| PCT, International Applications |
Referenced Items (377, 378, 379, 380, 381, 382, 383, 384, 385, 386, 387, 388, 389, 390, 391, 392, 393, 394, 395, 396, 397, 398, 399, 400, 401, 402) |
(401) Announcement of Certain Amendments to
the Regulations Under the
Patent Cooperation Treaty (PCT)
Certain of the Regulations under the Patent Cooperation Treaty were
amended with effect from July 1, 1998, unless a different date is
indicated in a footnote to the amended Regulations which are reproduced
below. The following highlight some of the amendments made:
(1) PCT Gazette - the two separate English and French paper editions of
the Gazette were replaced by a single bilingual paper version;
(2) Language of the international application - the existing provisions
as to the languages in which international applications may be filed,
(3) Priority claims - PCT Rule 4.10 has been completely revised to
simplify correction procedures in cases of mistakes and/or omissions, to
simplify requirements relating to the contents of priority claims and to
liberalize requirements relating to the furnishing of priority documents;
(4) Demand for international preliminary examination - a safeguard has
been introduced for the situation in which a demand is not filed with
the competent International Preliminary Examining Aiuthority (IPEA);
(5) Access - copies of documents in the files of the International
Bureau and the IPEA will become more readily available to third parties
after international publication for international applications filed on
or after July 1, 1998;
(6) Payment of fees - time limits for payment of different fees during
the international phase have been made more uniform and other features
of relevant rules have been clarified;
(7) Sequence listings - a new standard for the presentation of
nucleotide and amino acid sequences will be adopted and will replace the
current various requirements of the International Searching Authorities,
IPEAs and designated and elected offices; and
(8) Deposits - the scope of PCT Rule 13bis has been broadened to cover
deposits of biological material.
AMENDMENTS OF THE REGULATIONS UNDER
THE PATENT COOPERATION TREATY (PCT)
TEXT OF THE AMENDED RULES[1]
Rule 3
The Request (Form)
3.1 and 3.2 [No change]
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 computer readable form, a
document relating to the payment of fees, or any other document (to be
specified in the check list);
(iii) [No change]
(b) [No change]
3.4 [No change]
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Rule 4
The Request (Contents)
4.1 to 4.9 [No change]
4.10 Priority Claim
(a) Any declaration referred to in Article 8(1) ("priority claim")
shall, subject to Rule 26bis.1, 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, being a date
falling within the period of 12 months preceding the international
filing date;
(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 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 the
countries party to the regional patent treaty are not all party to the
Paris Convention for the Protection of Industrial Property, the priority
claim shall indicate at least one country party to that Convention for
which that earlier application was filed.
(c) For the purposes of paragraphs (a) and (b), Article 2(vi) shall not
apply.
(d) [Deleted]
(e) [Deleted]
4.11 to 4.17 [No change]
Rule 5
The Description
5.1 [No change]
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 11
Physical Requirements of the International Application
11.1 to 11.13 [No change]
11.14 Later Documents
Rules 10, and 11.1 to 11.13, also apply to any document-for example,
corrected pages, amended claims, translations-submitted after the filing
of the international application.
Rule 12
Language of the International Application
and Translation for the Purposes of International Search
12.1 Languages Accepted for the Filing of International Applications
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(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.
(iii) [Deleted]
(c) Notwithstanding paragraph (a), the request shall be filed in a
language which is both a language accepted by the receiving Office under
that paragraph and a language of publication.
(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.
12.2 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 error 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), 48.3(b) or 55.2(a), rectifications referred to in
Rule 91.1(e)(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(e)(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 55.2(a), or 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 20.5(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, which
ever expires later.
(d) Where the receiving Office has sent to the applicant an invitation
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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 50% of the basic fee.
