PCT Applicant's Guide Международная фаза - Valid as from 4 сентября 2025 г.

Цель деклараций по правилу 4.17 – позволить заявителям выполнить некоторые национальные требования Указанных ведомств, предусмотренные правилом 51bis.1, уже на международной фазе. Национальное законодательство многих Указанных ведомств требует, чтобы заявитель представил документы или доказательства, относящиеся к определенным вопросам, например праву изобретателя подавать заявку и получать патент, на национальной фазе. Если заявитель подал декларации по правилу 4.17 на международной фазе, ему обычно не нужно представлять никаких документов или доказательств по вопросу, освещенному в декларации, в Указанные ведомства, предъявляющие такие требования. Например, если заявитель подал декларацию по правилу 4.17(ii) на международной фазе, обычно ему не нужно представлять никаких прочих документов или доказательств, относящихся к праву заявителя подавать заявку или получать патент (например, документ о передаче прав от изобретателя заявителю) на национальной фазе в отношении Указанных ведомств, предъявляющих такие требования в соответствии со своим национальным законодательством (см. также параграф IP 5.081). PCT не требует подачи деклараций на международной фазе, но если они подаются, то должны быть составлены с использованием стандартных формулировок (см. параграфы с IP 5.076 по IP 5.078). Никакая другая декларация (декларации) не может быть включена в Графу VIII с (i) по (v).

IP 5.076. В каком виде декларации должны представляться в заявлении?

Каждая декларация должна быть сделана на соответствующем листе (Графа VIII с (i) по (v)); следует использовать “лист для продолжения декларации” (продолжение Графы VIII с (i) по (v)), если для любой из данных деклараций недостаточно места на соответствующем листе. В декларациях должны быть использованы стандартные формулировки, регламентированные разделами с 211 по 215. За исключением декларации об авторстве изобретения для целей указания Соединенных Штатов Америки (см. параграф IP 5.077), заявитель должен выбрать те элементы стандартных текстов, которые подходят, и расположить их в соответствующем порядке с учетом имеющихся в данном случае фактов, хронологии событий и т.д. Подробные инструкции по подаче деклараций содержатся в Пояснениях к форме заявления. Если ни одна из деклараций не сделана, то к заявлению не нужно прилагать никаких декларационных листов.

IP 5.077. Где можно найти текст декларации авторства на изобретение для целей указания Соединенных Штатов Америки?

Правило 4.17(iv),

Раздел 214(a),

Раздел 214(b)

Только текст декларации об авторстве на изобретение для целей указания Соединенных Штатов Америки заранее впечатан в Графу VIII(iv) формы заявления, поскольку данный текст должен быть использован в том виде, в котором он приведен в разделе 214; ни одна часть этого текста не может быть пропущена или представлена в последовательности отличной от той, которая использована в форме. При подаче декларации после даты международной подачи декларация должна содержать номер заявки PCT в предусмотренном для этой цели поле. Кроме того, при наличии нескольких изобретателей все изобретатели должны поставить дату и подпись на полной декларации, включающей всех изобретателей, даже если они подписывают разные копии этой декларации, и декларация должна содержать имя, местожительство и адрес каждого изобретателя.

IP 5.078. Всегда ли должны использоваться стандартные формулировки деклараций?

Стандартные формулировки деклараций должны использоваться всегда, в противном случае Указанные ведомства имеют право запрашивать у заявителя на национальной фазе новую декларацию или дополнительные доказательства. Однако следует отметить, что, даже если в декларации не были использованы стандартные формулировки, Международное бюро, тем не менее, осуществляет ее публикацию. После этого каждое соответствующее Указанное ведомство само определяет, может ли оно принять декларацию или нет; другими словами, у заявителя нет никаких гарантий того, что такое ведомство ее примет. Если обстоятельства конкретного cлучая таковы, что стандартные формулировки, приведенные в правиле 4.17, неприменимы, заявителю рекомендуется удовлетворить это требование на национальной фазе.

IP 5.079. Следует ли подписывать все декларации по правилу 4.17?

Правило 4.17(iv),

Раздел 214(a),

Раздел 214(b)

Только декларация об авторстве на изобретение для целей указания Соединенных Штатов Америки должна быть подписана всеми изобретателями с проставлением даты. Никакие другие декларации не нужно подписывать.

IP 5.080. Все ли Указанные ведомства принимают декларации, сделанные в соответствии с правилом 4.17, в рамках своего национального законодательства?

Все Указанные ведомства, предъявляющие особые национальные требования, допустимые в рамках PCT, принимают такие декларации. Подробную информацию касательно требований каждого государства в отношении каждой декларации см. “Особые требования ведомства” в соответствующей “Национальной главе (краткое содержание)” для каждого Указанного ведомства и в разделе “Национальная фаза”, параграфы с NP 5.003 по NP 5.005.

IP 5.081. Могут ли Указанные ведомства требовать прочих доказательств на национальной фазе?

Приложение C Административной инструкции,

В отношении деклараций, упомянутых в правиле 4.17 с (i) по (iv), Указанное ведомство не может запрашивать каких-либо документов или доказательств, касающихся существа соответствующей декларации, если только оно не имеет обоснованных сомнений в правдивости этой декларации. В отношении декларации, упомянутой в правиле 4.17 (v), Указанное ведомство, тем не менее, может запрашивать необходимые документы или доказательства в силу того, что вопрос о не наносящих ущерба раскрытиях и исключениях в отношении новизны является материально-правовым вопросом патентоспособности. Следует также отметить, что подача той или иной декларации не устанавливает сама по себе фактов, являющихся предметом декларации: решение этих вопросов остается на усмотрение Указанных ведомств в соответствии с применимым национальным законодательством.

IP 5.082. Каким образом Указанные ведомства получают относящиеся к ним декларации?

Правило 48.2(a)(x),

Правило 48.2(b)(iv)

Все декларации публикуются вместе с международной заявкой (см. параграф IP 9.015) и, таким образом, отдельно не пересылаются в соответствующие Указанные ведомства.

IP 5.083. Какова цель боксов в Графе VIII?

Боксы в Графе VIII должны быть заполнены заявителем для того, чтобы Получающее ведомство могло убедиться в том, что упомянутая декларация (декларации) соответствует той, которая сделана в Графах VIII с (i) по (v).

Если заявитель не желает делать никаких деклараций при подаче международной заявки или если декларации не готовы на момент подачи, заявление не должно содержать факультативных декларационных листов и ничего не должно быть отмечено в боксах в Графе VIII.

IP 5.083A. Может ли декларация, упомянутая в правиле 4.17, быть исправлена или дополнена в ходе международной фазы?

Правило 26ter.1

Декларация может быть исправлена или может быть добавлена новая (недостающая) декларация путем подачи уведомления в Международное бюро. Подробную информацию см. в параграфах с IP 6.045 по IP 6.050. Однако следует отметить, что декларация не может быть изъята после подачи.

Графа IX: Контрольный перечень

IP 5.084. Для чего нужен контрольный перечень?

Правило 3.3,

Раздел 313

Графа IX должна быть заполнена заявителем для того, чтобы дать возможность Получающему ведомству проверить полноту документов, составляющих международную заявку и/или приложенных к ней, в частности проконтролировать, действительно ли международная заявка, в том виде в каком она подана, содержит то количество листов на бумажном носителе, которое отмечено в пунктах с (a) по (f).

IP 5.085

Должно быть названо фактическое число страниц, составляющих каждый элемент международной заявки, а также их общее число (в отношении нумерации страниц см. параграф IP 5.012). Что касается страниц заявления, то их должно быть по крайней мере четыре (“первый лист”, “второй лист”, “третий лист” и “последний лист”). Количество листов может быть и больше, если использовался один или несколько факультативных листов (“лист для продолжения” Графы III, “дополнительный лист”, “декларационный лист” или “лист для продолжения деклараций”).

IP 5.086

Подробную информацию по заполнению Графы IX и видам материалов, которые необходимо подать вместе с международной заявкой, см. в Пояснениях к форме заявления. Кроме того, для получения подробной информации, касающейся Указанных ведомств, рекомендуется обратиться к соответствующим “Национальным главам”.

IP 5.087

Правило 3.3(a)(iii),

Правило 8.2,

Раздел 201

Заявитель также должен сообщить в Графе IX номер фигуры чертежа (если таковой имеется), предлагаемого для публикации с рефератом (см. параграф IP 5.170), и желательно язык подачи международной заявки.

Графа X: Подпись заявителя или агента

IP 5.088. Кто должен подписывать международную заявку и когда?

Правило 51bis.1(a)(vi),

Правило 90.3

Заявитель или при наличии двух или более заявителей все заявители должны поставить подпись в Графе X международной заявки. Однако в случае нескольких заявителей Получающее ведомство не предлагает представить отсутствующие подписи, если заявление подписано по крайней мере одним из заявителей. Следует отметить, что в этом случае любое Указанное ведомство может в соответствии с применимым национальным законодательством потребовать подтверждение международной заявки путем подписания заявителем, названным в отношении Указанного ведомства, который не подписал заявление. С учетом определенных условий, упомянутых в параграфе IP 5.089, заявление может быть подписано агентом вместо заявителя (заявителей).

IP 5.089. Может ли международная заявка быть подписана агентом?

Международная заявка может быть подписана агентом, в этом случае агент назначается в качестве такового в отдельной доверенности, подписанной заявителем. Доверенность должна быть представлена в Получающее ведомство, если только Получающее ведомство не отказалось от требования предоставления отдельной доверенности (см. параграфы с IP 5.041 по IP 5.051 и с IP 11.001 по IP 11.014). Если имеется несколько заявителей, то заявление может быть подписано агентом от имени всех или части заявителей; в этом случае агент должен быть назначен в качестве такового в одной или нескольких доверенностях, подписанной заявителями, от имени которых агент подписывает заявку. Если доверенность о назначении агента, который подписывает международную заявку, отсутствует, а Получающее ведомство требует представления доверенности, то подпись считается отсутствующей до момента представления доверенности. В отношении общей доверенности см. параграфы IP 5.043 и IP 11.009.

IP 5.090. Каким образом подписывается международная заявка?

Подпись должна быть исполнена несмываемыми темными чернилами, предпочтительно черными, чтобы она четко выглядела на фотокопии. Имя каждого лица, подписывающего международную заявку, должно быть приведено (предпочтительно напечатано) рядом с подписью. Если лицо подписывает от имени юридического лица, то должно быть также отмечено, в каком качестве выступает это лицо.

IP 5.091. Когда вместо подписи может использоваться печать?

Правило 2.3

В международных заявках, подаваемых в Национальное управление интеллектуальной собственностью Китая (CNIPA), Японское патентное ведомство (JPO) или Министерство интеллектуальной собственности (МИС) (Республика Корея) в качестве Получающего ведомства, вместо подписи может использоваться печать.

Пояснения к форме PCT/RO/101 заявления

IP 5.092. Что представляют собой пояснения к форме заявления?

Пояснения к форме заявления предназначены для того, чтобы облегчить заполнение данной формы. Здесь содержатся объяснения в отношении каждой Графы о том, какие сведения необходимы и каким образом они должны быть приведены. Пояснения, однако, не требуется представлять вместе с заявлением, и они не должны нумероваться как часть заявления.

Лист расчета пошлин

IP 5.093. Что представляет собой лист расчета пошлин?

Лист расчета пошлин предназначен для оказания помощи заявителю в расчете общей суммы пошлин, подлежащих уплате в Получающее ведомство. Обычно этот лист прикладывается к форме заявления, которую заявитель получает в Получающем ведомстве. Он не является частью формы заявления и не учитывается при подсчете ее листов, а его использование не является обязательным. Тем не менее настоятельно рекомендуется, чтобы заявитель заполнил лист расчета пошлин и представил его в Получающее ведомство. Это поможет Получающему ведомству проверить расчеты и выявить какие-либо ошибки. Если несколько Международных поисковых органов являются компетентными в проведении поиска по международной заявке (см. параграф IP 7.002), то Орган, который был выбран заявителем и назван в Графе VII заявления (см. параграф IP 5.072), также должен быть назван в листе расчета пошлин вместе с величиной применимой пошлины за поиск (см. параграф IP 5.187). См. Пояснения к листу расчета пошлин для получения подробной информации по заполнению этого листа. В отношении общей информации по уплате пошлин см. параграфы с IP 5.184 по IP 5.199.

ОПИСАНИЕ ИЗОБРЕТЕНИЯ

IP 5.094. Как нужно составлять описание изобретения?

Статья 5,

Статья 11(1)(iii)(d),

Правило 5,

Раздел 204

Описание должно раскрывать изобретение достаточно ясно и полно, чтобы оно могло быть осуществлено специалистом в данной области. Оно должно начинаться с названия изобретения, как оно приведено в Графе I заявления. Правило 5 содержит подробные требования в отношении “способа и порядка” составления описания изобретения, которое в общем случае должно содержать шесть разделов. Эти разделы должны иметь следующие заголовки: “Область техники”, “Предшествующий уровень техники”, “Раскрытие изобретения”, “Краткое описание чертежей”, “Лучший вариант осуществления изобретения” или, если это применимо (см. параграф IP 5.096), “Вариант (варианты) осуществления изобретения” и “Промышленная применимость”.

IP 5.095

Требование достаточности раскрытия изобретения, предназначенное для того, чтобы изобретение могло быть осуществлено специалистом в данной области, зависит от практики национальных ведомств. Таким образом, при составлении описания изобретения, настоятельно рекомендуется должным образом учитывать имеющуюся национальную практику (например, Японии и Соединенных Штатов Америки). Таким образом можно будет избежать необходимости вносить изменения в описание изобретения на национальной фазе (см. параграф IP 5.111).

IP 5.096

Правило 5.1(a)(v)

Все, что сказано в параграфе IP 5.095, применяется по аналогии к необходимости раскрыть “лучший вариант осуществления изобретения”. Если по крайней мере одно из Указанных государств требует раскрытия “лучшего варианта” (например, Ведомство по патентам и товарным знакам Соединенных Штатов Америки), то этот лучший вариант должен быть приведен в описании изобретения.

IP 5.097

Описание изобретения, составленное с надлежащим учетом того, о чем сказано в параграфах с IP 5.094 по IP 5.096, будет принято всеми Указанными ведомствами. Это может потребовать большего внимания и затрат, чем подготовка национальной патентной заявки, но, безусловно, гораздо меньших усилий, чем подготовка множества заявок, если для подачи заявок в нескольких странах не используется процедура PCT.

IP 5.098

Вопрос соблюдения единства изобретения обсуждается в параграфах с IP 5.111 по IP 5.123 при обсуждении формулы изобретения.

IP 5.099. Какие специальные требования применяются к перечням последовательностей, являющимся частью описания?

Когда международная заявка содержит раскрытие последовательностей нуклеотидов и/или аминокислот, которые требуется включить в последовательность согласно Приложению C Административной инструкции, описание должно содержать часть описания с перечнем последовательностей, которая соответствует стандарту, предусмотренному в Приложении C (Стандарт ВОИС ST.26). В соответствии со стандартом ВОИС ST.26 перечень последовательностей должен быть представлен в формате XML. Любой свободный текст, зависящий от языка, в перечне последовательностей должен быть представлен на языке, допустимом для этой цели Получающим ведомством. Если это разрешено Получающим ведомством, один и тот же свободный текст, зависящий от языка, может быть предоставлен на двух языках в одном и том же перечне последовательностей, на английском и другом языке (см. требования каждого Получающего ведомства в Приложении C к Руководству РСТ для заявителя). В отношении дополнительной информации, касающейся последовательностей нуклеотидов и/или аминокислот, включая те из них, которые подаются для целей международного поиска, см. ниже, а также параграфы с IP 7.005 по IP 7.012.

IP 5.100. Как наилучшим образом осуществить подачу международной заявки, содержащей перечень последовательностей?

Приложение C Административной инструкции,

Приложение F Административной инструкции,

Правило 19.4(a)(ii-bis),

Раздел 208,

Раздел 702

Международную заявку, содержащую перечень последовательностей, лучше всего подавать в электронной форме, поскольку перечень последовательностей должен быть подан в электронной форме в формате XML. Заявка должна подаваться в формате электронного документа и/или с использованием средств, которые допускаются Получающим ведомством для подачи международных заявок в электронной форме (Приложение F). Любое Получающее ведомство, которое не принимает подачу перечней последовательностей в формате XML, пересылает международную заявку в Международное бюро в качестве Получающего ведомства в соответствии с правилом 19.4. Перечень последовательностей должен быть подготовлен в соответствии с Приложением C Административной инструкции (в соответствии со стандартом ВОИС ST.26) и создан предпочтительно с использованием программного обеспечения WIPO Sequence (см. параграф IP 5.104). Заявителям настоятельно не рекомендуется подавать международные заявки с основной частью на бумаге и отдельно с перечнем последовательностей в электронной форме. Для международных заявок, поданных на бумаге, перечень последовательностей в формате XML должен сопровождать международную заявку (например, на электронном носителе).

IP 5.101. Каким образом рассчитывается пошлина за подачу перечня последовательностей?

Правило 13ter.1,

Перечень пошлин,

Раздел 707,

Приложение C Административной инструкции

Плата за страницу не взимается за любой перечень последовательностей, поданный в формате XML в соответствии со стандартом ВОИС ST.26.

IP 5.102. Что произойдет, если отдельный электронный файл, представляющий собой раскрытие последовательностей, будет подан в формате, отличающемся от XML?

Приложение C Административной инструкции

Как поясняется в пунктах IP 5.099 и IP 5.100, любая часть описания, содержащая перечень последовательностей, должна быть представлена в формате XML в соответствии со стандартом ВОИС ST.26. Если во время подачи заявитель представил отдельный электронный файл, раскрывающий последовательности в формате, отличающемся от XML (например, в формате PDF или ST.25 TXT), Получающее ведомство предложит заявителю подтвердить, желает ли он добавить содержание в виде листов к основной части описания. Если намерение заявителя таково, заявитель должен подтвердить Получающему ведомству, что содержание файла должно составлять часть описания, и, если файл не соответствует формату, допустимому для основной части описания, повторно представить содержание в таком формате (например, PDF). Некоторые Получающие ведомства могут напрямую преобразовывать файл в допустимый формат и запрашивать подтверждение у заявителя. Любые листы, добавленные к основной части описания, будут учитываться при расчете международной пошлины за подачу заявки. Заявитель может позже изменить описание (в соответствии со статьей 34 или во время перехода на национальную фазу), включив в описание часть перечня последовательностей, соответствующую стандарту ВОИС ST.26. Если заявитель не подтвердит или не уплатит какую-либо применимую пошлину за листы числом свыше 30, содержание изначально представленного электронного файла не будет рассматриваться и не будет являться частью международной заявки.

IP 5.103. Все ли Получающие ведомства принимают подачу перечня последовательностей в электронной форме?

Правило 19.4(a)(ii-bis)

Получающие ведомства, готовые принять международные заявки, поданные в электронном формате, указаны в Приложении C. Любое Получающее ведомство, которое не принимает подачу перечней последовательностей в формате XML, пересылает международную заявку в Международное бюро в качестве Получающего ведомства в соответствии с правилом 19.4.

IP 5.104. Существует ли какое-либо программное обеспечение, рекомендуемое Международным бюро, для подготовки перечней последовательностей в электронной форме?

Для обеспечения соответствия установленному стандарту перечни последовательностей должны создаваться с использованием WIPO Sequence (доступно для загрузки с сайта ВОИС по адресу: https://www.wipo.int/standards/ru/sequence/index.html).

IP 5.105. Какие требования предъявляются к оформлению описания изобретения?

Правило 11,

Раздел 109

В правиле 11 перечислены требования к оформлению, которые подлежат соблюдению в международной заявке. Листы заявки должны быть выполнены на белой и прочной бумаге формата A4. Минимальный размер полей должен быть 2 см сверху, снизу и справа, и 2,5 см с левой стороны листа. Поля не должны превышать 3 см внизу и в правой стороне листа и 4 см вверху и в левой стороне листа. Поля должны быть полностью чистыми, за исключением того, что номер дела, не превышающий в длину 25 знаков, может быть проставлен заявителем в левом верхнем углу поля в пределах 1,5 см от верха листа. Номер дела может состоять как из букв латинского алфавита, так и арабских цифр или их сочетания. Символ дефиса (“-”) может использоваться в качестве разделителя буквенно-цифровых символов. Все тексты в описании должны печататься шрифтом с высотой заглавных букв не менее 0,28 см.

IP 5.106. Как должны нумероваться листы и строки?

Номера страниц должны проставляться в середине листа вверху или внизу, но не на 2-сантиметровом поле (т.е. номер страницы, если он расположен в верхней части листа, должен быть ниже поля, равного 2 см, а если он находится в нижней части листа, то выше поля, равного 2 см). Настоятельно рекомендуется нумеровать каждую пятую строку на каждом листе в правой половине левого поля. Описание изобретения должно быть напечатано на печатной машинке или распечатано на компьютере. Текст должен печататься с полуторным интервалом несмываемым красителем темного цвета, чтобы было возможно его непосредственное репродуцирование. Заглавные буквы шрифтов должны быть не менее 0,28 см по высоте.

IP 5.107. Как следует представлять химические и математические формулы?

Правило 11.9(b),

Правило 11.10(b)

Описание изобретения, формула изобретения и реферат могут содержать химические или математические формулы. Такие формулы, если это необходимо, могут быть написаны от руки или нарисованы, однако рекомендуется использовать подходящие чертежные средства или материалы, такие как трафареты или переводные картинки. В силу причин практического характера все формулы могут быть сгруппированы на одном или нескольких листах описания изобретения и пронумерованы вместе с ним. В таких случаях рекомендуется, чтобы каждая формула имела ссылочное обозначение, а описание изобретения должно содержать ссылки на такие формулы во всех случаях, когда это необходимо. Химические или математические формулы могут быть также сгруппированы и размещены после формулы изобретения в качестве чертежей. В таком случае химические или математические формулы должны быть выполнены в соответствии с требованиями к чертежам, а листы должны нумероваться как листы чертежей (см. параграф IP 5.157).

IP 5.108

Правило 11.9(b),

Правило 11.9(d),

Правило 11.13(h)

Химические или математические формулы должны использовать общепринятые символы и должны быть оформлены таким образом, чтобы полностью исключить двусмысленность. Цифры, буквы и обозначения, которые не являются напечатанными, должны быть разборчивыми и одинаковыми по виду в различных формулах, независимо от части международной заявки, в которой они содержатся. Химические или математические формулы, имеющиеся в тексте международной заявки, должны включать символы, заглавные буквы которых имеют высоту не менее 0,28 см. При их наличии на листах чертежей эти символы должны быть по крайней мере 0,32 см по высоте. Все математические символы, используемые в формуле в описании или на листах чертежей, должны поясняться в описании, за исключением случаев, когда их значение понятно из контекста. В любом случае используемые математические символы могут быть расположены на одном листе.

IP 5.109. Как должны представляться таблицы?

Правило 11.10(c),

Правило 11.10(d)

В целях удобства таблицы могут быть сгруппированы вместе на одном или нескольких листах описания изобретения и пронумерованы вместе с описанием. Если необходимо несколько таблиц, то каждая из них должна иметь обозначение либо римскими цифрами (независимо от нумерации страниц описания изобретения, страниц чертежей или нумерации фигур), либо заглавными буквами, либо названием, раскрывающим ее содержание, либо каким-либо другим способом. Каждая строка и колонка таблицы должны начинаться с заголовка, поясняющего представленные данные, и, если необходимо, используемые единицы измерения. Все таблицы, насколько это возможно, должны располагаться на листе в прямом положении. Если таблицы не могут быть удовлетворительно расположены в прямом положении, они могут быть расположены в повернутом положении так, чтобы верх таблиц приходился на левую сторону листа.

IP 5.110. Каким образом в описании изобретения можно исправить очевидные ошибки?

Правило 91

Процедура исправления очевидных ошибок поясняется в параграфах с IP 11.033 по IP 11.044. Пропуск целого листа описания изобретения нельзя исправить без изменения даты международной подачи (см. параграфы IP 6.025 и IP 6.026). Исправления, помимо исправления очевидных ошибок, считаются изменениями (см. параграф IP 5.111).

IP 5.111. Можно ли вносить изменения в описание на международной фазе?

Описание изобретения может быть изменено на международной фазе, только если заявителем подается требование о проведении международной предварительной экспертизы (см. параграф IP 10.001). Описание изобретения может быть также изменено и на национальной фазе в каждом Указанном или Выбранном ведомстве (см. раздел “Национальная фаза”). Внесение изменений в формулу изобретения на международной фазе осуществляется по другим правилам, см. параграф IP 5.127.

ФОРМУЛА ИЗОБРЕНИЯ

IP 5.112. Как нужно составлять формулу изобретения?

Статья 611(1)(iii)(e),

Пункт или пункты формулы изобретения должны “определять объект, на который испрашивается охрана”. Пункты формулы изобретения должны быть ясными и точными. Они должны полностью подкрепляться описанием изобретения. Правило 6 содержит положения в отношении количества пунктов формулы и порядка их нумерации, возможности включения в пункт формулы отсылок на другие части международной заявки, а также содержит положения о принципе составления формулы изобретения и зависимых пунктов. Что касается принципа составления пункта формулы изобретения, в случае, когда это применимо, он должен содержать две отдельные части, а именно: часть, включающую признаки, которые являются частью предшествующего уровня техники, и часть, включающую технические признаки, на которые испрашивается охрана (“отличительная часть”).

IP 5.113

Правило 6.4(a)

В соответствии с PCT любой зависимый пункт формулы изобретения, который ссылается более чем на один другой пункт (“пункт формулы, содержащий множественную зависимость”), должен ссылаться на такие пункты только в виде альтернативы, и пункты формулы, содержащие множественную зависимость, не должны служить основанием для других пунктов формулы, также содержащих множественную зависимость. Однако национальные законодательства большинства Договаривающихся стран допускают способ составления формулы изобретения, который отличается от упомянутого в предыдущем предложении, и использование этого иного способа составления формулы в принципе допускается в PCT. Для целей тех Указанных государств, в которых этот отличающийся способ составления формулы изобретения не допускается, заявитель должен принять решение о том, какой способ составления формулы ему следует использовать. Если используется иной способ составления формулы изобретения, то может возникнуть необходимость внесения изменений в формулу на национальной фазе в тех ведомствах, которые не позволяют такое составление. Более того, национальные ведомства этих государств, если они действуют в качестве Международных поисковых органов, могут указать в соответствии со статьей 17(2)(b), что проведение полноценного поиска невозможно, если использован этот отличающийся способ составления формулы (см. параграф IP 7.014).

IP 5.114. Что означает требование “единства изобретения”?

Статья 3(4)(iii),

Правило 13,

Правило 45bis.6(a)

Международная заявка должна быть составлена таким образом, чтобы формула изобретения относилась только к одному изобретению или к группе изобретений, настолько связанных между собой, что они образуют единый общий изобретательский замысел. Данный принцип закреплен в статье 3(4)(iii) и правиле 13. Соблюдение требования единства не проверяется ни Получающим ведомством, ни Международным бюро, но подлежит проверке Международным поисковым органом (см. параграфы с IP 7.015 по IP 7.021), Органом, назначенным для проведения дополнительного международного поиска (см. параграф IP 8.044), и Органом международной предварительной экспертизы (см. параграф IP 10.072) и является важным моментом их процедур, а также может проверяться на национальной фазе Указанным или Выбранным ведомством. Поскольку для существенно различных изобретений требуется проводить отдельный поиск и экспертизу, дополнительная пошлина подлежит уплате, если международный поиск или международная предварительная экспертиза должна охватывать несколько изобретений (или групп изобретений, связанных между собой так, как описано выше). О том, каким образом требование единства затрагивает проведение дополнительного международного поиска, см. параграф IP 8.043.

IP 5.115. Когда выполняется требование единства изобретения?

Правило 13.2,

Правило 13.3,

Раздел 206

Требование единства изобретения выполняется только тогда, когда имеется “техническая взаимосвязь” между заявленными изобретениями, которая определяется одним или несколькими одинаковыми или соответствующими “особыми техническими признаками”. Выражение “особые технические признаки” означает те технические признаки, которые определяют вклад, вносимый в уровень техники каждым из заявленных изобретений, рассматриваемым в совокупности. Определение того, связана ли группа изобретений между собой настолько, что они образуют единый общий изобретательский замысел, осуществляется вне зависимости от того, заявлены ли эти изобретения в отдельных пунктах формулы изобретения или в виде альтернативы в одном пункте. Первоначальный анализ единства изобретения на основании предположения, что пункты формулы изобретения не вытекают из предшествующего уровня техники, осуществляется до проведения поиска релевантного уровня техники, но может быть пересмотрен по результатам поиска. Приложение B Административной инструкции содержит подробные критерии, регулирующие определение того, отвечает ли международная заявка требованию единства изобретения в соответствии с правилом 13. В следующем параграфе приводится краткое изложение некоторых наиболее важных критериев, приведенных в этом Приложении. Подробная иллюстрация трех особых ситуаций приводится ниже:

(i) комбинация пунктов формулы на изобретения различных категорий (например, продукт, способ, применение и устройства или средства);

(ii) так называемая “формула Маркуша”; и

(iii) случай промежуточных или конечных продуктов.

IP 5.116. Могут ли пункты формулы изобретения, относящиеся к различным категориям, включаться в международную заявку?

Метод определения единства изобретения, закрепленный в правиле 13, позволяет, в частности, включать одно из следующих сочетаний пунктов формулы изобретения, относящихся к объектам различных категорий, в одну международную заявку:

(i) в дополнение к независимому пункту на определенный продукт, независимый пункт на способ, специально предназначенный для получения этого продукта, и независимый пункт на применение этого продукта; или

(ii) в дополнение к независимому пункту на определенный способ, независимый пункт на устройство или средство, специально разработанное для осуществления этого способа; или

(iii) в дополнение к независимому пункту на определенный продукт, независимый пункт на способ, специально предназначенный для получения этого продукта, и независимый пункт на устройство или средство, специально разработанное для осуществления этого способа,

при этом понимается, что способ специально предназначен для получения продукта, если его неотъемлемым результатом является получение этого продукта, и что устройство или средство специально разработано для осуществления способа, если вклад, вносимый этим устройством или средством в уровень техники, соответствует вкладу, вносимому в уровень техники этим способом.

IP 5.117

Устройства или средства считаются “специально разработанными для осуществления” заявленного способа, если вклад, вносимый устройством или средством в уровень техники, соответствует вкладу, вносимому в уровень техники способом. Следовательно, недостаточно, чтобы существовала лишь возможность использовать устройство или средство для осуществления заявленного способа.

IP 5.118. Что разрешается при использовании “формулы Маркуша”?

Правило 13.2 также регулирует применение “формулы Маркуша”, когда один пункт формулы изобретения охватывает альтернативы изобретения, что является общепринятой практикой в случае изобретений в области химии. В этой особой ситуации требование технической взаимосвязи и одинаковых или соответствующих особых технических признаков, определенное правилом 13.2, считается выполненным, если альтернативы имеют сходную природу.

IP 5.119

Если формула Маркуша применяется для альтернатив в виде химических соединений, то они считаются имеющими сходную природу, когда выполняются следующие условия:

(i) все альтернативы имеют общее свойство или активность; и

(ii) (a) присутствует общая структура, т.е. существенный структурный элемент присутствует во всех альтернативах; или

(b) в тех случаях, когда общая структура не может служить объединяющим критерием, все альтернативы относятся к одному классу химических соединений, признанному таковым в области техники, к которой относится изобретение.

IP 5.120

Если при наличии альтернатив будет показано, что, по крайней мере, одна их них, входившая в формулу Маркуша, не является новой в свете предшествующего уровня техники, то эксперту следует пересмотреть вопрос единства изобретения. Этот пересмотр не обязательно приведет к выводу о нарушении единства изобретения.

IP 5.121. Может ли заявляться как промежуточный, так и конечный продукт?

Правило 13.2 также применимо к ситуации как промежуточного, так и конечного продуктов. Термин “промежуточный” означает промежуточный или начальный продукт. К таковым относятся продукты, свойства которых позволяют использовать их для производства конечных продуктов посредством физических или химических изменений, в результате которых осуществляется преобразование промежуточного продукта. В контексте проблемы промежуточного и конечного продукта единство изобретения считается соблюденным, если выполнены следующие два условия:

(i) промежуточный и конечный продукт имеют один и тот же структурный элемент, в котором:

(a) основные химические структуры промежуточного и конечного продукта те же самые; или

(b) химические структуры этих двух продуктов технически тесно взаимосвязаны, причем структура промежуточного продукта включается в качестве существенного структурного элемента в структуру конечного продукта; и

(ii) промежуточный и конечный продукт технически взаимосвязаны в том смысле, что конечный продукт получается либо непосредственно из промежуточного, либо выделяется из него через небольшое число других промежуточных продуктов, все из которых содержат тот же самый существенный структурный элемент.

IP 5.122

Единство изобретения может также считаться соблюденным между промежуточным и конечным продуктом, структуры которых неизвестны, например между промежуточным продуктом известной структуры и конечным продуктом неизвестной структуры или между промежуточным продуктом неизвестной структуры и конечным продуктом неизвестной структуры. Чтобы требование единства изобретения считалось соблюденным в таких случаях, достаточно привести доказательство того, что промежуточный и конечный продукты технически тесно связаны между собой, например когда промежуточный продукт содержит тот же существенный элемент, что и конечный продукт, либо при его помощи существенный элемент вводится в конечный продукт.

IP 5.123. Обязаны ли все Указанные или Выбранные ведомства принимать международную заявку, которая соответствует требованиям единства изобретения, изложенным в правиле 13 РСТ?

Статья 2(x),

Статья 27(1),

Правило 13

Международная заявка, которая удовлетворяет требованиям единства изобретения, изложенным в правиле 13, должна приниматься всеми Указанными или Выбранными ведомствами, поскольку статья 27(1) не позволяет какому-либо национальному законодательству (как определено в статье 2(x)) предъявлять иные или дополнительные требования, относящиеся к форме или содержанию международной заявки, кроме предусмотренных PCT.

IP 5.124. Каковы требования к оформлению формулы изобретения?

Правило 11,

Правило 11.4(a)

Требования к оформлению являются такими же, как и требования в отношении описания изобретения, приведенные в параграфе IP 5.105. Надо отметить, что формула изобретения должна начинаться с нового листа.

IP 5.125. Может ли формула изобретения включать таблицы?

Правило 11.10(c)

Формула изобретения может включать таблицы, если целесообразность их использования вытекает из ее существа. В этом случае таблицы должны включаться в текст соответствующего пункта формулы; они не могут быть приложены к формуле изобретения, и на таблицы, содержащиеся в описании изобретения, не могут быть сделаны ссылки (см. параграф IP 5.109).

IP 5.126. Каким образом могут быть исправлены очевидные ошибки в формуле изобретения?

Правило 91

Процедура исправления очевидных ошибок поясняется в параграфах с IP 11.033 по IP 11.044. Пропуск целого листа формулы изобретения не может быть исправлен без изменения даты международной подачи (см. параграфы IP 6.025 и IP 6.026). Рекомендуется обращаться с просьбой об исправлении очевидных ошибок в формуле изобретения только в том случае, когда она способна оказать влияние на международный поиск; в иных случаях исправлять ошибку следует путем внесения изменений в формулу изобретения (см. параграф IP 5.127).

IP 5.127. Можно ли вносить изменения в формулу изобретения в ходе международной фазы?

Да, формула изобретения может быть изменена в соответствии со статьей 19 после получения отчета о международном поиске (см. параграфы с IP 9.004 по IP 9.011); она может быть изменена также в ходе международной предварительной экспертизы, если заявителем было подано требование (см. параграфы IP 10.024 и IP 10.067), и в ходе национальной фазы.

ЧЕРТЕЖИ

IP 5.128. Когда требуется включать чертежи в международную заявку?

Статья 3(2) Статья 7,

Правило 7.1

Международная заявка должна содержать чертежи в тех случаях, когда они необходимы для понимания изобретения. Более того, если наличие чертежей не является действительно необходимым для понимания изобретения, но природа изобретения допускает иллюстрацию посредством чертежей, заявитель может включить такие чертежи, а любое Указанное ведомство может потребовать от заявителя представления таких чертежей в ходе национальной фазы.

IP 5.129. Что считается чертежом?

Правило 7.1

Виды в перспективе, в разобранном виде, в разрезе, в сечении и изображение частей в различном масштабе считаются чертежами. Чертежами считаются также схемы и диаграммы, такие как принципиальные схемы и графические представления определенного явления, которые выражают соотношения между несколькими параметрами.

IP 5.130

Правило 11.10

Если описание изобретения, формула изобретения или реферат содержат химические или математические формулы и таблицы, они не считаются чертежами и, таким образом, к ним не относятся требования, предъявляемые к чертежам (чит. параграфы с IP 5.131 по IP 5.133). Однако такие графические формы могут быть поданы в качестве чертежей и, в таком случае, к ним предъявляются те же требования, что и к чертежам.

IP 5.131. Как следует представлять чертежи?

Правило 11.10,

Правило 11.11,

Правило 11.13

Чертежи должны представляться на одном или нескольких отдельных листах. Они не должны включаться в описание изобретения, формулу изобретения или реферат. Они не должны содержать надписи, за исключением совершенно необходимых одного или нескольких слов. Правила с 11.10 по 11.13 содержат подробные требования в отношении оформления чертежей. Все чертежи, отвечающие этим требованиям, должны приниматься Указанными ведомствами на национальной фазе. Чертежи, заново подготовленные в соответствии с национальными стандартами, могут не потребоваться в ходе национальной фазы, если чертежи, поданные с международной заявкой, удовлетворяют требованиям правила 11. Номер дела может быть проставлен на каждом листе чертежей, так же как в описании изобретения (см. параграф IP 5.105).

IP 5.132

Правило 11.2(a)

Чертежи должны представляться в таком виде, чтобы было возможно их непосредственное репродуцирование путем фотографии, электрографии, фотоофсетной печати и микрофильмирования в любом количестве копий.

IP 5.133

Чертежи должны быть выполнены на бумаге формата A4 (29,7 см x 21 см), которая должна быть эластичной, прочной, белой, гладкой, непрозрачной и долговечной. Листы не должны быть помятыми или порванными; они не должны иметь перегибов. Каждый лист по возможности не должен иметь подчисток и не должен содержать исправлений, надписей и вставок. Может использоваться только одна сторона листа. Размер используемой площади листов не должен превышать 26,2 см x 17,0 см. Листы не должны содержать рамок вокруг используемой поверхности. Должен соблюдаться минимальный размер полей: верх и левая сторона: 2,5 см; справа: 1,5 см; снизу: 1,0 см.

IP 5.134. Должны ли фигуры чертежей располагаться особым образом?

Правило 11.10(d),

Правило 11.13(j)

Все фигуры чертежей должны располагаться на листе или листах так, чтобы листы были максимально насыщены, но при этом должны быть четко отделены друг от друга. Однако фигуры не должны разделяться линиями.

IP 5.135

Правило 11.10(d),

Правило 11.13(j)

По возможности все фигуры чертежей должны быть расположены на листах в прямом положении. Если чертежи нельзя удовлетворительно расположить в прямом положении, они могут быть расположены в повернутом положении так, чтобы верх чертежей приходился на левую сторону листа. Таким образом, фигура, которая больше по ширине, чем по высоте, может быть расположена таким образом, чтобы низ этой фигуры располагался параллельно и вдоль правой стороны листа. В этом случае, если на этом же листе располагаются и другие фигуры, то они должны быть расположены аналогичным образом, чтобы все фигуры на одной странице находились в одинаковом положении. Это же требование применяется к таблицам, химическим и математическим формулам (см. параграфы IP 5.107 и IP 5.109).

IP 5.136

Чертежи должны содержать столько фигур, сколько необходимо для того, чтобы в достаточной мере проиллюстрировать заявленное изобретение. Чертежи могут представлять собой вид в плане, спереди, в разрезе или перспективе; если необходимо, могут быть использованы детальные виды отдельных частей или элементов, выполненные в более крупном масштабе. Допускаются покомпонентные виды, имеющие отделенные части той же самой фигуры, взятые в скобки, для представления взаимосвязей или порядка сборки различных частей. Одна фигура не должна располагаться над другой фигурой или в пределах расположения другой фигуры.

IP 5.137

Если изобретение относится к усовершенствованию деталей существующих устройств или механизмов, желательно представлять общую фигуру для иллюстрации того, в каком месте устройства или механизма располагаются усовершенствованные детали, для правильного понимания чертежей. Если, например, изобретение относится к закреплению эластичной мембраны в мембранном насосе, фигура − обычно первая − может представлять собой насос в целом в усовершенствованном виде согласно изобретению, а его детали приводятся затем на других фигурах. С другой стороны, нет необходимости изображать весь механизм, содержащий в себе эту мембрану, например автомобиль, в котором с помощью мембранного насоса осуществляется подача топлива.

IP 5.138

Достаточно выбрать те виды, которые являются наиболее представительными и содержат минимум скрытых частей, так, чтобы объект был бы полностью и однозначно определен наименьшим из возможного числа видов. В этом отношении иногда достаточно заменить различные виды объекта одним видом в перспективе. Таким образом, следует выбрать наиболее простой вид, соответствующий достижению желаемого результата.

