Patents Regulations 1991
Statutory Rules 1991 No. 71 as amended
made under the
Patents Act 1990 __________________________________________________________________________________
This compilation was prepared on 29 November 2000 taking into account amendments up to SR 2000 No. 317
This Statutory Rule has uncommenced amendments which are not incorporated in this compilation
For details of the amendments, please see Statutory Rules 2000 No. 317
Prepared by the Office of Legislative Drafting, Attorney-General’s Department, Canberra
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Contents
Chapter 1 Introductory
1.1 Name of Regulations [see Note 1] 1.2 Commencement 1.3 Interpretation 1.4 English text of treaties 1.5 Prescribed periods: deposit requirements 1.6 Disclosure 1.7 Verification of translations of international applications
Chapter 2 Patent rights, ownership and validity
2.1 Applications by co-owners for directions 2.2 Publication or use: prescribed circumstances and periods 2.3 Prescribed period: publication or use affecting validity 2.4 Prescribed period: patents of addition 2.5 Prescribed period: assertion that invention is not patentable 2.6 Prescribed period: notification of assertion of invalidity of petty patent 2.7 Documents to accompany notice of assertion of invalidity
Chapter 3 From application to acceptance
Part 1 Inventions generally
3.1 Prescribed documents: patent applications 3.2 Specifications 3.3 Abstracts 3.4 Substitute abstracts 3.5 Filing date 3.6 Requests to make determinations between applicants 3.7 Form of certain applications 3.8 Time within which applications are to be made following certain decisions and
declarations 3.9 Prescribed period: treatment of complete application as provisional 3.10 Prescribed period: making of complete applications 3.11 Making divisional applications 3.12 Priority dates generally 3.13 Priority dates: certain persons and applications 3.14 Priority dates: certain amended claims 3.15 Prescribed period and form of request for examination 3.16 Prescribed grounds and period for examination 3.17 Requirement for Commissioner to direct or expedite examination 3.18 Report of Commissioner: examination 3.19 Conduct of examination 3.20 Requests for deferment of examination or modified examination 3.21 Prescribed foreign countries: requests for deferment of examination and modified
examination 3.22 Consideration of petty patent application
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Part 2 Inventions that are micro-organisms
3.23 Documents in accepted applications and patents involving micro-organisms 3.24 Commissioner may request samples and viability statement 3.25 Request for Commissioner’s certificate authorising release of sample of a micro-
organism 3.26 Breach of undertakings given in respect of micro-organisms 3.27 Procedure in proceedings for breach of an undertaking 3.28 Relief in proceedings for breach of undertakings 3.29 Notification that a deposit requirement has ceased to be satisfied 3.30 Prescribed period: deposit requirements taken to be satisfied 3.31 Application for declaration that deposit requirements are not satisfied
Chapter 4 Publication
4.1 Prescribed information: applicants and applications 4.2 Notice that specification is open to public inspection 4.3 Prescribed documents: public inspection
Chapter 5 Opposition
5.1 Application of this Chapter 5.2 Interpretation 5.3 Filing of opposition 5.3A Amendment of notice of opposition 5.4 Filing of statement 5.5 Dismissal of opposition 5.6 Determination of opposition 5.7 Opponent to serve copy of substitute statement 5.8 Time for giving of evidence 5.9 Amendment of statement 5.10 Conduct of proceedings to which this Chapter applies 5.11 Commissioner may inform himself or herself 5.12 Hearing of opposition 5.13 Representations to Commissioner 5.14 Commissioner not required to hold hearing 5.15 Withdrawal of opposition
Chapter 6 Grant and term of patents
Part 1 Patents generally
6.1 Publication of notice of grant of standard patent 6.2 Prescribed period: grant of standard patent 6.3 Date of patent 6.4 Form of application for sealing of duplicate of patent 6.5 Application for extension of term of petty patent 6.6 Deciding an application for extension of term of petty patent
Part 2 Extension of pharmaceutical patents
6.7 Definitions 6.8 Information to accompany application 6.9 Application without pre-TGA marketing approval
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6.10 Application with pre-TGA marketing approval 6.11 Further information
Chapter 7 Patents of addition
7.1 Form of application for grant of patent of addition etc 7.2 Form of application for revocation of patent and grant of patent of addition instead
Chapter 8 PCT applications and Convention applications
Part 1 PCT applications
8.1 International applications taken to be applications under the Act 8.1A Title of an invention 8.2 Prescribed documents: PCT application 8.3 Modification of Act to apply to PCT applications 8.4 Form of request and prescribed documents: PCT applications
Part 2 Convention applications
8.5 Convention countries 8.6 Particulars required for Convention application 8.7 Form of request in relation to withdrawn, abandoned or refused applications
Chapter 9 Re-examination
9.1 Commissioner may re-examine complete specification when grant opposed 9.2 Request for re-examination of complete specification 9.3 Copy of report on re-examination 9.4 Prescribed period: statement disputing report by Commissioner 9.5 Completion of re-examination
Chapter 10 Amendments
10.1 Form of amendments 10.2 Commissioner to consider and deal with requests for leave to amend 10.3 Amendments not allowable 10.4 Commissioner to refuse request for leave to amend 10.5 Commissioner to grant leave to amend 10.6 Time for allowance of amendments 10.7 Correction of Register or patent 10.8 Prescribed decisions: appeal to Federal Court 10.9 Pending proceedings: amendments relating to micro-organisms 10.10 Prescribed period: filing of court order 10.11 Form of direction by Commissioner: patents 10.12 Form of direction by Commissioner: applications 10.13 Form of direction by Commissioner: extension of petty patent term 10.14 Form of request: claim under assignment or agreement
Chapter 11 Infringement
11.1 Infringement exemptions: prescribed foreign countries
Chapter 12 Compulsory licences and revocation of patents
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12.1 Lodgment of applications for compulsory licences 12.2 Prescribed period: revocation of standard patent 12.3 Form of notice: offer to surrender patent 12.4 Applications to revoke patents
Chapter 13 Withdrawal and lapsing of applications and ceasing of patents
13.1 Publication of notice of withdrawal of application 13.2 Prescribed period: request for examination of applications 13.3 Prescribed period: continuation fees 13.4 Prescribed period: acceptance of request and specification 13.5 If applications lapse 13.6 Time for payment of renewal fee for standard patent
Chapter 15 Special provisions relating to associated technology
15.1 Time for restoration of application for patent 15.2 Requirements for reinstatement of international applications 15.3 Prescribed period: order relating to a standard patent
Chapter 17 The Crown
17.1 Prescribed period: order relating to a standard patent 17.2 Prescribed period, document and fee: filing of international applications
Chapter 19 The register and official documents
19.1 Particulars to be registered 19.2 Request for information from Commissioner
Chapter 20 Patent attorneys
Part 1 Introductory
20.1 Interpretation 20.2 How to apply under Chapter 20 20.2A Accreditation of courses of study 20.2B Provisional accreditation
Part 2 Obtaining registration for the first time
Division 1 Generally
20.3 Requirements for registration 20.3A Currency of pass or exemption 20.4 Procedure for registration 20.5 Certificate of registration
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Division 2 Prescribed subjects and academic qualifications
20.6 Board examinations 20.7 Time for holding Board examinations 20.8 Examinable subject matter 20.9 Admission to sit for a Board examination 20.10 Notification of Board examination results 20.11 Reasons for failure of Board examination 20.12 Supplementary Board examination 20.13 Exemption from examination 20.14 Approval of courses and examinations 20.15 Approval of academic qualifications 20.16 Advice of completion of examinable subjects and of academic qualifications
Division 3 Rights of registered patent attorneys
20.17 Lien
Part 3 Renewal of registration: payment of annual fee
20.18 Annual registration fee 20.19 Restoration of patent attorney’s name to the Register 20.19A Voluntary removal of name from register
Part 4 Discipline
Division 1 Complaints, decisions of the Disciplinary Tribunal and consequential action
20.20 Complaints 20.21 Authorisation to bring proceedings against a registered patent attorney 20.22 Bringing of proceedings 20.23 Decision of Disciplinary Tribunal 20.24 Publication of decision 20.25 Completion of outstanding business
Division 2 Procedure etc relating to the Disciplinary Tribunal
20.26 Procedure of Disciplinary Tribunal 20.27 Hearings to be public except in special circumstances 20.28 Representation before Disciplinary Tribunal 20.29 Summoning of witnesses 20.30 Offences by persons appearing before Disciplinary Tribunal 20.31 Protection of person constituting Disciplinary Tribunal, witnesses etc
Part 5 Administration
Division 1 The Professional Standards Board for Patent and Trade Marks Attorneys
20.32 Constitution of Board (Act, s 227A) 20.34 Term of office of Board members 20.35 Resignation and removal of members from Board 20.37 Meetings of the Board 20.38 Member presiding at meetings of the Board 20.39 Quorum for Board meetings
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20.40 Absence of Chairperson from meeting — leave from Board
Division 2 Patent and Trade Marks Attorneys Disciplinary Tribunal
20.41 Establishment of Disciplinary Tribunal 20.42 Disciplinary Tribunal: substantive appointments 20.43 Disciplinary Tribunal: acting appointments 20.44 Qualifications for holding, or acting as, Disciplinary Tribunal 20.45 Disclosure of interest
Chapter 21 Administration
21.1 Patent Office and sub-offices 21.2 Employees to whom Commissioner may delegate (Act s 209 (1))
Chapter 22 Miscellaneous
Part 1 Fees and costs
Division 1 Fees
22.1 Fees generally 22.2 General fees 22.2A Payment of fees other than renewal or continuation fees 22.3 General fees for international applications 22.4 Fees for international applications payable for the benefit of the International Bureau 22.5 PCT Fund 22.6 Exemption from fees 22.7 Refund of certain fees
Division 2 Costs
22.7A Proceedings to which this Division applies 22.8 Costs
Part 2 Other matters
22.9 Death of applicant or nominated person 22.10 Address for service 22.11 Extension of time 22.12 Evidence 22.13 Declarations 22.14 Directions not otherwise prescribed 22.15 Documents to be in English 22.16 Documents other than specifications and abstracts 22.17 Incapacity of certain persons 22.18 Destruction of documents 22.19 Copies of certain documents to be supplied 22.20 International applications and the Patent Office 22.21 Protection or compensation of certain persons 22.22 Exercise by Commissioner of certain powers 22.23 Hearings 22.24 Practice and procedure other than for opposition proceedings 22.25 Requirements cannot be complied with for reasonable cause
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22.26 Review of decisions
Chapter 23 Transitional and savings provisions
23.1 Saving: prohibition orders 23.2 Delegation: certain matters referred to in this Chapter 23.3 Opposition to grant: practice and procedure 23.4 Certain opposition: practice and procedure 23.5 Fees payable for certain matters relating to opposition 23.6 Certain delegations: opposition 23.7 Certain undertakings 23.8 Restoration of lapsed applications or ceased patents 23.9 Certain continuation and renewal fees 23.10 Fee taken to have been paid 23.11 Supply of product referred to in section 117 of the Act 23.12 Certain withdrawn, abandoned or refused applications 23.13 Certain certificates of validity 23.14 Certain action under the 1952 Act 23.15 Amendment of petty patents 23.16 Certain applications under 1952 Act: time for acceptance 23.17 PCT applications to which subsection 89 (5) of the Act does not apply 23.18 Certain priority dates: saving 23.19 Appointment of certain examiners 23.20 Patent attorneys: continued application of certain provisions 23.21 Patent Attorneys Professional Standards Board: continuation of appointments 23.22 Secretary to Patent Attorneys Professional Standards Board: continuation of
appointment 23.23 Patent Attorneys Disciplinary Tribunal: continuation 23.24 Matters begun under the former attorneys Regulations not finally dealt with before
the commencing day 23.25 Fees 23.26 Certain actions and proceedings 23.27 Professional Standards Board for Patent and Trade Marks Attorneys 23.28 Continuing effect of certain complaints 23.29 Patent attorney registration 23.30 Patent attorney qualifications and employment requirements 23.31 Patent attorney examination requirements
Schedule 1 Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
Schedule 1A Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
Schedule 2 Patent Cooperation Treaty
Schedule 2A Regulations under the Patent Cooperation Treaty
Schedule 3 Formal requirements for documents to be filed
Schedule 4 Convention countries
Schedule 5 Prescribed topics
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Group A Legal process and overview of intellectual property Group B Professional conduct Group C Trade mark law Group D Trade mark practice Group E Patent law Group F Patent system Group G Drafting patent specifications Group H Interpretation and validity of patent specifications Group I Designs
Schedule 6 Prescribed qualifications
Schedule 7 Fees
Part 1 Patent attorneys Part 2 General fees Part 3 General fees for international applications Part 4 Fees payable for the benefit of the International Bureau
Schedule 8 Costs, expenses and allowances
Part 1 Costs Part 2 Expenses and allowances
Notes
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Chapter 1 Introductory
1.1 Name of Regulations [see Note 1]
These Regulations are the Patents Regulations 1991.
1.2 Commencement
These Regulations commence on 30 April 1991.
1.3 Interpretation
(1) In these Regulations, unless the contrary intention appears:
abstract means abstract of a complete specification.
acceptance means:
(a) in relation to a patent request and complete specification relating to an application for a standard patent — acceptance of the patent request and complete specification under section 49 of the Act (“acceptance of patent request: standard patent”); and
(b) in relation to a patent request and complete specification relating to an application for a petty patent — acceptance of the patent request and complete specification under section 50 of the Act (“consideration and acceptance of patent request: petty patent”).
basic documents means documents filed in a Convention country in respect of a basic application.
certificate of verification means a statement:
(a) that a document to which the statement relates is a true and complete translation of the accompanying document to the best of the knowledge of the person who signs the statement; and
(b) that is dated and signed.
Disciplinary Tribunal means the Patent and Trade Marks Attorneys Disciplinary Tribunal established under regulation 20.41.
former attorneys Regulations means the Patent Attorneys Regulations in force immediately before the commencing day under the 1952 Act.
former patents Regulations means the Patents Regulations in force immediately before the commencing day under the 1952 Act.
International Bureau means the International Bureau of the World Intellectual Property Organization and, as long as it subsists, the United International Bureaux for the Protection of Intellectual Property (BIRPI).
the Act means the Patents Act 1990.
the Tribunal means the Administrative Appeals Tribunal.
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(2) A reference in these Regulations to:
(a) the giving of a notice or other document; or (b) the making of a request or an application; to the Commissioner or the Patent Office includes a reference to the filing of the document.
(3) A reference in these Regulations to a document that is open to public inspection is a reference to a document that may be inspected by the public at the Patent Office.
(4) Unless the contrary intention appears, if a document is given to a person by the Commissioner or the Patent Office, the document is taken to have been given to the person on the day on which the document is dated by the Commissioner or the Office.
1.4 English text of treaties
(1) The English text of the Budapest Treaty as in force for Australia on 30 April 1991 is the text set out in Schedules 1 (the Treaty) and 1A (the Regulations under the Treaty).
(2) The English text of the PCT as in force for Australia on 1 January 2000 is the text set out in Schedules 2 (the Treaty) and 2A (the Regulations under the Treaty).
Note This regulation is made for the purposes of subsection 228 (5) of the Act.
1.5 Prescribed periods: deposit requirements
(1) For the purposes of paragraph 6 (c) of the Act (“deposit requirements”), the prescribed period is from the filing date of the application to which the specification relates to:
(a) if the Commissioner makes a declaration under subsection 42 (1) of the Act (“micro-organisms ceasing to be reasonably available”) in relation to the specification — the end of the period of 3 months from the date taken to be the date of filing of the specification under paragraph 42 (2) (b) of the Act; and
(b) in any other case:
(i) the end of the day immediately before the day on which the application becomes open to public inspection; or
(ii) immediately before acceptance; whichever happens first.
(2) If a matter mentioned in paragraph 6 (c) of the Act has been included in the specification, the applicant or patentee is taken to consent to a micro-organism being obtained:
(a) after the period prescribed in subregulation (1) in respect of the specification to which the application relates; and
(b) from the prescribed depositary institution with which the micro-organism is deposited;
by a person to whom the Commissioner has granted the certification under regulation 3.25 (“request for Commissioner’s certificate authorising release of sample of a micro-organism”) in respect of the deposit.
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1.6 Disclosure
(1) For section 8 of the Act, the prescribed period for a Convention application is:
(a) for documents to which paragraph 8 (a) of the Act applies — from the date of making the application based on the basic application to immediately before acceptance; and
(b) for documents to which paragraph 8 (b) of the Act applies:
(i) if the application based on the basic application has been accepted — 3 months from the date on which the Commissioner requests the translation; or
(ii) if the application based on the basic application has not yet been accepted — from the date on which the Commissioner requests the translation to immediately before acceptance.
(1A) For section 8 of the Act, the prescribed period for a PCT application is:
(a) if the application based on the basic application has been accepted — 3 months from the date on which the Commissioner requests the document; or
(b) if the application based on the basic application has not yet been accepted — from the date on which the Commissioner requests the document to immediately before acceptance.
(2) A matter that was claimed or disclosed in a disclaimer or acknowledgement of prior art in a basic application or in a specification or other document filed in respect of, and at the same time as, the basic application is not taken to have been disclosed.
1.7 Verification of translations of international applications
For the purposes of subsection 10 (2) of the Act (“certain international applications to be taken to have been given an international filing date”), the translation of an international application that was not filed in the receiving Office in English must have with it a related certificate of verification.
Chapter 2 Patent rights, ownership and validity
2.1 Applications by co-owners for directions
(1) An application under section 17 of the Act (“directions to co-owners”) must be in the approved form.
(2) A person making an application under that section must:
(a) file with the application a notice stating the facts on which the application is based; and
(b) serve a copy of the application and notice on the other patentee or patentees.
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2.2 Publication or use: prescribed circumstances and periods
(1) In this Regulation:
Paris Convention means the Paris Convention for the Protection of Industrial Property of 20 March 1883, as in force for Australia on the commencing day.
recognised exhibition means:
(a) an official or officially recognised international exhibition within the meaning of Article 11 of the Paris Convention or Article 1 of the Convention relating to International Exhibitions done at Paris on 22 November 1928, as in force for Australia on the commencing day; or
(b) an international exhibition recognised by the Commissioner by a notice published in the Official Journal before the beginning of the exhibition.
(2) For the purposes of paragraph 24 (1) (a) of the Act (“validity not affected by certain publication or use”), the following circumstances are prescribed:
(a) the showing or use of the invention at a recognised exhibition; (b) the publication of the invention during a recognised exhibition at which the
invention was shown or used; (c) the publication of the invention in a paper written by the inventor and:
(i) read before a learned society; or (ii) published with the inventor’s consent by or on behalf of a learned
society; or
(d) the working in public of the invention within the period of 12 months before the priority date of a claim for the invention:
(i) for the purposes of reasonable trial; and (ii) if, because of the nature of the invention, it is reasonably necessary
for the working to be in public.
(3) Paragraphs 2 (a) and (b) are prescribed circumstances only if:
(a) at the time the application is made for a patent for the invention, the applicant has filed a notice stating that the invention has been exhibited; and
(b) before the complete specification in respect of that application is open to public inspection, the applicant has filed a statement issued by the authority responsible for the exhibition in which:
(i) the invention and the exhibition are identified; and (ii) the date of the opening of the exhibition is given; and (iii) where the first disclosure of the invention during the exhibition did
not take place on that date — the date of that disclosure.
2.3 Prescribed period: publication or use affecting validity
(1) For the purposes of subsection 24 (1) of the Act (“validity not affected by certain publication or use”), in the case of information of the kind referred to in paragraph 24 (1) (a) of the Act, the prescribed period is:
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(a) in the case of a circumstance mentioned in paragraph 2.2 (2) (a) or (b) (“publication or use: prescribed circumstances and periods”):
(i) if the application claims priority from a basic application made within 6 months of the date of the first showing or use of the invention at a recognised exhibition — 12 months from the making of the basic application; and
(ii) in any other case — 6 months after the first showing or use of the invention at the exhibition; and
(b) in the case of the circumstance mentioned in paragraph 2.2 (2) (c):
(i) if the application claims priority from a basic application made within 6 months of the date of the first reading or publication referred to in that paragraph — 12 months from the making of the basic application; and
(ii) in any other case — 6 months after the first reading or publication; and
(c) in the case of the circumstance mentioned in paragraph 2.2 (2) (d) — 12 months from the start of the first public working of the invention referred to in that paragraph.
(2) For the purposes of subsection 24 (1) of the Act, in the case of information of the kind referred to in paragraph 24 (1) (b) of the Act, the prescribed period is 12 months from the day when the information referred to in that paragraph became publicly available.
2.4 Prescribed period: patents of addition
(1) For the purposes of section 25 of the Act (“validity: patents of addition”), the prescribed period is the period that commences on the priority date of the claim of the specification of the main invention and ends immediately before the priority date of the relevant claim of the specification of the patent of addition.
(2) In subregulation (1), a reference to the claim of the specification of the main invention is a reference to:
(a) the claim defining that main invention; or (b) if there are 2 or more claims defining the main invention — the claim
that has the earlier or earliest priority date.
2.5 Prescribed period: assertion that invention is not patentable
For the purposes of subsection 27 (1) of the Act (“notice of matters affecting validity of standard patents”), the prescribed period is from the day when the complete specification filed in relation to an application for a standard patent becomes open to public inspection to immediately before acceptance.
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2.6 Prescribed period: notification of assertion of invalidity of petty patent
For the purposes of subsection 28 (1) of the Act (“notice of matters affecting validity of petty patents”), the prescribed period is 11 months from the day on which the petty patent is granted under subsection 62 (1) (“grant and publication of petty patent”).
2.7 Documents to accompany notice of assertion of invalidity
Notice of an assertion under subsection 27 (1) (“notice of matters affecting validity of standard patents”) or 28 (1) (“notice of matters affecting validity of petty patents”) of the Act must, where the assertion is based on a document, have with it:
(a) 2 copies of the document; and (b) if the document is not in English — 2 copies of:
(i) a translation of the document into English; and (ii) a related certificate of verification; and
(c) evidence of the date and place of publication of the document.
Chapter 3 From application to acceptance
Part 1 Inventions generally
3.1 Prescribed documents: patent applications
(1) For the purposes of subsection 29 (1) of the Act (“application for patent”), an abstract, and a copy of the abstract are required to be filed with a patent request made in relation to a complete application.
(2) For the purposes of subsection 29 (1) of the Act, if a complete application is made, the following documents are required to be filed before acceptance:
(a) a notice by the applicant stating the entitlement of the nominated person to the grant of the patent; and
(b) if the applicant claims priority from another application — a notice by the applicant stating the entitlement of the nominated person to claim that priority; and
(c) if a micro-organism is deposited with a prescribed depositary institution:
(i) if the deposit is an original deposit within the meaning of Rule 7.3 of the Budapest Treaty or a new deposit within the meaning of Rule 7.4 of that Treaty — a copy of a receipt issued by the institution under Rule 7 of the Treaty; and
(ii) if samples of the micro-organism were transferred to that institution under Rule 5.1 (a) (i) of the Treaty — a copy of a receipt issued by the institution under Rule 7 of the Treaty; and
(iii) if a receipt referred to in subparagraph (i) or (ii) is not in English — a translation of the receipt into English and a related certificate of verification; and
(d) if the application relies on section 6 of the Act (“deposit requirements”) — a notice by the applicant stating the entitlement of the nominated person to rely on the deposit for the purposes of the Act; and
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(e) if the application is an application to which subsection 34 (2) of the Act (“applications by eligible persons arising out of court proceedings”) applies — a copy of the court order declaring the applicant to be an eligible person in relation to the invention so far as claimed in a claim of the specification; and
(f) if the application is an application to which subsection 36 (3) of the Act (“other applications by eligible persons”) applies — a copy of the declaration of the Commissioner that the applicant is an eligible person in relation to the invention as disclosed in the specification; and
(g) if the request is for a patent of addition and is made by a person authorised by the applicant or patentee — a statement authorising the person that is signed by the applicant or patentee.
3.2 Specifications
(1) A provisional specification must be in the approved form.
(2) A complete specification must:
(a) be in the approved form; and (b) comply substantially with the requirements of Schedule 3; and (c) unless it is in electronic form, have with it a copy of the specification:
(i) marked on the first page as a true copy; and (ii) if the specification includes drawings — marked on the reverse side
of each sheet of drawings as a true copy.
(3) If a complete specification is not in accordance with the Act or these Regulations, the Commissioner may:
(a) treat the complete application to which the specification relates as not having been filed; and
(b) return that specification to the applicant with:
(i) a written statement of the reasons for the return; and (ii) any other document filed in respect of the application.
(4) If the Commissioner treats a complete specification as having been filed, he or she may, within 1 month from the date of filing of the specification, direct the applicant to do anything necessary to ensure that the specification complies with those requirements.
(5) The complete application to which the complete specification relates lapses if an applicant to whom a direction has been given does not comply with the direction within:
(a) 3 months after the day on which that direction was given or the specification becomes open to public inspection, whichever happens later; or
(b) if:
(i) the direction is given to assist the Commissioner in relation to subregulation 3.4 (1) (“substitute abstracts”) in deciding whether a filed abstract is in accordance with these Regulations; and
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(ii) the Commissioner has specified in the direction a period of not less than 1 month within which the applicant must comply with the direction;
the period referred to in subparagraph (ii).
(6) If an application lapses under subregulation (5), the Commissioner must:
(a) advertise that fact in the Official Journal; and (b) advise the applicant of the lapse.
3.3 Abstracts
(1) An abstract must consist of:
(a) a summary of the disclosure as contained in the description, the claims and any drawings, being a summary:
(i) that indicates the technical field to which the invention pertains; and (ii) that is drafted in a way that allows the clear understanding of the
technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention; and
(b) if applicable, any chemical formula that, among all the formulas contained in the specification, best characterises the invention.
(2) An abstract must be as concise as the disclosure permits, preferably 50 to 150 words.
(3) An abstract must not contain statements on the alleged merits or value of the claimed invention or on its speculative application.
(4) Each main technical feature mentioned in the abstract and illustrated by a drawing in the specification must be followed by a reference sign placed between parentheses.
(5) An abstract must be so drafted that it can efficiently serve as a scanning tool for the purposes of searching in the particular art, especially by assisting in the formulation of an opinion on whether there is a need to consult the specification itself for those purposes.
3.4 Substitute abstracts
(1) If a filed abstract is not in accordance with these Regulations, the Commissioner may prepare a draft of a new abstract in substitution for the filed abstract.
(2) A copy of the draft of a new abstract must be given to the applicant who may give the Commissioner written comments on the draft within 1 month of the draft being given to him or her.
(3) The Commissioner must take the comments into account in the final preparation of the new abstract.
(4) If the Commissioner prepares a new abstract, the new abstract is taken to be the abstract of the specification to which it relates.
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(5) If an applicant who files a complete specification does not file with it an abstract, the Commissioner, within 1 month of the date of filing of the complete specification, may direct the applicant to file an abstract within 1 month of the day on which the direction is given.
(6) If an abstract is not filed within 1 month from the day on which the direction was given, the application lapses.
(7) If an application lapses under subregulation (6), the Commissioner must:
(a) advertise that fact in the Official Journal; and (b) advise the applicant of the lapse.
(8) An abstract is not taken into account in construing the nature of the invention that is the subject of the specification to which the abstract relates.
3.5 Filing date
(1) For the purposes of section 30 of the Act (“filing date”), the filing date of a patent application is the date on which a patent request in relation to the application that is accompanied by a specification is filed.
(2) The Patent Office and each sub-office of the Patent Office may provide facilities for the filing of documents when the Office or sub-office is not open to the public for business.
3.6 Requests to make determinations between applicants
(1) For the purposes of section 32 of the Act (“disputes between applicants etc.”), a request must be in the approved form.
(2) A party making a request must serve a copy of that request on each other interested party as soon as practicable after the request is made.
(3) The Commissioner must publish a notice of the request in the Official Journal.
(4) If a party wishes to be heard by the Commissioner, the party must notify the Commissioner accordingly within 2 months of the publication of the notice.
(5) If, as a result of a request, the Commissioner determines under section 32 of the Act to change the name of a nominated person, notice of the determination must be published in the Official Journal.
3.7 Form of certain applications
For the purposes of paragraphs 35 (1) (b) (“applications by eligible persons following revocation by Commissioner”) and 36 (1) (b) (“other applications by eligible persons”) of the Act, an application must:
(a) be in the approved form; and (b) have with it a notice by the applicant stating the grounds on which the application is
made.
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3.8 Time within which applications are to be made following certain decisions and declarations
An application under section 29 of the Act (“application for patent”) must be made:
(a) in the case of an application of the kind described in section 33 of the Act (“applications by opponents etc.”) — within 3 months of the decision of the Commissioner referred to in paragraph 33 (1) (b) or (2) (b) of the Act, as the case requires; or
(b) in the case of an application of the kind described in section 34 of the Act (“applications by eligible persons arising out of court proceedings”) — within 3 months of the declaration of a court under subsection 34 (1) of the Act; or
(c) in the case of an application of the kind described in section 35 of the Act (“applications by eligible persons following revocation by Commissioner”) — within 3 months of the declaration of the Commissioner under subsection 35 (1) of the Act; or
(d) in the case of an application of the kind described in section 36 of the Act (“other applications by eligible persons”) — within 3 months of the declaration of the Commissioner under subsection 36 (1) of the Act.
3.9 Prescribed period: treatment of complete application as provisional
For the purposes of subsection 37 (1) of the Act (“complete application may be treated as provisional”), the period of 12 months from the filing date of the complete application is prescribed.
3.10 Prescribed period: making of complete applications
For the purposes of section 38 of the Act (“time for making complete application”), the period of 12 months from the filing date of the provisional application is prescribed.
3.11 Making divisional applications
(1) For the purposes of subsections 39 (1) and (2) of the Act (“divisional applications”), a divisional application must be made under section 29 of the Act (“application for patent”).
(2) A divisional application for a patent under subsection 39 (1) of the Act must be made before the date of the grant of a patent on the first-mentioned application in that subsection.
(3) A divisional application for a patent under subsection 39 (2) of the Act must be made before the end of 3 months after the date of the grant of the petty patent first mentioned in that subsection.
3.12 Priority dates generally
(1) Subject to regulations 3.13 (“priority dates: certain persons and applications”) and 3.14 (“priority dates: certain amended claims”) and subregulation (2), the priority date of a claim of a specification is the earliest of the following dates:
(a) the date of filing of the specification;
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(b) if the claim is fairly based on matter disclosed in 1 or more priority documents, the date of filing the priority document in which the matter was first disclosed;
(c) if:
(i) the specification is a complete specification filed in respect of a divisional application; and
(ii) the claim is fairly based on matter disclosed in the specification referred to in paragraph 39 (1) (a) or subsection 39 (2) of the Act (“divisional applications”);
the date that would have been the priority date of the claim if it had been included in the last-mentioned specification.
(2) For the purposes of paragraph (1) (b):
(a) if the application that relates to the specification containing the claim is a complete application — a provisional application that is associated with that complete application in accordance with section 38 of the Act (“time for making complete application”) is a priority document; and
(b) if the application that relates to the specification containing the claim is a Convention application, a document of any of the following kinds is a priority document:
(i) a basic application that is related to the Convention application; (ii) a specification, or another document filed in respect of, and at the
same time as, a basic application that is related to that Convention application; or
(iii) a specification in respect of a basic application that is related to that Convention application, being a specification that was filed after the basic application was made;
(c) if:
(i) the application that relates to the specification containing the claim is a PCT application that, under Article 8 of the PCT, claims the priority of an earlier application; and
(ii) that earlier application is:
(A) an application made in Australia not more than 12 months before the international filing date of the PCT application; or
(B) a basic application, made not more than 12 months before the international filing date of the PCT application, that is the first application made in a Convention country in respect of the invention; or
(C) a basic application made after a basic application referred to in sub-subparagraph (B);
that earlier application, and a specification filed in relation to that earlier application after it was made, are priority documents.
(2A) For the purposes of paragraph (1) (b) and subregulation (2), “filed” includes filed with the Patent Office and filed with a corresponding Office of another country.
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(2B) A reference in subregulation (2) to a basic application does not include a basic application that has been disregarded by the Commissioner under section 96 of the Act (“withdrawn, abandoned or refused applications”).
(3) For the purposes of paragraph (1) (c) (ii), a claim is not fairly based on the specification referred to in paragraph 39 (1) (a) or subsection 39 (2) of the Act if, in order to comply with paragraph 40 (2) (a) of the Act (“specifications”), the deposit requirements must be satisfied and on the date of making the divisional application:
(a) the requirement specified in paragraph 6 (a) of the Act (“deposit requirements”) is not satisfied; or
(b) the period prescribed in subregulation 1.5 (1) (“prescribed periods: deposit requirements”) has ended and the requirements of paragraph 6 (c) of the Act are not satisfied;
in relation to the specification referred to in paragraph 39 (1) (a) or subsection 39 (2) of the Act.
(4) If a PCT application claims priority from a basic application, a specification or other document filed in respect of, and at the same time as, a basic application, section 96 of the Act (“withdrawn, abandoned or refused applications”) is taken to apply to the PCT application as if it were a Convention application.
3.13 Priority dates: certain persons and applications
If, under subsection 36 (1) of the Act (“other applications by eligible persons”):
(a) the Commissioner declares a person to be an eligible person; and (b) the person makes a complete application under section 29 of the Act
(“application for patent”); the priority date of a claim of the specification in respect of that application, being a claim that is fairly based on matter disclosed in the specification referred to in paragraph 36 (1) (b) of the Act and referred to in the declaration is: (c) if that specification is a complete specification — the priority date of the
claim or the date that would have been the priority date of the claim if the claim had been a claim of the specification; and
(d) if that specification is a provisional specification — the date of filing of the specification.
3.14 Priority dates: certain amended claims
If subsection 114 (1) of the Act (“priority date of certain amended claims”) applies to a claim of a specification, the priority date of the claim is:
(a) in the case of an amendment to which subsection 89 (4) or (5) of the Act (“modified application of Act”) applies — the date on which the amendment is taken to have been made under that subsection; and
(b) in any other case — the date of filing of the statement of proposed amendments that resulted in the disclosure referred to in subsection 114 (1) of the Act.
3.15 Prescribed period and form of request for examination
(1) For the purposes of subsection 44 (1) of the Act (“request for examination”), the period of 5 years from the filing date of the complete application is prescribed.
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(2) For the purposes of subsection 44 (1) of the Act, a request for an examination of a patent request and complete specification must be in the approved form.
3.16 Prescribed grounds and period for examination
(1) For the purposes of subsection 44 (2) of the Act (“request for examination”), the following grounds are prescribed:
(a) that the Commissioner reasonably considers it expedient to give the direction having regard to the progress made in the examination of applications filed before the filing date of the application concerned;
(b) that the Commissioner reasonably considers it to be in the public interest to give the direction;
(c) that the Commissioner reasonably considers it expedient to give the direction, having regard to the examination of another application for a standard patent or the consideration of an application for a petty patent.
(2) For the purposes of subsection 44 (2) of the Act, the prescribed period is 6 months from the day on which the direction was given.
(3) A direction must be given in writing and state the grounds on which it is given.
3.17 Requirement for Commissioner to direct or expedite examination
(1) For the purposes of subsection 44 (3) of the Act (“request for examination”), a person may, in the approved form, request the Commissioner to direct an applicant for a standard patent to ask for an examination of the patent request and complete specification under subsection 44 (2) of the Act.
(2) If an applicant has asked for an examination of the patent request and complete specification to be expedited, the Commissioner may do so if he or she is reasonably satisfied that:
(a) it is in the public interest; or (b) there are special circumstances that make it desirable.
3.18 Report of Commissioner: examination
(1) In reporting for the purposes of paragraph 45 (1) (b) (“examination”) or 48 (1) (a) (“modified examination”) of the Act, the Commissioner must not have regard to information made publicly available only through the doing of an act anywhere in the patent area.
(2) For the purposes of paragraph 45 (1) (c) or 48 (1) (b) of the Act, the following matters are prescribed:
(a) whether, to the best of the knowledge of the Commissioner, the request and specification comply with the following provisions of the Act:
(i) section 15 (“who may be granted a patent?”); (ii) section 29 (“application for patent”); (iii) section 38 (“time for making complete application”); (iv) section 39 (“divisional applications”); (v) section 81 (“grant of patent of addition”);
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(vi) section 94 (“Convention applicants may make Convention applications”);
(vii) section 95 (“manner of making Convention applications”);
(c) whether acceptance of the request and specification should be refused under section 51 of the Act (“application or grant may be refused in certain cases”);
(d) whether the invention is not a patentable invention because of subsection 18 (2) of the Act (“patentable inventions”);
(e) whether a patent cannot be granted on the application because of subsection 64 (2) of the Act (“grant: multiple applications”);
(f) whether the applicant is entitled to ask that any action be taken, or that he or she be allowed to take any action, because of subsection 89 (3) of the Act (“modified application of Act”).
(3) For the purposes of paragraph 48 (1) (b) of the Act, the following matters are prescribed:
(a) in the case of an invention to which section 6 of the Act (“deposit requirements”) applies — whether, to the best of the knowledge of the Commissioner, the requirements of section 6 of the Act are satisfied;
(b) whether the specification under modified examination is the same as the copy of the specification (in this regulation called foreign specification) filed under subregulation 3.20 (6) (“requests for deferment of examination or modified examination”), apart from:
(i) matters of form; or (ii) the omission of a claim that is made in the foreign specification; or (iii) an amendment of a claim that is consequential on an omission
referred to in subparagraph (ii); or (iv) an obvious mistake in the foreign specification; or (v) if the micro-organism deposited in respect of the foreign
specification is the same micro-organism as that deposited in respect of the specification, a difference relating to matter referred to in paragraph 6 (c) of the Act that is necessary for the application to comply with the deposit requirements.
(4) For the purposes of examination, if a notice has been filed under subsection 27 (1) of the Act (“notice of matters affecting validity of standard patents”), the Commissioner must consider a matter stated in the notice that addresses a claim that an invention does not comply with paragraph 18 (1) (b) of the Act.
3.19 Conduct of examination
(1) If the Commissioner reasonably believes that there are lawful grounds of objection to the patent request or complete specification, he or she must state the grounds of objection in reporting on an examination.
(2) The applicant may contest the objection in writing or ask for leave to amend the patent request or complete specification in accordance with Chapter 10 (“amendments”).
(3) If the applicant asks for leave to amend a patent request or complete specification in response to, or in anticipation of, a report under section 45 (“examination”) or section
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48 (“modified examination”) of the Act, the Commissioner must examine the request and specification and report as if each proposed amendment had been made.
(4) If the applicant contests the objection, the Commissioner must examine the request and specification and take note of the matters raised by the applicant.
3.20 Requests for deferment of examination or modified examination
(1) In this regulation:
prescribed foreign country means a country prescribed in regulation 3.21 (“prescribed foreign countries: requests for deferment of examination and modified examination”).
(2) For the purposes of paragraph 46 (1) (b) (“request for deferment of examination”) of the Act, the following applications are prescribed:
(a) a basic application in relation to the complete application; (b) an application for a patent that claims the priority of the complete application
or a provisional application associated with the complete application under section 38 of the Act (“time for making complete application”);
(c) an application for a patent made in a prescribed foreign country that claims the priority of the application that is a basic application in relation to that complete application.
(3) For the purposes of paragraph 47 (1) (b) of the Act (“request for modified examination”), an application prescribed for the purposes of paragraph 46 (1) (b) of the Act in relation to which a patent in English has been granted in a prescribed foreign country is prescribed.
(4) For the purposes of paragraph 46 (1) (d) of the Act, the prescribed ground is that the Commissioner reasonably considers it expedient to give the direction, having regard to the progress made in the examination of applications filed before the filing date of the application concerned.
(5) For the purposes of subsection 46 (2) and subsection 47 (1) of the Act, a request for each action must be in the approved form.
(6) The applicant must file a copy of the specification relating to the patent referred to in paragraph 47 (1) (b) of the Act that is:
(a) certified by the official chief or head of the Patent Office of the prescribed foreign country by which the patent was granted; or
(b) otherwise verified to the reasonable satisfaction of the Commissioner; before acceptance, unless the applicant makes a request under subsection 47 (2) of the Act.
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3.21 Prescribed foreign countries: requests for deferment of examination and modified examination
For the purposes of paragraphs 46 (1) (b) (“request for deferment of examination”) and 47 (1) (b) of the Act (“request for modified examination”), the following countries are prescribed:
(a) a country that is a signatory to the treaty done at Munich on 5 October 1973 entitled the Convention on the Grant of European Patents, as in force from time to time;
(b) Canada; (c) New Zealand (excluding the Cook Islands, Niue and Tokelau); (d) United States of America (including all territories and possessions and the
Commonwealth of Puerto Rico).
3.22 Consideration of petty patent application
(1) In considering the complete application for a petty patent under subsection 50 (1) of the Act (“consideration and acceptance of patent request: petty patent”), the Commissioner must:
(a) not have regard to information made publicly available only through the doing of an act anywhere in the patent area; and
(b) have regard to:
(i) the matters prescribed in paragraphs 3.18 (2) (a) to (f) (inclusive) (“report of Commissioner: examination”); and
(ii) whether the abstract is finally completed; and (iii) whether, to the best of the knowledge of the Commissioner, the
invention, so far as claimed in any claim, satisfies paragraphs 18 (1) (a) and (b) of the Act (“patentable inventions”); and
(iv) whether the specification complies with section 40 of the Act (“specifications”).
(2) If the applicant asks for leave to amend a patent request or complete specification in response to, or in anticipation of, a notice under paragraph 50 (2) (a) of the Act, the Commissioner must consider the request and specification as if each proposed amendment had been made.
(3) If the applicant contests the objection, the Commissioner must consider the request and specification and take note of the matters raised by the applicant.
Part 2 Inventions that are micro-organisms
3.23 Documents in accepted applications and patents involving micro-organisms
(1) Where a micro-organism is deposited with a prescribed depositary institution for the purposes of section 41 of the Act (“specifications: micro-organisms”), the following documents must be filed in relation to an application that has been accepted under section 49 (“acceptance of patent request: standard patent”) or 50 (“consideration and acceptance of patent request: petty patent”) of the Act or a patent in respect of the micro-organism:
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(a) if the deposit is an original deposit within the meaning of Rule 7.3 of the Budapest Treaty or a new deposit within the meaning of Rule 7.4 of that Treaty — a copy of a receipt issued by the institution under Rule 7 of the Treaty;
(b) if samples of the micro-organism were transferred to that institution under Rule 5.1 (a) (i) of the Treaty — a copy of a receipt issued by the institution under Rule 7 of the Treaty;
(c) if a receipt referred to in paragraph (a) or (b) is not in English — a translation of the receipt into English and a related certificate of verification.
(2) The documents referred to in subregulation (1) must be filed within 3 months from the date of receipt of the micro-organism by the prescribed depositary institution.
3.24 Commissioner may request samples and viability statement
(1) If, in relation to a patent application or patent in respect of a micro-organism, the micro-organism is deposited with a prescribed depositary institution, the Commissioner:
(a) on the order of a court in Australia, must; or (b) on his or her own motion or on application in writing by another person, may; for the purposes of proceedings before the Commissioner or any other legal proceedings in Australia: (c) make to that institution a request referred to in Rule 11.1 of the Budapest
Treaty for a sample of that micro-organism; and (d) in relation to that micro-organism, make the declaration referred to in that
Rule.
(2) Before making a request, the Commissioner must give the applicant or patentee concerned, and any other person who apparently has an interest in the request, an opportunity to be heard, unless the request is made on the order of a court.
(3) If the Commissioner decides to make, or to refuse to make, a request, he or she must inform the applicant or patentee concerned, and any other person who apparently has an interest in the request, of the decision, and of the reasons for the decision, by notice in writing as soon as practicable after the decision.
(4) The Commissioner may make a request referred to in Rule 10.2 (a) (iii) of the Budapest Treaty for a statement concerning the viability of a micro-organism if a sample of the micro-organism has been given to the Commissioner in accordance with a request under subregulation (1).
3.25 Request for Commissioner’s certificate authorising release of sample of a micro- organism
(1) If a micro-organism is deposited with a prescribed depositary institution, a person may, in the approved form, request the Commissioner to grant the certification referred to in Rule 11.3 (a) of the Budapest Treaty in respect of the deposit.
(2) As soon as practicable after receiving a request, the Commissioner must decide whether to:
(a) comply with the request; or
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(b) impose such conditions as are reasonable, including a condition that the person give security for damages for any breach of the undertaking referred to in paragraph (4) (c) given by:
(i) the person; or (ii) another person who has been nominated as a skilled addressee; or
(c) refuse that request.
(3) The applicant for the patent may, at any time before the specification relating to the application is open for public inspection, notify the Commissioner that a sample of the deposited micro-organism is only to be provided before:
(a) the patent is granted on that application; or (b) the application has lapsed or been withdrawn or refused; to a person who is: (c) a skilled addressee without an interest in the invention; and (d) nominated by the person who made the request.
(4) The Commissioner must comply with a request in respect of a patent application or patent:
(a) if the specification relating to that application or patent is open to public inspection; and
(b) unless the Commissioner is reasonably satisfied that the nominated person is not entitled to rely on the deposit for the purposes of the Act; and
(c) if the person making the request or the person nominated as a skilled addressee has undertaken to use that micro-organism only for experimental purposes or in relation to:
(i) opposition proceedings under Chapter 5 of the Act (“opposition”) in relation to the grant of a standard patent on that application; or
(ii) a notice under section 28 of the Act (“notice of matters affecting validity of petty patents”) in relation to the petty patent; or
(iii) relevant proceedings in relation to the patent; and not to make that micro-organism, or a culture derived from that micro- organism, available to another person; and
(d) unless the Commissioner is reasonably satisfied that the undertaking given by the person making the request or the person nominated as a skilled addressee was not given in good faith; and
(e) if:
(i) the Commissioner has been notified under subregulation (3); and (ii) the patent referred to in that subregulation has not been granted; and (iii) the application referred to in that subregulation has not lapsed or
been withdrawn or refused; and (iv) the Commissioner is reasonably satisfied that the person nominated
as a skilled addressee is a skilled addressee without an interest in the invention; and
(f) if:
(i) the request is in respect of a patent; and
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(ii) the person making that request is a person to whom the patentee has granted a licence under section 133 of the Act (“compulsory licences”); and
(iii) the Commissioner is reasonably satisfied that the licence provides that the person making the request has a right to obtain a sample of that micro-organism; and
(g) if:
(i) the request is in respect of a patent; and (ii) the person making that request is a person who may exploit the
invention under section 163 of the Act (“exploitation of inventions by Crown”); and
(iii) the Commissioner is reasonably satisfied that the terms for the exploitation of the invention provide that the person making the request has a right to obtain a sample of that micro-organism.
(5) Before making a decision under subregulation (2), the Commissioner must give the person making the request, the applicant or patentee concerned and any other person who apparently has an interest in the request, an opportunity to be heard.
(6) If the Commissioner makes a decision under subregulation (2), he or she must inform the person who made the request, the applicant or patentee concerned and any other person who apparently has an interest in the request, of the decision, and the reasons for the decision, by notice in writing given as soon as practicable after the date of the decision.
3.26 Breach of undertakings given in respect of micro-organisms
(1) Where the micro-organism is deposited with a prescribed depositary institution, proceedings for breach of an undertaking referred to in paragraph 3.25 (4) (c) (“request for Commissioner’s certificate authorising release of sample of a micro- organism”) may be instituted in a prescribed court by a person who is:
(a) if a patent has not been granted on that patent application — the applicant; or (b) if:
(i) a patent has been granted on that patent application; or (ii) the deposit is effected in relation to a patent; the patentee of, or an exclusive licensee under, that patent.
(2) In proceedings by an exclusive licensee, the patentee must be a party to the proceedings.
(3) A patentee joined as a defendant in the proceedings by an exclusive licensee is not liable for costs unless the patentee enters an appearance and takes part in the proceedings.
(4) It is a defence in proceedings for breach of the undertaking given in respect of a micro-organism to which a specification filed in respect of a patent application or patent relates, that when the matters complained of took place the specification did not comply with the requirements referred to in paragraph 6 (c) or (d) of the Act (“deposit requirements”).
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(5) A defendant may not plead a defence referred to in subregulation (4) unless:
(a) the defendant, before becoming a defendant in the proceedings, notified the Commissioner under paragraph 3.29 (1) (“notification that a deposit requirement has ceased to be satisfied”) of the deposit requirement that has ceased to be satisfied; and
(b) the applicant for the patent or the patentee fails to take the steps referred to in paragraph 41 (4) (b) of the Act (“specifications: micro-organisms”) within the appropriate period prescribed by subregulation 3.30 (1) (“prescribed period: deposit requirements taken to be satisfied”) for the purposes of that paragraph.
3.27 Procedure in proceedings for breach of an undertaking
In proceedings referred to in subregulation 3.26 (1) (“breach of undertakings given in respect of micro-organisms”) for breach of an undertaking:
(a) the plaintiff must deliver particulars of the breaches complained of:
(i) with the statement of claim or declaration; or (ii) by order of the court, at a later time; and
(b) the defendant must deliver particulars of any objections on which the defendant relies:
(i) with the statement of defence or plea; or (ii) by order of the court, at a later time.
3.28 Relief in proceedings for breach of undertakings
(1) In proceedings referred to in subregulation 3.26 (1) (“breach of undertakings given in respect of micro-organisms”), the court may:
(a) make an order for inspection; and (b) impose terms and give directions with respect to the inspection.
(2) In proceedings referred to in subregulation 3.26 (1), the court may grant such relief as it thinks fit, including:
(a) an injunction on such terms as it thinks fit; or (b) an order for damages; or (c) an order for an account of profits; or (d) an order with respect to any security given under paragraph 3.25 (2) (b)
(“request for Commissioner’s certificate authorising release of sample of a micro-organism”); or
(e) an order on such terms as it thinks fit to deliver to such person as it thinks fit the micro-organism or any substance or thing derived directly or indirectly from that micro-organism as a result of the breach of the undertaking, including:
(i) any products made by using that micro-organism; and (ii) any other micro-organisms derived from that micro-organism; and (iii) any products made by using those other micro-organisms.
3.29 Notification that a deposit requirement has ceased to be satisfied
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(1) If a deposit requirement ceases to be satisfied in relation to a micro-organism to which a specification filed in respect of a patent application or patent relates, a person other than the applicant or patentee may, after the specification has become open to public inspection, notify the Commissioner in the approved form of the requirement referred to in paragraph 6 (c) or (d) of the Act (“deposit requirements”) that has ceased to be satisfied.
(2) As soon as practicable after receiving a notice under subregulation (1), the Commissioner must give a copy of the notice to the applicant or patentee.
(3) If the Commissioner learns, otherwise than by a notice referred to in subregulation (1), of facts that may establish that a requirement referred to in that subregulation has ceased to be satisfied, the Commissioner must cause a notice setting out those facts to be given to the applicant or patentee.
(4) As soon as practicable after the Commissioner receives a notice under subregulation (1) or gives a notice under subregulation (3), a notice of the receipt or giving of that notification must be published in the Official Journal.
(5) The terms of a notice under subregulation (1) or (3) need not be published, but the notice must be open to public inspection.
(6) The applicant or patentee may file a written reply setting out the facts relied upon to establish that the requirement referred to in subregulation (1) is satisfied.
(7) If a reply filed under subregulation (6) is in answer to a notification under subregulation (1) by a person, the Commissioner must, as soon as practicable after receiving the reply, give a copy of the reply to that person.
(8) As soon as practicable after a reply is filed under subregulation (6), a notice of the filing must be published in the Official Journal.
(9) The terms of a reply filed under subregulation (6) need not be published, but the reply must be open to public inspection.
3.30 Prescribed period: deposit requirements taken to be satisfied
For the purposes of paragraph 41 (4) (b) of the Act (“specifications: micro-organisms”), if, in relation to a patent application or patent relating to a micro-organism:
(a) that micro-organism is deposited with a prescribed depositary institution; and (b) a requirement referred to in paragraph 6 (c) or (d) of the Act (“deposit
requirements”) ceases to be satisfied in relation to the micro-organism; the prescribed period is from the day when the requirement ceases to be so satisfied to the end of: (c) where the step referred to in paragraph 41 (4) (b) of the Act is the making of
a new deposit of a sample of the micro-organism:
(i) if the Commissioner has given under subregulation 3.29 (2) (“notification that a deposit requirement has ceased to be satisfied”) the applicant or patentee a copy of a notice of that requirement — the period of 3 months after the copy was given; or
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(ii) if the Commissioner has given under subregulation 3.29 (3) to the applicant or patentee a notice of the requirement — the period of 3 months after the notice was given; or
(iii) if under Article 4 (1) of the Budapest Treaty the authority has notified the depositor of its inability to furnish samples of the micro- organism and the Commissioner has not, before the notification, given to the applicant or patentee under subregulation 3.29 (2) or (3) a copy of the notice, or the notice, as the case may be, of the requirement — the period of 3 months after the depositor received that notification under Article 4 (1) (d) of the Treaty; or
(iv) in any other case — the day when that new deposit is so made; or
(d) where the step referred to in paragraph 41 (4) (b) of the Act is an amendment of the specification in respect of that patent application or patent — the date of the allowance of the amendment, unless:
(i) the Commissioner has given the applicant or patentee a copy of a notice under subregulation 3.29 (2) or a notice under subregulation 3.29 (3), and the applicant or patentee has not asked for leave to amend the specification within the period of 3 months after the copy or the notice was given; or
(ii) the authority has notified the depositor under Article 4 (1) of the Budapest Treaty of its inability to furnish samples of the micro- organism and:
(A) the Commissioner has not, before the notification, given to the applicant or patentee under subregulation 3.29 (2) or (3) the notice, or a copy of the notice, as the case may be, of the requirement; and
(B) the applicant or patentee has not asked for leave to amend the specification within the period of 3 months after the depositor received the notification under Article 4 (1) (d) of the Treaty.
3.31 Application for declaration that deposit requirements are not satisfied
(1) An application under section 42 of the Act (“micro-organisms ceasing to be reasonably available”) for a declaration that a specification does not comply with section 40 of the Act (“specifications”) unless the deposit requirements are satisfied in relation to a micro-organism, must:
(a) be made in the approved form to a prescribed court or the Commissioner; and (b) be lodged at the court or filed.
(2) A person who applies for a declaration under section 42 of the Act must give a copy of the application:
(a) to the applicant or patentee; and (b) to such other person as the court or Commissioner directs.
(3) If the Commissioner on his or her own motion proposes to declare under section 42 of the Act that the specification in respect of a patent application or patent does not comply with the requirements of section 40 of the Act unless the deposit requirements
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are satisfied in relation to a micro-organism, he or she must give to the applicant or patentee a statement of the facts relied upon to justify the making of that declaration.
(4) A person to whom:
(a) a copy of an application under subregulation (2); or (b) a statement under subregulation (3); has been given: (c) may, within 3 months, give to the court to which the application is made or to
the Commissioner a reply to that application or statement; and (d) must give a copy of the reply to the applicant or patentee and to such other
persons as the court or the Commissioner directs.
(5) As soon as practicable after:
(a) a copy of a declaration by a court under subsection 42 (1) of the Act is given to the Commissioner under subsection 42 (6) of the Act; or
(b) the making of a decision of the Commissioner under subsection 42 (1) of the Act;
notice of the making of the declaration or decision must be published in the Official Journal.
(6) The terms of a declaration or decision referred to in subregulation (5) need not be published, but the declaration or decision must be open to public inspection.
Chapter 4 Publication
4.1 Prescribed information: applicants and applications
For the purposes of section 53 of the Act (“publication of certain information about applicants etc.”), the following information is prescribed:
(a) the number allocated to the application by the Commissioner; (b) the name of the applicant; (c) in the case of a complete application — the name of the nominated person; (d) the title, or an abbreviated title, of the invention; (e) the date on which the application was filed; (f) in the case of a complete application, other than a PCT application —
particulars of priority documents.
4.2 Notice that specification is open to public inspection
(1) A request under subsection 54 (1) of the Act (“notice of publication”) must be in the approved form.
(2) For the purposes of subsection 54 (1) of the Act, the Commissioner must publish the notice as soon as practicable after:
(a) being asked by the applicant to publish the notice; and (b) the relevant abstract is finally completed; and (c) if a direction has been given under subregulation 3.2 (4) (“specifications”) —
the direction has been complied with.
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(3) For the purposes of paragraph 54 (3) (b) of the Act, the prescribed period is from the day of filing of the specification to the end of 18 months after:
(a) that day; or (b) the date of making the earliest priority document referred to in regulation
3.12 (“priority dates generally”); whichever is earlier.
4.3 Prescribed documents: public inspection
(1) For the purposes of subsection 55 (1) of the Act (“documents open to public inspection”), the following documents, including those documents as amended, are prescribed:
(a) the patent request; (b) any document filed, including a specification, in relation to any provisional
application associated with the complete application; (c) any basic document that has been filed and, if the document is not in English,
a translation of the document into English and a related certificate of verification;
(d) any documents filed under section 6 (“deposit requirements”), section 41 (“specifications: micro-organisms”) or section 42 (“micro-organisms ceasing to be reasonably available”) of the Act;
(e) a notice and a statement filed under subregulation 2.2 (3) (“publication or use: prescribed circumstances and periods”);
(f) a document prescribed in regulation 3.1 (“prescribed documents: patent applications”);
(g) a notification under subregulation 3.25 (3) (“request for Commissioner’s certificate authorising release of sample of a micro-organism”);
(h) any document filed, and a copy of any document given to the patent applicant by the Commissioner, in relation to an application for an extension of time under subsection 223 (2) of the Act.
(2) For paragraphs 55 (2) (a), (b) and (c) of the Act, the following documents are prescribed:
(a) a document that is subject to an order of a court or a tribunal that prohibits disclosure of the document or information in the document;
(b) a document required to be produced under paragraph 210 (c) of the Act, if the Commissioner has reasonable grounds for believing that the document or information in the document should not be open to public inspection;
(c) a document that contains information from a document to which paragraph (b) applies.
Chapter 5 Opposition
5.1 Application of this Chapter
This Chapter applies if a notice of opposition has been filed for the purposes of:
(a) the following provisions of the Act:
(i) section 59 (“opposition to grant of standard patent”); (ii) section 75 (opposition to grant of extension);
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(iii) subsection 104 (4) (“amendments by applicants and patentees”), unless the request for leave to amend is in response to a direction of the Commissioner under section 107 (“amendments directed by Commissioner: patent applications”) or 108 (“amendments directed by Commissioner: extensions of term of petty patents”);
(iv) subsection 223 (6) (“extensions of time”); or
(b) subregulation 22.21 (4) (“protection or compensation of certain persons”) or 10.7 (4) (“correction of Register or patent”).
5.2 Interpretation
In this Chapter:
applicant means a person who has filed an application or request in respect of which another person has filed a notice of opposition.
opponent means a person who has filed a notice of opposition.
party means applicant or opponent.
5.3 Filing of opposition
(1) The Minister or other person who intends to oppose the grant of a patent under section 59 of the Act (“opposition to grant of standard patent”) must file a notice of opposition in the approved form within 3 months of publication in the Official Journal of the notice of acceptance under section 49 of the Act (“acceptance of patent request: standard patent”).
(2) The Minister or other person who intends to oppose the grant of an extension of the term of a standard patent under section 75 of the Act (opposition to grant of extension) must file a notice of opposition in the approved form within 3 months of publication in the Official Journal of the notice of acceptance under section 74 of the Act (acceptance or refusal of application).
(3) The Minister or other person who intends to oppose allowing an amendment under subsection 104 (4) of the Act (“amendments by applicants and patentees”) must file a notice of opposition in the approved form within 3 months of publication in the Official Journal of a notice referred to in subregulation 10.5 (2) (“Commissioner to grant leave to amend”).
(4) A person must not oppose the allowance of a proposed amendment of a complete specification, except on the grounds that the amendment is not allowable under section 102 of the Act (“what amendments are not allowable?”).
(5) A person who intends to oppose the grant of an application for an extension of time under subsection 223 (6) of the Act (“extensions of time”) must file a notice of opposition in the approved form within 1 month of the advertisement of the application in the Official Journal.
(5A) A person who intends to oppose a request for amendment of the Register or a patent under subregulation 10.7 (4) (“correction of Register or patent”) must file a notice of opposition in the approved form within 3 months of the publication in the Official Journal of the notice referred to in subregulation 10.7 (3).
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(6) A person:
(a) on whom a copy of an application for a licence in accordance with subregulation 22.21 (3) (“protection or compensation of certain persons”) has been served; and
(b) who intends to oppose the grant of the licence; must file a notice of opposition to the grant of the licence in the approved form within 1 month from the day on which the copy was served on him or her.
(7) As soon as practicable after a notice of opposition is filed, the opponent must serve a copy of the notice on the applicant.
5.3A Amendment of notice of opposition
(1) An opponent may request the Commissioner in writing to amend a notice of opposition for the purpose of correcting a clerical error or obvious mistake.
(2) The Commissioner may grant the request on the terms (if any) that the Commissioner specifies by notice to the opponent making the request.
(3) The Commissioner must give the parties an opportunity to make representations concerning the proposed amendment.
(4) If the Commissioner allows an amendment, he or she must give the applicant a copy of the notice as amended.
5.4 Filing of statement
(1) An opponent must:
(a) within 3 months of filing the notice of opposition serve on the applicant a copy of a statement that sets out:
(i) the grounds of opposition; and (ii) the particulars relating to each ground; and
(b) as soon as practicable after the copy of the statement has been served on the applicant, file the statement.
5.5 Dismissal of opposition
(1) An applicant may:
(a) within 1 month of being served with a copy of a statement by an opponent under subregulation 5.4 (1) (“filing of statement”); or
(b) if the complete specification in relation to an opposed application is re- examined under subsection 97 (1) of the Act (“re-examination of complete specifications) — within 1 month from the day when the re-examination is completed under regulation 9.5 (“completion of re-examination”);
request the Commissioner in the approved form to dismiss the opposition.
(2) As soon as practicable after a request is made, the Commissioner must inform the opponent of the request having been made.
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(3) The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition.
5.6 Determination of opposition
(1) If the complete specification in relation to an opposed application is re-examined under subsection 97 (1) of the Act (“re-examination of complete specifications”), the opponent may, within 1 month from the day when the re-examination is completed under regulation 9.5 (“completion of re-examination”), request the Commissioner in the approved form to determine the opposition.
(2) As soon as practicable after a request is made, the Commissioner must inform the applicant of the request having been made.
(3) The Commissioner may determine the opposition whether or not the opponent has requested determination of the opposition.
5.7 Opponent to serve copy of substitute statement
If the specification in relation to the opposed application is re-examined under subsection 97 (1) of the Act (“re-examination of complete specifications”):
(a) the opponent may, within 1 month from the day when the re-examination is completed under regulation 9.5 (“completion of re-examination”), serve on the applicant a copy of a statement in substitution for the statement to which subregulation 5.4 (1) (“filing of statement”) relates; and
(b) if a copy of a substituted statement is served on the applicant, the opponent must, as soon as practicable after the copy of the statement has been so served, file that statement.
5.8 Time for giving of evidence
(1) If an opponent intends to rely on evidence in support of the opposition, the opponent must:
(a) serve on the applicant a copy of any evidence in support of the opposition within:
(i) 3 months of serving the applicant with:
(A) a copy of the statement referred to in subregulation 5.4 (1) (“filing of statement”); or
(B) if a substitute statement has been served on the applicant under regulation 5.7 (“opponent to serve copy of substitute statement”) — a copy of that statement; or
(ii) if the Commissioner has re-examined the complete specification in relation to the opposed application under subsection 97 (1) of the Act (“re-examination of complete specifications”) — 3 months from the day when re-examination is completed under regulation 9.5 (“completion of re-examination”); or
(iii) if dismissal of the opposition has been requested under subregulation 5.5 (1) (“dismissal of opposition”) — 3 months of a decision of the Commissioner not to dismiss the opposition; or
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(iv) if determination of the opposition has been requested under subregulation 5.6 (1) (“determination of opposition”) — 3 months of a decision of the Commissioner not to determine the opposition;
whichever happens last; and
(b) file the evidence in support of the opposition as soon as practicable after the copy of the evidence has been served on the applicant.
(2) Subject to subregulation (3), if an applicant intends to rely on evidence in answer to the evidence in support of the opposition, the applicant must:
(a) serve on the opponent a copy of any evidence in answer to the evidence in support of the opposition referred to in subregulation 5.4 (2) or paragraph (1) (a) within 3 months after being served with that evidence in support of the opposition; and
(b) file the evidence in answer as soon as practicable after the copy of the evidence has been served on the opponent.
(3) If an opponent has not served on an applicant a copy of evidence in support of the opposition and the applicant intends to rely on evidence in answer to the opposition, the applicant must:
(a) serve on the opponent a copy of any evidence in answer to the opposition within 3 months of the end of the period prescribed in paragraph (1) (a); and
(b) file the evidence in answer as soon as practicable after the copy of the evidence has been served on the opponent.
(4) If an opponent intends to rely on evidence in reply to the evidence referred to in paragraph (2) (a) or (3) (a), the opponent must:
(a) within 1 month of being served with a copy of the evidence under paragraph (2) (a) or (3) (a), serve on the applicant:
(i) a copy of the evidence in reply; or (ii) if the opponent does not serve on the applicant a copy of the evidence
in reply — a copy of a notice of intention to serve evidence in reply; and
(b) if the opponent serves on the applicant a copy of a notice of intention to serve evidence in reply — serve on the applicant a copy of that evidence within 3 months of being served with a copy of the evidence under paragraph (2) (a) or (3) (a); and
(c) file the evidence in reply and any notice of intention as soon as practicable after the copy of the evidence in reply or notice has been served on the applicant.
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5.9 Amendment of statement
(1) Subject to subregulation (2), the Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:
(a) if the Commissioner reasonably believes that an amendment of a statement referred to in subregulation 5.4 (1) (“filing of statement”) corrects an error or omission by the opponent or by his or her agent — may amend the grounds of opposition set out in the statement; or
(b) if the Commissioner reasonably believes that an amendment of the grounds set out in a statement that is served and filed under subregulation 5.4 (1) results from an amendment of a patent request or complete specification — must amend those grounds; or
(c) must amend particulars relating to a ground set out in a statement that is served and filed under subregulation 5.4 (1).
(2) The Commissioner must not allow an amendment requested under subregulation (1), if:
(a) an application for dismissal of opposition is being considered; or (b) an application for determination of opposition is being considered; or (c) in the case of opposition under section 59 of the Act (“opposition to grant of
standard patent”) — a specification relating to the opposed application is being re-examined; or
(d) he or she does not reasonably believe that the applicant has been notified of the proposed amendment.
(3) The Commissioner must give the parties an opportunity to make representations concerning the proposed amendment.
(4) If the Commissioner allows an amendment, he or she must give the applicant a copy of the statement as amended.
5.10 Conduct of proceedings to which this Chapter applies
(1) The Commissioner may, on his or her own motion or on the application of a party:
(a) give a direction that is not inconsistent with the Act or these regulations for the conduct of proceedings to which this Chapter applies; or
(b) determine that a period prescribed in this Chapter (except in regulation 5.3 (“filing of opposition”) or paragraph 5.4 (1) (a) (“filing of statement”)), is to be extended by such further period as the Commissioner reasonably allows.
(2) The Commissioner may:
(a) on the application of a party in the approved form; and (b) on such reasonable terms (if any) as the Commissioner specifies; and (c) after the party has served the application on the other party; extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4 (1) (a).
(3) If section 107 of the Act (“amendments directed by Commissioner: patent applications”) applies to an opposed application, the time within which a party may take a step prescribed in this Chapter is extended by a period that is equal to the
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period from the day when the applicant is given an opportunity to be heard that is referred to in subsection 107 (2) of the Act to the end of the day when the decision is made under 107 (4) of the Act whether or not the amendment is allowed.
(4) The Commissioner may:
(a) on the application of a party; and (b) on such reasonable terms (if any) as the Commissioner specifies; permit the party to serve further evidence on the other party.
(5) The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a) if he or she proposes to grant an application by a party — is reasonably satisfied that the other party has been notified of the application; and
(b) if he or she proposes to act on his or her own motion — ensures that the parties are notified of the proposed action; and
(c) in either case:
(i) gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii) is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
5.11 Commissioner may inform himself or herself
(1) The Commissioner may inform himself or herself of a fact by reference to a document available in the Patent Office.
(2) If the Commissioner proposes to refer to a document under subregulation (1), he or she must:
(a) notify the parties accordingly; and (b) give the parties a copy of, or access to, the document; and (c) give the parties an opportunity to give evidence or make representations with
respect to the fact or document.
(3) In subregulation (2), document does not include a document filed under regulation 5.4 (“filing of statement”), 5.8 (“time for giving of evidence”) or further evidence referred to in subregulation 5.10 (4) (“conduct of proceedings to which this Chapter applies”).
5.12 Hearing of opposition
The Commissioner must if he or she receives a request by a party to hold a hearing, or may, on his or her own motion:
(a) give a notice of a hearing into the opposition; and (b) hold the hearing; if the relevant periods prescribed in regulation 5.8 (“time for giving of evidence”) have ended, unless: (c) the opposition has been dismissed or determined; or (d) the notice has been withdrawn.
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5.13 Representations to Commissioner
A representation referred to in subregulation 5.3A (3) (“amendment of notice of opposition”), subregulation 5.9 (3) (“amendment of statement”), subparagraph 5.10 (5) (c) (i) (“conduct of proceedings to which this Chapter applies”) or paragraph 5.11 (2) (c) (“Commissioner may inform himself or herself ”) may be made to the Commissioner in writing or by telephone.
5.14 Commissioner not required to hold hearing
If the Commissioner reasonably believes that no party wishes to be heard in a matter arising under regulation 5.12 (“hearing of opposition”) or 5.13 (“representations to Commissioner”), the Commissioner is not required to hold a hearing.
5.15 Withdrawal of opposition
An opponent may at any time withdraw opposition by:
(a) filing a written notice of withdrawal that is signed by him or her; and (b) serving a copy of the notice on the applicant.