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) [No change]
(ii) the date of deposit of the biological material with that
institution;
(iii) and (iv) [No change]
(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, indicate that date, and
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include the relevant data from the indication, in the pamphlet published
under Rule 48;
(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
(a) [Deleted]
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) [No change]
Rule 13te
Nucleotide and/or Amino Acid Sequence Listings
13ter.1 Sequence Listing for International Authorities
(a) Where the International Searching Authority finds that the
international application contains disclosure of one or more nucleotide
and/or amino acid sequences but:
(i) the international application does not contain a sequence listing
complying with the standard provided for in the Administrative
Instructions, that Authority may invite the applicant to furnish to it,
within a time limit fixed in the invitation, a sequence listing
complying with that standard;
(ii) the applicant has not already furnished a sequence listing in
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computer readable form complying with the standard provided for in the
Administrative Instructions, that Authority may invite the applicant to
furnish to it, within a time limit fixed in the invitation, a sequence
listing in such a form complying with that standard.
(b) [Deleted]
(c) If the applicant does not comply with an invitation under paragraph
(a) within the time limit fixed in the invitation, the International
Searching Authority shall not be required to search the international
application to the extent that such noncompliance has the result that a
meaningful search cannot be carried out.
(d) Where the International Searching Authority finds that the
description does not comply with Rule5.2(b), it shall invite the
applicant to file 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.
(e) Paragraphs (a) and (c) shall apply mutatis mutandis to the procedure
before the International Preliminary Examining Authority.
(f) Any sequence listing not contained in the international application
as filed shall not, subject to Article 34, form part of the
international application.
13ter.2 Sequence Listing for Designated Office
Once the processing of the international application has started before
a designated Office, Rule13ter.1(a) shall apply mutatis mutandis to the
procedure before that 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.
(b) [Deleted]
Rule 14
The Transmittal Fee
14.1 The Transmittal Fee
(a) [No change]
(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 Basic Fee and Designation Fee
Each international application shall be subject to the payment of a fee
for the benefit of the International Bureau ("international fee") to
be collected by the receiving Office and consisting of,
(i) [No change]
(ii) as many "designation fees" as there are national patents and
regional patents sought under Rule4.9(a), except that, where Article 44
applies in respect of a designation, only one designation fee shall be
due for that designation, and that the Schedule of Fees may indicate a
maximum number of designation fees payable.
15.2 Amounts
(a) [No change]
(b) The basic fee and the designation fee shall be payable in the
currency or one of the currencies prescribed by the receiving Office
("prescribed currency"), it being understood that, when transferred by
the receiving Office to the International Bureau, they shall be freely
convertible into Swiss currency. The amounts of the basic fee and of the
designation fee shall be established, for each receiving Office which
prescribes the payment of those fees in any currency other than Swiss
currency, by the Director General after consultation with the receiving
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Office of, or acting under Rule19.1(b) for, the State whose official
currency is the same as the prescribed currency. The amounts so
established shall be the equivalents, in round figures, of the amounts
in Swiss currency set out inthe Schedule of Fees. They shall be notified
by the International Bureau to each receiving Office prescribing payment
in that prescribed currency and shall be published in the Gazette.
(c) [No change]
(d) Where the exchange rate between Swiss currency and any prescribed
currency becomes different from the exchange rate last applied, the
Director General shall establish new amounts in the prescribed currency
according to directives given by the Assembly. The newly established
amounts shall become applicable two months after the date of their
publication in the Gazette, provided that the receiving Office referred
to in the second sentence of paragraph (b) and the Director General may
agree on a date falling during the said two-month period, in which case
the said amounts shall become applicable from that date.
15.3 [Deleted]
15.4 Time Limit for Payment; Amount Payable
(a) The basic 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.
(b) The designation fee shall be paid within a time limit of:
(i) one year from the priority date, or
(ii) one month from the date of receipt of the international application
if that one-month period expires later than one year from the priority
date.
