Pages 692-695

INTERNATIONAL TREATIES

PCT

Notice from the European Patent Office dated 7 November 2007 concerning the withdrawal of reservations under the PCT

1. The revised European Patent Convention (EPC 2000) is consistent with the PCT provisions which the European Patent Office (EPO) has declared to be incompatible with the EPC 1973 in reservations notified to the International Bureau of the World Intellectual Property Organization (WIPO).1 The EPO has accordingly informed the International Bureau that the following notifications of incompatibility are withdrawn as from entry into force of the EPC 2000 on 13 December 2007:

• notification of incompatibility under Rule 4.10(d) PCT (priority claim from an earlier application filed in or for any WTO Member not party to the Paris Convention), in force since 1 January 2000;2
• notification of incompatibility under Rules 26bis.3(j), 49ter.1(g) and 49ter.2(h) PCT (restoration of the right of priority), in force since 1 April 2007;3
• notification of incompatibility under Rule 49.6(f) PCT (reinstatement of rights after failure to perform the acts for entry into the national phase referred to in Article 22 PCT), in force since 1 January 2003;4
• notification of incompatibility under Rule 51bis.1(f) PCT (requirement to furnish a translation of a priority document in certain circumstances only), in force since 1 March 2001;5
• notification of incompatibility under Rules 20.8(a) and 20.8(b) PCT (incorporation by reference of missing elements and parts), in force since 1 April 2007.6

2. Following withdrawal of the notifications of incompatibility referred to in point 1, those PCT provisions which were not applicable in the procedures before the EPO are binding on the EPO as from 13 December 2007, with due allowance for the requirements and transitional arrangements set out hereafter:

I. Rule 4.10 PCT - priority claim from an application filed in or for a Member of the WTO not party to the Paris Convention

3. Rule 4.10 PCT applies to international applications filed on or after 13 December 2007.

II. Rules 26bis.3, 49ter.1 and 49ter.2 PCT - restoration of the right of priority

4. Rule 26bis.3 PCT applies to international applications filed with the EPO as receiving Office on or after 13 December 2007 and to applications pending with the EPO as receiving Office on that date in so far as the time limit of two months from the date on which the priority period expired has not expired at that date.

5. Rules 49ter.1 and 49ter.2 PCT apply to international applications entering the European phase on or after 13 December 2007 and to such applications having entered the European phase before that date in so far as the time limit of two months after expiry of the priority period has not expired at that date.

6. A request for restoration of the right of priority under Rules 26bis.3 or 49ter.2 PCT may be granted by the EPO, as receiving Office or designated Office respectively, only if the loss of rights occurred in spite of due care required by the circumstances having been taken ("due care" requirement) (Rules 26bis.3(i) and 49ter.2(g) PCT).

7. A request for restoration of the right of priority under Rules 26bis.3 or 49ter.2 PCT is subject to the payment of a fee (Article 2.13 of the Rules relating to Fees; Rules 26bis.3(d) and 49ter.2(d) PCT).

III. Rule 49.6 PCT - reinstatement of rights after failure to perform the acts referred to in Article 22 PCT

8. Rule 49.6 PCT applies to international applications entering the European phase on or after 13 December 2007 and to such applications having entered the European phase before that date in so far as the time limit under Rule 49.6(b) PCT has not expired at that date.

9. A request for reinstatement of rights under Rule 49.6 PCT may be granted by the EPO as designated Office only if the loss of rights occurred in spite of due care required by the circumstances having been taken ("due care" requirement) (Rule 49.6(a) PCT).

10. A request for reinstatement of rights under Rule 49.6 PCT is subject to the payment of a fee (Article 2.13 of the Rules relating to Fees; Rule 49.6(d)(i) PCT).

IV. Rule 51bis.1(e) PCT - furnishing a translation of the priority document

11. Rule 51bis.1(e) PCT applies to international applications entering the European phase on or after 13 December 2007. Where the application has already entered the European phase at that date reference is made to the notice from the EPO dated 20 September 2007 (OJ EPO 2007, 504, point 5).

V. Rule 20 PCT - incorporation by reference of missing elements and parts

12. Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 PCT apply to international applications filed with the EPO as receiving Office on or after 13 December 2007.

13. Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 PCT apply to international applications entering the European phase with the EPO as designated Office on or after 13 December 2007.