Chapter 6 Grant and term of patents
Part 1 Patents generally
6.1 Publication of notice of grant of standard patent
If a standard patent is granted under section 61 of the Act (“grant of standard patent”), the Commissioner must publish a notice that the patent has been granted in the Official Journal.
6.2 Prescribed period: grant of standard patent
(1) For the purposes of subsection 61 (2) of the Act (“grant of standard patent”), the prescribed period is from 3 months after publication under paragraph 49 (5) (b) of the Act (“acceptance of patent request: standard patent”) of the notice of the acceptance of the request and complete specification to:
(a) 6 months after that publication; or (b) such later day as:
(i) in the case of proceedings before a court or the Tribunal — the court or Tribunal directs; or
(ii) in any other case — the Commissioner reasonably directs; being satisfied that the grant of the patent should be postponed.
(2) A person may request the Commissioner in the approved form to give a direction referred to in subparagraph (1) (b) (ii).
6.3 Date of patent
(1) For paragraph 65 (b) of the Act (“date of patent”), the date of a patent is as follows:
(a) in the case of a patent granted under subsection 33 (1) of the Act (“applications by opponents etc.”) — the date of filing of the complete
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specification in respect of the application of which the grant of a standard patent is opposed;
(b) in the case of a petty patent granted under subsection 33 (2) of the Act — the date of the patent referred to in paragraph 33 (2) (b) of the Act;
(c) in the case of a patent granted under subsection 34 (2) of the Act (“applications by eligible persons arising out of court proceedings”) — the date of the patent referred to in subsection 34 (1) of the Act;
(d) in the case of a patent granted under section 35 of the Act (“applications by eligible persons following revocation by Commissioner”) — the date of the revoked patent;
(e) in the case of a patent granted as a result of a declaration under section 36 of the Act (“other applications by eligible persons”), if the declaration is made in respect of:
(i) a complete application — the date that would have been the date of the patent if the patent had been granted on that application; or
(ii) a provisional application:
(A) the date 12 months after the date of filing of the provisional specification in respect of that application; or
(B) the date of filing of the complete application referred to in subsection 36 (3) of the Act;
whichever is earlier;
(ea) if, under section 223 of the Act, the Commissioner has extended the time for making, under section 38 of the Act, a complete application associated with a provisional application — the date 12 months after the date of making the first provisional application with which the complete application is associated;
(eb) if, under section 223 of the Act, the Commissioner has extended the time for making, under section 94 of the Act, a Convention application in relation to a basic application — the date 12 months after the date of making the first basic application to which the Convention application relates;
(f) for a patent granted on a divisional application made under subsection 39 (1) of the Act, the earlier of:
(i) the date of the patent of the first-mentioned application referred to in subsection 39 (1) of the Act; or
(ii) the date that would be the date of the patent if a patent had been granted on that first-mentioned application; or
(iii) if that first-mentioned application was itself a divisional application or was amended to be a divisional application before filing the later application — the date that would be the date of the patent if a patent had been granted on the divisional application;
(g) for a patent granted on a divisional application made under subsection 39 (2) of the Act — the date of the first-mentioned petty patent referred to in that subsection.
(2) However, for paragraphs (1) (f) and (g), if:
(a) the date of the patent was recorded in the Register before 1 January 2000; or (b) for a divisional application, the Commissioner determined a different date of
the patent and told the applicant in writing before 1 January 2000;
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the date of the patent is that date.
6.4 Form of application for sealing of duplicate of patent
An application for the sealing of a duplicate of a patent under section 66 of the Act (“sealing of duplicate of patent”) must be in the approved form.
6.5 Application for extension of term of petty patent
(1) For the purposes of subsection 69 (1) of the Act (“extension of term of petty patent”), an application for an extension of the term of a petty patent must:
(a) be in the approved form; and (b) be made within 11 months of the date of sealing of the patent.
(2) If a patentee applies for an extension of the term of a petty patent, the Commissioner must publish in the Official Journal a notice stating that the application has been made.
6.6 Deciding an application for extension of term of petty patent
(1) For the purposes of subsection 69 (2) of the Act (“extension of term of petty patent”), in deciding an application for an extension of the term of a petty patent, the Commissioner must consider:
(a) any notice under subsection 28 (1) of the Act (“notice of matters affecting validity of petty patents”) in relation to the petty patent; and
(b) any matter of which the Commissioner has informed the patentee under subsection 28 (3) of the Act.
(2) If the Commissioner is satisfied that a ground mentioned in subsection 28 (1) of the Act is made out, the Commissioner may refuse to grant an extension of the term of the petty patent.
(3) If the Commissioner is satisfied that no ground mentioned in subsection 28 (1) of the Act is made out, the Commissioner must grant the extension of the term of the petty patent.
Part 2 Extension of pharmaceutical patents
6.7 Definitions
In this Part:
pre-TGA marketing approval has the same meaning as in section 70 of the Act.
6.8 Information to accompany application
(1) This regulation applies to an application under section 70 of the Act for an extension of the term of a standard patent for a pharmaceutical substance.
(2) For paragraph 71 (1) (c) of the Act, the application must be accompanied by information showing that goods containing, or consisting of, the substance are currently included in the Australian Register of Therapeutic Goods.
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(3) The application must also be accompanied by information identifying the substance, as it occurs in those goods, in the same way (as far as possible) as the substance is identified in the complete specification of the patent.
6.9 Application without pre-TGA marketing approval
(1) This regulation applies to an application under section 70 of the Act for an extension of the term of a standard patent for a pharmaceutical substance for which pre-TGA marketing approval has not been given.
(2) For paragraphs 71 (1) (b) and (c) of the Act, the application must be accompanied by:
(a) a certificate under paragraph 25 (3) (b) or subsection 26 (4) or 26A (9) of the Therapeutic Goods Act 1989 stating the date of commencement of the first inclusion in the Australian Register of Therapeutic Goods of goods that contain, or consist of, the substance; or
(b) if the patentee does not have a certificate mentioned in paragraph (a) — information showing the date of commencement of the first inclusion in the Australian Register of Therapeutic Goods of goods that contain, or consist of, the substance.
Note For providing a copy of a certificate mentioned in paragraph (2) (a), see the definition of document in subsection 71 (1) of the Act.
6.10 Application with pre-TGA marketing approval
(1) This regulation applies to an application under section 70 of the Act for an extension of the term of a standard patent for a pharmaceutical substance for which pre-TGA marketing approval has been given.
(2) For paragraphs 71 (1) (b) and (c) of the Act, the application must be accompanied by:
(a) a written statement by the person who gave the approval showing:
(i) that approval has been given; and (ii) the date of the first approval; or
(b) if the patentee does not have a written statement mentioned in paragraph (a) — information showing:
(i) that approval has been given; and (ii) the date of the first approval.
Note For providing a copy of a written statement mentioned in paragraph (2) (a), see the definition of document in subsection 71 (1) of the Act.
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6.11 Further information
(1) This regulation applies if the Commissioner needs further information to decide whether he or she is satisfied that the requirements set out in sections 70 and 71 of the Act are satisfied for an application for an extension of the term of a standard patent.
(2) The Commissioner may give the applicant a notice requesting the further information within the period mentioned in the notice.
(3) The period must not be shorter than 2 months or longer than 6 months beginning on the day the notice is issued.
Note The period for giving the further information can be extended — see section 223 of the Act.
(4) If the applicant does not give the further information within that period, the Commissioner must decide whether he or she is satisfied that the requirements set out in sections 70 and 71 of the Act are satisfied.
(5) For subsection 71 (2) of the Act, further information given within the period mentioned in subregulation (2) is taken to have been filed with the application for extension of the term of the standard patent.
Chapter 7 Patents of addition
7.1 Form of application for grant of patent of addition etc
(1) For the purposes of paragraph 81 (1) (c) of the Act (“grant of patent of addition”), an application for a further patent must be made under section 29 of the Act (“application for patent”).
(2) The Commissioner must not grant a patent of addition under subsection 81 (1) of the Act unless the date that would be the date of the patent if that patent of addition were granted is the same as, or later than, the date of the patent for the main invention.
7.2 Form of application for revocation of patent and grant of patent of addition instead
An application under section 82 of the Act (“revocation of patent and grant of patent of addition instead”) must be in the approved form.
Chapter 8 PCT applications and Convention applications
Part 1 PCT applications
8.1 International applications taken to be applications under the Act
(1) In this regulation:
priority date, in relation to an international application, has the same meaning as in the PCT.
(2) Where:
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(a) the receiving Office has declared that an international application that specifies Australia as a designated State under Article 4 (1) (ii) of the PCT is taken to be withdrawn; or
(b) the International Bureau has made a finding under Article 12 (3) of the PCT; the application is taken to be a PCT application as if a declaration or finding had not been made, if: (c) the applicant has made a request referred to in Article 25 (1) (a) of the PCT
within the time limit specified in Rule 51.1 of the PCT; and (d) the Commissioner has received within the time limit specified in Rule 51.3 of
the PCT:
(i) fees prescribed for the purposes of paragraph 89 (3) (b) (“modified application of Act”); and
(ii) if the application is not in English — a translation of the application into English and a related certificate of verification; and
(e) the Commissioner reasonably believes that:
(i) the declaration was the result of an error or omission on the part of the receiving Office; or
(ii) the finding was the result of an error or omission on the part of the International Bureau.
(3) For the purposes of subsection 89 (1) of the Act:
(a) the requirements of subsection 29 (4) of the Act (“application for patent”); and
(b) subregulation 3.1 (1) (“prescribed documents: patent applications”) and regulation 3.2 (“specifications”);
are prescribed.
(4) The applicant must meet the requirements of subsection 89 (3) of the Act within the period of:
(a) if the application is an application in respect of which Australia has been elected under Chapter II of the PCT within the period specified in Article 39 of the PCT — 31 months from the priority date of that application; or
(b) in any other case — 21 months from the priority date of that application.
8.1A Title of an invention
(1) A title established by the ISA under rule 37.2 of the PCT for an international application is taken to be the title of the specification.
(2) For subregulation (1), if the established title is in a language other than English, the title is taken to be the English translation of the established title.
8.2 Prescribed documents: PCT application
(1) In this regulation:
PCT application includes:
(a) an amendment under Article 19 or 34 of the PCT; or
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(b) a rectification under Rule 91 of the regulations annexed to the PCT.
(2) For the purposes of paragraph 89 (3) (a) of the Act (“modified application of Act”), if:
(a) a PCT application is not filed in English; and (b) the PCT application has been published in English under Article 21 of the
PCT; and (c) a translation of the application into English has not been filed before the date
of publication under Article 21 of the PCT; the publication under Article 21 of the PCT is taken to be the translation referred to in paragraph 89 (3) (a) of the Act and to have been verified in accordance with these regulations.
(3) For the purposes of paragraph 89 (3) (b) of the Act, each of the following documents is prescribed:
(a) a document setting out an address for service of documents in Australia; (b) if a PCT application has not been published under Article 21 of the PCT — a
copy of the application; (c) if a PCT application is not filed in English and has not been published in
English under Article 21 of the PCT — a translation of the application into English together with a related certificate of verification.
(4) The Commissioner must not, in relation to a PCT application that is treated as an application under the Act for:
(a) a standard patent — give a direction under section 44 of the Act (“request for examination”); or
(b) a petty patent — act under section 50 of the Act (“consideration and acceptance of patent request: petty patent”);
unless the applicant has complied with the requirements of subsection 89 (3) of the Act.
(5) In a PCT application, the applicant is taken to be the nominated person in respect of the application.
8.3 Modification of Act to apply to PCT applications
(1) For paragraph 228 (2) (t) of the Act, the Act is modified under this regulation for PCT applications that are treated as patent applications under the Act.
(2) Section 141 (“withdrawal of applications”):
Omit the section, substitute:
“141 Withdrawal of applications “(1) Subject to subsection (2), a patent application is to be treated as having been
withdrawn if, and only if, the applicant files a written notice of withdrawal signed by the applicant.
“(2) A PCT application is to be treated as having been withdrawn if Article 11 (3) of the PCT ceases to have effect in Australia in relation to the application under Article 24 (1) (i) of the PCT.”.
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(3) Subsection 142 (2) (“lapsing of applications”):
Add at the end:
“; or (f) Article 11 (3) of the PCT ceases to have effect in Australia in relation to the application under Article 24 (1) (ii) or (iii) or Article 39 (2) of the PCT.”.
(4) Section 223 (“extensions of time”):
After subsection (1) insert:
“(1A) If, because of an error or omission by the receiving Office or the International Bureau, a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner must extend the time for doing the act.”.
8.4 Form of request and prescribed documents: PCT applications
(1) A request under subsection 92 (1) of the Act (“notice of publication”) must be in the approved form.
(2) For the purposes of subsection 92 (4) of the Act, the following documents are prescribed:
(a) the documents specified in paragraphs 4.3 (c), (d) and (e) (“prescribed documents: public inspection”);
(b) any International Search Report or Preliminary Examination Report made under the PCT and filed;
(c) if the PCT application claims priority under Article 8 of the PCT of a provisional or complete application — a document referred to in regulation 4.3, and a specification, in respect of that application.
Part 2 Convention applications
8.5 Convention countries
(1) Each of the countries specified in Schedule 4 is declared to be a Convention country for the purposes of the definition of Convention country in the Act.
(2) For the purposes of section 94 of the Act (“Convention applicants may make Convention applications”), the period of 12 months from the day on which a basic application is first made in a Convention country in respect of the invention is prescribed.
8.6 Particulars required for Convention application
(1) For the purposes of paragraph 95 (2) (a) of the Act (“manner of making Convention application”), the following particulars are prescribed:
(b) the country in which the application was made; (c) the number allocated to the application by the official chief or head of the
Patent Office of the Convention country in which the application was made; (d) the date on which the application was made;
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(e) if the application is not the first made in a Convention country in respect of the invention — the particulars specified in paragraphs (b) to (d) (inclusive) in respect of that first made application.
(2) For subsection 95 (3) of the Act, a copy of the specification relating to the basic application that is certified by the official chief or head of the Patent Office of the Convention Country in which the basic application is made must be filed within the period from the day on which the application is made to immediately before acceptance.
8.7 Form of request in relation to withdrawn, abandoned or refused applications
A request under section 96 of the Act (“withdrawn, abandoned or refused applications”) must be in the approved form.
Chapter 9 Re-examination
9.1 Commissioner may re-examine complete specification when grant opposed
(1) The Commissioner may, within 1 month of the filing of a statement under subregulation 5.4 (1) (“filing of statement”), decide to re-examine under subsection 97 (1) of the Act (“re-examination of complete specifications”) a complete specification in respect of the application in respect of which the grant of a patent is opposed.
(2) The Commissioner must notify an applicant and an opponent under Chapter 5 (“opposition”) of his or her decision to re-examine a complete specification under subsection 97 (1) of the Act.
9.2 Request for re-examination of complete specification
(1) For the purposes of subsection 97 (2) of the Act (“re-examination of complete specifications”), a request for re-examination of a complete specification must be in the approved form.
(2) A request must:
(a) identify the documents on which an assertion is based that the invention, so far as claimed in any claim and when compared with the prior art base as it existed immediately before the priority date of that claim:
(i) is not novel; and (ii) does not involve an inventive step; and
(b) state the relevance of each of those documents.
(3) The request must have with it:
(a) if the document is not available in the Patent Office — a copy of the document; and
(b) if the document is not in English — a translation of the document into English and a related certificate of verification; and
(c) evidence of the date and place of publication of the document.
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(4) If the request does not:
(a) identify the documents on which the assertion is based; and (b) state the relevance of each document; and (c) have with it the documents referred to in subregulation (3); the Commissioner may not re-examine the complete specification.
(5) A person who has made a request may, by filing a notice in writing, amend or withdraw the request before the Commissioner reports under section 98 of the Act (“report on re-examination”).
(6) If the person who made the request is not the patentee, the Commissioner must notify the patentee of his or her decision to re-examine the complete specification.
(7) A patentee or another person who has requested re-examination of the complete specification under subsection 97 (2) of the Act must give notice to the Commissioner of any relevant proceedings in relation to the patent of which he or she is aware.
9.3 Copy of report on re-examination
(1) If a person who asked for the re-examination is not the patentee, a copy of the report under section 98 of the Act (“report on re-examination”) must be given to the person by the Commissioner.
(2) The Commissioner must give an opponent under Chapter 5 of the Act (“opposition”) a copy of the report in respect of a complete specification in relation to the application in respect of which the grant of a patent is opposed.
9.4 Prescribed period: statement disputing report by Commissioner
(1) For the purposes of subsection 99 (1) of the Act (“statement by applicant or patentee”), the period of 2 months after the day on which the Commissioner reports under section 98 of the Act (“report on re-examination”) is prescribed.
(2) The Commissioner must give a copy of a statement filed under subsection 99 (1) of the Act to:
(a) an opponent under Chapter 5 of the Act (“opposition”) in respect of the re- examined complete specification in relation to the application in respect of which the grant of a patent is opposed; and
(b) if the person who asked for the re-examination is not the patentee — that person.
9.5 Completion of re-examination
If the Commissioner makes an adverse report on a re-examination under subsection 97 (1) or (2) of the Act (“re-examination of complete specifications”) and:
(a) a statement is filed under section 99 of the Act (“statement by applicant or patentee”) and:
(i) the Commissioner gives the applicant an opportunity to be heard that is referred to in subsection 107 (2) of the Act (“amendments directed by Commissioner: patent applications”) within 3 months from the
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day when the Commissioner reports under section 98 of the Act (“report on re-examination”); or
(ii) the applicant or patentee asks for leave to amend the complete specification to remove any lawful grounds of objection specified in a report on re-examination within 3 months from the day referred to in subparagraph (i);
the re-examination is completed when the decision is made whether or not the amendment is allowed; or
(b) a statement is filed under section 99 of the Act and subparagraphs (a) (i) and (ii) do not apply — the re-examination is completed 2 months from the day when the Commissioner reports under section 98 of the Act; or
(c) a statement is not filed under section 99 of the Act and:
(i) the Commissioner gives the applicant an opportunity to be heard that is referred to in subsection 107 (2) of the Act within 2 months from the day when the Commissioner reports under section 98 of the Act; or
(ii) the applicant or patentee asks for leave to amend the complete specification to remove any lawful grounds of objection specified in a report on re-examination within 2 months from the day when the Commissioner reports under section 98 of the Act;
the re-examination is completed when the decision is made whether or not the amendment is allowed; or
(d) a statement is not filed under section 99 of the Act and subparagraphs (c) (i) and (ii) do not apply — the re-examination is completed 2 months from the day when the commissioner reports under section 98 of the Act.
Chapter 10 Amendments
10.1 Form of amendments
(1) For the purposes of subsection 104 (1) of the Act (“amendments by applicants and patentees”), an applicant or a patentee may ask the Commissioner for leave to amend a patent request or complete specification or another filed document by filing a request for leave to amend in the approved form together with a statement of proposed amendments.
(1A) If an applicant proposes to amend a patent request, complete specification or other filed document:
(a) to remove a lawful ground of objection raised:
(i) in the case of an application for a standard patent — in an examination report; or
(ii) in the case of an application for a petty patent — in a notification under subsection 50 (2) of the Act (“consideration and acceptance of patent request: petty patent”); or
(b) in anticipation:
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(i) in the case of an application for a standard patent — of examination of the patent request and specification; or
(ii) in the case of an application for a petty patent — of consideration of the patent request and complete specification under section 50 of the Act;
the applicant is taken to have complied with subregulation (1) if a written statement of the proposed amendments is filed.
(2) If:
(a) a proposed amendment is to be made by means of substituting 1 page or document for another page or document; or
(b) the Commissioner requires the applicant or patentee to make a proposed amendment by that means;
the applicant or patentee must file: (c) 2 copies of each page or document that is to be substituted for a page of the
request or document; and (d) 3 copies of each page that is to be substituted for a page of the complete
specification; and (e) on 1 of the copies, an indication of the nature and location of the proposed
amendments.
(3) The Commissioner may require an applicant or a patentee to file, within 3 months of being asked to do so, a statement of the reasons for the request being made and any evidence in support of the request.
(4) The Commissioner may, before granting leave to amend, require a patentee to file within 1 month of being asked to do so, a statement that, to the best of his or her knowledge, relevant proceedings are not pending in relation to the patent.
(5) For the purposes of this Chapter, a statement of proposed amendments may be amended by filing a statement of proposed amendments of the first-mentioned statement before allowance of those amendments.
10.2 Commissioner to consider and deal with requests for leave to amend
(1) For the purposes of subsection 104 (2) of the Act (“amendments by applicants and patentees”), the Commissioner must report on whether:
(a) the request for leave to amend and the statement of proposed amendments do not comply with regulation 10.1 (“form of amendments”) and Schedule 3; and
(b) any proposed amendment of a complete specification is not allowable under section 102 of the Act (“what amendments are not allowable?”); and
(c) the proposed amendments are not allowable under regulation 10.3 (“amendments not allowable”) or, if made, would not otherwise be allowable under the Act or these Regulations.
(2) The Commissioner must give a copy of each report made under subregulation (1) to the applicant or patentee.
(3) The applicant or patentee may contest in writing the report or file a statement of proposed amendments of the statement referred to in paragraph (1) (a).
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(4) If a statement of proposed amendments referred to in subregulation (3) is filed, the Commissioner must report under subregulation (1) as if the proposed amendments had been made.
(5) If, under subregulation (3), the applicant or patentee contests the report, the Commissioner must report under subregulation (1) and take notice of the matters raised by the applicant or patentee.
(6) If:
(a) the grant of a standard patent is opposed under section 59 of the Act (“opposition to grant of standard patent”); or
(b) a person has given the Commissioner a notice under section 28 of the Act (“notice of matters affecting validity of petty patents”) and the Commissioner has not decided the application under section 69 of the Act (“extension of term of petty patent”);
and the applicant or patentee has requested leave to amend the patent request or complete specification concerned, the Commissioner must: (c) give a copy of the request for leave to amend and the statement of proposed
amendments to the opponent or person referred to in paragraph (b) as soon as practicable after the request for leave to amend has been filed; and
(d) invite that opponent or person to comment on the request and statement.
(7) The opponent or person may file comments within 21 days, or any longer period up to 2 months allowed by the Commissioner, of being given the copy of the request for leave to amend and the statement under paragraph (6) (c).
(8) If:
(a) a person has, under subregulation 3.25 (1) (“request for Commissioner’s certificate authorising release of sample of a micro-organism”), requested the Commissioner to grant the certification referred to in that subregulation; and
(b) the Commissioner has not made a decision under subregulation 3.25 (2); and (c) the applicant or patentee has filed a request for leave to amend the complete
specification in respect of a matter mentioned in paragraph 6 (c) of the Act (“deposit requirements”);
the Commissioner must, as soon as practicable after the request for leave to amend has been filed, give a copy of that request and the statement of proposed amendments to the person referred to in paragraph (a).
(9) If a request for leave to amend a complete specification in respect of a micro- organism is made for the purpose of including in the specification a matter in respect of which a notice has been filed by a person under subregulation 3.29 (1) (“notification that a deposit requirement has ceased to be satisfied”), the Commissioner must, as soon as practicable after the request for leave to amend has been filed, give the person a copy of the request and the statement of proposed amendments.
10.3 Amendments not allowable
(1) A proposed amendment of a provisional specification is not allowable if it would materially alter the meaning or scope of the specification.
(2) A proposed amendment of a complete specification is not allowable if:
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(a) it is in respect of a matter mentioned in paragraph 6 (c) of the Act (“deposit requirements”); and
(b) after the amendment was made the specification would not include each of the matters specified in that paragraph.
(3) A proposed amendment of a patent request is not allowable if:
(a) the patent request has been accepted under section 49 (“acceptance of patent request: standard patent”) or 50 (“consideration and acceptance of patent request: petty patent”) of the Act; and
(b) it would convert the patent application from:
(i) an application for a standard patent to an application for a petty patent; or
(ii) an application for a petty patent to an application for a standard patent.
(4) The Commissioner must not allow a proposed amendment of a complete specification if he or she has:
(a) under subregulation 10.2 (8) or (9) (“Commissioner to consider and deal with requests for leave to amend”) given a person a copy of the request for leave to amend and the statement of proposed amendments; and
(b) not given the person a reasonable opportunity to be heard.
10.4 Commissioner to refuse request for leave to amend
The Commissioner must refuse the request for leave to amend, if:
(a) he or she reasonably believes that a proposed amendment is not allowable, other than for the reasons mentioned in subregulation 10.3 (4) (“amendments not allowable”); or
(b) the applicant or patentee has not complied with a request of the Commissioner under subregulation 10.1 (3) (“form of amendments”); or
(c) in the case of a proposed amendment of a complete specification relating to a patent — the patentee has not complied with a request of the Commissioner under subregulation 10.1 (4).
10.5 Commissioner to grant leave to amend
(1) The Commissioner must grant leave to amend a patent request, complete specification or other filed document:
(a) if the report on the proposed amendments under subregulation 10.2 (1) is not an adverse report; and
(b) in the case of amendments that:
(i) are proposed in anticipation of, or in response to:
(A) a report relating to an examination; or (B) a notice relating to a consideration of a complete application
for a petty patent under section 50 of the Act (“consideration and acceptance of patent request: petty patent”); and
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(ii) do not relate to matters mentioned in paragraph 6 (c) of the Act (“deposit requirements”);
if the Commissioner reasonably believes that the proposed amendments would remove all lawful grounds of objection to the patent request and complete specification.
(2) If the Commissioner grants leave to amend, he or she must publish a notice of that fact in the Official Journal, where:
(a) the patent request and complete specification to which the leave to amend relates have been accepted under section 49 (“acceptance of patent request: standard patent”) or 50 of the Act; and
(b) the proposed amendments are in respect of:
(i) the complete specification; or (ii) the patent request or another filed document and the proposed
amendments would materially alter the meaning or scope of the request or document.
(3) The Minister or another person may oppose allowance of an amendment if a notice is published under subregulation (2).
(4) For the purposes of paragraph (2) (b), if:
(a) a request for leave to amend is filed before a patent is granted on an application under section 61 (“grant of standard patent”) or 62 (“grant and publication of petty patent”) of the Act; and
(b) the proposed amendments relate to the name or address of an applicant for the patent;
the proposed amendments are not taken to materially alter the meaning or scope of the patent request or other filed document.
10.6 Time for allowance of amendments
(1) If:
(a) the Commissioner grants leave to amend a patent request, complete specification or other filed document; and
(b) subregulation 10.5 (2) does not apply to the amendment; the Commissioner must allow the proposed amendment immediately.
(2) If:
(a) subregulation 10.5 (2) applies to a proposed amendment of a patent request, complete specification or other filed document; and
(b) no person opposes the allowance of the proposed amendment; and (c) the Commissioner is satisfied that no relevant proceedings are pending; the Commissioner must allow the proposed amendment at the end of the time for bringing opposition proceedings.
(3) If:
(a) subregulation 10.5 (2) applies to a proposed amendment of a patent request, complete specification or other filed document; and
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(b) a person opposes the allowance of the proposed amendment; and (c) the opposition is decided against the opponent; and (d) the Commissioner is satisfied that no relevant proceedings are pending; the Commissioner must allow the proposed amendment immediately after the opposition is fully determined.
(4) For the purposes of subregulation (3), an opposition is fully determined when:
(a) a decision has been made in respect of the opposition and the decision is no longer subject to any form of review (including review by way of appeal against a decision of the Tribunal or a prescribed court); or
(b) a decision that has been made in respect of the opposition was subject to review (including review by way of appeal against a decision of the Tribunal or a prescribed court) but the period within which review proceedings could have been instituted has expired without review proceedings having been instituted; or
(c) the opposition is withdrawn.
(5) If the Commissioner requires a patentee to file a statement that, to the best of the knowledge of the patentee, relevant proceedings are not pending, the patentee must file the statement within 1 month of the Commissioner so requiring.
10.7 Correction of Register or patent
(1) The Commissioner may, on a request being made in the approved form, amend:
(a) an entry in the Register for the purposes of:
(i) correcting a clerical error or an obvious mistake; or (ii) if a name or an address entered in the Register has been changed —
changing the name or address; or
(b) a patent for the purposes of correcting a clerical error or an obvious mistake.
(2) The Commissioner may, if he or she proposes to amend a patent or an entry in the Register, give notice to a person whose name is entered in the Register as having an interest in the patent.
(3) If a proposed amendment would materially alter the meaning or scope of an entry in the Register or a patent, the Commissioner must publish in the Official Journal a notice of the request to amend the entry or the patent.
(4) If a notice is published, a person may oppose the making of the amendment.
(5) If the Commissioner publishes a notice of the request to amend, he or she must amend the patent or the entry in the Register:
(a) where a person has not opposed allowance of the amendments; or (b) subject to the terms of any decision of a prescribed court, the Tribunal or the
Commissioner in respect of the opposition.
(6) The Commissioner may, of his or her own motion, amend a patent or an entry in the Register to correct a clerical error or an obvious mistake.
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10.8 Prescribed decisions: appeal to Federal Court
For the purposes of subsection 104 (7) of the Act (“amendments by applicants and patentees”), a prescribed decision is a decision to grant leave to amend a patent request or complete specification to which paragraph 10.5 (1) (b) applies (“Commissioner to grant leave to amend”).
10.9 Pending proceedings: amendments relating to micro-organisms
The Commissioner must not amend a complete specification relating to a patent if the amendment would include matters mentioned in paragraph 6 (c) of the Act (“deposit requirements”) while relevant proceedings are pending.
10.10 Prescribed period: filing of court order
For the purposes of subsection 105 (5) of the Act (“amendments directed by court”), the period of 14 days from the date of the order of the court is prescribed.
10.11 Form of direction by Commissioner: patents
A direction of the Commissioner under subsection 106 (1) of the Act (“amendments directed by Commissioner: patents”):
(a) must be in writing; and (b) must state the grounds on which he or she is satisfied that the patent relating
to the direction is invalid; and (c) must specify the time within which the patentee must file a relevant statement
of proposed amendments.
10.12 Form of direction by Commissioner: applications
A direction of the Commissioner under subsection 107 (1) of the Act (“amendments directed by Commissioner: patent applications”):
(a) must be in writing; and (b) must state the grounds on which he or she is satisfied that there are lawful
grounds of objection to the patent request or complete specification; and (c) must specify the time within which the applicant must file a relevant
statement of proposed amendments.
10.13 Form of direction by Commissioner: extension of petty patent term
A direction of the Commissioner under subsection 108 (1) of the Act (“amendments directed by Commissioner: extensions of term of petty patents”):
(a) must be in writing; and (b) must state the grounds on which he or she is satisfied that the petty patent
relating to the direction is invalid; and (c) must specify the time within which the patentee must file a relevant statement
of proposed amendments.
10.14 Form of request: claim under assignment or agreement
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A request under subsection 113 (1) of the Act (“persons claiming under assignment or agreement”) for a direction of the Commissioner must be in the approved form.
Chapter 11 Infringement
11.1 Infringement exemptions: prescribed foreign countries
For the purposes of the definitions of foreign aircraft, foreign land vehicle and foreign vessel in the Act, each of the foreign countries specified in Schedule 4 is prescribed.
Chapter 12 Compulsory licences and revocation of patents
12.1 Lodgment of applications for compulsory licences
(1) For the purposes of subsection 133 (1) of the Act (“compulsory licences”), the period of 3 years after the date of sealing of the patent to which the application relates is prescribed.
(2) An applicant must lodge with the Registrar of the prescribed court to which the application is made:
(a) a copy of the application that includes:
(i) the name and address of the applicant; and (ii) the address for service in relation to the application; and (iii) the identity of the patent; and (iv) facts supporting the assertion that the reasonable requirements of the
public with respect to the patented invention have not been satisfied; and
(b) a declaration by the applicant to the effect that the facts in the statement are true to the best of the knowledge of the applicant.
(3) The applicant must:
(a) serve a copy of the application and declaration on the patentee and any other person who claims an interest in the patent as soon as practicable after lodgment; and
(b) lodge with the Registrar notice of the date when, and the place where, he or she complied with paragraph (a).
12.2 Prescribed period: revocation of standard patent
(1) For the purposes of subsection 134 (1) of the Act (“revocation of standard patent after grant of compulsory licence”), the period of 2 years after the date of the grant of the first compulsory licence in respect of a standard patent is prescribed.
(2) A prescribed court may, as a preliminary issue, hear and determine the question of the right of the person concerned to apply for revocation of a patent in respect of which a compulsory licence has been ordered.
12.3 Form of notice: offer to surrender patent
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(1) A notice under subsection 137 (1) of the Act (“revocation on surrender of patent”) must be in the approved form.
(2) Notice of an offer to surrender under subsection 137 (2) of the Act must be published in the Official Journal.
(3) An interested person must, not later than 1 month after the publication, give the Commissioner notice of his or her wish to be heard under subsection 137 (3) of the Act.
(4) The Commissioner may, as a preliminary issue, hear and determine the question of the right of the person concerned to be heard.
12.4 Applications to revoke patents
(1) An applicant to a prescribed court for an order to revoke a patent under subsection 138 (1) of the Act (“revocation of patents in other circumstances”) must include in:
(a) the pleading; or (b) another document disputing the validity of the patent; particulars of the grounds on which he or she relies.
(2) If 1 of those grounds is that the invention is not a patentable invention because of information about the invention in a document or through the doing of an act, the particulars must specify:
(a) in the case of a document — the time when, and the place where, the document is alleged to have become publicly available; and
(b) in the case of an act:
(i) the name of the person alleged to have done the act; and (ii) the period in which, and the place where, the act is alleged to have
been done publicly; and (iii) a description that is sufficient to identify the act; and (iv) if the act relates to apparatus or machinery — whether the apparatus
or machinery exists and, if so, where it can be inspected.
(3) Except by leave of the court:
(a) evidence is not admissible to prove a ground of invalidity that has not been disclosed in the particulars in relation to that ground; and
(b) evidence as to apparatus or machinery that exists at the date of lodgment of the particulars is not admissible unless it is proved that the party relying on the evidence:
(i) if the apparatus or machinery is in his or her possession — has offered the opportunity to inspect it; or
(ii) in any other case — has used reasonable endeavours to obtain its inspection;
to, or by, each other party to the hearing of the application.
(4) The court may:
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(a) extend the time for giving particulars; and (b) allow the amendment of particulars.
Chapter 13 Withdrawal and lapsing of applications and ceasing of patents
13.1 Publication of notice of withdrawal of application
The Commissioner must publish notice in the Official Journal of the withdrawal of a patent application under section 141 of the Act (“withdrawal of applications”).
13.2 Prescribed period: request for examination of applications
The period of 9 months from the date on which the request for deferment of the examination was filed is prescribed for the purposes of paragraph 142 (2) (c) of the Act (“lapsing of applications”).
13.3 Prescribed period: continuation fees
(1) For paragraph 142 (2) (d) of the Act:
(a) a continuation fee for an application for a standard patent is payable for a relevant anniversary at the last moment of the anniversary; and
(b) the period in which the fee must be paid is the period ending at the last moment of the anniversary.
(1A) However, if the continuation fee is paid within 6 months after the end of the relevant anniversary (6 month period):
(a) the period mentioned in paragraph (1) (b) is taken to be extended until the fee is paid; and
(b) the additional fee stated in column 3 of item 7 of Part 2 of Schedule 7 is payable from the first day of the 6 month period.
(2) In the case of an application to which section 33 (“applications by opponents etc.”), 34 (“applications by eligible persons arising out of court proceedings”), 35 (“applications by eligible persons following revocation by Commissioner”), 36 (“other applications by eligible persons”) or 39 (“divisional applications”) of the Act applies, a continuation fee that is payable before 12 months after the date of filing of the application is taken to have been paid.
(3) In this regulation, relevant anniversary, for an application for a standard patent, means an anniversary:
(a) of the date that would be the date of the patent if a patent had been granted on the application; and
(b) that is mentioned in column 2 of item 7 of Part 2 of Schedule 7.
Note 1 For the date of a patent, see section 65 of the Act and regulation 6.3.
Note 2 For the fees payable, see regulation 22.2.
13.4 Prescribed period: acceptance of request and specification
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(1) Subject to this regulation, the period prescribed for the purposes of paragraph 142 (2) (e) of the Act (“lapsing of applications”) in relation to an application is:
(a) if the applicant has not made a request under subsection 47 (1) of the Act (“request for modified examination”) — the period of 21 months commencing on the date of the first report (if any) under section 45 of the Act (“examination”);
(b) the period of 21 months commencing on the date of the first report (if any) under section 48 of the Act (“modified examination”);
(c) if examination is requested under subsection 47 (2) of the Act (“request for modified examination”) after the Commissioner first reports under section 48 of the Act — the period of 12 months commencing on the date of the first report on the examination under section 45 of the Act;
(d) if the Commissioner has reported that the patent request or complete specification relates to an invention that, so far as claimed, is not novel in view of information of the kind described in subparagraph (b) (ii) of the definition of prior art base in the Act — the period of 3 months commencing on the earlier of:
(i) the date of publication of the specification containing that information; or
(ii) its lapsing, refusal or withdrawal;
(e) if the patent request and complete specification relate to an application in relation to which a request has been made under section 32 of the Act (“disputes between applicants etc.”) — subject to subregulation (3), the period of 3 months commencing on the date of the determination by the Commissioner under that section;
(f) if:
(i) a person has applied under subsection 36 (1) of the Act (“other applications by eligible persons”) in relation to the patent request and complete specification; and
(ii) the Commissioner declares under that subsection that the applicant in relation to the request and complete specification is an eligible person;
subject to subregulation (3), the period of 3 months commencing on the date of that declaration;
(g) if:
(i) a person has applied under subsection 36 (1) of the Act (“other applications by eligible persons”) in relation to the patent request and complete specification; and
(ii) the Commissioner declares under that subsection that that person is an eligible person;
either: (iii) if the person has already lodged an application — subject to
subregulation (3), the period of 3 months commencing on the date of the Commissioner’s declaration; or
(iv) in any other case — the period determined under whichever of paragraphs (a), (b) and (c) applies;
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(h) if an appeal has been made to a prescribed court, or an application for review has been made to the Tribunal, in relation to the patent request or complete specification — subject to subregulation (4), the period of 3 months commencing on the day when the appeal or application is withdrawn or finally dealt with or determined;
(j) if:
(i) the application is for a patent of addition; and (ii) an appeal has been made to a prescribed court or an application for
review has been made to the Tribunal in respect of the application for a patent for the main invention;
subject to subregulation (4), the period of 3 months commencing on the day when the appeal or application is withdrawn or finally dealt with or determined;
(k) if the Commissioner requests a document under subparagraph 1.6 (1) (b) (ii) or paragraph 1.6 (1A) (b) — 5 months commencing on the date of the request.
(2) If more than 1 of paragraphs (1) (a) to (k) applies in a particular case, the lapsing period is the longer or longest period so worked out.
(3) If paragraph (1) (e) or (f) or subparagraph (1) (g) (iii) applies, the Commissioner may substitute a period longer than 3 months, if the Commissioner is satisfied that acceptance of the patent request and complete specification should be postponed.
(4) If paragraph (1) (h) or (j) applies, the court or Tribunal may in its discretion substitute a period longer than 3 months.
13.5 If applications lapse
If a complete application lapses under section 142 (“lapsing of applications”), the Commissioner must advertise that fact in the Official Journal.
13.6 Time for payment of renewal fee for standard patent
(1) For paragraph 143 (a) of the Act:
(a) a renewal fee for a standard patent is payable for a relevant anniversary at the last moment of the anniversary; and
(b) the period in which the renewal fee must be paid is the period ending at the last moment of the anniversary.
(1A) However, if an extension of the term of a standard patent is granted under section 76 of the Act, the period in paragraph (1) (b) is taken to be extended until 6 months after the extension is granted for each relevant anniversary happening:
(a) on or after the twentieth anniversary of the date of the patent; and (b) on or before the day the extension is granted.
(2) However, if the period mentioned in paragraph (1) (b) is not taken to be extended under subregulation (1A), and the renewal fee is paid within 6 months after the end of the relevant anniversary (6 month period):
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(a) the period mentioned in paragraph (1) (b) is taken to be extended until the fee is paid; and
(b) the additional fee stated in column 3 of item 7 of Part 2 of Schedule 7 is payable from the first day of the 6 month period.
(3) If a continuation fee is paid for a relevant anniversary in accordance with regulation 13.3, the renewal fee for that anniversary is taken to have been paid.
(5) The Commissioner must publish notice in the Official Journal of a patent that ceases under section 143 of the Act.
(6) In this regulation, relevant anniversary, for a standard patent, means an anniversary:
(a) of the date of the patent; and (b) that is mentioned in column 2 of item 7 of Part 2 of Schedule 7.
Note 1 For the date of a patent, see section 65 of the Act and regulation 6.3.
Note 2 For the fees payable, see regulation 22.2.
Chapter 15 Special provisions relating to associated technology
15.1 Time for restoration of application for patent
A request under subsection 150 (1) of the Act (“restoration of lapsed application”) must be filed within 3 months after the revocation under section 149 of the Act (“revocation of direction”) of a direction in respect of the application to which the request relates.
15.2 Requirements for reinstatement of international applications
(1) For the purposes of paragraph 151 (4) (c) of the Act (“reinstatement of application as an international application”), the period of 3 months after the revocation of a direction under section 149 of the Act (“revocation of direction”) is prescribed.
(2) For the purposes of paragraph 151 (4) (d) of the Act, the patent request, the specification to which the request relates and such other documents as are prescribed for the purposes of subsection 29 (1) of the Act (“application for patent”) are prescribed.
(3) For the purposes of paragraph 151 (4) (d) of the Act, the fee that would have been payable if the application had been filed under section 29 of the Act is prescribed.
15.3 Prescribed period: order relating to a standard patent
For the purposes of subsection 153 (3) of the Act (“effect of order”), the period of 1 month from the revocation of the order under subsection 152 (3) of the Act (“notice of prohibitions or restrictions on publication”) that relates to the application is prescribed.
Chapter 17 The Crown
17.1 Prescribed period: order relating to a standard patent
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For the purposes of subsection 174 (2) of the Act (“effect of prohibition orders”), the period of 1 month from the revocation of an order under subsection 173 (1) of the Act (“prohibition of publication of information about inventions”) that relates to the application is prescribed.
17.2 Prescribed period, document and fee: filing of international applications
(1) For the purposes of paragraph 176 (c) of the Act (“international applications treated as applications under this Act”), the period of 3 months from the date on which an international application is considered to be withdrawn under Article 12 of the PCT is prescribed.
(2) For the purposes of paragraph 176 (d) of the Act, the patent request, the specification relating to the request and such other documents as are prescribed for the purposes of subsection 29 (1) of the Act (“application for patent”) are prescribed.
(3) For the purposes of paragraph 176 (d) of the Act, the fee that would have been payable if the application had been filed under section 29 of the Act is prescribed.
Chapter 19 The register and official documents
19.1 Particulars to be registered
(1) For the purposes of section 187 of the Act (“registration of particulars of patents etc.”), the following particulars are prescribed, that is, particulars of:
(a) an entitlement as mortgagee, licensee or otherwise to an interest in a patent; (b) a transfer of an entitlement to a patent or licence, or to a share in a patent or
licence; (c) an extension of the term of a patent; (d) a restoration of a standard patent; (e) an order of a court a copy of which is filed under subsection 105 (5) of the
Act (“amendments directed by court”); (f) an order of a prescribed court that has been served on the Commissioner
under section 140 of the Act (“Commissioner to be given copies of orders”); (g) an order of a prescribed court made on appeal in relation to a patent, being an
order of which an office copy has been served on the Commissioner; (h) a decision of the Commissioner to revoke a patent under Chapter 9 of the Act
(“re-examination”);
(i) the acquisition of a patent by the Commonwealth under Part 3 (“acquisitions by and assignments to the Crown”) of Chapter 17 (“the Crown”) of the Act;
(j) the cessation of a patent.
(2) A request for registration of particulars referred to in paragraph (1) (a) or (b) must be in the approved form and have with it proof to the reasonable satisfaction of the Commissioner of the entitlement of the person making the request.
19.2 Request for information from Commissioner
(1) A request made to the Commissioner under section 194 of the Act (“information obtainable from the Commissioner”) must be in the approved form.
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(2) A request under Article 15 (5) of the PCT for an international-type search to be carried out must be made by the applicant referred to in that Article within 3 months of the making of the application referred to in the Article.
Chapter 20 Patent attorneys
Part 1 Introductory
20.1 Interpretation
In this Chapter, unless the contrary intention appears:
Board means the Professional Standards Board for Patent and Trade Marks Attorneys.
candidate means a person who proposes or proposed to sit, or has sat, for an examination.
Chairperson means Chairperson of the Board.
Disciplinary Tribunal means the Patent Attorneys Disciplinary Tribunal established by regulation 20.41.
examination means an examination held under regulation 20.6.
former attorney means a patent attorney whose registration has been suspended or cancelled under Part 4 (“discipline”).
Institute means the Institute of Patent and Trade Mark Attorneys of Australia incorporated under the law of Victoria.
Register of Patent Attorneys means the register kept under section 198 of the Act (“registration of patent attorneys”).
unprofessional conduct means conduct on the part of a registered patent attorney whereby he or she can be regarded as committing a gross failure to comply with the standards that, in the circumstances, it is reasonable to require the registered patent attorney to observe.
unqualified, in relation to a particular time, means lacking a qualification required for registration at that time by these Regulations or the former attorneys Regulations.
unsatisfactory conduct means not having attained or sustained a professional standard that is consistent with the standard of practice of registered patent attorneys.
20.2 How to apply under Chapter 20
A person may apply under this Chapter by sending the application to the Board at the following address:
Professional Standards Board for Patent and Trade Marks Attorneys
PO Box 200 WODEN ACT 2606.
20.2A Accreditation of courses of study
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(1) The Board may accredit a course of study, provided by an institution, that:
(a) achieves the outcome stated for a topic group mentioned in Schedule 5; and (b) includes the topics mentioned for the topic group.
(2) In considering whether to accredit a course, the Board must consider information provided by the institution.
(3) If the institution gives the Board sufficient information to decide whether the course achieves the outcome stated for a topic group mentioned in Schedule 5, the Board must decide whether to accredit the course:
(a) within 2 months after receiving the information; or (b) if the Board asks for more information — within 2 months after receiving
that information.
(4) Accreditation is for 5 years.
(5) However, the Board may revoke an accreditation if:
(a) changes are made to the course; and (b) the Board decides that the course no longer achieves the outcome stated for
the topic group.
(6) If an institution intends to change an accredited course, it must tell the Board in writing.
20.2B Provisional accreditation
(1) The Board may provisionally accredit a course if:
(a) the institution has sought accreditation for the course; and (b) the information provided by the institution shows that the course includes the
topics mentioned for a topic group; and (c) the Board has not fully considered the course in time for the start of an
academic semester.
(2) Provisional accreditation is for the duration of the course that starts after the course is provisionally accredited.
(3) The Board may provisionally accredit a changed course if:
(a) the change to the course might remove from its scope some topics mentioned in Schedule 5; and
(b) the Board considers that the changed course achieves the outcome stated for the topic group mentioned in Schedule 5.
Part 2 Obtaining registration for the first time
Division 1 Generally
20.3 Requirements for registration
(1) For paragraph 198 (4) (b) of the Act, the qualifications are:
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(a) for each topic group mentioned in Schedule 5 — a pass in:
(i) a course of study, that includes the subject matter in the topic group, accredited by the Board; or
(ii) the examination conducted by the Board; and
(b) an award or the entitlement to an award of a qualification mentioned in Schedule 6.
(2) For paragraph (1) (a), an exemption under regulation 20.13 is taken to be a pass in the topic group for which the exemption is granted.
(3) For paragraph 198 (4) (c) of the Act, the person must be employed:
(a) in any of the following capacities:
(i) as a technical assistant in a patent attorney’s practice; (ii) in employment in a company practising in patent matters on behalf of
the company or a related company within the meaning of the Corporations Law;
(iii) in the Patent Office as an examiner of patents under the Act or the 1952 Act; and
(b) for either:
(i) 1 year continuously; or (ii) at least 1 year within 2 continuous years.
(4) For paragraph 198 (4) (e) of the Act, an offence against the Act, the Designs Act 1906 or the Trade Marks Act 1995 is a prescribed offence.
(5) For paragraph 198 (4) (f) of the Act, an offence of dishonesty for which the maximum penalty is imprisonment for at least 2 years is a prescribed offence.
20.3A Currency of pass or exemption
(1) For paragraph 20.3 (1) (a), a pass in a topic group or an exemption under regulation 20.13 remains current for the purpose of completing topic groups A, B, C and D or topic groups E, F, G, H and I:
(a) if the institution has a policy on time periods to complete courses of study — for the period that accords with that policy; or
(b) for the Board, or if the institution has no policy — for 5 years from the year in which the circumstances under subregulation (2) or (3) happen.
(2) For topic groups A, B, C and D, the candidate must:
(a) have passed the first examination in a subject in 1 of the topic groups; or (b) have been exempted under regulation 20.13 from having to pass a subject in
the topic group.
(3) For topic groups E, F, G, H and I, the candidate must:
(a) have completed topic groups A, B, C and D; and
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(b) either:
(i) have passed the first examination in a subject in 1 of the topic groups; or
(ii) have been exempted under regulation 20.13 from having to pass a subject in the topic group.
20.4 Procedure for registration
A person may apply for registration as a patent attorney in the approved form together with:
(a) evidence that the person is ordinarily resident in Australia; and (c) a written statement by the Board that the person has met the requirements of
paragraph 198 (4) (b) of the Act; and (d) evidence that the person has been employed as required by regulation 20.3
(“requirements for registration”); and (e) a statutory declaration by the person that the person:
(i) has not committed an offence prescribed by subregulation 20.3 (4); and
(ii) is not under sentence of imprisonment for an offence prescribed by subregulation 20.3 (5); and
(f) a statutory declaration, by another person, that the person is of good fame, integrity and character; and
(g) the fee mentioned in item 4 of Part 1 of Schedule 7.
20.5 Certificate of registration
When the Designated Manager registers a person as a patent attorney the Designated Manager must give to the person a certificate of registration in the approved form.
Division 2 Prescribed subjects and academic qualifications
20.6 Board examinations
(1) The Board may hold examinations for topic groups mentioned in Schedule 5.
(2) The Board may appoint examiners for the purposes of the examinations and give them instructions about the setting and marking of papers.
(3) Examiners appointed under this regulation are entitled to be paid the fees that the Minister determines in writing.
20.7 Time for holding Board examinations
(1) The Board must arrange to publish in the Official Journal adequate notice of:
(a) the time of each examination it holds and the place where it is to be held; and (b) the deadline for applications for admission to sit for each examination it
holds.
(2) Subregulation (1) does not apply to a supplementary examination under regulation 20.12 (Supplementary Board examination).
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20.8 Examinable subject matter
From time to time the Board must arrange to publish in the Official Journal particulars of:
(a) syllabus for the examinations in the relevant topic groups mentioned in Schedule 5; and
(b) the reading and study material it recommends to candidates.
20.9 Admission to sit for a Board examination (1) An application by a person to sit for an examination must be in the approved form.
(2) A person is not eligible to sit for an examination conducted by the Board in topic group F, G or H of Schedule 5 unless the person has completed, or has been exempted from completing, topic groups A, B, C, D, E and I of Schedule 5.
(3) Despite subregulation (2), a person who has passed the subjects mentioned in items 1, 2, 3 and 4 of Schedule 5 (as in force immediately before 27 January 1999) is eligible to sit for an examination conducted by the Board in topic group E, F, G, H or I of Schedule 5.
Note The subjects mentioned in items 1, 2, 3 and 4 of Schedule 5, as in force immediately before 27 January 1999, were:
Item Subject 1 Legal Process 2 Patent Law of Australia and the Practice of the Patent Office 3 Trade Marks Law of Australia and the Practice of the Trade Marks Office 4 Designs Law and Related Intellectual Property Laws of Australia and the Practice of
the Designs Office.
20.10 Notification of Board examination results
As soon as practicable after an examination conducted by the Board, the Board must give to each candidate who sat for the examination his or her results in the examination.
20.11 Reasons for failure of Board examination
(1) A candidate who fails an examination conducted by the Board may apply to the Board in the approved form within 1 month after being told of the failure for a report of the reasons for the failure.
(2) For subregulation (1), a report may be given by:
(a) the Board; or (b) if the Board approves — the examiner appointed under
subregulation 20.6 (2).
20.12 Supplementary Board examination
(1) An application by a person to sit for a supplementary examination must be in the approved form.
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(2) The Board may let a candidate sit for a supplementary examination if the candidate:
(a) failed an examination and applies to the Board to sit for the supplementary examination within 1 month of being told of the failure; or
(b) did not sit for the examination because of illness or another reason that the Board reasonably considers sufficient and he or she applies to the Board to sit for the supplementary examination within 1 month of the examination.
(3) For an application under paragraph (2) (a), the Board may take account of an examiner’s comments on the candidate’s performance.
(4) An application under paragraph (2) (b) must be accompanied by evidence:
(a) of the reason for failing to sit the examination; and (b) that was obtained at the time of the illness or the occurrence of the events
giving rise to the other reason.
20.13 Exemption from examination
(1) The Board may exempt a person from having to satisfy all or some of the requirements of a topic group mentioned in Schedule 5.
(2) The Board must not give an exemption to a person unless:
(a) the person makes an application in the approved form; and (b) the person gives the Board enough information for the Board to be satisfied
under paragraph (c); and (c) the Board is satisfied that:
(i) the person has passed a course of study at a satisfactory level; and (ii) the course of study has outcomes that are the same as, or similar to,
those of an accredited course for the topic group for which the exemption is sought.
20.14 Approval of courses and examinations
(1) The Board may approve a course mentioned in item 1 or 2 of Schedule 6.
(2) In approving a course, the Board must:
(a) have regard to the syllabus for the course; and (b) in the case of a course mentioned in item 2 of Schedule 6 — reasonably
believe that the standard of the course is at least equal to the standard of a degree, diploma or postgraduate award of an Australian tertiary institution in a field of technology that contains potentially patentable subject matter.
(3) The Board may approve an examination mentioned in item 3 of Schedule 6.
(4) In approving an examination referred to in subregulation (3), the Board must have regard to the syllabus for any course undertaken by a person preparing for the examination.
(5) For the purposes of item 3 of Schedule 6, the Board may approve a professional institution.
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20.15 Approval of academic qualifications
The Board may approve a qualification mentioned in Schedule 6 for a person if:
(a) the person makes an application in the approved form; and (b) the application has with it:
(i) evidence that the person has the qualification; and (ii) the original or a certified copy of an academic record that shows the
units that make up the qualification; and
(c) the Board is reasonably satisfied that the person has the qualification.
20.16 Advice of completion of examinable subjects and of academic qualifications
The Board must give to a person a written statement that the person has the qualifications mentioned in subregulation 20.3 (1) if:
(a) the person applies in the approved form; and (b) there are reasonable grounds for believing that the person has the qualifications.
Division 3 Rights of registered patent attorneys
20.17 Lien
A registered patent attorney has the same right of lien over documents and property of a client as a solicitor.
Part 3 Renewal of registration: payment of annual fee
20.18 Annual registration fee
(1) An annual registration fee is payable by a registered patent attorney to whom regulation 20.19A does not apply on 1 July in each year.
(2) The Designated Manager must give to each registered patent attorney to whom regulation 20.19A does not apply no later than 1 June in each year notice of the fee that is payable.
(3) If a registered patent attorney does not pay the fee within 14 days after it is payable, the Designated Manager must:
(a) remove the name of the attorney from the Register of Patent Attorneys; and (b) notify the attorney of that removal.
20.19 Restoration of patent attorney’s name to the Register
The Designated Manager must restore a person’s name to the Register of Patent Attorneys if:
(a) the person pays the fees mentioned in:
(i) regulation 20.18 (annual registration fee); and (ii) item 7 of Part 1 of Schedule 7; and
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(b) applies in the approved form; within 6 weeks after the end of the period mentioned in subregulation 20.18 (3) (“annual registration fee”) or such further period as the Designated Manager reasonably allows.
20.19A Voluntary removal of name from register
(1) On written application by a registered patent attorney, the Designated Manager must:
(a) remove the attorney’s name from the Register of Patent Attorneys; or (b) within a period determined by the Designated Manager — restore the
attorney’s name to the register on payment of:
(i) the annual registration fee payable for the year in which the reinstatement is made; and
(ii) the fee mentioned in item 7 of Part 1 of Schedule 7.
(2) For paragraph (1) (b) the period must not be more than 3 years.
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Part 4 Discipline
Division 1 Complaints, decisions of the Disciplinary Tribunal and consequential action
20.20 Complaints
(1) The Institute or a person who alleges that his or her interests are affected by the unprofessional conduct of a registered patent attorney may make a written complaint to the Board about that conduct.
(2) The Institute or a person may complain in writing to the Board:
(a) that a patent attorney was unqualified at the time of his or her registration; or (b) that the patent attorney obtained his or her registration by fraud.
(3) A complaint must:
(a) state the name of the registered patent attorney complained about and the address of the attorney, if known to the complainant; and
(b) state the nature of the complaint; and (c) state the name and address of the complainant; and (d) be signed by the complainant; and (e) have with it a statutory declaration stating the facts on which the complainant
relies to support the complaint.
(4) If the complaint is made by the Institute, the statutory declaration must be made by an officer of the Institute.
(5) The Board must give to the registered patent attorney a copy of the complaint and statutory declaration and ask the attorney to give to the Board a written statement replying to the complaint.
(6) The statement must be given to the Board within the period specified by the Board, being a period of not less than 21 days from the day on which the registered patent attorney was asked to give a statement.
(7) The Board may request the Commissioner, the complainant or the registered patent attorney to give it further information not less than 21 days after the day on which the request was given.
(8) The period of 21 days for giving further information may be extended by the Board before or after that period.
20.21 Authorisation to bring proceedings against a registered patent attorney
(1) A person may not bring proceedings against a registered patent attorney before the Disciplinary Tribunal unless the person is authorised under this regulation.
(2) The Board must give written authority to a complainant to bring proceedings against a registered patent attorney:
(a) charging the attorney with unsatisfactory conduct or unprofessional conduct; or
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(b) charging that the attorney was unqualified at the time of his or her registration or obtained his or her registration by fraud;
if it appears to the Board, after considering the complaint and any reply and any further information given under regulation 20.20 (“complaints”), that the attorney may be guilty of conduct of that kind or may have been unqualified, as the case may be.
(3) If the Board authorises a complainant to bring proceedings, it must inform the complainant that he or she may ask the Board to bring those proceedings on the complainant’s behalf.
(4) If a person authorised to bring proceedings:
(a) informs the Board that he or she wants the Board to bring the proceedings — the Board must bring the proceedings on behalf of the complainant; or
(b) does not bring the proceedings within 21 days after the day on which the authority is sent to him or her — the Board may bring the proceedings on its own behalf.
(5) If a person has begun proceedings but fails to continue them, the Board may continue the proceedings on its own behalf.
(6) If the Board authorises proceedings against a registered patent attorney, the Board must:
(a) give the Disciplinary Tribunal copies of the complaint and all other documents it holds that relate to the complaint; and
(b) notify the attorney, in writing, of that authorisation.
(7) If the Board, after considering a complaint and any reply and any further information given under regulation 20.20, decides not to authorise proceedings against a registered patent attorney, it must give written notice of its decision to the complainant and the attorney.
20.22 Bringing of proceedings
(1) Proceedings against a registered patent attorney arising from a complaint are to be brought before the Disciplinary Tribunal by lodging with that Tribunal:
(a) a copy of the complaint; and (b) if the proceedings are to be brought by the complainant — a copy of the
authorisation of the Board to bring proceedings.
(2) If proceedings are brought against a registered patent attorney, the Disciplinary Tribunal must fix a time and place for the hearing and notify:
(a) if the proceedings have been brought by a complainant — the complainant; and
(b) the attorney; and (c) the Board; of that time and place.
(3) The time of hearing must not be less than 21 days after the day on which the registered patent attorney is told of the time and place.
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20.23 Decision of Disciplinary Tribunal
(1) If the Disciplinary Tribunal has heard a charge of:
(a) unsatisfactory conduct against a registered patent attorney — that Tribunal may find the attorney guilty of unprofessional conduct; or
(b) unprofessional conduct against a registered patent attorney — that Tribunal may find the attorney guilty of unsatisfactory conduct.
(2) If the Disciplinary Tribunal finds a registered patent attorney guilty of unsatisfactory conduct or unprofessional conduct, that Tribunal may:
(a) reprimand the attorney; or (b) suspend the attorney’s registration for not more than 12 months; or (c) where the attorney is guilty of unprofessional conduct — cancel his or her
registration.
(3) In deciding what to do about a registered patent attorney under subregulation (2), the Disciplinary Tribunal may take into account the findings about the conduct of the attorney in any other proceedings:
(a) brought before that Tribunal; or (b) brought before the Patent Attorneys Disciplinary Tribunal under the former
attorneys regulations.
(4) If the Disciplinary Tribunal has heard a charge against a registered patent attorney that the attorney was unqualified at the time of his or her registration and finds the charge proved, that Tribunal may:
(a) if the attorney has, since that time, obtained that qualification or the qualification is no longer required for registration — reprimand the attorney; or
(b) in any other case — cancel his or her registration.
(5) If the Disciplinary Tribunal finds that a registered patent attorney obtained his or her registration by fraud, that Tribunal must cancel the registration of the attorney.
(6) If the Disciplinary Tribunal reprimands a registered patent attorney or suspends or cancels the attorney’s registration, that Tribunal must give a written notice of finding of the Tribunal against the attorney that sets out particulars of the reprimand, suspension or cancellation to:
(a) if the proceedings were brought by a complainant — the complainant; and (b) the attorney; and (c) the Board; and (d) the Designated Manager.
(7) If the registration of a registered patent attorney is suspended the Designated Manager must note the suspension and its duration in the Register of Patent Attorneys.
(8) If the registration of a registered patent attorney is cancelled the Designated Manager must remove the name of the attorney from the Register of Patent Attorneys.
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(9) If the Disciplinary Tribunal does not find a charge proved, that Tribunal must notify the registered patent attorney concerned, the complainant and the Board accordingly.
20.24 Publication of decision
If directed by the Disciplinary Tribunal, the Commissioner must publish in the Official Journal a copy of a notice under subregulation 20.23 (6) (“decision of Disciplinary Tribunal”) or an extract of that notice.
20.25 Completion of outstanding business
(1) The Disciplinary Tribunal may appoint a registered patent attorney who has consented to carry on the practice of a former patent attorney:
(a) if the registration of the former attorney has been suspended — for the period of the suspension or, if a shorter period is specified in the appointment, for that shorter period; or
(b) if the name of the former attorney has been removed from the Register of Patent Attorneys under subregulation 20.23 (8) (“decision of Disciplinary Tribunal”) — until all outstanding matters are disposed of or, if a shorter period is specified in the appointment, for that shorter period.
(2) This regulation does not allow a registered patent attorney to act as a registered patent attorney on behalf of a person without the consent of the person.
(3) A registered patent attorney appointed to carry on the practice of a former attorney may give a written notice requiring the former attorney to make available to the attorney so appointed:
(a) any information about the practice that he or she may reasonably require; or (b) any books, accounts or other documents concerning the practice that he or
she may reasonably require; or (c) any moneys held by the former attorney:
(i) on behalf of a client; or (ii) that have been paid by a client in respect of services not yet
performed for the client.
(4) A former attorney who has been given a notice under subregulation (3) must not, without reasonable excuse, fail or refuse to comply with a requirement in the notice.
Penalty: $500.
Division 2 Procedure etc relating to the Disciplinary Tribunal
20.26 Procedure of Disciplinary Tribunal
(1) Subject to this Part, the Disciplinary Tribunal may determine its procedure.
(2) Proceedings before the Disciplinary Tribunal are to be conducted quickly and informally while allowing for proper consideration of the matter before that Tribunal.
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(3) The Disciplinary Tribunal is not bound by the rules of evidence but may be informed on any matter in the manner it chooses.
(4) The Disciplinary Tribunal may take evidence on oath and, for that purpose, may administer an oath.
20.27 Hearings to be public except in special circumstances
(1) Subject to subregulation (2), a hearing before the Disciplinary Tribunal is to be in public.
(2) If the Disciplinary Tribunal is reasonably satisfied that it is desirable to do so in the public interest or because of the confidential nature of any evidence or matter, that Tribunal may:
(a) direct that a hearing, or a part of a hearing, is to take place in private and give directions as to the persons who may be present; and
(b) give directions restricting or prohibiting the publication or disclosure:
(i) of evidence given before the Tribunal, whether in public or in private; or
(ii) of any matters contained in documents lodged with the Tribunal or received in evidence by it; or
(iii) of any finding or decision of the Tribunal.
(3) A person must not contravene a direction under this regulation that is applicable to him or to her.
Penalty: $500.
20.28 Representation before Disciplinary Tribunal
(1) At the hearing of proceedings before the Disciplinary Tribunal, a party to the proceedings may appear in person or be represented by a legal practitioner.
(2) The Disciplinary Tribunal may allow a person to be represented by a person who is not a legal practitioner.
(3) A party to proceedings before the Disciplinary Tribunal, or his or her representative, may request that Tribunal to summon witnesses.
20.29 Summoning of witnesses
(1) For the purposes of the hearing of a charge against a registered patent attorney before the Disciplinary Tribunal, that Tribunal may, by writing signed by the person constituting the Tribunal:
(a) summon any person, other than the attorney, to appear before the Tribunal to give evidence about the charge and to produce any documents mentioned in the summons; or
(b) summon the attorney to appear before the Tribunal:
(i) to produce any documents mentioned in the summons; and (ii) to give evidence to identify those documents.
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(2) A registered patent attorney summoned under this regulation must appear in person.
20.30 Offences by persons appearing before Disciplinary Tribunal
(1) A person summoned to appear before the Disciplinary Tribunal must not, without reasonable excuse:
(a) fail to appear as required by the summons; or (b) fail to produce documents or articles as required by the summons; or (c) fail to appear and report to that Tribunal from day to day, unless excused by
the Tribunal.
Penalty: $1,000.
(2) A person appearing as a witness before the Disciplinary Tribunal, not being a registered patent attorney to whom subregulation (3) applies, must not, after being paid expenses and allowances determined by that Tribunal in accordance with Part 2 in Schedule 8, without reasonable excuse:
(a) refuse or fail to be sworn or to make an affirmation; or (b) refuse or fail to answer a question relevant to the evidence that he or she was
summoned to give.
Penalty: $1,000.
(3) A registered patent attorney against whom proceedings have been instituted who is summoned to appear at a hearing before the Disciplinary Tribunal in respect of those proceedings must not, without reasonable excuse:
(a) refuse or fail to be sworn or to make an affirmation; or (b) refuse or fail to answer a question relevant to the evidence that he or she was
summoned to give.
Penalty: $1,000.
(4) It is a reasonable excuse for a person referred to in subregulation (2) or (3) to refuse or fail to answer a question or to produce a document or article, if the answer to the question, or the document or article, may tend to prove that he or she has committed an offence against a law of the Commonwealth or of a State or Territory.
20.31 Protection of person constituting Disciplinary Tribunal, witnesses etc
(1) A person:
(a) constituting or acting as the Disciplinary Tribunal; or (b) appointed under subregulation 20.45 (2) (“disclosure of interest”); has, in the exercise of the powers and the performance of the functions of that Tribunal under this Part, the same protection and immunity as a Justice of the High Court.
(2) A member of the Board has, in considering complaints under this Part and authorizing the institution of proceedings before the Disciplinary Tribunal, the same protection and immunity as a Justice of the High Court.
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(3) A legal practitioner or other person appearing before the Disciplinary Tribunal has the same protection and immunity as a barrister has in appearing for a party in proceedings in the High Court.
(4) Subject to this Part, a person summoned to attend or appearing before the Disciplinary Tribunal as a witness has the same protection, and is, in addition to the penalties provided by this Part, subject to the same liabilities, as a witness in proceedings in the High Court.
Part 5 Administration
Division 1 The Professional Standards Board for Patent and Trade Marks Attorneys
20.32 Constitution of Board (Act, s 227A)
The Board is constituted by:
(a) the Chairperson, appointed by the Minister; and (b) either:
(i) the person holding, or carrying out the duties of, the office of the Director-General of the division of the Department known as IP Australia; or
(ii) the nominee of that person; and
(c) at least 2 suitably qualified other members, appointed by the Minister.
20.34 Term of office of Board members
The Minister may appoint a member of the Board for a term of up to 3 years.
20.35 Resignation and removal of members from Board
(1) A member of the Board may resign by giving the Minister his or her resignation in writing.
(2) The Minister may remove a member of the Board if the member:
(a) is not the Chairperson and has been absent from 3 consecutive meetings of the Board without leave given by the Chairperson; or
(b) is the Chairperson and has been absent from 3 consecutive meetings of the Board without leave given by the Board under regulation 20.40; or
(c) is convicted in Australia of an offence punishable by imprisonment for at least 12 months; or
(d) is a member to whom subregulation (3) or (4) applies.
(3) This subregulation applies to a member if the member:
(a) cannot perform his or her duties as a member of the Board; or (b) has behaved in an offensive or disorderly way, or in a way that is likely to
adversely affect the Board’s reputation; or (c) has carried out his or her duties as a member of the Board inefficiently.
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(4) This subregulation applies to a person who:
(a) becomes bankrupt; or (b) applies to take the benefit of a law for the relief of bankrupt or insolvent
debtors; or (c) compounds with his or her creditors or assigns his or her salary and
allowances for their benefit.
20.37 Meetings of the Board
(1) The Board must hold as many meetings as are necessary for the performance of its functions.
(2) The Chairperson may, at any time, by notice in writing to the members, call a meeting of the Board at the time and place specified in the notice.
20.38 Member presiding at meetings of the Board
(1) The Chairperson must preside at all meetings of the Board at which he or she is present.
(2) In the absence of the Chairperson from a meeting, the members present must appoint 1 of themselves to preside.
