Verdrag tot samenwerking inzake octrooien

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.

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.

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.

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, or

  • (ii)

    indications relating to an earlier search as provided in Rules 4.12(i) and 12bis.1(b) and (d),

  • (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):

  • (i)

    where the earlier application is a regional application or an international application, the priority claim may indicate one or more countries party to the Paris Convention for the Protection of Industrial Property for which that earlier application was filed;

  • (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.

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

Vervallen.

4.14

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 20.5(a), or an element or part of the description, claims or drawings referred to in Rule 20.5bis(a) 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.

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 nucleotide and/or amino acid sequences that, pursuant to the Administrative Instructions, are required to be included in a sequence listing, the description shall include a sequence listing part of the description complying with the standard provided for in the Administrative Instructions.

• b)

  Language-dependent free text included in the sequence listing part of the description shall not be required to be included in the main body of the description.

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.

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.

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.

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).

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)

  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.

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.

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 language-dependent free text contained in the sequence listing part of the description shall be filed in a language which the receiving Office accepts for that purpose. Any language accepted under this paragraph but not accepted under paragraph (a) shall meet the requirements of paragraph (b). The receiving Office may permit but shall not require the language-dependent free text to be filed in more than one language in accordance with the Administrative Instructions.

12.1bis

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

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

• a-bis) For any sequence listing part of the description, paragraph (a) shall only apply to the language-dependent free text; any translation of the language-dependent free text shall be provided in accordance with the Administrative Instructions.

• b)

  Paragraph (a) shall not apply to the request.

• 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.

• a-bis)

  For any sequence listing part of the description, paragraph (a) shall only apply to the language-dependent free text; any translation of the language-dependent free text shall be provided in accordance with the Administrative Instructions.

• b)

  Paragraph (a) shall not apply to the request.

• 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.

12bis.1

Furnishing by the Applicant of Documents Related to Earlier Search in Case of Request under Rule 4.12

• 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 (b) to (d), 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)

  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 copy referred to in paragraph (a), indicate the wish that the receiving Office prepare and transmit it 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.

• c)

  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 referred to in paragraph (a) shall be required to be submitted under that paragraph.

• d)

  Where a copy referred to in paragraph (a) is available to the receiving Office or the International Searching Authority in a form and manner acceptable to it, for example, from a digital library, and the applicant so indicates in the request, no copy shall be required to be submitted under that paragraph.

12bis.2

Invitation by the International Searching Authority to Furnish Documents Related to Earlier Search in Case of Request under Rule 4.12

• a)

  The International Searching Authority may, subject to paragraphs (b) and (c), 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.

• b)

  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, or where a copy or translation referred to in paragraph (a) 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, no copy or translation referred to in paragraph (a) shall be required to be submitted under that paragraph.

• c)

  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 (a)(i) and (ii) shall be required to be submitted under those paragraphs.

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.

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)

  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).

13ter.1

Procedure before the International Searching Authority

• a)

  Where the international application contains disclosure of nucleotide and/or amino acid sequences that, pursuant to the Administrative Instructions, are required to be included in a sequence listing, the International Searching Authority may invite the applicant to furnish to it, for the purposes of the international search, a sequence listing complying with the standard provided for in the Administrative Instructions, unless such listing is already available to it in a form, language 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)

  Vervallen.

• c)

  The furnishing of a sequence listing in response to an invitation under paragraph (a) 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.

• d)

  If the applicant does not, within the time limit fixed in the invitation under paragraph (a), 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 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)

  Vervallen.

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.

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.

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; Transfer

• 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 transfer the said fee to the International Bureau in Swiss francs in accordance with Rule 96.2.

• 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 be transferred by the receiving Office to the International Bureau in accordance with Rule 96.2;

  • (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 transfer that fee in Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau in accordance with Rule 96.2. Alternatively, if the receiving Office so wishes, it may convert the international filing fee from the prescribed currency into euros or US dollars and 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 in accordance with Rule 96.2.

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.

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 transfer the said fee to that Authority in that currency in accordance with Rule 96.2.

• (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 be transferred by the receiving Office to the International Searching Authority in accordance with Rule 96.2;

  • (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 transfer that fee in the fixed currency, in the amount fixed by the International Searching Authority, to the International Searching Authority in accordance with Rule 96.2.

• (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).

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)

  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.

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.

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

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)

  Vervallen.

• (b)

  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.

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 12.1(a) or the language dependent free text contained within the sequence listing part of the description is not in a language accepted under Rule 12.1(d) by that national Office but is in a language accepted under that Rule by the International Bureau as receiving Office, or

    (ii-bis) all or part of the international application is filed in electronic form in a format not accepted by that national Office, or

  • (iii)

    that national Office and the International Bureau agree, for any reason other than those specified under items (i), (ii) and (ii-bis), 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 19.1(a)(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.

