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1991 No. 71 PATENTS REGULATIONS - SCHEDULE 2
SCHEDULE 2 Subregulation 1.4 (2)
PATENT COOPERATION TREATY
TABLE OF PROVISIONS Preamble Introductory Provisions
Article 1: Establishment of a Union
Article 2: Definitions Chapter I: International Applications and International
Search
Article 3: The International Application
Article 4: The Request
Article 5: The Description
Article 6: The Claims
Article 7: The Drawings
Article 8: Claiming Priority
Article 9: The Applicant
Article 10: The Receiving Office
Article 11: Filing Date and Effects of the International Application
Article 12: Transmittal of the International Application to the
International Bureau and the International Searching Authority
Article 13: Availability of Copy of the International Application to
Designated Offices
Article 14: Certain Defects in the International Application
Article 15: The International Search
Article 16: The International Searching Authority
Article 17: Procedure before the International Searching Authority
Article 18: The International Search Report
Article 19: Amendment of the Claims before the International Bureau
Article 20: Communication to Designated Offices
Article 21: International Publication
Article 22: Copy, Translation, and Fee, to Designated Offices
Article 23: Delaying of National Procedure
Article 24: Possible Loss of Effect in Designated States
Article 25: Review by Designated Offices
Article 26: Opportunity to Correct before Designated Offices
Article 27: National Requirements
Article 28: Amendment of the Claims, the Description, and the Drawings, before
Designated Offices
Article 29: Effects of the International Publication
Article 30: Confidential Nature of the International Application Chapter II:
International Preliminary Examination
Article 31: Demand for International Preliminary Examination
Article 32: The International Preliminary Examining Authority
Article 33: The International Preliminary Examination
Article 34: Procedure before the International Preliminary Examining Authority
Article 35: The International Preliminary Examination Report
Article 36: Transmittal, Translation, and Communication, of the International
Preliminary Examination Report
Article 37: Withdrawal of Demand or Election
Article 38: Confidential Nature of the International Preliminary Examination
Article 39: Copy, Translation, and Fee, to Elected Offices
Article 40: Delaying of National Examination and Other Processing
Article 41: Amendment of the Claims, the Description, and the Drawings, before
Elected Offices
Article 42: Results of National Examination in Elected Offices Chapter III:
Common Provisions
Article 43: Seeking Certain Kinds of Protection
Article 44: Seeking Two Kinds of Protection
Article 45: Regional Patent Treaties
Article 46: Incorrect Translation of the International Application
Article 47: Time Limits
Article 48: Delay in Meeting Certain Time Limits
Article 49: Right to Practice before International Authorities Chapter IV:
Technical Services
Article 50: Patent Information Services
Article 51: Technical Assistance
Article 52: Relations with Other Provisions of the Treaty Chapter V:
Administrative Provisions
Article 53: Assembly
Article 54: Executive Committee
Article 55: International Bureau
Article 56: Committee for Technical Cooperation
Article 57: Finances
Article 58: Regulations Chapter VI: Disputes
Article 59: Disputes Chapter VII: Revision and Amendment
Article 60: Revision of the Treaty
Article 61: Amendment of Certain Provisions of the Treaty Chapter VIII: Final
Provisions
Article 62: Becoming Party to the Treaty
Article 63: Entry into Force of the Treaty
Article 64: Reservations
Article 65: Gradual Application
Article 66: Denunciation
Article 67: Signature and Languages
Article 68: Depositary Functions
Article 69: Notifications
REGULATIONS UNDER THE PATENT COOPERATION TREATY
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"
2.3 "Signature" Part B: Rules Concerning Chapter I of the Treaty
Rule 3 The Request (Form)
3.1 Printed Form
3.2 Availability of Forms
3.3 Check List
3.4 Particulars
Rule 4 The Request (Contents)
4.1 Mandatory and Optional Contents; Signature
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 Representation of Several Applicants Not Having a Common Agent
4.9 Designation of States
4.10 Priority Claim
4.11 Reference to Earlier Search
4.12 Choice of Certain Kinds of Protection
4.13 Identification of Parent Application or Parent Grant
4.14 Continuation or Continuation-in-Part
4.15 Signature
4.16 Transliteration or Translation of Certain Words
4.17 Additional Matter
Rule 5 The Description
5.1 Manner of the Description
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
10.2 Consistency
Rule 11 Physical Requirements of the International Application
11.1 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
12.1 Admitted Languages
12.2 Language of Changes in the International Application
Rule 13 Unity of Invention
13.1 Requirement
13.2 Claims of Different Categories
13.3 Claims of One and the Same Category
13.4 Dependent Claims
13.5 Utility Models
Rule 13bis Microbiological Inventions
13bis.1 Definitions
13bis.2 References (General)
13bis.3 References: Contents; Failure to Include Reference or Indication
13bis.4 References: Time of Furnishing Indications
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
13bis.6 Furnishing of Samples
13bis.7 National Requirements: Notification and Publication
Rule 14 The Transmittal Fee
14.1 The Transmittal Fee
Rule 15 The International Fee
15.1 Basic Fee and Designation Fee
15.2 Amounts
15.3 Mode of Payment
15.4 Time of Payment
15.5 (Deleted)
15.6 Refund
Rule 16 The Search Fee
16.1 Right to Ask for a Fee
16.2 Refund
16.3 Partial Refund
Rule 16bis Advancing Fees by the International Bureau
16bis.1 Guarantee by the International Bureau
16bis.2 Obligations of the Applicant, Etc.
Rule 17 The Priority Document
17.1 Obligation to Submit Copy of Earlier National Application
17.2 Availability of Copies
Rule 18 The Applicant
18.1 Residence
18.2 Nationality
18.3 Several Applicants: Same for All Designated States
18.4 Several Applicants: Different for Different Designated States
Rule 19 The Competent Receiving Office
19.1 Where to File
19.2 Several Applicants
19.3 Publication of Fact of Delegation of Duties of Receiving Office
Rule 20 Receipt of the International Application
20.1 Date and Number
20.2 Receipt on Different Days
20.3 Corrected International Applications
20.3bis Manner of Carrying Out Corrections
20.4 Determination under Article 11(1)
20.5 Positive Determination
20.6 Invitation to Correct
20.7 Negative Determination
20.8 Error by the Receiving Office
20.9 Certified Copy for the Applicant
Rule 21 Preparation of Copies
21.1 Responsibility of the Receiving Office
Rule 22 Transmittal of the Record Copy
22.1 Procedure
22.2 (Deleted)
22.3 Time Limit under Article 12(3)
Rule 23 Transmittal of the Search Copy
23.1 Procedure
Rule 24 Receipt of the Record Copy by the International Bureau
24.1 (Deleted)
24.2 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 Time Limit for Check
26.2 Time Limit for Correction
26.3 Checking of Physical Requirements under Article 14(1)(a)
26.3bis Invitation to Correct Defects under Article 14(1)(b)
26.4 Procedure
26.5 Decision of the Receiving Office
26.6 Missing Drawings
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 or Designations Considered Withdrawn under
Article 14(1), (3) or (4)
29.1 Findings by Receiving Office
29.2 (Deleted)
29.3 Calling Certain Facts to the Attention of the Receiving Office
29.4 Notification of Intent to Make Declaration under Article 14(4)
Rule 30 Time Limit under Article 14(4)
30.1 Time Limit
Rule 31 Copies Required under Article 13
31.1 Request for Copies
31.2 Preparation of Copies
Rule 32 Withdrawal of the International Application or of Designations
32.1 Withdrawals
Rule 32bis Withdrawal of the Priority Claim
32bis.1 Withdrawals
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
33.3 Orientation of the International Search
Rule 34 Minimum Documentation
34.1 Definition
Rule 35 The Competent International Searching Autority
35.1 When Only One International Searching Authority Is Competent
35.2 When Several International Searching Authorities Are Competent
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 Abstract
38.1 Lack of Abstract
38.2 Establishment 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
40.2 Additional Fees
40.3 Time Limit
Rule 41 Earlier Search Other Than International Search
41.1 Obligation to Use Results; Refund of Fee
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
43.7 Remarks Concerning Unity of Invention
43.8 Signature
43.9 No Other Matter
43.10 Form
Rule 44 Transmittal of the International Search Report, Etc.
44.1 Copies of Report or Declaration
44.2 Title or Abstract
44.3 Copies of Cited Documents
Rule 45 Translation of the International Search Report
45.1 Languages
Rule 46 Amendment of Claims before the International Bureau
46.1 Time Limit
46.2 (Deleted)
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
Rule 48 International Publication
48.1 Form
48.2 Contents
48.3 Languages
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
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 Notice
51.3 Time Limit for Paying National Fee and Furnishing Translation
Rule 51bis Certain National Requirements Allowed under Article 27 (1), (2),
(6) and (7)
51bis.1 Certain National Requirements Allowed
51bis.2 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 The Agent
53.6 Identification of the International Application
53.7 Election of States
53.8 Signature
Rule 54 The Applicant Entitled to Make a Demand
54.1 Residence and Nationality
54.2 Several Applicants: Same for All Elected States
54.3 Several Applicants: Different for Different Elected States
54.4 Applicant Not Entitled to Make a Demand or an Election
Rule 55 Languages (International Preliminary Examination)
55.1 The Demand
Rule 56 Later Elections
56.1 Elections Submitted Later Than the Demand
56.2 Identification of the International Application
56.3 Identification of the Demand
56.4 Form of Later Elections
56.5 Language of Later Elections
Rule 57 The Handling Fee
57.1 Requirement to Pay
57.2 Amounts of the Handling Fee and the Supplement to the Handling Fee
57.3 Time and Mode of Payment
57.4 Failure to Pay (Handling Fee)
57.5 Failure to Pay (Supplement to the Handling Fee)
57.6 Refund
Rule 58 The Preliminary Examination Fee
58.1 Right to Ask for a Fee
58.2 Failure to Pay
58.3 Refund
Rule 59 The Competent International Preliminary Examining Authority
59.1 Demands under Article 31 (2) (a)
59.2 Demands under Article 31 (2) (b)
Rule 60 Certain Defects in the Demand or Elections
60.1 Defects in the Demand
60.2 Defects in Later Elections
Rule 61 Notification of the Demand and Elections
61.1 Notification to the International Bureau, the Applicant, and the
International Preliminary Examining Authority
61.2 Notifications to the Elected Offices
61.3 Information for the Applicant
Rule 62 Copy for the International Preliminary Examining Authority
62.1 (Deleted)
62.2 Amendments
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
66.2 First 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
66.5 Amendment
66.6 Informal Communications with the Applicant
66.7 Priority Document
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 Time Limit for International Preliminary Examination
69.1 Time Limit for International Preliminary Examination
Rule 70 The 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
70.13 Remarks Concerning Unity of Invention
70.14 Signature
70.15 Form
70.16 Annexes of 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
72.1 Languages
72.2 Copies of Translations for the Applicant
72.3 Observations on the Translation
Rule 73 Communication of the International Preliminary Examination Report
73.1 Preparation of Copies
73.2 Time Limit for Communication
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
Rule 75 Withdrawal of the Demand, or of Elections
75.1 Withdrawals
75.2 (Deleted)
75.3 (Deleted)
75.4 Faculty under Article 37 (4) (b)
Rule 76 Copy, Translation and Fee under Article 39 (1); Translation of
Priority Document
76.1 (Deleted)
76.2 (Deleted)
76.3 (Deleted)
76.4 Time Limit for Translation of Priority Document
76.5 Application of Rules 22.1 (g), 49 and 51bis
Rule 77 Faculty under Article 39 (1) (b)
77.1 Exercise of Faculty
Rule 78 Amendment of the Claims, the Description, and the Drawings, before
Elected Offices
78.1 Time Limit Where Election Is Effected prior to Expiration of 19 Months
from Priority Date
78.2 Time Limit Where Election Is Effected after Expiration of 19 Months from
Priority Date
78.3 Utility Models Part D: Rules Concerning Chapter III of the Treaty
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
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 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)
82bis.2 Reinstatement of Rights and Other Provisions to Which Article 48 (2)
Applies
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
Rule 83 Right to Practice before International Authorities
83.1 Proof of Right
83.2 Information Part E: Rules Concerning Chapter V of the Treaty
Rule 84 Expenses of Delegations
84.1 Expenses Borne by Governments
Rule 85 Absence of Quorum in the Assembly
85.1 Voting by Correspondence
Rule 86 The Gazette
86.1 Contents
86.2 Languages
86.3 Frequency
86.4 Sale
86.5 Title
86.6 Further Details
Rule 87 Copies of Publications
87.1 International Searching and Preliminary Examining Authorities
87.2 National Offices
Rule 88 Amendment of the Regulations
88.1 Requirement of Unanimity
88.2 (Deleted)
88.3 Requirement of Absence of Opposition by Certain States
88.4 Procedure
Rule 89 Administrative Instructions
89.1 Scope
89.2 Source
89.3 Publication and Entry into Force Part F: Rules Concerning Several
Chapters of the Treaty
Rule 90 Representation
90.1 Definitions
90.2 Effects
90.3 Appointment
90.4 Revocation
Rule 91 Obvious Errors in Documents
91.1 Rectification
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, Etc.
Rule 92bis Recording of Changes in Certain Indications in the Request or the
Demand
92bis.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 94 Furnishing of Copies by the International Bureau and the International
Preliminary Examining Authority
94.1 Obligation To Furnish
Rule 95 Availability of Translations
95.1 Furnishing of Copies of Translations
Rule 96 The Schedule of Fees
96.1 Schedule of Fees Annexed to Regulations Schedule of Fees
PATENT COOPERATION TREATY
Done at Washington June 19, 1970
amended on October 2, 1979 and modified on
February 3, 1984
The Contracting States,
Desiring to make a contribution to the progress of science and technology,
Desiring to perfect the legal protection of inventions,
Desiring to simplify and render more economical the obtaining of protection
for inventions where protection is sought in several countries,
Desiring to facilitate and accelerate access by the public to the technical
information contained in documents describing new inventions,
Desiring to foster and accelerate the economic development of developing
countries through the adoption of measures designed to increase the efficiency
of their legal systems, whether national or regional, instituted for the
protection of inventions by providing easily accessible information on the
availability of technological solutions applicable to their special needs and
by facilitating access to the ever expanding volume of modern technology,
Convinced that cooperation among nations will greatly facilitate the
attainment of these aims,
Have concluded the present Treaty.
Introductory Provisions
Article 1
Establishment of a Union
(1) The States party to this Treaty (hereinafter called "the Contracting
States") constitute a Union for cooperation in the filing, searching, and
examination, of applications for the protection of inventions, and for
rendering special technical services. The Union shall be known as the
International Patent Cooperation Union.
(2) No provision of this treaty shall be interpreted as diminishing the rights
under the Paris Convention for the Protection of Industrial Property of any
national or resident of any country party to that Convention.
Article 2
Definitions
For the purposes of this Treaty and the Regulations and unless expressly
stated otherwise:
(i) "application" means an application for the protection of an invention;
references to an "application" shall be construed as references to
applications for patents for inventions, inventors' certificates,
utility certificates, utility models, patents or certificates of
addition, inventors' certificates of addition, and utility
certificates of addition;
(ii) references to a "patent" shall be construed as references to patents
for inventions, inventors' certificates, utility certificates, utility
models, patents or certificates of addition, inventors' certificates
of addition, and utility certificates of addition;
(iii) "national patent" means a patent granted by a national authority;
(iv) "regional patent" means a patent granted by a national or an
intergovernmental authority having the power to grant patents
effective in more than one State;
(v) "regional application" means an application for a regional patent;
(vi) references to a "national application" shall be construed as
references to applications for national patents and regional patents,
other than applications filed under this Treaty;
(vii) "international application" means an application filed under this
Treaty;
(viii) references to an "application" shall be construed as references to
international applications and national applications;
(ix) references to a "patent" shall be construed as references to national
patents and regional patents;
(x) references to "national law" shall be construed as references to the
national law of a Contracting State or, where a regional application
or a regional patent is involved, to the treaty providing for the
filing of regional applications or the granting of regional patents;
(xi) "priority date," for the purposes of computing time limits, means:
(a) where the international application contains a priority claim under
Article 8, the filing date of the application whose priority is so
claimed;
(b) where the international application contains several priority claims
under Article 8, the filing date of the earliest application whose
priority is so claimed;
(c) where the international application does not contain any priority
claim under Article 8, the international filing date of such
application;
(xii) "national Office" means the government authority of a Contracting
State entrusted with the granting of patents; references to a
"national Office" shall be construed as referring also to any
intergovernmental authority which several States have entrusted with
the task of granting regional patents, provided that at least one of
those States is a Contracting State, and provided that the said States
have authorized that authority to assume the obligations and exercise
the powers which this Treaty and the Regulations provide for in
respect of national Offices;
(xiii) "designated Office" means the national Office of or acting for the
State designated by the applicant under Chapter I of this Treaty;
(xiv) "elected Office" means the national Office of or acting for the State
elected by the applicant under Chapter II of this Treaty;
(xv) "receiving Office" means the national Office or the intergovernmental
organization with which the international application has been filed;
(xvi) "Union" means the International Patent Cooperation Union;
(xvii) "Assembly" means the Assembly of the Union;
(xviii) "Organization" means the World Intellectual Property Organization;
(xix) "International Bureau" means the International Bureau of the
Organization and, as long as it subsists, the United
International Bureaux for the Protection of Intellectual Property
(BIRPI);
(xx) "Director General" means the Director General of the Organization and,
as long as BIRPI subsists, the Director of BIRPI.
CHAPTER I
International Application and International Search
Article 3
The International Application
(1) Applications for the protection of inventions in any of the Contracting
States may be filed as international applications under this Treaty.
(2) An international application shall contain, as specified in this Treaty
and the Regulations, a request, a description, one or more claims, one or more
drawings (where required), and an abstract.
(3) The abstract merely serves the purpose of technical information and cannot
be taken into account for any other purpose, particularly not for the purpose
of interpreting the scope of the protection sought.
(4) The international application shall:
(i) be in a prescribed language;
(ii) comply with the prescribed physical requirements;
(iii) comply with the prescribed requirement of unity of invention;
(iv) be subject to the payment of the prescribed fees.
Article 4
The Request
(1) The request shall contain:
(i) a petition to the effect that the international application be
processed according to this Treaty;
(ii) the designation of the Contracting State or States in which protection
for the invention is desired on the basis of the international
application ("designated States"); if for any designated State a
regional patent is available and the applicant wishes to obtain a
regional patent rather than a national patent, the request shall so
indicate; if, under a treaty concerning a regional patent, the
applicant cannot limit his application to certain of the States party
to that treaty, designation of one of those States and the indication
of the wish to obtain the regional patent shall be treated as
designation of all the States party to that treaty; if, under the
national law of the designated State, the designation of that State
has the effect of an application for a regional patent, the
designation of the said State shall be treated as an indication of the
wish to obtain the regional patent;
(iii) the name of and other prescribed data concerning the applicant and
the agent (if any);
(iv) the title of the invention;
(v) the name of and other prescribed data concerning the inventor where
the national law of at least one of the designated States requires
that these indications be furnished at the time of filing a national
application. Otherwise, the said indications may be furnished either
in the request or in separate notices addressed to each designated
Office whose national law requires the furnishing of the said
indications but allows that they be furnished at a time later than
that of the filing of a national application.
(2) Every designation shall be subject to the payment of the prescribed fee
within the prescribed time limit.
(3) Unless the applicant asks for any of the other kinds of protection
referred to in Article 43, designation shall mean that the desired protection
consists of the grant of a patent by or for the designated State. For the
purposes of this paragraph, Article 2 (ii) shall not apply.