(3) The Chairperson or a member who presides at a meeting has a deliberative vote and, in the event of an equality of votes, also has a casting vote.
20.39 Quorum for Board meetings
At a meeting of the Board, a quorum is formed by the majority of the members of the Board.
20.40 Absence of Chairperson from meeting — leave from Board
If the Chairperson is absent from a meeting of the Board, the members present must decide whether to give leave to the Chairperson.
Division 2 Patent and Trade Marks Attorneys Disciplinary Tribunal
20.41 Establishment of Disciplinary Tribunal
The Patent and Trade Marks Attorneys Disciplinary Tribunal is established.
20.42 Disciplinary Tribunal: substantive appointments
(1) The Minister may in writing appoint a person to constitute the Disciplinary Tribunal.
(2) A copy of the instrument of appointment must be published in the Official Journal.
(3) A person so appointed holds the office for the period specified in the instrument.
(4) A person so appointed may resign in writing given to the Minister.
(5) The Minister may remove a person so appointed from office for inefficiency, misbehaviour or incapacity.
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(6) If a person so appointed:
(a) becomes bankrupt, applies to take the benefit of a law for the relief of bankrupt or insolvent debtors, compounds with his or her creditors or makes an assignment of his or her remuneration for their benefit; or
(b) is convicted in Australia of an offence punishable by imprisonment for 12 months or longer; or
(c) fails, without reasonable excuse, to disclose a conflict of interest in accordance with regulation 20.45 (“disclosure of interest”);
the Minister is to remove the person from office.
20.43 Disciplinary Tribunal: acting appointments
(1) The Minister may in writing appoint a person to act as the Disciplinary Tribunal:
(a) during a vacancy in the office, whether or not an appointment has been previously made to the office; or
(b) during any period, or during all periods, when the holder of the office is, or is expected to be, absent from duty or from Australia or is, for any reason, unable to perform the functions of the office;
but a person appointed to act during a vacancy must not continue to act for more than 12 months.
(2) A copy of the instrument of appointment must be published in the Official Journal.
(3) The Minister:
(a) may terminate the appointment at any time; and (b) is to terminate the appointment if the person appointed fails, without
reasonable excuse, to disclose a conflict of interest in accordance with regulation 20.45 (“disclosure of interest”).
(4) Anything done by or in relation to a person purporting to act under the appointment is not invalid only because:
(a) the need for the appointment had not arisen; (b) there was a defect or irregularity in connection with the appointment; (c) the appointment had ceased to have effect; or (d) the need to act had not arisen or had ceased.
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20.44 Qualifications for holding, or acting as, Disciplinary Tribunal
A person is not qualified to be appointed under subregulation 20.42 (1) (“Disciplinary Tribunal: substantive appointments”), 20.43 (1) (“Disciplinary Tribunal: acting appointments”) or 20.45 (2) (“disclosure of interest”) unless he or she is enrolled, and has for not fewer than 7 years been enrolled, as a legal practitioner.
20.45 Disclosure of interest
(1) If a person constituting or acting as the Disciplinary Tribunal has or acquires an interest that could conflict with the proper performance of his or her functions in relation to proceedings he or she is to hear, the person:
(a) must tell the parties to the proceedings about the interest; and (b) must not perform those functions without the consent of the parties.
(2) If such a person is unable to perform his or her functions because of a conflict of interest, the Minister may in writing appoint another person to be the Disciplinary Tribunal for the purpose of conducting or completing those proceedings.
(3) A copy of the instrument of appointment must be published in the Official Journal.
(4) A person so appointed may exercise all the powers and must perform all of the functions of the Disciplinary Tribunal in relation to those proceedings.
Chapter 21 Administration
21.1 Patent Office and sub-offices
The hours of business of the Patent Office and each sub-office of the Patent Office are from 9 am to 5 pm on each day other than:
(a) a Saturday or a Sunday; or (b) a public holiday:
(i) where the Office or sub-office is located; or (ii) for the purposes of the Australian Public Service in that place.
21.2 Employees to whom Commissioner may delegate (Act s 209 (1))
For subsection 209 (1) of the Act, the Commissioner may delegate all or any of the Commissioner’s powers or functions under the Act, except the powers and functions under paragraphs 210 (a) and (c) of the Act, to an employee of the Patent Office:
(a) holding, or performing the duties of, the position of Examiner of Patents; or (b) employed at any of the following levels:
(i) Executive level 1 or 2; (ii) APS level 2, 3, 4, 5 or 6.
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Chapter 22 Miscellaneous
Part 1 Fees and costs
Division 1 Fees
22.1 Fees generally
(1) A fee must be paid in such a manner as the Commissioner reasonably directs.
(2) If the Commissioner has directed that a complete application is to be treated as a provisional application, the amount by which the fee payable on the filing of a complete application exceeds the fee payable on the filing of a provisional application must be credited towards the payment of the fee payable on the next filing of a complete application associated with the provisional application by the applicant concerned.
22.2 General fees
(1) For the purposes of subsection 227 (1) of the Act (“fees”), there is payable to the Commissioner in respect of a matter specified in column 2 of an item of Part 1 or 2 in Schedule 7 a fee of the amount specified in column 3 of that item.
(2) In order to ascertain the amount of a fee payable under item 18 of Part 2 in Schedule 7, the period from the day on which a notice of opposition to the grant of an application for an extension of time is filed to the end of:
(a) if an application is made to the Tribunal for a review of a decision of the Commissioner — the day when the application is withdrawn or finally dealt with or determined; or
(b) in any other case — 21 days after the end of the day on which the Commissioner decides the application;
must not be taken into account.
(3) For the purposes of paragraph 89 (3) (b) of the Act (“modified application of Act”):
(a) if a PCT application is treated as an application:
(i) for a petty patent — the amount of the fee specified in item 2 of Part 2 in Schedule 7; or
(ii) for a standard patent — the amounts of the fees specified in item 3 of that Part;
is, or are, payable in respect of the application; and
(b) the fee specified in item 2 or 3 of Part 2 in Schedule 7 is not payable in respect of a PCT application.
22.2A Payment of fees other than renewal or continuation fees
(1) For paragraph 227 (5) (b) of the Act, the Commissioner must give the person the written notice about the payment of the fee within 1 month after the fee became payable.
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(2) However, if the fee became payable after the commencement of Schedule 3 to the Intellectual Property Laws Amendment Act 1998 and before the commencement of this regulation, the Commissioner must give the person the notice within 1 month after the commencement of this regulation.
(3) For paragraph 227 (5) (c) of the Act, if the Commissioner has given the notice in accordance with this regulation, the person must pay the fee within 1 month after the notice was given to the person.
Note 1 Section 221 of the Act deals with giving documents.
Note 2 Subsection 223 (2) of the Act and regulation 22.11 deal with extensions of time.
22.3 General fees for international applications
(1) If:
(a) for the purposes of the PCT, the Patent Office is:
(i) a receiving Office; or (ii) an International Searching Authority; or (iii) an International Preliminary Examining Authority; and
(b) the Commissioner or the Patent Office is empowered by the PCT to charge a fee, other than a fee for the benefit of the International Bureau;
for the purposes of subsection 227 (1) of the Act (“fees”), the amount of the fee payable to the Commissioner in respect of a matter specified in column 2 of an item of Part 3 in Schedule 7 is the amount specified in column 3 of that item.
(2) The fees specified in items 1 and 2 of Part 3 in Schedule 7 are payable to the Commissioner within 1 month of filing an international application.
(3) The fee specified in item 4 of Part 3 in Schedule 7 is payable to the Commissioner on filing a demand for a preliminary examination under Article 31 of the PCT.
22.4 Fees for international applications payable for the benefit of the International Bureau
(1) Subject to subregulation (1A) if, for the purposes of the PCT, the Patent Office is:
(a) a receiving Office; or (b) an International Searching Authority; or (c) an International Preliminary Examining Authority; for an international application, the amounts of the basic fee, designation fees and handling fee (payable, under the PCT, to the Commissioner for the benefit of the International Bureau) for the application are as set out in Part 4 of Schedule 7.
(1A) The fee payable for international applications is reduced by 75% if the applicant, or each applicant, is:
(a) a natural person; and (b) a national of, and resides in, a State the per capita national income of which is
less than US $3,000.
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(1B) For the purposes of subregulation (1A), per capita national income means the average per capita national income figure for the State that is used by the United Nations to determine its scale of assessments for the contributions payable for the years 1995, 1996 and 1997.
(1C) If an international application complies with item 4 of the Schedule of Fees to the PCT, the total international fee payable for the benefit of the International Bureau for the application is reduced by 200 Swiss francs.
Note Item 4 of the Schedule of Fees in the PCT is as follows:
4. The total amount of the fees payable under items 1 and 2 (a) [that is, the total of the basic fee and the designation fees] is reduced by 200 Swiss francs if the international application is, in accordance with and to the extent provided for in the Administrative Instructions, filed on paper together with a copy thereof in electronic form.
(2) The Commissioner must, in accordance with the PCT, determine the currency in which a fee payable under this regulation is payable and the exchange rate between Swiss currency and the currency so determined.
(3) The Commissioner must give notice of a determination in the Official Journal.
(4) A determination has effect on the date specified in the determination for that purpose or on the date of notification of the determination in the Official Journal, whichever is later.
22.5 PCT Fund
Money paid as a fee to the Commissioner under subregulation 22.4 (1) (“fees for international applications payable for the benefit of the International Bureau”):
(a) must be paid into the Trust Fund kept under section 60 of the Audit Act 1901 (“Trust Fund”); and
(b) may be expended from the Fund for the purposes of the PCT, including the making of refunds and the remission of fees to the International Bureau.
22.6 Exemption from fees
(1) The Commissioner may exempt a person from the payment of the whole or any part of a fee if the Commissioner is reasonably satisfied that the action is justified, having regard to all the circumstances.
(2) If acceptance of a patent request and complete specification has been delayed because of an error or omission on the part of an employee, the period that is, in the reasonable opinion of the Commissioner, equal to the period of delay that resulted from the error or omission is not, for the purposes of ascertaining the amount of a fee, to be taken into account.
22.7 Refund of certain fees
(1) Subject to subregulation (2), if:
(a) a complete application for a standard patent has been filed; and (b) the application is withdrawn before the specification becomes open to public
inspection;
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so much of the fee paid on the filing of the application as the Commissioner reasonably thinks fit may, on written application made to him or her, be refunded.
(2) If the PCT requires a fee paid to the Commissioner to be refunded in whole or in part, that fee or that part of the fee must be refunded.
(3) If:
(a) a search fee or a preliminary examination fee is payable to an International Searching Authority or an International Preliminary Examining Authority; and
(b) the PCT provides for the refund of the fee in whole or in part; and (c) that fee has been paid to the Commissioner; he or she must determine in accordance with the PCT to what extent that fee is to be refunded to the applicant and the fee must be refunded accordingly.
Division 2 Costs
22.7A Proceedings to which this Division applies
This Division applies to proceedings before the Commissioner.
22.8 Costs
(1) The Commissioner must not award costs in proceedings to which this Division applies, other than costs specified in Schedule 8, unless each party to the proceedings has had the reasonable opportunity to make a submission on the matter of the award of those costs.
(2) The Commissioner may award an amount:
(a) for costs in respect of a matter specified in column 2 of an item of Part 1 in Schedule 8; or
(b) in respect of the expenses or allowances of a person in relation to proceedings to which this Division applies.
(3) An amount referred to in subregulation (2) must be taxed, allowed and certified, by an employee appointed by the Commissioner for that purpose, in accordance with:
(a) the amount specified in column 3 of that item; or (b) Part 2 in Schedule 8; as the case may be.
(4) A taxation is subject to review by the Commissioner.
Part 2 Other matters
22.9 Death of applicant or nominated person
The legal representative of a deceased applicant, nominated person or patentee who wishes:
(a) in accordance with subsection 215 (1) of the Act (“death of applicant or nominated person”) to proceed with the application; or
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(b) in accordance with subsection 215 (2) of the Act to have the patent granted to him or her; or
(c) in accordance with subsection 215 (3) of the Act to have the patent amended by substituting for the name of the patentee the name of the person to whom the patent should have been granted;
must file the approved form and such other documents as the Commissioner reasonably considers necessary to support the request.
22.10 Address for service
(1) If provision is made in an approved form to state an address for service, the person completing the form must state an address in Australia at which a document under the Act or these Regulations may be given to him or her personally or to the person specified in the form as his or her representative.
(2) A person may file notice of a change of his or her address for service.
(3) If a notice of opposition is filed under regulation 5.3 (“filing of opposition”), a person who has filed notice under subregulation (2) must serve a copy of the notice on each person interested in the opposition proceedings.
(4) If a person serves a document on a person other than the Commissioner, the first- mentioned person must, as soon as practicable after serving the document on the other person, file a notice of the service in the approved form together with a copy of the document served.
22.11 Extension of time
(1) For the purposes of subsection 223 (2) of the Act (“extensions of time”), an application for an extension of time must be in the approved form and have with it a declaration setting out the grounds on which the application is made.
(2) Notice of the grant of an extension of time must be published in the Official Journal.
(3) For the purposes of the definition of “relevant act” in subsection 223 (11) of the Act, each of the following actions is prescribed:
(a) an action or step prescribed in Chapter 5 (“opposition”), not being an action or step taken under regulation 5.3 (“filing of opposition”) or paragraph 5.4 (1) (a) (“filing of statement”);
(b) paying a fee in the 6 month period stated in subregulation 13.3 (1A) or 13.6 (2);
(c) filing, during the term of a standard patent as required by subsection 71 (2) of the Act, an application under subsection 70 (1) of the Act for an extension of the term of the patent.
22.12 Evidence
(1) If evidence is given in writing to the Commissioner or to the Patent Attorneys Disciplinary Tribunal for the purposes of the Act or these regulations, the evidence must be in the form of a declaration.
(2) The Commissioner may:
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(a) require a person who has made a declaration to appear before him or her to give evidence orally on oath in substitution for, or addition to, the evidence contained in the declaration; and
(b) allow the person to be cross-examined on the declaration.
22.13 Declarations
(1) In this regulation:
diplomatic or consular officer means a person who holds or performs the duties of any of the following offices of the Commonwealth in a country other than Australia:
(a) ambassador; (b) high commissioner; (c) minister; (d) chargè d’affaires; (e) counsellor or second or third secretary at an embassy, high commission or
other post; (f) consul-general; (g) consul; (h) vice-consul.
(2) A declaration required by the Act or these Regulations to be given to the Commissioner must:
(a) be headed with the title of the matter in respect of which the declaration is made; and
(b) be expressed in the first person; and (c) state the description and actual place of business or residential address and
occupation of the declarant; and (d) be divided into paragraphs, each of which must be numbered consecutively
and, as far as practicable, be confined to 1 subject; and (e) show the name and address of the person making the declaration and, if
appropriate, the name of the person on whose behalf it is made.
(3) A declaration may be made before:
(a) a magistrate; or (b) a justice of the peace; or (c) a commissioner for affidavits; or (d) a commissioner for declarations; or (e) a notary public; or (f) a person before whom a statutory declaration may be made under the law of
the State, Territory or foreign country where the declaration is made; or (g) a diplomatic or consular officer.
(4) The name and title of the person before whom the declaration is made and the date when and the place where it was made must be stated in the declaration.
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22.14 Directions not otherwise prescribed
If the Commissioner reasonably believes that it is necessary for the proper prosecution or completion of proceedings for a person to perform an act, file a document or produce evidence that is not provided for by the Act or these Regulations, the Commissioner may give notice to the person requiring him or her to perform the act, file the document or produce the evidence, specified in the notice.
22.15 Documents to be in English
(1) An abstract, approved form or specification that is filed must be in English.
(2) Any other document that is filed, other than a document that has been translated into English and has with it a related certificate of verification, must be in English.
22.16 Documents other than specifications and abstracts
(1) In this regulation:
document does not include a specification or an abstract.
(2) If a document received at the Patent Office does not substantially comply with Schedule 3 or is not in accordance with whichever approved form is applicable, the Commissioner may treat the document:
(a) as not having been filed and return it to the person from whom it was received with a statement indicating how the document or form does not so comply or accord; or
(b) as having been filed, but direct the person from whom it was received to do such things as are necessary to ensure that the document will so comply or accord.
(3) If the Commissioner returns a document under paragraph (2) (a), he or she must return with the document any other document filed with it.
(4) If the Commissioner gives a direction under paragraph (2) (b) and the person to whom the direction was given does not comply with that direction within 3 months from the day when it was given, the Commissioner must treat the document as not having been filed.
(5) Chapter 10 (“amendments”) does not apply to a document to which this regulation applies.
22.17 Incapacity of certain persons
(1) In this regulation:
mental dysfunction means a disturbance or defect, to a severely disabling degree, of perceptual interpretation, comprehension, reasoning, learning, judgment, memory, motivation, or emotion.
(2) If a person is incapable of doing anything required or permitted by the Act or these Regulations to be done because of infancy or of mental dysfunction or physical
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disability or disease, a court may, on the application of a person acting on behalf of the incapable person or of another person interested in the doing of the thing:
(a) do that thing; or (b) appoint a person to do the thing; in the name, and on behalf, of the incapable person.
(3) A thing done in the name of, and on behalf of, an incapable person is taken to have been done by that person as if the person had not been incapable when the thing was done.
22.18 Destruction of documents
(1) The Commissioner may order the destruction of documents relating to applications filed not less than 25 years before the date of the order.
(2) Subregulation (1) does not authorise the destruction of:
(a) the Register; or (b) documents relating to patents in force; or (c) documents considered by the Commissioner, or the Director-General of the
Australian Archives, to be of legal or historical interest.
22.19 Copies of certain documents to be supplied
A copy of a document that:
(a) affects the ownership of a patent or licence; and (b) has been witnessed; must be filed by a person who seeks to have the Commissioner consider the document for the purposes of the Act or these regulations.
22.20 International applications and the Patent Office
If, for the purposes of the PCT, the Patent Office is:
(a) a receiving Office; or (b) an International Searching Authority; or (c) an International Preliminary Examining Authority; the Commissioner and the Patent Office may perform the functions under the PCT of a receiving Office, an International Searching Authority or an International Preliminary Examining Authority, as the case requires, in relation to an international application.
22.21 Protection or compensation of certain persons
(1) The following provisions of this regulation are prescribed for the purposes of subsections 41 (4) (“specifications: micro-organisms”), 150 (4) (“restoration of lapsed application”) and 223 (9) (“extensions of time”) of the Act.
(2) Persons who availed themselves of or exploited, or took definite steps by contract or otherwise to avail themselves of or exploit, inventions: (a) in the case of inventions to which subsection 41 (4) of the Act applies — in
the period mentioned in paragraph 41 (4) (c) of the Act; and
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(b) in the case of inventions to which subsection 150 (4) of the Act applies — after the lapse of the applications and before the day on which their restoration was notified in the Official Journal; and
(c) in the case of inventions to which subsection 223 (9) of the Act applies — within the period of time extended under that subsection;
may apply, in the approved form, to the Commissioner for the grant of licences to exploit the inventions.
(3) An applicant for a licence must serve a copy of the application on a person whose application or patent:
(a) was so restored; or (b) is referred to in subsection 41 (4) of the Act; and to such other persons as the Commissioner reasonably directs.
(4) A person on whom a copy of an application has been served may oppose the grant of the licence.
(5) The Commissioner, if reasonably satisfied that the application should be granted, must grant a licence to the applicant on such terms as the Commissioner thinks reasonable.
22.22 Exercise by Commissioner of certain powers
(1) The Commissioner must, before exercising a discretionary power under the Act or these Regulations adversely to a person, give the person at least 10 days notice of the time when, and the place where, that person may be heard in relation to the exercise of the power.
(2) The Commissioner may exercise that power, if the person:
(a) informs the Commissioner that he or she does not wish to be heard; or (b) does not attend the hearing; or (c) being an applicant or patentee, requests the Commissioner to exercise the
power of the Commissioner without the applicant or patentee being heard.
(3) A request:
(a) must be in the approved form; and (b) may be accompanied by written submissions.
(4) The Commissioner must, after hearing the person, notify him or her of the decision.
22.23 Hearings
(1) The Commissioner must give notice of the date, time and place of a hearing before him or her to each party to the hearing at least 10 days before the day when the hearing is to begin.
(2) The Commissioner may adjourn a hearing from time to time or from place to place by notifying the parties to the hearing accordingly.
(3) The Commissioner may hold a hearing:
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(a) at which the parties appear before him or her in person; or (b) in which a party participates by telephone or such other means of
telecommunication as the Commissioner reasonably allows.
(4) If a party to a hearing does not intend to appear at the hearing, the party may make a submission in writing to the Commissioner before the hearing begins to which the Commissioner must have regard in reaching his or her decision on the matter being heard as if:
(a) the party were present or otherwise participating in the hearing; and (b) the matter of the submission were presented by the party in the presence of
the Commissioner.
(5) The Commissioner must, after hearing the person, notify him or her of the decision.
22.24 Practice and procedure other than for opposition proceedings
(1) Subject to these Regulations:
(a) if the Act or these Regulations authorise the Commissioner to hear and decide an application or matter that is not an opposition; or
(b) in a matter being decided on the motion of the Commissioner; the practice and procedure to be followed for the purposes of enabling the application or matter to be decided is to be determined by him or her.
(2) A person to be heard at a hearing may apply to the Commissioner in respect of the practice and procedure in relation to the hearing to be determined by the Commissioner.
22.25 Requirements cannot be complied with for reasonable cause
If, under these Regulations, a person is required to:
(a) sign a document, make a declaration or file or give the Commissioner a document or evidence; and
(b) the Commissioner is reasonably satisfied that the person cannot comply with the requirement;
the Commissioner may, subject to such conditions as he or she reasonably directs, dispense with the requirement.
22.26 Review of decisions
(1) In this regulation:
decision has the same meaning as in the Administrative Appeals Tribunal Act 1975.
(2) Application may be made to the Tribunal for review of a decision of:
(a) the Commissioner under the following provisions:
(i) paragraph 3.24 (1) (b) (“Commissioner may request samples and viability statement”);
(ii) subregulation 3.25 (2) (“request for Commissioner’s certificate authorising release of sample of a micro-organism”);
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(iia) paragraph 4.3 (2) (b) (“prescribed documents: public inspection”); (iii) subregulation 5.5 (3) (“dismissal of opposition); (iv) subregulation 5.6 (3) (“determination of opposition”); (v) subparagraph 6.2 (1) (b) (ii) (“prescribed period: grant of standard
patent”); (va) subregulation 13.4 (3); (vi) subregulation 22.21 (5) (“protection or compensation of certain
persons”); or
(b) the Professional Standards Board for Patent and Trade Marks Attorneys under subregulation 20.21 (7) (“authorisation to bring proceedings against a registered patent attorney”); or
(c) the Patent Attorneys Disciplinary Tribunal under subregulation 20.23 (2), (4) or (5) (“decision of Disciplinary Tribunal”).
(3) If the Commissioner gives a person affected by a decision referred to in subregulation (2) written notice of the making of the decision, the notice must include a statement to the effect that, subject to the Administrative Appeals Tribunal Act 1975, application may be made to the Tribunal for review of that decision by or on behalf of the person whose interests are affected by it.
(4) Failure to comply with subregulation (3) in relation to a decision does not affect the validity of the decision.
(5) If the Tribunal reviews a decision of the Commissioner under subsection 224 (1) of the Act (“review of decisions”) and the decision is not affirmed, the Commissioner must publish a notice of the decision of the Tribunal in the Official Journal.
Chapter 23 Transitional and savings provisions
23.1 Saving: prohibition orders
Subsection 4 (2) of the 1952 Act continues in force.
23.2 Delegation: certain matters referred to in this Chapter
Section 11 of the 1952 Act continues on and after the commencing day in respect of the exercise by the Commissioner of his or her powers and functions in relation to the operation of:
(a) subsection 234 (3) of the Act (“applications under 1952 Act”); or (b) a following provision of this Chapter.
23.3 Opposition to grant: practice and procedure
(1) Division 1 of Part XIV and regulations 82 and 83A of the former patents Regulations continue to apply in relation to opposition to the grant of a standard patent on an application:
(a) to which subsection 234 (3) of the Act (“applications under 1952 Act”) refers; and
(b) acceptance of which has been advertised under the 1952 Act.
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(2) Chapter 5 of these Regulations (“opposition”) does not apply to opposition to an application to which subregulation (1) applies.
(3) Chapter 5 of these Regulations applies to opposition to an application:
(a) to which subsection 234 (3) of the Act refers; and (b) of which advertisement of acceptance has taken place under the Act.
23.4 Certain opposition: practice and procedure
(1) If, before the commencing day:
(a) a matter is advertised in the Official Journal; or (b) a document is served on a person; to enable opposition proceedings to be taken, other than in relation to the grant of a standard patent: (c) the following provisions of the 1952 Act continue to apply:
(i) sections 82, 83, 84, 85 and 94; (ii) subsections 160 (5) and (6); and
(d) the following provisions of the former patents Regulations continue to apply:
(i) regulations 36, 39B, 39C, 39D, 48, 49, 50, 51, 52, 76, 77, 78, 82, 83A and 92;
(ii) Divisions 1 and 2 of Part XIV.
(2) If provisions specified in subregulation (1) continue to apply:
(a) sections 104 (“amendments by applicants and patentees”) and 223 (“extensions of time”) of the Act; and
(b) Chapter 5 (“opposition”) and regulations 22.21 (“protection or compensation of certain persons”), 22.22 (“exercise by Commissioner of certain powers”) and 22.23 (“hearings”) of these Regulations;
do not apply to the opposition referred to in that subregulation.
23.5 Fees payable for certain matters relating to opposition
The fee payable in respect of opposition proceedings of the kind mentioned in regulation 23.3 (“opposition to grant: practice and procedure”) or 23.4 (“certain opposition: practice and procedure”) is the fee that would have been payable if these Regulations applied to those proceedings.
23.6 Certain delegations: opposition
The delegation of a person who, before the commencing day, was:
(a) the delegate of the Commissioner under the 1952 Act; and (b) exercising the powers of the Commissioner in relation to a matter to which
regulation 23.3 (“opposition to grant: practice and procedure”) or 23.4 (“certain opposition: practice and procedure”) applies;
continues in relation to the matter.
23.7 Certain undertakings
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If an undertaking referred to in paragraph 3.25 (4) (c) (“request for Commissioner’s certificate authorising release of sample of a micro-organism”) is given in respect of an application lodged under the 1952 Act, the reference to Chapter 5 of the Act (“opposition”) in subparagraph 3.25 (4) (c) (i) includes a reference to Part V of the 1952 Act.
23.8 Restoration of lapsed applications or ceased patents
(1) If, before the commencing day:
(a) an application lapses under:
(i) section 47C or 47D of the 1952 Act; or (ii) subregulation 7B (4) or (5) of the former patents Regulations; or
(b) a patent ceases because of failure to pay a prescribed fee within the prescribed time;
and an application is made for the restoration of the lapsed application or ceased patent, as the case may be, under: (c) subsection 47E (2) or 97 (1) of the 1952 Act; or (d) subregulation 7B (6) of the former patents Regulations; section 47E, subsection 97 (2) or (3) or section 98 of the 1952 Act or the prescribed provisions of the former patents Regulations, as the case requires, continues to apply in relation to that lapsed application or ceased patent and the corresponding provisions of the Act and these Regulations do not so apply.
(2) There is payable to the Commissioner in respect of a lapsed application or ceased patent to which subregulation (1) applies a fee of the amount specified in column 3 of item 8 of Part 1 in Schedule 2 to the former patents Regulations.
(3) In subregulation (1), prescribed provisions means:
(a) regulations 16D, 16E, 16F, 41, 42, 43, 44, 82, 83A, 92; or (b) Division 1 of Part XIV.
23.9 Certain continuation and renewal fees
(1) If, before the commencing day:
(a) the second year after lodgment of a complete specification ends; and (b) the continuation fee prescribed in respect of that year in relation to the
specification is payable but has not been paid; item 7 of Part 2 in Schedule 7 is taken to include a fee of $75 in respect of the second anniversary.
(2) If, before the commencing day:
(a) the second year of a patent ends; and (b) the renewal fee prescribed in respect of that year in relation to the patent is
payable but has not been paid; item 7 of Part 2 in Schedule 7 is taken to include a fee of $75 in respect of the second anniversary.
23.10 Fee taken to have been paid
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If:
(a) in respect of the lodging of an application for an extension of time, a fee specified in item 27 of Part 1 in Schedule 2 to the former patents Regulations is paid in respect of a period referred to in subsection 54 (1B) of the 1952 Act; and
(b) the application has not been accepted before the commencing day; and (c) the applicant is required to pay the fee specified in item 22 of Part 2 in
Schedule 7 to these Regulations in relation to the application; the fee under item 22 is taken to have been paid in respect of the period referred to in paragraph (a).
23.11 Supply of product referred to in section 117 of the Act
(1) If:
(a) a product to which section 117 of the Act (“infringement by supply of products”) applies is supplied by a person to another person before the commencing day; and
(b) the supply would not have infringed a patent under the 1952 Act before the commencing day; and
(c) the first-mentioned person supplies the product to another person after the commencing day;
section 117 of the Act does not apply to the supply referred to in paragraph (c).
(2) In subregulation (1), a reference to the first-mentioned person includes:
(a) on the death of the person — the legal personal representative of the estate of the person who has died; or
(b) if the person becomes bankrupt — the person who becomes, under the Bankruptcy Act 1966, the trustee in bankruptcy of the estate of the first- mentioned person; or
(c) if a body corporate is being wound up — the person appointed to be the liquidator of the body corporate; or
(d) if the person agrees to dispose of a business relating to the supply of the product — a person who acquires that business, whether from the first- mentioned person or from some other person.
23.12 Certain withdrawn, abandoned or refused applications
(1) On and after the commencing day, section 142AA of the 1952 Act continues to apply to an application referred to in subsection 234 (2) of the Act (“applications under 1952 Act”).
(2) Section 96 of the Act (“withdrawn, abandoned or refused applications”) does not apply to an application to which subregulation (1) applies.
23.13 Certain certificates of validity
If:
(a) a court certifies under section 169 of the 1952 Act in relation to the validity of a patent or of a claim; and
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(b) the validity of the patent or claim is disputed on or after the commencing day; the certificate referred to in paragraph (a) is taken to have been issued under subsection 19 (1) of the Act (“certificate of validity”).
23.14 Certain action under the 1952 Act
If:
(a) a provision of the Act requires an act to be done under that or another particular provision of the Act; and
(b) the act was done under a corresponding provision of the 1952 Act; that act is taken to have been done under the provision referred to in paragraph (a) under which the act is required to be done.
23.15 Amendment of petty patents
The complete specification of a petty patent granted under section 62A of the 1952 Act cannot be amended under the Act so as to include more than 1 claim.
23.16 Certain applications under 1952 Act: time for acceptance
(1) This regulation applies to an invention referred to in paragraph 45 (1) (b) (“examination”) or 48 (1) (a) (“modified examination”) of the Act that is, so far as claimed in any claim, the subject of:
(a) a claim of the complete specification in relation to an application for a standard patent referred to in subparagraph 48 (3) (a) (i) of the 1952 Act; or
(b) the claim of the complete specification in relation to an application for a petty patent referred to in subparagraph 48 (3) (a) (ii) of the 1952 Act;
the priority date of which is earlier than the priority date of the first-mentioned claim.
(2) If, under paragraph 45 (1) (b) or 48 (1) (a) of the Act, the Commissioner reports that the first-mentioned claim in subregulation (1) is a claim the priority date of which is later than the priority date of the claim referred to in paragraph (1) (a) or (b), he or she may defer acceptance of the application and complete specification until the end of 3 months after:
(a) the date on which a patent was sealed on the application referred to in paragraph (1) (a) or (b); or
(b) the date on which that application lapsed or was withdrawn or refused.
23.17 PCT applications to which subsection 89 (5) of the Act does not apply
Subsection 89 (5) of the Act (“modified application of Act”) does not apply to an application:
(a) to which subsection 234 (2) of the Act (“applications under 1952 Act”) applies; and
(b) that is a PCT application in respect of which Australia has been elected under Chapter II of the PCT within the period specified in Article 39 of the PCT; and
(c) in respect of which a filed Preliminary Examination Report made under the PCT reports that an amendment to the application goes beyond the disclosure in the relevant international application that has been filed.
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23.18 Certain priority dates: saving
In the case of a claim of a specification:
(a) relating to a further application for a standard patent or for a petty patent under section 51 of the 1952 Act in respect of an invention disclosed in a provisional specification under that Act; or
(b) to which subsection 45 (2), (3), (3A) or (4A) of the 1952 Act applies; or (c) to which subsection 191 (8) of the Statute Law (Miscellaneous Amendments) Act
(No. 1) 1982 applies; the priority date is determined under section 45 of the 1952 Act or subsection 191 (8) of the Statute Law (Miscellaneous Amendments) Act (No. 1) 1982, as the case requires.
23.19 Appointment of certain examiners
A person appointed under subregulation 16 (1) of the former attorneys Regulations as an examiner is taken to have been appointed under subregulation paragraph 20.6 (2) of these Regulations (“examination to be conducted”) as an examiner.
23.20 Patent attorneys: continued application of certain provisions
(1) In this regulation:
prescribed person means a person who has, before the commencing day:
(a) passed the examination in a subject specified in subregulation 10 (2) of the former attorneys Regulations; or
(b) been issued with a certificate under regulation 20A or 22 of the former attorneys Regulations; or
(c) met the requirements of regulation 21 of the former attorneys Regulations.
(2) Despite the repeal of the former attorneys Regulations, regulation 18 of the Patent Attorneys Regulations (Amendment), being Statutory Rules 1989 No. 25, continues to apply to persons referred to in that regulation.
(3) Regulation 15 of the former attorneys Regulations continues to apply to a person who is a prescribed person as if the reference to having passed the examination in a subject included a reference to being exempted under subregulation 10A (1) of those Regulations from having to pass the examination in that subject.
(4) Regulations 20A and 22 of the former attorneys Regulations continue to apply to a prescribed person as if the reference to a certificate in those Regulations were a reference to the certificates referred to in regulation 20.15 and 20.16.
(5) If a prescribed person was employed continuously on or after 1 May 1989 and before the commencing day for not less than 1 year, or for periods within a continuous period of 2 years together that total not less than 1 year, by a patent attorney as a technical assistant in the conduct of the practice of a patent attorney, the prescribed person is taken to have been employed for the prescribed period of employment for the purposes of paragraph 20.3 (d) (“requirements for registration”) of these Regulations.
23.21 Patent Attorneys Professional Standards Board: continuation of appointments
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(1) A person elected under paragraph 5 (1) (b) of the former attorneys Regulations as a member of the Patent Attorneys Professional Standards Board established under those Regulations is taken to have been elected under paragraph 20.32 (2) (b) of these Regulations (“establishment of Board”) as a member of the Patent Attorneys Professional Standards Board established under these Regulations.
(2) A person appointed under paragraph 5 (1) (c) of the former attorneys Regulations as a member of the Patent Attorneys Professional Standards Board established under those Regulations is taken to have been appointed under paragraph 20.32 (2) (c) of these Regulations as a member of the Patent Attorneys Professional Standards Board established under these Regulations.
(3) A member referred to in subregulation (1) or (2) holds office as a member of the Patent Attorneys Professional Standards Board under these Regulations for the period that is, immediately before the commencing day, the remainder of the period of his or her office as a member of the Patent Attorneys Professional Standards Board under the former attorneys Regulations.
23.22 Secretary to Patent Attorneys Professional Standards Board: continuation of appointment
The person appointed to be the Secretary to the Patent Attorneys Professional Standards Board under subregulation 9 (1) of the former attorneys Regulations is taken to have been appointed to be the Secretary to the Patent Attorneys Professional Standards Board under subregulation 20.40 (1) of these Regulations (“Secretary to Board”).
23.23 Patent Attorneys Disciplinary Tribunal: continuation
The person constituting the Patent Attorneys Disciplinary Tribunal under subregulation 26 (1) of the former attorneys Regulations is taken to constitute the Patent Attorneys Disciplinary Tribunal under subregulation 20.42 (1) of these Regulations (“Disciplinary Tribunal: substantive appointments”).
23.24 Matters begun under the former attorneys Regulations not finally dealt with before the commencing day
These Regulations apply on and after the commencing day to a matter that was not finally dealt with before that day under the former attorneys Regulations as if the matter had started under a corresponding provision of these Regulations.
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23.25 Fees
(1) In this regulation:
continuation fee means a continuation fee for the purposes of section 47D of the 1952 Act.
renewal fee means a renewal fee for the purposes of subsection 68 (2) of that Act.
(2) Subregulation 22.2 (1) (“general fees”) does not apply in respect of:
(a) a continuation fee in respect of a year; or (b) a renewal fee in respect of a year of a patent; that ends on or after the commencing day, if the fee became payable, and was paid, before that day.
(3) If an application for a standard patent was accepted under section 52 or 52D of the 1952 Act before the commencing day, the fee payable for the sealing of that patent is the fee that was applicable to the sealing of the patent immediately before that day.
(4) In the case of a PCT application, if:
(a) a continuation fee in respect of an anniversary that occurs within the period of 9 months immediately preceding the commencing day; and
(b) the continuation fee is not paid in the period referred to in subregulation 13.3 (1) but is paid within 9 months after the anniversary concerned;
the prescribed period referred to in subregulation 13.3 (1) (“prescribed period: continuation fees”) is extended to the day on which the fee is paid.
23.26 Certain actions and proceedings
(1) The 1952 Act applies to an action or proceeding made or started under that Act and not finally dealt with or determined before the commencing day:
(a) in which the validity of a patent is disputed; or (b) concerning infringement of a patent.
(2) The 1952 Act applies to an action or proceeding in which the validity of a patent granted under the Patents Act 1990 on an application made under the 1952 Act is disputed.
23.27 Professional Standards Board for Patent and Trade Marks Attorneys
(1) In this regulation and regulation 23.28:
new Board means the Professional Standards Board for Patent and Trade Marks Attorneys.
new Chapter 20 means Chapter 20 of the Patents Regulations as in force on and after 1 April 1998.
old Board means the Patent Attorneys Professional Standards Board:
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(a) established under Chapter 20 of the Patents Regulations before 1 April 1998; and
(b) as constituted at any time before that date.
old Chapter 20 means Chapter 20 of the Patents Regulations as in force before 1 April 1998.
unfinished business means anything that could have been done by the old Board under old Chapter 20 about an application.
(2) This regulation applies to an application (including anything accompanying the application) made under old Chapter 20 if:
(a) the application was made before 1 April 1998; and (b) unfinished business was not done before that date.
(3) The application is taken to have been made under new Chapter 20.
(4) The unfinished business may be finished by the new Board under new Chapter 20.
(5) Any act done, or decision made, by the old Board under old Chapter 20 has effect as if the act had been done, or decision had been made, by the new Board.
(6) Each certificate given by the old Board under old Chapter 20 is as valid as it would be if it had been given by the new Board under new Chapter 20.
23.28 Continuing effect of certain complaints
(1) This regulation applies to a complaint in writing to the old Board made under Part 4 of old Chapter 20 if:
(a) the complaint was made before 1 April 1998; and (b) unfinished business was not done before that date.
Note The terms old Board, old Chapter 20 and unfinished business are defined in regulation 23.27.
(2) The unfinished business may be finished by the new Board under Part 4 of new Chapter 20.
Note The terms new Board and new Chapter 20 are defined in regulation 23.27.
(3) Any reply or further information sought by the old Board under regulation 20.20, but not given to the old Board before 1 April 1998, must be given to the new Board under regulation 20.20 as if the reply or further information had been sought by the new Board.
23.29 Patent attorney registration
A person who was, on 26 January 1999, registered as a patent attorney under section 198 of the Act as in force on that date is taken to be registered under that section as in force on 27 January 1999.
23.30 Patent attorney qualifications and employment requirements
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(1) A person who met the requirements of paragraph 198 (2) (c) of the Act as in force on 26 January 1999 is taken to meet the requirements of paragraph 20.3 (1) (a).
(2) A person who met the requirements of paragraph 198 (2) (d) of the Act as in force on 26 January 1999 is taken to meet the requirements of paragraph 20.3 (1) (b).
(3) A person who met the requirements of paragraph 198 (2) (e) of the Act as in force on 26 January 1999 is taken to meet the requirements of subregulation 20.3 (3).
(4) A period of employment that met the requirements of paragraph 20.3 (d) as in force on 26 January 1999 can be counted as part of a period of employment for paragraph 20.3 (3) (b).
23.31 Patent attorney examination requirements
(1) For a person who passed an examination, or was exempted from having to pass the examination, for a subject mentioned in item 1, 2, 3 or 4 of Schedule 5 as in force on 26 January 1999, the period of 5 years for paragraph 20.3A (1) (b) is taken to commence on 27 January 1999.
(2) For a person who passed an examination, or was exempted from having to pass the examination, for a subject mentioned in item 5, 6, 7 or 8 of Schedule 5 as in force on 26 January 1999, the period of 5 years for paragraph 20.3A (1) (b) is taken to commence on 27 January 1999.
(3) For a person who:
(a) was exempted from having to pass an examination for the subjects mentioned in items 5, 6, 7 and 8 of Schedule 5 as in force on 26 January 1999; and
(b) had not sat for an examination for a subject mentioned in item 1, 2, 3 or 4 of Schedule 5 as in force on 26 January 1999;
the period of 5 years for paragraph 20.3A (1) (b) is taken to commence when the person meets the requirements for registration as a trade marks attorney.
(4) Subregulation (5) applies to a person who has passed an examination, or been exempted from having to pass the examination, for at least 1 subject mentioned in Schedule 5 as in force on 26 January 1999.
(5) A pass in, or an exemption from having to pass, an examination for a subject mentioned in column 1 of the following table is taken to be a pass for paragraph20.3A (1) (a) in a topic group mentioned in column 2 of the table:
Column 1 Subject
Column 2 Topic group
Legal Process Group A — Legal process and overview of intellectual property
Patent Attorneys’ Practice, Part 2 Group B — Professional conduct
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Column 1 Subject
Column 2 Topic group
Trade Marks law of Australia and the Practice of the Trade Marks Office
Group C — Trade mark law
Patent Attorneys’ Practice, Part 1 and Patent Attorneys’ Practice, Part 2
Group D — Trade mark practice
Patent law of Australia and the Practice of the Patent Office
Group E — Patent law
Patent Attorneys’ Practice, Part 1 and Patent Attorneys’ Practice, Part 2
Group F — Patent system
Preparation of Specifications Group G — Drafting patent specifications
Validity and Infringement of Patents Group H — Interpretation and validity of patent specifications
Designs Law and Related Intellectual Property Laws of Australia and the Practice of the Designs Office
Group I — Designs
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Schedule 1 Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (subregulation 1.4 (1))
TABLE OF PROVISIONS
Introductory Provisions
Article 1: Establishment of Union
Article 2: Definitions
Chapter I: Substantive Provisions
Article 3: Recognition and Effect of the Deposit of Microorganisms
Article 4: New Deposit
Article 5: Export and Import Restrictions
Article 6: Status of International Depositary Authority
Article 7: Acquisition of the Status of International Depositary Authority
Article 8: Termination and Limitation of the Status of International Depositary
Authority
Article 9: Intergovernmental Industrial Property Organisations
Chapter II: Administrative Provisions
Article 10: Assembly
Article 11: International Bureau
Article 12: Regulations
Chapter III: Revision and Amendment
Article 13: Revision of the Treaty
Article 14: Amendment of Certain Provisions of the Treaty
Chapter IV: Final Provisions
Article 15: Becoming Party to the Treaty
Article 16: Entry Into Force of the Treaty
Article 17: Denunciation of the Treaty
Article 18: Signature and Languages of the Treaty
Article 19: Deposit of the Treaty; Transmittal of Copies; Registration of the Treaty
Article 20: Notifications
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BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE DEPOSIT OF MICROORGANISMS FOR THE PURPOSES OF PATENT PROCEDURE
Done at Budapest on April 28, 1977, and amended on September 26, 1980
INTRODUCTORY PROVISIONS
Article 1 Establishment of a Union
The States party to this Treaty (hereinafter called “the Contracting States”) constitute a Union for the international recognition of the deposit of microorganisms for the purposes of patent procedure.
Article 2 Definitions
For the purposes of this Treaty and the Regulations:
(i) references to a “patent” shall be construed as references to patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition;
(ii) “deposit of a microorganism” means, according to the context in which these words appear, the following acts effected in accordance with this Treaty and the Regulations; the transmittal of a microorganism to an international depositary authority, which receives and accepts it, or the storage of such a microorganism by the international depositary authority, or both the said transmittal and the said storage;
(iii) “patent procedure” means any administrative or judicial procedure relating to a patent application or a patent;
(iv) “publication for the purposes of patent procedure” means the official publication, or the official laying open for public inspection, of a patent application or a patent;
(v) “intergovernmental industrial property organization” means an organization that has filed a declaration under Article 9 (1);
(vi) “industrial property office” means an authority of a Contracting State or an intergovernmental industrial property organization competent for the grant of patents;
(vii) “depositary institution” means an institution which provides for the receipt, acceptance and storage of microorganisms and the furnishing of samples thereof;
(viii) “international depositary authority” means a depositary institution which has acquired the status of international depositary authority as provided in Article 7;
(ix) “depositor” means the natural person or legal entity transmitting a microorganism to an international depositary authority, which receives and accepts it, and any successor in title of the said natural person or legal entity;
(x) “Union” means the Union referred to in Article 1;
(xi) “Assembly” means the Assembly referred to in Article 10;
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(xii) “Organization” means the World Intellectual Property Organization;
(xiii) “International Bureau” means the International Bureau of the Organization and, as long as it subsists, the United International Bureaux for the Protection of Intellectual Property (BIRPI);
(xiv) “Director General” means the Director General of the Organization;
(xv) “Regulations” means the Regulations referred to in Article 12.
CHAPTER I
SUBSTANTIVE PROVISIONS
Article 3 Recognition and Effect of the Deposit of Microorganisms
(1) (a) Contracting States which allow or require the deposit of microorganisms for the purposes of patent procedure shall recognise, for such purposes, the deposit of a microorganism with any international depositary authority. Such recognition shall include the recognition of the fact and date of the deposit as indicated by the international depositary authority as well as the recognition of the fact that what is furnished as a sample is a sample of the deposited microorganism.
(b) Any Contracting State may require a copy of the receipt of the deposit referred to in subparagraph (a), issued by the international depositary authority.
(2) As far as matters regulated in this Treaty and the Regulations are concerned, no Contracting State may require compliance with requirements different from or additional to those which are provided in this Treaty and the Regulations.
Article 4 New Deposit
(1) (a) Where the international depositary authority cannot furnish samples of the deposited microorganism for any reason, in particular,
(i) here such microorganism is no longer viable, or
(ii) where the furnishing of samples would require that they be sent abroad and the sending or the receipt of the samples abroad is prevented by export or import restrictions, that authority shall, promptly after having noted its inability to furnish samples, notify the depositor of such inability, indicating the cause thereof, and the depositor, subject to paragraph (2) and as provided in this paragraph, shall have the right to make a new deposit of the microorganism which was originally deposited.
(b) The new deposit shall be made with the international depositary authority with which the original deposit was made, provided that:
(i) it shall be made with another international depositary authority where the institution with which the original deposit was made has ceased to have the status of international depositary authority, either entirely or in respect of the kind of microorganism to which the deposited microorganism belongs, or where the international depositary authority with which the original deposit was made discontinues, temporarily or definitively, the performance of its functions in respect of deposited microorganisms;
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(ii) it may be made with another international depositary authority in the case referred to in subparagraph (a) (ii).
(c) Any new deposit shall be accompanied by a statement signed by the depositor alleging that the newly deposited microorganism is the same as that originally deposited. If the allegation of the depositor is contested, the burden of proof shall be governed by the applicable law.
(d) Subject to subparagraphs (a) to (c) and (e), the new deposit shall be treated as if it had been made on the date on which the original deposit was made where all the preceding statements concerning the viability of the originally deposited microorganism indicated that the microorganism was viable and where the new deposit was made within three months after the date on which the depositor received the notification referred to in subparagraph (a).
(e) Where subparagraph (b) (i) applies and the depositor does not receive the notification referred to in subparagraph (a) within six months after the date on which the termination, limitation or discontinuance referred to in subparagraph (b) (i) was published by the International Bureau, the three-month time limit referred to in subparagraph (d) shall be counted from the date of the said publication.
(2) The right referred to in paragraph (1) (a) shall not exist where the deposited microorganism has been transferred to another international depositary authority as long as that authority is in a position to furnish samples of such microorganism.
Article 5 Export and Import Restrictions
Each Contracting State recognises that it is highly desirable that, if and to the extent to which the export from or import into its territory of certain kinds of microorganisms is restricted, such restriction should apply to microorganisms deposited, or destined for deposit, under this Treaty only where the restriction is necessary in view of national security or the dangers for health or the environment.
Article 6 Status of International Depositary Authority
(1) In order to qualify for the status of international depositary authority, any depositary institution must be located on the territory of a Contracting State and must benefit from assurances furnished by that State to the effect that the said institution complies and will continue to comply with the requirements specified in paragraph (2). The said assurances may be furnished also by an intergovernmental industrial property organization; in that case, the depositary institution must be located on the territory of a State member of the said organization.
(2) The depositary institution must, in its capacity of international depositary authority:
(i) have a continuous existence;
(ii) have the necessary staff and facilities, as prescribed in the Regulations, to perform its scientific and administrative tasks under this Treaty;
(iii) be impartial and objective;
(iv) be available, for the purposes of deposit, to any depositor under the same conditions;
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(v) accept for deposit any or certain kinds of microorganisms, examine their viability and store them, as prescribed in the Regulations;
(vi) issue a receipt to the depositor, and any required viability statement, as prescribed in the Regulations;
(vii) comply, in respect of the deposited microorganisms, with the requirement of secrecy, as prescribed in the Regulations;
(viii) furnish samples of any deposited microorganism under the conditions and in conformity with the procedure prescribed in the Regulations.
(3) The Regulations shall provide the measures to be taken:
(i) where an international depositary authority discontinues, temporarily or definitively, the performance of its functions in respect of deposited microorganisms or refuses to accept any of the kinds of microorganisms which it should accept under the assurances furnished;
(ii) in case of the termination or limitation of the status of international depositary authority of an international depositary authority.
Article 7 Acquisition of the Status of International Depositary Authority
(1) (a) A depositary institution shall acquire the status of international depositary authority by virtue of a written communication addressed to the Director General by the Contracting State on the territory of which the depositary institution is located and including a declaration of assurances to the effect that the said institution complies and will continue to comply with the requirements specified in Article 6 (2). The said status may be acquired also by virtue of a written communication addressed to the Director General by an intergovernmental industrial property organisation and including the said declaration.
(b) The communication shall also contain information on the depositary institution as provided in the Regulations and may indicate the date on which the status of international depositary authority should take effect.
(2) (a) If the Director General finds that the communication includes the required declaration and that all the required information has been received, the communication shall be promptly published by the International Bureau.
(b) The status of international depositary authority shall be acquired as from the date of publication of the communication or, where a date has been indicated under paragraph (1) (b) and such date is later than the date of publication of the communication, as from such date.
(3) The details of the procedure under paragraphs (1) and (2) are provided in the Regulations.
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Article 8 Termination and Limitation of the Status of International Depositary Authority
(1) (a) Any Contracting State or any intergovernmental industrial property organization may request the Assembly to terminate, or to limit to certain kinds of microorganisms, any authority’s status of international depositary authority on the ground that the requirements specified in Article 6 have not been or are no longer complied with. However, such a request may not be made by a Contracting State or intergovernmental industrial property organization in respect of an international depositary authority for which it has made the declaration referred to in Article 7 (1) (a).
(b) Before making the request under subparagraph (a), the Contracting State or the intergovernmental industrial property organization shall, through the intermediary of the Director General, notify the reasons for the proposed request to the Contracting State or the intergovernmental industrial property organization which has made the communication referred to in Article 7 (1) so that that State or organisation may, within six months from the date of the said notification, take appropriate action to obviate the need for making the proposed request.
(c) Where the Assembly finds that the request is well founded, it shall decide to terminate, or to limit to certain kinds of microorganisms, the status of international depositary authority of the authority referred to in subparagraph (a). The decision of the Assembly shall require that a majority of two-thirds of the votes cast be in favour of the request.
(2) (a) The Contracting State or intergovernmental industrial property organization having made the declaration referred to in Article 7 (1) (a) may, by a communication addressed to the Director General, withdraw its declaration either entirely or in respect only of certain kinds of microorganisms and in any event shall do so when and to the extent that its assurances are no longer applicable.
(b) Such a communication shall, from the date provided for in the Regulations, entail, where it relates to the entire declaration, the termination of the status of international depositary authority or, where it relates only to certain kinds of microorganisms, a corresponding limitation of such status.
(3) The details of the procedure under paragraphs (1) and (2) are provided in the Regulations.
Article 9 Intergovernmental Industrial Property Organizations
(1) (a) Any intergovernmental organization to which several States have entrusted the task of granting regional patents and of which all the member States are members of the International (Paris) Union for the Protection of Industrial Property may file with the Director General a declaration that it accepts the obligation of recognition provided for in Article 3 (1) (a), the obligation concerning the requirements referred to in Article 3 (2) and all the effects of the provisions of this Treaty and the Regulations applicable to intergovernmental industrial property organizations. If filed before the entry into force of this Treaty according to Article 16 (1), the declaration referred to in the preceding sentence shall become effective on the date of the said entry into force. If filed after such entry into force, the said declaration shall become effective three months after its filing unless a later date has been indicated in the declaration. In the latter case, the declaration shall take effect on the date thus indicated.
(b) The said organization shall have the right provided for in Article 3 (1) (b).
(2) Where any provision of this Treaty or of the Regulations affecting intergovernmental industrial property organizations is revised or amended, any intergovernmental industrial property organization may withdraw its declaration referred to in paragraph (1) by notification addressed to the Director General. The withdrawal shall take effect:
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(i) where the notification has been received before the date on which the revision or amendment enters into force, on that date;
(ii) where the notification has been received after the date referred to in (i), on the date indicated in the notification or, in the absence of such indication, three months after the date on which the notification was received.
(3) In addition to the case referred to in paragraph (2), any intergovernmental industrial property organization may withdraw its declaration referred to in paragraph (1) (a) by notification addressed to the Director General. The withdrawal shall take effect two years after the date on which the Director General has received the notification. No notification of withdrawal under this paragraph shall be receivable during a period of five years from the date on which the declaration took effect.
(4) The withdrawal referred to in paragraph (2) or (3) by an intergovernmental industrial property organization whose communication under Article 7 (1) has led to the acquisition of the status of international depositary authority by a depositary institution shall entail the termination of such status one year after the date on which the Director General has received the notification of withdrawal.
(5) Any declaration referred to in paragraph (1) (a), notification of withdrawal referred to in paragraph (2) or (3), assurances furnished under Article 6 (1), second sentence, and included in a declaration made in accordance with Article 7 (1) (a), request made under Article 8 (1) and communication of withdrawal referred to in Article 8 (2) shall require the express previous approval of the supreme governing organ of the intergovernmental industrial property organization whose members are all the States members of the said organization and in which decisions are made by the official representatives of the governments of such States.
CHAPTER II
ADMINISTRATIVE PROVISIONS
Article 10 Assembly
(1) (a) The Assembly shall consist of the Contracting States.
(b) Each Contracting State shall be represented by one delegate, who may be assisted by alternate delegates, advisors, and experts.
(c) Each intergovernmental industrial property organization shall be represented by special observers in the meetings of the Assembly and any committee and working group established by the Assembly.
(d) Any State not member of the Union which is a member of the Organization or of the International (Paris) Union for the Protection of Industrial Property and any intergovernmental organization specialised in the field of patents other than an intergovernmental industrial property organization as defined in Article 2 (v) may be represented by observers in the meetings of the Assembly and, if the Assembly so decides, in the meetings of any committee or working group established by the Assembly.
(2) (a) The Assembly shall:
(i) deal with all matters concerning the maintenance and development of the Union and the implementation of this Treaty;
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(ii) exercise such rights and perform such tasks as are specially conferred upon it or assigned to it under this Treaty;
(iii) give directions to the Director General concerning the preparations for revision conferences;
(iv) review and approve the reports and activities of the Director General concerning the Union, and give him all necessary instructions concerning matters within the competence of the Union;
(v) establish such committees and working groups as it deems appropriate to facilitate the work of the Union;
(vi) determine, subject to paragraph (1) (d), which States other than Contracting States, which intergovernmental organizations other than intergovernmental industrial property organizations as defined in Article 2 (v) and which international non- governmental organizations shall be admitted to its meetings as observers and to what extent international depositary authorities shall be admitted to its meetings as observers;
(vii) take any other appropriate action designed to further the objectives of the Union;
(viii) perform such other functions as are appropriate under this Treaty.
(b) With respect to matters which are of interest also to other Unions administered by the Organization, the Assembly shall make its decisions after having heard the advice of the Coordination Committee of the Organization.
(3) A delegate may represent, and vote in the name of, one State only.
(4) Each Contracting State shall have one vote.
(5) (a) One-half of the Contracting States shall constitute a quorum.
(b) In the absence of the quorum, the Assembly may make decisions but, with the exception of decisions concerning its own procedure, all such decisions shall take effect only if the quorum and the required majority are attained through voting by correspondence as provided in the Regulations.
(6) (a) Subject to Articles 8 (1) (c), 12 (4) and 14 (2) (b), the decisions of the Assembly shall require a majority of the votes cast.
(b) Abstentions shall not be considered as votes.
(7) (a) The Assembly shall meet once in every second calendar year in ordinary session upon convocation by the Director General, preferably during the same period and at the same place as the General Assembly of the Organization.
(b) The Assembly shall meet in extraordinary session upon convocation by the Director General, either on his own initiative or at the request of one-fourth of the Contracting States.
(8) The Assembly shall adopt its own rules of procedure.
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Article 11 International Bureau
(1) The International Bureau shall:
(i) perform the administrative tasks concerning the Union, in particular such tasks as are specifically assigned to it under this Treaty and the Regulations or by the Assembly;
(ii) provide the secretariat of revision conferences, of the Assembly, of committees and working groups established by the Assembly, and of any other meeting convened by the Director General and dealing with matters of concern to the Union.
(2) The Director General shall be the chief executive of the Union and shall represent the Union.
(3) The Director General shall convene all meetings dealing with matters of concern to the Union.
(4) (a) The Director General and any staff member designated by him shall participate, without the right to vote, in all meetings of the Assembly, the committees and working groups established by the Assembly, and any other meeting convened by the Director General and dealing with matters of concern to the Union.
(b) The Director General, or a staff member designated by him, shall be ex officio secretary of the Assembly, and of the committees, working groups and other meetings referred to in subparagraph (a).
(5) (a) The Director General shall, in accordance with the directions of the Assembly, make the preparations for revision conferences.
(b) The Director General may consult with intergovernmental and international non- governmental organizations concerning the preparations for revision conferences.
(c) The Director General and persons designated by him shall take part, without the right to vote, in the discussions at revision conferences.
(d) The Director General, or a staff member designated by him, shall be ex officio secretary of any revision conference.
Article 12 Regulations
(1) The Regulations provide rules concerning:
(i) matters in respect of which this Treaty expressly refers to the Regulations or expressly provides that they are or shall be prescribed;
(ii) any administrative requirements, matters or procedures;
(iii) any details useful in the implementation of this Treaty.
(2) The Regulations adopted at the same time as this Treaty are annexed to this Treaty.
(3) The Assembly may amend the Regulations.
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(4) (a) Subject to subparagraph (b), adoption of any amendment of the Regulations shall require two- thirds of the votes cast.
(b) Adoption of any amendment concerning the furnishing of samples of deposited microorganisms by the international depositary authorities shall require that no Contracting State vote against the proposed amendment.
(5) In the case of conflict between the provisions of this Treaty and those of the Regulations, the provisions of this Treaty shall prevail.
CHAPTER III
REVISION AND AMENDMENT
Article 13 Revision of the Treaty
(1) This Treaty may be revised from time to time by conferences of the Contracting States.
(2) The convocation of any revision conference shall be decided by the Assembly.
(3) Articles 10 and 11 may be amended either by a revision conference or according to Article 14.
Article 14 Amendment of Certain Provisions of the Treaty
(1) (a) Proposals under this Article for the amendment of Articles 10 and 11 may be initiated by any Contracting State or by the Director General.
(b) Such proposals shall be communicated by the Director General to the Contracting States at least six months in advance of their consideration by the Assembly.
(2) (a) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly.
(b) Adoption of any amendment to Article 10 shall require four-fifths of the votes cast; adoption of any amendment to Article 11 shall require three-fourths of the votes cast.
(3) (a) Any amendment to the Articles referred to in paragraph (1) shall enter into force one month after written notifications of acceptance, effected in accordance with their respective constitutional processes, have been received by the Director General from three-fourths of the Contracting States members of the Assembly at the time the Assembly adopted the amendment.
(b) Any amendment to the said Articles thus accepted shall bind all the Contracting States which were Contracting States at the time the amendment was adopted by the Assembly, provided that any amendment creating financial obligations for the said Contracting States or increasing such obligations shall bind only those Contracting States which have notified their acceptance of such amendment.
(c) Any amendment which has been accepted and which has entered into force in accordance with subparagraph (a) shall bind all States which become Contracting States after the date on which the amendment was adopted by the Assembly.
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CHAPTER IV
FINAL PROVISIONS
Article 15 Becoming Party to the Treaty
(1) Any State member of the International (Paris) Union for the Protection of Industrial Property may become party to this Treaty by:
(i) signature followed by the deposit of an instrument of ratification, or
(ii) deposit of an instrument of accession.
(2) Instruments of ratification or accession shall be deposited with the Director General.
Article 16 Entry Into Force of the Treaty
(1) This Treaty shall enter into force, with respect to the first five States which have deposited their instruments of ratification or accession, three months after the date on which the fifth instrument of ratification or accession has been deposited.
(2) This Treaty shall enter into force with respect to any other State three months after the date on which that State has deposited its instrument of ratification or accession unless a later date has been indicated in the instrument of ratification or accession. In the latter case, this Treaty shall enter into force with respect to that State on the date thus indicated.
Article 17 Denunciation of the Treaty
(1) Any Contracting State may denounce this Treaty by notification addressed to the Director General.
(2) Denunciation shall take effect two years after the day on which the Director General has received the notification.
(3) The right of denunciation provided for in paragraph (1) shall not be exercised by any Contracting State before the expiration of five years from the date on which it becomes party to this Treaty.
(4) The denunciation of this Treaty by a Contracting State that has made a declaration referred to in Article 7 (1) (a) with respect to a depositary institution which thus acquired the status of international depositary authority shall entail the termination of such status one year after the day on which the Director General received the notification referred to in paragraph (1).
Article 18 Signature and Languages of the Treaty
(1) (a) This Treaty shall be signed in a single original in the English and French languages, both texts being equally authentic.
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(b) Official texts of this Treaty shall be established by the Director General, after consultation with the interested Governments and within two months from the date of signature of this Treaty, in the other languages in which the Convention Establishing the World Intellectual Property Organization was signed.
(c) Official texts of this Treaty shall be established by the Director General, after consultation with the interested Governments, in the Arabic, German, Italian, Japanese and Portuguese languages, and such other languages as the Assembly may designate.
(2) This Treaty shall remain open for signature at Budapest until December 31, 1977.
Article 19 Deposit of the Treaty; Transmittal of Copies; Registration of the Treaty
(1) The original of this Treaty, when no longer open for signature, shall be deposited with the Director General.
(2) The Director General shall transmit two copies, certified by him, of this Treaty and the Regulations to the Governments of all the States referred to in Article 15 (1), to the intergovernmental organizations that may file a declaration under Article 9 (1) (a) and, on request, to the Government of any other State.
(3) The Director General shall register this Treaty with the Secretariat of the United Nations.
(4) The Director General shall transmit two copies, certified by him, of any amendment to this Treaty and to the Regulations to all Contracting States, to all intergovernmental industrial property organizations and, on request, to the Government of any other State and to any other intergovernmental organization that may file a declaration under Article 9 (1) (a).
Article 20 Notifications
The Director General shall notify the Contracting States, the intergovernmental industrial property organizations and those States not members of the Union which are members of the International (Paris) Union for the Protection of Industrial Property of:
(i) signatures under Article 18;
(ii) deposits of instruments of ratification or accession under Article 15 (2);
(iii) declarations filed under Article 9 (1) (a) and notifications of withdrawal under Article 9 (2) or (3);
(iv) the date of entry into force of this Treaty under Article 16 (1);
(v) the communications under Articles 7 and 8 and the decisions under Article 8;
(vi) acceptance of amendments to this Treaty under Article 14 (3);
(vii) any amendment of the Regulations;
(viii) the dates on which amendments to the Treaty or the Regulations enter into force;
(ix) denunciations received under Article 17.
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Schedule 1A Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (subregulation 1.4 (1))
TABLE OF PROVISIONS
Rule 1 Abbreviated Expressions and Interpretation of the Word “Signature” 1.1 “Treaty” 1.2 “Article” 1.3 “Signature”
Rule 2 International Depositary Authorities 2.1 Legal Status 2.2 Staff and Facilities 2.3 Furnishing of Samples
Rule 3 Acquisition of the Status of International Depositary Authority 3.1 Communication 3.2 Processing of the Communication 3.3 Extension of the List of Kinds of Microorganisms Accepted
Rule 4 Termination or Limitation of the Status of International Depositary Authority 4.1 Request; Processing of Request 4.2 Communication; Effective Date; Processing of Communication 4.3 Consequences for Deposits
Rule 5 Defaults by the International Depositary Authority 5.1 Discontinuance of Performance of Functions in Respect of Deposited
Microorganisms 5.2 Refusal to Accept Certain Kinds of Microorganisms
Rule 6 Making the Original Deposit or New Deposit 6.1 Original Deposit 6.2 New Deposit 6.3 Requirements of the International Depositary Authority
Rule 7 Receipt 7.1 Issuance of Receipt 7.2 Form; Languages; Signature 7.3 Contents in the Case of the Original Deposit 7.4 Contents in the Case of the New Deposit 7.5 Receipt in the Case of Transfer 7.6 Communication in the Case of the Scientific Description and/or Proposed
Taxonomic Designation
Rule 8 Later Indication of Amendment of the Scientific Description and/or Proposed Taxonomic Designation
8.1 Communication 8.2 Attestation
Rule 9 Storage of Microorganisms
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9.1 Duration of the Storage 9.2 Secrecy
Rule 10 Viability Test and Statement 10.1 Obligation to Test 10.2 Viability Statement
Rule 11 Furnishing of Samples
11.1 Furnishing of Samples to Interested Industrial Property Offices 11.2 Furnishing of Samples to or with the Authorization of the Depositor 11.3 Furnishing of Samples to Parties Legally Entitled 11.4 Common Rules 11.5 Changes in Rules 11.1 and 11.3 when applying to International Applications
Rule 12 Fees
12.1 Kinds and Amounts 12.2 Change in the Amounts
Rule 12bis Computation of Time Limits
12bis.1 Periods Expressed in Years 12bis.2 Periods Expressed in Months 12bis.3 Periods Expressed in Days
Rule 13 Publication by the International Bureau
13.1 Form of Publication 13.2 Contents
Rule 14 Expenses of Delegations
14.1 Coverage of Expenses
Rule 15 Absence of Quorum in the Assembly
15.1 Voting by Correspondence
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REGULATIONS UNDER THE BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE
DEPOSIT OF MICROORGANISMS FOR THE PURPOSES OF PATENT PROCEDURE
Adopted on April 28, 1977 and amended on January 20, 1981
Rule 1 Abbreviated Expressions and Interpretation of the Word “Signature”
1.1 “Treaty” In these Regulations, the word “Treaty” means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.
1.2 “Article” In these Regulations, the word “Article” refers to the specified Article of the Treaty.
1.3 “Signature” In these Regulations, whenever the word “signature” is used, it shall be understood that, where the law of the State on the territory of which an international depositary authority is located requires the use of a seal instead of a signature, the said word shall mean “seal” for the purposes of that authority.
Rule 2 International Depositary Authorities
2.1 Legal Status Any international depositary authority may be a government agency, including any public institution attached to a public administration other than the central government, or a private entity.
2.2 Staff and Facilities The requirements referred to in Article 6 (2) (ii) shall include in particular the following:
(i) the staff and facilities of any international depositary authority must enable the said authority to store the deposited microorganisms in a manner which ensures that they are kept viable and uncontaminated;
(ii) any international depositary authority must, for the storage of microorganisms, provide for sufficient safety measures to minimize the risk of losing microorganisms deposited with it.
2.3 Furnishing of Samples
The requirements referred to in Article 6 (2) (viii) shall include in particular the requirement that any international depositary authority must furnish samples of deposited microorganisms in an expeditious and proper manner.
Rule 3 Acquisition of the Status of International Depositary Authority
3.1 Communication
(a) The communication referred to in Article 7 (1) shall be addressed to the Director General, in the case of a Contracting State, through diplomatic channels or, in the case of an intergovernmental industrial property organisation, by its chief executive officer.
(b) The communication shall:
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(i) indicate the name and address of the depositary institution to which the communication relates;
(ii) contain detailed information as to the said institution’s capacity to comply with the requirements specified in Article 6 (2), including information on its legal status, scientific standing, staff and facilities;
(iii) where the said depositary institution intends to accept for deposit only certain kinds of microorganisms, specify such kinds;
(iv) indicate the amount of any fees that the said institution will, upon acquiring the status of international depositary authority, charge for storage, viability statements and furnishing of samples of microorganisms;
(v) indicate the official language or languages of the said institution;
(vi) where applicable, indicate the date referred to in Article 7 (1) (b).
3.2 Processing of the Communication
If the communication complies with Article 7 (1) and Rule 3.1, it shall be promptly notified by the Director General to all Contracting States and intergovernmental industrial property organizations and shall be promptly published by the International Bureau.
