the evidence in support of the opposition within 3 m onths after being served with that evidence in support of the opposition; and
(b)
file the evidence in answer as soon as practicable after the copy of the evidence has been served on the opponent.
(3)
If an opponent has not served on an applicant a copy of evidence in support of the opposi tion and the app licant intends to rely on evidence in answer to the opposition, the applicant must:
(a)
serve on the opponent a copy of any evidence in answer to the opposition within 3 months from:
(i)
for an opposition under section 101 M of the Act — the day the notice of opposition was served on the applicant; or
(ii)
for another oppositio n — the end of the perio d that applies under subparagraph (1) (a) (ii); and
(b)
file the evidence in answer as soon as practicable after the copy of the evidence has been served on the opponent.
(4)
If an opponent intends to rely on evidence in reply to the evidence re ferred to in parag raph (2) (a) or (3) (a ), the opponent must:
(a)
within 1 month of being served with a copy of the evidence un der pa ragraph (2) (a ) o r (3 ) (a), se rve on the applicant:
(i)
a copy of the evidence in reply; or
(ii)
if the opponent does not serve on the applicant a copy of the evidence in reply — a copy of a not ice of intention to serve evidence in reply; and
(b)
if the opponent serves on the applicant a copy of a notice of intention to serve e vidence in reply — se rve on the applicant a copy of that evidence within 3 months of being served with a copy of the evidence under paragraph (2) (a) or (3) (a); and
(c)
file th e ev idence in r eply and any notice of in tention as soon as practicable af ter the copy of th e evidence in reply or notice has been served on the applicant.

5.9 Amendment of statement

(1)
Subject to subregulation (2 ), the Commissioner, on the written request of an opponent and subject to such term s as the Commissioner may specify:
(a)
if the Co mmissioner reason ably believes that an amendment of a statem ent refe rred to in regulation 5.4 corrects an error or om ission by the opponent or by his or her agent — may amend the grounds of opposition set out in the statement; or
(b)
if the Co mmissioner reason ably believes that an amendment of the grounds set out in a statem ent that is served and filed under regulation 5.4 results from an amendment of a paten t request or com plete specification — must amend those grounds; or
(c)
must a mend particulars relating to a ground set out in a statement that is served and filed under regulation 5.4.
(2)
The Commi ssioner m ust not allow an am endment requested under subregulation (1), if:
(a)
an application for dism issal of opposition is being considered; or
(b)
an application for determ ination of opposition is being considered; or
(c)
in the case of opposition under section 59 of the Act — a specification relating to the opposed application is being re-examined; or
(d)
he or she does not reasonably believe that the applicant has been notified of the proposed amendment.
(3)
The Commi ssioner m ust give the parties an opportunity to make representations concerning the proposed amendment.
(4)
If the Commissioner allows an amendment, he or she must give the applicant a copy of the statement as amended.

5.9A Amendment of statement: additional ground as a result of amendments of the Act by the US Free Trade Agreement Implementation Act 2004

(1)
This regulation applies to a statem ent m entioned in regulation 5.4, a copy of which is served on an applicant before the end of the period ending 3 months after the commencement of Schedule 8 to the US Free Trade Agreement Implementation Act 2004.
(2)
Subject to subregulation (3 ), the Commissioner on the written request of an opponent must amend a statement to add:
(a)
a ground that the invention is not a patentable invention because it does not com ply with paragraph 18 (1) (c) or (d) of the Act; and
(b)
the particulars relating to the ground.
(3)
The Commissioner must not am end a statem ent under subregulation (2) unless the opponent has:
(a)
filed a written requ est to am end the statem ent by the earlier of:
(i)
the end of the period ending 3 months after the commencement of Schedule 8 to the US Free Trade Agreement Implementation Act 2004; and
(ii)
the date on which a patent whose grant is being opposed, and to which the wri tten request relates, is sealed under section 61 of the Act; and
(b)
at the same time as the written request is filed:
(i)
applied to the Comm issioner in writing, under subregulation 5.10 (4), fo r perm ission to serve a copy of further evidence (if any) on which the opponent intends to rely in support of an additional ground mentioned in subparagraph (2) (a); or
(ii)
given to th e Comm issioner a statem ent that the opponent does not intend to rely on any further evidence in relation to the additional ground.
(4)
The Commissioner m ust give the applicant a copy of the statement as amended under subregulation (2).