(4) Failure to indicate in the request the name and other prescribed data
concerning the inventor shall have no consequence in any designated State
whose national law requires the furnishing of the said indications but allows
that they be furnished at a time later than that of the filing of a national
application. Failure to furnish the said indications in a separate notice
shall have no consequence in any designated State whose national law does not
require the furnishing of the said indications.
Article 5
The Description
The description shall disclose the invention in a manner sufficiently clear
and complete for the invention to be carried out by a person skilled in the
art.
Article 6
The Claims
The claim or claims shall define the matter for which protection is sought.
Claims shall be clear and concise. They shall be fully supported by the
description.
Article 7
The Drawings
(1) Subject to the provisions of paragraph (2) (ii), drawings shall be
required when they are necessary for the understanding of the invention.
(2) Where, without being necessary for the understanding of the invention, the
nature of the invention admits of illustration by drawings:
(i) the applicant may include such drawings in the international
application when filed,
(ii) any designated Office may require that the applicant file such
drawings with it within the prescribed time limit.
Article 8
Claiming Priority
(1) The international application may contain a declaration, as prescribed in
the Regulations, claiming the priority of one or more earlier applications
filed in or for any country party to the Paris Convention for the Protection
of Industrial Property.
(2) (a) Subject to the provisions of subparagraph (b), the conditions for, and
the effect of, any priority claim declared under paragraph (1) shall be as
provided in Article 4 of the Stockholm Act of the Paris Convention for the
Protection of Industrial Property.
(b) The international application for which the priority of one or more
earlier applications filed in or for a Contracting State is claimed
may contain the designation of that State. Where, in the international
application, the priority of one or more national applications filed
in or for a designated State is claimed, or where the priority of an
international application having designated only one State is claimed,
the conditions for, and the effect of, the priority claim in that
State shall be governed by the national law of that State.
Article 9
The Applicant
(1) Any resident or national of a Contracting State may file an international
application.
(2) The Assembly may decide to allow the residents and the nationals of any
country party to the Paris Convention for the Protection of Industrial
Property which is not party to this Treaty to file international applications.
(3) The concepts of residence and nationality, and the application of those
concepts in cases where there are several applicants or where the applicants
are not the same for all the designated States, are defined in the
Regulations.
Article 10
The Receiving Office
The international application shall be filed with the prescribed receiving
Office, which will check and process it as provided in this Treaty and the
Regulations. Article 11 Filing Date and Effects of the International
Application
(1) The receiving Office shall accord as the international filing date the
date of receipt of the international application, provided that that Office
has found that, at the time of receipt:
(i) the applicant does not obviously lack, for reasons of residence
or nationality, the right to file an international application
with the receiving Office,
(ii) the international application is in the prescribed language,
(iii) the international application contains at least the following
elements:
(a) an indication that it is intended as an international application,
(b) the designation of at least one Contracting State,
(c) the name of the applicant, as prescribed,
(d) a part which on the face of it appears to be a description,
(e) a part which on the face of it appears to be a claim or claims.
(2) (a) If the receiving Office finds that the international application did
not, at the time of receipt, fulfill the requirements listed in paragraph (1),
it shall, as provided in the Regulations, invite the applicant to file the
required correction.
(b) If the applicant complies with the invitation, as provided in the
Regulations, the receiving Office shall accord as the international
filing date the date of receipt of the required correction.
(3) Subject to Article 64 (4), any international application fulfilling the
requirements listed in items (i) to (iii) of paragraph (1) and accorded an
international filing date shall have the effect of a regular national
application in each designated State as of the international filing date,
which date shall be considered to be the actual filing date in each designated
State.
(4) Any international application fulfilling the requirements listed in items
(i) to (iii) of paragraph (1) shall be equivalent to a regular national filing
within the meaning of the Paris Convention for the Protection of Industrial
Property.
Article 12 Transmittal of the International Application to the
International Bureau and the International Searching Authority
(1) One copy of the international application shall be kept by the receiving
Office ("home copy"), one copy ("record copy") shall be transmitted to the
International Bureau, and another copy ("search copy") shall be transmitted to
the competent International Searching Authority referred to in Article 16, as
provided in the Regulations.
(2) The record copy shall be considered the true copy of the international
application.
(3) The international application shall be considered withdrawn if the record
copy has not been received by the International Bureau within the prescribed
time limit.
Article 13 Availability of Copy of the International Application to Designated
Offices
(1) Any designated Office may ask the International Bureau to transmit to it a
copy of the international application prior to the communication provided for
in Article 20, and the International Bureau shall transmit such copy to the
designated Office as soon as possible after the expiration of one year from
the priority date.
(2) (a) The applicant may, at any time, transmit a copy of his international
application to any designated Office.
(b) The applicant may, at any time, ask the International Bureau to
transmit a copy of his international application to any designated
Office, and the International Bureau shall transmit such copy to the
designated Office as soon as possible.
(c) Any national Office may notify the International Bureau that it does
not wish to receive copies as provided for in subparagraph (b), in
which case that subparagraph shall not be applicable in respect of
that Office.
Article 14
Certain Defects in the International Application
(1) (a) The receiving Office shall check whether the international application
contains any of the following defects, that is to say:
(i) it is not signed as provided in the Regulations;
(ii) it does not contain the prescribed indications concerning the
applicant;
(iii) it does not contain a title;
(iv) it does not contain an abstract;
(v) it does not comply to the extent provided in the Regulations
with the prescribed physical requirements.
(b) If the receiving Office finds any of the said defects, it shall invite
the applicant to correct the international application within the
prescribed time limit, failing which that application shall be
considered withdrawn and the receiving Office shall so declare.
(2) If the international application refers to drawings which, in fact, are
not included in that application, the receiving Office shall notify the
applicant accordingly and he may furnish them within the prescribed time limit
and, if he does, the international filing date shall be the date on which the
drawings are received by the receiving Office. Otherwise, any reference to the
said drawings shall be considered non-existent.
(3) (a) If the receiving Office finds that, within the prescribed time limits,
the fees prescribed under Article 3 (4) (iv) have not been paid, or no fee
prescribed under Article 4 (2) has been paid in respect of any of the
designated States, the international application shall be considered withdrawn
and the receiving Office shall so declare.
(b) If the receiving Office finds that the fee prescribed under Article 4
(2) has been paid in respect of one or more (but less than all)
designated States within the prescribed time limit, the designation of
those States in respect of which it has not been paid within the
prescribed time limit shall be considered withdrawn and the receiving
Office shall so declare.
(4) If, after having accorded an international filing date to the
international application, the receiving Office finds, within the prescribed
time limit, that any of the requirements listed in items (i) to (iii) of
Article 11 (1) was not complied with at that date, the said application shall
be considered withdrawn and the receiving Office shall so declare.
Article 15
The International Search
(1) Each international application shall be the subject of international
search.
(2) The objective of the international search is to discover relevant prior
art.
(3) International search shall be made on the basis of the claims, with due
regard to the description and the drawings (if any).
(4) The International Searching Authority referred to in Article 16 shall
endeavour to discover as much of the relevant prior art as its facilities
permit, and shall, in any case, consult the documentation specified in the
Regulations.
(5) (a) If the national law of the Contracting State so permits, the applicant
who files a national application with the national Office of or acting for
such State may, subject to the conditions provided for in such law, request
that a search similar to an international search ("international-type search")
be carried out on such application.
(b) If the national law of the Contracting State so permits, the national
Office of or acting for such State may subject any national
application filed with it to an international-type search.
(c) The international-type search shall be carried out by the
International Searching Authority referred to in Article 16 which
would be competent for an international search if the national
application were an international application and were filed with the
Office referred to in subparagraphs (a) and (b). If the national
application is in a language which the International Searching
Authority considers it is not equipped to handle, the
international-type search shall be carried out on a translation
prepared by the applicant in a language prescribed for international
applications and which the International Searching Authority has
undertaken to accept for international applications. The national
application and the translation, when required, shall be presented in
the form prescribed for international applications.
Article 16
The International Searching Authority
(1) International search shall be carried out by an International Searching
Authority, which may be either a national Office or an intergovernmental
organization, such as the International Patent Institute, whose tasks include
the establishing of documentary search reports on prior art with respect to
inventions which are the subject of applications.
(2) If, pending the establishment of a single International Searching
Authority, there are several International Searching Authorities, each
receiving Office shall, in accordance with the provisions of the applicable
agreement referred to in paragraph (3) (b), specify the International
Searching Authority or Authorities competent for the searching of
international applications filed with such Office.
(3) (a) International Searching Authorities shall be appointed by the
Assembly. Any national Office and any intergovernmental organization
satisfying the requirements referred to in subparagraph (c) may be appointed
as International Searching Authority.
(b) Appointment shall be conditional on the consent of the national Office
or intergovernmental organization to be appointed and the conclusion
of an agreement, subject to approval by the Assembly, between such
Office or organization and the International Bureau. The agreement
shall specify the rights and obligations of the parties, in
particular, the formal undertaking by the said Office or organization
to apply and observe all the common rules of international search.
(c) The Regulations prescribe the minimum requirements, particularly as to
manpower and documentation, which any Office or organization must
satisfy before it can be appointed and must continue to satisfy while
it remains appointed.
(d) Appointment shall be for a fixed period of time and may be extended
for further periods.
(e) Before the Assembly makes a decision on the appointment of any
national Office or intergovernmental organization, or on the extension
of its appointment, or before it allows any such appointment to lapse,
the Assembly shall hear the interested Office or organization and seek
the advice of the Committee for Technical Cooperation referred to in
Article 56 once that Committee has been established.
Article 17
Procedure Before the International Searching Authority
(1) Procedure before the International Searching Authority shall be governed
by the provisions of this Treaty, the Regulations, and the agreement which the
International Bureau shall conclude, subject to this Treaty and the
Regulations, with the said Authority.
(2) (a) If the International Searching Authority considers
(i) that the international application relates to a subject matter
which the International Searching Authority is not required,
under the Regulations, to search, and in the particular case
decides not to search, or
(ii) that the description, the claims, or the drawings, fail to
comply with the prescribed requirements to such an extent that
a meaningful search could not be carried out, the said
Authority shall so declare and shall notify the applicant and
the International Bureau that no international search report
will be established.
(b) If any of the situations referred to in subparagraph (a) is found to
exist in connection with certain claims only, the international search
report shall so indicate in respect of such claims, whereas, for the
other claims, the said report shall be established as provided in
Article 18.
(3) (a) If the International Searching Authority considers that the
international application does not comply with the requirement of unity of
invention as set forth in the Regulations, it shall invite the applicant to
pay additional fees. The International Searching Authority shall establish the
international search report on those parts of the international application
which relate to the invention first mentioned in the claims ("main invention")
and, provided the required additional fees have been paid within the
prescribed time limit, on those parts of the international application which
relate to inventions in respect of which the said fees were paid.
(b) The national law of any designated State may provide that, where the
national Office of that State finds the invitation, referred to in
subparagraph (a), of the International Searching Authority justified
and where the applicant has not paid all additional fees, those parts
of the international application which consequently have not been
searched shall, as far as effects in that State are concerned, be
considered withdrawn unless a special fee is paid by the applicant to
the national Office of that State.
Article 18
The International Search Report
(1) The international search report shall be established within the prescribed
time limit and in the prescribed form.
(2) The international search report shall, as soon as it has been established,
be transmitted by the International Searching Authority to the applicant and
the International Bureau.
(3) The international search report or the declaration referred to in Article
17 (2) (a) shall be translated as provided in the Regulations. The
translations shall be prepared by or under the responsibility of the
International Bureau.
Article 19
Amendment of the Claims Before the International Bureau
(1) The applicant shall, after having received the international search
report, be entitled to one opportunity to amend the claims of the
international application by filing amendments with the International Bureau
within the prescribed time limit. He may, at the same time, file a brief
statement, as provided in the Regulations, explaining the amendments and
indicating any impact that such amendments might have on the description and
the drawings.
(2) The amendments shall not go beyond the disclosure in the international
application as filed.
(3) If the national law of any designated State permits amendments to go
beyond the said disclosure, failure to comply with paragraph (2) shall have no
consequence in that State.
Article 20
Communication to Designated Offices
(1) (a) The international application, together with the international search
report (including any indication referred to in Article 17 (2) (b)) or the
declaration referred to in Article 17 (2) (a), shall be communicated to each
designated Office, as provided in the Regulations, unless the designated
Office waives such requirements in its entirety or in part.
(b) The communication shall include the translation (as prescribed) of the
said report or declaration.
(2) If the claims have been amended by virtue of Article 19 (1), the
communication shall either contain the full text of the claims both as filed
and as amended or shall contain the full text of the claims as filed and
specify the amendments, and shall include the statement, if any, referred to
in Article 19 (1).
(3) At the request of the designated Office or the applicant, the
International Searching Authority shall send to the said Office or the
applicant, respectively, copies of the documents cited in the international
search report, as provided in the Regulations.
Article 21
International Publication
(1) The International Bureau shall publish international applications.
(2) (a) Subject to the exceptions provided for in subparagraph (b) and in
Article 64 (3), the international publication of the international application
shall be effected promptly after the expiration of 18 months from the priority
date of that application.
(b) The applicant may ask the International Bureau to publish his
international application any time before the expiration of the time
limit referred to in subparagraph (a). The International Bureau shall
proceed accordingly, as provided in the Regulations.
(3) The international search report or the declaration referred to in Article
17 (2) (a) shall be published as prescribed in the Regulations.
(4) The language and form of the international publication and other details
are governed by the Regulations.
(5) There shall be no international publication if the international
application is withdrawn or is considered withdrawn before the technical
preparations for publication have been completed.
(6) If the international application contains expressions or drawings which,
in the opinion of the International Bureau, are contrary to morality or public
order, or if, in its opinion, the international application contains
disparaging statements as defined in the Regulations, it may omit such
expressions, drawings, and statements, from its publications, indicating the
place and number of words or drawings omitted, and furnishing, upon request,
individual copies of the passages omitted.
Article 22
Copy, Translation, and Fee, to Designated Offices
(1) The applicant shall furnish a copy of the international application
(unless the communication provided for in Article 20 has already taken place)
and a translation thereof (as prescribed), and pay the national fee (if any),
to each designated Office not later than at the expiration of20 months from
the priority date. Where the national law of the designated State requires the
indication of the name of and other prescribed data concerning the inventor
but allows that these indications be furnished at a time later than that of
the filing of a national application, the applicant shall, unless they were
contained in the request, furnish the said indications to the national Office
of or acting for that State not later than at the expiration of 20 months from
the priority date.
(2) Where the International Searching Authority makes a declaration, under
Article 17 (2) (a), that no international search report will be established,
the time limit for performing the acts referred to in paragraph (1) of this
Article shall be the same as that provided for in paragraph (1).
(3) Any national law may, for performing the acts referred to in paragraphs
(1) or (2), fix time limits which expire later than the time limit provided
for in those paragraphs.
Article 23
Delaying of National Procedure
(1) No designated Office shall process or examine the international
application prior to the expiration of the applicable time limit under Article
22.
(2) Notwithstanding the provisions of paragraph (1), any designated Office
may, on the express request of the applicant, process or examine the
international application at any time.
Article 24
Possible Loss of Effect in Designated States
(1) Subject, in case (ii) below, to the provisions of Article 25, the effect
of the international application provided for in Article 11 (3) shall cease in
any designated State with the same consequences as the withdrawal of any
national application in that State:
(i) if the applicant withdraws his international application or the
designation of that State;
(ii) if the international application is considered withdrawn by
virtue of Articles 12 (3), 14 (1) (b), 14 (3) (a), or 14 (4),
or if the designation of that State is considered withdrawn by
virtue of Article 14 (3) (b);
(iii) if the applicant fails to perform the acts referred to in
Article 22 within the applicable time limit.
(2) Notwithstanding the provisions of paragraph (1), any designated Office may
maintain the effect provided for in Article 11 (3) even where such effect is
not required to be maintained by virtue of Article 25 (2).
Article 25
Review By Designated Offices
(1) (a) Where the receiving Office has refused to accord an international
filing date or has declared that the international application is considered
withdrawn, or where the International Bureau has made a finding under Article
12 (3), the International Bureau shall promptly send, at the request of the
applicant, copies of any document in the file to any of the designated Offices
named by the applicant.
(b) Where the receiving Office has declared that the designation of any
given State is considered withdrawn, the International Bureau shall
promptly send, at the request of the applicant, copies of any document
in the file to the national Office of such State.
(c) The request under subparagraphs (a) or (b) shall be presented within
the prescribed time limit.
(2) (a) Subject to the provisions of subparagraph (b), each designated Office
shall, provided that the national fee (if any) has been paid and the
appropriate translation (as prescribed) has been furnished within the
prescribed time limit, decide whether the refusal, declaration, or finding,
referred to in paragraph (1) was justified under the provisions of this Treaty
and the Regulations, and, if it finds that the refusal or declaration was the
result of an error or omission on the part of the receiving Office or that the
finding was the result of an error or omission on the part of the
International Bureau, it shall, as far as effects in the State of the
designated Office are concerned, treat the international application as if
such error or omission had not occurred.
(b) Where the record copy has reached the International Bureau after the
expiration of the time limit prescribed under Article 12 (3) on
account of any error or omission on the part of the applicant, the
provisions of subparagraph (a) shall apply only under the
circumstances referred to in Article 48 (2).
Article 26
Opportunity to Correct Before Designated Offices
No designated Office shall reject an international application on the grounds
of non-compliance with the requirements of this Treaty and the Regulations
without first giving the applicant the opportunity to correct the said
application to the extent and according to the procedure provided by the
national law for the same or comparable situations in respect of national
applications.
Article 27
National Requirements
(1) No national law shall require compliance with requirements relating to the
form or contents of the international application different from or additional
to those which are provided for in this Treaty and the Regulations.
(2) The provisions of paragraph (1) neither affect the application of the
provisions of Article 7 (2) nor preclude any national law from requiring, once
the processing of the international application has started in the designated
Office, the furnishing:
(i) when the applicant is a legal entity, of the name of an officer
entitled to represent such legal entity,
(ii) of documents not part of the international application but
which constitute proof of allegations or statements made in
that application, including the confirmation of the
international application by the signature of the applicant
when that application, as filed, was signed by his
representative or agent.
(3) Where the applicant, for the purposes of any designated State, is not
qualified according to the national law of that State to file a national
application because he is not the inventor, the international application may
be rejected by the designated Office.
(4) Where the national law provides, in respect of the form or contents of
national applications, for requirements which, from the viewpoint of
applicants, are more favourable than the requirements provided for by this
Treaty and the Regulations in respect of international applications, the
national Office, the courts and any other competent organs of or acting for
the designated State may apply the former requirements, instead of the latter
requirements, to international applications, except where the applicant
insists that the requirements provided for by this Treaty and the Regulations
be applied to his international application.
(5) Nothing in this Treaty and the Regulations is intended to be construed as
prescribing anything that would limit the freedom of each Contracting State to
prescribe such substantive conditions of patentability as it desires. In
particular, any provision in this Treaty and the Regulations concerning the
definition of prior art is exclusively for the purposes of the international
procedure and, consequently, any Contracting State is free to apply, when
determining the patentability of an invention claimed in an international
application, the criteria of its national law in respect of prior art and
other conditions of patentability not constituting requirements as to the form
and contents of applications.
(6) The national law may require that the applicant furnish evidence in
respect of any substantive condition of patentability prescribed by such law.
