INTERNATIONAL TREATIES
PCT
Change to Information for PCT applicants
The information for PCT applicants concerning time limits and procedural steps before the EPO as a designated and an elected Office under the PCT, published in Supplement No. 1 to Official Journal No. 12/1992, has been changed as follows.
The amendments relate to
- the translation requirements for the international application
- the documents forming the basis
for the European granting procedure.
The amended passages appear in italics. The footnotes of the text in Supplement No. 1 to Official Journal No. 12/1992 are unchanged.
The changes relating to the translation of the application will also appear in the next re-issue of EPA/EPO/OEB Form 1200, which applicants are recommended to use when entering the regional phase before the EPO.
Information for PCT applicants (as at 1 January 1993) concerning time limits and procedural steps before the EPO as a designated Office under the PCT (Arts. 150, 153, Rule 104b EPC)
(Page 4,5)
B. STEPS TO BE TAKEN WITHIN 21 MONTHS OF THE PRIORITY DATE
I. Translation of the application
1. Component parts of the translation
If the international application is not published by the International Bureau in one of the EPO official languages (German, English, French), the applicant must furnish the application in one of those languages to the EPO within 21 months of the priority date (see Art. 22(1) PCT, Art. 158(2) and Rule 104b(1)(a) EPC).
This translation must include (Rule 49.5 PCT):
- the description (Rule 5 PCT);
- the claims as originally filed (Rule 6 PCT); regarding the claims fees see B.II.4;
- any text in the drawings (Rule 7 PCT);
- the abstract (Rule 8 PCT).
If any drawings contain text, the translation is to be furnished either in the form of a copy of the original drawings with the translation pasted on the original text or in the form of a new drawing (Rule 49.5(d) PCT).
The expression "Fig." does not require translation into any language (Rule 49.5(f) PCT).
Should the drawings supplied under Rule 49.5(d) PCT not comply with the physical requirements laid down in Rule 11 PCT, the EPO will invite the applicant to correct the defect within a period to be fixed in the invitation (Rule 49.5(g) PCT).
The translation should also include:
- any amendments made to the claims in the proceedings before the International Bureau and any statement, if filed, explaining the amendments and indicating any impact that such amendments might have on the description and drawings (Art. 19(1), Rule 49.3 PCT), if the applicant wishes the amendments to form the basis for the subsequent proceedings. Where the applicant has furnished only one translation, either of the claims as filed or of the claims as amended, the claims which have not been translated will be disregarded; no invitation to furnish the missing translation will generally be issued (Rule 49.5(c)bis PCT).
Where the applicant has not furnished a translation of any statement made under Article 19(1) PCT, such statement will be disregarded (Rule 49.5(c) PCT).
- any indication under Rule 13bis.3 and 13bis.4 PCT, i.e. references to a deposited micro-organism (Rule 49.3 PCT); see also D.6;
- where applicable, the sequence listing referred to in D.7;
- any request for rectification referred to in the third sentence of Rule 91.1(f) PCT as published in accordance with Rule 48.2(a)(vii) PCT; see also D.8.
Where the applicant has not filed a translation of any indication furnished under Rule 13bis.3 and 13bis.4 PCT on a separate sheet (see PCT Administrative Instruction 209), the EPO will invite him to do so within a period to be fixed in the invitation (Rule 49.5(h) PCT).
D. OTHER STEPS
5. Amending the application on entry into the regional phase
(Page 13, No. 5.1)
At the end of the first paragraph the reference to Article 41(1) and (2) and Rule 78.1 PCT will be deleted.
(Page 13, No. 5.2)
5.2 A Euro-PCT application may be amended irrespective of whether in the international phase the applicant made use of the possibility under Article 19 and Rule 46 PCT of amending the claims before the Inter- national Bureau (Article 28 PCT).
Amendments of the claims under Article 19 PCT form the basis for the grant procedure before the EPO, unless they have been superseded by an amendment under Article 28 PCT.
Information for PCT applicants (as at 1 January 1993) concerning time limits and procedural steps before the EPO as an elected Office under the PCT (Arts. 150, 156, Rule 104b EPC)
(Page 19, 20)
B. STEPS TO BE TAKEN WITHIN 31 MONTHS OF THE PRIORITY DATE
I. Translation of the application
1. Component parts of the translation
If the international application is not published by the International Bureau in one of the EPO official languages (English, French, German), the applicant must furnish the application in one of those languages to the EPO within 31 months of the priority date (see Art. 39(1) PCT; Art. 158(2), Rule 104b(1)(a) EPC).
This translation must include (Rules 49.5 and 76.5 PCT):
- the description (Rule 5 PCT);
- the claims as originally filed (Rule 6 PCT); see also B.l.1 below and as regards claims fees B.II.4;
- any text in the drawings (Rule 7 PCT); see also B.I.1 below;
- the abstract (Rule 8 PCT);
- any annexes to the international preliminary examination report (Art. 36(3)(b), Rules 74, 70.16 and 76.5(iv) PCT).
If any drawings contain text, the translation is to be furnished either in the form of a copy of the original drawings with the translation pasted on the original text or in the form of a new drawing (Rules 49.5(d) and 76.5 PCT). The expression "Fig." does not require translation into any language (Rules 49.5(f) and 76.5 PCT).
Should the drawings supplied under Rule 49.5(d) PCT not comply with the physical requirements laid down in Rule 11 PCT, the EPO will invite the applicant to correct the defect within a period to be fixed in the invitation (Rules 49.5(g) and 76.5 PCT).
The translation should also include:
- any amendments made to the claims in the procedure before the International Bureau and any statement filed under Article 19(1) PCT (Rule 49.3 PCT) when the applicant wishes the amended patent claims to form the basis for further procedure and these amendments are not annexed to the international preliminary examination report (Rule 70.16 PCT).
Where the applicant has not furnished a translation of any statement made under Article 19(1) PCT, such statement will be disregarded (Rules 49.5(c) and 76.5 PCT).
- any indication under Rules 13bis.3 and 13bis.4 PCT, i.e. references to a deposited micro-organism (Rules 49.3 and 76.5 PCT); see also C.6;
- where applicable, the sequence listing referred to in D.7;
- any request for rectification referred to in the third sentence of Rule 91.1(f) PCT as published in accordance with Rule 48.2(a)(vii) PCT; see also C.8.
Where the applicant has not filed a translation of any indication furnished under Rule 13bis.3 and 13bis.4 PCT on a separate sheet (see PCT Administrative Instruction 209), the EPO will invite him to do so within a period to be fixed in the invitation (Rules 49.5(h) and 76.5 PCT).
C. OTHER STEPS
5. Amending the application on entry into the regional phase before the EPO
(Page 29, No. 5.1)
The reference to Art. 28 and Rule 52.1 PCT will be deleted.
(Page 29. 30 No. 5.2)
5.2 A Euro-PCT application may be amended irrespective of whether in the international phase the applicant (see Article 41 PCT)
- made use of the possibility under Article 19 and Rule 46 PCT of amending the claims before the International Bureau, or
- made amendments under Article 34 PCT before the International Preliminary Examining Authority.
Amendments to the claims annexed to the international preliminary examination report will be taken into account in the subsequent proceedings, unless they have been superseded by an amendment under Article 41 PCT.
On entry into the regional phase the applicant may however inform the EPO that he wishes the European grant procedure to be based on the documents as published in the pamphlet instead of those being annexed to the international preliminary examination report.
If the amendments to the claims annexed to the international preliminary examination are to be the basis for the subsequent proceedings, they must be submitted in triplicate and in conformity with the general provisions governing application documents (Rule 36(1) EPC).