5.10 Conduct of proceedings to which this Chapter applies

(1)
The Commi ssioner m ay, on his or her own m otion or on the application of a party:
(a)
give a direction that is not incons istent with th e Act or these regulations for the conduct of proceed ings to which this Chapter applies; or
(b)
determine that a period prescribed in this Chapter (except in regulation 5.3 or 5.3AA, paragraph 5.4 (a), subparagraph 5.8 (1) (a) (i) or regulation 5.9A) is to be extended by such further period as the Commissioner reasonably allows.
(2)
The Commissioner may extend the time within which the party may take a step prescribed in this Chapter (not being a step that is taken under regulation 5.3 or 5.3AA, paragraph 5.4 (a), subparagraph 5.8 (1) (a) (i) or regulation 5.9A):
(a)
on the application of a party in the approved form; and
(b)
on such reasonable term s (if any) as the Commissioner specifies; and
(c)
after the party has served a copy of the application on the other party.
(3)
If section 107 of the Act applies to an opposed application, the time within which a party m ay take a step pr escribed in this Chapter is extended by a period that is equal to the period from the day when the applicant is given an opportunity to be heard that is referred to in subsection 107 (2) of the A ct to the end of the day when the decision is made under 107 (4) of the Act whether or not the amendment is allowed.
(4)
The Commissioner may:
(a)
on the application of a party; and
(b)
on such reasonable term s (if any) as the Commissioner

specifies; permit the party to serve further evidence on the other party.

(5)
The Comm issioner must not give a direction under subregulation (1) or grant an application under subregulation
(2)
or (4) unless the Commissioner:
(a)
if he or she proposes to grant an application by a party — is re asonably satisf ied that the other party has been notified of the application; and
(b)
if he or she proposes to act on his or her own motion — ensures that the parties are notified of the proposed action; and
(c)
in either case:
(i)
gives the parties a reas onable opportunity to m ake representations concerni ng the application or proposed action; and
(ii)
is reasonably satisfied that a direction, an extension of tim e or the serving of further evid ence is appropriate in all the circumstances.

5.11 Commissioner may inform himself or herself

(1)
The Commissioner may inform himself or herself of a fact by reference to a document available in the Patent Office.
(2)
If the Comm issioner proposes to refer to a docum ent under subregulation (1), he or she must:
(a)
notify the parties accordingly; and
(b)
give the parties a copy of, or access to, the document; and
(c)
give the parties an opportuni ty to give evidence or m ake representations with respect to the fact or document.
(3)
In subregu lation (2 ), document does not include a document filed under regulation 5.3AA, 5.4 or 5.8, or further evidence referred to in subregulation 5.10 (4).

5.12 Hearing of opposition

(1)
This regu lation applies if th e relevant periods prescribed in regulation 5.8 have ended, unless:
(a)
the opposition has been dismissed or determined; or
(b)
the notice has been withdrawn.
(2)
The Commissioner must, if he or she receives a requ est by a party to hold a hearing:
(a)
give a notice of a hearing into the opposition; and
(b)
hold the hearing.
(3)
The Commissioner may, on his or her own motion:
(a)
give a notice of a hearing into the opposition; and
(b)
hold the hearing.

5.13 Representations to Commissioner

A representation m entioned in any of the following provisions may be m ade to the Commissione r in writing or by any other means approved by the Commissioner:

(a)
subregulation 5.3A (3);
(b)
subregulation 5.3B (4);
(c)
subregulation 5.9 (3);
(d)
subparagraph 5.10 (5) (c) (i);
(e)
paragraph 5.11 (2) (c).

5.14 Commissioner not required to hold hearing

If the Comm issioner believes, on reasonable grounds, that no party wishes to be heard in a m atter arising u nder regulation 5.12 or 5.13, the Comm issioner is not required to hold a hearing.

5.15 Withdrawal of opposition

An opponent may at any time withdraw opposition by:

(a)
filing a written notice of withdrawal that is signed by hi m or her; and
(b)
serving a copy of the notice on the applicant.
Grant and term of patents Chapter 6
Patents generally Part 1
Regulation 6.3

Chapter 6 Grant and term of patents

Part 1 Patents generally

6.1 Publication of notice of grant of standard patent

If a standard patent is gran ted under section 61 of the Act, the Commissioner m ust publish a notic e that the patent has been granted in the Official Journal.

