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Verdrag tot samenwerking inzake octrooien, Washington, 19-06-1970

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Verdrag tot samenwerking inzake octrooien

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Patent Cooperation Treaty

Done at Washington, June 19, 1970

The Contracting States,

Desiring to make a contribution to the progress of science and technology,

Desiring to perfect the legal protection of inventions,

Desiring to simplify and render more economical the obtaining of protection for inventions where protection is sought in several countries,

Desiring to facilitate and accelerate access by the public to the technical information contained in documents describing new inventions,

Desiring to foster and accelerate the economic development of developing countries through the adoption of measures designed to increase the efficiency of their legal systems, whether national or regional, instituted for the protection of inventions by providing easily accessible information on the availability of technological solutions applicable to their special needs and by facilitating access to the ever expanding volume of modern technology,

Convinced that cooperation among nations will greatly facilitate the attainment of these aims,

Have concluded the present Treaty.

Introductory Provisions

Article 1. Establishment of a Union

  • (1) The States party to this Treaty (hereinafter called “the Contracting States”) constitute a Union for cooperation in the filing, searching, and examination, of applications for the protection of inventions, and for rendering special technical services. The Union shall be known as the International Patent Cooperation Union.

Article 2. Definitions

For the purposes of this Treaty and the Regulations and unless expressly stated otherwise:

  • (i) “application” means an application for the protection of an invention; references to an “application” shall be construed as references to applications for patents for inventions, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, and utility certificates of addition;

  • (ii) references to a “patent” shall be construed as references to patents for inventions, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, and utility certificates of addition;

  • (iii) “national patent” means a patent granted by a national authority;

  • (iv) “regional patent” means a patent granted by a national or an intergovernmental authority having the power to grant patents effective in more than one State;

  • (v) “regional application” means an application for a regional patent;

  • (vi) references to a “national application” shall be construed as references to applications for national patents and regional patents, other than applications filed under this Treaty;

  • (vii) “international application” means an application filed under this Treaty;

  • (viii) references to an “application” shall be construed as references to international applications and national applications;

  • (ix) references to a “patent” shall be construed as references to national patents and regional patents;

  • (x) references to “national law” shall be construed as references to the national law of a Contracting State or, where a regional application or a regional patent is involved, to the treaty providing for the filing of regional applications or the granting of regional patents;

  • (xi) “priority date,” for the purposes of computing time limits, means:

    • (a) where the international application contains a priority claim under Article 8, the filing date of the application whose priority is so claimed;

    • (b) where the international application contains several priority claims under Article 8, the filing date of the earliest application whose priority is so claimed;

    • (c) where the international application does not contain any priority claim under Article 8, the international filing date of such application;

  • (xii) “national Office” means the government authority of a Contracting State entrusted with the granting of patents; references to a “national Office” shall be construed as referring also to any intergovernmental authority which several States have entrusted with the task of granting regional patents, provided that at least one of those States is a Contracting State, and provided that the said States have authorized that authority to assume the obligations and exercise the powers which this Treaty and the Regulations provide for in respect of national Offices;

  • (xiii) “designated Office” means the national Office of or acting for the State designated by the applicant under Chapter I of this Treaty;

  • (xiv) “elected Office” means the national Office of or acting for the State elected by the applicant under Chapter II of this Treaty;

  • (xv) “receiving Office” means the national Office or the intergovernmental organization with which the international application has been filed;

  • (xvi) “Union” means the International Patent Cooperation Union;

  • (xvii) “Assembly” means the Assembly of the Union;

  • (xviii) “Organization” means the World Intellectual Property Organization;

  • (xix) “International Bureau” means the International Bureau of the Organization and, as long as it subsists, the United International Bureaux for the Protection of Intellectual Property (BIRPI);

  • (xx) “Director General” means the Director General of the Organization and, as long as BIRPI subsists, the Director of BIRPI.

CHAPTER I. International Application and International Search

Article 3. The International Application

  • (1) Applications for the protection of inventions in any of the Contracting States may be filed as international applications under this Treaty.

  • (2) An international application shall contain, as specified in this Treaty and the Regulations, a request, a description, one or more claims one or more drawings (where required), and an abstract.

  • (3) The abstract merely serves the purpose of technical information and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.

  • (4) The international application shall:

    • (i) be in a prescribed language;

    • (ii) comply with the prescribed physical requirements;

    • (iii) comply with the prescribed requirement of unity of invention;

    • (iv) be subject to the payment of the prescribed fees.

Article 4. The Request

  • (1) The request shall contain:

    • (i) a petition to the effect that the international application be processed according to this Treaty;

    • (ii) the designation of the Contracting State or States in which protection for the invention is desired on the basis of the international application (“designated States”); if for any designated State a regional patent is available and the applicant wishes to obtain a regional patent rather than a national patent, the request shall so indicate; if, under a treaty concerning a regional patent, the applicant cannot limit his application to certain of the States party to that treaty, designation of one of those States and the indication of the wish to obtain the regional patent shall be treated as designation of all the States party to that treaty; if, under the national law of the designated State, the designation of that State has the effect of an application for a regional patent, the designation of the said State shall be treated as an indication of the wish to obtain the regional patent;

    • (iii) the name of and other prescribed data concerning the applicant and the agent (if any);

    • (iv) the title of the invention;

    • (v) the name of and other prescribed data concerning the inventor where the national law of at least one of the designated States requires that these indications be furnished at the time of filing a national application. Otherwise, the said indications may be furnished either in the request or in separate notices addressed to each designated Office whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application.

  • (2) Every designation shall be subject to the payment of the prescribed fee within the prescribed time limit.

  • (3) Unless the applicant asks for any of the other kinds of protection referred to in Article 43, designation shall mean that the desired protection consists of the grant of a patent by or for the designated State. For the purposes of this paragraph, Article 2(ii) shall not apply.

  • (4) Failure to indicate in the request the name and other prescribed data concerning the inventor shall have no consequence in any designated State whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application. Failure to furnish the said indications in a separate notice shall have no consequence in any designated State whose national law does not require the furnishing of the said indications.

Article 5. The Description

The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.

Article 6. The Claims

The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.

Article 7. The Drawings

  • (1) Subject to the provisions of paragraph (2)(ii), drawings shall be required when they are necessary for the understanding of the invention.

  • (2) Where, without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings:

    • (i) the applicant may include such drawings in the international application when filed,

    • (ii) any designated Office may require that the applicant file such drawings with it within the prescribed time limit.

Article 8. Claiming Priority

  • (2)

    • (a) Subject to the provisions of subparagraph (b), the conditions for, and the effect of, any priority claim declared under paragraph (1) shall be as provided in Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property.

    • (b) The international application for which the priority of one or more earlier applications filed in or for a Contracting State is claimed may contain the designation of that State. Where, in the international application, the priority of one or more national applications filed in or for a designated State is claimed, or where the priority of an international application having designated only one State is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by the national law of that State.

Article 9. The Applicant

  • (1) Any resident or national of a Contracting State may file an international application.

  • (3) The concepts of residence and nationality, and the application of those concepts in cases where there are several applicants or where the applicants are not the same for all the designated States, are defined in the Regulations.

Article 10. The Receiving Office

The international application shall be filed with the prescribed receiving Office, which will check and process it as provided in this Treaty and the Regulations.

Article 11. Filing Date and Effects of the International Application

  • (1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:

    • (i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,

    • (ii) the international application is in the prescribed language,

    • (iii) the international application contains at least the following elements:

      • (a) an indication that it is intended as an international application,

      • (b) the designation of at least one Contracting State,

      • (c) the name of the applicant, as prescribed,

      • (d) a part which on the face of it appears to be a description,

      • (e) a part which on the face of it appears to be a claim or claims.

  • (2)

    • (a) If the receiving Office finds that the international application did not, at the time of receipt, fulfill the requirements listed in paragraph (1), it shall, as provided in the Regulations, invite the applicant to file the required correction.

    • (b) If the applicant complies with the invitation, as provided in the Regulations, the receiving Office shall accord as the international filing date the date of receipt of the required correction.

  • (3) Subject to Article 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.

Article 12. Transmittal of the International Application to the International Bureau and the International Searching Authority

  • (1) One copy of the international application shall be kept by the receiving Office (“home copy”), one copy (“record copy”) shall be transmitted to the International Bureau, and another copy (“search copy”) shall be transmitted to the competent International Searching Authority referred to in Article 16, as provided in the Regulations.

  • (2) The record copy shall be considered the true copy of the international application.

  • (3) The international application shall be considered withdrawn if the record copy has not been received by the international Bureau within the prescribed time limit.

Article 13. Availability of Copy of the International Application to Designated Offices

  • (1) Any designated Office may ask the International Bureau to transmit to it a copy of the international application prior to the communication provided for in Article 20, and the International Bureau shall transmit such copy to the designated Office as soon as possible after the expiration of one year from the priority date.

  • (2)

    • (a) The applicant may, at any time, transmit a copy of his international application to any designated Office.

    • (b) The applicant may, at any time, ask the International Bureau to transmit a copy of his international application to any designated Office, and the International Bureau shall transmit such copy to the designated Office as soon as possible.

    • (c) Any national Office may notify the International Bureau that it does not wish to receive copies as provided for in subparagraph (b), in which case that subparagraph shall not be applicable in respect of that Office.

Article 14. Certain Defects in the International Application

  • (1)

    • (a) The receiving Office shall check whether the international application contains any of the following defects, that is to say:

      • (i) it is not signed as provided in the Regulations;

      • (ii) it does not contain the prescribed indications concerning the applicant;

      • (iii) it does not contain a title;

      • (iv) it does not contain an abstract;

      • (v) it does not comply to the extent provided in the Regulations with the prescribed physical requirements.

    • (b) If the receiving Office finds any of the said defects, it shall invite the applicant to correct the international application within the prescribed time limit, failing which that application shall be considered withdrawn and the receiving Office shall so declare.

  • (2) If the international application refers to drawings which, in fact, are not included in that application, the receiving Office shall notify the applicant accordingly and he may furnish them within the prescribed time limit and, if he does, the international filing date shall be the date on which the drawings are received by the receiving Office. Otherwise, any reference to the said drawings shall be considered non-existent.

  • (3)

    • (a) If the receiving Office finds that, within the prescribed time limits, the fees prescribed under Article 3 (4) (iv) have not been paid, or no fee prescribed under Article 4 (2) has been paid in respect of any of the designated States, the international application shall be considered withdrawn and the receiving Office shall so declare.

    • (b) If the receiving Office finds that the fee prescribed under Article 4 (2) has been paid in respect of one or more (but less than all) designated States within the prescribed time limit, the designation of those States in respect of which it has not been paid within the prescribed time limit shall be considered withdrawn and the receiving Office shall so declare.

  • (4) If, after having accorded an international filing date to the international application, the receiving Office finds, within the prescribed time limit, that any of the requirements listed in items (i) to (iii) of Article 11 (1) was not complied with at that date, the said application shall be considered withdrawn and the receiving Office shall so declare.

Article 15. The International Search

  • (1) Each international application shall be the subject of international search.

  • (2) The objective of the international search is to discover relevant prior art.

  • (3) International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any).

  • (4) The International Searching Authority referred to in Article 16 shall endeavor to discover as much of the relevant prior art as its facilities permit, and shall, in any case, consult the documentation specified in the Regulations.

  • (5)

    • (a) If the national law of the Contracting State so permits, the applicant who files a national application with the national Office of or acting for such State may, subject to the conditions provided for in such law, request that a search similar to an international search (“international-type search”) be carried out on such application.

    • (b) If the national law of the Contracting State so permits, the national Office of or acting for such State may subject any-national application filed with it to an international-type search.

    • (c) The international-type search shall be carried out by the International Searching Authority referred to in Article 16 which would be competent for an international search if the national application were an international application and were filed with the Office referred to in subparagraphs (a) and (b). If the national application is in a language which the International Searching Authority considers it is not equipped to handle, the international-type search shall be carried out on a translation prepared by the applicant in a language prescribed for international applications and which the International Searching Authority has undertaken to accept for international applications. The national application and the translation, when required, shall be presented in the form prescribed for international applications.

Article 16. The International Searching Authority

  • (1) International search shall be carried out by an International Searching Authority, which may be either a national Office or an intergovernmental organization, such as the International Patent Institute, whose tasks include the establishing of documentary search reports on prior art with respect to inventions which are the subject of applications.

  • (2) If, pending the establishment of a single International Searching Authority, there are several International Searching Authorities, each receiving Office shall, in accordance with the provisions of the applicable agreement referred to in paragraph (3) (b), specify the International Searching Authority or Authorities competent for the searching of international applications filed with such Office.

  • (3)

    • (a) International Searching Authorities shall be appointed by the Assembly. Any national Office and any intergovernmental organization satisfying the requirements referred to in subparagraph (c) may be appointed as International Searching Authority.

    • (b) Appointment shall be conditional on the consent of the national Office or intergovernmental organization to be appointed and the conclusion of an agreement, subject to approval by the Assembly, between such Office or organization and the International Bureau. The agreement shall specify the rights and obligations of the parties, in particular, the formal undertaking by the said Office or organization to apply and observe all the common rules of international search.

    • (c) The Regulations prescribe the minimum requirements, particularly as to manpower and documentation, which any Office or organization must satisfy before it can be appointed and must continue to satisfy while it remains appointed.

    • (d) Appointment shall be for a fixed period of time and may be extended for further periods.

    • (e) Before the Assembly makes a decision on the appointment of any national Office or intergovernmental organization, or on the extension of its appointment, or before it allows any such appointment to lapse, the Assembly shall hear the interested Office or organization and seek the advice of the Committee for Technical Cooperation referred to in Article 56 once that Committee has been established.

Article 17. Procedure Before the International Searching Authority

  • (1) Procedure before the International Searching Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.

  • (2)

    • (a) If the International Searching Authority considers

      • (i) that the international application relates to a subject matter which the International Searching Authority is not required, under the Regulations, to search, and in the particular case decides not to search, or

      • (ii) that the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out,

      the said Authority shall so declare and shall notify the applicant and the International Bureau that no international search report will be established.

    • (b) If any of the situations referred to in subparagraph (a) is found to exist in connection with certain claims only, the international search report shall so indicate in respect of such claims, whereas, for the other claims, the said report shall be established as provided in Article 18.

  • (3)

    • (a) If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it shall invite the applicant to pay additional fees. The International Searching Authority shall establish the international search report on those parts of the international application which relate to the invention first mentioned in the claims (“main invention”) and, provided the required additional fees have been paid within the prescribed time limit, on those parts of the international application which relate to inventions in respect of which the said fees were paid.

    • (b) The national law of any designated State may provide that, where the national Office of that State finds the invitation, referred to in paragraph(a), of the International Searching Authority justified and where the applicant has not paid all additional fees, those parts of the international application which consequently have not been searched shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.

Article 18. The International Search Report

  • (1) The international search report shall be established within the prescribed time limit and in the prescribed form.

  • (2) The international search report shall, as soon as it has been established, be transmitted by the International Searching Authority to the applicant and the International Bureau.

  • (3) The international search report or the declaration referred to in Article 17 (2) (a) shall be translated as provided in the Regulations. The translations shall be prepared by or under the responsibility of the International Bureau.

Article 19. Amendment of the Claims Before the International Bureau

  • (1) The applicant shall, after having received the international search report, be entitled to one opportunity to amend the claims of the international application by filing amendments with the International Bureau within the prescribed time limit. He may, at the same time, file a brief statement, as provided in the Regulations, explaining the amendments and indicating any impact that such amendments might have on the description and the drawings.

  • (2) The amendments shall not go beyond the disclosure in the international application as filed.

  • (3) If the national law of any designated State permits amendments to go beyond the said disclosure, failure to comply with paragraph (2) shall have no consequence in that State.

Article 20. Communication to Designated Offices

  • (1)

    • (a) The international application, together with the international search report (including any indication referred to in Article 17 (2) (b)) or the declaration referred to in Article 17 (2) (a), shall be communicated to each designated Office, as provided in the Regulations, unless the designated Office waives such requirement in its entirety or in part.

    • (b) The communication shall include the translation (as prescribed) of the said report or declaration.

  • (2) If the claims have been amended by virtue of Article 19 (1), the communication shall either contain the full text of the claims both as filed and as amended or shall contain the full text of the claims as filed and specify the amendments, and shall include the statement, if any, referred to in Article 19 (1).

  • (3) At the request of the designated Office or the applicant, the International Searching Authority shall send to the said Office or the applicant, respectively, copies of the documents cited in the international search report, as provided in the Regulations.

Article 21. International Publication

  • (1) The International Bureau shall publish international applications.

  • (2)

    • (a) Subject to the exceptions provided for in subparagraph (b) and in Article 64 (3), the international publication of the international application shall be effected promptly after the expiration of 18 months from the priority date of that application.

    • (b) The applicant may ask the International Bureau to publish his international application any time before the expiration of the time limit referred to in subparagraph (a). The International Bureau shall proceed accordingly, as provided in the Regulations.

  • (3) The international search report or the declaration referred to in Article 17 (2) (a) shall be published as prescribed in the Regulations.

  • (4) The language and form of the international publication and other details are governed by the Regulations.

  • (5) There shall be no international publication if the international application is withdrawn or is considered withdrawn before the technical preparations for publication have been completed.

  • (6) If the international application contains expressions or drawings which, in the opinion of the International Bureau, are contrary to morality or public order, or if, in its opinion, the international application contains disparaging statements as defined in the Regulations, it may omit such expressions, drawings, and statements, from its publications, indicating the place and number of words or drawings omitted, and furnishing, upon request, individual copies of the passages omitted.

Article 22. Copy, Translation, and Fee, to Designated Offices

  • 1 The applicant shall furnish a copy of the international application (unless the communication provided for in Article 20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each designated Office not later than at the expiration of 30 months from the priority date. Where the national law of the designated State requires the indication of the name of and other prescribed data concerning the inventor but allows that these indications be furnished at a time later than that of the filing of a national application, the applicant shall, unless they were contained in the request, furnish the said indications to the national Office of or acting for the State not later than at the expiration of 30 months from the priority date.

  • 2 Where the International Searching Authority makes a declaration, under Article 17 (2)(a), that no international search report will be established, the time limit for performing the acts referred to in paragraph (1) of this Article shall be the same as that provided for in paragraph (1).

  • 3 Any national law may, for performing the acts referred to in paragraphs (1) or (2), fix time limits which expire later than the time limit provided for in those paragraphs.

Article 23. Delaying of National Procedure

  • (1) No designated Office shall process or examine the international application prior to the expiration of the applicable time limit under Article 22.

  • (2) Notwithstanding the provisions of paragraph (1), any designated Office may, on the express request of the applicant, process or examine the international application at any time.

Article 24. Possible Loss of Effect in Designated States

  • (1) Subject, in case (ii) below, to the provisions of Article 25, the effect of the international application provided for in Article 11 (3) shall cease in any designated State with the same consequences as the withdrawal of any national application in that State:

    • (i) if the applicant withdraws his international application or the designation of that State;

    • (ii) if the international application is considered withdrawn by virtue of Articles 12(3), 14(1) (b), 14(3) (a), or 14 (4), or if the designation of that State is considered withdrawn by virtue of Article 14 (3) (b);

    • (iii) if the applicant fails to perform the acts referred to in Article 22 within the applicable time limit.

  • (2) Notwithstanding the provisions of paragraph (1), any designated Office may maintain the effect provided for in Article 11 (3) even where such effect is not required to be maintained by virtue of Article 25 (2).

Article 25. Review By Designated Offices

  • (1)

    • (a) Where the receiving Office has refused to accord an international filing date or has declared that the international application is considered withdrawn, or where the International Bureau has made a finding under Article 12 (3), the International Bureau shall promptly send, at the request of the applicant, copies of any document in the file to any of the designated Offices named by the applicant.

    • (b) Where the receiving Office has declared that the designation of any given State is considered withdrawn, the International Bureau shall promptly send, at the request of the applicant, copies of any document in the file to the national Office of such State.

    • (c) The request under subparagraphs (a) or (b) shall be presented within the prescribed time limit.

  • (2)

    • (a) Subject to the provisions of subparagraph (b), each designated Office shall, provided that the national fee (if any) has been paid and the appropriate translation (as prescribed) has been furnished within the prescribed time limit, decide whether the refusal, declaration, or finding, referred to in paragraph (1) was justified under the provisions of this Treaty and the Regulations, and, if it finds that the refusal or declaration was the result of an error or omission on the part of the receiving Office or that the finding was the result of an error or omission on the part of the International Bureau, it shall, as far as effects in the State of the designated Office are concerned, treat the international application as if such error or omission had not occurred.

    • (b) Where the record copy has reached the International Bureau after the expiration of the time limit prescribed under Article 12 (3) on account of any error or omission on the part of the applicant, the provisions of subparagraph (a) shall apply only under the circumstances referred to in Article 48 (2).

Article 26. Opportunity to Correct Before Designated Offices

No designated Office shall reject an international application on the grounds of non-compliance with the requirements of this Treaty and the Regulations without first giving the applicant the opportunity to correct the said application to the extent and according to the procedure provided by the national law for the same or comparable situations in respect of national applications.

Article 27. National Requirements

  • (1) No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations.

  • (2) The provisions of paragraph (1) neither affect the application of the provisions of Article 7 (2) nor preclude any national law from requiring, once the processing of the international application has started in the designated Office, the furnishing:

    • (i) when the applicant is a legal entity, of the name of an officer entitled to represent such legal entity,

    • (ii) of documents not part of the international application but which constitute proof of allegations or statements made in that application, including the confirmation of the international application by the signature of the applicant when that application, as filed, was signed by his representative or agent.

  • (3) Where the applicant, for the purposes of any designated State, is not qualified according to the national law of that State to file a national application because he is not the inventor, the international application may be rejected by the designated Office.

  • (4) Where the national law provides, in respect of the form or contents of national applications, for requirements which, from the viewpoint of applicants, are more favorable than the requirements provided for by this Treaty and the Regulations in respect of international applications, the national Office, the courts and any other competent organs of or acting for the designated State may apply the former requirements, instead of the latter requirements, to international applications, except where the applicant insists that the requirements provided for by this Treaty and the Regulations be applied to his international application.

  • (5) Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires. In particular, any provision in this Treaty and the Regulations concerning the definition of prior art is exclusively for the purposes of the international procedure and, consequently, any Contracting State is free to apply, when determining the patentability of an invention claimed in an international application, the criteria of its national law in respect of prior art and other conditions of patentability not constituting requirements as to the form and contents of applications.

  • (6) The national law may require that the applicant furnish evidence in respect of any substantive condition of patentability prescribed by such law.

  • (7) Any receiving Office or, once the processing of the international application has started in the designated Office, that Office may apply the national law as far as it relates to any requirement that the applicant be represented by an agent having the right to represent applicants before the said Office and/or that the applicant have an address in the designated State for the purpose of receiving notifications.

  • (8) Nothing in this Treaty and the Regulations is intended to be construed as limiting the freedom of any Contracting State to apply measures deemed necessary for the preservation of its national security or to limit, for the protection of the general economic interests of that State, the right of its own residents or nationals to file international applications.

Article 28. Amendment of the Claims, the Description, and the Drawings Before Designated Offices

  • (1) The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each designated Office within the prescribed time limit. No designated Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired except with the express consent of the applicant.

  • (2) The amendments shall not go beyond the disclosure in the international application as filed unless the national law of the designated State permits them to go beyond the said disclosure.

  • (3) The amendments shall be in accordance with the national law of the designated State in all respects not provided for in this Treaty and the Regulations.

  • (4) Where the designated Office requires a translation of the international application, the amendments shall be in the language of the translation.

Article 29. Effects of the International Publication

  • (1) As far as the protection of any rights of the applicant in a designated State is concerned, the effects, in that State, of the international publication of an international application shall, subject to the provisions of paragraphs (2) to (4), be the same as those which the national law of the designated State provides for the compulsory national publication of unexamined national applications as such.

  • (2) If the language in which the international publication has been effected is different from the language in which publications under the national law are effected in the designated State, the said national law may provide that the effects provided for in paragraph (1) shall be applicable only from such time as:

    • (i) a translation into the latter language has been published as provided by the national law, or

    • (ii) a translation into the latter language has been made available to the public, by laying open for public inspection as provided by the national law, or

    • (iii) a translation into the latter language has been transmitted by the applicant to the actual or prospective unauthorized user of the invention claimed in the international application, or

    • (iv) both the acts described in (i) and (iii), or both the acts described in (ii) and (iii), have taken place.

  • (3) The national law of any designated State may provide that, where the international publication has been effected, on the request of the applicant, before the expiration of 18 months from the priority date, the effects provided for in paragraph (1) shall be applicable only from the expiration of 18 months from the priority date.

  • (4) The national law of any designated State may provide that the effects provided for in paragraph (1) shall be applicable only from the date on which a copy of the international application as published under Article 21 has been received in the national Office of or acting for such State. The said Office shall publish the date of receipt in its gazette as soon as possible.

Article 30. Confidential Nature of the International Application

  • (1)

    • (a) Subject to the provisions of subparagraph (b), the International Bureau and the International Searching Authorities shall not allow access by any person or authority to the international application before the international publication of that application, unless requested or authorized by the applicant.

    • (b) The provisions of subparagraph (a) shall not apply to any transmittal to the competent International Searching Authority, to transmittals provided for under Article 13, and to communications provided for under Article 20.

  • (2)

    • (a) No national Office shall allow access to the international application by third parties, unless requested or authorized by the applicant, before the earliest of the following dates:

      • (i) date of the international publication of the international application,

      • (ii) date of the receipt of the communication of the international application under Article 20,

      • (iii) date of the receipt of a copy of the international application under Article 22.

    • (b) The provisions of subparagraph (a) shall not prevent any national Office from informing third parties that it has been designated, or from publishing that fact. Such information or publication may, however, contain only the following data: identification of the receiving Office, name of the applicant, international filing date, international application number, and title of the invention.

    • (c) The provisions of subparagraph (a) shall not prevent any designated Office from allowing access to the international application for the purposes of the judicial authorities.

  • (3) The provisions of paragraph (2) (a) shall apply to any receiving Office except as far as transmittals provided for under Article 12 (1) are concerned.

  • (4) For the purposes of this Article, the term “access” covers any means by which third parties may acquire cognizance, including individual communication and general publication, provided, however, that no national Office shall generally publish an international application or its translation before the international publication or, if international publication has not taken place by the expiration of 20 months from the priority date, before the expiration of 20 months from the said priority date.

CHAPTER II. International Preliminary Examination

Article 31. Demand for International Preliminary Examination

  • (1) On the demand of the applicant, his international application shall be the subject of an international preliminary examination as provided in the following provisions and the Regulations.

  • (2)

    • (a) Any applicant who is a resident or national, as defined in the Regulations, of a Contracting State bound by Chapter II, and whose international application has been filed with the receiving Office of or acting for such State, may make a demand for international preliminary examination.

    • (b) The Assembly may decide to allow persons entitled to file international applications to make a demand for international preliminary examination even if they are residents or nationals of a State not party to this Treaty or not bound by Chapter II.

  • (3) The demand for international preliminary examination shall be made separately from the international application. The demand shall contain the prescribed particulars and shall be in the prescribed language and form.

  • (4)

    • (a) The demand shall indicate the Contracting State or States in which the applicant intends to use the results of the international preliminary examination (“elected States”). Additional Contracting States may be elected later. Election may relate only to Contracting States already designated under Article 4.

    • (b) Applicants referred to in paragraph (2) (a) may elect any Contracting State bound by Chapter II. Applicants referred to in paragraph (2) (b) may elect only such Contracting States bound by Chapter II as have declared that they are prepared to be elected by such applicants.

  • (5) The demand shall be subject to the payment of the prescribed fees within the prescribed time limit.

  • (6)

    • (a) The demand shall be submitted to the competent International Preliminary Examining Authority referred to in Article 32.

    • (b) Any later election shall be submitted to the International Bureau.

  • (7) Each elected Office shall be notified of its election.

Article 32. The International Preliminary Examining Authority

  • (1) International preliminary examination shall be carried out by the International Preliminary Examining Authority.

  • (2) In the case of demands referred to in Article 31 (2) (a), the receiving Office, and, in the case of demands referred to in Article 31 (2) (b), the Assembly, shall, in accordance with the applicable agreement between the interested International Preliminary Examining Authority or Authorities and the International Bureau, specify the International Preliminary Examining Authority or Authorities competent for the preliminary examination.

  • (3) The provisions of Article 16(3) shall apply, mutatis mutandis, in respect of International Preliminary Examining Authorities.

Article 33. The International Preliminary Examination

  • (1) The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.

  • (2) For the purposes of the international preliminary examination, a claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations.

  • (3) For the purposes of the international preliminary examination, a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.

  • (4) For the purposes of the international preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. “Industry” shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.

  • (5) The criteria described above merely serve the purposes of international preliminary examination. Any Contracting State may apply additional or different criteria for the purpose of deciding whether, in that State, the claimed invention is patentable or not.

  • (6) The international preliminary examination shall take into consideration all the documents cited in the international search report. It may take into consideration any additional documents considered to be relevant in the particular case.

Article 34. Procedure Before the International Preliminary Examining Authority

  • (1) Procedure before the International Preliminary Examining Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.

  • (2)

    • (a) The applicant shall have a right to communicate orally and in writing with the International Preliminary Examining Authority.

    • (b) The applicant shall have a right to amend the claims, the description, and the drawings, in the prescribed manner and within the prescribed time limit, before the international preliminary examination report is established. The amendment shall not go beyond the disclosure in the international application as filed.

    • (c) The applicant shall receive at least one written opinion from the International Preliminary Examining Authority unless such Authority considers that all of the following conditions are fulfilled:

      • (i) the invention satisfies the criteria set forth in Article 33(1),

      • (ii) the international application complies with the requirements of this Treaty and the Regulations in so far as checked by that Authority,

      • (iii) no observations are intended to be made under Article 35(2), last sentence.

    • (d) The applicant may respond to the written opinion.

  • (3)

    • (a) If the International Preliminary Examining Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it may invite the applicant, at his option, to restrict the claims so as to comply with the requirement or to pay additional fees.

    • (b) The national law of any elected State may provide that, where the applicant chooses to restrict the claims under subparagraph (a), those parts of the international application which, as a consequence of the restriction, are not to be the subject of international preliminary examination shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.

    • (c) If the applicant does not comply with the invitation referred to in subparagraph (a) within the prescribed time limit, the International Preliminary Examining Authority shall establish an international preliminary examination report on those parts of the international application which relate to what appears to be the main invention and shall indicate the relevant facts in the said report. The national law of any elected State may provide that, where its national Office finds the invitation of the International Preliminary Examining Authority justified, those parts of the international application which do not relate to the main invention shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to that Office.

  • (4)

    • (a) If the International Preliminary Examining Authority considers

      • (i) that the international application relates to a subject matter on which the International Preliminary Examining Authority is not required, under the Regulations, to carry out an international preliminary examination, and in the particular case decides not to carry out such examination, or

      • (ii) that the description, the claims, or the drawings, are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness), or industrial applicability, of the claimed invention,

      the said Authority shall not go into the questions referred to in Article 33(1) and shall inform the applicant of this opinion and the reasons therefor.

    • (b) If any of the situations referred to in subparagraph (a) is found to exist in, or in connection with, certain claims only, the provisions of that subparagraph shall apply only to the said claims.

Article 35. The International Preliminary Examination Report

  • (1) The international preliminary examination report shall be established within the prescribed time limit and in the prescribed form.

  • (2) The international preliminary examination report shall not contain any statement on the question whether the claimed invention is or seems to be patentable or unpatentable according to any national law. It shall state, subject to the provisions of paragraph (3), in relation to each claim, whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined for the purposes of the international preliminary examination in Article 33(1) to (4). The statement shall be accompanied by the citation of the documents believed to support the stated conclusion with such explanations as the circumstances of the case may require. The statement shall also be accompanied by such other observations as the Regulations provide for.

  • (3)

    • (a) If, at the time of establishing the international preliminary examination report, the International Preliminary Examining Authority considers that any of the situations referred to in Article 34(4) (a) exists, that report shall state this opinion and the reasons therefor. It shall not contain any statement as provided in paragraph (2).

    • (b) If a situation under Article 34(4) (b) is found to exist, the international preliminary examination report shall, in relation to the claims in question, contain the statement as provided in subparagraph (a), whereas, in relation to the other claims, it shall contain the statement as provided in paragraph (2).

Article 36. Transmittal, Translation, and Communication, of the International Preliminary Examination Report

  • (1) The international preliminary examination report, together with the prescribed annexes, shall be transmitted to the applicant and to the International Bureau.

  • (2)

    • (a) The international preliminary examination report and its annexes shall be translated into the prescribed languages.

    • (b) Any translation of the said report shall be prepared by or under the responsibility of the International Bureau, whereas any translation of the said annexes shall be prepared by the applicant.

  • (3)

    • (a) The international preliminary examination report, together with its translation (as prescribed) and its annexes (in the original language), shall be communicated by the International Bureau to each elected Office.

    • (b) The prescribed translation of the annexes shall be transmitted within the prescribed time limit by the applicant to the elected Offices.

  • (4) The provisions of Article 20(3) shall apply, mutatis mutandis, to copies of any document which is cited in the international preliminary examination report and which was not cited in the international search report.

Article 37. Withdrawal of Demand or Election

  • (1) The applicant may withdraw any or all elections.

  • (2) If the election of all elected States is withdrawn, the demand shall be considered withdrawn.

  • (3)

    • (a) Any withdrawal shall be notified to the International Bureau.

    • (b) The elected Offices concerned and the International Preliminary Examining Authority concerned shall be notified accordingly by the International Bureau.

  • (4)

    • (a) Subject to the provisions of subparagraph (b), withdrawal of the demand or of the election of a Contracting State shall, unless the national law of that State provides otherwise, be considered to be withdrawal of the international application as far as that State is concerned.

    • (b) Withdrawal of the demand or of the election shall not be considered to be withdrawal of the international application if such withdrawal is effected prior to the expiration of the applicable time limit under Article 22; however, any Contracting State may provide in its national law that the aforesaid shall apply only if its national Office has received, within the said time limit, a copy of the international application together with a translation (as prescribed), and the national fee.

Article 38. Confidential Nature of the International Preliminary Examination

  • (1) Neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or authorized by the applicant, allow access within the meaning, and with the proviso, of Article 30(4) to the file of the international preliminary examination by any person or authority at any time, except by the elected Offices once the international preliminary examination report has been established.

  • (2) Subject to the provisions of paragraph (1) and Articles 36(1) and (3) and 37(3) (b), neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or authorized by the applicant, give information on the issuance or non-issuance of an international preliminary examination report and on the withdrawal or non-withdrawal of the demand or of any election.

Article 39. Copy, Translation, and Fee, to Elected Offices

  • (1)

    • (a) If the election of any Contracting State has been effected prior to the expiration of the 19th month from the priority date, the provisions of Article 22 shall not apply to such State and the applicant shall furnish a copy of the international application (unless the communication under Article 20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each elected Office not later than at the expiration of 30 months from the priority date.

    • (b) Any national law may, for performing the acts referred to in paragraph(a), fix time limits which expire later than the time limit provided for in that subparagraph.

  • (2) The effect provided for in Article 11(3) shall cease in the elected State with the same consequences as the withdrawal of any national application in that State if the applicant fails to perform the acts referred to in paragraph (1) (a) within the time limit applicable under paragraph (1) (a) or (b).

  • (3) Any elected Office may maintain the effect provided for in Article 11(3) even where the applicant does not comply with the requirements provided for in paragraph (1) (a) or (b).

Article 40. Delaying of National Examination and Other Processing

  • (1) If the election of any Contracting State has been effected prior to the expiration of the 19th month from the priority date, the provisions of Article 23 shall not apply to such State and the national Office of or acting for that State shall not proceed, subject to the provisions of paragraph (2), to the examination and other processing of the international application prior to the expiration of the applicable time limit under Article 39.

  • (2) Notwithstanding the provisions of paragraph (1), any elected Office may, on the express request of the applicant, proceed to the examination and other processing of the international application at any time.

Article 41. Amendment of the Claims, the Description, and the Drawings, Before Elected Offices

  • (1) The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each elected Office within the prescribed time limit. No elected Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired, except with the express consent of the applicant.

  • (2) The amendments shall not go beyond the disclosure in the international application as filed, unless the national law of the elected State permits them to go beyond the said disclosure.

  • (3) The amendments shall be in accordance with the national law of the elected State in all respects not provided for in this Treaty and the Regulations.

  • (4) Where an elected Office requires a translation of the international application, the amendments shall be in the language of the translation.

Article 42. Results of National Examination in Elected Offices

No elected Office receiving the international preliminary examination report may require that the applicant furnish copies, or information on the contents, of any papers connected with the examination relating to the same international application in any other elected Office.

CHAPTER III. Common Provisions

Article 43. Seeking Certain Kinds of Protection

In respect of any designated or elected State whose law provides for the grant of inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, or utility certificates of addition, the applicant may indicate, as prescribed in the Regulations, that his international application is for the grant, as far as that State is concerned, of an inventor's certificate, a utility certificate, or a utility model, rather than a patent, or that it is for the grant of a patent or certificate of addition, an inventor's certificate of addition, or a utility certificate of addition, and the ensuing effect shall be governed by the applicant's choice. For the purposes of this Article and any Rule thereunder, Article 2 (ii) shall not apply.

Article 44. Seeking Two Kinds of Protection

In respect of any designated or elected State whose law permits an application, while being for the grant of a patent or one of the other kinds of protection referred to in Article 43, to be also for the grant of another of the said kinds of protection, the applicant may indicate, as prescribed in the Regulations, the two kinds of protection he is seeking, and the ensuing effect shall be governed by the applicant's indications. For the purposes of this Article, Article 2 (ii) shall not apply.

Article 45. Regional Patent Treaties

  • (1) Any treaty providing for the grant of regional patents (“regional patent treaty”), and giving to all persons who, according to Article 9, are entitled to file international applications the right to file applications for such patents, may provide that international applications designating or electing a State party to both the regional patent treaty and the present Treaty may be filed as applications for such patents.