(7) Any receiving Office or, once the processing of the international
application has started in the designated Office, that Office may apply the
national law as far as it relates to any requirement that the applicant be
represented by an agent having the right to represent applicants before the
said Office and/or that the applicant have an address in the designated State
for the purpose of receiving notifications.
(8) Nothing in this Treaty and the Regulations is intended to be construed as
limiting the freedom of any Contracting State to apply measures deemed
necessary for the preservation of its national security or to limit, for the
protection of the general economic interests of that State, the right of its
own residents or nationals to file international applications.
Article 28
Amendment of the Claims, the Description, and the
Drawings, Before Designated Offices
(1) The applicant shall be given the opportunity to amend the claims, the
description, and the drawings, before each designated Office within the
prescribed time limit. No designated Office shall grant a patent, or refuse
the grant of a patent, before such time limit has expired except with the
express consent of the applicant.
(2) The amendments shall not go beyond the disclosure in the international
application as filed unless the national law of the designated State permits
them to go beyond the said disclosure.
(3) The amendments shall be in accordance with the national law of the
designated State in all respects not provided for in this Treaty and the
Regulations.
(4) Where the designated Office requires a translation of the international
application, the amendments shall be in the language of the translation.
Article 29
Effects of the International Publication
(1) As far as the protection of any rights of the applicant in a designated
State is concerned, the effects, in that State, of the international
publication of an international application shall, subject to the provisions
of paragraphs (2) to (4), be the same as those which the national law of the
designated State provides for the compulsory national publication of
unexamined national applications as such.
(2) If the language in which the international publication has been effected
is different from the language in which publications under the national law
are effected in the designated State, the said national law may provide that
the effects provided for in paragraph (1) shall be applicable only from such
time as:
(i) a translation into the latter language has been published as
provided by the national law, or
(ii) a translation into the latter language has been made available
to the public, by laying open for public inspection as provided
by the national law, or
(iii) a translation into the latter language has been transmitted by
the applicant to the actual or prospective unauthorized user of
the invention claimed in the international application, or
(iv) both the acts described in (i) and (iii), or both the acts
described in (ii) and (iii), have taken place.
(3) The national law of any designated State may provide that, where the
international publication has been effected, on the request of the applicant,
before the expiration of 18 months from the priority date, the effects
provided for in paragraph (1) shall be applicable only from the expiration of
18 months from the priority date.
(4) The national law of any designated State may provide that the effects
provided for in paragraph (1) shall be applicable only from the date on which
a copy of the international application as published under Article 21 has been
received in the national Office of or acting for such State. The said Office
shall publish the date of receipt in its gazette as soon as possible.
Article 30
Confidential Nature of the International Application
(1) (a) Subject to the provisions of subparagraph (b), the
International Bureau and the International Searching Authorities shall not
allow access by any person or authority to the international application
before the international publication of that application, unless requested or
authorized by the applicant.
(b) The provisions of subparagraph (a) shall not apply to any transmittal
to the competent International Searching Authority, to transmittals
provided for under Article 13, and to communications provided for
under Article 20.
(2) (a) No national Office shall allow access to the international application
by third parties, unless requested or authorized by the applicant, before the
earliest of the following dates:
(i) date of the international publication of the international
application,
(ii) date of the receipt of the communication of the international
application under Article 20,
(iii) date of the receipt of a copy of the international application
under Article 22.
(b) The provisions of subparagraph (a) shall not prevent any national
Office from informing third parties that it has been designated, or
from publishing that fact. Such information or publication may,
however, contain only the following data: identification of the
receiving Office, name of the applicant, international filing date,
international application number, and title of the invention.
(c) The provisions of subparagraph (a) shall not prevent any designated
Office from allowing access to the international application for the
purposes of the judicial authorities.
(3) The provisions of paragraph (2) (a) shall apply to any receiving Office
except as far as transmittals provided for under Article 12 (1) are concerned.
(4) For the purposes of this Article, the term "access" covers any means by
which third parties may acquire cognizance, including individual communication
and general publication, provided, however, that no national Office shall
generally publish an international application or its translation before the
international publication or, if international publication has not taken place
by the expiration of 20 months from the priority date, before the expiration
of 20 months from the said priority date.
CHAPTER II
International Preliminary Examination
Article 31
Demand for International Preliminary Examination
(1) On the demand of the applicant, his international application shall be the
subject of an international preliminary examination as provided in the
following provisions and the Regulations.
(2) (a) Any applicant who is a resident or national, as defined in the
Regulations, of a Contracting State bound by Chapter II, and whose
international application has been filed with the receiving Office of or
acting for such State, may make a demand for international preliminary
examination.
(b) The Assembly may decide to allow persons entitled to file
international applications to make a demand for international
preliminary examination even if they are residents or nationals of a
State not party to this Treaty or not bound by Chapter II.
(3) The demand for international preliminary examination shall be made
separately from the international application. The demand shall contain the
prescribed particulars and shall be in the prescribed language and form.
(4) (a) The demand shall indicate the Contracting State or States in which the
applicant intends to use the results of the international preliminary
examination ("elected States"). Additional Contracting States may be elected
later. Election may relate only to Contracting States already designated under
Article 4.
(b) Applicants referred to in paragraph (2) (a) may elect any Contracting
State bound by Chapter II. Applicants referred to in paragraph (2) (b)
may elect only such Contracting States bound by Chapter II as have
declared that they are prepared to be elected by such applicants.
(5) The demand shall be subject to the payment of the prescribed fees within
the prescribed time limit.
(6) (a) The demand shall be submitted to the competent International
Preliminary Examining Authority referred to in Article 32.
(b) Any later election shall be submitted to the International Bureau.
(7) Each elected Office shall be notified of its election.
Article 32
The International Preliminary Examining Authority
(1) International preliminary examination shall be carried out by the
International Preliminary Examining Authority.
(2) In the case of demands referred to in Article 31 (2) (a), the receiving
Office, and, in the case of demands referred to in Article 31 (2) (b), the
Assembly, shall, in accordance with the applicable agreement between the
interested International Preliminary Examining Authority or Authorities and
the International Bureau, specify the International Preliminary Examining
Authority or Authorities competent for the preliminary examination.
(3) The provisions of Article 16 (3) shall apply, mutatis mutandis, in respect
of International Preliminary Examining Authorities.
Article 33
The International Preliminary Examination
(1) The objective of the international preliminary examination is to formulate
a preliminary and non-binding opinion on the questions whether the claimed
invention appears to be novel, to involve an inventive step (to be
non-obvious), and to be industrially applicable.
(2) For the purposes of the international preliminary examination, a claimed
invention shall be considered novel if it is not anticipated by the prior art
as defined in the Regulations.
(3) For the purposes of the international preliminary examination, a claimed
invention shall be considered to involve an inventive step if, having regard
to the prior art as defined in the Regulations, it is not, at the prescribed
relevant date, obvious to a person skilled in the art.
(4) For the purposes of the international preliminary examination, a claimed
invention shall be considered industrially applicable if, according to its
nature, it can be made or used (in the technological sense) in any kind of
industry. "Industry" shall be understood in its broadest sense, as in the
Paris Convention for the Protection of Industrial Property.
(5) The criteria described above merely serve the purposes of international
preliminary examination. Any Contracting State may apply additional or
different criteria for the purpose of deciding whether, in that State, the
claimed invention is patentable or not.
(6) The international preliminary examination shall take into consideration
all the documents cited in the international search report. It may take into
consideration any additional documents considered to be relevant in the
particular case.
Article 34 Procedure Before the International Preliminary Examining Authority
(1) Procedure before the International Preliminary Examining Authority shall
be governed by the provisions of this Treaty, the Regulations, and the
agreement which the International Bureau shall conclude, subject to this
Treaty and the Regulations, with the said Authority.
(2) (a) The applicant shall have a right to communicate orally and in writing
with the International Preliminary Examining Authority.
(b) The applicant shall have a right to amend the claims, the description,
and the drawings, in the prescribed manner and within the prescribed
time limit, before the international preliminary examination report is
established. The amendment shall not go beyond the disclosure in the
international application as filed.
(c) The applicant shall receive at least one written opinion from the
International Preliminary Examining Authority unless such Authority
considers that all of the following conditions are fulfilled:
(i) the invention satisfies the criteria set forth in Article 33
(1),
(ii) the international application complies with the requirements of
this Treaty and the Regulations in so far as checked by that
Authority,
(iii) no observations are intended to be made under Article 35 (2),
last sentence.
(d) The applicant may respond to the written opinion.
(3) (a) If the International Preliminary Examining Authority considers that
the international application does not comply with the requirement of unity of
invention as set forth in the Regulations, it may invite the applicant, at his
option, to restrict the claims so as to comply with the requirement or to pay
additional fees.
(b) The national law of any elected State may provide that, where the
applicant chooses to restrict the claims under subparagraph (a), those
parts of the international application which, as a consequence of the
restriction, are not to be the subject of international preliminary
examination shall, as far as effects in that State are concerned, be
considered withdrawn unless a special fee is paid by the applicant to
the national Office of that State.
(c) If the applicant does not comply with the invitation referred to in
subparagraph (a) within the prescribed time limit, the International
Preliminary Examining Authority shall establish an international
preliminary examination report on those parts of the international
application which relate to what appears to be the main invention and
shall indicate the relevant facts in the said report. The national law
of any elected State may provide that, where its national Office finds
the invitation of the International Preliminary Examining Authority
justified, those parts of the international application which do not
relate to the main invention shall, as far as effects in that State
are concerned, be considered withdrawn unless a special fee is paid by
the applicant to that Office.
(4) (a) If the International Preliminary Examining Authority considers
(i) that the international application relates to a subject matter
on which the International Preliminary Examining Authority is
not required, under the Regulations, to carry out an
international preliminary examination, and in the particular
case decides not to carry out such examination, or
(ii) that the description, the claims, or the drawings, are so
unclear, or the claims are so inadequately supported by the
description, that no meaningful opinion can be formed on the
novelty, inventive step (non-obviousness), or industrial
applicability, of the claimed invention, the said Authority
shall not go into the questions referred to in Article 33 (1)
and shall inform the applicant of this opinion and the reasons
therefor.
(b) If any of the situations referred to in subparagraph (a) is found to
exist in, or in connection with, certain claims only, the provisions
of that subparagraph shall apply only to the said claims.
Article 35
The International Preliminary Examination Report
(1) The international preliminary examination report shall be established
within the prescribed time limit and in the prescribed form.
(2) The international preliminary examination report shall not contain any
statement on the question whether the claimed invention is or seems to be
patentable or unpatentable according to any national law. It shall state,
subject to the provisions of paragraph (3), in relation to each claim, whether
the claim appears to satisfy the criteria of novelty, inventive step (non-
obviousness), and industrial applicability, as defined for the purposes of the
international preliminary examination in Article 33 (1) to (4). The statement
shall be accompanied by the citation of the documents believed to support the
stated conclusion with such explanations as the circumstances of the case may
require. The statement shall also be accompanied by such other observations as
the Regulations provide for.
(3) (a) If, at the time of establishing the international preliminary
examination report, the International Preliminary Examining Authority
considers that any of the situations referred to in Article 34 (4) (a) exists,
that report shall state this opinion and the reasons therefor. It shall not
contain any statement as provided in paragraph (2).
(b) If a situation under Article 34 (4) (b) is found to exist, the
international preliminary examination report shall, in relation to the
claims in question, contain the statement as provided in subparagraph
(a), whereas, in relation to the other claims, it shall contain the
statement as provided in paragraph (2).
Article 36 Transmittal, Translation, and Communication, of the International
Preliminary Examination Report
(1) The international preliminary examination report, together with the
prescribed annexes, shall be transmitted to the applicant and to the
International Bureau.
(2) (a) The international preliminary examination report and its annexes shall
be translated into the prescribed languages.
(b) Any translation of the said report shall be prepared by or under the
responsibility of the International Bureau, whereas any translation of
the said annexes shall be prepared by the applicant.
(3) (a) The international preliminary examination report, together with its
translation (as prescribed) and its annexes (in the original language), shall
be communicated by the International Bureau to each elected Office.
(b) The prescribed translation of the annexes shall be transmitted within
the prescribed time limit by the applicant to the elected Offices.
(4) The provisions of Article 20 (3) shall apply, mutatis mutandis, to copies
of any document which is cited in the international preliminary examination
report and which was not cited in the international search report.
Article 37
Withdrawal of Demand or Election
(1) The applicant may withdraw any or all elections.
(2) If the election of all elected States is withdrawn, the demand shall be
considered withdrawn.
(3) (a) Any withdrawal shall be notified to the International Bureau.
(b) The elected Offices concerned and the International Preliminary
Examining Authority concerned shall be notified accordingly by the
International Bureau.
(4) (a) Subject to the provisions of subparagraph (b), withdrawal of the
demand or of the election of a Contracting State shall, unless the national
law of that State provides otherwise, be considered to be withdrawal of the
international application as far as that State is concerned.
(b) Withdrawal of the demand or of the election shall not be considered to
be withdrawal of the international application if such withdrawal is
effected prior to the expiration of the applicable time limit under
Article 22; however, any Contracting State may provide in its national
law that the aforesaid shall apply only if its national Office has
received, within the said time limit, a copy of the international
application, together with a translation (as prescribed), and the
national fee.
Article 38 Confidential Nature of the International Preliminary Examination
(1) Neither the International Bureau nor the International Preliminary
Examining Authority shall, unless requested or authorized by the applicant,
allow access within the meaning, and with the proviso, of Article 30 (4) to
the file of the international preliminary examination by any person or
authority at any time, except by the elected Offices once the international
preliminary examination report has been established.
(2) Subject to the provisions of paragraph (1) and Articles 36 (1) and (3) and
37 (3) (b), neither the International Bureau nor the International Preliminary
Examining Authority shall, unless requested or authorized by the applicant,
give information on the issuance or non-issuance of an international
preliminary examination report and on the withdrawal or nonwithdrawal of the
demand or of any election.
Article 39
Copy, Translation, and Fee, to Elected Offices
(1) (a) If the election of any Contracting State has been effected prior to
the expiration of the 19th month from the priority date, the provisions of
Article 22 shall not apply to such State and the applicant shall furnish a
copy of the international application (unless the communication under Article
20 has already taken place) and a translation thereof (as prescribed), and pay
the national fee (if any), to each elected Office not later than the
expiration of 30 months from the priority date.
(b) Any national law may, for performing the acts referred to in
subparagraph (a), fix time limits which expire later than the time
limit provided for in that subparagraph.
(2) The effect provided for in Article 11 (3) shall cease in the elected State
with the same consequences as the withdrawal of any national application in
that State if the applicant fails to perform the acts referred to in paragraph
(1) (a) within the time limit applicable under paragraph (1) (a) or (b).
(3) Any elected Office may maintain the effect provided for in Article 11 (3)
even where the applicant does not comply with the requirements provided for in
paragraph (1) (a) or (b).
Article 40
Delaying of National Examination and Other Processing
(1) If the election of any Contracting State has been effected prior to the
expiration of the 19th month from the priority date, the provisions of Article
23 shall not apply to such State and the national Office of or acting for that
State shall not proceed, subject to the provisions of paragraph (2), to the
examination and other processing of the international application prior to the
expiration of the applicable time limit under Article 39.
(2) Notwithstanding the provisions of paragraph (1), any elected Office may,
on the express request of the applicant, proceed to the examination and other
processing of the international application at any time.
Article 41 Amendment of the Claims, the Description, and the Drawings, Before
Elected Offices
(1) The applicant shall be given the opportunity to amend the claims, the
description, and the drawings, before each elected Office within the
prescribed time limit. No elected Office shall grant a patent, or refuse the
grant of a patent, before such time limit has expired, except with the express
consent of the applicant.
(2) The amendments shall not go beyond the disclosure in the international
application as filed, unless the national law of the elected State permits
them to go beyond the said disclosure.
(3) The amendments shall be in accordance with the national law of the elected
State in all respects not provided for in this Treaty and the Regulations.
(4) Where an elected Office requires a translation of the international
application, the amendments shall be in the language of the translation.
Article 42
Results of National Examination in Elected Offices
No elected Office receiving the international preliminary examination report
may require that the applicant furnish copies, or information on the contents,
of any papers connected with the examination relating to the same
international application in any other elected Office.
CHAPTER III
Common Provisions
Article 43
Seeking Certain Kinds of Protection
In respect of any designated or elected State whose law provides for the grant
of inventors' certificates, utility certificates, utility models, patents or
certificates of addition, inventors' certificates of addition, or utility
certificates of addition, the applicant may indicate, as prescribed in the
Regulations, that his international application is for the grant, as far as
that State is concerned, of an inventor's certificate, a utility certificate,
or a utility model, rather than a patent, or that it is for the grant of a
patent or certificate of addition, an inventor's certificate of addition, or a
utility certificate of addition, and the ensuing effect shall be governed by
the applicant's choice. For the purposes of this Article and any Rule
thereunder, Article 2 (ii) shall not apply.
Article 44
Seeking Two Kinds of Protection
In respect of any designated or elected State whose law permits an
application, while being for the grant of a patent or one of the other kinds
of protection referred to in Article 43, to be also for the grant of another
of the said kinds of protection, the applicant may indicate, as prescribed in
the Regulations, the two kinds of protection he is seeking, and the ensuing
effect shall be governed by the applicant's indications. For the purposes of
this Article, Article 2 (ii) shall not apply.
Article 45
Regional Patent Treaties
(1) Any treaty providing for the grant of regional patents ("regional patent
treaty"), and giving to all persons who, according to Article 9, are entitled
to file international applications the right to file applications for such
patents, may provide that international applications designating or electing a
State party to both the regional patent treaty and the present Treaty may be
filed as applications for such patents.
(2) The national law of the said designated or elected State may provide that
any designation or election of such State in the international application
shall have the effect of an indication of the wish to obtain a regional patent
under the regional patent treaty.
Article 46 Incorrect Translation of the International Application
If, because of an incorrect translation of the international application, the
scope of any patent granted on that application exceeds the scope of the
international application in its original language, the competent authorities
of the Contracting State concerned may accordingly and retroactively limit the
scope of the patent, and declare it null and void to the extent that its scope
has exceeded the scope of the international application in its original
language.
Article 47
Time Limits
(1) The details for computing time limits referred to in this Treaty are
governed by the Regulations.
(2) (a) All time limits fixed in Chapters I and II of this Treaty may, outside
any revision under Article 60, be modified by a decision of the Contracting
States.
(b) Such decisions shall be made in the Assembly or through voting by
correspondence and must be unanimous.
(c) The details of the procedure are governed by the Regulations.
Article 48
Delay in Meeting Certain Time Limits
(1) Where any time limit fixed in this Treaty or the Regulations is not met
because of interruption in the mail service or unavoidable loss or delay in
the mail, the time limit shall be deemed to be met in the cases and subject to
the proof and other conditions prescribed in the Regulations.
(2) (a) Any Contracting State shall, as far as that State is concerned,
excuse, for reasons admitted under its national law, any delay in meeting any
time limit.
(b) Any Contracting State may, as far as that State is concerned, excuse,
for reasons other than those referred to in subparagraph (a), any
delay in meeting any time limit.
Article 49
Right to Practice Before International Authorities
Any attorney, patent agent, or other person, having the right to practice
before the national Office with which the international application was filed,
shall be entitled to practice before the International Bureau and the
competent International Searching Authority and competent International
Preliminary Examining Authority in respect of that application.
CHAPTER IV
Technical Services
Article 50
Patent Information Services
(1) The International Bureau may furnish services by providing technical and
any other pertinent information available to it on the basis of published
documents, primarily patents and published applications (referred to in this
Article as "the information services").