(c) Where the designation fee is paid before the expiration of one month
from the date of receipt of the international application, the amount
payable shall be the amount applicable on that date of receipt. Where
the time limit under paragraph (b)(i) applies and the designation fee is
paid before the expiration of that time limit but later than one month
from the date of receipt of the international application, the amount
payable shall be the amount applicable on the date of payment. (i) and
(ii) [Deleted]
15.5 Fees Under Rule 4.9(c)
(a) Notwithstanding Rule 15.4(b), the confirmation under Rule 4.9(c) of
any designations made under Rule 4.9(b) shall be subject to the payment
to the receiving Office of as many designation fees (for the benefit of
the International Bureau) as there are national patents and regional
patents sought by the applicant by virtue of the confirmation, together
with a confirmation fee (for the benefit of the receiving Office) equal
to 50% of the sum of the designation fees payable under this paragraph.
Such fees shall be payable in respect of each designation so confirmed,
even if the maximum number of designation fees referred to in item 2(a)
of the Schedule of Fees is already payable or if a designation fee is
already payable in respect of the designation under Rule 4.9(a) of the
same State for a different purpose.
(b) [No change]
15.6 Refund
The receiving Office shall refund the international 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) [No change]
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(b) The search fee shall be collected by the receiving Office. The said
fee shall be payable in the currency or one of the currencies prescribed
by that Office ("receiving Office currency"), it being understood that,
if any receiving Office currency is not that, or one of those, in which
the International Searching Authority has fixed the said fee ("fixed
currency"), it shall, when transferred by the receiving Office to the
International Searching Authority, be freely convertible into the
currency of the State in which the International Searching Authority has
its headquarters ("headquarters currency"). The amount of the search fee
in any receiving Office currency, other than the fixed currency, shall
be established by the Director General after consultation with the
receiving Office of, or acting under Rule 19.1(b) for, the State whose
official currency is the same as the receiving Office currency. The
amounts so established shall be the equivalents, in round figures, of
the amount established by the International Searching Authority in the
headquarters currency. They shall be notified by the International
Bureau to each receiving Office prescribing payment in that receiving
Office currency and shall be published in the Gazette.
(c) [No change]
(d) Where the exchange rate between the headquarters currency and any
receiving Office currency, other than the fixed currency or currencies,
becomes different from the exchange rate last applied, the Director
General shall establish the new amount in the said receiving Office
currency according to directives given by the Assembly. The newly
established amount shall become applicable two months after its
publication in the Gazette, provided that any receiving Office referred
to in the third sentence of paragraph (b) and the Director General may
agree on a date falling during the said two-month period, in which case
the said amount shall become applicable for that Office from that date.
(e) [No change]
(f) As to the time limit for payment of the search fee and the amount
payable, the provisions of Rule15.4(a) relating to the basic 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 [No change]
Rule 16bis
Extension of Time Limits for Payment of Fees
16bis.1 Invitation by the Receiving Office
(a) Where, by the time they are due under Rules 14.1(c), 15.4(a) 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 basic fee and the search fee, the receiving Office 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 16bis.2, within
a time limit of one month from the date of the invitation.
(b) Where, by the time they are due under Rule 15.4(b), the receiving
Office finds that no fees were paid to it, or that the amount paid to it
is insufficient to cover the designation fees necessary to cover all the
designations under Rule 4.9(a), the receiving Office 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 16bis.2, within
a time limit of one month from the date of the invitation. The amount
payable in respect of any designation fee shall be the amount applicable
on the last day of the one-year period from the priority date if the
time limit under Rule 15.4(b)(i) applies or the amount applicable on the
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date of receipt of the international application if the time limit under
Rule 15.4(b)(ii) applies.
(c) Where the receiving Office has sent to the applicant an invitation
under paragraph (a) or (b) 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 (d):
(i) to (iii) [No change]
(d) Any payment received by the receiving Office before that Office
sends the invitation under paragraph (a) or (b) shall be considered to
have been received before the expiration of the time limit under Rule
14.1(c), 15.4(a) or (b) 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) or (b).
16bis.2 Late Payment Fee
(a) The payment of fees in response to an invitation under Rule
16bis.1(a) or (b) 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) and (ii) [No change]
(b) The amount of the late payment fee shall not, however, exceed the
amount of the basic fee referred to in item 1(a) of the Schedule of
Fees.