  • (2) The national law of the said designated or elected State may provide that any designation or election of such State in the international application shall have the effect of an indication of the wish to obtain a regional patent under the regional patent treaty.

Article 46. Incorrect Translation of the International Application

If, because of an incorrect translation of the international application, the scope of any patent granted on that application exceeds the scope of the international application in its original language, the competent authorities of the Contracting State concerned may accordingly and retroactively limit the scope of the patent, and declare it null and void to the extent that its scope has exceeded the scope of the international application in its original language.

Article 47. Time Limits

  • (1) The details for computing time limits referred to in this Treaty are governed by the Regulations.

  • (2)

    • (a) All time limits fixed in Chapters I and II of this Treaty may, outside any revision under Article 60, be modified by a decision of the Contracting States.

    • (b) Such decisions shall be made in the Assembly or through voting, by correspondence and must be unanimous.

    • (c) The details of the procedure are governed by the Regulations.

Article 48. Delay in Meeting Certain Time Limits

  • (1) Where any time limit fixed in this Treaty or the Regulations is not met because of interruption in the mail service or unavoidable loss or delay in the mail, the time limit shall be deemed to be met in the cases and subject to the proof and other conditions prescribed in the Regulations.

  • (2)

    • (a) Any Contracting State shall, as far as that State is concerned, excuse, for reasons admitted under its national law, any delay in meeting, any time limit.

    • (b) Any Contracting State may, as far as that State is concerned, excuse, for reasons other than those referred to in subparagraph (a), any delay in meeting any time limit.

Article 49. Right to Practice Before International Authorities

Any attorney, patent agent, or other person, having the right to practice before the national Office with which the international application was filed, shall be entitled to practice before the International Bureau and the competent International Searching Authority and competent International Preliminary Examining Authority in respect of that application.

CHAPTER IV . Technical Services

Article 50. Patent Information Services

  • (1) The International Bureau may furnish services by providing technical and any other pertinent information available to it on the basis of published documents, primarily patents and published applications (referred to in this Article as “the information services”).

  • (2) The International Bureau may provide these information services either directly or through one or more International Searching Authorities or other national or international specialized institutions, with which the International Bureau may reach agreement.

  • (3) The information services shall be operated in a way particularly facilitating the acquisition by Contracting States which are developing countries of technical knowledge and technology, including available published know-how.

  • (4) The information services shall be available to Governments of Contracting States and their nationals and residents. The Assembly may decide to make these services available also to others.

  • (5)

    • (a) Any service to Governments of Contracting States shall be furnished at cost, provided that, when the Government is that of a Contracting State which is a developing country, the service shall be furnished below cost if the difference can be covered from profit made on services furnished to others than Governments of Contracting States or from the sources referred to in Article 51(4).

    • (b) The cost referred to in subparagraph (a) is to be understood as cost over and above costs normally incident to the performance of the services of a national Office or the obligations of an International Searching Authority.

  • (6) The details concerning the implementation of the provisions of this Article shall be governed by decisions of the Assembly and, within the limits to be fixed by the Assembly, such working groups as the Assembly may set up for that purpose.

  • (7) The Assembly shall, when it considers it necessary, recommend methods of providing financing supplementary to those referred to in paragraph (5).

Article 51. Technical Assistance

  • (1) The Assembly shall establish a Committee for Technical Assistance (referred to in this Article as “the Committee”).

  • (2)

    • (a) The members of the Committee shall be elected among the Contracting States, with due regard to the representation of developing countries.

    • (b) The Director General shall, on his own initiative or at the request of the Committee, invite representatives of intergovernmental organizations concerned with technical assistance to developing countries to participate in the work of the Committee.

  • (3)

    • (a) The task of the Committee shall be to organize and supervise technical assistance for Contracting States which are developing countries in developing their patent systems individually or on a regional basis.

    • (b) The technical assistance shall comprise, among other things, the training of specialists, the loaning of experts, and the supply of equipment both for demonstration and for operational purposes.

  • (4) The International Bureau shall seek to enter into agreements, on the one hand, with international financing organizations and intergovernmental organizations, particularly the United Nations, the agencies of the United Nations, and the Specialized Agencies connected with the United Nations concerned with technical assistance, and, on the other hand, with the Governments of the States receiving the technical assistance, for the financing of projects pursuant to this Article.

  • (5) The details concerning the implementation of the provisions of this Article shall be governed by decisions of the Assembly and, within the limits to be fixed by the Assembly, such working groups as the Assembly may set up for that purpose.

Article 52. Relations with Other Provisions of the Treaty

Nothing in this Chapter shall affect the financial provisions contained in any other Chapter of this Treaty. Such provisions are not applicable to the present Chapter or to its implementation.

CHAPTER V. Administrative Provisions

Article 53. Assembly

  • (1)

    • (a) The Assembly shall, subject to Article 57(8), consist of the Contracting States.

    • (b) The Government of each Contracting State shall be represented by one delegate, who may be assisted by alternate delegates, advisors, and experts.

  • (2)

    • (a) The Assembly shall:

      • (i) deal with all matters concerning the maintenance and development of the Union and the implementation of this Treaty;

      • (ii) perform such tasks as are specifically assigned to it under other provisions of this Treaty;

      • (iii) give directions to the International Bureau concerning the preparation for revision conferences;

      • (iv) review and approve the reports and activities of the Director General concerning the Union, and give him all necessary instructions concerning matters within the competence of the Union;

      • (v) review and approve the reports and activities of the Executive Committee established under paragraph (9), and give instructions to such Committee;

      • (vi) determine the program and adopt the triennial budget of the Union, and approve its final accounts;

      • (vii) adopt the financial regulations of the Union;

      • (viii) establish such committees and working groups as it deems appropriate to achieve the objectives of the Union;

      • (ix) determine which States other than Contracting States and, subject to the provisions of paragraph (8), which intergovernmental and international non-governmental organizations shall be admitted to its meetings as observers;

      • (x) take any other appropriate action designed to further the objectives of the Union and perform such other functions as are appropriate under this Treaty.

    • (b) With respect to matters which are of interest also to other Unions administered by the Organization, the Assembly shall make its decisions after having heard the advice of the Co-ordination Committee of the Organization.

  • (3) A delegate may represent, and vote in the name of, one State only.

  • (4) Each Contracting State shall have one vote.

  • (5)

    • (a) One-half of the Contracting States shall constitute a quorum.

    • (b) In the absence of the quorum, the Assembly may make decisions but, with the exception of decisions concerning its own procedure, all such decisions shall take effect only if the quorum and the required majority are attained through voting by correspondence as provided in the Regulations.

  • (6)

    • (a) Subject to the provisions of Articles 47(2) (b), 58(2) (b), 58(3) and 61(2) (b), the decisions of the Assembly shall require two-thirds of the votes cast.

    • (b) Abstentions shall not be considered as votes.

  • (7) In connection with matters of exclusive interest to States bound by Chapter II, any reference to Contracting States in paragraphs (4), (5), and (6), shall be considered as applying only to States bound by Chapter II.

  • (8) Any intergovernmental organization appointed as International Searching or Preliminary Examining Authority shall be admitted as observer to the Assembly.

  • (9) When the number of Contracting States exceeds forty, the Assembly shall establish an Executive Committee. Any reference to the Executive Committee in this Treaty and the Regulations shall be construed as references to such Committee once it has been established.

  • (10) Until the Executive Committee has been established, the Assembly shall approve, within the limits of the program and triennial budget, the annual programs and budgets prepared by the Director General.

  • (11)

    • (a) The Assembly shall meet in every second calendar year in ordinary session upon convocation by the Director General and, in the absence of exceptional circumstances, during the same period and at the same place as the General Assembly of the Organization.

    • (b) The Assembly shall meet in extraordinary session upon convocation by the Director General, at the request of the Executive Committee, or at the request of one-fourth of the Contracting States.

  • (12) The Assembly shall adopt its own rules of procedure.

Article 54. Executive Committee

  • (1) When the Assembly has established an Executive Committee, that Committee shall be subject to the provisions set forth hereinafter.

  • (2)

    • (a) The Executive Committee shall, subject to Article 57(8), consist of States elected by the Assembly from among States members of the Assembly.

    • (b) The Government of each State member of the Executive Committee shall be represented by one delegate, who may be assisted by alternate delegates, advisors, and experts.

  • (3) The number of States members of the Executive Committee shall correspond to one-fourth of the number of States members of the Assembly. In establishing the number of seats to be filled, remainders after division by four shall be disregarded.

  • (4) In electing the members of the Executive Committee, the Assembly shall have due regard to an equitable geographical distribution.

  • (5)

    • (a) Each member of the Executive Committee shall serve from the close of the session of the Assembly which elected it to the close of the next ordinary session of the Assembly.

    • (b) Members of the Executive Committee may be re-elected but only up to a maximum of two-thirds of such members.

    • (c) The Assembly shall establish the details of the rules governing the election and possible re-election of the members of the Executive Committee.

  • (6)

    • (a) The Executive Committee shall:

      • (i) prepare the draft agenda of the Assembly;

      • (ii) submit proposals to the Assembly in respect of the draft program and biennial budget of the Union prepared by the Director General;

      • (iii) [Red: vervallen;]

      • (iv) submit, with appropriate comments, to the Assembly the periodical reports of the Director General and the yearly audit reports on the accounts;

      • (v) take all necessary measures to ensure the execution of the program of the Union by the Director General, in accordance with the decisions of the Assembly and having regard to circumstances arising between two ordinary sessions of the Assembly;

      • (vi) perform such other functions as are allocated to it under this Treaty.

    • (b) With respect to matters which are of interest also to other Unions administered by the Organization, the Executive Committee shall make its decisions after having heard the advice of the Coordination Committee of the Organization.

  • (7)

    • (a) The Executive Committee shall meet once a year in ordinary session upon convocation by the Director General, preferably during the same period and at the same place as the Coordination Committee of the Organization.

    • (b) The Executive Committee shall meet in extraordinary session upon convocation by the Director General, either on his own initiative or at the request of its Chairman or one-fourth of its members.

  • (8)

    • (a) Each State member of the Executive Committee shall have one vote.

    • (b) One-half of the members of the Executive Committee shall constitute a quorum.

    • (c) Decisions shall be made by a simple majority of the votes cast.

    • (d) Abstentions shall not be considered as votes.

    • (e) A delegate may represent, and vote in the name of, one State only.

  • (9) Contracting States not members of the Executive Committee shall be admitted to its meetings as observers, as well as any intergovernmental organization appointed as International Searching or Preliminary Examining Authority.

  • (10) The Executive Committee shall adopt its own rules of procedure.

Article 55. International Bureau

  • (1) Administrative tasks concerning the Union shall be performed by the International Bureau.

  • (2) The International Bureau shall provide the secretariat of the various organs of the Union.

  • (3) The Director General shall be the chief executive of the Union and shall represent the Union.

  • (4) The International Bureau shall publish a Gazette and other publications provided for by the Regulations or required by the Assembly.

  • (5) The Regulations shall specify the services that national Offices shall perform in order to assist the International Bureau and the International Searching and Preliminary Examining Authorities in carrying out their tasks under this Treaty.

  • (6) The Director General and any staff member designated by him shall participate, without the right to vote, in all meetings of the Assembly, the Executive Committee and any other committee or working group established under this Treaty or the Regulations. The Director General, or a staff member designated by him, shall be ex officio secretary of these bodies.

  • (7)

    • (a) The International Bureau shall, in accordance with the directions of the Assembly and in cooperation with the Executive Committee, make the preparations for the revision conferences.

    • (b) The International Bureau may consult with intergovernmental and international non-governmental organizations concerning preparations for revision conferences.

    • (c) The Director General and persons designated by him shall take part, without the right to vote, in the discussions at revision conferences.

  • (8) The International Bureau shall carry out any other tasks assigned to it.

Article 56. Committee for Technical Cooperation

  • (1) The Assembly shall establish a Committee for Technical Cooperation (referred to in this Article as “the Committee”).

  • (2)

    • (a) The Assembly shall determine the composition of the Committee and appoint its members, with due regard to an equitable representation of developing countries.

    • (b) The International Searching and Preliminary Examining Authorities shall be ex officio members of the Committee. In the case where such an Authority is the national Office of a Contracting State, that State shall not be additionally represented on the Committee.

    • (c) If the number of Contracting States so allows, the total number of members of the Committee shall be more than double the number of ex officio members.

    • (d) The Director General shall, on his own initiative or at the request of the Committee, invite representatives of interested organizations to participate in discussions of interest to them.

  • (3) The aim of the Committee shall be to contribute, by advice and recommendations:

    • (i) to the constant improvement of the services provided for under this Treaty,

    • (ii) to the securing, so long as there are several International Searching Authorities and several International Preliminary Examining Authorities, of the maximum degree of uniformity in their documentation and working methods and the maximum degree of uniformly high quality in their reports, and

    • (iii) on the initiative of the Assembly or the Executive Committee, to the solution of the technical problems specifically involved in the establishment of a single International Searching Authority.

  • (4) Any Contracting State and any interested international organization may approach the Committee in writing on questions which fall within the competence of the Committee.

  • (5) The Committee may address its advice and recommendations to the Director General or, through him, to the Assembly, the Executive Committee, all or some of the International Searching and Preliminary Examining Authorities, and all or some of the receiving Offices.

  • (6)

    • (a) In any case, the Director General shall transmit to the Executive Committee the texts of all the advice and recommendations of the Committee. He may comment on such texts.

    • (b) The Executive Committee may express its views on any advice, recommendation, or other activity of the Committee, and may invite the Committee to study and report on questions falling within its competence. The Executive Committee may submit to the Assembly, with appropriate comments, the advice, recommendations and report of the Committee.

  • (7) Until the Executive Committee has been established, references in paragraph (6) to the Executive Committee shall be construed as references, to the Assembly.

  • (8) The details of the procedure of the Committee shall be governed by the decisions of the Assembly.

Article 57. Finances

  • (1)

    • (a) The Union shall have a budget.

    • (b) The budget of the Union shall include the income and expenses proper to the Union and its contribution to the budget of expenses common to the Unions administered by the Organization.

    • (c) Expenses not attributable exclusively to the Union but also to one or more other Unions administered by the Organization shall be considered as expenses common to the Unions. The share of the Union in such common expenses shall be in proportion to the interest the Union has in them.

  • (2) The budget of the Union shall be established with due regard to the requirements of coordination with the budgets of the other Unions administered by the Organization.

  • (3) Subject to the provisions of paragraph (5), the budget of the Union shall be financed from the following sources:

    • (i) fees and charges due for services rendered by the International Bureau in relation to the Union;

    • (ii) sale of, or royalties on, the publications of the International Bureau concerning the Union;

    • (iii) gifts, bequests, and subventions;

    • (iv) rents, interests, and other miscellaneous income.

  • (4) The amounts of fees and charges due to the International Bureau and the prices of its publications shall be so fixed that they should, under normal circumstances, be sufficient to cover all the expenses of the International Bureau connected with the administration of this Treaty.

  • (5)

    • (a) Should any financial year close with a deficit, the Contracting States shall, subject to the provisions of subparagraphs (b) and (c), pay contributions to cover such deficit.

    • (b) The amount of the contribution of each Contracting State shall be decided by the Assembly with due regard to the number of international applications which has emanated from each of them in the relevant year.

    • (c) If other means of provisionally covering any deficit or any part thereof are secured, the Assembly may decide that such deficit be carried forward and that the Contracting States should not be asked to pay contributions.

    • (d) If the financial situation of the Union so permits, the Assembly may decide that any contributions paid under subparagraph (a) be reimbursed to the Contracting States which have paid them.

    • (e) A Contracting State which has not paid, within two years of the due date as established by the Assembly, its contribution under subparagraph (b) may not exercise its right to vote in any of the organs of the Union. However, any organ of the Union may allow such a State to continue to exercise its right to vote in that organ so long as it is satisfied that the delay in payment is due to exceptional and unavoidable circumstances.

  • (6) If the budget is not adopted before the beginning of a new financial period, it shall be at the same level as the budget of the previous year, as provided in the financial regulations.

  • (7)

    • (a) The Union shall have a working capital fund which shall be constituted by a single payment made by each Contracting State. If the fund becomes insufficient, the Assembly shall arrange to increase it. If part of the fund is no longer needed, it shall be reimbursed.

    • (b) The amount of the initial payment of each Contracting State to the said fund or of its participation in the increase thereof shall be decided by the Assembly on the basis of principles similar to those provided for under paragraph (5) (b).

    • (c) The terms of payment shall be fixed by the Assembly on the proposal of the Director General and after it has heard the advice of the Coordination Committee of the Organization.

    • (d) Any reimbursement shall be proportionate to the amounts paid by each Contracting State, taking into account the dates at which they were paid.

  • (8)

    • (a) In the headquarters agreement concluded with the State on the territory of which the Organization has its headquarters, it shall be provided that, whenever the working capital fund is insufficient, such State shall grant advances. The amount of these advances and the conditions on which they are granted shall be the subject of separate agreements, in each case, between such State and the Organization. As long as it remains under the obligation to grant advances, such State shall have an ex officio seat in the Assembly and on the Executive Committee.

    • (b) The State referred to in subparagraph (a) and the Organization shall each have the right to denounce the obligation to grant advances, by written notification. Denunciation shall take effect three years after the end of the year in which it has been notified.

  • (9) The auditing of the accounts shall be effected by one or more of the Contracting States or by external auditors, as provided in the financial regulations. They shall be designated, with their agreement, by the Assembly.

Article 58. Regulations

  • (1) The Regulations annexed to this Treaty provide Rules:

    • (i) concerning matters in respect of which this Treaty expressly refers to the Regulations or expressly provides that they are or shall be prescribed,

    • (ii) concerning any administrative requirements, matters, or procedures,

    • (iii) concerning any details useful in the implementation of the provisions of this Treaty.

  • (2)

    • (a) The Assembly may amend the Regulations.

    • (b) Subject to the provisions of paragraph (3), amendments shall require three-fourths of the votes cast.

  • (3)

    • (a) The Regulations specify the Rules which may be amended

      • (i) only by unanimous consent, or

      • (ii) only if none of the Contracting States whose national Office acts as an International Searching or Preliminary Examining Authority dissents and, where such Authority is an intergovernmental organization, if the Contracting State member of that organization authorized for that purpose by the other member States within the competent body of such organization does not dissent.

    • (b) Exclusion, for the future, of any such Rules from the applicable requirement shall require the fulfillment of the conditions referred to in subparagraph (a) (i) or (a) (ii), respectively.

    • (c) Inclusion, for the future, of any Rule in one or the other of the requirements referred to in subparagraph (a) shall require unanimous consent.

  • (4) The Regulations provide for the establishment, under the control of the Assembly, of Administrative Instructions by the Director General.

  • (5) In the case of conflict between the provisions of the Treaty and those of the Regulations, the provisions of the Treaty shall prevail.

CHAPTER VI. Disputes

Article 59. Disputes

Subject to Article 64(5), any dispute between two or more Contracting States concerning the interpretation or application of this Treaty or the Regulations, not settled by negotiation, may, by any one of the States concerned, be brought before the International Court of Justice by application in conformity with the Statute of the Court, unless the States, concerned agree on some other method of settlement. The Contracting State bringing the dispute before the Court shall inform the International Bureau; the International Bureau shall bring the matter to the attention of the other Contracting States.

CHAPTER VII. Revision and Amendment

Article 60. Revision of the Treaty

  • (1) This Treaty may be revised from time to time by a special conference of the Contracting States.

  • (2) The convocation of any revision conference shall be decided by the Assembly.

  • (3) Any intergovernmental organization appointed as International Searching or Preliminary Examining Authority shall be admitted as observer to any revision conference.

  • (4) Articles 53(5), (9) and (11), 54, 55(4) to (8), 56, and 57, may be amended either by a revision conference or according to the provisions of Article 61.

Article 61. Amendment of Certain Provisions of the Treaty

  • (1)

    • (a) Proposals for the amendment of Articles 53(5), (9) and (11), 54, 55(4) to (8), 56, and 57, may be initiated by any State member of the Assembly, by the Executive Committee, or by the Director General.

    • (b) Such proposals shall be communicated by the Director General to the Contracting States at least six months in advance of their consideration by the Assembly.

  • (2)

    • (a) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly.

    • (b) Adoption shall require three-fourths of the votes cast.

  • (3)

    • (a) Any amendment to the Articles referred to in paragraph (1) shall enter into force one month after written notifications of acceptance, effected in accordance with their respective constitutional processes, have been received by the Director General from three-fourths of the States members of the Assembly at the time it adopted the amendment.

    • (b) Any amendment to the said Articles thus accepted shall bind all the States which are members of the Assembly at the time the amendment enters into force, provided that any amendment increasing the financial obligations of the Contracting States shall bind only those States which have notified their acceptance of such amendment.

    • (c) Any amendment accepted in accordance with the provisions of subparagraph (a) shall bind all States which become members of the Assembly after the date on which the amendment entered into force in accordance with the provisions of subparagraph (a).

CHAPTER VIII. Final Provisions

Article 62. Becoming Party to the Treaty

  • (1) Any State member of the International Union for the Protection of Industrial Property may become party to this Treaty by:

    • (i) signature followed by the deposit of an instrument of ratification, or

    • (ii) deposit of an instrument of accession.

  • (2) Instruments of ratification or accession shall be deposited with the Director General.

  • (4) Paragraph (3) shall in no way be understood as implying the recognition or tacit acceptance by a Contracting State of the factual situation concerning a territory to which this Treaty is made applicable by another Contracting State by virtue of the said paragraph.

Article 63. Entry into Force of the Treaty

  • (1)

    • (a) Subject to the provisions of paragraph (3), this Treaty shall enter into force three months after eight States have deposited their instruments of ratification or accession, provided that at least four of those States each fulfill any of the following conditions:

      • (i) the number of applications filed in the State has exceeded 40,000 according to the most recent annual statistics published by the International Bureau,

      • (ii) the nationals or residents of the State have filed at least 1,000 applications in one foreign country according to the most recent annual statistics published by the International Bureau,

      • (iii) the national Office of the State has received at least 10,000 applications from nationals or residents of foreign countries according to the most recent annual statistics published by the International Bureau.

    • (b) For the purposes of this paragraph, the term “applications” does not include applications for utility models.

  • (2) Subject to the provisions of paragraph (3), any State which does not become party to this Treaty upon entry into force under paragraph (1) shall become bound by this Treaty three months after the date on which such State has deposited its instrument of ratification or accession.

  • (3) The provisions of Chapter II and the corresponding provisions of the Regulations annexed to this Treaty shall become applicable, however, only on the date on which three States each of which fulfill at least one of the three requirements specified in paragraph (1) have become party to this Treaty without declaring, as provided in Article 64(1), that they do not intend to be bound by the provisions of Chapter II. That date shall not, however, be prior to that of the initial entry into force under paragraph (1).

Article 64. Reservations

  • (1)

    • (a) Any State may declare that it shall not be bound by the provisions of Chapter II.

    • (b) States making a declaration under subparagraph (a) shall not be bound by the provisions of Chapter II and the corresponding provisions of the Regulations.

  • (2)

    • (a) Any State not having made a declaration under paragraph (1) (a) may declare that:

      • (i) it shall not be bound by the provisions of Article 39(1) with respect to the furnishing of a copy of the international application and a translation thereof (as prescribed),

      • (ii) the obligation to delay national processing, as provided for under Article 40, shall not prevent publication, by or through its national Office, of the international application or a translation thereof, it being understood, however, that it is not exempted from the limitations provided for in Articles 30 and 38.

    • (b) States making such a declaration shall be bound accordingly.

  • (3)

    • (a) Any State may declare that, as far as it is concerned, international publication of international applications is not required.

    • (b) Where, at the expiration of 18 months from the priority date, the international application contains the designation only of such States as have made declarations under Subparagraph (a), the international application shall not be published by virtue of Article 21(2).

    • (c) Where the provisions of subparagraph (6) apply, the international application shall nevertheless be published by the International Bureau:

      • (i) at the request of the applicant, as provided in the Regulations,

      • (ii) when a national application or a patent based on the international application is published by or on behalf of the national Office of any designated State having made a declaration under subparagraph(a), promptly after such publication but not before the expiration of 18 months from the priority date.

  • (4)

    • (a) Any State whose national law provides for prior art effect of its patents as from a date before publication, but does not equate for prior art purposes the priority date claimed under the Paris Convention for the Protection of Industrial Property to the actual filing date in that State, may declare that the filing outside that State of an international application designating that State is not equated to an actual filing in that State for prior art purposes.

    • (b) Any State making a declaration under subparagraph (a) shall to that extent not be bound by the provisions of Article 11(3).

    • (c) Any State making a declaration under subparagraph (a) shall, at the same time, state in writing the date from which, and the conditions under which, the prior art effect of any international application designating that State becomes effective in that State. This statement may be modified at any time by notification addressed to the Director General.

  • (5) Each State may declare that it does not consider itself bound by Article 59. With regard to any dispute between any Contracting State having made such a declaration and any other Contracting State, the provisions of Article 59 shall not apply.

  • (6)

    • (a) Any declaration made under this Article shall be made in writing. It may be made at the time of signing this Treaty, at the time of depositing the instrument of ratification or accession, or, except in the case referred to in paragraph (5), at any later time by notification addressed to the Director General. In the case of the said notification, the declaration shall take effect six months after the day on which the Director General has received the notification, and shall not affect international applications filed prior to the expiration of the said six-month period.

    • (b) Any declaration made under this Article may be withdrawn at any time by notification addressed to the Director General. Such withdrawal shall take effect three months after the day on which the Director General has received the notification and, in the case of the withdrawal of a declaration made under paragraph (3), shall not affect international applications filed prior to the expiration of the said three-month period.

  • (7) No reservations to this Treaty other than the reservations under paragraphs (1) to (5) are permitted.

Article 65. Gradual Application

  • (1) If the agreement with any International Searching or Preliminary Examining Authority provides, transitionally, for limits on the number or kind of international applications that such Authority undertakes to process, the Assembly shall adopt the measures necessary for the gradual application of this Treaty and the Regulations in respect of given categories of international applications. This provision shall also apply to requests for an international-type search under Article 15(5).

  • (2) The Assembly shall fix the dates from which, subject to the provision of paragraph (1), international applications may be filed and demands for international preliminary examination may be submitted. Such dates shall not be later than six months after this Treaty has entered into force according to the provisions of Article 63(1), or after Chapter II has become applicable under Article 63(3), respectively.

Article 66. Denunciation

  • (1) Any Contracting State may denounce this Treaty by notification addressed to the Director General.

  • (2) Denunciation shall take effect six months after receipt of the said notification by the Director General. It shall not affect the effects of the international application in the denouncing State if the international application was filed, and, where the denouncing State has been elected, the election was made, prior to the expiration of the said six-month period.

Article 67. Signature and Languages

  • (1)

    • (a) This Treaty shall be signed in a single original in the English and French languages, both texts being equally authentic.

    • (b) Official texts shall be established by the Director General, after consultation with the interested Governments, in the German, Japanese, Portuguese, Russian and Spanish languages, and such other languages as the Assembly may designate.

  • (2) This Treaty shall remain open for signature at Washington until December 31, 1970.

Article 68. Depositary Functions

  • (1) The original of this Treaty, when no longer open for signature, shall be deposited with the Director General.

  • (3) The Director General shall register this Treaty with the Secretariat of the United Nations.

  • (4) The Director General shall transmit two copies, certified by him of any amendment to this Treaty and the Regulations to the Governments of all Contracting States and, on request, to the Government of any other State.

Article 69. Notifications

The Director General shall notify the Governments of all States party to the Paris Convention for the Protection of Industrial Property of:

  • (i) signatures under Article 62,

  • (ii) deposits of instruments of ratification or accession under Article 62,

  • (iii) the date of entry into force of this Treaty and the date from which Chapter II is applicable in accordance with Article 63(3),

  • (iv) any declarations made under Article 64(1) to (5),

  • (v) withdrawals of any declarations made under Article 64(6)(b),

  • (vi) denunciations received under Article 66, and

  • (vii) any declarations made under Article 31 (4).

IN WITNESS WHEREOF, the undersigned, being duly authorized thereto, have signed this Treaty.

DONE at Washington, on June 19, 1970.

Regulations under the Patent Cooperation Treaty

PART A. Introductory Rules

Rule 1. Abbreviated Expressions

  • 1.1 Meaning of Abbreviated Expressions

    • (a) In these Regulations, the word “Treaty” means the Patent Cooperation Treaty.

    • (b) In these Regulations, the words “Chapter” and “Article” refer to the specified Chapter or Article of the Treaty.

Rule 2. Interpretation of Certain Words

  • 2.1 “Applicant”

    Whenever the word “applicant” is used, it shall be construed as meaning also the agent or other representative of the applicant, except where the contrary clearly follows from the wording or the nature of the provision, or the context in which the word is used, such as, in particular, where the provision refers to the residence or nationality of the applicant.

  • 2.2 “Agent”

    Whenever the word “agent” is used, it shall be construed as meaning an agent appointed under Rule 90.1, unless the contrary clearly, follows from the wording or the nature of the provision, or the context in which the word is used.

  • 2.2bis “Common Representative”

    Whenever the expression “common representative” is used, it shall be construed as meaning an applicant appointed as, or considered to be, the common representative under Rule 90.2.

  • 2.3 “Signature”

    Whenever the word “signature” is used, it shall be understood that, if the national law applied by the receiving Office or the competent International Searching or Preliminary Examining Authority requires the use of a seal instead of a signature, the word, for the purposes of that Office or Authority, shall mean seal.

  • 2.4 “Priority Period”

    • a) Whenever the term “priority period” is used in relation to a priority claim, it shall be construed as meaning the period of 12 months from the filing date of the earlier application whose priority is so claimed. The day of filing of the earlier application shall not be included in that period.

    • b) Rule 80.5 shall apply mutatis mutandis to the priority period.

PART B. Rules Concerning Chapter I of the Treaty

Rule 3. The Request (Form)

  • 3.1 Form of Request

    The request shall be made on a printed form or be presented as a computer print-out.

  • 3.2 Availability of Forms

    Copies of the printed form shall be furnished free of charge to the applicants by the receiving Office, or, if the receiving Office so desires, by the International Bureau.

  • 3.3 Check List

    • (a) The request shall contain a list indicating:

      • (i) the total number of sheets constituting the international application and the number of the sheets of each element of the international application: request, description (separately indicating the number of sheets of any sequence listing part of the description), claims, drawings, abstract;

      • (ii) where applicable, that the international application as filed is accompanied by a power of attorney (i.e., a document appointing an agent or a common representative), a copy of a general power of attorney, a priority document, a sequence listing in electronic form, a document relating to the payment of fees, or any other document (to be specified in the check list);

      • (iii) the number of that figure of the drawings which the applicant suggests should accompany the abstract when the abstract is published; in exceptional cases, the applicant may suggest more than one figure.

    • (b) The list shall be completed by the applicant, failing which the receiving Office shall make the necessary indications, except that the number referred to in paragraph (a)(iii) shall not be indicated by the receiving Office.

  • 3.4 Particulars

    Subject to Rule 3.3, particulars of the printed request form and of a request presented as a computer print-out shall be prescribed by the Administrative Instructions.

Rule 4. The Request (Contents)

  • 4.1 Mandatory and Optional Contents; Signature

    • (a) The request shall contain:

      • (i) a petition,

      • (ii) the title of the invention,

      • (iii) indications concerning the applicant and the agent, if there is an agent,

      • (iv) indications concerning the inventor where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application.

    • (b) The request shall, where applicable, contain:

      • (i) a priority claim,

      • (ii) indications relating to an earlier search as provided in Rules 4.12(i) and 12bis.1(c) and (f),

      • (iii) a reference to a parent application or parent patent,

      • (iv) an indication of the applicant's choice of competent International Searching Authority.

    • (c) The request may contain:

      • (i) indications concerning the inventor where the national law of none of the designated States requires that the name of the inventor be furnished at the time of filing a national application,

      • (ii) a request to the receiving Office to prepare and transmit the priority document to the International Bureau where the application whose priority is claimed was filed with the national Office or intergovernmental authority which is the receiving Office,

      • (iii) declarations as provided in Rule 4.17,

      • (iv) a statement as provided in Rule 4.18,

      • (v) a request for restoration of the right of priority,

      • (vi) a statement as provided in Rule 4.12(ii).

    • (d) The request shall be signed.

  • 4.2 The Petition

    The petition shall be to the following effect and shall preferably be worded as follows: “The undersigned requests that the present international application be processed according to the Patent Cooperation Treaty.”

  • 4.3 Title of the Invention

    The title of the invention shall be short (preferably from two to seven words when in English or translated into English) and precise.

  • 4.4 Names and Addresses

    • (a) Names of natural persons shall be indicated by the person's family name and given name(s), the family name being indicated before the given name(s).

    • (b) Names of legal entities shall be indicated by their full, official designations.

    • (c) Addresses shall be indicated in such a way as to satisfy the customary requirements for prompt postal delivery at the indicated address and, in any case, shall consist of all the relevant administrative units up to, and including, the house number, if any. Where the national law of the designated State does not require the indication of the house number, failure to indicate such number shall have no effect in that State. In order to allow rapid communication with the applicant, it is recommended to indicate any teleprinter address, telephone and facsimile machine numbers, or corresponding data for other like means of communication, of the applicant or, where applicable, the agent or the common representative.

    • (d) For each applicant, inventor, or agent, only one address may be indicated, except that, if no agent has been appointed to represent the applicant, or all of them if more than one, the applicant or, if there is more than one applicant, the common representative, may indicate, in addition to any other address given in the request, an address to which notifications shall be sent.

  • 4.5 The Applicant

    • (a) The request shall indicate:

      • (i) the name,

      • (ii) the address, and

      • (iii) the nationality and residence of the applicant or, if there are several applicants, of each of them.

    • (b) The applicant's nationality shall be indicated by the name of the State of which he is a national.

    • (c) The applicant's residence shall be indicated by the name of the State of which he is a resident.

    • (d) The request may, for different designated States, indicate different applicants. In such a case, the request shall indicate the applicant or applicants for each designated State or group of designated States.

    • (e) Where the applicant is registered with the national Office that is acting as receiving Office, the request may indicate the number or other indication under which the applicant is so registered.

  • 4.6 The Inventor

    • (a) Where Rule 4.1(a)(iv) or (c)(i) applies, the request shall indicate the name and address of the inventor or, if there are several inventors, of each of them.

    • (b) If the applicant is the inventor, the request, in lieu of the indication under paragraph (a), shall contain a statement to that effect.

    • (c) The request may, for different designated States, indicate different persons as inventors where, in this respect, the requirements of the national laws of the designated States are not the same. In such a case, the request shall contain a separate statement for each designated State or group of States in which a particular person, or the same person, is to be considered the inventor, or in which particular persons, or the same persons, are to be considered the inventors.

  • 4.7 The Agent

    • a) If an agent is appointed, the request shall so indicate, and shall state the agent's name and address.

    • b) Where the agent is registered with the national Office that is acting as receiving Office, the request may indicate the number or other indication under which the agent is so registered.

  • 4.8 Common Representative

    If a common representative is appointed, the request shall so indicate.

  • 4.9 Designation of States; Kinds of Protection; National and Regional Patents

    • a) The filing of a request shall constitute:

      • (i) the designation of all Contracting States that are bound by the Treaty on the international filing date;

      • (ii) an indication that the international application is, in respect of each designated State to which Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State;

      • (iii) an indication that the international application is, in respect of each designated State to which Article 45(1) applies, for the grant of a regional patent and also, unless Article 45(2) applies, a national patent.

    • b) Notwithstanding paragraph (a)(i), if, on October 5, 2005, the national law of a Contracting State provides that the filing of an international application which contains the designation of that State and claims the priority of an earlier national application having effect in that State shall have the result that the earlier national application ceases to have effect with the same consequences as the withdrawal of the earlier national application, any request in which the priority of an earlier national application filed in that State is claimed may contain an indication that the designation of that State is not made, provided that the designated Office notifies the International Bureau by January 5, 2006, that this paragraph shall apply in respect of designations of that State and that the notification is still in force on the international filing date. The information received shall be promptly published by the International Bureau in the Gazette.

  • 4.10 Priority Claim

    • a) Any declaration referred to in Article 8(1) (“priority claim”) may claim the priority of one or more earlier applications filed either in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for any Member of the World Trade Organization that is not party to that Convention. Any priority claim shall be made in the request; it shall consist of a statement to the effect that the priority of an earlier application is claimed and shall indicate:

      • (i) the date on which the earlier application was filed;

      • (ii) the number of the earlier application;

      • (iii) where the earlier application is a national application, the country party to the Paris Convention for the Protection of Industrial Property or the Member of the World Trade Organization that is not party to that Convention in which it was filed;

      • (iv) where the earlier application is a regional application, the authority entrusted with the granting of regional patents under the applicable regional patent treaty;

      • (v) where the earlier application is an international application, the receiving Office with which it was filed.

    • b) In addition to any indication required under paragraph a)(iv) or (v):

      • (ii) where the earlier application is a regional application and at least one of the countries party to the regional patent treaty is neither party to the Paris Convention for the Protection of Industrial Property nor a Member of the World Trade Organization, the priority claim shall indicate at least one country party to that Convention or one Member of that Organization for which that earlier application was filed.

    • c) For the purposes of paragraphs a) and b), Article 2(vi) shall not apply.

    • d) If, on September 29, 1999, paragraphs a) and b) as amended with effect from January 1, 2000, are not compatible with the national law applied by a designated Office, those paragraphs as in force until December 31, 1999, shall continue to apply after that date in respect of that designated Office for as long as the said paragraphs as amended continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by October 31, 1999. The information received shall be promptly published by the International Bureau in the Gazette.

  • 4.11 Reference to Continuation or Continuation-in-Part, or Parent Application or Grant

    • a) If:

      • (i) the applicant intends to make an indication under Rule 49bis.1(a) or (b) of the wish that the international application be treated, in any designated State, as an application for a patent of addition, certificate of addition, inventor’s certificate of addition or utility certificate of addition; or

      • (ii) 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 indicate the relevant parent application or parent patent or other parent grant.

    • b) The inclusion in the request of an indication under paragraph (a) shall have no effect on the operation of Rule 4.9.

