INTERNATIONAL TREATIES
PCT
Amendments to the PCT Regulations which will enter into force on or after 1 July 1998
Those amendments adopted at the 24th PCT Assembly from 16 September to 1 October 1997 which entered into force on 1 January 1998 (reduction in PCT fees, new PCT Gazette) have already been reported on in a previous issue of the Official Journal1. The most important aspects of the other amendments to the PCT Regulations adopted at the 24th Assembly, which will enter into force on or after 1 July 1998, are described below.
1. Language of the International Application - Rules 12.1 and 12.2
The existing regulations concerning the language of filing are being expanded. As of 1 July 1998, international applications may be filed in any language which the receiving Office accepts for that purpose. However, the receiving Office must continue to accept at least one language which is both accepted by the competent International Searching Authority and a PCT language of publication. Applicants will thus continue to be able to file international applications in a language which does not require translation later on in the international phase (see 2.).
At the time of going to press, Denmark was the only EPC contracting state to have made any announcement concerning this amendment, stating that it would be accepting Swedish and Finnish as additional languages of filing. The EPO itself will continue to use its PCT languages of filing (English, French and German).
The request itself (Form PCT/RO/101) must still be filed in a language which is both accepted by the receiving Office and a language of publication.
2. Translation for the Purposes of International Search - Rule 12.3
Applicants must file a translation within one month of the date of receipt of the international application if the language in which the application is filed is not accepted by the International Searching Authority that is to carry out the international search.
Details about the language of filing, the language of changes to the international application and the translation requirements are contained in the new version of Rule 12 PCT. The following have also been amended as a result: Rules 11.14, 19.4, 20.4, 23.1, 26.3-26.3ter, 29.1, 47.3, 48.3 and 55.2.
3. Priority Claim and Priority Document - Rules 4.10, 17 and 26bis
As of 1 July 1998 the requirements pertaining to priority claims and the correction thereof will be less stringent. Applicants will be able to correct or add priority claims by means of a notice submitted to the receiving Office or the International Bureau within a time limit of 16 months from the earliest 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. 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. Where the correction or addition of a priority claim causes a change in the priority date, any time limit which is computed from the previously applicable priority date and which has not already expired will be computed from the priority date as so changed. For more details, see revised Rule 4.10 and new Rule 26bis.
Rules 17.1 and 17.2 (The Priority Document) have also been changed. Rule 17.1(a) now also applies to priority documents which are based on an international application. 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"), must, unless the priority document has already been filed with the receiving Office together with the international application in which the priority claim is made, be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date. A priority document which is received by the International Bureau after the expiration of that time limit will be considered to have been received on the last day of that time limit if it reaches the Bureau before the date of international publication of the international application.
Where the priority document is issued by the receiving Office, the applicant may, instead of filing the priority document, request the receiving Office in accordance with Rule 17.1(b) to prepare the priority document and transmit it to the International Bureau. Such a request must 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.
According to Rule 17.2(a), a designated Office may no longer demand the filing of a copy of the priority document together with a certified translation thereof.
4. Fees - Rules 15, 16, 16bis, 57, 58 and 58bis
PCT fees were reduced with effect from 1 January 19981. A further change, which will enter into force on 1 July 1998, relates to the time limits for payment, which have been brought further into line for the various fees to be paid during the international phase. Also, the method of fixing the equivalent amounts of certain fees not paid in Swiss Francs has been rationalised. Further changes clarify the amounts to be paid where a fee is changed before payment is effected. The provisions governing cases where a refund is possible have also been changed.
Finally, the procedure for late payment of fees according to Chapter II has been adapted to the system used in Chapter I. This includes the option to introduce a fee for late payment of the handling fee or the international preliminary examination fee. In its capacity as International Preliminary Examining Authority, the European Patent Office has availed itself of this option2.
5. Demand for international preliminary examination - Rule 59
The procedure for submitting a demand for international preliminary examination to an authority which is not competent will, as of 1 July 1998, be in line with the provisions which apply to the filing of an application with a receiving Office which is not competent. This will afford applicants extra protection against loss of rights.
6. Time Limit for International Preliminary Examination - Rule 69.2
As a result of procedural changes, as of 1 July 1998 the time limit for establishing the international preliminary examination report will be 28 months from the priority date, or 8 months from the date of payment of the fees referred to in Rules 57.1 and 58.1(a), or 8 months from the date of receipt by the International Preliminary Examining Authority of the translation furnished under Rule 55.2, whichever expires last.
7. Access to Files - Rule 94
In future, it will be easier for third parties to gain access to files in respect of international applications filed on or after 1 July 1998. In particular, elected Offices will be able to allow third parties access to documents from the file of the international preliminary examination to the same extent as provided by their national law, subject to reimbursement of the cost. The EPO will publish the relevant provisions separately.
8. Inventions Relating to Biological Material - Rule 13bis
As of 1 July 1998, Rule 13bis will apply not only to deposited microorganisms, but also, in view of rapid developments in the field of biotechnology, to the deposit of other biological material, as does Rule 28 EPC3.
9. Nucleotide and/or Amino Acid Sequence Listings - Rule 13ter
The disclosure of nucleotide and/or amino acid sequence listings is the subject of a new WIPO standard (PCT Administrative Instructions, Annex C) which comes into force on 1 July 1998 and which is reflected in particular in the amendments to Rules 5.2 and 13ter. In future applicants will have to draw up only one sequence listing for the receiving Office, the International Searching and Preliminary Examining Authorities and the designated and elected Offices, and they will not be required to submit either translations or other extra copies if the new standard is followed. It may however be necessary to file an extra copy of the sequence listing on request with the competent authority (eg where the International Searching Authority and Preliminary Examining Authority are not the same).
The new standard and further details will be published separately in a supplement to the Official Journal (see also WIPO publications on changes to the PCT Administrative Instructions and Annex C thereto in the PCT Gazette, the PCT Newsletter and on the Internet).
10. Electronic filing, processing and transmission of international applications - Rules 89bis and 89ter
Two rules (Rules 89bis and 89ter) have been added to Part F of the Regulations (Rules Concerning Several Chapters of the Treaty). They provide the legal basis for the creation of new PCT Administrative Instructions relating to further details on electronic filing, processing and transmission, including corresponding WIPO standards. The new rules, together with the associated Administrative Instructions, will enter into force at a later date (see also, when the time comes, WIPO publications in the PCT Gazette, PCT Newsletter and on the Internet).
11. Text of the amended rules
The text of the amended rules is contained in the report on the 24th PCT Assembly published by WIPO on the Internet. They can also be found in a special edition of the PCT Gazette. WIPO intends to publish a new edition of the consolidated text of the PCT (Treaty and Regulations) in the near future.