6.2 Prescribed period: grant of standard patent

(1)
For the purposes of subsection 61 (2) of the Act, the prescribed period is from 3 months after publication under paragraph 49
(5)
(b) of the Act of the notice of the acceptance of the request and complete specification to:
(a)
6 months after that publication; or
(b)
such later day as:
(i)
in the case of proceed ings before a court or the Tribunal — the court or Tribunal directs; or
(ii)
in any other case — the Comm issioner reason ably

directs; being satisfied that the grant of the patent should be postponed.

(2) A person may request the Co mmissioner in the approved for m to give a direction referred to in subparagraph (1) (b) (ii).

6.3 Date of patent

(1)
For paragraph 65 (b) of the Act, the date of a patent is a s set out in this regulation.
(2)
For a patent granted under s ubsection 33 (1) or (2) of the Act, the date of the patent is the date that would have been the date of the patent if the patent ha d been granted on the application for a standard patent the grant of which was opposed under section 59 of the Act.
(3)
For a patent granted under s ubsection 33 (3) or (4) of the Act, the date of the patent is the da te of the innovation patent that was opposed under section 101M of the Act.
(4)
For a patent granted under subsection 34 (2) of the Act, the date of the patent is the date of the patent referred to in subsection 34 (1) of the Act.
(5)
For a patent granted under section 35 of the Act, the date of the patent is the date of the revoked patent.
(6)
For a patent gran ted as a resu lt of a declaration u nder section 36 of the Act, the date of the patent is:
(a)
if the declaration is m ade in respect of a com plete application — the da te that w ould have been the date of the patent if the patent had been granted on that application; or
(b)
if the dec laration is m ade in respect of a provisional application — the earlier of:
(i)
the date 12 m onths from the date of filing of the provisional specification in respect of that application; and
(ii)
the date of filing of the complete application referred to in subsection 36 (4) of the Act.
(7)
For a patent granted on a divisional application m ade under subsection 79B (1) of the Act, the date of the patent is:
(a)
if the da te of the pate nt was re corded in the Registe r before 1 January 2000 — th e d ate reco rded in the Register; or
(b)
if the Comm issioner determined a date of the patent and told the applicant in writing before 1 January 2000 — the date determined by the Commissioner; or
(c)
in any other case — the earliest of:
(i)
the date of the patent of the first-m entioned application ref erred to in subsection 79B (1) of the Act; and
(ii)
the date that would be the da te of the pa tent if a patent had been granted on that first-m entioned application; and
Chapter 6 Grant and term of patents
Part 1 Patents generally
Regulation 6.3
Grant and term of patents Chapter 6
Patents generally Part 1
Regulation 6.4

(iii) if that f irst-mentioned applica tion was itse lf a divisional application or was amended to be a divisional applic ation bef ore filing the late r application — the date that would be the date of the patent if a patent had been granted on the divisional application.

(8)
For an innovation patent gr anted on a div isional app lication made under subsection 79C (1) of the Act, the date of the patent is the da te of the first patent m entioned in subsection 79C (1).
(9)
If, under section 223 of the Act, the Comm issioner has extended the tim e for m aking, unde r section 38 of the Act, a complete application associated with a provisional application, the date of the patent is the date 12 m onths from the date of making the f irst prov isional app lication with which the complete application is associated.
(10)
If, under section 223 of the Act, the Comm issioner has extended the tim e for m aking, unde r section 94 of the Act, a Convention application in relatio n to a basic application, the date of the patent is the date 12 months from the date of making the first basic applicat ion to which the Convention application relates.

6.4 Form of application for sealing of duplicate of patent

An application for the sealing of a duplicate of a patent under section 66 of the Act must be in the approved form.

Chapter 6 Grant and term of patents
Part 2 Extension of pharmaceutical patents
Regulation 6.7

Part 2 Extension of pharmaceutical patents

6.7 Definitions

In this Part: pre-TGA marketing approval has the sam e m eaning as in section 70 of the Act.