  • 4.12 Taking into Account Results of Earlier Search

    If the applicant wishes the International Searching Authority to take into account, in carrying out the international search, the results of an earlier international, international-type or national search carried out by the same or another International Searching Authority or by a national Office (“earlier search”):

    • (i) the request shall so indicate and shall specify the Authority or Office concerned and the application in respect of which the earlier search was carried out;

    • (ii) the request may, where applicable, contain a statement to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language.

  • 4.13 [Red: Vervallen.]

  • 4.14 [Red: Vervallen.]

  • 4.14bis Choice of International Searching Authority

    If two or more International Searching Authorities are competent for the searching of the international application, the applicant shall indicate his choice of International Searching Authority in the request.

  • 4.15 Signature

    The request shall be signed by the applicant or, if there is more than one applicant, by all of them.

  • 4.16 Transliteration or Translation of Certain Words

    • (a) Where any name or address is written in characters other than those of the Latin alphabet, the same shall also be indicated in characters of the Latin alphabet either as a mere transliteration or through translation into English. The applicant shall decide which words will be merely transliterated and which words will be so translated.

    • (b) The name of any country written in characters other than those of the Latin alphabet shall also be indicated in English.

  • 4.17 Declarations Relating to National Requirements Referred to in Rule 51bis.1.a)(i) to (v)

    The request may, for the purposes of the national law applicable in one or more designated States, contain one or more of the following declarations, worded as prescribed by the Administrative Instructions:

    • (i) a declaration as to the identity of the inventor, as referred to in Rule 51bis.1.a)(i);

    • (ii) a declaration as to the applicant's entitlement, as at the international filing date, to apply for and be granted a patent, as referred to in Rule 51bis.1.a)(ii);

    • (iii) a declaration as to the applicant's entitlement, as at the international filing date, to claim priority of the earlier application, as referred to in Rule 51bis.1.a)(iii);

    • (iv) a declaration of inventorship, as referred to in Rule 51bis.1.a)(iv), which shall be signed as prescribed by the Administrative Instructions;

    • (v) a declaration as to non-prejudicial disclosures or exceptions to lack of novelty, as referred to in Rule 51bis.1.a)(v).

  • 4.18 Statement of Incorporation by Reference

    Where the international application, on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, claims the priority of an earlier application, the request may contain a statement that, where an element of the international application referred to in Article 11(1)(iii)d) or e) or a part of the description, claims or drawings referred to in Rule 20.5a) is not otherwise contained in the international application but is completely contained in the earlier application, that element or part is, subject to confirmation under Rule 20.6, incorporated by reference in the international application for the purposes of Rule 20.6. Such a statement, if not contained in the request on that date, may be added to the request if, and only if, it was otherwise contained in, or submitted with, the international application on that date.

  • 4.19 Additional Matter

    • a) The request shall contain no matter other than that specified in Rules 4.1 to 4.18, provided that the Administrative Instructions may permit, but cannot make mandatory, the inclusion in the request of any additional matter specified in the Administrative Instructions.

    • b) If the request contains matter other than that specified in Rules 4.1 to 4.18 or permitted under paragraph a) by the Administrative Instructions, the receiving Office shall ex officio delete the additional matter.

Rule 5. The Description

  • 5.1 Manner of the Description

    • (a) The description shall first state the title of the invention as appearing in the request and shall:

      • (i) specify the technical field to which the invention relates;

      • (ii) indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, cite the documents reflecting such art;

      • (iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art;

      • (iv) briefly describe the figures in the drawings, if any;

      • (v) set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any; where the national law of the designated State does not require the description of the best mode but is satisfied with the description of any mode (whether it is the best contemplated or not), failure to describe the best mode contemplated shall have no effect in that State;

      • (vi) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the way in which it can be used; the term “industry” is to be understood in its broadest sense as in the Paris Convention for the Protection of Industrial Property.

    • (b) The manner and order specified in paragraph (a) shall be followed except when, because of the nature of the invention, a different manner or a different order would result in a better understanding and a more economic presentation.

    • (c) Subject to the provisions of paragraph (b), each of the parts referred to in paragraph (a) shall preferably be preceded by an appropriate heading as suggested in the Administrative Instructions.

  • 5.2 Nucleotide and/or Amino Acid Sequence Disclosure

    • a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the description shall contain a sequence listing complying with the standard provided for in the Administrative Instructions and presented as a separate part of the description in accordance with that standard.

    • b) Where the sequence listing part of the description contains any free text as defined in the standard provided for in the Administrative Instructions, that free text shall also appear in the main part of the description in the language thereof.

Rule 6. The Claims

  • 6.1 Number and Numbering of Claims

    • (a) The number of the claims shall be reasonable in consideration of the nature of the invention claimed.

    • (b) If there are several claims, they shall be numbered consecutively in arabic numerals.

    • (c) The method of numbering in the case of the amendment of claims shall be governed by the Administrative Instructions.

  • 6.2 References to Other Parts of the International Application

    • (a) Claims shall not, except where absolutely necessary, rely, in respect of the technical features of the invention, on references to the description or drawings. In particular, they shall not rely on such references as: “as described in part.. . of the description,” or “as illustrated in figure... of the drawings.”

    • (b) Where the international application contains drawings, the technical features mentioned in the claims shall preferably be followed by the reference signs relating to such features. When used, the reference signs shall preferably be placed between parentheses, if inclusion of reference signs does not particularly facilitate quicker understanding of a claim, it should not be made. Reference signs may be removed by a designated Office for the purposes of publication by such Office.

  • 6.3 Manner of Claiming

    • (a) The definition of the matter for which protection is sought shall be in terms of the technical features of the invention.

    • (b) Whenever appropriate, claims shall contain:

      • (i) a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art,

      • (ii) a characterizing portion - preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect - stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect.

    • (c) Where the national law of the designated State does not require the manner of claiming provided for in paragraph (b), failure to use that manner of claiming shall have no effect in that State provided the manner of claiming actually used satisfies the national law of that State.

  • 6.4 Dependent Claims

    • (a) Any claim which includes all the features of one or more other claims (claim in dependent form, hereinafter referred to as “dependent claim”) shall do so by a reference, if possible at the beginning, to the other claim or claims and shall then state the additional features claimed. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such claims in the alternative only. Multiple dependent claims shall not serve as a basis for any other multiple dependent claim. Where the national law of the national Office acting as International Searching Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the preceding two sentences, failure to use that manner of claiming may result in an indication under Article 17(2)(b) in the international search report. Failure to use the said manner of claiming shall have no effect in a designated State if the manner of claiming actually used satisfies the national law of that State.

    • (b) Any dependent claim shall be construed as including all the limitations contained in the claim to which it refers or, if the dependent claim is a multiple dependent claim, all the limitations contained in the particular claim in relation to which it is considered.

    • (c) All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.

  • 6.5 Utility Models

    Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 6.1 to 6.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least 2 months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.

Rule 7. The Drawings

  • 7.1 Flow Sheets and Diagrams

    Flow sheets and diagrams are considered drawings.

  • 7.2 Time Limit

    The time limit referred to in Article 7 (2) (ii) shall be reasonable under the circumstances of the case and shall, in no case, be shorter than 2 months from the date of the written invitation requiring the filing of drawings or additional drawings under the said provision.

Rule 8. The Abstract

  • 8.1 Contents and Form of the Abstract

    • (a) The abstract shall consist of the following:

      • (i) a summary of the disclosure as contained in the description, the claims, and any drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention;

      • (ii) where applicable, the chemical formula which, among all the formulae contained in the international application, best characterizes the invention.

    • (b) The abstract shall be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English).

    • (c) The abstract shall not contain statements on the alleged merits, or value of the claimed invention or on its speculative application.

    • (d) Each main technical feature mentioned in the abstract and illustrated by a drawing in the international application shall be followed by a reference sign, placed between parentheses.

  • 8.2 Figure

    • (a) If the applicant fails to make the indication referred to in Rule 3.3(a)(iii), or if the International Searching Authority finds that a figure or figures other than that figure or those figures suggested by the applicant would, among all the figures of all the drawings, better characterize the invention, it shall, subject to paragraph (b), indicate the figure or figures which should accompany the abstract when the latter is published by the International Bureau. In such case, the abstract shall be accompanied by the figure or figures so indicated by the International Searching Authority. Otherwise, the abstract shall, subject to paragraph (b), be accompanied by the figure or figures suggested by the applicant.

    • (b) If the International Searching Authority finds that none of the figures of the drawings is useful for the understanding of the abstract, it shall notify the International Bureau accordingly. In such case, the abstract, when published by the International Bureau, shall not be accompanied by any figure of the drawings even where the applicant has made a suggestion under Rule 3.3(a)(iii).

  • 8.3 Guiding Principles in Drafting

    The abstract shall be so drafted that it can efficiently serve as a scanning tool for purposes of searching in the particular art, especially by assisting the scientist, engineer or researcher in formulating an opinion on whether there is a need for consulting the international application itself.

Rule 9. Expressions, Etc., Not to Be Used

  • 9.1 Definition

    The international application shall not contain:

    • (i) expressions or drawings contrary to morality;

    • (ii) expressions or drawings contrary to public order;

    • (iii) statements disparaging the products or processes of any particular person other than the applicant, or the merits or validity of applications or patents of any such person (mere comparisons with the prior art shall not be considered disparaging per se);

    • (iv) any statement or other matter obviously irrelevant or unnecessary under the circumstances.

  • 9.2 Noting of Lack of Compliance

    The receiving Office, the International Searching Authority, the Authority specified for supplementary search and the International Bureau may note lack of compliance with the prescriptions of Rule 9.1 and may suggest to the applicant that he voluntarily correct his international application accordingly, in which case the receiving Office, the competent International Searching Authority, the competent Authority specified for supplementary search and the International Bureau, as applicable, shall be informed of the suggestion.

  • 9.3 Reference to Article 21(6)

    “Disparaging statements,” referred to in Article 21(6), shall have the meaning as defined in Rule 9.1 (iii).

Rule 10. Terminology and Signs

  • 10.1 Terminology and Signs

    • (a) Units of weights and measures shall be expressed in terms of the metric system, or also expressed in such terms if first expressed in terms of a different system.

    • (b) Temperatures shall be expressed in degrees Celsius, or also expressed in degrees Celsius, if first expressed in a different manner.

    • (c) [Red: vervallen;]

    • (d) For indications of heat, energy, light, sound, and magnetism, as well as for mathematical formulae and electrical units, the rules of international practice shall be observed; for chemical formulae, the symbols, atomic weights, and molecular formulae, in general use, shall be employed.

    • (e) In general, only such technical terms, signs and symbols should be used as are generally accepted in the art.

    • (f) When the international application or its translation is in Chinese, English or Japanese, the beginning of any decimal fraction shall be marked by a period, whereas, when the international application or its translation is in a language other than Chinese, English or Japanese, it shall be marked by a comma.

  • 10.2 Consistency

    The terminology and the signs shall be consistent throughout the international application.

Rule 11. Physical Requirements of the International Application

  • 11.1 Number of Copies

    • (a) Subject to the provisions of paragraph (b), the international application and each of the documents referred to in the check list (Rule 3.3 (a) (ii)) shall be filed in one copy.

    • (b) Any receiving Office may require that the international application and any of the documents referred to in the check list (Rule 3.3 (a) (ii)), except the receipt for the fees paid or the check for the payment of the fees, be filed in two or three copies. In that case, the receiving Office shall be responsible for verifying the identity of the second and the third copies with the record copy.

  • 11.2 Fitness for Reproduction

    • (a) All elements of the international application (i. e., the request, the description, the claims, the drawings, and the abstract) shall be so presented as to admit of direct reproduction by photography, electrostatic processes, photo offset, and microfilming, in any number of copies.

    • (b) All sheets shall be free from creases and cracks; they shall not be folded.

    • (c) Only one side of each sheet shall be used.

    • (d) Subject to Rule 11.10(d) and Rule 11.13(j), each sheet shall be used in an upright position (i.e., the short sides at the top and bottom).

  • 11.3 Material to be Used

    All elements of the international application shall be on paper which shall be flexible, strong, white, smooth, non-shiny, and durable.

  • 11.4 Separate Sheets, Etc.

    • (a) Each element (request, description, claims, drawings, abstract) of the international application shall commence on a new sheet.

    • (b) All sheets of the international application shall be so connected that they can be easily turned when consulted, and easily separated and joined again if they have been separated for reproduction purposes.

  • 11.5 Size of Sheets

    The size of the sheets shall be A4 (29.7 cm x 21 cm). However, any receiving Office may accept international applications on sheets of other sizes provided that the record copy, as transmitted to the International Bureau, and, if the competent International Searching Authority so desires, the search copy, shall be of A4 size.

  • 11.6 Margins

    • (a) The minimum margins of the sheets containing the description, the claims, and the abstract, shall be as follows:

      • - top: 2 cm

      • - left side: 2.5 cm

      • - right side: 2 cm

      • - bottom: 2 cm

    • (b) The recommended maximum, for the margins provided for in paragraph (a), is as follows:

      • - top: 4 cm

      • - left side: 4 cm

      • - right side: 3 cm

      • - bottom: 3 cm

    • (c) On sheets containing drawings, the surface usable shall not exceed 26.2 cm x 17.0 cm. The sheets shall not contain frames around the usable or used surface. The minimum margins shall be as follows:

      • - top: 2.5 cm

      • - left side: 2.5 cm

      • - right side: 1.5 cm

      • - bottom: 1.0 cm

    • (d) The margins referred to in paragraphs (a) to (c) apply to A4-size sheets, so that, even if the receiving Office accepts other sizes, the A4-size record copy and, when so required, the A4-size search copy shall leave the aforesaid margins.

    • (e) Subject to paragraph (f) and to Rule 11.8(b), the margins of the international application, when submitted, must be completely blank.

    • (f) The top margin may contain in the left-hand corner an indication of the applicant's file reference, provided that the reference appears within 1.5 cm from the top of the sheet. The number of characters in the applicant's file reference shall not exceed the maximum fixed by the Administrative Instructions.

  • 11.7 Numbering of Sheets

    • (a) All the sheets contained in the international application shall be numbered in consecutive arabic numerals.

    • (b) The numbers shall be centered at the top or bottom of the sheet, but shall not be placed in the margin.

  • 11.8 Numbering of Lines

    • (a) It is strongly recommended to number every fifth line of each sheet of the description, and of each sheet of claims.

    • (b) The numbers should appear in the right half of the left margin.

  • 11.9 Writing of Text Matter

    • (a) The request, the description, the claims and the abstract shall be typed or printed.

    • (b) Only graphic symbols and characters, chemical or mathematical formulae, and certain characters in the Chinese or Japanese language may, when necessary, be written by hand or drawn.

    • (c) The typing shall be 1 ½ -spaced.

    • (d) All text matter shall be in characters the capital letters of which are not less than 0.28 cm high, and shall be in a dark, indelible color, satisfying the requirements specified in Rule 11.2, provided that any text matter in the request may be in characters the capital letters of which are not less than 0.21 cm high.

    • (e) As far as the spacing of the typing and the size of the characters are concerned, paragraphs c) and d) shall not apply to texts in the Chinese or Japanese language).

  • 11.10 Drawings; Formulae, and Tables, in Text Matter

    • (a) The request, the description, the claims and the abstract shall not contain drawings.

    • (b) The description, the claims and the abstract may contain chemical or mathematical formulae.

    • (c) The description and the abstract may contain tables; any claim may contain tables only if the subject matter of the claim makes the use of tables desirable.

    • (d) Tables and chemical or mathematical formulae may be placed sideways on the sheet if they cannot be presented satisfactorily in an upright position thereon; sheets on which tables or chemical or mathematical formulae are presented sideways shall be so presented that the tops of the tabels or formulae are at the left side of the sheet.

  • 11.11 Words in Drawings

    • (a) The drawings shall not contain text matter, except a single word or words, when absolutely indispensable, such as “water“, “steam“, “open“, “closed“, “section on AB“, and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catch words indispensable for understanding.

    • (b) Any words used shall be so placed that, if translated, they may be pasted over without interfering with any lines of the drawings.

  • 11.12 Alterations, Etc.

    Each sheet shall be reasonably free from erasures and shall be free from alterations, overwritings, and interlineations. Non-compliance with this Rule may be authorized if the authenticity of the content is not in question and the requirements for good reproduction are not in jeopardy.

  • 11.13 Special Requirements for Drawings

    • (a) Drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without colorings.

    • (b) Cross-sections shall be indicated by oblique hatching which should not impede the clear reading of the reference signs and leading lines.

    • (c) The scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty.

    • (d) When, in exceptional cases, the scale is given on a drawing, it shall be represented graphically.

    • (e) All numbers, letters and reference lines, appearing on the drawings, shall be simple and clear. Brackets, circles or inverted commas shall not be used in association with numbers and letters.

    • (f) All lines in the drawings shall, ordinarily, be drawn with the aid of drafting instruments.

    • (g) Each element of each figure shall be in proper proportion to each of the other elements in the figure, except where the use of a different proportion is indispensable for the clarity of the figure.

    • (h) The height of the numbers and letters shall not be less than 0.32 cm. For the lettering of drawings, the Latin and, where customary, the Greek alphabet shall be used.

    • (i) The same sheet of drawings may contain several figures. Where figures on two or more sheets form in effect a single complete figure, the figures on the several sheets shall be so arranged that the complete figure can be assembled without concealing any part of any of the figures appearing on the various sheets.

    • (j) The different figures shall be arranged on a sheet or sheets without wasting space, preferably in an upright position, clearly separated from one another. Where the figures are not arranged in an upright position, they shall be presented sideways with the top of the figures at the left side of the sheet.

    • (k) The different figures shall be numbered in arabic numerals consecutively and independently of the numbering of the sheets.

    • (l) Reference signs not mentioned in the description shall not appear in the drawings, and vice versa.

    • (m) The same features, when denoted by reference signs, shall, throughout the international application, be denoted by the same signs.

    • (n) If the drawings contain a large number of reference signs, it is strongly recommended to attach a separate sheet listing all reference signs and the features denoted by them.

  • 11.14 Later Documents

    Rules 10, and 11.1 to 11.13, also apply to any document − for example, replacement sheets, amended claims, translations − submitted after the filing of the international application.

Rule 12. Language of the International Application and Translations for the Purposes of International Search and International Publication

  • 12.1 Languages Accepted for the Filing of International Applications

    • a) An international application shall be filed in any language which the receiving Office accepts for that purpose.

    • b) Each receiving Office shall, for the filing of international applications, accept at least one language which is both:

      • (i) a language accepted by the International Searching Authority, or, if applicable, by at least one of the International Searching Authorities, competent for the international searching of international applications filed with that receiving Office, and

      • (ii) a language of publication.

    • c) Notwithstanding paragraph a), the request shall be filed in any language of publication which the receiving Office accepts for the purposes of this paragraph.

    • d) Notwithstanding paragraph a), any text matter contained in the sequence listing part of the description referred to in Rule 5.2a) shall be presented in accordance with the standard provided for in the Administrative Instructions.

  • 12.1bis  Language of Elements and Parts Furnished under Rule 20.3, 20.5 or 20.6

    An element referred to in Article 11(1)(iii)d) or e) furnished by the applicant under Rule 20.3b) or 20.6a) and a part of the description, claims or drawings furnished by the applicant under Rule 20.5b) or 20.6a) shall be in the language of the international application as filed or, where a translation of the application is required under Rule 12.3a) or 12.4a), in both the language of the application as filed and the language of that translation.

  • 12.1ter Language of Indications Furnished under Rule 13bis.4

    Any indication in relation to deposited biological material furnished under Rule 13bis.4 shall be in the language in which the international application is filed, provided that, where a translation of the international application is required under Rule 12.3a) or 12.4a), any such indication shall be furnished in both the language in which the application is filed and the language of that translation.

  • 12.2 Language of Changes in the International Application

    • a) Any amendment of the international application shall, subject to Rules 46.3 and 55.3, be in the language in which the application is filed.

    • b) Any rectification under Rule 91.1 of an obvious mistake in the international application shall be in the language in which the application is filed, provided that:

      • (i) where a translation of the international application is required under Rule 12.3a), 12.4a) or 55.2a), rectifications referred to in Rule 91.1b)(ii) and (iii) shall be filed in both the language of the application and the language of that translation;

      • (ii) where a translation of the request is required under Rule 26.3terc), rectifications referred to in Rule 91.1b)(i) need only be filed in the language of that translation.

    • c) Any correction under Rule 26 of a defect in the international application shall be in the language in which the international application is filed. Any correction under Rule 26 of a defect in a translation of the international application furnished under Rule 12.3 or 12.4, any correction under Rule 55.2c) of a defect in a translation furnished under Rule 55.2a), or any correction of a defect in a translation of the request furnished under Rule 26.3terc), shall be in the language of the translation.

  • 12.3 Translation for the Purposes of International Search

    • a) Where the language in which the international application is filed is not accepted by the International Searching Authority that is to carry out the international search, the applicant shall, within one month from the date of receipt of the international application by the receiving Office, furnish to that Office a translation of the international application into a language which is all of the following:

      • (i) a language accepted by that Authority, and

      • (ii) a language of publication, and

      • (iii) a language accepted by the receiving Office under Rule 12.1a), unless the international application is filed in a language of publication.

    • b) Paragraph a) shall not apply to the request nor to any sequence listing part of the description.

    • c) Where, by the time the receiving Office sends to the applicant the notification under Rule 20.2c), the applicant has not furnished a translation required under paragraph a), the receiving Office shall, preferably together with that notification, invite the applicant:

      • (i) to furnish the required translation within the time limit under paragraph a);

      • (ii) in the event that the required translation is not furnished within the time limit under paragraph a), to furnish it and to pay, where applicable, the late furnishing fee referred to in paragraph e), within one month from the date of the invitation or two months from the date of receipt of the international application by the receiving Office, whichever expires later.

    • d) Where the receiving Office has sent to the applicant an invitation under paragraph c) and the applicant has not, within the applicable time limit under paragraph c)(ii), furnished the required translation and paid any required late furnishing fee, the international application shall be considered withdrawn and the receiving Office shall so declare. Any translation and any payment received by the receiving Office before that Office makes the declaration under the previous sentence and before the expiration of 15 months from the priority date shall be considered to have been received before the expiration of that time limit.

    • e) The furnishing of a translation after the expiration of the time limit under paragraph a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late furnishing fee equal to 25% 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.

  • 12.4 Translation for the Purposes of International Publication

    • a) Where the language in which the international application is filed is not a language of publication and no translation is required under Rule 12.3a), the applicant shall, within 14 months from the priority date, furnish to the receiving Office a translation of the international application into any language of publication which the receiving Office accepts for the purposes of this paragraph.

    • b) Paragraph a) shall not apply to the request nor to any sequence listing part of the description.

    • c) Where the applicant has not, within the time limit referred to in paragraph a), furnished a translation required under that paragraph, the receiving Office shall invite the applicant to furnish the required translation, and to pay, where applicable, the late furnishing fee required under paragraph e), within 16 months from the priority date. Any translation received by the receiving Office before that Office sends the invitation under the previous sentence shall be considered to have been received before the expiration of the time limit under paragraph a).

    • d) Where the applicant has not, within the time limit under paragraph c), furnished the required translation and paid any required late furnishing fee, the international application shall be considered withdrawn and the receiving Office shall so declare. Any translation and any payment received by the receiving Office before that Office makes the declaration under the previous sentence and before the expiration of 17 months from the priority date shall be considered to have been received before the expiration of that time limit.

    • e) The furnishing of a translation after the expiration of the time limit under paragraph a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late furnishing fee equal to 25% 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 12bis. Copy of Results of Earlier Search and of Earlier Application; Translation

  • 12bis.1 Copy of Results of Earlier Search and of Earlier Application; Translation

    • a) Where the applicant has, under Rule 4.12, requested the International Searching Authority to take into account the results of an earlier search carried out by the same or another International Searching Authority or by a national Office, the applicant shall, subject to paragraphs (c) to (f), submit to the receiving Office, together with the international application, a copy of the results of the earlier search, in whatever form (for example, in the form of a search report, a listing of cited prior art or an examination report) they are presented by the Authority or Office concerned.

    • b) The International Searching Authority may, subject to paragraphs (c) to (f), invite the applicant to furnish to it, within a time limit which shall be reasonable under the circumstances:

      • (i) a copy of the earlier application concerned;

      • (ii) where the earlier application is in a language which is not accepted by the International Searching Authority, a translation of the earlier application into a language which is accepted by that Authority;

      • (iii) where the results of the earlier search are in a language which is not accepted by the International Searching Authority, a translation of those results into a language which is accepted by that Authority;

      • (iv) a copy of any document cited in the results of the earlier search.

    • c) Where the earlier search was carried out by the same Office as that which is acting as the receiving Office, the applicant may, instead of submitting the copies referred to in paragraphs (a) and (b)(i) and (iv), indicate the wish that the receiving Office prepare and transmit them to the International Searching Authority. Such request shall be made in the request and may be subjected by the receiving Office to the payment to it, for its own benefit, of a fee.

    • d) Where the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, no copy or translation referred to in paragraphs (a) and (b) shall be required to be submitted under those paragraphs.

    • e) Where the request contains a statement under Rule 4.12(ii) to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language, no copy or translation referred to in paragraphs (b)(i) and (ii) shall be required to be submitted under those paragraphs.

    • f) Where a copy or translation referred to in paragraphs (a) and (b) is available to the International Searching Authority in a form and manner acceptable to it, for example, from a digital library or in the form of the priority document, and the applicant so indicates in the request, no copy or translation shall be required to be submitted under those paragraphs.

Rule 13. Unity of Invention

  • 13.1 Requirement

    The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”).

  • 13.2 Circumstances in Which the Requirement of Unity of Invention Is to Be Considered Fulfilled

    Where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.

  • 13.3 Determination of Unity of Invention Not Affected by Manner of Claiming

    The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.

  • 13.4 Dependent Claims

    Subject to Rule 13.1, it shall be permitted to include in the same international application a reasonable number of dependent claims, claiming specific forms of the invention claimed in an independent claim, even where the features of any dependent claim could be considered as constituting in themselves an invention.

  • 13.5 Utility Models

    Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 13.1 to 13.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least 2 months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.

Rule 13bis. Inventions Relating to Biological Material

  • 13bis.1 Definition

    For the purposes of this Rule, “reference to deposited biological material” means particulars given in an international application with respect to the deposit of biological material with a depositary institution or to the biological material so deposited.

  • 13bis.2 References (General)

    Any reference to deposited biological material shall be made in accordance with this Rule and, if so made, shall be considered as satisfying the requirements of the national law of each designated State.

  • 13bis.3 References: Contents; Failure to Include Reference or Indication

    • (a) A reference to deposited biological material shall indicate:

      • (i) the name and the address of the depositary institution with which the deposit was made;

      • (ii) the date of deposit of the biological material with that institution;

      • (iii) the accession number given to the deposit by that institution; and

      • (iv) any additional matter of which the International Bureau has been notified pursuant to Rule 13bis.7(a)(i), provided that the requirement to indicate that matter was published in the Gazette in accordance with Rule 13bis.7(c) at least two months before the filing of the international application.

    • (b) Failure to include a reference to deposited biological material or failure to include, in a reference to deposited biological material, an indication in accordance with paragraph (a), shall have no consequence in any designated State whose national law does not require such reference or such indication in a national application.

  • 13bis.4 References: Time Limit for Furnishing Indications

    • a) Subject to paragraphs b) and c), if any of the indications referred to in Rule 13bis.3a) is not included in a reference to deposited biological material in the international application as filed but is furnished to the International Bureau:

      • (i) within 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished in time;

      • (ii) after the expiration of 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished on the last day of that time limit if it reaches the International Bureau before the technical preparations for international publication have been completed.

    • b) If the national law applicable by a designated Office so requires in respect of national applications, that Office may require that any of the indications referred to in Rule 13bis.3(a) be furnished earlier than 16 months from the priority date, provided that the International Bureau has been notified of such requirement pursuant to Rule 13bis.7a)(ii) and has published such requirement in the Gazette in accordance with Rule 13bis.7(c) at least two months before the filing of the international application.

    • c) Where the applicant makes a request for early publication under Article 21(2)b), any designated Office may consider any indication not furnished before the technical preparations for international publication have been completed as not having been furnished in time.

    • d) The International Bureau shall notify the applicant of the date on which it received any indication furnished under paragraph (a), and:

      • (i) if the indication was received before the technical preparations for international publication have been completed, publish the indication furnished under paragraph (a), and an indication of the date of receipt, together with the international application;

      • (ii) if the indication was received after the technical preparations for international publication have been completed, notify that date and the relevant data from the indication to the designated Offices.

  • 13bis.5 References and Indications for the Purposes of One or More Designated States; Different Deposits for Different Designated States; Deposits with Depositary Institutions Other than Those Notified

    • a) A reference to deposited biological material shall be considered to be made for the purposes of all designated States, unless it is expressly made for the purposes of certain of the designated States only; the same applies to the indications included in the reference.

    • b) References to different deposits of the biological material may be made for different designated States.

    • c) Any designated Office may disregard a deposit made with a depositary institution other than one notified by it under Rule 13bis.7b)

  • 13bis.6 Furnishing of Samples

    • (a) [Red: Vervallen.]

    • (b) Pursuant to Articles 23 and 40, no furnishing of samples of the deposited biological material to which a reference is made in an international application shall, except with the authorization of the applicant, take place before the expiration of the applicable time limits after which national processing may start under the said Articles. However, where the applicant performs the acts referred to in Articles 22 or 39 after international publication but before the expiration of the said time limits, the furnishing of samples of the deposited biological material may take place, once the said acts have been performed. Notwithstanding the previous provision, the furnishing of samples of the deposited biological material may take place under the national law applicable by any designated Office as soon as, under that law, the international publication has the effects of the compulsory national publication of an unexamined national application.

  • 13bis.7 National Requirements: Notification and Publication

    • (a) Any national Office may notify the International Bureau of any requirement of the national law:

      • (i) that any matter specified in the notification, in addition to those referred to in Rule 13bis.3a(i), (ii) and (iii), is required to be included in a reference to deposited biological material in a national application;

      • (ii) that one or more of the indications referred to in Rule 13bis.3a) are required to be included in a national application as filed or are required to be furnished at a time specified in the notification which is earlier than 16 months from the priority date.

    • (b) Each national Office shall notify the International Bureau of the depositary institutions with which the national law permits deposits of biological materials to be made for the purposes of patent procedure before that Office or, if the national law does not provide for or permit such deposits, of that fact.

    • (c) The International Bureau shall promptly publish in the Gazette requirements notified to it under paragraph (a) and information notified to it under paragraph (b).

Rule 13ter. Nucleotide and/or Amino Acid Sequence Listings

  • 13ter.1 Procedure Before the International Searching Authority

    • a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the International Searching Authority may invite the applicant to furnish to it, for the purposes of the international search, a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, unless such listing in electronic form is already available to it in a form and manner acceptable to it, and to pay to it, where applicable, the late furnishing fee referred to in paragraph (c), within a time limit fixed in the invitation.

    • b) Where at least part of the international application is filed on paper and the International Searching Authority finds that the description does not comply with Rule 5.2(a), it may invite the applicant to furnish, for the purposes of the international search, a sequence listing in paper form complying with the standard provided for in the Administrative Instructions, unless such listing in paper form is already available to it in a form and manner acceptable to it, whether or not the furnishing of a sequence listing in electronic form is invited under paragraph (a), and to pay, where applicable, the late furnishing fee referred to in paragraph (c), within a time limit fixed in the invitation.

    • c) The furnishing of a sequence listing in response to an invitation under paragraph (a) or (b) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a late furnishing fee whose amount shall be determined by the International Searching Authority but shall not exceed 25% 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, provided that a late furnishing fee may be required under either paragraph (a) or (b) but not both.

    • d) If the applicant does not, within the time limit fixed in the invitation under paragraph (a) or (b), furnish the required sequence listing and pay any required late furnishing fee, the International Searching Authority shall only be required to search the international application to the extent that a meaningful search can be carried out without the sequence listing.

    • e) Any sequence listing not contained in the international application as filed, whether furnished in response to an invitation under paragraph (a) or (b) or otherwise, shall not form part of the international application, but this paragraph shall not prevent the applicant from amending the description in relation to a sequence listing pursuant to Article 34(2)(b).

    • f) Where the International Searching Authority finds that the description does not comply with Rule 5.2(b), it shall invite the applicant to submit the required correction. Rule 26.4 shall apply mutatis mutandis to any correction offered by the applicant. The International Searching Authority shall transmit the correction to the receiving Office and to the International Bureau.

  • 13ter.2 Procedure Before the International Preliminary Examining Authority

    Rule 13ter.1 shall apply mutatis mutandis to the procedure before the International Preliminary Examining Authority.

  • 13ter.3 Sequence Listing for Designated Office

    No designated Office shall require the applicant to furnish to it a sequence listing other than a sequence listing complying with the standard provided for in the Administrative Instructions.

Rule 14. The Transmittal Fee

  • 14.1 The Transmittal Fee

    • (a) Any receiving Office may require that the applicant pay a fee to it, for its own benefit, for receiving the international application, transmitting copies to the International Bureau and the competent International Searching Authority, and performing all the other tasks which it must perform in connection with the international application in its capacity of receiving Office “transmittal fee”).

    • (b) The amount of the transmittal fee, if any, shall be fixed by the receiving Office.

    • (c) The transmittal fee shall be paid within one month from the date of receipt of the international application. The amount payable shall be the amount applicable on that date of receipt.

Rule 15. The International Filing Fee

  • 15.1 The International Filing Fee

    Each international application shall be subject to the payment of a fee for the benefit of the International Bureau (“international filing fee”) to be collected by the receiving Office.

  • 15.2 Amount

    • a) The amount of the international filing fee is as set out in the Schedule of Fees.

    • b) The international filing fee shall be payable in the currency or one of the currencies prescribed by the receiving Office (“prescribed currency”).

    • c) Where the prescribed currency is the Swiss franc, the receiving Office shall promptly transfer the said fee to the International Bureau in Swiss francs.

    • d) Where the prescribed currency is a currency other than the Swiss franc and that currency:

      • (i) is freely convertible into Swiss francs, the Director General shall establish, for each receiving Office which prescribes such a currency for the payment of the international filing fee, an equivalent amount of that fee in the prescribed currency according to directives given by the Assembly, and the amount in that currency shall promptly be transferred by the receiving Office to the International Bureau;

      • (ii) is not freely convertible into Swiss francs, the receiving Office shall be responsible for the conversion of the international filing fee from the prescribed currency into Swiss francs and shall promptly transfer that fee in Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau. Alternatively, if the receiving Office so wishes, it may convert the international filing fee from the prescribed currency into euros or US dollars and promptly transfer the equivalent amount of that fee in euros or US dollars, as established by the Director General according to directives given by the Assembly as referred to in item (i), to the International Bureau.

  • 15.3 Time Limit for Payment; Amount Payable

    The international filing fee shall be paid to the receiving Office within one month from the date of receipt of the international application. The amount payable shall be the amount applicable on that date of receipt.

  • 15.4 Refund

    The receiving Office shall refund the international filing fee to the applicant:

    • (i) if the determination under Article 11(1) is negative,

    • (ii) if, before the transmittal of the record copy to the International Bureau, the international application is withdrawn or considered withdrawn, or

    • (iii) if, due to prescriptions concerning national security, the international application is not treated as such.

Rule 16. The Search Fee

  • 16.1 Right to Ask for a Fee

    • (a) Each International Searching Authority may require that the applicant pay a fee (“search fee”) for its own benefit for carrying out the international search and for performing all other tasks entrusted to International Searching Authorities by the Treaty and these Regulations.

    • (b) The search fee shall be collected by the receiving Office. The said fee shall be payable in the currency prescribed by that Office (“prescribed currency”).

    • (c) Where the prescribed currency is the currency in which the International Searching Authority has fixed the said fee (“fixed currency”), the receiving Office shall promptly transfer the said fee to that Authority in that currency.

    • (d) Where the prescribed currency is not the fixed currency and that currency:

      • (i) is freely convertible into the fixed currency, the Director General shall establish, for each receiving Office which prescribes such a currency for the payment of the search fee, an equivalent amount of that fee in the prescribed currency according to directives given by the Assembly, and the amount in that currency shall promptly be transferred by the receiving Office to the International Searching Authority;

      • (ii) is not freely convertible into the fixed currency, the receiving Office shall be responsible for the conversion of the search fee from the prescribed currency into the fixed currency and shall promptly transfer that fee in the fixed currency, in the amount fixed by the International Searching Authority, to the International Searching Authority.

    • (e) Where, in respect of the payment of the search fee in a prescribed currency, other than the fixed currency, the amount actually received under paragraph (d)(i) of this Rule by the International Searching Authority in the prescribed currency is, when converted by it into the fixed currency, less than that fixed by it, the difference will be paid to the International Searching Authority by the International Bureau, whereas, if the amount actually received is more, the difference will belong to the International Bureau.

    • (f) As to the time limit for payment of the search fee and the amount payable, the provisions of Rule 15.3 relating to the international filing fee shall apply mutatis mutandis.

  • 16.2 Refund

    The receiving Office shall refund the search fee to the applicant:

    • (i) if the determination under Article 11(1) is negative,

    • (ii) if, before the transmittal of the search copy to the International Searching Authority, the international application is withdrawn or considered withdrawn, or

    • (iii) if, due to prescriptions concerning national security, the international application is not treated as such.

  • 16.3 Partial Refund

    Where the International Searching Authority takes into account, under Rule 41.1, the results of an earlier search in carrying out the international search, that Authority shall refund the search fee paid in connection with the international application to the extent and under the conditions provided for in the agreement under Article 16(3)(b).

Rule 16bis. Extension of Time Limits for Payment of Fees

  • 16bis.1 Invitation by the Receiving Office

    • a) Where, by the time they are due under Rules 14.1(c), 15.3 and 16.1(f), the receiving Office finds that no fees were paid to it, or that the amount paid to it is insufficient to cover the transmittal fee, the international filing fee and the search fee, the receiving Office shall, subject to paragraph (d), invite the applicant to pay to it the amount required to cover those fees, together with, where applicable, the late payment fee under Rule 16bis.2, within a time limit of one month from the date of the invitation.

