Pages 384-388

INTERNATIONAL TREATIES

PCT

Notice from the European Patent Office dated 15 June 1992 concerning amendments to the Regulations under the PCT

A large number of amendments to the Regulations under the PCT, which were adopted by the Assembly of the PCT Union at its July 1991 meeting, came into force on 1 July 1992.

The most important ones are summarised below with particular regard to their impact on procedure before the EPO as receiving Office, International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA).

1. Late payment of fees (Rule 16^bis PCT)

The receiving Office (and no longer the International Bureau) will henceforth invite the applicant to pay, within one month of the date of invitation, the basic fee, the designation fees, the transmittal fee and the international search fee, if none of these fees has been paid within the applicable time limit or if the amount(s) paid does/do not cover the fees due (Rule 16^bis.1).

In accordance with Rule 16^bis.2 PCT, receiving Offices will be authorised to charge a late payment fee for carrying out the invitation procedure. The European Patent Office will make use of this possibility1.

If the applicant does not pay the prescribed fees and the late payment fee within the period of one month from the date of the invitation, the EPO in its capacity as receiving Office will proceed in accordance with Rule 16^bis.1(c) PCT.

2. Precautionary designation of States (Rule 4.9(b) and (c) PCT)

Following the example of the option provided for in the European procedure, new Rule 4.9(b) PCT allows the applicant to make additional precautionary designations.

The precautionary designation option is intended for those PCT Contracting States which, on the filing date of the international application, are not specifically designated in accordance with Rule 4.9(a). Precautionary designation is only valid if the applicant has specifically designated at least one State. It is deemed to be withdrawn if written confirmation is not filed with the receiving Office and the designation fee, supplemented by a confirmation fee, is not paid to the receiving Office before the expiration of fifteen months from the filing date or, where applicable, the priority date of the international application (Rule 4.9(b) and (c) PCT).

According to the PCT Schedule of Fees in force on 1 July 1992, the confirmation fee is 50% of the designation fee.

Box No V, Designation of States, of the new PCT request form, applicable as of 1 July 1992, has a space for precautionary designations in accordance with new Rule 4.9(b) PCT.

3. Nucleotide and amino acid sequences (Rules 5.2 and 13^ter PCT; Rule 104b(3)(a) EPC)

In order to improve the efficiency of the international search and international preliminary examination, international applications comprising sequences of at least 10 nucleotides or at least 4 amino acids must henceforth contain a listing of these sequences, which is to be drawn up in compliance with the standard prescribed in an administrative instruction under the PCT (Rule 5.2 PCT and Administrative Instruction 208)

New Rule 13^ter.1 PCT allows the ISA to invite the applicant to furnish it either with such a listing, if one has not been filed with the application, or, if the listing as filed contains irregularities, with a listing which complies with the prescribed standard.

If the applicant does not comply with this invitation, the ISA will not be required to carry out an international search to the extent that a meaningful search is not feasible (cf. Rule 13^ter.1(c) PCT).

Finally, the designated Offices are authorised, once processing in the national (regional) phase has started, to require the applicant to provide a sequence listing which complies with the prescribed standard (cf. Rule 13^ter.2 PCT).

In its capacity as International Searching Authority, the EPO will proceed as follows:

As of 1 January 1993, when the Decision of the Administrative Council of the European Patent Organisation of 5 June 1992 amending the Implementing Regulations to the EPC2 comes into force, the EPO will, if it is deemed necessary, issue the invitation provided for in Rule 13^ter.1 PCT. If the applicant does not respond to the invitation, the Office will proceed as laid down in Rule 13^ter.1(c) PCT.

In case of international applications filed as of 1 January 1993. the EPO, in its capacity as designated or elected Office, will apply Rules 13^ter.2 PCT and 104b(3)(a) EPC3 if the Office has not acted as ISA and the listing is not available to it. In the case of international applications filed prior to 1 January 1993 for which the EPO acts as ISA, the Office strongly advises applicants to include, whenever appropriate, sequence listings conforming to the standardised representation of sequences of nucleotides and amino acids as explained in a Notice from the Office dated 15 November 19894 or to file such listings when entering the regional phase before the EPO as designated or elected Office. The standardised representation recommended by the EPO conforms in full to WIPO Standard ST.23 as laid down in PCT Administrative Instruction 208.