3.3 Extension of the List of Kinds of Microorganisms Accepted The Contracting State or intergovernmental industrial property organization having made the communication referred to in Article 7 (1) may, at any time thereafter, notify the Director General that its assurances are extended to specified kinds of microorganisms to which, so far, the assurances have not extended. In such a case, and as far as the additional kinds of microorganisms are concerned, Article 7 and Rules 3.1 and 3.2 shall apply, mutatis mutandis.
Rule 4 Termination or Limitation of the Status of International Depositary Authority
4.1 Request; Processing of Request
(a) The request referred to in Article 8 (1) (a) shall be addressed to the Director General as provided in Rule 3.1 (a).
(b) The request shall:
(i) indicate the name and address of the international depositary authority concerned;
(ii) where it relates only to certain kinds of microorganisms, specify such kinds;
(iii) indicate in detail the facts on which it is based.
(c) If the request complies with paragraphs (a) and (b), it shall be promptly notified by the Director General to all Contracting States and intergovernmental industrial property organizations.
(d) Subject to paragraph (e), the Assembly shall consider the request not earlier than six and not later than eight months from the notification of the request.
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(e) Where, in the opinion of the Director General, respect of the time limit provided for in paragraph (d) could endanger the interests of actual or potential depositors, he may convene the Assembly for a date earlier than the date of the expiration of the six-month period provided for in paragraph (d).
(f) If the Assembly decides to terminate, or to limit to certain kinds of microorganisms, the status of international depositary authority, the said decision shall become effective three months after the date on which it was made.
4.2 Communication; Effective Date; Processing of Communication
(a) The communication referred to in Article 8 (2) (a) shall be addressed to the Director General as provided in Rule 3.1 (a).
(b) The communication shall:
(i) indicate the name and address of the international depositary authority concerned;
(ii) where it relates only to certain kinds of microorganisms, specify such kinds;
(iii) where the Contracting State or intergovernmental industrial property organization making the communication desires that the effects provided for in Article 8 (2) (b) take place on a date later than at the expiration of three months from the date of the communication, indicate that later date.
(c) Where paragraph (b) (iii) applies, the effects provided for in Article 8 (2) (b) shall take place on the date indicated under that paragraph in the communication; otherwise, they shall take place at the expiration of three months from the date of the communication.
(d) The Director General shall promptly notify all Contracting States and intergovernmental industrial property organisations of any communication received under Article 8 (2) and of its effective date under paragraph (c). A corresponding notice shall be promptly published by the International Bureau.
4.3 Consequences for Deposits
In the case of a termination of limitation of the status of international depositary authority under Articles 8 (1), 8 (2), 9 (4) or 17 (4), Rule 5.1 shall apply, mutatis mutandis.
Rule 5 Defaults by the International Depositary Authority
5.1 Discontinuance of Performance of Functions in Respect of Deposited Microorganisms
(a) If any international depositary authority temporarily or definitively discontinues the performance of any of the tasks it should perform under the Treaty and these Regulations in relation to any microorganisms deposited with it, the Contracting State or intergovernmental industrial property organization which, in respect of that authority, has furnished the assurances under Article 6 (1) shall:
(i) ensure, to the fullest extent possible, that samples of all such microorganisms are transferred promptly and without deterioration or contamination from the said authority (“the defaulting authority”) to another international depositary authority (“the substitute authority”);
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(ii) ensure, to the fullest extent possible, that all mail or other communications addressed to the defaulting authority, and all files and other relevant information in the possession of that authority, in respect of the said microorganisms are promptly transferred to the substitute authority;
(iii) ensure, to the fullest extent possible, that the defaulting authority promptly notifies all depositors affected of the discontinuance of the performance of its functions and the transfers effected;
(iv) promptly notify the Director General of the fact and the extent of the discontinuance in question and of the measures which have been taken by the said Contracting State or intergovernmental industrial property organization under (i) to (iii).
(b) The Director General shall promptly notify the Contracting States and the intergovernmental industrial property organizations as well as the industrial property offices of the notification received under paragraph (a) (iv); the notification of the Director General and the notification received by him shall be promptly published by the International Bureau.
(c) Under the applicable patent procedure it may be required that the depositor shall, promptly after receiving the receipt referred to in Rule 7.5, notify to any industrial property office with which a patent application was filed with reference to the original deposit the new accession number given to the deposit by the substitute authority.
(d) The substitute authority shall retain in an appropriate form the accession number given by the defaulting authority, together with the new accession number.
(e) In addition to any transfer effected under paragraph (a) (i), the defaulting authority shall, upon request by the depositor, transfer, as far as possible, a sample of any microorganism deposited with it together with copies of all mail or other communications and copies of all files and other relevant information referred to in paragraph (a) (ii) to any international depositary authority indicated by the depositor other than the substitute authority, provided that the depositor pays any expenses to the defaulting authority resulting from the said transfer. The depositor shall pay the fee for the storage of the said sample to the international depositary authority indicated by him.
(f) On the request of any depositor affected, the defaulting authority shall retain, as far as possible, samples of the microorganisms deposited with it.
5.2 Refusal to Accept Certain Kinds of Microorganisms
(a) If any international depositary authority refuses to accept for deposit any of the kinds of microorganisms which it should accept under the assurances furnished, the Contracting State or intergovernmental industrial property organization which, in respect of that authority, has made the declaration referred to in Article 7 (1) (a) shall promptly notify the Director General of the relevant facts and the measures which have been taken.
(b) The Director General shall promptly notify the other Contracting States and intergovernmental industrial property organizations of the notification received under paragraph (a); the notification of the Director General and the notification received by him shall be promptly published by the International Bureau.
Rule 6 Making the Original Deposit or New Deposit
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6.1 Original Deposit
(a) The microorganism transmitted by the depositor to the international depositary authority shall, except where Rule 6.2 applies, be accompanied by a written statement bearing the signature of the depositor and containing:
(i) an indication that the deposit is made under the Treaty and an undertaking not to withdraw it for the period specified in Rule 9.1;
(ii) the name and address of the depositor;
(iii) details of the conditions necessary for the cultivation of the microorganism, for its storage and for testing its viability and also, where a mixture of microorganisms is deposited, descriptions of the components of the mixture and at least one of the methods permitting the checking of their presence;
(iv) an identification reference (number, symbols, etc.) given by the depositor to the microorganism;
(v) an indication of the properties of the microorganism which are or may be dangerous to health or the environment, or an indication that the depositor is not aware of such properties.
(b) It is strongly recommended that the written statement referred to in paragraph (a) should contain the scientific description and/or proposed taxonomic designation of the deposited microorganism.
6.2 New Deposit
(a) Subject to paragraph (b), in the case of a new deposit made under Article 4, the microorganism transmitted by the depositor to the international depositary authority shall be accompanied by a copy of the receipt of the previous deposit, a copy of the most recent statement concerning the viability of the microorganism which was the subject of the previous deposit indicating that the microorganism is viable and a written statement bearing the signature of the depositor and containing:
(i) the indications referred to in Rule 6.1 (a) (i) to (v);
(ii) a declaration stating the reason relevant under Article 4 (1) (a) for making the new deposit, a statement alleging that the microorganism which is the subject of the new deposit is the same as that which was the subject of the previous deposit, and an indication of the date on which the depositor received the notification referred to in Article 4 (1) (a) or, as the case may be, the date of the publication referred to in Article 4 (1) (e);
(iii) where a scientific description and/or proposed taxonomic designation was/were indicated in connection with the previous deposit, the most recent scientific description and/or proposed taxonomic designation as communicated to the international depositary authority with which the previous deposit was made.
(b) Where the new deposit is made with the international depositary authority with which the previous deposit was made, paragraph (a) (i) shall not apply.
(c) for the purposes of paragraphs (a) and (b) and of Rule 7.4, “previous deposit” means,
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(i) where the new deposit has been preceded by one or more other new deposits: the most recent of those other new deposits;
(ii) where the new deposit has not been preceded by one or more other new deposits: the original deposit.
6.3 Requirements of the International Depositary Authority
(a) Any international depositary authority may require:
(i) that the microorganism be deposited in the form and quantity necessary for the purposes of the Treaty and these Regulations;
(ii) that a form established by such authority and duly completed by the depositor for the purposes of the administrative procedures of such authority be furnished;
(iii) that the written statement referred to in Rule 6.1 (a) or 6.2 (a) be drafted in the language, or in any of the languages, specified by such authority, it being understood that such specification must at least include the official language or languages indicated under Rule 3.1 (b) (v);
(iv) that the fee for storage referred to in Rule 12.1 (a) (i) be paid; and
(v) that, to the extent permitted by the applicable law, the depositor enter into a contract with such authority defining the liabilities of the depositor and the said authority.
(b) Any international depositary authority shall communicate any such requirements and any amendments thereof to the International Bureau.
6.4 Acceptance Procedure
(a) The international depositary authority shall refuse to accept the microorganism and shall immediately notify the depositor in writing of such refusal and of the reasons therefor:
(i) where the microorganism is not of a kind of microorganism to which the assurances furnished under Rule 3.1 (b) (iii) or 3.3 extend;
(ii) where the properties of the microorganism are so exceptional that the international depositary authority is technically not in a position to perform the tasks in relation to it that it must perform under the Treaty and these Regulations;
(iii) where the deposit is received in a condition which clearly indicates that the microorganism is missing or which precludes for scientific reasons the acceptance of the microorganism.
(b) Subject to paragraph (a), the international depositary authority shall accept the microorganism when all the requirements of Rule 6.1 (a) or 6.2 (a) and Rule 6.3 (a) are complied with. If any of those requirements are not complied with, the international depositary authority shall immediately notify the depositor in writing of that fact and invite him to comply with those requirements.
(c) When the microorganism has been accepted as an original or new deposit, the date of that original or new deposit, as the case may be, shall be the date on which the microorganism was received by the international depositary authority.
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(d) The international depositary authority shall, on the request of the depositor and provided that all the requirements referred to in paragraph (b) are complied with, consider a microorganism, deposited before the acquisition by such authority of the status of international depositary authority, to have been received, for the purposes of the Treaty, on the date on which such status was acquired.
Rule 7 Receipt
7.1 Issuance of Receipt
The international depositary authority shall issue to the depositor, in respect of each deposit of microorganism effected with it or transferred to it, a receipt in attestation of the fact that it has received and accepted the microorganism.
7.2 Form; Languages; Signature
(a) Any receipt referred to in Rule 7.1 shall be established on a form called an “international form,” a model of which shall be established by the Director General in those languages which the Assembly shall designate.
(b) Any words or letters filled in the receipt in characters other than those of the Latin alphabet shall also appear therein transliterated in characters of the Latin alphabet.
(c) The receipt shall bear the signature of the person or persons having the power to represent the international depositary authority or that of any other official of that authority duly authorised by the said person or persons.
7.3 Contents in the Case of the Original Deposit
Any receipt referred to in Rule 7.1 and issued in the case of an original deposit shall indicate that it is issued by the depositary institution in its capacity of international depositary authority under the Treaty and shall contain at least the following indications:
(i) the name and address of the international depositary authority;
(ii) the name and address of the depositor;
(iii) the date of the original deposit as defined in Rule 6.4 (c);
(iv) the identification reference (number, symbols, etc.) given by the depositor to the microorganism;
(v) the accession number given by the international depositary authority to the deposit;
(vi) where the written statement referred to in Rule 6.1 (a) contains the scientific description and/or proposed taxonomic designation of the microorganism, a reference to that fact.
7.4 Contents in the Case of the New Deposit
Any receipt referred to in Rule 7.1 and issued in the case of a new deposit effected under Article 4 shall be accompanied by a copy of the receipt of the previous deposit (within the meaning of Rule 6.2 (c)) and a copy of the most recent statement concerning the viability of the microorganism
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which was the subject of the previous deposit (within the meaning of Rule 6.2 (c)) indicating that the microorganism is viable, and shall at least contain:
(i) the name and address of the international depositary authority;
(ii) the name and address of the depositor;
(iii) the date of the new deposit as defined in Rule 6.4 (c);
(iv) the identification reference (number, symbols, etc.) given by the depositor to the microorganism;
(v) the accession number given by the international depositary authority to the new deposit;
(vi) an indication of the relevant reason and the relevant date as stated by the depositor in accordance with Rule 6.2 (a) (ii);
(vii) where Rule 6.2 (a) (iii) applies, a reference to the fact that a scientific description and/or a proposed taxonomic designation has/have been indicated by the depositor;
(viii) the accession number given to the previous deposit (within the meaning of Rule 6.2 (c)).
7.5 Receipt in the Case of Transfer
The international depositary authority to which samples of microorganisms are transferred under Rule 5.1 (a) (i) shall issue to the depositor, in respect of each deposit in relation with which a sample is transferred, a receipt indicating that it is issued by the depositary institution in its capacity of international depositary authority under the Treaty and containing at least:
(i) the name and address of the international depositary authority;
(ii) the name and address of the depositor;
(iii) the date on which the transferred sample was received by the international depositary authority (date of the transfer);
(iv) the identification reference (number, symbols, etc.) given by the depositor to the microorganism;
(v) the accession number given by the international depositary authority;
(vi) the name and address of the international depositary authority from which the transfer was effected;
(vii) the accession number given by the international depositary authority from which the transfer was effected;
(viii) where the written statement referred to in Rule 6.1 (a) or 6.2 (a) contained the scientific description and/or proposed taxonomic designation of the microorganism, or where such scientific description and/or proposed taxonomic designation was/were indicated or amended under Rule 8.1 at a later date, a reference to that fact.
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7.6 Communication of the Scientific Description and/or Proposed Taxonomic Designation
On request of any party entitled to receive a sample of the deposited microorganism under Rules 11.1, 11.2 or 11.3, the international depositary authority shall communicate to such party the most recent scientific description and/or proposed taxonomic designation referred to in Rules 6.1 (b), 6.2 (a) (iii) or 8.1 (b) (iii).
Rule 8 Later Indication or Amendment of the Scientific Description and/or Proposed Taxonomic Designation
8.1 Communication
(a) Where, in connection with the deposit of a microorganism, the scientific description and/or taxonomic designation of the microorganism was/were not indicated, the depositor may later indicate or, where already indicated, may amend such description and/or designation.
(b) Any such later indication or amendment shall be made in a written communication, bearing the signature of the depositor, addressed to the international depositary authority and containing:
(i) the name and address of the depositor;
(ii) the accession number given by the said authority;
(iii) the scientific description and/or proposed taxonomic designation of the microorganism;
(iv) in the case of an amendment, the last preceding scientific description and/or proposed taxonomic designation.
8.2 Attestation
The international depositary authority shall, on the request of the depositor having made the communication referred to in Rule 8.1, deliver to him an attestation showing the data referred to in Rule 8.1 (b) (i) to (iv) and the date of receipt of such communication.
Rule 9 Storage of Microorganisms
9.1 Duration of the Storage
Any microorganism deposited with an international depositary authority shall be stored by such authority, with all the care necessary to keep it viable and uncontaminated, for a period of at least five years after the most recent request for the furnishing of a sample of the deposited microorganism was received by the said authority and, in any case, for a period of at least 30 years after the date of the deposit.
9.2 Secrecy
No international depositary authority shall give information to anyone whether a microorganism has been deposited with it under the Treaty. Furthermore, it shall not give any information to anyone concerning any microorganism deposited with it under the Treaty except to an authority, natural person or legal entity which is entitled to obtain a sample of the said microorganism under Rule 11 and subject to the same conditions as provided in that Rule.
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Rule 10 Viability Test and Statement
10.1 Obligation to Test
The international depositary authority shall test the viability of each microorganism deposited with it:
(i) promptly after any deposit referred to in Rule 6 or any transfer referred to in Rule 5.1;
(ii) at reasonable intervals, depending on the kind of microorganism and its possible storage conditions, or at any time, if necessary for technical reasons;
(iii) at any time, on the request of the depositor.
10.2 Viability Statement
(a) The international depositary authority shall issue a statement concerning the viability of the deposited microorganism:
(i) to the depositor, promptly after any deposit referred to in Rule 6 or any transfer referred to in Rule 5.1;
(ii) to the depositor, on his request, at any time after the deposit or transfer;
(iii) to any industrial property office, other authority, natural person or legal entity, other than the depositor, to whom or to which samples of the deposited microorganism were furnished in conformity with Rule 11, on his or its request, together with or at any time after such furnishing of samples.
(b) The viability statement shall indicate whether the microorganism is or is no longer viable and shall contain:
(i) the name and address of the international depositary authority issuing it;
(ii) the name and address of the depositor;
(iii) the date referred to in Rule 7.3 (iii) or, where a new deposit or a transfer has been made, the most recent of the dates referred to in Rules 7.4 (iii) and 7.5 (iii);
(iv) the accession number given by the said authority;
(v) the date of the test to which it refers;
(vi) information on the conditions under which the viability test has been performed, provided that the said information has been requested by the party to which the viability statement is issued and that the results of the test were negative.
(c) In the cases of paragraph (a) (ii) and (iii), the viability statement shall refer to the most recent viability test.
(d) As to form, languages and signature, Rule 7.2 shall apply, mutatis mutandis, to the viability statement.
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(e) In the case of paragraph (a) (i) or where the request is made by an industrial property office, the issuance of the viability statement shall be free of charge. Any fee payable under Rule 12.1 (a) (iii) in respect of any other viability statement shall be chargeable to the party requesting the statement and shall be paid before or at the time of making the request.
Rule 11 Furnishing of Samples
11.1 Furnishing of Samples to Interested Industrial Property Offices
Any international depositary authority shall furnish a sample of any deposited microorganism to the industrial property office of any Contracting State or of any intergovernmental industrial property organization, on the request of such office, provided that the request shall be accompanied by a declaration to the effect that:
(i) an application referring to the deposit of that microorganism has been filed with that office for the grant of a patent and that the subject matter of that application involves the said microorganism or the use thereof;
(ii) such application is pending before that office or has led to the grant of a patent;
(iii) the sample is needed for the purposes of a patent procedure having effect in the said Contracting State or in the said organization or its member States;
(iv) the said sample and any information accompanying or resulting from it will be used only for the purposes of the said patent procedure.
11.2 Furnishing of Samples to or with the Authorisation of the Depositor
Any international depositary authority shall furnish a sample of any deposited microorganism:
(i) to the depositor, on his request;
(ii) to any authority, natural person or legal entity (hereinafter referred to as “the authorised party”), on the request of such party, provided that the request is accompanied by a declaration of the depositor authorising the requested furnishing of a sample.
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11.3 Furnishing of Samples to Parties Legally Entitled
(a) Any international depositary authority shall furnish a sample of any deposited microorganism to any authority, natural person or legal entity (hereinafter referred to as “the certified party”), on the request of such party, provided that the request is made on a form whose contents are fixed by the Assembly and that on the said form the industrial property office certifies:
(i) that an application referring to the deposit of that microorganism has been filed with that office for the grant of a patent and that the subject matter of that application involves the said microorganism or the use thereof;
(ii) that, except where the second phrase of (iii) applies, publication for the purposes of patent procedure has been effected by that office;
(iii) either that the certified party has a right to a sample of the microorganism under the law governing patent procedure before that office and, where the said law makes the said right dependent on the fulfilment of certain conditions, that that office is satisfied that such conditions have actually been fulfilled or that the certified party has affixed his signature on a form before that office and that, as a consequence of the signature of the said form, the conditions for furnishing a sample to the certified party are deemed to be fulfilled in accordance with the law governing patent procedure before that office, where the certified party has the said right under the said law prior to publication for the purposes of patent procedure by the said office and such publication has not yet been effected, the certification shall expressly state so and shall indicate, by citing it in the customary manner, the applicable provision of the said law, including any court decision.
(b) In respect of patents granted and published by any industrial property office, such office may from time to time communicate to any international depositary authority lists of the accession numbers given by that authority to the deposits of the microorganisms referred to in the said patents. The international depositary authority shall, on the request of any authority, natural person or legal entity (hereinafter referred to as “the requesting party”), furnish to it a sample of any microorganism where the accession number has been so communicated. In respect of deposited microorganisms whose accession numbers have been so communicated, the said office shall not be required to provide the certification referred to in Rule 11.3 (a).
11.4 Common Rules
(a) Any request, declaration, certification or communication referred to in Rules 11.1, 11.2 and 11.3 shall be
(i) in English, French, Russian or Spanish where it is addressed to an international depositary authority whose official language is or whose official languages include English, French, Russian or Spanish, respectively, provided that, where it must be in Russian or Spanish, it may be instead filed in English or French and, if it is so filed, the International Bureau shall, on the request of the interested party referred to in the said Rules or the international depositary authority, establish, promptly and free of charge, a certified translation into Russian or Spanish;
(ii) in all other cases, it shall be in English or French, provided that it may be, instead, in the official language or one of the official languages of the international depositary authority.
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(b) Notwithstanding paragraph (a), where the request referred to in Rule 11.1 is made by an industrial property office whose official language is Russian or Spanish, the said request may be in Russian or Spanish, respectively, and the International Bureau shall establish, promptly and free of charge, a certified translation into English or French, on the request of that office or the international depositary authority which received the said request.
(c) Any request, declaration, certification or communication referred to in Rules 11.1, 11.2 and 11.3 shall be in writing, shall bear a signature and shall be dated.
(d) Any request, declaration or certification referred to in Rules 11.1, 11.2 and 11.3 (a) shall contain the following indications:
(i) the name and address of the industrial property office making the request, of the authorised party or of the certified party, as the case may be;
(ii) the accession number given to the deposit;
(iii) in the case of Rule 11.1, the date and number of the application or patent referring to the deposit;
(iv) in the case of Rule 11.3 (a), the indications referred to in (iii) and the name and address of the industrial property office which has made the certification referred to in the said Rule.
(e) Any request referred to in Rule 11.3 (b) shall contain the following indications:
(i) the name and address of the requesting party;
(ii) the accession number given to the deposit.
(f) The container in which the sample furnished is placed shall be marked by the international depositary authority with the accession number given to the deposit and shall be accompanied by a copy of the receipt referred to in Rule 7, an indication of any properties of the microorganism which are or may be dangerous to health or the environment and, upon request, an indication of the conditions which the international depositary authority employs for the cultivation and storage of the microorganism.
(g) The international depositary authority having furnished a sample to any interested party other than the depositor shall promptly notify the depositor in writing of that fact, as well as of the date on which the said sample was furnished and of the name and address of the industrial property office, of the authorised party, of the certified party or of the requesting party, to whom or to which the sample was furnished. The said notification shall be accompanied by a copy of the pertinent request, of any declarations submitted under Rules 11.1 or 11.2 (ii) in connection with the said request, and of any forms or requests bearing the signature of the requesting party in accordance with Rule 11.3.
(h) The furnishing of samples referred to in Rule 11.1 shall be free of charge. Where the furnishing of samples is made under Rule 11.2 or 11.3, any fee payable under Rule 12.1 (a) (iv) shall be chargeable to the depositor, to the authorised party, to the certified party or to the requesting party, as the case may be, and shall be paid before or at the time of making the said request.
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11.5 Changes in Rules 11.1 and 11.3 when Applying to International Applications
Where an application was filed as an international application under the Patent Cooperation Treaty, the reference to the filing of the application with the industrial property office in Rules 11.1 (i) and 11.3 (a) (i) shall be considered a reference to the designation, in the international application, of the Contracting State for which the industrial property office is the “designated Office” within the meaning of that Treaty, and the certification of publication which is required by Rule 11.3 (a) (ii) shall, at the option of the industrial property office, be either a certification of international publication under the said Treaty or a certification of publication by the industrial property office.
Rule 12 Fees
12.1 Kinds and Amounts
(a) Any international depositary authority may, with respect to the procedure under the Treaty and these Regulations, charge a fee:
(i) for storage;
(ii) for the attestation referred to in Rule 8.2;
(iii) subject to Rule 10.2 (e), first sentence, for the issuance of viability statements;
(iv) subject to Rule 11.4 (h), first sentence, for the furnishing of samples;
(v) for the communication of information under Rule 7.6.
(b) The fee for storage shall be for the whole duration of the storage of the microorganism as provided in Rule 9.1.
(c) The amount of any fee shall not vary on account of the nationality or residence of the depositor or on account of the nationality or residence of the authority, natural person or legal entity requesting the issuance of a viability statement or furnishing of samples.
12.2 Change in the Amounts
(a) Any change in the amount of the fees charged by any international depositary authority shall be notified to the Director General by the Contracting State or intergovernmental industrial property organization which made the declaration referred to in Article 7 (1) in respect of that authority. The notification may, subject to paragraph (c), contain an indication of the date from which the new fees will apply.
(b) The Director General shall promptly notify all Contracting States and intergovernmental industrial property organizations of any notification received under paragraph (a) and of its effective date under paragraph (c); the notification of the Director General and the notification received by him shall be promptly published by the International Bureau.
(c) Any new fees shall apply as of the date indicated under paragraph (a), provided that, where the change consists of an increase in the amounts of the fees or where no date is so indicated, the new fees shall apply as from the thirtieth day following the publication of the change by the International Bureau.
Rule 12bis
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Computation of Time Limits
12bis. 1 Periods Expressed in Years
When a period is expressed as one year or a certain number of years, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent year in the month having the same name and on the day having the same number as the month and the day on which the said event occurred, provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.
12bis. 2 Periods Expressed in Months
When a period is expressed as one month or a certain number of months, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent month on the day which has the same number as the day on which the said event occurred, provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.
12bis. 3 Periods Expressed in Days
When a period is expressed as a certain number of days, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire on the day on which the last day of the count has been reached.
Rule 13 Publication by the International Bureau
13.1 Form of Publication
Any publication by the International Bureau referred to in the Treaty or these Regulations shall be made in the monthly periodical of the International Bureau referred to in the Paris Convention for the Protection of Industrial Property.
13.2 Contents
(a) At least in the first issue of each year of the said periodical, an up-to-date list of the international depositary authorities shall be published, indicating in respect of each such authority the kinds of microorganisms that may be deposited with it and the amount of the fees charged by it.
(b) Full information on any of the following facts shall be published once, in the first issue of the said periodical published after the occurrence of the fact:
(i) any acquisition, termination or limitation of the status of international depositary authority, and the measures taken in connection with that termination or limitation;
(ii) any extension referred to in Rule 3.3;
(iii) any discontinuance of the functions of an international depositary authority, any refusal to accept certain kinds of microorganisms, and the measures taken in connection with such discontinuance or refusal;
(iv) any change in the fees charged by an international depositary authority;
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(v) any requirements communicated in accordance with Rule 6.3 (b) and any amendments thereof.
Rule 14 Expenses of Delegations
14.1 Coverage of Expenses
The expenses of each delegation participating in any session of the Assembly and in any committee, working group or other meeting dealing with matters of concern to the Union shall be borne by the State or organisation which has appointed it.
Rule 15 Absence of Quorum in the Assembly
15.1 Voting by Correspondence
(a) In the case provided for in Article 10 (5) (b), the Director General shall communicate any decision of the Assembly (other than decisions relating to the Assembly’s own procedure) to the Contracting States which were not represented when the decision was made and shall invite them to express in writing their vote or abstention within a period of three months from the date of the communication.
(b) If, at the expiration of the said period, the number of Contracting States having thus expressed their vote or abstention attains the number of Contracting States which was lacking for attaining the quorum when the decision was made, that decision shall take effect provided that at the same time the required majority still obtains.
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Schedule 2 Patent Cooperation Treaty (subregulation 1.4 (2))
TABLE OF PROVISIONS
Preamble
Introductory Provisions
Article 1: Establishment of a Union
Article 2: Definitions
Chapter I: International Application and International Search
Article 3: The International Application
Article 4: The Request
Article 5: The Description
Article 6: The Claims
Article 7: The Drawings
Article 8: Claiming Priority
Article 9: The Applicant
Article 10: The Receiving Office
Article 11: Filing Date and Effects of the International Application
Article 12: Transmittal of the International Application to the International Bureau and
the International Searching Authority
Article 13: Availability of Copy of the International Application to Designated Offices
Article 14: Certain Defects in the International Application
Article 15: The International Search
Article 16: The International Searching Authority
Article 17: Procedure Before the International Searching Authority
Article 18: The International Search Report
Article 19: Amendment of the Claims Before the International Bureau
Article 20: Communication to Designated Offices
Article 21: International Publication
Article 22: Copy, Translation, and Fee, to Designated Offices
Article 23: Delaying of National Procedure
Article 24: Possible Loss of Effect in Designated States
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Article 25: Review By Designated Offices
Article 26: Opportunity to Correct Before Designated Offices
Article 27: National Requirements
Article 28: Amendment of the Claims, the Description, and the Drawings, Before
Designated Offices
Article 29: Effects of the International Publication
Article 30: Confidential Nature of the International Application
Chapter II: International Preliminary Examination
Article 31: Demand for International Preliminary Examination
Article 32: The International Preliminary Examining Authority
Article 33: The International Preliminary Examination
Article 34: Procedure Before the International Preliminary Examining Authority
Article 35: The International Preliminary Examination Report
Article 36: Transmittal, Translation, and Communication, of the International
Preliminary Examination Report
Article 37: Withdrawal of Demand or Election
Article 38: Confidential Nature of the International Preliminary Examination
Article 39: Copy, Translation, and Fee, to Elected Offices
Article 40: Delaying of National Examination and Other Processing
Article 41: Amendment of the Claims, the Description, and the Drawings, Before
Elected Offices
Article 42: Results of National Examination in Elected Offices
Chapter III: Common Provisions
Article 43: Seeking Certain Kinds of Protection
Article 44: Seeking Two Kinds of Protection
Article 45: Regional Patent Treaties
Article 46: Incorrect Translation of the International Application
Article 47: Time Limits
Article 48: Delay in Meeting Certain Time Limits
Article 49: Right to Practice Before International Authorities
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Chapter IV: Technical Services
Article 50: Patent Information Services
Article 51: Technical Assistance
Article 52: Relations with Other Provisions of the Treaty
Chapter V: Administrative Provisions
Article 53: Assembly
Article 54: Executive Committee
Article 55: International Bureau
Article 56: Committee for Technical Cooperation
Article 57: Finances
Article 58: Regulations
Chapter VI: Disputes
Article 59: Disputes
Chapter VII: Revision and Amendment
Article 60: Revision of the Treaty
Article 61: Amendment of Certain Provisions of the Treaty
Chapter VIII: Final Provisions
Article 62: Becoming Party to the Treaty
Article 63: Entry into Force of the Treaty
Article 64: Reservations
Article 65: Gradual Application
Article 66: Denunciation
Article 67: Signature and Languages
Article 68: Depositary Functions
Article 69: Notifications
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PATENT COOPERATION TREATY
Done at Washington June 19, 1970 amended on October 2, 1979 and modified on February 3, 1984
The Contracting States,
Desiring to make a contribution to the progress of science and technology,
Desiring to perfect the legal protection of inventions,
Desiring to simplify and render more economical the obtaining of protection for inventions where protection is sought in several countries,
Desiring to facilitate and accelerate access by the public to the technical information contained in documents describing new inventions,
Desiring to foster and accelerate the economic development of developing countries through the adoption of measures designed to increase the efficiency of their legal systems, whether national or regional, instituted for the protection of inventions by providing easily accessible information on the availability of technological solutions applicable to their special needs and by facilitating access to the ever expanding volume of modern technology,
Convinced that cooperation among nations will greatly facilitate the attainment of these aims,
Have concluded the present Treaty.
Introductory Provisions
Article 1 Establishment of a Union
(1) The States party to this Treaty (hereinafter called “the Contracting States”) constitute a Union for cooperation in the filing, searching, and examination, of applications for the protection of inventions, and for rendering special technical services. The Union shall be known as the International Patent Cooperation Union.
(2) No provision of this treaty shall be interpreted as diminishing the rights under the Paris Convention for the Protection of Industrial Property of any national or resident of any country party to that Convention.
Article 2 Definitions
For the purposes of this Treaty and the Regulations and unless expressly stated otherwise:
(i) “application” means an application for the protection of an invention; references to an “application” shall be construed as references to applications for patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition;
(ii) references to a “patent” shall be construed as references to patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition;
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(iii) “national patent” means a patent granted by a national authority;
(iv) “regional patent” means a patent granted by a national or an intergovernmental authority having the power to grant patents effective in more than one State;
(v) “regional application” means an application for a regional patent;
(vi) references to a “national application” shall be construed as references to applications for national patents and regional patents, other than applications filed under this Treaty;
(vii) “international application” means an application filed under this Treaty;
(viii) references to an “application” shall be construed as references to international applications and national applications;
(ix) references to a “patent” shall be construed as references to national patents and regional patents;
(x) references to “national law” shall be construed as references to the national law of a Contracting State or, where a regional application or a regional patent is involved, to the treaty providing for the filing of regional applications or the granting of regional patents;
(xi) “priority date”, for the purposes of computing time limits, means:
(a) where the international application contains a priority claim under Article 8, the filing date of the application whose priority is so claimed;
(b) where the international application contains several priority claims under Article 8, the filing date of the earliest application whose priority is so claimed;
(c) where the international application does not contain any priority claim under Article 8, the international filing date of such application;
(xii) “national Office” means the government authority of a Contracting State entrusted with the granting of patents; references to a “national Office” shall be construed as referring also to any intergovernmental authority which several States have entrusted with the task of granting regional patents, provided that at least one of those States is a Contracting State, and provided that the said States have authorized that authority to assume the obligations and exercise the powers which this Treaty and the Regulations provide for in respect of national Offices;
(xiii) “designated Office” means the national Office of or acting for the State designated by the applicant under Chapter I of this Treaty;
(xiv) “elected Office” means the national Office of or acting for the State elected by the applicant under Chapter II of this Treaty;
(xv) “receiving Office” means the national Office or the intergovernmental organization with which the international application has been filed;
(xvi) “Union” means the International Patent Cooperation Union;
(xvii) “Assembly” means the Assembly of the Union;
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(xviii) “Organization” means the World Intellectual Property Organization;
(xix) “International Bureau” means the International Bureau of the Organization and, as long as it subsists, the United International Bureaux for the Protection of Intellectual Property (BIRPI);
(xx) “Director General” means the Director General of the Organization and, as long as BIRPI subsists, the Director of BIRPI.
CHAPTER I
International Application and International Search
Article 3 The International Application
(1) Applications for the protection of inventions in any of the Contracting States may be filed as international applications under this Treaty.
(2) An international application shall contain, as specified in this Treaty and the Regulations, a request, a description, one or more claims, one or more drawings (where required), and an abstract.
(3) The abstract merely serves the purpose of technical information and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.
(4) The international application shall:
(i) be in a prescribed language;
(ii) comply with the prescribed physical requirements;
(iii) comply with the prescribed requirement of unity of invention;
(iv) be subject to the payment of the prescribed fees.
Article 4 The Request
(1) The request shall contain:
(i) a petition to the effect that the international application be processed according to this Treaty;
(ii) the designation of the Contracting State or States in which protection for the invention is desired on the basis of the international application (“designated States”); if for any designated State a regional patent is available and the applicant wishes to obtain a regional patent rather than a national patent, the request shall so indicate; if, under a treaty concerning a regional patent, the applicant cannot limit his application to certain of the States party to that treaty, designation of one of those States and the indication of the wish to obtain the regional patent shall be treated as designation of all the States party to that treaty; if, under the national law of the designated State, the designation of that State has the effect of an application for a regional patent, the designation of the said State shall be treated as an indication of the wish to obtain the regional patent;
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(iii) the name of and other prescribed data concerning the applicant and the agent (if any);
(iv) the title of the invention;
(v) the name of and other prescribed data concerning the inventor where the national law of at least one of the designated States requires that these indications be furnished at the time of filing a national application. Otherwise, the said indications may be furnished either in the request or in separate notices addressed to each designated Office whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application.
(2) Every designation shall be subject to the payment of the prescribed fee within the prescribed time limit.
(3) Unless the applicant asks for any of the other kinds of protection referred to in Article 43, designation shall mean that the desired protection consists of the grant of a patent by or for the designated State. For the purposes of this paragraph, Article 2 (ii) shall not apply.
(4) Failure to indicate in the request the name and other prescribed data concerning the inventor shall have no consequence in any designated State whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application. Failure to furnish the said indications in a separate notice shall have no consequence in any designated State whose national law does not require the furnishing of the said indications.
Article 5 The Description
The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.
Article 6 The Claims
The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.
Article 7 The Drawings
(1) Subject to the provisions of paragraph (2) (ii), drawings shall be required when they are necessary for the understanding of the invention.
(2) Where, without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings:
(i) the applicant may include such drawings in the international application when filed,
(ii) any designated Office may require that the applicant file such drawings with it within the prescribed time limit.
Article 8 Claiming Priority
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(1) The international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.
(2) (a) Subject to the provisions of subparagraph (b), the conditions for, and the effect of, any priority claim declared under paragraph (1) shall be as provided in Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property.
(b) The international application for which the priority of one or more earlier applications filed in or for a Contracting State is claimed may contain the designation of that State. Where, in the international application, the priority of one or more national applications filed in or for a designated State is claimed, or where the priority of an international application having designated only one State is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by the national law of that State.
Article 9 The Applicant
(1) Any resident or national of a Contracting State may file an international application.
(2) The Assembly may decide to allow the residents and the nationals of any country party to the Paris Convention for the Protection of Industrial Property which is not party to this Treaty to file international applications.
(3) The concepts of residence and nationality, and the application of those concepts in cases where there are several applicants or where the applicants are not the same for all the designated States, are defined in the Regulations.
Article 10 The Receiving Office
The international application shall be filed with the prescribed receiving Office, which will check and process it as provided in this Treaty and the Regulations.
Article 11 Filing Date and Effects of the International Application
(1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:
(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,
(ii) the international application is in the prescribed language,
(iii) the international application contains at least the following elements:
(a) an indication that it is intended as an international application,
(b) the designation of at least one Contracting State,
(c) the name of the applicant, as prescribed,
(d) a part which on the face of it appears to be a description,
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(e) a part which on the face of it appears to be a claim or claims.
(2) (a) If the receiving Office finds that the international application did not, at the time of receipt, fulfil the requirements listed in paragraph (1), it shall, as provided in the Regulations, invite the applicant to file the required correction.
(b) If the applicant complies with the invitation, as provided in the Regulations, the receiving Office shall accord as the international filing date the date of receipt of the required correction.
(3) Subject to Article 64 (4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.
(4) Any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) shall be equivalent to a regular national filing within the meaning of the Paris Convention for the Protection of Industrial Property.
Article 12 Transmittal of the International Application to the International Bureau and the International
Searching Authority
(1) One copy of the international application shall be kept by the receiving Office (“home copy”), one copy (“record copy”) shall be transmitted to the International Bureau, and another copy (“search copy”) shall be transmitted to the competent International Searching Authority referred to in Article 16, as provided in the Regulations.
(2) The record copy shall be considered the true copy of the international application.
(3) The international application shall be considered withdrawn if the record copy has not been received by the International Bureau within the prescribed time limit.
Article 13 Availability of Copy of the International Application to Designated Offices
(1) Any designated Office may ask the International Bureau to transmit to it a copy of the international application prior to the communication provided for in Article 20, and the International Bureau shall transmit such copy to the designated Office as soon as possible after the expiration of one year from the priority date.
(2) (a) The applicant may, at any time, transmit a copy of his international application to any designated Office.
(b) The applicant may, at any time, ask the International Bureau to transmit a copy of his international application to any designated Office, and the International Bureau shall transmit such copy to the designated Office as soon as possible.
(c) Any national Office may notify the International Bureau that it does not wish to receive copies as provided for in subparagraph (b), in which case that subparagraph shall not be applicable in respect of that Office.
Article 14 Certain Defects in the International Application
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(1) (a) The receiving Office shall check whether the international application contains any of the following defects, that is to say:
(i) it is not signed as provided in the Regulations;
(ii) it does not contain the prescribed indications concerning the applicant;
(iii) it does not contain a title;
(iv) it does not contain an abstract;
(v) it does not comply to the extent provided in the Regulations with the prescribed physical requirements.
(b) If the receiving Office finds any of the said defects, it shall invite the applicant to correct the international application within the prescribed time limit, failing which that application shall be considered withdrawn and the receiving Office shall so declare.
(2) If the international application refers to drawings which, in fact, are not included in that application, the receiving Office shall notify the applicant accordingly and he may furnish them within the prescribed time limit and, if he does, the international filing date shall be the date on which the drawings are received by the receiving Office. Otherwise, any reference to the said drawings shall be considered non-existent.
(3) (a) If the receiving Office finds that, within the prescribed time limits, the fees prescribed under Article 3 (4) (iv) have not been paid, or no fee prescribed under Article 4 (2) has been paid in respect of any of the designated States, the international application shall be considered withdrawn and the receiving Office shall so declare.
(b) If the receiving Office finds that the fee prescribed under Article 4 (2) has been paid in respect of one or more (but less than all) designated States within the prescribed time limit, the designation of those States in respect of which it has not been paid within the prescribed time limit shall be considered withdrawn and the receiving Office shall so declare.
(4) If, after having accorded an international filing date to the international application, the receiving Office finds, within the prescribed time limit, that any of the requirements listed in items (i) to (iii) of Article 11 (1) was not complied with at that date, the said application shall be considered withdrawn and the receiving Office shall so declare.
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Article 15 The International Search
(1) Each international application shall be the subject of international search.
(2) The objective of the international search is to discover relevant prior art.
(3) International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any).
(4) The International Searching Authority referred to in Article 16 shall endeavour to discover as much of the relevant prior art as its facilities permit, and shall, in any case, consult the documentation specified in the Regulations.
(5) (a) If the national law of the Contracting State so permits, the applicant who files a national application with the national Office of or acting for such State may, subject to the conditions provided for in such law, request that a search similar to an international search (“international-type search”) be carried out on such application.
(b) If the national law of the Contracting State so permits, the national Office of or acting for such State may subject any national application filed with it to an international-type search.
(c) The international-type search shall be carried out by the International Searching Authority referred to in Article 16 which would be competent for an international search if the national application were an international application and were filed with the Office referred to in subparagraphs (a) and (b). If the national application is in a language which the International Searching Authority considers it is not equipped to handle, the international-type search shall be carried out on a translation prepared by the applicant in a language prescribed for international applications and which the International Searching Authority has undertaken to accept for international applications. The national application and the translation, when required, shall be presented in the form prescribed for international applications.
Article 16 The International Searching Authority
(1) International search shall be carried out by an International Searching Authority, which may be either a national Office or an intergovernmental organization, such as the International Patent Institute, whose tasks include the establishing of documentary search reports on prior art with respect to inventions which are the subject of applications.
(2) If, pending the establishment of a single International Searching Authority, there are several International Searching Authorities, each receiving Office shall, in accordance with the provisions of the applicable agreement referred to in paragraph (3) (b), specify the International Searching Authority or Authorities competent for the searching of international applications filed with such Office.
(3) (a) International Searching Authorities shall be appointed by the Assembly. Any national Office and any intergovernmental organization satisfying the requirements referred to in subparagraph (c) may be appointed as International Searching Authority.
(b) Appointment shall be conditional on the consent of the national Office or intergovernmental organization to be appointed and the conclusion of an agreement, subject to approval by the Assembly, between such Office or organization and the International Bureau. The agreement shall
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specify the rights and obligations of the parties, in particular, the formal undertaking by the said Office or organization to apply and observe all the common rules of international search.
(c) The Regulations prescribe the minimum requirements, particularly as to manpower and documentation, which any Office or organization must satisfy before it can be appointed and must continue to satisfy while it remains appointed.
(d) Appointment shall be for a fixed period of time and may be extended for further periods.
(e) Before the Assembly makes a decision on the appointment of any national Office or intergovernmental organization, or on the extension of its appointment, or before it allows any such appointment to lapse, the Assembly shall hear the interested Office or organization and seek the advice of the Committee for Technical Cooperation referred to in Article 56 once that Committee has been established.
Article 17 Procedure Before the International Searching Authority
(1) Procedure before the International Searching Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.
(2) (a) If the International Searching Authority considers
(i) that the international application relates to a subject matter which the International Searching Authority is not required, under the Regulations, to search, and in the particular case decides not to search, or
(ii) that the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out,
the said Authority shall so declare and shall notify the applicant and the International Bureau that no international search report will be established.
(b) If any of the situations referred to in subparagraph (a) is found to exist in connection with certain claims only, the international search report shall so indicate in respect of such claims, whereas, for the other claims, the said report shall be established as provided in Article 18.
(3) (a) If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it shall invite the applicant to pay additional fees. The International Searching Authority shall establish the international search report on those parts of the international application which relate to the invention first mentioned in the claims (“main invention”) and, provided the required additional fees have been paid within the prescribed time limit, on those parts of the international application which relate to inventions in respect of which the said fees were paid.
(b) The national law of any designated State may provide that, where the national Office of that State finds the invitation, referred to in subparagraph (a), of the International Searching Authority justified and where the applicant has not paid all additional fees, those parts of the international application which consequently have not been searched shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.
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Article 18 The International Search Report
(1) The international search report shall be established within the prescribed time limit and in the prescribed form.
(2) The international search report shall, as soon as it has been established, be transmitted by the International Searching Authority to the applicant and the International Bureau.
(3) The international search report or the declaration referred to in Article 17 (2) (a) shall be translated as provided in the Regulations. The translations shall be prepared by or under the responsibility of the International Bureau.
Article 19 Amendment of the Claims Before the International Bureau
(1) The applicant shall, after having received the international search report, be entitled to one opportunity to amend the claims of the international application by filing amendments with the International Bureau within the prescribed time limit. He may, at the same time, file a brief statement, as provided in the Regulations, explaining the amendments and indicating any impact that such amendments might have on the description and the drawings.
(2) The amendments shall not go beyond the disclosure in the international application as filed.
(3) If the national law of any designated State permits amendments to go beyond the said disclosure, failure to comply with paragraph (2) shall have no consequence in that State.
Article 20 Communication to Designated Offices
(1) (a) The international application, together with the international search report (including any indication referred to in Article 17 (2) (b)) or the declaration referred to in Article 17 (2) (a), shall be communicated to each designated Office, as provided in the Regulations, unless the designated Office waives such requirements in its entirety or in part.
(b) The communication shall include the translation (as prescribed) of the said report or declaration.
(2) If the claims have been amended by virtue of Article 19 (1), the communication shall either contain the full text of the claims both as filed and as amended or shall contain the full text of the claims as filed and specify the amendments, and shall include the statement, if any, referred to in Article 19 (1).
(3) At the request of the designated Office or the applicant, the International Searching Authority shall send to the said Office or the applicant, respectively, copies of the documents cited in the international search report, as provided in the Regulations.
Article 21 International Publication
(1) The International Bureau shall publish international applications.
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(2) (a) Subject to the exceptions provided for in subparagraph (b) and in Article 64 (3), the international publication of the international application shall be effected promptly after the expiration of 18 months from the priority date of that application.
(b) The applicant may ask the International Bureau to publish his international application any time before the expiration of the time limit referred to in subparagraph (a). The International Bureau shall proceed accordingly, as provided in the Regulations.
(3) The international search report or the declaration referred to in Article 17 (2) (a) shall be published as prescribed in the Regulations.
(4) The language and form of the international publication and other details are governed by the Regulations.
(5) There shall be no international publication if the international application is withdrawn or is considered withdrawn before the technical preparations for publication have been completed.
(6) If the international application contains expressions or drawings which, in the opinion of the International Bureau, are contrary to morality or public order, or if, in its opinion, the international application contains disparaging statements as defined in the Regulations, it may omit such expressions, drawings, and statements, from its publications, indicating the place and number of words or drawings omitted, and furnishing, upon request, individual copies of the passages omitted.
Article 22 Copy, Translation, and Fee, to Designated Offices
(1) The applicant shall furnish a copy of the international application (unless the communication provided for in Article 20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each designated Office not later than at the expiration of 20 months from the priority date. Where the national law of the designated State requires the indication of the name of and other prescribed data concerning the inventor but allows that these indications be furnished at a time later than that of the filing of a national application, the applicant shall, unless they were contained in the request, furnish the said indications to the national Office of or acting for that State not later than at the expiration of 20 months from the priority date.
(2) Where the International Searching Authority makes a declaration, under Article 17 (2) (a), that no international search report will be established, the time limit for performing the acts referred to in paragraph (1) of this Article shall be the same as that provided for in paragraph (1).
(3) Any national law may, for performing the acts referred to in paragraphs (1) or (2), fix time limits which expire later than the time limit provided for in those paragraphs.
Article 23 Delaying of National Procedure
(1) No designated Office shall process or examine the international application prior to the expiration of the applicable time limit under Article 22.
(2) Notwithstanding the provisions of paragraph (1), any designated Office may, on the express request of the applicant, process or examine the international application at any time.
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Article 24 Possible Loss of Effect in Designated States
(1) Subject, in case (ii) below, to the provisions of Article 25, the effect of the international application provided for in Article 11 (3) shall cease in any designated State with the same consequences as the withdrawal of any national application in that State:
(i) if the applicant withdraws his international application or the designation of that State;
(ii) if the international application is considered withdrawn by virtue of Articles 12 (3), 14 (1) (b), 14 (3) (a), or 14 (4), or if the designation of that State is considered withdrawn by virtue of Article 14 (3) (b);
(iii) if the applicant fails to perform the acts referred to in Article 22 within the applicable time limit.
(2) Notwithstanding the provisions of paragraph (1), any designated Office may maintain the effect provided for in Article 11 (3) even where such effect is not required to be maintained by virtue of Article 25 (2).
Article 25 Review By Designated Offices
(1) (a) Where the receiving Office has refused to accord an international filing date or has declared that the international application is considered withdrawn, or where the International Bureau has made a finding under Article 12 (3), the International Bureau shall promptly send, at the request of the applicant, copies of any document in the file to any of the designated Offices named by the applicant.
(b) Where the receiving Office has declared that the designation of any given State is considered withdrawn, the International Bureau shall promptly send, at the request of the applicant, copies of any document in the file to the national Office of such State.
(c) The request under subparagraphs (a) or (b) shall be presented within the prescribed time limit.
(2) (a) Subject to the provisions of subparagraph (b), each designated Office shall, provided that the national fee (if any) has been paid and the appropriate translation (as prescribed) has been furnished within the prescribed time limit, decide whether the refusal, declaration, or finding, referred to in paragraph (1) was justified under the provisions of this Treaty and the Regulations, and, if it finds that the refusal or declaration was the result of an error or omission on the part of the receiving Office or that the finding was the result of an error or omission on the part of the International Bureau, it shall, as far as effects in the State of the designated Office are concerned, treat the international application as if such error or omission had not occurred.
(b) Where the record copy has reached the International Bureau after the expiration of the time limit prescribed under Article 12 (3) on account of any error or omission on the part of the applicant, the provisions of subparagraph (a) shall apply only under the circumstances referred to in Article 48 (2).
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Article 26 Opportunity to Correct Before Designated Offices
No designated Office shall reject an international application on the grounds of non-compliance with the requirements of this Treaty and the Regulations without first giving the applicant the opportunity to correct the said application to the extent and according to the procedure provided by the national law for the same or comparable situations in respect of national applications.
Article 27 National Requirements
(1) No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations.
(2) The provisions of paragraph (1) neither affect the application of the provisions of Article 7 (2) nor preclude any national law from requiring, once the processing of the international application has started in the designated Office, the furnishing:
(i) when the applicant is a legal entity, of the name of an officer entitled to represent such legal entity,
(ii) of documents not part of the international application but which constitute proof of allegations or statements made in that application, including the confirmation of the international application by the signature of the applicant when that application, as filed, was signed by his representative or agent.
(3) Where the applicant, for the purposes of any designated State, is not qualified according to the national law of that State to file a national application because he is not the inventor, the international application may be rejected by the designated Office.
(4) Where the national law provides, in respect of the form or contents of national applications, for requirements which, from the viewpoint of applicants, are more favourable than the requirements provided for by this Treaty and the Regulations in respect of international applications, the national Office, the courts and any other competent organs of or acting for the designated State may apply the former requirements, instead of the latter requirements, to international applications, except where the applicant insists that the requirements provided for by this Treaty and the Regulations be applied to his international application.
(5) Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires. In particular, any provision in this Treaty and the Regulations concerning the definition of prior art is exclusively for the purposes of the international procedure and, consequently, any Contracting State is free to apply, when determining the patentability of an invention claimed in an international application, the criteria of its national law in respect of prior art and other conditions of patentability not constituting requirements as to the form and contents of applications.
(6) The national law may require that the applicant furnish evidence in respect of any substantive condition of patentability prescribed by such law.
(7) Any receiving Office or, once the processing of the international application has started in the designated Office, that Office may apply the national law as far as it relates to any requirement that the applicant be represented by an agent having the right to represent applicants before the said Office
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and/or that the applicant have an address in the designated State for the purpose of receiving notifications.
(8) Nothing in this Treaty and the Regulations is intended to be construed as limiting the freedom of any Contracting State to apply measures deemed necessary for the preservation of its national security or to limit, for the protection of the general economic interests of that State, the right of its own residents or nationals to file international applications.
Article 28 Amendment of the Claims, the Description, and the Drawings, Before Designated Offices
(1) The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each designated Office within the prescribed time limit. No designated Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired except with the express consent of the applicant.
(2) The amendments shall not go beyond the disclosure in the international application as filed unless the national law of the designated State permits them to go beyond the said disclosure.
(3) The amendments shall be in accordance with the national law of the designated State in all respects not provided for in this Treaty and the Regulations.
(4) Where the designated Office requires a translation of the international application, the amendments shall be in the language of the translation.
Article 29 Effects of the International Publication
(1) As far as the protection of any rights of the applicant in a designated State is concerned, the effects, in that State, of the international publication of an international application shall, subject to the provisions of paragraphs (2) to (4), be the same as those which the national law of the designated State provides for the compulsory national publication of unexamined national applications as such.
(2) If the language in which the international publication has been effected is different from the language in which publications under the national law are effected in the designated State, the said national law may provide that the effects provided for in paragraph (1) shall be applicable only from such time as:
(i) a translation into the latter language has been published as provided by the national law, or
(ii) a translation into the latter language has been made available to the public, by laying open for public inspection as provided by the national law, or
(iii) a translation into the latter language has been transmitted by the applicant to the actual or prospective unauthorized user of the invention claimed in the international application, or
(iv) both the acts described in (i) and (iii), or both the acts described in (ii) and (iii), have taken place.
(3) The national law of any designated State may provide that, where the international publication has been effected, on the request of the applicant, before the expiration of 18 months from
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the priority date, the effects provided for in paragraph (1) shall be applicable only from the expiration of 18 months from the priority date.
(4) The national law of any designated State may provide that the effects provided for in paragraph (1) shall be applicable only from the date on which a copy of the international application as published under Article 21 has been received in the national Office of or acting for such State. The said Office shall publish the date of receipt in its gazette as soon as possible.
Article 30 Confidential Nature of the International Application
(1) (a) Subject to the provisions of subparagraph (b), the International Bureau and the International Searching Authorities shall not allow access by any person or authority to the international application before the international publication of that application, unless requested or authorized by the applicant.
(b) The provisions of subparagraph (a) shall not apply to any transmittal to the competent International Searching Authority, to transmittals provided for under Article 13, and to communications provided for under Article 20.
(2) (a) No national Office shall allow access to the international application by third parties, unless requested or authorized by the applicant, before the earliest of the following dates:
(i) date of the international publication of the international application,
(ii) date of the receipt of the communication of the international application under Article 20,
(iii) date of the receipt of a copy of the international application under Article 22.
(b) The provisions of subparagraph (a) shall not prevent any national Office from informing third parties that it has been designated, or from publishing that fact. Such information or publication may, however, contain only the following data: identification of the receiving Office, name of the applicant, international filing date, international application number, and title of the invention.
(c) The provisions of subparagraph (a) shall not prevent any designated Office from allowing access to the international application for the purposes of the judicial authorities.
(3) The provisions of paragraph (2) (a) shall apply to any receiving Office except as far as transmittals provided for under Article 12 (1) are concerned.
(4) For the purposes of this Article, the term “access” covers any means by which third parties may acquire cognizance, including individual communication and general publication, provided, however, that no national Office shall generally publish an international application or its translation before the international publication or, if international publication has not taken place by the expiration of 20 months from the priority date, before the expiration of 20 months from the said priority date.
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CHAPTER II
International Preliminary Examination
Article 31 Demand for International Preliminary Examination
(1) On the demand of the applicant, his international application shall be the subject of an international preliminary examination as provided in the following provisions and the Regulations.
(2) (a) Any applicant who is a resident or national, as defined in the Regulations, of a Contracting State bound by Chapter II, and whose international application has been filed with the receiving Office of or acting for such State, may make a demand for international preliminary examination.
(b) The Assembly may decide to allow persons entitled to file international applications to make a demand for international preliminary examination even if they are residents or nationals of a State not party to this Treaty or not bound by Chapter II.
(3) The demand for international preliminary examination shall be made separately from the international application. The demand shall contain the prescribed particulars and shall be in the prescribed language and form.
(4) (a) The demand shall indicate the Contracting State or States in which the applicant intends to use the results of the international preliminary examination (“elected States”). Additional Contracting States may be elected later. Election may relate only to Contracting States already designated under Article 4.
(b) Applicants referred to in paragraph (2) (a) may elect any Contracting State bound by Chapter II. Applicants referred to in paragraph (2) (b) may elect only such Contracting States bound by Chapter II as have declared that they are prepared to be elected by such applicants.
(5) The demand shall be subject to the payment of the prescribed fees within the prescribed time limit.
(6) (a) The demand shall be submitted to the competent International Preliminary Examining Authority referred to in Article 32.
(b) Any later election shall be submitted to the International Bureau.
(7) Each elected Office shall be notified of its election.
Article 32 The International Preliminary Examining Authority
(1) International preliminary examination shall be carried out by the International Preliminary Examining Authority.
(2) In the case of demands referred to in Article 31 (2) (a), the receiving Office, and, in the case of demands referred to in Article 31 (2) (b), the Assembly, shall, in accordance with the applicable agreement between the interested International Preliminary Examining Authority or Authorities and the International Bureau, specify the International Preliminary Examining Authority or Authorities competent for the preliminary examination.
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(3) The provisions of Article 16 (3) shall apply, mutatis mutandis, in respect of International Preliminary Examining Authorities.
Article 33 The International Preliminary Examination
(1) The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.
(2) For the purposes of the international preliminary examination, a claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations.
(3) For the purposes of the international preliminary examination, a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.
(4) For the purposes of the international preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. “Industry” shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.
(5) The criteria described above merely serve the purposes of international preliminary examination. Any Contracting State may apply additional or different criteria for the purpose of deciding whether, in that State, the claimed invention is patentable or not.
(6) The international preliminary examination shall take into consideration all the documents cited in the international search report. It may take into consideration any additional documents considered to be relevant in the particular case.
Article 34 Procedure Before the International Preliminary Examining Authority
(1) Procedure before the International Preliminary Examining Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.
(2) (a) The applicant shall have a right to communicate orally and in writing with the International Preliminary Examining Authority.
(b) The applicant shall have a right to amend the claims, the description, and the drawings, in the prescribed manner and within the prescribed time limit, before the international preliminary examination report is established. The amendment shall not go beyond the disclosure in the international application as filed.
(c) The applicant shall receive at least one written opinion from the International Preliminary Examining Authority unless such Authority considers that all of the following conditions are fulfilled:
(i) the invention satisfies the criteria set forth in Article 33 (1),
(ii) the international application complies with the requirements of this Treaty and the Regulations in so far as checked by that Authority,
(iii) no observations are intended to be made under Article 35 (2), last sentence.
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(d) The applicant may respond to the written opinion.
(3) (a) If the International Preliminary Examining Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it may invite the applicant, at his option, to restrict the claims so as to comply with the requirement or to pay additional fees.
(b) The national law of any elected State may provide that, where the applicant chooses to restrict the claims under subparagraph (a), those parts of the international application which, as a consequence of the restriction, are not to be the subject of international preliminary examination shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.
(c) If the applicant does not comply with the invitation referred to in subparagraph (a) within the prescribed time limit, the International Preliminary Examining Authority shall establish an international preliminary examination report on those parts of the international application which relate to what appears to be the main invention and shall indicate the relevant facts in the said report. The national law of any elected State may provide that, where its national Office finds the invitation of the International Preliminary Examining Authority justified, those parts of the international application which do not relate to the main invention shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to that Office.
(4) (a) If the International Preliminary Examining Authority considers
(i) that the international application relates to a subject matter on which the International Preliminary Examining Authority is not required, under the Regulations, to carry out an international preliminary examination, and in the particular case decides not to carry out such examination, or
(ii) that the description, the claims, or the drawings, are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness), or industrial applicability, of the claimed invention,
the said Authority shall not go into the questions referred to in Article 33 (1) and shall inform the applicant of this opinion and the reasons therefor.
(b) If any of the situations referred to in subparagraph (a) is found to exist in, or in connection with, certain claims only, the provisions of that subparagraph shall apply only to the said claims.
Article 35 The International Preliminary Examination Report
(1) The international preliminary examination report shall be established within the prescribed time limit and in the prescribed form.
(2) The international preliminary examination report shall not contain any statement on the question whether the claimed invention is or seems to be patentable or unpatentable according to any national law. It shall state, subject to the provisions of paragraph (3), in relation to each claim, whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined for the purposes of the international preliminary examination in Article 33 (1) to (4). The statement shall be accompanied by the citation of the documents believed to support the stated conclusion with such explanations as the circumstances of the case may require. The statement shall also be accompanied by such other observations as the Regulations provide for.
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(3) (a) If, at the time of establishing the international preliminary examination report, the International Preliminary Examining Authority considers that any of the situations referred to in Article 34 (4) (a) exists, that report shall state this opinion and the reasons therefor. It shall not contain any statement as provided in paragraph (2).
(b) If a situation under Article 34 (4) (b) is found to exist, the international preliminary examination report shall, in relation to the claims in question, contain the statement as provided in subparagraph (a), whereas, in relation to the other claims, it shall contain the statement as provided in paragraph (2).
Article 36 Transmittal, Translation, and Communication, of the International Preliminary Examination Report
(1) The international preliminary examination report, together with the prescribed annexes, shall be transmitted to the applicant and to the International Bureau.
(2) (a) The international preliminary examination report and its annexes shall be translated into the prescribed languages.
(b) Any translation of the said report shall be prepared by or under the responsibility of the International Bureau, whereas any translation of the said annexes shall be prepared by the applicant.
(3) (a) The international preliminary examination report, together with its translation (as prescribed) and its annexes (in the original language), shall be communicated by the International Bureau to each elected Office.
(b) The prescribed translation of the annexes shall be transmitted within the prescribed time limit by the applicant to the elected Offices.
(4) The provisions of Article 20 (3) shall apply, mutatis mutandis, to copies of any document which is cited in the international preliminary examination report and which was not cited in the international search report.
Article 37 Withdrawal of Demand or Election
(1) The applicant may withdraw any or all elections.
(2) If the election of all elected States is withdrawn, the demand shall be considered withdrawn.
(3) (a) Any withdrawal shall be notified to the International Bureau.
(b) The elected Offices concerned and the International Preliminary Examining Authority concerned shall be notified accordingly by the International Bureau.
(4) (a) Subject to the provisions of subparagraph (b), withdrawal of the demand or of the election of a Contracting State shall, unless the national law of that State provides otherwise, be considered to be withdrawal of the international application as far as that State is concerned.
(b) Withdrawal of the demand or of the election shall not be considered to be withdrawal of the international application if such withdrawal is effected prior to the expiration of the applicable time limit under Article 22; however, any Contracting State may provide in its national law that the
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aforesaid shall apply only if its national Office has received, within the said time limit, a copy of the international application, together with a translation (as prescribed), and the national fee.
Article 38 Confidential Nature of the International Preliminary Examination
(1) Neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or authorized by the applicant, allow access within the meaning, and with the proviso, of Article 30 (4) to the file of the international preliminary examination by any person or authority at any time, except by the elected Offices once the international preliminary examination report has been established.
(2) Subject to the provisions of paragraph (1) and Articles 36 (1) and (3) and 37 (3) (b), neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or authorized by the applicant, give information on the issuance or non-issuance of an international preliminary examination report and on the withdrawal or non-withdrawal of the demand or of any election.
Article 39 Copy, Translation, and Fee, to Elected Offices
(1) (a) If the election of any Contracting State has been effected prior to the expiration of the 19th month from the priority date, the provisions of Article 22 shall not apply to such State and the applicant shall furnish a copy of the international application (unless the communication under Article 20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each elected Office not later than the expiration of 30 months from the priority date.
(b) Any national law may, for performing the acts referred to in subparagraph (a), fix time limits which expire later than the time limit provided for in that subparagraph.
(2) The effect provided for in Article 11 (3) shall cease in the elected State with the same consequences as the withdrawal of any national application in that State if the applicant fails to perform the acts referred to in paragraph (1) (a) within the time limit applicable under paragraph (1) (a) or (b).
(3) Any elected Office may maintain the effect provided for in Article 11 (3) even where the applicant does not comply with the requirements provided for in paragraph (1) (a) or (b).
Article 40 Delaying of National Examination and Other Processing
(1) If the election of any Contracting State has been effected prior to the expiration of the 19th month from the priority date, the provisions of Article 23 shall not apply to such State and the national Office of or acting for that State shall not proceed, subject to the provisions of paragraph (2), to the examination and other processing of the international application prior to the expiration of the applicable time limit under Article 39.
(2) Notwithstanding the provisions of paragraph (1), any elected Office may, on the express request of the applicant, proceed to the examination and other processing of the international application at any time.
Article 41 Amendment of the Claims, the Description, and the Drawings, Before Elected Offices
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(1) The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each elected Office within the prescribed time limit. No elected Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired, except with the express consent of the applicant.
(2) The amendments shall not go beyond the disclosure in the international application as filed, unless the national law of the elected State permits them to go beyond the said disclosure.
(3) The amendments shall be in accordance with the national law of the elected State in all respects not provided for in this Treaty and the Regulations.
(4) Where an elected Office requires a translation of the international application, the amendments shall be in the language of the translation.
Article 42 Results of National Examination in Elected Offices
No elected Office receiving the international preliminary examination report may require that the applicant furnish copies, or information on the contents, of any papers connected with the examination relating to the same international application in any other elected Office.
CHAPTER III
Common Provisions
Article 43 Seeking Certain Kinds of Protection
In respect of any designated or elected State whose law provides for the grant of inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, or utility certificates of addition, the applicant may indicate, as prescribed in the Regulations, that his international application is for the grant, as far as that State is concerned, of an inventor’s certificate, a utility certificate, or a utility model, rather than a patent, or that it is for the grant of a patent or certificate of addition, an inventor’s certificate of addition, or a utility certificate of addition, and the ensuing effect shall be governed by the applicant’s choice. For the purposes of this Article and any Rule thereunder, Article 2 (ii) shall not apply.
Article 44 Seeking Two Kinds of Protection
In respect of any designated or elected State whose law permits an application, while being for the grant of a patent or one of the other kinds of protection referred to in Article 43, to be also for the grant of another of the said kinds of protection, the applicant may indicate, as prescribed in the Regulations, the two kinds of protection he is seeking, and the ensuing effect shall be governed by the applicant’s indications. For the purposes of this Article, Article 2 (ii) shall not apply.
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Article 45 Regional Patent Treaties
(1) Any treaty providing for the grant of regional patents (“regional patent treaty”), and giving to all persons who, according to Article 9, are entitled to file international applications the right to file applications for such patents, may provide that international applications designating or electing a State party to both the regional patent treaty and the present Treaty may be filed as applications for such patents.
(2) The national law of the said designated or elected State may provide that any designation or election of such State in the international application shall have the effect of an indication of the wish to obtain a regional patent under the regional patent treaty.
Article 46 Incorrect Translation of the International Application
If, because of an incorrect translation of the international application, the scope of any patent granted on that application exceeds the scope of the international application in its original language, the competent authorities of the Contracting State concerned may accordingly and retroactively limit the scope of the patent, and declare it null and void to the extent that its scope has exceeded the scope of the international application in its original language.
Article 47 Time Limits
(1) The details for computing time limits referred to in this Treaty are governed by the Regulations.
(2) (a) All time limits fixed in Chapters I and II of this Treaty may, outside any revision under Article 60, be modified by a decision of the Contracting States.
(b) Such decisions shall be made in the Assembly or through voting by correspondence and must be unanimous.
(c) The details of the procedure are governed by the Regulations.
Article 48 Delay in Meeting Certain Time Limits
(1) Where any time limit fixed in this Treaty or the Regulations is not met because of interruption in the mail service or unavoidable loss or delay in the mail, the time limit shall be deemed to be met in the cases and subject to the proof and other conditions prescribed in the Regulations.
(2) (a) Any Contracting State shall, as far as that State is concerned, excuse, for reasons admitted under its national law, any delay in meeting any time limit.
(b) Any Contracting State may, as far as that State is concerned, excuse, for reasons other than those referred to in subparagraph (a), any delay in meeting any time limit.
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Article 49 Right to Practice Before International Authorities
Any attorney, patent agent, or other person, having the right to practice before the national Office with which the international application was filed, shall be entitled to practice before the International Bureau and the competent International Searching Authority and competent International Preliminary Examining Authority in respect of that application.
CHAPTER IV
Technical Services
Article 50 Patent Information Services
(1) The International Bureau may furnish services by providing technical and any other pertinent information available to it on the basis of published documents, primarily patents and published applications (referred to in this Article as “the information services”).
(2) The International Bureau may provide these information services either directly or through one or more International Searching Authorities or other national or international specialized institutions, with which the International Bureau may reach agreement.
(3) The information services shall be operated in a way particularly facilitating the acquisition by Contracting States which are developing countries of technical knowledge and technology, including available published know-how.
(4) The information services shall be available to Governments of Contracting States and their nationals and residents. The Assembly may decide to make these services available also to others.
(5) (a) Any service to Governments of Contracting States shall be furnished at cost, provided that, when the Government is that of a Contracting State which is a developing country, the service shall be furnished below cost if the difference can be covered from profit made on services furnished to others than Governments of Contracting States or from the sources referred to in Article 51 (4).
