WIPO Recentdv03-1 Changes to the PCT Regulations which came into effect on 1 January 2004

WIPO Recentdv03-2 Main changes to the PCT Regulations which came into effect on 1 January 2004 Enhanced international search and preliminary examination (EISPE) system Concept and operation of the designation system Signature requirements, indications concerning applicants and powers of attorney Access to file For further information on the amendments adopted by the PCT Assembly of September 23 to October 1, 2002 (including the Assembly report (PCT/A/31/10)) and of September 22 to October 1, 2003 (including the Assembly report (PCT/A/32/8)), see and

WIPO Recentdv03-3 EISPE system: main features Convergence of Chapter I and II procedures –but Chapters I and II remain legally distinct International preliminary report on patentability (IPRP) for every application –Chapter I: IPRP = written opinion by ISA –Chapter II: IPRP = IPER Main difference –Chapter I: no applicant/examiner dialogue or amendments before IPRP issuance –Chapter II: dialogue with examiner and amendments possible before IPRP issuance

WIPO Recentdv03-4 EISPE system: Written opinion by ISA examiner ISA examiner prepares ISR plus detailed written opinion (IPRP) for every application Written opinion by ISA has similar scope and content as current written opinion by IPEA Written opinion by ISA sent to applicant with ISR ISR is published with application; written opinion by ISA is not published per se Applicant may submit comments on written opinion by ISA informally to IB

WIPO Recentdv03-5 EISPE system: Chapter I If applicant does not request IPE: –IB establishes international preliminary report on patentability IPRP (Chapter I)) on basis of written opinion by ISA –IPRP (Chapter I) and any comments by the applicant are sent to designated Offices are made publicly available (but not published like application and ISR) but not before the expiration of 30 months from the priority date

WIPO Recentdv03-6 EISPE system: Chapter II If applicant requests IPE: –written opinion by ISA becomes written opinion by IPEA (exception: IPEA decides not to accept written opinions by certain ISAs) –subject to Rule 66.4bis, any amendments under Article 34 and/or arguments should be submitted together with the demand and within the applicable time limit under Rule 54bis.1(a) –comments by applicant on written opinion by ISA not sent to IPEA (Article 34 amendments/arguments only) –normal IPE procedure –IPEA establishes IPRP (Chapter II) (= current IPER) –IPRP (Chapter II) is sent to elected Offices and made publicly available by IB on behalf of any elected Office which so requests, but not before the expiration of 30 months from the priority date

WIPO Recentdv03-7 EISPE system: Time limit to file demand New time limit for filing the demand for IPE: –three months after the issuance of the international search report and the written opinion of the ISA (or of the declaration under Article 17.2(a)), or –22 months from the priority date, whichever expires later NOTE: The 19-month time limit to file a demand in order to postpone the time limit to enter the national phase from 20 to 30 months continues to apply in respect of States which have notified the International Bureau that they will not apply the 30-month time limit under Chapter I

WIPO Recentdv03-8 The Offices of the following States have notified the International Bureau that they will not apply the 30 month time limit under Chapter I, as of 1 April 2002, for as long as modified Article 22(1) is not compatible with their national law (7 Offices – situation as of 26 July 2004): Non-applicability of modified (30 month) time limit under Article 22(1) If no demand for international preliminary examination is filed before the expiration of 19 months in respect of above States, the national phase will have to be entered before the expiration of 20 or 21 months from the priority date *Where this State has been designated for the purposes of a European patent, the applicable time limit before the EPO, as of 2 January 2002, is 31 months **Where this State has been designated for the purposes of an ARIPO patent, the applicable time limit before ARIPO, as of 1 April 2002, is 31 months CHSwitzerland* FIFinland* LULuxembourg* SESweden* TZUnited Republic of Tanzania** UGUganda** ZMZambia**

WIPO Recentdv03-9 EISPE system: Start of international preliminary examination IPEA will start the international preliminary examination when it is in possession of: the demand the applicable fees the ISR and the written opinion of the ISA but not before the expiration of the applicable time limit under Rule 54bis.1(a) unless the applicant expressly request an early start

