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Changes to PCT Regulations January 2004

Changes to PCT Regulations January 2004

05/01/04

A variety of amendments to the PCT Regulations came into force on 1 January 2004 and that affect International applications filed on or after that date.

The amendments relate to the designation of states and an enhanced International Search and Examination procedure and also include changes affecting applications for which it acts as International Search Authority (ISA) or as International Preliminary Examination Authority (IPEA).

Designation of States

From 1 January 2004 applicants will no longer need to designate States separately since the filing of the international application will constitute the automatic designation of all Contracting States. The application will also constitute an indication that grant of the different forms of protection that are available in some States is required. Due to this automatic designation of all States, a set "flat international filing fee" will fall due although the additional fee per sheet in excess of 30 remains payable.

Enhanced International Search and Preliminary Examination System

A new search and examination system is to apply under which a written opinion will be established by the International Search Authority at the same time as, and in addition to, the international search report. If the Chapter I route is pursued, the written opinion will be converted by the International Bureau into an "international preliminary report on patentability" but will not be available to the public until the expiration of 30 months from the priority date. However, if the Chapter II route is pursued by filing a demand for international preliminary examination, the written opinion established by the ISA will be used by the International Preliminary Examination Authority as its own first written opinion, prior to issuance of its International Preliminary Examination Report.

For those States now allowing at least the 30 month deadline for national/regional phase entry (see accompanying news item "Changes to PCT Chapter I Deadline"), the time limit for filing a Demand for International Preliminary Examination has been changed and is the later of:

3 months from the date of transmittal to the applicant of the International Search Report and the written opinion by the ISA; or

22 months from the priority date.

However, the deadline remains at 19 months from the priority date in respect of those States retaining the 20 month deadline for Chapter I national/regional phase processing.

Other changes

There are also a number of minor changes related in particular to the requirements regarding the indication of addresses, nationalities, residence and signatures of applicants.

For multiple Applicants it will be sufficient, for the purposes of filing the international application, if such details have been provided in respect of one of the applicants who is entitled to file the international application with the Receiving Office. Also, if there is more than one applicant, it will be sufficient, for the purposes of filing the international application, if the request is signed by, or on behalf of, one of them.

Also, any Receiving Office, International Search Authority, International Preliminary Examining Authority and the International Bureau may waive the requirement that a separate power of attorney appointing an agent or a common representative be submitted.

Changes at the EPO

The European Patent Office has announced changes concerning the manner in which it will act as ISA and/or IPEA in respect of PCT applications for US applicants.

The EPO is to resume its competence as ISA and IPEA for international applications filed as from 1 January 2004 by nationals or residents of the United States of America where such applications contain one or more claims relating to the field of biotechnology.

Also the EPO is to resume its competence as International Preliminary Examining Authority in respect of international applications filed by nationals or residents of the United States of America and containing one or more claims relating to the field of telecommunications where the corresponding demand is filed on or after 1 July 2004.