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PATENTS REGULATIONS (AMENDMENT) 1998 No. 141 - SCHEDULE
SCHEDULE Regulation 5
SCHEDULE 2A Subregulation 1.4 (2) 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, on October 1, 1985, on July 12, 1991, on October 2, 1991,
on September 29, 1992, on September 29, 1993 and on 1 October, 1997.
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"
2.2bis "Common Representative"
2.3 "Signature"
Part B: Rules Concerning Chapter I of the Treaty
Rule 3 The Request (Form)
3.1 Form of Request
3.2 Availability of Forms
3.3 Check List
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 Common Representative
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
4.14bis Choice of International Searching Authority
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
5.2 Nucleotide and/or Amino Acid Sequence Disclosure
Rule 6 The Claims
6.1 Number and Numbering of Claims
6.2 References to Other Parts of the International Application
6.3 Manner of Claiming
6.4 Dependent Claims
6.5 Utility Models
Rule 7 The Drawings
7.1 Flow Sheets and Diagrams
7.2 Time Limit
Rule 8 The Abstract
8.1 Contents and Form of the Abstract
8.2 Figure
8.3 Guiding Principles in Drafting
Rule 9 Expressions, Etc., Not to Be Used
9.1 Definition
9.2 Noting of Lack of Compliance
9.3 Reference to Article 21 (6)
Rule 10 Terminology and Signs
10.1 Terminology and Signs
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 and Translation
for the Purposes of International Search
12.1 Languages Accepted for the Filing of International
Applications
12.2 Language of Changes in the International Application
12.3 Translation for the Purposes of International Search
Rule 13 Unity of Invention
13.1 Requirement
13.2 Circumstances in Which the Requirement of Unity of
Invention Is to Be Considered Fulfilled
13.3 Determination of Unity of Invention Not Affected by Manner
of Claiming
13.4 Dependent Claims
13.5 Utility Models
Rule 13bis Inventions Relating to Biological Material
13bis.1 Definition
13bis.2 References (General)
13bis.3 References: Contents; Failure to Include Reference or
Indication
13bis.4 References: Time Limit for 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 13ter Nucleotide and/or Amino Acid Sequence Listings
13ter.1 Sequence Listing for International Authorities
13ter.2 Sequence Listing for Designated Office
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
15.4 Time Limit for Payment; Amount Payable
15.5 Fees under Rule 4.9 (c)
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 Extension of Time Limits for Payment of Fees
16bis.1 Invitation by the Receiving Office
16bis.2 Late Payment Fee
Rule 17 The Priority Document
17.1 Obligation to Submit Copy of Earlier National or
International Application
17.2 Availability of Copies
Rule 18 The Applicant
18.1 Residence and Nationality
18.3 Two or More Applicants
18.4 Information on Requirements Under National Law as to
Applicants
Rule 19 The Competent Receiving Office
19.1 Where to File
19.2 Two or More Applicants
19.3 Publication of Fact of Delegation of Duties of Receiving
Office
19.4 Transmittal to the International Bureau as Receiving
Office
Rule 20 Receipt of the International Application
20.1 Date and Number
20.2 Receipt on Different Days
20.3 Corrected International Application
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 and Translation
22.1 Procedure
22.3 Time Limit under Article 12 (3)
Rule 23 Transmittal of the Search Copy, Translation and Sequence
Listing
23.1 Procedure
Rule 24 Receipt of the Record Copy by the International Bureau
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)
(v)
26.3bis Invitation under Article 14 (1) (b) to Correct Defects
under Rule 11
26.3ter Invitation to Correct Defects under Article 3 (4) (i)
26.4 Procedure
26.5 Decision of the Receiving Office
26.6 Missing Drawings
Rule26bis Correction or Addition of Priority Claim
26bis.1 Correction or Addition of Priority Claim
26bis.2 Invitation to Correct Defects in Priority Claims
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
29.1 Finding by Receiving Office
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 Extension of Effects of International Application to
Certain Successor States
32.1 Request for Extension of International Application to
Successor State
32.2 Effects of Extension to Successor State
Rule 33 Relevant Prior Art for the International Search
33.1 Relevant Prior Art for the International Search
33.2 Fields to be Covered by the International Search
33.3 Orientation of the International Search
Rule 34 Minimum Documentation
34.1 Definition
Rule 35 The Competent International Searching Authority
35.1 When Only One International Searching Authority is
Competent
35.2 When Several International Searching Authorities are
Competent
35.3 When the International Bureau is Receiving Office under
Rule 19.1 (a) (iii)
Rule 36 Minimum Requirements for International Searching
Authorities
36.1 Definition of Minimum Requirements
Rule 37 Missing or Defective Title
37.1 Lack of Title
37.2 Establishment of Title
Rule 38 Missing or Defective Abstract
38.1 Lack of Abstract
38.2 Establishment of Abstract
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 Authorized Officer
43.9 Additional 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 Where to File
46.3 Language of Amendments
46.4 Statement
46.5 Form of Amendments
Rule 47 Communication to Designated Offices
47.1 Procedure
47.2 Copies
47.3 Languages
47.4 Express Request under Article 23 (2)
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 Agent or Common Representative
53.6 Identification of the International Application
53.7 Election of States
53.8 Signature
53.9 Statement Concerning Amendments
Rule 54 The Applicant Entitled to Make a Demand
54.1 Residence and Nationality
54.2 Right to Make a Demand
54.3 International Applications Filed with the International
Bureau as Receiving Office
54.4 Applicant Not Entitled to Make a Demand
Rule 55 Languages (International Preliminary Examination)
55.1 Language of Demand
55.2 Translation of International Application
55.3 Translation of Amendments
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 Amount
57.3 Time Limit for Payment; Amount Payable
57.6 Refund
Rule 58 The Preliminary Examination Fee
58.1 Right to Ask for a Fee
58.3 Refund
Rule 58bis Extension of Time Limits for Payment of Fees
58bis.1 Invitation by the International Preliminary Examining
Authority
58bis.2 Late Payment Fee
Rule 59 The Competent International Preliminary Examining
Authority
59.1 Demands under Article 31 (2) (a)
59.2 Demands under Article 31 (2) (b)
59.3 Transmittal of Demand to the Competent International
Preliminary Examining Authority
Rule 60 Certain Defects in the Demand or Elections
60.1 Defects in the Demand
60.2 Defects in Later Elections
Rule 61 Notification of the Demand and Elections
61.1 Notification to the International Bureau and the Applicant
61.2 Notification to the Elected Offices
61.3 Information for the Applicant
61.4 Publication in the Gazette
Rule 62 Copy of Amendments Under Article 19 for the International
Preliminary Examining Authority
62.1 Amendments Made before the Demand is Filed
62.2 Amendments Made after the Demand is Filed
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
66.4bis Consideration of Amendments and 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 Start of and Time Limit for International Preliminary
Examination
69.1 Start of International Preliminary Examination
69.2 Time Limit for International Preliminary Examination
Rule 70 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 and Other Matters
70.13 Remarks Concerning Unity of Invention
70.14 Authorized Officer
70.15 Form
70.16 Annexes to the Report
70.17 Languages of the Report and the Annexes
Rule 71 Transmittal of the International Preliminary Examination
Report
71.1 Recipients
71.2 Copies of Cited Documents
Rule 72 Translation of the International Preliminary Examination
Report
72.1 Languages
72.2 Copy of Translation 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 76 Copy, Translation and Fee under Article 39 (1);
Translation
of Priority Document
76.4 Time Limit for Translation of Priority Document
76.5 Application of Rules 22.1 (g), 49 and 51bis
76.6 Transitional Provision
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
83.1bis Where the International Bureau is the Receiving Office
83.2 Information
Part E: Rules Concerning Chapter V of the Treaty
Rule 84 Expenses of Delegations
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 and Form
86.2 Languages; Access to the Gazette
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
88.3 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 Agents and Common Representatives
90.1 Appointment as Agent
90.2 Common Representative
90.3 Effects of Acts by or in Relation to Agents and Common
Representatives
90.4 Manner of Appointment of Agent or Common Representative
90.5 General Power of Attorney
90.6 Revocation and Renunciation
Rule 90bis Withdrawals
90bis.1 Withdrawal of the International Application
90bis.2 Withdrawal of Designations
90bis.3 Withdrawal of Priority Claims
90bis.4 Withdrawal of the Demand, or of Elections
90bis.5 Signature
90bis.6 Effect of Withdrawal
90bis.7 Faculty under Article 37 (4) (b)
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, Facsimile Machine, 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 Access to Files
94.1 Access to the File Held by the International Bureau
94.2 Access to the File Held by the International Preliminary
Examining Authority
94.3 Access to the File Held by the Elected Office
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
REGULATIONS UNDER THE PATENT COOPERATION TREATY
PART A
Introductory Rules
Rule 1
Abbreviated Expressions 1.1 Meaning of Abbreviated Expressions
(a) In these Regulations, the word "Treaty" means the Patent Cooperation
Treaty.
(b) In these Regulations, the words "Chapter" and "Article" refer to the
specified Chapter or Article of the Treaty.
Rule 2
Interpretation of Certain Words 2.1 "Applicant" Whenever the word "applicant"
is used, it shall be construed as meaning also the agent or other
representative of the applicant, except where the contrary clearly follows
from the wording or the nature of the provision, or the context in which the
word is used, such as, in particular, where the provision refers to the
residence or nationality of the applicant. 2.2 "Agent" Whenever the word
"agent" is used, it shall be construed as meaning an agent appointed under
Rule 90.1, unless the contrary clearly follows from the wording or the nature
of the provision, or the context in which the word is used. 2.2bis "Common
Representative" Whenever the expression "common representative" is used, it
shall be construed as meaning an applicant appointed as, or considered to be,
the common representative under Rule 90.2. 2.3 "Signature" Whenever the word
"signature" is used, it shall be understood that, if the national law applied
by the receiving Office or the competent International Searching or
Preliminary Examining Authority requires the use of a seal instead of a
signature, the word, for the purposes of that Office or Authority, shall mean
seal.
PART B
Rules Concerning Chapter I of the Treaty
Rule 3
The Request (Form) 3.1 Form of Request The request shall be made on a printed
form or be presented as a computer print-out. 3.2 Availability of Forms Copies
of the printed form shall be furnished free of charge to the applicants by the
receiving Office, or, if the receiving Office so desires, by the International
Bureau. 3.3 Check List
(a) The request shall contain a list indicating:
(i) the total number of sheets constituting the international
application and the number of the sheets of each element of the
international application: request, description (separately
indicating the number of sheets of any sequence listing part of
the description), claims, drawings, abstract;
(ii) where applicable, that the international application as filed
is accompanied by a power of attorney (i.e., a document
appointing an agent or a common representative), a copy of a
general power of attorney, a priority document, a sequence
listing in computer readable form, a document relating to the
payment of fees, or any other document (to be specified in the
check list);
(iii) the number of that figure of the drawings which the applicant
suggests should accompany the abstract when the abstract is
published; in exceptional cases, the applicant may suggest more
than one figure.
(b) The list shall be completed by the applicant, failing which the
receiving Office shall make the necessary indications, except that the
number referred to in paragraph (a) (iii) shall not be indicated by
the receiving Office. 3.4 Particulars Subject to Rule 3.3, particulars
of the printed request form and of a request presented as a computer
print-out shall be prescribed by the Administrative Instructions.
Rule 4
The Request (Contents) 4.1 Mandatory and Optional Contents; Signature
(a) The request shall contain:
(i) a petition,
(ii) the title of the invention,
(iii) indications concerning the applicant and the agent, if there is
an agent,
(iv) 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,
(v) a reference to a parent application or a parent patent,
(vi) an indication of the applicant's choice of competent
International Searching Authority.
(c) The request may contain:
(i) indications concerning the inventor where the national law of
none of the designated States requires that the name of the
inventor be furnished at the time of filing a national
application,
(ii) a request to the receiving Office to 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. In order to allow rapid communication with the applicant, it is
recommended to indicate any teleprinter address, telephone and
facsimile machine numbers, or corresponding data for other like means
of communication, of the applicant or, where applicable, the agent or
the common representative.
(d) For each applicant, inventor, or agent, only one address may be
indicated, except that, if no agent has been appointed to represent
the applicant, or all of them if more than one, the applicant or, if
there is more than one applicant, the common representative, may
indicate, in addition to any other address given in the request, an
address to which notifications shall be sent. 4.5 The Applicant
(a) The request shall indicate 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.
(d) The request may, for different designated States, indicate different
applicants. In such a case, the request shall indicate the applicant
or applicants for each designated State or group of designated States.
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 Common
Representative If a common representative is designated, the request
shall so indicate. 4.9 Designation of States
(a) Contracting States shall be designated in the request:
(i) in the case of designations for the purpose of obtaining
national patents, by an indication of each State concerned;
(ii) in the case of designations for the purpose of obtaining a
regional patent, by an indication that a regional patent is
desired either for all Contracting States which are party to
the regional patent treaty concerned or only for such
Contracting States as are specified.
(b) The request may contain an indication that all designations which
would be permitted under the Treaty, other than those made under
paragraph (a), are also made, provided that:
(i) at least one Contracting State is designated under paragraph
(a), and
(ii) the request also contains a statement that any designation made
under this paragraph is subject to confirmation as provided in
paragraph (c) and that any designation which is not so
confirmed before the expiration of 15 months from the priority
date is to be regarded as withdrawn by the applicant at the
expiration of that time limit.
(c) The confirmation of any designation made under paragraph (b) shall be
effected by
(i) filing with the receiving Office a written notice containing an
indication as referred to in paragraph (a) (i) or (ii), and
(ii) paying to the receiving Office the designation fee and the
confirmation fee referred to in Rule 15.5 within the time limit
under paragraph (b) (ii). 4.10 Priority Claim
(a) Any declaration referred to in Article 8 (1) ("priority claim") shall,
subject to Rule 26bis.1, be made in the request; it shall consist of a
statement to the effect that the priority of an earlier application is
claimed and shall indicate:
(i) the date on which the earlier application was filed, being a
date falling within the period of 12 months preceding the
international filing date;
(ii) the number of the earlier application;
(iii) where the earlier application is a national application, the
country party to the Paris Convention for the Protection of
Industrial Property in which it was filed;
(iv) where the earlier application is a regional application, the
authority entrusted with the granting of regional patents under
the applicable regional patent treaty;
(v) where the earlier application is an international application,
the receiving Office with which it was filed.
(b) In addition to any indication required under paragraph (a) (iv) or
(v):
(i) where the earlier application is a regional application or an
international application, the priority claim may indicate one
or more countries party to the Paris Convention for the
Protection of Industrial Property for which that earlier
application was filed;
(ii) where the earlier application is a regional application and the
countries party to the regional patent treaty are not all party
to the Paris Convention for the Protection of Industrial
Property, the priority claim shall indicate at least one
country party to that Convention for which that earlier
application was filed.
(c) For the purposes of paragraphs (a) and (b), Article 2 (vi) shall not
apply. 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. 4.14bis Choice of
International Searching Authority
If two or more International Searching Authorities are competent for the
searching of the international application, the applicant shall indicate his
choice of International Searching Authority in the request. 4.15 Signature
(a) Subject to paragraph (b), the request shall be signed by the applicant
or, if there is more than one applicant, by all of them.
(b) Where two or more applicants file an international application which
designates a State whose national law requires that national
applications be filed by the inventor and where an applicant for that
designated State who is an inventor refused to sign the request or
could not be found or reached after diligent effort, the request need
not be signed by that applicant if it is signed by at least one
applicant and a statement is furnished explaining, to the satisfaction
of the receiving Office, the lack of the signature concerned. 4.16
Transliteration or Translation of Certain Words
(a) Where any name or address is written in characters other than those of
the Latin alphabet, the same shall also be indicated in characters of
the Latin alphabet either as a mere transliteration or through
translation into English. The applicant shall decide which words will
be merely transliterated and which words will be so translated.
(b) The name of any country written in characters other than those of the
Latin alphabet shall also be indicated in English. 4.17 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. 5.2
Nucleotide and/or Amino Acid Sequence Disclosure
(a) Where the international application contains disclosure of one or more
nucleotide and/or amino acid sequences, the description shall contain
a sequence listing complying with the standard provided for in the
Administrative Instructions and presented as a separate part of the
description in accordance with that standard.
(b) Where the sequence listing part of the description contains any free
text as defined in the standard provided for in the Administrative
Instructions, that free text shall also appear in the main part of the
description in the language thereof.
Rule 6
The Claims 6.1 Number and Numbering of Claims
(a) The number of the claims shall be reasonable in consideration of the
nature of the invention claimed.
(b) If there are several claims, they shall be numbered consecutively in
arabic numerals.
(c) The method of numbering in the case of the amendment of claims shall
be governed by the Administrative Instructions. 6.2 References to
Other Parts of the International Application
(a) Claims shall not, except where absolutely necessary, rely, in respect
of the technical features of the invention, on references to the
description or drawings. In particular, they shall not rely on such
references as: "as described in part . . . of the description," or "as
illustrated in figure . . . of the drawings."
(b) Where the international application contains drawings, the technical
features mentioned in the claims shall preferably be followed by the
reference signs relating to such features. When used, the reference
signs shall preferably be placed between parentheses. If inclusion of
reference signs does not particularly facilitate quicker understanding
of a claim, it should not be made. Reference signs may be removed by a
designated Office for the purposes of publication by such Office. 6.3
Manner of Claiming
(a) The definition of the matter for which protection is sought shall be
in terms of the technical features of the invention.
(b) Whenever appropriate, claims shall contain:
(i) a statement indicating those technical features of the
invention which are necessary for the definition of the claimed
subject matter but which, in combination, are part of the prior
art,
(ii) a characterizing portionÑpreceded by the words "characterized
in that," "characterized by," "wherein the improvement
comprises," or any other words to the same effectÑstating
concisely the technical features which, in combination with the
features stated under (i), it is desired to protect.
(c) Where the national law of the designated State does not require the
manner of claiming provided for in paragraph (b), failure to use that
manner of claiming shall have no effect in that State provided the
manner of claiming actually used satisfies the national law of that
State. 6.4 Dependent Claims
(a) Any claim which includes all the features of one or more other claims
(claim in dependent form, hereinafter referred to as "dependent
claim") shall do so by a reference, if possible at the beginning, to
the other claim or claims and shall then state the additional features
claimed. Any dependent claim which refers to more than one other claim
("multiple dependent claim") shall refer to such claims in the
alternative only. Multiple dependent claims shall not serve as a basis
for any other multiple dependent claim. Where the national law of the
national Office acting as International Searching Authority does not
allow multiple dependent claims to be drafted in a manner different
from that provided for in the preceding two sentences, failure to use
that manner of claiming may result in an indication under Article 17
(2) (b) in the international search report. Failure to use the said
manner of claiming shall have no effect in a designated State if the
manner of claiming actually used satisfies the national law of that
State.
(b) Any dependent claim shall be construed as including all the
limitations contained in the claim to which it refers or, if the
dependent claim is a multiple dependent claim, all the limitations
contained in the particular claim in relation to which it is
considered.
(c) All dependent claims referring back to a single previous claim, and
all dependent claims referring back to several previous claims, shall
be grouped together to the extent and in the most practical way
possible. 6.5 Utility Models Any designated State in which the grant
of a utility model is sought on the basis of an international
application may, instead of Rules 6.1 to 6.4, apply in respect of the
matters regulated in those Rules the provisions of its national law
concerning utility models once the processing of the international
application has started in that State, provided that the applicant
shall be allowed at least 2 months from the expiration of the time
limit applicable under Article 22 to adapt his application to the
requirements of the said provisions of the national law.
Rule 7
The Drawings 7.1 Flow Sheets and Diagrams Flow sheets and diagrams are
considered drawings. 7.2 Time Limit The time limit referred to in Article 7
(2) (ii) shall be reasonable under the circumstances of the case and shall, in
no case, be shorter than 2 months from the date of the written invitation
requiring the filing of drawings or additional drawings under the said
provision.
Rule 8
The Abstract 8.1 Contents and Form of the Abstract
(a) The abstract shall consist of the following:
(i) a summary of the disclosure as contained in the description,
the claims, and any drawings; the summary shall indicate the
technical field to which the invention pertains and shall be
drafted in a way which allows the clear understanding of the
technical problem, the gist of the solution of that problem
through the invention, and the principal use or uses of the
invention;
(ii) where applicable, the chemical formula which, among all the
formulae contained in the international application, best
characterizes the invention.
(b) The abstract shall be as concise as the disclosure permits (preferably
50 to 150 words if it is in English or when translated into English).
(c) The abstract shall not contain statements on the alleged merits or
value of the claimed invention or on its speculative application.