IP 5.139

Правило 11.13(i)

Если фигуры, расположенные на нескольких листах, составляют единую фигуру, то фигуры на нескольких листах должны располагаться так, чтобы единая фигура могла быть скомпонована без пропуска какой-либо части любой из фигур, изображенных на разных листах. Фигуры частей, расположенные на разных листах, всегда должны состыковываться по краям, т.е. одна фигура части не может содержать в себе элементы фигуры другой части. Очень большие по длине фигуры могут быть разделены на несколько частей, расположенных на одном листе друг над другом. Однако взаимосвязь между различными частями должна быть ясной и однозначной. Таким образом, рекомендуется, чтобы были включены фигуры более мелкого масштаба, показывая единое целое, образуемое отдельными фигурами, и обозначая расположение представленных частей.

IP 5.140. Как должны нумероваться чертежи?

Правило 11.7,

Раздел 207(b)

Все листы чертежей должны быть пронумерованы, причем номера проставляются в середине верхней или нижней части каждого листа, но не на полях (в отношении листов описания изобретения см. параграф IP 5.106), цифрами более крупными, чем те, которые используются для ссылочных обозначений, во избежание их смешения с последним. Для чертежей используется отдельная серия нумерации (см. параграф IP 5.012). Номер каждого листа чертежей должен состоять из двух арабских цифр, разделенных наклонной чертой, первое число является номером листа, а второе – общим количеством листов чертежей. Например, “2/5” используется для обозначения второго листа чертежей, если всего имеется пять таких листов, а “1/1” используется при наличии одного такого листа.

IP 5.141

Правило 11.13(k),

Правило 49.5(f)

Различные фигуры на листах чертежей должны нумероваться арабскими цифрами последовательно и независимо от нумерации страниц и, если возможно, в том порядке, в котором они располагаются. Перед номером фигуры должно быть проставлено выражение “Fig.”, вне зависимости от языка международной заявки. Если для иллюстрации заявленного изобретения достаточно одной фигуры, то она не нумеруется и сокращение “Fig.” не проставляется. Цифры и буквы, имеющиеся на чертежах, должны быть простыми и ясными и не должны помещаться в скобки, кружки или кавычки, за исключением случаев отдельных фигур, предназначенных для образования единой фигуры, вне зависимости от того, проставляются ли они на одном или нескольких листах. В этом случае единая фигура может быть обозначена тем же номером, за которым следует заглавная буква (например, Fig. 7B).

IP 5.142

Предпочтительно, чтобы различные фигуры были расположены по возможности на каждом листе в возрастающем порядке номеров, слева направо и сверху вниз. Если одна или две фигуры иллюстрируют какую-либо деталь в более крупном масштабе, чем другие, каждая фигура должна быть пронумерована отдельно и, если это возможно, последовательно.

IP 5.143. Как должны выполняться чертежи?

Правило 11.13

Чертежи должны выполняться стойкими черными линиями и штрихами одинаковой толщины и хорошей четкости. Во всех случаях толщину линий и штрихов нужно выбирать исходя из масштаба, характера изображения, техники исполнения, читаемости чертежа и качества его репродуцирования. Все линии в чертежах должны обычно выполняться с помощью чертежных инструментов, за исключением случаев, когда их характер не позволяет использовать такие инструменты, как например: необычные схемы, орнаментальные структуры и изогнутые выносные линии (см. параграф IP 5.145).

IP 5.144. Можно ли изображать в одном чертеже линии разной толщины?

Линии и штрихи разной толщины могут использоваться в одном чертеже, если разная толщина имеет различное значение. Например, можно использовать:

— непрерывную толстую линию для окантовки, контурного вида и разрезов;

— непрерывную тонкую линию для выносных линий (см. параграф IP 5.145 в отношении других подробностей), штриховки, контурных частей прилегающих элементов, воображаемых линий разрезов, соединенных изогнутыми или закругленными краями;

— непрерывную тонкую линию, проводимую от руки, для разграничения, сечения деталей или прерванных видов;

— тонкую штрих-пунктирную линию, выполненную короткими штрихами, для контуров;

— тонкую штрих-пунктирную линию для осей и плоскостей симметрии, крайних положений движущихся элементов, перед разрезом;

— тонкую линию, заканчивающуюся двумя толстыми линиями для обозначения разрезов.

IP 5.145. Как нужно выполнять выносные линии?

Выносные линии, т. е. линии между ссылочными обозначениями (например, ссылочными номерами) и соответствующими деталями, могут быть прямыми или изогнутыми и должны быть как можно более короткими. Они должны находиться в непосредственной близости от ссылочного обозначения и простираться до нужной детали. Выносные линии для некоторых ссылочных обозначений могут быть опущены. Ссылочные обозначения такого вида, которые не соединены ни с чем, обозначают поверхность или разрез, на котором они расположены. В таких случаях ссылочные обозначения могут быть подчеркнуты, чтобы отличить их от линии, которая не была удалена по ошибке. Выносные линии должны выполняться тем же образом, что и другие линии в чертежах (см. параграф IP 5.143).

IP 5.146. Можно ли использовать стрелки на чертежах?

На конце выносных линий могут иметься стрелки, при условии, что их назначение является ясным. Они могут обозначать следующее:

(i) отдельная стрелка обозначает целую часть или деталь, на которую она указывает;

(ii) стрелка, соприкасающаяся с линией, обозначает поверхность, изображенную линией, идущей вдоль направления стрелки;

(iii) стрелки также могут быть использованы в соответствующих случаях для обозначения направления движения.

IP 5.147. Каким образом изображаются разрезы?

Правило 11.13(b)

При выполнении и изображении разрезов должны соблюдаться определенные требования в отношении обозначения и идентификации соответствующих фигур и того, в каком виде они должны быть изображены; это подробно объясняется в параграфах IP 5.148 и IP 5.149.

IP 5.148

Если фигура представляет собой разрез другой фигуры, то на последней должно быть обозначено расположение разреза и стрелками с двух концов может быть обозначено направление обзора. Кроме того, для того чтобы быстро идентифицировать каждую приведенную в разрезе фигуру, особенно, если на одной фигуре дается несколько разрезов, каждый конец линии разреза должен быть отмечен той же арабской или римской цифрой, которая обозначает фигуру, на которой показывается этот разрез. Разрез представляет ту часть объекта, которая расположена на секущей поверхности. В технических чертежах разрез является той частью объекта, который находится за секущей поверхностью с точки зрения смотрящего на него лица. Секущими поверхностями обычно являются плоскости, а если они не являются плоскостями, то это должно быть наглядно обозначено. Разрезы всегда должны соответствовать секущей поверхности, какая бы она ни была по форме.

IP 5.149

Разрез должен показываться и вычерчиваться таким же образом, что и обычный вид, части которого в сечении заштрихованы равномерными и параллельными косыми чертами, причем расстояние между косыми чертами выбирается с учетом всей заштрихованной области. Штриховка не должна препятствовать ясному чтению ссылочных обозначений и выносных линий. Соответственно, если не представляется возможным разместить ссылочные обозначения вне заштрихованной области, то штриховка может отсутствовать там, где расположено ссылочное обозначение. Некоторые виды штриховки могут иметь специальное назначение. Штриховка должна быть расположена под достаточно большим углом к окружающим осям или основным линиям и предпочтительно равняться 45º. Различные части разреза одного и того же объекта должны штриховаться одинаково. Штриховка различных смежных элементов должна иметь разные углы наклона. В случае больших областей штриховка может быть ограничена краями, очерченными внутри контура области, подлежащей штрихованию.

IP 5.150. Каким должен быть масштаб фигур в чертежах?

Правило 11.13(c)

Масштаб фигур должен быть таковым, чтобы все существенные детали могли быть ясно различимы при линейном уменьшении до двух третей. В исключительных случаях, если это требуется, масштаб чертежей может быть показан графически. Такие обозначения, как “фактический размер” или “масштаб ½”, на чертежах или в описании изобретения являются недопустимыми, поскольку они теряют свое значение при репродуцировании в различных форматах.

IP 5.151

Правило 11.13(g)

Каждый элемент любой фигуры должен быть выполнен в соответствующей пропорции со всеми другими элементами этой фигуры, за исключением случаев, когда другая пропорция является необходимой для более четкого изображения фигуры. В качестве предпочтительной альтернативы разным пропорциям в рамках одной фигуры для целей достижения необходимой четкости следует добавить вспомогательную фигуру, представляющую изображение элемента первоначальной фигуры в большем масштабе. В таких случаях рекомендуется, чтобы увеличенный элемент, показанный на второй фигуре, был заключен в круг, выполненный тонкой линией или штрихпунктиром на первой фигуре и показывающий расположение этого элемента, не препятствуя обзору фигуры.

IP 5.152. Каким образом изображаются и используются в чертежах цифры, буквы, выносные линии и подобные обозначения?

Правило 11.13(e)

Цифры, буквы, выносные линии и любые другие подобные обозначения, приводимые на листах чертежей в качестве нумерации фигур и листов чертежей, надписей, градуировки масштабов и т.д., должны быть простыми и ясными и никогда не должны помещаться в какие-либо скобки, кавычки или окружности. Допускается использование знаков, обозначающих минуты, секунды или градусы. Цифры, буквы и выносные линии должны располагаться в том же направлении, что и графические объекты с тем, чтобы избежать необходимости вращать лист. Такие цифры, буквы и выносные линии не должны располагаться в замкнутых и сложных частях чертежей, чтобы не препятствовать их полному пониманию и, следовательно, должны пересекаться или совмещаться с линиями только в редких случаях. В качестве общего правила, цифры, буквы и выносные линии должны располагаться как можно ближе к соответствующей обозначаемой части.

IP 5.153

Rule 11.13(h)

A minimum size of 0.32 cm is required for all numbers and letters used on the drawings so that their reduction in size to two-thirds remains easily legible. The Latin alphabet should normally be used for letters. The Greek alphabet is to be accepted, however, where it is customarily used, for example, to indicate angles, wavelengths, etc.

IP 5.154

Rule 11.13(l)

Reference signs are to be used in a manner which is consistent as between the description, claims and drawings. In particular, reference signs not mentioned in the description must not appear in the drawings, and vice versa. Features of a drawing should not be designated by a reference sign in cases where the feature itself has not been described. This situation may arise as a result of amendments to the description involving the deletion of pages or whole paragraphs. One solution would be to delete reference signs on the drawing which have been deleted in the description. Where for any reason a figure is deleted, all reference signs relating solely to that figure appearing in the description and claims should also be deleted.

IP 5.155

Rule 11.13(m)

The same features, when denoted by reference signs, must, throughout the international application, be denoted by the same signs. However, where several variants or embodiments of a claimed invention are described, each with reference to a particular figure, and where each variant contains features whose function is the same or basically the same, the features may, if this is indicated in the description, be identified by reference numbers made up of the number of the figure to which it relates followed by the number of the feature, which is the same for all variants, so that a single number is formed. For example, the common feature “15” would be indicated by “115” in Fig. 1, while the corresponding feature would be indicated by “215” in Fig. 2, thereby allowing the individual feature and the figure on which it is to be considered to be indicated at the same time. Complex cases involving many pages of drawings may be made easier to read if, when the individual variants or embodiments are described with reference to particular groups of figures, the common reference sign is prefixed by the number of the particular variant or embodiment to which it relates; however, this should, if used, be explained in the description.

IP 5.156. May drawings contain text matter?

Rule 11.11

The drawings must 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. Significant amounts of text matter should be avoided in the drawings as this can cause difficulties not only in understanding but also in translation. Any words used must be so placed that if translated, they may be pasted over without interfering with any lines of the drawings.

IP 5.157. May symbols be used in drawings?

Rule 10.1(d),

Rule 10.1(e)

Known devices may be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art provided no further detail is essential for understanding the subject matter of the claimed invention. Other signs and symbols may be used provided that they are not likely to be confused with existing conventional symbols, that they are readily identifiable, that is, simple, and providing that they are clearly explained in the text of the description. Different types of hatching may also have different conventional meanings as regards the nature of a material seen in cross-section.

IP 5.158. Is the use of shading permitted?

The use of shading in figures is allowed provided this assists in their understanding and is not so extensive as to impede legibility. Shading may, for instance, be used to indicate the shape of spherical, cylindrical, conical elements, etc. Flat parts may also be lightly shaded. Such shading is allowed in the case of parts shown in perspective but not for cross-sections. Only spaced lines may be used for shading, not fully blacked out areas. These lines must be thin, as few in number as possible and they must contrast with the rest of the drawings.

IP 5.159. May a photograph or color drawing be presented?

The PCT makes no provision for photographs or color drawings. Nevertheless, they may be submitted where it is impossible to present in a black and white drawing what is to be shown (for instance, crystalline structures). Where, exceptionally, photographs and/or color drawings are submitted, they must be on sheets of A4 size and respect the minimum margins (refer to paragraph IP 5.133). While the receiving Office will not necessarily require replacement sheets where photographs and/or color drawings are submitted, for international publication purposes, all images will be converted to black and white (not greyscale). As a result, details may be lost which could impact the disclosure of the invention in the international application and affect the processing of the international application in the international and the national phase. The filing software accepted by some receiving Offices allows for the specific indication that photographs and/or color drawings are filed as part of the international application. Such indications will trigger a notice on the front page of the published international application to indicate that the original drawings are available on PATENTSCOPE, which may assist national phase processing in Offices where color drawings are accepted. However, it will not overcome the need to provide true black and white drawings to other Offices when required, representing the color images without adding subject matter.

IP 5.160. May a list of reference signs used in the drawings be included in the description?

Rule 11.13(n)

In the case of international applications dealing with complex subjects and incorporating a large number of drawings, a separate sheet listing all reference signs may be included at the end of the description as a part thereof. This list may take whatever form is appropriate and contain all the reference signs together with the designation of the features which they denote. This method could have the advantage of allowing an easier reference to the meaning of the various reference signs employed and understanding of the drawings.

IP 5.161. How can obvious mistakes in the drawings be rectified?

Rule 91

The procedure for rectification of obvious mistakes is explained in paragraphs IP 11.033 to IP 11.044. The omission of an entire sheet of drawings cannot be rectified without affecting the international filing date (refer to paragraphs IP 6.025(i)(b) and IP 6.026). Changes other than the rectification of obvious mistakes are considered amendments (refer to paragraph IP 5.162).

IP 5.162. Can the drawings be amended during the international phase?

Article 28,

Annex F - Appendix IV - 2.(f) of the Administrative Instructions

Article 41(1)

The drawings can be amended during the international phase only if the applicant files a demand for international preliminary examination (refer to paragraph IP 10.001). The drawings can also be amended during the national phase.

IP 5.163

As regards the figure or, exceptionally, figures to accompany the abstract, refer to paragraph IP 5.171.

THE ABSTRACT

IP 5.164. What is the use of the abstract?

Article 3(3),

Rule 8.3

The abstract serves as a scanning tool for the purposes of searching in the particular art and especially assists the scientist, engineer or researcher in formulating an opinion on whether there is a need to consult the international application itself. It merely serves the purpose of technical information and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.

IP 5.165. What content should the abstract normally contain?

Rule 8.1(a)

The abstract should consist of a summary of the disclosure as contained in the description, the claims, and any drawings. It should indicate the technical field to which the invention pertains and should be drafted in a way which allows a clear understanding of the technical problem, the gist of the solution to that problem through the invention, and the principal use or uses of the invention. Where applicable, it should also contain the chemical formula which, among all the formulae contained in the international application, best characterizes the invention. The abstract should be primarily related to what is new in the art to which the invention pertains. WIPO Standard ST.12/A provides more detailed guidance in this respect.

IP 5.166. If the invention is in the nature of a modification to an apparatus, process, product or composition, what should the abstract contain?

If the invention is in the nature of a modification to an apparatus, process, product or composition, the abstract should be directed to the technical disclosure of the modification. If the invention is of a basic nature, the entire technical disclosure may be new in the art and the abstract should be directed to the entire disclosure. If an international application relating to a product, particularly a compound or composition, also contains significant disclosure of its method of preparation or use, this matter should also be abstracted. If the disclosure involves alternatives, the abstract should deal with the preferred alternative and identify the others if this can be done succinctly; if this cannot be done, it should mention that they exist and whether they differ substantially from the preferred alternative.

IP 5.167. What should the abstract contain?

Where applicable, and provided the international application contains the information, the abstract should include at least the following: (1) if the invention is a machine, apparatus, or system, its organization and operation; (2) if the invention is an article, its method of making; (3) if the invention is a chemical compound, its identity and preparation; (4) if the invention is a mixture, its ingredients; (5) if the invention is a process, the steps. Extensive mechanical and design details of apparatus should not be given.

IP 5.168. What should the abstract contain in case of chemical inventions for compounds or compositions?

Rule 8.1(a)(ii)

With regard particularly to chemical inventions for compounds or compositions, the general nature of the compound or composition should be given as well as the use thereof, for example, the compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics. Exemplification of a class should be by a typical example. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example. Wherever applicable, the chemical formula should be given which, among all the formulae contained in the international application, best characterizes the invention.

IP 5.169. What should the abstract not contain?

Rule 8.1(c)

The abstract must not contain statements on the alleged merits or value of the claimed invention or on its speculative application.

IP 5.169A. How long should the abstract be?

Rule 8.1(b)

The abstract must be as concise as the disclosure permits. Phrases should not be used which can be implied, such as This disclosure concerns, The invention defined by this disclosure and This invention relates to. If it is drafted in English, it should preferably be in the range of 50 to 150 words. The same applies to the translation in English if the abstract is drafted in a language other than English.

In order to provide guidance to applicants in preparing abstracts when they are drafted in languages other than English, the International Bureau has analyzed the abstracts of past international applications. That analysis shows that, on average, if the abstract drafted in one of the following languages of publication falls into the corresponding range of number of words or characters, when it is translated into English, that translation will likely be within the range of 50 to 150 words: Arabic, 35 to 110 words; Chinese, 80 to 240 characters; French, 50 to 150 words; German, 40 to 120 words; Japanese, 100 to 300 characters; Korean, 30 to 130 words; Portuguese, 50 to 150 words; Russian, 35 to 110 words; and Spanish, 50 to 150 words.

IP 5.170. When should a figure be suggested to accompany the abstract?

Rule 3.3(a)(iii),

Rule 8.2

Where the international application contains drawings, the applicant should indicate, in the check list of the request, the number of the figure in the drawings which the applicant suggests should be published with the abstract.

IP 5.171. Which figure should accompany the abstract?

The figure illustrating the abstract must be the figure which best characterizes the claimed invention and must be chosen from the drawings accompanying the international application. Only one figure should generally be indicated. The abstract may exceptionally be illustrated by more than one figure where necessary information cannot be otherwise conveyed. A figure containing significant amounts of text matter should be avoided as text can be difficult to read when reduced to the size of the front page drawing to accompany the abstract. In addition, large amounts of text in the figure to accompany the abstract can impede the understanding of the invention given that translated text in a figure is placed below or at the side of the drawing. If none of the figures is found useful for the understanding of the abstract, no figure need be indicated in the check list. The figure or figures that will accompany the abstract at the time the international application is published may not be included in the abstract.

IP 5.171A. Should the abstract contain reference signs?

Rule 8.1(d)

The abstract should be clear and easy to understand. Where the international application contains drawings, each main technical feature mentioned in the abstract and illustrated by a drawing should be followed by a reference sign, placed between parentheses. The reference numerals used in the abstract must correspond to those indicated in the relevant figures.

IP 5.172. How must the abstract be presented?

Section 207,

Rule 11

The abstract must be presented on a separate sheet which must appear after the claims and be numbered accordingly (refer to paragraph IP 5.012). It must comply with the same physical requirements as those applicable for the description (refer to paragraph IP 5.105).

IP 5.173. What happens if the abstract is missing or defective?

Article 14(1)(a)(iv),

Where the receiving Office finds that the abstract is missing, it invites the applicant to furnish it within a time limit of two months from the date of the invitation to correct. The international application can be considered withdrawn if no abstract is furnished to the receiving Office within the time limit fixed. Where the receiving Office has not invited the applicant to furnish an abstract, the International Searching Authority establishes one. The same applies where the abstract does not comply with the requirements outlined in the preceding paragraphs (also refer to paragraph IP 7.022). Where the abstract is established by the International Searching Authority, the applicant may submit comments on it within one month from the date of mailing of the international search report.

IP 5.174. Can an abstract be corrected even if the International Searching Authority has already approved it?

Rule 38.3

The applicant is entitled, until the expiration of one month from the date of mailing of the international search report, to submit to the International Searching Authority proposed modifications of the abstract. It will be up to the Authority to decide whether to modify the abstract accordingly.

OTHER FORMAL REQUIREMENTS

IP 5.175. What other formal requirements does the international application have to meet?

Article 21(6),

Rule 9

The international application may not contain matter contrary to morality or public order, disparaging statements or obviously irrelevant or unnecessary matter. When the receiving Office, the International Searching Authority, the Authority specified for supplementary search or the International Bureau note lack of compliance with the prescriptions of Rule 9, the Office or Authority may suggest that the applicant correct the international application accordingly. For the procedure to correct a defect under Rule 9, refer to paragraph IP 6.052.

IP 5.176

Rule 10

There are certain requirements as to the technical terminology and signs to be used (metric system, etc.). They are specified in Rule 10. The use of such prescribed technical terminology will be accepted by all designated Offices.

IP 5.177. Are there any physical requirements for the international application?

Article 3(4)(ii),

Article 14(1)(a)(v),

Rule 11

The international application must comply with certain physical requirements, such as requirements concerning fitness for reproduction, the paper to be used, the manner of writing (generally typewritten or printed), etc. The details are spelled out in Rule 11. They are, in general, very similar to the requirements applied by the major Patent Offices for national applications (and by the Eurasian Patent Office and the European Patent Office for Eurasian and European patent applications, respectively).

IP 5.178. Can I indicate a name or address in the request form in characters other than those of the Latin alphabet?

Rule 4.16

Where any name or address is written in characters other than those of the Latin alphabet (for example, Chinese, Cyrillic or Japanese), it must be transliterated or translated into English. For details, refer to Rule 4.16.

IP 5.179. In how many copies must an international application be filed?

Rule 11.1(a),

Rule 11.1(b),

Rule 21

An international application, and, where applicable, a translation of the international application, must be filed in one, two or three copies, depending on the requirements of the receiving Office. Annex C contains the relevant information. Also refer to Rule 21.

IP 5.180

It is to be noted that there must eventually be three copies of every international application: one is kept by the receiving Office (the home copy), one is transmitted by the receiving Office to, and is kept by, the International Bureau (the record copy), and one is transmitted by the receiving Office to, and kept by, the International Searching Authority (the search copy). If less than the required number of copies is filed by the applicant (refer to paragraph IP 5.179), the receiving Office is responsible for preparing the additional copies and may charge a fee to the applicant.

IP 5.181. In which cases must I furnish a translation of the international application?

Where the international application was filed in a language which is accepted by the receiving Office but not by the International Searching Authority which is to carry out the international search, the applicant has to furnish a translation of the international application (refer to paragraphs IP 6.013 to IP 6.020 for details). In that case, the receiving Office forwards a copy of the international application in the language of filing (the “record copy”) to the International Bureau, a copy (the “search copy” to the International Searching Authority and retains one copy (the “home copy”). When the receiving Office receives the translation of the international application, it forwards one copy to the International Bureau (the “record copy - translation (Rule 12.3)”), keeps one copy for its files (the “home copy - translation (Rule 12.3)”) and forwards the third copy, together with a copy of the request (the “search copy - translation (Rule 12.3)”) to the International Searching Authority. If the translation is filed by the applicant in fewer than the required number of copies (refer to paragraph IP 5.179), the receiving Office is responsible for preparing the additional copies and may charge a fee to the applicant.

IP 5.182

Where the international application was filed in a language which is accepted by the receiving Office and by the International Searching Authority which is to carry out the international search but which is not also in a language of publication, the applicant has to furnish a translation of the international application (refer to paragraphs IP 6.013 to IP 6.023 for details). In that case, the receiving Office forwards a copy of the international application in the language of filing (the “record copy”) to the International Bureau, a copy (the “search copy”) to the International Searching Authority and retains one copy (the “home copy”). When the receiving Office receives the translation of the international application, it forwards one copy to the International Bureau (the “record copy - translation (Rule 12.4)”) and keeps one copy for its files (the “home copy - translation (Rule 12.4)”). No copy of the translation of the international application will therefore be forwarded to the International Searching Authority by the receiving Office. If the translation is filed by the applicant in fewer than the required number of copies (refer to paragraph IP 5.179), the receiving Office is responsible for preparing the additional copy and may charge a fee to the applicant.

IP 5.183

Rule 62.1(i),

Section 420

Where the International Preliminary Examining Authority is not part of the same national Office or intergovernmental organization as the International Searching Authority, the International Bureau will, promptly upon receipt of the international search report or, if the demand was received after the international search report, promptly upon receipt of the demand, send a copy of the international application and the international search report together with a copy of the written opinion of the International Searching Authority to the International Preliminary Examining Authority. Where neither the language in which the international application was 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 must furnish with the demand a translation of the international application into a language which is both a language accepted by that Authority and a language of publication. No such translation is required where the International Searching Authority and the International Preliminary Examining Authority are part of the same national Office or intergovernmental organization. In cases where, instead of the international search report, a declaration under Article 17(2)(a) was issued, references in the preceding sentences to the international search report shall be considered references to the said declaration.

FEES

IP 5.184. What fees are due in respect of an international application?

Article 3(4)(iv)

There are three kinds of fee which must be paid in connection with every international application.

Rule 14

(i) The transmittal fee is fixed by, and accrues to, the receiving Office for the performance of its tasks in connection with the receipt and checking of the international application, and for the transmittal of copies of it to the International Bureau and the International Searching Authority.

Rule 16.1

(ii) The “search fee” is fixed by, and accrues to the benefit of, the International Searching Authority for the carrying out of the international search and the establishment of the international search report and the written opinion of the International Searching Authority.

Rule 15.1,

Rule 96

(iii) The “international filing fee” is fixed in the Schedule of Fees annexed to the PCT Regulations and accrues to the International Bureau for the performance of various tasks, including the publication of the international application and, where applicable, the issuance on behalf of the International Searching Authority of the international preliminary report on patentability (Chapter I of the PCT) and the communication of various notifications to the applicant, the receiving Office, the International Searching Authority, the International Preliminary Examining Authority, and the designated and elected Offices.

IP 5.185. To whom are the fees payable?

Rule 14.1(a),

Rule 15.1,

Rule 16.1(b)

All three kinds of fee referred to in paragraph IP 5.184 are payable to the receiving Office with which the international application is filed. The receiving Office then transfers the international filing fee to the International Bureau and the search fee to the International Searching Authority or, in accordance with Annex G of the Administrative Instructions, to the International Bureau for further transfer to the beneficiary Office.

IP 5.186. What is the currency in which the fees are payable?

Rule 14.1(b),

Rule 15.2,

Rule 16.1(b)

Generally, the fees referred to in paragraph IP 5.184 are payable in the currency of the country in which the receiving Office is located. Complete information on this question is contained in Annex C and, for the search fee, in Annex D.

IP 5.187. What are the amounts of the fees?

Rule 14.1(b),

Rule 15.2,

Rule 16.1(a)

Annex C and, for the search fee, Annex D indicate the amounts of the fees referred to in paragraph IP 5.184. Where the applicant has the choice between two or more International Searching Authorities (refer to paragraph IP 7.002), the amount of the search fee depends on which International Searching Authority is chosen and indicated in Box No. VII of the request form (refer to paragraphs IP 5.072 and IP 5.093) and in the fee calculation sheet (refer to paragraph IP 5.093).

IP 5.188. What fee reductions are available?

An applicant who is a natural person and who is a national of and resides in a State that is listed as being a State whose per capita gross domestic product is below 25, 000 US dollars (according to the most recent 10-year average per capita gross domestic product figures at constant 2005 US dollars values published by the United Nations), and whose nationals and residents who are natural persons have filed less than 10 international applications per year (per million population) or less than 50 international applications per year (in absolute numbers) according to the most recent five-year average yearly filing figures published by the International Bureau is entitled, in accordance with the Schedule of Fees, item 5, to a reduction of 90% of the international filing fee. In addition, an applicant who qualifies for the 90% reduction in the international filing fee will not have to pay the transmittal fee in respect of an international application filed with the International Bureau as receiving Office. The same applies (i.e. the 90% reduction in the international filing fee and no transmittal fee to be paid if filing is made with the International Bureau as receiving Office) for an applicant, whether a natural person or not, who is a national of and resides in a State that is listed as being classified by the United Nations as a least developed country. (For a list of States whose nationals and residents are eligible for the fee reduction, refer to https://www.wipo.int/documents/d/pct-system/docs-en-fee-reduction-january.pdf ). However, it should be noted that the applicant is only entitled to the reduction if, at the time of filing the international application, the applicant is or all applicants are the true and only owner(s) of the application and under no obligation to assign, grant, convey or license the rights in the invention to another party which is not eligible for the fee reduction. If there are several applicants, each must satisfy one or the other of the above-mentioned criteria. If the applicant is or all applicants are entitled to the reduction, this reduction applies on the basis of the indications of name, nationality and residence given in Boxes Nos. II and III of the request, without a need for a specific request to be made. The fee reduction will be available even if one or more of the applicants are not from PCT Contracting States, provided that each of them satisfies the above-mentioned criteria and that at least one of them is a national or resident of a PCT Contracting State and thus is entitled to file an international application. Information about PCT Contracting States whose nationals and residents are entitled to a reduction of 90% of the international filing fee, is contained in Annex C and, in particular Annex C(IB). As far as other States are concerned, inquiries should be addressed to the International Bureau. It is to be noted that, if both the reduction for electronic filing of an international application and the 90% reduction of the international filing fee are applicable, the 90% reduction is calculated after the reduction for electronic filing of an international application.

IP 5.189. Is there any fee reduction for applications filed in electronic form?

An applicant who files an international application is entitled to a reduction in the international filing fee provided that the international application is filed in electronic form with a receiving Office which is prepared to accept the filing of international applications in electronic form and in compliance with Part 7 and Annex F of the Administrative Instructions or the basic common standard.

The reduction is 100 Swiss francs or the equivalent where the request and the text of the description, claims and abstract are not in character coded format, 200 Swiss francs or the equivalent where the request is in character coded format and the text of the description, claims and abstract is not in character coded format and is 300 Swiss francs or the equivalent where the request and the text of the description, claims and abstract are in character coded format.

IP 5.190

The international search fee as well as the preliminary examination fee payable to the Austrian Patent Office, the European Patent Office (EPO) and the Spanish Patent and Trademark Office, are reduced by 75% under certain conditions (refer to Annexes D and E).

IP 5.191. When are the fees due?

Rule 14,

Rule 15.3,

Rule 16.1(f)

All fees referred to in paragraph IP 5.184 may be paid at the same time, and, if they are paid upon filing of the international application with the receiving Office, no problems can arise. However, all fees can be paid as much as one month from the date of receipt of the international application by the receiving Office. The dates on which payments are deemed to have been received are determined by the receiving Office. The latter applies the same rules as are applied in the case of payments for national applications.

IP 5.192. What happens if the amounts of the fees are changed?

Rule 15.3,

Rule 16.1(f)

Where the amount of the international filing fee or of the search fee, in the currency in which the fee is payable, changes, the new amount must be paid as from the date of its entry into force. However, where the amount of any such fee changes between the date on which the international application was received and the date of payment, the amount payable is the amount applicable on the date of receipt of the international application. This system allows the applicant to pay all the fees for the international application, within the one-month period, on the basis of the amounts applicable on the date on which the application was filed with the receiving Office.

IP 5.193. What happens if the fees are not paid or not paid in full?

Rule 16bis.1,

Rule 16bis.2

Where, within the time they are due, the applicant has not paid any or all of the fees, the receiving Office invites the applicant to pay the missing amount, together with a late payment fee, within a time limit of one month from the date of the invitation. If the applicant pays the amount (including the late payment fee) specified in the invitation, the deficiency in payment has no consequences for the international application. The amount of the late payment fee is 50% of the missing amount or, if that 50% is less than the transmittal fee, an amount equal to the transmittal fee; but the amount of the late payment fee may not exceed the amount of 50% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets (refer to Annex C).

IP 5.194

Where, within the time by which they are due, the applicant has not paid any or all of the fees, any payment relating to the missing amount must be considered to have been received within the time by which those fees are due, if the payment is received by the receiving Office before that Office sends the invitation, referred to in the preceding paragraph, to pay the missing amount.

IP 5.195

If the transmittal fee, the international filing fee and the search fee are not paid in the prescribed currency and within the prescribed time limits, including the time limit set in the invitation from the receiving Office to pay the missing amount together with the late payment fee (refer to paragraph IP 5.193), the international application is considered withdrawn, and the receiving Office promptly informs the applicant accordingly. However, any payment must be considered to have been received before the expiration of the applicable time limit if it is received by the receiving Office before that Office makes the applicable declaration, under Article 14(3), that the international application is considered withdrawn.

IP 5.196

If the amounts paid do not cover the transmittal fee (if applicable), the international filing fee and the search fee (if applicable), the moneys paid will be allocated as specified by the applicant or, in the absence of such specification, as prescribed by the Administrative Instructions by the receiving Office, which promptly notifies the applicant accordingly.

IP 5.197. In which case can I ask for a refund of the transmittal fee?

Rule 15.4,

Rule 16.2

There is no rule under the PCT concerning the possibility of asking for a refund of the transmittal fee. The search fee and the international filing fee are refunded where, due to prescriptions concerning national security, the international application is not treated as such, or where the receiving Office refuses to accord an international filing date to the international application under Article 11(1). Such refusal occurs, generally speaking, where the international application is defective in certain respects (refer to paragraph IP 6.005). The receiving Office will also refund the international filing fee or the search fee to the applicant if the international application is withdrawn or considered withdrawn before the transmittal of the record copy to the International Bureau or the transmittal of the search copy to the International Searching Authority, as the case may be.

IP 5.198. In which case can I ask for the refund of the international search fee?

Rule 16.3,

Rule 41.1

Most International Searching Authorities will refund part or all of the search fee if the international application is withdrawn or considered withdrawn after transmittal of the search copy but before the start of the international search (refer to Annex D). Where the International Searching Authority must, under Rule 41.1(i), or may, under Rule 41.1(ii), take into account the results of the earlier search when carrying out the international search (also refer to paragraph IP 5.073), in accordance with Rule 16.3, the International Searching Authority must refund the search fee to the extent and under the conditions provided for in the agreement under Article 16(3)(b). International Searching Authorities are free to decide the extent and conditions for such search fee reductions.

IP 5.199

For refunds or reductions of fees in the national phase, refer to National Phase, paragraph NP 4.007 and National Chapters (Summaries).

CHAPTER 6: PROCESSING OF THE INTERNATIONAL APPLICATION BY THE RECEIVING OFFICE

GENERAL

IP 6.001. What are the main procedural steps at the receiving Office?

The main procedural steps that any international application goes through at the receiving Office are the following:

Article 10

(i) the international application and the related fees are received by the receiving Office;

Article 11(1),

Article 14(1)(a)

(ii) the international application is checked by the receiving Office to determine whether it meets the requirements prescribed by the PCT as to the language, form and contents of international applications (the checks performed by the receiving Office are of a formal nature and do not go into the substance of the invention);

(iii) where the checks made by the receiving Office show that the international application does not meet certain requirements as to fees, language, form and contents, that Office invites the applicant to furnish the necessary corrections;

Article 11(1),

Article 11(2)(b),

Rule 20.2

(iv) where - possibly after correction (refer to paragraphs IP 6.024 to IP 6.053) - the checks made by the receiving Office show that the international application meets the requirements prescribed for that purpose by the PCT, an international filing date is accorded to the international application by the receiving Office;

Article 12,

Rule 22,

Rule 23

(v) copies of the international application, its translation, where applicable, and other related documents are transmitted by the receiving Office to the International Searching Authority and to the International Bureau so that they may carry out the procedural steps for which they are responsible in the further processing of the international application.

IP 6.002. [Deleted]

IP 6.003. How must the international application be filed at the receiving Office?

Each receiving Office specifies the means of submission it accepts for the filing of international applications. Most receiving Offices accept and encourage the electronic filing of international applications. For the relevant information for each receiving Office refer to Annexes B and C.

An Office or organization which has notified the International Bureau that it only accepts international applications to be filed in electronic form or by electronic means, may treat any document submitted to it on paper as not having been received. Nevertheless, the receiving Office may decide in a particular case to accept any documents submitted on paper but is not obliged to do so.

Where a receiving Office accepts international applications to be filed on paper the international application may be deposited with or mailed to the receiving Office.

Receiving Offices may allow international applications to be filed on paper to obtain an international filing date and require that the application be resubmitted electronically within two months from the date of a corresponding invitation by the receiving Office. If corresponding documents are not timely resubmitted, the receiving Office will declare the application to be considered withdrawn.

An international application may also be filed by other means of rapid communication, notably by facsimile machine, provided that the receiving Office places such facilities at the disposal of applicants and that the original is furnished within 14 days, if so required by the receiving Office (refer to Annexes B). The requirements in relation to filing the international application and any subsequent documents by facsimile machine are explained in more detail in paragraphs IP 11.067 to IP 11.070.

IP 6.004. Is the international application treated as confidential by the receiving Office?

Article 30

Yes, it is. Third parties are not permitted to have access to the international application, unless requested or authorized by the applicant, before the date of international publication. Designated Offices are, however, permitted to publish the fact that they have been designated, together with a limited amount of bibliographic data. For further details as to confidentiality, refer to Article 30 and paragraphs IP 11.072 to IP 11.074.

INTERNATIONAL FILING DATE

IP 6.005. What are the conditions that must be fulfilled for the international application to be entitled to an international filing date?

Article 11(1),

Rule 20.1,

Rule 20.2

The receiving Office must accord an international filing date to the international application if it finds that the following conditions are fulfilled:

(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office (refer to paragraphs IP 5.008, IP 5.020 and IP 5.023);

(ii) the international application is in the prescribed language (refer to paragraph IP 6.006);

(iii) the international application contains at least the following elements:

(a) an indication that it is intended as an international application,

(b) a request which constitutes the designation of a Contracting State bound by the PCT on the international filing date (under Rule 4.9(a) - refer to paragraph IP 5.052),

(c) the name of the applicant (for this purpose it is sufficient if the name of the applicant is indicated in a way which allows his/her identity to be established, even if the name is misspelled, or the given names are not fully indicated, or, in the case of legal entities, the indication of the name is abbreviated or incomplete),

(d) a part which on the face of it appears to be a description,

(e) a part which on the face of it appears to be a claim or claims.

IP 6.006. Not all parts of my international application are in the same language. Will the receiving Office accord an international filing date to my international application?

For the purposes of according an international filing date, the requirement that the international application be in a prescribed language is met, in most receiving Offices, if the description and claims (but not necessarily the other elements of the international application) are in a language accepted by the receiving Office under Rule 12.1(a) and (c) (refer to Rule 20.1(c) and paragraph IP 5.013). If any of the other elements of the international application are not in a language accepted by the receiving Office, they may be corrected later without affecting the international filing date (refer to paragraphs IP 6.032 and IP 6.034). A translation will need to be furnished by the applicant in respect of any international application which is filed in a language which is not a language accepted by the International Searching Authority which is to carry out the international search and/or a language of publication; refer to paragraphs IP 6.013 to IP 6.020). In certain Offices, however, Rule 20.1(c) is incompatible with the applicable national law. For as long as that incompatibility continues, that Rule will not apply for those Offices; all elements of an international application filed with those Offices as receiving Office must therefore comply with the language requirements of Rule 12.1 before an international filing date can be accorded (refer to Annex C for details).

IP 6.007. [Deleted]

IP 6.008. What date is accorded as the international filing date?

The reply to this question depends on whether the requirements for according an international filing date (refer to paragraph IP 6.005) were fulfilled on the date on which the international application was received by the receiving Office, or, pursuant to Rule 20.6, considered to have been received (refer to paragraph IP 6.026 to IP 6.031), or - following correction of defects in relation to those requirements - on a later date. The international filing date will, in the former case, be the date on which the international application was received by the receiving Office and, in the latter case, the date on which the correction was received by the receiving Office. Naturally, any correction has to comply with some conditions; in particular it has to be filed within a certain time limit. More is said about this in paragraph IP 6.025. Where all the sheets pertaining to the same international application are not received on the same day by the receiving Office, refer to paragraph IP 6.026.

IP 6.009. Does non-payment, incomplete payment or late payment of fees influence the international filing date?

No, it does not, however, those defects will eventually lead the receiving Office to declare that the international application is considered withdrawn (refer to paragraphs IP 5.195 and IP 5.196). Although an international application which has not been accorded an international filing date and an international application which is considered withdrawn are both excluded from further processing in the international phase, an international application which fulfills the requirements necessary for it to be accorded an international filing date may be invoked as a priority application under the Paris Convention for the Protection of Industrial Property (if the conditions laid down by that Convention are fulfilled) even where the international application is considered withdrawn under the PCT (for non-payment of fees or other reasons).

IP 6.010. Can the receiving Office refuse to treat an international application as such for reasons of national security?

Article 27(8),

Rule 22.1,

Section 330

Each Contracting State is free to apply measures deemed necessary for the preservation of its national security. For example, each receiving Office has the right not to treat an international application as such and not to transmit the record copy to the International Bureau and the search copy to the International Searching Authority. Compliance with national security prescriptions where the international application is filed with the International Bureau as receiving Office will not be checked by the International Bureau; such compliance is the applicant’s responsibility. Where an international filing date has been accorded but national security considerations prevent transmittal of the record copy, the receiving Office must so declare to the International Bureau before the expiration of 13, or at the latest 17, months from the priority date.