6.8 Information to accompany application

(1)
This regulation applies to an application under section 70 of the Act for an extension of the term of a standard patent for a pharmaceutical substance.
(2)
For paragraph 71 (1) (c) of the Act, the application m ust be accompanied by information showing that goods containing, or consisting of, the substance ar e curren tly in cluded in the Australian Register of Therapeutic Goods.
(3)
The application m ust also be a ccompanied by inf ormation identifying the substance, as it occurs in those goods, in the same way (as f ar as po ssible) as th e substance is iden tified in the complete specification of the patent.

6.9 Application without pre-TGA marketing approval

(1)
This regulation applies to an application under section 70 of the Act for an extension of the term of a standard patent for a pharmaceutical substan ce for wh ich p re-TGA m arketing approval has not been given.
(2)
For parag raphs 71 (1 ) (b) and (c) o f the Act, the applica tion must be accompanied by:
(a)
a certificate under paragra ph 25 (3) (b) or subsection 26 (4) or 26A (9) of t he Therapeutic Goods Act 1989 stating the date of commencement of the first inclusion in

Regulation 6.11

the Australian Register of Therapeutic Goods of goods that contain, or consist of, the substance; or

(b) if the patentee does not ha ve a ce rtificate m entioned in paragraph (a) — inform ation showing the date of commencement of the f irst inc lusion in the Australian Register of Therapeutic Goods of goods that contain, or consist of, the substance.

Note For providing a copy of a certificate mentioned in paragraph (2) (a),see the definition of document in subsection 71 (1) of the Act.

6.10 Application with pre-TGA marketing approval

(1)
This regulation applies to an application under section 70 of the Act for an extension of the term of a standard patent for a pharmaceutical substan ce for wh ich p re-TGA m arketing approval has been given.
(2)
For parag raphs 71 (1 ) (b) and (c) o f the Act, the applica tion must be accompanied by:
(a)
a written statem ent by the person who gave the approval showing:
(i)
that approval has been given; and
(ii)
the date of the first approval; or
(b)
if the patentee does not have a written statem ent mentioned in paragraph (a) — information showing:
(i)
that approval has been given; and
(ii)
the date of the first approval.

Note For providing a copyof a written statement mentioned in paragraph

(2) (a), see the definition of document in subsection 71 (1) of the Act.

6.11 Further information

(1) This regulation applies if the Commissioner needs further information to decide whether he or she is s atisfied that the requirements set out in secti ons 70 and 71 of the Act are satisfied f or an applica tion f or an extension of the te rm of a standard patent.

Regulation 6.11

(2)
The Commissioner may give th e applicant a notice requesting the f urther inf ormation within the period m entioned in the notice.
(3)
The period must not be shorte r than 2 m onths or longer than 6 months from the day the notice is issued.

Note The period for giving the further information can be extended — see section 223 of the Act.

(4)
If the applicant does not give the f urther inf ormation within that period, the Commissioner must decide whether he or she is satisfied that the requirements set out in sections 70 and 71 of the Act are satisfied.
(5)
For subsection 71 (2) of the Act, further inform ation given within the period m entioned in subregulation (2) is taken to have been filed with the appli cation for extension of the ter m of the standard patent.

Chapter 6A Divisional applications

6A.1 Divisional applications: standard patents

For section 79B of the Act, a divisional application m ust be made:

(a)
under section 29 of the Act; and
(b)
before the date of th e grant of a patent on the first-mentioned application in section 79B of the Act.

6A.2 Divisional applications: innovation patents

(1)
For subsection 79C (1) of the Act, a divisional application must be made in accordance with section 29 of the Act.
(2)
For subparagraph 79C (2) (b) (iv) of the Act, the prescribed period is 1 month from the day on which the Comm issioner publishes, under paragraph 101E (d) of the Act, a notice of the occurrence of the exam ination of the first patent m entioned in subsection 79C (1) of the Act.

Chapter 7 Patents of addition

7.1 Form of application for grant of patent of addition etc

(1)
For paragraph 81 (1) (c) of the Act, an application for a further patent must be made under section 29 of the Act.
(2)
The Comm issioner m ust not grant a patent of addition under subsection 81 (1) of the Act unle ss the date that would be the date of the patent if that paten t of addition were granted is the same as, or later th an, the date o f the patent f or the m ain invention.

7.2 Form of application for revocation of patent and grant of patent of addition instead

An application under section 82 of the Act must be in the approved form.