(d) Each main technical feature mentioned in the abstract and illustrated
by a drawing in the international application shall be followed by a
reference sign, placed between parentheses. 8.2 Figure
(a) If the applicant fails to make the indication referred to in Rule 3.3
(a) (iii), or if the International Searching Authority finds that a
figure or figures other than that figure or those figures suggested by
the applicant would, among all the figures of all the drawings, better
characterize the invention, it shall, subject to paragraph (b),
indicate the figure or figures which should accompany the abstract
when the latter is published by the International Bureau. In such
case, the abstract shall be accompanied by the figure or figures so
indicated by the International Searching Authority. Otherwise, the
abstract shall, subject to paragraph (b), be accompanied by the figure
or figures suggested by the applicant.
(b) If the International Searching Authority finds that none of the
figures of the drawings is useful for the understanding of the
abstract, it shall notify the International Bureau accordingly. In
such case, the abstract, when published by the International Bureau,
shall not be accompanied by any figure of the drawings even where the
applicant has made a suggestion under Rule 3.3 (a) (iii). 8.3 Guiding
Principles in Drafting The abstract shall be so drafted that it can
efficiently serve as a scanning tool for purposes of searching in the
particular art, especially by assisting the scientist, engineer or
researcher in formulating an opinion on whether there is a need for
consulting the international application itself.
Rule 9
Expressions, Etc., Not To Be Used 9.1 Definition The international application
shall not contain:
(i) expressions or drawings contrary to morality;
(ii) expressions or drawings contrary to public order;
(iii) statements disparaging the products or processes of any
particular person other than the applicant, or the merits or
validity of applications or patents of any such person (mere
comparisons with the prior art shall not be considered
disparaging per se);
(iv) any statement or other matter obviously irrelevant or
unnecessary under the circumstances. 9.2 Noting of Lack of
Compliance The receiving Office and the International Searching
Authority may note lack of compliance with the prescriptions of
Rule 9.1 and may suggest to the applicant that he voluntarily
correct his international application accordingly. If the lack
of compliance was noted by the receiving Office, that Office
shall inform the competent International Searching Authority
and the International Bureau; if the lack of compliance was
noted by the International Searching Authority, that Authority
shall inform the receiving Office and the International Bureau.
9.3 Reference to Article 21 (6)
"Disparaging statements," referred to in Article 21 (6), shall have the
meaning as defined in Rule 9.1 (iii).
Rule 10
Terminology and Signs 10.1 Terminology and Signs
(a) Units of weights and measures shall be expressed in terms of the
metric system, or also expressed in such terms if first expressed in
terms of a different system.
(b) Temperatures shall be expressed in degrees Celsius, or also expressed
in degrees Celsius if first expressed in a different manner.
(d) For indications of heat, energy, light, sound, and magnetism, as well
as for mathematical formulae and electrical units, the rules of
international practice shall be observed; for chemical formulae, the
symbols, atomic weights, and molecular formulae, in general use, shall
be employed.
(e) In general, only such technical terms, signs and symbols should be
used as are generally accepted in the art.
(f) When the international application or its translation is in Chinese,
English or Japanese, the beginning of any decimal fraction shall be
marked by a period, whereas, when the international application or its
translation is in a language other than Chinese, English or Japanese,
it shall be marked by a comma. 10.2 Consistency The terminology and
the signs shall be consistent throughout the international
application.
Rule 11
Physical Requirements of the International Application 11.1 Number of Copies
(a) Subject to the provisions of paragraph (b), the international
application and each of the documents referred to in the check list
(Rule 3.3 (a) (ii)) shall be filed in one copy.
(b) Any receiving Office may require that the international application
and any of the documents referred to in the check list (Rule 3.3 (a)
(ii)), except the receipt for the fees paid or the check for the
payment of the fees, be filed in two or three copies. In that case,
the receiving Office shall be responsible for verifying the identity
of the second and the third copies with the record copy. 11.2 Fitness
for Reproduction
(a) All elements of the international application (i.e., the request, the
description, the claims, the drawings, and the abstract) shall be so
presented as to admit of direct reproduction by photography,
electrostatic processes, photo offset, and microfilming, in any number
of copies.
(b) All sheets shall be free from creases and cracks; they shall not be
folded.
(c) Only one side of each sheet shall be used.
(d) Subject to Rule 11.10 (d) and Rule 11.13 (j), each sheet shall be used
in an upright position (i.e., the short sides at the top and bottom).
11.3 Material to be Used All elements of the international application
shall be on paper which shall be flexible, strong, white, smooth,
non-shiny, and durable. 11.4 Separate Sheets, Etc.
(a) Each element (request, description, claims, drawings, abstract) of the
international application shall commence on a new sheet.
(b) All sheets of international application shall be so connected that
they can be easily turned when consulted, and easily separated and
joined again if they have been separated for reproduction purposes.
11.5 Size of Sheets The size of the sheets shall be A4 (29.7 cm x 21
cm). However, any receiving Office may accept international
applications on sheets of other sizes provided that the record copy,
as transmitted to the International Bureau, and, if the competent
International Searching Authority so desires, the search copy, shall
be of A4 size. 11.6 Margins
(a) The minimum margins of the sheets containing the description, the
claims, and the abstract, shall be as follows: Ñ top: 2 cm Ñ left
side: 2.5 cm Ñ right side: 2 cm Ñ bottom: 2 cm
(b) The recommended maximum, for the margins provided for in paragraph
(a), is as follows: Ñ top: 4 cm Ñ left side: 4 cm Ñ right side: 3 cm Ñ
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: Ñ
top: 2.5 cm Ñ left side: 2.5 cm Ñ right side: 1.5 cm Ñ bottom: 1.0 cm
(d) The margins referred to in paragraphs (a) to (c) apply to A4- size
sheets, so that, even if the receiving Office accepts other sizes, the
A4-size record copy and, when so required, the A4-size search copy
shall leave the aforesaid margins.
(e) Subject to paragraph (f) and to Rule 11.8 (b), the margins of the
international application, when submitted, must be completely blank.
(f) The top margin may contain in the left-hand corner an indication of
the applicant's file reference, provided that the reference appears
within 1.5 cm from the top of the sheet. The number of characters in
the applicant's file reference shall not exceed the maximum fixed by
the Administrative Instructions. 11.7 Numbering of Sheets
(a) All the sheets contained in the international application shall be
numbered in consecutive arabic numerals.
(b) The numbers shall be centered at the top or bottom of the sheet, but
shall not be placed in the margin. 11.8 Numbering of Lines
(a) It is strongly recommended to number every fifth line of each sheet of
the description, and of each sheet of claims.
(b) The numbers should appear in the right half of the left margin. 11.9
Writing of Text Matter
(a) The request, the description, the claims and the abstract shall be
typed or printed.
(b) Only graphic symbols and characters, chemical or mathematical
formulae, and certain characters in the Chinese or Japanese language
may, when necessary, be written by hand or drawn.
(c) The typing shall be 1-spaced.
(d) All text matter shall be in characters the capital letters of which
are not less than 0.21 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
Chinese or Japanese language. 11.10 Drawings, Formulae, and Tables, in
Text Matter
(a) The request, the description, the claims and the abstract shall not
contain drawings.
(b) The description, the claims and the abstract may contain chemical or
mathematical formulae.
(c) The description and the abstract may contain tables; any claim may
contain tables only if the subject matter of the claim makes the use
of tables desirable.
(d) Tables and chemical or mathematical formulae may be placed sideways on
the sheet if they cannot be presented satisfactorily in an upright
position thereon; sheets on which tables or chemical or mathematical
formulae are presented sideways shall be so presented that the tops of
the tables or formulae are at the left side of the sheet. 11.11 Words
in Drawings
(a) The drawings shall not contain text matter, except a single word or
words, when absolutely indispensable, such as "water," "steam,"
"open," "closed," "section on AB," and, in the case of electric
circuits and block schematic or flow sheet diagrams, a few short catch
words indispensable for understanding.
(b) Any words used shall be so placed that, if translated, they may be
pasted over without interfering with any lines of the drawings. 11.12
Alterations, Etc. Each sheet shall be reasonably free from erasures
and shall be free from alterations, overwritings, and interlineations.
Non-compliance with this Rule may be authorized if the authenticity of
the content is not in question and the requirements for good
reproduction are not in jeopardy. 11.13 Special Requirements for
Drawings
(a) Drawings shall be executed in durable, black, sufficiently dense and
dark, uniformly thick and well-defined, lines and strokes without
colorings.
(b) Cross-sections shall be indicated by oblique hatching which should not
impede the clear reading of the reference signs and leading lines.
(c) The scale of the drawings and the distinctness of their graphical
execution shall be such that a photographic reproduction with a linear
reduction in size to two-thirds would enable all details to be
distinguished without difficulty.
(d) When, in exceptional cases, the scale is given on a drawing, it shall
be represented graphically.
(e) All numbers, letters and reference lines, appearing on the drawings,
shall be simple and clear. Brackets, circles or inverted commas shall
not be used in association with numbers and letters.
(f) All lines in the drawings shall, ordinarily, be drawn with the aid of
drafting instruments.
(g) Each element of each figure shall be in proper proportion to each of
the other elements in the figure, except where the use of a different
proportion is indispensable for the clarity of the figure.
(h) The height of the numbers and letters shall not be less than 0.32 cm.
For the lettering of drawings, the Latin and, where customary, the
Greek alphabets shall be used.
(i) The same sheet of drawings may contain several figures. Where
figures on two or more sheets form in effect a single complete
figure, the figures on the several sheets shall be so arranged
that the complete figure can be assembled without concealing
any part of any of the figures appearing on the various sheets.
(j) The different figures shall be arranged on a sheet or sheets without
wasting space, preferably in an upright position, clearly separated
from one another. Where the figures are not arranged in an upright
position, they shall be presented sideways with the top of the figures
at the left side of the sheet.
(k) The different figures shall be numbered in arabic numerals
consecutively and independently of the numbering of the sheets.
(l) Reference signs not mentioned in the description shall not appear in
the drawings, and vice versa.
(m) The same features, when denoted by reference signs, shall, throughout
the international application, be denoted by the same signs.
(n) If the drawings contain a large number of reference signs, it is
strongly recommended to attach a separate sheet listing all reference
signs and the features denoted by them. 11.14 Later Documents
Rules 10, and 11.1 to 11.13, also apply to any documentÐfor example, corrected
pages, amended claims, translationsÐsubmitted after the filing of the
international application.
Rule 12
Language of the International Application and Translation for the Purposes of
International Search 12.1 Languages Accepted for the Filing of International
Applications
(a) An international application shall be filed in any language which the
receiving Office accepts for that purpose.
(b) Each receiving Office shall, for the filing of international
applications, accept at least one language which is both:
(i) a language accepted by the International Searching Authority,
or, if applicable, by at least one of the International
Searching Authorities, competent for the international
searching of international applications filed with that
receiving Office, and
(ii) a language of publication.
(c) Notwithstanding paragraph (a), the request shall be filed in a
language which is both a language accepted by the receiving Office
under that paragraph and a language of publication.
(d) Notwithstanding paragraph (a), any text matter contained in the
sequence listing part of the description referred to in Rule 5.2 (a)
shall be presented in accordance with the standard provided for in the
Administrative Instructions. 12.2 Language of Changes in the
International Application
(a) Any amendment of the international application shall, subject to Rules
46.3, 55.3 and 66.9, be in the language in which the application is
filed.
(b) Any rectification under Rule 91.1 of an obvious error in the
international application shall be in the language in which the
application is filed, provided that:
(i) where a translation of the international application is
required under Rule 12.3 (a), 48.3 (b) or 55.2 (a),
rectifications referred to in Rule 91.1 (e) (ii) and (iii)
shall be filed in both the language of the application and the
language of that translation;
(ii) where a translation of the request is required under Rule
26.3ter (c), rectifications referred to in Rule 91.1 (e) (i)
need only be filed in the language of that translation.
(c) Any correction under Rule 26 of a defect in the international
application shall be in the language in which the international
application is filed. Any correction under Rule 26 of a defect in a
translation of the international application furnished under Rule 12.3
or 55.2 (a), or in a translation of the request furnished under Rule
26.3ter (c), shall be in the language of the translation. 12.3
Translation for the Purposes of International Search
(a) Where the language in which the international application is filed is
not accepted by the International Searching Authority that is to carry
out the international search, the applicant shall, within one month
from the date of receipt of the international application by the
receiving Office, furnish to that Office a translation of the
international application into a language which is all of the
following:
(i) a language accepted by that Authority, and
(ii) a language of publication, and
(iii) a language accepted by the receiving Office under Rule 12.1
(a), unless the international application is filed in a
language of publication.
(b) Paragraph (a) shall not apply to the request nor to any sequence
listing part of the description.
(c) Where, by the time the receiving Office sends to the applicant the
notification under Rule 20.5 (c), the applicant has not furnished a
translation required under paragraph (a), the receiving Office shall,
preferably together with that notification, invite the applicant:
(i) to furnish the required translation within the time limit under
paragraph (a);
(ii) in the event that the required translation is not furnished
within the time limit under paragraph (a), to furnish it and to
pay, where applicable, the late furnishing fee referred to in
paragraph (e), within one month from the date of the invitation
or two months from the date of receipt of the international
application by the receiving Office, whichever expires later.
(d) Where the receiving Office has sent to the applicant an invitation
under paragraph (c) and the applicant has not, within the applicable
time limit under paragraph (c) (ii), furnished the required
translation and paid any required late furnishing fee, the
international application shall be considered withdrawn and the
receiving Office shall so declare. Any translation and any payment
received by the receiving Office before that Office makes the
declaration under the previous sentence and before the expiration of
15 months from the priority date shall be considered to have been
received before the expiration of that time limit.
(e) The furnishing of a translation after the expiration of the time limit
under paragraph (a) may be subjected by the receiving Office to the
payment to it, for its own benefit, of a late furnishing fee equal to
50% of the basic fee.
Rule 13
Unity of Invention 13.1 Requirement The international application shall relate
to one invention only or to a group of inventions so linked as to form a
single general inventive concept ("requirement of unity of invention"). 13.2
Circumstances in Which the Requirement of Unity of Invention Is to Be
Considered Fulfilled Where a group of inventions is claimed in one and the
same international application, the requirement of unity of invention referred
to in Rule 13.1 shall be fulfilled only when there is a technical relationship
among those inventions involving one or more of the same or corresponding
special technical features. The expression "special technical features" shall
mean those technical features that define a contribution which each of the
claimed inventions, considered as a whole, makes over the prior art. 13.3
Determination of Unity of Invention Not Affected by Manner of Claiming The
determination whether a group of inventions is so linked as to form a single
general inventive concept shall be made without regard to whether the
inventions are claimed in separate claims or as alternatives within a single
claim. 13.4 Dependent Claims Subject to Rule 13.1, it shall be permitted to
include in the same international application a reasonable number of dependent
claims, claiming specific forms of the invention claimed in an independent
claim, even where the features of any dependent claim could be considered as
constituting in themselves an invention. 13.5 Utility Models Any designated
State in which the grant of a utility model is sought on the basis of an
international application may, instead of Rules 13.1 to 13.4, apply in respect
of the matters regulated in those Rules the provisions of its national law
concerning utility models once the processing of the international application
has started in that State, provided that the applicant shall be allowed at
least 2 months from the expiration of the time limit applicable under Article
22 to adapt his application to the requirements of the said provisions of the
national law.
Rule 13bis
Inventions Relating to Biological Material 13bis.1 Definition
For the purposes of this Rule, "reference to deposited biological material"
means particulars given in an international application with respect to the
deposit of biological material with a depositary institution or to the
biological material so deposited. 13bis.2 References (General)
Any reference to deposited biological material shall be made in accordance
with this Rule and, if so made, shall be considered as satisfying the
requirements of the national law of each designated State. 13bis.3 References:
Contents; Failure to Include Reference or Indication
(a) A reference to deposited biological material shall indicate:
(i) the name and address of the depositary institution with which
the deposit was made;
(ii) the date of deposit of the biological material with that
institution;
(iii) the accession number given to the deposit by that institution;
and
(iv) any additional matter of which the International Bureau has
been notified pursuant to Rule 13bis.7 (a) (i), provided that
the requirement to indicate that matter was published in the
Gazette in accordance with Rule 13bis.7 (c) at least two months
before the filing of the international application.
(b) Failure to include a reference to deposited biological material or
failure to include, in a reference to deposited biological material,
an indication in accordance with paragraph (a), shall have no
consequence in any designated State whose national law does not
require such reference or such indication in a national application.
13bis.4 References: Time Limit for Furnishing Indications
(a) Subject to paragraphs (b) and (c), if any of the indications referred
to in Rule 13bis.3 (a) is not included in a reference to deposited
biological material in the international application as filed but is
furnished to the International Bureau:
(i) within 16 months from the priority date, the indication shall
be considered by any designated Office to have been furnished
in time;
(ii) after the expiration of 16 months from the priority date, the
indication shall be considered by any designated Office to have
been furnished on the last day of that time limit if it reaches
the International Bureau before the technical preparations for
international publication have been completed.
(b) If the national law applicable by a designated Office so requires in
respect of national applications, that Office may require that any of
the indications referred to in Rule 13bis.3 (a) be furnished earlier
than 16 months from the priority date, provided that the International
Bureau has been notified of such requirement pursuant to Rule 13bis.7
(a) (ii) and has published such requirement in the Gazette in
accordance with Rule 13bis.7 (c) at least two months before the filing
of the international application.
(c) Where the applicant makes a request for early publication under
Article 21 (2) (b), any designated Office may consider any indication
not furnished before the technical preparations for international
publication have been completed as not having been furnished in time.
(d) The International Bureau shall notify the applicant of the date on
which it received any indication furnished under paragraph (a), and
(i) if the indication was received before the technical
preparations for international publication have been completed,
indicate that date, and include the relevant data from the
indication, in the pamphlet published under Rule 48;
(ii) if the indication was received after the technical preparations
for international publication have been completed, notify that
date and the relevant data from the indication to the
designated Offices. 13bis.5 References and Indications for the
Purposes of One or More Designated States; Different Deposits
for Different Designated States; Deposits with Depositary
Institutions other than Those Notified
(a) A reference to deposited biological material shall be considered to be
made for the purposes of all designated States, unless it is expressly
made for the purposes of certain of the designated States only; the
same applies to the indications included in the reference.
(b) References to different deposits of the biological material may be
made for different designated States.
(c) Any designated Office may disregard a deposit made with a depositary
institution other than one notified by it under Rule 13bis.7 (b).
13bis.6 Furnishing of Samples
Pursuant to Articles 23 and 40, no furnishing of samples of the deposited
biological material to which a reference is made in an international
application shall, except with the authorization of the applicant, take place
before the expiration of the applicable time limits after which national
processing may start under the said Articles. However, where the applicant
performs the acts referred to in Articles 22 or 39 after international
publication but before the expiration of the said time limits, the furnishing
of samples of the deposited biological material may take place, once the said
acts have been performed. Notwithstanding the previous provision, the
furnishing of samples of the deposited biological material may take place
under the national law applicable by any designated Office as soon as, under
that law, the international publication has the effects of the compulsory
national publication of an unexamined national application. 13bis.7 National
Requirements: Notification and Publication
(a) Any national Office may notify the International Bureau of any
requirement of the national law:
(i) that any matter specified in the notification, in addition to
those referred to in Rule 13bis.3 (a) (i), (ii) and (iii), is
required to be included in a reference to deposited biological
material in a national application;
(ii) that one or more of the indications referred to in Rule 13bis.3
(a) are required to be included in a national application as
filed or are required to be furnished at a time specified in
the notification which is earlier than 16 months from the
priority date.
(b) Each national Office shall notify the International Bureau of the
depositary institutions with which the national law permits deposits
of biological materials to be made for the purposes of patent
procedure before that Office or, if the national law does not provide
for or permit such deposits, of that fact.
(c) The International Bureau shall promptly publish in the Gazette
requirements notified to it under paragraph (a) and information
notified to it under paragraph (b).
Rule 13ter
Nucleotide and/or Amino Acid Sequence Listings 13ter.1 Sequence Listing for
International Authorities
(a) Where the International Searching Authority finds that the
international application contains disclosure of one or more
nucleotide and/or amino acid sequences but:
(i) the international application does not contain a sequence
listing complying with the standard provided for in the
Administrative Instructions, that Authority may invite the
applicant to furnish to it, within a time limit fixed in the
invitation, a sequence listing complying with that standard;
(ii) the applicant has not already furnished a sequence listing in
computer readable form complying with the standard provided for
in the Administrative Instructions, that Authority may invite
the applicant to furnish to it, within a time limit fixed in
the invitation, a sequence listing in such a form complying
with that standard.