(b) The cost referred to in subparagraph (a) is to be understood as cost over and above costs normally incident to the performance of the services of a national Office or the obligations of an International Searching Authority.
(6) The details concerning the implementation of the provisions of this Article shall be governed by decisions of the Assembly and, within the limits to be fixed by the Assembly, such working groups as the Assembly may set up for that purpose.
(7) The Assembly shall, when it considers it necessary, recommend methods of providing financing supplementary to those referred to in paragraph (5).
Article 51 Technical Assistance
(1) The Assembly shall establish a Committee for Technical Assistance (referred to in this Article as “the Committee”).
(2) (a) The members of the Committee shall be elected among the Contracting States, with due regard to the representation of developing countries.
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(b) The Director General shall, on his own initiative or at the request of the Committee, invite representatives of intergovernmental organizations concerned with technical assistance to developing countries to participate in the work of the Committee.
(3) (a) The task of the Committee shall be to organize and supervise technical assistance for Contracting States which are developing countries in developing their patent systems individually or on a regional basis.
(b) The technical assistance shall comprise, among other things, the training of specialists, the loaning of experts, and the supply of equipment both for demonstration and for operational purposes.
(4) The International Bureau shall seek to enter into agreements, on the one hand, with international financing organizations and intergovernmental organizations, particularly the United Nations, the agencies of the United Nations, and the Specialized Agencies connected with the United Nations concerned with technical assistance, and, on the other hand, with the Governments of the States receiving the technical assistance, for the financing of projects pursuant to this Article.
(5) The details concerning the implementation of the provisions of this Article shall be governed by decisions of the Assembly and, within the limits to be fixed by the Assembly, such working groups as the Assembly may set up for that purpose.
Article 52 Relations with Other Provisions of the Treaty
Nothing in this Chapter shall affect the financial provisions contained in any other Chapter of this Treaty. Such provisions are not applicable to the present Chapter or to its implementation.
CHAPTER V
Administrative Provisions
Article 53 Assembly
(1) (a) The Assembly shall, subject to Article 57 (8), consist of the Contracting States.
(b) The Government of each Contracting State shall be represented by one delegate, who may be assisted by alternate delegates, advisors, and experts.
(2) (a) The Assembly shall:
(i) deal with all matters concerning the maintenance and development of the Union and the implementation of this Treaty;
(ii) perform such tasks as are specifically assigned to it under other provisions of this Treaty;
(iii) give directions to the International Bureau concerning the preparation for revision conferences;
(iv) review and approve the reports and activities of the Director General concerning the Union, and give him all necessary instructions concerning matters within the competence of the Union;
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(v) review and approve the reports and activities of the Executive Committee established under paragraph (9), and give instructions to such Committee;
(vi) determine the program and adopt the triennial budget of the Union, and approve its final accounts;
(vii) adopt the financial regulations of the Union;
(viii) establish such committees and working groups as it deems appropriate to achieve the objectives of the Union;
(ix) determine which States other than Contracting States and, subject to the provisions of paragraph (8), which intergovernmental and international non-governmental organizations shall be admitted to its meetings as observers;
(x) take any other appropriate action designed to further the objectives of the Union and perform such other functions as are appropriate under this Treaty.
(b) With respect to matters which are of interest also to other Unions administered by the Organization, the Assembly shall make its decisions after having heard the advice of the Coordination Committee of the Organization.
(3) A delegate may represent, and vote in the name of, one State only.
(4) Each Contracting State shall have one vote.
(5) (a) One-half of the Contracting States shall constitute a quorum.
(b) In the absence of the quorum, the Assembly may make decisions but, with the exception of decisions concerning its own procedure, all such decisions shall take effect only if the quorum and the required majority are attained through voting by correspondence as provided in the Regulations.
(6) (a) Subject to the provisions of Articles 47 (2) (b), 58 (2) (b), 58 (3) and 61 (2) (b), the decisions of the Assembly shall require two-thirds of the votes cast.
(b) Abstentions shall not be considered as votes.
(7) In connection with matters of exclusive interest to States bound by Chapter II, any reference to Contracting States in paragraphs (4), (5), and (6), shall be considered as applying only to States bound by Chapter II.
(8) Any intergovernmental organization appointed as International Searching or Preliminary Examining Authority shall be admitted as observer to the Assembly.
(9) When the number of Contracting States exceeds forty, the Assembly shall establish an Executive Committee. Any reference to the Executive Committee in this Treaty and the Regulations shall be construed as references to such Committee once it has been established. (10) Until the Executive Committee has been established, the Assembly shall approve, within the limits of the program and triennial budget, the annual programs and budgets prepared by the Director General.
(11) (a) The Assembly shall meet in every second calendar year in ordinary session upon convocation by the Director General and, in the absence of exceptional circumstances, during the same period and at the same place as the General Assembly of the Organization.
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(b) The Assembly shall meet in extraordinary session upon convocation by the Director General, at the request of the Executive Committee, or at the request of one-fourth of the Contracting States.
(12) The Assembly shall adopt its own rules of procedure.
Article 54 Executive Committee
(1) When the Assembly has established an Executive Committee, that Committee shall be subject to the provisions set forth hereinafter.
(2) (a) The Executive Committee shall, subject to Article 57 (8), consist of States elected by the Assembly from among States members of the Assembly.
(b) The Government of each State member of the Executive Committee shall be represented by one delegate, who may be assisted by alternate delegates, advisors, and experts.
(3) The number of States members of the Executive Committee shall correspond to one-fourth of the number of States members of the Assembly. In establishing the number of seats to be filled, remainders after division by four shall be disregarded.
(4) In electing the members of the Executive Committee, the Assembly shall have due regard to an equitable geographical distribution.
(5) (a) Each member of the Executive Committee shall serve from the close of the session of the Assembly which elected it to the close of the next ordinary session of the Assembly.
(b) Members of the Executive Committee may be re-elected but only up to a maximum of two- thirds of such members.
(c) The Assembly shall establish the details of the rules governing the election and possible re- election of the members of the Executive Committee.
(6) (a) The Executive Committee shall:
(i) prepare the draft agenda of the Assembly;
(ii) submit proposals to the Assembly in respect of the draft program and biennial budget of the Union prepared by the Director General;
(iv) submit, with appropriate comments, to the Assembly the periodical reports of the Director General and the yearly audit reports on the accounts;
(v) take all necessary measures to ensure the execution of the program of the Union by the Director General, in accordance with the decisions of the Assembly and having regard to circumstances arising between two ordinary sessions of the Assembly;
(vi) perform such other functions as are allocated to it under this Treaty.
(b) With respect to matters which are of interest also to other Unions administered by the Organization, the Executive Committee shall make its decisions after having heard the advice of the Coordination Committee of the Organization.
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(7) (a) The Executive Committee shall meet once a year in ordinary session upon convocation by the Director General, preferably during the same period and at the same place as the Coordination Committee of the Organization.
(b) The Executive Committee shall meet in extraordinary session upon convocation by the Director General, either on his own initiative or at the request of its Chairman or one-fourth of its members.
(8) (a) Each State member of the Executive Committee shall have one vote.
(b) One-half of the members of the Executive Committee shall constitute a quorum.
(c) Decisions shall be made by a simple majority of the votes cast.
(d) Abstentions shall not be considered as votes.
(e) A delegate may represent, and vote in the name of, one State only.
(9) Contracting States not members of the Executive Committee shall be admitted to its meetings as observers, as well as any intergovernmental organization appointed as International Searching or Preliminary Examining Authority.
(10) The Executive Committee shall adopt its own rules of procedure.
Article 55 International Bureau
(1) Administrative tasks concerning the Union shall be performed by the International Bureau.
(2) The International Bureau shall provide the secretariat of the various organs of the Union.
(3) The Director General shall be the chief executive of the Union and shall represent the Union.
(4) The International Bureau shall publish a Gazette and other publications provided for by the Regulations or required by the Assembly.
(5) The Regulations shall specify the services that national Offices shall perform in order to assist the International Bureau and the International Searching and Preliminary Examining Authorities in carrying out their tasks under this Treaty.
(6) The Director General and any staff member designated by him shall participate, without the right to vote, in all meetings of the Assembly, the Executive Committee and any other committee or working group established under this Treaty or the Regulations. The Director General, or a staff member designated by him, shall be ex officio secretary of these bodies.
(7) (a) The International Bureau shall, in accordance with the directions of the Assembly and in cooperation with the Executive Committee, make the preparations for the revision conferences.
(b) The International Bureau may consult with intergovernmental and international non- governmental organizations concerning preparations for revision conferences.
(c) The Director General and persons designated by him shall take part, without the right to vote, in the discussions at revision conferences.
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(8) The International Bureau shall carry out any other tasks assigned to it.
Article 56 Committee for Technical Cooperation
(1) The Assembly shall establish a Committee for Technical Cooperation (referred to in this Article as “the Committee”).
(2) (a) The Assembly shall determine the composition of the Committee and appoint its members, with due regard to an equitable representation of developing countries.
(b) The International Searching and Preliminary Examining Authorities shall be ex officio members of the Committee. In the case where such an Authority is the national Office of a Contracting State, that State shall not be additionally represented on the Committee.
(c) If the number of Contracting States so allows, the total number of members of the Committee shall be more than double the number of ex officio members.
(d) The Director General shall, on his own initiative or at the request of the Committee, invite representatives of interested organizations to participate in discussions of interest to them.
(3) The aim of the Committee shall be to contribute, by advice and recommendations:
(i) to the constant improvement of the services provided for under this Treaty,
(ii) to the securing, so long as there are several International Searching Authorities and several International Preliminary Examining Authorities, of the maximum degree of uniformity in their documentation and working methods and the maximum degree of uniformly high quality in their reports, and
(iii) on the initiative of the Assembly or the Executive Committee, to the solution of the technical problems specifically involved in the establishment of a single International Searching Authority.
(4) Any Contracting State and any interested international organization may approach the Committee in writing on questions which fall within the competence of the Committee.
(5) The Committee may address its advice and recommendations to the Director General or, through him, to the Assembly, the Executive Committee, all or some of the International Searching and Preliminary Examining Authorities, and all or some of the receiving Offices.
(6) (a) In any case, the Director General shall transmit to the Executive Committee the texts of all the advice and recommendations of the Committee. He may comment on such texts.
(b) The Executive Committee may express its views on any advice, recommendation, or other activity of the Committee, and may invite the Committee to study and report on questions falling within its competence. The Executive Committee may submit to the Assembly, with appropriate comments, the advice, recommendations and report of the Committee.
(7) Until the Executive Committee has been established, references in paragraph (6) to the Executive Committee shall be construed as references to the Assembly.
(8) The details of the procedure of the Committee shall be governed by the decisions of the Assembly.
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Article 57 Finances
(1) (a) The Union shall have a budget.
(b) The budget of the Union shall include the income and expenses proper to the Union and its contribution to the budget of expenses common to the Unions administered by the Organization.
(c) Expenses not attributable exclusively to the Union but also to one or more other Unions administered by the Organization shall be considered as expenses common to the Unions. The share of the Union in such common expenses shall be in proportion to the interests the Union has in them.
(2) The budget of the Union shall be established with due regard to the requirements of co- ordination with the budgets of the other Unions administered by the Organization.
(3) Subject to the provisions of paragraph (5), the budget of the Union shall be financed from the following sources:
(i) fees and charges due for services rendered by the International Bureau in relation to the Union;
(ii) sale of, or royalties on, the publications of the International Bureau concerning the Union;
(iii) gifts, bequests, and subventions;
(iv) rents, interests, and other miscellaneous income.
(4) The amounts of fees and charges due to the International Bureau and the prices of its publications shall be so fixed that they should, under normal circumstances, be sufficient to cover all the expenses of the International Bureau connected with the administration of this Treaty.
(5) (a) Should any financial year close with a deficit, the Contracting States shall, subject to the provisions of subparagraph (b) and (c), pay contributions to cover such deficit.
(b) The amount of the contribution of each Contracting State shall be decided by the Assembly with due regard to the number of international applications which has emanated from each of them in the relevant year.
(c) If other means of provisionally covering any deficit or any part thereof are secured, the Assembly may decide that such deficit be carried forward and that the Contracting States should not be asked to pay contributions.
(d) If the financial situation of the Union so permits, the Assembly may decide that any contributions paid under subparagraph (a) be reimbursed to the Contracting States which have paid them.
(e) A Contracting State which has not paid, within two years of the due date as established by the Assembly, its contribution under subparagraph (b) may not exercise its right to vote in any of the organs of the Union. However, any organ of the Union may allow such a State to continue to exercise its right to vote in that organ so long as it is satisfied that the delay in payment is due to exceptional and unavoidable circumstances.
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(6) If the budget is not adopted before the beginning of a new financial period, it shall be at the same level as the budget of the previous year, as provided in the financial regulations.
(7) (a) The Union shall have a working capital fund which shall be constituted by a single payment made by each Contracting State. If the fund becomes insufficient, the Assembly shall arrange to increase it. If part of the fund is no longer needed, it shall be reimbursed.
(b) The amount of the initial payment of each Contracting State to the said fund or of its participation in the increase thereof shall be decided by the Assembly on the basis of principles similar to those provided for under paragraph (5) (b).
(c) The terms of payment shall be fixed by the Assembly on the proposal of the Director General and after it has heard the advice of the Coordination Committee of the Organization.
(d) Any reimbursement shall be proportionate to the amounts paid by each Contracting State, taking into account the dates at which they were paid.
(8) (a) In the headquarters agreement concluded with the State on the territory of which the Organization has its headquarters, it shall be provided that, whenever the working capital fund is insufficient, such State shall grant advances. The amount of these advances and the conditions on which they are granted shall be the subject of separate agreements, in each case, between such State and the Organization. As long as it remains under the obligation to grant advances, such State shall have an ex officio seat in the Assembly and on the Executive Committee.
(b) The State referred to in subparagraph (a) and the Organization shall each have the right to denounce the obligation to grant advances, by written notification. Denunciation shall take effect three years after the end of the year in which it has been notified.
(9) The auditing of the accounts shall be effected by one or more of the Contracting States or by external auditors, as provided in the financial regulations. They shall be designated, with their agreement, by the Assembly.
Article 58 Regulations
(1) The Regulations annexed to this Treaty provide Rules:
(i) concerning matters in respect of which this Treaty expressly refers to the Regulations or expressly provides that they are or shall be prescribed,
(ii) concerning any administrative requirements, matters, or procedures,
(iii) concerning any details useful in the implementation of the provisions of this Treaty.
(2) (a) The Assembly may amend the Regulations.
(b) Subject to the provisions of paragraph (3), amendments shall require three-fourths of the votes cast.
(3) (a) The Regulations specify the Rules which may be amended
(i) only by unanimous consent, or
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(ii) only if none of the Contracting States whose national Office acts as an International Searching or Preliminary Examining Authority dissents, and, where such Authority is an intergovernmental organization, if the Contracting State member of that organization authorized for that purpose by the other member States within the competent body of such organization does not dissent.
(b) Exclusion, for the future, of any such Rules from the applicable requirement shall require the fulfilment of the conditions referred to in subparagraph (a) (i) or (a) (ii), respectively.
(c) Inclusion, for the future, of any Rule in one or the other of the requirements referred to in subparagraph (a) shall require unanimous consent.
(4) The Regulations provide for the establishment, under the control of the Assembly, of Administrative Instructions by the Director General.
(5) In the case of conflict between the provisions of the Treaty and those of the Regulations, the provisions of the Treaty shall prevail.
CHAPTER VI
Disputes
Article 59 Disputes
Subject to Article 64 (5), any dispute between two or more Contracting States concerning the interpretation or application of this Treaty or the Regulations, not settled by negotiation, may, by any one of the States concerned, be brought before the International Court of Justice by application in conformity with the Statute of the Court, unless the States concerned agree on some other method of settlement. The Contracting State bringing the dispute before the Court shall inform the International Bureau; the International Bureau shall bring the matter to the attention of the other Contracting States.
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CHAPTER VII
Revision and Amendment
Article 60 Revision of the Treaty
(1) This Treaty may be revised from time to time by a special conference of the Contracting States.
(2) The convocation of any revision conference shall be decided by the Assembly.
(3) Any intergovernmental organization appointed as International Searching or Preliminary Examining Authority shall be admitted as observer to any revision conference.
(4) Articles 53 (5), (9) and (11), 54, 55 (4) to (8), 56, and 57, may be amended either by a revision conference or according to the provisions of Article 61.
Article 61 Amendment of Certain Provisions of the Treaty
(1) (a) Proposals for the amendment of Articles 53 (5), (9) and (11), 54, 55 (4) to (8), 56, and 57, may be initiated by any State member of the Assembly, by the Executive Committee, or by the Director General.
(b) Such proposals shall be communicated by the Director General to the Contracting States at least six months in advance of their consideration by the Assembly.
(2) (a) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly.
(b) Adoption shall require three-fourths of the votes cast.
(3) (a) Any amendment to the Articles referred to in paragraph (1) shall enter into force one month after written notifications of acceptance, effected in accordance with their respective constitutional processes, have been received by the Director General from three-fourths of the States members of the Assembly at the time it adopted the amendment.
(b) Any amendment to the said Articles thus accepted shall bind all the States which are members of the Assembly at the time the amendment enters into force, provided that any amendment increasing the financial obligations of the Contracting States shall bind only those States which have notified their acceptance of such amendment.
(c) Any amendment accepted in accordance with the provisions of subparagraph (a) shall bind all States which become members of the Assembly after the date on which the amendment entered into force in accordance with the provisions of subparagraph (a).
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CHAPTER VIII
Final Provisions
Article 62 Becoming Party to the Treaty
(1) Any State member of the International Union for the Protection of Industrial Property may become party to this Treaty by:
(i) signature followed by the deposit of an instrument of ratification, or
(ii) deposit of an instrument of accession.
(2) Instruments of ratification or accession shall be deposited with the Director General.
(3) The provisions of Article 24 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property shall apply to this Treaty.
(4) Paragraph (3) shall in no way be understood as implying the recognition or tacit acceptance by a Contracting State of the factual situation concerning a territory to which this Treaty is made applicable by another Contracting State by virtue of the said paragraph.
Article 63 Entry into Force of the Treaty
(1) (a) Subject to the provisions of paragraph (3), this Treaty shall enter into force three months after eight States have deposited their instruments of ratification or accession, provided that at least four of those States each fulfil any of the following conditions:
(i) the number of applications filed in the State has exceeded 40,000 according to the most recent annual statistics published by the International Bureau,
(ii) the nationals or residents of the State have filed at least 1,000 applications in one foreign country according to the most recent annual statistics published by the International Bureau,
(iii) the national Office of the State has received at least 10,000 applications from nationals or residents of foreign countries according to the most recent annual statistics published by the International Bureau.
(b) For the purposes of this paragraph, the term “applications” does not include applications for utility models.
(2) Subject to the provisions of paragraph (3), any State which does not become party to this Treaty upon entry into force under paragraph (1) shall become bound by this Treaty three months after the date on which such State has deposited its instrument of ratification or accession.
(3) The provisions of Chapter II and the corresponding provisions of the Regulations annexed to this Treaty shall become applicable, however, only on the date on which three States each of which fulfil at least one of the three requirements specified in paragraph (1) have become party to this Treaty without declaring, as provided in Article 64 (1), that they do not intend to be bound by the provisions of Chapter II. That date shall not, however, be prior to that of the initial entry into force under paragraph (1).
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Article 64 Reservations
(1) (a) Any State may declare that it shall not be bound by the provisions of Chapter II.
(b) States making a declaration under subparagraph (a) shall not be bound by the provisions of Chapter II and the corresponding provisions of the Regulations.
(2) (a) Any State not having made a declaration under paragraph (1) (a) may declare that:
(i) it shall not be bound by the provisions of Article 39 (1) with respect to the furnishing of a copy of the international application and a translation thereof (as prescribed),
(ii) the obligation to delay national processing, as provided for under Article 40, shall not prevent publication, by or through its national Office, of the international application or a translation thereof, it being understood, however, that it is not exempted from the limitations provided for in Articles 30 and 38.
(b) States making such a declaration shall be bound accordingly.
(3) (a) Any State may declare that, as far as it is concerned, international publication of international applications is not required.
(b) Where, at the expiration of 18 months from the priority date, the international application contains the designation only of such States as have made declarations under subparagraph (a), the international application shall not be published by virtue of Article 21 (2).
(c) Where the provisions of subparagraph (b) apply, the international application shall nevertheless be published by the International Bureau:
(i) at the request of the applicant, as provided in the Regulations,
(ii) when a national application or a patent based on the international application is published by or on behalf of the national Office of any designated State having made a declaration under subparagraph (a), promptly after such publication but not before the expiration of 18 months from the priority date.
(4) (a) Any State whose national law provides for prior art effect of its patents as from a date before publication, but does not equate for prior art purposes the priority date claimed under the Paris Convention for the Protection of Industrial Property to the actual filing date in that State, may declare that the filing outside that State of an international application designating that State is not equated to an actual filing in that State for prior art purposes.
(b) Any State making a declaration under subparagraph (a) shall to that extent not be bound by the provisions of Article 11 (3).
(c) Any State making a declaration under subparagraph (a) shall, at the same time, state in writing the date from which, and the conditions under which, the prior art effect of any international application designating that State becomes effective in that State. This statement may be modified at any time by notification addressed to the Director General.
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(5) Each State may declare that it does not consider itself bound by Article 59. With regard to any dispute between any Contracting State having made such a declaration and any other Contracting State, the provisions of Article 59 shall not apply.
(6) (a) Any declaration made under this Article shall be made in writing. It may be made at the time of signing this Treaty, at the time of depositing the instrument of ratification or accession, or, except in the case referred to in paragraph (5), at any later time by notification addressed to the Director General. In the case of the said notification, the declaration shall take effect six months after the day on which the Director General has received the notification, and shall not affect international applications filed prior to the expiration of the said six-month period.
(b) Any declaration made under this Article may be withdrawn at any time by notification addressed to the Director General. Such withdrawal shall take effect three months after the day on which the Director General has received the notification and, in the case of the withdrawal of a declaration made under paragraph (3), shall not affect international applications filed prior to the expiration of the said three-month period.
(7) No reservations to this Treaty other than the reservations under paragraphs (1) to (5) are permitted.
Article 65 Gradual Application
(1) If the agreement with any International Searching or Preliminary Examining Authority provides, transitionally, for limits on the number or kind of international applications that such Authority undertakes to process, the Assembly shall adopt the measures necessary for the gradual application of this Treaty and the Regulations in respect of given categories of international applications. This provision shall also apply to requests for an international-type search under Article 15 (5).
(2) The Assembly shall fix the dates from which, subject to the provision of paragraph (1), international applications may be filed and demands for international preliminary examination may be submitted. Such dates shall not be later than six months after this Treaty has entered into force according to the provisions of Article 63 (1), or after Chapter II has become applicable under Article 63 (3), respectively.
Article 66 Denunciation
(1) Any Contracting State may denounce this Treaty by notification addressed to the Director General.
(2) Denunciation shall take effect six months after receipt of the said notification by the Director General. It shall not affect the effects of the international application in the denouncing State if the international application was filed, and, where the denouncing State has been elected, the election was made, prior to the expiration of the said six-month period.
Article 67 Signature and Languages
(1) (a) This Treaty shall be signed in a single original in the English and French languages, both texts being equally authentic.
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(b) Official texts shall be established by the Director General, after consultation with the interested Governments, in the German, Japanese, Portuguese, Russian and Spanish languages, and such other languages as the Assembly may designate.
(2) This Treaty shall remain open for signature at Washington until December 31, 1970.
Article 68 Depositary Functions
(1) The original of this Treaty, when no longer open for signature, shall be deposited with the Director General.
(2) The Director General shall transmit two copies, certified by him, of this Treaty and the Regulations annexed hereto to the Governments of all States party to the Paris Convention for the Protection of Industrial Property and, on request, to the Government of any other State.
(3) The Director General shall register this Treaty with the Secretariat of the United Nations.
(4) The Director General shall transmit two copies, certified by him, of any amendment to this Treaty and the Regulations to the Governments of all Contracting States and, on request, to the Government of any other State.
Article 69 Notifications
The Director General shall notify the Governments of all States party to the Paris Convention for the Protection of Industrial Property of:
(i) signatures under Article 62,
(ii) deposits of instruments of ratification or accession under Article 62,
(iii) the date of entry into force of this Treaty and the date from which Chapter II is applicable in accordance with Article 63 (3),
(iv) any declarations made under Article 64 (1) to (5),
(v) withdrawals of any declarations made under Article 64 (6) (b),
(vi) denunciations received under Article 66, and
(vii) any declarations made under Article 31 (4).
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Schedule 2A Regulations under the Patent Cooperation Treaty (subregulation 1.4 (2))
Adopted on June 19, 1970, and amended on April 14, 1978, on October 3, 1978, on May 1, 1979, on June 16, 1980, on September 26, 1980, on July 3, 1981, on September 10, 1982, on October 4, 1983, on February 3, 1984, on September 28, 1984, on October 1, 1985, on July 12, 1991, on October 2, 1991, on September 29, 1992, on September 29, 1993, on October 3, 1995, on October 1, 1997, on September 15, 1998 and on September 29, 1999.
TABLE OF PROVISIONS
Part A: Introductory Rules
Rule 1 Abbreviated Expressions 1.1 Meaning of Abbreviated Expressions
Rule 2 Interpretation of Certain Words 2.1 “Applicant” 2.2 “Agent” 2.2bis “Common Representative” 2.3 “Signature”
Part B: Rules Concerning Chapter I of the Treaty
Rule 3 The Request (Form) 3.1 Form of Request 3.2 Availability of Forms 3.3 Check List 3.4 Particulars
Rule 4 The Request (Contents) 4.1 Mandatory and Optional Contents; Signature 4.2 The Petition 4.3 Title of the Invention 4.4 Names and Addresses 4.5 The Applicant 4.6 The Inventor 4.7 The Agent 4.8 Common Representative 4.9 Designation of States 4.10 Priority Claim 4.11 Reference to Earlier Search 4.12 Choice of Certain Kinds of Protection 4.13 Identification of Parent Application or Parent Grant 4.14 Continuation or Continuation in Part 4.14bis Choice of International Searching Authority 4.15 Signature 4.16 Transliteration or Translation of Certain Words 4.17 Additional Matter
Rule 5 The Description 5.1 Manner of the Description 5.2 Nucleotide and/or Amino Acid Sequence Disclosure
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Rule 6 The Claims 6.1 Number and Numbering of Claims 6.2 References to Other Parts of the International Application 6.3 Manner of Claiming 6.4 Dependent Claims 6.5 Utility Models
Rule 7 The Drawings 7.1 Flow Sheets and Diagrams 7.2 Time Limit
Rule 8 The Abstract 8.1 Contents and Form of the Abstract 8.2 Figure 8.3 Guiding Principles in Drafting
Rule 9 Expressions, Etc., Not to Be Used 9.1 Definition 9.2 Noting of Lack of Compliance 9.3 Reference to Article 21 (6)
Rule 10 Terminology and Signs 10.1 Terminology and Signs 10.2 Consistency
Rule 11 Physical Requirements of the International Application 11.1 Number of Copies 11.2 Fitness for Reproduction 11.3 Material to be Used 11.4 Separate Sheets, Etc. 11.5 Size of Sheets 11.6 Margins 11.7 Numbering of Sheets 11.8 Numbering of Lines 11.9 Writing of Text Matter 11.10 Drawings, Formulae, and Tables, in Text Matter 11.11 Words in Drawings 11.12 Alterations, Etc. 11.13 Special Requirements for Drawings 11.14 Later Documents
Rule 12 Language of the International Application and Translation for the Purposes of International Search
12.1 Languages Accepted for the Filing of International Applications 12.2 Language of Changes in the International Application 12.3 Translation for the Purposes of International Search
Rule 13 Unity of Invention 13.1 Requirement 13.2 Circumstances in Which the Requirement of Unity of Invention Is to Be Considered
Fulfilled 13.3 Determination of Unity of Invention Not Affected by Manner of Claiming 13.4 Dependent Claims
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13.5 Utility Models
Rule 13bis Inventions Relating to Biological Material 13bis.1 Definition 13bis.2 References (General) 13bis.3 References: Contents; Failure to Include Reference or Indication 13bis.4 References: Time Limit for Furnishing Indications 13bis.5 References and Indications for the Purposes of One or More Designated States;
Different Deposits for Different Designated States; Deposits with Depositary Institutions other than Those Notified
13bis.6 Furnishing of Samples 13bis.7 National Requirements: Notification and Publication
Rule 13ter Nucleotide and/or Amino Acid Sequence Listings 13ter.1 Sequence Listing for International Authorities 13ter.2 Sequence Listing for Designated Office
Rule 14 The Transmittal Fee 14.1 The Transmittal Fee
Rule 15 The International Fee 15.1 Basic Fee and Designation Fee 15.2 Amounts 15.4 Time Limit for Payment; Amount Payable 15.5 Fees under Rule 4.9 (c) 15.6 Refund
Rule 16 The Search Fee 16.1 Right to Ask for a Fee 16.2 Refund 16.3 Partial Refund
Rule 16bis Extension of Time Limits for Payment of Fees 16bis.1 Invitation by the Receiving Office 16bis.2 Late Payment Fee
Rule 17 The Priority Document 17.1 Obligation to Submit Copy of Earlier National or International Application 17.2 Availability of Copies
Rule 18 The Applicant 18.1 Residence and Nationality 18.3 Two or More Applicants 18.4 Information on Requirements Under National Law as to Applicants
Rule 19 The Competent Receiving Office 19.1 Where to File 19.2 Two or More Applicants 19.3 Publication of Fact of Delegation of Duties of Receiving Office 19.4 Transmittal to the International Bureau as Receiving Office
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Rule 20 Receipt of the International Application 20.1 Date and Number 20.2 Receipt on Different Days 20.3 Corrected International Application 20.4 Determination under Article 11 (1) 20.5 Positive Determination 20.6 Invitation to Correct 20.7 Negative Determination 20.8 Error by the Receiving Office 20.9 Certified Copy for the Applicant
Rule 21 Preparation of Copies 21.1 Responsibility of the Receiving Office
Rule 22 Transmittal of the Record Copy and Translation 22.1 Procedure 22.3 Time Limit under Article 12 (3)
Rule 23 Transmittal of the Search Copy, Translation and Sequence Listing 23.1 Procedure
Rule 24 Receipt of the Record Copy by the International Bureau 24.2 Notification of Receipt of the Record Copy
Rule 25 Receipt of the Search Copy by the International Searching Authority 25.1 Notification of Receipt of the Search Copy
Rule 26 Checking by, and Correcting before, the Receiving Office of Certain Elements of the International Application
26.1 Time Limit for Check 26.2 Time Limit for Correction 26.3 Checking of Physical Requirements under Article 14 (1) (a) (v) 26.3bis Invitation under Article 14 (1) (b) to Correct Defects under Rule 11 26.3ter Invitation to Correct Defects under Article 3 (4) (i) 26.4 Procedure 26.5 Decision of the Receiving Office 26.6 Missing Drawings
Rule 26bis Correction or Addition of Priority Claim 26bis.1 Correction or Addition of Priority Claim 26bis.2 Invitation to Correct Defects in Priority Claims
Rule 27 Lack of Payment of Fees 27.1 Fees
Rule 28 Defects Noted by the International Bureau 28.1 Note on Certain Defects
Rule 29 International Applications or Designations Considered Withdrawn 29.1 Finding by Receiving Office 29.3 Calling Certain Facts to the Attention of the Receiving Office
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29.4 Notification of Intent to Make Declaration under Article 14 (4)
Rule 30 Time Limit under Article 14 (4) 30.1 Time Limit
Rule 31 Copies Required under Article 13 31.1 Request for Copies 31.2 Preparation of Copies
Rule 32 Extension of Effects of International Application to Certain Successor States 32.1 Request for Extension of International Application to Successor State 32.2 Effects of Extension to Successor State
Rule 33 Relevant Prior Art for the International Search 33.1 Relevant Prior Art for the International Search 33.2 Fields to be Covered by the International Search 33.3 Orientation of the International Search
Rule 34 Minimum Documentation 34.1 Definition
Rule 35 The Competent International Searching Authority 35.1 When Only One International Searching Authority is Competent 35.2 When Several International Searching Authorities are Competent 35.3 When the International Bureau is Receiving Office under Rule 19.1 (a) (iii)
Rule 36 Minimum Requirements for International Searching Authorities 36.1 Definition of Minimum Requirements
Rule 37 Missing or Defective Title 37.1 Lack of Title 37.2 Establishment of Title
Rule 38 Missing or Defective Abstract 38.1 Lack of Abstract 38.2 Establishment of Abstract
Rule 39 Subject Matter under Article 17 (2) (a) (i) 39.1 Definition
Rule 40 Lack of Unity of Invention (International Search) 40.1 Invitation to Pay 40.2 Additional Fees 40.3 Time Limit
Rule 41 Earlier Search Other Than International Search 41.1 Obligation to Use Results; Refund of Fee
Rule 42 Time Limit for International Search 42.1 Time Limit for International Search
Rule 43 The International Search Report 43.1 Identifications 43.2 Dates
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43.3 Classification 43.4 Language 43.5 Citations 43.6 Fields Searched 43.7 Remarks Concerning Unity of Invention 43.8 Authorized Officer 43.9 Additional Matter 43.10 Form
Rule 44 Transmittal of the International Search Report, Etc. 44.1 Copies of Report or Declaration 44.2 Title or Abstract 44.3 Copies of Cited Documents
Rule 45 Translation of the International Search Report 45.1 Languages
Rule 46 Amendment of Claims before the International Bureau 46.1 Time Limit 46.2 Where to File 46.3 Language of Amendments 46.4 Statement 46.5 Form of Amendments
Rule 47 Communication to Designated Offices 47.1 Procedure 47.2 Copies 47.3 Languages 47.4 Express Request under Article 23 (2)
Rule 48 International Publication 48.1 Form 48.2 Contents 48.3 Languages 48.4 Earlier Publication on the Applicant’s Request 48.5 Notification of National Publication 48.6 Announcing of Certain Facts
Rule 49 Copy, Translation and Fee under Article 22 49.1 Notification 49.2 Languages 49.3 Statements under Article 19; Indications under Rule 13bis.4 49.4 Use of National Form 49.5 Contents of and Physical Requirements for the Translation
Rule 50 Faculty under Article 22 (3) 50.1 Exercise of Faculty
Rule 51 Review by Designated Offices 51.1 Time Limit for Presenting the Request to Send Copies 51.2 Copy of the Notice 51.3 Time Limit for Paying National Fee and Furnishing Translation
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Rule 51bis Certain National Requirements Allowed under Article 27 (1), (2), (6) and (7) 51bis.1 Certain National Requirements Allowed 51bis.2 Opportunity to Comply with National Requirements
Rule 52 Amendment of the Claims, the Description, and the Drawings, before Designated Offices
52.1 Time Limit
Part C: Rules Concerning Chapter II of the Treaty
Rule 53 The Demand 53.1 Form 53.2 Contents 53.3 The Petition 53.4 The Applicant 53.5 Agent or Common Representative 53.6 Identification of the International Application 53.7 Election of States 53.8 Signature 53.9 Statement Concerning Amendments
Rule 54 The Applicant Entitled to Make a Demand 54.1 Residence and Nationality 54.2 Right to Make a Demand 54.3 International Applications Filed with the International Bureau as Receiving Office 54.4 Applicant Not Entitled to Make a Demand
Rule 55 Languages (International Preliminary Examination) 55.1 Language of Demand 55.2 Translation of International Application 55.3 Translation of Amendments
Rule 56 Later Elections 56.1 Elections Submitted Later Than the Demand 56.2 Identification of the International Application 56.3 Identification of the Demand 56.4 Form of Later Elections 56.5 Language of Later Elections
Rule 57 The Handling Fee 57.1 Requirement to Pay 57.2 Amount 57.3 Time Limit for Payment; Amount Payable 57.6 Refund
Rule 58 The Preliminary Examination Fee 58.1 Right to Ask for a Fee 58.3 Refund
Rule 58bis Extension of Time Limits for Payment of Fees 58bis.1 Invitation by the International Preliminary Examining Authority 58bis.2 Late Payment Fee
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Rule 59 The Competent International Preliminary Examining Authority 59.1 Demands under Article 31 (2) (a) 59.2 Demands under Article 31 (2) (b) 59.3 Transmittal of Demand to the Competent International Preliminary Examining
Authority
Rule 60 Certain Defects in the Demand or Elections 60.1 Defects in the Demand 60.2 Defects in Later Elections
Rule 61 Notification of the Demand and Elections 61.1 Notification to the International Bureau and the Applicant 61.2 Notification to the Elected Offices 61.3 Information for the Applicant 61.4 Publication in the Gazette
Rule 62 Copy of Amendments Under Article 19 for the International Preliminary Examining Authority
62.1 Amendments Made before the Demand is Filed 62.2 Amendments Made after the Demand is Filed
Rule 63 Minimum Requirements for International Preliminary Examining Authorities 63.1 Definition of Minimum Requirements
Rule 64 Prior Art for International Preliminary Examination 64.1 Prior Art 64.2 Non-Written Disclosures 64.3 Certain Published Documents
Rule 65 Inventive Step or Non-Obviousness 65.1 Approach to Prior Art 65.2 Relevant Date
Rule 66 Procedure before the International Preliminary Examining Authority 66.1 Basis of the International Preliminary Examination 66.2 First Written Opinion of the International Preliminary Examining Authority 66.3 Formal Response to the International Preliminary Examining Authority 66.4 Additional Opportunity for Submitting Amendments or Arguments 66.4bis Consideration of Amendments and Arguments 66.5 Amendment 66.6 Informal Communications with the Applicant 66.7 Priority Document 66.8 Form of Amendments 66.9 Language of Amendments
Rule 67 Subject Matter under Article 34 (4) (a) (i) 67.1 Definition
Rule 68 Lack of Unity of Invention (International Preliminary Examination) 68.1 No Invitation to Restrict or Pay 68.2 Invitation to Restrict or Pay 68.3 Additional Fees
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68.4 Procedure in the Case of Insufficient Restriction of the Claims 68.5 Main Invention
Rule 69 Start of and Time Limit for International Preliminary Examination 69.1 Start of International Preliminary Examination 69.2 Time Limit for International Preliminary Examination
Rule 70 The International Preliminary Examination Report 70.1 Definition 70.2 Basis of the Report 70.3 Identifications 70.4 Dates 70.5 Classification 70.6 Statement under Article 35 (2) 70.7 Citations under Article 35 (2) 70.8 Explanations under Article 35 (2) 70.9 Non-Written Disclosures 70.10 Certain Published Documents 70.11 Mention of Amendments 70.12 Mention of Certain Defects and Other Matters 70.13 Remarks Concerning Unity of Invention 70.14 Authorized Officer 70.15 Form 70.16 Annexes to the Report 70.17 Languages of the Report and the Annexes
Rule 71 Transmittal of the International Preliminary Examination Report 71.1 Recipients 71.2 Copies of Cited Documents
Rule 72 Translation of the International Preliminary Examination Report 72.1 Languages 72.2 Copy of Translation for the Applicant 72.3 Observations on the Translation
Rule 73 Communication of the International Preliminary Examination Report 73.1 Preparation of Copies 73.2 Time Limit for Communication
Rule 74 Translations of Annexes of the International Preliminary Examination Report and Transmittal Thereof
74.1 Contents of Translation and Time Limit for Transmittal Thereof
Rule 76 Copy, Translation and Fee under Article 39 (1); Translation of Priority Document 76.4 Time Limit for Translation of Priority Document 76.5 Application of Rules 22.1 (g), 49 and 51bis 76.6 Transitional Provision
Rule 77 Faculty under Article 39 (1) (b) 77.1 Exercise of Faculty
Rule 78 Amendment of the Claims, the Description, and the Drawings, before Elected Offices
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78.1 Time Limit Where Election Is Effected prior to Expiration of 19 Months from Priority Date
78.2 Time Limit Where Election Is Effected After Expiration of 19 Months from Priority Date
78.3 Utility Models
Part D: Rules Concerning Chapter III of the Treaty
Rule 79 Calendar 79.1 Expressing Dates
Rule 80 Computation of Time Limits 80.1 Periods Expressed in Years 80.2 Periods Expressed in Months 80.3 Periods Expressed in Days 80.4 Local Dates 80.5 Expiration on a Non-Working Day 80.6 Date of Documents 80.7 End of Working Day
Rule 81 Modification of Time Limits Fixed in the Treaty 81.1 Proposal 81.2 Decision by the Assembly 81.3 Voting by Correspondence
Rule 82 Irregularities in the Mail Service 82.1 Delay or Loss in Mail 82.2 Interruption in the Mail Service
Rule 82bis Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits 82bis.1 Meaning of “Time Limit” in Article 48 (2) 82bis.2 Reinstatement of Rights and Other Provisions to which Article 48 (2) Applies
Rule 82ter Rectification of Errors Made by the Receiving Office or by the International Bureau 82ter.1 Errors Concerning the International Filing Date and the Priority Claim
Rule 83 Right to Practice before International Authorities 83.1 Proof of Right 83.1bis Where the International Bureau is the Receiving Office 83.2 Information
Part E: Rules Concerning Chapter V of the Treaty
Rule 84 Expenses of Delegations 84.1 Expenses Borne by Governments
Rule 85 Absence of Quorum in the Assembly 85.1 Voting by Correspondence
Rule 86 The Gazette 86.1 Contents and Form 86.2 Languages; Access to the Gazette
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86.3 Frequency 86.4 Sale 86.5 Title 86.6 Further Details
Rule 87 Copies of Publications 87.1 International Searching and Preliminary Examining Authorities 87.2 National Offices
Rule 88 Amendment of the Regulations 88.1 Requirement of Unanimity 88.3 Requirement of Absence of Opposition by Certain States 88.4 Procedure
Rule 89 Administrative Instructions 89.1 Scope 89.2 Source 89.3 Publication and Entry into Force
Part F: Rules Concerning Several Chapters of the Treaty
Rule 90 Agents and Common Representatives 90.1 Appointment as Agent 90.2 Common Representative 90.3 Effects of Acts by or in Relation to Agents and Common Representatives 90.4 Manner of Appointment of Agent or Common Representative 90.5 General Power of Attorney 90.6 Revocation and Renunciation
Rule 90bis Withdrawals 90bis.1 Withdrawal of the International Application 90bis.2 Withdrawal of Designations 90bis.3 Withdrawal of Priority Claims 90bis.4 Withdrawal of the Demand, or of Elections 90bis.5 Signature 90bis.6 Effect of Withdrawal 90bis.7 Faculty under Article 37 (4) (b)
Rule 91 Obvious Errors in Documents 91.1 Rectification
Rule 92 Correspondence 92.1 Need for Letter and for Signature 92.2 Languages 92.3 Mailings by National Offices and Intergovernmental Organizations 92.4 Use of Telegraph, Teleprinter, Facsimile Machine, Etc.
Rule 92bis Recording of Changes in Certain Indications in the Request or the Demand 92bis.1 Recording of Changes by the International Bureau
Rule 93 Keeping of Records and Files
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93.1 The Receiving Office 93.2 The International Bureau 93.3 The International Searching and Preliminary Examining Authorities 93.4 Reproductions
Rule 94 Access to Files 94.1 Access to the File Held by the International Bureau 94.2 Access to the File Held by the International Preliminary Examining Authority 94.3 Access to the File Held by the Elected Office
Rule 95 Availability of Translations 95.1 Furnishing of Copies of Translations
Rule 96 The Schedule of Fees 96.1 Schedule of Fees Annexed to Regulations
Schedule of Fees
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REGULATIONS UNDER THE PATENT COOPERATION TREATY
PART A
Introductory Rules
Rule 1 Abbreviated Expressions
1.1 Meaning of Abbreviated Expressions
(a) In these Regulations, the word “Treaty” means the Patent Cooperation Treaty.
(b) In these Regulations, the words “Chapter” and “Article” refer to the specified Chapter or Article of the Treaty.
Rule 2 Interpretation of Certain Words
2.1 “Applicant”
Whenever the word “applicant” is used, it shall be construed as meaning also the agent or other representative of the applicant, except where the contrary clearly follows from the wording or the nature of the provision, or the context in which the word is used, such as, in particular, where the provision refers to the residence or nationality of the applicant.
2.2 “Agent”
Whenever the word “agent” is used, it shall be construed as meaning an agent appointed under Rule 90.1, unless the contrary clearly follows from the wording or the nature of the provision, or the context in which the word is used.
2.2bis “Common Representative”
Whenever the expression “common representative” is used, it shall be construed as meaning an applicant appointed as, or considered to be, the common representative under Rule 90.2.
2.3 “Signature”
Whenever the word “signature” is used, it shall be understood that, if the national law applied by the receiving Office or the competent International Searching or Preliminary Examining Authority requires the use of a seal instead of a signature, the word, for the purposes of that Office or Authority, shall mean seal.
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PART B
Rules Concerning Chapter I of the Treaty
Rule 3 The Request (Form)
3.1 Form of Request
The request shall be made on a printed form or be presented as a computer print-out.
3.2 Availability of Forms
Copies of the printed form shall be furnished free of charge to the applicants by the receiving Office, or, if the receiving Office so desires, by the International Bureau.
3.3 Check List
(a) The request shall contain a list indicating:
(i) the total number of sheets constituting the international application and the number of the sheets of each element of the international application: request, description (separately indicating the number of sheets of any sequence listing part of the description), claims, drawings, abstract;
(ii) where applicable, that the international application as filed is accompanied by a power of attorney (i.e., a document appointing an agent or a common representative), a copy of a general power of attorney, a priority document, a sequence listing in computer readable form, a document relating to the payment of fees, or any other document (to be specified in the check list);
(iii) the number of that figure of the drawings which the applicant suggests should accompany the abstract when the abstract is published; in exceptional cases, the applicant may suggest more than one figure.
(b) The list shall be completed by the applicant, failing which the receiving Office shall make the necessary indications, except that the number referred to in paragraph (a) (iii) shall not be indicated by the receiving Office.
3.4 Particulars
Subject to Rule 3.3, particulars of the printed request form and of a request presented as a computer print-out shall be prescribed by the Administrative Instructions.
Rule 4 The Request (Contents)
4.1 Mandatory and Optional Contents; Signature
(a) The request shall contain:
(i) a petition,
(ii) the title of the invention,
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(iii) indications concerning the applicant and the agent, if there is an agent,
(iv) the designation of States,
(v) indications concerning the inventor where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application.
(b) The request shall, where applicable, contain:
(i) a priority claim,
(ii) a reference to any earlier international, international-type or other search,
(iii) choices of certain kinds of protection,
(iv) an indication that the applicant wishes to obtain a regional patent,
(v) a reference to a parent application or a parent patent,
(vi) an indication of the applicant’s choice of competent International Searching Authority.
(c) The request may contain:
(i) indications concerning the inventor where the national law of none of the designated States requires that the name of the inventor be furnished at the time of filing a national application,
(ii) a request to the receiving Office to transmit the priority document to the International Bureau where the application whose priority is claimed was filed with the national Office or intergovernmental authority which is the receiving Office.
(d) The request shall be signed.
4.2 The Petition
The petition shall be to the following effect and shall preferably be worded as follows: “The undersigned requests that the present international application be processed according to the Patent Cooperation Treaty.”
4.3 Title of the Invention
The title of the invention shall be short (preferably from two to seven words when in English or translated into English) and precise.
4.4 Names and Addresses
(a) Names of natural persons shall be indicated by the person’s family name and given name(s), the family name being indicated before the given name(s).
(b) Names of legal entities shall be indicated by their full, official designations.
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(c) Addresses shall be indicated in such a way as to satisfy the customary requirements for prompt postal delivery at the indicated address and, in any case, shall consist of all the relevant administrative units up to, and including, the house number, if any. Where the national law of the designated State does not require the indication of the house number, failure to indicate such number shall have no effect in that State. In order to allow rapid communication with the applicant, it is recommended to indicate any teleprinter address, telephone and facsimile machine numbers, or corresponding data for other like means of communication, of the applicant or, where applicable, the agent or the common representative.
(d) For each applicant, inventor, or agent, only one address may be indicated, except that, if no agent has been appointed to represent the applicant, or all of them if more than one, the applicant or, if there is more than one applicant, the common representative, may indicate, in addition to any other address given in the request, an address to which notifications shall be sent.
4.5 The Applicant
(a) The request shall indicate the name, address, nationality and residence of the applicant or, if there are several applicants, of each of them.
(b) The applicant’s nationality shall be indicated by the name of the State of which he is a national.
(c) The applicant’s residence shall be indicated by the name of the State of which he is a resident.
(d) The request may, for different designated States, indicate different applicants. In such a case, the request shall indicate the applicant or applicants for each designated State or group of designated States.
4.6 The Inventor
(a) Where Rule 4.1 (a) (v) applies, the request shall indicate the name and address of the inventor or, if there are several inventors, of each of them.
(b) If the applicant is the inventor, the request, in lieu of the indication under paragraph (a), shall contain a statement to that effect.
(c) The request may, for different designated States, indicate different persons as inventors where, in this respect, the requirements of the national laws of the designated States are not the same. In such a case, the request shall contain a separate statement for each designated State or group of States in which a particular person, or the same person, is to be considered the inventor, or in which particular persons, or the same persons, are to be considered the inventors.
4.7 The Agent
If agents are designated, the request shall so indicate, and shall state their names and addresses.
4.8 Common Representative
If a common representative is designated, the request shall so indicate.
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4.9 Designation of States
(a) Contracting States shall be designated in the request:
(i) in the case of designations for the purpose of obtaining national patents, by an indication of each State concerned;
(ii) in the case of designations for the purpose of obtaining a regional patent, by an indication that a regional patent is desired either for all Contracting States which are party to the regional patent treaty concerned or only for such Contracting States as are specified.
(b) The request may contain an indication that all designations which would be permitted under the Treaty, other than those made under paragraph (a), are also made, provided that:
(i) at least one Contracting State is designated under paragraph (a), and
(ii) the request also contains a statement that any designation made under this paragraph is subject to confirmation as provided in paragraph (c) and that any designation which is not so confirmed before the expiration of 15 months from the priority date is to be regarded as withdrawn by the applicant at the expiration of that time limit.
(c) The confirmation of any designation made under paragraph (b) shall be effected by
(i) filing with the receiving Office a written notice containing an indication as referred to in paragraph (a) (i) or (ii), and
(ii) paying to the receiving Office the designation fee and the confirmation fee referred to in Rule 15.5
within the time limit under paragraph (b) (ii).
4.10 Priority Claim
(a) Any declaration referred to in Article 8 (1) (“priority claim”) may claim the priority of one or more earlier applications filed either in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for any Member of the World Trade Organization that is not party to that Convention. Any priority claim shall, subject to Rule 26bis.1, be made in the request; it shall consist of a statement to the effect that the priority of an earlier application is claimed and shall indicate:
(i) the date on which the earlier application was filed, being a date falling within the period of 12 months preceding the international filing date;
(ii) the number of the earlier application;
(iii) where the earlier application is a national application, the country party to the Paris Convention for the Protection of Industrial Property or the Member of the World Trade Organization that is not party to that Convention in which it was filed;
(iv) where the earlier application is a regional application, the authority entrusted with the granting of regional patents under the applicable regional patent treaty;
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(v) where the earlier application is an international application, the receiving Office with which it was filed.
(b) In addition to any indication required under paragraph (a) (iv) or (v):
(i) where the earlier application is a regional application or an international application, the priority claim may indicate one or more countries party to the Paris Convention for the Protection of Industrial Property for which that earlier application was filed;
(ii) where the earlier application is a regional application and at least one of the countries party to the regional patent treaty is neither party to the Paris Convention for the Protection of Industrial Property nor a Member of the World Trade Organization, the priority claim shall indicate at least one country party to that Convention or one Member of that Organization for which that earlier application was filed.
(c) For the purposes of paragraphs (a) and (b), Article 2 (vi) shall not apply.
(d) If, on September 29, 1999, paragraphs (a) and (b) as amended with effect from January 1, 2000, are not compatible with the national law applied by a designated Office, those paragraphs as in force until December 31, 1999, shall continue to apply after that date in respect of that designated Office for as long as the said paragraphs as amended continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by October 31, 1999. The information received shall be promptly published by the International Bureau in the Gazette.
4.11 Reference to Earlier Search
If an international or international-type search has been requested on an application under Article 15 (5) or if the applicant wishes the International Searching Authority to base the international search report wholly or in part on the results of a search, other than an international or international-type search, made by the national Office or intergovernmental organization which is the International Searching Authority competent for the international application, the request shall contain a reference to that fact. Such reference shall either identify the application (or its translation, as the case may be) in respect of which the earlier search was made by indicating country, date and number, or the said search by indicating, where applicable, date and number of the request for such search.
4.12 Choice of Certain Kinds of Protection
(a) If the applicant wishes his international application to be treated, in any designated State, as an application not for a patent but for the grant of any of the other kinds of protection specified in Article 43, he shall so indicate in the request. For the purposes of this paragraph, Article 2 (ii) shall not apply.
(b) In the case provided for in Article 44, the applicant shall indicate the two kinds of protection sought, or, if one of two kinds of protection is primarily sought, he shall indicate which kind is sought primarily and which kind is sought subsidiarily.
4.13 Identification of Parent Application or Parent Grant
If the applicant wishes his international application to be treated, in any designated State, as an application for a patent or certificate of addition, inventor’s certificate of addition, or utility certificate of addition, he shall identify the parent application or the parent patent, parent inventor’s certificate, or parent utility certificate to which the patent or certificate of addition, inventor’s certificate of
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addition, or utility certificate of addition, if granted, relates. For the purposes of this paragraph, Article 2 (ii) shall not apply.
4.14 Continuation or Continuation in Part
If the applicant wishes his international application to be treated, in any designated State, as an application for a continuation or a continuation-in-part of an earlier application, he shall so indicate in the request and shall identify the parent application involved.
4.14bis Choice of International Searching Authority
If two or more International Searching Authorities are competent for the searching of the international application, the applicant shall indicate his choice of International Searching Authority in the request.
4.15 Signature
(a) Subject to paragraph (b), the request shall be signed by the applicant or, if there is more than one applicant, by all of them.
(b) Where two or more applicants file an international application which designates a State whose national law requires that national applications be filed by the inventor and where an applicant for that designated State who is an inventor refused to sign the request or could not be found or reached after diligent effort, the request need not be signed by that applicant if it is signed by at least one applicant and a statement is furnished explaining, to the satisfaction of the receiving Office, the lack of the signature concerned.
4.16 Transliteration or Translation of Certain Words
(a) Where any name or address is written in characters other than those of the Latin alphabet, the same shall also be indicated in characters of the Latin alphabet either as a mere transliteration or through translation into English. The applicant shall decide which words will be merely transliterated and which words will be so translated.
(b) The name of any country written in characters other than those of the Latin alphabet shall also be indicated in English.
4.17 Additional Matter
(a) The request shall contain no matter other than that specified in Rules 4.1 to 4.16, provided that the Administrative Instructions may permit, but cannot make mandatory, the inclusion in the request of any additional matter specified in the Administrative Instructions.
(b) If the request contains matter other than that specified in Rules 4.1 to 4.16 or permitted under paragraph (a) by the Administrative Instructions, the receiving Office shall ex officio delete the additional matter.
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Rule 5 The Description
5.1 Manner of the Description
(a) The description shall first state the title of the invention as appearing in the request and shall:
(i) specify the technical field to which the invention relates;
(ii) indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, cite the documents reflecting such art;
(iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art;
(iv) briefly describe the figures in the drawings, if any;
(v) set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any; where the national law of the designated State does not require the description of the best mode but is satisfied with the description of any mode (whether it is the best contemplated or not), failure to describe the best mode contemplated shall have no effect in that State;
(vi) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the way in which it can be used; the term “industry” is to be understood in its broadest sense as in the Paris Convention for the Protection of Industrial Property.
(b) The manner and order specified in paragraph (a) shall be followed except when, because of the nature of the invention, a different manner or a different order would result in a better understanding and a more economic presentation.
(c) Subject to the provisions of paragraph (b), each of the parts referred to in paragraph (a) shall preferably be preceded by an appropriate heading as suggested in the Administrative Instructions.
5.2 Nucleotide and/or Amino Acid Sequence Disclosure
(a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the description shall contain a sequence listing complying with the standard provided for in the Administrative Instructions and presented as a separate part of the description in accordance with that standard.
(b) Where the sequence listing part of the description contains any free text as defined in the standard provided for in the Administrative Instructions, that free text shall also appear in the main part of the description in the language thereof.
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Rule 6 The Claims
6.1 Number and Numbering of Claims
(a) The number of the claims shall be reasonable in consideration of the nature of the invention claimed.
(b) If there are several claims, they shall be numbered consecutively in arabic numerals.
(c) The method of numbering in the case of the amendment of claims shall be governed by the Administrative Instructions.
6.2 References to Other Parts of the International Application
(a) Claims shall not, except where absolutely necessary, rely, in respect of the technical features of the invention, on references to the description or drawings. In particular, they shall not rely on such references as: “as described in part . . . of the description,” or “as illustrated in figure . . . of the drawings.”
(b) Where the international application contains drawings, the technical features mentioned in the claims shall preferably be followed by the reference signs relating to such features. When used, the reference signs shall preferably be placed between parentheses. If inclusion of reference signs does not particularly facilitate quicker understanding of a claim, it should not be made. Reference signs may be removed by a designated Office for the purposes of publication by such Office.
6.3 Manner of Claiming
(a) The definition of the matter for which protection is sought shall be in terms of the technical features of the invention.
(b) Whenever appropriate, claims shall contain:
(i) a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art,
(ii) a characterizing portion—preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect—stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect.
(c) Where the national law of the designated State does not require the manner of claiming provided for in paragraph (b), failure to use that manner of claiming shall have no effect in that State provided the manner of claiming actually used satisfies the national law of that State.
6.4 Dependent Claims
(a) Any claim which includes all the features of one or more other claims (claim in dependent form, hereinafter referred to as “dependent claim”) shall do so by a reference, if possible at the beginning, to the other claim or claims and shall then state the additional features claimed. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such claims in the alternative only. Multiple dependent claims shall not serve as a basis for any other multiple dependent claim. Where the national law of the national Office acting as International
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Searching Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the preceding two sentences, failure to use that manner of claiming may result in an indication under Article 17 (2) (b) in the international search report. Failure to use the said manner of claiming shall have no effect in a designated State if the manner of claiming actually used satisfies the national law of that State.
(b) Any dependent claim shall be construed as including all the limitations contained in the claim to which it refers or, if the dependent claim is a multiple dependent claim, all the limitations contained in the particular claim in relation to which it is considered.
(c) All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.
6.5 Utility Models
Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 6.1 to 6.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least 2 months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.
Rule 7 The Drawings
7.1 Flow Sheets and Diagrams
Flow sheets and diagrams are considered drawings.
7.2 Time Limit
The time limit referred to in Article 7 (2) (ii) shall be reasonable under the circumstances of the case and shall, in no case, be shorter than 2 months from the date of the written invitation requiring the filing of drawings or additional drawings under the said provision.
Rule 8 The Abstract
8.1 Contents and Form of the Abstract
(a) The abstract shall consist of the following:
(i) a summary of the disclosure as contained in the description, the claims, and any drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention;
(ii) where applicable, the chemical formula which, among all the formulae contained in the international application, best characterizes the invention.
(b) The abstract shall be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English).
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(c) The abstract shall not contain statements on the alleged merits or value of the claimed invention or on its speculative application.
(d) Each main technical feature mentioned in the abstract and illustrated by a drawing in the international application shall be followed by a reference sign, placed between parentheses.
8.2 Figure
(a) If the applicant fails to make the indication referred to in Rule 3.3 (a) (iii), or if the International Searching Authority finds that a figure or figures other than that figure or those figures suggested by the applicant would, among all the figures of all the drawings, better characterize the invention, it shall, subject to paragraph (b), indicate the figure or figures which should accompany the abstract when the latter is published by the International Bureau. In such case, the abstract shall be accompanied by the figure or figures so indicated by the International Searching Authority. Otherwise, the abstract shall, subject to paragraph (b), be accompanied by the figure or figures suggested by the applicant.
(b) If the International Searching Authority finds that none of the figures of the drawings is useful for the understanding of the abstract, it shall notify the International Bureau accordingly. In such case, the abstract, when published by the International Bureau, shall not be accompanied by any figure of the drawings even where the applicant has made a suggestion under Rule 3.3 (a) (iii).
8.3 Guiding Principles in Drafting
The abstract shall be so drafted that it can efficiently serve as a scanning tool for purposes of searching in the particular art, especially by assisting the scientist, engineer or researcher in formulating an opinion on whether there is a need for consulting the international application itself.
Rule 9 Expressions, Etc., Not To Be Used
9.1 Definition
The international application shall not contain:
(i) expressions or drawings contrary to morality;
(ii) expressions or drawings contrary to public order;
(iii) statements disparaging the products or processes of any particular person other than the applicant, or the merits or validity of applications or patents of any such person (mere comparisons with the prior art shall not be considered disparaging per se);
(iv) any statement or other matter obviously irrelevant or unnecessary under the circumstances.
9.2 Noting of Lack of Compliance
The receiving Office and the International Searching Authority may note lack of compliance with the prescriptions of Rule 9.1 and may suggest to the applicant that he voluntarily correct his international application accordingly. If the lack of compliance was noted by the receiving Office, that Office shall inform the competent International Searching Authority and the International Bureau; if
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the lack of compliance was noted by the International Searching Authority, that Authority shall inform the receiving Office and the International Bureau.
9.3 Reference to Article 21 (6)
“Disparaging statements,” referred to in Article 21 (6), shall have the meaning as defined in Rule 9.1 (iii).
Rule 10 Terminology and Signs
10.1 Terminology and Signs
(a) Units of weights and measures shall be expressed in terms of the metric system, or also expressed in such terms if first expressed in terms of a different system.
(b) Temperatures shall be expressed in degrees Celsius, or also expressed in degrees Celsius if first expressed in a different manner.
(d) For indications of heat, energy, light, sound, and magnetism, as well as for mathematical formulae and electrical units, the rules of international practice shall be observed; for chemical formulae, the symbols, atomic weights, and molecular formulae, in general use, shall be employed.
(e) In general, only such technical terms, signs and symbols should be used as are generally accepted in the art.
(f) When the international application or its translation is in Chinese, English or Japanese, the beginning of any decimal fraction shall be marked by a period, whereas, when the international application or its translation is in a language other than Chinese, English or Japanese, it shall be marked by a comma.
10.2 Consistency
The terminology and the signs shall be consistent throughout the international application.
Rule 11 Physical Requirements of the International Application
11.1 Number of Copies
(a) Subject to the provisions of paragraph (b), the international application and each of the documents referred to in the check list (Rule 3.3 (a) (ii)) shall be filed in one copy.
(b) Any receiving Office may require that the international application and any of the documents referred to in the check list (Rule 3.3 (a) (ii)), except the receipt for the fees paid or the check for the payment of the fees, be filed in two or three copies. In that case, the receiving Office shall be responsible for verifying the identity of the second and the third copies with the record copy.
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11.2 Fitness for Reproduction
(a) All elements of the international application (i.e., the request, the description, the claims, the drawings, and the abstract) shall be so presented as to admit of direct reproduction by photography, electrostatic processes, photo offset, and microfilming, in any number of copies.
(b) All sheets shall be free from creases and cracks; they shall not be folded.
(c) Only one side of each sheet shall be used.
(d) Subject to Rule 11.10 (d) and Rule 11.13 (j), each sheet shall be used in an upright position (i.e., the short sides at the top and bottom).
11.3 Material to be Used
All elements of the international application shall be on paper which shall be flexible, strong, white, smooth, non-shiny, and durable.
11.4 Separate Sheets, Etc.
(a) Each element (request, description, claims, drawings, abstract) of the international application shall commence on a new sheet.
(b) All sheets of international application shall be so connected that they can be easily turned when consulted, and easily separated and joined again if they have been separated for reproduction purposes.
11.5 Size of Sheets
The size of the sheets shall be A4 (29.7 cm x 21 cm). However, any receiving Office may accept international applications on sheets of other sizes provided that the record copy, as transmitted to the International Bureau, and, if the competent International Searching Authority so desires, the search copy, shall be of A4 size.
11.6 Margins
(a) The minimum margins of the sheets containing the description, the claims, and the abstract, shall be as follows:
— top: 2 cm — left side: 2.5 cm — right side: 2 cm — bottom: 2 cm
(b) The recommended maximum, for the margins provided for in paragraph (a), is as follows:
— top: 4 cm — left side: 4 cm — right side: 3 cm — bottom: 3 cm
(c) On sheets containing drawings, the surface usable shall not exceed 26.2 cm x 17.0 cm. The sheets shall not contain frames around the usable or used surface. The minimum margins shall be as follows:
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— top: 2.5 cm — left side: 2.5 cm — right side: 1.5 cm — bottom: 1.0 cm
(d) The margins referred to in paragraphs (a) to (c) apply to A4-size sheets, so that, even if the receiving Office accepts other sizes, the A4-size record copy and, when so required, the A4-size search copy shall leave the aforesaid margins.
(e) Subject to paragraph (f) and to Rule 11.8 (b), the margins of the international application, when submitted, must be completely blank.
(f) The top margin may contain in the left-hand corner an indication of the applicant’s file reference, provided that the reference appears within 1.5 cm from the top of the sheet. The number of characters in the applicant’s file reference shall not exceed the maximum fixed by the Administrative Instructions.
11.7 Numbering of Sheets
(a) All the sheets contained in the international application shall be numbered in consecutive arabic numerals.
(b) The numbers shall be centered at the top or bottom of the sheet, but shall not be placed in the margin.
11.8 Numbering of Lines
(a) It is strongly recommended to number every fifth line of each sheet of the description, and of each sheet of claims.
(b) The numbers should appear in the right half of the left margin.
11.9 Writing of Text Matter
(a) The request, the description, the claims and the abstract shall be typed or printed.
(b) Only graphic symbols and characters, chemical or mathematical formulae, and certain characters in the Chinese or Japanese language may, when necessary, be written by hand or drawn.
(c) The typing shall be 1-spaced.
(d) All text matter shall be in characters the capital letters of which are not less than 0.21 cm high, and shall be in a dark, indelible color, satisfying the requirements specified in Rule 11.2.
(e) As far as the spacing of the typing and the size of the characters are concerned, paragraphs (c) and (d) shall not apply to texts in the Chinese or Japanese language.
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11.10 Drawings, Formulae, and Tables, in Text Matter
(a) The request, the description, the claims and the abstract shall not contain drawings.
(b) The description, the claims and the abstract may contain chemical or mathematical formulae.
(c) The description and the abstract may contain tables; any claim may contain tables only if the subject matter of the claim makes the use of tables desirable.
(d) Tables and chemical or mathematical formulae may be placed sideways on the sheet if they cannot be presented satisfactorily in an upright position thereon; sheets on which tables or chemical or mathematical formulae are presented sideways shall be so presented that the tops of the tables or formulae are at the left side of the sheet.
11.11 Words in Drawings
(a) The drawings shall not contain text matter, except a single word or words, when absolutely indispensable, such as “water,” “steam,” “open,” “closed,” “section on AB,” and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catch words indispensable for understanding.
(b) Any words used shall be so placed that, if translated, they may be pasted over without interfering with any lines of the drawings.
11.12 Alterations, Etc.
Each sheet shall be reasonably free from erasures and shall be free from alterations, overwritings, and interlineations. Non-compliance with this Rule may be authorized if the authenticity of the content is not in question and the requirements for good reproduction are not in jeopardy.
11.13 Special Requirements for Drawings
(a) Drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without colorings.
(b) Cross-sections shall be indicated by oblique hatching which should not impede the clear reading of the reference signs and leading lines.
(c) The scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty.
(d) When, in exceptional cases, the scale is given on a drawing, it shall be represented graphically.
(e) All numbers, letters and reference lines, appearing on the drawings, shall be simple and clear. Brackets, circles or inverted commas shall not be used in association with numbers and letters.
(f) All lines in the drawings shall, ordinarily, be drawn with the aid of drafting instruments.
(g) Each element of each figure shall be in proper proportion to each of the other elements in the figure, except where the use of a different proportion is indispensable for the clarity of the figure.
(h) The height of the numbers and letters shall not be less than 0.32 cm. For the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used.
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(i) The same sheet of drawings may contain several figures. Where figures on two or more sheets form in effect a single complete figure, the figures on the several sheets shall be so arranged that the complete figure can be assembled without concealing any part of any of the figures appearing on the various sheets.
(j) The different figures shall be arranged on a sheet or sheets without wasting space, preferably in an upright position, clearly separated from one another. Where the figures are not arranged in an upright position, they shall be presented sideways with the top of the figures at the left side of the sheet.
(k) The different figures shall be numbered in arabic numerals consecutively and independently of the numbering of the sheets.
(l) Reference signs not mentioned in the description shall not appear in the drawings, and vice versa.
(m) The same features, when denoted by reference signs, shall, throughout the international application, be denoted by the same signs.
(n) If the drawings contain a large number of reference signs, it is strongly recommended to attach a separate sheet listing all reference signs and the features denoted by them.
11.14 Later Documents
Rules 10, and 11.1 to 11.13, also apply to any document—for example, corrected pages, amended claims, translations—submitted after the filing of the international application.
Rule 12 Language of the International Application
and Translation for the Purposes of International Search
12.1 Languages Accepted for the Filing of International Applications
(a) An international application shall be filed in any language which the receiving Office accepts for that purpose.
(b) Each receiving Office shall, for the filing of international applications, accept at least one language which is both:
(i) a language accepted by the International Searching Authority, or, if applicable, by at least one of the International Searching Authorities, competent for the international searching of international applications filed with that receiving Office, and
(ii) a language of publication.
(c) Notwithstanding paragraph (a), the request shall be filed in a language which is both a language accepted by the receiving Office under that paragraph and a language of publication.