PCT applications and Convention applications Chapter 8
PCT applications Part 1
Regulation 8.1

Chapter 8 PCT applications and Convention applications

Part 1 PCT applications

8.1 International applications taken to be applications under the Act

(1)
In this regulation:
priority date, in relation to an intern ational application, has the same meaning as in the PCT.
(2)
Where:
(a)
the receivin g Office has d eclared that an in ternational application that spec ifies Austra lia as a d esignated S tate under Article 4 (1) (ii) of the PCT is taken to be withdrawn; or
(b)
the International Bureau has m ade a finding under Article
12 (3) of the PCT; the app lication is take n to b e a PCT applic ation as if a declaration or finding had not been made, if:
(c)
the applican t has m ade a request referred to in Article 25 (1) (a) o f the PCT within the tim e lim it specif ied in Rule 51.1 of the PCT; and
(d)
the Comm issioner has r eceived within the tim e lim it specified in Rule 51.3 of the PCT:
(i)
fees prescribed for the purposes of paragraph 89 (3) (b); and
(ii)
if the application is not in English — a translation of the application into English and a r elated certificate of verification; and
(e)
the Commissioner reasonably believes that:
(i)
the declaration was the result of an error or om ission on the part of the receiving Office; or
Regulation 8.1A
(ii)
the finding was the resu lt of an error or om ission on the part of the International Bureau.
(3)
For the purposes of subsection 89 (1) of the Act:
(a)
the requirements of subsection 29 (4) of the Act; and
(b)
subregulation 3.1 (1) and regulation 3.2A; are prescribed.
(4)
The applicant must meet the requirements of subsection 89 (3) of the Act within the period of 31 months after the priority date of the application.

8.1A Title of an invention

(1)
A title established by the ISA under rule 37.2 of the PCT for an international applica tion is taken to be the title of the specification.
(2)
For subregulation (1), if the established title is in a language other than English, the title is taken to be the English translation of the established title.

8.2 Prescribed documents: PCT application

(1)
In this regulation: PCT application includes:
(a)
an amendment under Article 19 or 34 of the PCT; or
(b)
a rectification under Rule 91 of the regulations annexed to the PCT.
(2)
For the purposes of paragraph 89 (3) (a) of the Act, if:
(a)
a PCT application is not filed in English; and
(b)
the PCT application has b een published in English under Article 21 of the PCT; and
(c)
a translation of the appli cation into English has not been filed before the date of pub lication under Article 21 of the PCT;

the publication under Article 21 of the PCT is taken to be the translation referred to in paragraph 89 (3) (a) of the Act and to have been verified in accordance with these regulations.

PCT applications and Convention applications Chapter 8
PCT applications Part 1
Regulation 8.3
(3)
For the purposes of paragraph 89 (3) (b) of the A ct, each of the following documents is prescribed:
(a)
a docum ent setting o ut an add ress for s ervice of documents in Australia;
(b)
if a PCT applica tion has not been published under Article 21 of the PCT — a copy of the application;
(c)
if a PCT applica tion is not filed in English and has not been published in English unde r Article 21 of the PCT — a translation of the application into English together with a related certificate of verification.
(4)
The Commissioner must not, in relation to a P CT application that is treated as an application under the Act for a standard patent, give a direction under s ection 44 of the Act, unless the applicant has com plied with the req uirements of subsection 89 (3) of the Act.
(5)
In a PCT application, the applicant is taken to be the nominated person in respect of the application.

8.3 Modification of Act to apply to PCT applications

(1) For paragraph 228 (2) (t) of the Act, the Act is modified under this r egulation f or PCT applic ations that are treated as patent applications under the Act.

(1AA) Subsection 45 (1):

omit

Where

insert

Subject to subsection (1AC), where

(1AB) After subsection 45 (1):

insert

(1AA) Where:

(a) an applican t asks for an exam ination of a p atent request and complete specification relating to a PCT application; and

Regulation 8.3

(b)
the applicant demanded an international preliminary examination under Article 31 of the PCT be fore complying with the requirem ents of subsection 89 (3); and
(c)
at least 3 months afte r the applicant com plied with the requ irements of subsection 89 (3), the Commissioner asks for a copy of the international preliminary exam ination report from the International Bureau; and
(d)
the In ternational Bureau adv ises th at the international pre liminary examination report is not available;

the Commissioner may report on these m atters and ask the applicant to provide a copy of the international preliminary exam ination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any am endments that m ay have been m ade under Article 34 of the PCT.