(2) The International Bureau may provide these information services either
directly or through one or more International Searching Authorities or other
national or international specialized institutions, with which the
International Bureau may reach agreement.
(3) The information services shall be operated in a way particularly
facilitating the acquisition by Contracting States which are developing
countries of technical knowledge and technology, including available published
know-how.
(4) The information services shall be available to Governments of Contracting
States and their nationals and residents. The Assembly may decide to make
these services available also to others.
(5) (a) Any service to Governments of Contracting States shall be furnished at
cost, provided that, when the Government is that of a Contracting State which
is a developing country, the service shall be furnished below cost if the
difference can be covered from profit made on services furnished to others
than Governments of Contracting States or from the sources referred to in
Article 51 (4).
(b) The cost referred to in subparagraph (a) is to be understood as cost
over and above costs normally incident to the performance of the
services of a national Office or the obligations of an International
Searching Authority.
(6) The details concerning the implementation of the provisions of this
Article shall be governed by decisions of the Assembly and, within the limits
to be fixed by the Assembly, such working groups as the Assembly may set up
for that purpose.
(7) The Assembly shall, when it considers it necessary, recommend methods of
providing financing supplementary to those referred to in paragraph (5).
Article 51
Technical Assistance
(1) The Assembly shall establish a Committee for Technical Assistance
(referred to in this Article as "the Committee").
(2) (a) The members of the Committee shall be elected among the Contracting
States, with due regard to the representation of developing countries.
(b) The Director General shall, on his own initiative or at the request of
the Committee, invite representatives of intergovernmental
organizations concerned with technical assistance to developing
countries to participate in the work of the Committee.
(3) (a) The task of the Committee shall be to organize and supervise technical
assistance for Contracting States which are developing countries in developing
their patent systems individually or on a regional basis.
(b) The technical assistance shall comprise, among other things, the
training of specialists, the loaning of experts, and the supply of
equipment both for demonstration and for operational purposes.
(4) The International Bureau shall seek to enter into agreements, on the one
hand, with international financing organizations and intergovernmental
organizations, particularly the United Nations, the agencies of the United
Nations, and the Specialized Agencies connected with the United Nations
concerned with technical assistance, and, on the other hand, with the
Governments of the States receiving the technical assistance, for the
financing of projects pursuant to this Article.
(5) The details concerning the implementation of the provisions of this
Article shall be governed by decisions of the Assembly and, within the limits
to be fixed by the Assembly, such working groups as the Assembly may set up
for that purpose.
Article 52
Relations with Other Provisions of the Treaty
Nothing in this Chapter shall affect the financial provisions contained in any
other Chapter of this Treaty. Such provisions are not applicable to the
present Chapter or to its implementation.
CHAPTER V
Administrative Provisions
Article 53
Assembly
(1) (a) The Assembly shall, subject to Article 57 (8), consist of the
Contracting States.
(b) The Government of each Contracting State shall be represented by one
delegate, who may be assisted by alternate delegates, advisors, and
experts.
(2) (a) The Assembly shall:
(i) deal with all matters concerning the maintenance and
development of the Union and the implementation of this Treaty;
(ii) perform such tasks as are specifically assigned to it under
other provisions of this Treaty;
(iii) give directions to the International Bureau concerning the
preparation for revision conferences;
(iv) review and approve the reports and activities of the Director
General concerning the Union, and give him all necessary
instructions concerning matters within the competence of the
Union;
(v) review and approve the reports and activities of the Executive
Committee established under paragraph (9), and give
instructions to such Committee;
(vi) determine the program and adopt the triennial budget of the
Union, and approve its final accounts;
(vii) adopt the financial regulations of the Union;
(viii) establish such committees and working groups as it deems
appropriate to achieve the objectives of the Union;
(ix) determine which States other than Contracting States and,
subject to the provisions of paragraph (8), which
intergovernmental and international non-governmental
organizations shall be admitted to its meetings as observers;
(x) take any other appropriate action designed to further the
objectives of the Union and perform such other functions as are
appropriate under this Treaty.
(b) With respect to matters which are of interest also to other Unions
administered by the Organization, the Assembly shall make its
decisions after having heard the advice of the Coordination Committee
of the Organization.
(3) A delegate may represent, and vote in the name of, one State only.
(4) Each Contracting State shall have one vote.
(5) (a) One-half of the Contracting States shall constitute a quorum.
(b) In the absence of the quorum, the Assembly may make decisions but,
with the exception of decisions concerning its own procedure, all such
decisions shall take effect only if the quorum and the required
majority are attained through voting by correspondence as provided in
the Regulations.
(6) (a) Subject to the provisions of Articles 47 (2) (b), 58 (2) (b), 58 (3)
and 61 (2) (b), the decisions of the Assembly shall require two-thirds of the
votes cast.
(b) Abstentions shall not be considered as votes.
(7) In connection with matters of exclusive interest to States bound by
Chapter II, any reference to Contracting States in paragraphs (4), (5), and
(6), shall be considered as applying only to States bound by Chapter II.
(8) Any intergovernmental organization appointed as International Searching or
Preliminary Examining Authority shall be admitted as observer to the Assembly.
(9) When the number of Contracting States exceeds forty, the Assembly shall
establish an Executive Committee. Any reference to the Executive Committee in
this Treaty and the Regulations shall be construed as references to such
Committee once it has been established.
(10) Until the Executive Committee has been established, the Assembly shall
approve, within the limits of the program and triennial budget, the annual
programs and budgets prepared by the Director General.
(11) (a) The Assembly shall meet in every second calendar year in ordinary
session upon convocation by the Director General and, in the absence of
exceptional circumstances, during the same period and at the same place as the
General Assembly of the Organization.
(b) The Assembly shall meet in extraordinary session upon convocation by
the Director General, at the request of the Executive Committee, or at
the request of one-fourth of the Contracting States.
(12) The Assembly shall adopt its own rules of procedure.
Article 54
Executive Committee
(1) When the Assembly has established an Executive Committee, that Committee
shall be subject to the provisions set forth hereinafter.
(2) (a) The Executive Committee shall, subject to Article 57 (8), consist of
States elected by the Assembly from among States members of the Assembly.
(b) The Government of each State member of the Executive Committee shall
be represented by one delegate, who may be assisted by alternate
delegates, advisors, and experts.
(3) The number of States members of the Executive Committee shall correspond
to one-fourth of the number of States members of the Assembly. In establishing
the number of seats to be filled, remainders after division by four shall be
disregarded.
(4) In electing the members of the Executive Committee, the Assembly shall
have due regard to an equitable geographical distribution.
(5) (a) Each member of the Executive Committee shall serve from the close of
the session of the Assembly which elected it to the close of the next ordinary
session of the Assembly.
(b) Members of the Executive Committee may be re-elected but only up to a
maximum of two-thirds of such members.
(c) The Assembly shall establish the details of the rules governing the
election and possible re-election of the members of the Executive
Committee.
(6) (a) The Executive Committee shall:
(i) prepare the draft agenda of the Assembly;
(ii) submit proposals to the Assembly in respect of the draft
program and biennial budget of the Union prepared by the
Director General;
(iv) submit, with appropriate comments, to the Assembly the
periodical reports of the Director General and the yearly audit
reports on the accounts;
(v) take all necessary measures to ensure the execution of the
program of the Union by the Director General, in accordance
with the decisions of the Assembly and having regard to
circumstances arising between two ordinary sessions of the
Assembly;
(vi) perform such other functions as are allocated to it under this
Treaty.
(b) With respect to matters which are of interest also to other Unions
administered by the Organization, the Executive Committee shall make
its decisions after having heard the advice of the Coordination
Committee of the Organization.
(7) (a) The Executive Committee shall meet once a year in ordinary session
upon convocation by the Director General, preferably during the same period
and at the same place as the Coordination Committee of the Organization.
(b) The Executive Committee shall meet in extraordinary session upon
convocation by the Director General, either on his own initiative or
at the request of its Chairman or one-fourth of its members.
(8) (a) Each State member of the Executive Committee shall have one vote.
(b) One-half of the members of the Executive Committee shall constitute a
quorum.
(c) Decisions shall be made by a simple majority of the votes cast.
(d) Abstentions shall not be considered as votes.
(e) A delegate may represent, and vote in the name of, one State only.
(9) Contracting States not members of the Executive Committee shall be
admitted to its meetings as observers, as well as any intergovernmental
organization appointed as International Searching or Preliminary Examining
Authority.
(10) The Executive Committee shall adopt its own rules of procedure.
Article 55
International Bureau
(1) Administrative tasks concerning the Union shall be performed by the
International Bureau.
(2) The International Bureau shall provide the secretariat of the various
organs of the Union.
(3) The Director General shall be the chief executive of the Union and shall
represent the Union.
(4) The International Bureau shall publish a Gazette and other publications
provided for by the Regulations or required by the Assembly.
(5) The Regulations shall specify the services that national Offices shall
perform in order to assist the International Bureau and the International
Searching and Preliminary Examining Authorities in carrying out their tasks
under this Treaty.
(6) The Director General and any staff member designated by him shall
participate, without the right to vote, in all meetings of the Assembly, the
Executive Committee and any other committee or working group established under
this Treaty or the Regulations. The Director General, or a staff member
designated by him, shall be ex officio secretary of these bodies.
(7) (a) The International Bureau shall, in accordance with the directions of
the Assembly and in cooperation with the Executive Committee, make the
preparations for the revision conferences.
(b) The International Bureau may consult with intergovernmental and
international non-governmental organizations concerning preparations
for revision conferences.
(c) The Director General and persons designated by him shall take part,
without the right to vote, in the discussions at revision conferences.
(8) The International Bureau shall carry out any other tasks assigned to it.
Article 56
Committee for Technical Cooperation
(1) The Assembly shall establish a Committee for Technical Cooperation
(referred to in this Article as "the Committee").
(2) (a) The Assembly shall determine the composition of the Committee and
appoint its members, with due regard to an equitable representation of
developing countries.
(b) The International Searching and Preliminary Examining Authorities
shall be ex officio members of the Committee. In the case where such
an Authority is the national Office of a Contracting State, that State
shall not be additionally represented on the Committee.
(c) If the number of Contracting States so allows, the total number of
members of the Committee shall be more than double the number of ex
officio members.
(d) The Director General shall, on his own initiative or at the request of
the Committee, invite representatives of interested organizations to
participate in discussions of interest to them.
(3) The aim of the Committee shall be to contribute, by advice and
recommendations:
(i) to the constant improvement of the services provided for under
this Treaty,
(ii) to the securing, so long as there are several International
Searching Authorities and several International Preliminary
Examining Authorities, of the maximum degree of uniformity in
their documentation and working methods and the maximum degree
of uniformly high quality in their reports, and
(iii) on the initiative of the Assembly or the Executive Committee,
to the solution of the technical problems specifically involved
in the establishment of a single International Searching
Authority.
(4) Any Contracting State and any interested international organization may
approach the Committee in writing on questions which fall within the
competence of the Committee.
(5) The Committee may address its advice and recommendations to the Director
General or, through him, to the Assembly, the Executive Committee, all or some
of the International Searching and Preliminary Examining Authorities, and all
or some of the receiving Offices.
(6) (a) In any case, the Director General shall transmit to the Executive
Committee the texts of all the advice and recommendations of the Committee. He
may comment on such texts.
(b) The Executive Committee may express its views on any advice,
recommendation, or other activity of the Committee, and may invite the
Committee to study and report on questions falling within its
competence. The Executive Committee may submit to the Assembly, with
appropriate comments, the advice, recommendations and report of the
Committee.
(7) Until the Executive Committee has been established, references in
paragraph (6) to the Executive Committee shall be construed as references to
the Assembly.
(8) The details of the procedure of the Committee shall be governed by the
decisions of the Assembly.
Article 57
Finances
(1) (a) The Union shall have a budget.
(b) The budget of the Union shall include the income and expenses proper
to the Union and its contribution to the budget of expenses common to
the Unions administered by the Organization.
(c) Expenses not attributable exclusively to the Union but also to one or
more other Unions administered by the Organization shall be considered
as expenses common to the Unions. The share of the Union in such
common expenses shall be in proportion to the interests the Union has
in them.
(2) The budget of the Union shall be established with due regard to the
requirements of co-ordination with the budgets of the other Unions
administered by the Organization.
(3) Subject to the provisions of paragraph (5), the budget of the Union shall
be financed from the following sources:
(i) fees and charges due for services rendered by the International
Bureau in relation to the Union;
(ii) sale of, or royalties on, the publications of the International
Bureau concerning the Union;
(iii) gifts, bequests, and subventions;
(iv) rents, interests, and other miscellaneous income.
(4) The amounts of fees and charges due to the International Bureau and the
prices of its publications shall be so fixed that they should, under normal
circumstances, be sufficient to cover all the expenses of the International
Bureau connected with the administration of this Treaty.
(5) (a) Should any financial year close with a deficit, the Contracting States
shall, subject to the provisions of subparagraph (b) and (c), pay
contributions to cover such deficit.
(b) The amount of the contribution of each Contracting State shall be
decided by the Assembly with due regard to the number of international
applications which has emanated from each of them in the relevant
year.
(c) If other means of provisionally covering any deficit or any part
thereof are secured, the Assembly may decide that such deficit be
carried forward and that the Contracting States should not be asked to
pay contributions.
(d) If the financial situation of the Union so permits, the Assembly may
decide that any contributions paid under subparagraph (a) be
reimbursed to the Contracting States which have paid them.
(e) A Contracting State which has not paid, within two years of the due
date as established by the Assembly, its contribution under
subparagraph (b) may not exercise its right to vote in any of the
organs of the Union. However, any organ of the Union may allow such a
State to continue to exercise its right to vote in that organ so long
as it is satisfied that the delay in payment is due to exceptional and
unavoidable circumstances.
(6) If the budget is not adopted before the beginning of a new financial
period, it shall be at the same level as the budget of the previous year, as
provided in the financial regulations.
(7) (a) The Union shall have a working capital fund which shall be constituted
by a single payment made by each Contracting State. If the fund becomes
insufficient, the Assembly shall arrange to increase it. If part of the fund
is no longer needed, it shall be reimbursed.
(b) The amount of the initial payment of each Contracting State to the
said fund or of its participation in the increase thereof shall be
decided by the Assembly on the basis of principles similar to those
provided for under paragraph (5) (b).
(c) The terms of payment shall be fixed by the Assembly on the proposal of
the Director General and after it has heard the advice of the
Coordination Committee of the Organization.
(d) Any reimbursement shall be proportionate to the amounts paid by each
Contracting State, taking into account the dates at which they were
paid.
(8) (a) In the headquarters agreement concluded with the State on the
territory of which the Organization has its headquarters, it shall be provided
that, whenever the working capital fund is insufficient, such State shall
grant advances. The amount of these advances and the conditions on which they
are granted shall be the subject of separate agreements, in each case, between
such State and the Organization. As long as it remains under the obligation to
grant advances, such State shall have an ex officio seat in the Assembly and
on the Executive Committee.
(b) The State referred to in subparagraph (a) and the Organization shall
each have the right to denounce the obligation to grant advances, by
written notification. Denunciation shall take effect three years after
the end of the year in which it has been notified.
(9) The auditing of the accounts shall be effected by one or more of the
Contracting States or by external auditors, as provided in the financial
regulations. They shall be designated, with their agreement, by the Assembly.
Article 58
Regulations
(1) The Regulations annexed to this Treaty provide Rules:
(i) concerning matters in respect of which this Treaty expressly
refers to the Regulations or expressly provides that they are
or shall be prescribed,
(ii) concerning any administrative requirements, matters, or
procedures,
(iii) concerning any details useful in the implementation of the
provisions of this Treaty.
(2) (a) The Assembly may amend the Regulations.
(b) Subject to the provisions of paragraph (3), amendments shall require
three-fourths of the votes cast.
(3) (a) The Regulations specify the Rules which may be amended
(i) only by unanimous consent, or
(ii) only if none of the Contracting States whose national Office
acts as an International Searching or Preliminary Examining
Authority dissents, and, where such Authority is an
intergovernmental organization, if the Contracting State member
of that organization authorized for that purpose by the other
member States within the competent body of such organization
does not dissent.
(b) Exclusion, for the future, of any such Rules from the applicable
requirement shall require the fulfillment of the conditions referred
to in subparagraph (a) (i) or (a) (ii), respectively.
(c) Inclusion, for the future, of any Rule in one or the other of the
requirements referred to in subparagraph (a) shall require unanimous
consent.
(4) The Regulations provide for the establishment, under the control of the
Assembly, of Administrative Instructions by the Director General.
(5) In the case of conflict between the provisions of the Treaty and those of
the Regulations, the provisions of the Treaty shall prevail.
CHAPTER VI
Disputes
Article 59
Disputes
Subject to Article 64 (5), any dispute between two or more Contracting States
concerning the interpretation or application of this Treaty or the
Regulations, not settled by negotiation, may, by any one of the States
concerned, be brought before the International Court of Justice by application
in conformity with the Statute of the Court, unless the States concerned agree
on some other method of settlement. The Contracting State bringing the dispute
before the Court shall inform the International Bureau; the International
Bureau shall bring the matter to the attention of the other Contracting
States.
CHAPTER VII
Revision and Amendment
Article 60
Revision of the Treaty
(1) This Treaty may be revised from time to time by a special conference of
the Contracting States.
(2) The convocation of any revision conference shall be decided by the
Assembly.
(3) Any intergovernmental organization appointed as International Searching or
Preliminary Examining Authority shall be admitted as observer to any revision
conference.
(4) Articles 53 (5), (9) and (11), 54, 55 (4) to (8), 56, and 57, may be
amended either by a revision conference or according to the provisions of
Article 61.
Article 61
Amendment of Certain Provisions of the Treaty
(1) (a) Proposals for the amendment of Articles 53 (5), (9) and (11), 54, 55
(4) to (8), 56, and 57, may be initiated by any State member of the Assembly,
by the Executive Committee, or by the Director General.
(b) Such proposals shall be communicated by the Director General to the
Contracting States at least six months in advance of their
consideration by the Assembly.
(2) (a) Amendments to the Articles referred to in paragraph (1) shall be
adopted by the Assembly.
(b) Adoption shall require three-fourths of the votes cast.
(3) (a) Any amendment to the Articles referred to in paragraph (1) shall enter
into force one month after written notifications of acceptance, effected in
accordance with their respective constitutional processes, have been received
by the Director General from three-fourths of the States members of the
Assembly at the time it adopted the amendment.
(b) Any amendment to the said Articles thus accepted shall bind all the
States which are members of the Assembly at the time the amendment
enters into force, provided that any amendment increasing the
financial obligations of the Contracting States shall bind only those
States which have notified their acceptance of such amendment.
(c) Any amendment accepted in accordance with the provisions of
subparagraph (a) shall bind all States which become members of the
Assembly after the date on which the amendment entered into force in
accordance with the provisions of subparagraph (a).
CHAPTER VIII
Final Provisions
Article 62
Becoming Party to the Treaty
(1) Any State member of the International Union for the Protection of
Industrial Property may become party to this Treaty by:
(i) signature followed by the deposit of an instrument of
ratification, or
(ii) deposit of an instrument of accession.
(2) Instruments of ratification or accession shall be deposited with the
Director General.
(3) The provisions of Article 24 of the Stockholm Act of the Paris Convention
for the Protection of Industrial Property shall apply to this Treaty.
(4) Paragraph (3) shall in no way be understood as implying the recognition or
tacit acceptance by a Contracting State of the factual situation concerning a
territory to which this Treaty is made applicable by another Contracting State
by virtue of the said paragraph.