IP 6.011. How does the applicant know whether his/her application has been accorded an international filing date or that the application is not treated as an international application or is considered to have been withdrawn?

Where the receiving Office accords an international filing date to the international application, it promptly notifies the applicant of that date and of the international application number; where it decides that the international application is not to be treated as an international application (because of a negative determination for lack of compliance with Article 11, or because national security considerations prevent it from being treated as such) or is to be considered withdrawn, it promptly notifies the applicant accordingly.

IP 6.012. Can an international filing date once accorded be “taken away”?

If, after having accorded an international filing date, the receiving Office finds that it should not have accorded it, the international application is considered withdrawn and the receiving Office so declares and promptly notifies the applicant. If the International Bureau or the International Searching Authority finds that an international filing date should not have been accorded, it calls the relevant facts to the attention of the receiving Office. However, such a finding may validly occur only during the four months following the international filing date and must be preceded by a notification to the applicant of the intention to make the declaration which should, where applicable, also include an invitation to confirm the incorporation of missing elements in accordance with Rule 20.6(a). The applicant has the right to submit arguments within two months from the notification or, where applicable, confirm the incorporation by reference of missing elements. For the rectification of errors made by the receiving Office in according the international filing date, refer to Rule 82ter.1 and the National Phase, paragraph NP 6.028.

TRANSLATION OF INTERNATIONAL APPLICATIONS

IP 6.013. When is a translation of the international application required?

Rule 12.1

Every receiving Office must accept, for the purpose of filing international applications, at least one language which is both a language of publication and 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. In addition, any receiving Office may accept one or more other languages for the purpose of filing international applications. A translation of the international application is required when the language in which the international application is filed is a language which is not a language of publication and/or a language accepted by the International Searching Authority which is to carry out the international search.

IP 6.014. What are the translation requirements if the international application is filed in a language which is not accepted by the International Searching Authority?

Rule 12.3

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 must furnish, to the receiving Office, a translation of the international application into a language which is both a language accepted by that Authority and a language of publication. Moreover, unless the international application was filed in a language of publication (refer to paragraph IP 9.017), the language into which the international application is translated must also be a language in which international applications may be filed with the receiving Office concerned. For any sequence listing part of the description, a translation of the language-dependent free text in the sequence listing may be required if not already provided in a language accepted by the International Searching Authority as filed. The translation must be provided in a new sequence listing containing the language-dependent free text in the accepted language. The applicant may either replace the language-dependent free text with the translation or if permitted by the receiving Office, add the translation such that the new sequence listing contains the language-dependent free text in two languages (one must be English). (Concerning translation of the request, refer to paragraph IP 6.019).

IP 6.015. What is the time limit for furnishing a translation of my international application where the application is filed in a language which is not accepted by the International Searching Authority?

The translation of the international application must be furnished to the receiving Office within one month from the date on which the international application was received by that Office. Where, by the time the receiving Office notifies the applicant of the international application number and international filing date, the applicant has not furnished the required translation, the receiving Office will, preferably together with that notification, invite the applicant to furnish the required translation either within the time limit of one month from the date on which the international application was received by the receiving Office, or, in the event that the required translation is not furnished within that time limit, to furnish it and to pay, where applicable, the late furnishing fee (refer to paragraph IP 6.017), 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.

IP 6.016. Will my application be withdrawn in case that I do not furnish a translation or pay the late furnishing fee?

Where the receiving Office has sent to the applicant an invitation to furnish the translation and, where applicable, pay the late furnishing fee, and the applicant has not done so within the applicable time limit, the international application will be considered withdrawn and the receiving Office will so declare. However, any translation and any payment which are received by the receiving Office before that Office makes the declaration that the international application is considered withdrawn, and before the expiration of 15 months from the priority date, will be considered to have been received before the expiration of the applicable time limit.

IP 6.017. What is the amount of the late furnishing fee for translations?

Rule 12.3(e)

The late furnishing fee which any receiving Office may collect for translations which are furnished after the expiration of the time limit of one month from the date on which the international application is received by the receiving Office, is equal to 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.

IP 6.018. What are the translation requirements if the abstract or text matter in the drawings of the international application are in a language which is different from the language of the description and claims?

Rule 26.3ter(a)

If the abstract or text matter in the drawings of the international application is in a language which is different from the language of the description and claims, then the receiving Office will 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. However, no such invitation will be issued if the abstract or text matter in the drawings is in the language in which the international application is to be published, or if a translation of the international application is required because the language in which the international application was filed is not accepted by the International Searching Authority which is to perform the international search and that translation will also be in the language in which the application is to be published.

IP 6.018A. What is the procedure if the description and claims are not in a single language?

Generally, the PCT requires that the description and claims of an international application are filed in a language accepted by the receiving Office. Compliance with the prescribed language is a requirement for obtaining an international filing date (refer to Article 11(1)(ii), Rule 20.1(c) and paragraphs IP 6.005 to IP 6.006). If the description or claims is in a language that is not accepted by the receiving Office, that Office must forward the application under the safeguard procedure of Rule 19.4 to the receiving Office of the International Bureau, which accepts any language (refer to paragraph IP 6.034).

If the description and claims, or part thereof, are not filed in a single language but all the languages used are accepted by the receiving Office, the receiving Office will invite the applicant to furnish a translation to provide the description and claims in a single language within one month from the date of receipt of the international application. That language must be:

(i) one of the languages contained in the description or claims as filed;

(ii) a language accepted by the International Searching Authority that will carry out the international search;

(iii) and the language in which the international application is to be published.

However, no such invitation will be issued if the receiving Office considers that the use of multiple languages assists in the comprehension of the disclosure and requesting a translation would not be appropriate in a particular case, for example in the case of language-neutral terms (such as computer coding language), certain technical terms including their transliteration or translation, scientific publication citations, or inventions relating to translation technology.

If all of the above-mentioned three criteria cannot be satisfied (for example, the languages used, while accepted by the receiving Office, are not languages accepted by the chosen International Searching Authority or languages of publication), the receiving Office invites the applicant to furnish a translation of the international application under Rule 12.3 or 12.4.

In all instances, if the required translation is not furnished within the one-month time limit, the Office may require the applicant to pay any applicable late furnishing fee 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 (refer to paragraphs IP 6.015 to IP 6.017).

IP 6.019. What are the translation requirements if the request is in a language which is not a language of publication accepted by the receiving Office for the purpose of filing the request?

Rule 12.1(c),

Rule 26.3ter(c)

Whatever the language in which the description and claims are filed, the request must always be filed in a language of publication accepted by the receiving Office for the purposes of filing the request. If the request is in a language which does not fulfill this requirement, the receiving Office invites the applicant to file a translation that complies with it.

IP 6.020. What are the translation requirements if the international application is filed in a language which is accepted by the International Searching Authority, but is not a language of publication?

Rule 12.4,

Rule 48.3

If the international application is filed in a language which is not a language of publication but is a language accepted by the International Searching Authority which is to carry out the international search, the applicant must furnish to the receiving Office a translation of the international application into a language of publication which the receiving Office accepts for that purpose. For any sequence listing part of the description, a translation of the language-dependent free text in the sequence listing may be required if not already provided in a language of publication as filed and no translation was required under Rule 12.3(a) for the purposes of the international search. The translation must be provided in a new sequence listing containing the language-dependent free text in a language of publication. The applicant may either replace the language-dependent free text with the translation or if permitted by the receiving Office, add the translation such that the new sequence listing contains the language-dependent free text in two languages (one must be English). (Concerning the translation of the request, refer to paragraph IP 6.019).

IP 6.021. What is the time limit for furnishing a translation of my international application where the application is filed in a language which is accepted by the International Searching Authority, but is not a language of publication?

The translation of the international application must be furnished to the receiving Office within 14 months from the priority date. Where the applicant has not furnished the required translation within the applicable time limit, the receiving Office will invite the applicant to furnish the required translation, and to pay, where applicable, the late furnishing fee (refer to paragraph IP 6.023), within 16 months from the priority date.

IP 6.022. Will my application be withdrawn in case that I do not furnish a translation or pay the late furnishing fee?

Where the receiving Office has sent to the applicant an invitation to furnish the translation and, where applicable, pay the late furnishing fee, and the applicant has not done so within the applicable time limit, the international application will be considered withdrawn and the receiving Office will so declare. However, any translation and any payment which are received by the receiving Office before that Office makes the declaration that the international application is considered withdrawn, and before the expiration of 17 months from the priority date, will be considered to have been received before the expiration of the applicable time limit.

IP 6.023. What is the amount of the late furnishing fee for translations?

The late furnishing fee which any receiving Office may collect for translations which are furnished after the expiration of the time limit of 14 months from the priority date, is equal to 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.

CORRECTION OF DEFECTS AND INCORPORATION BY REFERENCE OF MISSING ELEMENTS OR PARTS, OR CORRECT ELEMENTS OR PARTS IN CASE THEY HAVE BEEN ERRONEOUSLY FILED

IP 6.024. What defects in the international application may be corrected and within what time limits?

The following paragraphs attempt to give general answers to those questions in the characteristic cases of possible defects.

IP 6.025. What defects influence the international filing date?

(i) Where the receiving Office finds that the international application does not comply with the requirements for according an international filing date - in other words:

Article 11(1)(i)

(a) that the applicant obviously lacks, for reasons of residence and nationality, the right to file an international application with the receiving Office (but also refer to paragraphs IP 6.035 and IP 6.036);

Article 11(1)(iii)(a)

(b) that the international application does not contain an indication that it is intended as an international application;

Article 11(1)(iii)(b)

(c) that the international application does not contain a request which constitutes the designation of all Contracting States bound by the PCT on the international filing date (underRule 4.9(a) - refer to paragraph IP 5.052);

Article 11(1)(iii)(c)

(d) that the international application does not contain the name of the applicant or does not contain at least the minimum indications concerning the name of the applicant which are indicated in paragraph IP 6.005(iii)(c);

Article 11(1)(iii)(d),

Article 11(1)(iii)(e)

(e) that the international application does not contain a part which, on the face of it, appears to be a description and a part which, on the face of it, appears to be a claim or claims;

the receiving Office invites the applicant to correct the defect. The time limit for filing the correction is two months from the date of the invitation to correct. If the correction is made within the time limit, the date of receipt of the correction becomes the international filing date; otherwise, the application is not treated as an international application (but also refer to paragraphs IP 6.035 and IP 6.036 in relation to the applicant’s residence and nationality, and paragraphs IP 6.013 to IP 6.020 for applications filed in a language which is accepted by the receiving Office but which is not both a language accepted by the International Searching Authority which is to carry out international searching, and a language of publication). Where the defect concerns item (i)(e) above, the receiving Office will invite the applicant to confirm in accordance with Rule 20.6 that the missing element concerned was incorporated by reference under Rule 4.18 (refer to paragraphs IP 6.027 to IP 6.031), in which case it may be possible to retain the earlier date as the international filing date. Where the required elements of the international application are not in a language accepted by the receiving Office, that Office will transmit the international application to the International Bureau as receiving Office under Rule 19.4 (noting that the International Bureau as receiving Office is prepared to accept international applications filed in any language; refer to paragraph IP 6.034 and Annex C).

(ii) Where the receiving Office finds that parts of the description, claims, all drawings or parts thereof are, or appear to be, missing or that the description, claims, parts of the description or claims, all drawings or parts thereof are or appear to be erroneously filed, it notifies the applicant accordingly and invites the applicant to correct the defect or else, where appropriate, to confirm in accordance with Rule 20.6 that the missing part or correct element or part was incorporated by reference under Rule 4.18 (refer to paragraph IP 6.027 to IP 6.031 for details). The time limit for furnishing such missing parts or correct elements or parts is two months from the date of the invitation. If no invitation is issued and the applicant notices and wishes to correct a defect, this is also permitted within a time limit of two months from the date on which papers were first received by the receiving Office. If the missing parts or correct elements or parts are furnished within that time limit, the date of their receipt becomes the international filing date, unless the applicant is able to confirm in accordance with Rule 20.6 that the missing part or correct element or part concerned was incorporated by reference under Rule 4.18 (refer to paragraphs IP 6.027 to IP 6.031), in which case it may be possible to retain the earlier date as the international filing date. Where missing drawings referred to in the international application are not furnished within the time limit, any references to drawings in the international application are considered non-existent and the international filing date remains as originally accorded. However, where the international filing date is corrected to a later date, any priority claim will be considered void, for the purposes of the procedure under the PCT, if the accorded international filing date falls outside the two month period after the expiration of the priority period of the priority claim concerned (refer to paragraphs IP 5.060 and IP 6.038).

Rule 20.5(e),

Rule 20.5bis(e)

(iii) Where the international filing date has been corrected, the applicant may, in a notice submitted to the receiving Office within one month from the date of mailing of the notification of later submitted elements or parts (Form PCT/RO/126), request that the missing part or the correct element or part be disregarded in order to preserve the date on which papers were first received as the international filing date and, where applicable, to retain the priority claim (Rule 20.5(e) or 20.5bis(e)). The applicant will be notified of the decision made by the receiving Office on whether the international filing date has been restored (Form PCT/RO/129).

IP 6.026. What happens if all sheets of the international application are not received on the same day?

The receipt of further sheets after an invitation to correct has been sent under Article 11(2)(a) or 14(2) (refer to paragraph IP 6.025) generally results in the date of receipt of those further sheets being accorded as the international filing date, provided that they are received within the applicable time limit under Rule 20.7, and unless the applicant is able to include these later submitted sheets by way of incorporation by reference (refer to paragraphs IP 6.027 to IP 6.031). If no invitation to correct has been sent but all the sheets relating to the same purported international application (apart from the abstract) are not received on the same day by the receiving Office, and the applicant has not confirmed the incorporation by reference of those later submitted sheets, the Office corrects the request by marking on it the date on which the papers completing the international application were received, and that later date is accorded as the international filing date, provided that the later sheets were received within two months from the date on which sheets were first received. Each sheet is marked with the date on which it was actually received. In case those later submitted sheets are to correct erroneously filed sheets, and the applicant has not confirmed the incorporation by reference of those later submitted sheets, the erroneously filed sheets concerned are removed from the application. The absence or late receipt of the abstract does not, of itself, result in correction of the date marked on the request or in the according of a later international filing date.

IP 6.027. Can missing or correct pages be added to an international application without affecting the international filing date?

This is possible under certain circumstances, but the resulting international filing date will not be recognized in some Contracting States (refer to paragraph IP 6.031). Under Rule 4.18, where an element of the international application referred to in Article 11(1)(iii)(d) or (e) or a part of the description, claims or drawings referred to in Rule 20.5(a), or an element or part of the description, claims or drawings referred to in Rule 20.5bis(a) is not otherwise contained in the international application but is completely contained in the earlier application of which priority is claimed on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, it is possible to incorporate by reference these missing or correct elements or parts into the international application. Such incorporation by reference will have the effect that the elements or parts which have been incorporated by reference will be considered to have been received on the date on which one or more elements referred to in Article 11(1)(iii) were first received. As a result, the international filing date would remain the date when one or more elements referred to in Article 11(1)(iii) were first received (provided that all other Article 11 requirements for the according of a filing date are met). These procedures do not apply to missing pages if the receiving Office has notified the International Bureau under Rule 20.8(a) that any of Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 are not compatible with its national law. Moreover, these procedures do not apply to correct pages if the receiving Office has notified the International Bureau under Rule 20.8(a-bis) that any of Rules 20.5bis(a)(ii) and (d) are not compatible with its national law. Such a receiving Office will therefore neither invite nor accept a confirmation of the incorporation by reference. Instead, the receiving Office would apply the above described correction procedure (paragraph IP 6.025). A list of Offices which have notified the International Bureau under Rule 20.8(a) and/or 20.8(a-bis) and which will therefore not accept the incorporation by reference of missing elements or parts can be found on WIPO’s website at https://www.wipo.int/en/web/pct-system/texts/reservations/res_incomp. If the need to incorporate certain missing or correct elements or parts becomes apparent after the international application has been filed, the applicant may request the receiving Office to transmit the international application to the receiving Office of the International Bureau under Rule 19.4(a)(iii), which does accept the incorporation by reference of missing or correct elements or parts.

IP 6.028. How should missing or correct elements or parts be incorporated by reference into the international application?

Rule 4.18,

Rule 20.6

A statement of incorporation by reference referred to in Rule 4.18 must have been included in the international application on the date when one or more elements referred to in Article 11(1)(iii) are first received by the receiving Office. Such a statement is automatically included if Form PCT/RO/101 is used in paper or electronically. If such a statement was not contained in the request at the time of filing, it can only be added to the request if it was otherwise contained in, or submitted with, the international application on the date of filing. Furthermore, one or several priority claims to earlier applications which completely contain the missing or correct element or part must have been made in the international application at the time of filing. Adding such priority claims under Rule 26bis.1(a) would not be sufficient. If these requirements have been met, the applicant should confirm the incorporation by reference by way of a written notice to the receiving Office within the time limit indicated below. Such notice should be accompanied by:

— a sheet or sheets embodying the entire element or part as contained in the earlier application;

— where the applicant has not already complied with the requirements of Rule 17.1(a), (b) or b-bis, a copy of the earlier application as filed;

— where Rule 20.6(a)(iii) applies, a translation or translations of the earlier application; and

— in the case of a missing or correct part, an indication as to where the part is contained in the earlier application and, where applicable, in any translation of the earlier application.

IP 6.029. What is the time limit for confirming the incorporation by reference of missing or correct elements or parts?

Rule 20.7

Where no invitation by the receiving Office has been sent to submit missing or correct elements or parts (Form PCT/RO/103 or PCT/RO/107), the time limit to confirm is two months from the date on which papers were first received by the receiving Office. Where such an invitation has been issued, the time limit to confirm is two months from the date of mailing of this invitation. If this time limit expires after the expiration of 12 months from the filing date of the earliest application, the priority of which is claimed, the receiving Office will draw this circumstance to the attention of the applicant (as a warning that, if the missing or correct elements or parts are not confirmed to have been incorporated by reference and the international filing date is thus corrected to a date after the expiration of the priority period, the correction of the international filing date may result in the loss of the right of priority; the same applies, even if the missing or correct elements or parts are confirmed to have been incorporated by reference, with regard to those States which do not apply the provisions concerning incorporation by reference (refer to paragraph IP 6.031)). For missing elements, where the applicant has neither submitted a correction under Article 11(2) nor a notice under Rule 20.6(a) confirming the incorporation by reference of missing elements referred to in Article 11(1)(iii)(d) or (e) prior to the expiration of this two-month time limit, any such correction or notice received by the receiving Office after the expiration of that time limit, but before it has sent a notification under Rule 20.4(i) (Form PCT/RO/104) to the applicant, is considered to have been received within the time limit (Rule 20.7(b)).

IP 6.029A. What happens to the erroneously filed element or part if the incorporation by reference of the correct element or part is confirmed?

Rule 20.5bis(d),

Section 309(b)(iv)

Where a correct element or part is considered to have been contained in the purported international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office under Rule 20.6(b), the erroneously filed element or part concerned will remain in the application. The receiving Office will mark those erroneously filed sheets as “ERRONEOUSLY FILED (RULE 20.5bis)” and move those sheets to the end of the corresponding element of the purported international application. The receiving Office will transmit the erroneously filed sheets to the International Bureau and they will be published as part of the international application.

IP 6.030. What are the consequences if the requirements for the incorporation by reference are not complied with?

If not all of the requirements for the incorporation by reference are fulfilled (for example, if a missing or correct element or part is not entirely contained in the earlier application), the international application will be assigned a later international filing date (the date of receipt of the missing or correct element or part, to the extent that all other requirements of Article 11(1) are complied with on that date) (refer to paragraphs IP 6.025 and IP 6.026). The applicant may, however, request that the missing part or correct element or part be disregarded, in accordance with Rule 20.5(e) or 20.5bis(e) (refer to paragraph IP 6.025(iii)). In this case, the international filing date will be reinstated and the missing part or correct element or part will be considered not to have been submitted.

IP 6.031. What are the effects of the successful incorporation of missing or correct elements or parts on designated or elected Offices?

Rule 20.8(c),

Rule 82ter.1

In most Contracting States, the elements or parts will be treated as if they had actually been contained in the international application as originally filed. Designated and elected Offices may, to a limited extent, review decisions by receiving Offices which have allowed incorporation by reference (Rule 82ter.1(b)). If the designated or elected Office finds that: the applicant did not comply with the obligation to furnish a priority document; the statement of incorporation was missing or not submitted with the request; no written notice confirming incorporation by reference was submitted; no required translation was furnished; or the element or part in question was not completely contained in the priority document; then the designated or elected Office may treat the international application as if the international filing date had been accorded on the basis of the date on which the sheets containing the missing or correct elements or parts were submitted, but only after giving the applicant the opportunity to make observations on this outcome and/or to request that, at least, the missing parts or the correct elements or parts which had been furnished be disregarded, in accordance with Rule 82ter.1(d).

However, those designated Offices which have submitted notifications of incompatibility under Rule 20.8(b) and/or (b-bis), may treat the international application as if the international filing date had been accorded on the basis of the date on which the sheets containing the missing or correct elements or parts, as the case may be, were submitted, but also only after having given the applicant the opportunity to make observations on this outcome and/or to request that, at least, the missing parts or the correct elements or parts which had been furnished be disregarded, pursuant to Rule 20.8(c).

IP 6.032. What defects do not influence the international filing date?

Where the receiving Office finds that

(i) the international application is not signed (or, in the cases referred to in paragraph IP 5.091, does not bear a seal; also refer to paragraph IP 11.027 for cases where an applicant refuses to sign or cannot be found or reached);

Article 14(1)(a)(ii),

Rule 4.4,

Rule 4.5

(ii) the international application does not contain the name of the applicant presented in the prescribed way (other than those referred to in paragraph IP 6.005(iii)(c), for which case refer to paragraph IP 6.025(i)(d)), or the prescribed indications in respect of at least one of the applicants - these indications are specified in Rules 4.4 and 4.5; they include, in particular, the applicant’s address, residence and nationality;

Article 14(1)(a(iii),

Rule 4.3

(iii) the international application does not contain a title (that is, a title for the claimed invention);

Article 14(1)(a)(iv),

Rule 8

(iv) the international application does not contain an abstract;

Article 14(1)(a)(v),

Rule 11,

Rule 26.3

(v) the international application and, where applicable, the translation of the international application, does not comply, to the extent provided for in the Regulations, with the prescribed physical requirements (the physical requirements are specified in detail in Rule 11; compliance with them must be checked only to the extent that such compliance is necessary for the purpose of reasonably uniform international publication, and no international application will be considered withdrawn for lack of such compliance if it complies to the extent necessary for the purpose of reasonably uniform international publication);

Article 3(4)(i),

Rule 12.1,

Rule 26.3ter(a)

(vi) any element of the international application, other than the description and claims, is not in an admitted language (refer to paragraphs IP 5.013, IP 6.005(ii) and IP 6.006);

the receiving Office invites the applicant to correct the defect (however, regarding international applications which are filed in a language which is accepted by the receiving Office but require translation, refer to paragraphs IP 6.013 to IP 6.020). The time limit for filing the correction is two months from the date of the invitation. If the correction is made within the time limit (including any extension - refer to paragraph IP 6.037), the international filing date remains the date on which the international application was received by the receiving Office; otherwise, the international application is considered withdrawn. In certain Offices, however, the provisions of Rule 26.3ter(a) for correction of elements not in an accepted language are incompatible with the applicable national law. For as long as that incompatibility continues, that Rule will not apply for those Offices; all elements of an international application filed with those Offices as receiving Office must therefore comply with the language requirements of Rule 12.1 before an international filing date can be accorded (also refer to paragraph IP 6.006 and refer to Annex C for details).

IP 6.033. [Deleted]

IP 6.034. What happens if the application is filed in a language which is not accepted by the receiving Office?

Rule 19.4(a)(ii),

Rule 19.4(b),

Rule 19.4(c)

If the international application is filed in a language which is not a language accepted by the national (or regional) Office with which it is filed, but is in a language accepted by the International Bureau as receiving Office, that international application will be considered to have been received by that Office on behalf of the International Bureau as receiving Office. In fact, the International Bureau as receiving Office accepts international applications filed in any language (refer to Annex C). In such a case, the international application will be date-stamped by the national (or regional) Office concerned and promptly transmitted to the International Bureau (unless this is prevented by national security prescriptions). That transmittal may be subjected to the payment of a fee equal to the transmittal fee (refer to paragraph IP 5.184(i) and Annex C), but other fees paid will be refunded by the national (or regional) Office to the applicant and the applicable fees will then have to be paid to the International Bureau as receiving Office (refer to Annex C). The international application so transmitted will be considered to have been received by the International Bureau as receiving Office on the date on which it was received by the national (or regional) Office, except that, for the purposes of calculating the time limits for paying the fees due on filing the international application to the competent receiving Office, the date of receipt of the international application is considered to be the date on which the international application was actually received by the International Bureau as receiving Office.

IP 6.035. What happens if the applicant is a resident or national of a Contracting State but files the application with a “non-competent” receiving Office?

Rule 19.4(a)(i),

Rule 19.4(b),

Rule 19.4(c)

If the international application is erroneously filed with a national (or regional) Office which acts as a receiving Office under the Treaty by an applicant who is a resident or national of a Contracting State, but that Office is not competent under Rule 19.1 or 19.2 (having regard to the applicant’s residence and nationality) to receive the international application, the international application will be considered to have been received by the Office with which it was filed on behalf of the International Bureau as receiving Office (refer to paragraphs IP 5.008 and IP 5.009). In such a case, the international application will be date-stamped by the national (or regional) Office concerned and promptly transmitted to the International Bureau (unless this is prevented by national security prescriptions). That transmittal may be subjected by the national Office to the payment of a fee equal to the transmittal fee (refer to paragraph IP 5.184(i) and Annex C), but other fees paid will be refunded by the national Office to the applicant and the applicable fees will then have to be paid to the International Bureau as receiving Office (refer to Annex C (IB)). The international application so transmitted will be considered to have been received by the International Bureau as receiving Office on the date on which it was received by the national (or regional) Office, except that, for the purposes of calculating the time limits for paying the fees due on filing the international application, the date of receipt of the international application is considered to be the date on which the international application was actually received by the International Bureau as receiving Office.

IP 6.036. May the applicant correct indications of residence and nationality?

Article 11(1)(i),

Article 14(1)(a)(ii),

Rule 4.5,

Section 329

If the indications of the applicant’s residence and nationality as stated in the request do not support the applicant’s right to file an international application (refer to paragraphs IP 5.020, IP 5.023 and IP 6.005(i)), that is, if the applicant appears not to be (or, where there are two or more applicants, none of the applicants appears to be) a resident or national of a Contracting State, there is prima facie a defect under Article 11(1)(i) and the receiving Office issues an invitation accordingly to correct that defect (refer to paragraph IP 6.025(i)(a)). The applicant may be able to show that he/she actually had, on the date on which the international application was received by the receiving Office, the right to file an international application with that receiving Office. In such a case, the applicant should submit evidence to the receiving Office accordingly, together with a proposed correction of the indications concerning his/her residence and/or nationality. If the receiving Office is satisfied, on the basis of that evidence, of the applicant’s right to file the international application, the invitation to correct the defect under Article 11(1)(i) will be considered to be an invitation to correct a defect under Article 14(1)(a)(ii) and Rule 4.5 in the prescribed indications concerning the applicant’s residence and/or nationality, and the indications may be corrected accordingly. If such a correction is made, no defect will be considered to exist under Article 11(1)(i), and the defect will thus not prevent the accordance of the actual date of receipt of the international application as the international filing date. Note, however, that the United States Patent and Trademark Office as receiving Office has stated that it will not apply the procedure outlined above.

IP 6.037. Can time limits to correct certain defects be extended?

Rule 26.2

The time limit of two months for the correction of defects under Article 14(1) (refer to paragraph IP 6.032) may be extended by the receiving Office. The receiving Office may extend the time limit ex officio or at the request of the applicant at any time - even after the time limit fixed in the invitation has expired - before a decision is taken on whether the applicant has submitted the correction within the time limit and whether or not the international application so corrected is to be considered withdrawn. On the other hand, the time limits fixed by the receiving Office for the correction of defects under Article 11 or Article 14(2) (refer to paragraph IP 6.025) and for the payment of missing or underpaid fees under Rule 16bis (refer to paragraphs IP 5.193 and IP 5.195) may not be extended.

IP 6.038. Can defects in priority claims be corrected?

Rule 26bis.1(a),

Rule 26bis.2(b),

Rule 91

Any defective priority claim may be corrected and any missing priority claim added by a notice which may be submitted to the receiving Office or the International Bureau. The time limit for correcting or adding a priority claim is 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 a notice correcting or adding a priority claim may in any event be submitted until the expiration of four months from the international filing date. If a correction of a priority claim is received before the receiving Office or the International Bureau, as the case may be, declares the priority claim void (refer to paragraph IP 6.043) and not later than one month after the expiration of the applicable time limit, it is considered to have been received before the expiration of that time limit. To correct a priority claim, any indication relating to that priority claim may be changed, added or deleted. It should be noted that an obvious mistake in priority claims may be rectified under Rule 91 within a time limit of 26 months from the priority date provided that the rectification of the mistake would not cause a change in the earliest priority date.

IP 6.039

Where the applicant has made a request for early publication of the international application, any notice to correct or add a priority claim received by the receiving Office or the International Bureau after that request was made will be considered not to have been submitted, unless that request is withdrawn before the technical preparations for international publication have been completed.

IP 6.040. The priority claim in my international application has been corrected which results in a new priority date. How will upcoming time limits be calculated?

Rule 26bis.1(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 will be computed from the priority date as so changed.

IP 6.041. Can the applicant be invited to correct defects in a priority claim?

Rule 26bis.2

Where the receiving Office or, if the receiving Office fails to do so, the International Bureau, finds in relation to a priority claim that;

(i) the international application has an international filing date which is later than the date on which the priority period expired and that no request for restoration of the right of priority has been submitted;

(ii) the priority claim does not comply with the requirements of Rule 4.10 (refer to paragraph IP 5.057); or

(iii) 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, will invite the applicant to correct the priority claim.

IP 6.042. The filing date of my international application is outside the priority period of 12 months. Will the receiving Office invite me to correct the priority claim?

Rule 26bis.2(a),

Rule 26bis.3

Where the defect consists of the fact that the filing date of the international application is outside the priority period but is within two months from the date on which the priority period expired, the receiving Office also informs the applicant of the possibility of submitting a request for the restoration of the right of priority in accordance with Rule 26bis.3 (refer to paragraphs IP 5.062 to IP 5.069), except where the receiving Office has notified the International Bureau under Rule 26bis.3(j) of the incompatibility of Rule 26bis.3(a) to (i) with the national law applied by that Office.

IP 6.043. I did not respond to an invitation from the receiving Office to correct my priority claim. Will the priority claim be considered void?

Rule 26bis.2(c)

If the applicant fails to respond to an invitation from the receiving Office or the International Bureau to correct a priority claim before the expiration of the time limit for doing so, that priority claim will, for the purposes of the procedure under the Treaty, be considered void and the receiving Office or the International Bureau, as the case may be, will so declare and inform the applicant accordingly. However, a priority claim will not be considered void only because the indication of the number of the earlier application is missing, an indication in the priority claim is not the same as the corresponding indication appearing in the priority document, or the international application has an international filing date which is later than the date on which the priority period expired, provided that the international filing date is within two months of that date.

IP 6.044

Rule 26bis.2(d),

Rule 26bis.2(e)

Where the receiving Office or the International Bureau has made a declaration that a priority claim will be considered void, for the purposes of the procedure under the PCT, or where the priority claim has only not been considered void because Rule 26bis.2(c) applies (refer to last sentence of paragraph IP 6.043), the International Bureau will publish, together with the international application, information concerning the priority claim, as well as any information submitted by the applicant concerning such priority claim which is received by the International Bureau prior to the completion of the technical preparations for international publication. Where the applicant wishes to correct or add a priority claim but the time limit to do so under Rule 26bis.1 has expired, the applicant may, prior to the expiration of 30 months from the priority date and subject to the payment of a special fee (refer to Section 113(c) of the Administrative Instructions), request the International Bureau to publish information concerning the matter.

IP 6.045. Can defects in declarations referred to in Rule 4.17 be corrected? Can declarations be added?

Rule 26ter.1

Any defective declaration may be corrected and any new (missing) declaration may be added by a notice submitted to the International Bureau by the applicant, either in response to an invitation to correct (refer to paragraph IP 6.046) or on his/her own initiative. The time limit for correcting or adding a declaration is 16 months from the priority date. Any correction or addition which is received by the International Bureau after that time limit is considered to have been received on the last day of the time limit if it reaches the International Bureau before the technical preparations for international publication have been completed.

IP 6.046. Which are the defects in declarations made under Rule 4.17 in respect of which the applicant may be invited to submit a correction?

Rule 26ter.2(a)

Where the receiving Office or the International Bureau finds that any declaration contained in the request appears to be defective or incomplete, the receiving Office or the International Bureau, as the case may be, may invite the applicant to correct the declaration within the time limit referred to in paragraph IP 6.045. The kinds of defects which may give rise to an invitation are, for example, the fact that a declaration does not contain the standardized wording as prescribed, or that the blank spaces have not been filled in with names, dates, etc., furthermore, in respect of the declaration of inventorship for the purposes of the designation of the United States of America, that it is not signed as prescribed.

IP 6.047. How should a correction or addition of a declaration referred to in Rule 4.17 be presented?

Section 216,

Section 317

Any correction or addition of a declaration must be made by way of a notice consisting of the corrected or added declaration itself accompanied by a letter explaining the correction or addition. Such notice should be submitted directly to the International Bureau in all cases, even if that notice is in response to an invitation issued by the receiving Office. Any notice nevertheless submitted to the receiving Office will be date stamped by that Office and transmitted to the International Bureau.

IP 6.048

Section 214(c)

In the case of a corrected declaration, the applicant must submit a replacement sheet, using the relevant Box (amongst Boxes Nos. VIII (i) to (v)). In the case of an added declaration, the applicant may either use the relevant sub-box mentioned above or a blank sheet of paper. Any corrected or added declaration of inventorship for the purposes of the designation of the United States of America should be signed and dated by the inventor and should be entitled “Supplemental declaration of inventorship (Rules 4.17(iv) and 51bis.1(a)(iv)”.

IP 6.049. What happens when the applicant fails to correct a declaration referred to in Rule 4.17?

Rule 48.2(b)(iv)

The International Bureau will publish declarations, either as originally filed, or as corrected, whether or not they comply with Rule 4.17. Furthermore, an indication about the fact that declarations were made will be included in the front page of the published international application.

IP 6.050. What happens where the International Bureau receives a correction or addition of a declaration referred to in Rule 4.17 after the applicable time limit?

Rule 26ter.1,

Section 419(c)

Where the International Bureau receives a correction or addition of a declaration after the applicable time limit (refer to paragraph IP 6.045), it will notify the applicant accordingly. It does not publish that declaration, or communicate that declaration to the designated Office(s), but informs the applicant that any such declaration should be submitted directly to the designated Office(s) concerned. In the case of a declaration of inventorship signed by at least one of the inventors, the International Bureau will return the declaration to the applicant.

IP 6.051. Is the receiving Office the only authority which may note any of the above defects during the international phase?

Rule 28

If, in the opinion of the International Bureau, the international application is not signed as provided in the Regulations by at least one of the applicants, or does not contain the name of the applicant presented in the prescribed way, or the prescribed indications in respect of at least one of the applicants, or does not comply to the extent provided in the Regulations with the prescribed physical requirements, the International Bureau, brings such defects to the attention of the receiving Office. Unless that Office believes that there is no defect, it must then invite the applicant to correct it, within a time limit of two months from the date of the invitation (refer to paragraph IP 6.032).

IP 6.052. How should a correction be presented?

Rule 26.4,

Rule 92.1

The correction must generally be filed in the form of one or more replacement sheets incorporating the correction and accompanied by a letter. The letter accompanying a replacement sheet must explain the differences between the replacement sheet and the one it replaces. Correction by letter without replacement sheets is possible only for corrections of the request where the correction is of such a nature that it can be transferred from the letter to the request or other part of the record copy without any adverse effect on the clarity and the direct reproducibility of the sheet onto which the correction is to be transferred. As to the signature and other requirements of such letters, refer to Rule 92.1

IP 6.053. Does a correction entail the payment of a fee?

Both the request for and the making of any correction are free of charge. There is also no fee for the extension of a time limit for correction (refer to paragraph IP 6.037).

IP 6.054. Can the applicant appeal or file a petition against an unfavorable decision of the receiving Office?

The PCT does not expressly provide for any appeal or petition during the international phase. However, practice has shown that receiving Offices reconsider their decisions on petition, and that some national courts or appeal boards have accepted appeals against decisions taken by national (or regional) Offices in their capacity as receiving Offices. However, the latter possibility, even where the applicant is successful in obtaining a favorable revision of the decision of the receiving Office, may remain without effect in the States designated in the international application, particularly when the applicant has not performed the acts required under Article 22(1), 39(1)(a) or 25 within the applicable time limit.

IP 6.055

Article 25,

Rule 29.1,

Rule 51

The PCT provides for the review by designated Offices of any decision of the receiving Office refusing to accord an international filing date or declaring that the international application is considered withdrawn. (For details of the procedure, including the time limit for requesting such review, refer to National Phase, paragraphs NP 6.018 to NP 6.021.)

IP 6.056. Can failure to meet a time limit in the proceedings before the receiving Office or a delay in furnishing documents to that Office be excused?

Article 24(2),

Article 48(2),

Rule 82bis

The PCT provides that any Contracting State must, as far as that State is concerned, excuse, for reasons allowed by the national law, any delay in meeting any time limit. Moreover, any Contracting State may, as far as it is concerned, excuse for other reasons any delay in meeting any time limit. Finally, any designated Office may maintain the effect of an international application (refer to paragraphs IP 5.003 to IP 5.007), even where the decision of the receiving Office to the effect that the international application, or the designation of the State concerned, is considered withdrawn is found to be correct. (For details, refer to National Phase, paragraph NP 6.021.)

RECORD COPY AND SEARCH COPY

IP 6.057. How does the record copy reach the International Bureau?

What are the consequences if it does not reach the International Bureau within the prescribed time limit? The record copy (refer to paragraph IP 5.180), which incidentally is, for the purposes of the procedure under the PCT, considered the true copy of the international application, must reach the International Bureau in time because, if the record copy has not been received by that Bureau within the prescribed time limit, the international application is considered withdrawn. However, no international application is considered withdrawn in such a case without the applicant having been informed beforehand (refer to paragraph IP 6.058). Failure to transmit the record copy does not relieve the applicant of the obligation to enter the national phase before the designated Offices within the applicable time limit (refer to National Phase, paragraphs NP 6.022 to NP 6.027).

IP 6.058. How does the International Bureau monitor the receipt of the record copy?

Rule 20.2(c),

Rule 22.1(e)

The International Bureau, once informed by the receiving Office of the international application number and of the international filing date, monitors the receipt of the record copy. If the International Bureau has not received the record copy within 13 months from the priority date, it urges the receiving Office to send it. If, one month later, the record copy has still not been received, the International Bureau notifies the applicant of the fact. The applicant can then ask the receiving Office either to transmit the record copy or to issue – and this must be done free of charge – a certified copy of the international application which the applicant can directly transmit to the International Bureau. Only after the expiration of three months from the above-mentioned notification from the International Bureau to the applicant may the International Bureau make the finding that no record copy has been received within the prescribed time limit. Thus the applicant will always have been warned and offered the possibility of taking care of the transmittal of the record copy himself/herself before any loss of rights can occur. The certification of a copy of the international application must be made free of charge in such a case, and may be refused only in certain cases (for instance where national security considerations prevent the international application from being treated as such; for details, refer to Rule 22.1(e)).

IP 6.059. How does the search copy reach the International Searching Authority?

The search copy (refer to paragraph IP 5.180) is transmitted by the receiving Office to the International Searching Authority. The search copy is only transmitted if the international search fee has been fully paid to the receiving Office (refer to paragraphs IP 5.184(ii), IP 5.193, IP 5.195 and IP 5.198), and, where the international application was filed in a language not accepted by the International Searching Authority, only after the required translation has been furnished (refer to paragraph IP 5.181). Therefore, it is in the applicant’s interests to pay the search fee promptly, and, where applicable, furnish the translation promptly, in order to avoid any delay in establishment of the international search report. The International Searching Authority notifies the International Bureau, the applicant and the receiving Office of the fact and date of receipt of the search copy.

IP 6.060. Can the applicant obtain certified copies of the international application?

Rule 21.2

Upon request and against payment of a fee, the receiving Office must furnish to the applicant certified copies of the international application as filed and of any corrections to it. The certified copy of the international application is the priority document where the applicant claims the priority of that international application. For copies of priority documents referred to in the international application, refer to paragraph IP 5.070.

CHAPTER 7: THE INTERNATIONAL SEARCH PROCEDURE: PROCESSING OF THE INTERNATIONAL APPLICATION BY THE INTERNATIONAL SEARCHING AUTHORITY

GENERAL

IP 7.001. What are the main procedural steps before the International Searching Authority?