(c) If the applicant does not comply with an invitation under paragraph
(a) within the time limit fixed in the invitation, the International
Searching Authority shall not be required to search the international
application to the extent that such non-compliance has the result that
a meaningful search cannot be carried out.
(d) Where the International Searching Authority finds that the description
does not comply with Rule 5.2 (b), it shall invite the applicant to
file the required correction. Rule 26.4 shall apply mutatis mutandis
to any correction offered by the applicant. The International
Searching Authority shall transmit the correction to the receiving
Office and to the International Bureau.
(e) Paragraphs (a) and (c) shall apply mutatis mutandis to the procedure
before the International Preliminary Examining Authority.
(f) Any sequence listing not contained in the international application as
filed shall not, subject to Article 34, form part of the international
application. 13ter.2 Sequence Listing for Designated Office
Once the processing of the international application has started before a
designated Office, Rule 13ter.1 (a) shall apply mutatis mutandis to the
procedure before that Office. No designated Office shall require the applicant
to furnish to it a sequence listing other than a sequence listing complying
with the standard provided for in the Administrative Instructions.
Rule 14
The Transmittal Fee 14.1 The Transmittal Fee
(a) Any receiving Office may require that the applicant pay a fee to it,
for its own benefit, for receiving the international application,
transmitting copies to the International Bureau and the competent
International Searching Authority, and performing all the other tasks
which it must perform in connection with the international application
in its capacity of receiving Office ("transmittal fee").
(b) The amount of the transmittal fee, if any, shall be fixed by the
receiving Office.
(c) The transmittal fee shall be paid within one month from the date of
receipt of the international application. The amount payable shall be
the amount applicable on that date of receipt.
Rule 15
The International Fee 15.1 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 under Rule 4.9 (a), except that, where
Article 44 applies in respect of a designation, only one
designation fee shall be due for that designation, and that the
Schedule of Fees may indicate a maximum number of designation
fees payable. 15.2 Amounts
(a) The amounts of the basic fee and of the designation fee are as set out
in the Schedule of Fees.
(b) The basic fee and the designation fee shall be payable in the currency
or one of the currencies prescribed by the receiving Office
("prescribed currency"), it being understood that, when transferred by
the receiving Office to the International Bureau, they shall be freely
convertible into Swiss currency. The amounts of the basic fee and of
the designation fee shall be established, for each receiving Office
which prescribes the payment of those fees in any currency other than
Swiss currency, by the Director General after consultation with the
receiving Office of, or acting under Rule 19.1 (b) for, the State
whose official currency is the same as the prescribed currency. The
amounts so established shall be the equivalents, in round figures, of
the amounts in Swiss currency set out in the Schedule of Fees. They
shall be notified by the International Bureau to each receiving Office
prescribing payment in that prescribed currency and shall be published
in the Gazette.
(c) 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 receiving
Office referred to in the second sentence of paragraph (b) and the
Director General may agree on a date falling during the said two-month
period, in which case the said amounts shall become applicable from
that date. 15.4 Time Limit for Payment; Amount Payable
(a) The basic fee shall be paid within one month from the date of receipt
of the international application. The amount payable shall be the
amount applicable on that date of receipt.
(b) The designation fee shall be paid within a time limit of:
(i) one year from the priority date, or
(ii) one month from the date of receipt of the international
application if that one-month period expires later than one
year from the priority date.
(c) Where the designation fee is paid before the expiration of one month
from the date of receipt of the international application, the amount
payable shall be the amount applicable on that date of receipt. Where
the time limit under paragraph (b) (i) applies and the designation fee
is paid before the expiration of that time limit but later than one
month from the date of receipt of the international application, the
amount payable shall be the amount applicable on the date of payment.
15.5 Fees under Rule 4.9 (c)
(a) Notwithstanding Rule 15.4 (b), the confirmation under Rule 4.9 (c) of
any designations made under Rule 4.9 (b) shall be subject to the
payment to the receiving Office of as many designation fees (for the
benefit of the International Bureau) as there are national patents and
regional patents sought by the applicant by virtue of the
confirmation, together with a confirmation fee (for the benefit of the
receiving Office) equal to 50% of the sum of the designation fees
payable under this paragraph. Such fees shall be payable in respect of
each designation so confirmed, even if the maximum number of
designation fees referred to in item 2 (a) of the Schedule of Fees is
already payable or if a designation fee is already payable in respect
of the designation under Rule 4.9 (a) of the same State for a
different purpose.
(b) Where moneys paid by the applicant within the time limit under Rule
4.9 (b) (ii) are not sufficient to cover the fees due under paragraph
(a), the receiving Office shall allocate any moneys paid as specified
by the applicant or, in the absence of such specification, as
prescribed by the Administrative Instructions. 15.6 Refund
The receiving Office shall refund the international fee to the applicant:
(i) if the determination under Article 11 (1) is negative,
(ii) if, before the transmittal of the record copy to the
International Bureau, the international application is
withdrawn or considered withdrawn, or
(iii) if, due to prescriptions concerning national security, the
international application is not treated as such.
Rule 16 The Search Fee 16.1 Right to Ask for a Fee
(a) 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 one of the currencies
prescribed by that Office ("receiving Office currency"), it being
understood that, if any receiving Office currency is not that, or one
of those, in which the International Searching Authority has fixed the
said fee ("fixed currency"), it shall, when transferred by the
receiving Office to the International Searching Authority, be freely
convertible into the currency of the State in which the International
Searching Authority has its headquarters ("headquarters currency").
The amount of the search fee in any receiving Office currency, other
than the fixed currency, shall be established by the Director General
after consultation with the receiving Office of, or acting under Rule
19.1 (b) for, the State whose official currency is the same as the
receiving Office currency. The amounts so established shall be the
equivalents, in round figures, of the amount established by the
International Searching Authority in the headquarters currency. They
shall be notified by the International Bureau to each receiving Office
prescribing payment in that receiving Office currency and shall be
published in the Gazette.
(c) 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 receiving Office
referred to in the third sentence of paragraph (b) and the Director
General may agree on a date falling during the said two-month period,
in which case the said amount shall become applicable for that Office
from that date.
(e) 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 limit for payment of the search fee and the amount
payable, the provisions of Rule 15.4 (a) relating to the basic fee
shall apply mutatis mutandis. 16.2 Refund The receiving Office shall
refund the search fee to the applicant:
(i) if the determination under Article 11 (1) is negative,
(ii) if, before the transmittal of the search copy to the
International Searching Authority, the international
application is withdrawn or considered withdrawn, or
(iii) if, due to prescriptions concerning national security, the
international application is not treated as such. 16.3 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
Extension of Time Limits for Payment of Fees 16bis.1 Invitation by the
Receiving Office
(a) Where, by the time they are due under Rules 14.1 (c), 15.4 (a) and
16.1 (f), the receiving Office finds that no fees were paid to it, or
that the amount paid to it is insufficient to cover the transmittal
fee, the basic fee and the search fee, the receiving Office shall
invite the applicant to pay to it the amount required to cover those
fees, together with, where applicable, the late payment fee under Rule
16bis.2, within a time limit of one month from the date of the
invitation.
(b) Where, by the time they are due under Rule 15.4 (b), the receiving
Office finds that no fees were paid to it, or that the amount paid to
it is insufficient to cover the designation fees necessary to cover
all the designations under Rule 4.9 (a), the receiving Office shall
invite the applicant to pay to it the amount required to cover those
fees, together with, where applicable, the late payment fee under Rule
16bis.2, within a time limit of one month from the date of the
invitation. The amount payable in respect of any designation fee shall
be the amount applicable on the last day of the one-year period from
the priority date if the time limit under Rule 15.4 (b) (i) applies or
the amount applicable on the date of receipt of the international
application if the time limit under Rule 15.4 (b) (ii) applies.
(c) Where the receiving Office has sent to the applicant an invitation
under paragraph (a) or (b) and the applicant has not, within the time
limit referred to in that paragraph, paid in full the amount due,
including, where applicable, the late payment fee under Rule 16bis.2,
the receiving Office shall, subject to paragraph (d):
(i) allocate any moneys paid as specified by the applicant or, in
the absence of such specification, as prescribed by the
Administrative Instructions,
(ii) make the applicable declaration under Article 14 (3), and
(iii) proceed as provided in Rule 29.
(d) Any payment received by the receiving Office before that Office sends
the invitation under paragraph (a) or (b) shall be considered to have
been received before the expiration of the time limit under Rule 14.1
(c), 15.4 (a) or (b) or 16.1 (f), as the case may be.
(e) Any payment received by the receiving Office before that Office makes
the applicable declaration under Article 14 (3) shall be considered to
have been received before the expiration of the time limit referred to
in paragraph (a) or (b). 16bis.2 Late Payment Fee
(a) The payment of fees in response to an invitation under Rule 16bis.1
(a) or (b) may be subjected by the receiving Office to the payment to
it, for its own benefit, of a late payment fee. The amount of that fee
shall be:
(i) 50% of the amount of unpaid fees which is specified in the
invitation, or,
(ii) if the amount calculated under item (i) is less than the
transmittal fee, an amount equal to the transmittal fee.
(b) The amount of the late payment fee shall not, however, exceed the
amount of the basic fee referred to in item 1(a) of the Schedule of
Fees.
Rule 17
The Priority Document 17.1 Obligation to Submit Copy of Earlier National or
International Application
(a) Where the priority of an earlier national or international application
is claimed under Article 8, a copy of that earlier application,
certified by the authority with which it was filed ("the priority
document"), shall, unless already filed with the receiving Office
together with the international application in which the priority
claim is made, and subject to paragraph (b), be submitted by the
applicant to the International Bureau or to the receiving Office not
later than 16 months after the priority date, provided that any copy
of the said earlier application which is received by the International
Bureau after the expiration of that time limit shall be considered to
have been received by that Bureau on the last day of that time limit
if it reaches it before the date of international publication of the
international application.
(b) Where the priority document is issued by the receiving Office, the
applicant may, instead of submitting the priority document, request
the receiving Office to prepare and transmit the priority document to
the International Bureau. Such request shall be made not later than 16
months after the priority date and may be subjected by the receiving
Office to the payment of a fee.
(c) If the requirements of neither of the two preceding paragraphs are
complied with, any designated State may disregard the priority claim,
provided that no designated Office shall disregard the priority claim
before giving the applicant an opportunity to furnish the priority
document within a time limit which shall be reasonable under the
circumstances. 17.2 Availability of Copies
(a) Where the applicant has complied with Rule 17.1 (a) or (b), the
International Bureau shall, at the specific request of the designated
Office, promptly but not prior to the international publication of the
international application, furnish a copy of the priority document to
that Office. No such Office shall ask the applicant himself to furnish
it with a copy. The applicant shall not be required to furnish a
translation to the designated Office before the expiration of the
applicable time limit under Article 22. Where the applicant makes an
express request to the designated Office under Article 23 (2) prior to
the international publication of the international application, the
International Bureau shall, at the specific request of the designated
Office, furnish a copy of the priority document to that Office
promptly after receiving it.
(b) The International Bureau shall not make copies of the priority
document available to the public prior to the international
publication of the international application.
(c) Where the international application has been published under Article
21, the International Bureau shall furnish a copy of the priority
document to any person upon request and subject to reimbursement of
the cost unless, prior to that publication:
(i) the international application was withdrawn,
(ii) the relevant priority claim was withdrawn or considered, under
Rule 26bis.2 (b), not to have been made.
Rule 18
The Applicant 18.1 Residence and Nationality
(a) Subject to the provisions of paragraphs (b) and (c), the question
whether an applicant is a resident or national of the Contracting
State of which he claims to be a resident or national shall depend on
the national law of that State and shall be decided by the receiving
Office.
(b) In any case,
(i) possession of a real and effective industrial or commercial
establishment in a Contracting State shall be considered
residence in that State, and
(ii) a legal entity constituted according to the national law of a
Contracting State shall be considered as a national of that
State.
(c) Where the international application is filed with the International
Bureau as receiving Office, the International Bureau shall, in the
circumstances specified in the Administrative Instructions, request
the national Office of, or acting for, the Contracting State concerned
to decide the question referred to in paragraph (a). The International
Bureau shall inform the applicant of any such request. The applicant
shall have an opportunity to submit arguments directly to the national
Office. The national Office shall decide the said question promptly.
18.3 Two or More Applicants If there are two or more applicants, the
right to file an international application shall exist if at least one
of them is entitled to file an international application according to
Article 9. 18.4 Information on Requirements Under National Law as to
Applicants
(c) The International Bureau shall, from time to time, publish information
on the various national laws in respect of the question who is
qualified (inventor, successor in title of the inventor, owner of the
invention, or other) to file a national application and shall
accompany such information by a warning that the effect of the
international application in any designated State may depend on
whether the person designated in the international application as
applicant for the purposes of that State is a person who, under the
national law of that State, is qualified to file a national
application.
Rule 19
The Competent Receiving Office 19.1 Where to File
(a) Subject to the provisions of paragraph (b), the international
application shall be filed, at the option of the applicant,
(i) with the national Office of or acting for the Contracting State
of which the applicant is a resident,
(ii) with the national Office of or acting for the Contracting State
of which the applicant is a national, or
(iii) irrespective of the Contracting State of which the applicant is
a resident or national, with the International Bureau.
(b) Any Contracting State may agree with another Contracting State or any
intergovernmental organization that the national Office of the latter
State or the intergovernmental organization shall, for all or some
purposes, act instead of the national Office of the former State as
receiving Office for applicants who are residents or nationals of that
former State. Notwithstanding such agreement, the national Office of
the former State shall be considered the competent receiving Office
for the purposes of Article 15 (5).
(c) In connection with any decision made under Article 9 (2), the Assembly
shall appoint the national Office or the intergovernmental
organization which will act as receiving Office for applications of
residents or nationals of States specified by the Assembly. Such
appointment shall require the previous consent of the said national
Office or intergovernmental organization. 19.2 Two or More Applicants
If there are two or more applicants:
(i) the requirements of Rule 19.1 shall be considered to be met if
the national Office with which the international application is
filed is the national Office of or acting for a Contracting
State of which at least one of the applicants is a resident or
a national;
(ii) the international application may be filed with the
International Bureau under Rule 19.1 (a) (iii) if at least one
of the applicants is a resident or national of a Contracting
State. 19.3 Publication of Fact of Delegation of Duties of
Receiving Office
(a) Any agreement referred to in Rule 19.1 (b) shall be promptly notified
to the International Bureau by the Contracting State which delegates
the duties of the receiving Office to the national Office of or acting
for another Contracting State or an intergovernmental organization.
(b) The International Bureau shall, promptly upon receipt, publish the
notification in the Gazette. 19.4 Transmittal to the International
Bureau as Receiving Office
(a) Where an international application is filed with a national Office
which acts as a receiving Office under the Treaty but
(i) that national Office is not competent under Rule 19.1 or 19.2
to receive that international application, or
(ii) that international application is not in a language accepted
under Rule 12.1 (a) by that national Office but is in a
language accepted under that Rule by the International Bureau
as receiving Office, or
(iii) that national Office and the International Bureau agree, for
any reason other than those specified under items (i) and (ii),
and with the authorization of the applicant, that the procedure
under this Rule should apply, that international application
shall, subject to paragraph (b), be considered to have been
received by that Office on behalf of the International Bureau
as receiving Office under Rule 19.1 (a) (iii).
(b) Where, pursuant to paragraph (a), an international application is
received by a national Office on behalf of the International Bureau as
receiving Office under Rule 19.1 (a) (iii), that national Office
shall, unless prescriptions concerning national security prevent the
international application from being so transmitted, promptly transmit
it to the International Bureau. Such transmittal may be subjected by
the national Office to the payment of a fee, for its own benefit,
equal to the transmittal fee charged by that Office under Rule 14. The
international application so transmitted shall be considered to have
been received by the International Bureau as receiving Office under
Rule 19 (1) (a) (iii) on the date of receipt of the international
application by that national Office.
(c) For the purposes of Rules 14.1 (c), 15.4 (a) to (c) and 16.1 (f),
where the international application was transmitted to the
International Bureau under paragraph (b), the date of receipt of the
international application shall be considered to be the date on which
the international application was actually received by the
International Bureau. For the purposes of this paragraph, the last
sentence of paragraph (b) shall not apply.
Rule 20
Receipt of the International Application 20.1 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
on the request of each copy received and the international application
number 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.
20.4 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.
(c) For the purposes of Article 11 (1) (ii), it shall be sufficient that
the part which appears to be a description (other than any sequence
listing part thereof) and the part which appears to be a claim or
claims be in a language accepted by the receiving Office under Rule
12.1 (a).
(d) If, on October 1, 1997, paragraph (c) is not compatible with the
national law applied by the receiving Office, paragraph (c) shall not
apply to that receiving Office for as long as it continues not to be
compatible with that law, provided that the said Office informs the
International Bureau accordingly by December 31, 1997. The information
received shall be promptly published by the International Bureau in
the Gazette. 20.5 Positive Determination
(a) If the determination under Article 11 (1) is positive, the receiving
Office shall stamp on the request 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 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 fulfil 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 and Translation 22.1 Procedure
(a) If the determination under Article 11 (1) is positive, and unless
prescriptions concerning national security prevent the international
application from being treated as such, the receiving Office shall
transmit the record copy to the International Bureau. Such transmittal
shall be effected promptly after receipt of the international
application or, if a check to preserve national security must be
performed, as soon as the necessary clearance has been obtained. In
any case, the receiving Office shall transmit the record copy in time
for it to reach the International Bureau by the expiration of the 13th
month from the priority date. If the transmittal is effected by mail,
the receiving Office shall mail the record copy not later than 5 days
prior to the expiration of the 13th month from the priority date.
(b) If the International Bureau has received a copy of the notification
under Rule 20.5 (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).
(h) Where the international application is to be published in the language
of a translation furnished under Rule 12.3, that translation shall be
transmitted by the receiving Office to the International Bureau
together with the record copy under paragraph (a) or, if the receiving
Office has already transmitted the record copy to the International
Bureau under that paragraph, promptly after receipt of the
translation. 22.3 Time Limit under Article 12 (3) The time limit
referred to in Article 12 (3) shall be 3 months from the date of the
notification sent by the International Bureau to the applicant under
Rule 22.1 (c) or (g).
Rule 23
Transmittal of the Search Copy, Translation and Sequence Listing 23.1
Procedure
(a) Where no translation of the international application is required
under Rule 12.3 (a), the search copy shall be transmitted by the
receiving Office to the International Searching Authority at the
latest on the same day as the record copy is transmitted to the
International Bureau unless no search fee has been paid. In the latter
case, it shall be transmitted promptly after payment of the search
fee.
(b) Where a translation of the international application is furnished
under Rule 12.3, a copy of that translation and of the request, which
together shall be considered to be the search copy under Article 12
(1), shall be transmitted by the receiving Office to the International
Searching Authority, unless no search fee has been paid. In the latter
case, a copy of the said translation and of the request shall be
transmitted promptly after payment of the search fee.
(c) Any sequence listing in computer readable form which is furnished to
the receiving Office shall be transmitted by that Office 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) The International Bureau shall promptly notify:
(i) the applicant,
(ii) the receiving Office, and
(iii) the International Searching Authority (unless it has informed
the International Bureau that it wishes not to be so notified),
of the fact and the date of receipt of the record copy. The
notification shall identify the international application by
its number, the international filing date and the name of the
applicant, and shall indicate the filing date of any earlier
application whose priority is claimed. The notification sent to
the applicant shall also contain a list of the States
designated under Rule 4.9 (a) and, where applicable, of those
States whose designations have been confirmed under Rule 4.9
(c).
(b) Each designated Office which has informed the International Bureau
that it wishes to receive the notification under paragraph (a) prior
to the communication under Rule 47.1 shall be so notified by the
International Bureau:
(i) if the designation concerned was made under Rule 4.9 (a),
promptly after the receipt of the record copy;
(ii) if the designation concerned was made under Rule 4.9 (b),
promptly after the International Bureau has been informed by
the receiving Office of the confirmation of that designation.
(c) If the record copy is received after the expiration of the time limit
fixed in Rule 22.3, the International Bureau shall promptly notify the
applicant, the receiving Office, and the International Searching
Authority, accordingly.
Rule 25
Receipt of the Search Copy by the International Searching Authority 25.1
Notification of Receipt of the Search Copy The International Searching
Authority shall promptly notify the International Bureau, the applicant,
andÑunless the International Searching Authority is the same as the receiving
OfficeÑthe 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)
(a) Where the international application is filed in a language of
publication, the receiving Office shall check:
(i) the international application for compliance with the physical
requirements referred to in Rule 11 only to the extent that
compliance therewith is necessary for the purpose of reasonably
uniform international publication;
(ii) any translation furnished under Rule 12.3 for compliance with
the physical requirements referred to in Rule 11 to the extent
that compliance therewith is necessary for the purpose of
satisfactory reproduction.