(1AB) Where:

(a)
an applican t asks for an exam ination of a p atent request and complete specification relating to a PCT application; and
(b)
subsection (1AA) does not apply; and
(c)
the applica nt asks f or the ex amination to be expedited under subregulation 3.17 (2) of the Patents Regulations 1991; and
(d)
a copy of an internatio nal prelim inary exam ination report relating to the application has not been provided to the Commissioner;

the Commissioner may report on these m atters and ask the applicant to provide a copy of the international preliminary exam ination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any am endments that m ay have been m ade under Article 34 of the PCT.

PCT applications and Convention applications Chapter 8
PCT applications Part 1
Regulation 8.3
(1AC) If subsection (1AA) or (1AB) applies Commissioner is not require d to performfunctions under subsection (1) unless: , the his or her
(a) a copy of the internatio nal preliminary examination report is provided to the Commissioner; or
(b) the applicant:
(i) advises that:
(A) no dem and was m ade under Article 31 of the PCT; or
(B) no a mendments were m Article 34 of the PCT; or ade under
(C) the dem and was m ade under Article 31 of the PCT, or the inte rnational
preliminary exam ination report was established, af ter the applic ant complied with the req uirements of subsection 89 (3); or
(ii) elects to abandon any amendments that m ay have been made under Article 34 of the PCT.
Note Under s ubsection 89 (7) o f t he Act, as m odified by t he Patents Regulations 1991, if th e applicant provides the a dvice, or makes t he el ection, m entioned i n paragraph ( 1AC) (b ), anyamendments made under Article 34 of the PCT are not taken to be
included in the application.

(1AC) After subsection 45 (5):

insert

(6) In this section:

International Bureau m eans the International Bureau of the World Intellectual Property Organization. international preliminary examination report has the

same meaning as it has in the PCT.

(1AD) Subsection 48 (1):

omit

When

Chapter 8 PCT applications and Convention applications
Part 1 PCT applications
Regulation 8.3

insert

Subject to subsection (1AC), when

(1AE) After subsection 48 (1):

insert

(1AA) Where:

(a)
an applicant asks for a modified exam ination of a patent requ est and complete spec ification re lating to a PCT application; and
(b)
the applicant dem anded an international preliminary exam ination under Article 31 of the PCT before com plying with the requirem ents of subsection 89 (3); and
(c)
at least 3 months after the applicant complied with the requirem ents of subsection 89 (3), the Commissioner asks for a c opy of the international preliminary exam ination repo rt from the International Bureau; and
(d)
the Inte rnational Bureau advis es that the international preliminary examination report is n ot available;

the Commissioner may report on these m atters and ask the applicant to provide a copy of the international preliminary exam ination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any am endments that m ay have been m ade under Article 34 of the PCT.

(1AB) Where:

(a)
an applicant asks for a modified exam ination of a patent request and complete specification relating to a PCT application; and
(b)
subsection (1AA) does not apply; and
(c)
the applica nt asks f or the ex amination to be expedited under subregulation 3.17 (2) of the Patents Regulations 1991; and

Regulation 8.3

(d) a copy of an internationa l preliminary examination report relating to the application has not been provided to the Commissioner;

the Commissioner may report on these m atters and ask the applicant to provide a copy of the international preliminary exam ination repor t, o r to adv ise that no amendments were made under Article 34 of the PCT, or to abandon any am endments that m ay have been m ade under Article 34 of the PCT.

(1AC) If subsection (1AA) or (1AB) applies , the Commissioner is not require d to perform his or her functions under subsection (1) unless:

(a)
a copy of the internatio nal preliminary examination report is provided to the Commissioner; or
(b)
the applicant:
(i) advises the Commissioner that:
(A)
no dem and was m ade under Article 31 of the PCT; or
(B)
no a mendments were m ade under Article 34 of the PCT; or
(C)
the dem and was m ade under Article 31 of the PCT, or the inte rnational preliminary exam ination report was established, af ter the applic ant complied with the req uirements of subsection 89 (3); or
(ii)
elects to abandon any amendments that m ay have been made under Article 34 of the PCT.