    • b) [Red: Vervallen.]

    • c) Where the receiving Office has sent to the applicant an invitation under paragraph (a) and the applicant has not, within the time limit referred to in that paragraph, paid in full the amount due, including, where applicable, the late payment fee under Rule 16bis.2, the receiving Office shall, subject to paragraph (e):

      • (i) make the applicable declaration under Article 14(3), and

      • (ii) proceed as provided in Rule 29.

    • d) Any payment received by the receiving Office before that Office sends the invitation under paragraph (a) shall be considered to have been received before the expiration of the time limit under Rule 14.1(c), 15.3 or 16.1(f), as the case may be.

    • e) Any payment received by the receiving Office before that Office makes the applicable declaration under Article 14(3) shall be considered to have been received before the expiration of the time limit referred to in paragraph a).

  • 16bis.2 Late Payment Fee

    • a) The payment of fees in response to an invitation under Rule 16bis.1a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late payment fee. The amount of that fee shall be:

      • (i) 50% of the amount of unpaid fees which is specified in the invitation, or,

      • (ii) if the amount calculated under item (i) is less than the transmittal fee, an amount equal to the transmittal fee.

    • 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 Obligation to Submit Copy of Earlier National or International Application

    • a) 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”), shall, unless that priority document has already been filed with the receiving Office together with the international application in which the priority claim is made, and subject to paragraphs b) and (b-bis), be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date, provided that any copy of the said earlier application which is received by the International Bureau after the expiration of that time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the date of international publication of the international application.

    • b) Where the priority document is issued by the receiving Office, the applicant may, instead of submitting the priority document, request the receiving Office to prepare and transmit the priority document to the International Bureau. Such request shall 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.

    • b-bis) Where the priority document is, in accordance with the Administrative Instructions, made available to the International Bureau from a digital library prior to the date of international publication of the international application, the applicant may, instead of submitting the priority document, request the International Bureau, prior to the date of international publication, to obtain the priority document from such digital library.

    • c) If the requirements of none of the three preceding paragraphs are complied with, any designated Office may, subject to paragraph d), disregard the priority claim, provided that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable under the circumstances.

    • d) No designated Office shall disregard the priority claim under paragraph c) if the earlier application referred to in paragraph a) was filed with it in its capacity as national Office or if the priority document is, in accordance with the Administrative Instructions, available to it from a digital library.

  • 17.2 Availability of Copies

    • (a) Where the applicant has complied with Rule 17.1a), 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) The International Bureau shall not make copies of the priority document available to the public prior to the international publication of the international application.

    • (c) Where the international application has been published under Article 21, the International Bureau shall furnish a copy of the priority document to any person upon request and subject to reimbursement of the cost unless, prior to that publication:

      • (i) the international application was withdrawn,

      • (ii) the relevant priority claim was withdrawn or considered, under Rule 26bis.2b), not to have been made.

Rule 18. The Applicant

  • 18.1 Residence and Nationality

    • a) Subject to the provisions of paragraphs (b) and (c), the question whether an applicant is a resident or national of the Contracting State of which he claims to be a resident or national shall depend on the national law of that State and shall be decided by the receiving Office.

    • b) In any case,

      • (i) possession of a real and effective industrial or commercial establishment in a Contracting State shall be considered residence in that State, and

      • (ii) a legal entity constituted according to the national law of a Contracting State shall be considered a national of that State.

    • c) Where the international application is filed with the International Bureau as receiving Office, the International Bureau shall, in the circumstances specified in the Administrative Instructions, request the national Office of, or acting for, the Contracting State concerned to decide the question referred to in paragraph (a). The International Bureau shall inform the applicant of any such request. The applicant shall have an opportunity to submit arguments directly to the national Office. The national Office shall decide the said question promptly.

  • 18.2 [Red: Vervallen.]

  • 18.3 Two or More Applicants

    If there are two or more applicants, the right to file an international application shall exist if at least one of them is entitled to file an international application according to Article 9.

  • 18.4 Information on Requirements Under National Law as to Applicants

    • (a) [Red: Vervallen.]

    • (b) [Red: Vervallen.]

    • (c) The International Bureau shall, from time to time, publish information on the various national laws in respect of the question who is qualified (inventor, successor in title of the inventor, owner of the invention, or other) to file a national application and shall accompany such information by a warning that the effect of the international application in any designated State may depend on whether the person designated in the international application as applicant for the purposes of that State is a person who, under the national law of that State, is qualified to file a national application.

Rule 19. The Competent Receiving Office

  • 19.1 Where to File

    • (a) Subject to the provisions of paragraph (b), the international application shall be filed, at the option of the applicant,

      • (i) with the national Office of or acting for the Contracting State of which the applicant is a resident,

      • (ii) with the national Office of or acting for the Contracting State of which the applicant is a national, or

      • iii) irrespective of the Contracting State of which the applicant is a resident or national, with the International Bureau.

    • (b) Any Contracting State may agree with another Contracting State or any intergovernmental organization that the national Office of the latter State or the intergovernmental organization shall, for all or some purposes, act instead of the national Office of the former State as receiving Office for applicants who are residents or nationals of that former State. Notwithstanding such agreement, the national Office of the former State shall be considered the competent receiving Office for the purposes of Article 15(5).

    • (c) In connection with any decision made under Article 9(2), the Assembly shall appoint the national Office or the intergovernmental organization which will act as receiving Office for applications of residents or nationals of States specified by the Assembly. Such appointment shall require the previous consent of the said national Office or intergovernmental organization.

  • 19.2 Two or More Applicants

    If there are two or more applicants:

    • (i) the requirements of Rule 19.1 shall be considered to be met if the national Office with which the international application is filed is the national Office of or acting for a Contracting State of which at least one of the applicants is a resident or national;

    • ii) the international application may be filed with the International Bureau under Rule 19.1(a)(iii) if at least one of the applicants is a resident or national of a Contracting State.

  • 19.3 Publication of Fact of Delegation of Duties of Receiving Office

    • (a) Any agreement referred to in Rule 19.1(b) shall be promptly notified to the International Bureau by the Contracting State which delegates the duties of the receiving Office to the national Office of or acting for another Contracting State or an intergovernmental organization.

    • (b) The International Bureau shall, promptly upon receipt, publish the notification in the Gazette.

  • 19.4 Transmittal to the International Bureau as Receiving Office

    • a) Where an international application is filed with a national Office which acts as a receiving Office under the Treaty but

      • (i) that national Office is not competent under Rule 19.1 or 19.2 to receive that international application, or

      • (ii) that international application is not in a language accepted under Rule 12.1a) by that national Office but is in a language accepted under that Rule by the International Bureau as receiving Office, or

      • (iii) that national Office and the International Bureau agree, for any reason other than those specified under items (i) and (ii), and with the authorization of the applicant, that the procedure under this Rule should apply,

      that international application shall, subject to paragraph b), be considered to have been received by that Office on behalf of the International Bureau as receiving Office under Rule 19.1a)(iii).

    • b) Where, pursuant to paragraph (a), an international application is received by a national Office on behalf of the International Bureau as receiving Office under Rule 19.1(a)(iii), that national Office shall, unless prescriptions concerning national security prevent the international application from being so transmitted, promptly transmit it to the International Bureau. Such transmittal may be subjected by the national Office to the payment of a fee, for its own benefit, equal to the transmittal fee charged by that Office under Rule 14. The international application so transmitted shall be considered to have been received by the International Bureau as receiving Office under Rule 19.1 (a)(iii) on the date of receipt of the international application by that national Office.

    • c) For the purposes of Rules 14.1(c), 15.3 and 16.1(f), where the international application was transmitted to the International Bureau under paragraph (b), the date of receipt of the international application shall be considered to be the date on which the international application was actually received by the International Bureau. For the purposes of this paragraph, the last sentence of paragraph (b) shall not apply.

Rule 20. International Filing Date

  • 20.1 Determination under Article 11(1)

    • a) Promptly after receipt of the papers purporting to be an international application, the receiving Office shall determine whether the papers fulfill the requirements of Article 11(1).

    • b) For the purposes of Article 11(1)(iii)c), it shall be sufficient to indicate the name of the applicant in a way which allows the identity of the applicant to be established even if the name is misspelled, the given names are not fully indicated, or, in the case of legal entities, the indication of the name is abbreviated or incomplete.

    • c) For the purposes of Article 11(1)(ii), it shall be sufficient that the part which appears to be a description (other than any sequence listing part thereof) and the part which appears to be a claim or claims be in a language accepted by the receiving Office under Rule 12.1a).

    • d) If, on October 1, 1997, paragraph c) is not compatible with the national law applied by the receiving Office, paragraph c) shall not apply to that receiving Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1997. The information received shall be promptly published by the International Bureau in the Gazette.

  • 20.2 Positive Determination under Article 11(1)

    • a) If the receiving Office determines that, at the time of receipt of the papers purporting to be an international application, the requirements of Article 11(1) were fulfilled, the receiving Office shall accord as the international filing date the date of receipt of the international application.

    • b) The receiving Office shall stamp the request of the international application which it has accorded an international filing date as prescribed by the Administrative Instructions. The copy whose request has been so stamped shall be the record copy of the international application.

    • c) The receiving Office shall promptly notify the applicant of the international application number and the international filing date. At the same time, it shall send to the International Bureau a copy of the notification sent to the applicant, except where it has already sent, or is sending at the same time, the record copy to the International Bureau under Rule 22.1a).

  • 20.3 Defects under Article 11(1)

    • a) Where, in determining whether the papers purporting to be an international application fulfill the requirements of Article 11(1), the receiving Office finds that any of the requirements of Article 11(1) are not, or appear not to be, fulfilled, it shall promptly invite the applicant, at the applicant’s option:

      • (i) to furnish the required correction under Article 11(2); or

      • (ii) where the requirements concerned are those relating to an element referred to in Article 11(1)(iii)d) or e), to confirm in accordance with Rule 20.6a) that the element is incorporated by reference under Rule 4.18;

      and to make observations, if any, within the applicable time limit under Rule 20.7. If that time limit expires after the expiration of 12 months from the filing date of any application whose priority is claimed, the receiving Office shall call that circumstance to the attention of the applicant.

    • b) Where, following an invitation under paragraph a) or otherwise:

      • (i) the applicant furnishes to the receiving Office the required correction under Article 11(2) after the date of receipt of the purported international application but on a later date falling within the applicable time limit under Rule 20.7, the receiving Office shall accord that later date as the international filing date and proceed as provided in Rule 20.2b) and c);

      • (ii) an element referred to in Article 11(1)(iii)d) or e) is, under Rule 20.6b), considered to have been contained in the international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2b) and c).

    • c) If the receiving Office later discovers, or on the basis of the applicant’s reply realizes, that it has erred in issuing an invitation under paragraph a) since the requirements of Article 11(1) were fulfilled when the papers were received, it shall proceed as provided in Rule 20.2.

  • 20.4 Negative Determination under Article 11(1)

    If the receiving Office does not receive, within the applicable time limit under Rule 20.7, a correction or confirmation referred to in Rule 20.3a), or if a correction or confirmation has been received but the application still does not fulfill the requirements of Article 11(1), the receiving Office shall:

    • (i) promptly notify the applicant that the application is not and will not be treated as an international application and shall indicate the reasons therefor;

    • (ii) notify the International Bureau that the number it has marked on the papers will not be used as an international application number;

    • (iii) keep the papers constituting the purported international application and any correspondence relating thereto as provided in Rule 93.1; and

    • (iv) send a copy of the said papers to the International Bureau where, pursuant to a request by the applicant under Article 25(1), the International Bureau needs such a copy and specially asks for it.

  • 20.5 Missing Parts

    • a) Where, in determining whether the papers purporting to be an international application fulfill the requirements of Article 11(1), the receiving Office finds that a part of the description, claims or drawings is or appears to be missing, including the case where all of the drawings are or appear to be missing but not including the case where an entire element referred to in Article 11(1)(iii)d) or e) is or appears to be missing, it shall promptly invite the applicant, at the applicant’s option:

      • (i) to complete the purported international application by furnishing the missing part; or

      • (ii) to confirm, in accordance with Rule 20.6a), that the part was incorporated by reference under Rule 4.18;

      and to make observations, if any, within the applicable time limit under Rule 20.7. If that time limit expires after the expiration of 12 months from the filing date of any application whose priority is claimed, the receiving Office shall call that circumstance to the attention of the applicant.

    • b) Where, following an invitation under paragraph a) or otherwise, the applicant furnishes to the receiving Office, on or before the date on which all of the requirements of Article 11(1) are fulfilled but within the applicable time limit under Rule 20.7, a missing part referred to in paragraph a) so as to complete the international application, that part shall be included in the application and the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2b) and c).

    • c) Where, following an invitation under paragraph a) or otherwise, the applicant furnishes to the receiving Office, after the date on which all of the requirements of Article 11(1) were fulfilled but within the applicable time limit under Rule 20.7, a missing part referred to in paragraph a) so as to complete the international application, that part shall be included in the application, and the receiving Office shall correct the international filing date to the date on which the receiving Office received that part, notify the applicant accordingly and proceed as provided for in the Administrative Instructions.

    • d) Where, following an invitation under paragraph a) or otherwise, a part referred to in paragraph a) is, under Rule 20.6b), considered to have been contained in the purported international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2b) and c).

    • e) Where the international filing date has been corrected under paragraph c), the applicant may, in a notice submitted to the receiving Office within one month from the date of the notification under paragraph c), request that the missing part concerned be disregarded, in which case the missing part shall be considered not to have been furnished and the correction of the international filing date under that paragraph shall be considered not to have been made, and the receiving Office shall proceed as provided for in the Administrative Instructions.

  • 20.6 Confirmation of Incorporation by Reference of Elements and Parts

    • a) The applicant may submit to the receiving Office, within the applicable time limit under Rule 20.7, a written notice confirming that an element or part is incorporated by reference in the international application under Rule 4.18, accompanied by:      

      • (i) a sheet or sheets embodying the entire element as contained in the earlier application or embodying the part concerned;

      • (ii) where the applicant has not already complied with Rule 17.1a), b) or (b-bis) in relation to the priority document, a copy of the earlier application as filed;

      • (iii) where the earlier application is not in the language in which the international application is filed, a translation of the earlier application into that language or, where a translation of the international application is required under Rule 12.3a) or 12.4a), a translation of the earlier application into both the language in which the international application is filed and the language of that translation; and

      • (iv) in the case of a part of the description, claims or drawings, an indication as to where that part is contained in the earlier application and, where applicable, in any translation referred to in item (iii).

    • b) Where the receiving Office finds that the requirements of Rule 4.18 and paragraph a) have been complied with and that the element or part referred to in paragraph a) is completely contained in the earlier application concerned, that element or part shall be considered to have been contained in the purported international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office.

    • c) Where the receiving Office finds that a requirement under Rule 4.18 or paragraph a) has not been complied with or that the element or part referred to in paragraph a) is not completely contained in the earlier application concerned, the receiving Office shall proceed as provided for in Rule 20.3b)(i), 20.5b) or 20.5c), as the case may be.

  • 20.7 Time Limit

    • a) The applicable time limit referred to in Rules 20.3a) and b), 20.4, 20.5a), b) and c), and 20.6a) shall be:

      • (i) where an invitation under Rule 20.3a) or 20.5a), as applicable, was sent to the applicant, two months from the date of the invitation;

      • (ii) where no such invitation was sent to the applicant, two months from the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office.

    • b) Where neither a correction under Article 11(2) nor a notice under Rule 20.6(a) confirming the incorporation by reference of an element referred to in Article 11(1)(iii)(d) or (e) is received by the receiving Office prior to the expiration of the applicable time limit under paragraph (a), any such correction or notice received by that Office after the expiration of that time limit but before it sends a notification to the applicant under Rule 20.4(i) shall be considered to have been received within that time limit.

  • 20.8 Incompatibility with National Laws

    • a) If, on October 5, 2005, any of Rules 20.3a)(ii) and b)(ii), 20.5a)(ii) and d), and 20.6 are not compatible with the national law applied by the receiving Office, the Rules concerned shall not apply to an international application filed with that receiving Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.

    • a-bis) Where a missing element or part cannot be incorporated by reference in the international application under Rules 4.18 and 20.6 because of the operation of paragraph a) of this Rule, the receiving Office shall proceed as provided for in Rule 20.3b)(i), 20.5b) or 20.5c), as the case may be. Where the receiving Office proceeds as provided for in Rule 20.5c), the applicant may proceed as provided for in Rule 20.5e).

    • b) If, on October 5, 2005, any of Rules 20.3a)(ii) and b)(ii), 20.5a)(ii) and d), and 20.6 are not compatible with the national law applied by the designated Office, the Rules concerned shall not apply in respect of that Office in relation to an international application in respect of which the acts referred to in Article 22 have been performed before that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.

    • c) Where an element or part is considered to have been incorporated by reference in the international application by virtue of a finding of the receiving Office under Rule 20.6b), but that incorporation by reference does not apply to the international application for the purposes of the procedure before a designated Office because of the operation of paragraph b) of this Rule, the designated Office may treat the application as if the international filing date had been accorded under Rule 20.3b)(i) or 20.5b), or corrected under Rule 20.5c), as the case may be, provided that Rule 82ter.1c) and d) shall apply mutatis mutandis.

Rule 21. Preparation of Copies

  • 21.1 Responsibility of the Receiving Office

    • (a) Where the international application is required to be filed in one copy, the receiving Office shall be responsible for preparing the home copy and the search copy required under Article 12(1).

    • (b) Where the international application is required to be filed in two copies, the receiving Office shall be responsible for preparing the home copy.

    • (c) If the international application is filed in less than the number of copies required under Rule 11.1(b), the receiving Office shall be responsible for the prompt preparation of the number of copies required, and shall have the right to fix a fee for performing that task and to collect such fee from the applicant.

  • 21.2 Certified Copy for the Applicant

    Against payment of a fee, the receiving Office shall furnish to the applicant, on request, certified copies of the international application as filed and of any corrections thereto.

Rule 22. Transmittal of the Record Copy and Translation

  • 22.1 Procedure

    • (a) If the determination under Article 11(1) is positive, and unless prescriptions concerning national security prevent the international application from being treated as such, the receiving Office shall transmit the record copy to the International Bureau. Such transmittal shall be effected promptly after receipt of the international application or, if a check to preserve national security must be performed, as soon as the necessary clearance has been obtained. In any case, the receiving Office shall transmit the record copy in time for it to reach the International Bureau by the expiration of the 13th month from the priority date. If the transmittal is effected by mail, the receiving Office shall mail the record copy not later than 5 days prior to the expiration of the 13th month from the priority date.

    • (b) If the International Bureau has received a copy of the notification under Rule 20.2c) but is not, by the expiration of 13 months from the priority date, in possession of the record copy, it shall remind the receiving Office that it should transmit the record copy to the International Bureau promptly.

    • (c) If the International Bureau has received a copy of the notification under Rule 20.2c) but is not, by the expiration of 14 months from the priority date, in possession of the record copy, it shall notify the applicant and the receiving Office accordingly.

    • (d) After the expiration of 14 months from the priority date, the applicant may request the receiving Office to certify a copy of his international application as being identical with the international application as filed and may transmit such certified copy to the International Bureau.

    • (e) Any certification under paragraph (d) shall be free of charge and may be refused only on any of the following grounds:

      • (i) the copy which the receiving Office has been requested to certify is not identical with the international application as filed;

      • (ii) prescriptions concerning national security prevent the international application from being treated as such;

      • (iii) the receiving Office has already transmitted the record copy to the International Bureau and that Bureau has informed the receiving Office that it has received the record copy.

    • (f) Unless the International Bureau has received the record copy, or until it receives the record copy, the copy certified under paragraph (e) and received by the International Bureau shall be considered to be the record copy.

    • (g) If, by the expiration of the time limit applicable under Article 22, the applicant has performed the acts referred to in that Article but the designated Office has not been informed by the International Bureau of the receipt of the record copy, the designated Office shall inform the International Bureau. If the International Bureau is not in possession of the record copy, it shall promptly notify the applicant and the receiving Office unless it has already notified them under paragraph (c).

    • (h) Where the international application is to be published in the language of a translation furnished under Rule 12.3 or 12.4, that translation shall be transmitted by the receiving Office to the International Bureau together with the record copy under paragraph a) or, if the receiving Office has already transmitted the record copy to the International Bureau under that paragraph, promptly after receipt of the translation.

  • 22.2 [Red: Vervallen.]

  • 22.3 Time Limit under Article 12(3)

    The time limit referred to in Article 12(3) shall be 3 months from the date of the notification sent by the International Bureau to the applicant under Rule 22.1(c) or (g).

Rule 23. Transmittal of the Search Copy, Translation and Sequence Listing

  • 23.1 Procedure

    • a) Where no translation of the international application is required under Rule 12.3a), the search copy shall be transmitted by the receiving Office to the International Searching Authority at the latest on the same day as the record copy is transmitted to the International Bureau unless no search fee has been paid. In the latter case, it shall be transmitted promptly after payment of the search fee.

    • b) Where a translation of the international application is furnished under Rule 12.3, a copy of that translation and of the request, which together shall be considered to be the search copy under Article 12(1), shall be transmitted by the receiving Office to the International Searching Authority, unless no search fee has been paid. In the latter case, a copy of the said translation and of the request shall be transmitted promptly after payment of the search fee.

    • c) Any sequence listing in electronic form which is furnished for the purposes of Rule 13ter but submitted to the receiving Office instead of the International Searching Authority shall be promptly transmitted by that Office to that Authority.

Rule 24. Receipt of the Record Copy by the International Bureau

  • 24.1 [Red: Vervallen.]

  • 24.2 Notification of Receipt of the Record Copy

    • a) The International Bureau shall promptly notify:

      • (i) the applicant,

      • (ii) the receiving Office, and

      • (iii) the International Searching Authority (unless it has informed the International Bureau that it wishes not to be so notified),

      of the fact and the date of receipt of the record copy. The notification shall identify the international application by its number, the international filing date and the name of the applicant, and shall indicate the filing date of any earlier application whose priority is claimed. The notification sent to the applicant shall also contain a list of the designated Offices and, in the case of a designated Office which is responsible for granting regional patents, of the Contracting States designated for such regional patent.

    • b) [Red: Vervallen.]

    • c) If the record copy is received after the expiration of the time limit fixed in Rule 22.3, the International Bureau shall promptly notify the applicant, the receiving Office, and the International Searching Authority, accordingly.

Rule 25. Receipt of the Search Copy by the International Searching Authority

  • 25.1 Notification of Receipt of the Search Copy

    The International Searching Authority shall promptly notify the International Bureau, the applicant, and — unless the International Searching Authority is the same as the receiving Office — the receiving Office, of the fact and the date of receipt of the search copy.

Rule 26. Checking by, and Correcting before, the Receiving Office of Certain Elements of the International Application

  • 26.1 Invitation under Article 14(1)b) to Correct

    The receiving Office shall issue the invitation to correct provided for in Article 14(1)b) as soon as possible, preferably within one month from the receipt of the international application. In the invitation, the receiving Office shall invite the applicant to furnish the required correction, and give the applicant the opportunity to make observations, within the time limit under Rule 26.2.

  • 26.2 Time Limit for Correction

    The time limit referred to in Rule 26.1 shall be two months from the date of the invitation to correct. It may be extended by the receiving Office at any time before a decision is taken.

  • 26.2bis Checking of Requirements Under Article 14(1)a)(i) and (ii)

    • a) For the purposes of Article 14(1)a)(i), if there is more than one applicant, it shall be sufficient that the request be signed by one of them.

    • b) For the purposes of Article 14(1)a)(ii), if there is more than one applicant, it shall be sufficient that the indications required under Rule 4.5a)(ii) and (iii) be provided in respect of one of them who is entitled according to Rule 19.1 to file the international application with the receiving Office.

  • 26.3 Checking of Physical Requirements Under Article 14(1)a)(v)

    • a) Where the international application is filed in a language of publication, the receiving Office shall check:

      • (i) the international application for compliance with the physical requirements referred to in Rule 11 only to the extent that compliance therewith is necessary for the purpose of reasonably uniform international publication;

      • (ii) any translation furnished under Rule 12.3 for compliance with the physical requirements referred to in Rule 11 to the extent that compliance therewith is necessary for the purpose of satisfactory reproduction.

    • b) Where the international application is filed in a language which is not a language of publication, the receiving Office shall check:

      • (i) the international application for compliance with the physical requirements referred to in Rule 11 only to the extent that compliance therewith is necessary for the purpose of satisfactory reproduction;

      • (ii) any translation furnished under Rule 12.3 or 12.4 and the drawings for compliance with the physical requirements referred to in Rule 11 to the extent that compliance therewith is necessary for the purpose of reasonably uniform international publication.

  • 26.3bis Invitation Under Article 14(1)b) to Correct Defects Under Rule 11

    The receiving Office shall not be required to issue the invitation under Article 14(1)b) to correct a defect under Rule 11 where the physical requirements referred to in that Rule are complied with to the extent required under Rule 26.3.

  • 26.3ter Invitation to Correct Defects under Article 3(4)(i)

    • a) Where the abstract or any text matter of the drawings is filed in a language which is different from the language of the description and the claims, the receiving Office shall, unless

      • (i) a translation of the international application is required under Rule 12.3a), or

      • (ii) the abstract or the text matter of the drawings is in the language in which the international application is to be published,

      invite the applicant to furnish a translation of the abstract or the text matter of the drawings into the language in which the international application is to be published. Rules 26.1, 26.2, 26.3, 26.3bis, 26.5 and 29.1 shall apply mutatis mutandis.

    • b) If, on October 1, 1997, paragraph a) is not compatible with the national law applied by the receiving Office, paragraph a) shall not apply to that receiving Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1997. The information received shall be promptly published by the International Bureau in the Gazette.

    • c) Where the request does not comply with Rule 12.1c), the receiving Office shall invite the applicant to file a translation so as to comply with that Rule. Rules 3, 26.1, 26.2, 26.5 and 29.1 shall apply mutatis mutandis.

    • d) If, on October 1, 1997, paragraph c) is not compatible with the national law applied by the receiving Office, paragraph c) shall not apply to that receiving Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1997. The information received shall be promptly published by the International Bureau in the Gazette.

  • 26.4 Procedure

    A correction of the request offered to the receiving Office may be stated in a letter addressed to that Office if the correction is of such a nature that it can be transferred from the letter to the request without adversely affecting the clarity and the direct reproducibility of the sheet on to which the correction is to be transferred; otherwise, and in the case of a correction of any element of the international application other than the request, the applicant shall be required to submit a replacement sheet embodying the correction and the letter accompanying the replacement sheet shall draw attention to the differences between the replaced sheet and the replacement sheet.

  • 26.5 Decision of the Receiving Office

    The receiving Office shall decide whether the applicant has submitted the correction within the applicable time limit under Rule 26.2, and, if the correction has been submitted within that time limit, whether the international application so corrected is or is not to be considered withdrawn, provided that no international application shall be considered withdrawn for lack of compliance with the physical requirements referred to in Rule 11 if it complies with those requirements to the extent necessary for the purpose of reasonably uniform international publication.

Rule 26bis. Correction or Addition of Priority Claim

  • 26bis.1 Correction or Addition of Priority Claim

    • a) The applicant may correct a priority claim or add a priority claim to the request by a notice submitted to the receiving Office or the International Bureau within a time limit of 16 months from the 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, provided that 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.

    • b) Any notice referred to in paragraph a) received by the receiving Office or the International Bureau after the applicant has made a request for early publication under Article 21(2)b) shall be considered not to have been submitted, unless that request is withdrawn before the technical preparations for international publication have been completed.

    • c) 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 shall be computed from the priority date as so changed.

  • 26bis.2 Defects in Priority Claims

    • a) Where the receiving Office or, if the receiving Office fails to do so, the International Bureau, finds in relation to a priority claim:

      • (i) that the international application has an international filing date which is later than the date on which the priority period expired and that a request for restoration of the right of priority under Rule 26bis.3 has not been submitted;

      • (ii) that the priority claim does not comply with the requirements of Rule 4.10; or

      • (iii) that any indication in the priority claim is inconsistent with the corresponding indication appearing in the priority document;

      the receiving Office or the International Bureau, as the case may be, shall invite the applicant to correct the priority claim. In the case referred to in item (i), where the international filing date is within two months from the date on which the priority period expired, the receiving Office or the International Bureau, as the case may be, shall also notify the applicant of the possibility of submitting a request for the restoration of the right of priority in accordance with Rule 26bis.3, unless the receiving Office has notified the International Bureau under Rule 26bis.3j) of the incompatibility of Rule 26bis.3a) to (i) with the national law applied by that Office.

    • b) If the applicant does not, before the expiration of the time limit under Rule 26bis.1a), submit a notice correcting the priority claim, that priority claim shall, subject to paragraph c), for the purposes of the procedure under the Treaty, be considered not to have been made (“considered void”) and the receiving Office or the International Bureau, as the case may be, shall so declare and shall inform the applicant accordingly. Any notice correcting the priority claim which is received before the receiving Office or the International Bureau, as the case may be, so declares and not later than one month after the expiration of that time limit shall be considered to have been received before the expiration of that time limit.

    • c) A priority claim shall not be considered void only because:

      • (i) the indication of the number of the earlier application referred to in Rule 4.10a)(ii) is missing;

      • (ii) an indication in the priority claim is inconsistent with the corresponding indication appearing in the priority document; or

      • (iii) the international application has an international filing date which is later than the date on which the priority period expired, provided that the international filing date is within the period of two months from that date.

    • d) Where the receiving Office or the International Bureau has made a declaration under paragraph b) or where the priority claim has not been considered void only because paragraph c) applies, the International Bureau shall publish, together with the international application, information concerning the priority claim as prescribed by the Administrative Instructions, as well as any information submitted by the applicant concerning such priority claim which is received by the International Bureau prior to the completion of the technical preparations for international publication. Such information shall be included in the communication under Article 20 where the international application is not published by virtue of Article 64(3).

    • e) Where the applicant wishes to correct or add a priority claim but the time limit under Rule 26bis.1 has expired, the applicant may, prior to the expiration of 30 months from the priority date and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, request the International Bureau to publish information concerning the matter, and the International Bureau shall promptly publish such information.

  • 26bis.3 Restoration of Right of Priority by Receiving Office

    • a) Where the international application has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the receiving Office shall, on the request of the applicant, and subject to paragraphs b) to g) of this Rule, restore the right of priority if the Office finds that a criterion applied by it (“criterion for restoration”) is satisfied, namely, that the failure to file the international application within the priority period:

      • (i) occurred in spite of due care required by the circumstances having been taken; or

      • (ii) was unintentional.

      Each receiving Office shall apply at least one of those criteria and may apply both of them.

    • b) A request under paragraph a) shall:

      • (i) be filed with the receiving Office within the time limit applicable under paragraph e);

      • (ii) state the reasons for the failure to file the international application within the priority period; and

      • (iii) preferably be accompanied by any declaration or other evidence required under paragraph f).

    • c) Where a priority claim in respect of the earlier application is not contained in the international application, the applicant shall submit, within the time limit applicable under paragraph e), a notice under Rule 26bis.1a) adding the priority claim.

    • d) The submission of a request under paragraph (a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a fee for requesting restoration, payable within the time limit applicable under paragraph (e). The amount of that fee, if any, shall be fixed by the receiving Office. The time limit for payment of the fee may be extended, at the option of the receiving Office, for a period of up to two months from the expiration of the time limit applicable under paragraph (e).

    • e) The time limit referred to in paragraphs b)(i), c) and d) shall be two months from the date on which the priority period expired, provided that, where the applicant makes a request for early publication under Article 21(2)b), any request under paragraph a) or any notice referred to in paragraph c) submitted, or any fee referred to in paragraph d) paid, after the technical preparations for international publication have been completed shall be considered as not having been submitted or paid in time.

    • f) The receiving Office may require that a declaration or other evidence in support of the statement of reasons referred to in paragraph (b)(ii) be filed with it within a time limit which shall be reasonable under the circumstances.

    • g) The receiving Office shall not refuse, totally or in part, a request under paragraph a) without giving the applicant the opportunity to make observations on the intended refusal within a time limit which shall be reasonable under the circumstances. Such notice of intended refusal by the receiving Office may be sent to the applicant together with any invitation to file a declaration or other evidence under paragraph f).

    • h) The receiving Office shall promptly:

      • (i) notify the International Bureau of the receipt of a request under paragraph a);

      • (ii) make a decision upon the request;

      • (iii) notify the applicant and the International Bureau of its decision and the criterion for restoration upon which the decision was based;

      • (iv) subject to paragraph (h-bis), transmit to the International Bureau all documents received from the applicant relating to the request under paragraph (a) (including a copy of the request itself, any statement of reasons referred to in paragraph (b)(ii) and any declaration or other evidence referred to in paragraph (f)).

    • h-bis) The receiving Office shall, upon a reasoned request by the applicant or on its own decision, not transmit documents or parts thereof received in relation to the request under paragraph (a), if it finds that:

      • (i) this document or part thereof does not obviously serve the purpose of informing the public about the international application;

      • (ii) publication or public access to any such document or part thereof would clearly prejudice the personal or economic interests of any person; and

      • (iii) there is no prevailing public interest to have access to that document or part thereof.

        Where the receiving Office decides not to transmit documents or parts thereof to the International Bureau, it shall notify the International Bureau accordingly.

    • i) Each receiving Office shall inform the International Bureau of which of the criteria for restoration it applies and of any subsequent changes in that respect. The International Bureau shall promptly publish such information in the Gazette.

    • j) If, on October 5, 2005, paragraphs a) to (i) are not compatible with the national law applied by the receiving Office, those paragraphs shall not apply in respect of that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.

Rule 26ter. Correction or Addition of Declarations Under Rule 4.17

  • 26ter.1 Correction or Addition of Declarations

    The applicant may correct or add to the request any declaration referred to in Rule 4.17 by a notice submitted to the International Bureau within a time limit of 16 months from the priority date, provided that any notice which is received by the International Bureau after the expiration of that time limit shall be considered to have been received on the last day of that time limit if it reaches it before the technical preparations for international publication have been completed.

  • 26ter.2 Processing of Declarations

    • a) Where the receiving Office or the International Bureau finds that any declaration referred to in Rule 4.17 is not worded as required or, in the case of the declaration of inventorship referred to in Rule 4.17(iv), is not signed as required, the receiving Office or the International Bureau, as the case may be, may invite the applicant to correct the declaration within a time limit of 16 months from the priority date.

    • b) Where the International Bureau receives any declaration or correction under Rule 26ter.1 after the expiration of the time limit under Rule 26ter.1, the International Bureau shall notify the applicant accordingly and shall proceed as provided for in the Administrative Instructions.

Rule 27. Lack of Payment of Fees

  • 27.1 Fees

    • a) For the purposes of Article 14(3)a), “fees prescribed under Article 3(4)(iv)” means: the transmittal fee (Rule 14), the international filing fee (Rule 15.1), the search fee (Rule 16), and, where required, the late payment fee (Rule 16bis.2).

    • b) For the purposes of Article 14(3)a) and b), “the fee prescribed under Article 4(2)” means the international filing fee (Rule 15.1) and, where required, the late payment fee (Rule 16bis.2).

Rule 28. Defects Noted by the International Bureau

  • 28.1 Note on Certain Defects

    • (a) If, in the opinion of the International Bureau, the international application contains any of the defects referred to in Article 14(l)(a)(i), (ii) or (v), the International Bureau shall bring such defects to the attention of the receiving Office.

    • (b) The receiving Office shall, unless it disagrees with the said opinion, proceed as provided in Article 14(1) and Rule 26.

Rule 29. International Applications Considered Withdrawn

  • 29.1 Finding by Receiving Office

    If the receiving Office declares, under Article 14(1)(b) and Rule 26.5 (failure to correct certain defects), or under Article 14(3)(a) (failure to pay the prescribed fees under Rule 27.1(a)), or under Article 14(4) (later finding of non-compliance with the requirements listed in items (i) to (iii) of Article 11(1)), or under Rule 12.3(d) or 12.4(d) (failure to furnish a required translation or, where applicable, to pay a late furnishing fee), or under Rule 92.4(g)(i) (failure to furnish the original of a document), that the international application is considered withdrawn:

    • (i) the receiving Office shall transmit the record copy (unless already transmitted), and any correction offered by the applicant, to the International Bureau;

    • (ii) the receiving Office shall promptly notify both the applicant and the International Bureau of the said declaration, and the International Bureau shall in turn notify each designated Office which has already been notified of its designation;

    • (iii) the receiving Office shall not transmit the search copy as provided in Rule 23, or, if such copy has already been transmitted, it shall notify the International Searching Authority of the said declaration;

    • (iv) the International Bureau shall not be required to notify the applicant of the receipt of the record copy;

    • (v) no international publication of the international application shall be effected if the notification of the said declaration transmitted by the receiving Office reaches the International Bureau before the technical preparations for international publication have been completed.

  • 29.2 [Red: Vervallen.]

  • 29.3 Calling Certain Facts to the Attention of the Receiving Office

    If the International Bureau or the International Searching Authority considers that the receiving Office should make a finding under Article 14(4), it shall call the relevant facts to the attention of the receiving Office.

  • 29.4 Notification of Intent to Make Declaration under Article 14(4)

    • a) Before the receiving Office issues any declaration under Article 14(4), it shall notify the applicant of its intent to issue such declaration and the reasons therefor. The applicant may, if he disagrees with the tentative finding of the receiving Office, submit arguments to that effect within two months from the date of the notification.

    • b) Where the receiving Office intends to issue a declaration under Article 14(4) in respect of an element mentioned in Article 11(1)(iii)(d) or (e), the receiving Office shall, in the notification referred to in paragraph (a) of this Rule, invite the applicant to confirm in accordance with Rule 20.6(a) that the element is incorporated by reference under Rule 4.18. For the purposes of Rule 20.7(a)(i), the invitation sent to the applicant under this paragraph shall be considered to be an invitation under Rule 20.3(a)(ii).

    • c) Paragraph (b) shall not apply where the receiving Office has informed the International Bureau in accordance with Rule 20.8(a) of the incompatibility of Rules 20.3(a)(ii) and (b)(ii) and 20.6 with the national law applied by that Office.