The main procedural steps that any international application goes through before the International Searching Authority are the following:

(i) conducting the international search,

(ii) preparing the international search report, and

(iii) establishing a written opinion.

IP 7.002. Which International Searching Authority is competent?

Article 16,

Rule 4.14bis,

Rule 35

Each receiving Office (except the International Bureau as receiving Office – refer to paragraph IP 5.008) specifies one or more International Searching Authorities as competent to carry out international searches on international applications filed with it. For some receiving Offices, different International Searching Authorities are competent depending on the language in which the international application is filed or, where the international application is filed in a language accepted by the receiving Office but not by the International Searching Authority, translated. Where several International Searching Authorities are specified as competent by the receiving Office, the applicant may choose between them (subject to any such language restriction). Annex C indicates the International Searching Authority or Authorities specified as competent by each receiving Office, and the languages in which international applications filed with that Office are accepted for international search by those Authorities. Where the international application is filed with the International Bureau as receiving Office, the competent International Searching Authority (or Authorities) is that (or are those) which would have been competent if the international application had been filed with a competent national (or regional) Office as receiving Office. All of the languages accepted for search by each International Searching Authority are set out in Annex D. Where two or more International Searching Authorities are competent to carry out the international search, the applicant must indicate the Authority of his/her choice in the request form (refer to paragraph IP 5.072) and should also indicate it in the fee calculation sheet (refer to paragraphs IP 5.093 and IP 5.187). Finally, within the framework of the respective agreements relating to the functioning of certain Offices as International Searching Authorities, these Authorities may provide for limitations of their competence in respect of certain international applications. The consolidated texts of these Agreements are available on the WIPO website at the following address: https://www.wipo.int/en/web/pct-system/access/isa_ipea_agreements. For more detailed information, refer to Annex D.

IP 7.002A. May the applicant submit comments on earlier search results to the Authority that shall carry out the international search?

Where an international application claims the priority of an earlier application in relation to which a search had already been carried out by the same Office that acts as International Searching Authority, some International Searching Authorities have indicated that they would, when carrying out the international search, consider comments made by applicants in response to the earlier search results relating to the priority application. Applicants who wish to have such comments taken into account should submit them to the receiving Office together with the international application, typically by checking Box No. IX of the request, sub-box “Other”, and indicating “Informal comments on earlier search results”. These informal comments would then be transmitted to the International Searching Authority and the International Bureau together with the search copy and the record copy. Informal comments on earlier search results will be published on PATENTSCOPE (For information on which International Searching Authorities offer this service, refer to Annex D.)

IP 7.003. What is the purpose of the international search?

Article 15(4),

Rule 33

The purpose of the international search is to discover relevant prior art. “Prior art” consists of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations); it is “relevant” in respect of the international application if it can help determine whether or not the claimed invention is new, whether or not it involves an inventive step (in other words, whether it is or is not obvious), and whether the making available to the public occurred prior to the international filing date (for further details, refer to Rule 33). The international search is made on the basis of the claims, with due regard to the description and the drawings (if any) contained in the international application. The results of the international search are set out in the international search report (refer to paragraphs IP 7.023 to IP 7.026).

IP 7.004. What documents are searched by the International Searching Authority?

Article 15(4),

Rule 34.1

The International Searching Authority must endeavor to discover as much of the relevant prior art as its facilities permit, and it must in any case consult the so-called “minimum documentation.” Roughly stated, the latter comprises the published patent documents issued after 1919 by France, by Germany from 1920 to 1945 and by the Federal Republic of Germany since 1945, by Japan (for International Searching Authorities other than the Japan Patent Office (JPO), only those documents for which English abstracts are generally available), by the People’s Republic of China (for International Searching Authorities other than the China National Intellectual Property Administration (CNIPA), only those documents for which English abstracts are generally available), by the Republic of Korea (for International Searching Authorities other than the Ministry of Intellectual Property (MOIP) (Republic of Korea), only those documents for which English abstracts are generally available), by the former Soviet Union and now by the Russian Federation (for International Searching Authorities other than the Federal Service for Intellectual Property (Rospatent)(Russian Federation) only those documents for which English abstracts are generally available), by Switzerland (except documents in Italian), by the United Kingdom, by the United States of America, by the African Intellectual Property Organization (OAPI), by the African Regional Intellectual Property Organization (ARIPO), by the Eurasian Patent Office and by the European Patent Office; published international (PCT) applications; and, from various dates, about 135 technical periodicals. It is emphasized, however, that, where the International Searching Authority has more than the “minimum documentation” at its disposal, it is obliged also to consult that additional documentation to the extent permitted by its facilities.

IP 7.004A. What if the international application contains later submitted missing parts or correct elements or parts?

Rule 20.5,

Rule 20.5bis

The international search will usually be carried out on the basis of the application containing the missing parts or the correct elements or parts. In the case of incorporation by reference of correct elements or parts, although the erroneously filed elements or parts remain in the international application as per Rule 20.5bis(d), they will not have to be considered for the purpose of international search.

IP 7.004B

However, if the inclusion or incorporation by reference of missing parts or correct elements or parts is notified to the International Searching Authority only after it has begun to draw up the international search report, it may invite the applicant to pay an additional fee for that purpose. The invitation will invite the applicant to pay the additional fee within one month from the date of the invitation and indicate the amount of the fee to be paid. The applicant will then have to pay this additional fee directly to the International Searching Authority. If the additional fee is not paid within the time limit, the International Searching Authority will draw up the international search report and the written opinion without taking into account the missing parts or correct elements or parts.

NUCLEOTIDE AND/OR AMINO ACID SEQUENCE LISTINGS

IP 7.005. What special requirements apply during the international search to a nucleotide and/or amino acid sequence listing?

Where the International Searching Authority finds that an international application contains disclosure of one or more nucleotide and/or amino acid sequences required to be included in a sequence listing pursuant to Annex C of the Administrative Instructions and that the sequence listing complying with the prescribed standard (refer to paragraph IP 5.099) in a language accepted by that Authority has not already been furnished (either as part of the international application or filed subsequently for the purposes of international search), that Authority may invite the applicant to furnish a listing complying with this standard or containing a translation of the language-dependent free text in a language accepted by that Authority and, if applicable, to pay a late furnishing fee. The listing required by the International Searching Authority is for the purpose of carrying out the international search; the application of the requirements of national law in relation to disclosure of inventions involving a sequence listing is a matter for the national phase of processing.

IP 7.006. [Deleted]

IP 7.007. [Deleted]

IP 7.008. Does the International Bureau recommend any software for the preparation of sequence listings in electronic format?

The sequence listing should be created using WIPO Sequence (refer to paragraph IP 5.104).

IP 7.009. How should I label a diskette or any other electronic carrier accepted by the International Searching Authority for the submission of sequence listings?

The diskette or any other electronic carrier that is acceptable to the competent International Searching Authority must have a label permanently affixed thereto on which has been typed, or hand-printed in block capitals, the name of the applicant, the title of the invention, a reference number, the date on which the data were recorded, the computer operating system and the name of the competent Authority. If the diskette or any other electronic carrier that is acceptable to the competent Authority is submitted after the date of filing of an application, the labels must also include the filing date of the application and the application number.

IP 7.010. What is the procedure for furnishing a sequence listing upon invitation?

Rule 13ter.1(a),

Rule 13ter.1(c),

Rule 13ter.1(d)

An invitation from the International Searching Authority to furnish a sequence listing complying with the standard provided for in Annex C to the Administrative Instructions (refer to paragraphs IP 7.005 to IP 7.008) or containing a translation of the language-dependent free text, will specify a time limit for response to the invitation. The furnishing of a sequence listing in response to the invitation may be subjected by the International Searching Authority to the payment of a late furnishing fee. The amount of the late furnishing fee shall be determined by the International Searching Authority but shall not exceed 25% of the international filing fee referred to in item 1 of the Schedule of Fees (excluding any fee paid for each sheet of the international application in excess of 30). Any sequence listing furnished by the applicant must be accompanied by a statement to the effect that the listing does not go beyond the disclosure in the international application as filed. If the applicant does not comply within that time limit, the search undertaken by the International Searching Authority may be restricted (refer to paragraph IP 7.013). For the means of submitting documents, refer to paragraphs IP 11.067 to IP 11.070.

IP 7.011. Does a sequence listing furnished to the International Searching Authority form part of the international application?

Rule 13ter.1(e)

Any sequence listing furnished separately to the International Searching Authority under Rule 13ter is used only for the purposes of the international search and does not form part of the international application. Nevertheless, once the international application has been published, any such sequence listing will be made available for public inspection by the International Bureau on PATENTSCOPE (https://www.wipo.int/patentscope/en/). The applicant may later amend the description (under Article 34 or at the time of national phase entry) to include a sequence listing part of the description complying with WIPO Standard ST.26.

IP 7.012. Will a sequence listing furnished to the International Searching Authority also meet any requirements of the International Preliminary Examining Authority or, in the national phase, of a designated Office?

Rule 13ter.2,

Rule 49.5(a-bis)

The same requirements in relation to sequence listings for the purposes of international search apply during international preliminary examination (refer to paragraph IP 10.063). The International Preliminary Examining Authority may, for example, invite the applicant to furnish to it a sequence listing complying with the standard provided for in Annex C of the Administrative Instructions or containing a translation of the language-dependent free text in a language accepted by that Authority for the purposes of international preliminary examination. Concerning designated Offices, no designated Office may require the applicant to furnish to it a sequence listing other than a sequence listing complying with the standard provided for in Annex C of the Administrative Instructions. If a designated Office finds that a sequence listing does not comply with the prescribed standard and/or does not contain language-dependent free text in a language accepted by the Office, it may invite the applicant to furnish a listing or a translation complying with those requirements (refer to National Chapters).

LIMITATIONS ON INTERNATIONAL SEARCH

IP 7.013. May the International Searching Authority refuse to search certain subject matter?

The International Searching Authority is not required to perform an international search on claims which relate to any of the following subject matter:

(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 presentation of information, and

(vi) computer programs to the extent that the Authority is not equipped to search prior art concerning such programs.

However, certain International Searching Authorities do, in practice, search these fields to varying extents – for example, several International Searching Authorities search subject matter which is normally searched under the national (or regional) procedure (for details, refer to Annex D). In addition, the International Searching Authority is not required to search the international application, to the extent that a meaningful search cannot be carried out, in certain cases where a sequence listing is not furnished in accordance with the prescribed standard or is not available to it in an accepted language (refer to paragraphs IP 7.005 to IP 7.012). If the International Searching Authority is not required to search any of the claims, it may declare that it will not establish an international search report. It should, nevertheless, be noted that the lack of an international search report in such a case does not, in itself, have any influence on the validity of the international application, the processing of which, including its communication to the designated Offices, continues. In respect of the possibility for the International Searching Authority to limit its competence, refer to paragraph IP 7.002.

IP 7.014. May the International Searching Authority refuse to search international applications which are unclear or have other defects?

Article 17(2)(a)(ii),

Article 17(2)(b),

Rule 6.4(a)

If the International Searching Authority considers that the description, the claims or the drawings fail to comply with the prescribed requirements to such an extent that a meaningful search cannot be carried out, it may declare that it will not establish a search report (such a declaration may also be made in respect of some of the claims only). This may in particular occur where the description or the claims are unclear. The lack of an international search report does not, of itself, have any influence on the validity of the international application, the processing of which, including its communication to the designated Offices, continues. Where only some of the claims are found to be “unsearchable, ” the International Searching Authority will not search them but will search the rest of the international application; as a result, it will then establish a partial search report in relation to the searched claims. This partial search report also contains a declaration under Article 17(2)(b) that certain claims were found unsearchable. The same may apply in the case of multiple dependent claims which do not comply with the manner of drafting provided for in the second and third sentences of Rule 6.4(a) (refer to paragraph IP 5.113).

UNITY OF INVENTION

IP 7.015. What is the purpose of the requirement of “unity of invention”?

Article 17(3)(a),

Rule 13

The search fee (refer to paragraph IP 5.184(ii) and Annex D) is intended to compensate the International Searching Authority for carrying out an international search on the international application, but only where the international application meets the requirement of “unity of invention.” That means that the international application must relate to only one invention or must relate to a group of inventions which are so linked as to form a single general inventive concept. The requirement of unity of invention is explained in detail in paragraphs IP 5.114 to IP 5.123.

IP 7.016. What happens where the International Searching Authority considers that the international application does not meet the requirement of unity of invention?

If the International Searching Authority finds that the international application does not meet the requirement of unity of invention, it invites the applicant to pay additional fees, specifying the reasons for its finding and indicating the number of additional fees to be paid. The invitation will also invite the applicant to pay, where applicable, and will indicate the amount of, the protest fee as referred to in Rule 40.2(e). Such additional fees are payable directly to the International Searching Authority within one month from the date of the invitation. Annex D indicates the amount of the additional search fee per additional invention charged by each International Searching Authority.

IP 7.017

When the International Searching Authority invites the applicant to pay additional fees, it may annex to the invitation the results of a partial international search limited to the invention first mentioned in the claims (the relevant claims are identified in the invitation). The results of such a partial search will be included in the international search report when it is established, together with the results of the search of any further invention for which the applicant pays additional fees within the time limit fixed in the invitation.

IP 7.018

Article 17(3)(a),

Rule 13

The International Searching Authority establishes the international search report in any case on those parts of the international application which relate to the “main invention, ” that is, the invention - or group of inventions so linked as to form a single general inventive concept - first mentioned in the claims. Moreover, the International Searching Authority establishes the international search report also on those parts of the international application which relate to any invention - or any group of inventions so linked as to form a single general inventive concept - in respect of which the applicant has paid the additional fee within the time limit fixed in the invitation.

IP 7.019. May the applicant protest against payment of the additional fees?

Rule 40.2(c),

Rule 40.2(d)

Yes, 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 number of the required additional fees is excessive. Any such protest is examined by a review body constituted in the framework of the International Searching Authority, and a decision is taken on it. To the extent that the applicant’s protest is found to be justified, the additional fee is totally or partly reimbursed. At the request of the applicant, the texts of both the protest and the decision on it are notified to the designated Offices together with the international search report.

IP 7.020

Rule 40.1,

Rule 40.2(e)

Where the applicant pays additional fees under protest, the International Searching Authority may also require the applicant to pay a fee for the examination of the protest (“protest fee”). Details of the protest fee, if any, charged by the International Searching Authorities appear in Annex D. Where the applicant has not, within one month from the date of the invitation to pay additional fees, paid any required protest fee, the protest shall be considered not to have been made and the International Searching Authority shall so declare.

IP 7.021. What happens if the applicant does not pay the additional fees as invited?

Article 17(3)(b)

Where, within the prescribed time limit, the applicant does not pay all the additional fees indicated by the International Searching Authority, but pays only some of them, or does not pay any additional fee at all, certain parts of the international application are not searched by that Authority. The lack of an international search report in respect of those parts of the international application does not, of itself, have any influence on the validity of the international application, the processing of which, including its communication to the designated Offices, continues in respect of all claims. Nevertheless, the national law of any designated State may provide that such unsearched parts of the international application will be considered withdrawn as far as that State is concerned unless a special fee is paid by the applicant to its national Office. There are only a few Offices which apply such provisions. Details of special fees are given in the respective National Chapters.

TITLE AND ABSTRACT

IP 7.022. What happens if the International Searching Authority finds that the title of the invention or the abstract is missing or defective?

Rule 37,

Rule 38,

Rule 44.2

In such cases, and in certain circumstances, it is the International Searching Authority which eventually establishes an appropriate title or abstract. For details, refer to Rules 37, 38 and 44.2, and paragraph IP 5.173.

INTERNATIONAL SEARCH REPORT

IP 7.023. When must the international search report be established?

Article 18(1),

Rule 42

The international search report must be established within three months from the receipt of the search copy by the International Searching Authority (refer to paragraph IP 6.059) or nine months from the priority date, whichever time limit expires later.

IP 7.024. What are the contents of the international search report?

Rule 43

The international search report contains, among other things, the citation of the documents considered relevant, the classification of the subject matter of the invention (according to the International Patent Classification) and an indication of the fields searched (those fields being identified by a reference to their classification) as well as any electronic data base searched (including, where practicable, the search terms used). Citations of particular relevance must be indicated specially. Citations which are not relevant to all the claims must be indicated in relation to the claim or claims to which they are relevant. If only certain passages of the document cited are relevant or particularly relevant, they must be identified, for example by an indication of the page on which, or the column or lines in which, the passage appears. It is important to note that an international search report must not contain any expression of opinion, reasoning, argument or explanation of any kind whatsoever. For full details, refer to Rule 43.

IP 7.025. How do the applicant and the International Bureau receive the international search report?

Article 18(2),

Rule 44.1

The International Searching Authority transmits, on the same day, one copy of the international search report (or, where none is established, a declaration to that effect - refer to paragraphs IP 7.013 and IP 7.014) and the written opinion established by it to the applicant and to the International Bureau. The latter publishes the international search report with the published international application (refer to paragraph IP 9.015) and sends a copy to the designated Offices.

IP 7.025A. May the applicant respond to the international search report?

The Regulations do not specifically provide for an opportunity for the applicant to respond to the international search report, except that after receipt of the report, the applicant is entitled, under Article 19, to one opportunity to amend the claims of the international application (refer to paragraphs IP 9.004 to IP 9.011). For the possibility to respond to the written opinion of the International Searching Authority, refer to paragraph IP 7.030.

IP 7.026. How can the applicant obtain copies of the documents cited in the international search report?

Article 20(3),

Rule 44.3

The applicant can obtain copies of the documents cited in the international search report by requesting them from the International Searching Authority. Certain International Searching Authorities, however, transmit such copies automatically without extra charge to the applicant, together with the international search report. Annex D indicates those International Searching Authorities and indicates for the other Authorities the fees charged for furnishing copies on request.

WRITTEN OPINION OF THE INTERNATIONAL SEARCHING AUTHORITY

IP 7.027. What is the written opinion of the International Searching Authority?

Rule 43bis.1(a)

The International Searching Authority will establish, at the same time that it establishes the international search report or the declaration referred to in Article 17(2)(a), a preliminary and nonbinding written opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable, very similar in scope to the written opinion established by the International Preliminary Examining Authority during international preliminary examination.

IP 7.028

Rule 44.1

The relevant date for determining prior art for the purposes of establishing the written opinion is the international filing date or, where priority of an earlier application is claimed, the priority date - this date is different from that used in establishing the international search report but is consistent with the date used in international preliminary examination. The written opinion of the International Searching Authority is established in the language in which the international search report is established, and is communicated to the applicant and to the International Bureau together with the international search report or the declaration referred to inArticle 17(2)(a) (refer to paragraph IP 7.025). The written opinion, unless it is not yet available to the International Bureau, is also made publicly available on PATENTSCOPE on the same day that the international application is published.

IP 7.029. When must the written opinion be established?

Article 18(1),

Rule 42

The International Searching Authority must, as a rule, establish the international search report and the written opinion within three months from the receipt of the search copy sent to it by the receiving Office or within nine months from the priority date, whichever time limit expires later.

IP 7.030. May the applicant respond to the written opinion of the International Searching Authority?

Even though no special provisions are included in the Regulations providing for the applicant to comment on the written opinion of the International Searching Authority, in accordance with the decision of the PCT Assembly, applicants may submit comments on an informal basis to the International Bureau. The purpose of such informal comments is to give the applicant an opportunity to rebut the written opinion of the International Searching Authority in the event that international preliminary examination is not requested. There is no maximum word count for informal comments. When submitting informal comments to the International Bureau, they should be clearly identified as such. Informal comments will be made publicly available on PATENTSCOPE as from the date of international publication. It is recommended to submit informal comments before the expiration of 28 months from the priority date, so that they will be available to designated Offices upon entry into the national phase. Any informal comments received after 30 months from the priority date will only be kept in the file of the International Bureau and not be transmitted to the designated Offices. As far as the language of the informal comments is concerned, it is the practice of the International Bureau to accept and communicate to designated Offices informal comments in any language. Any formal response to the written opinion of the International Searching Authority must be submitted directly to the International Preliminary Examining Authority under Article 34 as part of the procedure under Chapter II. If a demand is filed, informal comments submitted under Chapter I will not be forwarded to the designated Offices, however they will still be made available to the public on PATENTSCOPE.

IP 7.031. What is the relationship between the written opinion of the International Searching Authority and the international preliminary report on patentability (IPRP) (Chapter I)?

Rule 44bis

If no international preliminary examination report has been or will be established, the written opinion of the International Searching Authority will form the basis for the issuance by the International Bureau, on behalf of the International Searching Authority, of the international preliminary report on patentability (IPRP) (Chapter I) which will be communicated to all designated Offices, together with any informal comments submitted by the applicant. The international preliminary report on patentability (Chapter I) is made available on PATENTSCOPE for public inspection after the expiration of 30 months from the priority date.

IP 7.032

Rule 43bis.1(c),

Rule 66.1bis

If a demand for international preliminary examination is filed in respect of an international application, the written opinion which has been established by the International Searching Authority will, in general, be used by the International Preliminary Examining Authority as its own first written opinion, unless the International Preliminary Examining Authority notifies the International Bureau to the contrary.

CHAPTER 8: SUPPLEMENTARY INTERNATIONAL SEARCH

GENERAL

IP 8.001. What is supplementary international search?

Rule 45bis

Supplementary international search permits the applicant to request, in addition to the international search carried out under Article 15(1) (the “main international search”, as explained in Chapter 7), one or more supplementary international searches each to be carried out by an International Authority (the “Authority specified for supplementary search”) other than the International Searching Authority that carries out the main international search.

IP 8.002. What are the benefits of supplementary international search for the applicant?

Requesting supplementary international search reduces the risk of new prior art being cited in the national phase. The increasing diversity of prior art in different languages and different technical fields means that the Authority carrying out the main international search is not always capable of discovering all of the relevant prior art. Requesting one or more supplementary international searches, during this early phase of the patent prosecution, expands both the linguistic and technical scope of the search. In addition, it may also be possible to have the supplementary search carried out in a State where they are likely to enter the national phase later on.

IP 8.003. Which authorities can be requested to carry out a supplementary international search?

Rule 45bis.1(e),

Rule 45bis.9(b)

Only an International Searching Authority that has stated its preparedness to carry out supplementary international searches (refer to Annex SISA), and which is not the International Searching Authority that carried out the main international search, can be requested to carry out a supplementary international search.

IP 8.004. Does each Authority offer the same supplementary international search service?

Rule 45bis.9(a),

Rule 45bis.9(c)

The Authorities prepared to offer supplementary international searches may specify any limitations and conditions on this service in their agreement with the International Bureau (refer to https://www.wipo.int/en/web/pct-system/access/isa_ipea_agreements). These limitations may include limitations as to the subject matter for which supplementary searches will be carried out, beyond those limitations that can be evoked in respect of the main international search (refer to paragraphs IP 7.013 and IP 7.014), and limitations as to the total number of supplementary international searches which will be carried out in a given period (refer to Annex SISA).

IP 8.005. When should the request for a supplementary search be filed?

Rule 45bis.1(a),

Rule 45bis.1(e)(i)

In many cases, requests for supplementary search will be filed once the applicant has received the main international search report. In any event, the applicant must file a request for a supplementary international search prior to the expiration of 22 months from the priority date. If the request is received after the expiration of this time limit, it will be considered not to have been submitted and there are no provisions to extend this time limit.

SUPPLEMENTARY SEARCH REQUEST

IP 8.006. How should a supplementary search request be filed?

Rule 45bis.1(b),

Section 102(f),

Section 102(g)

To facilitate preparation of the supplementary search request, the International Bureau has made available Form PCT/IB/375 “Supplementary Search Request” in editable PDF format on WIPO’s website (instructions on how to complete and save the editable form are also available at: https://www.wipo.int/en/web/pct-system/forms/instructions ). This form should be completed in accordance with indications in the Notes attached to the form. While use of this form is optional, it is highly recommended. It is further recommended to submit the form to the International Bureau through ePCT.

IP 8.007. Can I submit more than one request for supplementary international search?

Rule 45bis.1(a)

If the applicant wishes more than one supplementary international search to be carried out, a separate request, preferably using Form PCT/IB/375, should be submitted for each supplementary international search requested.

IP 8.008. Where should a supplementary search request be filed?

Rule 45bis.1(b),

Rule 45bis.4(e)

A supplementary search request must be filed with the International Bureau and not with the Authority specified for supplementary search. The International Bureau will transmit the request to the Authority specified for supplementary search once it has verified that all formal requirements have been complied with.

IP 8.009. In which language should the supplementary search request be filed?

Rule 92.2(d),

Section 104

The supplementary search request should be filed in either English or French.

IP 8.010. What is the language of correspondence with the International Bureau in connection with supplementary international search?

Rule 92.2(d),

Section 104

Any correspondence between the applicant and the International Bureau should be in English or French, at the choice of the applicant, provided that it is in the same language as the international application – if the international application was filed in English or French. However, communications from the applicant to the International Bureau via ePCT may also be in the language of publication of the international application.

IP 8.011. How should the Authority specified for supplementary search be identified?

Rule 45bis.1(b)(ii)

The Authority specified for supplementary search should be identified, by an indication of the name or two-letter code of the Authority at the top of the first sheet of the supplementary search request form (PCT/IB/375).

IP 8.012. Which documents, other than the supplementary search request must be submitted?

Rule 13ter.1,

Rule 45bis.1(c)

Where neither the language in which the international application was filed, nor the language in which a translation (if any) has been furnished for the purposes of main international search or international publication, is accepted by the Authority specified for supplementary search, a translation of the international application into a language which is accepted by that Authority must be submitted together with the request. Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences required to be included in a sequence listing pursuant to Annex C of the Administrative Instructions, the applicant, if so required, should furnish a copy of the sequence listing (complying with the prescribed standard in a language accepted by that Authority) to the International Bureau together with the supplementary search request.

Box No. I: Identification of the International Application

IP 8.013. How should the international application be identified when I file a request for international supplementary search?

Rule 45bis.1(b)(i),

Section 109,

Section 110

The applicant should clearly identify the international application by its international application number, international filing date (for the date format, refer to paragraph IP 5.061) and title, as provided for in Box No. I. If a new title has been established by the International Searching Authority, that title should be indicated.

IP 8.014

Where the international application claims the priority of several earlier applications, the filing date of the earliest application whose priority is claimed should be indicated as the priority date. A file reference not exceeding 25 characters may also be indicated, if desired by the applicant (refer to paragraph IP 5.017).

Box No. II: Applicant

IP 8.015. How should the applicant be identified?

Rule 45bis.1(b)(i)

The applicant should be identified by the indications of his/her name and address in Box No. II. The requirements for these indications are the same as those for the request form (PCT/RO/101) (refer to paragraphs IP 5.025 to IP 5.034).

IP 8.016

Where there are two or more applicants, only one needs to be indicated for the purposes of requesting supplementary search. It is recommended that the applicant who will represent all the applicants, and to whom notifications are to be sent, be indicated. If an agent or a common representative is indicated in Box No. III of the request, notices will be sent to that agent or common representative (also refer to paragraphs IP 11.015 to IP 11.017).

IP 8.017. How can the applicant receive notifications via e-mail?

Rule 4.4(c)

If an e-mail address is indicated in Box No. II of the supplementary search request form, the International Bureau, and the Authority specified for supplementary search (if it provides such a service), will send notifications in respect of the international application to the applicant by e-mail, thus avoiding processing or postal delays. In this case, no paper notifications will usually be sent by postal mail, unless the Authority specified for supplementary search is willing to additionally send such paper notifications. Where the agent or common representative has also provided an e-mail address, e-mail notifications will only be sent to the appointed agent or common representative (refer to paragraph IP 8.018). Note that not all Authorities will send such notifications by e-mail (refer to Annex B). If no e-mail address is provided, or if the applicant chooses to receive notifications exclusively by postal mail, by marking the corresponding check-box in Box No. II, or in the cases where the Authority specified for supplementary search does not provide for sending notifications by e-mail, notifications will be sent to the given mailing address exclusively by postal mail. It is the applicant’s responsibility to keep any e-mail address details up-to-date and to ensure that incoming e-mails are not blocked, for any reason, on the recipient’s side. Changes to the e-mail address indicated should be requested to be recorded, preferably directly at the International Bureau, under Rule 92bis.

Box No. III: Agent or Common Representative

IP 8.018. How is an agent appointed for the purposes of the procedure before the Authority specified for supplementary search?

The appointment of an agent to represent the applicant for the purposes of all procedures during the international phase, including the procedure before the Authority specified for supplementary search, may be made in Box No. IV of the request form (PCT/RO/101) or in a separate power of attorney submitted to the receiving Office (also refer to paragraphs IP 5.041 to IP 5.046 and IP 11.001 to IP 11.014).

IP 8.019. Can I appoint an agent specifically for the procedures before the Authority specified for supplementary search?

Where, however, an agent is to be appointed specifically for the purposes of the procedure before the Authority specified for supplementary search, this should be indicated in Box No. III of the supplementary search request form and the form signed by the applicant.

IP 8.020

The appointment of an agent may also be made in a separate power of attorney signed by the applicant. The indications in Box No. III or in a separate power of attorney must include the name and address of the agent (refer to paragraphs IP 5.025 to IP 5.029). It is recommended that the agent’s telephone number, facsimile number and/or e-mail address also be indicated. It is also recommended that where an agent is registered with the Office, that is acting as the Authority specified for supplementary search, the number or other indication under which the agent is so registered should be included. Model powers of attorney are available in editable PDF format on the WIPO website. Any separate power of attorney must be submitted to the Authority specified for supplementary search if the appointment was made specifically for the purposes of the procedure before that Authority. Where a general power of attorney authorizes an agent to represent the applicant before the Office, which acts as the Authority specified for supplementary search, and the appointment was made specifically for the purposes of the procedure before that Authority, the general power of attorney must be deposited with the said Authority. The Authority specified for supplementary search may waive the requirement that a separate power of attorney or a copy of the general power of attorney be submitted to it (refer to Annex SISA).

IP 8.021. How can an agent receive notifications via e-mail?

Rule 4.4(c)

If an e-mail address is indicated in Box No. III, the International Bureau, and the Authority specified for supplementary search (if it provides such a service), will send notifications to the agent or common representative at the indicated e-mail address, thus avoiding processing or postal delays (refer to paragraph IP 8.017). In this case, no paper notifications will usually be sent by postal mail, unless the Authority specified for supplementary search is willing to additionally send such paper notifications. If no e-mail address is provided, or if the agent or common representative chooses to receive notifications exclusively by postal mail, by marking the corresponding check-box in Box No. III, or in the cases where the Authority specified for supplementary search does not provide for sending notifications by e-mail, notifications will be sent to the given mailing address exclusively by postal mail.

IP 8.022. What is the address for correspondence?

Section 108

Where an agent is appointed specifically for the purposes of the procedure before the Authority specified for supplementary search, all notifications issued by that Authority will be addressed only to that agent. Otherwise, correspondence will be sent to the agent appointed previously or to the common representative, as the case may be. However, where no agent or common representative is appointed and the applicant wishes correspondence to be sent to a different address other than that indicated in Box No. II, the applicant may indicate that address in Box No. III. In such cases, the last check-box of Box No. III must be marked. However, the last check-box must not be marked if either of the check-boxes “agent” or “common representative” in Box No. III has been marked.

Box No. IV: Basis for Supplementary International Search

IP 8.023. Where should the language, for the purposes of supplementary international search, be indicated?

Rule 45bis.1(b)(iii)

The applicant should indicate the language, for the purposes of supplementary international search, in Box No. IV and whether that language is that of the international application as originally filed, or of any translation furnished to the receiving Office under Rule 12.3 or 12.4. Where neither the language in which the international application was filed, nor the language in which a translation (if any) has been furnished under Rule 12.3 or 12.4, is accepted by the Authority specified for supplementary search, a translation of the international application, into a language accepted by that Authority, must be furnished together with the request. In such cases, the last check-box concerning language should be marked. Where more than one of the above applies, the applicant may indicate which language version is to form the basis of the supplementary international search, by marking the corresponding check-box.

IP 8.024. When and how may the applicant select certain inventions to be searched?

Rule 45bis.1(d),

Rule 45bis.5(d)

Where the International Searching Authority has found that the international application does not comply with the requirement of unity of invention, the applicant may choose, among the several inventions, which invention he/she wishes to be searched by the Authority specified for supplementary search. If the applicant wishes to limit the supplementary international search to an invention, other than the main invention referred to in Article 17(3)(a), he/she may indicate this wish by marking the last check-box in Box No. IV of the supplementary search request form, and state the corresponding numbers of the claims relating to this invention in the space provided. Where the international search report is available to the Authority specified for supplementary search before it starts the supplementary international search, it may, however, exclude from the search any claims which were not the subject of the main international search.

Box No. V: Check List

IP 8.025. What is the purpose of the check list?

Box No. V should be completed by the applicant to allow the International Bureau to verify the completeness of the documents accompanying the supplementary search request and, in particular, to check whether a translation of the international application and a sequence listing, where indicated in the respective check-boxes, are actually received.

Box No. VI: Signature of Applicant, Agent or Common Representative

IP 8.026. Who must sign the supplementary search request?

Rule 90.3(a),

Rule 92.1

The supplementary search request must be signed by one of the applicants or by the appointed agent. It should be noted, however, that additional signatures may be required for withdrawal of the supplementary search request (refer to paragraphs IP 11.048 to IP 11.061).

Notes to the Supplementary Search Request Form

IP 8.027. What are the Notes to the supplementary search request form?

The Notes to the supplementary search request form are intended to facilitate the completion of that form. They outline, in relation to each Box of that form, what indications are required and how they are to be made. The Notes are not required to be submitted with the supplementary search request.

Fee Calculation Sheet

IP 8.028. What is the fee calculation sheet?

The fee calculation sheet is intended to help the applicant calculate the total amount of fees payable to the International Bureau. The sheet is usually annexed to the supplementary search request form (refer to IP 8.006). It is strongly recommended that the applicant complete the fee calculation sheet and submit it to the International Bureau. This will help the International Bureau to verify the fee calculations and identify any errors. The Notes to the fee calculation sheet provide details about completion of the sheet. For more information about the payment of fees generally, refer to paragraphs IP 5.184 to IP 5.199.

FEES

IP 8.029. Which fees must be paid by the applicant?

Rule 45bis.2(a),

Rule 45bis.3(a)

Two fees must be paid for supplementary international search: (i) the supplementary search fee for the benefit of the Authority specified for supplementary search; and (ii) the supplementary search handling fee for the benefit of the International Bureau. The supplementary search fee charged by each Authority varies and is fixed by the Authority in its agreement with the International Bureau (refer to https://www.wipo.int/en/web/pct-system/access/isa_ipea_agreements and Annex SISA). The supplementary search handling fee is fixed by the PCT Assembly and listed in the Schedule of Fees annexed to the PCT Regulations.

IP 8.029A. Is any fee reduction available?

An applicant is entitled, in accordance with the Schedule of Fees, item 5, to a reduction of 90% of the supplementary search handling fee if he/she is a natural person and a national of and resides in a State that is listed as being a State whose per capita gross domestic product is below 25,000 US dollars (according to the most recent 10-year average per capita gross domestic product figures at constant 2005 US dollars values published by the United Nations), and whose nationals and residents who are natural persons have filed less than 10 international applications per year (per million population) or less than 50 international applications per year (in absolute numbers) according to the most recent 5-year average yearly filing figures published by the International Bureau or if he/she is, whether a natural person or not, a national of and resides in a State that is listed as being classified by the United Nations as a least developed country. (For a list of States whose nationals and residents are eligible for the fee reduction, refer to https://www.wipo.int/documents/d/pct-system/docs-en-fee-reduction-january.pdf ). If there are several applicants, each must satisfy one or the other of the above-mentioned criteria. However, it should be noted that an applicant is only entitled to the reduction if, at the time of filing the supplementary search request, the applicant is the true and only owner of the application and under no obligation to assign, grant, convey or license the rights in the invention to another party which is not eligible for the fee reduction. If the applicant is, or all applicants are, entitled to the reduction of the supplementary search handling fee, this reduction applies on the basis of the indications of name, nationality and residence given in Box No. II of the supplementary search request, without the need for a specific request to be made.

IP 8.030. When must the applicable fees be paid?

Both the supplementary search fee and the supplementary search handling fee must be paid to the International Bureau within one month from the date of receipt of the supplementary search request. If they are not paid in full within that time limit, a late payment fee will become due (refer to Form PCT/IB/377). If the fees remain unpaid, the International Bureau will consider the request not to have been submitted.

IP 8.031. In which currencies may fees for supplementary international search be paid?

Payment of fees will only be accepted in Swiss francs. The amount payable is the amount applicable on the date of payment.

IP 8.032. Can fees already paid be refunded in some circumstances?

Rule 45bis.2(d),

Rule 45bis.3(d),

Rule 45bis.3(e)

If, before the International Bureau has transmitted the relevant documents to the Authority specified for supplementary search, the international application is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or considered not to have been submitted, the International Bureau will refund both the supplementary search fee and the supplementary search handling fee to the applicant. If, before the Authority specified for supplementary search has started the search, the supplementary search request is considered not to have been submitted, that Authority will refund the supplementary search fee to the applicant in accordance with its agreement with the International Bureau (refer to paragraph IP 8.029).

PROCESSING OF THE SUPPLEMENTARY SEARCH REQUEST BY THE INTERNATIONAL BUREAU

IP 8.033. What does the International Bureau check upon receipt of the supplementary search request?

Rule 45bis.1(e)

Following receipt of the supplementary search request, the International Bureau will check whether the request was received within the prescribed time limit, that is, before the expiration of 22 months from the priority date. It will verify whether the Authority specified is competent to carry out the search, that is, an International Authority which is prepared to offer supplementary international searches and which is not the International Searching Authority that carried out the main international search. If these requirements have not been complied with, it will declare the supplementary search request not to have been submitted, and will notify the applicant accordingly using Form PCT/IB/379 (also refer to paragraphs IP 8.003 to IP 8.005).

IP 8.034. What happens if there are other defects in the supplementary search request?

Rule 45bis.4(a)

The International Bureau will then check whether the supplementary search request has clearly indicated the name and address of at least one applicant and of the agent (if any), the title of the invention, the international filing date and the international application number. It will also verify whether a translation of the international application is needed to carry out the supplementary international search, and where necessary, whether that translation has been furnished. If any of these requirements have not been complied with, it will invite the applicant to correct these defects within one month from the date of the invitation using Form PCT/IB/378 (also refer to paragraphs IP 8.013 to IP 8.016, IP 8.018 to IP 8.020, and IP 8.023).

IP 8.035. What happens if the fees are not paid or not paid in full?

Rule 45bis.4(b),

Rule 45bis.4(c)

The International Bureau will also check whether the supplementary search fee and the supplementary search handling fee have been paid in full. If not, and the one month time limit has not expired, it will invite the applicant to pay the amount required to cover those fees using Form PCT/IB/376. If the one month time limit has already expired, the International Bureau will issue Form PCT/IB/377, inviting the applicant to pay the amount required together with a late payment fee equal to 50% of the supplementary search handling fee, within one month from the date of the invitation (refer also to paragraphs IP 8.029 and IP 8.030).

IP 8.036

Rule 45bis.4(d)

If the applicant fails to correct these defects, or does not pay the fees in full, before the expiration of the respective time limit, the supplementary search request will be considered not to have been submitted, and the International Bureau will make a declaration to this effect and notify the applicant accordingly using Form PCT/IB/379.

IP 8.037. When will the International Bureau transmit the relevant documents to the Authority specified for supplementary search?

Rule 45bis.4(e)

Once the International Bureau finds that all of the preceding requirements (refer to paragraphs IP 8.033 to IP 8.035) have been complied with, it will transmit the relevant documents (refer to paragraph IP 8.038) to the Authority specified for supplementary search, promptly after it receives the international search report, or after the expiration of 17 months from the priority date, whichever occurs first. If some documents are still not available to it at the above time, it will promptly transmit them once they are available.

IP 8.038. Which documents are transmitted by the International Bureau to the Authority specified for supplementary search?

Rule 45bis.4(e),

Rule 45bis.4(f)

The International Bureau will transmit to the Authority specified for supplementary search a copy of each of the following, where applicable:

(i) the supplementary search request,

(ii) the international application,

(iii) any sequence listing furnished therewith,

(iv) any translation furnished which is to be used as the basis for the supplementary international search,

(v) the international search report and the written opinion (including an English translation),

(vi) any invitation by the International Searching Authority to pay additional fees concerning unity of invention, and

(vii) any protest by the applicant against the opinion of the International Searching Authority concerning unity of invention, and the decision thereon by the same Authority.

SUPPLEMENTARY INTERNATIONAL SEARCH PROCEDURE

IP 8.039. When will the Authority start work on the supplementary international search?

Rule 45bis.5(a)

On receipt of the relevant documents from the International Bureau, the Authority specified for supplementary search should promptly begin its work (refer to paragraph IP 8.037). However, if on receipt of the relevant documents, the international search report and written opinion are not yet available, the Authority may postpone the start of the search until it receives these documents. Work on the supplementary international search must, however, commence promptly after the expiration of 22 months from the priority date, regardless of the lateness of the international search report and written opinion. The absence of those documents will be noted on the international search report.

IP 8.040. Which documents may the applicant submit directly to the Authority specified for supplementary search?