Article 63
Entry into Force of the Treaty
(1) (a) Subject to the provisions of paragraph (3), this Treaty shall enter
into force three months after eight States have deposited their instruments of
ratification or accession, provided that at least four of those States each
fulfill any of the following conditions:
(i) the number of applications filed in the State has exceeded
40,000 according to the most recent annual statistics published
by the International Bureau,
(ii) the nationals or residents of the State have filed at least
1,000 applications in one foreign country according to the most
recent annual statistics published by the International Bureau,
(iii) the national Office of the State has received at least 10,000
applications from nationals or residents of foreign countries
according to the most recent annual statistics published by the
International Bureau.
(b) For the purposes of this paragraph, the term "applications" does not
include applications for utility models.
(2) Subject to the provisions of paragraph (3), any State which does not
become party to this Treaty upon entry into force under paragraph (1) shall
become bound by this Treaty three months after the date on which such State
has deposited its instrument of ratification or accession.
(3) The provisions of Chapter II and the corresponding provisions of the
Regulations annexed to this Treaty shall become applicable, however, only on
the date on which three States each of which fulfill at least one of the three
requirements specified in paragraph (1) have become party to this Treaty
without declaring, as provided in Article 64 (1), that they do not intend to
be bound by the provisions of Chapter II. That date shall not, however, be
prior to that of the initial entry into force under paragraph (1).
Article 64
Reservations
(1) (a) Any State may declare that it shall not be bound by the provisions of
Chapter II.
(b) States making a declaration under subparagraph (a) shall not be bound
by the provisions of Chapter II and the corresponding provisions of
the Regulations.
(2) (a) Any State not having made a declaration under paragraph (1) (a) may
declare that:
(i) it shall not be bound by the provisions of Article 39 (1) with
respect to the furnishing of a copy of the international
application and a translation thereof (as prescribed),
(ii) the obligation to delay national processing, as provided for
under Article 40, shall not prevent publication, by or through
its national Office, of the international application or a
translation thereof, it being understood, however, that it is
not exempted from the limitations provided for in Articles 30
and 38.
(b) States making such a declaration shall be bound accordingly.
(3) (a) Any State may declare that, as far as it is concerned, international
publication of international applications is not required.
(b) Where, at the expiration of 18 months from the priority date, the
international application contains the designation only of such States
as have made declarations under subparagraph (a), the international
application shall not be published by virtue of Article 21 (2).
(c) Where the provisions of subparagraph (b) apply, the international
application shall nevertheless be published by the International
Bureau:
(i) at the request of the applicant, as provided in the
Regulations,
(ii) when a national application or a patent based on the
international application is published by or on behalf of the
national Office of any designated State having made a
declaration under subparagraph (a), promptly after such
publication but not before the expiration of 18 months from the
priority date.
(4) (a) Any State whose national law provides for prior art effect of its
patents as from a date before publication, but does not equate for prior art
purposes the priority date claimed under the Paris Convention for the
Protection of Industrial Property to the actual filing date in that State, may
declare that the filing outside that State of an international application
designating that State is not equated to an actual filing in that State for
prior art purposes.
(b) Any State making a declaration under subparagraph (a) shall to that
extent not be bound by the provisions of Article 11 (3).
(c) Any State making a declaration under subparagraph (a) shall, at the
same time, state in writing the date from which, and the conditions
under which, the prior art effect of any international application
designating that State becomes effective in that State. This statement
may be modified at any time by notification addressed to the Director
General.
(5) Each State may declare that it does not consider itself bound by Article
59. With regard to any dispute between any Contracting State having made such
a declaration and any other Contracting State, the provisions of Article 59
shall not apply.
(6) (a) Any declaration made under this Article shall be made in writing. It
may be made at the time of signing this Treaty, at the time of depositing the
instrument of ratification or accession, or, except in the case referred to in
paragraph (5), at any later time by notification addressed to the Director
General. In the case of the said notification, the declaration shall take
effect six months after the day on which the Director General has received the
notification, and shall not affect international applications filed prior to
the expiration of the said six-month period.
(b) Any declaration made under this Article may be withdrawn at any time
by notification addressed to the Director General. Such withdrawal
shall take effect three months after the day on which the Director
General has received the notification and, in the case of the
withdrawal of a declaration made under paragraph (3), shall not affect
international applications filed prior to the expiration of the said
three-month period.
(7) No reservations to this Treaty other than the reservations under
paragraphs (1) to (5) are permitted.
Article 65
Gradual Application
(1) If the agreement with any International Searching or Preliminary Examining
Authority provides, transitionally, for limits on the number or kind of
international applications that such Authority undertakes to process, the
Assembly shall adopt the measures necessary for the gradual application of
this Treaty and the Regulations in respect of given categories of
international applications. This provision shall also apply to requests for an
international-type search under Article 15 (5).
(2) The Assembly shall fix the dates from which, subject to the provision of
paragraph (1), international applications may be filed and demands for
international preliminary examination may be submitted. Such dates shall not
be later than six months after this Treaty has entered into force according to
the provisions of Article 63 (1), or after Chapter II has become applicable
under Article 63 (3), respectively.
Article 66
Denunciation
(1) Any Contracting State may denounce this Treaty by notification addressed
to the Director General.
(2) Denunciation shall take effect six months after receipt of the said
notification by the Director General. It shall not affect the effects of the
international application in the denouncing State if the international
application was filed, and, where the denouncing State has been elected, the
election was made, prior to the expiration of the said six-month period.
Article 67
Signature and Languages
(l) (a) This Treaty shall be signed in a single original in the English
and French languages, both texts being equally authentic.
(b) Official texts shall be established by the Director General, after
consultation with the interested Governments, in the German, Japanese,
Portuguese, Russian and Spanish languages, and such other languages as
the Assembly may designate.
(2) This Treaty shall remain open for signature at Washington until December
31, 1970.
Article 68
Depositary Functions
(l) The original of this Treaty, when no longer open for signature, shall
be deposited with the Director General.
(2) The Director General shall transmit two copies, certified by him, of this
Treaty and the Regulations annexed hereto to the Governments of all States
party to the Paris Convention for the Protection of Industrial Property and,
on request, to the Government of any other State.
(3) The Director General shall register this Treaty with the Secretariat of
the United Nations.
(4) The Director General shall transmit two copies, certified by him, of any
amendment to this Treaty and the Regulations to the Governments of all
Contracting States and, on request, to the Government of any other State.
Article 69
Notifications
The Director General shall notify the Governments of all States party to the
Paris Convention for the Protection of Industrial Property of:
(i) signatures under Article 62,
(ii) deposits of instruments of ratification or accession under Article 62,
(iii) the date of entry into force of this Treaty and the date from
which Chapter II is applicable in accordance with Article 63
(3),
(iv) any declarations made under Article 64 (1) to (5),
(v) withdrawals of any declarations made under Article 64 (6) (b),
(vi) denunciations received under Article 66, and
(vii) any declarations made under Article 31 (4). Regulations under the
Patent Cooperation Treaty
Adopted on June 19, 1970, and amended on April 14, 1978, on October 3, 1978,
on May 1, 1979, on June 16, 1980, on September 26, 1980, on July 3, 1981, on
September 10, 1982, on October 4, 1983, on February 3, 1984, on September 28,
1984 and on October 1, 1985.
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 any person
who has the right to practice before international authorities as defined in
Article 49 and, unless the contrary clearly follows from the wording or the
nature of the provision, or the context in which the word is used, also the
common representative referred to in Rule 4.8. 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.
PART B
Rules Concerning Chapter I of the Treaty
Rule 3
The Request (Form)
3.1 Printed Form
The request shall be made on a printed form. 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 printed form shall contain a list which, when filled in, will
show:
(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, claims,
drawings, abstract);
(ii) whether or not 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 document relating to the
payment of fees, and 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 on the front page of the pamphlet and in the Gazette;
in exceptional cases, the applicant may suggest more than one
figure.
(b) The list shall be filled in by the applicant, failing which the
receiving Office shall fill it in and make the necessary annotations,
except that the number referred to in paragraph (a) (iii) shall not be
filled in by the receiving Office. 3.4 Particulars
Subject to Rule 3.3, particulars of the printed form 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) the designation of States,
(v) 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) a reference to any earlier international, international-type or
other search,
(iii) choices of certain kinds of protection,
(iv) an indication that the applicant wishes to obtain a regional
patent and the names of the designated States for which he
wishes to obtain such a patent,
(v) a reference to a parent application or parent patent.
(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 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.
(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. It is recommended to indicate any telegraphic and teleprinter
address and telephone number of the agent or common representative or,
in the absence of the designation of an agent or common representative
in the request, of the applicant first named in the request.
(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 the name, address, 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. 4.6 The Inventor
(a) Where Rule 4.1 (a) (v) 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
If agents are designated, the request shall so indicate, and shall state their
names and addresses. 4.8 Representation of Several Applicants Not Having a
Common Agent
(a) If there is more than one applicant and the request does not refer to
an agent representing all the applicants ("a common agent"), the
request shall designate one of the applicants who is entitled to file
an international application according to Article 9 as their common
representative.
(b) If there is more than one applicant and the request does not refer to
an agent representing all the applicants and it does not comply with
the requirement of designating one of the applicants as provided in
paragraph (a), the common representative shall be the applicant first
named in the request who is entitled to file an international
application with the receiving Office with which the international
application was filed (Rule 19.1 (a)). 4.9 Designation of States
Contracting States shall be designated in the request by their names. 4.10
Priority Claim
(a) The declaration referred to in Article 8 (1) 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) when the earlier application is not a regional or an
international application, the country in which it was filed;
when the earlier application is a regional or an international
application, the country or countries for which it was filed,
(ii) the date on which it was filed,
(iii) the number under which it was filed, and
(iv) when the earlier application is a regional or an international
application, the national Office or intergovernmental
organization with which it was filed.
(b) If the request does not indicate both
(i) when the earlier application is not a regional or an
international application, the country in which it was filed;
when the earlier application is a regional or an international
application, at least one country for which it was filed, and
(ii) the date on which it was filed, the priority claim shall, for
the purposes of the procedure under the Treaty, be considered
not to have been made except where, resulting from an obvious
error, the indication of the said country or the said date is
missing or is erroneous; whenever the identity or correct
identity of the said country, or the said date or the correct
date, may be established on the basis of the copy of the
earlier application which reaches the receiving Office before
it transmits the record copy to the International Bureau, the
error shall be considered as an obvious error.
(c) If the application number of the earlier application is not indicated
in the request but is furnished by the applicant to the
International Bureau or to the receiving Office prior to the
expiration of the 16th month from the priority date, it shall be
considered by all designated States to have been furnished in time.
(d) If the filing date of the earlier application as indicated in the
request does not fall within the period of one year preceding the
international filing date, the receiving Office, or, if the receiving
Office has failed to do so, the International Bureau, shall invite the
applicant to ask either for the cancellation of the declaration made
under Article 8 (1) or, if the date of the earlier application was
indicated erroneously, for the correction of the date so indicated. If
the applicant fails to act accordingly within 1 month from the date of
the invitation, the declaration made under Article 8 (1) shall be
cancelled ex officio.
(e) Where the priorities of several earlier applications are claimed, the
provisions of paragraphs (a) to (d) shall apply to each of them. 4.11
Reference to Earlier Search
If an international or international-type search has been requested on an
application under Article 15 (5) or if the applicant wishes the International
Searching Authority to base the international search report wholly or in part
on the results of a search, other than an international or international-type
search, made by the national Office or intergovernmental organization which is
the International Searching Authority competent for the international
application, the request shall contain a reference to that fact. Such
reference shall either identify the application (or its translation, as the
case may be) in respect of which the earlier search was made by indicating
country, date and number, or the said search by indicating, where applicable,
date and number of the request for such search. 4.12 Choice of Certain Kinds
of Protection
(a) If the applicant wishes his international application to be treated,
in any designated State, as an application not for a patent but for
the grant of any of the other kinds of protection specified in Article
43, he shall so indicate in the request. For the purposes of this
paragraph, Article 2 (ii) shall not apply.
(b) In the case provided for in Article 44, the applicant shall indicate
the two kinds of protection sought, or, if one of two kinds of
protection is primarily sought, he shall indicate which kind is sought
primarily and which kind is sought subsidiarily. 4.13 Identification
of Parent Application or Parent Grant
If the applicant wishes his international application to be treated, in any
designated State, as an application for a patent or certificate of addition,
inventor's certificate of addition, or utility certificate of addition, he
shall identify the parent application or the parent patent, parent inventor's
certificate, or parent utility certificate to which the patent or certificate
of addition, inventor's certificate of addition, or utility certificate of
addition, if granted, relates. For the purposes of this paragraph, Article 2
(ii) shall not apply. 4.14 Continuation or Continuation in Part
If the applicant wishes his international application to be treated, in any
designated State, as an application for a continuation or a
continuation-in-part of an earlier application, he shall so indicate in the
request and shall identify the parent application involved. 4.15 Signature
The request shall be signed by the applicant. 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 Additional
Matter
(a) The request shall contain no matter other than that specified in
Rules 4.1 to 4.16, 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 4.16 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.
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 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 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 request, 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) The margins of the international application, when submitted, must be
completely blank. 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 placed at the top of the sheet, in the middle,
but not 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 on the left side, to the right of the
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 Japanese language may, when
necessary, be written by hand or drawn.
(c) The typing shall be 13/4-spaced.
(d) All text matter shall be in characters the capital letters of which
are not less than 0.21 cm high, and shall be in a dark, indelible
color, satisfying the requirements specified in Rule 11.2.
(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
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,
corrected pages, amended claims - submitted after the filing of the
international application.
Rule 12
Language of the International Application 12.1 Admitted Languages
(a) Any international application shall be filed in the language, or one
of the languages, specified in the agreement concluded between the
International Bureau and the International Searching Authority
competent for the international searching of that application,
provided that, if the agreement specifies several languages, the
receiving Office may prescribe among the specified languages that
language in which or those languages in one of which the international
application must be filed.
(b) If the international application is filed in a language other than the
language in which it is to be published, the request may,
notwithstanding paragraph (a), be filed in the language of
publication.
(c) Subject to paragraph (d), where the official language of the receiving
Office is one of the languages referred to in Rule 48.3 (a) but is a
language not specified in the agreement referred to in paragraph (a),
the international application may be filed in the said official
language. If the international application is filed in the said
official language, the search copy transmitted to the International
Searching Authority under Rule 23.1 shall be accompanied by a
translation into the language, or one of the languages, specified in
the agreement referred to in paragraph (a); such translation shall be
prepared under the responsibility of the receiving Office.
(d) Paragraph (c) shall apply only where the International Searching
Authority has declared, in a notification addressed to the
International Bureau, that it accepts to search international
applications on the basis of the translation referred to in paragraph
(c). 12.2 Language of Changes in the International Application
Any changes in the international application, such as amendments and
corrections, shall, subject to Rules 46.3 and 66.9 be in the same language as
the said application.
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 Claims of Different Categories
Rule 13.1 shall be construed as permitting, in particular, one of the
following three possibilities:
(i) in addition to an independent claim for a given product, the inclusion
in the same international application of an independent claim for a
process specially adapted for the manufacture of the said product, and
the inclusion in the same international application of an independent
claim for a use of the said product, or
(ii) in addition to an independent claim for a given process, the inclusion
in the same international application of an independent claim for an
apparatus or means specifically designed for carrying out the said
process, or
(iii) in addition to an independent claim for a given product, the
inclusion in the same international application of an independent
claim for a process specially adapted for the manufacture of the
product, and the inclusion in the same international application of an
independent claim for an apparatus or means specifically designed for
carrying out the process. 13.3 Claims of One and the Same Category
Subject to Rule 13.1, it shall be permitted to include in the same
international application two or more independent claims of the same category
(i.e., product, process, apparatus, or use) which cannot readily be covered by
a single generic 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
Microbiological Inventions 13bis.1 Definition
For the purposes of this Rule, "reference to a deposited microorganism" means
particulars given in an international application with respect to the deposit
of a microorganism with a depositary institution or to the microorganism so
deposited.
13bis.2 References (General) Any reference to a deposited
microorganism 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 a deposited microorganism shall indicate,
(i) the name and address of the depositary institution with which
the deposit was made;
(ii) the date of deposit of the microorganism 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 a deposited microorganism or failure
to include, in a reference to a deposited microorganism, 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 of
Funishing Indications
If any of the indications referred to in Rule 13bis.3 (a) is not included in a
reference to a deposited microorganism in the international application as
filed but is furnished by the applicant to the International Bureau within 16
months after the priority date, the indication shall be considered by any
designated Office to have been furnished in time unless its national law
requires the indication to be furnished at an earlier time in the case of a
national application and the International Bureau has been notified of such
requirement pursuant to Rule 13bis.7 (a) (ii), provided that the
International Bureau 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. In the event that the applicant makes a request for
early publication under Article 21 (2) (b), however, any designated Office may
consider any indication not furnished by the time such request is made as not
having been furnished in time. Irrespective of whether the applicable time
limit under the preceding sentences has been observed, the
International Bureau shall notify the applicant and the designated Offices of
the date on which it has received any indication not included in the
international application as filed. The International Bureau shall indicate
that date in the international publication of the international application if
the indication has been furnished to it before the completion of technical
preparations for international publication. 13bis.5 References and Indications
for the Purposes of One or More Designated States; Different Deposits for
Different Designated States; Deposits with Depository Institutions other than
Those Notified
(a) A reference to a deposited microorganism 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 microorganism may be made for
different designated States.
(c) Any designated Office shall be entitled to disregard a deposit made
with a depository institution other than one notified by it under Rule
13bis.7 (b). 13bis.6 Furnishing of Samples
(a) Where the international application contains a reference to a
deposited microorganism, the applicant shall, upon the request of the
International Searching Authority or the International Preliminary
Examining Authority, authorize and assure the furnishing of a sample
of that microorganism by the depository institution to the said
Authority, provided that the said Authority has notified the
International Bureau that it may require the furnishing of samples and
that such samples will be used solely for the purposes of
international search or international preliminary examination, as the
case may be, and such notification has been published in the Gazette.
(b) Pursuant to Articles 23 and 40, no furnishing of samples of the
deposited microorganism 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 microorganism may take place, once the said acts have been
performed. Notwithstanding the previous provision, the furnishing of
samples from the deposited microorganism may take place under the
national law applicable for 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 a deposited microorganism 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 after the priority date.
(b) Each national Office shall notify the International Bureau of the
depositary institutions with which the national law permits deposits
of micro-organisms 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 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 and the due date of the transmittal fee, if any, shall be
fixed by the receiving Office.
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) a "basic fee," and
(ii) as many "designation fees" as there are national patents and
regional patents sought by the applicant in the international
application, except that, where Article 44 applies in respect
of a designation, only one designation fee shall be due. 15.2
Amounts
(a) The amounts of the basic fee and of the designation fee are as set out
in the Schedule of Fees.
(b) The amounts of the basic fee and of the designation fee shall be
established, for each receiving Office which, under Rule 15.3,
prescribes the payment of those fees in a currency or currencies other
than Swiss currency, by the Director General after consultation with
that Office and in the currency or currencies prescribed by that
Office ("prescribed currency"). The amounts in each prescribed
currency shall be the equivalent, in round figures, of the amounts in
Swiss currency set out in the Schedule of Fees. They shall be
published in the Gazette.
(c) Where the amounts of the fees set out in the Schedule of Fees are
changed, the corresponding amounts in the prescribed currencies shall
be applied from the same date as the amounts set out in the amended
Schedule of Fees.