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 already filed with the receiving
Office together with the international application in which the priority
claim is made, and subject to paragraph (b), 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.
(c) If the requirements of neither of the two preceding paragraphs are
complied with, any designated State may 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.
17.2 Availability of Copies
(a) Where the applicant has complied with Rule 17.1(a) or (b), 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
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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) [No change]
(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) [No change]
(ii) the relevant priority claim was withdrawn or considered, under Rule
26bis.2(b), not to have been made.
(iii) [Deleted]
(d) [Deleted]
Rule 19
The Competent Receiving Office
19.1 to 19.3 [No change]
19.4 Transmittal to the International Bureau as Receiving Office
(a) Where an international application is filed with a national Office
which acts as a receiving Office under the Treaty 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 specifiedunder 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) [No change]
(c) For the purposes of Rules 14.1(c), 15.4(a) to (c) 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
Receipt of the International Application
20.1 to 20.3 [No change]
20.4 Determination Under Article 11(1)
(a) and (b) [No change]
(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.
20.5 to 20.9 [No change]
Rule 22
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Transmittal of the Record Copy and Translation
22.1 Procedure
(a) to (g) [No change]
(h) Where the international application is to be published in the
language of a translation furnished under Rule 12.3, 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.
22.2 [Remains deleted]
22.3 [No change]
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 computer readable form which is furnished to
the receiving Office shall be transmitted by that Office to the
International Searching Authority.
Rule 26
Checking by, and Correcting Before, the Receiving Office
of Certain Elements of the International Application
26.1 and 26.2 [No change]
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 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
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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(a), 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(a), 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 [No change, except for the deletion of the redundant numbering of
paragraph "(a)"]
26.5 [No change, except for the deletion of the redundant numbering of
paragraph "(a)"]
26.6 [No change]
Rule 26bis
Correction or Addition of Priority Claim
26bis.1 Correction or Addition of Priority Claim
(a) The applicant may correct or add a priority claim 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 also 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 Invitation to Correct Defects in Priority Claims
(a) Where the receiving Office or, if the receiving Office fails to do
so, the International Bureau, finds that a priority claim does not
comply with the requirements of Rule 4.10 or that any indication in a
priority claim is not the same as the corresponding indication appearing
in the priority document, the receiving Office or the International
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Bureau, as the case may be, shall invite the applicant to correct the
priority claim.
(b) If, in response to an invitation under paragraph (a), the applicant
does not, before the expiration of the time limit under Rule 26bis.1(a),
submit a notice correcting the priority claim so as to comply with the
requirements of Rule 4.10, that priority claim shall, for the purposes
of the procedure under the Treaty, be considered not to have been made
and the receiving Office or the International Bureau, as the case may
be, shall so declare and shall inform the applicant accordingly,
provided that a priority claim shall not be considered not to have been
made only because the indication of the number of the earlier
application referred to in Rule 4.10(a)(ii) is missing or because an
indication inthe priority claim is not the same as the corresponding
indication appearing in the priority document.
(c) Where the receiving Office or the International Bureau has made a
declaration under paragraph(b), the International Bureau shall, upon
request made by the applicant and received by the International Bureau
prior to the completion of the technical preparations for international
publication, and subject to the payment of a special fee whose amount
shall be fixed in the Administrative Instructions, publish, together
with the international application, information concerning the priority
claim which was considered not to have been made. A copy of that request
shall be included in the communication under Article 20 where a copy of
the pamphlet is not used for that communication or where the
international application is not published by virtue of Article 64(3).
Rule 29
International Applications or Designations
Considered Withdrawn
29.1 Finding by Receiving Office
(a) 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)
(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) to (iv) [No change]
(b) [No change]
29.2 [Remains deleted]
29.3 and 29.4 [No change]
Rule 34
Minimum Documentation
34.1 Definition
(a) and (b) [No change]
(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 and the
Russian Federation,
(iii) [No change]
(iv) the inventors' certificates issued by the former Soviet Union,
(v) and (vi) [No change]
(d) [No change]
(e) Any International Searching Authority whose official language, or
one of whose official languages, is not Japanese, Russian or Spanish is
entitled not to include in its documentation those patent documents of
Japan, the Russian Federation and the former Soviet Union as well as
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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) [No change]
Rule 37
Missing or Defective Title
37.1 [No change]
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 isto 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 [No change]
38.2 Establishment of Abstract
(a) 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.