Rule 13ter.1,

Rule 45bis.4(e),

Rule 45bis.5(c)

The applicant should furnish all the required documents to the International Bureau with the supplementary search request (refer to paragraph IP 8.012), and the International Bureau will transmit these, together with all other relevant documents, to the Authority specified for supplementary search (refer to paragraph IP 8.038). Any amendments filed under Article 19 or 34 will not be taken into account. If, however, the applicant did not submit a copy of the sequence listing complying with the prescribed standard in a language accepted by that Authority to the International Bureau, together with the request for supplementary search (refer to paragraph IP 8.012), the applicant will be invited by the Authority specified for supplementary search to submit such a copy to the said Authority. Failure to comply with this requirement may result in that Authority only carrying out the supplementary international search to the extent that a meaningful search can be carried out without the sequence listing (refer also to paragraphs IP 7.005 to IP 7.012 for more relevant information).

IP 8.041. What are the consequences if the Authority finds that carrying out the supplementary international search is excluded by a limitation or condition?

Rule 45bis.5(g),

Rule 45bis.5(h),

Rule 45bis.9

If the Authority specified for supplementary search finds that carrying out the search is entirely excluded by a limitation or condition set out in its Agreement with the International Bureau (refer to https://www.wipo.int/en/web/pct-system/access/isa_ipea_agreements), other than a limitation under Article 17(2), it will declare that the supplementary search request be considered not to have been submitted, and promptly notify the applicant and the International Bureau accordingly. If, however, the Authority finds that carrying out the search is not entirely excluded, it may restrict the search to certain claims only and will indicate this fact in the supplementary international search report.

IP 8.042. May the Authority refuse to search certain claims?

Article 17(2)(a),

Rule 45bis.5

In certain circumstances the Authority is not obliged to conduct a supplementary search on some or all of the claims in the international application. These include subject matter that the Authority would not search in a main international search and claims which have not been searched by the main searching Authority. If the Authority specified for supplementary search finds that it is not obliged to search any of the claims, it will declare that no supplementary international search report will be established (refer to paragraph IP 8.048) and promptly notify the applicant and the International Bureau accordingly.

IP 8.043. What is the scope of the supplementary international search?

Rule 45bis.5(f)

The supplementary international search shall cover at least the documentation indicated for that purpose in the Agreement between the International Authority acting as the Authority specified for supplementary search and the International Bureau (refer to https://www.wipo.int/en/web/pct-system/access/isa_ipea_agreements). For some Authorities this may comprise all PCT documentation plus other patent and technical documents held by that Authority, while others will focus specifically on documentation in certain languages (refer to Annex SISA).

IP 8.044. What will happen where the main International Searching Authority finds that the international application does not comply with the requirement of unity of invention?

Rule 13,

Rule 45bis.5(e)

If the main International Searching Authority finds that the international application does not comply with the requirement of unity of invention and the applicant did not pay any additional search fees, the Authority specified for supplementary search is not obliged to carry out any supplementary search on claims which have not been searched by the main International Searching Authority. The requirements for unity of invention are set out in detail in paragraphs IP 5.114 to IP 5.123. The Authority specified for supplementary search is not, however, obliged to agree with the main International Searching Authority and may make its own finding on unity of invention.

IP 8.045. What will happen where the Authority specified for supplementary search considers that the international application does not comply with the requirement of unity of invention?

Rule 45bis.6(a),

Rule 45bis.6(c)

If the Authority specified for supplementary search finds that the international application does not comply with the requirement of unity of invention (the requirements for unity of invention are set out in detail in paragraphs IP 5.114 to IP 5.123) it will not invite the applicant to pay additional fees, as the International Searching Authority does in the main international search. Instead, it will establish the supplementary international search report on those parts of the international application that relate to the invention first mentioned in the claims (“main invention”), and notify the applicant of its opinion that the international application does not comply with the requirement of unity of invention and specify the reasons for that opinion. The applicant may, within one month from the date of the notification, request the Authority to review its opinion, subject to the payment of any review fee (refer to Annex SISA). The review fee will be refunded in full where the opinion is found to be unjustified (refer to paragraph IP 8.046), and a revised supplementary international search report will be issued, where appropriate.

IP 8.046. What will happen when the applicant requests a review of the opinion of the Authority on unity of invention?

Rule 45bis.6(d),

Rule 45bis.6(e)

If the applicant requests a review of the opinion of the Authority specified for supplementary search that the international application does not comply with the requirement of unity of invention and pays any required review fee, the Authority will review its opinion on unity of invention. The review may not be carried out only by the person who made the decision which is the subject of the review. The result of the review will be notified to the applicant. If the opinion is found to be entirely unjustified, the Authority will establish the supplementary international search report on all parts of the international application and refund the review fee to the applicant. If the opinion is found to be partially unjustified, and the Authority still considers that the international application does not comply with the requirement of unity of invention, it will establish a corrected supplementary international search report where necessary. Independent of the review, the applicant may always request that the text of both the request for review and the decision thereon be communicated to the designated Offices together with the supplementary international search report.

IP 8.047. When is the supplementary international search report established?

Rule 45bis.7(a)

The supplementary international search report must be established within 28 months from the priority date using Form PCT/SISA/501.

IP 8.048. What happens when the Authority specified for supplementary search declares that no supplementary international search report will be established?

Rule 45bis.7(a)

A declaration that no supplementary international search report will be established must be made within 28 months from the priority date using Form PCT/SISA/502 (refer to paragraphs IP 8.003 and IP 8.004).

IP 8.049. What does the supplementary international search report contain?

Rule 45bis.7(d),

Rule 45bis.7(e)

The supplementary international search report is generally similar in contents and appearance to the main international search report (refer to paragraph IP 7.024). It does not, however, contain comments on the title of the invention or the abstract, nor does it contain the classification of the subject matter. Further, it does not repeat relevant prior art documents which have already been cited in the international search report, unless this is necessary because of new relevance when read in conjunction with other documents discovered during the supplementary international search. On occasion, the supplementary international search report may contain more detailed explanations concerning citations of documents than those in the main international search report. This is due to the fact that, unlike the main international search, no written opinion is established with the supplementary international search report, and these additional details are helpful for a full understanding of the prior art. Furthermore, it may contain additional comments on the scope of the supplementary search which has been conducted. This is of particular relevance when the supplementary search has been carried out without the benefit of the main international search report.

IP 8.050. How can the applicant obtain copies of the documents cited in the supplementary international search report?

Article 20(3),

Rule 44.3,

Rule 45bis.7

Many Authorities which have stated their preparedness to carry out supplementary international search transmit such copies automatically, without extra charge to the applicant, together with the supplementary international search report. Annex SISA indicates whether an Authority charges a fee for furnishing copies of these documents.

IP 8.051. How is the supplementary international search report transmitted?

Article 20(1),

Rule 45bis.8,

Rule 47.1(d)

The Authority specified for supplementary search will, on the same day, transmit one copy of the supplementary international search report (or, the declaration that no supplementary international search report will be established) to the International Bureau and one copy to the applicant. The International Bureau will include the supplementary international search report in its communication to each designated Office, as if it were part of the international search report, unless the designated Office has waived this requirement.

IP 8.052. Is a copy of the supplementary international search report sent to the International Preliminary Examining Authority?

Rule 45bis.8(b),

Rule 45bis.8(c),

Section 420(b)

Where the applicant files a demand for international preliminary examination, and the International Preliminary Examining Authority is not the same Authority as that specified for supplementary search, the International Bureau will, promptly on receipt of the supplementary international search report, transmit a copy of said report to the International Preliminary Examining Authority. The report, together with the international search report, will all be taken into account by that Authority during the process of international preliminary examination. Note, however, if that Authority has already begun to draw up the international preliminary examination report, it need not take into account the supplementary international search report for the purposes of that report.

IP 8.053. Will the supplementary international search report be published?

Article 20(3),

Rule 44.3,

Rule 94.1(b)

The supplementary international search report is not published per se nor as part of the international publication. Nevertheless, once the international application has been published, and the supplementary international search report has been received, it is made available for public inspection by the International Bureau on PATENTSCOPE (https://www.wipo.int/patentscope/en/).

CHAPTER 9: INTERNATIONAL PUBLICATION, AMENDMENT OF CLAIMS, AND OTHER PROCESSING OF THE INTERNATIONAL APPLICATION BY THE INTERNATIONAL BUREAU

GENERAL

IP 9.001. What are the main procedural steps at the International Bureau?

The main procedural steps that any international application goes through at the International Bureau are the following:

Rule 22.1,

Rule 24.2

(i) the International Bureau monitors the receipt of the record copy of the international application and notifies the fact, and the date of receipt, to the applicant and the authorities concerned; for details, refer to paragraph IP 9.002;

Article 19,

Rule 46

(ii) the applicant may amend the claims of the international application under Article 19 by means of a communication addressed to the International Bureau; for details, refer to paragraphs IP 9.004 to IP 9.011;

Article 21,

Rule 48

(iii) the international application is published by the International Bureau (such publication usually takes place just after the expiration of 18 months from the priority date); for details, refer to paragraphs IP 9.012 to IP 9.024;

(iv) copies of the international application, the international search report and the written opinion of the International Searching Authority (in the form of the international preliminary report on patentability (Chapter I of the PCT; refer to (v) and (vi) below) pertaining to it are transmitted by the International Bureau to the designated Offices; for details, refer to paragraphs IP 9.028 and IP 9.029;

Rule 44bis

(v) where a preliminary examination report (international preliminary report on patentability (Chapter II of the PCT)) has not been established, the International Bureau issues an international preliminary report on patentability (Chapter I of the PCT) (refer to paragraph IP 7.031);

Rule 44bis.2,

Rule 44bis.3

(vi) copies of that report are transmitted by the International Bureau to the applicant, and to the designated Offices in accordance with Rule 93bis, but not before the expiration of 30 months from the priority date; the International Bureau may also, if so requested by any designated State, transmit a copy of a translation into English of the international preliminary report on patentability (Chapter I of the PCT) to any interested designated Office and to the applicant at the same time as it communicates the report to that Office;

(vii) where a demand for international preliminary examination has been filed, the International Bureau notifies the elected Offices, transmits the international preliminary report on patentability (Chapter II of the PCT) and related documents to them, and makes a translation of that report into English (if required by any elected Office); for further details, refer to paragraphs IP 10.006, IP 10.045, IP 10.078 IP 10.079 and IP 10.079A.

IP 9.002. When and to whom does the International Bureau notify its receipt of the record copy of the international application?

Rule 24.2,

Rule 47.1(a-bis),

Rule 93bis.1

When are designated Offices notified? How the International Bureau receives the record copy and how it monitors that receipt is explained in paragraphs IP 6.057 and IP 6.058. The record copy of the international application should normally reach the International Bureau before the expiration of 13 months from the priority date. After receiving the record copy, the International Bureau notifies the applicant, the receiving Office and the International Searching Authority (unless it has informed the International Bureau that it wishes not to be so notified) of the fact and of the date of receipt of the record copy. All those notifications are effected promptly after the International Bureau’s receipt of the record copy.

IP 9.003. What should the applicant do when receiving the notification of receipt of the record copy?

Rule 24.2(a),

Rule 53.7,

Rule 90bis.2

The notification sent to the applicant (Form PCT/IB/301) contains the list of the designated Offices. This notification will allow the applicant to check whether the fact that certain designations (DE, JP and/or KR) were specifically excluded in the request, and/or any subsequent withdrawal of designations have been properly reflected. The applicant may wish to withdraw the designation of any designated State at this point, or at any time prior to the expiration of 30 months from the priority date.

AMENDMENT OF THE CLAIMS UNDER ARTICLE 19

IP 9.004. When and how may the claims of the international application be amended in the international phase?

The applicant is entitled, under Article 19, to one opportunity to amend the claims of the international application in the international phase. (Further opportunities to amend the claims, and also the description and the drawings, are available during the international phase under Article 34 if, and only if, the applicant files a demand for international preliminary examination – refer to paragraphs IP 9.011, IP 10.024 to IP 10.028, and IP 10.067 to IP 10.071). Any amendment to the claims, under Article 19, must be filed with the International Bureau – not with the receiving Office or the International Searching Authority. The amendments must be in the language in which the international application is published (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish – refer to paragraphs IP 9.017 to IP 9.019). The opportunity to make amendments under Article 19 is available after the applicant has received the international search report and the written opinion of the International Search Authority, and remains available until the end of 16 months from the priority date or two months after the transmittal (that is, the date of mailing) of that report and opinion, whichever expires later. Amendments received by the International Bureau after the time limit are still accepted if they have been received before the technical preparations for international publication have been completed. Amendments to the claims under Article 19 are not allowed where the International Searching Authority has declared, under Article 17(2)(a), that no international search report would be established. However, it should be noted that, where an international search report has been established but nevertheless also contains, in Box No. II, a declaration under Article 17(2)(b) that certain claims were found unsearchable, either because they relate to subject matter not required to be searched by the Authority or because they relate to parts of the international application that do not comply with the prescribed requirements to such an extent that a meaningful international search could not be carried out, amendments under Article 19 are allowed in relation to the claims that were searched (refer to paragraph IP 7.014). Upon entry into the national phase, if the claims have been amended under Article 19, a translation of both the claims as filed and as amended (in the form of a translation of the complete set of claims furnished under Rule 46.5(a) in replacement of all the claims originally filed) and any statement may have to be furnished to the designated/elected Offices (refer to National Chapters (Summaries)). (As to amendments in the national phase, refer to paragraphs IP 5.111, IP 5.127 and IP 5.162, the National Phase and National Chapters.) The submission of Article 19 amendments should comprise:

(i) a complete set of claims in replacement of the claims originally filed (refer to paragraph IP 9.005)

(ii) a letter which must indicate the differences between the claims as filed and those as amended plus the basis for the amendments (refer to paragraphs IP 9.005 to IP 9.006A)

(iii) an optional statement under Article 19 (refer to paragraphs IP 9.007 to IP 9.008)

IP 9.005

Rule 6.1,

Rule 46.5,

Section 205

When filing amendments to the claims under Article 19, the applicant is required to file a sheet or sheets containing a complete set of claims in replacement of the claims originally filed. The replacement sheet or sheets must be accompanied by a letter drawing attention to the differences between the claims as filed and the claims as amended. It must also indicate the basis for the amendment to the claims with specific references to particular parts of the application (description, claims, drawings) as originally filed (refer to paragraph IP 9.006). Where an amendment results in the cancellation of an entire sheet of the international application as originally filed, the amendment (that is, the cancellation) is evidenced only by the letter addressed to the International Bureau. Amendments may consist in the cancellation of one or more entire claims, in the addition of one or more new claims, or in the amendment of the text of one or more of the claims as filed. All the claims appearing on a replacement sheet must be numbered in Arabic numerals (corresponding to the order of the claims). Where a claim is cancelled, no renumbering of the other claims is required. However, where the applicant does renumber claims, they must be renumbered consecutively.

IP 9.006. What should the accompanying letter contain?

Rule 46.5,

Section 205

The letter, which must accompany the replacement sheets containing amendments to the claims, must indicate firstly the differences between the claims as filed and those as amended and secondly the basis for the amendments in the application as filed. This should be done by stating, in connection with each claim appearing in the international application, whether:

(i) the claim is unchanged,

(ii) the claim is cancelled;

(iii) the claim is new;

(iv) the claim replaces one or more claims as filed;

(v) the claim is the result of the division of a claim as filed, etc.

The replacement sheets containing the amended claims should not, however, contain marked-up text; they should contain clean text only. This should be followed by an indication of the basis for the amendments in the application as filed. The basis for the amendments has to be indicated so that the examiner may, by consulting those precise references in the application, assess whether the amendments contain subject-matter which extends beyond the disclosure of the application as filed. Therefore, non-specific indications such as “refer to the description as filed” or “refer to the claims as filed” are generally not considered sufficient for an indication of the basis for the amendment. Example:

“Claim 1 amended; claims 2 to 7 unchanged; claims 8 and 9 amended; claims 10 to 14 cancelled; claims 15 to 17 unchanged; new claim 18 added.

(i) Basis for the amendment: Claim 1 has been amended at lines 4 and 11 to 14 and now indicates that the filter comprises a periodic backwashing means serially coupled to a first and second chamber. The basis for this amendment can be found in original claims 2 and 4 as filed.

(ii) Basis for the amendment: Concerning amended claims 8 and 9, the indication of ‘quick-fire piston’ is in paragraph Nos. 2 and 19 in the description as filed.

(iii) Basis for the amendment: Claim 18 is new, the indication is in drawing No. III of the original application.”

IP 9.006A. What happens where the international application is not in the same language as the accompanying letter?

Rule 92.2(d)

The accompanying letter should be furnished in English or French. References may, however, be made to the international application in the language of the international application where to do so will facilitate the work of the examiner in finding the reference, for example:

(i) Basis for the amendment: Concerning amended claim 2, the indication of “請求項1に基づくパーキングアシストシステム” is in paragraph Nos. 23, 46 and 85 in the description as filed.

IP 9.007. What is a statement accompanying an amendment?

Article 19(1),

Rule 46.4,

Rule 48.2(a)(vi)

Any amendment may be accompanied by a brief statement by the applicant explaining the amendment and indicating any impact it might have on the description and the drawings. Such a statement is published together with the international application itself (refer to paragraphs IP 9.012 to IP 9.024). Statements not referring to a specific amendment are not permitted. The statement must not exceed 500 words if in English or when translated into English. It may not contain disparaging comments on the international search report or on the relevance of any of the citations contained in that report. References to certain citations in the report may be made only in connection with an amendment made to a specific claim. The statement must be in the language in which the international application is published (refer to paragraphs IP 9.017 and IP 9.018).

IP 9.008

Rule 46.4(a),

Rule 48.2(a)(vi)

A statement explaining the amendment is not to be confused with, and must be clearly distinguished from, the letter indicating the differences between the claims as filed and those as amended and the basis for the amendment (refer to paragraph IP 9.006). It is also distinct from the statement concerning amendments which must be included in a demand for international preliminary examination (refer to paragraphs IP 10.024 to IP 10.027). It must therefore be identified as such by a heading “Statement under Article 19(1).” Where the statement does not comply with the requirements, it is neither published by the International Bureau nor communicated to the designated Offices.

IP 9.009. May the amended claims include new matter?

Article 19(2),

Article 19(3),

Rule 66.2(a)(iv)

The PCT provides that amendments are not to go beyond the disclosure in the international application as filed. This requirement is not directly enforceable during Chapter I of the international phase, but failure to comply with it may have adverse consequences for the applicant during the international preliminary examination and in the national phase (refer to paragraphs IP 10.070 and IP 11.047 below).

IP 9.009A. What happens where the replacement sheets were not accompanied by a letter?

Rule 46.5(b),

Rule 70.2(c-bis)

The PCT requires that replacement sheets filed with Article 19 amendments must be accompanied by a letter indicating the basis for the amendment to the claims (refer to paragraph IP 9.006). Substantive compliance with this requirement is not checked during the international phase unless the applicant requests international preliminary examination but failure to comply with it may have adverse consequences for the applicant during international preliminary examination and in the national phase (also refer to paragraph IP 11.047A below).

IP 9.010. Should a copy of amendments under Article 19 be filed with the International Preliminary Examining Authority?

If the applicant submits a demand for international preliminary examination, he/she should file a copy of the amendments to the claims under Article 19, the letter which accompanied the amended claims and the statement under Article 19(1) (if any) with the International Preliminary Examining Authority with the demand (if the amendment has already been filed), or at the same time as filing the amendment with the International Bureau (if the amendment is filed after the demand). Where the International Preliminary Examining Authority requires a translation of the international application under Rule 55.2, the applicant should also furnish a translation of any amendments made under Article 19 and any letter that accompanied the amendments if he/she wishes those amendments to be taken into account for international preliminary examination. The International Bureau transmits a copy of any amendment, accompanying letter and any statement under Article 19 received prior to the filing of the demand to the International Preliminary Examining Authority unless that Authority indicates that it has already received a copy. If an amendment, the accompanying letter and any statement under Article 19 are received after the demand has been filed, the International Bureau transmits a copy to the International Preliminary Examining Authority in any event; but timely filing of a copy of these documents by the applicant direct with that Authority ensures that the international preliminary examination will proceed without undue delay or uncertainty. Refer to paragraphs IP 10.024 to IP 10.028 in connection with the demand form.

IP 9.011. In what circumstances should the claims be amended under Article 19?

Rule 48.2(f),

Rule 66.1(b)

Since any amendments of the claims under Article 19 are published with the international application (refer to paragraph IP 9.015), such amendment may be useful to the applicant if there is a reason to better define the scope of the claims for the purposes of provisional protection in those designated States whose national law provides for such protection (refer to paragraph IP 9.024). It is to be noted that, where international preliminary examination takes place, the applicant has the right under Article 34(2)(b) to file amendments to the claims (as well as to the description and the drawings) with the International Preliminary Examining Authority, regardless of whether or not he/she has filed amendments to the claims under Article 19 with the International Bureau (refer to paragraphs IP 10.024, IP 10.028, IP 10.067 to IP 10.071, and IP 11.045 to IP 11.047). There is therefore normally no need to amend the claims under Article 19 where a demand for international preliminary examination is filed, unless there is a particular reason related to provisional protection or otherwise for amending the claims before international publication.

INTERNATIONAL PUBLICATION

IP 9.012. When and how is the international application published by the International Bureau?

International applications are published by the International Bureau except in any of the following cases:

Rule 20.4

(i) if the international application is not accorded an international filing date by the receiving Office (refer to paragraphs IP 6.005 to IP 6.012);

Article 21(5)

(ii) if the international application is considered withdrawn before the technical preparations for publication have been completed;

Article 21(5)

(iii) if the international application is withdrawn by the applicant (refer to paragraphs IP 11.048 and IP 11.049) before the technical preparations for publication have been completed;

Article 64(3)

(iv) if, at the time of the completion of the technical preparations for publication, the only designated State remaining is the United States of America (since the United States of America made a declaration under Article 64(3)(a)), unless any of the exceptions specified in Article 64(3)(c) applies.

IP 9.013. When does international publication take place?

Article 21(2),

Rule 48.4,

Section 113

International publication takes place promptly after the expiration of 18 months from the priority date. However, when the applicant asks the International Bureau to publish the international application earlier, the International Bureau does so. If the applicant asks for early publication and the international search report, or the declaration referred to in Article 17(2)(a), is not available for publication with the international application, a special fee, the amount of which is indicated in Annex B (IB), is payable to the International Bureau. Normally, international publication takes place every Thursday, except when the International Bureau is closed for business. In such cases, the publication date will be announced in the PCT Newsletter.

IP 9.014. When are the technical preparations for international publication completed?

The technical preparations for publication are completed by the 15th day prior to the date of publication. However, any change that should be taken into consideration for publication on a specific publication date should reach the International Bureau at least one day before the 15-day time limit to allow the International Bureau to process the change. The last day for receipt of such changes will therefore always be on Tuesday at midnight (Central European time (CET)), i.e. 16 days before the publication date when publication falls on a Thursday (or 17 days before the publication date when publication exceptionally takes place on a Friday because the International Bureau is closed for business on a Thursday).

IP 9.015. What constitutes international publication?

Publication of international applications filed under the PCT takes place wholly in electronic form. The published international application will include any declaration filed under Rule 4.17 and, if available at the time of publication, the international search report or declaration by the International Searching Authority to the effect that no international search report will be established, and also any amendment, including any statement, under Article 19. Where the time limit for amending the claims has not expired at the time of the completion of the technical preparations for publication, the international application is published with an annotation accordingly, and any amendment received within the time limit is published later. Similarly, if the international search report or declaration by the International Searching Authority is not available, the international application is published with an annotation accordingly and the report or declaration is published separately after it has been received by the International Bureau. Each published international application is assigned an international publication number consisting of the code “WO” followed by an indication of the year and a serial number (for example, WO 2004/123456). For further details governing international publication, refer to Article 21 and Rule 48.

IP 9.016. Where is my international application published?

Rule 86.1(i),

Section 407(b)

On the same date the international application is published, the bibliographic data, the title of the invention, the abstract and a characteristic drawing (if any) of each published international application are made available on PATENTSCOPE.

IP 9.016A. Can the applicant request that certain information be omitted from international publication?

Rule 26.4,

Rule 48.2(l)

The applicant can make a reasoned request to the International Bureau to omit certain information from publication. The applicant should preferably use Form PCT/IB/384 for such a request, accompanied by replacement sheets from which the relevant information has been omitted, except for cases where the omission of information would result in the omission of an entire sheet, and an accompanying letter drawing attention to the differences between the replaced sheet(s) and the replacement sheet(s). In the request, the applicant must also explain why the information does not obviously serve the purpose of informing the public about the international application, that the publication of such information would clearly prejudice the personal or economic interests of a person and that there is no prevailing public interest to have access to that information. The request for omission of information from publication must be received by the International Bureau prior to the completion of technical preparations for international publication (refer to paragraph IP 9.014).

If the International Bureau finds that the reasoned request satisfies all of the above-mentioned criteria, it will omit that information from international publication (and/or public file access, refer to paragraph IP 11.073A) and inform the applicant of its decision (form PCT/IB/385). If the International Bureau decides not to omit the requested information from international publication, it will inform the applicant accordingly (form PCT/IB/386).

Where the International Bureau has omitted information from international publication, and that information is also contained in the file of the international application held by the receiving Office, the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, the International Bureau will also promptly notify that Office or Authority accordingly, so that they do not make that information publicly available either.

IP 9.017. In what language is the international application published?

If the international application is filed in Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish, it is published in the language in which it was filed. Where the language of publication is Arabic, Chinese, French, German, Japanese, Korean, Portuguese, Russian or Spanish, the International Bureau prepares English translations of the title of the invention, the abstract and the international search report (or the declaration referred to in paragraph IP 7.014), and includes the translations in the published international application. Where the applicant wishes to propose an English translation of the title of the invention, she/he may furnish the suggested translation to the International Bureau before the expiration of 14 months from the priority date. The International Bureau shall, to the extent possible, take the suggested translation into account in the preparation of the translation. The International Bureau also prepares, where applicable, French translations of the title and the abstract. The title and abstract are published on PATENTSCOPE.

IP 9.018

Rule 48.3(b)

If the international application is filed in a language which is a language other than Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish and is a language accepted by the International Searching Authority for international search, the applicant must furnish a translation of the international application into a language of publication accepted by the receiving Office for that purpose. The international application will be published in that language of translation only (refer to paragraphs IP 6.020 to IP 6.023).

IP 9.019

If the international application is filed in a language which is neither a language of publication (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish) nor a language accepted by the International Searching Authority for international search, it is published in the language of the translation furnished by the applicant (refer to paragraphs IP 6.013 to IP 6.020).

IP 9.020

Rule 86.2(a)

The bibliographic data, titles and abstracts, and any figure which appears on the front page of each published international application are published in English and in French on PATENTSCOPE.

IP 9.021. How can copies of the published international application be obtained?

Rule 86.1(i),

Rule 86.4

In addition to downloading the published international application from the WIPO website anyone may obtain a copy of the published international application by ordering it from the International Bureau, preferably referring to its international publication number (if available).

IP 9.022. How can the published international application in electronic form be accessed?

Rule 86.1(i),

Rule 86.4

The published international application in electronic form is available on PATENTSCOPE.

IP 9.023. How can copies of the priority document be obtained?

Rule 4.10(b),

Rule 17.2(c)

Third parties who wish to receive a copy of the priority document may apply to the Office with which the earlier application was filed, to certain designated Offices or to the International Bureau. The International Bureau makes copies of priority documents, after international publication of the international application available on PATENTSCOPE, or on paper upon request and subject to reimbursement of the cost. However, the International Bureau does not furnish such copies if, prior to the international publication, the international application was withdrawn, or the relevant priority claim was withdrawn or was considered not to have been made, or the relevant declaration of the priority claim was cancelled.

IP 9.023A. How can international publication be prevented?

Article 21(5),

Rule 90bis.1(c)

The applicant may prevent international publication by withdrawing the international application, provided that the applicant submits a notice of withdrawal and that the notice of withdrawal reaches the International Bureau before the completion of technical preparations for that publication (refer to paragraph IP 9.014). It is strongly recommended to send the notice of withdrawal directly to the International Bureau through ePCT (signing in with strong authentication at https://pct.wipo.int/ePCT), preferably using the corresponding Action. Using an ePCT Action will ensure that the international application is immediately flagged as withdrawn in the International Bureau’s processing system and will prevent publication if submitted before the completion of technical preparations for international publication. In the rare situation where ePCT cannot be used, an alternative document upload system is available at https://pct.wipo.int/ePCTExternal/pages/UploadDocument.xhtml; the notice of withdrawal may state that the withdrawal is to be effective only on the condition that international publication can still be prevented. In such a case the withdrawal is not effective if this condition cannot be met – that is, if the technical preparations for international publication have already been completed. The same effect may possibly be achieved if, for example through non-payment of the applicable fees, the international application is considered withdrawn and the receiving Office so declares (Form PCT/RO/117). Issuance of this declaration by the receiving Office alone, however, will not prevent international publication unless the declaration is also received by the International Bureau before completion of technical preparations for international publication (Rule 29.1(v)). International publication may be postponed by withdrawing the priority claim as outlined in paragraphs IP 11.056 and IP 11.057.

IP 9.024. What are the legal effects of international publication?

Article 29

Article 29 has the effect of ensuring, with certain qualifications, that provisional protection is available after the international publication of an international application in the same way as it is after national publication of unexamined national applications. The qualifications are such as to enable Contracting States to make such protection conditional on the furnishing of translations (in some circumstances), on the expiration of 18 months from the priority date, and/or on receipt by the designated Office of a copy of the international application as published under the PCT. For further details, refer to Article 29. Annexes B indicate what the position is in each Contracting State.

IP 9.025. Can access be gained at the International Bureau to the file of an international application?

Rule 94

For international applications filed before 1 July 1998, the applicant or any person authorized by the applicant may, subject to reimbursement of the cost of the service, obtain copies from the International Bureau of any document contained in its file. For international applications filed on or after 1 July 1998, the International Bureau makes certain documents in its file available on PATENTSCOPE together with the published international application. In addition, it will, at the request of any person but not before the international publication of the international application and subject to Article 38, furnish, upon reimbursement of the cost of the service, copies of any document contained in its file, except for information which has been omitted from international publication or public file access following a reasoned request by the applicant (refer to paragraphs IP 11.072 to IP 11.074 for details concerning the confidentiality of international applications).

IP 9.026. [Deleted]

IP 9.027. Can I get access to a copy of the international preliminary report on patentability (Chapter II of the PCT)?

Rule 94.1(c)

Concerning access to the international preliminary report on patentability (Chapter II of the PCT), the International Bureau, if so requested by an elected Office, makes copies of that report available on PATENTSCOPE to third parties on behalf of that Office, but not before the expiration of 30 months from the priority date. A number of elected Offices have made this request to the International Bureau, refer to https://www.wipo.int/en/web/pct-system/texts/access_iper ; similarly, the International Bureau also makes related documents received from the International Preliminary Examining Authority under PCT Rule 71.1(b) available on PATENTSCOPE (refer to paragraph IP 10.079A).

COMMUNICATION OF COPIES TO THE DESIGNATED OFFICES

IP 9.028. How and when do the designated Offices receive copies of the international application?

Subject to what is said in this paragraph and in paragraph IP 9.029, the International Bureau communicates a copy of the international application in the language in which the international application is published, to each designated Office upon their request and at the time specified by that Office, pursuant to Rule 93bis, but not prior to the international publication. Where the language in which the international application is published is different from the language in which it was filed, the International Bureau will furnish to any designated Office, upon the request of that Office, a copy of that application in the language in which it was filed. In practice, the communication is effected by sending a copy of the published international application (for details concerning the contents of published international applications, refer to paragraph IP 9.015). The International Bureau also sends, promptly after the expiration of 19 months from the priority date in respect of designated Offices which do not apply the 30 month time limit, and again promptly after the expiration of 28 months from the priority date in respect of designated Offices which do apply the 30 month time limit, a notice (Form PCT/IB/308 (First Notice) (19 months) and Form PCT/IB/308 (Second and Supplementary Notice) (28 months)) to the applicant informing him/her of the Offices to which the communication has been effected and of the date of such communication. The notices must be accepted by all designated Offices as conclusive evidence that the communication has duly taken place on the date specified in the notices. On receiving the notices, the applicant knows that he/she does not have to send a copy of the international application to any of the designated Offices indicated on them as having been sent the communication.

IP 9.029. May I submit a copy of my international application to the designated Offices before international publication?

A copy of the international application (albeit without the international search report) is communicated by the International Bureau, prior to the communication referred to in the preceding paragraphs, to any designated Office which so requests; this transmittal may not be done before the expiration of one year from the priority date. It should be noted that, to date, no national or regional Office has asked for a copy of all the international applications designating it to be the subject of such an early communication. If the applicant wishes, he/she may at any time transmit, or ask the International Bureau to transmit, a copy of the international application to any designated Office. Such special transmittal by the International Bureau requires the payment of a fee, the amount of which is indicated in Annex B (IB). Further details are to be found in Article 13 and Rule 31. It is to be noted that transmittal in this way does not, unless expressly requested by the applicant, entitle the designated Office to start its processing of the international application. If, however, the applicant makes an express request to a designated or elected Office (under Article 23(2) or 40(2), respectively) for early commencement of national processing, the International Bureau then promptly effects the communication to the Office concerned upon request by the applicant or the designated or elected Office.

CHAPTER 10: INTERNATIONAL PRELIMINARY EXAMINATION UNDER CHAPTER II OF THE PCT

GENERAL

IP 10.001. What is international preliminary examination?

International preliminary examination of an international application may be requested under Chapter II of the PCT to obtain “a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable” (Article 33(1)). It is carried out by an “International Preliminary Examining Authority” at the request - called “demand” - of the applicant, for use before the “elected” Offices, that is, the designated Offices which are elected by the applicant for that purpose, (note that the filing of a demand constitutes the election of all Contracting States which are designated and bound by Chapter II of the Treaty). Not every applicant who has the right to file an international application has the right to demand international preliminary examination; the following paragraphs explain who may make a demand.

IP 10.002. What are the main effects of the international preliminary examination?

Since the criteria on which the international preliminary examination is based (refer to paragraph IP 10.001) correspond to internationally accepted criteria for patentability, the international preliminary report on patentability (Chapter II of the PCT) gives the applicant the opportunity to evaluate the chances of obtaining patents in elected Offices before incurring the expense and trouble of entering the national phase. Moreover, the fact that the carrying out of such an examination has been demanded has the result that the national phase in each elected State is normally delayed until the expiration of 30 months from the priority date (longer times apply in some elected Offices), provided that the demand is submitted before the expiration of 19 months from the priority date (Note, however, that the 30-month time limit applies in any case, to all but two designated Offices even if they have not been elected within the 19-month time limit; refer to paragraph IP 5.005 for details). For further details, refer to paragraph IP 10.010, and also the National Chapters, (Summaries).

IP 10.003. Can a third party access information contained in the file of the International Preliminary Examining Authority?

Article 38,

Rule 94

With the exception of the fact that a demand has been filed and the names of those designated States for which a notice of withdrawal has been submitted to the International Bureau or to the International Preliminary Examining Authority are available on PATENTSCOPE, the international preliminary examination procedure remains confidential between the applicant, the International Preliminary Examining Authority and the International Bureau. In respect of international applications filed before 1 July 1998, a copy of the international preliminary examination report, when it has been established, is sent by the International Bureau to each elected Office as well as the applicant, but is not available from the International Preliminary Examining Authority or the International Bureau to any other persons or Offices. In respect of international applications filed on or after 1 July 1998, copies of all documents contained in the file of the International Preliminary Examining Authority, except for information which has been omitted from international publication or public access following a reasoned request by the applicant (refer to paragraphs IP 9.016A and IP 11.073A), may be obtained by third parties via those elected Offices whose national law provides for access to the files of national applications (also refer to paragraphs IP 10.080 and IP 10.081, and IP 11.072 to IP 11.074). Concerning the availability of the international preliminary examination report and related documents from the International Bureau, refer to paragraph IP 9.027.

MAKING A DEMAND FOR INTERNATIONAL PRELIMINARY EXAMINATION

IP 10.004. On what conditions may a demand for international preliminary examination be submitted?

Article 31(2)(a),

Rule 18.1,

Rule 54

There are two conditions which have to be fulfilled for a demand to be submitted. First, the applicant - or, if there are two or more applicants, at least one of them - must be a resident or a national of a Contracting State bound by Chapter II of the PCT (currently all Contracting States but Uruguay are bound by Chapter II of the PCT). Second, the international application must have been filed with the receiving Office of, or acting for, a Contracting State bound by Chapter II. Potential applicants who have residence and/or nationality in more than one Contracting State, and thus generally have a choice of receiving Office, should therefore file the international application with a receiving Office of or acting for a Contracting State bound by Chapter II if they wish to take advantage later of the international preliminary examination procedure. However, it should be noted that the right to make a demand may be lost if, following a change in the applicants named in the international application, there is no longer, at the time the demand is made, at least one applicant who is a resident or national of a Contracting State bound by Chapter II. The concepts of residence and nationality are defined in Rule 18.1 (refer to paragraph IP 5.023). If the applicant does not have the right to make a demand, the demand is considered not to have been submitted.

IP 10.005. Which States may be elected?

All Contracting States which are designated in the international application and are bound by Chapter II of the PCT are elected. The printed demand form (available on the WIPO website at: https://www.wipo.int/documents/d/pct-system/docs-en-forms-demand-ed-demand.pdf ) contains a pre-printed statement that the filing of the demand constitutes the election of all Contracting States which are designated and are bound by Chapter II of the Treaty (refer to paragraph IP 10.029). Please note that States whose designation has been withdrawn cannot subsequently be elected. If the applicant does not wish to elect a particular State, the election of that State may be withdrawn after a demand has been filed. It should be also noted that withdrawal of the designation of a State which has been elected shall entail withdrawal of the corresponding election.

IP 10.006. Where should the demand for international preliminary examination be submitted?

The demand must be made separately from the international application, and be submitted directly to an International Preliminary Examining Authority which is competent to carry out international preliminary examination on the international application concerned. Each receiving Office (except the International Bureau as receiving Office - refer to paragraph IP 5.008) specifies one or more International Preliminary Examining Authorities as competent to carry out international preliminary examination on international applications filed with it. In addition, different International Preliminary Examining Authorities may be competent in relation to an international application depending on the language in which the international application was filed and on which International Searching Authority carried out the international search. Where several International Preliminary Examining Authorities are competent in relation to a particular international application, having regard to which receiving Office the international application was filed with and the language of the international application, the applicant may choose between them. Where the international application is filed with the International Bureau as receiving Office, the competent International Preliminary Examining Authority (or Authorities) is that (or are those) which would have been competent if the international application had been filed with a competent national (or regional) Office as receiving Office. The International Preliminary Examining Authority or Authorities competent for international applications filed with each national (or regional) Office acting as receiving Office, and the languages accepted for international preliminary examination by each International Preliminary Examining Authority, may be ascertained by consulting Annexes C and E. Finally, within the framework of the respective agreements relating to the functioning of certain Offices as International Preliminary Examining Authorities, these Authorities may provide for limitations of their competence in respect of certain international applications. The consolidated texts of these Agreements are available on the WIPO website at the following address: https://www.wipo.int/en/web/pct-system/access/isa_ipea_agreements. For more detailed information, refer to Annex E.

IP 10.007. What happens if a demand for international preliminary examination is not submitted to the competent Authority?

Rule 59.3(a),

Rule 59.3(b),

Rule 59.3(e)

If a demand is submitted to a receiving Office, an International Searching Authority, an International Preliminary Examining Authority which is not competent for the international preliminary examination of the international application, or the International Bureau, that Office or that Authority or the International Bureau, as the case may be, will mark on it the date of receipt, which will be considered to be the date on which the demand was received on behalf of the competent International Preliminary Examining Authority.

IP 10.008

Rule 59.3(c),

Rule 59.3(f)

When a demand is filed with 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 may send the demand either directly to the competent International Preliminary Examining Authority, or to the International Bureau which will in turn forward the demand to the competent International Preliminary Examining Authority.

IP 10.009

Rule 59.3(c),

Rule 59.3(d)

If two or more International Preliminary Examining Authorities are competent, the applicant will be invited by the Office or Authority to which the demand was submitted, or by the International Bureau, as the case may be, to indicate, within the time limit applicable under Rule 54bis.1(a) or within 15 days from the date of the invitation, whichever is later, the competent International Preliminary Examining Authority to which the demand should be transmitted. Where the applicant furnishes that indication, the demand will promptly be transmitted to the competent International Preliminary Examining Authority. Where no indication is so furnished, the demand will be considered not to have been submitted, and the Office or Authority to which the demand was submitted, or the International Bureau, as the case may, will declare that the demand is considered not to have been submitted.

IP 10.010. At what stage of the procedure should the demand for international preliminary examination be submitted?

A demand may be submitted at any time prior to the expiration of the following time limits, whichever expires later:

(i) three months from the date of transmittal to the applicant of the international search report and the written opinion of the International Searching Authority, or of the declaration, referred to in Article 17(2)(a) that no international search report will be established; or

(ii) 22 months from the priority date.

