Commonwealth Numbered Regulations

1993 No. 341 PATENTS REGULATIONS (AMENDMENT) - REG 5

5.1 Note after heading: Omit "October 2, 1991 and on September 29, 1992",
substitute "on October 2, 1991, on September 29, 1992 and on September 29,
1993".
5.2 Rule 4.1, subparagraph (b) (v): Omit the subparagraph, substitute:

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

        (vi)   an indication of the applicant's choice of competent
               International Searching Authority.".
5.3 New Rule 4.14bis: After Rule 4.14, insert:

"4.14bis Choice of International Searching Authority
If two or more International Searching Authorities are competent for the
searching of the international application, the applicant shall indicate his
choice of International Searching Authority in the request.".
5.4 Rule 10.1, paragraph (f): Before "English" (twice occurring), insert
"Chinese,".
5.5 Rule 11.9, paragraphs (b) and (e): Before "Japanese", insert "Chinese or".
5.6 Rule 18.1: Omit the Rule, substitute:

"18.1 Residence and Nationality

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

   (b)  In any case,

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

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

   (c)  Where the international application is filed with the International
        Bureau as receiving Office, the International Bureau shall, in the
        circumstances specified in the Administrative Instructions, request
        the national Office of, or acting for, the Contracting State concerned
        to decide the question referred to in paragraph (a). The International
        Bureau shall inform the applicant of any such request. The applicant
        shall have an opportunity to submit arguments directly to the national
        Office. The national Office shall decide the said question promptly.".
5.7 Rule 18.2: Omit the Rule.
5.8 Rule 19.1, paragraph (a): Omit the paragraph, substitute:

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

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

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

        (iii)  irrespective of the Contracting State of which the applicant is
               a resident or national, with the International Bureau.".
5.9 Rule 19.2: Omit the Rule, substitute:

"19.2 Two or More Applicants If there are two or more applicants:

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

        (ii)   the international application may be filed with the
               International Bureau under Rule 19.1 (a) (iii) if at least one
               of the applicants is a resident or national of a Contracting
               State.".
5.10 New Rule 19.4: After Rule 19.3, insert:

"19.4 Transmittal to the International Bureau as Receiving Office

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

   (b)  Where, pursuant to paragraph (a), an international application is
        received by a national Office on behalf of the International Bureau as
        receiving Office under Rule 19.1 (a) (iii), that national Office
        shall, unless prescriptions concerning national security prevent the
        international application from being so transmitted, promptly transmit
        it to the International Bureau. Such transmittal may be subjected by
        the national Office to the payment of a fee, for its own benefit,
        equal to the transmittal fee charged by that Office under Rule 14. The
        international application so transmitted shall be considered to have
        been received by the International Bureau as receiving Office under
        Rule 19 (1) (a) (iii) on the date of receipt of the international
        application by that national Office.".
5.11 New Rule 35.3: After Rule 35.2, insert:

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

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

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

   (c)  Rules 35.1 and 35.2 shall not apply to the International Bureau as
        receiving Office under Rule 19.1 (a) (iii).".
5.12 Rule 48.3, paragraph (a): Before "English", insert "Chinese,".
5.13 Rule 48.3, paragraph (b): Before "English" (first occurring), insert
"Chinese,".
5.14 Rule 54.1: Omit the Rule, substitute:

"54.1 Residence and Nationality

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

   (b)  The International Preliminary Examining Authority shall, in the
        circumstances specified in the Administrative Instructions, request
        the receiving Office or, where the international application was filed
        with the International Bureau as receiving Office, the national office
        of, or acting for, the Contracting State concerned to decide the
        question whether the applicant is a resident or national of the
        Contracting State of which he claims to be a resident or national. The
        International Preliminary Examining Authority shall inform the
        applicant of any such request. The applicant shall have an opportunity
        to submit arguments directly to the Office concerned. The Office
        concerned shall decide the said question promptly.".
5.15 New Rule 54.3: After Rule 54.2, insert:

"54.3 International Applications Filed with the International Bureau as
Receiving Office
Where the international application is filed with the International Bureau as
receiving Office under Rule 19.1 (a) (iii), the International Bureau shall,
for the purposes of Article 31 (2) (a), be considered to be acting for the
Contracting State of which the applicant is a resident or national.".
5.16 Rule 59.1: Omit "For demands", substitute "(a) For demands".
5.17 Rule 59.1, new paragraph (b): At the end of Rule 59.1, add:

"(b) Where the international application was filed with the International
Bureau as receiving Office under Rule 19.1 (a) (iii), Rule 35.3 (a) and (b)
shall apply mutatis mutandis. Paragraph (a) of this Rule shall not apply to
the International Bureau as receiving Office under Rule 19.1 (a) (iii).".
5.18 New rule 83.1bis: After Rule 83.1, insert:

"83.1bis Where the International Bureau Is the Receiving Office

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

   (b)  Any person having the right to practice before the International
        Bureau in its capacity as receiving Office in respect of an
        international application shall be entitled to practice in respect of
        that application before the International Bureau in any other capacity
        and before the competent International Searching Authority and
        competent International Preliminary Examining Authority.".
5.19 Rule 90.1, paragraph (a): Omit the paragraph, substitute:

"(a) A person having the right to practice before the national Office with
which the international application is filed or, where the international
application is filed with the International Bureau, having the right to
practice in respect of the international application before the International
Bureau as receiving Office may be appointed by the applicant as his agent to
represent him before the receiving Office, the International Bureau, the
International Searching Authority and the International Preliminary Examining
Authority.".
5.20 Rule 90.1, subparagraph (d) (i): After "filed", insert:

"or to practice in respect of the international application before the
International Bureau as receiving Office, as the case may be".
5.21 Rule 91.1, subparagraph (e) (iii): Omit "and".