(b) [No change]
Rule 43
The International Search Report
43.1 to 43.3 [No change]
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 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.
43.5 to 43.8 [No change] 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 [No change]
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Rule 44
Transmittal of the International Search Report, Etc.
44.1 [No change]
44.2 [No change, except for the deletion of the redundant numbering of
paragraph "(a)"]
44.3 [No change]
Rule 46
Amendment of Claims Before the International Bureau
46.1 to 46.4 [No change]
46.5 [No change, except for the deletion of the redundant numbering of
paragraph "(a)"]
Rule 47
Communication to Designated Offices
47.1 and 47.2 [No change]
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 [No change]
Rule 48
International Publication
48.1 [No change]
48.2 Contents
(a) The pamphlet shall contain:
(i) to (vii) [No change]
(viii) the relevant data from any 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 considered not to have
been made under Rule26bis.2(b), the publication of which is requested
under Rule 26bis.2(c).
(b) to (i) [No change]
48.3 Languages of Publication
(a) If the international application is filed in Chinese, English,
French, German, Japanese, Russian or Spanish ("languages of
publication"), that application shall be published in the language in
which it was filed.
(a-bis) 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, that application shall be published in the
language of that translation.
(b) If the international application is filed in a language which is not
a language of publication and no translation into a language of
publication is required under Rule 12.3(a), that application shall be
published in English translation. The translation shall be prepared
under the responsibility of the International Searching Authority, which
shall be obliged to have it ready in time to permit international
publication by the prescribed date, or, where Article 64(3)(b) applies,
to permit the communication under Article 20 by the end of the 19th
month after the priority date. Notwithstanding Rule 16.1(a), the
International Searching Authority may charge a fee for the translation
to the applicant. The International Searching Authority shall give the
applicant an opportunity to comment on the draft translation. The
International Searching Authority shall fix a time limit reasonable
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under the circumstances of the case for such comments. If there is no
time to take the comments of the applicant into account before the
translation is communicated or if there is a difference of opinion
between the applicant and the said Authority as to the correct
translation, the applicant may send a copy of his comments, or what
remains of them, to the International Bureau and each designated Office
to which the translation was communicated. The International Bureau
shall publish the relevant portions of the comments together with the
translation of the International Searching Authority or subsequently to
the publication of such translation.
(c) [No change]
48.4 to 48.6 [No change]
Rule 49
Copy, Translation and Fee Under Article 22
49.1 to 49.4 [No change]
49.5 Contents of and Physical Requirements for the Translation
(a) For the purposes of Article 22, the translation of the international
application shall contain the description (subject to paragraph
(a-bis)), the claims, any text matter of the drawings and the abstract.
If required by the designated Office, the translation shall also,
subject to paragraphs (b), (c-bis) and (e),
(i) to (iii) [No change]
(a-bis) 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) to (l) [No change]
Rule 54
The Applicant Entitled to Make a Demand
54.1 [No change]
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.
(i) and (ii) [Deleted]
54.3 [No change]
54.4 [No change, except for the deletion of the redundant numbering of
paragraph "(a)"]
Rule 55
Languages (International Preliminary Examination)
55.1 [No change]
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.
(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
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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) [No change]
(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.