(b) Where the international application is filed in a language which is
not a language of publication, the receiving Office shall check:
(i) the international application for compliance with the physical
requirements referred to in Rule 11 only to the extent that
compliance therewith is necessary for the purpose of
satisfactory reproduction;
(ii) any translation furnished under Rule 12.3 and the drawings for
compliance with the physical requirements referred to in Rule
11 to the extent that compliance therewith is necessary for the
purpose of reasonably uniform international publication.
26.3bis Invitation under Article 14 (1) (b) to Correct Defects
Under Rule 11
The receiving Office shall not be required to issue the invitation under
Article 14 (1) (b) to correct a defect under Rule 11 where the physical
requirements referred to in that Rule are complied with to the extent required
under Rule 26.3. 26.3ter Invitation to Correct Defects Under Article 3(4)(i)
(a) Where the abstract or any text matter of the drawings is filed in a
language which is different from the language of the description and
the claims, the receiving Office shall, unless
(i) a translation of the international application is required
under Rule 12.3 (a), or
(ii) the abstract or the text matter of the drawings is in the
language in which the international application is to be
published, invite the applicant to furnish a translation of the
abstract or the text matter of the drawings into the language
in which the international application is to be published.
Rules 26.1 (a), 26.2, 26.3, 26.3bis, 26.5 and 29.1 shall apply
mutatis mutandis.
(b) If, on October 1, 1997, paragraph (a) is not compatible with the
national law applied by the receiving Office, paragraph (a) shall not
apply to that receiving Office for as long as it continues not to be
compatible with that law, provided that the said Office informs the
International Bureau accordingly by December 31, 1997. The information
received shall be promptly published by the International Bureau in
the Gazette.
(c) Where the request does not comply with Rule 12.1(c), the receiving
Office shall invite the applicant to file a translation so as to
comply with that Rule. Rules 3, 26.1 (a), 26.2, 26.5 and 29.1 shall
apply mutatis mutandis.
(d) If, on October 1, 1997, paragraph (c) is not compatible with the
national law applied by the receiving Office, paragraph (c) shall not
apply to that receiving Office for as long as it continues not to be
compatible with that law, provided that the said Office informs the
International Bureau accordingly by December 31, 1997. The information
received shall be promptly published by the International Bureau in
the Gazette. 26.4 Procedure
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 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 26bis
Correction or Addition of Priority Claim 26bis.1 Correction or Addition of
Priority Claim
(a) The applicant may correct or add a priority claim by a notice
submitted to the receiving Office or the International Bureau within a
time limit of 16 months from the priority date or, where the
correction or addition would cause a change in the priority date, 16
months from the priority date as so changed, whichever 16-month period
expires first, provided that such a notice may be submitted until the
expiration of four months from the international filing date. The
correction of a priority claim may include the addition of any
indication referred to in Rule 4.10.
(b) Any notice referred to in paragraph (a) received by the receiving
Office or the International Bureau after the applicant has made a
request for early publication under Article 21 (2) (b) shall be
considered not to have been submitted, unless that request is
withdrawn before the technical preparations for international
publication have been completed.
(c) Where the correction or addition of a priority claim causes a change
in the priority date, any time limit which is computed from the
previously applicable priority date and which has not already expired
shall be computed from the priority date as so changed. 26bis.2
Invitation to Correct Defects in Priority Claims
(a) Where the receiving Office or, if the receiving Office fails to do so,
the International Bureau, finds that a priority claim does not comply
with the requirements of Rule 4.10 or that any indication in a
priority claim is not the same as the corresponding indication
appearing in the priority document, the receiving Office or the
International Bureau, as the case may be, shall invite the applicant
to correct the priority claim.
(b) If, in response to an invitation under paragraph (a), the applicant
does not, before the expiration of the time limit under Rule 26bis.1
(a), submit a notice correcting the priority claim so as to comply
with the requirements of Rule 4.10, that priority claim shall, for the
purposes of the procedure under the Treaty, be considered not to have
been made and the receiving Office or the International Bureau, as the
case may be, shall so declare and shall inform the applicant
accordingly, provided that a priority claim shall not be considered
not to have been made only because the indication of the number of the
earlier application referred to in Rule 4.10 (a) (ii) is missing or
because an indication in the priority claim is not the same as the
corresponding indication appearing in the priority document.
(c) Where the receiving Office or the International Bureau has made a
declaration under paragraph (b), the International Bureau shall, upon
request made by the applicant and received by the International Bureau
prior to the completion of the technical preparations for
international publication, and subject to the payment of a special fee
whose amount shall be fixed in the Administrative Instructions,
publish, together with the international application, information
concerning the priority claim which was considered not to have been
made. A copy of that request shall be included in the communication
under Article 20 where a copy of the pamphlet is not used for that
communication or where the international application is not published
by virtue of Article 64 (3).
Rule 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)), the search fee (Rule 16),
and, where required, the late payment fee (Rule 16bis.2).
(b) For the purposes of Article 14 (3) (a) and (b), "the fee prescribed
under Article 4 (2)" means the designation fee part of the
international fee (Rule 15.1 (ii)) and, where required, the late
payment fee (Rule 16bis.2).
Rule 28
Defects Noted by the International Bureau 28.1 Note on Certain Defects
(a) If, in the opinion of the International Bureau, the international
application contains any of the defects referred to in Article 14 (1)
(a) (i), (ii), or (v), the International Bureau shall bring such
defects to the attention of the receiving Office.
(b) The receiving Office shall, unless it disagrees with the said opinion,
proceed as provided in Article 14 (1) (b) and Rule 26.
Rule 29
International Applications or Designations Considered Withdrawn 29.1 Finding
by Receiving Office
(a) If the receiving Office declares, under Article 14 (1) (b) and Rule
26.5 (failure to correct certain defects), or under Article 14 (3) (a)
(failure to pay the prescribed fees under Rule 27.1 (a)), or under
Article 14 (4) (later finding of non-compliance with the requirements
listed in items (i) to (iii) of Article 11 (1)), or under Rule 12.3
(d) (failure to furnish a required translation or, where applicable,
to pay a late furnishing fee), or under Rule 92.4 (g) (i) (failure to
furnish the original of a document), that the international
application is considered withdrawn:
(i) the receiving Office shall transmit the record copy (unless
already transmitted), and any correction offered by the
applicant, to the International Bureau;
(ii) the receiving Office shall promptly notify both the applicant
and the International Bureau of the said declaration, and the
International Bureau shall in turn notify each designated
Office which has already been notified of its designation;
(iii) the receiving Office shall not transmit the search copy as
provided in Rule 23, or, if such copy has already been
transmitted, it shall notify the International Searching
Authority of the said declaration;
(iv) the International Bureau shall not be required to notify the
applicant of the receipt of the record copy.
(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 each designated Office which has already been notified of its
designation. 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
Extension of Effects of International Application to Certain
Successor States 32.1 Request for Extension of International Application to
Successor State
(a) The effects of any international application whose international
filing date falls in the period defined in paragraph (b) may, subject
to the performance by the applicant of the acts specified in paragraph
(c), be extended to a State ("the successor State") whose territory
was, before the independence of that State, part of the territory of a
Contracting State which subsequently ceased to exist ("the predecessor
State"), provided that the successor State has become a Contracting
State through the deposit, with the Director General, of a declaration
of continuation the effect of which is that the Treaty is applied by
the successor State.
(b) The period referred to in paragraph (a) starts on the day following
the last day of the existence of the predecessor State and ends two
months after the date on which the declaration referred to in
paragraph (a) was notified by the Director General to the Governments
of the States party to the Paris Convention for the Protection of
Industrial Property. However, where the date of independence of the
successor State is earlier than the date of the day following the last
day of the existence of the predecessor State, the successor State may
declare that the said period starts on the date of its independence;
such a declaration shall be made together with the declaration
referred to in paragraph (a) and shall specify the date of
independence.
(c) In respect of any international application whose filing date falls
within the applicable period under paragraph (b), the International
Bureau shall send the applicant a notification informing him that he
may make a request for extension by performing, within three months
from the date of that notification, the following acts:
(i) filing with the International Bureau the request for extension;
(ii) paying to the International Bureau an extension fee in Swiss
francs, the amount of which shall be the same as the amount of
the designation fee referred to in Rule 15.2 (a).
(d) This Rule shall not apply to the Russian Federation. 32.2 Effects of
Extension to Successor State
(a) Where a request for extension is made in accordance with Rule 32.1,
(i) the successor State shall be considered as having been
designated in the international application, and
(ii) the applicable time limit under Article 22 or 39 (1) in
relation to that State shall be extended until the expiration
of at least three months from the date of the request for
extension.
(b) Where, in the case of a successor State which is bound by Chapter II
of the Treaty, the request for extension was made after, but the
demand was made before, the expiration of the 19th month from the
priority date, and a later election is made of the successor State
within three months from the date of the request for extension, the
applicable time limit under paragraph (a) (ii) shall be at least 30
months from the priority date.
(c) The successor State may fix time limits which expire later than those
provided in paragraphs (a) (ii) and (b). The International Bureau
shall publish information on such time limits in the Gazette.
Rule 33
Relevant Prior Art for the International Search 33.1 Relevant Prior Art for
the International Search
(a) For the purposes of Article 15 (2), relevant prior art shall consist
of everything which has been made available to the public anywhere in
the world by means of written disclosure (including drawings and other
illustrations) and which is capable of being of assistance in
determining that the claimed invention is or is not new and that it
does or does not involve an inventive step (i.e., that it is or is not
obvious), provided that the making available to the public occurred
prior to the international filing date.
(b) When any written disclosure refers to an oral disclosure, use,
exhibition, or other means whereby the contents of the written
disclosure were made available to the public, and such making
available to the public occurred on a date prior to the international
filing date, the international search report shall separately mention
that fact and the date on which it occurred if the making available to
the public of the written disclosure occurred on a date which is the
same as, or later than, the international filing date.
(c) Any published application or any patent whose publication date is the
same as, or later than, but whose filing date, or, where applicable,
claimed priority date, is earlier than the international filing date
of the international application searched, and which would constitute
relevant prior art for the purposes of Article 15 (2) had it been
published prior to the international filing date, shall be specially
mentioned in the international search report. 33.2 Fields to be
Covered by the International Search
(a) The international search shall cover all those technical fields, and
shall be carried out on the basis of all those search files, which may
contain material pertinent to the invention.
(b) Consequently, not only shall the art in which the invention is
classifiable be searched but also analogous arts regardless of where
classified.
(c) The question what arts are, in any given case, to be regarded as
analogous shall be considered in the light of what appears to be the
necessary essential function or use of the invention and not only the
specific functions expressly indicated in the international
application.
(d) The international search shall embrace all subject matter that is
generally recognized as equivalent to the subject matter of the
claimed invention for all or certain of its features, even though, in
its specifics, the invention as described in the international
application is different. 33.3 Orientation of the International Search
(a) International search shall be made on the basis of the claims, with
due regard to the description and the drawings (if any) and with
particular emphasis on the inventive concept towards which the claims
are directed.
(b) In so far as possible and reasonable, the international search shall
cover the entire subject matter to which the claims are directed or to
which they might reasonably be expected to be directed after they have
been amended.
Rule 34
Minimum Documentation 34.1 Definition
(a) The definitions contained in Article 2 (i) and (ii) shall not apply
for the purposes of this Rule.
(b) The documentation referred to in Article 15 (4) ("minimum
documentation") shall consist of:
(i) the "national patent documents" as specified in paragraph (c),
(ii) the published international (PCT) applications, the published
regional applications for patents and inventors' certificates,
and the published regional patents and inventors' certificates,
(iii) such other published items of non-patent literature as the
International Searching Authorities shall agree upon and which
shall be published in a list by the International Bureau when
agreed upon for the first time and whenever changed.
(c) Subject to paragraphs (d) and (e), the "national patent documents"
shall be the following:
(i) the patents issued in and after 1920 by France, the former
Reichspatentamt of Germany, Japan, the former Soviet Union,
Switzerland (in the French and German languages only), the
United Kingdom, and the United States of America,
(ii) the patents issued by the Federal Republic of Germany and the
Russian Federation,
(iii) the patent applications, if any, published in and after 1920 in
the countries referred to in items (i) and (ii),
(iv) the inventors' certificates issued by the former Soviet Union,
(v) the utility certificates issued by, and the published
applications for utility certificates of, France,
(vi) such patents issued by, and such patent applications published
in, any other country after 1920 as are in the English, French,
German or Spanish language and in which no priority is claimed,
provided that the national Office of the interested country
sorts out these documents and places them at the disposal of
each International Searching Authority.
(d) Where an application is republished once (for example, an
Offenlegungschrift as an Auslegeschrift) or more than once, no
International Searching Authority shall be obliged to keep all
versions in its documentation; consequently, each such Authority shall
be entitled not to keep more than one version. Furthermore, where an
application is granted and is issued in the form of a patent or a
utility certificate (France), no International Searching Authority
shall be obliged to keep both the application and the patent or
utility certificate (France) in its documentation; consequently, each
such Authority shall be entitled to keep either the application only
or the patent or utility certificate (France) only.
(e) Any International Searching Authority whose official language, or one
of whose official languages, is not Japanese, Russian or Spanish is
entitled not to include in its documentation those patent documents of
Japan, the Russian Federation and the former Soviet Union as well as
those patent documents in the Spanish language, respectively, for
which no abstracts in the English language are generally available.
English abstracts becoming generally available after the date of entry
into force of these Regulations shall require the inclusion of the
patent documents to which the abstracts refer no later than six months
after such abstracts become generally available. In case of the
interruption of abstracting services in English in technical fields in
which English abstracts were formerly generally available, the
Assembly shall take appropriate measures to provide for the prompt
restoration of such services in the said fields.
(f) For the purposes of this Rule, applications which have only been laid
open for public inspection are not considered published applications.
Rule 35
The Competent International Searching Authority 35.1 When Only One
International Searching Authority is Competent Each receiving Office shall, in
accordance with the terms of the applicable agreement referred to in Article
16 (3) (b), inform the International Bureau which International Searching
Authority is competent for the searching of the international applications
filed with it, and the International Bureau shall promptly publish such
information. 35.2 When Several International Searching Authorities are
Competent
(a) Any receiving Office may, in accordance with the terms of the
applicable agreement referred to in Article 16 (3) (b), specify
several International Searching Authorities:
(i) by declaring all of them competent for any international
application filed with it, and leaving the choice to the
applicant, or
(ii) by declaring one or more competent for certain kinds of
international applications filed with it, and declaring one or
more others competent for other kinds of international
applications filed with it, provided that, for those kinds of
international applications for which several International
Searching Authorities are declared to be competent, the choice
shall be left to the applicant.
(b) Any receiving Office availing itself of the faculty provided in
paragraph (a) shall promptly inform the International Bureau, and the
International Bureau shall promptly publish such information. 35.3
When the International Bureau Is Receiving Office Under Rule 19.1 (a)
(iii)
(a) Where the international application is filed with the International
Bureau as receiving Office under Rule 19.1 (a) (iii), an International
Searching Authority shall be competent for the searching of that
international application if it would have been competent had that
international application been filed with a receiving Office competent
under Rule 19.1 (a) (i) or (ii), (b) or (c) or Rule 19.2 (i).
(b) Where two or more International Searching Authorities are competent
under paragraph (a), the choice shall be left to the applicant.
(c) Rules 35.1 and 35.2 shall not apply to the International Bureau as
receiving Office under Rule 19.1 (a) (iii).
Rule 36
Minimum Requirements for International Searching Authorities 36.1 Definition
of Minimum Requirements The minimum requirements referred to in Article 16 (3)
(c) shall be the following:
(i) the national Office or intergovernmental organization must have
at least 100 full-time employees with sufficient technical
qualifications to carry out searches;
(ii) that Office or organization must have in its possession, or
have access to, at least the minimum documentation referred to
in Rule 34, properly arranged for search purposes, on paper, in
microform or stored on electronic media;
(iii) that Office or organization must have a staff which is capable
of searching the required technical fields and which has the
language facilities to understand at least those languages in
which the minimum documentation referred to in Rule 34 is
written or is translated.
Rule 37
Missing or Defective Title 37.1 Lack of Title If the international application
does not contain a title and the receiving Office has notified the
International Searching Authority that it has invited the applicant to correct
such defect, the International Searching Authority shall proceed with the
international search unless and until it receives notification that the said
application is considered withdrawn. 37.2 Establishment of Title If the
international application does not contain a title and the International
Searching Authority has not received a notification from the receiving Office
to the effect that the applicant has been invited to furnish a title, or if
the said Authority finds that the title does not comply with Rule 4.3, it
shall itself establish a title. Such title shall be established in the
language in which the international application is to be published or, if a
translation into another language was transmitted under Rule 23.1 (b) and the
International Searching Authority so wishes, in the language of that
translation.
Rule 38
Missing or Defective Abstract 38.1 Lack of Abstract If the international
application does not contain an abstract and the receiving Office has notified
the International Searching Authority that it has invited the applicant to
correct such defect, the International Searching Authority shall proceed with
the international search unless and until it receives notification that the
said application is considered withdrawn. 38.2 Establishment of Abstract
(a) If the international application does not contain an abstract and the
International Searching Authority has not received a notification from
the receiving Office to the effect that the applicant has been invited
to furnish an abstract, or if the said Authority finds that the
abstract does not comply with Rule 8, it shall itself establish an
abstract. Such abstract shall be established in the language in which
the international application is to be published or, if a translation
into another language was transmitted under Rule 23.1 (b) and the
International Searching Authority so wishes, in the language of that
translation.
(b) The applicant may, within one month from the date of mailing of the
international search report, submit comments on the abstract
established by the International Searching Authority. Where that
Authority amends the abstract established by it, it shall notify the
amendment to the International Bureau.
Rule 39
Subject Matter under Article 17 (2) (a) (i) 39.1 Definition No International
Searching Authority shall be required to search an international application
if, and to the extent to which, its subject matter is any of the following:
(i) scientific and mathematical theories,
(ii) plant or animal varieties or essentially biological processes
for the production of plants and animals, other than
microbiological processes and the products of such processes,
(iii) schemes, rules or methods of doing business, performing purely
mental acts or playing games,
(iv) methods for treatment of the human or animal body by surgery or
therapy, as well as diagnostic methods,
(v) mere presentations of information,
(vi) computer programs to the extent that the International
Searching Authority is not equipped to search prior art
concerning such programs.
Rule 40
Lack of Unity of Invention (International Search) 40.1 Invitation to Pay 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.
(e) Where the applicant has, under paragraph (c), paid an additional fee
under protest, the International Searching Authority may, after a
prior review of the justification for the invitation to pay an
additional fee, require that the applicant pay a fee for the
examination of the protest ("protest fee"). The protest fee shall be
paid within one month from the date of the notification to the
applicant of the result of the review. If the protest fee is not so
paid, the protest shall be considered withdrawn. The protest fee shall
be refunded to the applicant where the three-member board, special
instance or higher authority referred to in paragraph (c) finds that
the protest was entirely justified. 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,
and the international filing date. 43.2 Dates The international search report
shall be dated and shall indicate the date on which the international search
was actually completed. It shall also indicate the filing date of any earlier
application whose priority is claimed or, if the priority of more than one
earlier application is claimed, the filing date of the earliest among them.
43.3 Classification
(a) The international search report shall contain the classification of
the subject matter at least according to the International Patent
Classification.
(b) Such classification shall be effected by the International Searching
Authority. 43.4 Language
Every international search report and any declaration made under Article 17
(2) (a) shall be in the language in which the international application to
which it relates is to be published or, if a translation into another language
was transmitted under Rule 23.1 (b) and the International Searching Authority
so wishes, in the language of that translation. 43.5 Citations
(a) The international search report shall contain the citations of the
documents considered to be relevant.
(b) The method of identifying any cited document shall be regulated by the
Administrative Instructions.
(c) Citations of particular relevance shall be specially indicated.
(d) Citations which are not relevant to all the claims shall be cited in
relation to the claim or claims to which they are relevant.
(e) If only certain passages of the cited document are relevant or
particularly relevant, they shall be identified, for example, by
indicating the page, the column, or the lines, where the passage
appears. If the entire document is relevant but some passages are of
particular relevance, such passages shall be identified unless such
identification is not practicable. 43.6 Fields Searched
(a) The international search report shall list the classification
identification of the fields searched. If that identification is
effected on the basis of a classification other than the International
Patent Classification, the International Searching Authority shall
publish the classification used.