Rule 30. Time Limit under Article 14(4)

  • 30.1 Time Limit

    The time limit referred to in Article 14(4) shall be 4 months from the international filing date.

Rule 31. Copies Required under Article 13

  • 31.1 Request for Copies

    • (a) Requests under Article 13(1) may relate to all, some kinds of, or individual international applications in which the national Office making the request is designated. Requests for all or some kinds of such international applications must be renewed for each year by means of a notification addressed by that Office before November 30 of the preceding year to the International Bureau.

    • (b) Requests under Article 13(2) (b) shall be subject to the payment of a fee covering the cost of preparing and mailing the copy.

  • 31.2 Preparation of Copies

    The preparation of copies required under Article 13 shall be the responsibility of the International Bureau.

Rule 32. Extension of Effects of International Application to Certain Successor States

  • 32.1 Extension of International Application to Successor State

    • a) The effects of any international application whose international filing date falls in the period defined in paragraph b) are extended to a State (“the successor State”) whose territory was, before the independence of that State, part of the territory of a Contracting State designated in the international application which subsequently ceased to exist (“the predecessor State”), provided that the successor State has become a Contracting State through the deposit, with the Director General, of a declaration of continuation the effect of which is that the Treaty is applied by the successor State.

    • b) The period referred to in paragraph a) starts on the day following the last day of the existence of the predecessor State and ends two months after the date on which the declaration referred to in paragraph a) was notified by the Director General to the Governments of the States party to the Paris Convention for the Protection of Industrial Property. However, where the date of independence of the successor State is earlier than the date of the day following the last day of the existence of the predecessor State, the successor State may declare that the said period starts on the date of its independence; such a declaration shall be made together with the declaration referred to in paragraph a) and shall specify the date of independence.

    • c) Information on any international application whose filing date falls within the applicable period under paragraph b) and whose effect is extended to the successor State shall be published by the International Bureau in the Gazette.

  • 32.2 Effects of Extension to Successor State

    • a) Where the effects of the international application are extended to the successor State in accordance with Rule 32.1,

      • i) the successor State shall be considered as having been designated in the international application, and

      • ii) the applicable time limit under Article 22 or 39(1) in relation to that State shall be extended until the expiration of at least six months from the date of the publication of the information under Rule 32.1c).

    • b) The successor State may fix a time limit which expires later than that provided in paragraph a)(ii). The International Bureau shall publish information on such time limits in the Gazette.

Rule 33. Relevant Prior Art for the International Search

  • 33.1 Relevant Prior Art for the International Search

    • (a) For the purposes of Article 15(2), relevant prior art shall consist of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) and which is capable of being of assistance in determining: that the claimed invention is or is not new and that it does or does not involve an inventive step (i.e., that it is or is not obvious), provided that the making available to the public occurred prior to the international filing date.

    • (b) When any written disclosure refers to an oral disclosure, use, exhibition, or other means whereby the contents of the written disclosure were made available to the public, and such making available to the public occurred on a date prior to the international filing date, the international search report shall separately mention that fact and the date on which it occurred if the making available to the public of the written disclosure occurred on a date which is the same as, or later than, the international filing date.

    • (c) Any published application or any patent whose publication date is the same as, or later than, but whose filing date, or, where applicable, claimed priority date, is earlier than the international filing date of the international application searched, and which would constitute relevant prior art for the purposes of Article 15(2) had it been published prior to the international filing date, shall be specially mentioned in the international search report.

  • 33.2 Fields to be Covered by the International Search

    • (a) The international search shall cover all those technical fields, and shall be carried out on the basis of all those search files, which may contain material pertinent to the invention.

    • (b) Consequently, not only shall the art in which the invention is classifiable be searched but also analogous arts regardless of where classified.

    • (c) The question what arts are, in any given case, to be regarded as analogous shall be considered in the light of what appears to be the necessary essential function or use of the invention and not only the specific functions expressly indicated in the international application.

    • (d) The international search shall embrace all subject matter that is generally recognized as equivalent to the subject matter of the claimed invention for all or certain of its features, even though, in its specifics, the invention as described in the international application is different.

  • 33.3 Orientation of the International Search

    • (a) International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any) and with particular emphasis on the inventive concept towards which the claims are directed.

    • (b) In so far as possible and reasonable, the international search shall cover the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended.

Rule 34. Minimum Documentation

  • 34.1 Definition

    • (a) The definitions contained in Article 2 (i) and (ii) shall not apply for the purposes of this Rule.

    • (b) The documentation referred to in Article 15(4) (“minimum documentation”) shall consist of:

      • (i) the “national patent documents” as specified in paragraph (c),

      • (ii) the published international (PCT) applications, the published regional applications for patents and inventors' certificates, and the published regional patents and inventors' certificates,

      • (iii) such other published items of non-patent literature as the International Searching Authorities shall agree upon and which shall be published in a list by the International Bureau when agreed upon for the first time and whenever changed.

    • (c) Subject to paragraphs (d) and (e), the “national patent documents” shall be the following:

      • (i) the patents issued in and after 1920 by France, the former Reichspatentamt of Germany, Japan, the former Soviet Union, Switzerland (in the French and German languages only), the United Kingdom, and the United States of America,

      • (ii) The patents issued by the Federal Republic of Germany, the People’s Republic of China, the Republic of Korea and the Russian Federation,

      • (iii) the patent applications, if any, published in and after 1920 in the countries referred to in items (i) and (ii),

      • (iv) the inventors' certificates issued by the former Soviet Union,

      • (v) the utility certificates issued by, and the published applications for utility certificates of, France,

      • (vi) such patents issued by, and such patent applications published in, any other country after 1920 as are in the English, French, German or Spanish language and in which no priority is claimed, provided that the national Office of the interested country sorts out these documents and places them at the disposal of each International Searching Authority.

    • (d) Where an application is republished once (for example, an Offenlegungschrift as an Auslegeschrift) or more than once, no International Searching Authority shall be obliged to keep all versions in its documentation; consequently, each such Authority shall be entitled not to keep more than one version. Furthermore, where an application is granted and is issued in the form of a patent or a utility certificate (France), no International Searching Authority shall be obliged to keep both the application and the patent or utility certificate (France) in its documentation; consequently, each such Authority shall be entitled to keep either the application only or the patent or utility certificate (France) only.

    • (e) Any International Searching Authority whose official language, or one of whose official languages, is not Chinese, Japanese, Korean, Russian or Spanish is entitled not to include in its documentation those patent documents of the People’s Republic of China, Japan, the Republic of Korea, the Russian Federation and the former Soviet Union as well as those patent documents in the Spanish language, respectively, for which no abstracts in the English language are generally available. English abstracts becoming generally available after the date of entry into force of these Regulations shall require the inclusion of the patent documents to which the abstracts refer no later than six months after such abstracts become generally available. In case of the interruption of abstracting services in English in technical fields in which English abstracts were formerly generally available, the Assembly shall take appropriate measures to provide for the prompt restoration of such services in the said fields.

    • (f) For the purposes of this Rule, applications which have only been laid open for public inspection are not considered published applications.

Rule 35. The Competent International Searching Authority

  • 35.1 When Only One International Searching Authority is Competent

    Each receiving Office shall, in accordance with the terms of the applicable agreement referred to in Article 16(3) (b), inform the International Bureau which International Searching Authority is competent for the searching of the international applications filed with it, and the International Bureau shall promptly publish such information.

  • 35.2 When Several International Searching Authorities are Competent

    • (a) Any receiving Office may, in accordance with the terms of the applicable agreement referred to in Article 16(3)(b), specify several International Searching Authorities:

      • (i) by declaring all of them competent for any international application filed with it, and leaving the choice to the applicant, or

      • (ii) by declaring one or more competent for certain kinds of international applications filed with it, and declaring one or more others competent for other kinds of international applications filed with it, provided that, for those kinds of international applications for which several International Searching Authorities are declared to be competent, the choice shall be left to the applicant.

    • (b) Any receiving Office availing itself of the faculty provided in; paragraph (a) shall promptly inform the International Bureau, and the International Bureau shall promptly publish such information.

  • 35.3 When the International Bureau Is Receiving Office Under Rule 19.1(a)(iii)

    • a) Where the international application is filed with the International Bureau as receiving Office under Rule 19.1(a)(iii), an International Searching Authority shall be competent for the searching of that international application if it would have been competent had that international application been filed with a receiving Office competent under Rule 19.1(a)(i) or (ii), (b) or (c) or Rule 19.2 (i).

    • b) Where two or more International Searching Authorities are competent under paragraph (a), the choice shall be left to the applicant.

    • c) Rules 35.1 and 35.2 shall not apply to the International Bureau as receiving Office under Rule 19.1(a)(iii).

Rule 36. Minimum Requirements for International Searching Authorities

  • 36.1 Definition of Minimum Requirements

    The minimum requirements referred to in Article 16(3)c) shall be the following:

    • (i) the national Office or intergovernmental organization must have at least 100 full-time employees with sufficient technical qualifications to carry out searches;

    • (ii) that Office or organization must have in its possession, or have access to, at least the minimum documentation referred to in Rule 34, properly arranged for search purposes, on paper, in microform or stored on electronic media;

    • (iii) that Office or organization must have a staff which is capable of searching the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated;

    • (iv) that Office or organization must have in place a quality management system and internal review arrangements in accordance with the common rules of international search;

    • (v) that Office or organization must hold an appointment as an International Preliminary Examining Authority.

Rule 37. Missing or Defective Title

  • 37.1 Lack of Title

    If the international application does not contain a title and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.

  • 37.2 Establishment of Title

    If the international application does not contain a title and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish a title, or if the said Authority finds that the title does not comply with Rule 4.3, it shall itself establish a title. Such title shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1b) and the International Searching Authority so wishes, in the language of that translation.

Rule 38. Missing or Defective Abstract

  • 38.1 Lack of Abstract

    If the international application does not contain an abstract and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.

  • 38.2 Establishment of Abstract

    If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall itself establish an abstract. Such abstract shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1b) and the International Searching Authority so wishes, in the language of that translation.

  • 38.3 Modification of Abstract

    The applicant may, until the expiration of one month from the date of mailing of the international search report, submit to the International Searching Authority:

    • (i) proposed modifications of the abstract; or

    • (ii) where the abstract has been established by the Authority, proposed modifications of, or comments on, that abstract, or both modifications and comments;

    and the Authority shall decide whether to modify the abstract accordingly. Where the Authority modifies the abstract, it shall notify the modification to the International Bureau.

Rule 39. Subject Matter under Article 17(2) (a) (i)

  • 39.1 Definition

    No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following:

    • (i) scientific and mathematical theories,

    • (ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,

    • (iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,

    • (iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,

    • (v) mere presentations of information,

    • (vi) computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs.

Rule 40. Lack of Unity of Invention (International Search)

  • 40.1 Invitation to Pay Additional Fees; Time Limit

    The invitation to pay additional fees provided for in Article 17(3)(a) shall:

    • (i) specify the reasons for which the international application is not considered as complying with the requirement of unity of invention;

    • (ii) invite the applicant to pay the additional fees within one month from the date of the invitation, and indicate the amount of those fees to be paid; and

    • (iii) invite the applicant to pay, where applicable, the protest fee referred to in Rule 40.2(e) within one month from the date of the invitation, and indicate the amount to be paid.

  • 40.2 Additional Fees

    • a) The amount of the additional fees due for searching under Article 17(3)(a) shall be determined by the competent International Searching Authority.

    • b) The additional fees due for searching under Article 17(3)(a) shall be payable direct to the International Searching Authority.

    • c) Any applicant may pay the additional fees under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the amount of the required additional fees is excessive. Such protest shall be examined by a review body constituted in the framework of the International Searching Authority, which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fees. On the request of the applicant, the text of both the protest and the decision thereon shall be notified to the designated Offices together with the international search report. The applicant shall submit any translation thereof with the furnishing of the translation of the international application required under Article 22.

    • d) The membership of the review body referred to in paragraph (c) may include, but shall not be limited to, the person who made the decision which is the subject of the protest.

    • e) The examination of a protest referred to in paragraph (c) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a protest fee. Where the applicant has not, within the time limit under Rule 40.1(iii), paid any required protest fee, the protest shall be considered not to have been made and the International Searching Authority shall so declare. The protest fee shall be refunded to the applicant where the review body referred to in paragraph (c) finds that the protest was entirely justified.

Rule 41. Taking into Account Results of Earlier Search

  • 41.1 Taking into Account Results of Earlier Search

    Where the applicant has, under Rule 4.12, requested the International Searching Authority to take into account the results of an earlier search and has complied with Rule 12bis.1 and:

    • (ii) the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, the International Searching Authority shall, to the extent possible, take those results into account in carrying out the international search;

    • (ii) the earlier search was carried out by another International Searching Authority, or by an Office other than that which is acting as the International Searching Authority, the International Searching Authority may take those results into account in carrying out the international search.

Rule 42. Time Limit for International Search

  • 42.1 Time Limit for International Search

    The time limit for establishing the international search report or the declaration referred to in Article 17(2) (a) shall be 3 months from the receipt of the search copy by the International Searching Authority, or 9 months from the priority date, whichever time limit expires later.

Rule 43. The International Search Report

  • 43.1 Identifications

    The international search report shall identify the International Searching Authority which established it by indicating the name of such Authority, and the international application by indicating the international application number, the name of the applicant, and the international filing date.

  • 43.2 Dates

    The international search report shall be dated and shall indicate the date on which the international search was actually completed. It shall also indicate the filing date of any earlier application whose priority is claimed or, if the priority of more than one earlier application is claimed, the filing date of the earliest among them.

  • 43.3 Classification

    • (a) The international search report shall contain the classification of the subject matter at least according to the International Patent Classification.

    • (b) Such classification shall be effected by the International Searching Authority.

  • 43.4 Language

    Every international search report and any declaration made under Article 17(2)a) shall be in the language in which the international application to which it relates is to be published, provided that:

    • (i) if a translation of the international application into another language was transmitted under Rule 23.1b) and the International Searching Authority so wishes, the international search report and any declaration made under Article 17(2)a) may be in the language of that translation;

    • (ii) if the international application is to be published in the language of a translation furnished under Rule 12.4 which is not accepted by the International Searching Authority and that Authority so wishes, the international search report and any declaration made under Article 17(2)a) may be in a language which is both a language accepted by that Authority and a language of publication referred to in Rule 48.3a).

  • 43.5 Citations

    • (a) The international search report shall contain the citations of the documents considered to be relevant.

    • (b) The method of identifying any cited document shall be regulated by the Administrative Instructions.

    • (c) Citations of particular relevance shall be specially indicated.

    • (d) Citations which are not relevant to all the claims shall be cited in relation to the claim or claims to which they are relevant.

    • (e) If only certain passages of the cited document are relevant or particularly relevant, they shall be identified, for example, by indicating the page, the column, or the lines, where the passage appears. If the entire document is relevant but some passages are of particular relevance, such passages shall be identified unless such identification is not practicable.

  • 43.6 Fields Searched

    • (a) The international search report shall list the classification identification of the fields searched. If that identification is effected on the basis of a classification other than the International Patent Classification, the International Searching Authority shall publish the classification used.

    • (b) If the international search extended to patents, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, utility certificates of addition, or published applications for any of those kinds of protection, of States, periods, or languages, not included in the minimum documentation as defined in Rule 34, the international search report shall, when practicable, identify the kinds of documents, the States, the periods, and the languages to which it extended. For the purposes of this paragraph, Article 2 (ii) shall not apply.

    • (c) If the international search was based on, or was extended to, any electronic data base, the international search report may indicate the name of the data base and, where considered useful to others and practicable, the search terms used.

  • 43.6bis Consideration of Rectifications of Obvious Mistakes

    • a) A rectification of an obvious mistake that is authorized under Rule 91.1 shall, subject to paragraph b), be taken into account by the International Searching Authority for the purposes of the international search and the international search report shall so indicate.

    • b) A rectification of an obvious mistake need not be taken into account by the International Searching Authority for the purposes of the international search if it is authorized by or notified to that Authority, as applicable, after it has begun to draw up the international search report, in which case the report shall, if possible, so indicate, failing which the International Searching Authority shall notify the International Bureau accordingly and the International Bureau shall proceed as provided for in the Administrative Instructions.

  • 43.7 Remarks Concerning Unity of Invention

    If the applicant paid additional fees for the international search, the international search report shall so indicate. Furthermore, where the international search was made on the main invention only or on less than all the inventions (Article 17(3)(a)), the international search report shall indicate what parts of the international application were and what parts were not searched.

  • 43.8 Authorized Officer

    The international search report shall indicate the name of the officer of the International Searching Authority responsible for that report.

  • 43.9 Additional Matter

    The international search report shall contain no matter other than that specified in Rules 33.1b) and c), 43.1 to 43.3, 43.5 to 43.8, and 44.2, and the indication referred to in Article 17(2)b), provided that the Administrative Instructions may permit the inclusion in the international search report of any additional matter specified in the Administrative Instructions. The international search report shall not contain, and the Administrative Instructions shall not permit the inclusion of, any expressions of opinion, reasoning, arguments, or explanations.

  • 43.10 Form

    The physical requirements as to the form of the international search report shall be prescribed by the Administrative Instructions.

Rule 43bis. Written Opinion of the International Searching Authority

  • 43bis.1 Written Opinion

    • a) Subject to Rule 69.1(b-bis), the International Searching Authority shall, at the same time as it establishes the international search report or the declaration referred to in Article 17(2)(a), establish a written opinion as to:

      • (i) whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable;

      • (ii) whether the international application complies with the requirements of the Treaty and these Regulations in so far as checked by the International Searching Authority.

      The written opinion shall also be accompanied by such other observations as these Regulations provide for.

    • b) For the purposes of establishing the written opinion, Articles 33(2) to (6) and 35(2) and (3) and Rules 43.4, 43.6bis, 64, 65, 66.1e), 66.7, 67, 70.2b) and d), 70.3, 70.4(ii), 70.5a), 70.6 to 70.10, 70.12, 70.14 and 70.15a) shall apply mutatis mutandis.

    • c) The written opinion shall contain a notification informing the applicant that, if a demand for international preliminary examination is made, the written opinion shall, under Rule 66.1bisa) but subject to Rule 66.1bisb), be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2a), in which case the applicant is invited to submit to that Authority, before the expiration of the time limit under Rule 54bis.1a), a written reply together, where appropriate, with amendments.

Rule 44. Transmittal of the International Search Report, Written Opinion, Etc.

  • 44.1 Copies of Report or Declaration and Written Opinion

    The International Searching Authority shall, on the same day, transmit one copy of the international search report or of the declaration referred to in Article 17(2)(a), and one copy of the written opinion established under Rule 43bis.1 to the International Bureau and one copy to the applicant.

  • 44.2 Title or Abstract

    The international search report shall either state that the International Searching Authority approves the title and the abstract as submitted by the applicant or be accompanied by the text of the title and/or abstract as established by the International Searching Authority under Rules 37 and 38.

  • 44.3 Copies of Cited Documents

    • (a) The request referred to in Article 20(3) may be presented any time during 7 years from the international filing date of the international application to which the international search report relates.

    • (b) The International Searching Authority may require that the party (applicant or designated Office) presenting the request pay to it the cost of preparing and mailing the copies. The level of the cost of preparing copies shall be provided for in the agreements referred to in Article 16(3) (b) between the International Searching Authorities and the International Bureau.

    • (c) [Red: Vervallen.]

    • (d) Any International Searching Authority may perform the obligations referred to in paragraphs (a) and (b) through another agency responsible to it.

Rule 44bis. International Preliminary Report on Patentability by the International Searching Authority

  • 44bis.1 Issuance of Report; Transmittal to the Applicant

    • a) Unless an international preliminary examination report has been or is to be established, the International Bureau shall issue a report on behalf of the International Searching Authority (in this Rule referred to as “the report”) as to the matters referred to in Rule 43bis.1a). The report shall have the same contents as the written opinion established under Rule 43bis.1.

    • b) The report shall bear the title “international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty)” together with an indication that it is issued under this Rule by the International Bureau on behalf of the International Searching Authority.

    • c) The International Bureau shall promptly transmit one copy of the report issued under paragraph a) to the applicant.

  • 44bis.2 Communication to Designated Offices

    • a) Where a report has been issued under Rule 44bis.1, the International Bureau shall communicate it to each designated Office in accordance with Rule 93bis.1 but not before the expiration of 30 months from the priority date.

    • b) Where the applicant makes an express request to a designated Office under Article 23(2), the International Bureau shall communicate a copy of the written opinion established by the International Searching Authority under Rule 43bis.1 to that Office promptly upon the request of that Office or of the applicant.

  • 44bis.3 Translation for Designated Offices

    • a) Any designated State may, where a report has been issued under Rule 44bis.1 in a language other than the official language, or one of the official languages, of its national Office, require a translation of the report into English. Any such requirement shall be notified to the International Bureau, which shall promptly publish it in the Gazette.

    • b) If a translation is required under paragraph a), it shall be prepared by or under the responsibility of the International Bureau.

    • c) The International Bureau shall transmit a copy of the translation to any interested designated Office and to the applicant at the same time as it communicates the report to that Office.

    • d) In the case referred to in Rule 44bis.2b), the written opinion established under Rule 43bis.1 shall, upon request of the designated Office concerned, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to the designated Office concerned within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.

  • 44bis.4 Observations on the Translation

    The applicant may make written observations as to the correctness of the translation referred to in Rule 44bis.3b) or d) and shall send a copy of the observations to each of the interested designated Offices and to the International Bureau.

Rule 44ter. Confidential Nature of Written Opinion, Report, Translation and Observations [Vervallen per 01-07-2014]

Rule 45. Translation of the International Search Report

  • 45.1 Languages

    International search reports and declarations referred to in Article 17(2) (a) shall, when not in English, be translated into English.

Rule 45bis. Supplementary International Searches

  • 45bis.1 Supplementary Search Request

    • a) The applicant may, at any time prior to the expiration of 19 months from the priority date, request that a supplementary international search be carried out in respect of the international application by an International Searching Authority that is competent to do so under Rule 45bis.9. Such requests may be made in respect of more than one such Authority.

    • b) A request under paragraph (a) (“supplementary search request”) shall be submitted to the International Bureau and shall indicate:

      • (i) the name and address of the applicant and of the agent (if any), the title of the invention, the international filing date and the international application number;

      • (ii) the International Searching Authority that is requested to carry out the supplementary international search (“Authority specified for supplementary search”); and

      • (iii) where the international application was filed in a language which is not accepted by that Authority, whether any translation furnished to the receiving Office under Rule 12.3 or 12.4 is to form the basis of the supplementary international search.

    • c) The supplementary search request shall, where applicable, be accompanied by:

      • (i) where neither the language in which the international application was filed nor that in which a translation (if any) has been furnished under Rule 12.3 or 12.4 is accepted by the Authority specified for supplementary search, a translation of the international application into a language which is accepted by that Authority;

      • (ii) preferably, a copy of a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, if required by the Authority specified for supplementary search.

    • d) Where the International Searching Authority has found that the international application does not comply with the requirement of unity of invention, the supplementary search request may contain an indication of the wish of the applicant to restrict the supplementary international search to one of the inventions as identified by the International Searching Authority other than the main invention referred to in Article 17(3)(a).

    • e) The supplementary search request shall be considered not to have been submitted, and the International Bureau shall so declare:

      • (i) if it is received after the expiration of the time limit referred to in paragraph (a); or

      • (ii) if the Authority specified for supplementary search has not stated, in the applicable agreement under Article 16(3)(b), its preparedness to carry out such searches or is not competent to do so under Rule 45bis.9(b).

  • 45bis.2 Supplementary Search Handling Fee

    • a) The supplementary search request shall be subject to the payment of a fee for the benefit of the International Bureau (“supplementary search handling fee”) as set out in the Schedule of Fees.

    • b) The supplementary search handling fee shall be paid in the currency in which the fee is set out in the Schedule of Fees or in any other currency prescribed by the International Bureau. The amount in such other currency shall be the equivalent, in round figures, as established by the International Bureau, of the amount as set out in the Schedule of Fees, and shall be published in the Gazette.

    • c) The supplementary search handling fee shall be paid to the International Bureau within one month from the date of receipt of the supplementary search request. The amount payable shall be the amount applicable on the date of payment.

    • d) The International Bureau shall refund the supplementary search handling fee to the applicant if, before the documents referred to in Rule 45bis.4(e)(i) to (iv) are transmitted to the Authority specified for supplementary search, the international application is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or is considered not to have been submitted under Rule 45bis.1(e).

  • 45bis.3 Supplementary Search Fee

    • a) Each International Searching Authority carrying out supplementary international searches may require that the applicant pay a fee (“supplementary search fee”) for its own benefit for carrying out such a search.

    • b) The supplementary search fee shall be collected by the International Bureau. Rules 16.1(b) to (e) shall apply mutatis mutandis.

    • c) As to the time limit for payment of the supplementary search fee and the amount payable, the provisions of Rule 45bis.2(c) shall apply mutatis mutandis.

    • d) The International Bureau shall refund the supplementary search fee to the applicant if, before the documents referred to in Rule 45bis.4(e)(i) to (iv) are transmitted to the Authority specified for supplementary search, the international application is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or is considered not to have been submitted under Rules 45bis.1(e) or 45bis.4(d).

    • e) The Authority specified for supplementary search shall, to the extent and under the conditions provided for in the applicable agreement under Article 16(3)(b), refund the supplementary search fee if, before it has started the supplementary international search in accordance with Rule 45bis.5(a), the supplementary search request is considered not to have been submitted under Rule 45bis.5(g).

  • 45bis.4 Checking of Supplementary Search Request; Correction of Defects; Late Payment of Fees; Transmittal to Authority Specified for Supplementary Search

    • a) Promptly after receipt of a supplementary search request, the International Bureau shall check whether it complies with the requirements of Rule 45bis.1(b) and (c)(i) and shall invite the applicant to correct any defects within a time limit of one month from the date of the invitation.

    • b) Where, by the time they are due under Rules 45bis.2(c) and 45bis.3(c), the International Bureau finds that the supplementary search handling fee and the supplementary search fee have not been paid in full, it shall invite the applicant to pay to it the amount required to cover those fees, together with the late payment fee under paragraph (c), within a time limit of one month from the date of the invitation.

    • c) The payment of fees in response to an invitation under paragraph (b) shall be subject to the payment to the International Bureau, for its own benefit, of a late payment fee whose amount shall be 50% of the supplementary search handling fee.

    • d) If the applicant does not furnish the required correction or does not pay the amount in full of the fees due, including the late payment fee, before the expiration of the time limit applicable under paragraph (a) or (b), respectively, the supplementary search request shall be considered not to have been submitted and the International Bureau shall so declare and shall inform the applicant accordingly.

    • e) On finding that the requirements of Rule 45bis.1(b) and (c)(i), 45bis.2(c) and 45bis.3(c) have been complied with, the International Bureau shall promptly, but not before the date of receipt by it of the international search report or the expiration of 17 months from the priority date, whichever occurs first, transmit to the Authority specified for supplementary search a copy of each of the following:

      • (i) the supplementary search request;

      • (ii) the international application;

      • (iii) any sequence listing furnished under Rule 45bis.1(c)(ii); and

      • (iv) any translation furnished under Rule 12.3, 12.4 or 45bis.1(c)(i) which is to be used as the basis of the supplementary international search;

      and, at the same time, or promptly after their later receipt by the International Bureau:

      • (v) the international search report and the written opinion established under Rule 43bis.1;

      • (vi) any invitation by the International Searching Authority to pay additional fees referred to in Article 17(3)(a); and

      • (vii) any protest by the applicant under Rule 40.2(c) and the decision thereon by the review body constituted in the framework of the International Searching Authority.

    • f) Upon request of the Authority specified for supplementary search, the written opinion referred to in paragraph (e)(v) shall, when not in English or in a language accepted by that Authority, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to that Authority within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.

  • 45bis.5 Start, Basis and Scope of Supplementary International Search

    • a) The Authority specified for supplementary search shall start the supplementary international search promptly after receipt of the documents specified in Rule 45bis.4(e)(i) to (iv), provided that the Authority may, at its option, delay the start of the search until it has also received the documents specified in Rule 45bis.4(e)(v) or until the expiration of 22 months from the priority date, whichever occurs first.

    • b) The supplementary international search shall be carried out on the basis of the international application as filed or of a translation referred to in Rule 45bis.1(b)(iii) or 45bis.1(c)(i), taking due account of the international search report and the written opinion established under Rule 43bis.1 where they are available to the Authority specified for supplementary search before it starts the search. Where the supplementary search request contains an indication under Rule 45bis.1(d), the supplementary international search may be restricted to the invention specified by the applicant under Rule 45bis.1(d) and those parts of the international application which relate to that invention.

    • c) For the purposes of the supplementary international search, Article 17(2) and Rules 13ter.1, 33 and 39 shall apply mutatis mutandis.

    • d) Where the international search report is available to the Authority specified for supplementary search before it starts the search under paragraph (a), that Authority may exclude from the supplementary search any claims which were not the subject of the international search.

    • e) Where the International Searching Authority has made the declaration referred to in Article 17(2)(a) and that declaration is available to the Authority specified for supplementary search before it starts the search under paragraph (a), that Authority may decide not to establish a supplementary international search report, in which case it shall so declare and promptly notify the applicant and the International Bureau accordingly.

    • f) The supplementary international search shall cover at least the documentation indicated for that purpose in the applicable agreement under Article 16(3)(b).

    • g) If the Authority specified for supplementary search finds that carrying out the search is entirely excluded by a limitation or condition referred to in Rule 45bis.9(a), other than a limitation under Article 17(2) as applicable by virtue of Rule 45bis.5(c), the supplementary search request shall be considered not to have been submitted, and the Authority shall so declare and shall promptly notify the applicant and the International Bureau accordingly.

    • h) The Authority specified for supplementary search may, in accordance with a limitation or condition referred to in Rule 45bis.9(a), decide to restrict the search to certain claims only, in which case the supplementary international search report shall so indicate.

  • 45bis.6 Unity of Invention

    • a) If the Authority specified for supplementary search finds that the international application does not comply with the requirement of unity of invention, it shall:

      • (i) establish the supplementary international search report on those parts of the international application which relate to the invention first mentioned in the claims (“main invention”);

      • (ii) notify the applicant of its opinion that the international application does not comply with the requirement of unity of invention and specify the reasons for that opinion; and

      • (iii) inform the applicant of the possibility of requesting, within the time limit referred to in paragraph (c), a review of the opinion.

    • b) In considering whether the international application complies with the requirement of unity of invention, the Authority shall take due account of any documents received by it under Rule 45bis.4(e)(vi) and (vii) before it starts the supplementary international search.

    • c) The applicant may, within one month from the date of the notification under paragraph (a)(ii), request the Authority to review the opinion referred to in paragraph (a). The request for review may be subjected by the Authority to the payment to it, for its own benefit, of a review fee whose amount shall be fixed by it.

    • d) If the applicant, within the time limit under paragraph (c), requests a review of the opinion by the Authority and pays any required review fee, the opinion shall be reviewed by the Authority. The review shall not be carried out only by the person who made the decision which is the subject of the review. Where the Authority:

      • (i) finds that the opinion was entirely justified, it shall notify the applicant accordingly;

      • (ii) finds that the opinion was partially unjustified but still considers that the international application does not comply with the requirement of unity of invention, it shall notify the applicant accordingly and, where necessary, proceed as provided for in paragraph (a)(i);

      • (iii) finds that the opinion was entirely unjustified, it shall notify the applicant accordingly, establish the supplementary international search report on all parts of the international application and refund the review fee to the applicant.

    • e) On the request of the applicant, the text of both the request for review and the decision thereon shall be communicated to the designated Offices together with the supplementary international search report. The applicant shall submit any translation thereof with the furnishing of the translation of the international application required under Article 22.

    • f) Paragraphs (a) to (e) shall apply mutatis mutandis where the Authority specified for supplementary search decides to restrict the supplementary international search in accordance with the second sentence of Rule 45bis.5(b) or with Rule 45bis.5(h), provided that any reference in the said paragraphs to the “international application” shall be construed as a reference to those parts of the international application which relate to the invention specified by the applicant under Rule 45bis.1(d) or which relate to the claims and those parts of the international application for which the Authority will carry out a supplementary international search, respectively.

  • 45bis.7 Supplementary International Search Report

    • a) The Authority specified for supplementary search shall, within 28 months from the priority date, establish the supplementary international search report, or make the declaration referred to in Article 17(2)(a) as applicable by virtue of Rule 45bis.5(c) that no supplementary international search report will be established.

    • b) Every supplementary international search report, any declaration referred to in Article 17(2)(a) as applicable by virtue of Rule 45bis.5(c) and any declaration under Rule 45bis.5(e) shall be in a language of publication.

    • c) For the purposes of establishing the supplementary international search report, Rules 43.1, 43.2, 43.5, 43.6, 43.6bis, 43.8 and 43.10 shall, subject to paragraphs (d) and (e), apply mutatis mutandis. Rule 43.9 shall apply mutatis mutandis, except that the references therein to Rules 43.3, 43.7 and 44.2 shall be considered non-existent. Article 20(3) and Rule 44.3 shall apply mutatis mutandis.

    • d) The supplementary international search report need not contain the citation of any document cited in the international search report, except where the document needs to be cited in conjunction with other documents that were not cited in the international search report.

    • e) The supplementary international search report may contain explanations:

      • (i) with regard to the citations of the documents considered to be relevant;

      • (ii) with regard to the scope of the supplementary international search.

  • 45bis.8 Transmittal and Effect of the Supplementary International Search Report

    • a) The Authority specified for supplementary search shall, on the same day, transmit one copy of the supplementary international search report or the declaration that no supplementary international search report shall be established, as applicable, to the International Bureau and one copy to the applicant.

    • b) Subject to paragraph (c), Article 20(1) and Rules 45.1, 47.1(d) and 70.7(a) shall apply as if the supplementary international search report were part of the international search report.

    • c) A supplementary international search report need not be taken into account by the International Preliminary Examining Authority for the purposes of a written opinion or the international preliminary examination report if it is received by that Authority after it has begun to draw up that opinion or report.

  • 45bis.9 International Searching Authorities Competent to Carry Out Supplementary International Search

    • a) An International Searching Authority shall be competent to carry out supplementary international searches if its preparedness to do so is stated in the applicable agreement under Article 16(3)(b), subject to any limitations and conditions set out in that agreement.

    • b) The International Searching Authority carrying out the international search under Article 16(1) in respect of an international application shall not be competent to carry out a supplementary international search in respect of that application.

    • c) The limitations referred to in paragraph (a) may, for example, include limitations as to the subject matter for which supplementary international searches will be carried out, other than limitations under Article 17(2) as applicable by virtue of Rule 45bis.5(c), limitations as to the total number of supplementary international searches which will be carried out in a given period, and limitations to the effect that the supplementary international searches will not extend to any claim beyond a certain number of claims.

Rule 46. Amendment of Claims before the International Bureau

  • 46.1 Time Limit

    The time limit referred to in Article 19 shall be 2 months from the date of transmittal of the international search report to the International Bureau and to the applicant by the International Searching Authority or 16 months from the priority date, whichever time limit expires later, provided that any amendment made under Article 19 which is received by the International Bureau after the expiration of the applicable time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the technical preparations for international publication have been completed.

  • 46.2 Where to File

    Amendments made under Article 19 shall be filed directly with the International Bureau.

  • 46.3 Language of Amendments

    If the international application has been filed in a language other than the language in which it is published, any amendment made under Article 19 shall be in the language of publication.

  • 46.4 Statement

    • (a) The statement referred to in Article 19(1) shall be in the language in which the international application is published and shall not exceed 500 words if in the English language or if translated into that language. The statement shall be identified as such by a heading, preferably by using the words “Statement under Article 19(1)” or their equivalent in the language of the statement.

    • (b) The statement shall contain no disparaging comments on the international search report or the relevance of citations contained in that report. Reference to citations, relevant to a given claim, contained in the international search report may be made only in connection with an amendment of that claim.

  • 46.5 Form of Amendments

    • a) The applicant, when making amendments under Article 19, shall be required to submit a replacement sheet or sheets containing a complete set of claims in replacement of all the claims originally filed.

    • b) The replacement sheet or sheets shall be accompanied by a letter which:

      • (i) shall identify the claims which, on account of the amendments, differ from the claims originally filed, and shall draw attention to the differences between the claims originally filed and the claims as amended;

      • (ii) shall identify the claims originally filed which, on account of the amendments, are cancelled;

      • (iii) shall indicate the basis for the amendments in the application as filed.

Rule 47. Communication to Designated Offices

  • 47.1 Procedure

    • (a) The communication provided for in Article 20 shall be effected by the International Bureau to each designated Office in accordance with Rule 93bis.1 but, subject to Rule 47.4, not prior to the international publication of the international application.

    • (a-bis) The International Bureau shall notify each designated Office, in accordance with Rule 93bis.1, of the fact and date of receipt of the record copy and of the fact and date of receipt of any priority document.

    • (b) Any amendment received by the International Bureau within the time limit under Rule 46.1 which was not included in the communication provided for in Article 20 shall be communicated promptly to the designated Offices by the International Bureau, and the latter shall notify the applicant accordingly.

    • (c) The International Bureau shall, promptly after the expiration of 28 months from the priority date, send a notice to the applicant indicating:

      • (i) the designated Offices which have requested that the communication provided for in Article 20 be effected under Rule 93bis.1 and the date of such communication to those Offices; and

      • (ii) the designated Offices which have not requested that the communication provided for in Article 20 be effected under Rule 93bis.1. (c-bis) The notice referred to in paragraph c) shall be accepted by designated Offices:

        • (i) in the case of a designated Office referred to in paragraph c)(i), as conclusive evidence that the communication provided for in Article 20 was effected on the date specified in the notice;

        • (ii) in the case of a designated Office referred to in paragraph c)(ii), as conclusive evidence that the Contracting State for which that Office acts as designated Office does not require the furnishing, under Article 22, by the applicant of a copy of the international application.

    • (d) Each designated Office shall, when it so requires, receive the international search reports and the declarations referred to in Article 17(2) (a) also in the translation referred to in Rule 45.1.

