Adopted by the Assembly of the International Patent Cooperation Union (PCT Union) at its thirty-second (14th ordinary) session on October 1, 2003, with effect from January 1, 2004
Rule 4.11
Rule 16bis.2
Rule 17.2
Rule 32.1
Rule 43bis.1
Rule 44bis.1
Rule 53.2
Rule 60.1
Rule 61.1
Rule 70.16
Rule 80.5
Rule 90.2
Rule 90.5
Schedule of Fees [3]
Rule 4
The Request (Contents)
4.1 to 4.10 [No change]
4.11 Reference to Earlier Search, Continuation or Continuation-in-Part, or Parent Application or Grant
(a) If:
(i) to (iii) [No change]
(iv) the applicant intends to make an indication under Rule 49bis.1(d) of the wish that the international application be treated, in any designated State, as an application for a continuation or a continuation-in-part of an earlier application;
the request shall so indicate and shall, as the case may be, identify the application in respect of which the earlier search was made or otherwise identify the search, or indicate the relevant parent application or parent patent or other parent grant.
(b) [No change]
4.12 to 4.14 [Remain deleted]
4.14bis to 4.18 [No change]
Rule 16bis
Extension of Time Limits for Payment of Fees
16bis.1 [No change]
(a) [No change]
(b) The amount of the late payment fee shall not, however, exceed the amount of 50% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.
Rule 17
The Priority Document
17.1 [No change]
(a) Where the applicant has complied with Rule 17.1(a), (b) or (b-bis), 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) and (c) [No change]
Rule 32
Extension of Effects of International Application to Certain Successor States
32.1 Extension of International Application to Successor State
(a) to (c) [No change]
(d) [Remains deleted]
32.2 [No change]
Rule 43bis
Written Opinion of the International Searching Authority
(a) [No change]
(b) For the purposes of establishing the written opinion, Articles 33(2) to (6), 35(2) and 35(3) and Rules 43.4, 64, 65, 66.1(e), 66.7, 67, 70.2(b) and (d), 70.3, 70.4(ii), 70.5(a), 70.6 to 70.10, 70.12, 70.14 and 70.15(a) shall apply mutatis mutandis.
(c) [No change]
Rule 44bis
International Preliminary Report on Patentability by the International Searching Authority
44bis.1 Issuance of Report; Transmittal to the Applicant
(a) and (b) [No change]
(c) The International Bureau shall promptly transmit one copy of the report issued under paragraph (a) to the applicant.
44bis.2 to 44bis.4 [No change]
Rule 53
The Demand
53.1 [No change]
(a) The demand shall contain:
(i) to (iii) [No change]
(iv) where applicable, a statement concerning amendments.
(b) [No change]
53.3 to 53.9 [No change]
Rule 60
Certain Defects in the Demand
(a) Subject to paragraphs (a-bis) and (a-ter), if the demand does not comply with the requirements specified in Rules 53.1, 53.2(a)(i) to (iii), 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.
(a-bis) and (a-ter) [No change]
(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 permitted the international application to be identified; otherwise, the demand shall be considered as if it had been received on the date on which the International Preliminary Examining Authority receives the correction.
(c) If the applicant does not comply with the invitation within the 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) [Deleted]
(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 (c).
(f) and (g) [No change]
60.2 [Remains deleted]
Rule 61
Notification of the Demand and Elections
61.1 Notification to the International Bureau and the Applicant
(a) [No change]
(b) The International Preliminary Examining Authority shall promptly notify the applicant of the date of receipt of the demand. Where the demand has been considered under Rules 54.4, 55.2(d), 58bis.1(b) or 60.1(c) as if it had not been submitted, the International Preliminary Examining Authority shall notify the applicant and the International Bureau accordingly.
(c) [Remains deleted]
61.2 to 61.4 [No change]
Rule 70
International Preliminary Report on Patentability by the International Preliminary Examining Authority (International Preliminary Examination Report)
70.1 to 70.15 [No change]
(a) 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. Replacement sheets containing 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.
(b) Notwithstanding paragraph (a), each superseded or reversed replacement sheet referred to in that paragraph shall also be annexed to the report where the International Preliminary Examining Authority considers that the relevant superseding or reversing amendment goes beyond the disclosure in the international application as filed and the report contains an indication referred to in Rule 70.2(c). In such a case, the superseded or reversed replacement sheet shall be marked as provided by the Administrative Instructions.