(d) Notwithstanding paragraph (a), any text matter contained in the sequence listing part of the description referred to in Rule 5.2 (a) shall be presented in accordance with the standard provided for in the Administrative Instructions.
12.2 Language of Changes in the International Application
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(a) Any amendment of the international application shall, subject to Rules 46.3, 55.3 and 66.9, be in the language in which the application is filed.
(b) Any rectification under Rule 91.1 of an obvious error in the international application shall be in the language in which the application is filed, provided that:
(i) where a translation of the international application is required under Rule 12.3 (a), 48.3 (b) or 55.2 (a), rectifications referred to in Rule 91.1 (e) (ii) and (iii) shall be filed in both the language of the application and the language of that translation;
(ii) where a translation of the request is required under Rule 26.3ter (c), rectifications referred to in Rule 91.1 (e) (i) need only be filed in the language of that translation.
(c) Any correction under Rule 26 of a defect in the international application shall be in the language in which the international application is filed. Any correction under Rule 26 of a defect in a translation of the international application furnished under Rule 12.3 or 55.2 (a), or in a translation of the request furnished under Rule 26.3ter (c), shall be in the language of the translation.
12.3 Translation for the Purposes of International Search
(a) Where the language in which the international application is filed is not accepted by the International Searching Authority that is to carry out the international search, the applicant shall, within one month from the date of receipt of the international application by the receiving Office, furnish to that Office a translation of the international application into a language which is all of the following:
(i) a language accepted by that Authority, and
(ii) a language of publication, and
(iii) a language accepted by the receiving Office under Rule 12.1 (a), unless the international application is filed in a language of publication.
(b) Paragraph (a) shall not apply to the request nor to any sequence listing part of the description.
(c) Where, by the time the receiving Office sends to the applicant the notification under Rule 20.5 (c), the applicant has not furnished a translation required under paragraph (a), the receiving Office shall, preferably together with that notification, invite the applicant:
(i) to furnish the required translation within the time limit under paragraph (a);
(ii) in the event that the required translation is not furnished within the time limit under paragraph (a), to furnish it and to pay, where applicable, the late furnishing fee referred to in paragraph (e), within one month from the date of the invitation or two months from the date of receipt of the international application by the receiving Office, whichever expires later.
(d) Where the receiving Office has sent to the applicant an invitation under paragraph (c) and the applicant has not, within the applicable time limit under paragraph (c) (ii), furnished the required translation and paid any required late furnishing fee, the international application shall be considered withdrawn and the receiving Office shall so declare. Any translation and any payment received by the receiving Office before that Office makes the declaration under the previous sentence and before the
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expiration of 15 months from the priority date shall be considered to have been received before the expiration of that time limit.
(e) The furnishing of a translation after the expiration of the time limit under paragraph (a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late furnishing fee equal to 50% of the basic fee.
Rule 13 Unity of Invention
13.1 Requirement
The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”).
13.2 Circumstances in Which the Requirement of Unity of Invention Is to Be Considered Fulfilled
Where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
13.3 Determination of Unity of Invention Not Affected by Manner of Claiming
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
13.4 Dependent Claims
Subject to Rule 13.1, it shall be permitted to include in the same international application a reasonable number of dependent claims, claiming specific forms of the invention claimed in an independent claim, even where the features of any dependent claim could be considered as constituting in themselves an invention.
13.5 Utility Models
Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 13.1 to 13.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least 2 months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.
Rule 13bis Inventions Relating to Biological Material
13bis.1 Definition
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For the purposes of this Rule, “reference to deposited biological material” means particulars given in an international application with respect to the deposit of biological material with a depositary institution or to the biological material so deposited.
13bis.2 References (General)
Any reference to deposited biological material shall be made in accordance with this Rule and, if so made, shall be considered as satisfying the requirements of the national law of each designated State.
13bis.3 References: Contents; Failure to Include Reference or Indication
(a) A reference to deposited biological material shall indicate:
(i) the name and address of the depositary institution with which the deposit was made;
(ii) the date of deposit of the biological material with that institution;
(iii) the accession number given to the deposit by that institution; and
(iv) any additional matter of which the International Bureau has been notified pursuant to Rule 13bis.7 (a) (i), provided that the requirement to indicate that matter was published in the Gazette in accordance with Rule 13bis.7 (c) at least two months before the filing of the international application.
(b) Failure to include a reference to deposited biological material or failure to include, in a reference to deposited biological material, an indication in accordance with paragraph (a), shall have no consequence in any designated State whose national law does not require such reference or such indication in a national application.
13bis.4 References: Time Limit for Furnishing Indications
(a) Subject to paragraphs (b) and (c), if any of the indications referred to in Rule 13bis.3 (a) is not included in a reference to deposited biological material in the international application as filed but is furnished to the International Bureau:
(i) within 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished in time;
(ii) after the expiration of 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished on the last day of that time limit if it reaches the International Bureau before the technical preparations for international publication have been completed.
(b) If the national law applicable by a designated Office so requires in respect of national applications, that Office may require that any of the indications referred to in Rule 13bis.3 (a) be furnished earlier than 16 months from the priority date, provided that the International Bureau has been notified of such requirement pursuant to Rule 13bis.7 (a) (ii) and has published such requirement in the Gazette in accordance with Rule 13bis.7 (c) at least two months before the filing of the international application.
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(c) Where the applicant makes a request for early publication under Article 21 (2) (b), any designated Office may consider any indication not furnished before the technical preparations for international publication have been completed as not having been furnished in time.
(d) The International Bureau shall notify the applicant of the date on which it received any indication furnished under paragraph (a), and
(i) if the indication was received before the technical preparations for international publication have been completed, indicate that date, and include the relevant data from the indication, in the pamphlet published under Rule 48;
(ii) if the indication was received after the technical preparations for international publication have been completed, notify that date and the relevant data from the indication to the designated Offices.
13bis.5 References and Indications for the Purposes of One or More Designated States; Different Deposits for Different Designated States; Deposits with Depositary Institutions other than Those Notified
(a) A reference to deposited biological material shall be considered to be made for the purposes of all designated States, unless it is expressly made for the purposes of certain of the designated States only; the same applies to the indications included in the reference.
(b) References to different deposits of the biological material may be made for different designated States.
(c) Any designated Office may disregard a deposit made with a depositary institution other than one notified by it under Rule 13bis.7 (b).
13bis.6 Furnishing of Samples
Pursuant to Articles 23 and 40, no furnishing of samples of the deposited biological material to which a reference is made in an international application shall, except with the authorization of the applicant, take place before the expiration of the applicable time limits after which national processing may start under the said Articles. However, where the applicant performs the acts referred to in Articles 22 or 39 after international publication but before the expiration of the said time limits, the furnishing of samples of the deposited biological material may take place, once the said acts have been performed. Notwithstanding the previous provision, the furnishing of samples of the deposited biological material may take place under the national law applicable by any designated Office as soon as, under that law, the international publication has the effects of the compulsory national publication of an unexamined national application.
13bis.7 National Requirements: Notification and Publication
(a) Any national Office may notify the International Bureau of any requirement of the national law:
(i) that any matter specified in the notification, in addition to those referred to in Rule 13bis.3 (a) (i), (ii) and (iii), is required to be included in a reference to deposited biological material in a national application;
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(ii) that one or more of the indications referred to in Rule 13bis.3 (a) are required to be included in a national application as filed or are required to be furnished at a time specified in the notification which is earlier than 16 months from the priority date.
(b) Each national Office shall notify the International Bureau of the depositary institutions with which the national law permits deposits of biological materials to be made for the purposes of patent procedure before that Office or, if the national law does not provide for or permit such deposits, of that fact.
(c) The International Bureau shall promptly publish in the Gazette requirements notified to it under paragraph (a) and information notified to it under paragraph (b).
Rule 13ter Nucleotide and/or Amino Acid Sequence Listings
13ter.1 Sequence Listing for International Authorities
(a) Where the International Searching Authority finds that the international application contains disclosure of one or more nucleotide and/or amino acid sequences but:
(i) the international application does not contain a sequence listing complying with the standard provided for in the Administrative Instructions, that Authority may invite the applicant to furnish to it, within a time limit fixed in the invitation, a sequence listing complying with that standard;
(ii) the applicant has not already furnished a sequence listing in computer readable form complying with the standard provided for in the Administrative Instructions, that Authority may invite the applicant to furnish to it, within a time limit fixed in the invitation, a sequence listing in such a form complying with that standard.
(c) If the applicant does not comply with an invitation under paragraph (a) within the time limit fixed in the invitation, the International Searching Authority shall not be required to search the international application to the extent that such non-compliance has the result that a meaningful search cannot be carried out.
(d) Where the International Searching Authority finds that the description does not comply with Rule 5.2 (b), it shall invite the applicant to file the required correction. Rule 26.4 shall apply mutatis mutandis to any correction offered by the applicant. The International Searching Authority shall transmit the correction to the receiving Office and to the International Bureau.
(e) Paragraphs (a) and (c) shall apply mutatis mutandis to the procedure before the International Preliminary Examining Authority.
(f) Any sequence listing not contained in the international application as filed shall not, subject to Article 34, form part of the international application.
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13ter.2 Sequence Listing for Designated Office
Once the processing of the international application has started before a designated Office, Rule 13ter.1 (a) shall apply mutatis mutandis to the procedure before that Office. No designated Office shall require the applicant to furnish to it a sequence listing other than a sequence listing complying with the standard provided for in the Administrative Instructions.
Rule 14 The Transmittal Fee
14.1 The Transmittal Fee
(a) Any receiving Office may require that the applicant pay a fee to it, for its own benefit, for receiving the international application, transmitting copies to the International Bureau and the competent International Searching Authority, and performing all the other tasks which it must perform in connection with the international application in its capacity of receiving Office (“transmittal fee”).
(b) The amount of the transmittal fee, if any, shall be fixed by the receiving Office.
(c) The transmittal fee shall be paid within one month from the date of receipt of the international application. The amount payable shall be the amount applicable on that date of receipt.
Rule 15 The International Fee
15.1 Basic Fee and Designation Fee
Each international application shall be subject to the payment of a fee for the benefit of the International Bureau (“international fee”) to be collected by the receiving Office and consisting of,
(i) a “basic fee,” and
(ii) as many “designation fees” as there are national patents and regional patents sought under Rule 4.9 (a), except that, where Article 44 applies in respect of a designation, only one designation fee shall be due for that designation, and that the Schedule of Fees may indicate a maximum number of designation fees payable.
15.2 Amounts
(a) The amounts of the basic fee and of the designation fee are as set out in the Schedule of Fees.
(b) The basic fee and the designation fee shall be payable in the currency or one of the currencies prescribed by the receiving Office (“prescribed currency”), it being understood that, when transferred by the receiving Office to the International Bureau, they shall be freely convertible into Swiss currency. The amounts of the basic fee and of the designation fee shall be established, for each receiving Office which prescribes the payment of those fees in any currency other than Swiss currency, by the Director General after consultation with the receiving Office of, or acting under Rule 19.1 (b) for, the State whose official currency is the same as the prescribed currency. The amounts so established shall be the equivalents, in round figures, of the amounts in Swiss currency set out in the Schedule of Fees. They shall be notified by the International Bureau to each receiving Office prescribing payment in that prescribed currency and shall be published in the Gazette.
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(c) Where the amounts of the fees set out in the Schedule of Fees are changed, the corresponding amounts in the prescribed currencies shall be applied from the same date as the amounts set out in the amended Schedule of Fees.
(d) Where the exchange rate between Swiss currency and any prescribed currency becomes different from the exchange rate last applied, the Director General shall establish new amounts in the prescribed currency according to directives given by the Assembly. The newly established amounts shall become applicable two months after the date of their publication in the Gazette, provided that the receiving Office referred to in the second sentence of paragraph (b) and the Director General may agree on a date falling during the said two-month period, in which case the said amounts shall become applicable from that date.
15.4 Time Limit for Payment; Amount Payable
(a) The basic fee shall be paid within one month from the date of receipt of the international application. The amount payable shall be the amount applicable on that date of receipt.
(b) The designation fee shall be paid within a time limit of:
(i) one year from the priority date, or
(ii) one month from the date of receipt of the international application if that one-month period expires later than one year from the priority date.
(c) Where the designation fee is paid before the expiration of one month from the date of receipt of the international application, the amount payable shall be the amount applicable on that date of receipt. Where the time limit under paragraph (b) (i) applies and the designation fee is paid before the expiration of that time limit but later than one month from the date of receipt of the international application, the amount payable shall be the amount applicable on the date of payment.
15.5 Fees under Rule 4.9 (c)
(a) Notwithstanding Rule 15.4 (b), the confirmation under Rule 4.9 (c) of any designations made under Rule 4.9 (b) shall be subject to the payment to the receiving Office of as many designation fees (for the benefit of the International Bureau) as there are national patents and regional patents sought by the applicant by virtue of the confirmation, together with a confirmation fee (for the benefit of the receiving Office) equal to 50% of the sum of the designation fees payable under this paragraph. Such fees shall be payable in respect of each designation so confirmed, even if the maximum number of designation fees referred to in item 2 (a) of the Schedule of Fees is already payable or if a designation fee is already payable in respect of the designation under Rule 4.9 (a) of the same State for a different purpose.
(b) Where moneys paid by the applicant within the time limit under Rule 4.9 (b) (ii) are not sufficient to cover the fees due under paragraph (a), the receiving Office shall allocate any moneys paid as specified by the applicant or, in the absence of such specification, as prescribed by the Administrative Instructions.
15.6 Refund
The receiving Office shall refund the international fee to the applicant:
(i) if the determination under Article 11 (1) is negative,
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(ii) if, before the transmittal of the record copy to the International Bureau, the international application is withdrawn or considered withdrawn, or
(iii) if, due to prescriptions concerning national security, the international application is not treated as such.
Rule 16 The Search Fee
16.1 Right to Ask for a Fee
(a) Each International Searching Authority may require that the applicant pay a fee (“search fee”) for its own benefit for carrying out the international search and for performing all other tasks entrusted to International Searching Authorities by the Treaty and these Regulations.
(b) The search fee shall be collected by the receiving Office. The said fee shall be payable in the currency or one of the currencies prescribed by that Office (“receiving Office currency”), it being understood that, if any receiving Office currency is not that, or one of those, in which the International Searching Authority has fixed the said fee (“fixed currency”), it shall, when transferred by the receiving Office to the International Searching Authority, be freely convertible into the currency of the State in which the International Searching Authority has its headquarters (“headquarters currency”). The amount of the search fee in any receiving Office currency, other than the fixed currency, shall be established by the Director General after consultation with the receiving Office of, or acting under Rule 19.1 (b) for, the State whose official currency is the same as the receiving Office currency. The amounts so established shall be the equivalents, in round figures, of the amount established by the International Searching Authority in the headquarters currency. They shall be notified by the International Bureau to each receiving Office prescribing payment in that receiving Office currency and shall be published in the Gazette.
(c) Where the amount of the search fee in the headquarters currency is changed, the corresponding amounts in the receiving Office currencies, other than the fixed currency or currencies, shall be applied from the same date as the changed amount in the headquarters currency.
(d) Where the exchange rate between the headquarters currency and any receiving Office currency, other than the fixed currency or currencies, becomes different from the exchange rate last applied, the Director General shall establish the new amount in the said receiving Office currency according to directives given by the Assembly. The newly established amount shall become applicable two months after its publication in the Gazette, provided that any receiving Office referred to in the third sentence of paragraph (b) and the Director General may agree on a date falling during the said two-month period, in which case the said amount shall become applicable for that Office from that date.
(e) Where, in respect of the payment of the search fee in a receiving Office currency, other than the fixed currency or currencies, the amount actually received by the International Searching Authority in the headquarters currency is less than that fixed by it, the difference will be paid to the International Searching Authority by the International Bureau, whereas, if the amount actually received is more, the difference will belong to the International Bureau.
(f) As to the time limit for payment of the search fee and the amount payable, the provisions of Rule 15.4 (a) relating to the basic fee shall apply mutatis mutandis.
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16.2 Refund
The receiving Office shall refund the search fee to the applicant:
(i) if the determination under Article 11 (1) is negative,
(ii) if, before the transmittal of the search copy to the International Searching Authority, the international application is withdrawn or considered withdrawn, or
(iii) if, due to prescriptions concerning national security, the international application is not treated as such.
16.3 Partial Refund
Where the international application claims the priority of an earlier international application which has been the subject of an international search by the same International Searching Authority, that Authority shall refund the search fee paid in connection with the later international application to the extent and under the conditions provided for in the agreement under Article 16 (3) (b), if the international search report on the later international application could wholly or partly be based on the results of the international search effected on the earlier international application.
Rule 16bis Extension of Time Limits for Payment of Fees
16bis.1 Invitation by the Receiving Office
(a) Where, by the time they are due under Rules 14.1 (c), 15.4 (a) and 16.1 (f), the receiving Office finds that no fees were paid to it, or that the amount paid to it is insufficient to cover the transmittal fee, the basic fee and the search fee, the receiving Office shall invite the applicant to pay to it the amount required to cover those fees, together with, where applicable, the late payment fee under Rule 16bis.2, within a time limit of one month from the date of the invitation.
(b) Where, by the time they are due under Rule 15.4 (b), the receiving Office finds that no fees were paid to it, or that the amount paid to it is insufficient to cover the designation fees necessary to cover all the designations under Rule 4.9 (a), the receiving Office shall invite the applicant to pay to it the amount required to cover those fees, together with, where applicable, the late payment fee under Rule 16bis.2, within a time limit of one month from the date of the invitation. The amount payable in respect of any designation fee shall be the amount applicable on the last day of the one-year period from the priority date if the time limit under Rule 15.4 (b) (i) applies or the amount applicable on the date of receipt of the international application if the time limit under Rule 15.4 (b) (ii) applies.
(c) Where the receiving Office has sent to the applicant an invitation under paragraph (a) or (b) and the applicant has not, within the time limit referred to in that paragraph, paid in full the amount due, including, where applicable, the late payment fee under Rule 16bis.2, the receiving Office shall, subject to paragraph (d):
(i) allocate any moneys paid as specified by the applicant or, in the absence of such specification, as prescribed by the Administrative Instructions,
(ii) make the applicable declaration under Article 14 (3), and
(iii) proceed as provided in Rule 29.
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(d) Any payment received by the receiving Office before that Office sends the invitation under paragraph (a) or (b) shall be considered to have been received before the expiration of the time limit under Rule 14.1 (c), 15.4 (a) or (b) or 16.1 (f), as the case may be.
(e) Any payment received by the receiving Office before that Office makes the applicable declaration under Article 14 (3) shall be considered to have been received before the expiration of the time limit referred to in paragraph (a) or (b).
16bis.2 Late Payment Fee
(a) The payment of fees in response to an invitation under Rule 16bis.1 (a) or (b) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late payment fee. The amount of that fee shall be:
(i) 50% of the amount of unpaid fees which is specified in the invitation, or,
(ii) if the amount calculated under item (i) is less than the transmittal fee, an amount equal to the transmittal fee.
(b) The amount of the late payment fee shall not, however, exceed the amount of the basic fee referred to in item 1(a) of the Schedule of Fees.
Rule 17 The Priority Document
17.1 Obligation to Submit Copy of Earlier National or International Application
(a) Where the priority of an earlier national or international application is claimed under Article 8, a copy of that earlier application, certified by the authority with which it was filed (“the priority document”), shall, unless already filed with the receiving Office together with the international application in which the priority claim is made, and subject to paragraph (b), be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date, provided that any copy of the said earlier application which is received by the International Bureau after the expiration of that time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the date of international publication of the international application.
(b) Where the priority document is issued by the receiving Office, the applicant may, instead of submitting the priority document, request the receiving Office to prepare and transmit the priority document to the International Bureau. Such request shall be made not later than 16 months after the priority date and may be subjected by the receiving Office to the payment of a fee.
(c) If the requirements of neither of the two preceding paragraphs are complied with, any designated State may disregard the priority claim, provided that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable under the circumstances.
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17.2 Availability of Copies
(a) Where the applicant has complied with Rule 17.1 (a) or (b), the International Bureau shall, at the specific request of the designated Office, promptly but not prior to the international publication of the international application, furnish a copy of the priority document to that Office. No such Office shall ask the applicant himself to furnish it with a copy. The applicant shall not be required to furnish a translation to the designated Office before the expiration of the applicable time limit under Article 22. Where the applicant makes an express request to the designated Office under Article 23 (2) prior to the international publication of the international application, the International Bureau shall, at the specific request of the designated Office, furnish a copy of the priority document to that Office promptly after receiving it.
(b) The International Bureau shall not make copies of the priority document available to the public prior to the international publication of the international application.
(c) Where the international application has been published under Article 21, the International Bureau shall furnish a copy of the priority document to any person upon request and subject to reimbursement of the cost unless, prior to that publication:
(i) the international application was withdrawn,
(ii) the relevant priority claim was withdrawn or considered, under Rule 26bis.2 (b), not to have been made.
Rule 18 The Applicant
18.1 Residence and Nationality
(a) Subject to the provisions of paragraphs (b) and (c), the question whether an applicant is a resident or national of the Contracting State of which he claims to be a resident or national shall depend on the national law of that State and shall be decided by the receiving Office.
(b) In any case,
(i) possession of a real and effective industrial or commercial establishment in a Contracting State shall be considered residence in that State, and
(ii) a legal entity constituted according to the national law of a Contracting State shall be considered as a national of that State.
(c) Where the international application is filed with the International Bureau as receiving Office, the International Bureau shall, in the circumstances specified in the Administrative Instructions, request the national Office of, or acting for, the Contracting State concerned to decide the question referred to in paragraph (a). The International Bureau shall inform the applicant of any such request. The applicant shall have an opportunity to submit arguments directly to the national Office. The national Office shall decide the said question promptly.
18.3 Two or More Applicants
If there are two or more applicants, the right to file an international application shall exist if at least one of them is entitled to file an international application according to Article 9.
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18.4 Information on Requirements Under National Law as to Applicants
(c) The International Bureau shall, from time to time, publish information on the various national laws in respect of the question who is qualified (inventor, successor in title of the inventor, owner of the invention, or other) to file a national application and shall accompany such information by a warning that the effect of the international application in any designated State may depend on whether the person designated in the international application as applicant for the purposes of that State is a person who, under the national law of that State, is qualified to file a national application.
Rule 19 The Competent Receiving Office
19.1 Where to File
(a) Subject to the provisions of paragraph (b), the international application shall be filed, at the option of the applicant,
(i) with the national Office of or acting for the Contracting State of which the applicant is a resident,
(ii) with the national Office of or acting for the Contracting State of which the applicant is a national, or
(iii) irrespective of the Contracting State of which the applicant is a resident or national, with the International Bureau.
(b) Any Contracting State may agree with another Contracting State or any intergovernmental organization that the national Office of the latter State or the intergovernmental organization shall, for all or some purposes, act instead of the national Office of the former State as receiving Office for applicants who are residents or nationals of that former State. Notwithstanding such agreement, the national Office of the former State shall be considered the competent receiving Office for the purposes of Article 15 (5).
(c) In connection with any decision made under Article 9 (2), the Assembly shall appoint the national Office or the intergovernmental organization which will act as receiving Office for applications of residents or nationals of States specified by the Assembly. Such appointment shall require the previous consent of the said national Office or intergovernmental organization.
19.2 Two or More Applicants
If there are two or more applicants:
(i) the requirements of Rule 19.1 shall be considered to be met if the national Office with which the international application is filed is the national Office of or acting for a Contracting State of which at least one of the applicants is a resident or a national;
(ii) the international application may be filed with the International Bureau under Rule 19.1 (a) (iii) if at least one of the applicants is a resident or national of a Contracting State.
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19.3 Publication of Fact of Delegation of Duties of Receiving Office
(a) Any agreement referred to in Rule 19.1 (b) shall be promptly notified to the International Bureau by the Contracting State which delegates the duties of the receiving Office to the national Office of or acting for another Contracting State or an intergovernmental organization.
(b) The International Bureau shall, promptly upon receipt, publish the notification in the Gazette.
19.4 Transmittal to the International Bureau as Receiving Office
(a) Where an international application is filed with a national Office which acts as a receiving Office under the Treaty but
(i) that national Office is not competent under Rule 19.1 or 19.2 to receive that international application, or
(ii) that international application is not in a language accepted under Rule 12.1 (a) by that national Office but is in a language accepted under that Rule by the International Bureau as receiving Office, or
(iii) that national Office and the International Bureau agree, for any reason other than those specified under items (i) and (ii), and with the authorization of the applicant, that the procedure under this Rule should apply,
that international application shall, subject to paragraph (b), be considered to have been received by that Office on behalf of the International Bureau as receiving Office under Rule 19.1 (a) (iii).
(b) Where, pursuant to paragraph (a), an international application is received by a national Office on behalf of the International Bureau as receiving Office under Rule 19.1 (a) (iii), that national Office shall, unless prescriptions concerning national security prevent the international application from being so transmitted, promptly transmit it to the International Bureau. Such transmittal may be subjected by the national Office to the payment of a fee, for its own benefit, equal to the transmittal fee charged by that Office under Rule 14. The international application so transmitted shall be considered to have been received by the International Bureau as receiving Office under Rule 19 (1) (a) (iii) on the date of receipt of the international application by that national Office.
(c) For the purposes of Rules 14.1 (c), 15.4 (a) to (c) and 16.1 (f), where the international application was transmitted to the International Bureau under paragraph (b), the date of receipt of the international application shall be considered to be the date on which the international application was actually received by the International Bureau. For the purposes of this paragraph, the last sentence of paragraph (b) shall not apply.
Rule 20 Receipt of the International Application
20.1 Date and Number
(a) Upon receipt of papers purporting to be an international application, the receiving Office shall indelibly mark the date of actual receipt on the request of each copy received and the international application number on each sheet of each copy received.
(b) The place on each sheet where the date or number shall be marked, and other details, shall be specified in the Administrative Instructions.
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20.2 Receipt on Different Days
(a) In cases where all the sheets pertaining to the same purported international application are not received on the same day by the receiving Office, that Office shall correct the date marked on the request (still leaving legible, however, the earlier date or dates already marked) so that it indicates the day on which the papers completing the international application were received, provided that
(i) where no invitation under Article 11 (2) (a) to correct was sent to the applicant, the said papers are received within 30 days from the date on which sheets were first received;
(ii) where an invitation under Article 11 (2) (a) to correct was sent to the applicant, the said papers are received within the applicable time limit under Rule 20.6;
(iii) in the case of Article 14 (2), the missing drawings are received within 30 days from the date on which the incomplete papers were filed;
(iv) the absence or later receipt of any sheet containing the abstract or part thereof shall not, in itself, require any correction of the date marked on the request.
(b) Any sheet received on a date later than the date on which sheets were first received shall be marked by the receiving Office with the date on which it was received.
20.3 Corrected International Application
In the case referred to in Article 11 (2) (b), the receiving Office shall correct the date marked on the request (still leaving legible, however, the earlier date or dates already marked) so that it indicates the day on which the last required correction was received.
20.4 Determination under Article 11 (1)
(a) Promptly after receipt of the papers purporting to be an international application, the receiving Office shall determine whether the papers comply with the requirements of Article 11 (1).
(b) For the purposes of Article 11 (1) (iii) (c), it shall be sufficient to indicate the name of the applicant in a way which allows his identity to be established even if the name is misspelled, the given names are not fully indicated, or, in the case of legal entities, the indication of the name is abbreviated or incomplete.
(c) For the purposes of Article 11 (1) (ii), it shall be sufficient that the part which appears to be a description (other than any sequence listing part thereof) and the part which appears to be a claim or claims be in a language accepted by the receiving Office under Rule 12.1 (a).
(d) If, on October 1, 1997, paragraph (c) is not compatible with the national law applied by the receiving Office, paragraph (c) shall not apply to that receiving Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1997. The information received shall be promptly published by the International Bureau in the Gazette.
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20.5 Positive Determination
(a) If the determination under Article 11 (1) is positive, the receiving Office shall stamp on the request the name of the receiving Office and the words “PCT International Application,” or “Demande internationale PCT.” If the official language of the receiving Office is neither English nor French, the words “International Application” or “Demande internationale” may be accompanied by a translation of these words in the official language of the receiving Office.
(b) The copy whose request has been so stamped shall be the record copy of the international application.
(c) The receiving Office shall promptly notify the applicant of the international application number and the international filing date. At the same time, it shall send to the International Bureau a copy of the notification sent to the applicant, except where it has already sent, or is sending at the same time, the record copy to the International Bureau under Rule 22.1 (a).
20.6 Invitation to Correct
(a) The invitation to correct under Article 11 (2) shall specify the requirement provided for under Article 11 (1) which, in the opinion of the receiving Office, has not been fulfilled.
(b) The receiving Office shall promptly mail the invitation to the applicant and shall fix a time limit, reasonable under the circumstances of the case, for filing the correction. The time limit shall not be less than 10 days, and shall not exceed 1 month, from the date of the invitation. If such time limit expires after the expiration of 1 year from the filing date of any application whose priority is claimed, the receiving Office may call this circumstance to the attention of the applicant.
20.7 Negative Determination
If the receiving Office does not, within the prescribed time limit, receive a reply to its invitation to correct, or if the correction offered by the applicant still does not fulfil the requirements provided for under Article 11 (1), it shall:
(i) promptly notify the applicant that his application is not and will not be treated as an international application and shall indicate the reasons therefor,
(ii) notify the International Bureau that the number it has marked on the papers will not be used as an international application number,
(iii) keep the papers constituting the purported international application and any correspondence relating thereto as provided in Rule 93.1, and
(iv) send a copy of the said papers to the International Bureau where, pursuant to a request by the applicant under Article 25 (1), the International Bureau needs such a copy and specially asks for it.
20.8 Error by the Receiving Office
If the receiving Office later discovers, or on the basis of the applicant’s reply realizes, that it has erred in issuing an invitation to correct since the requirements provided for under Article 11 (1) were fulfilled when the papers were received, it shall proceed as provided in Rule 20.5.
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20.9 Certified Copy for the Applicant
Against payment of a fee, the receiving Office shall furnish to the applicant, on request, certified copies of the international application as filed and of any corrections thereto.
Rule 21 Preparation of Copies
21.1 Responsibility of the Receiving Office
(a) Where the international application is required to be filed in one copy, the receiving Office shall be responsible for preparing the home copy and the search copy required under Article 12 (1).
(b) Where the international application is required to be filed in two copies, the receiving Office shall be responsible for preparing the home copy.
(c) If the international application is filed in less than the number of copies required under Rule 11.1 (b), the receiving Office shall be responsible for the prompt preparation of the number of copies required, and shall have the right to fix a fee for performing that task and to collect such fee from the applicant.
Rule 22 Transmittal of the Record Copy and Translation
22.1 Procedure
(a) If the determination under Article 11 (1) is positive, and unless prescriptions concerning national security prevent the international application from being treated as such, the receiving Office shall transmit the record copy to the International Bureau. Such transmittal shall be effected promptly after receipt of the international application or, if a check to preserve national security must be performed, as soon as the necessary clearance has been obtained. In any case, the receiving Office shall transmit the record copy in time for it to reach the International Bureau by the expiration of the 13th month from the priority date. If the transmittal is effected by mail, the receiving Office shall mail the record copy not later than 5 days prior to the expiration of the 13th month from the priority date.
(b) If the International Bureau has received a copy of the notification under Rule 20.5 (c) but is not, by the expiration of 13 months from the priority date, in possession of the record copy, it shall remind the receiving Office that it should transmit the record copy to the International Bureau promptly.
(c) If the International Bureau has received a copy of the notification under Rule 20.5 (c) but is not, by the expiration of 14 months from the priority date, in possession of the record copy, it shall notify the applicant and the receiving Office accordingly.
(d) After the expiration of 14 months from the priority date, the applicant may request the receiving Office to certify a copy of his international application as being identical with the international application as filed and may transmit such certified copy to the International Bureau.
(e) Any certification under paragraph (d) shall be free of charge and may be refused only on any of the following grounds:
(i) the copy which the receiving Office has been requested to certify is not identical with the international application as filed;
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(ii) prescriptions concerning national security prevent the international application from being treated as such;
(iii) the receiving Office has already transmitted the record copy to the International Bureau and that Bureau has informed the receiving Office that it has received the record copy.
(f) Unless the International Bureau has received the record copy, or until it receives the record copy, the copy certified under paragraph (e) and received by the International Bureau shall be considered to be the record copy.
(g) If, by the expiration of the time limit applicable under Article 22, the applicant has performed the acts referred to in that Article but the designated Office has not been informed by the International Bureau of the receipt of the record copy, the designated Office shall inform the International Bureau. If the International Bureau is not in possession of the record copy, it shall promptly notify the applicant and the receiving Office unless it has already notified them under paragraph (c).
(h) Where the international application is to be published in the language of a translation furnished under Rule 12.3, that translation shall be transmitted by the receiving Office to the International Bureau together with the record copy under paragraph (a) or, if the receiving Office has already transmitted the record copy to the International Bureau under that paragraph, promptly after receipt of the translation.
22.3 Time Limit under Article 12 (3)
The time limit referred to in Article 12 (3) shall be 3 months from the date of the notification sent by the International Bureau to the applicant under Rule 22.1 (c) or (g).
Rule 23 Transmittal of the Search Copy, Translation and Sequence Listing
23.1 Procedure
(a) Where no translation of the international application is required under Rule 12.3 (a), the search copy shall be transmitted by the receiving Office to the International Searching Authority at the latest on the same day as the record copy is transmitted to the International Bureau unless no search fee has been paid. In the latter case, it shall be transmitted promptly after payment of the search fee.
(b) Where a translation of the international application is furnished under Rule 12.3, a copy of that translation and of the request, which together shall be considered to be the search copy under Article 12 (1), shall be transmitted by the receiving Office to the International Searching Authority, unless no search fee has been paid. In the latter case, a copy of the said translation and of the request shall be transmitted promptly after payment of the search fee.
(c) Any sequence listing in computer readable form which is furnished to the receiving Office shall be transmitted by that Office to the International Searching Authority.
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Rule 24 Receipt of the Record Copy by the International Bureau
24.2 Notification of Receipt of the Record Copy
(a) The International Bureau shall promptly notify:
(i) the applicant,
(ii) the receiving Office, and
(iii) the International Searching Authority (unless it has informed the International Bureau that it wishes not to be so notified),
of the fact and the date of receipt of the record copy. The notification shall identify the international application by its number, the international filing date and the name of the applicant, and shall indicate the filing date of any earlier application whose priority is claimed. The notification sent to the applicant shall also contain a list of the States designated under Rule 4.9 (a) and, where applicable, of those States whose designations have been confirmed under Rule 4.9 (c).
(b) Each designated Office which has informed the International Bureau that it wishes to receive the notification under paragraph (a) prior to the communication under Rule 47.1 shall be so notified by the International Bureau:
(i) if the designation concerned was made under Rule 4.9 (a), promptly after the receipt of the record copy;
(ii) if the designation concerned was made under Rule 4.9 (b), promptly after the International Bureau has been informed by the receiving Office of the confirmation of that designation.
(c) If the record copy is received after the expiration of the time limit fixed in Rule 22.3, the International Bureau shall promptly notify the applicant, the receiving Office, and the International Searching Authority, accordingly.
Rule 25 Receipt of the Search Copy by the International Searching Authority
25.1 Notification of Receipt of the Search Copy
The International Searching Authority shall promptly notify the International Bureau, the applicant, and—unless the International Searching Authority is the same as the receiving Office—the receiving Office, of the fact and the date of receipt of the search copy.
Rule 26 Checking by, and Correcting before, the Receiving Office of Certain Elements of
the International Application
26.1 Time Limit for Check
(a) The receiving Office shall issue the invitation to correct provided for in Article 14 (1) (b) as soon as possible, preferably within 1 month from the receipt of the international application.
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(b) If the receiving Office issues an invitation to correct the defect referred to in Article 14 (1) (a) (iii) or (iv) (missing title or missing abstract), it shall notify the International Searching Authority accordingly.
26.2 Time Limit for Correction
The time limit referred to in Article 14 (1) (b) shall be reasonable under the circumstances and shall be fixed in each case by the receiving Office. It shall not be less than 1 month from the date of the invitation to correct. It may be extended by the receiving Office at any time before a decision is taken.
26.3 Checking of Physical Requirements Under Article 14 (1) (a) (v)
(a) Where the international application is filed in a language of publication, the receiving Office shall check:
(i) the international application for compliance with the physical requirements referred to in Rule 11 only to the extent that compliance therewith is necessary for the purpose of reasonably uniform international publication;
(ii) any translation furnished under Rule 12.3 for compliance with the physical requirements referred to in Rule 11 to the extent that compliance therewith is necessary for the purpose of satisfactory reproduction.
(b) Where the international application is filed in a language which is not a language of publication, the receiving Office shall check:
(i) the international application for compliance with the physical requirements referred to in Rule 11 only to the extent that compliance therewith is necessary for the purpose of satisfactory reproduction;
(ii) any translation furnished under Rule 12.3 and the drawings for compliance with the physical requirements referred to in Rule 11 to the extent that compliance therewith is necessary for the purpose of reasonably uniform international publication.
26.3bis Invitation under Article 14 (1) (b) to Correct Defects Under Rule 11
The receiving Office shall not be required to issue the invitation under Article 14 (1) (b) to correct a defect under Rule 11 where the physical requirements referred to in that Rule are complied with to the extent required under Rule 26.3.
26.3ter Invitation to Correct Defects Under Article 3(4)(i)
(a) Where the abstract or any text matter of the drawings is filed in a language which is different from the language of the description and the claims, the receiving Office shall, unless
(i) a translation of the international application is required under Rule 12.3 (a), or
(ii) the abstract or the text matter of the drawings is in the language in which the international application is to be published,
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invite the applicant to furnish a translation of the abstract or the text matter of the drawings into the language in which the international application is to be published. Rules 26.1 (a), 26.2, 26.3, 26.3bis, 26.5 and 29.1 shall apply mutatis mutandis.
(b) If, on October 1, 1997, paragraph (a) is not compatible with the national law applied by the receiving Office, paragraph (a) shall not apply to that receiving Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1997. The information received shall be promptly published by the International Bureau in the Gazette.
(c) Where the request does not comply with Rule 12.1(c), the receiving Office shall invite the applicant to file a translation so as to comply with that Rule. Rules 3, 26.1 (a), 26.2, 26.5 and 29.1 shall apply mutatis mutandis.
(d) If, on October 1, 1997, paragraph (c) is not compatible with the national law applied by the receiving Office, paragraph (c) shall not apply to that receiving Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1997. The information received shall be promptly published by the International Bureau in the Gazette.
26.4 Procedure
Any correction offered to the receiving Office may be stated in a letter addressed to that Office if the correction is of such a nature that it can be transferred from the letter to the record copy without adversely affecting the clarity and the direct reproducibility of the sheet on to which the correction is to be transferred; otherwise, the applicant shall be required to submit a replacement sheet embodying the correction and the letter accompanying the replacement sheet shall draw attention to the differences between the replaced sheet and the replacement sheet.
26.5 Decision of the Receiving Office
The receiving Office shall decide whether the applicant has submitted the correction within the time limit under Rule 26.2 and, if the correction has been submitted within that time limit, whether the international application so corrected is or is not to be considered withdrawn, provided that no international application shall be considered withdrawn for lack of compliance with the physical requirements referred to in Rule 11 if it complies with those requirements to the extent necessary for the purpose of reasonably uniform international publication.
26.6 Missing Drawings
(a) If, as provided in Article 14 (2), the international application refers to drawings which in fact are not included in that application, the receiving Office shall so indicate in the said application.
(b) The date on which the applicant receives the notification provided for in Article 14 (2) shall have no effect on the time limit fixed under Rule 20.2 (a) (iii).
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Rule 26bis. Correction or Addition of Priority Claim
26bis.1 Correction or Addition of Priority Claim
(a) The applicant may correct or add a priority claim by a notice submitted to the receiving Office or the International Bureau within a time limit of 16 months from the priority date or, where the correction or addition would cause a change in the priority date, 16 months from the priority date as so changed, whichever 16-month period expires first, provided that such a notice may be submitted until the expiration of four months from the international filing date. The correction of a priority claim may include the addition of any indication referred to in Rule 4.10.
(b) Any notice referred to in paragraph (a) received by the receiving Office or the International Bureau after the applicant has made a request for early publication under Article 21 (2) (b) shall be considered not to have been submitted, unless that request is withdrawn before the technical preparations for international publication have been completed.
(c) Where the correction or addition of a priority claim causes a change in the priority date, any time limit which is computed from the previously applicable priority date and which has not already expired shall be computed from the priority date as so changed.
26bis.2 Invitation to Correct Defects in Priority Claims
(a) Where the receiving Office or, if the receiving Office fails to do so, the International Bureau, finds that a priority claim does not comply with the requirements of Rule 4.10 or that any indication in a priority claim is not the same as the corresponding indication appearing in the priority document, the receiving Office or the International Bureau, as the case may be, shall invite the applicant to correct the priority claim.
(b) If, in response to an invitation under paragraph (a), the applicant does not, before the expiration of the time limit under Rule 26bis.1 (a), submit a notice correcting the priority claim so as to comply with the requirements of Rule 4.10, that priority claim shall, for the purposes of the procedure under the Treaty, be considered not to have been made and the receiving Office or the International Bureau, as the case may be, shall so declare and shall inform the applicant accordingly, provided that a priority claim shall not be considered not to have been made only because the indication of the number of the earlier application referred to in Rule 4.10 (a) (ii) is missing or because an indication in the priority claim is not the same as the corresponding indication appearing in the priority document.
(c) Where the receiving Office or the International Bureau has made a declaration under paragraph (b), the International Bureau shall, upon request made by the applicant and received by the International Bureau prior to the completion of the technical preparations for international publication, and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, publish, together with the international application, information concerning the priority claim which was considered not to have been made. A copy of that request shall be included in the communication under Article 20 where a copy of the pamphlet is not used for that communication or where the international application is not published by virtue of Article 64 (3).
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Rule 27 Lack of Payment of Fees
27.1 Fees
(a) For the purposes of Article 14 (3) (a), “fees prescribed under Article 3 (4) (iv)” means: the transmittal fee (Rule 14), the basic fee part of the international fee (Rule 15.1 (i)), the search fee (Rule 16), and, where required, the late payment fee (Rule 16bis.2).
(b) For the purposes of Article 14 (3) (a) and (b), “the fee prescribed under Article 4 (2)” means the designation fee part of the international fee (Rule 15.1 (ii)) and, where required, the late payment fee (Rule 16bis.2).
Rule 28 Defects Noted by the International Bureau
28.1 Note on Certain Defects
(a) If, in the opinion of the International Bureau, the international application contains any of the defects referred to in Article 14 (1) (a) (i), (ii), or (v), the International Bureau shall bring such defects to the attention of the receiving Office.
(b) The receiving Office shall, unless it disagrees with the said opinion, proceed as provided in Article 14 (1) (b) and Rule 26.
Rule 29 International Applications or Designations Considered Withdrawn
29.1 Finding by Receiving Office
(a) If the receiving Office declares, under Article 14 (1) (b) and Rule 26.5 (failure to correct certain defects), or under Article 14 (3) (a) (failure to pay the prescribed fees under Rule 27.1 (a)), or under Article 14 (4) (later finding of non-compliance with the requirements listed in items (i) to (iii) of Article 11 (1)), or under Rule 12.3 (d) (failure to furnish a required translation or, where applicable, to pay a late furnishing fee), or under Rule 92.4 (g) (i) (failure to furnish the original of a document), that the international application is considered withdrawn:
(i) the receiving Office shall transmit the record copy (unless already transmitted), and any correction offered by the applicant, to the International Bureau;
(ii) the receiving Office shall promptly notify both the applicant and the International Bureau of the said declaration, and the International Bureau shall in turn notify each designated Office which has already been notified of its designation;
(iii) the receiving Office shall not transmit the search copy as provided in Rule 23, or, if such copy has already been transmitted, it shall notify the International Searching Authority of the said declaration;
(iv) the International Bureau shall not be required to notify the applicant of the receipt of the record copy.
(b) If the receiving Office declares under Article 14 (3) (b) (failure to pay the prescribed designation fee under Rule 27.1 (b)) that the designation of any given State is considered withdrawn,
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the receiving Office shall promptly notify both the applicant and the International Bureau of the said declaration. The International Bureau shall in turn notify each designated Office which has already been notified of its designation.
29.3 Calling Certain Facts to the Attention of the Receiving Office
If the International Bureau or the International Searching Authority considers that the receiving Office should make a finding under Article 14 (4), it shall call the relevant facts to the attention of the receiving Office.
29.4 Notification of Intent to Make Declaration under Article 14 (4)
Before the receiving Office issues any declaration under Article 14 (4), it shall notify the applicant of its intent to issue such declaration and the reasons therefor. The applicant may, if he disagrees with the tentative finding of the receiving Office, submit arguments to that effect within 1 month from the notification.
Rule 30 Time Limit under Article 14 (4)
30.1 Time Limit
The time limit referred to in Article 14 (4) shall be 4 months from the international filing date.
Rule 31 Copies Required under Article 13
31.1 Request for Copies
(a) Requests under Article 13 (1) may relate to all, some kinds of, or individual international applications in which the national Office making the request is designated. Requests for all or some kinds of such international applications must be renewed for each year by means of a notification addressed by that Office before November 30 of the preceding year to the International Bureau.
(b) Requests under Article 13 (2) (b) shall be subject to the payment of a fee covering the cost of preparing and mailing the copy.
31.2 Preparation of Copies
The preparation of copies required under Article 13 shall be the responsibility of the International Bureau.
Rule 32 Extension of Effects of International Application to Certain Successor States
32.1 Request for Extension of International Application to Successor State
(a) The effects of any international application whose international filing date falls in the period defined in paragraph (b) may, subject to the performance by the applicant of the acts specified in paragraph (c), be extended to a State (“the successor State”) whose territory was, before the independence of that State, part of the territory of a Contracting State which subsequently ceased to exist (“the predecessor State”), provided that the successor State has become a Contracting State through the deposit, with the Director General, of a declaration of continuation the effect of which is that the Treaty is applied by the successor State.
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(b) The period referred to in paragraph (a) starts on the day following the last day of the existence of the predecessor State and ends two months after the date on which the declaration referred to in paragraph (a) was notified by the Director General to the Governments of the States party to the Paris Convention for the Protection of Industrial Property. However, where the date of independence of the successor State is earlier than the date of the day following the last day of the existence of the predecessor State, the successor State may declare that the said period starts on the date of its independence; such a declaration shall be made together with the declaration referred to in paragraph (a) and shall specify the date of independence.
(c) In respect of any international application whose filing date falls within the applicable period under paragraph (b), the International Bureau shall send the applicant a notification informing him that he may make a request for extension by performing, within three months from the date of that notification, the following acts:
(i) filing with the International Bureau the request for extension;
(ii) paying to the International Bureau an extension fee in Swiss francs, the amount of which shall be the same as the amount of the designation fee referred to in Rule 15.2 (a).
(d) This Rule shall not apply to the Russian Federation.
32.2 Effects of Extension to Successor State
(a) Where a request for extension is made in accordance with Rule 32.1,
(i) the successor State shall be considered as having been designated in the international application, and
(ii) the applicable time limit under Article 22 or 39 (1) in relation to that State shall be extended until the expiration of at least three months from the date of the request for extension.
(b) Where, in the case of a successor State which is bound by Chapter II of the Treaty, the request for extension was made after, but the demand was made before, the expiration of the 19th month from the priority date, and a later election is made of the successor State within three months from the date of the request for extension, the applicable time limit under paragraph (a) (ii) shall be at least 30 months from the priority date.
(c) The successor State may fix time limits which expire later than those provided in paragraphs (a) (ii) and (b). The International Bureau shall publish information on such time limits in the Gazette.
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Rule 33 Relevant Prior Art for the International Search
33.1 Relevant Prior Art for the International Search
(a) For the purposes of Article 15 (2), relevant prior art shall consist of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) and which is capable of being of assistance in determining that the claimed invention is or is not new and that it does or does not involve an inventive step (i.e., that it is or is not obvious), provided that the making available to the public occurred prior to the international filing date.
(b) When any written disclosure refers to an oral disclosure, use, exhibition, or other means whereby the contents of the written disclosure were made available to the public, and such making available to the public occurred on a date prior to the international filing date, the international search report shall separately mention that fact and the date on which it occurred if the making available to the public of the written disclosure occurred on a date which is the same as, or later than, the international filing date.
(c) Any published application or any patent whose publication date is the same as, or later than, but whose filing date, or, where applicable, claimed priority date, is earlier than the international filing date of the international application searched, and which would constitute relevant prior art for the purposes of Article 15 (2) had it been published prior to the international filing date, shall be specially mentioned in the international search report.
33.2 Fields to be Covered by the International Search
(a) The international search shall cover all those technical fields, and shall be carried out on the basis of all those search files, which may contain material pertinent to the invention.
(b) Consequently, not only shall the art in which the invention is classifiable be searched but also analogous arts regardless of where classified.
(c) The question what arts are, in any given case, to be regarded as analogous shall be considered in the light of what appears to be the necessary essential function or use of the invention and not only the specific functions expressly indicated in the international application.
(d) The international search shall embrace all subject matter that is generally recognized as equivalent to the subject matter of the claimed invention for all or certain of its features, even though, in its specifics, the invention as described in the international application is different.
33.3 Orientation of the International Search
(a) International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any) and with particular emphasis on the inventive concept towards which the claims are directed.
(b) In so far as possible and reasonable, the international search shall cover the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended.
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Rule 34 Minimum Documentation
34.1 Definition
(a) The definitions contained in Article 2 (i) and (ii) shall not apply for the purposes of this Rule.
(b) The documentation referred to in Article 15 (4) (“minimum documentation”) shall consist of:
(i) the “national patent documents” as specified in paragraph (c),
(ii) the published international (PCT) applications, the published regional applications for patents and inventors’ certificates, and the published regional patents and inventors’ certificates,
(iii) such other published items of non-patent literature as the International Searching Authorities shall agree upon and which shall be published in a list by the International Bureau when agreed upon for the first time and whenever changed.
(c) Subject to paragraphs (d) and (e), the “national patent documents” shall be the following:
(i) the patents issued in and after 1920 by France, the former Reichspatentamt of Germany, Japan, the former Soviet Union, Switzerland (in the French and German languages only), the United Kingdom, and the United States of America,
(ii) the patents issued by the Federal Republic of Germany and the Russian Federation,
(iii) the patent applications, if any, published in and after 1920 in the countries referred to in items (i) and (ii),
(iv) the inventors’ certificates issued by the former Soviet Union,
(v) the utility certificates issued by, and the published applications for utility certificates of, France,
(vi) such patents issued by, and such patent applications published in, any other country after 1920 as are in the English, French, German or Spanish language and in which no priority is claimed, provided that the national Office of the interested country sorts out these documents and places them at the disposal of each International Searching Authority.
(d) Where an application is republished once (for example, an Offenlegungschrift as an Auslegeschrift) or more than once, no International Searching Authority shall be obliged to keep all versions in its documentation; consequently, each such Authority shall be entitled not to keep more than one version. Furthermore, where an application is granted and is issued in the form of a patent or a utility certificate (France), no International Searching Authority shall be obliged to keep both the application and the patent or utility certificate (France) in its documentation; consequently, each such Authority shall be entitled to keep either the application only or the patent or utility certificate (France) only.
(e) Any International Searching Authority whose official language, or one of whose official languages, is not Japanese, Russian or Spanish is entitled not to include in its documentation those patent documents of Japan, the Russian Federation and the former Soviet Union as well as those patent documents in the Spanish language, respectively, for which no abstracts in the English
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language are generally available. English abstracts becoming generally available after the date of entry into force of these Regulations shall require the inclusion of the patent documents to which the abstracts refer no later than six months after such abstracts become generally available. In case of the interruption of abstracting services in English in technical fields in which English abstracts were formerly generally available, the Assembly shall take appropriate measures to provide for the prompt restoration of such services in the said fields.
(f) For the purposes of this Rule, applications which have only been laid open for public inspection are not considered published applications.
Rule 35 The Competent International Searching Authority
35.1 When Only One International Searching Authority is Competent
Each receiving Office shall, in accordance with the terms of the applicable agreement referred to in Article 16 (3) (b), inform the International Bureau which International Searching Authority is competent for the searching of the international applications filed with it, and the International Bureau shall promptly publish such information.
35.2 When Several International Searching Authorities are Competent
(a) Any receiving Office may, in accordance with the terms of the applicable agreement referred to in Article 16 (3) (b), specify several International Searching Authorities:
(i) by declaring all of them competent for any international application filed with it, and leaving the choice to the applicant, or
(ii) by declaring one or more competent for certain kinds of international applications filed with it, and declaring one or more others competent for other kinds of international applications filed with it, provided that, for those kinds of international applications for which several International Searching Authorities are declared to be competent, the choice shall be left to the applicant.
(b) Any receiving Office availing itself of the faculty provided in paragraph (a) shall promptly inform the International Bureau, and the International Bureau shall promptly publish such information.
35.3 When the International Bureau Is Receiving Office Under Rule 19.1 (a) (iii)
(a) Where the international application is filed with the International Bureau as receiving Office under Rule 19.1 (a) (iii), an International Searching Authority shall be competent for the searching of that international application if it would have been competent had that international application been filed with a receiving Office competent under Rule 19.1 (a) (i) or (ii), (b) or (c) or Rule 19.2 (i).
(b) Where two or more International Searching Authorities are competent under paragraph (a), the choice shall be left to the applicant.
(c) Rules 35.1 and 35.2 shall not apply to the International Bureau as receiving Office under Rule 19.1 (a) (iii).
Rule 36 Minimum Requirements for International Searching Authorities
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36.1 Definition of Minimum Requirements
The minimum requirements referred to in Article 16 (3) (c) shall be the following:
(i) the national Office or intergovernmental organization must have at least 100 full-time employees with sufficient technical qualifications to carry out searches;
(ii) that Office or organization must have in its possession, or have access to, at least the minimum documentation referred to in Rule 34, properly arranged for search purposes, on paper, in microform or stored on electronic media;
(iii) that Office or organization must have a staff which is capable of searching the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated.
Rule 37 Missing or Defective Title
37.1 Lack of Title
If the international application does not contain a title and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.
37.2 Establishment of Title
If the international application does not contain a title and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish a title, or if the said Authority finds that the title does not comply with Rule 4.3, it shall itself establish a title. Such title shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1 (b) and the International Searching Authority so wishes, in the language of that translation.
Rule 38 Missing or Defective Abstract
38.1 Lack of Abstract
If the international application does not contain an abstract and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.
38.2 Establishment of Abstract
(a) If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall itself establish an abstract. Such abstract shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1 (b) and the International Searching Authority so wishes, in the language of that translation.
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(b) The applicant may, within one month from the date of mailing of the international search report, submit comments on the abstract established by the International Searching Authority. Where that Authority amends the abstract established by it, it shall notify the amendment to the International Bureau.
Rule 39 Subject Matter under Article 17 (2) (a) (i)
39.1 Definition
No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following:
(i) scientific and mathematical theories,
(ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
(iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,
(iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
(v) mere presentations of information,
(vi) computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs.
Rule 40 Lack of Unity of Invention (International Search)
40.1 Invitation to Pay
The invitation to pay additional fees provided for in Article 17 (3) (a) shall specify the reasons for which the international application is not considered as complying with the requirement of unity of invention and shall indicate the amount to be paid.
40.2 Additional Fees
(a) The amount of the additional fee due for searching under Article 17 (3) (a) shall be determined by the competent International Searching Authority.
(b) The additional fee due for searching under Article 17 (3) (a) shall be payable direct to the International Searching Authority.
(c) Any applicant may pay the additional fee under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the amount of the required additional fee is excessive. Such protest shall be examined by a three-member board or other special instance of the International Searching Authority or any competent higher authority, which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fee. On the request of the applicant,
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the text of both the protest and the decision thereon shall be notified to the designated Offices together with the international search report. The applicant shall submit any translation thereof with the furnishing of the translation of the international application required under Article 22.
(d) The three-member board, special instance or competent higher authority, referred to in paragraph (c), shall not comprise any person who made the decision which is the subject of the protest.
(e) Where the applicant has, under paragraph (c), paid an additional fee under protest, the International Searching Authority may, after a prior review of the justification for the invitation to pay an additional fee, require that the applicant pay a fee for the examination of the protest (“protest fee”). The protest fee shall be paid within one month from the date of the notification to the applicant of the result of the review. If the protest fee is not so paid, the protest shall be considered withdrawn. The protest fee shall be refunded to the applicant where the three-member board, special instance or higher authority referred to in paragraph (c) finds that the protest was entirely justified.
40.3 Time Limit
The time limit provided for in Article 17 (3) (a) shall be fixed, in each case, according to the circumstances of the case, by the International Searching Authority; it shall not be shorter than 15 or 30 days, respectively, depending on whether the applicant’s address is in the same country as or in a different country from that in which the International Searching Authority is located, and it shall not be longer than 45 days, from the date of the invitation.
Rule 41 Earlier Search Other Than International Search
41.1 Obligation to Use Results; Refund of Fee
If reference has been made in the request, in the form provided for in Rule 4.11, to an international-type search carried out under the conditions set out in Article 15 (5) or to a search other than an international or international-type search, the International Searching Authority shall, to the extent possible, use the results of the said search in establishing the international search report on the international application. The International Searching Authority shall refund the search fee, to the extent and under the conditions provided for in the agreement under Article 16 (3) (b) or in a communication addressed to and published in the Gazette by the International Bureau, if the international search report could wholly or partly be based on the results of the said search.
Rule 42 Time Limit for International Search
42.1 Time Limit for International Search
The time limit for establishing the international search report or the declaration referred to in Article 17 (2) (a) shall be 3 months from the receipt of the search copy by the International Searching Authority, or 9 months from the priority date, whichever time limit expires later.
Rule 43 The International Search Report
43.1 Identifications
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The international search report shall identify the International Searching Authority which established it by indicating the name of such Authority, and the international application by indicating the international application number, the name of the applicant, and the international filing date.
43.2 Dates
The international search report shall be dated and shall indicate the date on which the international search was actually completed. It shall also indicate the filing date of any earlier application whose priority is claimed or, if the priority of more than one earlier application is claimed, the filing date of the earliest among them.
43.3 Classification
(a) The international search report shall contain the classification of the subject matter at least according to the International Patent Classification.
(b) Such classification shall be effected by the International Searching Authority.
43.4 Language
Every international search report and any declaration made under Article 17 (2) (a) shall be in the language in which the international application to which it relates is to be published or, if a translation into another language was transmitted under Rule 23.1 (b) and the International Searching Authority so wishes, in the language of that translation.
43.5 Citations
(a) The international search report shall contain the citations of the documents considered to be relevant.
(b) The method of identifying any cited document shall be regulated by the Administrative Instructions.
(c) Citations of particular relevance shall be specially indicated.
(d) Citations which are not relevant to all the claims shall be cited in relation to the claim or claims to which they are relevant.
(e) If only certain passages of the cited document are relevant or particularly relevant, they shall be identified, for example, by indicating the page, the column, or the lines, where the passage appears. If the entire document is relevant but some passages are of particular relevance, such passages shall be identified unless such identification is not practicable.
43.6 Fields Searched
(a) The international search report shall list the classification identification of the fields searched. If that identification is effected on the basis of a classification other than the International Patent Classification, the International Searching Authority shall publish the classification used.
(b) If the international search extended to patents, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, utility certificates of addition, or published applications for any of those kinds of protection, of States, periods, or languages, not included in the minimum documentation as defined in Rule 34, the international search
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report shall, when practicable, identify the kinds of documents, the States, the periods, and the languages to which it extended. For the purposes of this paragraph, Article 2 (ii) shall not apply.
(c) If the international search was based on, or was extended to, any electronic data base, the international search report may indicate the name of the data base and, where considered useful to others and practicable, the search terms used.
43.7 Remarks Concerning Unity of Invention
If the applicant paid additional fees for the international search, the international search report shall so indicate. Furthermore, where the international search was made on the main invention only or on less than all the inventions (Article 17 (3) (a)), the international search report shall indicate what parts of the international application were and what parts were not searched.
43.8 Authorized Officer
The international search report shall indicate the name of the officer of the International Searching Authority responsible for that report.
43.9 Additional Matter
The international search report shall contain no matter other than that specified in Rules 33.1 (b) and (c), 43.1 to 43.3, 43.5 to 43.8, and 44.2, and the indication referred to in Article 17(2) (b), provided that the Administrative Instructions may permit the inclusion in the international search report of any additional matter specified in the Administrative Instructions. The international search report shall not contain, and the Administrative Instructions shall not permit the inclusion of, any expressions of opinion, reasoning, arguments, or explanations.
43.10 Form
The physical requirements as to form of the international search report shall be prescribed by the Administrative Instructions.
Rule 44 Transmittal of the International Search Report, Etc.
44.1 Copies of Report or Declaration
The International Searching Authority shall, on the same day, transmit the copy of the international search report or the declaration referred to in Article 17 (2) (a) to the International Bureau and one copy to the applicant.
44.2 Title or Abstract
The international search report shall either state that the International Searching Authority approves the title and the abstract as submitted by the applicant or be accompanied by the text of the title and/or abstract as established by the International Searching Authority under Rules 37 and 38.
44.3 Copies of Cited Documents
(a) The request referred to in Article 20 (3) may be presented any time during 7 years from the international filing date of the international application to which the international search report relates.
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(b) The International Searching Authority may require that the party (applicant or designated Office) presenting the request pay to it the cost of preparing and mailing the copies. The level of the cost of preparing copies shall be provided for in the agreements referred to in Article 16 (3) (b) between the International Searching Authorities and the International Bureau.
(d) Any International Searching Authority may perform the obligations referred to in paragraphs (a) and (b) through another agency responsible to it.
Rule 45 Translation of the International Search Report
45.1 Languages
International search reports and declarations referred to in Article 17 (2) (a) shall, when not in English, be translated into English.
Rule 46 Amendment of Claims before the International Bureau
46.1 Time Limit
The time limit referred to in Article 19 shall be 2 months from the date of transmittal of the international search report to the International Bureau and to the applicant by the International Searching Authority or 16 months from the priority date, whichever time limit expires later, provided that any amendment made under Article 19 which is received by the International Bureau after the expiration of the applicable time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the technical preparations for international publication have been completed.
46.2 Where to File
Amendments made under Article 19 shall be filed directly with the International Bureau.
46.3 Language of Amendments
If the international application has been filed in a language other than the language in which it is published, any amendment made under Article 19 shall be in the language of publication.
46.4 Statement
(a) The statement referred to in Article 19 (1) shall be in the language in which the international application is published and shall not exceed 500 words if in the English language or if translated into that language. The statement shall be identified as such by a heading, preferably by using the words “Statement under Article 19 (1)” or their equivalent in the language of the statement.
(b) The statement shall contain no disparaging comments on the international search report or the relevance of citations contained in that report. Reference to citations, relevant to a given claim, contained in the international search report may be made only in connection with an amendment of that claim.
46.5 Form of Amendments
The applicant shall be required to submit a replacement sheet for every sheet of the claims which, on account of an amendment or amendments under Article 19, differs from the sheet originally filed.
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The letter accompanying the replacement sheets shall draw attention to the differences between the replaced sheets and the replacement sheets. To the extent that any amendment results in the cancellation of an entire sheet, that amendment shall be communicated in a letter.
Rule 47 Communication to Designated Offices
47.1 Procedure
(a) The communication provided for in Article 20 shall be effected by the International Bureau.
(abis) The International Bureau shall notify each designated Office, at the time of the communication provided for in Article 20, of the fact and date of receipt of the record copy and of the fact and date of receipt of any priority document. Such notification shall also be sent to any designated Office which has waived the communication provided for in Article 20, unless such Office has also waived the notification of its designation.
(b) Such communication shall be effected promptly after the international publication of the international application and, in any event, by the end of the 19th month after the priority date. Any amendment received by the International Bureau within the time limit under Rule 46.1 which was not included in the communication shall be communicated promptly to the designated Offices by the International Bureau, and the latter shall notify the applicant accordingly.
(c) The International Bureau shall send a notice to the applicant indicating the designated Offices to which the communication has been effected and the date of such communication. Such notice shall be sent on the same day as the communication. Each designated Office shall be informed, separately from the communication, about the sending and the date of mailing of the notice. The notice shall be accepted by all designated Offices as conclusive evidence that the communication has duly taken place on the date specified in the notice.
(d) Each designated Office shall, when it so requires, receive the international search reports and the declarations referred to in Article 17 (2) (a) also in the translation referred to in Rule 45.1.
(e) Where any designated Office has waived the requirement provided under Article 20, the copies of the documents which otherwise would have been sent to that Office shall, at the request of that Office or the applicant, be sent to the applicant at the time of the notice referred to in paragraph (c).
47.2 Copies
(a) The copies required for communication shall be prepared by the International Bureau.
(b) They shall be on sheets of A4 size.
(c) Except to the extent that any designated Office notifies the International Bureau otherwise, copies of the pamphlet under Rule 48 may be used for the purposes of the communication of the international application under Article 20.
47.3 Languages
(a) The international application communicated under Article 20 shall be in the language in which it is published.
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(b) Where the language in which the international application is published is different from the language in which it was filed, the International Bureau shall furnish to any designated Office, upon the request of that Office, a copy of that application in the language in which it was filed.
47.4 Express Request under Article 23 (2)
Where the applicant makes an express request to a designated Office under Article 23 (2) before the communication provided for in Article 20 has taken place, the International Bureau shall, upon request of the applicant or the designated Office, promptly effect that communication to that Office
Rule 48 International Publication
48.1 Form
(a) The international application shall be published in the form of a pamphlet.
(b) The particulars regarding the form of the pamphlet and the method of reproduction shall be governed by the Administrative Instructions.
48.2 Contents
(a) The pamphlet shall contain:
(i) a standardized front page,
(ii) the description,
(iii) the claims,
(iv) the drawings, if any,
(v) subject to paragraph (g), the international search report or the declaration under Article 17 (2) (a); the publication of the international search report in the pamphlet shall, however, not be required to include the part of the international search report which contains only matter referred to in Rule 43 already appearing on the front page of the pamphlet,
(vi) any statement filed under Article 19 (1), unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4,
(vii) any request for rectification referred to in the third sentence of Rule 91.1 (f),
(viii) the relevant data from any indications in relation to deposited biological material furnished under Rule 13bis separately from the description, together with an indication of the date on which the International Bureau received such indications,
(ix) any information concerning a priority claim considered not to have been made under Rule 26bis.2 (b), the publication of which is requested under Rule 26bis.2 (c).
(b) Subject to paragraph (c), the front page shall include:
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(i) data taken from the request sheet and such other data as are prescribed by the administrative Instructions,
(ii) a figure or figures where the international application contains drawings, unless Rule 8.2 (b) applies,
(iii) the abstract; if the abstract is both in English and in another language, the English text shall appear first.
(c) Where a declaration under Article 17 (2) (i) has issued, the front page shall conspicuously refer to that fact and need include neither a drawing nor an abstract.
(d) The figure or figures referred to in paragraph (b) (ii) shall be selected as provided in Rule 8.2. Reproduction of such figure or figures on the front page may be in a reduced form.
(e) If there is not enough room on the front page for the totality of the abstract referred to in paragraph (b) (iii), the said abstract shall appear on the back of the front page. The same shall apply to the translation of the abstract when such translation is required to be published under Rule 48.3 (c).
(f) If the claims have been amended under Article 19, the publication shall contain either the full text of the claims both as filed and as amended or the full text of the claims as filed and specify the amendments. Any statement referred to in Article 19 (1) shall be included as well, unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4. The date of receipt of the amended claims by the International Bureau shall be indicated.
(g) If, at the time of the completion of the technical preparations for international publication, the international search report is not yet available (for example, because of publication on the request of the applicant as provided in Articles 21 (2) (b) and 64 (3) (c) (i)), the pamphlet shall contain, in place of the international search report, an indication to the effect that that report was not available and that either the pamphlet (then also including the international search report) will be republished or the international search report (when it becomes available) will be separately published.
(h) If, at the time of the completion of the technical preparations for international publication, the time limit for amending the claims under Article 19 has not expired, the pamphlet shall refer to that fact and indicate that, should the claims be amended under Article 19, then, promptly after such amendments, either the pamphlet (containing the claims as amended) will be republished or a statement reflecting all the amendments will be published. In the latter case, at least the front page and the claims shall be republished and, if a statement under Article 19 (1) has been filed, that statement shall be published as well, unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4.
(i) The Administrative Instructions shall determine the cases in which the various alternatives referred to in paragraphs (g) and (h) shall apply. Such determination shall depend on the volume and complexity of the amendments and/or the volume of the international application and the cost factors.
48.3 Languages
(a) If the international application is filed in Chinese, English, French, German, Japanese, Russian or Spanish (“languages of publication”), that application shall be published in the language in which it was filed.
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(abis) If the international application is not filed in a language of publication and a translation into a language of publication has been furnished under Rule 12.3, that application shall be published in the language of that translation.
(b) If the international application is filed in a language which is not a language of publication and no translation into a language of publication is required under Rule 12.3 (a), that application shall be published in English translation. The translation shall be prepared under the responsibility of the International Searching Authority, which shall be obliged to have it ready in time to permit international publication by the prescribed date, or, where Article 64 (3) (b) applies, to permit the communication under Article 20 by the end of the 19th month after the priority date. Notwithstanding Rule 16.1 (a), the International Searching Authority may charge a fee for the translation to the applicant. The International Searching Authority shall give the applicant an opportunity to comment on the draft translation. The International Searching Authority shall fix a time limit reasonable under the circumstances of the case for such comments. If there is no time to take the comments of the applicant into account before the translation is communicated or if there is a difference of opinion between the applicant and the said Authority as to the correct translation, the applicant may send a copy of his comments, or what remains of them, to the International Bureau and each designated Office to which the translation was communicated. The International Bureau shall publish the relevant portions of the comments together with the translation of the International Searching Authority or subsequently to the publication of such translation.