(e) [Deleted]
55.3 [No change]
Rule 57
The Handling Fee
57.1 [No change, except for the deletion of the redundant numbering of
paragraph "(a)"]
57.2 Amount
(a) [No change]
(b) [Remains deleted]
(c) The handling fee shall be payable in the currency or one of the
currencies prescribed by the International Preliminary Examining
Authority ("prescribed currency"), it being understood that, when
transferred by that Authority to the International Bureau, it shall be
freely convertible into Swiss currency. The amount of the handling fee
shall be established, in each prescribed currency, for each
International Preliminary Examining Authority which prescribes the
payment of the handling fee in any currency other than Swiss currency,
by the Director General after consultation with the Office with which
consultation takes place under Rule 15.2(b) in relation to that
currency, or, if there is no such Office, with the Authority which
prescribes payment in that currency. The amount so established shall be
the equivalent, in round figures, of the amount in Swiss currency set
out in the Schedule of Fees. It shall be notified by the International
Bureau to each International Preliminary Examining Authority
prescribing payment in that prescribed currency and shall be published
in the Gazette.
(d) and (e) [No change]
57.3 Time Limit for Payment; Amount Payable
The handling fee shall be paid within one month from the date on which
the demand was submitted, provided that, 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. The amount payable shall be the amount
applicable on that date of submittal or date of receipt, as the case may
be. For the purposes of the preceding two sentences, Rule 59.3(e) shall
not apply.
(b) [Remains deleted]
(c) [Deleted]
57.4 [Deleted]
57.5 [Remains deleted]
57.6 Refund
The International Preliminary Examining Authority shall refund the
handling fee to the applicant:
(i) [No change]
(ii) if the demand is considered, under Rule 54.4, not to have been
submitted.
Rule 58
The Preliminary Examination Fee
58.1 Right to Ask for a Fee
(a) [No change]
(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
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payable, the provisions of Rule 57.3 relating to the handling fee shall
apply mutatis mutandis.
(c) [No change]
58.2 [Deleted]
58.3 [No change]
Rule 58bis
Extension of Time Limits for Payment of Fees
58bis.1 Invitation by the International Preliminary Examining Authority
(a) Where, by the time they are due under Rules 57.3 and 58.1(b), the
International Preliminary Examining Authority finds that no fees were
paid to it, or that the amount paid to it is insufficient to cover the
handling fee and the preliminary examination fee, 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 and 59.2 [No change]
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
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applicant accordingly, or
(ii) if two or more International Preliminary Examining Authorities are
competent, invite the applicant to indicate, within 15 days from the
date of the invitation or 19 months from the priority date, 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 Bureaushall 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.
Rule 60
Certain Defects in the Demand or Elections
60.1 Defects in the Demand
(a) and (b) [No change]
(c) Subject to paragraph (d), 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.
(d) to (g) [No change]
60.2 Defects in Later Elections
(a) and (b) [No change]
(c) Subject to paragraph (d), if the applicant does not comply with the
invitation within the time limit under paragraph (a), the notice shall
be considered as if it had not been submitted and the International
Bureau shall so declare.
(d) [No change]
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 or where an election has been
considered under Rule 60.1(d) as if it had not been made, the
International Preliminary Examining Authority shall notify the applicant
and the International Bureau accordingly.
(c) [No change]
61.2 and 61.3 [No change]
61.4 Publication in the Gazette
Where a demand has been filed before the expiration of 19 months from
the priority date, theInternational 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
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Administrative Instructions.
Rule 62
Copy of Amendments Under Article 19
for the International Preliminary Examining Authority
62.1 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 a copy of any amendments under Article 19, and any statement
referred to in that Article, to that Authority, 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.
Rule 66
Procedure Before the International
Preliminary Examining Authority
66.1 to 66.7 [No change]
66.8 Form of Amendments
(a) Subject to paragraph (b), 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 letter accompanying the replacement sheets shall draw
attention to the differences between the replaced sheets and the
replacement sheets 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 inthe cancellation of an entire sheet,
that amendment shall be communicated in a letter which shall preferably
also explain the reasons for the amendment.
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) to (d) [No change]
Rule 69
Start of and Time Limit for
International Preliminary Examination
69.1 [No change]
69.2 Time Limit for International Preliminary Examination
The time limit for establishing the international preliminary
examination report shall be:
(i) 28 months from the priority date, or
(ii) eight months from the date of payment of the fees referred to in
Rules 57.1 and 58.1(a), or
(iii) eight months from the date of receipt by the International
Preliminary Examining Authority of the translation furnished under Rule
55.2,
whichever expires last.