(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 interested
Office 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 for that Office from that date. 15.3 Mode of payment
The international fee shall be payable in the currency or currencies
prescribed by the receiving Office, it being understood that, when transferred
by the receiving Office to the International Bureau, the amount transferred
shall be freely convertible into Swiss currency. 15.4 Time of Payment
(a) The basic fee shall be paid within one month from the date of receipt
of the international application.
(b) The designation fee shall be paid:
(i) where the international application does not contain a priority
claim under Article 8, within one year from the date of receipt
of the international application,
(ii) where the international application contains a priority claim
under Article 8, within one year from the priority date or
within one month from the date of receipt of the international
application if that month expires after the expiration of one
year from the priority date.
(c) Where the basic fee or the designation fee is paid later than the date
on which the international application was received and where the
amount of that fee is, in the currency in which it is payable, higher
on the date of payment ("the higher amount") than it was on the date
on which the international application was received ("the lower
amount"),
(i) the lower amount shall be due if the fee is paid within one
month from the date of receipt of the international
application,
(ii) the higher amount shall be due if the fee is paid later than
one month from the date of receipt of the international
application.
(d) If, on February 3, 1984, paragraphs (a) and (b) are not compatible
with the national law applied by the receiving Office and as long as
they continue to be not compatible with that law, the basic fee shall
be paid on the date of receipt of the international application and
the designation fee shall be paid within one year from the priority
date. 15.6 Refund
(a) The international fee shall be refunded to the applicant if the
determination under Article 11 (1) is negative.
(b) In no other case shall the international fee be refunded.
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 or currencies prescribed by that
Office ("the 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 ("the
fixed currency or currencies"), 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 ("the headquarters
currency"). The amount of the search fee in any receiving Office
currency, other than the fixed currency or currencies, shall be
established by the Director General after consultation with that
Office. 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 published in the
Gazette.
(c) Where the amount of the search fee in the headquarters currency is
changed, the corresponding amounts in the receiving Office currencies,
other than the fixed currency or currencies, shall be applied from the
same date as the changed amount in the headquarters currency.
(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 interested receiving
Office 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) Where, in respect of the payment of the search fee in a receiving
Office currency, other than the fixed currency or currencies, the
amount actually received by the International Searching Authority in
the headquarters currency is 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 of payment of the search fee, the provisions of Rule
15.4 relating to the basic fee shall apply. 16.2 Refund
The search fee shall be refunded to the applicant if the determination under
Article 11 (1) is negative. 16.3 Partial Refund
Where the international application claims the priority of an earlier
international application which has been the subject of an international
search by the same International Searching Authority, that Authority shall
refund the search fee paid in connection with the later international
application to the extent and under the conditions provided for in the
agreement under Article 16 (3) (b), if the international search report on the
later international application could wholly or partly be based on the results
of the international search effected on the earlier international application.
Rule 16bis
Advancing Fees by the International Bureau 16bis.1 Guarantee by the
International Bureau
(a) Where, by the time they are due under Rule 14.1 (b), Rule 15.4 (a) and
Rule 16.1 (f), the receiving Office finds that in respect of an
international application no fees were paid to it by the applicant, or
that the amount paid to it by the applicant is less than what is
necessary to cover the transmittal fee, the basic fee and the search
fee, the receiving Office shall charge the amount required to cover
those fees, or the missing part thereof, to the International Bureau
and shall consider the said amount as if it had been paid by the
applicant at the due time.
(b) Where, by the time they are due under Rule 15.4 (b) the receiving
Office finds that in respect of an international application the
payment made by the applicant is insufficient to cover the designation
fees necessary to cover all the designations, the receiving Office
shall charge the amount required to cover those fees to the
International Bureau and shall consider that amount as if it had been
paid by the applicant at the due time.
(c) The International Bureau shall transfer from time to time to each
receiving Office an amount which is expected to be necessary for
covering any charges that the receiving Office has to make under
paragraphs (a) and (b). The amount and the time of such transfers
shall be determined by each receiving Office according to its own
wish. The charging of any amount under paragraphs (a) and (b) shall
not require any advance notice to, or any agreement by, the
International Bureau. 16bis.2 Obligations of the Applicant, Etc.
(a) The International Bureau shall promptly notify the applicant of any
amount by which it was charged under Rule 16bis.1 (a) and (b) and
shall invite him to pay to it, within one month from the date of the
notification, the said amount augmented by a surcharge of 50%,
provided that the surcharge will not be less, and will not be more,
than the amounts indicated in the Schedule of Fees. The notification
may refer to the charges made both under Rule 16bis.1 (a) and (b) or,
at the discretion of the International Bureau, there may be two
separate notifications, one referring to charges made under Rule
16bis.1 (a), the other referring to charges made under Rule 16bis.1
(b).
(b) If the applicant fails to pay, within the said time limit, to the
International Bureau the amount claimed, or pays less than what is
needed to cover the transmittal fee, the basic fee, the search fee,
one designation fee and the surcharge, the International Bureau shall
notify the receiving Office accordingly and the receiving Office shall
declare the international application withdrawn under Article 14 (3)
(a) and the receiving Office and the International Bureau shall
proceed as provided in Rule 29.
(c) If the applicant pays, within the said time limit, to the
International Bureau an amount which is more than what is needed to
cover the fees and surcharge referred to in paragraph (b) but less
than what is needed to cover all the designations maintained, the
International Bureau shall notify the receiving Office accordingly and
the receiving Office shall apply the amount paid in excess of what is
needed to cover the fees and surcharge referred to in paragraph (b) in
an order which shall be established as follows:
(i) where the applicant indicates to which designation or
designations the amount is to be applied, it shall be applied
accordingly but, if the amount received is insufficient to
cover the designations indicated, it shall be applied to as
many designations as are covered by it in the order chosen by
the applicant in indicating the designations;
(ii) to the extent that the applicant has not given the indications
under item (i), the amount or the balance thereof shall be
applied to the designations in the order in which they appear
in the international application;
(iii) where the designation of a State is for the purposes of a
regional patent and provided that the required designation fee
is, under the preceding provisions, available for that
designation, the designation of any further States for which
the same regional patent is sought shall be considered as
covered by that fee.
The receiving Office shall declare any designation not covered by the amount
paid withdrawn under Article 14 (3) (b) and the receiving Office and the
International Bureau shall proceed as provided in Rule 29.
Rule 17
The Priority Document 17.1 Obligation to Submit Copy of Earlier National
Application
(a) Where the priority of an earlier national application is claimed under
Article 8 in the international application, a copy of the said
national 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, be
submitted by the applicant to the International Bureau or to the
receiving Office not later than 16 months after the priority date or,
in the case referred to in Article 23 (2), not later than at the time
the processing or examination is requested.
(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 transmit the priority document to the
International Bureau. Such request shall be made not later than the
expiration of the applicable time limit referred to under paragraph
(a) 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.
17.2 Availability of Copies
(a) The International Bureau shall, at the specific request of the
designated Office, promptly but not before the expiration of the time
limit fixed in Rule 17.1 (a), furnish a copy of the priority document
to that Office. No such Office shall ask the applicant himself to
furnish it with a copy, except where it requires the furnishing of a
copy of the priority document together with a certified translation
thereof. The applicant shall not be required to furnish a certified
translation to the designated Office before the expiration of the
applicable time limit under Article 22.
(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) Paragraphs (a) and (b) shall apply also to any earlier international
application whose priority is claimed in the subsequent international
application.
Rule 18
The Applicant 18.1 Residence
(a) Subject to the provisions of paragraph (b), the question whether an
applicant is a resident of the Contracting State of which he claims to
be a resident shall depend on the national law of that State and shall
be decided by the receiving Office.
(b) In any case, possession of a real and effective industrial or
commercial establishment in a Contracting State shall be considered
residence in that State. 18.2 Nationality
(a) Subject to the provisions of paragraph (b), the question whether an
applicant is a national of the Contracting State of which he claims to
be a national shall depend on the national law of that State and shall
be decided by the receiving Office.
(b) In any case, a legal entity constituted according to the national law
of a Contracting State shall be considered a national of that State.
18.3 Several Applicants: Same for All Designated States
If all the applicants are applicants for the purposes of all designated
States, 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 Several Applicants: Different for Different Designated States
(a) The international application may indicate different applicants for
the purposes of different designated States, provided that, in respect
of each designated State, at least one of the applicants indicated for
the purposes of that State is entitled to file an international
application according to Article 9.
(b) If the condition referred to in paragraph (a) is not fulfilled in
respect of any designated State, the designation of that State shall
be considered not to have been made.
(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, with the
national Office of or acting for the Contracting State of which the
applicant is a resident or with the national Office of or acting for
the Contracting State of which the applicant is a national.
(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 Several Applicants
If there are several applicants, the requirements of Rule 19.1 shall be
considered to be met if the national Office with which the international
application is filed is the national Office of or acting for a Contracting
State of which at least one of the applicants is a resident or national. 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.
Rule 20
Receipt of the International Application 20.1 Date and Number
(a) Upon receipt of papers purporting to be an international application,
the receiving Office shall indelibly mark the date of actual receipt
in the space provided for that purpose in the request form of each
copy received and one of the numbers assigned by the
International Bureau to that Office on each sheet of each copy
received.
(b) The place on each sheet where the date or number shall be marked, and
other details, shall be specified in the Administrative Instructions.
20.2 Receipt on Different Days
(a) In cases where all the sheets pertaining to the same purported
international application are not received on the same day by the
receiving Office, that Office shall correct the date marked on the
request (still leaving legible, however, the earlier date or dates
already marked) so that it indicates the day on which the papers
completing the international application were received, provided that
(i) where no invitation under Article 11 (2) (a) to correct was
sent to the applicant, the said papers are received within 30
days from the date on which sheets were first received;
(ii) where an invitation under Article 11 (2) (a) to correct was
sent to the applicant, the said papers are received within the
applicable time limit under Rule 20.6;
(iii) in the case of Article 14 (2), the missing drawings are
received within 30 days from the date on which the incomplete
papers were filed;
(iv) the absence or later receipt of any sheet containing the
abstract or part thereof shall not, in itself, require any
correction of the date marked on the request.
(b) Any sheet received on a date later than the date on which sheets were
first received shall be marked by the receiving Office with the date
on which it was received. 20.3 Corrected International Application
In the case referred to in Article 11 (2) (b), the receiving Office shall
correct the date marked on the request (still leaving legible, however, the
earlier date or dates already marked) so that it indicates the day on which
the last required correction was received. 20.3bis Manner of Carrying Out
Corrections
The Administrative Instructions prescribe the manner in which corrections
required under Article 11 (2) (a) shall be presented by the applicant and the
manner in which they shall be entered in the file of the international
application. 20.4 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
comply with 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 his
identity 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. 20.5 Positive
Determination
(a) If the determination under Article 11 (1) is positive, the receiving
Office shall stamp in the space provided for that purpose in the
request form the name of the receiving Office and the words "PCT
International Application," or "Demande internationale PCT." If the
official language of the receiving Office is neither English nor
French, the words "International Application" or "Demande
internationale" may be accompanied by a translation of these words in
the official language of the receiving Office.
(b) The copy whose request sheet 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). 20.6 Invitation to Correct
(a) The invitation to correct under Article 11 (2) shall specify the
requirement provided for under Article 11 (1) which, in the opinion of
the receiving Office, has not been fulfilled.
(b) The receiving Office shall promptly mail the invitation to the
applicant and shall fix a time limit, reasonable under the
circumstances of the case, for filing the correction. The time limit
shall not be less than 10 days, and shall not exceed 1 month, from the
date of the invitation. If such time limit expires after the
expiration of 1 year from the filing date of any application whose
priority is claimed, the receiving Office may call this circumstance
to the attention of the applicant. 20.7 Negative Determination
If the receiving Office does not, within the prescribed time limit, receive a
reply to its invitation to correct, or if the correction offered by the
applicant still does not fulfill the requirements provided for under Article
11 (1), it shall:
(i) promptly notify the applicant that his 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. 20.8 Error by the Receiving Office
If the receiving Office later discovers, or on the basis of the applicant's
reply realizes, that it has erred in issuing an invitation to correct since
the requirements provided for under Article 11 (1) were fulfilled when the
papers were received, it shall proceed as provided in Rule 20.5. 20.9
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 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.
Rule 22
Transmittal of the Record Copy 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 20.5 (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 20.5 (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). 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 23.1 Procedure
(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.
(b) If the International Bureau has not received, within 10 days from the
receipt of the record copy, information from the International
Searching Authority that that Authority is in possession of the search
copy, the International Bureau shall promptly transmit a copy of the
international application to the International Searching Authority.
Rule 24
Receipt of the Record Copy by the International Bureau 24.2 Notification of
Receipt of the Record Copy
(a) Subject to the provisions of paragraph (b), the International Bureau
shall promptly notify the applicant, the receiving Office, the
International Searching Authority, and all designated Offices, 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, the name of the applicant, and the name of
the receiving Office, and shall indicate the filing date of any
earlier application whose priority is claimed. The notification sent
to the applicant shall also contain the list of the designated Offices
which have been notified under this paragraph, and shall, in respect
of each designated Office, indicate any applicable time limit under
Article 22 (3).
(b) 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 Time Limit for Check
(a) The receiving Office shall issue the invitation to correct provided
for in Article 14 (1) (b) as soon as possible, preferably within 1
month from the receipt of the international application.
(b) If the receiving Office issues an invitation to correct the defect
referred to in Article 14 (1) (a) (iii) or (iv) (missing title or
missing abstract), it shall notify the International Searching
Authority accordingly. 26.2 Time Limit for Correction
The time limit referred to in Article 14 (1) (b) shall be reasonable under the
circumstances and shall be fixed in each case by the receiving Office. It
shall not be less than 1 month from the date of the invitation to correct. It
may be extended by the receiving Office at any time before a decision is
taken. 26.3 Checking of Physical Requirements under Article 14 (1) (a)
(v) The physical requirements referred to in Rule 11 shall be checked
only to the extent that compliance therewith is necessary for the purpose of
reasonably uniform international publication. 26.3bis Invitation to Correct
Defects under Article 14 (1) (b) The receiving Office shall not be required to
issue the invitation to correct a defect under Article 14 (1) (a) (v) where
the physical requirements referred to in Rule 11 are complied with to the
extent necessary for the purpose of reasonably uniform international
publication. 26.4 Procedure
(a) Any correction 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 record copy without
adversely affecting the clarity and the direct reproducibility of the
sheet on to which the correction is to be transferred; otherwise, 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
(a) The receiving Office shall decide whether the applicant has submitted
the correction within the 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. 26.6. Missing Drawings
(a) If, as provided in Article 14 (2), the international application
refers to drawings which in fact are not included in that application,
the receiving Office shall so indicate in the said application.
(b) The date on which the applicant receives the notification provided for
in Article 14 (2) shall have no effect on the time limit fixed under
Rule 20.2 (a) (iii).
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 basic fee part
of the international fee (Rule 15.1 (i)), and the search fee
(Rule 16).
(b) For the purposes of Article 14 (3) (a) and (b), "the fee prescribed
under Article 4 (2)" means the designation fee part of the
international fee (Rule 15.1 (ii)).
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 or Designations Considered Withdrawn under
Article 14 (1), (3) or (4)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)), 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 the interested
designated Offices;
(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.
(b) If the receiving Office declares under Article 14 (3) (b) (failure to
pay the prescribed designation fee under Rule 27.1 (b)) that the
designation of any given State is considered withdrawn, the receiving
Office shall promptly notify both the applicant and the
International Bureau of the said declaration. The International Bureau
shall in turn notify the interested national Office. 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)
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 1
month from the notification.
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 Withdrawal of the International Application or of Designations 32.1
Withdrawals
(a) The applicant may withdraw the international application prior to the
expiration of 20 months from the priority date except as to any
designated State in which national processing or examination has
already started. He may withdraw the designation of any designated
State prior to the date on which processing or examination may start
in that State.
(b) Withdrawal of the designation of all designated States shall be
treated as withdrawal of the international application.
(c) Withdrawal shall be effected by a signed notice from the applicant to
the International Bureau or to the receiving Office. In the case of
Rule 4.8 (b), the notice shall require the signature of all the
applicants.
(e) There shall be no international publication of the international
application or of the designation, as the case may be, if the notice
effecting withdrawal reaches the International Bureau before the
technical preparations for publication have been completed.
Rule 32bis
Withdrawal of the Priority Claim 32bis.1 Withdrawals
(a) The applicant may withdraw the priority claim made in the
international application under Article 8 (1) at any time before the
international publication of the international application.
(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 them.
(c) Where the withdrawal of the priority claim, or, in the case of more
than one such claim, the withdrawal of any of them, causes a change in
the priority date of the international application, any time limit
which is computed from the original priority date and which has not
already expired shall be computed from the priority date resulting
from that change. In the case of the time limit of 18 months 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
effecting withdrawal reaches the International Bureau during the
period of 15 days preceding the expiration of that time limit.
(d) For any withdrawal under paragraph (a), the provisions of Rule 32.1
(c) shall apply mutatis mutandis.
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 posterior to
the international filing date.
(c) Any published application or any patent whose publication date is
later 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 Soviet Union,
Switzerland (in French and German languages only), the United
Kingdom, and the United States of America,
(ii) the patents issued by the Federal Republic of Germany,
(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 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
Offenlegunschrift 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, Russian or Spanish is
entitled not to include in its documentation those patent documents of
Japan and the 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 6 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.
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 at least the
minimum documentation referred to in Rule 34, properly arranged for
search purposes;
(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.
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.
Rule 38
Missing 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
(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 (in the language in which the international application is
published). In the latter case, it shall invite the applicant to
comment on the abstract established by it within 1 month from the date
of the invitation.
(b) The definitive contents of the abstract shall be determined by the
International Searching Authority.
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
The invitation to pay additional fees provided for in Article 17 (3) (a) shall
specify the reasons for which the international application is not considered
as complying with the requirement of unity of invention and shall indicate the
amount to be paid. 40.2 Additional Fees
(a) The amount of the additional fee due for searching under Article 17
(3) (a) shall be determined by the competent International Searching
Authority.
(b) The additional fee due for searching under Article 17 (3) (a) shall be
payable direct to the International Searching Authority.
(c) Any applicant may pay the additional fee 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 fee is
excessive. Such protest shall be examined by a three- member board or
other special instance of the International Searching Authority or any
competent higher authority, which, to the extent that it finds the
protest justified, shall order the total or partial reimbursement to
the applicant of the additional fee. 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 three-member board, special instance or competent higher
authority, referred to in paragraph (c), shall not comprise any person
who made the decision which is the subject of the protest. 40.3 Time
Limit
The time limit provided for in Article 17 (3) (a) shall be fixed, in each
case, according to the circumstances of the case, by the International
Searching Authority; it shall not be shorter than 15 or 30 days, respectively,
depending on whether the applicant's address is in the same country as or in a
different country from that in which the International Searching Authority is
located, and it shall not be longer than 45 days, from the date of the
invitation.
Rule 41
Earlier Search Other than International Search 41.1 Obligation to Use Results;
Refund of Fee
If reference has been made in the request, in the form provided for in Rule
4.11, to an international-type search carried out under the conditions set out
in Article 15 (5) or to a search other than an international or
international-type search, the International Searching Authority shall, to the
extent possible, use the results of the said search in establishing the
international search report on the international application. The
International Searching Authority shall refund the search fee, to the extent
and under the conditions provided for in the agreement under Article 16 (3)
(b) or in a communication addressed to and published in the Gazette by the
International Bureau, if the international search report could wholly or
partly be based on the results of the said 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, the name of the receiving Office, 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. 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 published. 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. 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. 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 (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 Signature
The international search report shall be signed by an authorized officer of
the International Searching Authority. 43.9 No Other Matter
The international search report shall contain no matter other than that
enumerated in Rules 33.1 (b) and (c), 43.1, 2, 3, 5, 6, 7 and 8, and 44.2 (a)
and (b), and the indication referred to in Article 17 (2) (b). In particular,
it shall contain no expressions of opinion, reasoning, arguments, or
explanations.