(b) If the international search extended to patents, inventors'
certificates, utility certificates, utility models, patents or
certificates of addition, inventors' certificates of addition, utility
certificates of addition, or published applications for any of those
kinds of protection, of States, periods, or languages, not included in
the minimum documentation as defined in Rule 34, the international
search report shall, when practicable, identify the kinds of
documents, the States, the periods, and the languages to which it
extended. For the purposes of this paragraph, Article 2 (ii) shall not
apply.
(c) If the international search was based on, or was extended to, any
electronic data base, the international search report may indicate the
name of the data base and, where considered useful to others and
practicable, the search terms used. 43.7 Remarks Concerning Unity of
Invention If the applicant paid additional fees for the international
search, the international search report shall so indicate.
Furthermore, where the international search was made on the main
invention only or on less than all the inventions (Article 17 (3)
(a)), the international search report shall indicate what parts of the
international application were and what parts were not searched. 43.8
Authorized Officer The international search report shall indicate the
name of the officer of the International Searching Authority
responsible for that report. 43.9 Additional Matter
The international search report shall contain no matter other than that
specified in Rules 33.1 (b) and (c), 43.1 to 43.3, 43.5 to 43.8, and 44.2, and
the indication referred to in Article 17(2) (b), provided that the
Administrative Instructions may permit the inclusion in the international
search report of any additional matter specified in the Administrative
Instructions. The international search report shall not contain, and the
Administrative Instructions shall not permit the inclusion of, any expressions
of opinion, reasoning, arguments, or explanations. 43.10 Form The physical
requirements as to form of the international search report shall be prescribed
by the Administrative Instructions.
Rule 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 The international search report shall
either state that the International Searching Authority approves the title and
the abstract as submitted by the applicant or be accompanied by the text of
the title and/or abstract as established by the International Searching
Authority under Rules 37 and 38. 44.3 Copies of Cited Documents
(a) The request referred to in Article 20 (3) may be presented any time
during 7 years from the international filing date of the international
application to which the international search report relates.
(b) The International Searching Authority may require that the party
(applicant or designated Office) presenting the request pay to it the
cost of preparing and mailing the copies. The level of the cost of
preparing copies shall be provided for in the agreements referred to
in Article 16 (3) (b) between the International Searching Authorities
and the International Bureau.
(d) Any International Searching Authority may perform the obligations
referred to in paragraphs (a) and (b) through another agency
responsible to it.
Rule 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. 46.2 Where to File Amendments made under Article 19 shall be filed
directly with the International Bureau. 46.3 Language of Amendments If the
international application has been filed in a language other than the language
in which it is published, any amendment made under Article 19 shall be in the
language of publication. 46.4 Statement
(a) The statement referred to in Article 19 (1) shall be in the language
in which the international application is published and shall not
exceed 500 words if in the English language or if translated into that
language. The statement shall be identified as such by a heading,
preferably by using the words "Statement under Article 19 (1)" or
their equivalent in the language of the statement.
(b) The statement shall contain no disparaging comments on the
international search report or the relevance of citations contained in
that report. Reference to citations, relevant to a given claim,
contained in the international search report may be made only in
connection with an amendment of that claim. 46.5 Form of Amendments
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 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.
Rule 47
Communication to Designated Offices 47.1 Procedure
(a) The communication provided for in Article 20 shall be effected by the
International Bureau.
(abis) The International Bureau shall notify each designated Office, at the
time of the communication provided for in Article 20, of the fact and
date of receipt of the record copy and of the fact and date of receipt
of any priority document. Such notification shall also be sent to any
designated Office which has waived the communication provided for in
Article 20, unless such Office has also waived the notification of its
designation.
(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
(a) The international application communicated under Article 20 shall be
in the language in which it is published.
(b) Where the language in which the international application is published
is different from the language in which it was filed, the
International Bureau shall furnish to any designated Office, upon the
request of that Office, a copy of that application in the language in
which it was filed. 47.4 Express Request under Article 23 (2) Where
the applicant makes an express request to a designated Office under
Article 23 (2) before the communication provided for in Article 20 has
taken place, the International Bureau shall, upon request of the
applicant or the designated Office, promptly effect that communication
to that Office
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),
(viii) the relevant data from any indications in relation to deposited
biological material furnished under Rule 13bis separately from
the description, together with an indication of the date on
which the International Bureau received such indications,
(ix) any information concerning a priority claim considered not to
have been made under Rule 26bis.2 (b), the publication of which
is requested under Rule 26bis.2 (c).
(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) (i) has issued, the front
page shall conspicuously refer to that fact and need include neither a
drawing nor an abstract.
(d) The figure or figures referred to in paragraph (b) (ii) shall be
selected as provided in Rule 8.2. Reproduction of such figure or
figures on the front page may be in a reduced form.
(e) If there is not enough room on the front page for the totality of the
abstract referred to in paragraph (b) (iii), the said abstract shall
appear on the back of the front page. The same shall apply to the
translation of the abstract when such translation is required to be
published under Rule 48.3 (c).
(f) If the claims have been amended under Article 19, the publication
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 Chinese, English, French,
German, Japanese, Russian or Spanish ("languages of publication"),
that application shall be published in the language in which it was
filed.
(abis) If the international application is not filed in a language of
publication and a translation into a language of publication has been
furnished under Rule 12.3, that application shall be published in the
language of that translation.
(b) If the international application is filed in a language which is not a
language of publication and no translation into a language of
publication is required under Rule 12.3 (a), that application shall be
published in English translation. The translation shall be prepared
under the responsibility of the International Searching Authority,
which shall be obliged to have it ready in time to permit
international publication by the prescribed date, or, where Article 64
(3) (b) applies, to permit the communication under Article 20 by the
end of the 19th month after the priority date. Notwithstanding Rule
16.1 (a), the International Searching Authority may charge a fee for
the translation to the applicant. The International Searching
Authority shall give the applicant an opportunity to comment on the
draft translation. The International Searching Authority shall fix a
time limit reasonable under the circumstances of the case for such
comments. If there is no time to take the comments of the applicant
into account before the translation is communicated or if there is a
difference of opinion between the applicant and the said Authority as
to the correct translation, the applicant may send a copy of his
comments, or what remains of them, to the International Bureau and
each designated Office to which the translation was communicated. The
International Bureau shall publish the relevant portions of the
comments together with the translation of the International Searching
Authority or subsequently to the publication of such translation.
(c) 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 promptly publish a notice in the Gazette
reproducing the essence of such notification.
(c) If the international application, the designation of any designated
State or the priority claim is withdrawn under Rule 90bis after the
technical preparations for international publication have been
completed, notice of the withdrawal shall be published in the Gazette.
Rule 49
Copy, Translation and Fee under Article 22 49.1 Notification
(a) Any Contracting State requiring the furnishing of a translation or the
payment of a national fee, or both, under Article 22, shall notify the
International Bureau of:
(i) the languages from which and the language into which it
requires translation,
(ii) the amount of the national fee.
(abis) Any Contracting State not requiring the furnishing, under Article
22, by the applicant of a copy of the international application (even
though the communication of the copy of the international application
by the International Bureau under Rule 47 has not taken place by the
expiration of the time limit applicable under Article 22) shall notify
the International Bureau accordingly.
(ater) Any Contracting State which, pursuant to Article 24 (2), maintains,
if it is a designated State, the effect provided for in Article 11 (3)
even though a copy of the international application is not furnished
by the applicant by the expiration of the time limit applicable under
Article 22 shall notify the International Bureau accordingly.
(b) Any notification received by the International Bureau under paragraphs
(a), (abis) or (ater) shall be promptly published by the International
Bureau in the Gazette.
(c) If the requirements under paragraph (a) change later, such changes
shall be notified by the Contracting State to the International Bureau
and that Bureau shall promptly publish the notification in the
Gazette. If the change means that translation is required into a
language which, before the change, was not required, such change shall
be effective only with respect to international applications filed
later than 2 months after the publication of the notification in the
Gazette. Otherwise, the effective date of any change shall be
determined by the Contracting State. 49.2 Languages The language into
which translation may be required must be an official language of the
designated Office. If there are several of such languages, no
translation may be required if the international application is in one
of them. If there are several official languages and a translation
must be furnished, the applicant may choose any of those languages.
Notwithstanding the foregoing provisions of this paragraph, if there
are several official languages but the national law prescribes the use
of one such language for foreigners, a translation into that language
may be required. 49.3 Statements under Article 19; Indications under
Rule 13bis.4 For the purposes of Article 22 and the present Rule, any
statement made under Article 19 (1) and any indication furnished under
Rule 13bis.4 shall, subject to Rule 49.5 (c) and (h), be considered
part of the international application. 49.4 Use of National Form No
applicant shall be required to use a national form when performing the
acts referred to in Article 22. 49.5 Contents of and Physical
Requirements for the Translation
(a) For the purposes of Article 22, the translation of the international
application shall contain the description (subject to paragraph
(abis)), the claims, any text matter of the drawings and the abstract.
If required by the designated Office, the translation shall also,
subject to paragraphs (b), (cbis) and (e),
(i) contain the request,
(ii) if the claims have been amended under Article 19, contain both
the claims as filed and the claims as amended, and
(iii) be accompanied by a copy of the drawings.
(abis) No designated Office shall require the applicant to furnish to it a
translation of any text matter contained in the sequence listing part
of the description if such sequence listing part complies with Rule
12.1 (d) and if the description complies with Rule 5.2 (b).
(b) Any designated Office requiring the furnishing of a translation of the
request shall furnish copies of the request form in the language of
the translation free of charge to the applicants. The form and
contents of the request form in the language of the translation shall
not be different from those of the request under Rules 3 and 4; in
particular, the request form in the language of the translation shall
not ask for any information that is not in the request as filed. The
use of the request form in the language of the translation shall be
optional.
(c) Where the applicant did not furnish a translation of any statement
made under Article 19 (1), the designated Office may disregard such
statement.
(cbis) Where the applicant furnishes, to a designated Office which requires
under paragraph (a) (ii) a translation of both the claims as filed and
the claims as amended, only one of the required two translations, the
designated Office may disregard the claims of which a translation has
not been furnished or invite the applicant to furnish the missing
translation within a time limit which shall be reasonable under the
circumstances and shall be fixed in the invitation. Where the
designated Office chooses to invite the applicant to furnish the
missing translation and the latter is not furnished within the time
limit fixed in the invitation, the designated Office may disregard
those claims of which a translation has not been furnished or consider
the international application withdrawn.
(d) If any drawing contains text matter, the translation of that text
matter shall be furnished either in the form of a copy of the original
drawing with the translation pasted on the original text matter or in
the form of a drawing executed anew.
(e) Any designated Office requiring under paragraph (a) the furnishing of
a copy of the drawings shall, where the applicant failed to furnish
such copy within the time limit applicable under Article 22, invite
the applicant to furnish such copy within a time limit which shall be
reasonable under the circumstances and shall be fixed in the
invitation.
(f) The expression "Fig." does not require translation into any language.
(g) Where any copy of the drawings or drawing executed anew which has been
furnished under paragraph (d) or (e) does not comply with the physical
requirements referred to in Rule 11, the designated Office may invite
the applicant to correct the defect within a time limit which shall be
reasonable under the circumstances and shall be fixed in the
invitation.
(h) Where the applicant did not furnish a translation of the abstract or
of any indication furnished under Rule 13bis.4, the designated Office
shall invite the applicant to furnish such translation, if it deems it
to be necessary, within a time limit which shall be reasonable under
the circumstances and shall be fixed in the invitation.
(i) Information on any requirement and practice of designated
Offices under the second sentence of paragraph (a) shall be
published by the International Bureau in the Gazette.
(j) No designated Office shall require that the translation of the
international application comply with physical requirements other than
those prescribed for the international application as filed.
(k) Where a title has been established by the International Searching
Authority pursuant to Rule 37.2, the translation shall contain the
title as established by that Authority.
(l) If, on July 12, 1991, paragraph (cbis) or paragraph (k) is not
compatible with the national law applied by the designated Office, the
paragraph concerned shall not apply to that designated Office for as
long as it continues not to be compatible with that law, provided that
the said Office informs the International Bureau accordingly by
December 31, 1991. The information received shall be promptly
published by the International Bureau in the Gazette.
Rule 50
Faculty under Article 22 (3) 50.1 Exercise of Faculty
(a) Any Contracting State allowing a time limit expiring later than the
time limits provided for in Article 22 (1) or (2) shall notify the
International Bureau of the time limits so fixed.
(b) Any notification received by the International Bureau under paragraph
(a) shall be promptly published by the International Bureau in the
Gazette.
(c) Notifications concerning the shortening of the previously fixed time
limit shall be effective in relation to international applications
filed after the expiration of 3 months computed from the date on which
the notification was published by the International Bureau.
(d) Notifications concerning the lengthening of the previously fixed time
limit shall become effective upon publication by the International
Bureau in the Gazette in respect of international applications pending
at the time or filed after the date of such publication, or, if the
Contracting State effecting the notification fixes some later date, as
from the latter date.
Rule 51
Review by Designated Offices 51.1 Time Limit for Presenting the Request to
Send Copies The time limit referred to in Article 25 (1) (c) shall be two
months computed from the date of the notification sent to the applicant under
Rules 20.7 (i), 24.2 (c), 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.
Rule 52
Amendment of the Claims, the Description, and the
Drawings, before Designated Offices 52.1 Time Limit
(a) In any designated State in which processing or examination starts
without special request, the applicant shall, if he so wishes,
exercise the right under Article 28 within one month from the
fulfilment of the requirements under Article 22, provided that, if the
communication under Rule 47.1 has not been effected by the expiration
of the time limit applicable under Article 22, he shall exercise the
said right not later than 4 months after such expiration date. In
either case, the applicant may exercise the said right at any 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 or be presented as a
computer print-out. The particulars of the printed form and of a
demand presented as a computer print-out shall be prescribed by the
Administrative Instructions.
(b) Copies of printed demand forms shall be furnished free of charge by
the receiving Office or by the International Preliminary Examining
Authority. 53.2 Contents
(a) The demand shall contain:
(i) a petition,
(ii) indications concerning the applicant and the agent if there is
an agent,
(iii) indications concerning the international application to which
it relates,
(iv) election of States,
(v) where applicable, a statement concerning amendments.
(b) The demand shall be signed. 53.3 The Petition The petition shall be to
the following effect and shall preferably be worded as follows:
"Demand under Article 31 of the Patent Cooperation Treaty: The
undersigned requests that the international application specified
below be the subject of international preliminary examination
according to the Patent Cooperation Treaty." 53.4 The Applicant As to
the indications concerning the applicant, Rules 4.4 and 4.16 shall
apply, and Rule 4.5 shall apply mutatis mutandis. Only applicants for
the elected States are required to be indicated in the demand. 53.5
Agent or Common Representative If an agent or common representative is
designated, the demand shall so indicate. Rules 4.4 and 4.16 shall
apply, and Rule 4.7 shall apply mutatis mutandis. 53.6 Identification
of the International Application The international application shall
be identified by the name and address of the applicant, the title of
the invention, the international filing date (if known to the
applicant) and the international application number or, where such
number is not known to the applicant, the name of the receiving Office
with which the international application was filed. 53.7 Election of
States
(a) The demand shall indicate at least one Contracting State, from among
those States which are designated and are bound by Chapter II of the
Treaty ("eligible States"), as an elected state.
(b) Election of Contracting States in the demand shall be made:
(i) by an indication that all eligible States are elected, or,
(ii) in the case of States which have been designated for the
purpose of obtaining national patents, by an indication of
those eligible States that are elected, and, in the case of
States which have been designated for the purpose of obtaining
a regional patent, by an indication of the regional patent
concerned together with either an indication that all eligible
States party to the regional patent treaty concerned are
elected or an indication of those among the said States that
are elected. 53.8 Signature
(a) Subject to paragraph (b), the demand shall be signed by the applicant
or, if there is more than one applicant, by all applicants making the
demand.
(b) Where two or more applicants file a demand which elects a State whose
national law requires that national applications be filed by the
inventor and where an applicant for that elected State who is an
inventor refused to sign the demand or could not be found or reached
after diligent effort, the demand need not be signed by that applicant
("the applicant concerned") if it is signed by at least one applicant
and
(i) a statement is furnished explaining, to the satisfaction of the
International Preliminary Examining Authority, the lack of
signature of the applicant concerned, or
(ii) the applicant concerned did not sign the request but the
requirements of Rule 4.15 (b) were complied with. 53.9
Statement Concerning Amendments
(a) If amendments under Article 19 have been made, the statement
concerning amendments shall indicate whether, for the purposes of the
international preliminary examination, the applicant wishes those
amendments
(i) to be taken into account, in which case a copy of the
amendments shall preferably be submitted with the demand, or
(ii) to be considered as reversed by an amendment under Article 34.
(b) If no amendments under Article 19 have been made and the time limit
for filing such amendments has not expired, the statement may indicate
that the applicant wishes the start of the international preliminary
examination to be postponed in accordance with Rule 69.1 (d).
(c) If any amendments under Article 34 are submitted with the demand, the
statement shall so indicate.
Rule 54
The Applicant Entitled to Make a Demand 54.1 Residence and Nationality
(a) Subject to the provisions of paragraph (b), the residence or
nationality of the applicant shall, for the purposes of Article 31
(2), be determined according to Rule 18.1 (a) and (b).
(b) The International Preliminary Examining Authority shall, in the
circumstances specified in the Administrative Instructions, request
the receiving Office or, where the international application was filed
with the International Bureau as receiving Office, the national office
of, or acting for, the Contracting State concerned to decide the
question whether the applicant is a resident or national of the
Contracting State of which he claims to be a resident or national. The
International Preliminary Examining Authority shall inform the
applicant of any such request. The applicant shall have an opportunity
to submit arguments directly to the Office concerned. The Office
concerned shall decide the said question promptly. 54.2 Right to Make
a Demand
The right to make a demand under Article 31 (2) shall exist if the applicant
making the demand or, if there are two or more applicants, at least one of
them is a resident or national of a Contracting State bound by Chapter II and
the international application has been filed with a receiving Office of or
acting for a Contracting State bound by Chapter II. 54.3 International
Applications Filed with the International Bureau as Receiving Office
Where the international application is filed with the International Bureau as
receiving Office under Rule 19.1 (a) (iii), the International Bureau shall,
for the purposes of Article 31 (2) (a), be considered to be acting for the
Contracting State of which the applicant is a resident or national. 54.4
Applicant Not Entitled to Make a Demand
If the applicant does not have the right to make a demand or, in the case of
two or more applicants, if none of them has the right to make a demand under
Rule 54.2, the demand shall be considered not to have been submitted.
Rule 55
Languages (International Preliminary Examination) 55.1 Language of Demand
The demand shall be in the language of the international application or, if
the international application has been filed in a language other than the
language in which it is published, in the language of publication. However, if
a translation of the international application is required under Rule 55.2,
the demand shall be in the language of that translation. 55.2 Translation of
International Application
(a) Where neither the language in which the international application is
filed nor the language in which the international application is
published is accepted by the International Preliminary Examining
Authority that is to carry out the international preliminary
examination, the applicant shall, subject to paragraph (b), furnish
with the demand a translation of the international application into a
language which is both:
(i) a language accepted by that Authority, and
(ii) a language of publication.
(b) Where a translation of the international application into a language
referred to in paragraph (a) was transmitted to the International
Searching Authority under Rule 23.1 (b) and the International
Preliminary Examining Authority is part of the same national Office or
intergovernmental organization as the International Searching
Authority, the applicant need not furnish a translation under
paragraph (a). In such a case, unless the applicant furnishes a
translation under paragraph (a), the international preliminary
examination shall be carried out on the basis of the translation
transmitted under Rule 23.1 (b).
(c) If the requirement of paragraph (a) is not complied with and paragraph
(b) does not apply, the International Preliminary Examining Authority
shall invite the applicant to furnish the required translation within
a time limit which shall be reasonable under the circumstances. That
time limit shall not be less than one month from the date of the
invitation. It may be extended by the International Preliminary
Examining Authority at any time before a decision is taken.
(d) If the applicant complies with the invitation within the time limit
under paragraph (c), the said requirement shall be considered to have
been complied with. If the applicant fails to do so, the demand shall
be considered not to have been submitted and the International
Preliminary Examining Authority shall so declare. 55.3 Translation of
Amendments
(a) Where a translation of the international application is required under
Rule 55.2, any amendments which are referred to in the statement
concerning amendments under Rule 59.3 and which the applicant wishes
to be taken into account for the purposes of the international
preliminary examination, and any amendments under Article 19 which are
to be taken into account under Rule 66.1 (c), shall be in the language
of that translation. Where such amendments have been or are filed in
another language, a translation shall also be furnished.