Rule 70
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The International Preliminary Examination Report
70.1 to 70.6 [No change]
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) [No change]
70.8 to 70.15 [No change]
70.16 Annexes to the Report
Each replacement sheet under Rule 66.8(a) or (b), each replacement sheet
containing amendments under Article 19 and each replacement sheet
containing rectifications of obvious errors authorized under Rule
91.1(e)(iii) shall, unless superseded by later replacement sheets or
amendments resulting in the cancellation of entire sheets under Rule
66.8(b), be annexed to the report. Amendments under Article 19 which
have been considered as reversed by an amendment under Article 34 and
letters under Rule 66.8 shall not be annexed.
70.17 [No change, except for the deletion of the redundant numbering
of paragraph "(a)"]
Rule 76
Copy, Translation and Fee Under Article 39(1);
Translation of Priority Document
76.1 to 76.3 [Remain deleted]
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 and 76.6 [No change]
Rule 80
Computation of Time Limits
80.1 to 80.5 [No change]
80.6 [No change, except for the deletion of the redundant numbering of
paragraph "(a)"]
80.7 [No change]
Rule 82ter
Rectification of Errors Made by
the Receiving Office or by the International Bureau
82ter.1 Errors Concerning the International Filing Date and the Priority
Claim
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 by the receiving Office or the International
Bureau not to have been made, 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 not to
have been made.
Rule 86[2]
The Gazette
86.1 Contents and Form
(a) The Gazette referred to in Article 55(4) shall contain:
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(i) for each published international application, the data specified by
the Administrative Instructions taken from the front page of the
pamphlet published under Rule 48, the drawing (if any) appearing on the
said front page, and the abstract,
(ii) to (v) [No change]
(b) The information referred to in paragraph (a) shall be made available
in two forms:
(i) as a Gazette in paper form, which shall contain the data specified
by the Administrative Instructions taken from the front page of the
pamphlet published under Rule 48 ("bibliographic data") and the matters
referred to in paragraph (a)(ii) to (v);
(ii) as a Gazette in electronic form, which shall contain the
bibliographic data, the drawing (if any) appearing on the said front
page, and the abstract.
86.2 Languages; Access to the Gazette
(a) The Gazette in paper form shall be published in a bilingual (English
and French) edition. It shall also be published in editions in any other
language, provided the cost of publication is assured through sales or
subventions.
(b) [No change]
(c) The Gazette in electronic form referred to in Rule 86.1(b)(ii) shall
be made accessible, in English and French at the same time, by any
electronic ways and means specified in the Administrative Instructions.
The translations shall be ensured by the International Bureau in English
and French. TheInternational Bureau shall ensure that the making
accessible of the Gazette in electronic form shall be effected on, or as
soon as possible after, the date of publication of the pamphlet
containing the international application.
86.3 to 86.6 [No change]
Rule 89bis[3]
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
theInternational 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
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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 Transmittal Between Offices
Where the Treaty, these Regulations or the Administrative Instructions
provide for documents, notifications, communications or correspondence
to be transmitted by one national Office or intergovernmental
organization to another, such transmittal may, where so agreed by both
the sender and the receiver, be effected in electronic form or by
electronic means.
Rule 89ter[4]
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 91
Obvious Errors in Documents
91.1 Rectification
(a) to (c) [No change]
(d) Rectification may be made on the request of the applicant. The
authority having discovered what appears to be an obvious error may
invite the applicant to present a request for rectification as provided
in paragraphs (e) to (g-quater). Rule 26.4 shall apply mutatis mutandis
to the manner in which rectifications shall be requested.
(e) to (g-quater) [No change]
Rule 92
Correspondence
92.1 [No change]
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 Rule23.1(b) or furnished under
Rule 55.2, the language of such translation shall be used.