In addition, in respect of some Offices (refer to paragraph IP 5.005), in order to secure the full effect of the demand – including the delaying of the national phase until 30 months from the priority date – it must be submitted before the expiration of 19 months from the priority date. Since international preliminary examination will normally not start before the international search report and the written opinion of the International Searching Authority are available (refer to paragraphs IP 10.051 to IP 10.055), the applicant will normally wish to take that report and opinion into account before deciding whether to proceed further for patent protection. Note, however, that the 19 month time limit will expire regardless of whether the establishment of the international search report and the written opinion of the International Searching Authority are delayed. On the other hand, the length of time available for the international preliminary examination depends on the earliest possible submission of the demand after the international search report and the written opinion of the International Searching Authority are available, since the international preliminary report on patentability (Chapter II of the PCT) must in most cases be established before the expiration of 28 months from the priority date, or six months from the time provided for the start of the international preliminary examination, or six months from the date of receipt by the International Preliminary Examining Authority of the translation furnished by the applicant, if applicable, whichever period expires last (refer to paragraph IP 10.074). The more time available for the international preliminary examination, the better will be the result and quality which can be expected. Therefore, a demand should be filed as soon as possible after the applicant’s evaluation of the international search report and the written opinion of the International Searching Authority has shown that it is worthwhile to pursue the international application further.

TRANSLATION OF INTERNATIONAL APPLICATION FOR THE PURPOSES OF INTERNATIONAL PRELIMINARY EXAMINATION

IP 10.011. What happens if the international application was filed or published in a language which is not accepted by the International Preliminary Examining Authority?

Rule 55.2

Where neither the language in which the international application was 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 must furnish with the demand a translation of the international application into a language which is both a language accepted by that Authority, and a language of publication. No such translation is required where the International Searching Authority and the International Preliminary Examining Authority are part of the same national Office or intergovernmental organization, in which case the international preliminary examination will be carried out on the basis of the translation furnished for the purposes of the international search (refer to paragraphs IP 6.014 to IP 6.017). Details about the languages accepted for international preliminary examination by the various International Preliminary Examining Authorities appear in Annex E. Refer to paragraph IP 9.010 in connection with the need to file a translation of amendments under Article 19.

THE DEMAND

IP 10.012. What requirements as to form, contents and language must the demand for international preliminary examination comply with?

The demand must either be made on a printed form to be filled in with the required indications or be presented as a computer print-out complying with the Administrative Instructions. To facilitate preparation of the demand, the International Bureau has prepared downloadable PDF (portable document format) versions on its website at https://www.wipo.int/en/web/pct-system/forms/. The editable PDF version of the form (PCT/IPEA/401) may be completed using a computer or printed out and filled in using a typewriter. The demand, and instructions on how to complete the editable version, is available in Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish.

Sample filled-in forms are also available from the above website address. Copies of forms may also be obtained, free of charge, from the receiving Office or the International Preliminary Examining Authority.

The demand may also be filed online by using the ePCT service (signing in with strong authentication at https://pct.wipo.int/ePCT).

IP 10.013

Rule 53,

Rule 55.1

The completed demand must identify the applicant and the international application to which it relates. The demand contains a petition that the international application be the subject of international preliminary examination. The filing of the demand constitutes the automatic election of all Contracting States which are designated and which are bound by Chapter II of the PCT - refer to paragraph IP 10.029 and the sample filled-in demand form, at the addresses indicated in paragraph IP 10.012). It must, where applicable, contain a statement concerning amendments, on the basis of which the international preliminary examination will start (refer to paragraphs IP 10.025 and IP 10.026) and an indication of the language in which international preliminary examination will be carried out. The demand must 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, where a translation of the international application is required because the International Preliminary Examining Authority accepts neither the language in which the international application is filed nor the language in which the international application is published (refer to paragraphs IP 5.013 and IP 10.011), the demand must be in the language of that translation. The demand must be signed (refer to paragraphs IP 10.031, IP 10.032, and IP 11.027). Details for the filling in of the demand form are given below in respect of each Box of that form. Where more than one International Preliminary Examining Authority is competent in relation to the international application (refer to paragraph IP 10.006), the Authority chosen by the applicant, and with which the demand is filed, should be identified, preferably by an indication of the name or two-letter code of the Authority (refer to Country Names and Two-Letter Codes (formerly Annex K)), at the top of the first sheet of the demand form in the space provided for that purpose.

Box No. I: Identification of the International Application

IP 10.014. What are the requirements with respect to the identification of the international application?

Rule 53.6

The international application must be identified by its international application number, filing date and title. If the international application number is not known to the applicant at the time of filing of the demand, the name of the receiving Office with which the international application was filed must be indicated. The title of the invention must be the same as that which appears in the published international application (that is, the same as that indicated in the request, unless it was modified by the International Searching Authority - refer to paragraph IP 7.022).

IP 10.015

It is recommended that the applicant indicate the file reference, if any, not exceeding 25 characters in length, in the box provided for this purpose on the first sheet of the demand form (refer to paragraphs IP 5.017 and IP 5.105 in relation to the request and the description).

IP 10.016

Indication of the priority date on the demand is not mandatory, but is recommended since it will assist the International Preliminary Examining Authority to ascertain promptly whether or not the demand was filed before the expiration of 19 months from the priority date.

Box No. II: Applicant(s)

IP 10.017. Who may file a demand for international preliminary examination?

If there is a sole applicant, that applicant must be a resident or national of a Contracting State bound by Chapter II of the PCT. If there are two or more applicants, it is sufficient that one of them be a resident or national of a Contracting State bound by Chapter II, regardless of the elected State(s) for which each applicant is indicated. The detailed requirements for the various indications required in connection with each applicant (full names and addresses, telephone, facsimile and/or e-mail address, nationality and residence) are the same as those required under Rule 4 in connection with the request (refer to paragraphs IP 5.023 to IP 5.034). Where the applicant is registered with the International Preliminary Examining Authority, the number or other indication under which the applicant is so registered may also be indicated in Box No. II. Note that any inventor who is not also an applicant is not indicated in the demand. Where a question of the applicant’s residence or nationality arises, the International Preliminary Examining Authority will 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 and will inform the applicant of such request. The applicant has the opportunity to submit arguments relating to the issue of residence or nationality directly to the Office concerned, which will decide the question promptly.

IP 10.018. Who should be indicated if there has been a change in the name or person of the applicant?

Rule 92bis.1

If the recording of a change in the name or person has been requested under Rule 92bis.1 before the demand was filed (refer to paragraphs IP 11.018 to IP 11.022), it is the applicant(s) on record at the time when the demand is filed who must be indicated in the demand.

IP 10.018A. How can the applicant receive notifications via e-mail?

If an e-mail address is indicated in Box No. II of the demand form, the International Bureau, and the International Preliminary Examining Authority, if it provides such a service, will send notifications to the applicant by e-mail, thus avoiding processing or postal delays. Where the agent or common representative has also indicated an e-mail address, e-mail notifications will only be sent to the appointed agent or common representative (refer to paragraph IP 10.022). Note that not all Authorities will send such notifications by e-mail (refer to Annex B). If no e-mail address is provided, or if the applicant chooses to receive notifications exclusively by postal mail, by marking the corresponding check-box in Box No. II, or in the cases where the International Preliminary Examining Authority does not provide for sending notifications by e-mail, notifications will be sent to the given mailing address exclusively by postal mail. It is the applicant’s responsibility to keep any e-mail address details up-to-date and to ensure that incoming e-mails are not blocked, for any reason, on the recipient’s side. Changes to the e-mail address indicated should be requested to be recorded, preferably directly at the International Bureau, under Rule 92bis.

Box No. III: Agent or Common Representative

IP 10.019. Does the applicant have to be represented by an agent before the International Preliminary Examining Authority?

No, the applicant is not obliged to, but may be represented by an agent. In most cases, it is highly advisable to use an agent (refer to paragraph IP 1.004).

IP 10.020. May the applicant be represented by an agent before the International Preliminary Examining Authority?

Yes, the applicant may be represented by the agent who represented him/her for the filing of the international application (if any) or by another agent having the right to practice before the receiving Office with which the international application was filed (refer to Annex C). The applicant may also be represented by an agent appointed specifically for the purposes of the international preliminary examination procedure and chosen from among those persons who have the right, according to the Rules applicable in the national or regional Office acting as International Preliminary Examining Authority, to practice before that Office (refer to National Chapters, (Summaries)). Refer to paragraphs IP 11.001 to IP 11.014 for more information about representation.

IP 10.021. When and how may an agent be appointed for the purposes of the procedure concerning the international preliminary examination?

Rule 53.2(a)(ii),

Rule 53.5,

Rule 90

If an agent has already been appointed for the filing of the international application, that agent may also represent the applicant for the purposes of the international preliminary examination procedure and may sign the demand on behalf of the applicant. Alternatively, a different agent or an additional agent may be designated in the demand for international preliminary examination or in a separate power of attorney. The detailed requirements for the various indications required in connection with each agent (full names and addresses, telephone, facsimile, e-mail address(es)) are the same as those required under Rule 4 in connection with the request (refer to paragraph IP 5.043). Where the agent is registered with the International Preliminary Examining Authority, the number or other indication under which the agent is so registered may also be indicated in Box No. III. Further information about the manner of appointing agents, including sub-agents, appears in paragraphs IP 11.001 to IP 11.014.

IP 10.021A. How can an agent (or common representative) receive notifications via e-mail?

If an e-mail address is indicated in Box No. III, the International Bureau and the International Preliminary Examining Authority (if it provides such a service) will send notifications to that address by e-mail, thus avoiding processing or postal delays (refer to paragraph IP 10.018A). If no e-mail address is provided, or if the agent or common representative chooses to receive notifications exclusively by postal mail, by marking the corresponding check-box in Box No. III, or in the cases where the International Preliminary Examining Authority does not provide for sending notifications by e-mail, notifications will be sent to the given mailing address exclusively by postal mail.

IP 10.022. May the applicants be represented by a common representative?

Rule 2.2bis,

Rule 90.2,

Rule 90.4

The provisions relating to common representatives which apply at earlier stages (refer to paragraph IP 5.048) continue to be applicable during the international preliminary examination procedure. That is, if no common agent is appointed, one of the applicants may be appointed by the other applicants as the common representative of all the applicants, and if neither a common agent nor a common representative is appointed, the applicant named first in the request who is entitled to file an international application with the receiving Office concerned will be considered to be the common representative (“deemed common representative”) (refer to paragraph IP 11.006). A separate power of attorney must be filed with the International Preliminary Examining Authority, the International Bureau or the receiving Office, if the person appointed at the time the demand is filed signs the demand on behalf of the applicant. However, the receiving Office, the International Bureau or the International Preliminary Examining Authority may waive the requirement that a separate power of attorney be filed. For further details refer to Annexes B (IB), C and E.

IP 10.023. What other provisions apply to agents and common representatives during the international preliminary examination procedure?

The same general provisions apply to agents and common representatives during the international preliminary examination as apply during other stages of the international phase (for example, in relation to their legal position and revocation and renunciation of appointments - refer to paragraphs IP 11.001 to IP 11.014).

Box No. IV: Basis for International Preliminary Examination (Statement Concerning Amendments and Indication of the Language for the Purposes of International Preliminary Examination)

IP 10.024. Can the applicant amend the claims, the description and the drawings before and during the international preliminary examination?

Rule 66.1(b),

Rule 66.1(d)

The applicant has the right, under Article 34(2)(b), to amend the claims, the description and the drawings before the start of the international preliminary examination and also during the examination, if time permits, until the preparation of the international preliminary report on patentability (Chapter II of the PCT). (As far as the claims are concerned, this is in fact the second opportunity to amend them before the international preliminary examination starts; the first opportunity is offered by the possibility of submitting amendments under Article 19 to the International Bureau as described in paragraphs IP 9.004 to IP 9.009, and IP 9.011.) For further details concerning amendments under Article 34(2)(b), refer to paragraphs IP 10.028, IP 10.067 to IP 10.071, IP 11.045 to IP 11.047.

IP 10.025. What is the purpose of indicating the basis for international preliminary examination? Do the statement concerning amendments and the indication of the language for the purposes of the international preliminary examination have to be filled in?

Rule 53.2(a)(iv),

Rule 53.9

(i) The statement concerning amendments should be completed, since it enables the International Preliminary Examining Authority to identify those documents which will serve as the basis for the start of the international preliminary examination with a view to starting it as soon as possible. However, failure to complete the statement or to complete it correctly is not fatal to the application. In particular, if no amendments have been filed under Article 19 or Article 34 and if the applicant does not wish to file such amendments at the time when the demand is filed, the result will simply be that the international preliminary examination will start on the basis of the international application as originally filed. The applicant will not be precluded from making amendments at a later stage of the international preliminary examination, provided that they reach the International Preliminary Examining Authority in sufficient time to be taken into account. On the other hand, if there have been amendments but they are not indicated, or if the applicant wishes later to file amendments but does not so indicate, the start of the international preliminary examination may be delayed or the applicant may find that there is insufficient time at a later stage to have the intended amendments taken into account.

(ii) Completing the indication of the language for the purposes of the international preliminary examination and its associated check-boxes helps the International Preliminary Examining Authority determine quickly, with a view to starting international preliminary examination as soon as possible, whether the demand and the international application are in a language accepted by that Authority, or whether a translation of the international application is required. Completing the indication also helps the International Preliminary Examining Authority decide whether any amendments filed with the demand (refer to paragraph (i) above) are in the appropriate language.

IP 10.026. How should the statement concerning amendments be completed?

If amendments to the claims have been made under Article 19 (refer to paragraphs IP 9.004 to IP 9.009) prior to the filing of the demand, the statement must indicate whether, for the purposes of the international preliminary examination, the applicant wishes the amendments to be taken into account (in which case a copy of the amendments should be filed with the demand) or to be considered as reversed by an amendment under Article 34. If no amendments under Article 19 have been made but the time limit for filing such amendments (refer to paragraph IP 9.004) has not expired at the time when the demand is filed, the statement may, if the applicant so chooses, indicate that the applicant wishes the start of the international preliminary examination to be postponed (refer to paragraph IP 10.054). If any amendments under Article 34 are submitted with the demand, the statement must so indicate. A more detailed explanation is given below for each of the check-boxes in Box No. IV.

“1. The applicant wishes the international preliminary examination to start on the basis of:

⬜ the international application as originally filed”

This check-box should be marked either where the applicant has not made any amendments under Article 19 and does not intend at the time of filing the demand to file any amendments, or where the applicant has already made amendments under Article 19 but is no longer interested in pursuing them.

“the description

⬜ as originally filed

⬜ as amended under Article 34

the claims

⬜ as originally filed

⬜ as amended under Article 19

⬜ as amended under Article 34

the drawings

⬜ as originally filed

⬜ as amended under Article 34”

Rule 60.1(g),

Rule 69.1(e)

These check-boxes should be marked only where the applicant wishes amendments to be taken into account for the start of the international preliminary examination. Where the applicant wishes amendments which have previously been made under Article 19 to be taken into account, a copy of the amendments, and any statement accompanying such amendments, should be attached to the demand. If a check-box is marked but the demand is not accompanied by the documents referred to, the start of international preliminary examination will be delayed until the International Preliminary Examining Authority receives them. Amendments under Article 34 should be submitted with, and attached to, the demand. The applicant should also indicate, by marking the appropriate check-box(es), which parts of the international application are so amended.

Rule 53.9(a)(ii)

“2. ⬜ The applicant wishes any amendments to the claims made under Article 19 to be considered as reversed.”

This check-box should be marked only where the applicant, after having previously made amendments under Article 19, no longer wishes them to be considered for international preliminary examination. Marking this check-box will have the effect that those amendments will be considered as reversed by an amendment under Article 34.

“3. ⬜ Where the IPEA wishes to start the international preliminary examination at the same time as the international search in accordance with Rule 69.1(b), the applicant requests the IPEA to postpone the start of the international preliminary examination until the expiration of the applicable time limit under Rule 69.1(d)”.

This check-box should be marked only where, at the time when the demand is filed, the time limit for filing amendments under Article 19 has not expired (refer to paragraph IP 9.004) and the applicant intends to file such amendments after filing the demand. In practice, this situation is only likely to arise if the demand is filed before the international search report is available. If this check-box is marked but the applicant later decides not to file amendments under Article 19, the applicant should send a notice to the International Preliminary Examining Authority that there is no intention to file such amendments, and the international preliminary examination will then start.

“4. ⬜ The applicant expressly requests to postpone the start of the international preliminary examination until the expiration of the applicable time limit under Rule 54bis.1(a).”

This check-box should be marked if the applicant wishes to postpone the start of the international preliminary examination until the expiration of the applicable time limit under Rule 54bis.1(a). Otherwise, where the International Searching Authority and the International Preliminary Examining Authority are not the same Authority, examination will commence once the International Preliminary Examining Authority is in possession of the required fees, the international search report, or a notice of the declaration under Article 17(2)(a) and the written opinion of the International Searching Authority.

IP 10.027. May several check-boxes be marked in Box No. IV?

Yes - for example, under item (1), two or three check-boxes may be marked if the applicant has already filed amendments to the claims under Article 19 and wishes those amendments to be taken into account along with further amendments under Article 34 to the description and/or drawings (and possibly further amendments to the already amended claims).

IP 10.028. May the applicant make amendments during the international preliminary examination in addition to any amendments mentioned in Box No. IV?

Rule 66.1(b),

Rule 66.4bis

Yes, the applicant is not precluded from later making amendments, or further amendments, during the course of the international preliminary examination (refer to paragraphs IP 10.067 to IP 10.071), regardless of what appears in the statement concerning amendments, and in this sense the statement is not binding on the applicant or on the conduct of the international preliminary examination. For example, the applicant may choose to file amendments under Article 34 at a later stage which supersede amendments previously made under Article 19, even though the statement indicates that those previous amendments should be taken into account. However, the information contained in the statement is used by the International Preliminary Examining Authority to determine when, and on what basis, the international preliminary examination is to start (refer to paragraphs IP 10.051 to IP 10.055). Moreover, amendments or arguments need not be taken into account by the International Preliminary Examining Authority for the purposes of the international preliminary report on patentability (Chapter II of the PCT) if they are received after the Authority has begun to draw up that report (refer to paragraph IP 10.068). Since the time available for international preliminary examination is limited, it is in the applicant’s interests to be as definite as possible, at the time of filing the demand, as to what should form the basis of the international preliminary examination. If the applicant intends to file amendments under Article 34 but is not in a position to submit them with the demand, that intention should preferably be mentioned in a letter filed with the demand. It is to be noted that since, under Rule 66.1bis, the written opinion of the International Searching Authority will in the majority of cases be considered to be the written opinion of the International Preliminary Examining Authority, if amendments under Article 34 are not filed together with the demand, the International Preliminary Examining Authority might, shortly after the expiration of the time limit under Rule 54bis.1(a), start to draw up the international preliminary report on patentability (Chapter II of the PCT).

Box No. V: Election of States

IP 10.029. Which States may be elected?

Rule 53.7

The making of a demand has the effect of electing all Contracting States which have been designated and which are bound by Chapter II of the PCT. That usually means the election of all Contracting States except for Uruguay, which is currently the only State not bound by Chapter II of the PCT.

Box No. VI: Check List

IP 10.030. What is the purpose of the Check List?

The Check List in Box No. VI should be completed by the applicant to allow the International Preliminary Examining Authority to verify the completeness of the documents filed with the demand. Of particular importance in the Check List are the indications relating to amendments referred to in the statement concerning amendments. The indications given in the Check List should correspond with the indications given in Box No. IV.

Box No. VII: Signature of Applicant, Agent or Common Representative

IP 10.031. Who must sign the demand?

The demand must be signed by the applicant or, if there is more than one applicant, by all the applicants making the demand – that is, the applicants for the States which are elected. However, an agent or common representative may sign the demand on behalf of the applicant or applicants who appointed him/her. The demand may be signed on behalf of all the applicants by an appointed common agent or common representative, or by the applicant who is considered to be the common representative (“deemed common representative”) if no common agent or common representative has been appointed (refer to paragraph IP 11.006). However, if the signature(s) of one or more applicants is missing, the International Preliminary Examining Authority will not invite the applicants to furnish the missing signature(s) provided that at least one of the applicants has signed the demand. Should a notice of withdrawal be filed at any time during the international phase, that notice will have to be signed by the applicant or, if there are two or more applicants, by all of them (Rule 90bis.5), or by any agent or common representative whose appointment has been effected by each applicant signing the request, the demand or a separate power of attorney (Rule 90bis.4(a)).

IP 10.032. When must or may a seal be used instead of a signature?

Rule 2.3

In the demand or other papers filed with the China National Intellectual Property Administration (CNIPA) as International Preliminary Examining Authority, a seal may be used instead of a signature. In the case of a demand or other papers filed in English with the European Patent Office (EPO) as International Preliminary Examining Authority in respect of international applications filed with the Japan Patent Office (JPO) as receiving Office, a signature must be furnished instead of a seal. In the demand or other papers filed with the Ministry of Intellectual Property (MOIP) (Republic of Korea) as International Preliminary Examining Authority, a seal may be used instead of a signature (refer to paragraph IP 5.091 in respect of the request).

Notes to the Demand Form

IP 10.033. What are the Notes to the demand form?

The Notes to the demand form (refer to the WIPO website at: https://www.wipo.int/documents/d/pct-system/docs-en-forms-demand-ed-demand.pdf ) are intended to facilitate the completion of that form. They indicate, in relation to each Box of the form, what indications are required and how they are to be made. The Notes are not required to be filed with the demand.

Fee Calculation Sheet

IP 10.034. What is the fee calculation sheet?

The fee calculation sheet is intended to help the applicant calculate the total amount of fees payable to the International Preliminary Examining Authority. The sheet is usually annexed to the printed demand form which the applicant obtains from the receiving Office or the International Preliminary Examining Authority. It is not part of the form, however, and its use is not mandatory. Nevertheless, it is strongly recommended that the applicant complete the fee calculation sheet and submit it to the International Preliminary Examining Authority. This will help the International Preliminary Examining Authority verify the calculations and identify any errors. Refer to the Notes to the fee calculation sheet at the WIPO Internet address in paragraph IP 10.033 for details about completion of the sheet. For further information about the payment of fees, refer to paragraphs IP 10.035 to IP 10.043.

FEES

IP 10.035. What fees are payable in respect of a demand for international preliminary examination?

Article 31(5)

There are two kinds of fees which have to be paid in connection with the demand:

Rule 58.1(a),

Rule 58.1(c)

(i) the “preliminary examination fee, ” which is fixed by and accrues to the International Preliminary Examining Authority, mainly for carrying out the international preliminary examination and for establishing the international preliminary report on patentability (Chapter II of the PCT);

Rule 57.1

(ii) the “handling fee, ” which is fixed in the Schedule of Fees to the PCT Regulations and accrues to the International Bureau for carrying out various tasks, including, where required, the translation of the international preliminary report on patentability (Chapter II of the PCT) into English (refer to paragraph IP 10.039).

IP 10.036. Is any fee payable for effecting an election?

There is no “election fee”. The only fees payable for filing a demand are those specified in paragraph IP 10.035.

IP 10.037. To whom are these fees payable?

Rule 57.1,

Rule 58.1(c)

The preliminary examination fee and the handling fee are payable to the International Preliminary Examining Authority, which forwards the handling fee to the International Bureau.

IP 10.038. In what currency are these fees payable?

Rule 57.2(b),

Rule 58.1(c)

Generally, the preliminary examination fee and the handling fee are payable in the currency or one of the currencies prescribed by the International Preliminary Examining Authority. Complete information on this question is contained in Annex E.

IP 10.039. What are the amounts of these fees?

Rule 57.2(a),

Rule 57.3,

Rule 58.1(b)

Annex E indicates the amounts of the preliminary examination fee and the handling fee payable to each International Preliminary Examining Authority.

IP 10.040. What fee reductions are available?

A reduction of the preliminary examination fee charged by the Austrian Patent Office, the European Patent Office and the Spanish Patent and Trademark Office may be available to applicants from certain States - refer to Annexes E for further details.

IP 10.041

In accordance with the Schedule of Fees, item 5, an applicant is entitled to a reduction of 90% of the handling fee if (a) the applicant is a natural person and a national of and resides in a State that is listed as being a State whose per capita gross domestic product is below 25,000 US dollars (according to the most recent 10-year average per capita gross domestic product figures at constant 2005 US dollars values published by the United Nations), and whose nationals and residents who are natural persons have filed less than 10 international applications per year (per million population) or less than 50 international applications per year (in absolute numbers) according to the most recent 5-year average yearly filing figures published by the International Bureau; or (b) if the applicant is, whether a natural person or not, a national of and resides in a State that is listed as being classified by the United Nations as a least developed country. (For a list of States whose nationals and residents are eligible for the fee reduction, refer to https://www.wipo.int/documents/d/pct-system/docs-en-fee-reduction-january.pdf ). If there are several applicants, each must satisfy one or the other of the above-mentioned criteria. However, it should be noted that an applicant is only entitled to the reduction of the handling fee if, at the time of filing the demand, that applicant is or all applicants are the true and only owners of the application and under no obligation to assign, grant, convey or license the rights in the invention to another party which is not eligible for the fee reduction, as outlined above. If the applicant is or all applicants are entitled to the reduction of the handling fee, this reduction applies on the basis of the indications of name, nationality and residence given in Box No. II of the demand, without the need for a specific request to be made.

IP 10.042. When are these fees due?

Rule 57.3,

Rule 58.1(b)

The preliminary examination fee and the handling fee must be paid within one month from the date on which the demand was submitted or 22 months from the priority date, whichever expires later, provided that, where the demand was transmitted to the competent International Preliminary Examining Authority under Rule 59.3, the handling fee must be paid within one month from the date of receipt by that Authority or 22 months from the priority date, whichever expires later. As to the consequences of non-payment or late payment of these fees, refer to paragraph IP 10.047.

IP 10.043. In what cases are these fees refunded?

Rule 54.4,

Rule 57.4,

Rule 58.3

The International Preliminary Examining Authority will refund the handling fee if the demand is withdrawn before being sent to the International Bureau or if the demand is considered not to have been submitted because none of the applicants had the right to file a demand (refer to paragraph IP 10.004). Each International Preliminary Examining Authority decides at its discretion whether it will refund the preliminary examination fee, or any part thereof, in other circumstances. Details are indicated in Annex E.

PROCESSING OF THE DEMAND FOR INTERNATIONAL PRELIMINARY EXAMINATION

IP 10.044. What happens to the demand for international preliminary examination once it has been received?

Rule 60.1(a),

Rule 61.1

The International Preliminary Examining Authority promptly notifies the applicant of the date of receipt of the demand, and then examines the demand to ascertain whether it meets all the requirements. If it does not, the International Preliminary Examining Authority invites the applicant to comply. For full details on the correction of defects in the demand, refer to Rule 60.1 and paragraphs IP 10.047 to IP 10.049, and paragraph IP 10.050.

IP 10.045

The International Preliminary Examining Authority sends the demand or a copy thereof to the International Bureau. The International Bureau then notifies Offices of their election and informs the applicant that it has done so. For full details, refer to Rules 61.2 and 61.3. In addition, the International Bureau, promptly after the filing of the demand but not before the international publication, publishes information on the WIPO website at: https://www.wipo.int/patentscope/en/ on the demand and the elected States concerned, as provided in the Administrative Instructions.

IP 10.046. What action can the applicant take if the indications on the demand form do not support the applicant’s right to file the demand?

Article 31(2)(a),

Rule 61.1(b),

Section 614

If the indications of the applicant’s residence and nationality given in Box No. II of the demand form do not support the applicant’s right to file a demand with the International Preliminary Examining Authority concerned (refer to paragraph IP 10.004), the International Preliminary Examining Authority notifies the applicant that the demand is considered not to have been submitted. It may happen, however, that those indications were incorrectly stated or that the applicant in fact had a residence and/or nationality supporting the applicant’s right to file the demand. In such a case, evidence should immediately be submitted indicating that, in fact, the applicant had, on the date on which the demand was received by the International Preliminary Examining Authority, the right to file the demand with that Authority. If that evidence is to the satisfaction of the Authority, it will then regard the requirements of Article 31(2)(a) as having been fulfilled on the date of actual receipt of the demand, and the indications in the demand can be corrected.

IP 10.047. Can defects in the demand for international preliminary examination, non-compliance with certain language requirements, and non-payment of certain fees be corrected, and if so how?

What are the consequences? If the International Preliminary Examining Authority finds that:

Article 31(3),

Rule 53,

Rule 55.1

(i) the demand does not meet the requirements as to form, contents and languages (refer to paragraph IP 10.012),

Rule 57.3

(ii) the handling fee was not paid within one month from the date on which the demand was submitted or, where the demand was transmitted to the competent International Preliminary Examining Authority under Rule 59.3, within one month from the date of receipt by that Authority, or was not paid in the prescribed currency (refer to paragraphs IP 10.035 and IP 10.038), or

Rule 58.1(b),

Rule 58bis,

Rule 60.1(b)

(iii) the preliminary examination fee was not paid within one month from the date on which the demand was submitted or, where the demand was transmitted to the competent International Preliminary Examining Authority under Rule 59.3, within one month from the date of receipt by that Authority, or was not paid in the prescribed currency (fixed by the International Preliminary Examining Authority - refer to paragraphs IP 10.035 and IP 10.038), it invites the applicant to correct the defect(s) and comply with the requirements and/or to pay the required fee(s). In the case of defects as to form or language, the invitation specifies a time limit of at least one month from the date of the invitation, which time limit may be extended by the International Preliminary Examining Authority at any time before a decision is taken. In the case of defects as to fee payment, the invitation specifies a time limit of one month from the date of the invitation; a late payment fee may also be required; no extension of this time limit is available. However, any payment must be considered to have been received before the expiration of the applicable time limit if it is received by the International Preliminary Examining Authority before the expiration of the time limit for paying the fee(s) or, where an invitation to pay missing fees has been sent, before that Authority makes the declaration that the demand is considered not to have been made.

IP 10.048

Rule 60.1(b),

Rule 61.1(b)

If the applicant complies with the invitation within the specified time limit, there is no adverse consequence, other than possibly delaying the start of the international preliminary examination (refer to paragraph IP 10.050), except where the defect was that the demand did not permit the international application to be identified. In the latter case, the demand is considered to have been received on the date on which the required correction to it is received, and the International Preliminary Examining Authority informs the applicant of that date.

IP 10.049

Rule 60.1(c),

Rule 61.1(b)

If, after the expiration of the time limit specified (including any extensions), a signature (of at least one applicant), or other required indication (in respect of one applicant who has the right according to Rule 54.2 to make a demand) is still lacking the demand is considered not to have been submitted and the International Preliminary Examining Authority will so declare.

IP 10.050

Article 39(1)(a)

Where the demand is considered to have been received, as described in paragraph IP 10.048, on a date later than that on which it was actually submitted, the effect of postponing the commencement of the national phase (refer to paragraph IP 10.002 above) is lost if that later date is after the expiration of 19 months from the priority date. This is, however, only relevant in respect of any State whose designated Office has notified the International Bureau that the 30-month time limit under Article 22(1), as in force from April 1, 2002, is incompatible with the national law applied by that Office. The effect of postponing the commencement of the national phase is also lost where the demand is considered not to have been submitted (refer to paragraph IP 10.049).

THE INTERNATIONAL PRELIMINARY EXAMINATION

IP 10.051. When does the international preliminary examination start?

Rule 69.1(a)

Subject to the exceptions mentioned in paragraphs IP 10.052 to IP 10.055, the International Preliminary Examining Authority starts the international preliminary examination when it is in possession of the demand, the amount due (in full) for the handling fee and the preliminary examination fee, including, where applicable, the late payment fee under Rule 58bis.2, and of either the international search report and the written opinion established under Rule 43bis.1 or a declaration by the International Searching Authority that no international search report will be established and the written opinion established under Rule 43bis.1, unless the applicant expressly requests to postpone the start of the international preliminary examination until the expiration of the applicable time limit under Rule 54bis.1(a).

IP 10.052. What is a “telescoped” procedure for the purpose of international preliminary examination?

Rule 69.1(b)

If the competent International Preliminary Examining Authority is part of the same (national or regional) Office as the competent International Searching Authority, the international preliminary examination may, if the Office wishes and except where the applicant has requested that the international preliminary examination be postponed (refer to paragraph IP 10.054), start at the same time as the international search (often called a telescoped procedure since the international search and international preliminary examination partly overlap).

IP 10.053. Will the International Preliminary Examining Authority take into account my amendments made under Article 19?

Rule 53.9(a)(i),

Rule 62,

Rule 69.1(c)

Where the statement concerning amendments made in the demand contains an indication that amendments under Article 19 are to be taken into account, the International Preliminary Examining Authority will not start the international preliminary examination before it has received a copy of the amendments concerned and the accompanying letter. Therefore, a copy of those amendments and accompanying letter should be attached to the demand by the applicant in order to allow as much time as possible for the international preliminary examination (refer to paragraphs IP 9.010, IP 10.025 and IP 10.026). The International Bureau will, in any event, send a copy of those amendments and accompanying letter to the International Preliminary Examining Authority unless that Authority has indicated that it has already received them (refer to paragraph IP 9.010), but waiting for those copies to be sent may delay the start of the international preliminary examination.

IP 10.054. How can I postpone the start of the international preliminary examination?

Rule 53.9(b),

Rule 69.1(d)

Where the statement concerning amendments contains an indication that the start of the international preliminary examination is to be postponed (refer to paragraph IP 10.026), the International Preliminary Examining Authority will not start the international preliminary examination before whichever of the following occurs first:

(i) it has received a copy of any amendments under Article 19;

(ii) it has received a notice from the applicant stating that the applicant does not intend to make amendments under Article 19; or

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

Therefore, where the applicant gives such an indication in the demand, he/she should ensure that the International Preliminary Examining Authority is informed promptly of any amendments or of any decision not to file amendments, in order to gain the maximum time possible for the international preliminary examination procedure.

IP 10.055

Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand (refer to paragraph IP 10.026), but no such amendments are, in fact, submitted with the demand, the International Preliminary Examining Authority will not start the international preliminary examination before it has received the amendments or before it has invited the applicant to file them and the time limit fixed in that invitation has expired, whichever occurs first. Where the international application was not filed in the language of publication, any amendments under Article 34 and any accompanying letter (as well as any letter accompanying Article 19 amendments) must be in the language of publication. Where the international preliminary examination is carried out on the basis of a translation of the international application (refer to paragraph IP 10.011), any such amendments, and any amendments under Article 19 which are to be taken into account, and any letter that accompanied such amendments must be in the language of that translation. Where such amendments have been or are filed in another language, a translation of the amendments into the language in which the international preliminary examination is carried out must also be furnished (also refer to paragraph IP 11.046). If the amendments or accompanying letter are not in the required language, the International Preliminary Examining Authority will invite the applicant to furnish them within a reasonable time limit. If the applicant fails to furnish the amendments and/or the accompanying letter within the time limit set in the invitation, the International Preliminary Examining Authority will not take the amendments into consideration for the purposes of the international preliminary examination.

IP 10.056. May the International Preliminary Examining Authority ask for the priority document and a translation of it?

Rule 66.7

If the International Preliminary Examining Authority needs a copy of an application the priority of which is claimed in the international application (“the priority document”) and the International Bureau already has the priority document in its possession (refer to paragraph IP 5.070), the International Bureau furnishes a copy of it to the Authority on request. Should the applicant have failed to provide the priority document under Rule 17.1, the international preliminary report on patentability (Chapter II of the PCT) may be established as if the priority had not been claimed, but no elected Office may later disregard the priority claim under those circumstances before giving the applicant an opportunity to furnish the priority document within a time limit which is reasonable under the circumstances. Where the priority document is in a language other than the language or one of the languages indicated for the International Preliminary Examining Authority in Annex E, and that Authority is of the opinion that the validity of the priority claim is relevant for the formulation of the opinion on whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable, the Authority may invite the applicant to furnish to it a translation in that language. The applicant must comply with that invitation within two months from its date; otherwise, the international preliminary report on patentability (Chapter II of the PCT) may be established as if the priority had not been claimed.

IP 10.057. What is the purpose of the international preliminary examination?

Article 33(1)

As already stated in paragraph IP 10.001, the purpose of the international preliminary examination is to formulate an opinion - which is “preliminary” (since a final opinion will be formulated only in the national phase by the national or regional Patent Office or by a competent national or regional court) and “non-binding” (on anyone, including elected Offices) - on whether the claimed invention appears (i) to be novel, (ii) to involve an inventive step (to be non-obvious), and (iii) to be industrially applicable. While there is not a fully uniform approach to these criteria in national laws, their application under the PCT during the international preliminary examination procedure is such that the international preliminary report on patentability (Chapter II of the PCT) gives a good idea of the likely results in the national phase.

IP 10.058. For the purposes of the international preliminary examination, when is a claimed invention considered novel?

Article 33(2),

Rule 64

For the purposes of the international preliminary examination, a claimed invention is considered novel if it is not anticipated by the prior art. Rule 64 defines prior art for the purposes of the examination.

IP 10.059. For the purposes of the international preliminary examination, when is a claimed invention considered to involve an inventive step?

Article 33(3),

Rule 65

For the purposes of the international preliminary examination, a claimed invention is considered to involve an inventive step if, having regard to the prior art as defined in the Regulations (refer to paragraph IP 10.058), it is not, at the prescribed relevant date, obvious to a person skilled in the art. For further details, refer to Rule 65.

IP 10.060. For the purposes of the international preliminary examination, when is a claimed invention considered industrially applicable?

Article 33(4)

For the purposes of the international preliminary examination, a claimed invention is considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry.

IP 10.061. What documents form the basis of the international preliminary examination?

Rule 66.1,

Rule 66.4bis

The international preliminary examination is based on the claims, the description and the drawings comprised in the international application. Amendments to the claims under Article 19 made before the demand was filed are taken into account unless they are superseded by a subsequent amendment under Article 34 (refer to paragraph IP 10.028) or considered as reversed by an amendment under Article 34 (refer to paragraph IP 10.026). Amendments made after the demand is filed, whether under Article 19 or under Article 34, are also taken into account for the purposes of the international preliminary examination, except that they need not be taken into account for the purposes of a written opinion of the International Preliminary Examining Authority or the international preliminary report on patentability (Chapter II of the PCT) if they are received after the International Preliminary Examining Authority has begun to draw up that opinion or report. As to the permissibility of amendments in general, refer to paragraph IP 11.047.

IP 10.062. What happens if no international search report has been established in respect of certain claims?

Rule 66.2(a)(vi)

Claims relating to inventions in respect of which no international search report has been established (refer to paragraphs IP 7.013 to IP 7.021) need not be the subject of international preliminary examination and any written opinion of the International Preliminary Examining Authority, as well as the international preliminary report on patentability (Chapter II of the PCT), will so indicate.

IP 10.062A. Does the International Preliminary Examining Authority carry out any additional search?

Rule 66.1ter

The International Preliminary Examining Authority normally carries out a top-up search to discover any documents referred to in Rule 64, which have been published or have become available to the Authority for search subsequent to the date on which the international search report was established, unless where it considers that this would serve no useful purpose, for example, where it finds that the international application, in its entirety, relates to subject matter on which it is not required to carry out an international preliminary examination. The international preliminary examination report indicates whether a top-up search was carried out. When establishing the international preliminary examination report, the Authority may include results of the top-up search.

IP 10.063. What special requirements apply during the international preliminary examination to nucleotide and/or amino acid sequence listings?

Rule 13ter.2

Where the International Preliminary Examining Authority finds that an international application contains disclosure of a nucleotide and/or amino acid sequence required to be included in a sequence listing pursuant to Annex C of the Administrative Instructions and that a sequence listing complying with the prescribed standard (refer to paragraph IP 5.099) in a language accepted by that Authority has not already been furnished (as part of the international application or for the purposes of international preliminary examination, as the case may be), that Authority may invite the applicant to furnish a sequence listing complying with this standard or containing a translation of the language-dependent free text. The listings required by the International Preliminary Examining Authority are for the purposes of carrying out the international preliminary examination. National law requirements, in relation to disclosure of inventions involving sequence listings, are a matter for the national phase of processing.

IP 10.064. What matters concerning the international application may be the subject of comment by the International Preliminary Examining Authority?

Rule 66.2

The International Preliminary Examining Authority notifies the applicant in a written opinion if it considers that

(i) the international application relates to subject matter on which it is not required to carry out an international preliminary examination, and decides not to carry out such an examination (this situation being the same as the one described in paragraph IP 7.013 in relation to the international search),

Article 34(4)(a)(ii),

Rule 66.2(a)(i)

(ii) the description, the claims or the drawings are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness) or industrial applicability of the claimed invention (this situation being the same as the one described in paragraph IP 7.014 in relation to the international search),

Rule 66.2(a)(ii)

(iii) the international preliminary report on patentability (Chapter II of the PCT) should be “negative” (refer to paragraph IP 10.075) 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 (be non-obvious), or does not appear to be industrially applicable,

Rule 66.2(a)(iv)

(iv) any amendment goes beyond the disclosure in the international application as filed (refer to paragraphs IP 10.070 and IP 11.047),

Rule 66.2(a)(v)

(v) the international preliminary report on patentability (Chapter II of the PCT) should be accompanied by (unfavorable) observations on the clarity of the claims, the description and the drawings, or on the question of the claims being fully supported by the description,

Rule 66.2(a)(vi)

(vi) a claim relates to an invention in respect of which no international search report has been established (refer to paragraphs IP 7.013 to IP 7.021) and the International Preliminary Examining Authority has decided not to carry out the international preliminary examination in respect of that claim,

Rule 66.2(a)(vii)

(vii) a nucleotide and/or amino acid sequence listing is not available to it in such a form and language that a meaningful international preliminary examination can be carried out (similarly to paragraph IP 5.099 in relation to the international search),

Rule 66.2(a)

(viii) the national law applied by the national Office which acts as the 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) (this situation being the same as the one described in paragraphs IP 5.113 and IP 7.014 in relation to the international search).