(b) Where the required translation of an amendment referred to in
paragraph (a) is not furnished, the International Preliminary
Examining Authority shall invite the applicant to furnish the missing
translation within a time limit which shall be reasonable under the
circumstances. That time limit shall not be less than one month from
the date of the invitation. It may be extended by the International
Preliminary Examining Authority at any time before a decision is
taken.
(c) If the applicant fails to comply with the invitation within the time
limit under paragraph (b), the amendment shall not be taken into
account for the purposes of the international preliminary examination.
Rule 56
Later Elections 56.1 Elections Submitted Later Than the Demand
(a) The election of States subsequent to the submission of the demand
("later election") shall be effected by a notice submitted to the
International Bureau. The notice shall identify the international
application and the demand, and shall include an indication as
referred to in Rule 53.7 (b) (ii).
(b) Subject to paragraph (c), the notice referred to in paragraph (a)
shall be signed by the applicant for the elected States concerned or,
if there is more than one applicant for those States, by all of them.
(c) Where two or more applicants file a notice effecting a later election
of a State whose national law requires that national applications be
filed by the inventor and where an applicant for that elected State
who is an inventor refused to sign the notice or could not be found or
reached after diligent effort, the notice need not be signed by that
applicant ("the applicant concerned") if it is signed by at least one
applicant and
(i) a statement is furnished explaining, to the satisfaction of the
International Bureau, the lack of signature of the applicant
concerned, or
(ii) the applicant concerned did not sign the request but the
requirements of Rule 4.15 (b) were complied with, or did not
sign the demand but the requirements of Rule 53.8 (b) were
complied with.
(d) An applicant for a State elected by a later election need not have
been indicated as an applicant in the demand.
(e) If a notice effecting a later election is submitted after the
expiration of 19 months from the priority date, the International
Bureau shall notify the applicant that the election does not have the
effect provided for under Article 39 (1) (a) and that the acts
referred to in Article 22 must be performed in respect of the elected
Office concerned within the time limit applicable under Article 22.
(f) If, notwithstanding paragraph (a), a notice effecting a later election
is submitted by the applicant to the International Preliminary
Examining Authority rather than the International Bureau, that
Authority shall mark the date of receipt on the notice and transmit it
promptly to the International Bureau. The notice shall be considered
to have been submitted to the International Bureau on the date marked.
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 notice effecting the later election 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 Each demand for international
preliminary examination shall be subject to the payment of a fee for the
benefit of the International Bureau ("handling fee") to be collected by the
International Preliminary Examining Authority to which the demand is
submitted. 57.2 Amount
(a) The amount of the handling fee is as set out in the Schedule of Fees.
(c) The handling fee shall be payable in the currency or one of the
currencies prescribed by the International Preliminary Examining
Authority ("prescribed currency"), it being understood that, when
transferred by that Authority to the International Bureau, it shall be
freely convertible into Swiss currency. The amount of the handling fee
shall be established, in each prescribed currency, for each
International Preliminary Examining Authority which prescribes the
payment of the handling fee in any currency other than Swiss currency,
by the Director General after consultation with the Office with which
consultation takes place under Rule 15.2 (b) in relation to that
currency, or, if there is no such Office, with the Authority which
prescribes payment in that currency. The amount so established shall
be the equivalent, in round figures, of the amount in Swiss currency
set out in the Schedule of Fees. It shall be notified by the
International Bureau to each International Preliminary Examining
Authority prescribing payment in that prescribed currency and shall be
published in the Gazette.
(d) 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 Limit for Payment; Amount Payable
The handling fee shall be paid within one month from the date on which the
demand was submitted, provided that, where the demand was transmitted to the
International Preliminary Examining Authority under Rule 59.3, the handling
fee shall be paid within one month from the date of receipt by that Authority.
The amount payable shall be the amount applicable on that date of submittal or
date of receipt, as the case may be. For the purposes of the preceding two
sentences, Rule 59.3 (e) shall not apply. 57.6 Refund The International
Preliminary Examining Authority shall refund the handling fee to the
applicant:
(i) if the demand is withdrawn before the demand has been sent by
that Authority to the International Bureau, or
(ii) if the demand is considered, under Rule 54.4, not to have been
submitted.
Rule 58
The Preliminary Examination Fee 58.1 Right to Ask for a Fee
(a) Each International Preliminary Examining Authority may require that
the applicant pay a fee ("preliminary examination fee") for its own
benefit for carrying out the international preliminary examination and
for performing all other tasks entrusted to International Preliminary
Examining Authorities under the Treaty and these Regulations.
(b) The amount of the preliminary examination fee, if any, shall be fixed
by the International Preliminary Examining Authority. As to the time
limit for payment of the preliminary examination fee and the amount
payable, the provisions of Rule 57.3 relating to the handling fee
shall apply mutatis mutandis.
(c) The preliminary examination fee shall be payable directly to the
International Preliminary Examining Authority. Where that Authority is
a national Office, it shall be payable in the currency prescribed by
that Office, and where the Authority is an intergovernmental
organization, it shall be payable in the currency of the State in
which the intergovernmental organization is located or in any other
currency which is freely convertible into the currency of the said
State. 58.3 Refund The International Preliminary Examining Authorities
shall inform the International Bureau of the extent, if any, to which,
and the conditions, if any, under which, they will refund any amount
paid as a preliminary examination fee where the demand is considered
as if it had not been submitted, and the International Bureau shall
promptly publish such information.
Rule 58bis
Extension of Time Limits for Payment of Fees 58bis.1 Invitation by the
International Preliminary Examining Authority
(a) Where, by the time they are due under Rules 57.3 and 58.1 (b), the
International Preliminary Examining Authority finds that no fees were
paid to it, or that the amount paid to it is insufficient to cover the
handling fee and the preliminary examination fee, the Authority shall
invite the applicant to pay to it the amount required to cover those
fees, together with, where applicable, the late payment fee under Rule
58bis.2, within a time limit of one month from the date of the
invitation.
(b) Where the International Preliminary Examining Authority has sent an
invitation under paragraph (a) and the applicant has not, within the
time limit referred to in that paragraph, paid in full the amount due,
including, where applicable, the late payment fee under Rule 58bis.2,
the demand shall, subject to paragraph (c), be considered as if it had
not been submitted and the International Preliminary Examining
Authority shall so declare.
(c) Any payment received by the International Preliminary Examining
Authority before that Authority sends the invitation under paragraph
(a) shall be considered to have been received before the expiration of
the time limit under Rule 57.3 or 58.1 (b), as the case may be.
(d) Any payment received by the International Preliminary Examining
Authority before that Authority proceeds under paragraph (b) shall be
considered to have been received before the expiration of the time
limit under paragraph (a). 58bis.2 Late Payment Fee
(a) The payment of fees in response to an invitation under Rule 58bis.1
(a) may be subjected by the International Preliminary Examining
Authority to the payment to it, for its own benefit, of a late payment
fee. The amount of that fee shall be:
(i) 50% of the amount of unpaid fees which is specified in the
invitation, or,
(ii) if the amount calculated under item (i) is less than the
handling fee, an amount equal to the handling fee.
(b) The amount of the late payment fee shall not, however, exceed double
the amount of the handling fee.
Rule 59
The Competent International Preliminary Examining Authority 59.1 Demands under
Article 31 (2) (a)
(a) For demands made under Article 31 (2) (a), each receiving Office of or
acting for a Contracting State bound by the provisions of Chapter II
shall, in accordance with the terms of the applicable agreement
referred to in Article 32 (2) and (3), inform the International Bureau
which International Preliminary Examining Authority is or which
International Preliminary Examining Authorities are competent for the
international preliminary examination of international applications
filed with it. The International Bureau shall promptly publish such
information. Where several International Preliminary Examining
Authorities are competent, the provisions of Rule 35.2 shall apply
mutatis mutandis.
(b) Where the international application was filed with the International
Bureau as receiving Office under Rule 19.1 (a) (iii), Rule 35.3 (a)
and (b) shall apply mutatis mutandis. Paragraph (a) of this Rule shall
not apply to the International Bureau as receiving Office under Rule
19.1 (a) (iii). 59.2 Demands under Article 31 (2) (b) As to demands
made under Article 31 (2) (b), the Assembly, in specifying the
International Preliminary Examining Authority competent for
international applications filed with a national Office which is an
International Preliminary Examining Authority, shall give preference
to that Authority; if the national Office is not an International
Preliminary Examining Authority, the Assembly shall give preference to
the International Preliminary Examining Authority recommended by that
Office. 59.3 Transmittal of Demand to the Competent International
Preliminary Examining Authority
(a) If the demand is submitted to a receiving Office, an International
Searching Authority, or an International Preliminary Examining
Authority which is not competent for the international preliminary
examination of the international application, that Office or Authority
shall mark the date of receipt on the demand and, unless it decides to
proceed under paragraph (f), transmit the demand promptly to the
International Bureau.
(b) If the demand is submitted to the International Bureau, the
International Bureau shall mark the date of receipt on the demand.
(c) Where the demand is transmitted to the International Bureau under
paragraph (a) or submitted to it under paragraph (b), the
International Bureau shall promptly:
(i) if there is only one competent International Preliminary
Examining Authority, transmit the demand to that Authority and
inform the applicant accordingly, or
(ii) if two or more International Preliminary Examining Authorities
are competent, invite the applicant to indicate, within 15 days
from the date of the invitation or 19 months from the priority
date, whichever is later, the competent International
Preliminary Examining Authority to which the demand should be
transmitted.
(d) Where an indication is furnished as required under paragraph (c) (ii),
the International Bureau shall promptly transmit the demand to the
competent International Preliminary Examining Authority indicated by
the applicant. Where no indication is so furnished, the demand shall
be considered not to have been submitted and the International Bureau
shall so declare.
(e) Where the demand is transmitted to a competent International
Preliminary Examining Authority under paragraph (c), it shall be
considered to have been received on behalf of that Authority on the
date marked on it under paragraph (a) or (b), as applicable, and the
demand so transmitted shall be considered to have been received by
that Authority on that date.
(f) Where an Office or Authority to which the demand is submitted under
paragraph (a) decides to transmit that demand directly to the
competent International Preliminary Examining Authority, paragraphs
(c) to (e) shall apply mutatis mutandis.
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
53.1, 53.2 (a) (i) to (iv), 53.2 (b), 53.3 to 53.8 and 55.1, the
International Preliminary Examining Authority shall invite the
applicant to correct the defects within a time limit which shall be
reasonable under the circumstances. That time limit shall not be less
than one month from the date of the invitation. It may be extended by
the International Preliminary Examining Authority at any time before a
decision is taken.
(b) If the applicant complies with the invitation within the time limit
under paragraph (a), the demand shall be considered as if it had been
received on the actual filing date, provided that the demand as
submitted 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) Subject to paragraph (d), if the applicant does not comply with the
invitation within the time limit under paragraph (a), the demand shall
be considered as if it had not been submitted and the International
Preliminary Examining Authority shall so declare.
(d) Where, after the expiration of the time limit under paragraph (a), a
signature required under Rule 53.8 or a prescribed indication is
lacking in respect of an applicant for a certain elected State, the
election of that State shall be considered as if it had not been made.
(e) If the defect is noticed by the International Bureau, it shall bring
the defect to the attention of the International Preliminary Examining
Authority, which shall then proceed as provided in paragraphs (a) to
(d).
(f) If the demand does not contain a statement concerning amendments, the
International Preliminary Examining Authority shall proceed as
provided for in Rules 66.1 and 69.1 (a) or (b).
(g) Where the statement concerning amendments contains an indication that
amendments under Article 34 are submitted with the demand (Rule 53.9
(c)) but no such amendments are, in fact, submitted, the International
Preliminary Examining Authority shall invite the applicant to submit
the amendments within a time limit fixed in the invitation and shall
proceed as provided for in Rule 69.1 (e). 60.2 Defects in Later
Elections
(a) If the notice effecting a later election does not comply with the
requirements of Rule 56, the International Bureau shall invite the
applicant to correct the defects within a time limit which shall be
reasonable under the circumstances. That time limit shall not be less
than one month from the date of the invitation. It may be extended by
the International Bureau at any time before a decision is taken.
(b) If the applicant complies with the invitation within the time limit
under paragraph (a), the notice shall be considered as if it had been
received on the actual filing date, provided that the notice as
submitted contained at least one election and permitted the
international application to be identified; otherwise, the notice
shall be considered as if it had been received on the date on which
the International Bureau receives the correction.
(c) Subject to paragraph (d), if the applicant does not comply with the
invitation within the time limit under paragraph (a), the notice shall
be considered as if it had not been submitted and the International
Bureau shall so declare.
(d) Where, in respect of an applicant for a certain elected State, the
signature required under Rule 56.1 (b) and (c) or the name or address
is lacking after the expiration of the time limit under paragraph (a),
the later election of that state shall be considered as if it had not
been made.
Rule 61
Notification of the Demand and Elections 61.1 Notification to the
International Bureau and the Applicant
(a) The International Preliminary Examining Authority shall indicate on
the demand the date of receipt or, where applicable, the date referred
to in Rule 60.1 (b). The International Preliminary Examining Authority
shall promptly either send the demand to the International Bureau and
keep a copy in its files or send a copy to the International Bureau
and keep the demand in its files.
(b) The International Preliminary Examining Authority shall promptly
notify the applicant of the date of receipt of the demand. Where the
demand has been considered under Rules 54.4, 55.2 (d), 58bis.1 (b) or
60.1 (c) as if it had not been submitted or where an election has been
considered under Rule 60.1 (d) as if it had not been made, the
International Preliminary Examining Authority shall notify the
applicant and the International Bureau accordingly.
(c) The International Bureau shall promptly notify the applicant of the
receipt, and the date of receipt, of any notice effecting a later
election. That date shall be the actual date of receipt by the
International Bureau or, where applicable, the date referred to in
Rule 56.1 (f) or 60.2 (b). Where the notice has been considered under
Rule 60.2 (c) as if it had not been submitted or where a later
election has been considered under Rule 60.2 (d) as if it had not been
made, the International Bureau shall notify the applicant accordingly.
61.2 Notification to the Elected Offices
(a) The notification provided for in Article 31 (7) shall be effected by
the International Bureau.
(b) The notification shall indicate the number and filing date of the
international application, the name of the applicant, the filing date
of the application whose priority is claimed (where priority is
claimed), the date of receipt by the International Preliminary
Examining Authority of the demand, andÑin the case of a later
electionÑthe date of receipt of the notice effecting the later
election. The latter date shall be the actual date of receipt by the
International Bureau or, where applicable, the date referred to in
Rule 56.1 (f) or 60.2 (b).
(c) The notification shall be sent to the elected Office together with the
communication provided for in Article 20. Elections effected after
such communication shall be notified promptly after they have been
made.
(d) Where the applicant makes an express request to an elected Office
under Article 40 (2) before the communication provided for in Article
20 has taken place, the International Bureau shall, upon request of
the applicant or the elected Office, promptly effect that
communication to that Office. 61.3 Information for the Applicant The
International Bureau shall inform the applicant in writing of the
notification referred to in Rule 61.2 and of the elected Offices
notified under Article 31 (7). 61.4 Publication in the Gazette Where a
demand has been filed before the expiration of 19 months from the
priority date, the International Bureau shall, promptly after the
filing of the demand but not before the international publication of
the international application, publish in the Gazette information on
the demand and the elected States concerned, as provided in the
Administrative Instructions.
Rule 62
Copy of Amendments Under Article 19 for the International Preliminary
Examining Authority 62.1 Amendments Made Before the Demand is Filed
Upon receipt of a demand, or a copy thereof, from the International
Preliminary Examining Authority, the International Bureau shall promptly
transmit a copy of any amendments under Article 19, and any statement referred
to in that Article, to that Authority, unless that Authority has indicated
that it has already received such a copy. 62.2 Amendments Made After the
Demand is Filed
If, at the time of filing any amendments under Article 19, a demand has
already been submitted, the applicant shall preferably, at the same time as he
files the amendments with the International Bureau, also file with the
International Preliminary Examining Authority a copy of such amendments and
any statement referred to in that Article. In any case, the International
Bureau shall promptly transmit a copy of such amendments and statement to that
Authority.
Rule 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 on a date which is the same as, or later than,
the relevant date, the non- written disclosure shall not be
considered part of the prior art for the purposes of Article 33
(2) and (3). Nevertheless, the international preliminary
examination report shall call attention to such non-written
disclosure in the manner provided for in Rule 70.9. 64.3
Certain Published Documents In cases where any application or
any patent which would constitute prior art for the purposes of
Article 33 (2) and (3) had it been published prior to the
relevant date referred to in Rule 64.1 was published on a date
which is the same as, or later than, the relevant date but was
filed earlier than the relevant date or claimed the priority of
an earlier application which had been filed prior to the
relevant date, such published application or patent shall not
be considered part of the prior art for the purposes of Article
33 (2) and (3). Nevertheless, the international preliminary
examination report shall call attention to such application or
patent in the manner provided for in Rule 70.10.
Rule 65
Inventive Step or Non-Obviousness 65.1 Approach to Prior Art For the purposes
of Article 33 (3), the international preliminary examination shall take into
consideration the relation of any particular claim to the prior art as a
whole. It shall take into consideration the claim's relation not only to
individual documents or parts thereof taken separately but also its relation
to combinations of such documents or parts of documents, where such
combinations are obvious to a person skilled in the art. 65.2 Relevant Date
For the purposes of Article 33 (3), the relevant date for the consideration of
inventive step (non-obviousness) is the date prescribed in Rule 64.1.
Rule 66
Procedure before the International Preliminary Examining Authority 66.1 Basis
of the International Preliminary Examination
(a) Subject to paragraphs (b) to (d), the international preliminary
examination shall be based on the international application as filed.
(b) The applicant may submit amendments under Article 34 at the time of
filing the demand or, subject to Rule 66.4bis, until the international
preliminary examination report is established.
(c) Any amendments under Article 19 made before the demand was filed shall
be taken into account for the purposes of the international
preliminary examination unless superseded, or considered as reversed,
by an amendment under Article 34.
(d) Any amendments under Article 19 made after the demand was filed and
any amendments under Article 34 submitted to the International
Preliminary Examining Authority shall, subject to Rule 66.4bis, be
taken into account for the purposes of the international preliminary
examination.
(e) Claims relating to inventions in respect of which no international
search report has been established need not be the subject of
international preliminary examination. 66.2 First Written Opinion of
the International Preliminary Examining Authority
(a) If the International Preliminary Examining Authority
(i) considers that any of the situations referred to in Article 34
(4) exists,
(ii) considers that the international preliminary examination report
should be negative in respect of any of the claims because the
invention claimed therein does not appear to be novel, does not
appear to involve an inventive step (does not appear to be
non-obvious), or does not appear to be industrially applicable,
(iii) notices that there is some defect in the form or contents of
the international application under the Treaty or these
Regulations,
(iv) considers that any amendment goes beyond the disclosure in the
international application as filed,
(v) wishes to accompany the international preliminary examination
report by observations on the clarity of the claims, the
description, and the drawings, or the question whether the
claims are fully supported by the description,
(vi) considers that a claim relates to an invention in respect of
which no international search report has been established and
has decided not to carry out the international preliminary
examination in respect of that claim, or
(vii) considers that a nucleotide and/or amino acid sequence listing
is not available to it in such a form that a meaningful
international preliminary examination can be carried out, the
said Authority shall notify the applicant accordingly in
writing. Where the national law of the national Office acting
as International Preliminary Examining Authority does not allow
multiple dependent claims to be drafted in a manner different
from that provided for in the second and third sentences of
Rule 6.4 (a), the International Preliminary Examining Authority
may, in case of failure to use that manner of claiming, apply
Article 34 (4) (b). In such case, it shall notify the applicant
accordingly in writing.
(b) The notification shall fully state the reasons for the opinion of the
International Preliminary Examining Authority.
(c) The notification shall invite the applicant to submit a written reply
together, where appropriate, with amendments.
(d) The notification shall fix a time limit for the reply. The time limit
shall be reasonable under the circumstances. It shall normally be two
months after the date of notification. In no case shall it be shorter
than one month after the said date. It shall be at least two months
after the said date where the international search report is
transmitted at the same time as the notification. It shall not be more
than three months after the said date but may be extended if the
applicant so requests before its expiration. 66.3 Formal Response to
the International Preliminary Examining Authority
(a) The applicant may respond to the invitation referred to in Rule 66.2
(c) of the International Preliminary Examining Authority by making
amendments orÑif he disagrees with the opinion of that AuthorityÑby
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. 66.4bis Consideration of Amendments
and Arguments Amendments or arguments need not be taken into account
by the International Preliminary Examining Authority for the purposes
of a written opinion or the international preliminary examination
report if they are received after that Authority has begun to draw up
that opinion or report. 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) Subject to paragraph (b), the applicant shall be required to submit a
replacement sheet for every sheet of the international application
which, on account of an amendment, differs from the sheet previously
filed. The letter accompanying the replacement sheets shall draw
attention to the differences between the replaced sheets and the
replacement sheets and shall preferably also explain the reasons for
the amendment.