(b) [No change]
(c) [Remains deleted]
(d) and (e) [No change]
92.3 [No change]
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) to (h) [No change]
Rule 93
Keeping of Records and Files
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93.1 to 93.3 [No change]
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 94[5]
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, furnish, subject to the reimbursement of the
cost of the service, copies of any document contained in its file.
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 internationalapplication,
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.
SCHEDULE OF FEES
as in force from January 1 to June 30, 1998[6]
Fees Amounts
1. Basic Fee: (Rule 15.2(a))
(a) if the international
application contains not
more than 30 sheets 650[7] Swiss francs
(b) if the international
application contains
more than 30 sheets 650[7] Swiss francs plus
15 Swiss francs for
each sheet in excess of
30 sheets
2. Designation Fee:
(Rule15.2(a))
(a) for designations made
under Rule 4.9(a) 150[7] Swiss francs per
designation, provided
that any designation
made under Rule 4.9(a)
in excess of 11 shall not
require the payment of
a designation fee
(b) for designations made
under Rule 4.9(b) and
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confirmed under Rule 4.9(c) 150[7] Swiss francs per
designation
3.[6]Confirmation Fee:
(Rule 15.5(a)) 50% of the sum of the
designation fees payable
under item 2(b)
4[6]Handling Fee:(Rule 57.2(a)) 233 Swiss francs
All fees are reduced by 75% for international applications filed by any
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 and1997); if there are
several applicants, each must satisfy those criteria.
SCHEDULE OF FEES
as in force from July 1, 1998[8]
Fees Amounts
1. Basic Fee: (Rule
15.2(a))
(a) if the international
application contains not
more than 30 sheets 650[9] Swiss francs
(b) if the international
application contains
more than 30 sheets 650[9] Swiss francs plus
15 Swiss francs for
each sheet in excess of
30 sheets
2. Designation Fee:
(Rule15.2(a))
(a) for designations made
under Rule 4.9(a) 50[9] Swiss francs
per designation, provided
that any designation
made under Rule 4.9(a)
in excess of 11 shall not
require the payment of
a designation fee
(b) for designations made
under Rule 4.9(b) and
confirmed under Rule 4.9(c)[10] 150[9] Swiss francs per
designation
3.Handling Fee: (Rule 57.2(a)) 233 Swiss francs
All fees are reduced by 75% for international applications filed by any
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); if there are
several applicants, each must satisfy those criteria.
1. The amendments will enter into force on July 1, 1998, except where
otherwise indicated.
2. The amendments of Rule 86 will enter into force on January 1, 1998,
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on the understanding that, for practical reasons, it may not be possible
for the new formats of the Gazette to be implemented from that date, in
which case the International Bureau will continue to publish the Gazette
in the present format for a short period after January 1, 1998, and the
new formats will be introduced as soon as possible after that date.
3. Rules 89bis and 89ter, to be inserted in Part F (Rules Concerning
Several Chapters of the Treaty) before Rule 90, will enter into force at
the same time as the modifications of the Administrative Instructions
implementing those Rules, the effective date to be included in the
promulgation of those modifications by the Director General.
4. Rules 89bis and 89ter, to be inserted in Part F (Rules Concerning
Several Chapters of the Treaty) before Rule 90, will enter into force at
the same time as the modifications of the Administrative Instructions
implementing those Rules, the effective date to be included in the
promulgation of those modifications by the Director General.
5. Rule 94 as amended will apply only in respect of international
applications filed on or after July 1,1998; present Rule 94 will
continue to apply after July 1, 1998, in respect of international
applications filed before that date.
6. The Schedule of Fees appearing on this page will enter into force on
January 1, 1998; it will be further amended with effect from July 1,
1998, by deleting item 3 and renumbering item 4 as item 3 (see the
following page).
7. The new amounts of the basic fee and the designation fee will apply
only to international applications filed on or after January 1, 1998.
8. The Schedule of Fees appearing on this page will enter into force on
July 1, 1998.
9. The new amounts of the basic fee and the designation fee will apply
only to international applications filed on or after January 1, 1998.
10. See also Rule 15.5(a) for the confirmation fee, which is also
payable.
BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
[1210 OG 29]