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 (“missing part”) 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 and not including the case referred to in Rule 20.5bis(a), 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 20.6(a), 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 purported 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 20.2(b) 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.

20.5bis

Erroneously Filed Elements and 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 an entire element referred to in Article 11(1)(iii)(d) or (e) has or appears to have been erroneously filed, or that a part of the description, claims or drawings has or appears to have been erroneously filed, including the case where all drawings have or appear to have been erroneously filed (“erroneously filed element or part”), it shall promptly invite the applicant, at the applicant’s option:

  • (i)

    to correct the purported international application by furnishing the correct element or part; or

  • (ii)

    to confirm, in accordance with Rule 20.6(a), that the correct element or 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 correct element or part so as to correct the purported international application, that correct element or part shall be included in the application, the erroneously filed element or part concerned shall be removed from 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 20.2(b) and (c) and as provided for in the Administrative Instructions.

• 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 correct element or part so as to correct the international application, that correct element or part shall be included in the application, the erroneously filed element or part concerned shall be removed from the application, and the receiving Office shall correct the international filing date to the date on which the receiving Office received that correct element or 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 correct element or part is, under Rule 20.6(b), 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 erroneously filed element or part concerned shall remain 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 20.2(b) and (c) and as provided for in the Administrative Instructions.

• 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 correct element or part be disregarded, in which case the correct element or part shall be considered not to have been furnished, the erroneously filed element or part concerned shall be considered not to have been removed from the application and the correction of the international filing date under paragraph (c) 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 20.3(b)(i), 20.5(b), 20.5(c), 20.5bis(b) or 20.5bis(c), as the case may be.

20.7

Time Limit

• a)

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

  • (i)

    where an invitation under Rule 20.3(a), 20.5(a) or 20.5bis(a), 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)

  If, on October 9, 2019, any of Rules 20.5bis(a)(ii) and (d) 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 9, 2020. The information received shall be promptly published by the International Bureau in the Gazette.

• a-ter)

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

• 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.

• b-bis)

  If, on October 9, 2019, any of Rules 20.5bis(a)(ii) and (d) 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 9, 2020. 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 20.6(b), 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) or paragraph (b-bis) of this Rule, the designated Office may treat the application as if the international filing date had been accorded under Rule 20.3(b)(i), 20.5(b) or 20.5bis(b), or corrected under Rule 20.5(c) or 20.5bis(c), as the case may be, provided that Rule 82ter.1(c) and (d) shall apply mutatis mutandis.

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.

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

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).

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.

23bis.1

Transmittal of Documents Relating to Earlier Search in Case of Request under Rule 4.12

• a)

  The receiving Office shall transmit to the International Searching Authority, together with the search copy, any copy referred to in Rule 12bis.1(a) related to an earlier search in respect of which the applicant has made a request under Rule 4.12, provided that any such copy:

  • (i)

    has been submitted by the applicant to the receiving Office together with the international application;

  • (ii)

    has been requested by the applicant to be prepared and transmitted by the receiving Office to that Authority; or

  • (iii)

    is available to the receiving Office in a form and manner acceptable to it, for example, from a digital library, in accordance with Rule 12bis.1(d).

• b)

  If it is not included in the copy of the results of the earlier search referred to in Rule 12bis.1(a), the receiving Office shall also transmit to the International Searching Authority, together with the search copy, a copy of the results of any earlier classification effected by that Office, if already available.

23bis.2

Transmittal of Documents Relating to Earlier Search or Classification for the Purposes of Rule 41.2

• a)

  For the purposes of Rule 41.2, where the international application claims the priority of one or more earlier applications filed with the same Office as that which is acting as the receiving Office and that Office has carried out an earlier search in respect of such an earlier application or has classified such earlier application, the receiving Office shall, subject to Article 30(2)(a) as applicable by virtue of Article 30(3) and paragraphs (b), (d) and (e), transmit to the International Searching Authority, together with the search copy, a copy of the results of any such 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 available to the Office, and a copy of the results of any such earlier classification effected by the Office, if already available. The receiving Office may, subject to Article 30(2)(a) as applicable by virtue of Article 30(3), also transmit to the International Searching Authority any further documents relating to such an earlier search which it considers useful to that Authority for the purposes of carrying out the international search.

• b)

  Notwithstanding paragraph (a), a receiving Office may notify the International Bureau by April 14, 2016 that it may, on request of the applicant submitted together with the international application, decide not to transmit the results of an earlier search to the International Searching Authority. The International Bureau shall publish any notification under this provision in the Gazette.