The Office wishes to point out that it will make the "Patentin" computer program, which helps applicants comply with the standardised representation, available to applicants free of charge5.

4. Protest procedure (Rules 40.2(e) and 68.3(e) PCT)

New Rules 40.2(e) and 68.3(e) PCT authorise the ISA and IPEA, in cases where a finding that the invention lacks unity has been issued and the applicant pays additional fees under protest, to charge a fee for the examination of the protest ("protest fee") by a three-member board, special instance or higher authority (Rules 40.2(c) and 68.3(c) PCT, Articles 154(3) and 155(3) EPC). However, the ISA or IPEA must carry out a prior review of the finding of lack of unity.

As of 1 October 1992, the European Patent Office will make use of this possibility6.

The new provisions (Rules 40.2(e) and 68.3(e) PCT, Rule 104a(3) EPC and Article 2, item 21 of the Rules relating to Fees) will apply to any protest relating to an invitation to pay additional fees issued as of 1 October 1992. A notice concerning the new protest procedure will be published in a forthcoming issue of the OJ EPO.

5. Representation before ISA and IPEA (Rule 90 PCT)

The provisions governing representation have been supplemented and clarified. They explicitly permit the applicant or his representative for the international procedure (Article 49 PCT) to appoint a professional representative before the EPO specifically for the procedure before the EPO as ISA or IPEA

6. Filing an international application and other documents by modem technical means of communication (Rule 92.4 PCT)

The amendments made to Rule 92.4 PCT will henceforth allow the European Patent Office, in its capacity as a PCT authority, to apply the same rules for the use of modern technical means of communication as in the European procedure7.

7. Texts of the new provisions

(a) Text of the PCT and its Regulations as in force

The text of the PCT and its Regulations in force as of 1 July 1992 is available in all three official languages of the EPO from the World Intellectual Property Organization (WIPO).34. chemin des Colombettes, 1211 Geneva 20, Switzerland, Fax +41-22-7335428 (WIPO Publication No. 274).

(b) Administrative Instructions under the PCT

The Administrative Instructions under the PCT (Rule 89 PCT) have been extensively modified as a result of the amendments to the Regulations under the PCT.

The version of the Administrative Instructions in force as of 1 July 1992 has been published in a special issue of the PCT Gazette, No.15/92 of 25 June 1992.

(c) ST. Standards as stipulated by the Administrative Instructions under the PCT

The ST. standards from the WIPO Handbook on Industrial Property Information and Documentation prescribed by the Administrative Instructions under the PCT will be published in a special issue of the PCT Gazette, No. 20/92 of 23 July 1992.

(d) Guidelines for receiving Offices

The updated guidelines for receiving Offices have been published in a special issue of the PCT Gazette, No. 16/92 of 25 June 1992.

(e) Guidelines for ISAs and IPEAs

The guidelines for ISAs and IPEAs, which have also been updated, will appear together in a forthcoming issue of the PCT Gazette.

(f) Forms PCT/RO/101 and PCT/IPEA/401

The PCT request form (PCT/RO/101) and the demand for international preliminary examination form (PCT/IPEA/ 401) have been amended with effect from 1 July 1992 to comply with the new provisions and for ease of use. The old forms may be used until 31 December 1992.

The new forms are available free of charge from the European Patent Office or any receiving Office.

Fee calculation sheets

Forms PCT/RO/101 and PCT/IPEA/401 contain fee calculation sheets. The European Patent Office as receiving Office and IPEA has hitherto recommended that applicants use its version of the fee calculation sheet.

It has now dispensed with its own version and applicants are therefore requested to use the current fee calculation sheets annexed to forms PCT/RO/101 and PCT/IPEA/401.

However, applicants should also submit EPO Form 1010. Payment of fees to the European Patent Office, to speed up computerised capture of payments by the Office's Cash and Accounts Department.