WIPO Recentdv03-10 IA filed 1st written IPE opinion = ISA opinion (unless IPEA has declared otherwise) IPE procedure IPRP (Chapter II) to EOs IPRP (Chapter II) publicly available (on request of EO) Art. 19amdts No demand filed Applicant comments on ISA opinion to IB IPRP(Chapter I) (+ any comments) to DOs IPRP (Chapter I) (+ any comments) publicly available National phase entry Intl publication: IA + ISR (+ Art. 19 amendments) National phase entry 0-12mths later of: WO of ISA+3 or 22 * 30 ISR ISA opinion on patentability criteria Chapter I Chapter II International preliminary report onpatentabilityby ISA (IPRP) (Chapter I of the PCT) (informal procedure) * must in practice file demand by 19 months for Article 22 transitional reservation countries (+ Art. 34 arguments, amendments) Demand (if no IPER established) International preliminary report onpatentabilityby IPEA (IPRP) (Chapter II of the PCT) (= IPER) EISPE system

WIPO Recentdv03-11 Concept and operation of designation system Automatic and all-inclusive – all possible designations –Form only provides for exceptions for the designation of DE, KR and RU (countries with particular rules on self- designation) –but withdrawals of designations will be possible Postpone required choice of types of protection until national phase entry (e.g. patent or utility model, national or regional patent) Include parent information in PCT request form (for search purposes) for continuation applications and patents of addition

WIPO Recentdv03-12 Designation system: Signature requirements, indications concerning the applicant Sufficient that request be signed by one applicant – BUT: –signature of all applicants needed for withdrawals under Rule 90bis –designated Offices permitted to require absent signatures and indications in national phase Indications concerning applicants – needed only for one applicant entitled to file with the RO concerned

WIPO Recentdv03-13 Waiver of requirement that a power of attorney has to be furnished (Rules 90.4(d) and 90.5(c)) 1.As of 1 January 2004, the RO, the ISA, the IPEA and the IB may waive the requirement that: – a separate power of attorney; and/or the RO, the ISA, the IPEA may waive the requirement that – a copy of a general power of attorney has to be furnished 2.All Offices and Authorities may nevertheless require that a power of attorney has to be furnished in particular instances even if it has waived the requirement in general 3.Information as to whether an Office or Authority has made such a waiver will be published in the PCT Gazette, the PCT Newsletter, the PCT Applicants Guide and on WIPOs Internet page

WIPO Recentdv03-14 Related changes: Filing of Chapter II demand Automatic and all-inclusive elections under Chapter II codifies what demand form already provides today no longer possible to exclude certain States from being elected however, withdrawals of elections remain possible Sufficient that demand be signed by one applicant – BUT: –signature of all applicants needed for withdrawals of demand or election Indications concerning applicants – needed only for one applicant entitled to make a demand

WIPO Recentdv03-15 New PCT fee structure Flat international filing fee (replaces separate basic and designation fee) amount: 1400 Swiss francs reductions: 100 Swiss francs for paper filings where the request is created using the PCT-EASY features that have been incorporated into the PCT-SAFE software and is presented as a computer printout together with a diskette prepared using that software 200 Swiss francs for electronic filings where the text of the description, claims and abstract is NOT in character coded format (XML) 300 Swiss francs for electronic filings where the text of the description, claims and abstract IS in character coded format (XML) payable within one month from the date of receipt of the international application (Rule 15.4) (extendable under Rule 16bis) Handling fee amount: 200 Swiss francs

WIPO Recentdv03-16 Access to the file of an international application (Rules 44ter and 94) Access to the file of the International Bureau will include: Written opinion of the ISA IPRP (Chapter I) and/or any translation thereof IPRP (Chapter II), if so authorized by an elected Office Time when access will be given: Written opinion of the ISA and IPRP (Chapter I): only after the expiration of 30 months from the priority date IPER (Chapter II): only after the expiration of 30 months from the priority date

WIPO Recentdv03-17 Entry into force; transitional arrangements From January 1, 2004 –EISPE system –concept and operation of the designation system –apply only to IAs whose international filing date is on or after January 1, 2004 exception: all-inclusive elections if demand for IPE is filed on or after January 1, 2004, whenever application filed exception: IPER available to third parties on or after January 1, 2004, irrespective of whether the international filing date is before, on or after January 1, 2004 other exceptions also