    • (e) Where any designated Office has not, before the expiration of 28 months from the priority date, requested the International Bureau to effect the communication provided for in Article 20 in accordance with Rule 93bis.1, the Contracting State for which that Office acts as designated Office shall be considered to have notified the International Bureau, under Rule 49.1(a-bis), that it does not require the furnishing, under Article 22, by the applicant of a copy of the international application.

  • 47.2 Copies

    The copies required for communication shall be prepared by the International Bureau. Further details concerning the copies required for communication may be provided for in the Administrative Instructions.

  • 47.3 Languages

    • a) The international application communicated under Article 20 shall be in the language in which it is published.

    • b) Where the language in which the international application is published is different from the language in which it was filed, the International Bureau shall furnish to any designated Office, upon the request of that Office, a copy of that application in the language in which it was filed.

  • 47.4 Express Request Under Article 23(2) Prior to International Publication

    Where the applicant makes an express request to a designated Office under Article 23(2) prior to the international publication of the international application, the International Bureau shall, upon request of the applicant or the designated Office, promptly effect the communication provided for in Article 20 to that Office.

Rule 48. International Publication

  • 48.1 Form and Means

    The form in which and the means by which international applications are published shall be governed by the Administrative Instructions.

  • 48.2 Contents

    • (a) The publication of the international application shall contain:

      • (i) a standardized front page;

      • (ii) the description;

      • (iii) the claims;

      • (iv) the drawings, if any;

      • (v) subject to paragraph (g), the international search report or the declaration under Article 17(2)(a);

      • (vi) any statement filed under Article 19(1), unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4;

      • (vii) where the request for publication under Rule 91.3d) was received by the International Bureau before the completion of the technical preparations for international publication, any request for rectification of an obvious mistake, any reasons and any comments referred to in Rule 91.3d);

      • (viii) the indications in relation to deposited biological material furnished under Rule 13bis separately from the description, together with an indication of the date on which the International Bureau received such indications;

      • (ix) any information concerning a priority claim referred to in Rule 26bis.2d);

      • (x) any declaration referred to in Rule 4.17, and any correction thereof under Rule 26ter.1, which was received by the International Bureau before the expiration of the time limit under Rule 26ter.1;

      • (xi) any information concerning a request under Rule 26bis.3 for restoration of the right of priority and the decision of the receiving Office upon such request, including information as to the criterion for restoration upon which the decision was based.

    • (b) Subject to paragraph (c), the front page shall include:

      • (i) data taken from the request sheet and such other data as are prescribed by the Administrative Instructions;

      • (ii) a figure or figures where the international application contains drawings, unless Rule 8.2b) applies;

      • (iii) the abstract; if the abstract is both in English and in another language, the English text shall appear first;

      • (iv) where applicable, an indication that the request contains a declaration referred to in Rule 4.17 which was received by the International Bureau before the expiration of the time limit under Rule 26ter.1;

      • (v) where the international filing date has been accorded by the receiving Office under Rule 20.3b)(ii) or 20.5d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part, an indication to that effect, together with an indication as to whether the applicant, for the purposes of Rule 20.6a)(ii), relied on compliance with Rule 17.1a), b) or (b-bis) in relation to the priority document or on a separately submitted copy of the earlier application concerned;

      • (vi) where applicable, an indication that the published international application contains information under Rule 26bis.2d);

      • (vii) where applicable, an indication that the published international application contains information concerning a request under Rule 26bis.3 for restoration of the right of priority and the decision of the receiving Office upon such request.

    • (c) Where a declaration under Article 17(2) (a) has been issued, the front page shall conspicuously refer to that fact and need include neither a drawing nor an abstract.

    • (d) The figure or figures referred to in paragraph (b) (ii) shall be selected as provided in Rule 8.2 Reproduction of such figure or figures on the front page may be in a reduced form.

    • (e) If there is not enough room on the front page for the totality of the abstract referred to in paragraph (b) iii), the said abstract shall appear on the back of the front page. The same shall apply to the translation of the abstract when such translation is required to be published under Rule 48.3 (c).

    • (f) If the claims have been amended under Article 19, the publication of the international application shall contain the full text of the claims both as filed and as amended. Any statement referred to in Article 19(1) shall be included as well, unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4. The date of receipt of the amended claims by the International Bureau shall be indicated.

    • (g) If, at the time of the completion of the technical preparations for international publication, the international search report is not yet available, the front page shall contain an indication to the effect that that report was not available and that the international search report (when it becomes available) will be separately published together with a revised front page.

    • (h) If, at the time of the completion of the technical preparations for international publication, the time limit for amending the claims under Article 19 has not expired, the front page shall refer to that fact and indicate that, should the claims be amended under Article 19, then, promptly after receipt by the International Bureau of such amendments within the time limit under Rule 46.1, the full text of the claims as amended will be published together with a revised front page. If a statement under Article 19(1) has been filed, that statement shall be published as well, unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4.

    • (i) If the authorization by the receiving Office, the International Searching Authority or the International Bureau of a rectification of an obvious mistake in the international application under Rule 91.1 is received by or, where applicable, given by the International Bureau after completion of the technical preparations for international publication, a statement reflecting all the rectifications shall be published, together with the sheets containing the rectifications, or the replacement sheets and the letter furnished under Rule 91.2, as the case may be, and the front page shall be republished.

    • (j) If, at the time of completion of the technical preparations for international publication, a request under Rule 26bis.3 for restoration of the right of priority is still pending, the published international application shall contain, in place of the decision by the receiving Office upon that request, an indication to the effect that such decision was not available and that the decision, when it becomes available, will be separately published.

    • (k) If a request for publication under Rule 91.3d) was received by the International Bureau after the completion of the technical preparations for international publication, the request for rectification, any reasons and any comments referred to in that Rule shall be promptly published after the receipt of such request for publication, and the front page shall be republished.

    • (l) The International Bureau shall, upon a reasoned request by the applicant received by the International Bureau prior to the completion of the technical preparations for international publication, omit from publication any information, if it finds that:

      • (i) this information does not obviously serve the purpose of informing the public about the international application;

      • (ii) publication of such information would clearly prejudice the personal or economic interests of any person; and

      • (iii) there is no prevailing public interest to have access to that information.

      Rule 26.4 shall apply mutatis mutandis as to the manner in which the applicant shall present the information which is the subject of a request made under this paragraph.

    • (m) Where the receiving Office, the International Searching Authority, the Authority specified for supplementary search or the International Bureau notes any information meeting the criteria set out under paragraph (l), that Office, Authority or Bureau may suggest to the applicant to request the omission from international publication in accordance with paragraph (l).

    • (n) Where the International Bureau has omitted information from international publication in accordance with paragraph (l) and that information is also contained in the file of the international application held by the receiving Office, the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, the International Bureau shall promptly notify that Office and Authority accordingly.

  • 48.3 Languages of Publication

    • (a) If the international application is filed in Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish (“languages of publication”), that application shall be published in the language in which it was filed.

    • (b) If the international application is not filed in a language of publication and a translation into a language of publication has been furnished under Rule 12.3 or 12.4, that application shall be published in the language of that translation.

    • (c) If the international application is published in a language other than English, the international search report to the extent that it is published under Rule 48.2a)(v), or the declaration referred to in Article 17(2)a), the title of the invention, the abstract and any text matter pertaining to the figure or figures accompanying the abstract shall be published both in that language and in English. The translations, if not furnished by the applicant under Rule 12.3, shall be prepared under the responsibility of the International Bureau.

  • 48.4 Earlier Publication on the Applicant's Request

    • (a) Where the applicant asks for publication under Articles 21(2) (b) and 64(3) (c) (i) and the international search report, or the declaration referred to in Article 17(2) (a), is not yet available for publication together with the international application, the International Bureau shall collect a special publication fee whose amount shall be fixed in the Administrative Instructions.

    • (b) Publication under Articles 21(2) (b) and 64(3) (c) (i) shall be effected by the International Bureau promptly after the applicant has asked for it and, where a special fee is due under paragraph (a), after receipt of such fee.

  • 48.5 Notification of National Publication

    Where the publication of the international application by the International Bureau is governed by Article 64(3) (c) (ii), the national Office concerned shall, promptly after effecting the national publication referred to in the said provision, notify the International Bureau of the fact of such national publication.

  • 48.6 Announcing of Certain Facts

    • (a) If any notification under Rule 29.1(ii) reaches the International Bureau at a time later than that at which it was able to prevent the international publication of the international application, the International Bureau shall promptly publish a notice in the Gazette reproducing the essence of such notification.

    • (b) [Red: Vervallen.]

    • (c) If the international application, the designation of any designated State or the priority claim is withdrawn under Rule 90bis after the technical preparations for international publication have been completed, notice of the withdrawal shall be published in the Gazette.

Rule 49. Copy, Translation and Fee Under Article 22

  • 49.1 Notification

    • (a) Any Contracting State requiring the furnishing of a translation or the payment of a national fee, or both, under Article 22, shall notify the International Bureau of:

      • (i) the languages from which and the language into which it requires translation,

      • (ii) the amount of the national fee.

    • (a-bis) Any Contracting State not requiring the furnishing, under Article 22, by the applicant of a copy of the international application (even though the communication of the copy of the international application by the International Bureau under Rule 47 has not taken place by the expiration of the time limit applicable under Article 22) shall notify the International Bureau accordingly.

    • (a-ter) Any Contracting State which, pursuant to Article 24(2), maintains, if it is a designated State, the effect provided for in Article 11(3) even though a copy of the international application is not furnished by the applicant by the expiration of the time limit applicable under Article 22 shall notify the International Bureau accordingly.

    • (b) Any notification received by the International Bureau under paragraphs (a), (a-bis) or (a-ter) shall be promptly published by the International Bureau in the Gazette.

    • (c) If the requirements under paragraph (a) change later, such changes shall be notified by the Contracting State to the International Bureau and that Bureau shall promptly publish the notification in the Gazette. If the change means that translation is required into a language which, before the change, was not required, such change shall be effective only with respect to international applications filed later than 2 months after the publication of the notification in the Gazette. Otherwise, the effective date of any change shall be determined by the Contracting State.

  • 49.2 Languages

    The language into which translation may be required must be an official language of the designated Office. If there are several of such languages, no translation may be required if the international application is in one of them. If there are several official languages and a translation must be furnished, the applicant may choose any of those languages. Notwithstanding the foregoing provisions of this paragraph, if there are several official languages but the national law prescribes the use of one such language for foreigners, a translation into that language may be required.

  • 49.3 Statements under Article 19; Indications under Rule 13bis.4

    For the purposes of Article 22 and the present Rule, any statement made under Article 19(1) and any indication furnished under Rule 13bis.4 shall, subject to Rule 49.5(c) and (h), be considered part of the international application.

  • 49.4 Use of National Form

    No applicant shall be required to use a national form when performing the acts referred to in Article 22.

  • 49.5 Contents of and Physical Requirements for the Translation

    • (a) For the purposes of Article 22, the translation of the international application shall contain the description (subject to paragraph (a-bis)), the claims, any text matter of the drawings and the abstract. If required by the designated Office, the translation shall also, subject to paragraphs (b), (c-bis) and (e),

      • (i) contain the request,

      • (ii) if the claims have been amended under Article 19, contain both the claims as filed and the claims as amended (the claims as amended shall be furnished in the form of a translation of the complete set of claims furnished under Rule 46.5(a) in replacement of all the claims originally filed), and

      • (iii) be accompanied by a copy of the drawings.

    • (a-bis) No designated Office shall require the applicant to furnish to it a translation of any text matter contained in the sequence listing part of the description if such sequence listing part complies with Rule 12.1d) and if the description complies with Rule 5.2b).

    • (b) Any designated Office requiring the furnishing of a translation of the request shall furnish copies of the request form in the language of the translation free of charge to the applicants. The form and contents of the request form in the language of the translation shall not be different from those of the request under Rules 3 and 4; in particular, the request form in the language of the translation shall not ask for any information that is not in the request as filed. The use of the request form in the language of the translation shall be optional.

    • (c) Where the applicant did not furnish a translation of any statement made under Article 19(1), the designated Office may disregard such statement.

    • (c-bis) Where the applicant furnishes, to a designated Office which requires under paragraph (a)(ii) a translation of both the claims as filed and the claims as amended, only one of the required two translations, the designated Office may disregard the claims of which a translation has not been furnished or invite the applicant to furnish the missing translation within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation. Where the designated Office chooses to invite the applicant to furnish the missing translation and the latter is not furnished within the time limit fixed in the invitation, the designated Office may disregard those claims of which a translation has not been furnished or consider the international application withdrawn.

    • (d) If any drawing contains text matter, the translation of that text matter shall be furnished either in the form of a copy of the original drawing with the translation pasted on the original text matter or in the form of a drawing executed anew.

    • (e) Any designated Office requiring under paragraph (a) the furnishing of a copy of the drawings shall, where the applicant failed to furnish such copy within the time limit applicable under Article 22, invite the applicant to furnish such copy within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.

    • (f) The expression “Fig.” does not require translation into any language.

    • (g) Where any copy of the drawings or any drawing executed anew which has been furnished under paragraph (d) or (e) does not comply with the physical requirements referred to in Rule 11, the designated Office may invite the applicant to correct the defect within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.

    • (h) Where the applicant did not furnish a translation of the abstract or of any indication furnished under Rule 13bis.4, the designated Office shall invite the applicant to furnish such translation, if it deems it to be necessary, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.

    • (i) Information on any requirement and practice of designated Offices under the second sentence of paragraph (a) shall be published by the International Bureau in the Gazette.

    • (j) No designated Office shall require that the translation of the international application comply with physical requirements other than those prescribed for the international application as filed.

    • (k) Where a title has been established by the International Searching Authority pursuant to Rule 37.2, the translation shall contain the title as established by that Authority.

    • (l) If, on July 12, 1991, paragraph (c-bis) or paragraph (k) is not compatible with the national law applied by the designated Office, the paragraph concerned shall not apply to that designated Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1991. The information received shall be promptly published by the International Bureau in the Gazette.

  • 49.6 Reinstatement of Rights After Failure to Perform the Acts Referred to in Article 22

    • a) Where the effect of the international application provided for in Article 11(3) has ceased because the applicant failed to perform the acts referred to in Article 22 within the applicable time limit, the designated Office shall, upon request of the applicant, and subject to paragraphs (b) to e) of this Rule, reinstate the rights of the applicant with respect to that international application if it finds that any delay in meeting that time limit was unintentional or, at the option of the designated Office, that the failure to meet that time limit occurred in spite of due care required by the circumstances having been taken.

    • b) The request under paragraph a) shall be submitted to the designated Office, and the acts referred to in Article 22 shall be performed, within whichever of the following periods expires first:

      • (i) two months from the date of removal of the cause of the failure to meet the applicable time limit under Article 22; or

      • (ii) 12 months from the date of the expiration of the applicable time limit under Article 22; provided that the applicant may submit the request at any later time if so permitted by the national law applicable by the designated Office.

    • c) The request under paragraph a) shall state the reasons for the failure to comply with the applicable time limit under Article 22.

    • d) The national law applicable by the designated Office may require:

      • (i) that a fee be paid in respect of a request under paragraph a);

      • (ii) that a declaration or other evidence in support of the reasons referred to in paragraph c) be filed.

    • e) The designated Office shall not refuse a request under paragraph a) without giving the applicant the opportunity to make observations on the intended refusal within a time limit which shall be reasonable under the circumstances.

    • f) If, on October 1, 2002, paragraphs a) to e) are not compatible with the national law applied by the designated Office, those paragraphs shall not apply in respect of that designated Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by January 1, 2003. The information received shall be promptly published by the International Bureau in the Gazette.

Rule 49bis. Indications as to Protection Sought for Purposes of National Processing

  • 49bis.1 Choice of Certain Kinds of Protection

    • a) If the applicant wishes the international application to be treated, in a designated State in respect of which Article 43 applies, as an application not for the grant of a patent but for the grant of another kind of protection referred to in that Article, the applicant, when performing the acts referred to in Article 22, shall so indicate to the designated Office.

    • b) If the applicant wishes the international application to be treated, in a designated State in respect of which Article 44 applies, as an application for the grant of more than one kind of protection referred to in Article 43, the applicant, when performing the acts referred to in Article 22, shall so indicate to the designated Office and shall indicate, if applicable, which kind of protection is sought primarily and which kind is sought subsidiarily.

    • c) In the cases referred to in paragraphs a) and b), if the applicant wishes the international application to be treated, in a designated State, as an application for a patent of addition, certificate of addition, inventor's certificate of addition or utility certificate of addition, the applicant, when performing the acts referred to in Article 22, shall indicate the relevant parent application, parent patent or other parent grant.

    • d) If the applicant wishes the international application to be treated, in a designated State, as an application for a continuation or a continuation-in-part of an earlier application, the applicant, when performing the acts referred to in Article 22, shall so indicate to the designated Office and shall indicate the relevant parent application.

    • e) Where no express indication under paragraph a) is made by the applicant when performing the acts referred to in Article 22 but the national fee referred to in Article 22 paid by the applicant corresponds to the national fee for a particular kind of protection, the payment of that fee shall be considered to be an indication of the wish of the applicant that the international application is to be treated as an application for that kind of protection and the designated Office shall inform the applicant accordingly.

  • 49bis.2 Time of Furnishing Indications

    • a) No designated Office shall require the applicant to furnish, before performing the acts referred to in Article 22, any indication referred to in Rule 49bis.1 or, where applicable, any indication as to whether the applicant seeks the grant of a national patent or a regional patent.

    • b) The applicant may, if so permitted by the national law applicable by the designated Office concerned, furnish such indication or, if applicable, convert from one kind of protection to another, at any later time.

Rule 49ter. Effect of Restoration of Right of Priority by Receiving Office; Restoration of Right of Priority by Designated Office

  • 49ter.1 Effect of Restoration of Right of Priority by Receiving Office

    • a) Where the receiving Office has restored a right of priority under Rule 26bis.3 based on a finding by it that the failure to file the international application within the priority period occurred in spite of due care required by the circumstances having been taken, that restoration shall, subject to paragraph c), be effective in each designated State.

    • b) Where the receiving Office has restored a right of priority under Rule 26bis.3 based on a finding by it that the failure to file the international application within the priority period was unintentional, that restoration shall, subject to paragraph c), be effective in any designated State whose applicable national law provides for restoration of the right of priority based on that criterion or on a criterion which, from the viewpoint of applicants, is more favorable than that criterion.

    • c) A decision by the receiving Office to restore a right of priority under Rule 26bis.3 shall not be effective in a designated State where the designated Office, a court or any other competent organ of or acting for that designated State finds that a requirement under Rule 26bis.3a), b)(i) or c) was not complied with, taking into account the reasons stated in the request submitted to the receiving Office under Rule 26bis.3a) and any declaration or other evidence filed with the receiving Office under Rule 26bis.3b)(iii).

    • d) A designated Office shall not review the decision of the receiving Office unless it may reasonably doubt that a requirement referred to in paragraph c) was complied with, in which case the designated Office shall notify the applicant accordingly, indicating the reasons for that doubt and giving the applicant an opportunity to make observations within a reasonable time limit.

    • e) No designated State shall be bound by a decision of the receiving Office refusing a request under Rule 26bis.3 for restoration of the right of priority.

    • f) Where the receiving Office has refused a request for the restoration of the right of priority, any designated Office may consider that request to be a request for restoration submitted to that designated Office under Rule 49ter.2a) within the time limit under that Rule.

    • g) If, on October 5, 2005, paragraphs a) to d) are not compatible with the national law applied by the designated Office, those paragraphs shall not apply in respect of that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.

  • 49ter.2 Restoration of Right of Priority by Designated Office

    • a) Where the international application claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the designated Office shall, on the request of the applicant in accordance with paragraph b), restore the right of priority if the Office finds that a criterion applied by it (“criterion for restoration”) is satisfied, namely, that the failure to file the international application within the priority period:

      • (i) occurred in spite of due care required by the circumstances having been taken; or

      • (ii) was unintentional.

      Each designated Office shall apply at least one of those criteria and may apply both of them.

    • b) A request under paragraph a) shall:

      • (i) be filed with the designated Office within a time limit of one month from the applicable time limit under Article 22 or, where the applicant makes an express request to the designated Office under Article 23(2), within a time limit of one month from the date of receipt of that request by the designated Office;

      • (ii) state the reasons for the failure to file the international application within the priority period and preferably be accompanied by any declaration or other evidence required under paragraph c); and

      • (iii) be accompanied by any fee for requesting restoration required under paragraph d).

    • c) The designated Office may require that a declaration or other evidence in support of the statement of reasons referred to in paragraph b)(ii) be filed with it within a time limit which shall be reasonable under the circumstances.

    • d) The submission of a request under paragraph a) may be subjected by the designated Office to the payment to it, for its own benefit, of a fee for requesting restoration.

    • e) The designated Office shall not refuse, totally or in part, a request under paragraph a) without giving the applicant the opportunity to make observations on the intended refusal within a time limit which shall be reasonable under the circumstances. Such notice of intended refusal may be sent by the designated Office to the applicant together with any invitation to file a declaration or other evidence under paragraph c).

    • f) Where the national law applicable by the designated Office provides, in respect of the restoration of the right of priority, for requirements which, from the viewpoint of applicants, are more favorable than the requirements provided for under paragraphs a) and b), the designated Office may, when determining the right of priority, apply the requirements under the applicable national law instead of the requirements under those paragraphs.

    • g) Each designated Office shall inform the International Bureau of which of the criteria for restoration it applies, of the requirements, where applicable, of the national law applicable in accordance with paragraph f), and of any subsequent changes in that respect. The International Bureau shall promptly publish such information in the Gazette.

    • h) If, on October 5, 2005, paragraphs a) to g) are not compatible with the national law applied by the designated Office, those paragraphs shall not apply in respect of that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.

Rule 50. Faculty under Article 22(3)

  • 50.1 Exercise of Faculty

    • a) Any Contracting State allowing a time limit expiring later than the time limits provided for in Article 22(1) or (2) shall notify the International Bureau of the time limits so fixed.

    • b) Any notification received by the International Bureau under paragraph (a) shall be promptly published by the International Bureau in the Gazette.

    • c) Notifications concerning the shortening of the previously fixed time limit shall be effective in relation to international applications filed after the expiration of 3 months computed from the date on which the notification was published by the International Bureau.

    • d) Notifications concerning the lengthening of the previously fixed time limit shall become effective upon publication by the International Bureau in the Gazette in respect of international applications pending at the time or filed after the date of such publication, or, if the Contracting State effecting the notification fixes some later date, as from the latter date.

Rule 51. Review by Designated Offices

  • 51.1 Time Limit for Presenting the Request to Send Copies

    The time limit referred to in Article 25(1)c) shall be two months computed from the date of the notification sent to the applicant under Rule 20.4(i), 24.2c) or 29.1(ii).

  • 51.2 Copy of the Notification

    Where the applicant, after having received a negative determination under Article 11(1), requests the International Bureau, under Article 25(1), to send copies of the file of the purported international application to any of the named Offices he has attempted to designate, he shall attach to his request a copy of the notification referred to in Rule 20.4(i).

  • 51.3 Time Limit for Paying National Fee and Furnishing Translation

    The time limit referred to in Article 25(2)(a) shall expire at the same time as the time limit prescribed in Rule 51.1.

Rule 51bis. Certain National Requirements Allowed under Article 27

  • 51bis.1 Certain National Requirements Allowed

    • (a) Subject to Rule 51bis.2, the national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish, in particular:

      • (i) any document relating to the identity of the inventor,

      • (ii) any document relating to the applicant's entitlement to apply for or be granted a patent,

      • (iii) any document containing any proof of the applicant's entitlement to claim priority of an earlier application where the applicant is not the applicant who filed the earlier application or where the applicant's name has changed since the date on which the earlier application was filed,

      • (iv) where the international application designates a State whose national law requires, on October 9, 2012, the furnishing of an oath or declaration of inventorship, any document containing an oath or declaration of inventorship,

      • (v) any evidence concerning non-prejudicial disclosures or exceptions to lack of novelty, such as disclosures resulting from abuse, disclosures at certain exhibitions and disclosures by the applicant during a certain period of time,

      • (vi) the confirmation of the international application by the signature of any applicant for the designated State who has not signed the request,

      • (vii) any missing indication required under Rule 4.5a)(ii) and (iii) in respect of any applicant for the designated State.

    • (b) The national law applicable by the designated Office may, in accordance with Article 27(7), require that

      • (i) the applicant be represented by an agent having the right to represent applicants before that Office and/or have an address in the designated State for the purpose of receiving notifications,

      • (ii) the agent, if any, representing the applicant be duly appointed by the applicant.

    • (c) The national law applicable by the designated Office may, in accordance with Article 27(1), require that the international application, the translation thereof or any document relating thereto be furnished in more than one copy.

    • (d) The national law applicable by the designated Office may, in accordance with Article 27.2(ii), require that the translation of the international application furnished by the applicant under Article 22 be:

      • (i) verified by the applicant or the person having translated the international application in a statement to the effect that, to the best of his knowledge, the translation is complete and faithful;

      • (ii) certified by a public authority or sworn translator, but only where the designated Office may reasonably doubt the accuracy of the translation.

    • (e) The national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish a translation of the priority document, provided that such a translation may only be required:

      • (i) where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable; or

      • (ii) where the international filing date has been accorded by the receiving Office under Rule 20.3b)(ii) or 20.5d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part, for the purposes of determining under Rule 82ter.1b) whether that element or part is completely contained in the priority document concerned, in which case the national law applicable by the designated Office may also require the applicant to furnish, in the case of a part of the description, claims or drawings, an indication as to where that part is contained in the translation of the priority document.

    • (f) If, on March 17, 2000, the proviso in paragraph (e) is not compatible with the national law applied by the designated Office, that proviso shall not apply in respect of that office for as long as that proviso continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.

  • 51bis.2 Certain Circumstances in Which Documents or Evidence May Not Be Required

    The designated Office shall not, unless it may reasonably doubt the veracity of the indications or declaration concerned, require any document or evidence:

    • (i) relating to the identity of the inventor (Rule 51bis.1(a)(i)) (other than a document containing an oath or declaration of inventorship (Rule 51bis.1(a)(iv)), if indications concerning the inventor, in accordance with Rule 4.6, are contained in the request or if a declaration as to the identity of the inventor, in accordance with Rule 4.17(i), is contained in the request or is submitted directly to the designated Office;

    • (ii) relating to the applicant's entitlement, as at the international filing date, to apply for and be granted a patent (Rule 51bis.1.a)(ii)), if a declaration as to that matter, in accordance with Rule 4.17(ii), is contained in the request or is submitted directly to the designated Office;

    • (iii) relating to the applicant’s entitlement, as at the international filing date, to claim priority of an earlier application (Rule 51bis.1(a)(iii)), if a declaration as to that matter, in accordance with Rule 4.17(iii), is contained in the request or is submitted directly to the designated Office;

    • (iv) containing an oath or declaration of inventorship (Rule 51bis.1(a)(iv)), if a declaration of inventorship, in accordance with Rule 4.17(iv), is contained in the request or is submitted directly to the designated Office.

  • 51bis.3 Opportunity to Comply with National Requirements

    • a) Where any of the requirements referred to in Rule 51bis.1.a)(i) to (iv) and c) to e), or any other requirement of the national law applicable by the designated Office which that Office may apply in accordance with Article 27.1) of 2), is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the designated Office shall invite the applicant to comply with the requirement within a time limit which shall not be less than two months from the date of the invitation. Each designated Office may require that the applicant pay a fee for complying with national requirements in response to the invitation.

    • b) Where any requirement of the national law applicable by the designated Office which that Office may apply in accordance with Article 27.6. or 7. is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the applicant shall have an opportunity to comply with the requirement after the expiration of that period.

    • c) If, on March 17, 2000, paragraph a) is not compatible with the national law applied by the designated Office in relation to the time limit referred to in that paragraph, the said paragraph shall not apply in respect of that Office in relation to that time limit for as long as the said paragraph continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.

Rule 52. Amendment of the Claims, the Description, and the Drawings, Before Designated Offices

  • 52.1 Time Limit

    • (a) In any designated State in which processing or examination starts without special request, the applicant shall, if he so wishes, exercise the right under Article 28 within one month from the fulfillment of the requirements under Article 22, provided that, if the communication under Rule 47.1 has not been effected by the expiration of the time limit applicable under Article 22, he shall exercise the said right not later than four months after such expiration date. In either case, the applicant may exercise the said right at any later time if so permitted by the national law of the said State.

    • (b) In any designated State in which the national law provides that examination starts only on special request, the time limit within or the time at which the applicant may exercise the right under Article 28 shall be the same as that provided by the national law for the filing of amendments in the case of the examination, on special request, of national applications, provided that such time limit shall not expire prior to, or such time shall not come before, the expiration of the time limit applicable under paragraph (a).

PART C. Rules Concerning Chapter II of the Treaty

Rule 53. The Demand

  • 53.1 Form

    • a) The demand shall be made on a printed form or be presented as a computer print-out. The particulars of the printed form and of a demand presented as a computer print-out shall be prescribed by the Administrative Instructions.

    • b) Copies of printed demand forms shall be furnished free of charge by the receiving Office or by the International Preliminary Examining Authority.

  • 53.2 Contents

    • (a) The demand shall contain:

      • (i) a petition,

      • (ii) indications concerning the applicant and the agent if there is an agent,

      • (iii) indications concerning the international application to which it relates,

      • (iv) where applicable, a statement concerning amendments.

    • (b) The demand shall be signed.

  • 53.3 The Petition

    The petition shall be to the following effect and shall preferably be worded as follows: “Demand under Article 31 of the Patent Cooperation Treaty: The undersigned requests that the international application specified below be the subject of international preliminary examination according to the Patent Cooperation Treaty.”

  • 53.4 The Applicant

    As to the indications concerning the applicant, Rules 4.4 and 4.16 shall apply, and Rule 4.5 shall apply mutatis mutandis.

  • 53.5 Agent or Common Representative

    If an agent or common representative is appointed, the demand shall so indicate. Rules 4.4 and 4.16 shall apply, and Rule 4.7 shall apply mutatis mutandis.

  • 53.6 Identification of the International Application

    The international application shall be identified by the name and address of the applicant, the title of the invention, the international filing date (if known to the applicant) and the international application number or, where such number is not known to the applicant, the name of the receiving Office with which the international application was filed.

  • 53.7 Election of States

    The filing of a demand shall constitute the election of all Contracting States which are designated and are bound by Chapter II of the Treaty.

  • 53.8 Signature

    The demand shall be signed by the applicant or, if there is more than one applicant, by all applicants making the demand.

  • 53.9 Statement Concerning Amendments

    • a) If amendments under Article 19 have been made, the statement concerning amendments shall indicate whether, for the purposes of the international preliminary examination, the applicant wishes those amendments:

      • (i) to be taken into account, in which case a copy of the amendments and of the letter required under Rule 46.5(b) shall preferably be submitted with the demand; or

      • (ii) to be considered as reversed by an amendment under Article 34.

    • b) If no amendments under Article 19 have been made and the time limit for filing such amendments has not expired, the statement may indicate that, should the International Preliminary Examining Authority wish to start the International preliminary examination at the same time as the International search in accordance with Rule 69.1(b), the applicant wishes the start of the International preliminary examination to be postponed in accordance with Rule 69.1(d).

    • c) If any amendments under Article 34 are submitted with the demand, the statement shall so indicate.

Rule 54. The Applicant Entitled to Make a Demand

  • 54.1 Residence and Nationality

    • a) Subject to the provisions of paragraph (b), the residence or nationality of the applicant shall, for the purposes of Article 31 (2), be determined according to Rule 18.1 (a) and (b).

    • b) The International Preliminary Examining Authority shall, in the circumstances specified in the Administrative Instructions, request the receiving Office or, where the international application was filed with the International Bureau as receiving Office, the national Office of, or acting for, the Contracting State concerned to decide the question whether the applicant is a resident or national of the Contracting State of which he claims to be a resident or national. The International Preliminary Examining Authority shall inform the applicant of any such request. The applicant shall have an opportunity to submit arguments directly to the Office concerned. The Office concerned shall decide the said question promptly.

  • 54.2 Right to Make a Demand

    The right to make a demand under Article 31(2) shall exist if the applicant making the demand or, if there are two or more applicants, at least one of them is a resident or national of a Contracting State bound by Chapter II and the international application has been filed with a receiving Office of or acting for a Contracting State bound by Chapter II.

  • 54.3 International Applications Filed with the International Bureau as Receiving Office

    Where the international application is filed with the International Bureau as receiving Office under Rule 19.1(a)(iii), the International Bureau shall, for the purposes of Article 31(2)(a), be considered to be acting for the Contracting State of which the applicant is a resident or national.

  • 54.4 Applicant Not Entitled to Make a Demand

    If the applicant does not have the right to make a demand or, in the case of two or more applicants, if none of them has the right to make a demand under Rule 54.2, the demand shall be considered not to have been submitted.

Rule 54bis. Time Limit for Making a Demand

  • 54bis.1 Time Limit for Making a Demand

    • a) A demand may be made at any time prior to the expiration of whichever of the following periods expires later:

      • (i) three months from the date of transmittal to the applicant of the international search report or the declaration referred to in Article 17(2)a), and of the written opinion established under Rule 43bis.1; or

      • (ii) 22 months from the priority date.

    • b) Any demand made after the expiration of the time limit applicable under paragraph a) shall be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.

Rule 55. Languages (International Preliminary Examination)

  • 55.1 Language of Demand

    The demand shall be in the language of the international application or, if the international application has been filed in a language other than the language in which it is published, in the language of publication. However, if a translation of the international application is required under Rule 55.2, the demand shall be in the language of that translation.

  • 55.2 Translation of International Application

    • a) Where neither the language in which the international application is filed nor the language in which the international application is published is accepted by the international Preliminary Examining Authority that is to carry out the international preliminary examination, the applicant shall, subject to paragraph b), furnish with the demand a translation of the international application into a language which is both:

      • (i) a language accepted by that Authority, and

      • (ii) a language of publication.

    • a-bis) A translation of the international application into a language referred to in paragraph a) shall include any element referred to in Article 11(1)(iii)d) or e) furnished by the applicant under Rule 20.3b) or 20.6a) and any part of the description, claims or drawings furnished by the applicant under Rule 20.5b) or 20.6a) which is considered to have been contained in the international application under Rule 20.6b).

    • a-ter) The International Preliminary Examining Authority shall check any translation furnished under paragraph a) for compliance with the physical requirements referred to in Rule 11 to the extent that compliance therewith is necessary for the purposes of the international preliminary examination.

    • b) Where a translation of the international application into a language referred to in paragraph a) was transmitted to the International Searching Authority under Rule 23.1b) and the International Preliminary Examining Authority is part of the same national Office or intergovernmental organization as the International Searching Authority, the applicant need not furnish a translation under paragraph a). In such a case, unless the applicant furnishes a translation under paragraph a), the international preliminary examination shall be carried out on the basis of the translation transmitted under Rule 23.1b).

    • c) If a requirement referred to in paragraphs a), (a-bis) and (a-ter) is not complied with and paragraph b) does not apply, the International Preliminary Examining Authority shall invite the applicant to furnish the required translation or the required correction, as the case may be, 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.

    • d) If the applicant complies with the invitation within the time limit under paragraph c), the said requirement shall be considered to have been complied with. If the applicant fails to do so, the demand shall be considered not to have been submitted and the International Preliminary Examining Authority shall so declare.

  • 55.3 Language and Translation of Amendments and Letters

    • (a) Subject to paragraph (b), if the international application has been filed in a language other than the language in which it is published, any amendment under Article 34, as well as any letter referred to in Rule 66.8(a), Rule 66.8(b) and Rule 46.5(b) as applicable by virtue of Rule 66.8(c), shall be submitted in the language of publication.

    • (b) Where a translation of the international application is required under Rule 55.2:

      • (i) any amendment and any letter referred to in paragraph (a); and

      • (ii) any amendment under Article 19 which is to be taken into account under Rule 66.1(c) or (d) and any letter referred to in Rule 46.5(b);

      shall be in the language of that translation. Where such amendments or letters have been or are submitted in another language, a translation shall also be submitted.

    • (c) If an amendment or letter is not submitted in a language as required under paragraph (a) or (b), the International Preliminary Examining Authority shall invite the applicant to submit the amendment or letter in the required language 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.

    • (d) If the applicant fails to comply, within the time limit under paragraph (c), with the invitation to furnish an amendment in the required language, the amendment shall not be taken into account for the purposes of the international preliminary examination. If the applicant fails to comply, within the time limit under paragraph (c), with the invitation to furnish a letter referred to in paragraph (a) in the required language, the amendment concerned need not be taken into account for the purposes of the international preliminary examination.

Rule 56. Later Elections [Vervallen per 01-01-2004]

Rule 57. The Handling Fee

  • 57.1 Requirement to Pay

    Each demand for international preliminary examination shall be subject to the payment of a fee for the benefit of the International Bureau (“handling fee”) to be collected by the International Preliminary Examining Authority to which the demand is submitted.

  • 57.2 Amount

    • a) The amount of the handling fee is as set out in the Schedule of Fees.

    • b) The handling fee shall be payable in the currency or one of the currencies prescribed by the International Preliminary Examining Authority (“prescribed currency”).

    • c) Where the prescribed currency is the Swiss franc, the Authority shall promptly transfer the said fee to the International Bureau in Swiss francs.

    • d) Where the prescribed currency is a currency other than the Swiss franc and that currency:

      • (i) is freely convertible into Swiss francs, the Director General shall establish, for each Authority which prescribes such a currency for the payment of the handling fee, an equivalent amount of that fee in the prescribed currency according to directives given by the Assembly, and the amount in that currency shall promptly be transferred by the Authority to the International Bureau;

      • (ii) is not freely convertible into Swiss francs, the Authority shall be responsible for the conversion of the handling fee from the prescribed currency into Swiss francs and shall promptly transfer that fee in Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau. Alternatively, if the Authority so wishes, it may convert the handling fee from the prescribed currency into euros or US dollars and promptly transfer the equivalent amount of that fee in euros or US dollars, as established by the Director General according to directives given by the Assembly as referred to in item (i), to the International Bureau.