(b) Where the amendment consists in the deletion of passages or in minor
alterations or additions, the replacement sheet referred to in
paragraph (a) may be a copy of the relevant sheet of the international
application containing the alterations or additions, provided that the
clarity and direct reproducibility of that sheet are not adversely
affected. To the extent that any amendment results in the cancellation
of an entire sheet, that amendment shall be communicated in a letter
which shall preferably also explain the reasons for the amendment.
66.9 Language of Amendments
(a) Subject to paragraphs (b) and (c), if the international application
has been filed in a language other than the language in which it is
published, any amendment, as well as any letter referred to in Rule
66.8, shall be submitted in the language of publication.
(b) If the international preliminary examination is carried out, pursuant
to Rule 55.2, on the basis of a translation of the international
application, any amendment, as well as any letter referred to in
paragraph (a), shall be submitted in the language of that translation.
(c) Subject to Rule 55.3, if an amendment or a letter is not submitted in
a language as required under paragraph (a) or (b), the International
Preliminary Examining Authority shall, if practicable having regard to
the time limit for establishing the international preliminary
examination report, invite the applicant to furnish the amendment or
letter in the required language within a time limit which shall be
reasonable under the circumstances.
(d) If the applicant fails to comply, within the time limit under
paragraph (c), with the invitation to furnish an amendment in the
required language, the amendment shall not be taken into account for
the purposes of the international preliminary examination. If the
applicant fails to comply, within the time limit under paragraph (c),
with the invitation to furnish a letter referred to in paragraph (a)
in the required language, the amendment concerned need not be taken
into account for the purposes of the international preliminary
examination.
Rule 67
Subject Matter under Article 34 (4) (a) (i) 67.1 Definition No International
Preliminary Examining Authority shall be required to carry out an
international preliminary examination on an international application if, and
to the extent to which, its subject matter is any of the following:
(i) scientific and mathematical theories,
(ii) plant or animal varieties or essentially biological processes
for the production of plants and animals, other than
microbiological processes and the products of such processes,
(iii) schemes, rules or methods of doing business, performing purely
mental acts or playing games,
(iv) methods for treatment of the human or animal body by surgery or
therapy, as well as diagnostic methods,
(v) mere presentations of information,
(vi) computer programs to the extent that the International
Preliminary Examining Authority is not equipped to carry out an
international preliminary examination concerning such programs.
Rule 68
Lack of Unity of Invention (International Preliminary Examination) 68.1 No
Invitation to Restrict or Pay Where the International Preliminary Examining
Authority finds that the requirement of unity of invention is not complied
with and chooses not to invite the applicant to restrict the claims or to pay
additional fees, it shall proceed with the international preliminary
examination, subject to Article 34 (4) (b) and Rule 66.1 (e), in respect of
the entire international application, but shall indicate, in any written
opinion and in the international preliminary examination report, that it
considers that the requirement of unity of invention is not fulfilled and it
shall specify the reasons therefor. 68.2 Invitation to Restrict or Pay Where
the International Preliminary Examining Authority finds that the requirement
of unity of invention is not complied with and chooses to invite the
applicant, at his option, to restrict the claims or to pay additional fees, 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.
(e) Where the applicant has, under paragraph (c), paid an additional fee
under protest, the International Preliminary Examining Authority may,
after a prior review of the justification for the invitation to pay an
additional fee, require that the applicant pay a fee for the
examination of the protest ("protest fee"). The protest fee shall be
paid within one month from the date of the notification to the
applicant of the result of the review. If the protest fee is not so
paid, the protest shall be considered withdrawn. The protest fee shall
be refunded to the applicant where the three-member board, special
instance or higher authority referred to in paragraph (c) finds that
the protest was entirely justified. 68.4 Procedure in the Case of
Insufficient Restriction of the Claims If the applicant restricts the
claims but not sufficiently to comply with the requirement of unity of
invention, the International Preliminary Examining Authority shall
proceed as provided in Article 34 (3) (c). 68.5 Main Invention In case
of doubt which invention is the main invention for the purposes of
Article 34 (3) (c), the invention first mentioned in the claims shall
be considered the main invention.
Rule 69
Start of and Time Limit for International Preliminary Examination 69.1 Start
of International Preliminary Examination
(a) Subject to paragraphs (b) to (e), the International Preliminary
Examining Authority shall start the international preliminary
examination when it is in possession both of the demand and of either
the international search report or a notice of the declaration by the
International Searching Authority under Article 17 (2) (a) that no
international search report will be established.
(b) 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 and subject to paragraph (d), start at
the same time as the international search.
(c) Where the statement concerning amendments contains an indication that
amendments under Article 19 are to be taken into account (Rule 53.9
(a) (i)), the International Preliminary Examining Authority shall not
start the international preliminary examination before it has received
a copy of the amendments concerned.
(d) Where the statement concerning amendments contains an indication that
the start of the international preliminary examination is to be
postponed (Rule 53.9 (b)), the International Preliminary Examining
Authority shall not start the international preliminary examination
before
(i) it has received a copy of any amendments made under Article 19,
(ii) it has received a notice from the applicant that he does not
wish to make amendments under Article 19, or
(iii) the expiration of 20 months from the priority date, whichever
occurs first.
(e) Where the statement concerning amendments contains an indication that
amendments under Article 34 are submitted with the demand (Rule 53.9
(c)) but no such amendments are, in fact, submitted, the International
Preliminary Examining Authority shall not start the international
preliminary examination before it has received the amendments or
before the time limit fixed in the invitation referred to in Rule 60.1
(g) has expired, whichever occurs first. 69.2 Time Limit for
International Preliminary Examination The time limit for establishing
the international preliminary examination report shall be:
(i) 28 months from the priority date, or
(ii) eight months from the date of payment of the fees referred to
in Rules 57.1 and 58.1 (a), or
(iii) eight months from the date of receipt by the International
Preliminary Examining Authority of the translation furnished
under Rule 55.2, whichever expires last.
Rule 70
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.
(d) Where claims relate to inventions in respect of which no international
search report has been established and have therefore not been the
subject of international preliminary examination, the international
preliminary examination report shall so indicate. 70.3 Identifications
The report shall identify the International Preliminary Examining
Authority which established it by indicating the name of such
Authority, and the international application by indicating the
international application number, the name of the applicant, and the
international filing date. 70.4 Dates The report shall indicate:
(i) the date on which the demand was submitted, and
(ii) the date of the report; that date shall be the date on which
the report is completed. 70.5 Classification
(a) The report shall repeat the classification given under Rule 43.3 if
the International Preliminary Examining Authority agrees with such
classification.
(b) Otherwise, the International Preliminary Examining Authority shall
indicate in the report the classification, at least according to the
International Patent Classification, which it considers correct. 70.6
Statement under Article 35 (2)
(a) The statement referred to in Article 35 (2) shall consist of the words
"YES" or "NO," or their equivalent in the language of the report, or
some appropriate sign provided for in the Administrative Instructions,
and shall be accompanied by the citations, explanations and
observations, if any, referred to in the last sentence of Article 35
(2).
(b) If any of the three criteria referred to in Article 35 (2) (that is,
novelty, inventive step (non-obviousness), industrial applicability)
is not satisfied, the statement shall be negative. If, in such a case,
any of the criteria, taken separately, is satisfied, the report shall
specify the criterion or criteria so satisfied. 70.7 Citations under
Article 35 (2)
(a) The report shall cite the documents considered to be relevant for
supporting the statements made under Article 35 (2), whether or not
such documents are cited in the international search report. Documents
cited in the international search report need only be cited in the
report when they are considered by the International Preliminary
Examining Authority to be relevant.
(b) The provisions of Rule 43.5 (b) and (e) shall apply also to the
report. 70.8 Explanations under Article 35 (2) The Administrative
Instructions shall contain guidelines for cases in which the
explanations referred to in Article 35 (2) should or should not be
given and the form of such explanations. Such guidelines shall be
based on the following principles:
(i) explanations shall be given whenever the statement in relation
to any claim is negative;
(ii) explanations shall be given whenever the statement is positive
unless the reason for citing any document is easy to imagine on
the basis of consultation of the cited document;
(iii) generally, explanations shall be given if the case provided for
in the last sentence of Rule 70.6 (b) obtains. 70.9 Non-Written
Disclosures Any non-written disclosure referred to in the
report by virtue of Rule 64.2 shall be mentioned by indicating
its kind, the date on which the written disclosure referring to
the non-written disclosure was made available to the public,
and the date on which the non-written disclosure occurred in
public. 70.10 Certain Published Documents Any published
application or any patent referred to in the report by virtue
of Rule 64.3 shall be mentioned as such and shall be
accompanied by an indication of its date of publication, of its
filing date, and its claimed priority date (if any). In respect
of the priority date of any such document, the report may
indicate that, in the opinion of the International Preliminary
Examining Authority, such date has not been validly claimed.
70.11 Mention of Amendments If, before the International
Preliminary Examining Authority, amendments have been made,
this fact shall be indicated in the report. Where any amendment
has resulted in the cancellation of an entire sheet, this fact
shall also be specified in the report. 70.12 Mention of Certain
Defects and Other Matters If the International Preliminary
Examining Authority considers that, at the time it prepares the
report:
(i) the international application contains any of the defects
referred to in Rule 66.2 (a) (iii), it shall include this
opinion and the reasons therefor in the report;
(ii) the international application calls for any of the observations
referred to in Rule 66.2 (a) (v), it may include this opinion
in the report and, if it does, it shall also indicate in the
report the reasons for such opinion,
(iii) any of the situations referred to in Article 34 (4) exists, it
shall state this opinion and the reasons therefor in the
report;
(iv) a nucleotide and/or amino acid sequence listing is not
available to it in such a form that a meaningful international
preliminary examination can be carried out, it shall so state
in the report. 70.13 Remarks Concerning Unity of Invention If
the applicant paid additional fees for the international
preliminary examination, or if the international application or
the international preliminary examination was restricted under
Article 34 (3), the report shall so indicate. Furthermore,
where the international preliminary examination was carried out
on restricted claims (Article 34 (3) (a)), or on the main
invention only (Article 34 (3) (c)), the report shall indicate
what parts of the international application were and what parts
were not the subject of international preliminary examination.
The report shall contain the indications provided for in Rule
68.1, where the International Preliminary Examining Authority
chose not to invite the applicant to restrict the claims or to
pay additional fees. 70.14 Authorized Officer The report shall
indicate the name of the officer of the International
Preliminary Examining Authority responsible for that report.
70.15 Form The physical requirements as to the form of the
report shall be prescribed by the Administrative Instructions.
70.16 Annexes to the Report
Each replacement sheet under Rule 66.8 (a) or (b), each replacement sheet
containing amendments under Article 19 and each replacement sheet containing
rectifications of obvious errors authorized under Rule 91.1 (e) (iii) shall,
unless superseded by later replacement sheets or amendments resulting in the
cancellation of entire sheets under Rule 66.8 (b), be annexed to the report.
Amendments under Article 19 which have been considered as reversed by an
amendment under Article 34 and letters under Rule 66.8 shall not be annexed.
70.17 Languages of the Report and the Annexes
The report and any annex shall be in the language in which the international
application to which they relate is published, or, if the international
preliminary examination is carried out, pursuant to Rule 55.2, on the basis of
a translation of the international application, in the language of that
translation.
Rule 71
Transmittal of the International Preliminary Examination Report 71.1
Recipients The International Preliminary Examining Authority shall, on the
same day, transmit one copy of the international preliminary examination
report and its annexes, if any, to the International Bureau, and one copy to
the applicant. 71.2 Copies of Cited Documents
(a) The request under Article 36 (4) may be presented any time during 7
years from the international filing date of the international
application to which the report relates.
(b) The International Preliminary Examining Authority may require that the
party (applicant or elected Office) presenting the request pay to it
the cost of preparing and mailing the copies. The level of the cost of
preparing copies shall be provided for in the agreements referred to
in Article 32 (2) between the International Preliminary Examining
Authorities and the International Bureau.
(d) Any International Preliminary Examining Authority may perform the
obligations referred to in paragraphs (a) and (b) through another
agency responsible to it.
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.
(b) Any such requirement shall be notified to the International Bureau,
which shall promptly publish it in the Gazette. 72.2 Copy of
Translation for the Applicant The International Bureau shall transmit
a copy of the translation referred to in Rule 72.1 (a) of the
international preliminary examination report to the applicant at the
same time as it communicates such translation to the interested
elected Office or Offices. 72.3 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 but not earlier than the communication under
Article 20.
Rule 74
Translations of Annexes of the International Preliminary
Examination Report and Transmittal Thereof 74.1 Contents of Translation and
Time Limit for Transmittal Thereof
(a) Where the furnishing of a translation of the international application
is required by the elected Office under Article 39 (1), the applicant
shall, within the time limit applicable under Article 39 (1), transmit
a translation of any replacement sheet referred to in Rule 70.16 which
is annexed to the international preliminary examination report, unless
such sheet is in the language of the required translation of the
international application. The same time limit shall apply where the
furnishing of a translation of the international application to the
elected Office must, because of a declaration made under Article 64
(2) (a) (i), be effected within the time limit applicable under
Article 22.
(b) Where the furnishing under Article 39 (1) of a translation of the
international application is not required by the elected Office, that
Office may require the applicant to furnish, within the time limit
applicable under that Article, a translation into the language in
which the international application was published of any replacement
sheet referred to in Rule 70.16 which is annexed to the international
preliminary examination and is not in that language.
Rule 76
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 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 or Article 24 (2)
shall be construed as a reference to Article 39 (1) or Article
39 (3), respectively;
(iii) the words "international applications filed" in Rule 49.1 (c)
shall be replaced by the words "a demand submitted";
(iv) for the purposes of Article 39 (1), where an international
preliminary examination report has been established, a
translation of any amendment under Article 19 shall only be
required if that amendment is annexed to that report. 76.6
Transitional Provision If, on July 12, 1991, Rule 76.5 (iv) is
not compatible with the national law applied by the elected
Office in respect of claims amended under Article 19, Rule 76.5
(iv) shall not apply in that respect to that elected Office for
as long as it continues not to be compatible with that law,
provided that the said Office informs the International Bureau
accordingly by December 31, 1991. The information received
shall be promptly published by the International Bureau in the
Gazette.
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 to amend
the claims, the description and the drawings, before the elected
Office concerned within one month from the fulfilment of the
requirements under Article 39 (1) (a), provided that, if the
transmittal of the international preliminary examination report under
Article 36 (1) has not taken place by the expiration of the time limit
applicable under Article 39, he shall exercise the said right not
later than four months after such expiration date. In either case, the
applicant may exercise the said right at any 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
paragraph (a). 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
Where a period starts on the day of the date of a document or letter emanating
from a national Office or intergovernmental organization, any interested party
may prove that the said document or letter was mailed on a day later than the
date it bears, in which case the date of actual mailing shall, for the
purposes of computing the period, be considered to be the date on which the
period starts. Irrespective of the date on which such a document or letter was
mailed, if the applicant offers to the national Office or intergovernmental
organization evidence which satisfies the national Office or intergovernmental
organization that the document or letter was received more than 7 days after
the date it bears, the national Office or intergovernmental organization shall
treat the period starting from the date of the document or letter as expiring
later by an additional number of days which is equal to the number of days
which the document or letter was received later than 7 days after the date it
bears. 80.7 End of Working Day
(a) A period expiring on a given day shall expire at the moment the
national Office or intergovernmental organization with which the
document must be filed or to which the fee must be paid closes for
business on that day.
(b) Any Office or organization may depart from the provisions of paragraph
(a) up to midnight on the relevant day.
Rule 81
Modification of Time Limits Fixed in the Treaty 81.1 Proposal
(a) Any Contracting State or the Director General may propose a
modification under Article 47 (2).
(b) Proposals made by a Contracting State shall be presented to the
Director General. 81.2 Decision by the Assembly
(a) When the proposal is made to the Assembly, its text shall be sent by
the Director General to all Contracting States at least 2 months in
advance of that session of the Assembly whose agenda includes the
proposal.
(b) During the discussion of the proposal in the Assembly, the proposal
may be amended or consequential amendments proposed.
(c) The proposal shall be considered adopted if none of the Contracting
States present at the time of voting votes against the proposal. 81.3
Voting by Correspondence
(a) When voting by correspondence is chosen, the proposal shall be
included in a written communication from the Director General to the
Contracting States, inviting them to express their vote in writing.
(b) The invitation shall fix the time limit within which the reply
containing the vote expressed in writing must reach the International
Bureau. That time limit shall not be less than 3 months from the date
of the invitation.
(c) Replies must be either positive or negative. Proposals for amendments
or mere observations shall not be regarded as votes.
(d) The proposal shall be considered adopted if none of the Contracting
States opposes the amendment and if at least one-half of the
Contracting States express either approval or indifference or
abstention.
Rule 82
Irregularities in the Mail Service 82.1 Delay or Loss in Mail
(a) Any interested party may offer evidence that he has mailed the
document or letter 5 days prior to the expiration of the time limit.
Except in cases where surface mail normally arrives at its destination
within 2 days of mailing, or where no airmail service is available,
such evidence may be offered only if the mailing was by airmail. In
any case, evidence may be offered only if the mailing was by mail
registered by the postal authorities.
(b) If the mailing, in accordance with paragraph (a), of a document or
letter is proven to the satisfaction of the national Office or
intergovernmental organization which is the addressee, delay in
arrival shall be excused, or, if the document or letter is lost in the
mail, substitution for it of a new copy shall be permitted, provided
that the interested party proves to the satisfaction of the said
Office or organization that the document or letter offered in
substitution is identical with the document or letter lost.
(c) In the cases provided for in paragraph (b), evidence of mailing within
the prescribed time limit, and, where the document or letter was lost,
the substitute document or letter as well as the evidence concerning
its identity with the document or letter lost, shall be submitted
within 1 month after the date on which the interested party noticedÑor
with due diligence should have noticedÑthe delay or loss, and in no
case later than 6 months after the expiration of the time limit
applicable in the given case.
(d) Any national Office or intergovernmental organization which has
notified the International Bureau that it will do so shall, where a
delivery service other than the postal authorities is used to mail a
document or letter, apply the provisions of paragraphs (a) to (c) as
if the delivery service was a postal authority. In such a case, the
last sentence of paragraph (a) shall not apply but evidence may be
offered only if details of the mailing were recorded by the delivery
service at the time of mailing. The notification may contain an
indication that it applies only to mailings using specified delivery
services or delivery services which satisfy specified criteria. The
International Bureau shall publish the information so notified in the
Gazette.
(e) Any national Office or intergovernmental organization may proceed
under paragraph (d):
(i) even if, where applicable, the delivery service used was not
one of those specified, or did not satisfy the criteria
specified, in the relevant notification under paragraph (d), or
(ii) even if that Office or organization has not sent to the
International Bureau a notification under paragraph (d). 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 priority claim has been erroneously
considered by the receiving Office or the International Bureau not to have
been made, and if the error is an error such that, had it been made by the
designated or elected Office itself, that Office would rectify it under the
national law or national practice, the said Office shall rectify the error and
shall treat the international application as if it had been accorded the
rectified international filing date or as if the priority claim had not been
considered not to have been made.
Rule 83
Right to Practice before International Authorities 83.1 Proof of Right The
International Bureau, the competent International Searching Authority, and the
competent International Preliminary Examining Authority, may require the
production of proof of the right to practice referred to in Article 49.
83.1bis Where the International Bureau Is the Receiving Office
(a) Any person who has the right to practice before the national Office
of, or acting for, a Contracting State of which the applicant or, if
there are two or more applicants, any of the applicants is a resident
or national shall be entitled to practice in respect of the
international application before the International Bureau in its
capacity as receiving Office under Rule 19.1 (a) (iii).
(b) Any person having the right to practice before the International
Bureau in its capacity as receiving Office in respect of an
international application shall be entitled to practice in respect of
that application before the International Bureau in any other capacity
and before the competent International Searching Authority and
competent International Preliminary Examining Authority. 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 and Form
(a) The Gazette referred to in Article 55 (4) shall contain:
(i) for each published international application, the data
specified by the Administrative Instructions taken from the
front page of the 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.
(b) The information referred to in paragraph (a) shall be made available
in two forms:
(i) as a Gazette in paper form, which shall contain the data
specified by the Administrative Instructions taken from the
front page of the pamphlet published under Rule 48
('bibliographic data') and the matters referred to in paragraph
(a) (ii) to (v);
(ii) as a Gazette in electronic form, which shall contain the
bibliographic data, the drawing (if any) appearing on the said
front page, and the abstract. 86.2 Languages; Access to the
Gazette
(a) The Gazette in paper form shall be published in a bilingual (English
and French) edition. It shall also be published in editions in any
other language, provided the cost of publication is assured through
sales or subventions.
