Amendments to the PCT Regulations as from 1 January 2009 New publication languages Supplementary international search

WIPO 2009 Rule changes Two new publication languages New publication languages: Korean and Portuguese International applications published in Korean or Portuguese will always also contain title, abstract and search report in English Applies to international applications whose international filing date is on or after 1 January 2009

WIPO 2009 Rule changes Supplementary international search (Basics) Gives applicants option of requesting one or more supplementary searches from participating ISAs in addition to the main PCT search (see Rule 45bis) Objectives: –benefit users by reducing likelihood of new prior art in national phase –allow applicants to obtain an additional search report taking into account the growing linguistic diversity of the prior art being found Supplementary international search (SIS) is available only to the extent and within any limitations specified by participating ISAs

WIPO 2009 Rule changes Supplementary international search (Applicability) Effective date: 1 January 2009 Available for: any international application, irrespective of the filing date, for which the time limit of 19 months to request the supplementary international search expires on or after 1 January 2009

WIPO 2009 Rule changes Supplementary international search (Participation by Authorities) Authorities that intend to offer SIS from 1 January 2009: –Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation) –Nordic Patent Institute –Swedish Patent and Registration Office Authorities that intend to offer SIS during 2009: –Austrian Patent Office Authorities that intend to offer SIS from 1 January 2010: –European Patent Office –(National Board of Patents and Registration of Finland)

WIPO 2009 Rule changes Supplementary international search (Participation by Authorities) (cont.) Participation still under consideration: –Australian Patent Office –National Institute of Industrial Property (Brazil) –State Intellectual Property Office of the Peoples Republic of China –Korean Intellectual Property Office No plans to offer SIS in the near future: –Canadian Intellectual Property Office –Japan Patent Office –Spanish Patent and Trademark Office –United States Patent and Trademark Office

WIPO 2009 Rule changes Supplementary international search (Requirements) Request must be filed and fees paid to International Bureau Fees payable (within one month from request): –supplementary search fee –supplementary search handling fee Time limit to file request: –before expiration of 19 months from priority date The ISA carrying out the main search cannot be selected as Authority specified for supplementary search (SSA) The supplementary search request may be withdrawn at any time prior to the date of transmittal of the supplementary international search report through a notice addressed to the SSA or the IB

WIPO 2009 Rule changes Supplementary international search (Search procedure) SIS is carried out on the international application as filed: amendments under Articles 19 and/or 34 will not be considered Where ISA found lack of unity of invention, applicant can request SSA to carry out SIS on other than main invention SSA begins SIS at the latest by expiration of 22 months from priority date Supplementary international search report (SSR) to be established within 28 months from the priority date SSR transmitted to applicant and International Bureau