• c)

  At the option of the receiving Office, paragraph (a) shall apply mutatis mutandis where the international application claims the priority of one or more earlier applications filed with an Office different from the one which is acting as the receiving Office and that Office has carried out an earlier search in respect of such an earlier application or has classified such earlier application, and the results of any such earlier search or classification are available to the receiving Office in a form and manner acceptable to it, for example, from a digital library.

• d)

  Paragraphs (a) and (c) shall not apply 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, or where the receiving Office is aware that a copy of the earlier search or classification results is available to the International Searching Authority in a form and manner acceptable to it, for example, from a digital library.

• e)

  To the extent that, on October 14, 2015, the transmission of the copies referred to in paragraph (a), or the transmission of such copies in a particular form, such as those referred to in paragraph (a), without the authorization by the applicant is not compatible with the national law applied by the receiving Office, that paragraph shall not apply to the transmission of such copies, or to the transmission of such copies in the particular form concerned, in respect of any international application filed with that receiving Office for as long as such transmission without the authorization by the applicant continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 14, 2016. The information received shall be promptly published by the International Bureau in the Gazette.

24.1

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)

  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.

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.

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 or 26.3ter 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, 12.4 or 26.3ter 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, subject to Rules 12.1bis and 26.3ter(e), of the description and the claims, the receiving Office shall, unless

  • (i)

    a translation of the international application is required under Rule 12.3(a) into the language in which the international application is to be published, 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.

• e)

  Where the description of an international application is filed in a language which is different from the language of the claims, or parts of the description or parts of the claims are filed in a language which is different from the language of the remainder of this element, and where all such languages are accepted by the receiving Office under Rule 12.1(a), the receiving Office shall, as appropriate, invite the applicant to furnish, within one month of the date of receipt of the international application by the receiving Office, a translation of the description or the claims, or any part thereof, such that the description and claims are in a single language which is all of the following:

  • (i)

    one of the languages contained in the description or claims as filed;

  • (ii)

    a language accepted by the International Searching Authority that is to carry out the international search; and

  • (iii)

    the language in which the international application is to be published.

Rule 12.3(c) to (e) shall apply mutatis mutandis.

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.

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.

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.

26quater.1

Correction or Addition of Indications

The applicant may correct or add to the request any indication referred to in Rule 4.11 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 the notice reaches the International Bureau before the technical preparations for international publication have been completed.

26.quater.2

Late Correction or Addition of Indications

Where any correction or addition of an indication referred to in Rule 4.11 is not timely received under Rule 26quater.1, the International Bureau shall notify the applicant accordingly and shall proceed as provided for in the Administrative Instructions.

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).

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.

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), 12.4(d) or 26.3ter (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

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.

30.1

Time Limit

The time limit referred to in Article 14(4) shall be 4 months from the international filing date.

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.

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.

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 any means 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.

34.1

Definition

• a)

  The definitions contained in Article 2(i) and (ii) shall not apply for the purposes of this Rule. For the purposes of this Rule, “patent documents” shall include:

  • (i)

    published international applications,

  • (ii)

    published regional patents,

  • (iii)

    published national patents issued by a national Office or its legal predecessor in and after 1920,

  • (iv)

    utility certificates issued by France in and after 1920,

  • (v)

    inventors’ certificates issued by the former Soviet Union, and

  • (vi)

    applications for any of the forms of protection referred to in items (ii) to (v) above, published in and after 1920.

• b)

  Notwithstanding paragraph (c), the documentation referred to in Article 15(4) (“minimum documentation”) shall consist of:

  • (i)

    the “patent documents” as specified in paragraph (a) that have been made available by or on behalf of the relevant national Office or its legal successor or, as the case may be, by the International Bureau in accordance with the technical and accessibility requirements specified in the Administrative Instructions and, where applicable, with the provisions of Rule 36.1(ii), and

  • (ii)

    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)

  In addition to consulting the required documentation set forth in paragraph (b), the International Searching Authority should also preferably consult utility model documents consisting of the utility models issued, and the utility model applications published, in and after 1920 by a national Office or its legal predecessor, provided that the said utility model documents have been made available by or on behalf of the relevant national Office or its legal successor in accordance with the technical and accessibility requirements specified in the Administrative Instructions.

• d)

  Each national Office making its patent documents and, where applicable, its utility model documents available in accordance with the requirements specified in the Administrative Instructions shall:

  • (i)

    notify the International Bureau accordingly,

  • (ii)

    make newly published patent documents and, where applicable, utility model documents available regularly, and

  • (iii)

    provide to the International Bureau at least annually an authority file, detailing the current extent of the available patent documents and, where applicable, utility model documents in accordance with the Administrative Instructions.