(b) The Assembly may order the publication of the Gazette in languages
other than those referred to in paragraph (a).
(c) The Gazette in electronic form referred to in Rule 86.1 (b) (ii) shall
be made accessible, in English and French at the same time, by any
electronic ways and means specified in the Administrative
Instructions. The translations shall be ensured by the International
Bureau in English and French. The International Bureau shall ensure
that the making accessible of the Gazette in electronic form shall be
effected on, or as soon as possible after, the date of publication of
the pamphlet containing the international application. 86.3 Frequency
The frequency of publication of the Gazette shall be determined by the
Director General. 86.4 Sale The subscription and other sale prices of
the Gazette shall be determined by the Director General. 86.5 Title
The title of the Gazette shall be determined by the Director General.
86.6 Further Details Further details concerning the Gazette may be
provided for in the Administrative Instructions.
Rule 87
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. If any publication is available in more than one language,
the request shall specify the language or languages 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),
(iii) Rule 22.3 (Time Limit Under Article 12 (3)),
(iv) Rule 33 (Relevant Prior Art for International Search),
(v) Rule 64 (Prior Art for International Preliminary Examination),
(vi) Rule 81 (Modification of Time Limits Fixed in the Treaty),
(vii) the present paragraph (i.e., Rule 88.1). 88.3 Requirement of
Absence of Opposition by Certain States Amendment of the
following provisions of these Regulations shall require that no
State referred to in Article 58 (3) (a) (ii) and having the
right to vote in the Assembly vote against the proposed
amendment:
(i) Rule 34 (Minimum Documentation),
(ii) Rule 39 (Subject Matter Under Article 17 (2) (a) (i)),
(iii) Rule 67 (Subject Matter Under Article 34 (4) (a) (i)),
(iv) the present paragraph (i.e., Rule 88.3). 88.4 Procedure Any
proposal for amending a provision referred to in Rules 88.1 or
88.3 shall, if the proposal is to be decided upon in the
Assembly, be communicated to all Contracting States at least 2
months prior to the opening of that session of the Assembly
which is called upon to make a decision on the proposal.
Rule 89
Administrative Instructions 89.1 Scope
(a) The Administrative Instructions shall contain provisions:
(i) concerning matters in respect of which these Regulations
expressly refer to such Instructions,
(ii) concerning any details in respect of the application of these
Regulations.
(b) The Administrative Instructions shall not be in conflict with the
provisions of the Treaty, these Regulations, or any agreement
concluded by the International Bureau with an International Searching
Authority, or an International Preliminary Examining Authority. 89.2
Source
(a) The Administrative Instructions shall be drawn up and promulgated by
the Director General after consultation with the receiving Offices and
the International Searching and Preliminary Examining Authorities.
(b) They may be modified by the Director General after consultation with
the Offices or Authorities which have a direct interest in the
proposed modification.
(c) The Assembly may invite the Director General to modify the
Administrative Instructions, and the Director General shall proceed
accordingly. 89.3 Publication and Entry Into Force
(a) The Administrative Instructions and any modification thereof shall be
published in the Gazette.
(b) Each publication shall specify the date on which the published
provisions come into effect. The dates may be different for different
provisions, provided that no provision may be declared effective prior
to its publication in the Gazette.
PART F
Rules Concerning Several Chapters of the Treaty
Rule 90
Agents and Common Representatives 90.1 Appointment as Agent
(a) A person having the right to practice before the national Office with
which the international application is filed or, where the
international application is filed with the International Bureau,
having the right to practice in respect of the international
application before the International Bureau as receiving Office may be
appointed by the applicant as his agent to represent him before the
receiving Office, the International Bureau, the International
Searching Authority and the International Preliminary Examining
Authority.
(b) A person having the right to practice before the national Office or
intergovernmental organization which acts as the International
Searching Authority may be appointed by the applicant as his agent to
represent him specifically before that Authority.
(c) A person having the right to practice before the national Office or
intergovernmental organization which acts as the International
Preliminary Examining Authority may be appointed by the applicant as
his agent to represent him specifically before that Authority.
(d) An agent appointed under paragraph (a) may, unless otherwise indicated
in the document appointing him, appoint one or more sub- agents to
represent the applicant as the applicant's agent:
(i) before the receiving Office, the International Bureau, the
International Searching Authority and the International
Preliminary Examining Authority, provided that any person so
appointed as sub- agent has the right to practice before the
national Office with which the international application was
filed or to practice in respect of the international
application before the International Bureau as receiving
Office, as the case may be;
(ii) specifically before the International Searching Authority or
the International Preliminary Examining Authority, provided
that any person so appointed as sub-agent has the right to
practice before the national Office or intergovernmental
organization which acts as the International Searching
Authority or International Preliminary Examining Authority, as
the case may be. 90.2 Common Representative
(a) Where there are two or more applicants and the applicants have not
appointed an agent representing all of them ("a common agent") under
Rule 90.1 (a), one of the applicants who is entitled to file an
international application according to Article 9 may be appointed by
the other applicants as their common representative.
(b) Where there are two or more applicants and all the applicants have not
appointed a common agent under Rule 90.1 (a) or a common
representative under paragraph (a), the applicant first named in the
request who is entitled according to Rule 19.1 to file an
international application with the receiving Office shall be
considered to be the common representative of all the applicants. 90.3
Effects of Acts by or in Relation to Agents and Common Representatives
(a) Any act by or in relation to an agent shall have the effect of an act
by or in relation to the applicant or applicants concerned.
(b) If there are two or more agents representing the same applicant or
applicants, any act by or in relation to any of those agents shall
have the effect of an act by or in relation to the said applicant or
applicants.
(c) Subject to Rule 90bis.5 (a), second sentence, any act by or in
relation to a common representative or his agent shall have the effect
of an act by or in relation to all the applicants. 90.4 Manner of
Appointment of Agent or Common Representative
(a) The appointment of an agent shall be effected by the applicant signing
the request, the demand or a separate power of attorney. Where there
are two or more applicants, the appointment of a common agent or
common representative shall be effected by each applicant signing, at
his choice, the request, the demand or a separate power of attorney.
(b) Subject to Rule 90.5, a separate power of attorney shall be submitted
to either the receiving Office or the International Bureau, provided
that, where a power of attorney appoints an agent under Rule 90.1 (b),
(c) or (d) (ii), it shall be submitted to the International Searching
Authority or the International Preliminary Examining Authority, as the
case may be.
(c) If the separate power of attorney is not signed, or if the required
separate power of attorney is missing, or if the indication of the
name or address of the appointed person does not comply with Rule 4.4,
the power of attorney shall be considered non-existent unless the
defect is corrected. 90.5 General Power of Attorney
(a) Appointment of an agent in relation to a particular international
application may be effected by referring in the request, the demand or
a separate notice to an existing separate power of attorney appointing
that agent to represent the applicant in relation to any international
application which may be filed by that applicant (i.e., a "general
power of attorney"), provided that:
(i) the general power of attorney has been deposited in accordance
with paragraph (b), and
(ii) a copy of it is attached to the request, the demand or the
separate notice, as the case may be; that copy need not be
signed.
(b) The general power of attorney shall be deposited with the receiving
Office, provided that, where it appoints an agent under Rule 90.1 (b),
(c) or (d) (ii), it shall be deposited with the International
Searching Authority or the International Preliminary Examining
Authority, as the case may be. 90.6 Revocation and Renunciation
(a) Any appointment of an agent or common representative may be revoked by
the persons who made the appointment or by their successors in title,
in which case any appointment of a sub-agent under Rule 90.1 (d) by
that agent shall also be considered as revoked. Any appointment of a
sub-agent under Rule 90.1 (d) may also be revoked by the applicant
concerned.
(b) The appointment of an agent under Rule 90.1 (a) shall, unless
otherwise indicated, have the effect of revoking any earlier
appointment of an agent made under that Rule.
(c) The appointment of a common representative shall, unless otherwise
indicated, have the effect of revoking any earlier appointment of a
common representative.
(d) An agent or a common representative may renounce his appointment by a
notification signed by him.
(e) Rule 90.4 (b) and (c) shall apply, mutatis mutandis, to a document
containing a revocation or renunciation under this Rule.
Rule 90bis
Withdrawals 90bis.1 Withdrawal of the International Application
(a) The applicant may withdraw the international application at any time
prior to the expiration of 20 months from the priority date or, where
Article 39 (1) applies, prior to the expiration of 30 months from the
priority date.
(b) Withdrawal shall be effective on receipt of a notice addressed by the
applicant, at his option, to the International Bureau, to the
receiving Office or, where Article 39 (1) applies, to the
International Preliminary Examining Authority.
(c) No international publication of the international application shall be
effected if the notice of withdrawal sent by the applicant or
transmitted by the receiving Office or the International Preliminary
Examining Authority reaches the International Bureau before the
technical preparations for international publication have been
completed. 90bis.2 Withdrawal of Designations
(a) The applicant may withdraw the designation of any designated State at
any time prior to the expiration of 20 months from the priority date
or, where Article 39 (1) applies in respect of that State, prior to
the expiration of 30 months from the priority date. Withdrawal of the
designation of a State which has been elected shall entail withdrawal
of the corresponding election under Rule 90bis.4.
(b) Where a State has been designated for the purpose of obtaining both a
national patent and a regional patent, withdrawal of the designation
of that State shall be taken to mean withdrawal of only the
designation for the purpose of obtaining a national patent, except
where otherwise indicated.
(c) Withdrawal of the designations of all designated States shall be
treated as withdrawal of the international application under Rule
90bis.1.
(d) Withdrawal shall be effective on receipt of a notice addressed by the
applicant, at his option, to the International Bureau, to the
receiving Office or, where Article 39 (1) applies, to the
International Preliminary Examining Authority.
(e) No international publication of the designation shall be effected if
the notice of withdrawal sent by the applicant or transmitted by the
receiving Office or the International Preliminary Examining Authority
reaches the International Bureau before the technical preparations for
international publication have been completed. 90bis.3 Withdrawal of
Priority Claims
(a) The applicant may withdraw a priority claim, made in the international
application under Article 8 (1), at any time prior to the expiration
of 20 months from the priority date or, where Article 39 (1) applies,
30 months from the priority date.
(b) Where the international application contains more than one priority
claim, the applicant may exercise the right provided for in paragraph
(a) in respect of one or more or all of the priority claims.
(c) Withdrawal shall be effective on receipt of a notice addressed by the
applicant, at his option, to the International Bureau, to the
receiving Office or, where Article 39 (1) applies, to the
International Preliminary Examining Authority.
(d) Where the withdrawal of a priority claim causes a change in the
priority date, any time limit which is computed from the original
priority date and which has not already expired shall, subject to
paragraph (e), be computed from the priority date resulting from that
change.
(e) In the case of the time limit referred to in Article 21 (2) (a), the
International Bureau may nevertheless proceed with the international
publication on the basis of the said time limit as computed from the
original priority date if the notice of withdrawal sent by the
applicant or transmitted by the receiving Office or the International
Preliminary Examining Authority reaches the International Bureau after
the completion of the technical preparations for international
publication. 90bis.4 Withdrawal of the Demand, or of Elections
(a) The applicant may withdraw the demand or any or all elections at any
time prior to the expiration of 30 months from the priority date.
(b) Withdrawal shall be effective upon receipt of a notice addressed by
the applicant to the International Bureau.
(c) If the notice of withdrawal is submitted by the applicant to the
International Preliminary Examining Authority, that Authority shall
mark the date of receipt on the notice and transmit it promptly to the
International Bureau. The notice shall be considered to have been
submitted to the International Bureau on the date marked. 90bis.5
Signature
(a) Any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4
shall, subject to paragraph (b), be signed by the applicant. Where one
of the applicants is considered to be the common representative under
Rule 90.2 (b), such notice shall, subject to paragraph (b), require
the signature of all the applicants.
(b) Where two or more applicants file an international application which
designates a State whose national law requires that national
applications be filed by the inventor and where an applicant for that
designated State who is an inventor could not be found or reached
after diligent effort, a notice of withdrawal referred to in Rules
90bis.1 to 90bis.4 need not be signed by that applicant ("the
applicant concerned") if it is signed by at least one applicant and
(i) a statement is furnished explaining, to the satisfaction of the
receiving Office, the International Bureau or the International
Preliminary Examining Authority, as the case may be, the lack
of signature of the applicant concerned, or
(ii) in the case of a notice of withdrawal referred to in Rule
90bis.1 (b), 90bis.2 (d) or 90bis.3 (c), the applicant
concerned did not sign the request but the requirements of Rule
4.15 (b) were complied with, or
(iii) in the case of a notice of withdrawal referred to in Rule
90bis.4 (b), the applicant concerned did not sign the demand
but the requirements of Rule 53.8 (b) were complied with, or
did not sign the later election concerned but the requirements
of Rule 56.1 (c) were complied with. 90bis.6 Effect of
Withdrawal
(a) Withdrawal under Rule 90bis of the international application, any
designation, any priority claim, the demand or any election shall have
no effect in any designated or elected Office where the processing or
examination of the international application has already started under
Article 23 (2) or Article 40 (2).
(b) Where the international application is withdrawn under Rule 90bis.1,
the international processing of the international application shall be
discontinued.
(c) Where the demand or all elections are withdrawn under Rule 90bis.4,
the processing of the international application by the International
Preliminary Examining Authority shall be discontinued. 90bis.7 Faculty
under Article 37 (4) (b)
(a) Any Contracting State whose national law provides for what is
described in the second part of Article 37 (4) (b) shall notify the
International Bureau in writing.
(b) The notification referred to in paragraph (a) shall be promptly
published by the International Bureau in the Gazette, and shall have
effect in respect of international applications filed more than one
month after the date of such publication.
Rule 91
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 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,
(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. However, where a translation of the
international application has been transmitted under Rule 23.1 (b) or
furnished under Rule 55.2, the language of such translation shall be
used.
(b) Any letter from the applicant to the International Searching Authority
or the International Preliminary Examining Authority may be in a
language other than that of the international application, provided
the said Authority authorized the use of such language.
(d) Any letter from the applicant to the International Bureau shall be in
English or French.
(e) Any letter or notification from the International Bureau to the
applicant or to any national Office shall be in English or French.
92.3 Mailings by National Offices and Intergovernmental Organizations
Any document or letter emanating from or transmitted by a national
Office or an intergovernmental organization and constituting an event
from the date of which any time limit under the Treaty or these
Regulations commences to run shall be sent by air mail, provided that
surface mail may be used instead of air mail in cases where surface
mail normally arrives at its destination within two days from mailing
or where air mail service is not available. 92.4 Use of Telegraph,
Teleprinter, Facsimile Machine, Etc.
(a) A document making up the international application, and any later
document or correspondence relating thereto, may, notwithstanding the
provisions of Rules 11.14 and 92.1 (a), but subject to paragraph (h),
be transmitted, to the extent feasible, by telegraph, teleprinter,
facsimile machine or other like means of communication resulting in
the filing of a printed or written document.
(b) A signature appearing on a document transmitted by facsimile machine
shall be recognized for the purposes of the Treaty and these
Regulations as a proper signature.
(c) Where the applicant has attempted to transmit a document by any of the
means referred to in paragraph (a) but part or all of the received
document is illegible or part of the document is not received, the
document shall be treated as not having been received to the extent
that the received document is illegible or that the attempted
transmission failed. The national Office or intergovernmental
organization shall promptly notify the applicant accordingly.
(d) Any national Office or intergovernmental organization may require that
the original of any document transmitted by any of the means referred
to in paragraph (a) and an accompanying letter identifying that
earlier transmission be furnished within 14 days from the date of the
transmission, provided that such requirement has been notified to the
International Bureau and the International Bureau has published
information thereon in the Gazette. The notification shall specify
whether such requirement concerns all or only certain kinds of
documents.
(e) Where the applicant fails to furnish the original of a document as
required under paragraph (d), the national Office or intergovernmental
organization concerned may, depending on the kind of document
transmitted and having regard to Rules 11 and 26.3,
(i) waive the requirement under paragraph (d), or
(ii) invite the applicant to furnish, within a time limit which
shall be reasonable under the circumstances and shall be fixed
in the invitation, the original of the document transmitted,
provided that, where the document transmitted contains defects,
or shows that the original contains defects, in respect of
which the national Office or intergovernmental organization may
issue an invitation to correct, that Office or organization may
issue such an invitation in addition to, or instead of,
proceeding under item (i) or (ii).
(f) Where the furnishing of the original of a document is not required
under paragraph (d) but the national Office or intergovernmental
organization considers it necessary to receive the original of the
said document, it may issue an invitation as provided for under
paragraph (e) (ii).
(g) If the applicant fails to comply with an invitation under paragraph
(e) (ii) or (f):
(i) where the document concerned is the international application,
the latter shall be considered withdrawn and the receiving
Office shall so declare;
(ii) where the document concerned is a document subsequent to the
international application, the document shall be considered as
not having been submitted.
(h) No national Office or intergovernmental organization shall be obliged
to receive any document submitted by a means referred to in paragraph
(a) unless it has notified the International Bureau that it is
prepared to receive such a document by that means and the
International Bureau has published information thereon in the Gazette.
Rule 92bis
Recording of Changes in Certain Indications in the Request
or the Demand 92bis.1 Recording of Changes by the International Bureau
(a) The International Bureau shall, on the request of the applicant or the
receiving Office, record changes in the following indications
appearing in the request or demand:
(i) person, name, residence, nationality or address of the
applicant,
(ii) person, name or address of the agent, the common representative
or the inventor.
(b) The International Bureau shall not record the requested change if the
request for recording is received by it after the expiration:
(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
Examining Authorities Each International Searching Authority and each
International Preliminary Examining Authority shall keep the file of
each international application it receives for at least 10 years from
the international filing date. 93.4 Reproductions
For the purposes of this Rule, records, copies and files may be kept as
photographic, electronic or other reproductions, provided that the
reproductions are such that the obligations to keep records, copies and files
under Rules 93.1 to 93.3 are met.
Rule 94
Access to Files 94.1 Access to the File Held by the International Bureau
(a) At the request of the applicant or any person authorized by the
applicant, the International Bureau shall furnish, subject to
reimbursement of the cost of the service, copies of any document
contained in its file.
(b) The International Bureau shall, at the request of any person but not
before the international publication of the international application
and subject to Article 38, furnish, subject to the reimbursement of
the cost of the service, copies of any document contained in its file.
94.2 Access to the File Held by the International Preliminary
Examining Authority
At the request of the applicant or any person authorized by the applicant, or,
once the international preliminary examination report has been established, of
any elected Office, the International Preliminary Examining Authority shall
furnish, subject to reimbursement of the cost of the service, copies of any
document contained in its file. 94.3 Access to the File Held by the Elected
Office
If the national law applicable by any elected Office allows access by third
parties to the file of a national application, that Office may allow access to
any documents relating to the international application, including any
document relating to the international preliminary examination, contained in
its file, to the same extent as provided by the national law for access to the
file of a national application, but not before the international publication
of the international application. The furnishing of copies of documents may be
subject to reimbursement of the cost of the service.
Rule 95
Availability of Translations 95.1 Furnishing of Copies of Translations
(a) At the request of the International Bureau, any designated or elected
Office shall provide it with a copy of the translation of the
international application furnished by the applicant to that Office.
(b) The International Bureau may, upon request and subject to
reimbursement of the cost, furnish to any person copies of the
translations received under paragraph (a).
Rule 96
The Schedule of Fees 96.1 Schedule of Fees Annexed to Regulations The amounts
of the fees referred to in Rules 15 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)) (a) if the international application contains
not more than 30 sheets
650 Swiss francs (b) if the international application contains more than 30
sheets
650 Swiss francs plus 15 Swiss francs for each
sheet in excess of 30 sheets 2. Designation Fee: (Rule 15.2 (a)) (a) for
designations made under Rule 4.9 (a)
150 Swiss francs per designation, provided that
any designation made under Rule 4.9 (a) in
excess of 11 shall not require the payment of a
designation fee (b) for designations made under Rule 4.9 (b) and confirmed
under Rule
4.9 (c) 150 Swiss francs per designation
3. Handling Fee:
(Rule 57.2 (a)) 233 Swiss francs
All fees are reduced by 75% for international applications filed by any
applicant who is a natural person and who is a national of and resides in a
State whose per capita national income is below US$3,000 (according to the
average per capita national income figures used by the United Nations for
determining its scale of assessments for the contributions payable for the
years 1995, 1996 and 1997); if there are several applicants, each must satisfy
those criteria.
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