(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
The invitation to pay additional fees provided for in Article 17 (3) (a) shall
specify the reasons for which the international application is not considered
as complying with the requirement of unity of invention and shall indicate the
amount to be paid. 40.2 Additional Fees
(a) The amount of the additional fee due for searching under Article 17
(3) (a) shall be determined by the competent International Searching
Authority.
(b) The additional fee due for searching under Article 17 (3) (a) shall be
payable direct to the International Searching Authority.
(c) Any applicant may pay the additional fee 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 fee is
excessive. Such protest shall be examined by a three- member board or
other special instance of the International Searching Authority or any
competent higher authority, which, to the extent that it finds the
protest justified, shall order the total or partial reimbursement to
the applicant of the additional fee. 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 three-member board, special instance or competent higher
authority, referred to in paragraph (c), shall not comprise any person
who made the decision which is the subject of the protest. 40.3 Time
Limit
The time limit provided for in Article 17 (3) (a) shall be fixed, in each
case, according to the circumstances of the case, by the International
Searching Authority; it shall not be shorter than 15 or 30 days, respectively,
depending on whether the applicant's address is in the same country as or in a
different country from that in which the International Searching Authority is
located, and it shall not be longer than 45 days, from the date of the
invitation.
Rule 41
Earlier Search Other than International Search 41.1 Obligation to Use Results;
Refund of Fee
If reference has been made in the request, in the form provided for in Rule
4.11, to an international-type search carried out under the conditions set out
in Article 15 (5) or to a search other than an international or
international-type search, the International Searching Authority shall, to the
extent possible, use the results of the said search in establishing the
international search report on the international application. The
International Searching Authority shall refund the search fee, to the extent
and under the conditions provided for in the agreement under Article 16 (3)
(b) or in a communication addressed to and published in the Gazette by the
International Bureau, if the international search report could wholly or
partly be based on the results of the said 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, the name of the receiving Office, 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. 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 published. 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. 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. 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 (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 Signature
The international search report shall be signed by an authorized officer of
the International Searching Authority. 43.9 No Other Matter
The international search report shall contain no matter other than that
enumerated in Rules 33.1 (b) and (c), 43.1, 2, 3, 5, 6, 7 and 8, and 44.2 (a)
and (b), and the indication referred to in Article 17 (2) (b). In particular,
it shall contain no expressions of opinion, reasoning, arguments, or
explanations. 43.10 Form
The physical requirements as to the form of the international search report
shall be prescribed by the Administrative Instructions.
Rule 44
Transmittal of the International Search Report, Etc. 44.1 Copies of Report or
Declaration
The International Searching Authority shall, on the same day, transmit the
copy of the international search report or the declaration referred to in
Article 17(2)(a) to the International Bureau and one copy to the applicant.
44.2 Title or Abstract
(a) Subject to paragraphs (b) and (c), 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.
(b) If, at the time the international search is completed, the time limit
allowed for the applicant to comment on any suggestions of the
International Searching Authority in respect of the abstract has not
expired, the international search report shall indicate that it is
incompete as far as the abstract is concerned.
(c) As soon as the time limit referred to in paragraph (b) has expired,
the International Searching Authority shall notify the abstract
approved or established by it to the International Bureau and to the
applicant. 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.
(c) Any International Searching Authority not wishing to send copies
direct to any designated Office shall send a copy to the
International Bureau and the International Bureau shall then proceed
as provided in paragraphs (a) and (b).
(d) Any International Searching Authority may perform the obligations
referred to in (a) to (c) through another agency responsible to it.
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 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. 46.3 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 citiations 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 shall be required to submit a replacement sheet for
every sheet of the claims which, on account of an amendment or
amendments under Article 19, differs from the sheet originally filed.
The letter accompanying he replacement sheets shall draw attention to
the differences between the replaced sheets and the replacement
sheets. To the extent that any amendment results in the cancellation
of an entire sheet, that amendment shall be communicated in a letter.
Rule 47
Communication to Designated Offices 47.1 Procedure
(a) The communication provided for in Article 20 shall be effected by the
International Bureau.
(b) Such communication shall be effected promptly after the international
publication of the international application and, in any event, by the
end of the 19th month after the priority date. Any amendment received
by the International Bureau within the time limit under Rule 46.1
which was not included in the communication 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 send a notice to the applicant
indicating the designated Offices to which the communication has been
effected and the date of such communication. Such notice shall be sent
on the same day as the communication. Each designated Office shall be
informed, separately from the communication, about the sending and the
date of mailing of the notice. The notice shall be accepted by all
designated Offices as conclusive evidence that the communication has
duly taken place on the date specified in the notice.
(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 waived the requirement provided under
Article 20, the copies of the documents which otherwise would have
been sent to that Office shall, at the request of that Office or the
applicant, be sent to the applicant at the time of the notice referred
to in paragraph (c). 47.2 Copies
(a) The copies required for communication shall be prepared by the
International Bureau.
(b) They shall be on sheets of A4 size.
(c) Except to the extent that any designated Office notifies the
International Bureau otherwise, copies of the pamphlet under Rule 48
may be used for the purposes of the communication of the international
application under Article 20. 47.3 Languages
The international application communicated under Article 20 shall be in the
language in which it is published provided that if that language is different
from the language in which it was filed it shall, on the request of the
designated Office, be communicated in either or both of these languages.
Rule 48
International Publication 48.1 Form
(a) The international application shall be published in the form of a
pamphlet.
(b) The particulars regarding the form of the pamphlet and the method of
reproduction shall be governed by the Administrative Instructions.
48.2 Contents
(a) The pamphlet 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); the publication of
the international search report in the pamphlet shall, however,
not be required to include the part of the international search
report which contains only matter referred to in Rule 43
already appearing on the front page of the pamphlet,
(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) any request for rectification referred to in the third sentence
of Rule 91.1 (f).
(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.
(c) Where a declaration under Article 17 (2) (a) 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
shall contain either the full text of the claims both as filed and as
amended or the full text of the claims as filed and specify the
amendments. 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 (for example, because of publication on the request of the
applicant as provided in Articles 21 (2) (b) and 64 (3) (c) (i)), the
pamphlet shall contain, in place of the international search report,
an indication to the effect that that report was not available and
that either the pamphlet (then also including the international search
report) will be republished or the international search report (when
it becomes available) will be separately published.
(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 pamphlet shall refer to that
fact and indicate that, should the claims be amended under Article 19,
then, promptly after such amendments, either the pamphlet (containing
the claims as amended) will be republished or a statement reflecting
all the amendments will be published. In the latter case, at least the
front page and the claims shall be republished and, 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) The Administrative Instructions shall determine the cases in which the
various alternatives referred to in paragraphs (g) and (h) shall
apply. Such determination shall depend on the volume and complexity of
the amendments and/or the volume of the international application and
the cost factors. 48.3 Languages
(a) If the international application is filed in English, French, German,
Japanese, Russian or Spanish, that application shall be published in
the language in which it was filed.
(b) If the international application is filed in a language other than
English, French, German, Japanese, Russian or Spanish, 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 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 essence of the
comments together with the translation of the International Searching
Authority or subsequently to the publication of such 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 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 (a) (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 promply publish a notice
in the Gazette reproducing the essence of such notification.
(c) If the international application or the designation of any designated
State is withdrawn under Rule 32.1, or if the priority claim is
withdrawn under Rule 32bis.1, after the technical preparations for
international publication have been completed, this fact 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, 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) 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.
(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.
(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,
(i) 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, or
(ii) disregard the said drawing if such invitation, on February 3,
1984, is not compatible with the national law applied by that
Office and as long as it continues to be not compatible with
that law.
(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 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.
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 2 months computed
from the date of the notification sent to the applicant under Rules 20.7 (i),
24.2 (b), 29.1 (a) (ii), or 29.1 (b). 51.2 Copy of the Notice
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 notice referred to in Rule 20.7 (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 (1), (2),
(6) and (7) 51bis.1 Certain National Requirements Allowed
(a) The documents referred to in Article 27 (2) (ii), or the evidence
referred to in Article 27 (6), which the applicant may be required to
furnish under the national law applicable by the designated Office
include, in particular:
(i) any document relating to the identity of the inventor,
(ii) any document relating to any transfer or assignment of the
right to the application,
(iii) any document containing an oath or declaration by the inventor
alleging his inventorship,
(iv) any document containing a declaration by the applicant
designating the inventor or alleging the right to the
application,
(v) any document containing any proof of the right of the applicant
to claim priority where he is different from the applicant
having filed the earlier application the priority of which is
claimed,
(vi) 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.
(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 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.
51bis.2 Opportunity to Comply with National Requirements
(a) Where any of the requirements referred to in Rule 51bis.1, or any
other requirement of the national law applicable by the designated
Office which that Office may apply under Article 27 (1), (2), (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.
(b) The national law applicable by the designated Office may, in
accordance with Article 27 (2) (ii), require that the applicant, upon
invitation by the designated Office, furnish a certification of the
translation of the international application by a public authority or
a sworn translator, if the designated Office deems such certification
to be necessary under the circumstances, within a time limit which
shall be reasonable under the circumstances and shall be fixed in the
invitation.
(c) If, on February 3, 1984, paragraph (a) is, with respect to the
requirements referred to in Rule 51bis. 1 (a) (iii) and (vi), (b) (i)
and (d), not compatible with the national law applied by the
designated Office and as long as it continues to be not compatible
with that law, the applicant shall have no opportunity to comply with
any of the requirements after the expiration of the time limit
applicable under Article 22. Information on such national laws shall
be 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
fulfillment 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
other 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.
(b) Copies of printed forms shall be furnished free of charge by the
receiving Offices to the applicants.
(c) The particulars of the forms shall be prescribed by the Administrative
Instructions. 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) election of States.
(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 The Agent
If an agent is designated, Rules 4.4, 4.7, and 4.16 shall apply, and Rule 4.8
shall apply mutatis mutandis. 53.6 Identification of the International
Application
The international application shall be identified by the name of the receiving
Office with which the international application was filed, the name and
address of the applicant, the title of the invention, and, where the
international filing date and the international application number are known
to the applicant, that date and that number. 53.7 Election of States
The demand shall name, among the designated States, at least one Contracting
State bound by Chapter II of the Treaty as elected State. 53.8 Signature
The demand shall be signed by the applicant.
Rule 54
The Applicant Entitled to Make a Demand 54.1 Residence and Nationality
The residence or nationality of the applicant shall, for the purposes of
Article 31 (2), be determined according to Rules 18.1 and 18.2. 54.2 Several
Applicants: Same for All Elected States
If all the applicants are applicants for the purposes of all elected States,
the right to make a demand under Article 31 (2) shall exist if at least one of
them is
(i) a resident or national of a Contracting State bound by Chapter II and
the international application has been filed as provided in Article 31
(2) (a), or
(ii) a person entitled to make a demand under Article 31 (2) (b) and the
international application has been filed as provided in the decision
of the Assembly. 54.3 Several Applicants: Different for Different
Elected States
(a) For the purposes of different elected States, different applicants may
be indicated, provided that, in respect of each elected State, at
least one of the applicants indicated for the purposes of that State
is
(i) a resident or national of a Contracting State bound by Chapter
II and the international application has been filed as provided
in Article 31 (2) (a), or
(ii) a person entitled to make a demand under Article 31 (2) (b) and
the international application has been filed as provided in the
decision of the Assembly. 54.4 Applicant Not Entitled to Make a
Demand or an Election
(a) If the applicant does not have the right or, in the case of several
applicants, if none of them has the right to make a demand under
Article 31 (2), the demand shall be considered not to have been
submitted.
(b) If the requirement under Rule 54.3 (a) is not fulfilled in respect of
any elected State, the election of that State shall be considered not
to have been made.
Rule 55
Languages (International Preliminary Examination) 55.1 The 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.
Rule 56
Later Elections 56.1 Elections Submitted Later Than the Demand
The election of States not named in the demand shall be effected by a notice
signed and submitted by the applicant, and shall identify the international
application and the demand. 56.2 Identification of the International
Application
The international application shall be identified as provided in Rule 53.6.
56.3 Identification of the Demand
The demand shall be identified by the date on which it was submitted and by
the name of the International Preliminary Examining Authority to which it was
submitted. 56.4 Form of Later Elections
The later election shall preferably be made on a printed form furnished free
of charge to applicants. If it is not made on such a form, it shall preferably
be worded as follows: "In relation to the international application filed with
....... on ........ under No ....... by ....... (applicant) (and the demand
for international preliminary examination submitted on ........ to .........),
the undersigned elects the following additional State(s) under Article 31 of
the Patent Cooperation Treaty: ........." 56.5 Language of Later Elections
The later election shall be in the language of the demand.
Rule 57
The Handling Fee 57.1 Requirement to Pay
(a) 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.
(b) Where, because of a later election or elections, the international
preliminary examination report must, in application of Article 36 (2),
be translated by the International Bureau into one or more additional
languages, a "supplement to the handling fee" shall be collected by
the International Bureau. 57.2 Amounts of the Handling Fee and the
Supplement to the Handling Fee
(a) The amount of the handling fee is as set out in the Schedule of Fees.
The amount payable in any particular case shall be the amount as so
set out, increased by as many times the same amount as the number of
languages into which the international preliminary examination report
must, in application of Article 36 (2), be translated by the
International Bureau.
(b) The amount of the supplement to the handling fee is as set out in the
Schedule of Fees. The amount payable in any particular case shall be
the amount as so set out, multiplied by the number of additional
languages referred to in Rule 57.1 (b).
(c) The amount of the handling fee shall be established, for each
International Preliminary Examining Authority which, under Rule 57.3
(c), prescribes the payment of the handling fee in a currency or
currencies other than Swiss currency, by the Director General after
consultation with that Authority and in the currency or currencies
prescribed by that Authority ("prescribed currency"). The amount in
each prescribed currency shall be the equivalent, in round figures, of
the amount of the handling fee in Swiss currency set out in the
Schedule of Fees. The amounts in the prescribed currencies shall be
published in the Gazette.
(d) Where the amount of the handling fee set out in the Schedule of Fees
is changed, the corresponding amounts in the prescribed currencies
shall be applied from the same date as the amount set out in the
amended Schedule of Fees.
(e) Where the exchange rate between Swiss currency and any prescribed
currency becomes different from the exchange rate last applied, the
Director General shall establish the new amount in the prescribed
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 the interested International
Preliminary Examining Authority 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 Authority from that date. 57.3
Time and Mode of Payment
(a) The handling fee shall be due at the time the demand is submitted.
(b) Any supplement to the handling fee shall be due at the time the later
election is submitted.
(c) The handling fee shall be payable in the currency or currencies
prescribed by the International Preliminary Examining Authority to
which the demand is submitted, it being understood that, when
transferred by that Authority to the International Bureau, it shall be
freely convertible into Swiss currency.
(d) Any supplement to the handling fee shall be payable in Swiss currency.
57.4 Failure to Pay (Handling Fee)
(a) Where the handling fee is not paid as required, the International
Preliminary Examining Authority shall invite the applicant to pay the
fee within one month from the date of the invitation.
(b) If the applicant complies with the invitation within the one month
time limit, the handling fee shall be considered as if it had been
paid on the due date.
(c) If the applicant does not comply with the invitation within the
prescribed time limit, the demand shall be considered as if it had not
been submitted. 57.5 Failure to Pay (Supplement to the Handling Fee)
(a) Where the supplement to the handling fee is not paid as required, the
International Bureau shall invite the applicant to pay the supplement
within one month from the date of the invitation.
(b) If the applicant complies with the invitation within the one month
time limit, the supplement to the handling fee shall be considered as
if it had been paid on the due date.
(c) If the applicant does not comply with the invitation within the
prescribed time limit, the later election shall be considered as if it
had not been submitted. 57.6 Refund
In no case shall the handling fee, or the supplement to the handling fee, be
refunded.
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 and the due date of the preliminary examination fee, if
any, shall be fixed by the International Preliminary Examining
Authority, provided that the said due date shall not be earlier than
the due date of the handling fee.
(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. 58.2 Failure to pay
(a) Where the preliminary examination fee fixed by the International
Preliminary Examining Authority under Rule 58.1 (b) is not paid as
required under that Rule, the International Preliminary Examining
Authority shall invite the applicant to pay the fee or the missing
part thereof within one month from the date of the invitation.
(b) If the applicant complies with the invitation within the prescribed
time limit, the preliminary examination fee will be considered as if
it had been paid on the due date.
(c) If the applicant does not comply with the invitation within the
prescribed time limit, the demand shall be considered as if it had not
been submitted. 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.
Rule 59 The Competent International Preliminary Examining Authority 59.1
Demands under Article 31 (2) (a)
For demands made under Article 31 (2) (a), each 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
its national Office, or, in the case provided for in Rule 19.1 (b), with the
national Office of another State or an intergovernmental organization acting
for the former Office, and 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. 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.
Rule 60
Certain Defects in the Demand or Elections 60.1 Defects in the Demand
(a) If the demand does not comply with the requirements specified in Rules
53 and 55, the International Preliminary Examining Authority shall
invite the applicant to correct the defects within 1 month from the
date of the invitation.
(b) If the applicant complies with the invitation within the prescribed
time limit, the demand shall be considered as if it had been received
on the actual filing date, provided that the demand as submitted
contained at least one election and 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
prescribed time limit, the demand shall be considered as if it had not
been submitted.
(d) 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). 60.2 Defects in Later Elections
(a) If the later election does not comply with the requirements of
Rule 56, the International Bureau shall invite the applicant to
correct the defects within 1 month from the date of the invitation.
(b) If the applicant complies with the invitation within the prescribed
time limit, the later election shall be considered as if it had been
received on the actual filing date, provided that the later election
as submitted contained at least one election and permitted the
international application to be identified; otherwise, the later
election shall be considered as if it had been received on the date on
which the International Bureau receives the correction.
(c) If the applicant does not comply with the invitation within the
prescribed time limit, the later election shall be considered as if it
had not been submitted.
Rule 61
Notification of the Demand and Elections 61.1 Notifications to the
International Bureau, the Applicant and the International Preliminary
Examining Authority
(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 send the demand to the International Bureau, and shall
prepare and keep a copy in its files.
(b) The International Preliminary Examining Authority shall promptly
inform the applicant in writing of the date of receipt of the demand.
Where the demand has been considered under Rules 54.4 (a). 57.4 (c),
58.2 (c) or 60.1 (c) as if it had not been submitted or where an
election has been considered under Rule 54.4 (b) as if it had not been
made, the International Preliminary Examining Authority shall notify
the applicant and the International Bureau accordingly.
(c) The International Bureau shall promptly notify the International
Preliminary Examining Authority and the applicant of the receipt, and
the date of receipt, of any later election. That date shall be
the actual date of receipt by the International Bureau or, where
applicable, the date referred to in Rule 60.2 (b). Where the later
election has been considered under Rules 57.5 (c) or 60.2 (c) as if it
had not been submitted, the International Bureau shall notify the
applicant accordingly. 61.2 Notifications 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 name of the
receiving Office, the filing date of the application whose priority is
claimed (where priority is claimed), the date of receipt by the
International Preliminary Examining Authority of the demand, and - in
the case of later elections - the date of receipt by the
International Bureau of the later election.