IP 10.065

Rule 66.2(a)(iii)

The Authority also proceeds as indicated in paragraph IP 10.064 where it notices some defect in the form or contents of the international application. Where observance of the unity of invention requirement (refer to paragraphs IP 5.114 to IP 5.123) is in question, refer to paragraph IP 10.072.

IP 10.066. What is a “written opinion”?

Rule 66.2,

Rule 66.4(a)

A “written opinion” is a notification, issued by the International Preliminary Examining Authority to the applicant, which indicates any comments by the Authority on the matters mentioned in paragraph IP 10.064. The written opinion must fully state the reasons for it, must invite the applicant to submit a written reply and must fix a time limit for the reply (usually two months, but extendible at the applicant’s request - for more details, refer to Rule 66.2(d)). There may be no written opinion if the Authority has no such comments to make (in which case the Authority will proceed directly to the issuance of the international preliminary report on patentability (Chapter II of the PCT)). The Authority may issue one or more additional written opinions if time permits, particularly if the applicant makes a prompt and serious attempt to address the Authority’s comments by argument or amendment.

IP 10.067. How may the applicant react to a written opinion by the International Preliminary Examining Authority?

The applicant may ask for further clarifications from the International Preliminary Examining Authority and may voluntarily give clarifications to it, since the PCT expressly provides that the applicant has a right to communicate orally, by telephone or personally, or in writing with the Authority (Article 34(2)(a); refer also to Rule 66.6). More specifically, where the applicant receives a written opinion from the Authority on any of the matters referred to in paragraphs IP 10.064 and IP 10.065, he/she may respond to that written opinion (refer to Article 34(2)(d)). The response may consist of amendments and/or arguments. Any change – other than the rectification of obvious mistakes (refer to paragraphs IP 11.033 to IP 11.044) – in the claims, the description or the drawings (including cancellation of claims, omission of passages in the description or omission of certain drawings) is considered an amendment. For the form of amendments, refer to paragraph IP 10.071. If the International Preliminary Examining Authority issues one or more additional written opinions, the applicant’s reaction possibilities are the same as in the case of the first written opinion. The applicant may request one or more additional opportunities for submitting amendments or arguments if sufficient time remains.

IP 10.068. Will amendments and arguments always be taken into account?

Rule 66.4bis

Amendments and arguments submitted will be taken into account if they are received in sufficient time. In view of the limited time available for international preliminary examination, however, it is in the applicant’s interest to reply as soon as possible to any written opinion. 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 report on patentability (Chapter II of the PCT) if they are received after the Authority has begun to draw up that opinion or report.

IP 10.069. Am I obliged to make changes to my international application after receipt of a negative written opinion?

It should be noted that the International Preliminary Examining Authority cannot force the applicant to make any change in the international application. In other words the applicant may disregard any opinion of the said Authority, either wholly or in part. Such an attitude may lead to an unfavorable or less favorable international preliminary report on patentability (Chapter II of the PCT), but the applicant may prefer such a report (in the hope of overcoming, in the national phase, any difficulties that it may cause) to an undesirable change.

IP 10.070. May amendments include new matter in the international application?

Annex C of the Administrative Instructions

Rule 70.2(c)

As for amendments under Article 19 (refer to paragraph IP 9.009), amendments under Article 34(2)(b) may not go beyond the disclosure in the international application as filed. If the International Preliminary Examining Authority considers that any amendments do not comply with this requirement, it will comment accordingly in any written opinion and in the international preliminary report on patentability (Chapter II of the PCT), and the report will be established as if such amendment had not been made (also refer to paragraph IP 11.047).

IP 10.071. What must be done to effect amendments to the international application before the International Preliminary Examining Authority?

The applicant must submit a replacement sheet for every sheet which, on account of an amendment, differs from the sheet previously filed. The amendment must be submitted with an accompanying letter which explains the difference between the replaced sheet and the replacement sheet and which preferably explains the reasons for the amendment. In addition, the letter must indicate the basis for the amendment in the application. The basis for the amendment must always refer to the application (description, claims, drawings) as originally filed, even if multiple amendments were made during the international phase. When filing amendments to the claims, a complete set of claims in replacement of the claims as originally filed (or previously amended under Article 19) shall be submitted. For an example of how the basis for the amendment should be indicated, refer to paragraph IP 9.006. For the consequences of not furnishing an accompanying letter with the replacement sheets, refer to paragraph IP 11.047A. Where the amendment consists in the deletion of passages or in minor alterations or additions, the alterations or additions may be made on a copy of the relevant sheet of the international application, provided that the clarity and direct reproducibility of that sheet are not adversely affected. No replacement sheet is required where the amendment results in the cancellation of an entire sheet; such an amendment may be communicated in a letter which preferably explains the reasons for the amendment. For amendments to the claims, also refer to paragraphs IP 9.005 and IP 9.006 in relation to the international search, which apply mutatis mutandis. Where the international application was not filed in the language of publication, any amendments under Article 34 and any accompanying letter (as well as any letter accompanying Article 19 amendments) must be in the language of publication. Where the international preliminary examination is carried out on the basis of a translation of the international application (refer to paragraphs IP 10.011, IP 10.054 and IP 10.055), any amendments under Article 34 and any amendments under Article 19, which are to be taken into account, and any accompanying letter must be in the language of that translation. Where such amendments have been or are filed in another language, a translation of the amendments into the language in which the international preliminary examination is carried out must also be furnished (refer to paragraphs IP 5.013, IP 10.011 and IP 11.046). No fee is payable in respect of filing any amendments under Article 34(2)(b). If the amendments or accompanying letter are not in the required language, the International Preliminary Examining Authority will invite the applicant to furnish them within a reasonable time limit. If the applicant fails to furnish the amendments and/or the accompanying letter within the time limit set in the invitation, the International Preliminary Examining Authority shall not take such amendments into account for the purposes of the international preliminary examination.

IP 10.072. What happens where the International Preliminary Examining Authority finds that “unity of invention” is lacking?

Rule 68,

Rule 70.13

If the International Preliminary Examining Authority considers that the international application does not comply with the unity of invention requirement (refer to paragraphs IP 5.114 to IP 5.123 for the notion of “unity of invention”), it may choose between two courses of action: it may carry out the international preliminary examination on the entire international application and express its views on the lack of unity of invention in the international preliminary report on patentability (Chapter II of the PCT), or it may invite the applicant to either restrict the claims so that they meet the requirement (in which case the Authority must specify at least one possibility of restriction) or to pay additional fees (since the preliminary examination fee is calculated to cover cases where unity of invention exists). If the applicant chooses to restrict the claims as required, the examination is carried out on the claims as restricted. If the applicant chooses to pay the additional fees, the international preliminary examination is carried out on the claims for the main invention and those claims in respect of which additional fees were paid, and the report will indicate that such additional fees have been paid. The additional fees may be paid under protest, in which case procedures similar to those explained in relation to the international search apply (refer to paragraphs IP 7.019 and IP 7.020). If the applicant neither restricts the claims nor pays additional fees, the examination is carried out on the main invention as identified by the International Preliminary Examining Authority or the applicant, or in cases of doubt as defined in Rule 68.5 (namely, the invention first mentioned in the claims is considered to be the main invention).

IP 10.073

Article 34(3)

A finding of lack of unity of invention may continue to be important during the national phase. Any elected Office which agrees with the finding of lack of unity may, during the national procedure, require the applicant to restrict the claims or to divide the application into a number of divisional applications, or to pay special fees in order to maintain those parts of the international application which do not relate to the main invention (for further details, refer to Article 34(3)).

THE INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY (CHAPTER II OF THE PCT)

IP 10.074. When must the international preliminary report on patentability (Chapter II of the PCT) be established?

Article 35(1),

Rule 69.2

The time limit for establishment of the international preliminary report on patentability (Chapter II of the PCT) is whichever of the following which expires last: 28 months from the priority date; six months from the time provided under Rule 69.1 for the start of the international preliminary examination; or six months from the date of receipt by the International Preliminary Examining Authority of the translation furnished under Rule 55.2 (refer to paragraphs IP 10.051 to IP 10.055). Thus, under normal circumstances, the applicant receives the report, at the latest, two months before national processing at the elected Offices may start. This ensures that the applicant has time to consider whether, and in which elected Offices, he/she wants to enter the national phase and to prepare the necessary actions (for details, refer to National Phase).

IP 10.075. What are the form and contents of the international preliminary report on patentability (Chapter II of the PCT)?

The international preliminary report on patentability (Chapter II of the PCT) contains, among other things, a statement (in the form of a simple “yes” or “no”), in relation to each claim which has been examined, on whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness) and industrial applicability. The statement is, where appropriate, accompanied by the citation of relevant documents together with concise explanations pointing out the criteria to which the cited documents are applicable and giving reasons for the International Preliminary Examining Authority’s conclusions. Other matters which may be included in the report are listed in paragraphs IP 10.064 and IP 10.065. The report also includes an indication whether any additional relevant documents had been discovered during a top-up search, states the date on which a top-up search was made or else states that no such top-up search was made (refer to paragraph IP 10.062A). Where applicable, the report also includes remarks relating to the question of unity of invention (refer to paragraph IP 10.072). For more details, refer to Article 35(1) and (2), Rule 70 and Section 604.

IP 10.076. How are amendments to the international application referred to in the international preliminary report on patentability (Chapter II of the PCT)?

Rule 70.2(c-bis),

Rule 70.2(e),

Rule 70.16

The international preliminary report on patentability (Chapter II of the PCT) identifies the basis on which it is established - that is, whether, and if so, which, amendments have been taken into account. If amendments were made either under Article 19 and/or Article 34, but the applicant failed to submit the required accompanying letter to the International Bureau or the International Preliminary Examining Authority, the report may be established as if the amendments concerned had not been made and the report shall so indicate. The following are attached as “annexes” to the international preliminary report on patentability (Chapter II of the PCT): replacement sheets containing amendments under Article 19 and/or Article 34, which have been taken into account, and any accompanying letters, and replacement sheets containing rectifications of obvious mistakes, and accompanying letter authorized under Rule 91. Where a rectification of an obvious mistake is not taken into consideration because it has reached the International Preliminary Examining Authority only after it has begun to draw-up the report and, as a result, was not taken into account, the report shall so indicate and the sheets relating to the rectification will be annexed to the report. Amendments under Article 19 which have been considered as reversed by an amendment under Article 34 (refer to paragraph IP 10.026) or which have been superseded by later replacement sheets, or amendments resulting in the cancellation of entire sheets, are not annexed to the report neither are the letters which accompany such replacement sheets. However, if the International Preliminary Examining Authority considers that the superseding or reversing amendment goes beyond the original disclosure, each superseded or reversed replacement sheet and any letter relating to such sheets are nevertheless annexed to the report. Similarly, if the applicant failed to submit, together with the superseding or reversing amendments, the required accompanying letter, indicating the basis of the amendment in the application as filed, and where, as a result, the report is established as if the superseding or reversing amendments had not been made, each such superseded or reversed replacement sheet and any letter relating to such sheets are nevertheless annexed to the report.

IP 10.077. May the international preliminary report on patentability (Chapter II of the PCT) express a view on the patentability of the invention?

Article 35(2)

No, it may not. Article 35(2) expressly states that “the international preliminary examination report shall not contain any statement on the question whether the claimed invention is or seems to be patentable or unpatentable according to any national law.” It should be noted that, in this context, “national law” includes regional patent treaties (the ARIPO Harare Protocol, the Eurasian Patent Convention, the European Patent Convention and the OAPI Agreement).

IP 10.078. In what language is the international preliminary report on patentability (Chapter II of the PCT) established?

Rule 70.17,

Rule 72,

Rule 74

Are translations prepared? The international preliminary report on patentability (Chapter II of the PCT) and any annexes are established in the language in which the international application is published - refer to paragraphs IP 9.017 to IP 9.020) - except where the international preliminary examination is carried out on the basis of a translation (refer to paragraphs IP 5.013, IP 10.011 and IP 10.013), in which case the international preliminary report on patentability (Chapter II of the PCT) and annexes are established in the language of that translation. Each elected State may require that the report, if it is not in (one of) the official language(s) of its national Office, be translated into English. If this is the case, the translation of the body of the report is prepared by the International Bureau, which transmits copies to the applicant and to each interested elected Office. If any elected Office requires a translation of annexes to the report, the preparation and furnishing of that translation is the responsibility of the applicant.

IP 10.079. How do the applicant, the International Bureau and the elected Offices receive the international preliminary report on patentability (Chapter II of the PCT) and, where applicable, its translation?

The International Preliminary Examining Authority transmits, on the same day, copies of the international preliminary report on patentability (Chapter II of the PCT) (and any annexes – refer to paragraph IP 10.076) to the applicant and the International Bureau. The latter transmits copies of the report (including any annexes) to the elected Offices, as well as a translation into English of the body of the report where that is required by any elected Office in accordance with Rule 93bis; it is however the applicant’s responsibility to prepare a translation of any annexes, if required, and send it to the elected Offices concerned (refer to paragraph IP 10.078 and the National Phase). If, in the opinion of the applicant, there are errors in the translation of the international preliminary report on patentability (Chapter II of the PCT), he/she may send written observations on such errors to any interested elected Office and must send a copy of such observations to the International Bureau. As far as comments on the content of the international preliminary report on patentability (Chapter II of the PCT) itself are concerned, they should be addressed to the elected Offices during the national phase.

IP 10.079A. Are any other documents in the file of the International Preliminary Examining Authority transmitted to the International Bureau?

Rule 71.1(b),

Section 602bis

The International Preliminary Examining Authority also transmits a copy of the following documents to the International Bureau, which will communicate a copy to the elected Offices at the same time as it transmits a copy of the international preliminary report on patentability:

— any written opinion issued by the Authority;

— any replacement sheet containing amendments under Article 34 and any letter accompanying the amendments, including any such amendments and letters that have been superseded;

— any letter containing arguments that the applicant submitted to the Authority under PCT Rule 66.3 (refer to paragraph IP 10.067);

— any invitation to restrict claims or pay additional fees issued by the Authority;

— any protest against the invitation to restrict the claims or pay additional fees and the decision thereon, regardless whether or not the applicant has so requested in accordance with Rule 68.3(c); and

— any other document in its file that it wishes to transmit.

These documents will be transmitted to the International Bureau at any time after they have become available, but generally not later than the time of transmittal of the international preliminary examination report. It should be noted that any International Preliminary Examining Authority may decide to postpone the transmittal of the aforementioned documents until such time as it is technically prepared to do so.

IP 10.080. Are the international preliminary report on patentability (Chapter II of the PCT) and any other documents from the file of the international preliminary examination accessible to persons other than the applicant and the elected Offices?

The report and related documents from the file of the international preliminary examination are not published by the International Bureau. According to Article 36(3)(a), the International Bureau communicates the report to elected Offices. As of 1 January 2004, however, if so requested by an elected Office (details of such requests are published in the Official Notices (PCT Gazette)), the International Bureau will make available on PATENTSCOPE at: https://www.wipo.int/patentscope/en/ the international preliminary report on patentability (Chapter II of the PCT), although, not before the expiration of 30 months from the priority date. Similarly, according to the amendments to Rules 71.1(b) and 94.1(c), which entered into force on 1 July 2020, any other document received at or established by the International Preliminary Examining Authority on or after 1 July 2020 will be made available on PATENTSCOPE after 30 months from the priority date (refer to paragraph IP 10.079A). The International Preliminary Examining Authority may not, unless requested or authorized by the applicant, give copies to anyone other than the applicant and the International Bureau. Once the international preliminary report on patentability (Chapter II of the PCT) becomes part of the file in the elected Office, however, the national law applicable by that Office applies as to access to that report and the international preliminary examination file by persons other than the applicant, as indicated in paragraph IP 11.072.

IP 10.081. [Deleted]

IP 10.082. How can the applicant obtain copies of the documents cited in the international preliminary report on patentability (Chapter II of the PCT)?

Article 36(4),

Rule 71.2

The applicant may obtain copies of those documents cited in the international preliminary report on patentability (Chapter II of the PCT) which were not cited in the international search report by requesting them from the International Preliminary Examining Authority. Annex E indicates the fees charged by such Authorities for furnishing copies on request.

IP 10.083. What is the effect and usefulness of the international preliminary report on patentability (Chapter II of the PCT) in the national phase?

Since the international preliminary report on patentability (Chapter II of the PCT) contains an opinion on the compliance of the international application with internationally accepted criteria of novelty, inventive step (non-obviousness) and industrial applicability, it provides the applicant with a strong basis on which to evaluate the chances of obtaining patents in the various Offices in the national phase. While the international preliminary report on patentability (Chapter II of the PCT) is not binding on elected Offices, it carries considerable weight with them, and a favorable report will assist the prosecution of the application before the elected Offices. An elected Office which is the same national or regional Office as that which carried out the international preliminary examination as International Preliminary Examining Authority under the PCT will generally proceed rapidly to the grant of a patent in the national phase if the international preliminary report on patentability (Chapter II of the PCT) is favorable to the international application.

CHAPTER 11: MISCELLANEOUS QUESTIONS CONCERNING THE INTERNATIONAL PHASE

REPRESENTATION BY AGENTS AND COMMON REPRESENTATIVES

IP 11.001. For what purposes may an agent be appointed?

Rule 90.1

The applicant may appoint an agent or agents to represent him/her before the receiving Office, the International Bureau, the International Searching Authority, any Authority specified for supplementary search and the International Preliminary Examining Authority – that is, for the purposes of the international phase generally. The applicant may also appoint an agent or agents to represent him/her specifically before the International Searching Authority, any Authority specified for supplementary search or before the International Preliminary Examining Authority. Agents appointed for the purposes of the international application during the international phase will not be automatically regarded as agents by national Offices during the national phase; other agents may thus have to be appointed for the purposes of the national phase before each of the various designated Offices (refer to National Chapters, (Summaries)).

IP 11.002. Who may be appointed as an agent?

Article 49,

Rule 83.1bis,

Rule 90.1

A person may be appointed as agent for the international phase generally if that person has the right to practice before the Office with which the international application is filed. Where the international application is filed with the International Bureau as receiving Office (refer to paragraph IP 5.008), any person who has the right to practice before the national (or regional) 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 (refer to Annex C) may be appointed as agent. A person may be appointed as agent to represent the applicant specifically before the International Searching Authority, before any Authority specified for supplementary search, or before the International Preliminary Examining Authority if that person has the right to practice before the Office or intergovernmental organization which acts as that Authority. The right to practice before an Office or organization is governed by the national law applied by the Office or organization concerned.

IP 11.003. Are all applicants required to have the same agent?

Each applicant is free to appoint his/her own agent. Ordinarily, however, it will be convenient for all of two or more applicants to appoint the same person to represent all of them as their “common agent” (or to appoint a number of common agents – for example, the partners in the firm of patent attorneys or patent agents which acts for the applicant).

IP 11.004. Can an agent appoint a sub-agent?

Rule 90.1(d)

Any agent who has been appointed to represent the applicant for the international phase in general may appoint a sub-agent to represent the applicant, unless there is an indication otherwise in the document by which the original agent was appointed. Sub-agents may be appointed to represent the applicant either generally or before a specific International Searching Authority, Authority specified for supplementary search or International Preliminary Examining Authority. A sub-agent’s appointment is subject to the same qualifications as to the right to practice as are set out in paragraph IP 11.002.

IP 11.005. What is a “common representative” of the applicants?

Article 9,

Rule 2.2bis,

Rule 90.2(a)

Where there are two or more applicants and they have not appointed a common agent representing all of them for the purposes of the international phase in general, one of the applicants may be appointed by the other applicants as their common representative. Only a person who is a national or resident of a Contracting State, and thus is entitled to file an international application, may be appointed as common representative.

IP 11.006. What happens if no common agent or common representative is specifically appointed?

If there are two or more applicants and they do not appoint a common agent or a common representative, the first-named applicant who has the right to file an international application with the receiving Office concerned (refer to paragraphs IP 5.020 to IP 5.023) will automatically be considered to be the common representative of all the applicants (“deemed common representative”). Such “deemed common representative” may do most of the things which an appointed agent or an appointed common representative may do on behalf of all the applicants, including signing the request, the demand and many other documents for the purposes of the PCT. However, the “deemed common representative” may not validly sign, on behalf of the other applicants, a notice effecting withdrawal of the international application, a designation, one or more priority claim(s), the demand or an election, without submitting evidence of their consent to such withdrawal. If the “deemed common representative” has appointed an agent, that agent is able to perform any act which could be performed by the “deemed common representative” on behalf of the other applicants, including the signing of certain documents with effect for all the applicants (but, similarly, is not able to sign any notice of withdrawal).

IP 11.007. How is an agent or common representative appointed?

Rule 90.4(a)

The appointment of an agent or common representative may be effected in the request and or the demand (refer to paragraphs IP 5.041 to IP 5.049, and IP 10.019 to IP 10.023) in a separate power of attorney (refer to paragraph IP 11.008) or in a general power of attorney (refer to paragraph IP 11.009). Where there are two or more applicants, a common agent or common representative, representing all of them, may be appointed by a combination of those methods, provided that each applicant signs either the request, the demand or a power of attorney.

IP 11.008. What are the requirements with respect to a separate power of attorney?

Rule 90.4

Where the appointment of an agent or common representative is effected by a separate power of attorney, that power of attorney must be submitted to either the receiving Office or the International Bureau. However, any receiving Office, International Searching Authority, Authority specified for supplementary search, International Preliminary Examining Authority and/or the International Bureau may waive the requirement that a separate power of attorney be submitted to it (details of such waivers are published in the Official Notices (PCT Gazette)) in the PCT Newsletter and on the WIPO website at: https://www.wipo.int/en/web/pct-system/texts/waivers. It should be noted, however, that a waiver made by an Office, an Authority or the International Bureau does not apply where the agent or the common representative submits any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4. A suitable model form for a separate power of attorney is available on the WIPO website at: https://www.wipo.int/en/web/pct-system/forms/pa/index.

IP 11.009. Can an agent be appointed by a general power of attorney to represent the applicant in relation to any international application filed by that applicant?

Rule 90.5

Yes, such a general appointment can be made. The original general power of attorney must be filed with the receiving Office if the appointment was for the purposes of the international phase generally, or with the International Searching Authority, the Authority specified for supplementary search, or the International Preliminary Examining Authority if the appointment was specifically to represent the applicant before that Authority. The appointment will then be effective in relation to any particular application filed by that applicant provided that the general power of attorney is referred to in the request, the demand or a separate notice. However, any receiving Office, International Searching Authority, Authority specified for supplementary search, and/or International Preliminary Examining Authority may waive the requirement that a copy of the general power of attorney be attached to the request, the supplementary search request, the demand or any separate notice (details of such waivers are published in the Official Notices (PCT Gazette)). For an Office or Authority that has not made a waiver of the requirement, a copy of the general power of attorney must be attached to the request, supplementary search request, demand or separate notice. That copy of the signed original need not, itself, be separately signed. A suitable model form for a general power of attorney is available on the WIPO website at: https://www.wipo.int/en/web/pct-system/forms/pa/index. It should be noted that a waiver made by an Office or an Authority does not apply where the agent or the common representative submits any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4.

IP 11.010. What is the legal position of an agent or common representative?

Rule 90.3

Any act by or in relation to an agent or common representative has the effect of an act by or in relation to the applicant or applicants whom the agent represents for the purposes of the procedure before the receiving Office, International Bureau, International Searching Authority, Authority specified for supplementary search, and/or International Preliminary Examining Authority, depending on whether the appointment was for general purposes or for the purposes of the procedure before a particular authority (refer to paragraph IP 11.001). In particular, an agent or common representative is able to sign documents in connection with the international application on behalf of the applicants. However, an applicant who is the deemed common representative (refer to paragraph IP 11.006) may not sign notices of withdrawal on behalf of the other applicants (refer to paragraphs IP 11.048, IP 11.050, IP 11.056 and IP 11.060). If there are two or more agents representing the same applicant or applicants, an act by or in relation to any of those agents has the effect of an act by or in relation to that applicant or those applicants.

IP 11.011. Can the appointment of an agent or a common representative be revoked?

Rule 90.6(a)

Yes, it can. The document containing the revocation must be signed by the persons who made the appointment or by their successors in title. The appointment of a sub-agent may also be revoked by the applicant concerned. If the appointment of an agent is revoked, any appointment of a sub-agent by that agent is also considered revoked.

IP 11.012

Rule 90.6(b),

Rule 90.6(c)

The appointment of an agent for the international phase in general automatically has the effect, unless otherwise indicated, of revoking any earlier such appointment of an agent. The appointment of a common representative similarly has the effect, unless otherwise indicated, of revoking any earlier appointment of a common representative.

IP 11.013

The rules for signing and submission of a power of attorney apply mutatis mutandis to a revocation of an appointment (refer to paragraphs IP 11.007 and IP 11.008).

IP 11.014. How can an agent or common representative renounce his/her appointment?

Rule 90.6(d),

Rule 90.6(e),

Section 425

Renunciation of an appointment may be made by means of a notification signed by the agent or common representative. The Rules for signing and submission of a power of attorney apply mutatis mutandis to a renunciation (refer to paragraphs IP 11.007 and IP 11.008). The applicant is informed of the renunciation by the International Bureau.

CORRESPONDENCE TO THE APPLICANT

IP 11.015. To whom will correspondence be addressed by the various authorities under the PCT?

Section 108(b)

Where there is a sole applicant in relation to an international application, correspondence will be sent to the applicant at the address indicated; or, if one or more agents have been appointed, to that agent or the first-mentioned of those agents; or, if there is no appointed agent, but a special address has been indicated for notifications (refer to paragraphs IP 5.030 and IP 5.051), to that special address.

IP 11.016

Section 108(c)

Where there are two or more applicants who have appointed one or more common agents, correspondence will be addressed to that agent or the first-mentioned of those agents. Where no common agent has been appointed, correspondence will be addressed to the common representative (either the appointed common representative or the applicant who is the “deemed common representative” – refer to paragraphs IP 11.005 and IP 11.006) at the address indicated; or, if the common representative has appointed one or more agents, to that agent or the first-mentioned of those agents; or, if the common representative has not appointed an agent but has indicated a special address for notifications, to that special address.

IP 11.017

Section 108(d)

Where one or more agents have been appointed specifically to represent the applicant(s) before the International Searching Authority, the Authority specified for supplementary search, or the International Preliminary Examining Authority, correspondence will be addressed by the Authority concerned to that agent or the first-mentioned of those agents.

CHANGES CONCERNING THE APPLICANT, INVENTOR, AGENT OR COMMON REPRESENTATIVE

IP 11.018. What should be done where there is a change in the person, name, residence, nationality or address of the applicant, or in the person, name or address of the inventor, agent or common representative?

Rule 92bis,

Section 422

Where there is a change in the person, name, residence, nationality or address of the applicant, or in the person, name or address of the inventor, agent or common representative, the applicant or the receiving Office should ask the International Bureau to record the change. If so requested, the International Bureau records the change and notifies all Offices and PCT Authorities interested in the change accordingly. Any such recording is free of charge.

IP 11.018A. Where should requests for change be sent?

While Rule 92bis provides for the possibility, at the choice of the applicant, to send requests for change to the receiving Office or the International Bureau, it is strongly recommended to send them directly to the International Bureau, preferably via ePCT (signing in with strong authentication or without strong authentication at https://pct.wipo.int/ePCT). It is important that the International Bureau - and not the receiving Office - receives the request for change in order to meet the applicable time limit of 30 months from the priority date.

IP 11.018B. Does the applicant need to provide any documentary evidence?

Where the applicant or agent of record requests a change, it is not necessary to produce any documentary evidence relating to the change. In particular, where the applicant or agent of record requests a change in the person of the applicant, the International Bureau does not require an assignment or other documentary evidence to show the transfer of rights. Assignments and other documentary evidence relating to any transfer of rights may, however, be required by the designated Offices once national processing has started; the National Chapters of this Guide give details on this matter. If the agent of record wishes to also represent the new applicant, a power of attorney, signed by the new applicant, should be furnished at the same time, unless the Office or Authority with which the request is filed has waived the requirement that a power be furnished (refer to paragraphs IP 11.008 and IP 11.009). It should be noted that the International Bureau has waived such a requirement (refer to https://www.wipo.int/en/web/pct-system/texts/waivers).

Where a person not yet named in the request form, hereinafter referred to as the new applicant, without the written consent of the applicant of record, requests a change in the person of the applicant, a copy of an assignment or other documentary evidence supporting the change in person must be filed with the request for the change. Where the request for a change of applicant is made by a (new) agent for the new applicant, a power of attorney signed by the new applicant must be furnished in addition to the documentary evidence unless the Office or Authority with which the request is filed has waived the requirement that a separate power of attorney, or a copy of a general power of attorney, has to be submitted (refer to paragraphs IP 11.008 and IP 11.009). It should be noted that the International Bureau has not waived that requirement and, as a consequence, a new power of attorney will always be required when filing this type of request for a change with the International Bureau.

Section 422bis(a)(iii)

Where an applicant is requested to be deleted from the records and that request was not also signed by or on behalf of the applicant concerned, the International Bureau will send a copy of the notification of change (Form PCT/IB/306) to the applicant who has been removed from the records. This also applies where the request is signed by an agent on behalf of the applicants who is only deemed appointed since the receiving Office has waived the requirement that a power of attorney must be submitted. In case the applicant concerned objects to the change in writing during the international phase, the recorded change would be undone.

Where a patent agent changes to a new firm and requests that the change be recorded, such change would be considered as a change of address and a new power need not be furnished.

IP 11.018C. Must a new applicant be a national or resident of a contracting State?

It is not necessary, in order for a change in the person of the applicant to be recorded, that the new applicant be a resident or national of a PCT Contracting State; the PCT does not contain any restriction as to whom an international application may be assigned. The applicant's right to file the international application is determined solely on the basis of the nationality and residence of the applicant(s) indicated in the request form at the time when the international application is filed. However, the residence and nationality of the new applicant must be borne in mind in considering whether that applicant has the right to file a demand for international preliminary examination (refer to paragraphs IP 10.017 and IP 10.018).

IP 11.018D. What other kind of changes are covered by Rule 92bis?

Changes concerning the addition or deletion of indications relating to applicants and/or inventors, the order of applicants and/or inventors in the request form, changes relating to e-mail addresses etc. will also be recorded under Rule 92bis if requested.

It should be noted that it is not possible during the international phase to record rights of third parties, such as licenses, pledges or other security interests. Such changes, to the extent provided for under the applicable national law, can only be recorded during the national phase and in accordance with the applicable national procedures.

IP 11.019. Where a change affects multiple applications, may the applicant make a single request?

Where a change concerns multiple pending international applications, it is recommended that applicants submit a single written request and include a list of the PCT applications concerned (and not a separate request for each application). The list should only include pending international applications, that is, applications for which the 30-month time limit from the priority date has not yet expired.

IP 11.020. Is there a special form for requesting the recording of changes under Rule 92bis?

There is no special form for requesting the recording of changes under Rule 92bis. The request may be presented in the form of a letter to the receiving Office or the International Bureau, clearly specifying the application concerned and which information is requested to be changed. Where the request concerns a change in a name or address and the application is filed in a language which uses non-Latin characters, in addition to the new name or address in the language of filing, a transliteration or translation of the new name or address into English must also be provided. It is strongly recommended to file such requests directly with the International Bureau through ePCT (signing in with strong authentication or without strong authentication at https://pct.wipo.int/ePCT).

IP 11.021. What is the time limit to request the recording of changes?

Rule 92bis.1(b)

The International Bureau records the change if it receives the request for recording before the expiration of 30 months (regardless of the precise time limit applicable to enter the national phase, Office by Office, such as 31 months or later) from the priority date. If the applicant wants a particular change to be taken into account for international publication of the application, the request for change must reach the International Bureau before technical preparations for international publication have been completed (refer to paragraph IP 9.014). If the request reaches the International Bureau too late to be reflected in the international publication but within the 30-month time limit, it will nevertheless be acted upon and notified to the designated/elected Offices. The bibliographic data page of PATENTSCOPE is updated to reflect any recorded change until the expiration of 30 months. If the request reaches the International Bureau after the expiration of 30 months, the change will not be recorded and the applicant will have to proceed with such request before each designated/elected Office.

IP 11.022. What is the legal effect of any recorded change?

In principle, all designated and elected Offices are obliged to accept changes recorded by the International Bureau. However, Offices are entitled to require additional evidence or documents in the national phase regarding changes recorded during the international phase (for information on the Offices which require additional documents in the national phase, including a new request for change specifically for the national phase before a particular Office, refer to the relevant Summary in the National Chapters of this Guide).

DEATH OF APPLICANT OR INVENTOR

IP 11.023. What should be done in the case of the death of the applicant during the international phase?

Article 27(2),

Rule 92bis.1(a)

The answer to this question depends on the national law applicable in such a case. The successor to the rights of the applicant (whether an heir, a legal representative, the estate represented by a legal representative, etc.) should be indicated as the new applicant, and a request for such a change to be recorded accordingly should be made under Rule 92bis.1 (refer to the procedure outlined in paragraphs IP 11.018 to IP 11.022). The reason for the requested change must be indicated. Documentary evidence proving the right to the application is not required during the international phase (although it may be required by any designated Office for the purposes of the national phase of processing).

IP 11.024. [Deleted]

IP 11.025. What should be done if the inventor died before the international application was filed?

Article 9,

Rule 18.1

In such a case, the request must indicate the name of the deceased inventor with an indication that he/she is deceased, for instance: “JONES, Bernard (deceased).”

IP 11.026. What should be done in the case of the death of the inventor during the international phase?

In such a case, the recording of a change to indicate that the inventor is deceased may be requested; where such indication is added, the inventor’s address would be removed.

APPLICANT UNAVAILABLE OR UNWILLING TO SIGN THE INTERNATIONAL APPLICATION OR OTHER DOCUMENTS

IP 11.027. What must be done if the applicant is temporarily unavailable to sign the international application?

Where an applicant is temporarily unavailable, the international application can be filed without that applicant’s signature. The lack of an applicant’s signature or of a power of attorney signed by that applicant, where either of these might be required, are correctable defects under Article 14(1)(a)(i) and (b), and can be remedied by filing a copy of the request (or, where the request has been signed by an agent, of a power of attorney (where this might be necessary)), duly signed by the applicant within the time limit fixed by the receiving Office for the correction of these potential defects (refer to paragraph IP 6.032).

IP 11.028. - IP 11.032. [Deleted]

RECTIFICATION OF OBVIOUS MISTAKES

IP 11.033. Can obvious mistakes be rectified by the applicant?

Rule 91.1(a),

Rule 91.1(g)

Obvious mistakes in the international application or other documents submitted by the applicant may generally be rectified if the rectification is requested within the applicable time limit. Any such rectification is effected free of charge. Rule 91 considers certain mistakes to be not “rectifiable” (refer to paragraph IP 11.037) and requires applicants to rely on other means of correction (refer to Rules 20.4, 20.5, 26bis and 38.3).

IP 11.034. What types of mistakes can be rectified?

Rule 91.1(c)

Only obvious mistakes can be rectified. A mistake is considered obvious if it is obvious to the competent authority that, at the relevant date (refer to paragraph IP 11.036), something else was intended than what appears in the document concerned, and that nothing else could have been intended other than the proposed rectification. In other words, both the mistake and the rectification of that mistake have to be obvious to the competent authority.

IP 11.035. Is there any limitation on the kind of documents which an authority could consider when determining whether a mistake is obvious?

Rule 91.1(d),

Rule 91.1(e)

If the mistake is contained in the description, the claims or the drawings, or in a correction or any amendment thereof, the competent authority is limited, for the purposes of determining whether both the mistake and the proposed rectification are obvious (refer to paragraph IP 11.034), to only take into account the contents of the description, the claims and the drawings and, where applicable, of the correction or amendment concerned. If the mistake is contained in the request or a correction thereof or in any other document mentioned in Rule 91.1(b)(iv), the competent authority should, for the purposes of determining whether both the mistake and the proposed rectification are obvious, take into account not only the content of the international application itself and, where applicable, the correction concerned and any other document referred to in Rule 91.1(b)(iv), but also any other document submitted by the applicant together with the request, correction or document, as the case may be, including any priority document that is available to that competent authority. Furthermore, the authority should also take into account any other document contained in the authority’s international application file at the relevant date (refer to paragraph IP 11.036).

IP 11.036. What is the relevant date applied by the competent authority for the determination of whether a mistake and its rectification are obvious?

Rule 91.1(f)

Where the mistake appears in the international application as filed, the relevant date is the international filing date; where the mistake appears in any document other than the international application as filed, including any mistake in a correction or an amendment of the international application, the relevant date is the date on which the document (correction and/or amendment) concerned was submitted.

IP 11.037. Which mistakes cannot be rectified under Rule 91?

Rule 91.1(g)

The following mistakes cannot be rectified under Rule 91:

— omissions of entire elements or sheets of the international application, even if clearly resulting from inattention at the stage of filing of the international application, for example, when copying or assembling sheets;

— mistakes in the abstract;

— mistakes in an amendment under Article 19, unless the International Preliminary Examining Authority is the competent authority to authorize the rectification of such mistakes under Rule 91.1(b)(iii);

— mistakes in a priority claim or in a notice correcting or adding a priority claim if the rectification of the mistake would cause a change in the priority date (refer to paragraph IP 6.038 concerning whether such mistakes can instead be corrected under Rule 26bis.1(a));

IP 11.038. Do rectifications of obvious mistakes need to be authorized by a particular Office?

Rule 91.1(b)

Yes, rectifications must be authorized by the competent PCT authority, that is:

(i) if the mistake is in the request or in any correction thereof - by the receiving Office;

(ii) if the mistake is in the description, the claims or the drawings or in any correctionthereof - by the International Searching Authority, or by the International Preliminary Examining Authority where a demand for international preliminary examination has been made and has not been withdrawn and the date on which the international preliminary examination should start pursuant to Rule 69.1 has passed;

(iii) if the mistake is in the description, the claims or the drawings or any correction thereof, or in any amendment under Article 19 or 34, and if a demand for international preliminary examination has been made and has not been withdrawn and if the date on which the international preliminary examination should start pursuant to Rule 69.1 has passed - by the International Preliminary Examining Authority;

(iv) if the mistake is in any document other than those referred to in item (i) to (iii) above submitted to the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau, other than a mistake in the abstract or in an amendment under Article 19 - by that Office, Authority or Bureau, as the case may be.

IP 11.039. Where and when must a request for rectification be sent?

Rule 91.2

The request for rectification must be addressed to the authority competent to authorize the rectification (refer to paragraph IP 11.038). It must be filed within 26 months from the priority date. The request must specify the mistake to be rectified and the proposed rectification; it can also contain a brief explanation if the applicant so wishes. The procedure provided for in Rule 26.4 (refer to paragraph IP 6.052) applies as to the manner in which the proposed rectification should be indicated.

IP 11.040. Can a competent authority invite the applicant to correct an obvious mistake?

Rule 91.1(h)

Where the receiving Office, the International Searching Authority, the International Preliminary Authority or the International Bureau discovers what appears to be a rectifiable obvious mistake in the international application or in any other document, it may invite the applicant to file a request for rectification under Rule 91.

IP 11.041. What steps will the competent authority take once a request for rectification of an obvious mistake has been filed?

Once the applicant has filed a request for rectification of an obvious mistake, the competent authority promptly decides whether to authorize or to refuse the requested rectification and promptly notifies its decision to the applicant and the International Bureau. In case of a refusal, the competent authority should also inform the applicant and the International Bureau of the reasons for the refusal. Where the competent authority has authorized the rectification of an obvious mistake under Rule 91, the document concerned shall be rectified in accordance with Sections 325, 413bis, 511 and 607 of the Administrative Instructions. Where the rectification has been authorized by the receiving Office, the International Searching Authority or the International Bureau, the International Bureau publishes the rectified sheets as part of the international application if the authorization is received or given by the International Bureau before completion of technical preparations for international publication. Where such authorization is received or given only after technical preparations have been completed, the International Bureau will republish the international application in accordance with Rule 48.2(i). Where the rectification is authorized by the International Preliminary Examining Authority, the rectified sheets and the request for rectification of an obvious mistake submitted by the applicant are annexed to the IPRP (Chapter II of the PCT).

IP 11.042. When does the rectification of an obvious mistake become effective?

Rule 91.3(c)

If the mistake appears in the international application as filed, the rectification becomes effective as from the international filing date; if the mistake appears in any document other than the international application as filed, including any mistake in a correction or any amendment to the international application, the rectification becomes effective as from the date on which that document was submitted.

IP 11.043. What can be done if the authorization of a rectification is refused?

Rule 91.3(d),

Section 113(b)

If the authorization of a rectification is refused, the applicant may request the International Bureau, within two months from the date of the refusal, in writing, to publish the request for rectification, the reasons for refusal by the authority and any further brief comments that may be submitted by the applicant, together with the international application. This request is subject to the payment at the same time of a special fee, the amount of which is indicated in Annex B (IB). Once the request for rectification and the reasons for refusal have been published, the applicant may pursue it further before the designated Offices under their national law and practice for the rectification of obvious mistakes. Refused requests for rectification are not annexed to the IPRP except in certain circumstances as set out in paragraph IP 10.076.