• e)

  The International Bureau shall validate the availability of the patent and utility model documents notified in accordance with paragraph (d) and publish in the Gazette details of the documents concerned and the date from which they will become a part of the minimum documentation. The International Bureau shall administer a repository containing the authority files referred to in paragraph (d)(iii) as specified in the Administrative Instructions.

• f)

  Where an application is published more than once, each International Searching Authority shall be obliged to keep in its documentation only the first published version if none of the subsequently published versions contains additional matter.

• g)

  For the purposes of this Rule, applications and patents which have only been laid open for public inspection are not considered published applications and patents.

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).

36.1

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 in the required technical fields;

• (ii)

  that Office or organization must make available for consultation as part of the minimum documentation referred to in Rule 34, in accordance with the requirements specified in the Administrative Instructions, any patent issued, and any patent application published, by it, and where applicable by its legal predecessor(s);

• (iii)

  that Office or organization must have in its possession, or maintain access to, at least the minimum documentation referred to in Rule 34, for search purposes in accordance with the Administrative Instructions;

• (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.

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.

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.

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.

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.

40bis.1

Invitation to Pay Additional Fees

The International Searching Authority may invite the applicant to pay additional fees where the fact that a missing part or a correct element or part:

• (i)

  is included in the international application under Rule 20.5(c) or Rule 20.5bis(c), respectively; or

• (ii)

  is considered, under Rule 20.5(d) or Rule 20.5bis(d), respectively, 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;

is notified to that Authority only after it has begun to draw up the international search report. The invitation shall 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. The amount of the additional fees shall be determined by the International Searching Authority but shall not exceed the search fee; the additional fees shall be payable directly to that Authority. Provided any such additional fees have been paid within the prescribed time limit, the International Searching Authority shall establish the international search report on the international application including any such missing part or any such correct element or part.

41.1

Taking into Account Results of Earlier Search in Case of a Request under Rule 4.12

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:

• (i)

  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.

41.2

Taking into Account Results of Earlier Search and Classification in Other Cases

• a)

  Where the international application claims the priority of one or more earlier applications in respect of which an earlier search has been 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 the results of any such earlier search into account in carrying out the international search.

• b)

  Where the receiving Office has transmitted to the International Searching Authority a copy of the results of any earlier search or of any earlier classification under Rule 23bis.2(a) or (c), or where such a copy is available to the International Searching Authority in a form and manner acceptable to it, for example, from a digital library, the International Searching Authority may take those results into account in carrying out the 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.

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.

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.

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)

  Vervallen.

• (d)

  Any International Searching Authority may perform the obligations referred to in paragraphs (a) and (b) through another agency responsible to it.

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.

45.1

Languages

International search reports and declarations referred to in Article 17(2) (a) shall, when not in English, be translated into English.

45bis.1

Supplementary Search Request

• a)

  The applicant may, at any time prior to the expiration of 22 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.

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.

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.

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 20.3(b)(ii), 20.5(d) or 20.5bis(d) 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 20.6(a)(ii), relied on compliance with Rule 17.1(a), (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;

  • (viii)

    where applicable, an indication that an erroneously filed element or part has been removed from the international application in accordance with Rule 20.5bis(b) or (c).

• (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)

  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.

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 12.1(d) and includes the language-dependent free text in a language which the designated Office accepts for the purpose, save that a designated Office which supplies published sequence listings to database providers may require a translation of the sequence listing part of the description into English, in accordance with the Administrative Instructions, where the language-dependent free text is not included in English.

• (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.

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.

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.

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.

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.

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 4.5(a)(ii) and (iii) in respect of any applicant for the designated State;

  • (viii)

    in the cases referred to in Rule 82ter.1, a translation of any erroneously filed element or part removed from the international application in accordance with Rule 20.5bis(b) or (c).

• (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 20.3(b)(ii), 20.5(d) or 20.5bis(d) 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.1(b) 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.

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.

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).

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.

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.

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.

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 20.3(b), 20.5bis(b), 20.5bis(c) or 20.6(a) and any part of the description, claims or drawings furnished by the applicant under Rule 20.5(b), 20.5(c), 20.5bis(b), 20.5bis(c) or 20.6(a) which is considered to have been contained in the international application under Rule 20.6(b).

• 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.

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; Transfer

• 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 transfer the said fee to the International Bureau in Swiss francs in accordance with Rule 96.2.

• 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 be transferred by the Authority to the International Bureau in accordance with Rule 96.2;

  • (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 transfer that fee in Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau in accordance with Rule 96.2. Alternatively, if the Authority so wishes, it may convert the handling fee from the prescribed currency into euros or US dollars and 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 in accordance with Rule 96.2.

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.