(c) If the international application is published in a language other than English, the international search report to the extent that it is published under Rule 48.2 (a) (v), or the declaration referred to in Article 17 (2) (a), the title of the invention, the abstract and any text matter pertaining to the figure or figures accompanying the abstract shall be published both in that language and in English. The translations shall be prepared under the responsibility of the International Bureau.
48.4 Earlier Publication on the Applicant’s Request
(a) Where the applicant asks for publication under Articles 21 (2) (b) and 64 (3) (c) (i) and the international search report, or the declaration referred to in Article 17 (2) (a), is not yet available for publication together with the international application, the International Bureau shall collect a special publication fee whose amount shall be fixed in the Administrative Instructions.
(b) Publication under Articles 21 (2) (b) and 64 (3) (c) (i) shall be effected by the International Bureau promptly after the applicant has asked for it and, where a special fee is due under paragraph (a), after receipt of such fee.
48.5 Notification of National Publication
Where the publication of the international application by the International Bureau is governed by Article 64 (3) (c) (ii), the national Office concerned shall, promptly after effecting the national publication referred to in the said provision, notify the International Bureau of the fact of such national publication.
48.6 Announcing of Certain Facts
(a) If any notification under Rule 29.1 (a) (ii) reaches the International Bureau at a time later than that at which it was able to prevent the international publication of the international application, the International Bureau shall promptly publish a notice in the Gazette reproducing the essence of such notification.
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(c) If the international application, the designation of any designated State or the priority claim is withdrawn under Rule 90bis after the technical preparations for international publication have been completed, notice of the withdrawal shall be published in the Gazette.
Rule 49 Copy, Translation and Fee under Article 22
49.1 Notification
(a) Any Contracting State requiring the furnishing of a translation or the payment of a national fee, or both, under Article 22, shall notify the International Bureau of:
(i) the languages from which and the language into which it requires translation,
(ii) the amount of the national fee.
(abis) Any Contracting State not requiring the furnishing, under Article 22, by the applicant of a copy of the international application (even though the communication of the copy of the international application by the International Bureau under Rule 47 has not taken place by the expiration of the time limit applicable under Article 22) shall notify the International Bureau accordingly.
(ater) Any Contracting State which, pursuant to Article 24 (2), maintains, if it is a designated State, the effect provided for in Article 11 (3) even though a copy of the international application is not furnished by the applicant by the expiration of the time limit applicable under Article 22 shall notify the International Bureau accordingly.
(b) Any notification received by the International Bureau under paragraphs (a), (abis) or (ater) shall be promptly published by the International Bureau in the Gazette.
(c) If the requirements under paragraph (a) change later, such changes shall be notified by the Contracting State to the International Bureau and that Bureau shall promptly publish the notification in the Gazette. If the change means that translation is required into a language which, before the change, was not required, such change shall be effective only with respect to international applications filed later than 2 months after the publication of the notification in the Gazette. Otherwise, the effective date of any change shall be determined by the Contracting State.
49.2 Languages
The language into which translation may be required must be an official language of the designated Office. If there are several of such languages, no translation may be required if the international application is in one of them. If there are several official languages and a translation must be furnished, the applicant may choose any of those languages. Notwithstanding the foregoing provisions of this paragraph, if there are several official languages but the national law prescribes the use of one such language for foreigners, a translation into that language may be required.
49.3 Statements under Article 19; Indications under Rule 13bis.4
For the purposes of Article 22 and the present Rule, any statement made under Article 19 (1) and any indication furnished under Rule 13bis.4 shall, subject to Rule 49.5 (c) and (h), be considered part of the international application.
49.4 Use of National Form
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No applicant shall be required to use a national form when performing the acts referred to in Article 22.
49.5 Contents of and Physical Requirements for the Translation
(a) For the purposes of Article 22, the translation of the international application shall contain the description (subject to paragraph (abis)), the claims, any text matter of the drawings and the abstract. If required by the designated Office, the translation shall also, subject to paragraphs (b), (cbis) and (e),
(i) contain the request,
(ii) if the claims have been amended under Article 19, contain both the claims as filed and the claims as amended, and
(iii) be accompanied by a copy of the drawings.
(abis) No designated Office shall require the applicant to furnish to it a translation of any text matter contained in the sequence listing part of the description if such sequence listing part complies with Rule 12.1 (d) and if the description complies with Rule 5.2 (b).
(b) Any designated Office requiring the furnishing of a translation of the request shall furnish copies of the request form in the language of the translation free of charge to the applicants. The form and contents of the request form in the language of the translation shall not be different from those of the request under Rules 3 and 4; in particular, the request form in the language of the translation shall not ask for any information that is not in the request as filed. The use of the request form in the language of the translation shall be optional.
(c) Where the applicant did not furnish a translation of any statement made under Article 19 (1), the designated Office may disregard such statement.
(cbis) Where the applicant furnishes, to a designated Office which requires under paragraph (a) (ii) a translation of both the claims as filed and the claims as amended, only one of the required two translations, the designated Office may disregard the claims of which a translation has not been furnished or invite the applicant to furnish the missing translation within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation. Where the designated Office chooses to invite the applicant to furnish the missing translation and the latter is not furnished within the time limit fixed in the invitation, the designated Office may disregard those claims of which a translation has not been furnished or consider the international application withdrawn.
(d) If any drawing contains text matter, the translation of that text matter shall be furnished either in the form of a copy of the original drawing with the translation pasted on the original text matter or in the form of a drawing executed anew.
(e) Any designated Office requiring under paragraph (a) the furnishing of a copy of the drawings shall, where the applicant failed to furnish such copy within the time limit applicable under Article 22, invite the applicant to furnish such copy within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
(f) The expression “Fig.” does not require translation into any language.
(g) Where any copy of the drawings or drawing executed anew which has been furnished under paragraph (d) or (e) does not comply with the physical requirements referred to in Rule 11, the
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designated Office may invite the applicant to correct the defect within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
(h) Where the applicant did not furnish a translation of the abstract or of any indication furnished under Rule 13bis.4, the designated Office shall invite the applicant to furnish such translation, if it deems it to be necessary, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
(i) Information on any requirement and practice of designated Offices under the second sentence of paragraph (a) shall be published by the International Bureau in the Gazette.
(j) No designated Office shall require that the translation of the international application comply with physical requirements other than those prescribed for the international application as filed.
(k) Where a title has been established by the International Searching Authority pursuant to Rule 37.2, the translation shall contain the title as established by that Authority.
(l) If, on July 12, 1991, paragraph (cbis) or paragraph (k) is not compatible with the national law applied by the designated Office, the paragraph concerned shall not apply to that designated Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1991. The information received shall be promptly published by the International Bureau in the Gazette.
Rule 50 Faculty under Article 22 (3)
50.1 Exercise of Faculty
(a) Any Contracting State allowing a time limit expiring later than the time limits provided for in Article 22 (1) or (2) shall notify the International Bureau of the time limits so fixed.
(b) Any notification received by the International Bureau under paragraph (a) shall be promptly published by the International Bureau in the Gazette.
(c) Notifications concerning the shortening of the previously fixed time limit shall be effective in relation to international applications filed after the expiration of 3 months computed from the date on which the notification was published by the International Bureau.
(d) Notifications concerning the lengthening of the previously fixed time limit shall become effective upon publication by the International Bureau in the Gazette in respect of international applications pending at the time or filed after the date of such publication, or, if the Contracting State effecting the notification fixes some later date, as from the latter date.
Rule 51 Review by Designated Offices
51.1 Time Limit for Presenting the Request to Send Copies
The time limit referred to in Article 25 (1) (c) shall be two months computed from the date of the notification sent to the applicant under Rules 20.7 (i), 24.2 (c), 29.1 (a) (ii), or 29.1 (b).
51.2 Copy of the Notice
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Where the applicant, after having received a negative determination under Article 11 (1), requests the International Bureau, under Article 25 (1), to send copies of the file of the purported international application to any of the named Offices he has attempted to designate, he shall attach to his request a copy of the notice referred to in Rule 20.7 (i).
51.3 Time Limit for Paying National Fee and Furnishing Translation
The time limit referred to in Article 25 (2) (a) shall expire at the same time as the time limit prescribed in Rule 51.1.
Rule 51bis. Certain National Requirements Allowed under Article 27 (1), (2), (6) and (7)
51bis.1 Certain National Requirements Allowed
(a) The documents referred to in Article 27 (2) (ii), or the evidence referred to in Article 27 (6), which the applicant may be required to furnish under the national law applicable by the designated Office include, in particular:
(i) any document relating to the identity of the inventor,
(ii) any document relating to any transfer or assignment of the right to the application,
(iii) any document containing an oath or declaration by the inventor alleging his inventorship,
(iv) any document containing a declaration by the applicant designating the inventor or alleging the right to the application,
(v) any document containing any proof of the right of the applicant to claim priority where he is different from the applicant having filed the earlier application the priority of which is claimed,
(vi) any evidence concerning non-prejudicial disclosures or exceptions to lack of novelty, such as disclosures resulting from abuse, disclosures at certain exhibitions and disclosures by the applicant during a certain period of time.
(b) The national law applicable by the designated Office may, in accordance with Article 27 (7), require that
(i) the applicant be represented by an agent having the right to represent applicants before that Office and/or have an address in the designated State for the purpose of receiving notifications,
(ii) the agent, if any, representing the applicant be duly appointed by the applicant.
(c) The national law applicable by the designated Office may, in accordance with Article 27 (1), require that the international application, the translation thereof or any document relating thereto be furnished in more than one copy.
(d) The national law applicable by the designated Office may, in accordance with Article 27 (2) (ii), require that the translation of the international application furnished by the applicant under Article 22 be verified by the applicant or the person having translated the international
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application in a statement to the effect that, to the best of his knowledge, the translation is complete and faithful.
51bis.2 Opportunity to Comply with National Requirements
(a) Where any of the requirements referred to in Rule 51bis.1, or any other requirement of the national law applicable by the designated Office which that Office may apply under Article 27 (1), (2), (6) or (7), is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the applicant shall have an opportunity to comply with the requirement after the expiration of that period.
(b) The national law applicable by the designated Office may, in accordance with Article 27 (2) (ii), require that the applicant, upon invitation by the designated Office, furnish a certification of the translation of the international application by a public authority or a sworn translator, if the designated Office deems such certification to be necessary under the circumstances, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
Rule 52 Amendment of the Claims, the Description, and the Drawings, before Designated Offices
52.1 Time Limit
(a) In any designated State in which processing or examination starts without special request, the applicant shall, if he so wishes, exercise the right under Article 28 within one month from the fulfilment of the requirements under Article 22, provided that, if the communication under Rule 47.1 has not been effected by the expiration of the time limit applicable under Article 22, he shall exercise the said right not later than 4 months after such expiration date. In either case, the applicant may exercise the said right at any other time if so permitted by the national law of the said State.
(b) In any designated State in which the national law provides that examination starts only on special request, the time limit within or the time at which the applicant may exercise the right under Article 28 shall be the same as that provided by the national law for the filing of amendments in the case of the examination, on special request, of national applications, provided that such time limit shall not expire prior to, or such time shall not come before, the expiration of the time limit applicable under paragraph (a).
PART C
Rules Concerning Chapter II of the Treaty
Rule 53 The Demand
53.1 Form
(a) The demand shall be made on a printed form or be presented as a computer print-out. The particulars of the printed form and of a demand presented as a computer print-out shall be prescribed by the Administrative Instructions.
(b) Copies of printed demand forms shall be furnished free of charge by the receiving Office or by the International Preliminary Examining Authority.
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53.2 Contents
(a) The demand shall contain:
(i) a petition,
(ii) indications concerning the applicant and the agent if there is an agent,
(iii) indications concerning the international application to which it relates,
(iv) election of States,
(v) where applicable, a statement concerning amendments.
(b) The demand shall be signed.
53.3 The Petition
The petition shall be to the following effect and shall preferably be worded as follows: “Demand under Article 31 of the Patent Cooperation Treaty: The undersigned requests that the international application specified below be the subject of international preliminary examination according to the Patent Cooperation Treaty.”
53.4 The Applicant
As to the indications concerning the applicant, Rules 4.4 and 4.16 shall apply, and Rule 4.5 shall apply mutatis mutandis. Only applicants for the elected States are required to be indicated in the demand.
53.5 Agent or Common Representative
If an agent or common representative is designated, the demand shall so indicate. Rules 4.4 and 4.16 shall apply, and Rule 4.7 shall apply mutatis mutandis.
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53.6 Identification of the International Application
The international application shall be identified by the name and address of the applicant, the title of the invention, the international filing date (if known to the applicant) and the international application number or, where such number is not known to the applicant, the name of the receiving Office with which the international application was filed.
53.7 Election of States
(a) The demand shall indicate at least one Contracting State, from among those States which are designated and are bound by Chapter II of the Treaty (“eligible States”), as an elected state.
(b) Election of Contracting States in the demand shall be made:
(i) by an indication that all eligible States are elected, or,
(ii) in the case of States which have been designated for the purpose of obtaining national patents, by an indication of those eligible States that are elected, and, in the case of States which have been designated for the purpose of obtaining a regional patent, by an indication of the regional patent concerned together with either an indication that all eligible States party to the regional patent treaty concerned are elected or an indication of those among the said States that are elected.
53.8 Signature
(a) Subject to paragraph (b), the demand shall be signed by the applicant or, if there is more than one applicant, by all applicants making the demand.
(b) Where two or more applicants file a demand which elects a State whose national law requires that national applications be filed by the inventor and where an applicant for that elected State who is an inventor refused to sign the demand or could not be found or reached after diligent effort, the demand need not be signed by that applicant (“the applicant concerned”) if it is signed by at least one applicant and
(i) a statement is furnished explaining, to the satisfaction of the International Preliminary Examining Authority, the lack of signature of the applicant concerned, or
(ii) the applicant concerned did not sign the request but the requirements of Rule 4.15 (b) were complied with.
53.9 Statement Concerning Amendments
(a) If amendments under Article 19 have been made, the statement concerning amendments shall indicate whether, for the purposes of the international preliminary examination, the applicant wishes those amendments
(i) to be taken into account, in which case a copy of the amendments shall preferably be submitted with the demand, or
(ii) to be considered as reversed by an amendment under Article 34.
(b) If no amendments under Article 19 have been made and the time limit for filing such amendments has not expired, the statement may indicate that the applicant wishes the start of the international preliminary examination to be postponed in accordance with Rule 69.1 (d).
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(c) If any amendments under Article 34 are submitted with the demand, the statement shall so indicate.
Rule 54 The Applicant Entitled to Make a Demand
54.1 Residence and Nationality
(a) Subject to the provisions of paragraph (b), the residence or nationality of the applicant shall, for the purposes of Article 31 (2), be determined according to Rule 18.1 (a) and (b).
(b) The International Preliminary Examining Authority shall, in the circumstances specified in the Administrative Instructions, request the receiving Office or, where the international application was filed with the International Bureau as receiving Office, the national office of, or acting for, the Contracting State concerned to decide the question whether the applicant is a resident or national of the Contracting State of which he claims to be a resident or national. The International Preliminary Examining Authority shall inform the applicant of any such request. The applicant shall have an opportunity to submit arguments directly to the Office concerned. The Office concerned shall decide the said question promptly.
54.2 Right to Make a Demand
The right to make a demand under Article 31 (2) shall exist if the applicant making the demand or, if there are two or more applicants, at least one of them is a resident or national of a Contracting State bound by Chapter II and the international application has been filed with a receiving Office of or acting for a Contracting State bound by Chapter II.
54.3 International Applications Filed with the International Bureau as Receiving Office
Where the international application is filed with the International Bureau as receiving Office under Rule 19.1 (a) (iii), the International Bureau shall, for the purposes of Article 31 (2) (a), be considered to be acting for the Contracting State of which the applicant is a resident or national.
54.4 Applicant Not Entitled to Make a Demand
If the applicant does not have the right to make a demand or, in the case of two or more applicants, if none of them has the right to make a demand under Rule 54.2, the demand shall be considered not to have been submitted.
Rule 55 Languages (International Preliminary Examination)
55.1 Language of Demand
The demand shall be in the language of the international application or, if the international application has been filed in a language other than the language in which it is published, in the language of publication. However, if a translation of the international application is required under Rule 55.2, the demand shall be in the language of that translation.
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55.2 Translation of International Application
(a) Where neither the language in which the international application is filed nor the language in which the international application is published is accepted by the International Preliminary Examining Authority that is to carry out the international preliminary examination, the applicant shall, subject to paragraph (b), furnish with the demand a translation of the international application into a language which is both:
(i) a language accepted by that Authority, and
(ii) a language of publication.
(b) Where a translation of the international application into a language referred to in paragraph (a) was transmitted to the International Searching Authority under Rule 23.1 (b) and the International Preliminary Examining Authority is part of the same national Office or intergovernmental organization as the International Searching Authority, the applicant need not furnish a translation under paragraph (a). In such a case, unless the applicant furnishes a translation under paragraph (a), the international preliminary examination shall be carried out on the basis of the translation transmitted under Rule 23.1 (b).
(c) If the requirement of paragraph (a) is not complied with and paragraph (b) does not apply, the International Preliminary Examining Authority shall invite the applicant to furnish the required translation within a time limit which shall be reasonable under the circumstances. That time limit shall not be less than one month from the date of the invitation. It may be extended by the International Preliminary Examining Authority at any time before a decision is taken.
(d) If the applicant complies with the invitation within the time limit under paragraph (c), the said requirement shall be considered to have been complied with. If the applicant fails to do so, the demand shall be considered not to have been submitted and the International Preliminary Examining Authority shall so declare.
55.3 Translation of Amendments
(a) Where a translation of the international application is required under Rule 55.2, any amendments which are referred to in the statement concerning amendments under Rule 59.3 and which the applicant wishes to be taken into account for the purposes of the international preliminary examination, and any amendments under Article 19 which are to be taken into account under Rule 66.1 (c), shall be in the language of that translation. Where such amendments have been or are filed in another language, a translation shall also be furnished.
(b) Where the required translation of an amendment referred to in paragraph (a) is not furnished, the International Preliminary Examining Authority shall invite the applicant to furnish the missing translation within a time limit which shall be reasonable under the circumstances. That time limit shall not be less than one month from the date of the invitation. It may be extended by the International Preliminary Examining Authority at any time before a decision is taken.
(c) If the applicant fails to comply with the invitation within the time limit under paragraph (b), the amendment shall not be taken into account for the purposes of the international preliminary examination.
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Rule 56 Later Elections
56.1 Elections Submitted Later Than the Demand
(a) The election of States subsequent to the submission of the demand (“later election”) shall be effected by a notice submitted to the International Bureau. The notice shall identify the international application and the demand, and shall include an indication as referred to in Rule 53.7 (b) (ii).
(b) Subject to paragraph (c), the notice referred to in paragraph (a) shall be signed by the applicant for the elected States concerned or, if there is more than one applicant for those States, by all of them.
(c) Where two or more applicants file a notice effecting a later election of a State whose national law requires that national applications be filed by the inventor and where an applicant for that elected State who is an inventor refused to sign the notice or could not be found or reached after diligent effort, the notice need not be signed by that applicant (“the applicant concerned”) if it is signed by at least one applicant and
(i) a statement is furnished explaining, to the satisfaction of the International Bureau, the lack of signature of the applicant concerned, or
(ii) the applicant concerned did not sign the request but the requirements of Rule 4.15 (b) were complied with, or did not sign the demand but the requirements of Rule 53.8 (b) were complied with.
(d) An applicant for a State elected by a later election need not have been indicated as an applicant in the demand.
(e) If a notice effecting a later election is submitted after the expiration of 19 months from the priority date, the International Bureau shall notify the applicant that the election does not have the effect provided for under Article 39 (1) (a) and that the acts referred to in Article 22 must be performed in respect of the elected Office concerned within the time limit applicable under Article 22.
(f) If, notwithstanding paragraph (a), a notice effecting a later election is submitted by the applicant to the International Preliminary Examining Authority rather than the International Bureau, that Authority shall mark the date of receipt on the notice and transmit it promptly to the International Bureau. The notice shall be considered to have been submitted to the International Bureau on the date marked.
56.2 Identification of the International Application
The international application shall be identified as provided in Rule 53.6.
56.3 Identification of the Demand
The demand shall be identified by the date on which it was submitted and by the name of the International Preliminary Examining Authority to which it was submitted.
56.4 Form of Later Elections
The notice effecting the later election shall preferably be worded as follows:
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“In relation to the international application filed with . . . on . . . under No. . . . by . . . (applicant) (and the demand for international preliminary examination submitted on . . . to . . .), the undersigned elects the following additional State(s) under Article 31 of the Patent Cooperation Treaty: . . .”.
56.5 Language of Later Elections
The later election shall be in the language of the demand.
Rule 57 The Handling Fee
57.1 Requirement to Pay
Each demand for international preliminary examination shall be subject to the payment of a fee for the benefit of the International Bureau (“handling fee”) to be collected by the International Preliminary Examining Authority to which the demand is submitted.
57.2 Amount
(a) The amount of the handling fee is as set out in the Schedule of Fees.
(c) The handling fee shall be payable in the currency or one of the currencies prescribed by the International Preliminary Examining Authority (“prescribed currency”), it being understood that, when transferred by that Authority to the International Bureau, it shall be freely convertible into Swiss currency. The amount of the handling fee shall be established, in each prescribed currency, for each International Preliminary Examining Authority which prescribes the payment of the handling fee in any currency other than Swiss currency, by the Director General after consultation with the Office with which consultation takes place under Rule 15.2 (b) in relation to that currency, or, if there is no such Office, with the Authority which prescribes payment in that currency. The amount so established shall be the equivalent, in round figures, of the amount in Swiss currency set out in the Schedule of Fees. It shall be notified by the International Bureau to each International Preliminary Examining Authority prescribing payment in that prescribed currency and shall be published in the Gazette.
(d) Where the amount of the handling fee set out in the Schedule of Fees is changed, the corresponding amounts in the prescribed currencies shall be applied from the same date as the amount set out in the amended Schedule of Fees.
(e) Where the exchange rate between Swiss currency and any prescribed currency becomes different from the exchange rate last applied, the Director General shall establish the new amount in the prescribed currency according to directives given by the Assembly. The newly established amount shall become applicable two months after its publication in the Gazette, provided that the interested International Preliminary Examining Authority and the Director General may agree on a date falling during the said two-month period in which case the said amount shall become applicable for that Authority from that date.
57.3 Time Limit for Payment; Amount Payable
The handling fee shall be paid within one month from the date on which the demand was submitted, provided that, where the demand was transmitted to the International Preliminary Examining Authority under Rule 59.3, the handling fee shall be paid within one month from the date of receipt by that Authority. The amount payable shall be the amount applicable on that date of submittal or date of receipt, as the case may be. For the purposes of the preceding two sentences, Rule 59.3 (e) shall not apply.
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57.6 Refund
The International Preliminary Examining Authority shall refund the handling fee to the applicant:
(i) if the demand is withdrawn before the demand has been sent by that Authority to the International Bureau, or
(ii) if the demand is considered, under Rule 54.4, not to have been submitted.
Rule 58 The Preliminary Examination Fee
58.1 Right to Ask for a Fee
(a) Each International Preliminary Examining Authority may require that the applicant pay a fee (“preliminary examination fee”) for its own benefit for carrying out the international preliminary examination and for performing all other tasks entrusted to International Preliminary Examining Authorities under the Treaty and these Regulations.
(b) The amount of the preliminary examination fee, if any, shall be fixed by the International Preliminary Examining Authority. As to the time limit for payment of the preliminary examination fee and the amount payable, the provisions of Rule 57.3 relating to the handling fee shall apply mutatis mutandis.
(c) The preliminary examination fee shall be payable directly to the International Preliminary Examining Authority. Where that Authority is a national Office, it shall be payable in the currency prescribed by that Office, and where the Authority is an intergovernmental organization, it shall be payable in the currency of the State in which the intergovernmental organization is located or in any other currency which is freely convertible into the currency of the said State.
58.3 Refund
The International Preliminary Examining Authorities shall inform the International Bureau of the extent, if any, to which, and the conditions, if any, under which, they will refund any amount paid as a preliminary examination fee where the demand is considered as if it had not been submitted, and the International Bureau shall promptly publish such information.
Rule 58bis. Extension of Time Limits for Payment of Fees
58bis.1 Invitation by the International Preliminary Examining Authority
(a) Where, by the time they are due under Rules 57.3 and 58.1 (b), the International Preliminary Examining Authority finds that no fees were paid to it, or that the amount paid to it is insufficient to cover the handling fee and the preliminary examination fee, the Authority shall invite the applicant to pay to it the amount required to cover those fees, together with, where applicable, the late payment fee under Rule 58bis.2, within a time limit of one month from the date of the invitation.
(b) Where the International Preliminary Examining Authority has sent an invitation under paragraph (a) and the applicant has not, within the time limit referred to in that paragraph, paid in full the amount due, including, where applicable, the late payment fee under Rule 58bis.2, the demand
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shall, subject to paragraph (c), be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.
(c) Any payment received by the International Preliminary Examining Authority before that Authority sends the invitation under paragraph (a) shall be considered to have been received before the expiration of the time limit under Rule 57.3 or 58.1 (b), as the case may be.
(d) Any payment received by the International Preliminary Examining Authority before that Authority proceeds under paragraph (b) shall be considered to have been received before the expiration of the time limit under paragraph (a).
58bis.2 Late Payment Fee
(a) The payment of fees in response to an invitation under Rule 58bis.1 (a) may be subjected by the International Preliminary Examining Authority to the payment to it, for its own benefit, of a late payment fee. The amount of that fee shall be:
(i) 50% of the amount of unpaid fees which is specified in the invitation, or,
(ii) if the amount calculated under item (i) is less than the handling fee, an amount equal to the handling fee.
(b) The amount of the late payment fee shall not, however, exceed double the amount of the handling fee.
Rule 59 The Competent International Preliminary Examining Authority
59.1 Demands under Article 31 (2) (a)
(a) For demands made under Article 31 (2) (a), each receiving Office of or acting for a Contracting State bound by the provisions of Chapter II shall, in accordance with the terms of the applicable agreement referred to in Article 32 (2) and (3), inform the International Bureau which International Preliminary Examining Authority is or which International Preliminary Examining Authorities are competent for the international preliminary examination of international applications filed with it. The International Bureau shall promptly publish such information. Where several International Preliminary Examining Authorities are competent, the provisions of Rule 35.2 shall apply mutatis mutandis.
(b) Where the international application was filed with the International Bureau as receiving Office under Rule 19.1 (a) (iii), Rule 35.3 (a) and (b) shall apply mutatis mutandis. Paragraph (a) of this Rule shall not apply to the International Bureau as receiving Office under Rule 19.1 (a) (iii).
59.2 Demands under Article 31 (2) (b)
As to demands made under Article 31 (2) (b), the Assembly, in specifying the International Preliminary Examining Authority competent for international applications filed with a national Office which is an International Preliminary Examining Authority, shall give preference to that Authority; if the national Office is not an International Preliminary Examining Authority, the Assembly shall give preference to the International Preliminary Examining Authority recommended by that Office.
59.3 Transmittal of Demand to the Competent International Preliminary Examining Authority
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(a) If the demand is submitted to a receiving Office, an International Searching Authority, or an International Preliminary Examining Authority which is not competent for the international preliminary examination of the international application, that Office or Authority shall mark the date of receipt on the demand and, unless it decides to proceed under paragraph (f), transmit the demand promptly to the International Bureau.
(b) If the demand is submitted to the International Bureau, the International Bureau shall mark the date of receipt on the demand.
(c) Where the demand is transmitted to the International Bureau under paragraph (a) or submitted to it under paragraph (b), the International Bureau shall promptly:
(i) if there is only one competent International Preliminary Examining Authority, transmit the demand to that Authority and inform the applicant accordingly, or
(ii) if two or more International Preliminary Examining Authorities are competent, invite the applicant to indicate, within 15 days from the date of the invitation or 19 months from the priority date, whichever is later, the competent International Preliminary Examining Authority to which the demand should be transmitted.
(d) Where an indication is furnished as required under paragraph (c) (ii), the International Bureau shall promptly transmit the demand to the competent International Preliminary Examining Authority indicated by the applicant. Where no indication is so furnished, the demand shall be considered not to have been submitted and the International Bureau shall so declare.
(e) Where the demand is transmitted to a competent International Preliminary Examining Authority under paragraph (c), it shall be considered to have been received on behalf of that Authority on the date marked on it under paragraph (a) or (b), as applicable, and the demand so transmitted shall be considered to have been received by that Authority on that date.
(f) Where an Office or Authority to which the demand is submitted under paragraph (a) decides to transmit that demand directly to the competent International Preliminary Examining Authority, paragraphs (c) to (e) shall apply mutatis mutandis.
Rule 60 Certain Defects in the Demand or Elections
60.1 Defects in the Demand
(a) If the demand does not comply with the requirements specified in Rules 53.1, 53.2 (a) (i) to (iv), 53.2 (b), 53.3 to 53.8 and 55.1, the International Preliminary Examining Authority shall invite the applicant to correct the defects within a time limit which shall be reasonable under the circumstances. That time limit shall not be less than one month from the date of the invitation. It may be extended by the International Preliminary Examining Authority at any time before a decision is taken.
(b) If the applicant complies with the invitation within the time limit under paragraph (a), the demand shall be considered as if it had been received on the actual filing date, provided that the demand as submitted contained at least one election and permitted the international application to be identified; otherwise, the demand shall be considered as if it had been received on the date on which the International Preliminary Examining Authority receives the correction.
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(c) Subject to paragraph (d), if the applicant does not comply with the invitation within the time limit under paragraph (a), the demand shall be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.
(d) Where, after the expiration of the time limit under paragraph (a), a signature required under Rule 53.8 or a prescribed indication is lacking in respect of an applicant for a certain elected State, the election of that State shall be considered as if it had not been made.
(e) If the defect is noticed by the International Bureau, it shall bring the defect to the attention of the International Preliminary Examining Authority, which shall then proceed as provided in paragraphs (a) to (d).
(f) If the demand does not contain a statement concerning amendments, the International Preliminary Examining Authority shall proceed as provided for in Rules 66.1 and 69.1 (a) or (b).
(g) Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand (Rule 53.9 (c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Authority shall invite the applicant to submit the amendments within a time limit fixed in the invitation and shall proceed as provided for in Rule 69.1 (e).
60.2 Defects in Later Elections
(a) If the notice effecting a later election does not comply with the requirements of Rule 56, the International Bureau shall invite the applicant to correct the defects within a time limit which shall be reasonable under the circumstances. That time limit shall not be less than one month from the date of the invitation. It may be extended by the International Bureau at any time before a decision is taken.
(b) If the applicant complies with the invitation within the time limit under paragraph (a), the notice shall be considered as if it had been received on the actual filing date, provided that the notice as submitted contained at least one election and permitted the international application to be identified; otherwise, the notice shall be considered as if it had been received on the date on which the International Bureau receives the correction.
(c) Subject to paragraph (d), if the applicant does not comply with the invitation within the time limit under paragraph (a), the notice shall be considered as if it had not been submitted and the International Bureau shall so declare.
(d) Where, in respect of an applicant for a certain elected State, the signature required under Rule 56.1 (b) and (c) or the name or address is lacking after the expiration of the time limit under paragraph (a), the later election of that state shall be considered as if it had not been made.
Rule 61 Notification of the Demand and Elections
61.1 Notification to the International Bureau and the Applicant
(a) The International Preliminary Examining Authority shall indicate on the demand the date of receipt or, where applicable, the date referred to in Rule 60.1 (b). The International Preliminary Examining Authority shall promptly either send the demand to the International Bureau and keep a copy in its files or send a copy to the International Bureau and keep the demand in its files.
(b) The International Preliminary Examining Authority shall promptly notify the applicant of the date of receipt of the demand. Where the demand has been considered under Rules 54.4, 55.2 (d),
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58bis.1 (b) or 60.1 (c) as if it had not been submitted or where an election has been considered under Rule 60.1 (d) as if it had not been made, the International Preliminary Examining Authority shall notify the applicant and the International Bureau accordingly.
(c) The International Bureau shall promptly notify the applicant of the receipt, and the date of receipt, of any notice effecting a later election. That date shall be the actual date of receipt by the International Bureau or, where applicable, the date referred to in Rule 56.1 (f) or 60.2 (b). Where the notice has been considered under Rule 60.2 (c) as if it had not been submitted or where a later election has been considered under Rule 60.2 (d) as if it had not been made, the International Bureau shall notify the applicant accordingly.
61.2 Notification to the Elected Offices
(a) The notification provided for in Article 31 (7) shall be effected by the International Bureau.
(b) The notification shall indicate the number and filing date of the international application, the name of the applicant, the filing date of the application whose priority is claimed (where priority is claimed), the date of receipt by the International Preliminary Examining Authority of the demand, and—in the case of a later election—the date of receipt of the notice effecting the later election. The latter date shall be the actual date of receipt by the International Bureau or, where applicable, the date referred to in Rule 56.1 (f) or 60.2 (b).
(c) The notification shall be sent to the elected Office together with the communication provided for in Article 20. Elections effected after such communication shall be notified promptly after they have been made.
(d) Where the applicant makes an express request to an elected Office under Article 40 (2) before the communication provided for in Article 20 has taken place, the International Bureau shall, upon request of the applicant or the elected Office, promptly effect that communication to that Office.
61.3 Information for the Applicant
The International Bureau shall inform the applicant in writing of the notification referred to in Rule 61.2 and of the elected Offices notified under Article 31 (7).
61.4 Publication in the Gazette
Where a demand has been filed before the expiration of 19 months from the priority date, the International Bureau shall, promptly after the filing of the demand but not before the international publication of the international application, publish in the Gazette information on the demand and the elected States concerned, as provided in the Administrative Instructions.
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Rule 62 Copy of Amendments Under Article 19
for the International Preliminary Examining Authority
62.1 Amendments Made Before the Demand is Filed
Upon receipt of a demand, or a copy thereof, from the International Preliminary Examining Authority, the International Bureau shall promptly transmit a copy of any amendments under Article 19, and any statement referred to in that Article, to that Authority, unless that Authority has indicated that it has already received such a copy.
62.2 Amendments Made After the Demand is Filed
If, at the time of filing any amendments under Article 19, a demand has already been submitted, the applicant shall preferably, at the same time as he files the amendments with the International Bureau, also file with the International Preliminary Examining Authority a copy of such amendments and any statement referred to in that Article. In any case, the International Bureau shall promptly transmit a copy of such amendments and statement to that Authority.
Rule 63 Minimum Requirements for International Preliminary Examining Authorities
63.1 Definition of Minimum Requirements
The minimum requirements referred to in Article 32 (3) shall be the following:
(i) the national Office or intergovernmental organization must have at least 100 full-time employees with sufficient technical qualifications to carry out examinations;
(ii) that Office or organization must have at its ready disposal at least the minimum documentation referred to in Rule 34, properly arranged for examination purposes;
(iii) that Office or organization must have a staff which is capable of examining in the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated.
Rule 64 Prior Art for International Preliminary Examination
64.1 Prior Art
(a) For the purposes of Article 33 (2) and (3), everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) shall be considered prior art provided that such making available occurred prior to the relevant date.
(b) For the purposes of paragraph (a), the relevant date will be:
(i) subject to item (ii), the international filing date of the international application under international preliminary examination;
(ii) where the international application under international preliminary examination validly claims the priority of an earlier application, the filing date of such earlier application.
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64.2 Non-Written Disclosures
In cases where the making available to the public occurred by means of an oral disclosure, use, exhibition or other non-written means (“non-written disclosure”) before the relevant date as defined in Rule 64.1 (b) and the date of such non-written disclosure is indicated in a written disclosure which has been made available to the public on a date which is the same as, or later than, the relevant date, the non-written disclosure shall not be considered part of the prior art for the purposes of Article 33 (2) and (3). Nevertheless, the international preliminary examination report shall call attention to such non-written disclosure in the manner provided for in Rule 70.9.
64.3 Certain Published Documents
In cases where any application or any patent which would constitute prior art for the purposes of Article 33 (2) and (3) had it been published prior to the relevant date referred to in Rule 64.1 was published on a date which is the same as, or later than, the relevant date but was filed earlier than the relevant date or claimed the priority of an earlier application which had been filed prior to the relevant date, such published application or patent shall not be considered part of the prior art for the purposes of Article 33 (2) and (3). Nevertheless, the international preliminary examination report shall call attention to such application or patent in the manner provided for in Rule 70.10.
Rule 65 Inventive Step or Non-Obviousness
65.1 Approach to Prior Art
For the purposes of Article 33 (3), the international preliminary examination shall take into consideration the relation of any particular claim to the prior art as a whole. It shall take into consideration the claim’s relation not only to individual documents or parts thereof taken separately but also its relation to combinations of such documents or parts of documents, where such combinations are obvious to a person skilled in the art.
65.2 Relevant Date
For the purposes of Article 33 (3), the relevant date for the consideration of inventive step (non- obviousness) is the date prescribed in Rule 64.1.
Rule 66 Procedure before the International Preliminary Examining Authority
66.1 Basis of the International Preliminary Examination
(a) Subject to paragraphs (b) to (d), the international preliminary examination shall be based on the international application as filed.
(b) The applicant may submit amendments under Article 34 at the time of filing the demand or, subject to Rule 66.4bis, until the international preliminary examination report is established.
(c) Any amendments under Article 19 made before the demand was filed shall be taken into account for the purposes of the international preliminary examination unless superseded, or considered as reversed, by an amendment under Article 34.
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(d) Any amendments under Article 19 made after the demand was filed and any amendments under Article 34 submitted to the International Preliminary Examining Authority shall, subject to Rule 66.4bis, be taken into account for the purposes of the international preliminary examination.
(e) Claims relating to inventions in respect of which no international search report has been established need not be the subject of international preliminary examination.
66.2 First Written Opinion of the International Preliminary Examining Authority
(a) If the International Preliminary Examining Authority
(i) considers that any of the situations referred to in Article 34 (4) exists,
(ii) considers that the international preliminary examination report should be negative in respect of any of the claims because the invention claimed therein does not appear to be novel, does not appear to involve an inventive step (does not appear to be non- obvious), or does not appear to be industrially applicable,
(iii) notices that there is some defect in the form or contents of the international application under the Treaty or these Regulations,
(iv) considers that any amendment goes beyond the disclosure in the international application as filed,
(v) wishes to accompany the international preliminary examination report by observations on the clarity of the claims, the description, and the drawings, or the question whether the claims are fully supported by the description,
(vi) considers that a claim relates to an invention in respect of which no international search report has been established and has decided not to carry out the international preliminary examination in respect of that claim, or
(vii) considers that a nucleotide and/or amino acid sequence listing is not available to it in such a form that a meaningful international preliminary examination can be carried out,
the said Authority shall notify the applicant accordingly in writing. Where the national law of the national Office acting as International Preliminary Examining Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the second and third sentences of Rule 6.4 (a), the International Preliminary Examining Authority may, in case of failure to use that manner of claiming, apply Article 34 (4) (b). In such case, it shall notify the applicant accordingly in writing.
(b) The notification shall fully state the reasons for the opinion of the International Preliminary Examining Authority.
(c) The notification shall invite the applicant to submit a written reply together, where appropriate, with amendments.
(d) The notification shall fix a time limit for the reply. The time limit shall be reasonable under the circumstances. It shall normally be two months after the date of notification. In no case shall it be shorter than one month after the said date. It shall be at least two months after the said date where the
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international search report is transmitted at the same time as the notification. It shall not be more than three months after the said date but may be extended if the applicant so requests before its expiration.
66.3 Formal Response to the International Preliminary Examining Authority
(a) The applicant may respond to the invitation referred to in Rule 66.2 (c) of the International Preliminary Examining Authority by making amendments or—if he disagrees with the opinion of that Authority—by submitting arguments, as the case may be, or do both.
(b) Any response shall be submitted directly to the International Preliminary Examining Authority.
66.4 Additional Opportunity for Submitting Amendments or Arguments
(a) If the International Preliminary Examining Authority wishes to issue one or more additional written opinions, it may do so, and Rules 66.2 and 66.3 shall apply.
(b) On the request of the applicant, the International Preliminary Examining Authority may give him one or more additional opportunities to submit amendments or arguments.
66.4bis Consideration of Amendments and Arguments
Amendments or arguments need not be taken into account by the International Preliminary Examining Authority for the purposes of a written opinion or the international preliminary examination report if they are received after that Authority has begun to draw up that opinion or report.
66.5 Amendment
Any change, other than the rectification of obvious errors in the claims, the description, or the drawings, including cancellation of claims, omission of passages in the description, or omission of certain drawings, shall be considered an amendment.
66.6 Informal Communications with the Applicant
The International Preliminary Examining Authority may, at any time, communicate informally, over the telephone, in writing, or through personal interviews, with the applicant. The said Authority shall, at its discretion, decide whether it wishes to grant more than one personal interview if so requested by the applicant, or whether it wishes to reply to any informal written communication from the applicant.
66.7 Priority Document
(a) If the International Preliminary Examining Authority needs a copy of the application whose priority is claimed in the international application, the International Bureau shall, on request, promptly furnish such copy. If that copy is not furnished to the International Preliminary Examining Authority because the applicant failed to comply with the requirements of Rule 17.1, the international preliminary examination report may be established as if priority had not been claimed.
(b) If the application whose priority is claimed in the international application is in a language other than the language or one of the languages of the International Preliminary Examining Authority, that Authority may invite the applicant to furnish a translation in the said language or one of the said languages within 2 months from the date of the invitation. If the translation is not furnished within
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that time limit, the international preliminary examination report may be established as if the priority had not been claimed.
66.8 Form of Amendments
(a) Subject to paragraph (b), the applicant shall be required to submit a replacement sheet for every sheet of the international application which, on account of an amendment, differs from the sheet previously filed. The letter accompanying the replacement sheets shall draw attention to the differences between the replaced sheets and the replacement sheets and shall preferably also explain the reasons for the amendment.
(b) Where the amendment consists in the deletion of passages or in minor alterations or additions, the replacement sheet referred to in paragraph (a) may be a copy of the relevant sheet of the international application containing the alterations or additions, provided that the clarity and direct reproducibility of that sheet are not adversely affected. To the extent that any amendment results in the cancellation of an entire sheet, that amendment shall be communicated in a letter which shall preferably also explain the reasons for the amendment.
66.9 Language of Amendments
(a) Subject to paragraphs (b) and (c), if the international application has been filed in a language other than the language in which it is published, any amendment, as well as any letter referred to in Rule 66.8, shall be submitted in the language of publication.
(b) If the international preliminary examination is carried out, pursuant to Rule 55.2, on the basis of a translation of the international application, any amendment, as well as any letter referred to in paragraph (a), shall be submitted in the language of that translation.
(c) Subject to Rule 55.3, if an amendment or a letter is not submitted in a language as required under paragraph (a) or (b), the International Preliminary Examining Authority shall, if practicable having regard to the time limit for establishing the international preliminary examination report, invite the applicant to furnish the amendment or letter in the required language within a time limit which shall be reasonable under the circumstances.
(d) If the applicant fails to comply, within the time limit under paragraph (c), with the invitation to furnish an amendment in the required language, the amendment shall not be taken into account for the purposes of the international preliminary examination. If the applicant fails to comply, within the time limit under paragraph (c), with the invitation to furnish a letter referred to in paragraph (a) in the required language, the amendment concerned need not be taken into account for the purposes of the international preliminary examination.
Rule 67 Subject Matter under Article 34 (4) (a) (i)
67.1 Definition
No International Preliminary Examining Authority shall be required to carry out an international preliminary examination on an international application if, and to the extent to which, its subject matter is any of the following:
(i) scientific and mathematical theories,
(ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
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(iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,
(iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
(v) mere presentations of information,
(vi) computer programs to the extent that the International Preliminary Examining Authority is not equipped to carry out an international preliminary examination concerning such programs.
Rule 68 Lack of Unity of Invention (International Preliminary Examination)
68.1 No Invitation to Restrict or Pay
Where the International Preliminary Examining Authority finds that the requirement of unity of invention is not complied with and chooses not to invite the applicant to restrict the claims or to pay additional fees, it shall proceed with the international preliminary examination, subject to Article 34 (4) (b) and Rule 66.1 (e), in respect of the entire international application, but shall indicate, in any written opinion and in the international preliminary examination report, that it considers that the requirement of unity of invention is not fulfilled and it shall specify the reasons therefor.
68.2 Invitation to Restrict or Pay
Where the International Preliminary Examining Authority finds that the requirement of unity of invention is not complied with and chooses to invite the applicant, at his option, to restrict the claims or to pay additional fees, it shall specify at least one possibility of restriction which, in the opinion of the International Preliminary Examining Authority, would be in compliance with the applicable requirement, and shall specify the amount of the additional fees and the reasons for which the international application is not considered as complying with the requirement of unity of invention. It shall, at the same time, fix a time limit, with regard to the circumstances of the case, for complying with the invitation; such time limit shall not be shorter than 1 month, and it shall not be longer than 2 months, from the date of the invitation.
68.3 Additional Fees
(a) The amount of the additional fee due for international preliminary examination under Article 34 (3) (a) shall be determined by the competent International Preliminary Examining Authority.
(b) The additional fee due for international preliminary examination under Article 34 (3) (a) shall be payable direct to the International Preliminary Examining Authority.
(c) Any applicant may pay the additional fee under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the amount of the required additional fee is excessive. Such protest shall be examined by a three-member board or other special instance of the International Preliminary Examining Authority, or any competent higher authority, which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fee. On the
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request of the applicant, the text of both the protest and the decision thereon shall be notified to the elected Offices as an annex to the international preliminary examination report.
(d) The three-member board, special instance or competent higher authority, referred to in paragraph (c), shall not comprise any person who made the decision which is the subject of the protest.
(e) Where the applicant has, under paragraph (c), paid an additional fee under protest, the International Preliminary Examining Authority may, after a prior review of the justification for the invitation to pay an additional fee, require that the applicant pay a fee for the examination of the protest (“protest fee”). The protest fee shall be paid within one month from the date of the notification to the applicant of the result of the review. If the protest fee is not so paid, the protest shall be considered withdrawn. The protest fee shall be refunded to the applicant where the three-member board, special instance or higher authority referred to in paragraph (c) finds that the protest was entirely justified.
68.4 Procedure in the Case of Insufficient Restriction of the Claims
If the applicant restricts the claims but not sufficiently to comply with the requirement of unity of invention, the International Preliminary Examining Authority shall proceed as provided in Article 34 (3) (c).
68.5 Main Invention
In case of doubt which invention is the main invention for the purposes of Article 34 (3) (c), the invention first mentioned in the claims shall be considered the main invention.
Rule 69 Start of and Time Limit for International Preliminary Examination
69.1 Start of International Preliminary Examination
(a) Subject to paragraphs (b) to (e), the International Preliminary Examining Authority shall start the international preliminary examination when it is in possession both of the demand and of either the international search report or a notice of the declaration by the International Searching Authority under Article 17 (2) (a) that no international search report will be established.
(b) If the competent International Preliminary Examining Authority is part of the same national Office or intergovernmental organization as the competent International Searching Authority, the international preliminary examination may, if the International Preliminary Examining Authority so wishes and subject to paragraph (d), start at the same time as the international search.
(c) Where the statement concerning amendments contains an indication that amendments under Article 19 are to be taken into account (Rule 53.9 (a) (i)), the International Preliminary Examining Authority shall not start the international preliminary examination before it has received a copy of the amendments concerned.
(d) Where the statement concerning amendments contains an indication that the start of the international preliminary examination is to be postponed (Rule 53.9 (b)), the International Preliminary Examining Authority shall not start the international preliminary examination before
(i) it has received a copy of any amendments made under Article 19,
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(ii) it has received a notice from the applicant that he does not wish to make amendments under Article 19, or
(iii) the expiration of 20 months from the priority date,
whichever occurs first.
(e) Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand (Rule 53.9 (c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Authority shall not start the international preliminary examination before it has received the amendments or before the time limit fixed in the invitation referred to in Rule 60.1 (g) has expired, whichever occurs first.
69.2 Time Limit for International Preliminary Examination
The time limit for establishing the international preliminary examination report shall be:
(i) 28 months from the priority date, or
(ii) eight months from the date of payment of the fees referred to in Rules 57.1 and 58.1 (a), or
(iii) eight months from the date of receipt by the International Preliminary Examining Authority of the translation furnished under Rule 55.2,
whichever expires last.
Rule 70 The International Preliminary Examination Report
70.1 Definition
For the purposes of this Rule, “report” shall mean international preliminary examination report.
70.2 Basis of the Report
(a) If the claims have been amended, the report shall issue on the claims as amended.
(b) If, pursuant to Rule 66.7 (a) or (b), the report is established as if the priority had not been claimed, the report shall so indicate.
(c) If the International Preliminary Examining Authority considers that any amendment goes beyond the disclosure in the international application as filed, the report shall be established as if such amendment had not been made, and the report shall so indicate. It shall also indicate the reasons why it considers that the amendment goes beyond the said disclosure.
(d) Where claims relate to inventions in respect of which no international search report has been established and have therefore not been the subject of international preliminary examination, the international preliminary examination report shall so indicate.
70.3 Identifications
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The report shall identify the International Preliminary Examining Authority which established it by indicating the name of such Authority, and the international application by indicating the international application number, the name of the applicant, and the international filing date.
70.4 Dates
The report shall indicate:
(i) the date on which the demand was submitted, and
(ii) the date of the report; that date shall be the date on which the report is completed.
70.5 Classification
(a) The report shall repeat the classification given under Rule 43.3 if the International Preliminary Examining Authority agrees with such classification.
(b) Otherwise, the International Preliminary Examining Authority shall indicate in the report the classification, at least according to the International Patent Classification, which it considers correct.
70.6 Statement under Article 35 (2)
(a) The statement referred to in Article 35 (2) shall consist of the words “YES” or “NO,” or their equivalent in the language of the report, or some appropriate sign provided for in the Administrative Instructions, and shall be accompanied by the citations, explanations and observations, if any, referred to in the last sentence of Article 35 (2).
(b) If any of the three criteria referred to in Article 35 (2) (that is, novelty, inventive step (non- obviousness), industrial applicability) is not satisfied, the statement shall be negative. If, in such a case, any of the criteria, taken separately, is satisfied, the report shall specify the criterion or criteria so satisfied.
70.7 Citations under Article 35 (2)
(a) The report shall cite the documents considered to be relevant for supporting the statements made under Article 35 (2), whether or not such documents are cited in the international search report. Documents cited in the international search report need only be cited in the report when they are considered by the International Preliminary Examining Authority to be relevant.
(b) The provisions of Rule 43.5 (b) and (e) shall apply also to the report.
70.8 Explanations under Article 35 (2)
The Administrative Instructions shall contain guidelines for cases in which the explanations referred to in Article 35 (2) should or should not be given and the form of such explanations. Such guidelines shall be based on the following principles:
(i) explanations shall be given whenever the statement in relation to any claim is negative;
(ii) explanations shall be given whenever the statement is positive unless the reason for citing any document is easy to imagine on the basis of consultation of the cited document;
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(iii) generally, explanations shall be given if the case provided for in the last sentence of Rule 70.6 (b) obtains.
70.9 Non-Written Disclosures
Any non-written disclosure referred to in the report by virtue of Rule 64.2 shall be mentioned by indicating its kind, the date on which the written disclosure referring to the non-written disclosure was made available to the public, and the date on which the non-written disclosure occurred in public.
70.10 Certain Published Documents
Any published application or any patent referred to in the report by virtue of Rule 64.3 shall be mentioned as such and shall be accompanied by an indication of its date of publication, of its filing date, and its claimed priority date (if any). In respect of the priority date of any such document, the report may indicate that, in the opinion of the International Preliminary Examining Authority, such date has not been validly claimed.
70.11 Mention of Amendments
If, before the International Preliminary Examining Authority, amendments have been made, this fact shall be indicated in the report. Where any amendment has resulted in the cancellation of an entire sheet, this fact shall also be specified in the report.
70.12 Mention of Certain Defects and Other Matters
If the International Preliminary Examining Authority considers that, at the time it prepares the report:
(i) the international application contains any of the defects referred to in Rule 66.2 (a) (iii), it shall include this opinion and the reasons therefor in the report;
(ii) the international application calls for any of the observations referred to in Rule 66.2 (a) (v), it may include this opinion in the report and, if it does, it shall also indicate in the report the reasons for such opinion,
(iii) any of the situations referred to in Article 34 (4) exists, it shall state this opinion and the reasons therefor in the report;
(iv) a nucleotide and/or amino acid sequence listing is not available to it in such a form that a meaningful international preliminary examination can be carried out, it shall so state in the report.
70.13 Remarks Concerning Unity of Invention
If the applicant paid additional fees for the international preliminary examination, or if the international application or the international preliminary examination was restricted under Article 34 (3), the report shall so indicate. Furthermore, where the international preliminary examination was carried out on restricted claims (Article 34 (3) (a)), or on the main invention only (Article 34 (3) (c)), the report shall indicate what parts of the international application were and what parts were not the subject of international preliminary examination. The report shall contain the indications provided for in Rule 68.1, where the International Preliminary Examining Authority chose not to invite the applicant to restrict the claims or to pay additional fees.
70.14 Authorized Officer
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The report shall indicate the name of the officer of the International Preliminary Examining Authority responsible for that report.
70.15 Form
The physical requirements as to the form of the report shall be prescribed by the Administrative Instructions.
70.16 Annexes to the Report
Each replacement sheet under Rule 66.8 (a) or (b), each replacement sheet containing amendments under Article 19 and each replacement sheet containing rectifications of obvious errors authorized under Rule 91.1 (e) (iii) shall, unless superseded by later replacement sheets or amendments resulting in the cancellation of entire sheets under Rule 66.8 (b), be annexed to the report. Amendments under Article 19 which have been considered as reversed by an amendment under Article 34 and letters under Rule 66.8 shall not be annexed.
70.17 Languages of the Report and the Annexes
The report and any annex shall be in the language in which the international application to which they relate is published, or, if the international preliminary examination is carried out, pursuant to Rule 55.2, on the basis of a translation of the international application, in the language of that translation.
Rule 71 Transmittal of the International Preliminary Examination Report
71.1 Recipients
The International Preliminary Examining Authority shall, on the same day, transmit one copy of the international preliminary examination report and its annexes, if any, to the International Bureau, and one copy to the applicant.
71.2 Copies of Cited Documents
(a) The request under Article 36 (4) may be presented any time during 7 years from the international filing date of the international application to which the report relates.
(b) The International Preliminary Examining Authority may require that the party (applicant or elected Office) presenting the request pay to it the cost of preparing and mailing the copies. The level of the cost of preparing copies shall be provided for in the agreements referred to in Article 32 (2) between the International Preliminary Examining Authorities and the International Bureau.
(d) Any International Preliminary Examining Authority may perform the obligations referred to in paragraphs (a) and (b) through another agency responsible to it.
Rule 72 Translation of the International Preliminary Examination Report
72.1 Languages
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(a) Any elected State may require that the international preliminary examination report, established in any language other than the official language, or one of the official languages, of its national Office, be translated into English.
(b) Any such requirement shall be notified to the International Bureau, which shall promptly publish it in the Gazette.
72.2 Copy of Translation for the Applicant
The International Bureau shall transmit a copy of the translation referred to in Rule 72.1 (a) of the international preliminary examination report to the applicant at the same time as it communicates such translation to the interested elected Office or Offices.
72.3 Observations on the Translation
The applicant may make written observations on what, in his opinion, are errors of translation in the translation of the international preliminary examination report and shall send a copy of any such observations to each of the interested elected Offices and a copy to the International Bureau.
Rule 73 Communication of the International Preliminary Examination Report
73.1 Preparation of Copies
The International Bureau shall prepare the copies of the documents to be communicated under Article 36 (3) (a).
73.2 Time Limit for Communication
The communication provided for in Article 36 (3) (a) shall be effected as promptly as possible but not earlier than the communication under Article 20.
Rule 74 Translations of Annexes of the International Preliminary Examination Report
and Transmittal Thereof
74.1 Contents of Translation and Time Limit for Transmittal Thereof
(a) Where the furnishing of a translation of the international application is required by the elected Office under Article 39 (1), the applicant shall, within the time limit applicable under Article 39 (1), transmit a translation of any replacement sheet referred to in Rule 70.16 which is annexed to the international preliminary examination report, unless such sheet is in the language of the required translation of the international application. The same time limit shall apply where the furnishing of a translation of the international application to the elected Office must, because of a declaration made under Article 64 (2) (a) (i), be effected within the time limit applicable under Article 22.
(b) Where the furnishing under Article 39 (1) of a translation of the international application is not required by the elected Office, that Office may require the applicant to furnish, within the time limit applicable under that Article, a translation into the language in which the international application was published of any replacement sheet referred to in Rule 70.16 which is annexed to the international preliminary examination and is not in that language.
Rule 76 Copy, Translation and Fee under Article 39 (1); Translation of Priority Document
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76.4 Time Limit for Translation of Priority Document
The applicant shall not be required to furnish to any elected Office a translation of the priority document before the expiration of the applicable time limit under Article 39.
76.5 Application of Rules 22.1 (g), 49 and 51bis
Rules 22.1 (g), 49 and 51bis shall apply, provided that:
(i) any reference in the said Rules to the designated Office or to the designated State shall be construed as a reference to the elected Office or to the elected State, respectively;
(ii) any reference in the said Rules to Article 22 or Article 24 (2) shall be construed as a reference to Article 39 (1) or Article 39 (3), respectively;
(iii) the words “international applications filed” in Rule 49.1 (c) shall be replaced by the words “a demand submitted”;
(iv) for the purposes of Article 39 (1), where an international preliminary examination report has been established, a translation of any amendment under Article 19 shall only be required if that amendment is annexed to that report.
76.6 Transitional Provision
If, on July 12, 1991, Rule 76.5 (iv) is not compatible with the national law applied by the elected Office in respect of claims amended under Article 19, Rule 76.5 (iv) shall not apply in that respect to that elected Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1991. The information received shall be promptly published by the International Bureau in the Gazette.
Rule 77 Faculty under Article 39 (1) (b)
77.1 Exercise of Faculty
(a) Any Contracting State allowing a time limit expiring later than the time limit provided for in Article 39 (1) (a) shall notify the International Bureau of the time limit so fixed.
(b) Any notification received by the International Bureau under paragraph (a) shall be promptly published by the International Bureau in the Gazette.
(c) Notifications concerning the shortening of the previously fixed time limit shall be effective in relation to demands submitted after the expiration of 3 months computed from the date on which the notification was published by the International Bureau.
(d) Notifications concerning the lengthening of the previously fixed time limit shall become effective upon publication by the International Bureau in the Gazette in respect of demands pending at the time or submitted after the date of such publication, or, if the Contracting State effecting the notification fixes some later date, as from the latter date.
Rule 78 Amendment of the Claims, the Description, and the Drawings, before Elected Offices
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78.1 Time Limit Where Election Is Effected prior to Expiration of 19 Months from Priority Date
(a) Where the election of any Contracting State is effected prior to the expiration of the 19th month from the priority date, the applicant shall, if he so wishes, exercise the right under Article 41 to amend the claims, the description and the drawings, before the elected Office concerned within one month from the fulfilment of the requirements under Article 39 (1) (a), provided that, if the transmittal of the international preliminary examination report under Article 36 (1) has not taken place by the expiration of the time limit applicable under Article 39, he shall exercise the said right not later than four months after such expiration date. In either case, the applicant may exercise the said right at any other time if so permitted by the national law of the said State.
(b) In any elected State in which the national law provides that examination starts only on special request, the national law may provide that the time limit within or the time at which the applicant may exercise the right under Article 41 shall, where the election of any Contracting State is effected prior to the expiration of the 19th month from the priority date, be the same as that provided by the national law for the filing of amendments in the case of the examination, on special request, of national applications, provided that such time limit shall not expire prior to, or such time shall not come before, the expiration of the time limit applicable under paragraph (a).
78.2 Time Limit Where Election Is Effected After Expiration of 19 Months from Priority Date
Where the election of any Contracting State has been effected after the expiration of the 19th month from the priority date and the applicant wishes to make amendments under Article 41, the time limit for making amendments under Article 28 shall apply.
78.3 Utility Models
The provisions of Rules 6.5 and 13.5 shall apply, mutatis mutandis, before elected Offices. If the election was made before the expiration of the 19th month from the priority date, the reference to the time limit applicable under Article 22 is replaced by a reference to the time limit applicable under Article 39.
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PART D Rules Concerning Chapter III of the Treaty
Rule 79 Calendar
79.1 Expressing Dates
Applicants, national Offices, receiving Offices, International Searching and Preliminary Examining Authorities, and the International Bureau, shall, for the purposes of the Treaty and the Regulations, express any date in terms of the Christian era and the Gregorian calendar, or, if they use other eras and calendars, they shall also express any date in terms of the Christian era and the Gregorian calendar.
Rule 80 Computation of Time Limits
80.1 Periods Expressed in Years
When a period is expressed as one year or a certain number of years, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent year in the month having the same name and on the day having the same number as the month and the day on which the said event occurred provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.
80.2 Periods Expressed in Months
When a period is expressed as one month or a certain number of months, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent month on the day which has the same number as the day on which the said event occurred, provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.
80.3 Periods Expressed in Days
When a period is expressed as a certain number of days, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire on the day on which the last day of the count has been reached.
80.4 Local Dates
(a) The date which is taken into consideration as the starting date of the computation of any period shall be the date which prevails in the locality at the time when the relevant event occurred.
(b) The date on which any period expires shall be the date which prevails in the locality in which the required document must be filed or the required fee must be paid.
80.5 Expiration on a Non-Working Day
If the expiration of any period during which any document or fee must reach a national Office or intergovernmental organization falls on a day on which such Office or organization is not open to the public for the purposes of the transaction of official business, or on which ordinary mail is not delivered in the locality in which such Office or organization is situated, the period shall expire on the next subsequent day on which neither of the said two circumstances exists.
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80.6 Date of Documents
Where a period starts on the day of the date of a document or letter emanating from a national Office or intergovernmental organization, any interested party may prove that the said document or letter was mailed on a day later than the date it bears, in which case the date of actual mailing shall, for the purposes of computing the period, be considered to be the date on which the period starts. Irrespective of the date on which such a document or letter was mailed, if the applicant offers to the national Office or intergovernmental organization evidence which satisfies the national Office or intergovernmental organization that the document or letter was received more than 7 days after the date it bears, the national Office or intergovernmental organization shall treat the period starting from the date of the document or letter as expiring later by an additional number of days which is equal to the number of days which the document or letter was received later than 7 days after the date it bears.
80.7 End of Working Day
(a) A period expiring on a given day shall expire at the moment the national Office or intergovernmental organization with which the document must be filed or to which the fee must be paid closes for business on that day.
(b) Any Office or organization may depart from the provisions of paragraph (a) up to midnight on the relevant day.
Rule 81 Modification of Time Limits Fixed in the Treaty
81.1 Proposal
(a) Any Contracting State or the Director General may propose a modification under Article 47 (2).
(b) Proposals made by a Contracting State shall be presented to the Director General.
81.2 Decision by the Assembly
(a) When the proposal is made to the Assembly, its text shall be sent by the Director General to all Contracting States at least 2 months in advance of that session of the Assembly whose agenda includes the proposal.
(b) During the discussion of the proposal in the Assembly, the proposal may be amended or consequential amendments proposed.
(c) The proposal shall be considered adopted if none of the Contracting States present at the time of voting votes against the proposal.
81.3 Voting by Correspondence
(a) When voting by correspondence is chosen, the proposal shall be included in a written communication from the Director General to the Contracting States, inviting them to express their vote in writing.
(b) The invitation shall fix the time limit within which the reply containing the vote expressed in writing must reach the International Bureau. That time limit shall not be less than 3 months from the date of the invitation.
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(c) Replies must be either positive or negative. Proposals for amendments or mere observations shall not be regarded as votes.
(d) The proposal shall be considered adopted if none of the Contracting States opposes the amendment and if at least one-half of the Contracting States express either approval or indifference or abstention.
Rule 82 Irregularities in the Mail Service
82.1 Delay or Loss in Mail
(a) Any interested party may offer evidence that he has mailed the document or letter 5 days prior to the expiration of the time limit. Except in cases where surface mail normally arrives at its destination within 2 days of mailing, or where no airmail service is available, such evidence may be offered only if the mailing was by airmail. In any case, evidence may be offered only if the mailing was by mail registered by the postal authorities.
(b) If the mailing, in accordance with paragraph (a), of a document or letter is proven to the satisfaction of the national Office or intergovernmental organization which is the addressee, delay in arrival shall be excused, or, if the document or letter is lost in the mail, substitution for it of a new copy shall be permitted, provided that the interested party proves to the satisfaction of the said Office or organization that the document or letter offered in substitution is identical with the document or letter lost.
(c) In the cases provided for in paragraph (b), evidence of mailing within the prescribed time limit, and, where the document or letter was lost, the substitute document or letter as well as the evidence concerning its identity with the document or letter lost, shall be submitted within 1 month after the date on which the interested party noticed—or with due diligence should have noticed—the delay or loss, and in no case later than 6 months after the expiration of the time limit applicable in the given case.
(d) Any national Office or intergovernmental organization which has notified the International Bureau that it will do so shall, where a delivery service other than the postal authorities is used to mail a document or letter, apply the provisions of paragraphs (a) to (c) as if the delivery service was a postal authority. In such a case, the last sentence of paragraph (a) shall not apply but evidence may be offered only if details of the mailing were recorded by the delivery service at the time of mailing. The notification may contain an indication that it applies only to mailings using specified delivery services or delivery services which satisfy specified criteria. The International Bureau shall publish the information so notified in the Gazette.
(e) Any national Office or intergovernmental organization may proceed under paragraph (d):
(i) even if, where applicable, the delivery service used was not one of those specified, or did not satisfy the criteria specified, in the relevant notification under paragraph (d), or
(ii) even if that Office or organization has not sent to the International Bureau a notification under paragraph (d).
82.2 Interruption in the Mail Service
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(a) Any interested party may offer evidence that on any of the 10 days preceding the day of expiration of the time limit the postal service was interrupted on account of war, revolution, civil disorder, strike, natural calamity, or other like reason, in the locality where the interested party resides or has his place of business or is staying.
(b) If such circumstances are proven to the satisfaction of the national Office or intergovernmental organization which is the addressee, delay in arrival shall be excused, provided that the interested party proves to the satisfaction of the said Office or organization that he effected the mailing within 5 days after the mail service was resumed. The provisions of Rule 82.1 (c) shall apply mutatis mutandis.
Rule 82bis. Excuse by the Designated or Elected State of Delays in Meeting Certain Time
Limits
82bis.1 Meaning of “Time Limit” in Article 48 (2)
The reference to “any time limit” in Article 48 (2) shall be construed as comprising a reference:
(i) to any time limit fixed in the Treaty or these Regulations;
(ii) to any time limit fixed by the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau or applicable by the receiving Office under its national law;
(iii) to any time limit fixed by, or in the national law applicable by, the designated or elected Office, for the performance of any act by the applicant before that Office.
82bis.2 Reinstatement of Rights and Other Provisions to which Article 48 (2) Applies
The provisions of the national law which is referred to in Article 48 (2) concerning the excusing, by the designated or elected State, of any delay in meeting any time limit are those provisions which provide for reinstatement of rights, restoration, restitutio in integrum or further processing in spite of non-compliance with a time limit, and any other provision providing for the extension of time limits or for excusing delays in meeting time limits.
Rule 82ter Rectification of Errors Made by the Receiving Office or by the International Bureau
82ter.1 Errors Concerning the International Filing Date and the Priority Claim
If the applicant proves to the satisfaction of any designated or elected Office that the international filing date is incorrect due to an error made by the receiving Office or that the priority claim has been erroneously considered by the receiving Office or the International Bureau not to have been made, and if the error is an error such that, had it been made by the designated or elected Office itself, that Office would rectify it under the national law or national practice, the said Office shall rectify the error and shall treat the international application as if it had been accorded the rectified international filing date or as if the priority claim had not been considered not to have been made.
Rule 83 Right to Practice before International Authorities
83.1 Proof of Right
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The International Bureau, the competent International Searching Authority, and the competent International Preliminary Examining Authority, may require the production of proof of the right to practice referred to in Article 49.
83.1bis Where the International Bureau Is the Receiving Office
(a) Any person who has the right to practice before the national Office of, or acting for, a Contracting State of which the applicant or, if there are two or more applicants, any of the applicants is a resident or national shall be entitled to practice in respect of the international application before the International Bureau in its capacity as receiving Office under Rule 19.1 (a) (iii).
(b) Any person having the right to practice before the International Bureau in its capacity as receiving Office in respect of an international application shall be entitled to practice in respect of that application before the International Bureau in any other capacity and before the competent International Searching Authority and competent International Preliminary Examining Authority.
83.2 Information
(a) The national Office or the intergovernmental organization which the interested person is alleged to have a right to practice before shall, upon request, inform the International Bureau, the competent International Searching Authority, or the competent International Preliminary Examining Authority, whether such person has the right to practice before it.
(b) Such information shall be binding upon the International Bureau, the International Searching Authority, or the International Preliminary Examining Authority, as the case may be.
PART E Rules Concerning Chapter V of the Treaty
Rule 84 Expenses of Delegations
84.1 Expenses Borne by Governments
The expenses of each Delegation participating in any organ established by or under the Treaty shall be borne by the Government which has appointed it.
Rule 85 Absence of Quorum in the Assembly
85.1 Voting by Correspondence
In the case provided for in Article 53 (5) (b), the International Bureau shall communicate the decisions of the Assembly (other than those concerning the Assembly’s own procedure) to the Contracting States which were not represented and shall invite them to express in writing their vote or abstention within a period of 3 months from the date of the communication. If, at the expiration of that period, the number of Contracting States having thus expressed their vote or abstention attains the number of Contracting States which was lacking for attaining the quorum in the session itself, such decisions shall take effect provided that at the same time the required majority still obtains.