IP 11.044. What are the effects of the authorization of an obvious mistake on the designated and elected Offices?

Rule 91.3(e),

Rule 91.3(f)

Generally, designated and elected Offices must process the international application in the national phase “as rectified”, unless that designated or elected Office has already started the processing or examination of the international application before the date on which that Office is notified under Rule 91.3(a) by the International Bureau of the authorization of the rectification concerned. Otherwise, a designated or elected Office may only disregard a rectification that was authorized under Rule 91.1 if it finds that it would not have authorized the rectification of the obvious mistake if it had been the competent authority. In the latter case, the designated Office may, however, only disregard any rectification that was authorized during the international phase, if it has given the applicant an opportunity to make observations, within a reasonable time limit, on the Office’s intention to disregard the rectification.

AMENDMENTS OF THE CLAIMS, DESCRIPTION AND DRAWINGS

IP 11.045. How, and at what stages, may the claims, description and drawings in an international application be amended?

Article 19,

Article 34(2)(b)

As described elsewhere in this text, during the international phase the applicant has one opportunity to amend the claims under Article 19 after receiving the international search report (refer to paragraphs IP 9.004 to IP 9.011). Amendments may also be made under Article 34(2)(b) to the description, claims and drawings before and during the international preliminary examination procedure (refer to paragraphs IP 10.024 to IP 10.028, and IP 10.067 to IP 10.071). Such amendments are in addition to the possibilities for correction of defects under Article 11 and Rule 20 (refer to paragraphs IP 6.024 to IP 6.026) and Article 14 and Rule 26 (refer to paragraph IP 6.032), and to the possibility for rectification of obvious mistakes under Rule 91.1 (refer to paragraphs IP 11.033 to IP 11.044). Applicants are also guaranteed the opportunity to amend the international application for the purposes of the national phase by virtue of Articles 28 and 41 (refer to National Chapters).

IP 11.046. In what language should amendments be submitted during the international phase?

Rule 46.3,

Rule 55.3

Concerning the language in which amendments of the claims under Article 19 must be submitted, refer to paragraphs IP 9.004 and IP 9.017 to IP 9.019; concerning the language in which amendments of the description, claims and/or drawings under Article 34 must be submitted, refer to paragraph IP 10.071.

IP 11.047. May amendments to the claims, description or drawings during the international phase introduce new matter into the international application?

Article 19(2) and Article 34(2)(b) both provide that amendments are not to go beyond the disclosure in the international application as filed. Compliance will not be checked during the international phase unless the applicant requests international preliminary examination. If the International Preliminary Examining Authority considers that any amendments go beyond the original disclosure, it will comment accordingly in any written opinion of the International Preliminary Examining Authority and in the international preliminary report on patentability (Chapter II of the PCT), and the report will be established as if such amendment had not been made (refer to paragraphs IP 10.064(iv) and IP 10.070). Compliance with the requirement may be important during the national phase, when it may be checked by the designated Offices, and non‑ may result at that stage in adverse consequences such as disallowance of the amendments or the according of a later filing date for any new matter claimed as a result of the amendments concerned. On the other hand, if the national law applicable in a designated Office permits amendments to go beyond the disclosure in the application as filed, non-compliance with the requirement has no consequence in the State concerned. Although customary in most national laws and contained in the European Patent Convention, the requirement is not one which - by virtue of the PCT - would bind any of the Contracting States. It is contained in the PCT because most laws provide for it, and it therefore seems to be a useful warning to all applicants planning to make amendments in the international phase.

IP 11.047A. What happens where the claims, description or drawings have been amended, but the replacement sheets were not accompanied by a letter?

The PCT requires that replacement sheets submitted with Article 19 or Article 34 amendments must be accompanied by a letter indicating the basis for the amendment in the application as filed (refer to paragraph IP 9.005, IP 9.006 and IP 10.071). Substantive compliance with this requirement is not checked during the international phase unless the applicant requests international preliminary examination. If the International Preliminary Examining Authority finds that the replacement sheets were either not accompanied by such a letter or that the letter failed to indicate the basis for the amendment, the International Preliminary Examining Authority may establish the international preliminary report on patentability (Chapter II of the PCT) as if such amendment had not been made. Compliance with this requirement may also be important during the national phase, when it may be checked by the designated Offices, and failure to comply may result in disallowance of the amendments.

WITHDRAWALS

IP 11.048. Can the applicant withdraw the international application?

The applicant may withdraw the international application by a notice addressed to the International Bureau or to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority, and received before the expiration of 30 months (refer to paragraph IP 5.005) from the priority date. Any such withdrawal is free of charge. A notice of withdrawal must be signed by all the applicants.

An appointed agent or appointed common representative may sign such a notice on behalf of the applicant or applicants who appointed him/her, but an applicant who is the “deemed common representative” (refer to paragraph IP 11.006) may not sign such a notice on behalf of the other applicants. Where an Office, Authority or the International Bureau has waived the requirement that a separate power of attorney, or a copy of a general power of attorney, has to be furnished, the waiver does not apply in respect of any notice of withdrawal.

IP 11.049. What is the effect of withdrawal of an international application or the priority claim on international publication?

Article 21(5),

Rule 90bis.1(c)

The applicant may prevent international publication by withdrawing the international application as described in paragraph IP 9.023A.

International publication may be postponed by withdrawing the priority claim as outlined in paragraphs IP 11.056 and IP 11.057.

IP 11.050. Can the applicant withdraw designations?

Rule 90bis.2,

Rule 90bis.5

The applicant may withdraw the designation of any State, and in respect of any kind of protection available, or only in respect of some of the kinds of protection available, by a notice addressed to the International Bureau or to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority, and received before the expiration of 30 months (refer to paragraph IP 5.005) from the priority date. Any such withdrawal is free of charge. A notice of withdrawal must be signed by all the applicants. An appointed agent or appointed common representative may sign such a notice on behalf of the applicant or applicants who appointed him/her, but an applicant who is the “deemed common representative” (refer to paragraph IP 11.006) may not sign such a notice on behalf of the other applicants.

IP 11.051. What is the effect of withdrawal of a designation?

Rule 90bis.2(a)

Withdrawal of the designation of a State which has been elected for the purposes of international preliminary examination automatically results in withdrawal of the corresponding election.

IP 11.052

Rule 90bis.2(b)

Where a State has been designated for the purposes of obtaining both a national patent and a regional patent (refer to paragraphs IP 4.022 to IP 4.026, and IP 5.052 to IP 5.053), withdrawal of the designation of that State is taken to mean withdrawal only of the designation for the purpose of obtaining a national patent, unless otherwise indicated. In practice, the applicant should always make it clear which of the designations is intended to be withdrawn.

IP 11.053

Rule 90bis.2(c)

If all designations are withdrawn, the international application itself will be treated as withdrawn.

IP 11.054

Rule 90bis.2(e)

A designation will not be published if the notice of its withdrawal reaches the International Bureau before the technical preparations for international publication have been completed (refer to paragraph IP 9.014).

IP 11.055

Where the international application indicates different applicants for different designated States, the withdrawal of a designation may result in the applicant for the designation which is withdrawn being no longer an applicant for any designated State. In such a case, replacement sheets for the request indicating only the remaining applicants, namely those for the States the designations of which have not been withdrawn, should be furnished together with the notice of withdrawal. Should the applicant fail to submit a replacement sheet, the request is corrected by the receiving Office or by the International Bureau. Whichever authority makes the correction notifies the other and the applicant accordingly.

IP 11.056. Can the applicant withdraw priority claims made in the international application?

Rule 90bis.3,

Rule 90bis.5

The applicant may withdraw a priority claim made in the international application by a notice addressed to the International Bureau or to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority, and received before the expiration of 30 months (refer to paragraph IP 5.005) from the priority date. Any or all of the priority claims may be so withdrawn. Any such withdrawal is free of charge. A notice of withdrawal must be signed by all the applicants. An appointed agent or appointed common representative may sign such a notice on behalf of the applicant or applicants who appointed him/her, but an applicant who is the “deemed common representative” (refer to paragraph IP 11.006) may not sign such a notice on behalf of the other applicants.

IP 11.057. How are time limits calculated after the withdrawal of a priority claim?

Rule 90bis.3(d),

Rule 90bis.3(e)

Where the withdrawal of a priority claim causes a change in the priority date of the international application, any time limit which is computed from the original priority date and which has not yet expired - for example, the time limit before which processing in the national phase cannot start - is computed from the priority date resulting from the change. (It is not possible to extend the time limit concerned if it has already expired when the priority claim is withdrawn.) However, if the notice of withdrawal reaches the International Bureau after the completion of the technical preparations for international publication, the International Bureau may proceed with the international publication on the basis of the time limit for international publication as computed from the original priority date.

IP 11.058. Can the applicant withdraw a supplementary search request?

Rule 90bis.3bis

The applicant may withdraw a supplementary search request at any time prior to the date of transmittal to the applicant of the supplementary international search report or the declaration that no such report will be established. However, withdrawal of the request will only result in a refund of any fees paid if the International Bureau has not yet transmitted any document to the Authority specified for supplementary search. A notice of withdrawal may be addressed either to the International Bureau or to the Authority specified for supplementary search, and the withdrawal will be effective on receipt of the notice by that Authority or the International Bureau. However, if the notice does not reach the Authority specified for supplementary search in sufficient time to prevent the transmittal of the report or declaration, the report or declaration will still be communicated to each designated Office as required. Where there are two or more supplementary search requests that have been submitted in respect of the same international application, the notice must specify which, of any such requests, is intended to be withdrawn.

IP 11.059. Who must sign a notice of withdrawal for a supplementary search request?

The notice of withdrawal of the supplementary search request must be signed by the applicant or, if there are two or more applicants, by all of them, or by the agent or common representative whose appointment has been effected by each applicant signing either the request, the supplementary search request, the demand, or a power of attorney.

IP 11.060. Can the applicant withdraw the demand for international preliminary examination or the election of any State?

Article 37,

Rule 90bis.4,

Rule 90bis.5

The applicant may withdraw the demand or the election of any State at any time prior to the expiration of 30 months from the priority date by a notice addressed to the International Bureau. Any such withdrawal is free of charge. A notice of withdrawal must be signed by all the applicants. An appointed agent or appointed common representative may sign such a notice on behalf of the applicant or applicants who appointed him/her, but an applicant who is the “deemed common representative” (refer to paragraph IP 11.006) may not sign such a notice on behalf of the other applicants.

IP 11.061

Article 37(4)

In respect of designated Offices which do not apply the 30-month time limit, the applicant should exercise care in withdrawing the demand or elections after the expiration of the time limit under Article 22 for entry into the national phase, since such withdrawal is treated in each of the elected States concerned as a withdrawal of the international application for that State unless the national phase has already started in that State. If withdrawal of the demand or elections is effected before the expiration of that time limit, however, the international application will not be considered withdrawn, but the applicant will, of course, have to take the usual steps before the expiration of that time limit to enter the national phase (refer to paragraph IP 5.005 and National Phase, paragraph NP 3.001). For further details, refer to Article 37(4).

COMPUTATION OF TIME LIMITS

IP 11.062. What are the rules concerning the computation of time limits?

Rule 80

There are detailed provisions in Rule 80 concerning the computation of time limits (whether expressed in years, months or days), including the case where a time limit expires on a non-working day. The days which are non-working days for the International Bureau are published periodically in the Official Notices (PCT Gazette) and in the PCT Newsletter. The PCT Time Limit Calculator is designed to assist applicants in computing PCT time limits and is available on the WIPO website at: https://pct.wipo.int/ePCTExternal/pages/PctTimeline.xhtml?lang=en. Where a period starts on the date of a notification, that period may be extended if the notification was actually mailed on a later date or was received more than seven days after the date it bears; refer to Rule 80.6 for details. For computation of time limits based on the priority date in cases where the priority claim is withdrawn, refer to paragraph IP 11.057.

IRREGULARITIES IN THE MAIL SERVICE

IP 11.063. Can a delay or loss in the mail be excused?

Article 48(1),

Rule 82.1

Rule 82 contains detailed provisions governing the situation where a letter arrives late or gets lost due to irregularities in the mail service, for example, because the mail service was interrupted due to a strike. The provisions operate to excuse failure to meet a time limit for filing a document for up to six months after the expiration of the time limit concerned, provided that the document was mailed at least five days before the expiration of the time limit. In order to take advantage of these provisions, the mailing must have been by registered airmail or, where surface mail would normally arrive at the destination concerned within two days of mailing, by registered surface mail. Evidence is required to satisfy the Office or organization concerned, and a substitute document must be filed promptly - refer to Rule 82.1(b) and (c) for details.

IP 11.064. Can a delay or loss be excused where a delivery service is used?

Rule 82.1(d),

Rule 82.1(e)

Some national Offices and intergovernmental organizations also apply these provisions where a delivery service other than the postal authorities is used to mail documents or letters; refer to Rule 82.1(d) and (e) for details, and Annexes B for information about which Offices and organizations recognize use of delivery services for this purpose, and in what circumstances Rule 82.1 will apply to such use.

EXCUSE OF DELAY IN MEETING TIME LIMITS

IP 11.065. Can a delay in meeting time limits caused by “force majeure” circumstances be excused?

Rule 82quater.1,

Section 111

The provisions of Rule 82quater.1 provide a basis for a general excuse of delay in meeting time limits before Offices, Authorities or the International Bureau during the international phase, when resulting from force majeure circumstances like war, revolution, civil disorder, strike, natural calamity, epidemic, a general unavailability of electronic communications services or other like reason in the locality where the applicant resides, has a place of business or is staying. The excuse of delay only applies to time limits fixed in the Regulations and therefore it neither applies to the priority period, since the priority period is set by Article 4C of the Paris Convention (for restoration of the right of priority refer to paragraphs IP 5.062 to IP 5.068), nor to the time limit for entering the national phase in accordance with Articles 22 and 39 (refer to paragraphs IP 5.005 and IP 5.006).

IP 11.065A

To request an excuse of delay in meeting time limits resulting from force majeure circumstances under Rule 82quater.1, the applicant must take the relevant actions (submission of documents, responses to invitations or the payment of fees) as soon as reasonably possible. Generally, this means within a short period of the cause of the delay ceasing to apply. For example, in cases where a strike prevented an agent from reaching his/her office, it would be expected that the action should, in most cases, be taken either the next working day or shortly thereafter, depending on how much preparatory work had been disrupted. On the other hand, where a disaster has resulted in the complete destruction of an agent’s files, it would reasonably be expected to take longer to reassemble all the necessary documents and systems to allow the necessary action to be taken. In the case of general unavailability of electronic communication services, the applicant must establish that the outage affected a widespread geographical area rather than being a localized problem, that it was unexpected or unforeseen, and that there was no alternative communication means available. The request for the excusing of the delay and the relevant evidence must be submitted to the competent Office or Authority or the International Bureau as soon as reasonably possible and, in any case, not later than six months after the expiration of the applicable time limit.

As to the form of evidence which would be acceptable, for example, a news report from a reliable mass media outlet, or a statement or announcement from the relevant national authority is normally acceptable for this purpose. In the case of general unavailability of electronic communications services, a statement from the provider of Internet services or the company providing electricity to the applicant may also be acceptable.

An Office, Authority or the International Bureau may waive the requirement for evidence, for example, where it is aware of the occurrence of an event in a particular State or place which would justify an excuse of delay in meeting time limits. The Office, Authority or the International Bureau, as the case may be, sets and publishes the conditions for any such waiver, and notifies the International Bureau, which publishes the information in question in the Gazette. The interested party must nevertheless submit a request to excuse the delay and state that the delay was due to the situation to which the waiver applies.

IP 11.065B. Can a delay in meeting time limits caused by the unavailability of electronic means of communication at an Office or intergovernmental organization be excused?

Rule 82quater.2,

Section 111

Rule 82quater.2 allows any Office or intergovernmental organization to provide for a general excuse of delay in meeting time limits if the failure to meet the time limit was due to the unavailability of any permitted electronic means of communication at that Office or organization. If the Office or organization so provides, it notifies the International Bureau which will publish the information in the Gazette and on WIPO’s website at: https://www.wipo.int/en/web/pct-system/texts/unavailability. Moreover, at the time when such an event has taken place (e.g., an unforeseen outage) or is scheduled to take place (e.g., a scheduled maintenance), the Office or organization publishes information about the unavailability including the duration and notifies the International Bureau which will publish the information on any such unavailability, including the period of the unavailability, in the Gazette. The excuse of delay only applies to time limits fixed in the Regulations and therefore it neither applies to the priority period, since the priority period is set by Article 4C of the Paris Convention (for restoration of the right of priority refer to paragraphs IP 5.062 to IP 5.068), nor to the time limit for entering the national phase in accordance with Articles 22 and 39 (refer to paragraphs IP 5.005 and IP 5.006).

IP 11.065C

Where the applicant failed to meet a time limit due to the unavailability of one of the permitted electronic means of communication at the Office or organization (refer to paragraph IP 11.065B), she/he must perform the relevant action on the next working day on which the said electronic means of communication becomes available and request for excuse of delay indicating that the time limit was not met due to the unavailability of one of the permitted electronic means of communication at the Office or organization at the time of attempted submission.

EXTENSION OF TIME LIMITS

IP 11.065D. May an Office or intergovernmental organization generally extend time limits in situations of “force majeure”?

Rule 82quater.3,

Section 111

Rule 82quater.3 allows Offices, Authorities and the International Bureau in exceptional circumstances and due to a force majeure event, to establish a period of extension such that time limits fixed in the Regulations are generally extended during the international phase. An Office or intergovernmental organization may take such a decision where the State in which it is located is experiencing a general disruption caused by an event listed in Rule 82quater.1(a) (for the list of events refer to paragraph IP 11.065) and that general disruption affects the operations at the said Office or organization in such a manner that it impacts the ability of parties to perform actions before that Office or organization within the time limits fixed in the Regulations, for example in the case of an epidemic or a natural disaster, or where the infrastructure (such as electricity supply, water supply or roads) in the place where the Office or organization is located has been seriously damaged due to an earthquake or tsunami.

To the extent that the general disruption continues, the Office or Authority concerned or the International Bureau may establish additional periods of extension. Any period or additional period of extension may not be longer than two months from the date it began. Where an Office, Authority or the International Bureau extends or additionally extends time limits, it publishes information about the beginning and end dates of the period concerned, and the International Bureau publishes that information in the Gazette and on WIPO’s website. Any time limit fixed in the Regulations which would expire during that period would, subject to Rule 80.5, expire on the first day after the expiration of that period or additional period. The applicant does not need to request the extension.

Any such extension may only apply to time limits fixed in the Regulations and therefore it would neither apply to the priority period, since the priority period is set by Article 4C of the Paris Convention (for restoration of the right of priority refer to paragraphs IP 5.062 to IP 5.068), nor to the time limit for entering the national phase in accordance with Articles 22 and 39 (refer to paragraphs IP 5.005 and IP 5.006). Any extension or additional period of extension need not be taken into account by any designated or elected Office if, at the time the information relating to the extension is published, national processing before that Office has already started.

FILING OF LETTERS AND DOCUMENTS

IP 11.066. What are the rules concerning the filing of letters and documents?

There are detailed provisions in Rule 92 concerning letters and documents submitted by the applicant in the course of the international procedure: letters must be signed; any other document submitted must be accompanied by a letter; letters and documents from the applicant to the receiving Office, the International Searching Authority, the Authority specified for supplementary search, and the International Preliminary Examining Authority must generally be in the language of the international application or, where a translation of the international application has been transmitted or furnished for the purposes of the international search, supplementary international search, international publication or international preliminary examination (refer to paragraphs IP 5.013, IP 6.020, IP 8.012, IP 9.018 and IP 10.011), in the language of that translation. Any communication from the applicant to the International Bureau must be in English or French and may be in the language of publication of the international application if it is submitted via ePCT. As to the language of any amendments to the claims under Article 19 (and their accompanying statement), refer to paragraphs IP 9.004 and IP 9.007. As to the language of the demand and of any amendments under Article 34, refer to paragraphs IP 10.013 and IP 10.071.

IP 11.067. How must documents be filed?

Each national Office or Authority specifies the means by which documents and correspondence relating to international applications may be filed with it. For information on the possibility of submitting documents and correspondence in electronic form or by electronic means via ePCT to the relevant Offices or Authorities, refer to the relevant Office Profile in ePCT External (https://pct.wipo.int/ePCTExternal/pages/OfficeProfile.xhtml).

An Office or Authority which only accepts submissions in electronic form or by electronic means may treat any document submitted to it on paper as not having been received. Nevertheless, the Office or Authority may decide in a particular case to accept any documents submitted via other means.

An Office or Authority may require that documents filed on paper be resubmitted electronically within two months from the date of a corresponding invitation. If a document is not resubmitted by electronic means it will be disregarded or considered as not having been submitted. Information on any Office or Authority that has such a requirement is provided in Annexes B.

Rule 92.4 governs the use of facsimile machine and other like means of communication resulting in the filing of a printed or written document. These means of communication may only be used where the national Office or intergovernmental organization concerned is prepared to receive correspondence by these means. Some Offices and organizations require, for certain or all kinds of documents, that a communication by such admitted means of communication must, in any event, be confirmed by the applicant within 14 days; otherwise the communication may be considered not to have been made. However, failure to comply with such a requirement may be waived in some cases. Even where there is no standing requirement for originals to be furnished, an Office or organization may require the originals in any particular case. Further details on these requirements are set out in Rule 92.4, and information as to the practice and requirements applied in particular Offices and organizations is given in Annexes B.

IP 11.068

Applicants should, before sending a document by a means of telecommunication, check in Annexes B to ascertain the applicable requirements. Where the documents to be submitted are documents making up the international application or replacement sheets containing amendments or corrections to the international application, the original should in any event be mailed as a matter of course on the same or the following day.

IP 11.069

Rule 92.4(d)

Where an original is sent to an Office or organization of a document previously transmitted to that Office or organization by a means of telecommunication, the original must be accompanied by a letter identifying the date and means of the earlier transmission.

IP 11.070

If part or all of a document received by such means of transmission is illegible, or if part of the document is not received, the document is treated as not having been received to the extent that it is illegible or that the attempted transmission failed, and the Office or organization promptly notifies the applicant accordingly.

IP 11.071. May a file reference be used in correspondence?

Section 109

The applicant or the appointed agent may mark a file reference in the box provided for that purpose on the first sheet of the request form (refer to paragraph IP 5.017), on each page of the other elements of the international application (refer to paragraphs IP 5.105 and IP 5.124), on the first sheet of the supplementary search request form (refer to paragraph IP 8.013), on the first sheet of the demand form (refer to paragraph IP 10.015), and in any other correspondence relating to the international application. The file reference may be composed either of letters of the Latin alphabet or Arabic numerals, or both. The hyphen character (“-“) may be used as a separator between alphanumeric characters. It may not exceed 25 characters. The receiving Office, the International Bureau, the International Searching Authority, the Authority specified for supplementary search and the International Preliminary Examining Authority will use the file reference in correspondence with the applicant.

CONFIDENTIALITY OF INTERNATIONAL APPLICATIONS

IP 11.072. To what extent are international applications treated as confidential?

An international application is confidential in relation to third parties until the international publication date, with only limited and specified exceptions (refer to Article 30). The International Bureau, the receiving Office and the International Searching Authority will at any time, at the request of the applicant or any person authorized by the applicant, furnish copies of any document contained in its file, subject to reimbursement of the cost of the service. An order for access made by a court with competent jurisdiction would be taken by the International Bureau as substituting for the applicant's authorization. (For access to the file of the International Preliminary Examining Authority refer to paragraph IP 11.074).

IP 11.073

Rule 17.2,

Rule 48,

Rule 94.1(b)

After international publication, the international application itself is publicly available, as are any published amendments under Article 19 (refer to Rule 48.2(f)), the international search report (refer to Article 21(3) and Rule 48.2(a)(v)) (these elements are included in the published international application) and copies of priority documents (noting the exceptions mentioned in paragraph IP 9.023; refer to Rule 17.2). In respect of international applications filed on or after 1 July 1998, the International Bureau will, after international publication, furnish copies of any document contained in its file at the request of any person and upon reimbursement of the cost of the service, but subject to the restrictions imposed by Article 38 in respect of documents relating to the international preliminary examination. However, the International Bureau will not provide access to any document contained in its file which has been omitted from international publication (refer to paragraph IP 9.016A) or public file access (refer to paragraph IP 11.073A), nor will it give access to any document which was solely prepared for internal use by the International Bureau.

Rule 94.1bis(b),

Rule 94.1ter(b)

After international publication, the receiving Office and the International Searching Authority may also furnish copies of any document contained in its file at the request of any person and upon reimbursement of the cost of the service except for documents which have been omitted from international publication (refer to paragraph IP 9.016A) or public file access (refer to paragraph IP 11.073A).

IP 11.073A. Can the applicant request that the International Bureau restrict access to certain information contained in its file?

Rule 94.1(e)

The applicant can make a reasoned request to the International Bureau to omit certain information from public file access. (For the manner in which such a request should be presented, refer to paragraph IP 9.016A). A request to omit information from public file access may be submitted at any time.

Where the International Bureau has omitted information from public access, and that information is also contained in the file of the international application held by the receiving Office, the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, the International Bureau will also promptly notify that Office or Authority accordingly, so that they will not provide access to such information either.

IP 11.074. To what extent is the international preliminary examination confidential?

Where the applicant requests international preliminary examination, Article 38 expressly provides that the International Bureau and the International Preliminary Examining Authority may not allow unauthorized access to the file of the international preliminary examination. Access by third parties to papers relating to the international preliminary examination held in the files of the International Bureau and the International Preliminary Examining Authority thus will be permitted only if that is requested or authorized by the applicant. However, once the international preliminary report on patentability (Chapter II of the PCT) and related documents have been communicated to each elected Office by the International Bureau, third parties may gain access to these documents. Such access may be allowed only to the same extent as provided by the national law for access to the file of a national application. Furthermore, the International Bureau will, if so requested by an elected Office (details of such requests are published in the Official Notices (PCT Gazette), also refer to https://www.wipo.int/en/web/pct-system/texts/access_iper ), furnish copies of the international preliminary report on patentability (Chapter II of the PCT) and related documents received from the International Preliminary Examining Authority under Rule 71.1(b) (refer to paragraph IP 10.079A) on behalf of an elected Office that has made such a request. However, access shall not be provided to third parties as to the information which has been omitted from international publication or public access (refer to paragraphs IP 9.016A and IP 11.073A). It should be noted that the furnishing of copies of documents may be subject to a fee payable to that Office.

REFERENCES TO DEPOSITED BIOLOGICAL MATERIAL

IP 11.075. When must an international application include a reference to biological material and/or to its deposit with a depositary institution?

Rule 13bis.1,

Rule 48.2(a)(viii)

The PCT does not require the inclusion of such a reference in an international application; it merely prescribes the contents of any reference to deposited biological material (defined as particulars given with respect to the deposit of biological material or to the biological material so deposited) which is included in an international application, and when such a reference must be furnished. It follows that the applicant will refer to a need to make such a reference only when it is required for the purpose of disclosing the invention claimed in the international application in a manner sufficient for the invention to be carried out by a person skilled in the art - that is, when the law of at least one of the designated States provides for the making, for this purpose, of a reference to deposited biological material if the invention involves the use of biological material that is not available to the public. Annex L lists those national (or regional) Offices of, or acting for, the Contracting States whose national law provides for the making of a reference to deposited biological material for the purposes of patent procedure; those national (or regional) Offices whose laws do not provide for such references are indicated in Annexes B (in some cases together with information given by those Offices on the possibility of referring in the international application to deposits of biological material even though the applicable national law does not provide specially for it). Where any indications are furnished separately from the description and are received by the International Bureau before the completion of technical preparations for international publication, the date of receipt by the International Bureau and the indication will be included in the published international application.

IP 11.076. What effect does the PCT give to such a reference?

Rule 13bis.2

A reference to deposited biological material made in accordance with the requirements of the PCT must be regarded by each of the designated Offices as satisfying the requirements of the national law applicable in that Office with regard to the contents of such references and the time for furnishing them.

IP 11.077. May the reference be made for the purposes of only some of the designated States?

Rule 13bis.5

A reference may be made for the purposes of all designated States or for one or only some of the designated States. A reference is considered to be made for the purpose of all designated States unless it is expressly made for certain designated States only. References to different deposits may be made for the purposes of different designated States.

IP 11.078. What are the indications which must be given in the reference with regard to the deposit of biological material?

Rule 13bis.3,

Rule 12.1ter

There are two kinds of indication which may have to be given, namely:

(i) indications specified in the PCT Regulations themselves; and

(ii) additional indications which have been notified by the national (or regional) Office of (or acting for) a State designated in the international application and which have been published in the Official Notices (PCT Gazette); these additional indications may relate not only to the deposit of the biological material but also to the biological material itself (refer to paragraph IP 11.079).

The indications in the first category are:

(i) the name and address of the depositary institution with which the deposit was made;

(ii) the date of the deposit with that institution; and

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

Annex L sets out, for each national (or regional) Office, the additional indications (if any) in the second category which are required to be given. These indications must be furnished both in the language in which the international application is filed and, where a translation of the international application is required under Rule 12.3(a) or 12.4(a), in the language of that translation.

IP 11.079. What are the indications concerning biological material itself which must be given in the reference?

Rule 13bis.3(a)(iv),

Rule 13bis.7(a)

The national laws of some of the national (or regional) Offices require that, besides indications concerning the deposit of biological material, an indication be given concerning the biological material itself, such as, for example, a short description of its characteristics, at least to the extent that this information is available to the applicant. These requirements must be met in the case of international applications for which any such Office is a designated Office, provided that the requirements have been notified to the International Bureau and published in the Official Notices (PCT Gazette). Annex L indicates, for each of the national (or regional) Offices, the requirements (if any) of this kind which have been so notified and published.

IP 11.080. At what time must the reference (with the indications which must be contained therein) be made?

Rule 13bis.4,

Rule 13bis.7(a)(ii)

If any indication is not included in a reference to deposited biological material contained in the international application as filed, it may be furnished to the International Bureau within 16 months from the priority date unless the International Bureau has been notified (and, at least two months prior to the filing of the international application, has published in the Official Notices (PCT Gazette)) that the national law applicable by a designated Office requires in relation to national applications that the indication be furnished earlier. If any of the indications are furnished to the International Bureau after the expiration of 16 months from the priority date but before the technical preparations for international publication have been completed, those indications will be considered by any designated Office to have been furnished on the last day of the 16-month time limit. If the applicant makes a request for early publication (refer to paragraph IP 9.013), all indications should be furnished by the time the request is made, since any designated Office may regard any indication not furnished when the request is made as not having been furnished in time. Annex L specifies, for each national (or regional) Office whose national law requires a reference to deposited biological material to be furnished earlier than 16 months after the priority date, the applicable time limit(s) for furnishing such indications.

IP 11.081. What is the consequence of failure to furnish an indication on time?

Rule 13bis.3(b),

Rule 13bis.4,

Rule 48.2(a)(viii)

No check is made in the international phase to determine whether a reference has been furnished within the prescribed time limit. However, where the indications were received after the technical preparations for international publication have been completed, the International Bureau notifies the designated Offices of the date(s) on which indications not included in the international application as filed were furnished to it. Failure to include a reference to deposited biological material (or any indication required in such a reference) in the international application as filed, or failure to furnish it (or the indication) within the prescribed time limit, has no consequence if the national law does not require the reference (or indication) to be furnished in a national application. Where there is a consequence, it is the same as that which applies under the national law.

IP 11.082. Where should the reference be made?

Section 209

To the extent that indications relating to the deposit of biological material are not given in the description, they may be furnished on a separate sheet, for which purpose Form PCT/RO/134 (refer to WIPO website at: https://www.wipo.int/en/web/pct-system/forms/) should preferably be used. That separate sheet may be filed after the international application is filed. If the sheet is submitted when the international application is filed, a reference to it should be made in the check list (Box No. IX) contained on the last sheet of the request form (refer to website address above). Certain designated Offices require that the indications relating to the deposit of biological material must be included in the description at the time of filing (refer to Annex L) so the sheet, if submitted when the international application is filed, may need to be included as one of the sheets of the description; otherwise the indications given in it will not be taken into account by those Offices in the national phase. If the sheet is furnished to the International Bureau later (refer to paragraph IP 11.080), it must be enclosed with a letter. Form PCT/RO/134 may also be prepared using ePCT.

IP 11.083. How does the applicant decide on the depositary institution with which to deposit the biological material?

Rule 13bis.7(b)

Each national (or regional) Office whose national law provides for deposits of biological material for the purposes of patent procedure notifies the International Bureau of the depositary institutions with which the national law permits such deposits to be made. Information on the institutions notified by each of those Offices is published by the International Bureau in the Official Notices (PCT Gazette). Annex L indicates the institutions with which deposits may be made.

IP 11.084

Rule 13bis.5(c)

A reference to a deposit cannot be disregarded by a designated Office for reasons pertaining to the institution with which the biological material was deposited if the deposit referred to is one made with a depositary institution notified by that Office. Thus, by consulting the Official Notices (PCT Gazette) (or Annex L), the applicant can be sure that the biological material has been deposited with an institution which will be accepted by the designated Office.

IP 11.085. Does a reference in an international application to the deposit of biological material involve the possibility of a sample being obtained by the International Searching Authority or the International Preliminary Examining Authority?

Rule 13bis.6

International Searching Authorities and International Preliminary Examining Authorities may not require the furnishing of a sample of deposited biological material for the purposes of international search or international preliminary examination, respectively.

IP 11.086. What possibility is there, when a reference is made in an international application to the deposit of biological material, of third persons obtaining a sample?

Rule 13bis.6

The furnishing of samples is governed by the national laws applicable in the designated Offices. Rule 13bis.6, however, provides for the delaying of any furnishing of samples under the national law applicable in each of the designated (or elected) Offices until the start of the national phase, subject to the ending of this delaying effect brought about by the occurrence of either of the following two events:

(i) the applicant has, after international publication of the international application, taken the steps necessary to enter the national phase before the designated Office (refer to National Phase, paragraph NP 4.001);

(ii) international publication of the international application has been effected, and that publication has the same effects, under the national law applicable in the designated Office, as the compulsory national publication of an unexamined national application (in other words, the international application has qualified for the grant of provisional protection); for the Contracting States whose national laws provide for provisional protection, and the conditions which have to be met for an international application to qualify for that protection, refer to Annexes B.

IP 11.087

With respect to certain designated Offices (for instance, the European Patent Office), the applicant may take advantage of the procedure whereby, until the occurrence of a certain event, the biological material may be made available only by the issue of a sample to an expert nominated by the requester. For details, refer to Annex L.

REQUIREMENTS FOR SEQUENCE LISTINGS

IP 11.088. What special requirements apply to nucleotide and/or amino acid sequences disclosed in international applications?

Rule 5.2,

Rule 13ter,

Section 208,

Refer to paragraphs IP 5.099 to IP 5.104, IP 7.005 to IP 7.012, and IP 10.063. Refer to National Phase, paragraph NP 6.033 and National Chapters in relation to the national phase.

EXTENSION OF INTERNATIONAL APPLICATIONS TO SUCCESSOR STATES OF FORMER CONTRACTING STATES

IP 11.089. What is a successor State?

Rule 32.1(a)

A successor State is a State whose territory was, before its independence, part of the territory of a PCT Contracting State that subsequently ceased to exist (the predecessor State), and which (successor State) has deposited with the Director General of WIPO a declaration indicating that the PCT continues to be applicable in that State (“declaration of continuation”). As from the date of the deposit of such a declaration, the successor State may be designated in international applications. Moreover, the effects of international applications filed during a certain period are extended to the successor State.

IP 11.090. Which are the international applications whose effects are extended to a successor State?

Rule 32.1(b)

Rule 32 provides that the effects of any international application filed during a certain period are extended to a successor State, irrespective of which States have been designated in the international application. This period, for those successor States whose date of independence is later than the date of the day following the last day of the existence of the predecessor State, begins on the day following the last day of the existence of the predecessor State and ends two months after the date on which the Director General notifies the Governments of the States party to the Paris Convention for the Protection of Industrial Property of the successor State’s declaration of continuation. For those States whose date of independence is earlier than the date of the day following the last day of the existence of the predecessor State, the successor State may, in conjunction with its declaration of continuation, declare that the period referred to above starts on the date of its independence.

IP 11.091. How will an applicant know that the effects of his/her international application have been extended to a successor State?

Rule 32.1(c)

Information on any international application whose filing date falls within the applicable period (refer to paragraph IP 11.090) and whose effect is extended to the successor State shall be published by the International Bureau in the Official Notices (PCT Gazette).

IP 11.092. What is the effect of an extension?

Rule 32.2

A successor State is considered as having been designated in the international application on the international filing date. The applicable time limits under Article 22 or 39(1) in relation to that State shall be extended until the expiration of at least six months from the date of the publication of the information under Rule 32.1(c) (refer to paragraph IP 11.091). A successor State may fix time limits which expire later than the time limits given in the previous sentence of this paragraph and, if it does so, the International Bureau will publish this information in the Official Notices (PCT Gazette).

IP 11.093

The procedure for extension of the effects of international applications to certain successor States (as explained above) should not be confused with the extension of European patents to States which are bound by the PCT and which have Extension Agreements with the European Patent Organisation (refer to paragraph IP 5.054 and Annex B (EP)).

IP 11.094. – IP 11.101. [Deleted]

LICENSING INDICATIONS

IP 11.102. How can applicants indicate their interest in licensing the invention(s) contained in their international application?

Applicants can file a request to that effect either (and preferably) by completing Form PCT/IB/382 “Request for indication of availability for licensing purposes” available at: https://www.wipo.int/documents/d/pct-system/docs-en-forms-ib-editable-ed-ib382.pdf or by way of a letter addressed to the International Bureau. Details of the licensing terms may also be included in the form or letter. All such requests should be sent directly to the International Bureau, which does not charge a fee for this service.

IP 11.103. When should a request for indication of availability for licensing purposes be filed?

Requests for indication of availability for licensing purposes can be submitted at any time until the expiration of 30 months from the priority date.

IP 11.104. Is it possible to file multiple licensing requests or modify those already filed?

Where applicants file multiple requests or want to modify those already filed, they must ensure their latest request is always a self-contained document, comprising complete information about any requests or modifications.

IP 11.105. In which language can the request for indication of availability for licensing purposes be filed?

Form PCT/IB/382 will shortly be available in all ten publication languages (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish) and the International Bureau is ready to accept the request for indication of availability for licensing purposes by way of a letter in any of those languages.

IP 11.106. How are licensing indications made available?

The processing of the licensing request by the International Bureau generates a statement in the bibliographic data indicating the applicant’s interest in concluding licensing agreements. In addition, this is linked to the filed request for indication of availability for licensing purposes (either Form PCT/IB/382 or the letter containing the licensing indications) which is available, under the “Documents” tab, in PATENTSCOPE. Applicants are reminded that if they want to publish licensing indications in relation to their international application at a very early stage, they should also consider filing a request for early international publication as provided under Article 21(2)(b).

IP 11.107. Can the licensing indications be removed?

Applicants can request that the International Bureau remove the licensing indications from the “PCT Bibliographic Data” tab in PATENTSCOPE at any time during the international or national phase. Once removed, the licensing request and the related correspondence remain part of the file history available under the related “Documents” tab in PATENTSCOPE.

IP 11.108. How can you search for international applications for which licensing indications are available?

In addition to being published with the international application to which it relates, the licensing indications are also a search criterion within PATENTSCOPE Search Service https://www.wipo.int/patentscope/en/ allowing third parties to identify those applicants who have expressed their interest in licensing the invention(s) contained in their international application. The search criterion can also be used in combination/multi-field searches and RSS feeds.

THIRD PARTY OBSERVATIONS

IP 11.109. What is the third party observation system?

Section 801(a),

This system allows third parties to make observations through ePCT (signing in without strong authentication at https://pct.wipo.int/ePCT) referring to prior art which they believe to be relevant to the question of whether the invention claimed in the international application is novel and/or involves an inventive step. There is no fee for this service. For a comprehensive user guide, refer to ePCT Third Party Observations (https://www.wipo.int/documents/d/epct/docs-en-epct_observations.pdf)

IP 11.110. What is the time limit for submitting observations?

Section 802(a)(ii),

Third party observations may be submitted at any time after the date of publication of the international application and before the expiration of 28 months from the priority date, provided that the application is not withdrawn or considered withdrawn.

IP 11.111. How should observations be submitted by third parties?

Section 802(a)(i)

All observations must be submitted through ePCT signing in without strong authentication, either directly or through a link on the bibliographical data tab of the published international application. The use of the system requires a WIPO account (refer to https://www3.wipo.int/authpage/signin.xhtml). Each observation must include at least one citation that refers to a document published before the international filing date, or a patent document having a priority date before the international filing date, together with a brief explanation of how each document is considered to be relevant to the questions of novelty and/or inventive step of the claimed invention. Observations should preferably be accompanied by a copy of each cited document.

IP 11.112. Can third parties remain anonymous?

Section 801(b)(i)

Yes, when a third party observation is submitted, the person making the observation may indicate that they wish to remain anonymous.

IP 11.113. In what languages should observations be submitted?

Section 802(a)(iii),

Observations should be submitted in a language of publication (refer to paragraph IP 5.013), with the exception that copies of prior art documents may be in any language.

IP 11.114. Can the applicant comment on third party observations?