(c) The notification shall be sent to the elected Office promptly after
the expiration of the 18th month from the priority date, or, if the
international preliminary examination report is communicated earlier,
then, at the same time as the communication of that report. Elections
effected after such notification shall be notified promptly after they
have been effected. 61.3 Information for the Applicant
The International Bureau shall inform the applicant in writing that it has
effected the notification referred to in Rule 61.2. At the same time, it shall
indicate to him, in respect of each elected State, any applicable time limit
under Article 39 (1) (b).
Rule 62 Copy for the International Preliminary Examining Authority 62.2
Amendments
(a) Any amendment filed under Article 19 shall be promptly transmitted by
the International Bureau to the International Preliminary Examining
Authority. If, at the time of filing such amendments, a demand for
international preliminary examination has already been submitted, the
applicant shall, at the same time as he files the amendments with the
International Bureau, also file a copy of such amendments with the
International Preliminary Examining Authority.
(b) If the time limit for filing amendments under Article 19 (see Rule
46.1) has expired without the applicant's having filed amendments
under that Article, or if the applicant has declared that he does not
wish to make amendments under that Article, the International Bureau
shall notify the International Preliminary Examining Authority
accordingly.
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.
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 will be:
(i) subject to item (ii), the international filing date of the
international application under international preliminary
examination;
(ii) where the international application under international
preliminary examination validly claims the priority of an
earlier application, the filing date of such earlier
application. 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 after 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, as such, after 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.
Rule 66 Procedure Before the International Preliminary Examining Authority
66.1 Basis of the International Preliminary Examination
Before the international preliminary examination starts, the applicant may
make amendments according to Article 34 (2) (b) and the international
preliminary examination shall initially be directed to the claims, the
description, and the drawings, as contained in the international application
at the time the international preliminary examination starts. 66.2 First
Written Opinion of the International Preliminary Examining Authority
(a) If the International Preliminary Examining Authority
(i) considers that the international application has any of the
defects described in Article 34 (4),
(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, or
(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, 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 2
months after the date of notification. In no case shall it be shorter
than 1 month after the said date. It shall be at least 2 months after
the said date where the international search report is transmitted at
the same time as the notification. In no case shall it be more than 3
months after the said date. 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. 66.5 Amendment
Any change, other than the rectification of obvious errors 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 Priority Document
(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, 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 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) 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 originally filed. The letter
accompanying the replacement sheets shall draw attention to the
differences between the replaced sheets and the replacement sheets. To
the extent that any amendment results in the cancellation of an entire
sheet, that amendment shall be communicated in a letter. 66.9 Language
of Amendments
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 (a), shall be submitted in the language of
publication.
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.
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 establish the international preliminary examination report, subject to
Article 34 (4) (b), in respect of the entire international application, but
shall indicate, in the said report, that, in its opinion, the requirement of
unity of invention is not fulfilled and shall specify the reasons for which
the international application is not considered as complying with the
requirement of unity of invention. 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, it shall 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, and shall specify the amount of
the additional fees and the reasons for which the international application is
not considered as complying with the requirement of unity of invention. It
shall, at the same time, fix a time limit, with regard to the circumstances of
the case, for complying with the invitation; such time limit shall not be
shorter than 1 month, and it shall not be longer than 2 months, from the date
of the invitation. 68.3 Additional Fees
(a) The amount of the additional fee due for international preliminary
examination under Article 34 (3) (a) shall be determined by the
competent International Preliminary Examining Authority.
(b) The additional fee 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 fee 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 fee is
excessive. Such protest shall be examined by a three- member board or
other special instance of the International Preliminary Examining
Authority, or any competent higher authority, which, to the extent
that it finds the protest justified, shall order the total or partial
reimbursement to the applicant of the additional fee. 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 three-member board, special instance or competent higher
authority, referred to in paragraph (c), shall not comprise any person
who made the decision which is the subject of the protest. 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
Time Limit for International Preliminary Examination 69.1 Time Limit for
International Preliminary Examination
(a) The time limit for establishing the international preliminary
examination report shall be:
(i) 28 months from the priority date if the demand was filed prior
to the expiration of 19 months from the priority date;
(ii) 9 months from the start of the international preliminary
examination if the demand was filed after the expiration of 19
months from the priority date.
(b) International preliminary examination shall start upon receipt, by the
International Preliminary Examining Authority:
(i) under Rule 62.2 (a), of the claims as amended under Article 19,
or
(ii) under Rule 62.2 (b), of a notice from the International Bureau
that no amendments under Article 19 have been filed within the
prescribed time limit or that the applicant has declared that
he does not wish to make such amendments, or
(iii) of a notice, after the international search report is in the
possession of the International Preliminary Examining
Authority, from the applicant expressing the wish that the
international preliminary examination should start and be
directed to the claims as specified in such notice, or
(iv) of a notice of the declaration by the International Searching
Authority that no international search report will be
established (Article 17 (2) (a)).
(c) If the competent International Preliminary Examining Authority is part
of the same national Office or intergovernmental organization as the
competent International Searching Authority, the international
preliminary examination may, if the International Preliminary
Examining Authority so wishes, start at the same time as the
international search. In such a case, the international preliminary
examination report shall be established, notwithstanding the
provisions of paragraph (a), no later than 6 months after the
expiration of the time limit allowed under Article 19 for amending the
claims.
Rule 70
The 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. 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, the name of the receiving Office, 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).
(b) The provisions of Rule 43.5 (b) and (e) shall apply also to the
report. 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
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. 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. 70.14 Signature
The report shall be signed by an authorized officer of the International
Preliminary Examining Authority. 70.15 Form
The physical requirements as to the form of the report shall be prescribed by
the Administrative Instructions. 70.16 Annexes of the Report
If the claims, the description, or the drawings, were amended before the
International Preliminary Examining Authority, each replacement sheet under
Rule 66.8 (a) shall be annexed to the report. Replacement sheets superseded by
later replacement sheets and letters under Rule 66.8 (a) shall not be annexed.
70.17 Languages of the Report and the Annexes
(a) The report and any annex shall be in the language in which the
international application to which they relate is published.
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.
(c) Any International Preliminary Examining Authority not wishing to send
copies direct to any elected Office shall send a copy to the
International Bureau and the International Bureau shall then proceed
as provided in paragraphs (a) and (b).
(d) Any International Preliminary Examining Authority may perform the
obligations referred to in (a) to (c) through another agency
responsible to it.
Rule 72 Translation of the International Preliminary Examination Report 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, French, German, Japanese, Russian,
or Spanish.
(b) Any such requirement shall be notified to the International Bureau,
which shall promptly publish it in the Gazette. 72.2 Copies of
Translations for the Applicant
The International Bureau shall transmit a copy of each translation 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. 72.3 Observations on the Translation
The applicant may make written observations on what, in his opinion, are
errors of translation in the translation of the international preliminary
examination report and shall send a copy of any such observations to each of
the interested elected Offices and a copy to the International Bureau.
Rule 73 Communication of the International Preliminary Examination Report 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 Time Limit for Communication
The communication provided for in Article 36 (3) (a) shall be effected as
promptly as possible.
Rule 74 Translations of Annexes of the International Preliminary Examination
ReportContents of Translation and Time Limit for Transmittal Thereof
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. 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.
Rule 75
Withdrawal of the Demand, or of Elections 75.1 Withdrawals
(a) Withdrawal of the demand or all the elections may be effected prior to
the expiration of 30 months from the priority date except as to any
elected State in which national processing or examination has already
started. Withdrawal of the election of any elected State may be
effected prior to the date on which examination and processing may
start in that State.
(b) Withdrawal shall be effected by a signed notice from the applicant to
the International Bureau. In the case of Rule 4.8 (b), the notice
shall require the signature of all the applicants. 75.4 Faculty under
Article 37 (4) (b) (a) Any Contracting State wishing to take advantage
of the faculty provided for in Article 37 (4) (b) shall notify the
International Bureau in writing.
(b) The notification under 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 1 month after
the publication date of the relevant issue of the Gazette.
Rule 76 Copy, Translation and Fee under Article 39 (1); Translation of
Priority Document 76.4 Time Limit for Translation of Priority Document
The applicant shall not be required to furnish to any elected Office a
certified translation of the priority document before the expiration of the
applicable time limit under Article 39. 76.5 Application of Rules 22.1 (g), 49
and 51bis Rules 22.1 (g), 49 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 shall be construed as a
reference to Article 39 (1);
(iii) the words "international applications filed" in Rule 49.1 (c) shall
be replaced by the words "a demand submitted."
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 Where Election Is Effected Prior to Expiration
of 19 Months from Priority Date
(a) Where the election of any Contracting State is effected prior to the
expiration of the 19th month from the priority date, the applicant
shall, if he so wishes, exercise the right under Article 41 after the
transmittal of the international preliminary examination report under
Article 36 (1) has been effected and before the time limit applicable
under Article 39 expires, provided that, if the said transmittal has
not taken place by the expiration of the time limit applicable under
Article 39, he shall exercise the said right not later than on such
expiration date. In either case, the applicant may exercise the said
right at any other 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, where the election of
any Contracting State is effected prior to the expiration of the 19th
month from the priority date, 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 Article
39. 78.2 Time Limit Where Election Is Effected After Expiration of 19
Months from Priority Date
Where the election of any Contracting State has been effected after the
expiration of the 19th month from the priority date and the applicant wishes
to make amendments under Article 41, the time limit for making amendments
under Article 28 shall apply. 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
If the expiration of any period during which any document or fee must reach a
national Office or intergovernmental organization falls on a day on which such
Office or organization is not open to the public for the purposes of the
transaction of official business, or on which ordinary mail is not delivered
in the locality in which such Office or organization is situated, the period
shall expire on the next subsequent day on which neither of the said two
circumstances exists. 80.6 Date of Documents
(a) 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.
(c) The International Bureau shall be open for business until 6 p.m.
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 such mailing 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. 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
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 declaration made under Article 8 (1) has been
erroneously cancelled or corrected 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 declaration under Article 8
(1) had not been cancelled or corrected, as the case may be.
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. 83.2
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, 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) 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
(a) The Gazette shall be published in an English-language edition and a
French-language edition. It shall also be published in editions in any
other language, provided the cost of publication is assured through
sales or subventions.
(b) The Assembly may order the publication of the Gazette in languages
other than those referred to in paragraph (a). 86.3 Frequency
(a) Subject to paragraph (b), the Gazette shall be published once a week.
(b) For a transitional period after the entry into force of the Treaty
terminating upon a date fixed by the Assembly, the Gazette may be
published at such times as the Director General considers appropriate
having regard to the number of international applications and the
amount of other material required to be published. 86.4 Sale
(a) Subject to paragraph (b), the subscription and other sale prices of
the Gazette shall be fixed in the Administrative Instructions.
(b) For a transitional period after the entry into force of the Treaty
terminating upon a date fixed by the Assembly, the Gazette may be
distributed on such terms as the Director General considers
appropriate having regard to the number of international applications
and the amount of other material published therein. 86.5 Title
The title of the Gazette shall be "Gazette of International Patent
Applications," and "Gazette des Demandes internationales de brevets,"
respectively. 86.6 Further Details
Further details concerning the Gazette may be provided for in the
Administrative Instructions.
Rule 87
Copies of Publications 87.1 International Searching and Preliminary Examining
Authorities
Any International Searching or Preliminary Examining Authority shall have the
right to receive, free of charge, two copies of every published international
application, of the Gazette, and of any other publication of general interest
published by the International Bureau in connection with the Treaty or these
Regulations. 87.2 National Offices
(a) Any national Office shall have the right to receive, free of charge,
one copy of every published international application, of the Gazette,
and of any other publication of general interest published by the
International Bureau in connection with the Treaty or these
Regulations.
(b) The publications referred to in paragraph (a) shall be sent on special
request, which shall be made, in respect of each year, by November 30
of the preceding year. If any publication is available in more than
one language, the request shall specify the language in which it is
desired.
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),
(ii) Rule 22.2 (Transmittal of the Record Copy; Alternative Procedure),
(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 modifed 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 90
Representation 90.1 Definitions
For the purposes of Rule 90.2 and Rule 90.3:
(i) "agent" means any of the persons referred to in Article 49;
(ii) "common representative" means the applicant referred to in Rule 4.8.
90.2 Effects
(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 having appointed the
agent.
(b) 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.
(c) If there are several agents appointed by the same applicant or
applicants, any act by or in relation to any of the several agents
shall have the effect of an act by or in relation to the said
applicant or applicants.
(d) The effects described in paragraphs (a), (b), and (c), shall apply to
the processing of the international application before the receiving
Office, the International Bureau, the International Searching
Authority, and the International Preliminary Examining Authority. 90.3
Appointment
(a) Appointment of any agent, or of any common representative within the
meaning of Rule 4.8 (a), shall be effected by each applicant, at his
choice, either by signing the request in which the agent or common
representative is designated or by a separate power of attorney (i.e.,
a document appointing an agent or a common representative).
(b) The power of attorney may be submitted to the receiving Office or the
International Bureau. Whichever of the two is the recipient of the
power of attorney submitted shall immediately notify the other and the
interested International Searching Authority and the interested
International Preliminary Examining Authority.
(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) A general power of attorney may be deposited with the receiving Office
for purposes of the processing of the international application as
defined in Rule 90.2 (d). Reference may be made in the request to such
general power of attorney, provided that a copy thereof is attached to
the request by the applicant. 90.4 Revocation
(a) Any appointment may be revoked by the persons who have made the
appointment or their successors in title.
(b) Rule 90.3 shall apply, mutatis mutandis, to the document containing
the revocation.
Rule 91
Obvious Errors in Documents 91.1 Rectification
(a) Subject to paragraphs (b) to (gquater), obvious errors in the
international application or other papers submitted by the applicant
may be rectified.
(b) Errors which are due to the fact that something other than what was
obviously intended was written in the international application or
other paper shall be regarded as obvious errors. The rectification
itself shall be obvious in the sense that anyone would immediately
realize that nothing else could have been intended than what is
offered as rectification.
(c) Omissions of entire elements or sheets of the international
application, even if clearly resulting from inattention, at the stage,
for example, of copying or assembling sheets, shall not be
rectifiable.
(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 (gquater). Rule 26.4 (a) shall apply
mutatis mutandis to the manner in which rectifications shall be
requested.
(e) No rectification shall be made except with the express authorization:
(i) of the receiving Office if the error is in the request,
(ii) of the International Searching Authority if the error is in any
part of the international application other than the request or
in any paper submitted to that Authority,
(iii) of the International Preliminary Examining Authority if the
error is in any part of the international application other
than the request or in any paper submitted to that Authority,
and
(iv) of the International Bureau if the error is in any paper, other
than the international application or amendments or corrections
to that application, submitted to the International Bureau.
(f ) Any authority which authorizes or refuses any rectification shall
promptly notify the applicant of the authorization or refusal and, in the case
of refusal, of the reasons therefor. The authority which authorizes a
rectification shall promptly notify the International Bureau accordingly.
Where the authorization of the rectification was refused, the International
Bureau shall, upon request made by the applicant prior to the time relevant
under paragraph (gbis), (gter) or (gquater) and subject to the payment of a
special fee whose amount shall be fixed in the Administrative Instructions,
publish the request for rectification together with the international
application. A copy of the request for rectification 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).
(g) The authorization for rectification referred to in paragraph (e)
shall, subject to paragraphs (gbis), (gter) and (gquater), be
effective:
(i) where it is given by the receiving Office or by the
International Searching Authority, if its notification to the
International Bureau reaches that Bureau before the expiration
of 17 months from the priority date;
(ii) where it is given by the International Preliminary Examining
Authority, if it is given before the establishment of the
international preliminary examination report;
(iii) where it is given by the International Bureau, if it is given
before the expiration of 17 months from the priority date.
(gbis) If the notification made under paragraph (g) (i) reaches the
International Bureau, or if the rectification made under paragraph (g)
(iii) is authorized by the International Bureau, after the expiration
of 17 months from the priority date but before the technical
preparations for international publication have been completed, the
authorization shall be effective and the rectification shall be
incorporated in the said publication.
(gter) Where the applicant has asked the International Bureau to publish
his international application before the expiration of 18 months from
the priority date, any notification made under paragraph (g) (i) must
reach, and any rectification made under paragraph (g) (iii) must be
authorized by, the International Bureau, in order for the
authorization to be effective, not later than at the time of the
completion of the technical preparations for international
publication.
(gquater) Where the international application is not published by virtue of
Article 64 (3), any notification made under paragraph (g) (i) must
reach, and any rectification made under paragraph (g) (iii) must be
authorized by, the International Bureau, in order for the
authorization to be effective, not later than at the time of the
communication of the international application under Article 20.
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. 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.
(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 registered air mail, provided that surface mail may be used
instead of air mail in cases where surface mail normally arrives at its
destination within 2 days from mailing or where air mail service is not
available. 92.4 Use of Telegraph, Teleprinter, Etc.
(a) Notwithstanding the provisions of Rules 11.14 and 92.1 (a), but
subject to paragraph (b), below, any document (including any drawing)
subsequent to the international application may be sent by telegraph
or teleprinter or other like means of communication producing a
printed or written document. Any such document so sent shall be
considered to have been submitted in a form complying with the
requirements of the said Rules on the day on which it was communicated
by the means mentioned above, provided that, within 14 days after
being so communicated, its contents are furnished in that form,
otherwise, the telegraphic, teleprinter or other communication shall
be considered not to have been made.
(b) Each national Office or intergovernmental organization shall promptly
notify the International Bureau of any means referred to in paragraph
(a) by which it is prepared to receive documents referred to in that
paragraph. The International Bureau shall publish the information so
received in the Gazette as well as information concerning the means
referred to in paragraph (a) by which the International Bureau is
prepared to receive any such document. Paragraph (a) shall apply with
respect to any national Office or intergovernmental organization only
to the extent the said information has been so published with respect
to it. The International Bureau shall publish, from time to time, in
the Gazette, changes in the information previously published.
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:
(i) of the time limit referred to in Article 22 (1), where Article
39 (1) is not applicable with respect to any Contracting State;
(ii) of the time limit referred to in Article 39 (1) (a), where
Article 39 (1) is applicable with respect to at least one
Contracting State.
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. 93.3 The International Searching and Preliminary
Examinating 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 shall also mean
photographic reproductions of records, copies, and files, whatever may be the
form of such reproductions (microfilms or other).
Rule 94 Furnishing of Copies by the International Bureau and the International
Preliminary Examining Authority 94.1 Obligation to Furnish
At the request of the applicant or any person authorized by the applicant, the
International Bureau and the International Preliminary Examining Authority
shall furnish, subject to reimbursement of the cost of the service, copies of
any document contained in the file of the applicant's international
application or purported international application.
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 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. Basic Fee:
(Rule 15.2 (a))
if the international application contains not more than 30
sheets 706 Swiss francs
if the international application contains more than 30
sheets 706 Swiss francs plus 14 Swiss francs for
each sheet in excess of 30 sheets 2. Designation Fee:
(Rule 15.2 (a)) 171 Swiss francs per designation for which the fees
is due, with a maximum of 1,710 Swiss francs, any
such designation in excess of 10 being free of
charge 3. Handling Fee:
(Rule 57.2 (a)) 216 Swiss francs
4. Supplement to the Handling Fee:
(Rule 57.2 (b)) 216 Swiss francs
Surcharges 5. Surcharge for late payment:
(Rule 16bis.2(a)) Minimum: 268 Swiss francs
Maximum: 674 Swiss francs
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