  • 57.3 Time Limit for Payment; Amount Payable

    • a) Subject to paragraphs b) and c), the handling fee shall be paid within one month from the date on which the demand was submitted or 22 months from the priority date, whichever expires later.

    • b) Subject to paragraph c), where the demand was transmitted to the International Preliminary Examining Authority under Rule 59.3, the handling fee shall be paid within one month from the date of receipt by that Authority or 22 months from the priority date, whichever expires later.

    • c) Where, in accordance with Rule 69.1b), the International Preliminary Examining Authority wishes to start the international preliminary examination at the same time as the international search, that Authority shall invite the applicant to pay the handling fee within one month from the date of the invitation.

    • d) The amount of the handling fee payable shall be the amount applicable on the date of payment.

  • 57.4 Refund

    The International Preliminary Examining Authority shall refund the handling fee to the applicant:

    • (i) if the demand is withdrawn before the demand has been sent by that Authority to the International Bureau, or

    • (ii) if the demand is considered, under Rule 54.4 or 54bis.1(b), not to have been submitted.

Rule 58. The Preliminary Examination Fee

  • 58.1 Right to Ask for a Fee

    • a) Each International Preliminary Examining Authority may require that the applicant pay a fee (“preliminary examination fee”) for its own benefit for carrying out the international preliminary examination and for performing all other tasks entrusted to International Preliminary Examining Authorities under the Treaty and these Regulations.

    • b) The amount of the preliminary examination fee, if any, shall be fixed by the International Preliminary Examining Authority. As to the time limit for payment of the preliminary examination fee and the amount payable, the provisions of Rule 57.3 relating to the handling fee shall apply mutatis mutandis.

    • c) The preliminary examination fee shall be payable directly to the International Preliminary Examining Authority. Where that Authority is a national Office, it shall be payable in the currency prescribed by that Office, and where the Authority is an intergovernmental organization, it shall be payable in the currency of the State in which the intergovernmental organization is located or in any other currency which is freely convertible into the currency of the said State.

  • 58.2 [Red: Vervallen.]

  • 58.3 Refund

    The International Preliminary Examining Authorities shall inform the International Bureau of the extent, if any, to which, and the conditions, if any, under which, they will refund any amount paid as a preliminary examination fee where the demand is considered as if it had not been submitted and the International Bureau shall promptly publish such information.

Rule 58bis. Extension of Time Limits for Payment of Fees

  • 58bis.1 Invitation by the International Preliminary Examining Authority

    • a) Where the International Preliminary Examining Authority finds:

      • (i) that the amount paid to it is insufficient to cover the handling fee and the preliminary examination fee; or

      • (ii) by the time they are due under Rules 57.3 and 58.1b), that no fees were paid to it; the Authority shall invite the applicant to pay to it the amount required to cover those fees, together with, where applicable, the late payment fee under Rule 58bis.2, within a time limit of one month from the date of the invitation.

    • b) Where the International Preliminary Examining Authority has sent an invitation under paragraph a) and the applicant has not, within the time limit referred to in that paragraph, paid in full the amount due, including, where applicable, the late payment fee under Rule 58bis.2, the demand shall, subject to paragraph c), be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.

    • c) Any payment received by the International Preliminary Examining Authority before that Authority sends the invitation under paragraph a) shall be considered to have been received before the expiration of the time limit under Rule 57.3 or 58.1b), as the case may be.

    • d) Any payment received by the International Preliminary Examining Authority before that Authority proceeds under paragraph b) shall be considered to have been received before the expiration of the time limit under paragraph a).

  • 58bis.2 Late Payment Fee

    • a) The payment of fees in response to an invitation under Rule 58bis.1a) may be subjected by the International Preliminary Examining Authority to the payment to it, for its own benefit, of a late payment fee. The amount of that fee shall be:

      • (i) 50% of the amount of unpaid fees which is specified in the invitation, or,

      • (ii) if the amount calculated under item (i) is less than the handling fee, an amount equal to the handling fee.

    • b) The amount of the late payment fee shall not, however, exceed double the amount of the handling fee.

Rule 59. The Competent International Preliminary Examining Authority

  • 59.1 Demands under Article 31(2)(a)

    • a) For demands made under Article 31 (2)(a), each receiving Office of or acting for a Contracting State bound by the provisions of Chapter II shall, in accordance with the terms of the applicable agreement referred to in Article 32(2) and (3), inform the International Bureau which International Preliminary Examining Authority is or which International Preliminary Examining Authorities are competent for the international preliminary examination of international applications filed with it. The International Bureau shall promptly publish such information. Where several International Preliminary Examining Authorities are competent, the provisions of Rule 35.2 shall apply mutatis mutandis.

    • b) Where the international application was filed with the International Bureau as receiving Office under Rule 19.1(a)(iii), Rule 35.3(a) and (b) shall apply mutatis mutandis. Paragraph (a) of this Rule shall not apply to the International Bureau as receiving Office under Rule 19.1(a)(iii).

  • 59.2 Demands under Article 31(2)(b)

    As to demands made under Article 31(2)(b) the Assembly, in specifying the International Preliminary Examining Authority competent for international applications filed with a national Office which is an International Preliminary Examining Authority, shall give preference to that Authority; if the national Office is not an International Preliminary Examining Authority, the Assembly shall give preference to the International Preliminary Examining Authority recommended by that Office.

  • 59.3 Transmittal of the Demand to the Competent International Preliminary Examining Authority

    • a) If the demand is submitted to a receiving Office, an International Searching Authority, or an International Preliminary Examining Authority which is not competent for the international preliminary examination of the international application, that Office or Authority shall mark the date of receipt on the demand and, unless it decides to proceed under paragraph f), transmit the demand promptly to the International Bureau.

    • b) If the demand is submitted to the International Bureau, the International Bureau shall mark the date of receipt on the demand.

    • c) Where the demand is transmitted to the International Bureau under paragraph a) or submitted to it under paragraph b), the International Bureau shall promptly:

      • (i) if there is only one competent International Preliminary Examining Authority, transmit the demand to that Authority and inform the applicant accordingly, or

      • (ii) if two or more International Preliminary Examining Authorities are competent, invite the applicant to indicate, within the time limit applicable under Rule 54bis.1a) or 15 days from the date of the invitation, whichever is later, the competent International Preliminary Examining Authority to which the demand should be transmitted.

    • d) Where an indication is furnished as required under paragraph c)(ii), the International Bureau shall promptly transmit the demand to the competent International Preliminary Examining Authority indicated by the applicant. Where no indication is so furnished, the demand shall be considered not to have been submitted and the International Bureau shall so declare.

    • e) Where the demand is transmitted to a competent International Preliminary Examining Authority under paragraph c), it shall be considered to have been received on behalf of that Authority on the date marked on it under paragraph a) or b), as applicable, and the demand so transmitted shall be considered to have been received by that Authority on that date.

    • f) Where an Office or Authority to which the demand is submitted under paragraph a) decides to transmit that demand directly to the competent International Preliminary Examining Authority, paragraphs c) to e) shall apply mutatis mutandis.

Rule 60. Certain Defects in the Demand

  • 60.1 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, 53.2a)(i) to (iii), 53.2b), 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) For the purposes of Rule 53.4, if there are two or more applicants, it shall be sufficient that the indications referred to in Rule 4.5a)(ii) and (iii) be provided in respect of one of them who has the right according to Rule 54.2 to make a demand.

    • a-ter) For the purposes of Rule 53.8, if there are two or more applicants, it shall be sufficient that the demand be signed by one of them.

    • 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) [Red: Vervallen.]

    • 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) If the demand does not contain a statement concerning amendments, the International Preliminary Examining Authority shall proceed as provided for in Rules 66.1 and 69.1(a) or (b).

    • g) Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand (Rule 53.9(c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Authority shall invite the applicant to submit the amendments within a time limit fixed in the invitation and shall proceed as provided for in Rule 69.1(e).

Rule 61. Notification of the Demand and Elections

  • 61.1 Notification to the International Bureau and the Applicant

    • a) The International Preliminary Examining Authority shall indicate on the demand the date of receipt or, where applicable, the date referred to in Rule 60.1b). The International Preliminary Examining Authority shall promptly either send the demand to the International Bureau and keep a copy in its files or send a copy to the International Bureau and keep the demand in its files.

    • 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, 55.2d), 58bis.1b) or 60.1c) as if it had not been submitted, the International Preliminary Examining Authority shall notify the applicant and the International Bureau accordingly.

  • 61.2 Notification to the Elected Offices

    • a) The notification provided for in Article 31(7) shall be effected by the International Bureau.

    • b) The notification shall indicate the number and filing date of the international application, the name of the applicant, the filing date of the application whose priority is claimed (where priority is claimed) and the date of receipt by the International Preliminary Examining Authority of the demand.

    • c) The notification shall be sent to the elected Office together with the communication provided for in Article 20. Elections effected after such communication shall be notified promptly after they have been made.

    • d) Where the applicant makes an express request to an elected Office under Article 40(2) prior to the international publication of the international application, the International Bureau shall, upon request of the applicant or the elected Office, promptly effect the communication provided for in Article 20 to that Office.

  • 61.3 Information for the Applicant

    The International Bureau shall inform the applicant in writing of the notification referred to in Rule 61.2 and of the elected Offices notified under Article 31(7).

  • 61.4 Publication in the Gazette

    The International Bureau shall, promptly after the filing of the demand but not before the international publication of the international application, publish in the Gazette information on the demand and the elected States concerned, as provided in the Administrative Instructions.

Rule 62. Copy of the Written Opinion by the International Searching Authority and of Amendments under Article 19 for the International Preliminary Examining Authority

  • 62.1 Copy of Written Opinion by International Searching Authority and of Amendments Made before the Demand Is Filed

    Upon receipt of a demand, or a copy thereof, from the International Preliminary Examining Authority, the International Bureau shall promptly transmit to that Authority:

    • (i) a copy of the written opinion established under Rule 43bis.1, unless the national Office or intergovernmental organization that acted as International Searching Authority is also acting as International Preliminary Examining Authority; and

    • (ii) a copy of any amendment under Article 19, any statement referred to in that Article, and the letter required under Rule 46.5(b), unless that Authority has indicated that it has already received such a copy.

  • 62.2 Amendments Made after the Demand Is Filed

    If, at the time of filing any amendments under Article 19, a demand has already been submitted, the applicant shall preferably, at the same time as he files the amendments with the International Bureau, also file with the International Preliminary Examining Authority a copy of such amendments, any statement referred to in that Article and the letter required under Rule 46.5(b). In any case, the International Bureau shall promptly transmit a copy of such amendments, statement and letter to that Authority.

Rule 62bis. Translation for the International Preliminary Examining Authority of the Written Opinion of the International Searching Authority

  • 62bis.1 Translation and Observations

    • a) Upon request of the International Preliminary Examining Authority, the written opinion established under Rule 43bis.1 shall, when not in English or in a language accepted by that Authority, be translated into English by or under the responsibility of the International Bureau.

    • b) The International Bureau shall transmit a copy of the translation to the International Preliminary Examining Authority within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.

    • c) The applicant may make written observations as to the correctness of the translation and shall send a copy of the observations to the International Preliminary Examining Authority and to the International Bureau.

Rule 63. Minimum Requirements for International Preliminary Examining Authorities

  • 63.1 Definition of Minimum Requirements

    The minimum requirements referred to in Article 32(3) shall be the following:

    • (i) the national Office or intergovernmental organization must have at least 100 full-time employees with sufficient technical qualifications to carry out examinations;

    • (ii) that Office or organization must have at its ready disposal at least the minimum documentation referred to in Rule 34, properly arranged for examination purposes;

    • (iii) that Office or organization must have a staff which is capable of examining in the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated;

    • (iv) that Office or organization must have in place a quality management system and internal review arrangements in accordance with the common rules of international preliminary examination;

    • (v) that Office or organization must hold an appointment as an International Searching Authority.

Rule 64. Prior Art for International Preliminary Examination

  • 64.1 Prior Art

    • (a) For the purposes of Article 33(2) and (3), everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) shall be considered prior art provided that such making available occurred prior to the relevant date.

    • (b) For the purposes of paragraph (a), the relevant date shall be:

      • (i) subject to items (ii) and (iii), the international filing date of the international application under international preliminary examination;

      • (ii) where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is within the priority period, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid;

      • (iii) where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid for reasons other than the fact that the international application has an international filing date which is later than the date on which the priority period expired.

  • 64.2 Non-Written Disclosures

    In cases where the making available to the public occurred by means of an oral disclosure, use, exhibition or other non-written means (“non-written disclosure”) before the relevant date as defined in Rule 64.1 (b) and the date of such non-written disclosure is indicated in a written disclosure which has been made available to the public on a date which is the same as, or later than, the relevant date, the non-written disclosure shall not be considered part of the prior art for the purposes of Article 33(2) and (3). Nevertheless, the international preliminary examination report shall call attention to such non-written disclosure in the manner provided for in Rule 70.9.

  • 64.3 Certain Published Documents

    In cases where any application or any patent which would constitute prior art for the purposes of Article 33(2) and (3) had it been published prior to the relevant date referred to in Rule 64.1 was published on a date which is the same as, or later than, the relevant date but was filed earlier than the relevant date or claimed the priority of an earlier application which had been filed prior to the relevant date, such published application or patent shall not be considered part of the prior art for the purposes of Article 33(2) and (3). Nevertheless, the international preliminary examination report shall call attention to such application or patent in the manner provided for in Rule 70.10.

Rule 65. Inventive Step or Non-Obviousness

  • 65.1 Approach to Prior Art

    For the purposes of Article 33(3), the international preliminary examination shall take into consideration the relation of any particular claim to the prior art as a whole. It shall take into consideration the claim's relation not only to individual documents or parts thereof taken separately but also its relation to combinations of such documents or parts of documents, where such combinations are obvious to a person skilled in the art.

  • 65.2 Relevant Date

    For the purposes of Article 33(3), the relevant date for the consideration of inventive step (non-obviousness) is the date prescribed in Rule 64.1.

Rule 66. Procedure Before the International Preliminary Examining Authority

  • 66.1 Basis of the International Preliminary Examination

    • a) Subject to paragraphs (b) to (d), the international preliminary examination shall be based on the international application as filed.

    • b) The applicant may submit amendments under Article 34 at the time of filing the demand or, subject to Rule 66.4bis, until the international preliminary examination report is established.

    • c) Any amendments under Article 19 made before the demand was filed shall be taken into account for the purposes of the international preliminary examination unless superseded, or considered as reversed, by an amendment under Article 34.

    • d) Any amendments under Article 19 made after the demand was filed and any amendments under Article 34 submitted to the International Preliminary Examining Authority shall, subject to Rule 66.4bis, be taken into account for the purposes of the international preliminary examination.

    • d-bis) A rectification of an obvious mistake that is authorized under Rule 91.1 shall, subject to Rule 66.4bis, be taken into account by the International Preliminary Examining Authority for the purposes of the international preliminary examination.

    • e) Claims relating to inventions in respect of which no international search report has been established need not be the subject of international preliminary examination.

  • 66.1bis Written Opinion of the International Searching Authority

    • a) Subject to paragraph b), the written opinion established by the International Searching Authority under Rule 43bis.1 shall be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2a).

    • b) An International Preliminary Examining Authority may notify the International Bureau that paragraph a) shall not apply to the procedure before it in respect of written opinions established under Rule 43bis.1 by the International Searching Authority or Authorities specified in the notification, provided that such a notification shall not apply to cases where the national Office or intergovernmental organization that acted as International Searching Authority is also acting as International Preliminary Examining Authority. The International Bureau shall promptly publish any such notification in the Gazette.

    • c) Where the written opinion established by the International Searching Authority under Rule 43bis.1 is not, by virtue of a notification under paragraph b), considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2a), the International Preliminary Examining Authority shall notify the applicant accordingly in writing.

    • d) A written opinion established by the International Searching Authority under Rule 43bis.1 which is not, by virtue of a notification under paragraph b), considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2a) shall nevertheless be taken into account by the International Preliminary Examining Authority in proceeding under Rule 66.2a).

  • 66.1ter Top-up Searches

    The International Preliminary Examining Authority shall conduct a search (“top-up search”) to discover documents referred to in Rule 64 which have been published or have become available to the said Authority for search subsequent to the date on which the international search report was established, unless it considers that such a search would serve no useful purpose. If the Authority finds that any of the situations referred to in Article 34(3) or (4) or Rule 66.1(e) exists, the top-up search shall cover only those parts of the international application that are the subject of international preliminary examination.

  • 66.2 Written Opinion of the International Preliminary Examining Authority

    • (a) If the International Preliminary Examining Authority

      • (i) considers that any of the situations referred to in Article 34(4) exists,

      • (ii) considers that the international preliminary examination report should be negative in respect of any of the claims because the invention claimed therein does not appear to be novel, does not appear to involve an inventive step (does not appear to be non-obvious), or does not appear to be industrially applicable,

      • (iii) notices that there is some defect in the form or contents of the international application under the Treaty or these Regulations.

      • (iv) considers that any amendment goes beyond the disclosure in the international application as filed,

      • (v) wishes to accompany the international preliminary examination report by observations on the clarity of the claims, the description, and the drawings, or the question whether the claims are fully supported by the description,

      • (vi) considers that a claim relates to an invention in respect of which no international search report has been established and has decided not to carry out the international preliminary examination in respect of that claim, or

      • (vii) considers that a nucleotide and/or amino acid sequence listing is not available to it in such a form that a meaningful international preliminary examination can be carried out,

      the said Authority shall notify the applicant accordingly in writing. Where the national law of the national Office acting as International Preliminary Examining Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the second and third sentences of Rule 6.4(a), the International Preliminary Examining Authority may, in case of failure to use that manner of claiming, apply Article 34(4)(b). In such case, it shall notify the applicant accordingly in writing.

    • (b) The notification shall fully state the reasons for the opinion of the International Preliminary Examining Authority.

    • (c) The notification shall invite the applicant to submit a written reply together, where appropriate, with amendments.

    • (d) The notification shall fix a time limit for the reply. The time limit shall be reasonable under the circumstances. It shall normally be two months after the date of notification. In no case shall it be shorter than one month after the said date. It shall be at least two months after the said date where the international search report is transmitted at the same time as the notification. It shall, subject to paragraph e), not be more than three months after the said date.

    • e) The time limit for replying to the notification may be extended if the applicant so requests before its expiration.

  • 66.3 Formal Response to the International Preliminary Examining Authority

    • (a) The applicant may respond to the invitation referred to in Rule 66.2(c) of the International Preliminary Examining Authority by making amendments or - if he disagrees with the opinion of that Authority - by submitting arguments, as the case may be, or do both.

    • (b) Any response shall be submitted directly to the International Preliminary Examining Authority.

  • 66.4 Additional Opportunity for Submitting Amendments or Arguments

    • (a) If the International Preliminary Examining Authority wishes to issue one or more additional written opinions, it may do so, and Rules 66.2 and 66.3 shall apply.

    • (b) On the request of the applicant, the International Preliminary Examining Authority may give him one or more additional opportunities to submit amendments or arguments.

  • 66.4bis Consideration of Amendments, Arguments and Rectifications of Obvious Mistakes

    Amendments, arguments and rectifications of obvious mistakes need not be taken into account by the International Preliminary Examining Authority for the purposes of a written opinion or the international preliminary examination report if they are received by, authorized by or notified to that Authority, as applicable, after it has begun to draw up that opinion or report.

  • 66.5 Amendment

    Any change, other than the rectification of an obvious mistake, in the claims, the description, or the drawings, including cancellation of claims, omission of passages in the description, or omission of certain drawings, shall be considered an amendment.

  • 66.6 Informal Communications with the Applicant

    The International Preliminary Examining Authority may, at any time, communicate informally, over the telephone, in writing, or through personal interviews, with the applicant. The said Authority shall, at its discretion, decide whether it wishes to grant more than one personal interview if so requested by the applicant, or whether it wishes to reply to any informal written communication from the applicant.

  • 66.7 Copy and Translation of Earlier Application Whose Priority is Claimed

    • (a) If the International Preliminary Examining Authority needs a copy of the earlier application whose priority is claimed in the international application, the International Bureau shall, on request, promptly furnish such copy. If that copy is not furnished to the International Preliminary Examining Authority because the applicant failed to comply with the requirements of Rule 17.1, and if that earlier application was not filed with that Authority in its capacity as a national Office or the priority document is not available to that Authority from a digital library in accordance with the Administrative Instructions, the international preliminary examination report may be established as if the priority had not been claimed.

    • (b) If the application whose priority is claimed in the international application is in a language other than the language or one of the languages of the International Preliminary Examining Authority, that Authority may, where the validity of the priority claim is relevant for the formulation of the opinion referred to in Article 33(1), invite the applicant to furnish a translation in the said language or one of the said languages within two months from the date of the invitation. If the translation is not furnished within that time limit, the international preliminary examination report may be established as if the priority had not been claimed.

  • 66.8 Form of Amendments

    • a) Subject to paragraph (b), when amending the description or the drawings, the applicant shall be required to submit a replacement sheet for every sheet of the international application which, on account of an amendment, differs from the sheet previously filed. The replacement sheet or sheets shall be accompanied by a letter which shall draw attention to the differences between the replaced sheets and the replacement sheets, shall indicate the basis for the amendment in the application as filed and shall preferably also explain the reasons for the amendment.

    • b) Where the amendment consists in the deletion of passages or in minor alterations or additions, the replacement sheet referred to in paragraph a) may be a copy of the relevant sheet of the international application containing the alterations or additions, provided that the clarity and direct reproducibility of that sheet are not adversely affected. To the extent that any amendment results in the cancellation of an entire sheet, that amendment shall be communicated in a letter which shall preferably also explain the reasons for the amendment.

    • c) When amending the claims, Rule 46.5 shall apply mutatis mutandis. The set of claims submitted under Rule 46.5 as applicable by virtue of this paragraph shall replace all the claims originally filed or previously amended under Articles 19 or 34, as the case may be.

Rule 67. Subject Matter under Article 34(4) (a) (i)

  • 67.1 Definition

    No International Preliminary Examining Authority shall be required to carry out an international preliminary examination on an international application if, and to the extent to which, its subject matter is any of the following:

    • (i) scientific and mathematical theories,

    • (ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,

    • (iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,

    • (iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,

    • (v) mere presentations of information,

    • (vi) computer programs to the extent that the International Preliminary Examining Authority is not equipped to carry out an international preliminary examination concerning such programs.

Rule 68. Lack of Unity of Invention (International Preliminary Examination)

  • 68.1 No Invitation to Restrict or Pay

    Where the International Preliminary Examining Authority finds that the requirement of unity of invention is not complied with and chooses not to invite the applicant to restrict the claims or to pay additional fees, it shall proceed with the international preliminary examination, subject to Article 34(4)(b) and Rule 66.1(e), in respect of the entire international application, but shall indicate, in any written opinion and in the international preliminary examination report, that it considers that the requirement of unity of invention is not fulfilled and it shall specify the reasons therefor.

  • 68.2 Invitation to Restrict or Pay

    Where the International Preliminary Examining Authority finds that the requirement of unity of invention is not complied with and chooses to invite the applicant, at his option, to restrict the claims or to pay additional fees, the invitation shall:

    • (i) specify at least one possibility of restriction which, in the opinion of the International Preliminary Examining Authority, would be in compliance with the applicable requirement;

    • (ii) specify the reasons for which the International application is not considered as complying with the requirement of unity of invention;

    • (iii) invite the applicant to comply with the invitation within one month from the date of the invitation;

    • (iv) indicate the amount of the required additional fees to be paid in case the applicant so chooses; and

    • (v) invite the applicant to pay, where applicable, the protest fee referred to in Rule 68.3(e) within one month from the date of the invitation, and indicate the amount to be paid.

  • 68.3 Additional Fees

    • a) The amount of the additional fees due for International preliminary examination under Article 34(3)(a) shall be determined by the competent International Preliminary Examining Authority.

    • b) The additional fees due for International preliminary examination under Article 34(3)(a) shall be payable direct to the International Preliminary Examining Authority.

    • c) Any applicant may pay the additional fees under protest, that is, accompanied by a reasoned statement to the effect that the International application complies with the requirement of unity of invention or that the amount of the required additional fees is excessive. Such protest shall be examined by a review body constituted in the framework of the International Preliminary Examining Authority which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fees. On the request of the applicant, the text of both the protest and the decision thereon shall be notified to the elected Offices as an annex to the International preliminary examination report.

    • d) The membership of the review body referred to in paragraph (c) may include, but shall not be limited to, the person who made the decision which is the subject of the protest.

    • e) The examination of a protest referred to in paragraph (c) may be subjected by the International Preliminary Examining Authority to the payment to it, for its own benefit, of a protest fee. Where the applicant has not, within the time limit under Rule 68.2(v), paid any required protest fee, the protest shall be considered not to have been made and the International Preliminary Examining Authority shall so declare. The protest fee shall be refunded to the applicant where the review body referred to in paragraph (c) finds that the protest was entirely justified.

  • 68.4 Procedure in the Case of Insufficient Restriction of the Claims

    If the applicant restricts the claims but not sufficiently to comply with the requirement of unity of invention, the International Preliminary Examining Authority shall proceed as provided in Article 34(3) (c).

  • 68.5 Main Invention

    In case of doubt which invention is the main invention for the purposes of Article 34(3) (c), the invention first mentioned in the claims shall be considered the main invention.

Rule 69. Start of and Time Limit for International Preliminary Examination

  • 69.1 Start of International Preliminary Examination

    • a) Subject to paragraphs (b) to (e), the International Preliminary Examining Authority shall start the International preliminary examination when it is in possession of all of the following:

      • (i) the demand;

      • (ii) the amount due (in full) for the handling fee and the preliminary examination fee, including, where applicable, the late payment fee under Rule 58bis.2; and

      • (iii) either the International search report or the declaration by the International Searching Authority under Article 17(2)(a) that no international search report will be established, and the written opinion established under Rule 43bis.1;

      provided that the International Preliminary Examining Authority shall not start the international preliminary examination before the expiration of the applicable time limit under Rule 54bis.1(a) unless the applicant expressly requests an earlier start.

    • b) If the national Office or intergovernmental organization that acts as International Searching Authority also acts as International Preliminary Examining Authority, the international preliminary examination may, if that national Office or intergovernmental organization so wishes and subject to paragraphs d) and e), start at the same time as the international search.

    • b-bis) Where, in accordance with paragraph b), the national Office or intergovernmental organization that acts as both International Searching Authority and International Preliminary Examining Authority wishes to start the international preliminary examination at the same time as the international search and considers that all of the conditions referred to in Article 34(2)c)(i) to (iii) are fulfilled, that national Office or intergovernmental organization need not, in its capacity as International Searching Authority, establish a written opinion under Rule 43bis.1.

    • c) Where the statement concerning amendments contains an indication that amendments under Article 19 are to be taken into account (Rule 53.9(a)(i)), the International Preliminary Examining Authority shall not start the international preliminary examination before it has received a copy of the amendments concerned.

    • d) Where the statement concerning amendments contains an indication that the start of the International preliminary examination is to be postponed (Rule 53.9(b)), the International Preliminary Examining Authority shall not start the international preliminary examination before whichever of the following occurs first:

      • (i) it has received a copy of any amendments made under Article 19;

      • (ii) it has received a notice from the applicant that he does not wish to make amendments under Article 19; or

      • (iii) the expiration of the applicable time limit under Rule 46.1.

    • e) Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand (Rule 53.9(c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Authority shall not start the international preliminary examination before it has received the amendments or before the time limit fixed in the invitation referred to in Rule 60.1(g) has expired, whichever occurs first.

  • 69.2 Time Limit for International Preliminary Examination

    The time limit for establishing the international preliminary examination report shall be whichever of the following periods expires last:

    • (i) 28 months from the priority date; or

    • (ii) six months from the time provided under Rule 69.1 for the start of the international preliminary examination; or

    • (iii) six months from the date of receipt by the International Preliminary Examining Authority of the translation furnished under Rule 55.2.

Rule 70. International preliminary Report on Patentability by the International Preliminary Examining Authority (International Examination Report)

  • 70.1 Definition

    For the purposes of this Rule, “report” shall mean international preliminary examination report.

  • 70.2 Basis of the Report

    • (a) If the claims have been amended, the report shall issue on the claims as amended.

    • (b) If, pursuant to Rule 66.7 (a) or (b), the report is established as if the priority had not been claimed, the report shall so indicate.

    • (c) If the International Preliminary Examining Authority considers that any amendment goes beyond the disclosure in the international application as filed, the report shall be established as if such amendment had not been made, and the report shall so indicate. It shall also indicate the reasons why it considers that the amendment goes beyond the said disclosure.

    • (c-bis) If the claims, description or drawings have been amended but the replacement sheet or sheets were not accompanied by a letter indicating the basis for the amendment in the application as filed, as required under Rule 46.5(b)(iii), Rule 46.5(b)(iii) being applicable by virtue of Rule 66.8(c), or Rule 66.8(a), as applicable, the report may be established as if the amendment had not been made, in which case the report shall so indicate.

    • (d) Where claims relate to inventions in respect of which no international search report has been established and have therefore not been the subject of international preliminary examination, the international preliminary examination report shall so indicate.

    • (e) If a rectification of an obvious mistake is taken into account under Rule 66.1, the report shall so indicate. If a rectification of an obvious mistake is not taken into account pursuant to Rule 66.4bis, the report shall, if possible, so indicate, failing which the International Preliminary Examining Authority shall notify the International Bureau accordingly and the International Bureau shall proceed as provided for in the Administrative Instructions.

    • (f) The report shall indicate the date on which a top-up search under Rule 66.1ter was made, or else state that no top-up search was made.

  • 70.3 Identifications

    The report shall identify the International Preliminary Examining Authority which established it by indicating the name of such Authority, and the international application by indicating the international application number, the name of the applicant, and the international filing date.

  • 70.4 Dates

    The report shall indicate:

    • (i) the date on which the demand was submitted, and

    • (ii) the date of the report; that date shall be the date on which the report is completed.

  • 70.5 Classification

    • (a) The report shall repeat the classification given under Rule 43.3 if the International Preliminary Examining Authority agrees with such classification.

    • (b) Otherwise, the International Preliminary Examining Authority shall indicate in the report the classification, at least according to the International Patent Classification, which it considers correct.

  • 70.6 Statement under Article 35(2)

    • (a) The statement referred to in Article 35(2) shall consist of the words “YES” or “NO”, or their equivalent in the language of the report, or some appropriate sign provided for in the Administrative Instructions, and shall be accompanied by the citations, explanations and observations, if any, referred to in the last sentence of Article 35(2).

    • (b) If any of the three criteria referred to in Article 35(2) (that is, novelty, inventive step (non-obviousness), industrial applicability) is not satisfied, the statement shall be negative. If, in such a case, any of the criteria, taken separately, is satisfied, the report shall specify the criterion or criteria so satisfied.

  • 70.7 Citations Under Article 35(2)

    • (a) The report shall cite the documents considered to be relevant for supporting the statements made under Article 35(2), whether or not such documents are cited in the international search report. Documents cited in the international search report need only be cited in the report when they are considered by the International Preliminary Examining Authority to be relevant.

    • (b) The provisions of Rule 43.5 (b) and (e) shall apply also to the report.

  • 70.8 Explanations under Article 35(2)

    The Administrative Instructions shall contain guidelines for cases in which the explanations referred to in Article 35(2) should or should not be given and the form of such explanations. Such guidelines shall be based on the following principles:

    • (i) explanations shall be given whenever the statement in relation to any claim is negative;

    • (ii) explanations shall be given whenever the statement is positive unless the reason for citing any document is easy to imagine on the basis of consultation of the cited document;

    • (iii) generally, explanations shall be given if the case provided for in the last sentence of Rule 70.6 (b) obtains.

  • 70.9 Non-Written Disclosures

    Any non-written disclosure referred to in the report by virtue of Rule 64.2 shall be mentioned by indicating its kind, the date on which the written disclosure referring to the non-written disclosure was made available to the public, and the date on which the non-written disclosure occurred in public.

  • 70.10 Certain Published Documents

    Any published application or any patent referred to in the report by virtue of Rule 64.3 shall be mentioned as such and shall be accompanied by an indication of its date of publication, of its filing date, and its claimed priority date (if any). In respect of the priority date of any such document, the report may indicate that, in the opinion of the International Preliminary Examining Authority, such date has not been validly claimed.

  • 70.11 Mention of Amendments

    If, before the International Preliminary Examining Authority, amendments have been made, this fact shall be indicated in the report. Where any amendment has resulted in the cancellation of an entire sheet, this fact shall also be specified in the report.

  • 70.12 Mention of Certain Defects and Other Matters

    If the International Preliminary Examining Authority considers that, at the time it prepares the report:

    • (i) the international application contains any of the defects referred to in Rule 66.2(a)(iii), it shall include this opinion and the reasons therefor in the report;

    • (ii) the international application calls for any of the observations referred to in Rule 66.2(a)(v), it may include this opinion in the report and, if it does, it shall also indicate in the report the reasons for such opinion;

    • (iii) any of the situations referred to in Article 34(4) exists, it shall state this opinion and the reasons therefor in the report;

    • (iv) a nucleotide and/or amino acid sequence listing is not available to it in such a form that a meaningful international preliminary examination can be carried out, it shall so state in the report.

  • 70.13 Remarks Concerning Unity of Invention

    If the applicant paid additional fees for the international preliminary examination, or if the international application or the international preliminary examination was restricted under Article 34(3), the report shall so indicate. Furthermore, where the international preliminary examination was carried out on restricted claims (Article 34(3)(a)), or on the main invention only (Article 34(3)(c)), the report shall indicate what parts of the international application were and what parts were not the subject of international preliminary examination. The report shall contain the indications provided for in Rule 68.1, where the International Preliminary Examining Authority chose not to invite the applicant to restrict the claims or to pay additional fees.

  • 70.14 Authorized Officer

    The report shall indicate the name of the officer of the International Preliminary Examining Authority responsible for that report.

  • 70.15 Form; Title

    • a) The physical requirements as to the form of the report shall be prescribed by the Administrative Instructions.

    • b) The report shall bear the title “international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)” together with an indication that it is the international preliminary examination report established by the International Preliminary Examining Authority.

  • 70.16 Annexes to the Report

    • (a) The following replacement sheets and letters shall be annexed to the report:

      • (i) each replacement sheet under Rule 66.8 containing amendments under Article 34 and each letter under Rule 66.8(a), Rule 66.8(b) and Rule 46.5(b) as applicable by virtue of Rule 66.8(c);

      • (ii) each replacement sheet under Rule 46.5 containing amendments under Article 19 and each letter under Rule 46.5; and

      • (iii) each replacement sheet under Rule 26.4 as applicable by virtue of Rule 91.2 containing a rectification of an obvious mistake authorized by that Authority under Rule 91.1(b)(iii) and each letter under Rule 26.4 as applicable by virtue of Rule 91.2;

      unless any such replacement sheet has been superseded or considered reversed by a later replacement sheet or an amendment resulting in the cancellation of an entire sheet under Rule 66.8(b); and

      • (iv) where the report contains an indication referred to in Rule 70.2(e), any sheet and letter relating to a rectification of an obvious mistake which is not taken into account pursuant to Rule 66.4bis.

    • (b) Notwithstanding paragraph (a), each superseded or reversed replacement sheet referred to in that paragraph and any letter referred to in that paragraph relating to such superseded or reversed sheet shall also be annexed to the report where:

      • (i) 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);

      • (ii) the relevant superseding or reversing amendment was not accompanied by a letter indicating the basis for the amendment in the application as filed and the report is established as if the amendment had not been made and contains an indication referred to in Rule 70.2(c-bis).

      In such a case, the superseded or reversed replacement sheet shall be marked as provided by the Administrative Instructions.

  • 70.17 Languages of the Report and the Annexes

    The report and any annex shall be in the language in which the international application to which they relate is published, or, if the international preliminary examination is carried out, pursuant to Rule 55.2, on the basis of a translation of the international application, in the language of that translation.

Rule 71. Transmittal of the International Preliminary Examination Report

  • 71.1 Recipients

    The International Preliminary Examining Authority shall, on the same day, transmit one copy of the international preliminary examination report and its annexes, if any, to the International Bureau, and one copy to the applicant.

  • 71.2 Copies of Cited Documents

    • (a) The request under Article 36(4) may be presented any time during 7 years from the international filing date of the international application to which the report relates.

    • (b) The International Preliminary Examining Authority may require that the party (applicant or elected Office) presenting the request pay to it the cost of preparing and mailing the copies. The level of the cost of preparing copies shall be provided for in the agreements referred to in Article 32(2) between the International Preliminary Examining Authorities and the International Bureau.

    • (c) [Red: Vervallen.]

    • (d) Any International Preliminary Examining Authority may perform the obligations referred to in paragraphs (a) and (b) through another agency responsible to it.

Rule 72. Translation of the International Preliminary Examination Report and of the Written Opinion of the International Searching Authority

  • 72.1 Languages

    • (a) Any elected State may require that the international preliminary examination report, established in any language other than the official language, or one of the official languages, of its national Office, be translated into English.

    • (b) Any such requirement shall be notified to the International Bureau, which shall promptly publish it in the Gazette.

  • 72.2 Copy of Translation for the Applicant

    The International Bureau shall transmit a copy of the translation referred to in Rule 72.1(a) of the international preliminary examination report to the applicant at the same time as it communicates such translation to the interested elected Office or Offices.

  • 72.2bis Translation of the Written Opinion of the International Searching Authority Established Under Rule 43bis.1

    In the case referred to in Rule 73.2b)(ii), the written opinion established by the International Searching Authority under Rule 43bis.1 shall, upon request of the elected Office concerned, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to the elected Office concerned within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.

  • 72.3 Observations on the Translation

    The applicant may make written observations as to the correctness of the translation of the international preliminary examination report or of the written opinion established by the International Searching Authority under Rule 43bis.1 and shall send a copy of the observations to each of the interested elected Offices and to the International Bureau.

Rule 73. Communication of the International Preliminary Examination Report or the Written Opinion of the International Searching Authority

  • 73.1 Preparation of Copies

    The International Bureau shall prepare the copies of the documents to be communicated under Article 36(3)(a).