Note Under s ubsection 89 (7) o f t he Act, as m odified by t he Patents Regulations 1991, if th e applicant provides the a dvice, or makes t he el ection, m entioned i n paragraph ( 1AC) (b ), anyamendments made under Article 34 of the PCT are not taken to be included in the application.

Chapter 8 PCT applications and Convention applications
Part 1 PCT applications
Regulation 8.3

(1AF) After subsection 48 (2):

insert

(3) In this section:

International Bureau m eans the International Bureau of the World Intellectual Property Organization. international preliminary examination report has the

same meaning as it has in the PCT.

(1A) Section 53:

omit

Where

insert

(1) Where

(1B) Section 53:

insert

(2) For a PCT application, the prescribed inform ation is taken to have been published under subsection (1) when the application is published by the International Bureau of the World Intellectual Property Organization.

(1BA) Subsection 89 (5):

substitute

(5)
If:
(a)
a PCT application has been am ended under Article 19 of the PCT before the ap plicant m eets the requirem ents of subsection (3); or
(b)
a PCT application has been rectified under Rule 91 of the Regulations m entioned in the definition of PCT in Schedule 1 before the applicant meets the requirements of subsection (3);
then the description, drawings and claim s contained in the application are, for the purposes of this Act, to be taken to have been amended:
(c)
on the day the amendment was made; or
(d)
unless the Commissioner disregards the rectification under Rule 91.3 (f) — on the day the rectification was effective.
PCT applications and Convention applications Chapter 8
PCT applications Part 1
Regulation 8.3

(1BD) After subsection 89 (5):

insert

(6)
Subject to subsection (7), where:
(a)
a PCT application in respect of which Australia has been elected under Chapter II of the PCT has been amended under Article 34 of the PCT; and
(b)
an intern ational prelim inary exam ination repo rt is established bef ore the applic ant m eets the requirements of subsection (3);

the description, drawings and claims contained in the application are, for the purposes of this Act, to be taken to have been am ended on the day on which the amendment was made.

(7)
Subsection (6) does not apply if:
(a)
the Commissioner has reported under subsection 45 (1AA) or (1AB), or 48 (1AA) or (1AB), or under regulations m ade for the purpose of section 104, in relation to an application; and
(b)
the applicant elects under subparagraph 45 (1AC) (b) (ii) or 48 (1AC) (b) (ii), or under regulations made for the purpose of section 104, to abandon any am endments that m ay have been made under Article 34 of the PCT, or provides the advice mentioned in subparagraph 45 (1AC) (b) (i) or 48 (1AC) (b) (i) o r in regulation s made for t he purpose of section 104.

(1C) Paragraph 90 (a):

omit

subsection 92 (1) or (2)

insert

subsection 92 (2) (1D) Paragraph 90 (b):

Chapter 8 PCT applications and Convention applications
Part 1 PCT applications
Regulation 8.3

substitute

(b) where subsection 92 (3) applies — on the day on which the application is published under Article 21 of the PCT.

(1E) Section 92:

substitute

92 Notice of publication

(1)
Subsection (2) applies to a PCT application:
(a)
that has not lapsed, or been withdrawn or refused; and
(b)
that is to be trea ted as an application for a standard patent under this Act; and
(c)
for which the app licant com plies with subsection 89 (3) before the end of 18 m onths after the priority date of the application.
(2)
The Commissioner m ust publish a notice in the Official Journal stating that th e P CT applica tion is open to public inspection:
(a)
if the applicant a sks the Comm issioner in writing to publish the notice; or
(b)
in any case — as soon as pra cticable after the end of 18 months after the priority date of the application.
(3)
If:
(a)
the applicant does not com ply with subsection 89 (3) within 18 months after the priority date of a PCT application; and
(b)
the application is published under Article 21 of

the PCT; the application is open to public inspection.

Regulation 8.3

(4)
If a PCT application is open to public inspection, any other prescribed documents are also open to public inspection.
(5)
In this section:

priority date, for an international application, has the same meaning as in the PCT.