Rule 86 The Gazette
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86.1 Contents and Form
(a) The Gazette referred to in Article 55 (4) shall contain:
(i) for each published international application, the data specified by the Administrative Instructions taken from the front page of the pamphlet published under Rule 48, the drawing (if any) appearing on the said front page, and the abstract,
(ii) the schedule of all fees payable to the receiving Offices, the International Bureau, and the International Searching and Preliminary Examining Authorities,
(iii) notices the publication of which is required under the Treaty or these Regulations,
(iv) information, if and to the extent furnished to the International Bureau by the designated or elected Offices, on the question whether the requirements provided for in Articles 22 or 39 have been complied with in respect of the international applications designating or electing the Office concerned,
(v) any other useful information prescribed by the Administrative Instructions, provided access to such information is not prohibited under the Treaty or these Regulations.
(b) The information referred to in paragraph (a) shall be made available in two forms:
(i) as a Gazette in paper form, which shall contain the data specified by the Administrative Instructions taken from the front page of the pamphlet published under Rule 48 (‘bibliographic data’) and the matters referred to in paragraph (a) (ii) to (v);
(ii) as a Gazette in electronic form, which shall contain the bibliographic data, the drawing (if any) appearing on the said front page, and the abstract.
86.2 Languages; Access to the Gazette
(a) The Gazette in paper form shall be published in a bilingual (English and French) edition. It shall also be published in editions in any other language, provided the cost of publication is assured through sales or subventions.
(b) The Assembly may order the publication of the Gazette in languages other than those referred to in paragraph (a).
(c) The Gazette in electronic form referred to in Rule 86.1 (b) (ii) shall be made accessible, in English and French at the same time, by any electronic ways and means specified in the Administrative Instructions. The translations shall be ensured by the International Bureau in English and French. The International Bureau shall ensure that the making accessible of the Gazette in electronic form shall be effected on, or as soon as possible after, the date of publication of the pamphlet containing the international application.
86.3 Frequency
The frequency of publication of the Gazette shall be determined by the Director General.
86.4 Sale
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The subscription and other sale prices of the Gazette shall be determined by the Director General.
86.5 Title
The title of the Gazette shall be determined by the Director General.
86.6 Further Details
Further details concerning the Gazette may be provided for in the Administrative Instructions.
Rule 87 Copies of Publications
87.1 International Searching and Preliminary Examining Authorities
Any International Searching or Preliminary Examining Authority shall have the right to receive, free of charge, two copies of every published international application, of the Gazette, and of any other publication of general interest published by the International Bureau in connection with the Treaty or these Regulations.
87.2 National Offices
(a) Any national Office shall have the right to receive, free of charge, one copy of every published international application, of the Gazette, and of any other publication of general interest published by the International Bureau in connection with the Treaty or these Regulations.
(b) The publications referred to in paragraph (a) shall be sent on special request. If any publication is available in more than one language, the request shall specify the language or languages in which it is desired.
Rule 88 Amendment of the Regulations
88.1 Requirement of Unanimity
Amendment of the following provisions of these Regulations shall require that no State having the right to vote in the Assembly vote against the proposed amendment:
(i) Rule 14.1 (Transmittal Fee),
(iii) Rule 22.3 (Time Limit Under Article 12 (3)),
(iv) Rule 33 (Relevant Prior Art for International Search),
(v) Rule 64 (Prior Art for International Preliminary Examination),
(vi) Rule 81 (Modification of Time Limits Fixed in the Treaty),
(vii) the present paragraph (i.e., Rule 88.1).
88.3 Requirement of Absence of Opposition by Certain States
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Amendment of the following provisions of these Regulations shall require that no State referred to in Article 58 (3) (a) (ii) and having the right to vote in the Assembly vote against the proposed amendment:
(i) Rule 34 (Minimum Documentation),
(ii) Rule 39 (Subject Matter Under Article 17 (2) (a) (i)),
(iii) Rule 67 (Subject Matter Under Article 34 (4) (a) (i)),
(iv) the present paragraph (i.e., Rule 88.3).
88.4 Procedure
Any proposal for amending a provision referred to in Rules 88.1 or 88.3 shall, if the proposal is to be decided upon in the Assembly, be communicated to all Contracting States at least 2 months prior to the opening of that session of the Assembly which is called upon to make a decision on the proposal.
Rule 89 Administrative Instructions
89.1 Scope
(a) The Administrative Instructions shall contain provisions:
(i) concerning matters in respect of which these Regulations expressly refer to such Instructions,
(ii) concerning any details in respect of the application of these Regulations.
(b) The Administrative Instructions shall not be in conflict with the provisions of the Treaty, these Regulations, or any agreement concluded by the International Bureau with an International Searching Authority, or an International Preliminary Examining Authority.
89.2 Source
(a) The Administrative Instructions shall be drawn up and promulgated by the Director General after consultation with the receiving Offices and the International Searching and Preliminary Examining Authorities.
(b) They may be modified by the Director General after consultation with the Offices or Authorities which have a direct interest in the proposed modification.
(c) The Assembly may invite the Director General to modify the Administrative Instructions, and the Director General shall proceed accordingly.
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89.3 Publication and Entry Into Force
(a) The Administrative Instructions and any modification thereof shall be published in the Gazette.
(b) Each publication shall specify the date on which the published provisions come into effect. The dates may be different for different provisions, provided that no provision may be declared effective prior to its publication in the Gazette.
PART F Rules Concerning Several Chapters of the Treaty
Rule 89bis Filing, Processing and Transmission of International Applications and Other Documents in
Electronic Form or by Electronic Means
89bis.1 International Applications
(a) International applications may, subject to paragraphs (b) to (e), be filed and processed in electronic form or by electronic means, in accordance with the Administrative Instructions, provided that any receiving Office shall permit the filing of international applications on paper.
(b) These Regulations shall apply mutatis mutandis to international applications filed in electronic form or by electronic means, subject to any special provisions of the Administrative Instructions.
(c) The Administrative Instructions shall set out the provisions and requirements in relation to the filing and processing of international applications filed, in whole or in part, in electronic form or by electronic means, including but not limited to, provisions and requirements in relation to acknowledgment of receipt, procedures relating to the according of an international filing date, physical requirements and the consequences of non-compliance with those requirements, signature of documents, means of authentication of documents and of the identity of parties communicating with Offices and authorities, and the operation of Article 12 in relation to the home copy, the record copy and the search copy, and may contain different provisions and requirements in relation to international applications filed in different languages.
(d) No national Office or intergovernmental organization shall be obliged to receive or process international applications filed in electronic form or by electronic means unless it has notified the International Bureau that it is prepared to do so in compliance with the applicable provisions of the Administrative Instructions. The International Bureau shall publish the information so notified in the Gazette.
(e) No receiving Office which has given the International Bureau a notification under paragraph (d) may refuse to process an international application filed in electronic form or by electronic means which complies with the applicable requirements under the Administrative Instructions.
89bis.2 Other Documents
Rule 89bis.1 shall apply mutatis mutandis to other documents and correspondence relating to international applications.
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89bis.3 Transmittal Between Offices
Where the Treaty, these Regulations or the Administrative Instructions provide for documents, notifications, communications or correspondence to be transmitted by one national Office or intergovernmental organization to another, such transmittal may, where so agreed by both the sender and the receiver, be effected in electronic form or by electronic means.
Rule 89ter. Copies in Electronic Form of Documents Filed on Paper
89ter.1 Copies in Electronic Form of Documents Filed on Paper
Any national Office or intergovernmental organization may provide that, where an international application or other document relating to an international application is filed on paper, a copy thereof in electronic form, in accordance with the Administrative Instructions, may be furnished by the applicant.
Rule 90 Agents and Common Representatives
90.1 Appointment as Agent
(a) A person having the right to practice before the national Office with which the international application is filed or, where the international application is filed with the International Bureau, having the right to practice in respect of the international application before the International Bureau as receiving Office may be appointed by the applicant as his agent to represent him before the receiving Office, the International Bureau, the International Searching Authority and the International Preliminary Examining Authority.
(b) A person having the right to practice before the national Office or intergovernmental organization which acts as the International Searching Authority may be appointed by the applicant as his agent to represent him specifically before that Authority.
(c) A person having the right to practice before the national Office or intergovernmental organization which acts as the International Preliminary Examining Authority may be appointed by the applicant as his agent to represent him specifically before that Authority.
(d) An agent appointed under paragraph (a) may, unless otherwise indicated in the document appointing him, appoint one or more sub-agents to represent the applicant as the applicant’s agent:
(i) before the receiving Office, the International Bureau, the International Searching Authority and the International Preliminary Examining Authority, provided that any person so appointed as sub-agent has the right to practice before the national Office with which the international application was filed or to practice in respect of the international application before the International Bureau as receiving Office, as the case may be;
(ii) specifically before the International Searching Authority or the International Preliminary Examining Authority, provided that any person so appointed as sub-agent has the right to practice before the national Office or intergovernmental organization which acts as the International Searching Authority or International Preliminary Examining Authority, as the case may be.
90.2 Common Representative
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(a) Where there are two or more applicants and the applicants have not appointed an agent representing all of them (“a common agent”) under Rule 90.1 (a), one of the applicants who is entitled to file an international application according to Article 9 may be appointed by the other applicants as their common representative.
(b) Where there are two or more applicants and all the applicants have not appointed a common agent under Rule 90.1 (a) or a common representative under paragraph (a), the applicant first named in the request who is entitled according to Rule 19.1 to file an international application with the receiving Office shall be considered to be the common representative of all the applicants.
90.3 Effects of Acts by or in Relation to Agents and Common Representatives
(a) Any act by or in relation to an agent shall have the effect of an act by or in relation to the applicant or applicants concerned.
(b) If there are two or more agents representing the same applicant or applicants, any act by or in relation to any of those agents shall have the effect of an act by or in relation to the said applicant or applicants.
(c) Subject to Rule 90bis.5 (a), second sentence, any act by or in relation to a common representative or his agent shall have the effect of an act by or in relation to all the applicants.
90.4 Manner of Appointment of Agent or Common Representative
(a) The appointment of an agent shall be effected by the applicant signing the request, the demand or a separate power of attorney. Where there are two or more applicants, the appointment of a common agent or common representative shall be effected by each applicant signing, at his choice, the request, the demand or a separate power of attorney.
(b) Subject to Rule 90.5, a separate power of attorney shall be submitted to either the receiving Office or the International Bureau, provided that, where a power of attorney appoints an agent under Rule 90.1 (b), (c) or (d) (ii), it shall be submitted to the International Searching Authority or the International Preliminary Examining Authority, as the case may be.
(c) If the separate power of attorney is not signed, or if the required separate power of attorney is missing, or if the indication of the name or address of the appointed person does not comply with Rule 4.4, the power of attorney shall be considered non-existent unless the defect is corrected.
90.5 General Power of Attorney
(a) Appointment of an agent in relation to a particular international application may be effected by referring in the request, the demand or a separate notice to an existing separate power of attorney appointing that agent to represent the applicant in relation to any international application which may be filed by that applicant (i.e., a “general power of attorney”), provided that:
(i) the general power of attorney has been deposited in accordance with paragraph (b), and
(ii) a copy of it is attached to the request, the demand or the separate notice, as the case may be; that copy need not be signed.
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(b) The general power of attorney shall be deposited with the receiving Office, provided that, where it appoints an agent under Rule 90.1 (b), (c) or (d) (ii), it shall be deposited with the International Searching Authority or the International Preliminary Examining Authority, as the case may be.
90.6 Revocation and Renunciation
(a) Any appointment of an agent or common representative may be revoked by the persons who made the appointment or by their successors in title, in which case any appointment of a sub-agent under Rule 90.1 (d) by that agent shall also be considered as revoked. Any appointment of a sub-agent under Rule 90.1 (d) may also be revoked by the applicant concerned.
(b) The appointment of an agent under Rule 90.1 (a) shall, unless otherwise indicated, have the effect of revoking any earlier appointment of an agent made under that Rule.
(c) The appointment of a common representative shall, unless otherwise indicated, have the effect of revoking any earlier appointment of a common representative.
(d) An agent or a common representative may renounce his appointment by a notification signed by him.
(e) Rule 90.4 (b) and (c) shall apply, mutatis mutandis, to a document containing a revocation or renunciation under this Rule.
Rule 90bis Withdrawals
90bis.1 Withdrawal of the International Application
(a) The applicant may withdraw the international application at any time prior to the expiration of 20 months from the priority date or, where Article 39 (1) applies, prior to the expiration of 30 months from the priority date.
(b) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39 (1) applies, to the International Preliminary Examining Authority.
(c) No international publication of the international application shall be effected if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.
90bis.2 Withdrawal of Designations
(a) The applicant may withdraw the designation of any designated State at any time prior to the expiration of 20 months from the priority date or, where Article 39 (1) applies in respect of that State, prior to the expiration of 30 months from the priority date. Withdrawal of the designation of a State which has been elected shall entail withdrawal of the corresponding election under Rule 90bis.4.
(b) Where a State has been designated for the purpose of obtaining both a national patent and a regional patent, withdrawal of the designation of that State shall be taken to mean withdrawal of only the designation for the purpose of obtaining a national patent, except where otherwise indicated.
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(c) Withdrawal of the designations of all designated States shall be treated as withdrawal of the international application under Rule 90bis.1.
(d) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39 (1) applies, to the International Preliminary Examining Authority.
(e) No international publication of the designation shall be effected if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.
90bis.3 Withdrawal of Priority Claims
(a) The applicant may withdraw a priority claim, made in the international application under Article 8 (1), at any time prior to the expiration of 20 months from the priority date or, where Article 39 (1) applies, 30 months from the priority date.
(b) Where the international application contains more than one priority claim, the applicant may exercise the right provided for in paragraph (a) in respect of one or more or all of the priority claims.
(c) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39 (1) applies, to the International Preliminary Examining Authority.
(d) Where the withdrawal of a priority claim causes a change in the priority date, any time limit which is computed from the original priority date and which has not already expired shall, subject to paragraph (e), be computed from the priority date resulting from that change.
(e) In the case of the time limit referred to in Article 21 (2) (a), the International Bureau may nevertheless proceed with the international publication on the basis of the said time limit as computed from the original priority date if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau after the completion of the technical preparations for international publication.
90bis.4 Withdrawal of the Demand, or of Elections
(a) The applicant may withdraw the demand or any or all elections at any time prior to the expiration of 30 months from the priority date.
(b) Withdrawal shall be effective upon receipt of a notice addressed by the applicant to the International Bureau.
(c) If the notice of withdrawal is submitted by the applicant to the International Preliminary Examining Authority, that Authority shall mark the date of receipt on the notice and transmit it promptly to the International Bureau. The notice shall be considered to have been submitted to the International Bureau on the date marked.
90bis.5 Signature
(a) Any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 shall, subject to paragraph (b), be signed by the applicant. Where one of the applicants is considered to be the common representative
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under Rule 90.2 (b), such notice shall, subject to paragraph (b), require the signature of all the applicants.
(b) Where two or more applicants file an international application which designates a State whose national law requires that national applications be filed by the inventor and where an applicant for that designated State who is an inventor could not be found or reached after diligent effort, a notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 need not be signed by that applicant (“the applicant concerned”) if it is signed by at least one applicant and
(i) a statement is furnished explaining, to the satisfaction of the receiving Office, the International Bureau or the International Preliminary Examining Authority, as the case may be, the lack of signature of the applicant concerned, or
(ii) in the case of a notice of withdrawal referred to in Rule 90bis.1 (b), 90bis.2 (d) or 90bis.3 (c), the applicant concerned did not sign the request but the requirements of Rule 4.15 (b) were complied with, or
(iii) in the case of a notice of withdrawal referred to in Rule 90bis.4 (b), the applicant concerned did not sign the demand but the requirements of Rule 53.8 (b) were complied with, or did not sign the later election concerned but the requirements of Rule 56.1 (c) were complied with.
90bis.6 Effect of Withdrawal
(a) Withdrawal under Rule 90bis of the international application, any designation, any priority claim, the demand or any election shall have no effect in any designated or elected Office where the processing or examination of the international application has already started under Article 23 (2) or Article 40 (2).
(b) Where the international application is withdrawn under Rule 90bis.1, the international processing of the international application shall be discontinued.
(c) Where the demand or all elections are withdrawn under Rule 90bis.4, the processing of the international application by the International Preliminary Examining Authority shall be discontinued.
90bis.7 Faculty under Article 37 (4) (b)
(a) Any Contracting State whose national law provides for what is described in the second part of Article 37 (4) (b) shall notify the International Bureau in writing.
(b) The notification referred to in paragraph (a) shall be promptly published by the International Bureau in the Gazette, and shall have effect in respect of international applications filed more than one month after the date of such publication.
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Rule 91 Obvious Errors in Documents
91.1 Rectification
(a) Subject to paragraphs (b) to (gquater), obvious errors in the international application or other papers submitted by the applicant may be rectified.
(b) Errors which are due to the fact that something other than what was obviously intended was written in the international application or other paper shall be regarded as obvious errors. The rectification itself shall be obvious in the sense that anyone would immediately realize that nothing else could have been intended than what is offered as rectification.
(c) Omissions of entire elements or sheets of the international application, even if clearly resulting from inattention, at the stage, for example, of copying or assembling sheets, shall not be rectifiable.
(d) Rectification may be made on the request of the applicant. The authority having discovered what appears to be an obvious error may invite the applicant to present a request for rectification as provided in paragraphs (e) to (gquater). Rule 26.4 shall apply mutatis mutandis to the manner in which rectifications shall be requested.
(e) No rectification shall be made except with the express authorization:
(i) of the receiving Office if the error is in the request,
(ii) of the International Searching Authority if the error is in any part of the international application other than the request or in any paper submitted to that Authority,
(iii) of the International Preliminary Examining Authority if the error is in any part of the international application other than the request or in any paper submitted to that Authority,
(iv) of the International Bureau if the error is in any paper, other than the international application or amendments or corrections to that application, submitted to the International Bureau.
(f) Any authority which authorizes or refuses any rectification shall promptly notify the applicant of the authorization or refusal and, in the case of refusal, of the reasons therefor. The authority which authorizes a rectification shall promptly notify the International Bureau accordingly. Where the authorization of the rectification was refused, the International Bureau shall, upon request made by the applicant prior to the time relevant under paragraph (gbis), (gter) or (gquater) and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, publish the request for rectification together with the international application. A copy of the request for rectification shall be included in the communication under Article 20 where a copy of the pamphlet is not used for that communication or where the international application is not published by virtue of Article 64 (3).
(g) The authorization for rectification referred to in paragraph (e) shall, subject to paragraphs (gbis), (gter) and (gquater), be effective:
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(i) where it is given by the receiving Office or by the International Searching Authority, if its notification to the International Bureau reaches that Bureau before the expiration of 17 months from the priority date;
(ii) where it is given by the International Preliminary Examining Authority, if it is given before the establishment of the international preliminary examination report;
(iii) where it is given by the International Bureau, if it is given before the expiration of 17 months from the priority date.
(gbis) If the notification made under paragraph (g) (i) reaches the International Bureau, or if the rectification made under paragraph (g) (iii) is authorized by the International Bureau, after the expiration of 17 months from the priority date but before the technical preparations for international publication have been completed, the authorization shall be effective and the rectification shall be incorporated in the said publication.
(gter) Where the applicant has asked the International Bureau to publish his international application before the expiration of 18 months from the priority date, any notification made under paragraph (g) (i) must reach, and any rectification made under paragraph (g) (iii) must be authorized by, the International Bureau, in order for the authorization to be effective, not later than at the time of the completion of the technical preparations for international publication.
(gquater) Where the international application is not published by virtue of Article 64 (3), any notification made under paragraph (g) (i) must reach, and any rectification made under paragraph (g) (iii) must be authorized by, the International Bureau, in order for the authorization to be effective, not later than at the time of the communication of the international application under Article 20.
Rule 92 Correspondence
92.1 Need for Letter and for Signature
(a) Any paper submitted by the applicant in the course of the international procedure provided for in the Treaty and these Regulations, other than the international application itself, shall, if not itself in the form of a letter, be accompanied by a letter identifying the international application to which it relates. The letter shall be signed by the applicant.
(b) If the requirements provided for in paragraph (a) are not complied with, the applicant shall be informed as to the non-compliance and be invited to remedy the omission within a time limit fixed in the invitation. The time limit so fixed shall be reasonable in the circumstances; even where the time limit so fixed expires later than the time limit applying to the furnishing of the paper (or even if the latter time limit has already expired), it shall be not less than 10 days and not more than one month from the mailing of the invitation. If the omission is remedied within the time limit fixed in the invitation, the omission shall be disregarded; otherwise, the applicant shall be informed that the paper has been disregarded.
(c) Where non-compliance with the requirements provided for in paragraph (a) has been overlooked and the paper taken into account in the international procedure, the non-compliance shall be disregarded.
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92.2 Languages
(a) Subject to Rules 55.1 and 66.9 and to paragraph (b) of this Rule, any letter or document submitted by the applicant to the International Searching Authority or the International Preliminary Examining Authority shall be in the same language as the international application to which it relates. However, where a translation of the international application has been transmitted under Rule 23.1 (b) or furnished under Rule 55.2, the language of such translation shall be used.
(b) Any letter from the applicant to the International Searching Authority or the International Preliminary Examining Authority may be in a language other than that of the international application, provided the said Authority authorized the use of such language.
(d) Any letter from the applicant to the International Bureau shall be in English or French.
(e) Any letter or notification from the International Bureau to the applicant or to any national Office shall be in English or French.
92.3 Mailings by National Offices and Intergovernmental Organizations
Any document or letter emanating from or transmitted by a national Office or an intergovernmental organization and constituting an event from the date of which any time limit under the Treaty or these Regulations commences to run shall be sent by air mail, provided that surface mail may be used instead of air mail in cases where surface mail normally arrives at its destination within two days from mailing or where air mail service is not available.
92.4 Use of Telegraph, Teleprinter, Facsimile Machine, Etc.
(a) A document making up the international application, and any later document or correspondence relating thereto, may, notwithstanding the provisions of Rules 11.14 and 92.1 (a), but subject to paragraph (h), be transmitted, to the extent feasible, by telegraph, teleprinter, facsimile machine or other like means of communication resulting in the filing of a printed or written document.
(b) A signature appearing on a document transmitted by facsimile machine shall be recognized for the purposes of the Treaty and these Regulations as a proper signature.
(c) Where the applicant has attempted to transmit a document by any of the means referred to in paragraph (a) but part or all of the received document is illegible or part of the document is not received, the document shall be treated as not having been received to the extent that the received document is illegible or that the attempted transmission failed. The national Office or intergovernmental organization shall promptly notify the applicant accordingly.
(d) Any national Office or intergovernmental organization may require that the original of any document transmitted by any of the means referred to in paragraph (a) and an accompanying letter identifying that earlier transmission be furnished within 14 days from the date of the transmission, provided that such requirement has been notified to the International Bureau and the International Bureau has published information thereon in the Gazette. The notification shall specify whether such requirement concerns all or only certain kinds of documents.
(e) Where the applicant fails to furnish the original of a document as required under paragraph (d), the national Office or intergovernmental organization concerned may, depending on the kind of document transmitted and having regard to Rules 11 and 26.3,
(i) waive the requirement under paragraph (d), or
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(ii) invite the applicant to furnish, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation, the original of the document transmitted,
provided that, where the document transmitted contains defects, or shows that the original contains defects, in respect of which the national Office or intergovernmental organization may issue an invitation to correct, that Office or organization may issue such an invitation in addition to, or instead of, proceeding under item (i) or (ii).
(f) Where the furnishing of the original of a document is not required under paragraph (d) but the national Office or intergovernmental organization considers it necessary to receive the original of the said document, it may issue an invitation as provided for under paragraph (e) (ii).
(g) If the applicant fails to comply with an invitation under paragraph (e) (ii) or (f):
(i) where the document concerned is the international application, the latter shall be considered withdrawn and the receiving Office shall so declare;
(ii) where the document concerned is a document subsequent to the international application, the document shall be considered as not having been submitted.
(h) No national Office or intergovernmental organization shall be obliged to receive any document submitted by a means referred to in paragraph (a) unless it has notified the International Bureau that it is prepared to receive such a document by that means and the International Bureau has published information thereon in the Gazette.
Rule 92bis Recording of Changes in Certain Indications in the Request or the Demand
92bis.1 Recording of Changes by the International Bureau
(a) The International Bureau shall, on the request of the applicant or the receiving Office, record changes in the following indications appearing in the request or demand:
(i) person, name, residence, nationality or address of the applicant,
(ii) person, name or address of the agent, the common representative or the inventor.
(b) The International Bureau shall not record the requested change if the request for recording is received by it after the expiration:
(i) of the time limit referred to in Article 22 (1), where Article 39 (1) is not applicable with respect to any Contracting State;
(ii) of the time limit referred to in Article 39 (1) (a), where Article 39 (1) is applicable with respect to at least one Contracting State.
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Rule 93 Keeping of Records and Files
93.1 The Receiving Office
Each receiving Office shall keep the records relating to each international application or purported international application, including the home copy, for at least 10 years from the international filing date or, where no international filing date is accorded, from the date of receipt.
93.2 The International Bureau
(a) The International Bureau shall keep the file, including the record copy, of any international application for at least 30 years from the date of receipt of the record copy.
(b) The basic records of the International Bureau shall be kept indefinitely.
93.3 The International Searching and Preliminary Examining Authorities
Each International Searching Authority and each International Preliminary Examining Authority shall keep the file of each international application it receives for at least 10 years from the international filing date.
93.4 Reproductions
For the purposes of this Rule, records, copies and files may be kept as photographic, electronic or other reproductions, provided that the reproductions are such that the obligations to keep records, copies and files under Rules 93.1 to 93.3 are met.
Rule 94 Access to Files
94.1 Access to the File Held by the International Bureau
(a) At the request of the applicant or any person authorized by the applicant, the International Bureau shall furnish, subject to reimbursement of the cost of the service, copies of any document contained in its file.
(b) The International Bureau shall, at the request of any person but not before the international publication of the international application and subject to Article 38, furnish, subject to the reimbursement of the cost of the service, copies of any document contained in its file.
94.2 Access to the File Held by the International Preliminary Examining Authority
At the request of the applicant or any person authorized by the applicant, or, once the international preliminary examination report has been established, of any elected Office, the International Preliminary Examining Authority shall furnish, subject to reimbursement of the cost of the service, copies of any document contained in its file.
94.3 Access to the File Held by the Elected Office
If the national law applicable by any elected Office allows access by third parties to the file of a national application, that Office may allow access to any documents relating to the international application, including any document relating to the international preliminary examination, contained in its file, to the same extent as provided by the national law for access to the file of a national
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application, but not before the international publication of the international application. The furnishing of copies of documents may be subject to reimbursement of the cost of the service.
Rule 95 Availability of Translations
95.1 Furnishing of Copies of Translations
(a) At the request of the International Bureau, any designated or elected Office shall provide it with a copy of the translation of the international application furnished by the applicant to that Office.
(b) The International Bureau may, upon request and subject to reimbursement of the cost, furnish to any person copies of the translations received under paragraph (a).
Rule 96 The Schedule of Fees
96.1 Schedule of Fees Annexed to Regulations
The amounts of the fees referred to in Rules 15 and 57 shall be expressed in Swiss currency. They shall be specified in the Schedule of Fees which is annexed to these Regulations and forms an integral part thereof.
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SCHEDULE OF FEES
Fees Amounts
1. Basic Fee:
(Rule 15.2 (a))
(a) if the international application contains not more than 30 sheets
650 Swiss francs
(b) if the international application contains more than 30 sheets
650 Swiss francs plus 15 Swiss francs for each sheet in excess of 30 sheets
2. Designation Fee:
(Rule 15.2 (a))
(a) for designations made under Rule 4.9 (a) 140 Swiss francs per designation, provided that any designation made under Rule 4.9 (a) in excess of 8 shall not require the payment of a designation fee
(b) for designations made under Rule 4.9 (b) and confirmed under Rule 4.9 (c)
140 Swiss francs per designation
3. Handling Fee: 233 Swiss francs
(Rule 57.2 (a))
Reductions
4. The total amount of the fees payable under items 1 and 2 (a) is reduced by 200 Swiss francs if the international application is, in accordance with and to the extent provided for in the Administrative Instructions, filed on paper together with a copy thereof in electronic form.
5. All fees payable (where applicable, as reduced under item 4) are reduced by 75% for international applications filed by any applicant who is a natural person and who is a national of and resides in a State whose per capita national income is below US$3,000 (according to the average per capita national income figures used by the United Nations for determining its scale of assessments for the contributions payable for the years 1995, 1996 and 1997); if there are several applicants, each must satisfy those criteria.
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Schedule 3 Formal requirements for documents to be filed (paragraphs 3.2 (2) (b) and 10.2 (1) (a) and subregulation 22.16 (2))
1 Terminology and signs
In a document:
(a) units of description must be expressed in terms of the metric system or, if first expressed in other terms, must be expressed also in terms of that system; and
(b) temperatures must be expressed in degrees Celsius or, if first expressed in another manner, must be expressed also in degrees Celsius; and
(c) to indicate units of measurement, the rules of international practice must be observed; and
(d) in chemical formulas, the symbols, atomic weights and molecular formulas in general use must be employed; and
(e) other terms, signs and symbols that are generally accepted in the art to which the document principally relates must be employed; and
(f) if the document is expressed in English — the beginning of any decimal fraction must be marked by a period; and
(g) units, signs, symbols and other terms must be used consistently.
1A Title of specification
A specification must commence with a short and precise title.
2 Fitness for reproduction
Each sheet comprising a document or part of a document:
(a) must be presented in a manner that allows any number of copies of the sheet to be reproduced directly by means of photography, an electrostatic or photo-offset process and microfilming; and
(b) must not be folded, creased or cracked; and
(c) subject to subclause 8 (4) (“drawings, formulas and tables in textual matter”) and subclause 11 (14) (“special requirements for drawings”), must be presented in a vertical format; and
(d) must be durable, flexible, smooth, strong, white and have a matt finish; and
(e) must be international sheet size A4; and
(f) subject to subparagraph 3.2 (2) (c) (ii) of these Regulations, must be printed on only one side of the sheet.
3 Separate sheets
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(1) The patent request, the description of the invention, the claim or claims, any drawing, and an abstract, must each commence on a separate sheet.
(2) The sheets comprising a document must be connected so that they may be readily:
(a) turned to be read; and
(b) separated for the purposes of reproduction and then rejoined.
4 Margins
(1) Subject to subclause (2), each sheet of a specification, or an abstract, must have a margin that is not less than:
(a) at the top — 2 cm; and
(b) on the left — 2.5 cm; and
(c) on the right — 2 cm; and
(d) at the bottom — 2 cm.
(2) A sheet of drawings:
(a) must have a margin that is not less than:
(i) at the top — 2.5 cm; and
(ii) on the left — 2.5 cm; and
(iii) on the right — 1.5 cm; and
(iv) at the bottom — 1 cm; and
(b) must not contain a frame surrounding the drawings.
5 Numeration
(1) The parts of a patent application referred to in this subclause must be presented in the following order:
(a) patent request;
(b) description of the invention;
(c) claim or claims;
(d) drawing or drawings;
(e) abstract.
290
(2) Subject to subclause (3), the sheets of a specification must be numbered consecutively in arabic numerals beginning with “1” that are placed at the top, and in the middle, of the sheet, but not within the margins of the sheet.
(3) The sheets of a specification that contain drawings must be numbered by means of sets of 2 arabic numerals separated by an oblique stroke, the first numeral in each set being the consecutive number of each sheet, beginning with the arabic number “1”, and the second being the total number of the sheets containing the drawings.
(4) If there is more than 1 claim referred to in a complete specification, the claims must be numbered consecutively in arabic numerals beginning with “1”.
(5) In a statement of proposed amendments:
(a) the proposed amendments must be numbered consecutively; and
(b) if the statement is a subsequent one, the numbering must be consecutive with the numbers in the previous statement.
6 Numbering of lines
Every fifth line on each sheet of the specification must be numbered:
(a) in arabic numerals; and
(b) on the left of the sheet to the right of the margin.
7 Writing of textual matter
(1) Subject to subclause (2), except with the consent of the Commissioner, a patent request, specification and any abstract relating to a patent application must be typewritten or otherwise machine printed.
(2) If necessary, symbols relating to graphic matter, or chemical or mathematical formulas, may be handwritten or drawn, as the case may be.
(3) The lines of text in a typewritten document must be 11/2 spaced or double spaced.
(4) The text in a document must be presented in letters the capitals of which are not less than 0.21 cm high, in a dark colour and be indelible.
8 Drawings, formulas and tables in textual matter
(1) A patent request must not include a drawing.
(2) The description of an invention or an abstract:
(a) must not include a drawing; and
(b) may include chemical or mathematical formulas or tables.
(3) A claim:
(a) must not include a drawing; and
291
(b) may include chemical or mathematical formulas; and
(c) if, in the reasonable opinion of the Commissioner, the subject matter of the claim makes the use of a table desirable — may include tables.
(4) A table or a chemical or mathematical formula may be presented in a horizontal format if it cannot be presented in a vertical format in a satisfactory manner.
(5) If a table or a chemical or mathematical formula is presented in a horizontal format, the top of the table or formula must be placed on the left side of the paper.
9 Words in drawings
A drawing must not include text, other than a word or words indispensable to the understanding of the drawing.
10 Alterations
(1) Subject to subclause (2), a document must be free from erasures, alterations, overwritings and interlineations.
(2) If, in the reasonable opinion of the Commissioner, failure to comply with subclause (1) would not:
(a) compromise the authenticity; or
(b) jeopardise the likelihood of clear reproduction;
of a document, the Commissioner may excuse it from compliance with subclause (1).
11 Special requirements for drawings
(1) A drawing must be executed in durable, black, dense, dark, uniformly thick and well-defined, lines and strokes without colouring.
(2) A cross-section must be indicated by oblique hatching that does not impede the clear reading of reference letters, numbers or signs and leading lines.
(3) The scale of a drawing and the distinctness of its execution must enable all the details to be distinguished without difficulty on a photographic reproduction of the drawing with a two-thirds linear reduction in size.
(4) If the scale of a drawing is given on the drawing, it must be represented graphically.
(5) A letter, number or reference line that is shown on a drawing must be presented simply and be clear.
(6) Brackets, braces, circles or inverted commas must not be used in association with letters or numbers.
(7) A line in a drawing must ordinarily be drawn with the aid of drafting instruments.
(8) A sheet of drawings may include more than 1 drawing.
292
(9) Each element of a drawing must be shown in proper proportion to each other element of the drawing, other than where the use of a different proportion is indispensable for the clarity of the drawing.
(10) The height of a letter or a number in a drawing must not be less than 0.32 cm.
(11) For the lettering of a drawing, the Latin or, if customary, the Greek alphabet must be used.
(12) If drawings on 2 or more sheets of drawings form in effect a single drawing, the drawings must be so arranged that the single drawing can be assembled without concealing any part of the other drawings.
(13) Subject to subclause (14), if there is more than 1 drawing on a sheet of drawings, the drawings must be presented on the sheet of drawings in a vertical format and separate from each other.
(14) If the drawings on a sheet of drawings cannot be presented in a vertical format, they must be presented in a horizontal format with the tops of the drawings on the left of the sheet of drawings.
(15) The drawings must be numbered consecutively in arabic numerals beginning with “1”.
(16) A reference sign that is not mentioned in the description of the invention must not be referred to in a drawing.
(17) A reference sign that is not mentioned in a drawing must not be referred to in the description.
(18) A feature of a drawing that is denoted by a reference sign must be so denoted consistently.
12 Amino acid sequences and nucleotide sequences
An amino acid sequence or a nucleotide sequence that is part of a specification may be filed in a format approved by the Commissioner on a compact disk or by other electronic means approved by the Commissioner.
293
Schedule 4 Convention countries (subregulation 8.5 (1) and regulation 11.1)
Albania Algeria Angola Antigua and Barbuda Argentina Armenia Austria Azerbaijan Bahamas Bahrain Bangladesh Barbados Belarus Belgium Belize Benin Bolivia Bosnia and Herzogovina Botswana Brazil Brunei Darussalam Bulgaria Burkina Faso Burundi Cambodia, Kingdom of Cameroon Canada Central African Republic Chad Chile China Colombia Congo Costa Rica Côte d’Ivoire Croatia Cuba Cyprus Czech Republic Democratic Republic of the Congo Denmark (including Faroe Islands) Djibouti Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Fiji
Finland France (including all Overseas Departments and
Territories) Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea Guinea-Bissau Guyana Haiti Holy See Honduras Hong Kong, China Hungary Iceland India Indonesia Iran, Islamic Republic of Iraq Ireland Israel Italy Jamaica Japan Jordan Kazakhstan Kenya Korea, Democratic People’s Republic of Korea, Republic of Kuwait Kyrgyzstan Lao People’s Democratic Republic Latvia Lebanon Lesotho Liberia Libyan Arab Jamahiriya Liechtenstein Lithuania Luxembourg Macau Madagascar Malawi Malaysia Maldives
Mali Singapore
294
Malta Mauritania Mauritius Mexico Moldova Monaco Mongolia Morocco Mozambique Myanmar Namibia Netherlands (including the Netherlands Antilles
and Aruba) New Zealand (excluding the Cook Islands, Niue
and Tokelau) Nicaragua Niger Nigeria Norway Oman Pakistan Panama Papua New Guinea Paraguay Peru Philippines Poland Portugal Qatar Romania Russian Federation Rwanda Saint Kitts and Nevis Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tome and Principe, Democratic Republic of Senegal Sierra Leone
Slovak Republic Slovenia Solomon Islands South Africa Spain Sri Lanka Sudan Surinam Swaziland Sweden Switzerland Syrian Arab Republic Taiwan Tajikistan Tanzania Thailand The former Yugoslav Republic of Macedonia Togo Trinidad and Tobago Tunisia Turkey Turkmenistan Uganda Ukraine United Arab Emirates United Kingdom (including the Isle of Man) United Republic of Tanzania United States of America (including all territories
and possessions, including the Commonwealth of Puerto Rico)
Uruguay Uzbekistan Venezuela Viet Nam Yugoslavia Zambia Zimbabwe
295
Schedule 5 Prescribed topics (regulations 20.2A, 20.2B, 20.3, 20.6, 20.8, 20.9 and 20.16)
General outcome
The overall objective of a course of study is for a student to have an appropriate level of:
(a) knowledge and practical application so that the student can give advice about applicable categories of protection for particular activities; and
(b) appreciation of the advantages of each form of protection for a client; and
(c) understanding of how to get and maintain appropriate protection for a client; and
(d) understanding of the required standard of professional conduct.
296
Group A Legal process and overview of intellectual property
Outcome
An understanding of the Australian legal system and how intellectual property rights may be protected.
Topics
1. The Australian legal system, including: (a) appeal or review procedure; (b) Parliament; (c) the courts; (d) precedent; (e) statutory interpretation.
2. Overview of intellectual property rights: (a) patents; (b) trade marks; (c) designs; (d) copyright; (e) circuit layouts; (f) plant breeders’ rights; (g) confidential information and trade secrets; (h) trade practices and anti-competitive practices; (i) international intellectual property treaties.
Group B Professional conduct
Outcome
An understanding of the rights, privileges and responsibilities of a patent or trade mark attorney.
Topics
(a) conflict of interest; (b) privilege; (c) confidentiality; (d) professional liability and negligence; (e) code of conduct; (f) maintenance of rights and monitoring systems; (g) fiduciary obligations to clients.
297
Group C Trade mark law
Outcome An understanding of the principles of trade marks and the trade mark system in Australia.
Topics
(a) passing off and unfair competition; (b) advice on registrability; (c) comparison of business names and trade marks; (d) marks excluded from registration; (e) other provisions for trade indicia protection:
(i) Olympic insignia legislation; (ii) domain names; (iii) geographical indications;
(f) criteria that affect registrability: (i) distinctiveness; (ii) deception and confusion;
(g) ownership — authorship of trade marks; (h) use:
(i) intention to use; (ii) honest concurrent use; (iii) prior continuous use;
(i) protection: (i) infringement; (ii) well known marks.
298
Group D Trade mark practice
Outcome
Ability to advise and to handle the interests of a client in prosecution and maintenance of trade mark applications, including advice on the desirability of seeking trade mark protection and provision of alternative protection in Australia and other countries.
Topics
(a) classification systems; (b) searching; (c) types of application and registration; (d) trade marks office practice and procedure:
(i) filing; (ii) examination; (iii) hearings; (iv) opposition; (v) evidence; (vi) extension of time;
(e) removal for non-use; (f) rectification; (g) registration of security interests; (h) border controls; (i) exploitation:
(i) assignment; (ii) licensing; (iii) parallel imports; (iv) managing a trade marks portfolio;
(j) misuse and criminal sanctions; (k) international:
(i) treaties and conventions; (ii) regional systems (eg CTM); (iii) differences between systems (including requirements to use, first to file, first
to use, post-acceptance, pre-acceptance, registration opposition and renewal requirements);
(iv) other classification systems; (v) unacceptable trade marks — restrictions on registrability; (vi) practical differences (eg legalised and notarised documents, powers of
attorneys).
299
Group E Patent law
Outcome An understanding of the principles of patents and the patent system in Australia.
Topics
(a) subject matter: (i) manner of manufacture; (ii) newness; (iii) novelty; (iv) inventive step; (v) secret use; (vi) exclusions from patentability; (vii) utility;
(b) section 40 (specifications): (i) description; (ii) claims; (iii) fair basis;
(c) infringement; (d) inventorship; (e) ownership; (f) breach of confidence.
300
Group F Patent system
Outcome
Ability to advise and to handle the interests of a client in prosecution and maintenance of a patent application, including advice on the desirability of seeking patent protection and provision of alternative protection in Australia and other countries.
Topics
(a) types of application: (i) provisional; (ii) complete; (iii) divisional; (iv) patent of addition; (v) Convention; (vi) priority dates;
(b) Patent Office practice; (c) amendment; (d) opposition; (e) re-examination; (f) maintenance; (g) extension of term; (h) extension of time; (i) revocation; (j) treaties and conventions, including:
(i) Patent Cooperation Treaty; (ii) Budapest Treaty; (iii) Paris Convention;
(k) searching; (l) assignment; (m) licensing; (n) compulsory licences; (o) Crown use; (p) restrictions on exploitation:
(i) Patents Act 1990; (ii) Trade Practices Act 1974;
(q) circuit layout legislation and practice; (r) plant protection legislation and practice; (s) patentability in other countries; (t) patent procedure in other countries, particularly major trading parties (eg New
Zealand, United States of America, European Community, People’s Republic of China, Japan);
(u) petty patents.
301
Group G Drafting patent specifications
Outcome Ability to obtain relevant information about an invention and from that, given the prior art, draft a specification to accompany a provisional application, a standard complete application, an international application and a petty patent application.
Group H Interpretation and validity of patent specifications
Outcome
Ability to express an understanding of a patent specification and what it covers for the purpose of advising on infringement, validity over given prior art, section 40 of the Act and other grounds of revocation and amendment.
Group I Designs
Outcome
Ability to advise and to handle the interests of a client in prosecution and maintenance of a design application, including advice on the desirability of seeking design protection and provision of alternative protection in Australia and other countries.
Topics
(a) registrability; (b) newness; (c) registration procedure; (d) maintenance; (e) office practice; (f) third party objection; (g) infringement; (h) expunction; (i) copyright; (j) international aspects of design practice.
302
Schedule 6 Prescribed qualifications (regulations 20.3, 20.14, 20.15 and 20.16)
Column 1 Column 2
Item Qualification
1 A degree, diploma or postgraduate award of an Australian tertiary institution in a field of technology that contains potentially patentable subject matter
2 An award of an overseas education institution in a field of technology that contains potentially patentable subject matter
3 A pass in an examination in a branch of engineering or science approved under subregulation 20.14 (3) that qualifies for corporate membership of The Institution of Engineers, Australia, The Royal Australian Chemical Institute or another professional institution approved under subregulation 20.14 (5)
Schedule 7 Fees (regulations 22.2, 22.3 and 22.4)
303
Part 1 Patent attorneys
Item Matter Fee ($)
1 Applying for admission to sit for an examination conducted by the Board 400
2 Applying for grant of a supplementary examination conducted by the Board 200
3 A report of reasons for failure of an examination conducted by the Board 200
4 Applying for registration as a patent attorney 200
5 Annual registration fee payable by a patent attorney 250
6 Annual registration fee payable for combined registration as a patent attorney and trade marks attorney
320
7 Applying under regulation 20.19 or 20.19A 160
Part 2 General fees
Column 1 Item
Column 2 Matter
Column 3 Fee
1 On filing a request for a patent accompanied by a provisional specification
$80
2 On filing a request for a petty patent accompanied by a complete specification
$280
3 On filing a request for a standard patent accompanied by a complete specification: (a) filing; and $280
(b) if the number of sheets comprising the specification, including any drawings contained in the specification, exceeds 30 — for each sheet in excess of 30; and
$12
(c) if the specification includes an amino acid sequence or a nucleotide sequence filed on a compact disk or by other electronic means
$1 000
4 On filing a request for an examination of a patent request and complete specification: (a) in the case of a request for an examination to be made in
accordance with section 45 of the Act $290
(b) in the case of a request for a modified examination $290
5 On filing a request under subsection 44 (3) of the Act requiring the Commissioner to direct an applicant to request examination
$65
6 On filing a request under subsection 97 (2) of the Act for re- examination of a complete specification
$1,200
7 Continuation fee under paragraph 142 (2) (d) of the Act, or renewal fee under paragraph 143 (a) of the Act for: (c) the fifth anniversary $165
304
Column 1 Item
Column 2 Matter
Column 3 Fee
(d) the sixth anniversary $200 (e) the seventh anniversary $235 (f) the eighth anniversary $270 (g) the ninth anniversary $305 (h) the tenth anniversary $345 (i) the eleventh anniversary $385 (j) the twelfth anniversary $430 (k) the thirteenth anniversary $475 (l) the fourteenth anniversary $525 (m) the fifteenth anniversary $575 (n) the sixteenth anniversary $630 (o) the seventeenth anniversary $680 (p) the eighteenth anniversary $730 (q) the nineteenth anniversary $790 (r) If an extension of the term of a standard patent is
granted under section 76 of the Act: $790
(i) the twentieth anniversary for the patent; and
(ii) each subsequent anniversary for the patent happening during the period of extension
plus:
if paid within 6 months after the anniversary in addition to any other fee payable in relation to this item —
$65 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid
8 On filing a notice of opposition under regulation 5.3 $500
9 On filing a request under subregulation 5.5 (1) for dismissal of opposition
$65
10 On filing an application under subregulation 5.10 (2) for an extension of time, for each month, or part of a month, for which the extension is sought
$65
11 On making a representation to the Commissioner: (a) under regulation 5.3A or subregulation 5.9 (3) objecting
to a proposed amendment; or $500
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Column 1 Item
Column 2 Matter
Column 3 Fee
(b) under subparagraph 5.10 (5) (c) (i) objecting to an application or proposed action
$500
13 On filing an application for the grant of an extension of the term of a petty patent under section 69 of the Act
$350
14 On filing an application under section 66 of the Act for a duplicate of a patent to be sealed
$65
15 On filing a request for leave to amend: (a) a complete specification under section 104 of the Act,
before a request for examination has been filed or after the complete specification has been accepted; or
$105
(b) a patent request for a petty patent to make it a patent request for a standard patent
$105
16 On filing a request under subsection 150 (1) of the Act to restore a lapsed application
$90
17 On filing an application under subsection 223 (2) of the Act for an extension of time on a ground specified in paragraph 223 (2) (a) of the Act: (a) for each month, or part of a month, for which the
application is made; and $65
(b) if the application is filed after the end of the time to be extended
$90
18 For granting an extension of time, on a ground specified in paragraph 223 (2) (a) of the Act, greater than that applied for by the applicant — for each month, or part of a month, of extension granted
$65 less any amount paid under paragraph (a) of item 17
19 On filing an application under subsection 223 (2) of the Act for an extension of time on the ground specified in paragraph 223 (2) (b) of the Act
$65
20 On filing: (a) a request under regulation 22.22 for the exercise of
discretionary power; or $500
(b) a request for a hearing $500
21 On appearing at a hearing $500 less any amount paid under item 11 or 20 in relation to the hearing
22 On filing a response to the Commissioner’s report under section 45 or 48 of the Act, if filed more than 12 months, but within 21 months, after the date of the first report on the examination — for each month, or part of a month, after the 12 months, other than a month in respect of which a fee was paid under this item in relation to that examination
$65
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Column 1 Item
Column 2 Matter
Column 3 Fee
23 For supply of a copy of: (a) a patent specification; or $15 (b) a document other than a patent specification; or $10 (c) if more than 6 documents of the kind mentioned in
paragraph (b) are sought from a single source and supplied at the same time
$60 plus 30 cents per page for each document in excess of 6 documents
24 For supply of a certificate by the Commissioner $15
25 On filing a request for information under subregulation 19.2 (1), other than a request referred to in item 26 or 27 —for each application, patent or document
$65
26 On filing a request for a computer printout of information under subregulation 19.2 (1) about a patent or a patent application
$10
27 On filing a request under subregulation 19.2 (2) for information that requires an international-type search
$800
28 On filing a request under section 58 of the Act for the result of a search made under section 45 or 48 of the Act
$65
29 On filing a substitute page or pages in compliance with a direction under subregulation 3.2 (4): (a) within 3 months after the day when the direction was
given $65
(b) after the time specified in paragraph (a) but before the application becomes open to public inspection
$100
30 For filing an abstract after the day when a direction was given under subregulation 3.4 (5)
$65
31 For taxing costs under subregulation 22.8 (3) $65
32 On filing an application under subsection 70 (1) of the Act for the grant of an extension of the term of a standard patent
$400
33 On filing, within 3 weeks before the due date for publication under section 54 of the Act of a notice about a complete specification, a request under subsection 37 (1) of the Act that the complete application be treated as a provisional application
$1,000
34 On lodging, within 3 weeks before the due date for publication under section 54 of the Act of a notice about a complete specification, a notice of withdrawal of the patent application under section 141 of the Act
$1,000
Part 3 General fees for international applications
307
Column 1 Column 2 Column 3 Item Matter Fee
1 Transmittal fee under Rule 14 of the PCT $100
2 Search fee under Rule 16 of the PCT $800
3 Additional fee for search under Article 17 (3) (a) of the PCT $800
4 Preliminary examination fee under Rule 58 of the PCT $450
5 Additional fee for international preliminary examination under Article 34 (3) (a) of the PCT
$450
6 For copy of a document in accordance with Rules 44.3 (b) or 71.2 (b) of the PCT
$15
7 Confirmation fee under Rule 15.5 (a) of the PCT 50% of the sum of the designation fees payable under item 3 of Part 4 in this Schedule for the relevant international application
8 late payment fee under Rule 16bis.2 of the PCT the greater of: (a) 50% of the amount
of the unpaid fees specified in the invitation; and
(b) the amount of the transmittal fee;
but not more than the amount of the basic fee
308
Part 4 Fees payable for the benefit of the International Bureau
1 Basic fee for an international application: 650 Swiss francs plus, if, the application contains more than 30 sheets, 15 Swiss francs for each sheet in excess of 30
2 Designation fee for designations made under Rule 4.9 (a) of the PCT in an international application:
(i) if the application makes 8 or fewer such designations — 140 Swiss francs per designation;
(ii) if the application makes 9 or more such designations — 1120 Swiss francs
3 Designation fee for each designation (if any) made in an international application under Rule 4.9 (b), and confirmed under Rule 4.9 (c), of the PCT: 140 Swiss francs
4 Handling fee: 233 Swiss francs
309
Schedule 8 Costs, expenses and allowances (subregulation 20.30 (2) and regulation 22.8)
Part 1 Costs
Column 1 Column 2 Column 3 Item Matter Amount
1 Notice of opposition $65
2 Statement of grounds and particulars $400
3 Receiving and perusing statement of grounds and particulars $400
4 Evidence in support $480
5 Receiving and perusing notice of opposition $90
6 Receiving and perusing evidence in support $210
7 Evidence in answer $480
8 Receiving and perusing evidence in answer $145
9 Evidence in reply $240
10 Receiving and perusing evidence in reply $90
11 Preparation of case for hearing $360
12 Attendance at hearing by registered patent attorney or solicitor without counsel
$180 an hour or $810 a day
13 Attendance at hearing by registered patent attorney or solicitor instructing counsel
$145 an hour or $650 a day
14 Counsel fees for attendance at a hearing $240 an hour or $1,080 a day
310
Part 2 Expenses and allowances
Division 1 Expenses
1 A person who has paid a fee prescribed in these Regulations in relation to proceedings before the Commissioner or the Disciplinary Tribunal may be paid the amount of the fee.
2 A person attending proceedings before the Commissioner or the Disciplinary Tribunal must be paid:
(a) a reasonable amount for allowances for transport between the usual place of residence of the person and the place that he or she attends for that purpose; and
(b) if the person is required to be absent overnight from his or her usual place of residence — a reasonable amount for allowances up to a daily maximum of $405 for meals and accommodation.
Division 2 Allowances
3 A person who, because of his or her professional, scientific or other special skill or knowledge, is summoned to appear before the Commissioner or the Disciplinary Tribunal as a witness must be paid:
(a) if the person is remunerated in his or her occupation by wages, salary or fees — an amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; or
(b) in any other case — an amount of not less than $95, or more than $475, for each day on which he or she so attends.
4 A person summoned to appear before the Commissioner or the Disciplinary Tribunal as a witness, other than a witness referred to in clause 3, must be paid:
(a) if the person is remunerated in his or her occupation by wages, salary or fees — an amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; or
(b) in any other case — an amount of not less than $54, or more than $89, for each day on which he or she so attends.
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Notes to the Patents Regulations 1991
Note 1
The Patents Regulations 1991 (in force under the Patents Act 1990) as shown in this reprint comprise Statutory Rules 1991 No. 71 amended as indicated in the Tables below.
All relevant information pertaining to application, saving or transitional provisions prior to 9 December 1997 is not included in this reprint. For subsequent information see Table A.
Table of Statutory Rules
Year and number
Date of notification in Gazette
Date of commencement
Application, saving or transitional provisions
1991 No. 71 26 Apr 1991 30 Apr 1991 1991 No. 456 19 Dec 1991 Rr. 3, 5 and 7: 1 Jan 1992
Remainder: 19 Dec 1991 —
1992 No. 148 9 June 1992 R. 5: 9 June 1992 Remainder: 1 July 1992
R. 7
1993 No. 113 3 June 1993 1 July 1993 R. 9 1993 No. 227 26 Aug 1993 Rr. 3.1, 4.1 and 4.4:
1 Oct 1992 Remainder: 1 Jan 1993
—
1993 No. 340 10 Dec 1993 10 Dec 1993 R. 8 1993 No. 341 10 Dec 1993 1 Jan 1994 — 1994 No. 182 16 June 1994 29 June 1994 — 1994 No. 317 6 Sept 1994 1 Oct 1994 R. 10 1994 No. 387 21 Nov 1994 Rr. 9 and 10: 30 May 1995
Remainder: 21 Nov 1994 R. 10
1995 No. 16 14 Feb 1995 R. 38: 30 Apr 1991 Remainder: 14 Feb 1995
R. 45
1995 No. 20 22 Feb 1995 23 Feb 1995 — 1995 No. 82 9 May 1995 Rr. 4–9, 11.2 and 12–14:
1 July 1995 Remainder: 9 May 1995
R. 14
1995 No. 427 22 Dec 1995 1 Jan 1996 — 1996 No. 271 11 Dec 1996 11 Dec 1996 — 1997 No. 192 4 July 1997 4 July 1997 — 1997 No. 345 9 Dec 1997 Rr. 3, 4, 8–10, 13 and 14:
1 Jan 1998 Remainder: 9 Dec 1997
R. 3 [see Table A]
1998 No. 45 25 Mar 1998 25 Mar 1998 — 1998 No. 56 8 Apr 1998 8 Apr 1998 Rr. 13–17 [see
Table A] 1998 No. 141 25 June 1998 Rr. 3–5: 1 July 1998
Remainder: 25 June 1998 —
1998 No. 241 31 July 1998 31 July 1998 — 1998 No. 257 12 Aug 1998 12 Aug 1998 — 1998 No. 264 26 Aug 1998 Rr. 7.1, 7.2 and 7.4:
1 Nov 1998 Remainder: 26 Aug 1998
—
1998 No. 291 7 Sept 1998 7 Sept 1998 — 1998 No. 319 1 Dec 1998 (a) —
312
Year and number
Date of notification in Gazette
Date of commencement
Application, saving or transitional provisions
1998 No. 342 22 Dec 1998 1 Jan 1999 — 1998 No. 345 22 Dec 1998 27 Jan 1999 — 1999 No. 154 14 July 1999 14 July 1999 — 1999 No. 184 1 Sept 1999 Rr. 1–3 and Schedule 1:
1 Sept 1999 Remainder: 6 Sept 1999
—
1999 No. 261 27 Oct 1999 Rr. 1–4 and Schedule 1: 27 Oct 1999 Remainder: 1 Jan 2000
R. 4 [see Table A]
1999 No. 349 22 Dec 1999 Rr. 1–3 and Schedule 1: 22 Dec 1999 Remainder: 1 Jan 2000
—
2000 No. 317 29 Nov 2000 Rr. 1–3 and Schedule 1: 29 Nov 2000 Schedule 2: 1 Jan 2001 Schedule 3: 1 Mar 2001
—
(a) Regulation 2 of Statutory Rules 1998 No. 319 provides as follows:
These Regulations commence on the commencement of Schedule 1 to the Intellectual Property Laws Amendment Act 1998.
Schedule 1 of the Intellectual Property Laws Amendment Act 1998 commenced on 27 January 1999.
313
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected R. 1.1............................... rs. 1998 No. 257 R. 1.3............................... am. 1998 No. 345 R. 1.4............................... am. 1991 No. 456; 1992 No. 148; 1993 Nos. 227 and 341
rs. 1995 Nos. 16 and 427 am. 1997 No. 345; 1998 Nos. 141 and 342; 1999 No. 349
R. 1.5............................... am. 1995 No. 16 R. 1.6............................... am. 1995 No. 16; 2000 No. 317 Rr. 2.2, 2.3 ...................... am. 1995 No. 16 R. 2.4............................... rs. 1995 No. 16 R. 2.7............................... am. 1995 No. 16 Rr. 3.1, 3.2 ...................... am. 1995 No. 16; 2000 No. 317 Rr. 3.3, 3.4 ...................... am. 1995 No. 16 R. 3.5............................... am. 2000 No. 317 R. 3.8............................... rs. 1995 No. 16 R. 3.12............................. am. 1995 No. 16 Rr. 3.18, 3.19................... am. 1995 No. 16 Rr. 3.21–3.25................... am. 1995 No. 16 R. 3.30............................. am. 1995 No. 16 R. 4.2............................... am. 1995 Nos. 16 and 82 R. 4.3............................... am. 1995 No. 16; 1998 No. 45; 1999 No. 261 R. 5.1............................... am. 1995 Nos. 16 and 82; 1997 No. 192; 1998 No. 319 R. 5.3............................... am. 1995 Nos. 16 and 82; 1998 No. 319 R. 5.3A............................ ad. 1995 No. 16 R. 5.4............................... am. 1993 No. 113; 1995 No. 82 R. 5.8............................... am. 1995 Nos. 16 and 82 R. 5.9............................... am. 1995 No. 16; 2000 No. 317 R. 5.10............................. am. 1993 Nos. 113 and 340; 2000 No. 317 R. 5.13............................. am. 1995 No. 16 Heading to Part 1 of ........
Chapter 6 ad. 1998 No. 319
R. 6.3............................... am. 1999 No. 261 R. 6.7............................... am. 1995 No. 16
rep. 1995 No. 82 Part 2 of Chapter 6 ..........
(rr. 6.7–6.11) ad. 1998 No. 319
Rr. 6.7–6.11 .................... ad. 1998 No. 319 R. 8.1............................... am. 1995 No. 16 R. 8.1A............................ ad. 1999 No. 184 R. 8.2............................... am. 1995 No. 16 R. 8.3............................... am. 1995 No. 16; 1999 No. 261 R. 8.4............................... am. 1995 No. 16 R. 8.6............................... am. 1995 No. 16; 2000 No. 317 R. 9.4............................... am. 1995 No. 16 R. 10.1............................. am. 1995 No. 16 R. 10.2............................. am. 1995 No. 16; 2000 No. 317 R. 10.3............................. am. 1997 No. 345 R. 10.5............................. am. 1995 No. 16 R. 10.6............................. rs. 1995 No. 16 R. 11.1............................. am. 1997 No. 345 R. 13.3............................. am. 1994 No. 317; 1998 No. 264 Notes 1, 2 to r. 13.3......... ad. 1998 No. 264 R. 13.4............................. rs. 1995 No. 16
am. 2000 No. 317
314
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected R. 13.6............................. am. 1994 No. 317; 1995 No. 82; 1998 Nos. 264 and 319 Notes 1, 2 to r. 13.6......... ad. 1998 No. 264 R. 15.3............................. am. 1995 No. 16 R. 17.2............................. am. 1995 No. 16 R. 19.2............................. am. 1995 No. 16 R. 20.1............................. am. 1994 No. 387; 1998 Nos. 56 and 345 R. 20.2............................. rs. 1998 No. 56 Rr. 20.2A, 20.2B............. ad. 1998 No. 345 R. 20.3............................. rs. 1998 No. 345 R. 20.3A.......................... ad. 1998 No. 345 Rr. 20.4, 20.5................... am. 1998 No. 345 Heading to r. 20.6............ rs. 1998 No. 345 R. 20.6............................. am. 1998 No. 345 R. 20.7............................. rs. 1998 No. 345 Heading to r. 20.8............ rs. 1998 No. 345 R. 20.8............................. am. 1998 No. 345 Heading to r. 20.9............ rs. 1998 No. 345 R. 20.9............................. am. 1998 No. 345; 1999 No. 154 Heading to r. 20.10.......... rs. 1998 No. 345 R. 20.10 .......................... am. 1998 No. 345 R. 20.11........................... rs. 1998 No. 345 Heading to r. 20.12.......... rs. 1998 No. 345 Rr. 20.12–20.14............... am. 1998 No. 345 Heading to r. 20.15.......... rs. 1998 No. 345 R. 20.15........................... am. 1998 No. 345 R. 20.16........................... am. 1995 No. 16
rs. 1998 No. 345 Heading to Div. 3 of........
Part 2 of Chapter 20 rs. 1998 No. 345
Rr. 20.17, 20.18............... am. 1998 No. 345 R. 20.19........................... am. 1998 No. 345; 1999 Nos. 184 and 349 R. 20.19A........................ ad. 1998 No. 345
am. 1999 No. 349 R. 20.20........................... am. 1998 No. 345 Heading to r. 20.21.......... rs. 1998 No. 345 Rr. 20.21–20.23............... am. 1998 No. 345 R. 20.25........................... am. 1998 No. 345 Rr. 20.29, 20.30............... am. 1998 No. 345 Heading to Div. 1 of........
Part 5 of Chapter 20 rs. 1998 No. 56
Heading to r. 20.32.......... rs. 1998 No. 345 R. 20.32........................... am. 1994 No. 387; 1995 No. 82
rs. 1998 No. 56 am. 1998 No. 345
R. 20.33........................... rep. 1998 No. 56 R. 20.34........................... rs. 1998 Nos. 56 and 345 R. 20.35 .......................... rs. 1998 No. 56 R. 20.36........................... rep. 1998 No. 56 Rr. 20.37, 20.38............... am. 1994 No. 387 Rr. 20.39, 20.40............... am. 1994 No. 387
rs. 1998 No. 56 Heading to Div. 2 of........
Part 5 of Chapter 20 rs. 1998 No. 345
R. 20.41........................... am. 1998 No. 345 R. 20.43........................... am. 1997 No. 345 R. 21.1............................. am. 1999 No. 184
315
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected R. 21.2............................. ad. 1994 No. 182
rs. 1998 No. 257; 1999 No. 184 R. 22.1............................. am. 1998 Nos. 241 and 342 R. 22.2............................. am. 1991 No. 456; 1993 No. 113; 1994 No. 317; 1997 No. 345 R. 22.2A.......................... ad. 1998 No. 241 R. 22.3............................. am. 1995 No. 16 R. 22.4............................. am. 1995 Nos. 16 and 427; 1998 No. 342 Rr. 22.5–22.7................... am. 1995 No. 16 R. 22.7A.......................... ad. 1993 No. 340 R. 22.8............................. am. 1993 No. 340; 1995 No. 16 R. 22.11........................... am. 1993 No. 113; 1995 No. 82; 1998 Nos. 241 and 264; 1998 No.
319 R. 22.13........................... am. 1995 No. 16 R. 22.15........................... am. 1995 No. 16
rs. 1998 No. 141 R. 22.20........................... am. 1995 No. 16 R. 22.23........................... am. 1995 No. 16 R. 22.26........................... am. 1995 No. 16; 1998 Nos. 45, 291 and 345 R. 23.3............................. am. 1995 No. 16 R. 23.4............................. am. 1995 Nos. 16 and 82 R. 23.8............................. am. 1995 No. 16 R. 23.9............................. am. 1994 No. 317 R. 23.10........................... am. 1994 No. 317; 1995 No. 16; 1997 No. 345 R. 23.11........................... am. 1995 No. 16 R. 23.14........................... am. 1995 No. 16 Rr. 23.17, 23.18............... am. 1995 No. 16 R. 23.20........................... am. 1995 No. 16 R. 23.25........................... am. 1995 No. 16 Rr. 23.27–23.31............... ad. 1998 No. 345 Schedule 1....................... am. 1995 No. 16 Heading to Schedule 1A . ad. 1995 No. 16 Schedule 1A.................... am. 1995 No. 16 Schedule 2....................... am. 1991 No. 456
rs. 1992 No. 148 am. 1993 Nos. 227 and 341; 1995 No. 16
Heading to Schedule 2A . ad. 1995 No. 16 Schedule 2A.................... am. 1995 Nos. 16 and 427; 1997 No. 345
rs. 1998 No. 141 am. 1998 No. 342; 1999 No. 349; 2000 No. 317
Schedule 3....................... am. 1995 No. 16; 1998 No. 141; 2000 No. 317 Schedule 4....................... rs. 1991 No. 456
am. 1992 No. 148 rs. 1993 No. 340 am. 1994 No. 182; 1995 Nos. 20 and 427 rs. 1996 No. 271; 1997 No. 345 am. 1998 Nos. 257 and 342; 1999 No. 349
Schedule 5....................... am. 1994 No. 387 rs. 1998 No. 345
Schedule 6....................... am. 1998 No. 345 Schedule 6A.................... ad. 1994 No. 182
rs. 1997 No. 192 am. 1997 No. 345 rs. 1998 No. 257 rep. 1999 No. 184
Schedule 7....................... am. 1991 No. 456 rs. 1992 No. 148 am. 1993 Nos. 113 and 340; 1994 No. 317; 1995 Nos. 16, 82 and
427; 1997 Nos. 192 and 345; 1998 Nos. 264, 319, 342 and 345; 1999 Nos. 261 and 349; 2000 No. 317
316
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected Schedule 8....................... am. 1992 No. 148
rs. 1993 No. 113 am. 1993 No. 340; 1994 No. 317; 1998 No. 345; 1999 No. 184
317
Table A Application, saving or transitional provisions
Statutory Rules 1997 No. 345
3 Application to certain applications
3.1 The amendment of Part 4 of Schedule 7 of the Patents Regulations by regulation 14 of these Regulations applies only to an international application filed on or after 1 January 1998.
3.2 _______________
Statutory Rules 1998 No. 56
13 Definitions
13.1 In this Part:
new Board means the Professional Standards Board for Patent and Trade Marks Attorneys established under Chapter 20 of the Patents Regulations as amended by these Regulations.
old Board means the Patent Attorneys Professional Standards Board:
(a) established under Chapter 20 of the Patents Regulations before the commencement of these Regulations; and
(b) as constituted at any time before the commencement of these Regulations.
14 Continuing effect of certain applications
14.1 This regulation applies to an application (including anything accompanying the application) made in accordance with regulation 20.2 of the Patents Regulations if:
(a) the application was made before the commencement of these Regulations; and
(b) anything that could have been done by the old Board under Chapter 20 of the Patents Regulations in relation to the application (unfinished business) was not done before the commencement of these Regulations.
14.2 The application is taken to have been made in accordance with regulation 20.2 of the Patents Regulations as amended by these Regulations.
14.3 The unfinished business may be finished by the new Board in accordance with Chapter 20 of the Patents Regulations as amended by these Regulations.
15 Continuing effect of decisions of old Board
15.1 This regulation applies to any act done, or decision made, by the old Board under Chapter 20 of the Patents Regulations as amended and in force at any time before the commencement of these Regulations.
15.2 The act or decision has effect as if the act had been done, or decision had been made, by the new Board.
318
16 Continuing effect of certificates
16.1 This regulation applies to each certificate given by the old Board under Chapter 20 of the Patent Regulations as amended and in force at any time before the commencement of these Regulations.
16.2 The certificate is as valid as it would be if it had been given by the new Board.
17 Continuing effect of certain complaints
17.1 This regulation applies to a complaint in writing to the old Board made under Part 4 of Chapter 20 of the Patents Regulations as amended and in force at any time, if:
(a) the complaint was made before the commencement of these Regulations; and
(b) anything that could have been done by the old Board in relation to the complaint under the Part (unfinished business) was not done before the commencement of these Regulations.
17.2 The unfinished business may be finished by the new Board in accordance with Part 4 of Chapter 20 of the Patents Regulations.
17.3 Any reply or further information sought by the old Board under regulation 20.20 of the Patents Regulations, but not given to the old Board before the commencement of these Regulations must be given to the new Board in accordance with regulation 20.20 as if the reply or further information had been sought by the new Board.
_______________
Statutory Rules 1999 No. 261
4 Transitional
Paragraphs 6.3 (ea) and (eb) as substituted by these Regulations do not apply to a patent or patent application for which, before the commencement of these Regulations, the Commissioner extended the time for making an application under section 38 or 94 of the Act.