  • 73.2 Communication to Elected Offices

    • a) The International Bureau shall effect the communication provided for in Article 36(3)a) to each elected Office in accordance with Rule 93bis.1 but not before the expiration of 30 months from the priority date.

    • b) Where the applicant makes an express request to an elected Office under Article 40(2), the International Bureau shall, upon the request of that Office or of the applicant,

      • (i) if the international preliminary examination report has already been transmitted to the International Bureau under Rule 71.1, promptly effect the communication provided for in Article 36(3)a) to that Office;

      • (ii) if the international preliminary examination report has not been transmitted to the International Bureau under Rule 71.1, promptly communicate a copy of the written opinion established by the International Searching Authority under Rule 43bis.1 to that Office.

    • c) Where the applicant has withdrawn the demand or any or all elections, the communication provided for in paragraph a) shall nevertheless be effected, if the International Bureau has received the international preliminary examination report, to the elected Office or Offices affected by the withdrawal.

Rule 74. Translations of Annexes of the International Preliminary Examination Report and Transmittal Thereof

  • 74.1 Contents of Translation and Time Limit for Transmittal Thereof

    • a) Where the furnishing of a translation of the international application is required by the elected Office under Article 39.1), the applicant shall, within the time limit applicable under Article 39.1), transmit a translation of any replacement sheet referred to in Rule 70.16 which is annexed to the international preliminary examination report, unless such sheet is in the language of the required translation of the international application. The same time limit shall apply where the furnishing of a translation of the international application to the elected Office must, because of a declaration made under Article 64.2.a)i), be effected within the time limit applicable under Article 22.

    • b) Where the furnishing under Article 39.1) of a translation of the international application is not required by the elected Office, that Office may require the applicant to furnish, within the time limit applicable under that Article, a translation into the language in which the international application was published of any replacement sheet referred to in Rule 70.16 which is annexed to the international preliminary examination report and is not in that language.

Rule 75. Withdrawal of the Demand, or of Elections [Vervallen per 01-07-1992]

Rule 76. Translation of Priority Document; Application of Certain Rules to Procedures before Elected Offices

  • 76.1 [Red: Vervallen.]

  • 76.2 [Red: Vervallen.]

  • 76.3 [Red: Vervallen.]

  • 76.4 Time Limit for Translation of priority Document

    The applicant shall not be required to furnish to any elected Office a translation of the priority document before the expiration of the applicable time limit under Article 39.

  • 76.5 Application of Certain Rules to Procedures before Elected Office

    Rules 13ter.3, 20.8(c), 22.1(g), 47.1, 49, 49bis, 49ter and 51bis shall apply, provided that:

    • (i) any reference in the said Rules to the designated Office or to the designated State shall be construed as a reference to the elected Office or to the elected State, respectively;

    • (ii) any reference in the said Rules to Article 22, Article 23(2) or Article 24(2) shall be construed as a reference to Article 39(1), Article 40(2) or Article 39(3), respectively;

    • (iii) the words “international applications filed” in Rule 49.1(c) shall be replaced by the words “a demand submitted”;

    • (iv) for the purposes of Article 39(1), where an international preliminary examination report has been established, a translation of any amendment under Article 19 shall only be required if that amendment is annexed to that report;

    • (v) the reference in Rule 47.1a) to Rule 47.4 shall be construed as a reference to Rule 61.2d).

Rule 77. Faculty under Article 39(1)(b)

  • 77.1 Exercise of Faculty

    • (a) Any Contracting State allowing a time limit expiring later than the time limit provided for in Article 39(1)(a) shall notify the International Bureau of the time limit so fixed.

    • (b) Any notification received by the International Bureau under paragraph (a) shall be promptly published by the International Bureau in the Gazette.

    • (c) Notifications concerning the shortening of the previously fixed time limit shall be effective in relation to demands submitted after the expiration of 3 months computed from the date on which the notification was published by the International Bureau.

    • (d) Notifications concerning the lengthening of the previously fixed time limit shall become effective upon publication by the International Bureau in the Gazette in respect of demands pending at the time or submitted after the date of such publication or, if the Contracting State effecting the notification fixes some later date, as from the latter date.

Rule 78. Amendment of the Claims, the Description, and the Drawings, Before Elected Offices

  • 78.1 Time Limit

    • a) The applicant shall, if he so wishes, exercise the right under Article 41 to amend the claims, the description and the drawings, before the elected Office concerned within one month from the fulfillment of the requirements under Article 39(1)a), provided that, if the transmittal of the international preliminary examination report under Article 36(1) has not taken place by the expiration of the time limit applicable under Article 39, he shall exercise the said right not later than four months after such expiration date. In either case, the applicant may exercise the said right at any later time if so permitted by the national law of the said State.

    • b) In any elected State in which the national law provides that examination starts only on special request, the national law may provide that the time limit within or the time at which the applicant may exercise the right under Article 41 shall be the same as that provided by the national law for the filing of amendments in the case of the examination, on special request, of national applications, provided that such time limit shall not expire prior to, or such time shall not come before, the expiration of the time limit applicable under paragraph a).

  • 78.2 [Red: Vervallen.]

  • 78.3 Utility Models

    The provisions of Rules 6.5 and 13.5 shall apply, mutatis mutandis, before elected Offices. If the election was made before the expiration of the 19th month from the priority date, the reference to the time limit applicable under Article 22 is replaced by a reference to the time limit applicable under Article 39.

PART D. Rules Concerning Chapter III of the Treaty

Rule 79. Calendar

  • 79.1 Expressing Dates

    Applicants, national Offices, receiving Offices, International Searching and Preliminary Examining Authorities, and the International Bureau, shall, for the purposes of the Treaty and the Regulations, express any date in terms of the Christian era and the Gregorian calendar, or, if they use other eras and calendars, they shall also express any date in terms of the Christian era and the Gregorian calendar.

Rule 80. Computation of Time Limits

  • 80.1 Periods Expressed in Years

    When a period is expressed as one year or a certain number of years, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent year in the month having the same name and on the day having the same number as the month and the day on which the said event occurred provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.

  • 80.2 Periods Expressed in Months

    When a period is expressed as one month or a certain number of months, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent month on the day which has the same number as the day on which the said event occurred, provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.

  • 80.3 Periods Expressed in Days

    When a period is expressed as a certain number of days, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire on the day on which the last day of the count has been reached.

  • 80.4 Local Dates

    • (a) The date which is taken into consideration as the starting date of the computation of any period shall be the date which prevails in the locality at the time when the relevant event occurred.

    • (b) The date on which any period expires shall be the date which prevails in the locality in which the required document must be filed or the required fee must be paid.

  • 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 Date of Documents

    Where a period starts on the day of the date of a document or letter emanating from a national Office or intergovernmental organization, any interested party may prove that the said document or letter was mailed on a day later than the date it bears, in which case the date of actual mailing shall, for the purposes of computing the period, be considered to be the date on which the period starts. Irrespective of the date on which such a document or letter was mailed, if the applicant offers to the national Office or intergovernmental organization evidence which satisfies the national Office or intergovernmental organization that the document or letter was received more than 7 days after the date it bears, the national Office or intergovernmental organization shall treat the period starting from the date of the document or letter as expiring later by an additional number of days which is equal to the number of days which the document or letter was received later than 7 days after the date it bears.

  • 80.7 End of Working Day

    • (a) A period expiring on a given day shall expire at the moment the national Office or intergovernmental organization with which the document must be filed or to which the fee must be paid closes for business on that day.

    • (b) Any Office or organization may depart from the provisions of paragraph (a) up to midnight on the relevant day.

Rule 81. Modification of Time Limits Fixed in the Treaty

  • 81.1 Proposal

    • (a) Any Contracting State or the Director General may propose a modification under Article 47(2).

    • (b) Proposals made by a Contracting State shall be presented to the Director General.

  • 81.2 Decision by the Assembly

    • (a) When the proposal is made to the Assembly, its text shall be sent by the Director General to all Contracting States at least 2 months in advance of that session of the Assembly whose agenda includes the proposal.

    • (b) During the discussion of the proposal in the Assembly, the proposal may be amended or consequential amendments proposed.

    • (c) The proposal shall be considered adopted if none of the Contracting States present at the time of voting votes against the proposal.

  • 81.3 Voting by Correspondence

    • (a) When voting by correspondence is chosen, the proposal shall be included in a written communication from the Director General to the Contracting States, inviting them to express their vote in writing.

    • (b) The invitation shall fix the time limit within which the reply containing the vote expressed in writing must reach the International Bureau. That time limit shall not be less than 3 months from the date of the invitation.

    • (c) Replies must be either positive or negative. Proposals for amendments or mere observations shall not be regarded as votes.

    • (d) The proposal shall be considered adopted if none of the Contracting States opposes the amendment and if at least one-half of the Contracting States express either approval or indifference or abstention.

Rule 82. Irregularities in the Mail Service

  • 82.1 Delay or Loss in Mail

    • (a) Any interested party may offer evidence that he has mailed the document or letter 5 days prior to the expiration of the time limit. Except in cases where surface mail normally arrives at its destination within 2 days of mailing, or where no airmail service is available, such evidence may be offered only if the mailing was by airmail. In any case, evidence may be offered only if the mailing was by mail registered by the postal authorities.

    • (b) If the mailing, in accordance with paragraph (a), of a document or letter is proven to the satisfaction of the national Office or intergovernmental organization which is the addressee, delay in arrival shall be excused, or, if the document or letter is lost in the mail, substitution for it of a new copy shall be permitted, provided that the interested party proves to the satisfaction of the said Office or organization that the document or letter offered in substitution is identical with the document or letter lost.

    • (c) In the cases provided for in paragraph (b), evidence of mailing within the prescribed time limit, and, where the document or letter was lost, the substitute document or letter as well as the evidence concerning its identity with the document or letter lost shall be submitted within 1 month after the date on which the interested party noticed - or with due diligence should have noticed - the delay or the loss, and in no case later than 6 months after the expiration of the time limit applicable in the given case.

    • (d) Any national Office or intergovernmental organization which has notified the International Bureau that it will do so shall, where a delivery service other than the postal authorities is used to mail a document or letter, apply the provisions of paragraphs (a) to (c) as if the delivery service was a postal authority. In such a case, the last sentence of paragraph (a) shall not apply but evidence may be offered only if details of the mailing were recorded by the delivery service at the time of mailing. The notification may contain an indication that it applies only to mailings using specified delivery services or delivery services which satisfy specified criteria. The International Bureau shall publish the information so notified in the Gazette.

    • (e) Any national Office or intergovernmental organization may proceed under paragraph (d):

      • (i) even if, where applicable, the delivery service used was not one of those specified, or did not satisfy the criteria specified, in the relevant notification under paragraph (d), or

      • (ii) even if that Office or organization has not sent to the International Bureau a notification under paragraph (d).

  • 82.2 [Red: Vervallen.]

Rule 82bis. Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits

  • 82bis. 1 Meaning of “Time Limit” in Article 48(2)

    The reference to “any time limit” in Article 48(2) shall be construed as comprising a reference:

    • (i) to any time limit fixed in the Treaty or these Regulations;

    • (ii) to any time limit fixed by the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau or applicable by the receiving Office under its national law;

    • (iii) to any time limit fixed by, or in the national law applicable by, the designated or elected Office, for the performance of any act by the applicant before that Office.

  • 82bis.2 Reinstatement of Rights and Other Provisions to which Article 48(2) Applies

    The provisions of the national law which is referred to in Article 48(2) concerning the excusing, by the designated or elected State, of any delay in meeting any time limit are those provisions which provide for reinstatement of rights, restoration, restitutio in integrum or further processing in spite of non-compliance with a time limit, and any other provision providing for the extension of time limits or for excusing delays in meeting time limits.

Rule 82ter. Rectification of Errors Made by the Receiving Office or by the International Bureau

  • 82ter.1 Errors concerning the International Filing Date and the Priority Claim

    • a) If the applicant proves to the satisfaction of any designated or elected Office that the international filing date is incorrect due to an error made by the receiving Office or that the priority claim has been erroneously considered void by the receiving Office or the International Bureau, and if the error is an error such that, had it been made by the designated or elected Office itself, that Office would rectify it under the national law or national practice, the said Office shall rectify the error and shall treat the international application as if it had been accorded the rectified international filing date or as if the priority claim had not been considered void.

    • b) Where the international filing date has been accorded by the receiving Office under Rule 20.3b)(ii) or 20.5d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part but the designated or elected Office finds that:

      • (i) the applicant has not complied with Rule 17.1a), b) or (b-bis) in relation to the priority document;

      • (ii) a requirement under Rule 4.18, 20.6a)(i) or 51bis.1e)(ii) has not been complied with; or

      • (iii) the element or part is not completely contained in the priority document concerned;

      the designated or elected Office may, subject to paragraph c), treat the international application as if the international filing date had been accorded under Rule 20.3b)(i) or 20.5b), or corrected under Rule 20.5c), as applicable, provided that Rule 17.1c) shall apply mutatis mutandis.

    • c) The designated or elected Office shall not treat the international application under paragraph b) as if the international filing date had been accorded under Rule 20.3b)(i) or 20.5b), or corrected under Rule 20.5c), without giving the applicant the opportunity to make observations on the intended treatment, or to make a request under paragraph d), within a time limit which shall be reasonable under the circumstances.

    • d) Where the designated or elected Office, in accordance with paragraph c), has notified the applicant that it intends to treat the international application as if the international filing date had been corrected under Rule 20.5c), the applicant may, in a notice submitted to that Office within the time limit referred to in paragraph c), request that the missing part concerned be disregarded for the purposes of national processing before that Office, in which case that part shall be considered not to have been furnished and that Office shall not treat the international application as if the international filing date had been corrected.

Rule 82quater. Excuse of Delay in Meeting Time Limits

82quater.1 Excuse of Delay in Meeting Time Limits

  • (a) Any interested party may offer evidence that a time limit fixed in the Regulations for performing an action before the receiving Office, the International Searching Authority, the Authority specified for supplementary search, the International Preliminary Examining Authority or the International Bureau was not met due to war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communications services or other like reason in the locality where the interested party resides, has his place of business or is staying, and that the relevant action was taken as soon as reasonably possible.

  • (b) Any such evidence shall be addressed to the Office, Authority or the International Bureau, as the case may be, not later than six months after the expiration of the time limit applicable in the given case. If such circumstances are proven to the satisfaction of the addressee, delay in meeting the time limit shall be excused.

  • (c) The excuse of a delay need not be taken into account by any designated or elected Office before which the applicant, at the time the decision to excuse the delay is taken, has already performed the acts referred to in Article 22 or Article 39.

Rule 83. Right to Practice Before International Authorities

  • 83.1 Proof of Right

    The International Bureau, the competent International Searching Authority, and the competent International Preliminary Examining Authority, may require the production of proof of the right to practice referred to in Article 49.

  • 83.1 bis Where the International Bureau Is the Receiving Office

    • a) Any person who has the right to practice before the national Office of, or acting for, a Contracting State of which the applicant or, if there are two or more applicants, any of the applicants is a resident or national shall be entitled to practice in respect of the international application before the International Bureau in its capacity as receiving Office under Rule 19.1 (a)(iii).

    • b) Any person having the right to practice before the International Bureau in its capacity as receiving Office in respect of an international application shall be entitled to practice in respect of that application before the International Bureau in any other capacity and before the competent International Searching Authority and competent International Preliminary Examining Authority.

  • 83.2 Information

    • (a) The national Office or the intergovernmental organization which the interested person is alleged to have a right to practice before shall, upon request, inform the International Bureau, the competent International Searching Authority, or the competent International Preliminary Examining Authority, whether such person has the right to practice before it.

    • (b) Such information shall be binding upon the International Bureau, the International Searching Authority, or the International Preliminary Examining Authority, as the case may be.

PART E. Rules Concerning Chapter V of the Treaty

Rule 84. Expenses of Delegations

  • 84.1 Expenses Borne by Governments

    The expenses of each Delegation participating in any organ established by or under the Treaty shall be borne by the Government which has appointed it.

Rule 85. Absence of Quorum in the Assembly

  • 85.1 Voting by Correspondence

    In the case provided for in Article 53(5) (b) the International Bureau shall communicate the decisions of the Assembly (other than those concerning the Assembly's own procedure) to the Contracting States which were not represented and shall invite them to express in writing their vote or abstention within a period of 3 months from the date of the communication. If, at the expiration of that period, the number of Contracting States having thus expressed their vote or abstention attains the number of Contracting States which was lacking for attaining the quorum in the session itself, such decisions shall take effect provided that at the same time the required majority still obtains.

Rule 86. The Gazette

  • 86.1 Contents

    The Gazette referred to in Article 55(4) shall contain:

    • (i) for each published international application, the data specified by the Administrative Instructions taken from the front page of the publication of the international application, the drawing (if any) appearing on the said front page, and the abstract;

    • (ii) the schedule of all fees payable to the receiving Offices, the International Bureau, and the International Searching and Preliminary Examining Authorities;

    • (iii) notices the publication of which is required under the Treaty or these Regulations;

    • (iv) information, if and to the extent furnished to the International Bureau by the designated or elected Offices, on the question whether the requirements provided for in Articles 22 or 39 have been complied with in respect of the international applications designating or electing the Office concerned;

    • (v) any other useful information prescribed by the Administrative Instructions, provided access to such information is not prohibited under the Treaty or these Regulations.

  • 86.2 Languages; Form and Means of Publication; Timing

    • (a) The Gazette shall be published in English and French at the same time. The translations shall be ensured by the International Bureau in English and French.

    • (b) The Assembly may order the publication of the Gazette in languages other than those referred to in paragraph (a).

    • (c) The form in which and the means by which the Gazette is published shall be governed by the Administrative Instructions.

    • (d) The International Bureau shall ensure that, for each published international application, the information referred to in Rule 86.1(i) is published in the Gazette on, or as soon as possible after, the date of publication of the international application.

  • 86.3 Frequency

    The frequency of publication of the Gazette shall be determined by the Director General.

  • 86.4 Sale

    The subscription and other sale prices of the Gazette shall be determined by the Director General.

  • 86.5 Title

    The title of the Gazette shall be determined by the Director General.

  • 86.6 Further Details

    Further details concerning the Gazette may be provided for in the Administrative Instructions.

Rule 87. Communication of Publications

  • 87.1

Communication of Publications on Request

The International Bureau shall communicate, free of charge, every published international application, the Gazette and any other publication of general interest published by the International Bureau in connection with the Treaty or these Regulations, to International Searching Authorities, International Preliminary Examining Authorities and national Offices upon request by the Authority or Office concerned. Further details concerning the form in which and the means by which publications are communicated shall be governed by the Administrative Instructions.

Rule 88. Amendment of the Regulations

  • 88.1 Requirement of Unanimity

    Amendment of the following provisions of these Regulations shall require that no State having the right to vote in the Assembly vote against the proposed amendment:

    • (i) Rule 14.1 (Transmittal Fee),

    • (ii) [Red: vervallen,]

    • (iii) Rule 22.3 (Time Limit Under Article 12(3)),

    • (iv) Rule 33 (Relevant Prior Art for International Search),

    • (v) Rule 64 (Prior Art for International Preliminary Examination),

    • (vi) Rule 81 (Modification of Time Limits Fixed in the Treaty),

    • vii) the present paragraph (i.e., Rule 88.1).

  • 88.2 [Red: Vervallen.]

  • 88.3 Requirement of Absence of Opposition by Certain States

    Amendment of the following provisions of these Regulations shall require that no State referred to in Article 58(3) (a) (ii) and having the right to vote in the Assembly vote against the proposed amendment:

    • (i) Rule 34 (Minimum Documentation),

    • (ii) Rule 39 (Subject Matter Under Article 17(2) (a) (i)),

    • (iii) Rule 67 (Subject Matter Under Article 34(4) (a) (i)),

    • (iv) the present paragraph (i.e., Rule 88.3).

  • 88.4 Procedure

    Any proposal for amending a provision referred to in Rules 88.1 or 88.3 shall, if the proposal is to be decided upon in the Assembly, be communicated to all Contracting States at least 2 months prior to the opening of that session of the Assembly which is called upon to make a decision on the proposal.

Rule 89. Administrative Instructions

  • 89.1 Scope

    • (a) The Administrative Instructions shall contain provisions:

      • (i) concerning matters in respect of which these Regulations expressly refer to such Instructions,

      • (ii) concerning any details in respect of the application of these Regulations.

    • (b) The Administrative Instructions shall not be in conflict with the provisions of the Treaty, these Regulations, or any agreement concluded by the International Bureau with an International Searching Authority, or an International Preliminary Examining Authority.

  • 89.2 Source

    • (a) The Administrative Instructions shall be drawn up and promulgated by the Director General after consultation with the receiving Offices and the International Searching and Preliminary Examining Authorities.

    • (b) They may be modified by the Director General after consultation with the Offices or Authorities which have a direct interest in the proposed modification.

    • (c) The Assembly may invite the Director General to modify the Administrative Instructions, and the Director General shall proceed accordingly.

  • 89.3 Publication and Entry Into Force

    • (a) The Administrative Instructions and any modification thereof shall be published in the Gazette.

    • (b) Each publication shall specify the date on which the published provisions come into effect. The dates may be different for different provisions, provided that no provision may be declared effective prior to its publication in the Gazette.

PART F. Rules Concerning Several Chapters of the Treaty

Rule 89bis. Filing, Processing and Communication of International Applications and Other Documents in Electronic Form or by Electronic Means

  • 89bis.1 International Applications

    • a) International applications may, subject to paragraphs b) to e), be filed and processed in electronic form or by electronic means, in accordance with the Administrative Instructions, provided that any receiving Office shall permit the filing of international applications on paper.

    • b) These Regulations shall apply mutatis mutandis to international applications filed in electronic form or by electronic means, subject to any special provisions of the Administrative Instructions.

    • c) The Administrative Instructions shall set out the provisions and requirements in relation to the filing and processing of international applications filed, in whole or in part, in electronic form or by electronic means, including but not limited to, provisions and requirements in relation to acknowledgment of receipt, procedures relating to the according of an international filing date, physical requirements and the consequences of non-compliance with those requirements, signature of documents, means of authentication of documents and of the identity of parties communicating with Offices and authorities, and the operation of Article 12 in relation to the home copy, the record copy and the search copy, and may contain different provisions and requirements in relation to international applications filed in different languages.

    • d) No national Office or intergovernmental organization shall be obliged to receive or process international applications filed in electronic form or by electronic means unless it has notified the International Bureau that it is prepared to do so in compliance with the applicable provisions of the Administrative Instructions. The International Bureau shall publish the information so notified in the Gazette.

    • e) No receiving Office which has given the International Bureau a notification under paragraph d) may refuse to process an international application filed in electronic form or by electronic means which complies with the applicable requirements under the Administrative Instructions.

  • 89bis.2 Other Documents

    Rule 89bis.1 shall apply mutatis mutandis to other documents and correspondence relating to international applications.

  • 89bis.3 Communication Between Offices

    Where the Treaty, these Regulations or the Administrative Instructions provide for the communication, notification or transmittal (“communication”) of an international application, notification, communication, correspondence or other document by one national Office or intergovernmental organization to another, such communication may, where so agreed by both the sender and the receiver, be effected in electronic form or by electronic means.

Rule 89ter. Copies in Electronic Form of Documents Filed on Paper

  • 89ter.1 Copies in Electronic Form of Documents Filed on Paper

    Any national Office or intergovernmental organization may provide that, where an international application or other document relating to an international application is filed on paper, a copy thereof in electronic form, in accordance with the Administrative Instructions, may be furnished by the applicant.

Rule 90. Agents and Common Representatives

  • 90.1 Appointment as Agent

    • a) A person having the right to practice before the national Office with which the international application is filed or, where the international application is filed with the International Bureau, having the right to practice in respect of the international application before the International Bureau as receiving Office may be appointed by the applicant as his agent to represent him before the receiving Office, the International Bureau, the International Searching Authority, any Authority specified for supplementary search and the International Preliminary Examining Authority.

    • b) A person having the right to practice before the national Office or intergovernmental organization which acts as the International Searching Authority may be appointed by the applicant as his agent to represent him specifically before that Authority.

    • b-bis) A person having the right to practice before the national Office or intergovernmental organization which acts as the Authority specified for supplementary search may be appointed by the applicant as his agent to represent him specifically before that Authority.

    • c) A person having the right to practice before the national Office or intergovernmental organization which acts as the International Preliminary Examining Authority may be appointed by the applicant as his agent to represent him specifically before that Authority.

    • d) An agent appointed under paragraph (a) may, unless otherwise indicated in the document appointing him, appoint one or more sub-agents to represent the applicant as the applicant’s agent:

      • (i) before the receiving Office, the International Bureau, the International Searching Authority, any Authority specified for supplementary search and the International Preliminary Examining Authority, provided that any person so appointed as sub-agent has the right to practice before the national Office with which the international application was filed or to practice in respect of the international application before the International Bureau as receiving Office, as the case may be;

      • (ii) specifically before the International Searching Authority, any Authority specified for supplementary search or the International Preliminary Examining Authority, provided that any person so appointed as sub-agent has the right to practice before the national Office or intergovernmental organization which acts as the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, as the case may be.

  • 90.2 Common Representative

    • 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 90.1a), 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 90.1a) 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 Effects of Acts by or in Relation to Agents and Common Representatives

    • a) Any act by or in relation to an agent shall have the effect of an act by or in relation to the applicant or applicants concerned.

    • b) If there are two or more agents representing the same applicant or applicants, any act by or in relation to any of those agents shall have the effect of an act by or in relation to the said applicant or applicants.

    • c) Subject to Rule 90bis.5, second sentence, any act by or in relation to a common representative or his agent shall have the effect of an act by or in relation to all the applicants.

  • 90.4 Manner of Appointment of Agent or Common Representative

    • a) The appointment of an agent shall be effected by the applicant signing the request, the demand or a separate power of attorney. Where there are two or more applicants, the appointment of a common agent or common representative shall be effected by each applicant signing, at his choice, the request, the demand or a separate power of attorney.

    • b) Subject to Rule 90.5, a separate power of attorney shall be submitted to either the receiving Office or the International Bureau, provided that, where a power of attorney appoints an agent under Rule 90.1(b), (b-bis), (c) or (d)(ii), it shall be submitted to the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, as the case may be.

    • c) If the separate power of attorney is not signed, or if the required separate power of attorney is missing, or if the indication of the name or address of the appointed person does not comply with Rule 4.4, the power of attorney shall be considered non-existent unless the defect is corrected.

    • d) Subject to paragraph (e), any receiving Office, any International Searching Authority, any Authority competent to carry out supplementary searches, any International Preliminary Examining Authority and the International Bureau may waive the requirement under paragraph (b) that a separate power of attorney be submitted to it, in which case paragraph (c) shall not apply.

    • e) Where the agent or the common representative submits any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4, the requirement under paragraph b) for a separate power of attorney shall not be waived under paragraph d).

  • 90.5 General Power of Attorney

    • a) Appointment of an agent in relation to a particular international application may be effected by referring in the request, the demand or a separate notice to an existing separate power of attorney appointing that agent to represent the applicant in relation to any international application which may be filed by that applicant (i.e., a “general power of attorney”), provided that:

      • (i) the general power of attorney has been deposited in accordance with paragraph (b), and

      • (ii) a copy of it is attached to the request, the demand or the separate notice, as the case may be; that copy need not be signed.

    • b) The general power of attorney shall be deposited with the receiving Office, provided that, where it appoints an agent under Rule 90.1(b), (b-bis), (c) or (d)(ii), it shall be deposited with the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, as the case may be.

    • c) Any receiving Office, any International Searching Authority, any Authority competent to carry out supplementary searches 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 Authority specified for supplementary search, the International Preliminary Examining Authority or the International Bureau, as the case may be, a copy of the general power of attorney shall be submitted to that Office, Authority or Bureau.

  • 90.6 Revocation and Renunciation

    • a) Any appointment of an agent or common representative may be revoked by the persons who made the appointment or by their successors in title, in which case any appointment of a sub-agent under Rule 90.1(d) by that agent shall also be considered as revoked. Any appointment of a sub-agent under Rule 90.1(d) may also be revoked by the applicant concerned.

    • b) The appointment of an agent under Rule 90.1(a) shall, unless otherwise indicated, have the effect of revoking any earlier appointment of an agent made under that Rule.

    • c) The appointment of a common representative shall, unless otherwise indicated, have the effect of revoking any earlier appointment of a common representative.

    • d) An agent or a common representative may renounce his appointment by a notification signed by him.

    • e) Rule 90.4(b) and (c) shall apply, mutatis mutandis, to a document containing a revocation or renunciation under this Rule.

Rule 90bis. Withdrawals

  • 90bis.1 Withdrawal of the International Application

    • a) The applicant may withdraw the international application at any time prior to the expiration of 30 months from the priority date.

    • b) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.

    • c) No international publication of the international application shall be effected if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.

  • 90bis.2 Withdrawal of Designations

    • a) The applicant may withdraw the designation of any designated State at any time prior to the expiration of 30 months from the priority date. Withdrawal of the designation of a State which has been elected shall entail withdrawal of the corresponding election under Rule 90bis.4.

    • b) Where a State has been designated for the purpose of obtaining both a national patent and a regional patent, withdrawal of the designation of that State shall be taken to mean withdrawal of only the designation for the purpose of obtaining a national patent, except where otherwise indicated.

    • c) Withdrawal of the designations of all designated States shall be treated as withdrawal of the international application under Rule 90bis.1.

    • d) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.

    • e) No international publication of the designation shall be effected if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.

  • 90bis.3 Withdrawal of Priority Claims

    • a) The applicant may withdraw a priority claim, made in the international application under Article 8 (1), at any time prior to the expiration of 30 months from the priority date.

    • b) Where the international application contains more than one priority claim, the applicant may exercise the right provided for in paragraph (a) in respect of one or more or all of the priority claims.

    • c) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.

    • d) Where the withdrawal of a priority claim causes a change in the priority date, any time limit which is computed from the original priority date and which has not already expired shall, subject to paragraph (e), be computed from the priority date resulting from that change.

    • e) In the case of the time limit referred to in Article 21(2)(a), the International Bureau may nevertheless proceed with the international publication on the basis of the said time limit as computed from the original priority date if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau after the completion of the technical preparations for international publication.

  • 90bis3bis Withdrawal of Supplementary Search Request

    • a) The applicant may withdraw a supplementary search request at any time prior to the date of transmittal to the applicant and to the International Bureau, under Rule 45bis.8(a), of the supplementary international search report or the declaration that no such report will be established.

    • b) Withdrawal shall be effective on receipt, within the time limit under paragraph (a), of a notice addressed by the applicant, at his option, to the Authority specified for supplementary search or to the International Bureau, provided that, where the notice does not reach the Authority specified for supplementary search in sufficient time to prevent the transmittal of the report or declaration referred to in paragraph (a), the communication of that report or declaration under Article 20(1), as applicable by virtue of Rule 45bis.8(b), shall nevertheless be effected.

  • 90bis.4 Withdrawal of the Demand, or of Elections

    • a) The applicant may withdraw the demand or any or all elections at any time prior to the expiration of 30 months from the priority date.

    • b) Withdrawal shall be effective upon receipt of a notice addressed by the applicant to the International Bureau.

    • c) If the notice of withdrawal is submitted by the applicant to the International Preliminary Examining Authority, that Authority shall mark the date of receipt on the notice and transmit it promptly to the International Bureau. The notice shall be considered to have been submitted to the International Bureau on the date marked.

  • 90bis.5 Signature

    Any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 shall be signed by the applicant or, if there are two or more applicants, by all of them. An applicant who is considered to be the common representative under Rule 90.2(b) shall not be entitled to sign such a notice on behalf of the other applicants.

  • 90bis.6 Effect of Withdrawal

    • a) Withdrawal under Rule 90bis of the international application, any designation, any priority claim, the demand or any election shall have no effect in any designated or elected Office where the processing or examination of the international application has already started under Article 23(2) or Article 40(2).

    • b) Where the international application is withdrawn under Rule 90bis.1, the international processing of the international application shall be discontinued.

    • b-bis) Where a supplementary search request is withdrawn under Rule 90bis.3bis, the supplementary international search by the Authority concerned shall be discontinued.

    • c) Where the demand or all elections are withdrawn under Rule 90bis.4, the processing of the international application by the International Preliminary Examining Authority shall be discontinued.

  • 90bis.7 Faculty under Article 37(4)(b)

    • a) Any Contracting State whose national law provides for what is described in the second part of Article 37(4)b shall notify the International Bureau in writing.

    • b) The notification referred to in paragraph (a) shall be promptly published by the International Bureau in the Gazette, and shall have effect in respect of international applications filed more than one month after the date of such publication.

Rule 91. Rectification of Obvious Mistakes in the International Application and Other Documents

  • 91.1 Rectification of Obvious Mistakes

    • a) An obvious mistake in the international application or another document submitted by the applicant may be rectified in accordance with this Rule if the applicant so requests.

    • b) The rectification of a mistake shall be subject to authorization by the “competent authority”, that is to say:

      • (i) in the case of a mistake in the request part of the international application or in a correction thereof – by the receiving Office;

      • (ii) in the case of a mistake in the description, claims or drawings or in a correction thereof, unless the International Preliminary Examining Authority is competent under item (iii) – by the International Searching Authority;

      • (iii) in the case of a mistake in the description, claims or drawings or in a correction thereof, or in an amendment under Article 19 or 34, where a demand for international preliminary examination has been made and has not been withdrawn and the date on which international preliminary examination shall start in accordance with Rule 69.1 has passed – by the International Preliminary Examining Authority;

      • (iv) in the case of a mistake in a document not referred to in items (i) to (iii) submitted to the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau, other than a mistake in the abstract or in an amendment under Article 19 – by that Office, Authority or Bureau, as the case may be.

    • c) The competent authority shall authorize the rectification under this Rule of a mistake if, and only if, it is obvious to the competent authority that, as at the applicable date under paragraph f), something else was intended than what appears in the document concerned and that nothing else could have been intended than the proposed rectification.

    • d) In the case of a mistake in the description, claims or drawings or in a correction or amendment thereof, the competent authority shall, for the purposes of paragraph c), only take into account the contents of the description, claims and drawings and, where applicable, the correction or amendment concerned.

    • e) In the case of a mistake in the request part of the international application or a correction thereof, or in a document referred to in paragraph b)(iv), the competent authority shall, for the purposes of paragraph c), only take into account the contents of the international application itself and, where applicable, the correction concerned, or the document referred to in paragraph b)(iv), together with any other document submitted with the request, correction or document, as the case may be, any priority document in respect of the international application that is available to the authority in accordance with the Administrative Instructions, and any other document contained in the authority’s international application file at the applicable date under paragraph f).

    • f) The applicable date for the purposes of paragraphs c) and e) shall be:

      • (i) in the case of a mistake in a part of the international application as filed – the international filing date;

      • (ii) in the case of a mistake in a document other than the international application as filed, including a mistake in a correction or an amendment of the international application – the date on which the document was submitted.

    • g) A mistake shall not be rectifiable under this Rule if:

      • (i) the mistake lies in the omission of one or more entire elements of the international application referred to in Article 3(2) or one or more entire sheets of the international application;

      • (ii) the mistake is in the abstract;

      • (iii) the mistake is in an amendment under Article 19, unless the International Preliminary Examining Authority is competent to authorize the rectification of such mistake under paragraph b)(iii); or

      • (iv) the mistake is in a priority claim or in a notice correcting or adding a priority claim under Rule 26bis.1a), where the rectification of the mistake would cause a change in the priority date;

      provided that this paragraph shall not affect the operation of Rules 20.4, 20.5, 26bis and 38.3.

    • h) Where the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau discovers what appears to be a rectifiable obvious mistake in the international application or another document, it may invite the applicant to request rectification under this Rule.

  • 91.2 Requests for Rectification

    A request for rectification under Rule 91.1 shall be submitted to the competent authority within 26 months from the priority date. It shall specify the mistake to be rectified and the proposed rectification, and may, at the option of the applicant, contain a brief explanation. Rule 26.4 shall apply mutatis mutandis as to the manner in which the proposed rectification shall be indicated.

  • 91.3 Authorization and Effect of Rectifications

    • a) The competent authority shall promptly decide whether to authorize or refuse to authorize a rectification under Rule 91.1 and shall promptly notify the applicant and the International Bureau of the authorization or refusal and, in the case of refusal, of the reasons therefor. The International Bureau shall proceed as provided for in the Administrative Instructions, including, as required, notifying the receiving Office, the International Searching Authority, the International Preliminary Examining Authority and the designated and elected Offices of the authorization or refusal.

    • b) Where the rectification of an obvious mistake has been authorized under Rule 91.1, the document concerned shall be rectified in accordance with the Administrative Instructions.

    • c) Where the rectification of an obvious mistake has been authorized, it shall be effective:

      • (i) in the case of a mistake in the international application as filed, from the international filing date;

      • (ii) in the case of a mistake in a document other than the international application as filed, including a mistake in a correction or an amendment of the international application, from the date on which that document was submitted.

    • d) Where the competent authority refuses to authorize a rectification under Rule 91.1, the International Bureau shall, upon request submitted to it by the applicant within two months from the date of the refusal, and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, publish the request for rectification, the reasons for refusal by the authority and any further brief comments that may be submitted by the applicant, if possible together with the international application. A copy of the request, reasons and comments (if any) shall if possible be included in the communication under Article 20 where the international application is not published by virtue of Article 64(3).

    • e) The rectification of an obvious mistake need not be taken into account by any designated Office in which the processing or examination of the international application has already started prior to the date on which that Office is notified under Rule 91.3a) of the authorization of the rectification by the competent authority.

    • f) A designated Office may disregard a rectification that was authorized under Rule 91.1 only if it finds that it would not have authorized the rectification under Rule 91.1 if it had been the competent authority, provided that no designated Office shall disregard any rectification that was authorized under Rule 91.1 without giving the applicant the opportunity to make observations, within a time limit which shall be reasonable under the circumstances, on the Office's intention to disregard the rectification.

Rule 92. Correspondence

  • 92.1 Need for Letter and for Signature