(2) Section 141: omit the section, substitute:

‘141 Withdrawal of applications

(1)
Subject to subsection (3), a patent application m ay be withdrawn at any tim e except during a period prescribed for the purposes of this section.
(2)
A patent application is to be treated as having been withdrawn if, and only if, th e applicant lodges a written notice of withdrawal signed by the applicant.
(3)
A PCT applica tion is to be treated as having been withdrawn if Article 11 (3) of the PCT ceases to h ave effect in Australia in rela tion to the application under Article 24 (1) (i) of the PCT.’.
(3)
Subsection 142 (2): Add at the end: ‘; or (f) Article 11 (3) of the PCT ceases to have effect in
Australia in relation to th e application under Article 24 (1) (ii) or (iii) or Article 39 (2) of the PCT’.
(4)
Section 223: After subsection (1) insert: ‘(1A) If, because of an error or omission by the receiving

Office or the Intern ational Bureau, a relevan t act that is required to be done within a certain tim e is not, or cannot be, done within that tim e, the Commissioner must extend the tim e for doing the act.’.

Chapter 8 PCT applications and Convention applications
Part 1 PCT applications
Regulation 8.4

(5) Schedule 1, definition of international filing date, including the cross-reference to section 10:

substitute

‘international filing date, in relation to a n interna tional application, means:

(a)
the date given to the inte rnational applica tion as its international filing date under Article 11 of the PCT; or
(b)
if that date is revised un der Article 14 of the PCT — that international filing date as so revised; or
(c)
if the Comm issioner h as treated another date as the

82ter

international filing date under Rule — that international filing date as so treated.

[See also section 10]’.

8.4 Form of request and prescribed documents: PCT applications

(1)
A request for publication under section 92 of the Act of the Act must be in the approved form.
(2)
For subsection 92 (4) of the Act, all documents that are:
(a)
associated with the applic ation, or with any provisional application f rom which the applic ation c laims prior ity under article 8 of the PCT; and
(b)
in the possession of the Patent Office; are prescribed, other than:
(c)
documents t hat would be privileged from production in legal proceedings on the gr ound of legal professional privilege; and
(e)
the documents mentioned in subregulation 4.3 (2).
PCT applications and Convention applications Chapter 8
Convention applications Part 2
Regulation 8.6

Part 2 Convention applications

8.5 Convention countries

(1)
Each of the countries specified in Schedule 4 is declared to be a Convention country f or the pur poses of the definition of Convention country in the Act.
(2)
For the purposes of section 94 of the Act, the period of 12 m onths from the day on which a basic application is first made in a Convention country in respect of the invention is prescribed.

8.6 Particulars required for Convention application — general

(1)
For the purposes of paragra ph 95 (2) (a ) of the Act, the following particulars are prescribed:
(b)
the country in which the application was made;
(c)
the num ber allocated to the application by the foreign patent office of the C onvention country in which the application was made;
(d)
the date on which the application was made;
(e)
if the application is not the first m ade in a Convention country in respect of the invention — the particulars specified in paragraphs (b) to (d ) (inclusive) in respect of that first made application.
(2)
For subsection 95 (3) of the Act, the Comm issioner m ay request a copy of the specifi cation relating to the basic application that ha s been certified by the competent authority of the Convention country in which the basic application w as made.
(3)
The certified copy must be filed within 3 months from the date on which the Commissioner requests it.

Regulation 8.6A

8.6A Particulars required for Convention application — use of approved digital library

(1)
For subregulation 8.6 (3), a certified copy is taken to have been filed if the Commissioner is satisfied that the certified copy:
(a)
has been m ade availab le fo r insp ection by the Commissioner in an approved digital library; and
(b)
was m ade available with in the period mentioned in subregulation 8.6 (3).
(2)
However, if the Commissione r is satisf ied tha t the c ertified copy:
(a)
was made available for inspection by the Commissioner in the approved digital library within the period mentioned in subregulation 8.6 (3); but
(b)
is no longer available for inspection; the certified copy is taken to have been filed in respect of, and at the s ame time as, the basic ap plication only if the cer tified copy is again m ade available for inspection by the Commissioner in the approved dig ital library, or given to the Commissioner, no later than 2 months after the day on which the Commissioner no tifies the applicant or pa tentee tha t th e

Commissioner has not been able to inspect the certified copy in the approved digital library.

8.7 Form of request in relation to withdrawn, abandoned or refused applications

A request under section 96 of the Act m ust be in the approved form.

Chapter 9 Re-examination

9.1 Notice of Commissioner’s decision to re-examine complete specification

If the Comm issioner d