70.17 [No change]
Rule 80
Computation of Time Limits
80.1 to 80.4 [No change]
80.5 Expiration on a Non-Working Day or Official Holiday
If the expiration of any period during which any document or fee must reach a national Office or intergovernmental organization falls on a day:
(i) on which such Office or organization is not open to the public for the purposes of the transaction of official business;
(ii) on which ordinary mail is not delivered in the locality in which such Office or organization is situated;
(iii) which, where such Office or organization is situated in more than one locality, is an official holiday in at least one of the localities in which such Office or organization is situated, and in circumstances where the national law applicable by that Office or organization provides, in respect of national applications, that, in such a case, such period shall expire on a subsequent day; or
(iv) which, where such Office is the government authority of a Contracting State entrusted with the granting of patents, is an official holiday in part of that Contracting State, and in circumstances where the national law applicable by that Office provides, in respect of national applications, that, in such a case, such period shall expire on a subsequent day;
the period shall expire on the next subsequent day on which none of the said four circumstances exists.
80.6 and 80.7 [No change]
Rule 90
Agents and Common Representatives
90.1 [No change]
(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 and 90.4 [No change]
90.5 General Power of Attorney
(a) and (b) [No change]
(c) Any receiving Office, any International Searching Authority and any International Preliminary Examining Authority may waive the requirement under paragraph (a)(ii) that a copy of the general power of attorney is attached to the request, the demand or the separate notice, as the case may be.
(d) Notwithstanding paragraph (c), where the agent submits any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 to the receiving Office, the International Searching Authority or the International Preliminary Examining Authority, a copy of the general power of attorney shall be submitted to that Office or Authority.
90.6 [No change]
| Fees | Amounts | ||
| 1. | International Filing Fee: (Rule 15.2) | 1,400 Swiss francs plus 15 Swiss francs for each sheet of the international application in excess of 30 sheets | |
| 2. | Handling Fee: (Rule 57.2) | 200 Swiss francs | |
| Reductions | |||
| 3. The international filing fee is reduced by the following amount if the international application is, in accordance with and to the extent provided for in the Administrative Instructions, filed: | |||
| (a) | on paper together with a copy thereof in electronic form: | 100 Swiss francs | |
| (b) | in electronic form where the text of the description, claims and abstract is not in character coded format: | 200 Swiss francs | |
| (c) | in electronic form where the text of the description, claims and abstract is in character coded format: | 300 Swiss francs | |
| 4. The international filing fee (where applicable, as reduced under item 3) and the handling fee are reduced by 75% if the international application is filed by: | |||
| (a) | an 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); or | ||
| (b) | an applicant, whether a natural person or not, who is a national of and resides in a State that is classed as a least developed country by the United Nations; | ||
| provided that, if there are several applicants, each must satisfy the criteria set out in either sub-item (a) or (b). | |||
I hereby certify that the foregoing is a true copy of the original text in English of the amendments of the Regulations under the Patent Cooperation Treaty (PCT), adopted by the Assembly of the International Patent Cooperation Union (PCT Union) at its thirty-second (14th ordinary) session on October 1, 2003, with effect from January 1, 2004.
(signed)
Kamil Idris
Director General
World Intellectual Property Organization
November 6, 2003
Footnotes:
1. See also previous amendments, also adopted with effect from January 1, 2004, set out in PCT Notification No. 159, Certified Copy, Amendments to the Regulations Under the Patent Cooperation Treaty (PCT), Adopted by the Assembly of the International Patent Cooperation Union (PCT Union) at its thirty-first (18th extraordinary) session on October 1, 2002.
2. The Rules as amended:
(a) shall enter into force on January 1, 2004, and shall apply to any international application whose international filing date is on or after January 1, 2004;
(b) shall not apply to any international application whose international filing date is before January 1, 2004, provided that:
(i) amended Rules 53.2, 60.1 and 61.1 shall apply to any international application in respect of which a demand for international preliminary examination is filed on or after January 1, 2004, whether the international filing date of the international application is before, on or after January 1, 2004;
(ii) amended Rule 70.16 shall apply to any international application in respect of which the international preliminary examination report is established on or after January 1, 2004, whether the international filing date of the international application is before, on or after January 1, 2004.
3. The Schedule of Fees as amended:
(a) shall enter into force on January 1, 2004, and shall apply to any international application whose international filing date is on or after January 1, 2004, provided that the Schedule of Fees as worded before its amendment shall continue to apply to any international application which is received by the receiving Office before January 1, 2004, and is accorded an international filing date that is on or after January 1, 2004;
(b) shall not apply to any international application whose international filing date is before January 1, 2004, provided that the following provisions shall apply to any international application in respect of which a demand for international preliminary examination is filed on or after January 1, 2004, whether the international filing date of the international application is before, on or after January 1, 2004:
(i) item 2 of the Schedule of Fees as amended; and
(ii) item 4 of the Schedule of Fees as amended, insofar as it relates to the handling fee.
4. The following reproduces the text as amended of each Rule that was amended. Where a paragraph or item of any such Rule has not been amended, the indication "[No change]" or "[Remains deleted]" appears.