Patents Amendment (Patent Cooperation Treaty) Act 1979 (Cth)
An Act to approve the accession by
Australia to the
BE IT ENACTED by the Queen, and the Senate and House of Representatives of the Commonwealth of Australia, as follows:
(2) The
(2) The remaining provisions of
this Act shall come into operation on a date to be fixed by Proclamation, being
a date not earlier than the date on which the
“PART IVa—INTERNATIONAL APPLICATIONS
“58a. (1) In this Part, unless the contrary intention appears—
‘international application’ has the same meaning as in the Treaty;
‘international filing date’, in relation to an international application, means—
(a) where paragraph (b) does not apply—the date accorded to the international application as its international filing date under Article 11 of the Treaty; and
(b) where the date accorded to the international application as its international filing date under Article 11 of the Treaty is revised pursuant to Article 14 of the Treaty— that international filing date as so revised;
‘priority date’, in relation to an international application, has the same meaning as in the Treaty;
‘receiving Office’ has the same meaning as in the Treaty;
‘Treaty’ means the
Patent Cooperation Treaty done at Washington on 19 June 1970, a copy of the English text of which is set out in Schedule 2, and includes the Regulations (as amended on 14 April 1978, 3 October 1978 and 1 May 1979), a copy of the English text of which (as so amended) is also set out in Schedule 2.
“(2) In this Part—
(a) a reference to the description and drawings contained in an international application shall be read as a reference to the description and any drawing or drawings contained in the international application in accordance with Article 3 (2) of the Treaty; and
(b) a reference to the claims contained in an international application shall be read as a reference to the claim or claims contained in the international application in accordance with Article 3(2) of the Treaty as modified by any amendments made pursuant to Article 19 of the Treaty.
“58b. (1) This section applies to an international application if—
(a) Australia is specified in the international application as a designated State under Article 4(1)(ii) of the Treaty; and
(b) the international application has been accorded an international filing date under Article 11 of the Treaty.
“(2) Subject to sub-section (3) and to section 58c—
(a) an international application to which this section applies shall, for the purposes of this Act other than this part, be treated as an application under this Act for a standard patent;
(b) the description, claims and drawings contained in an international application to which this section applies shall be treated as a complete specification lodged in respect of the application; and
(c) the application and specification shall be treated as having been lodged by the applicant in the Patent Office on the international filing date of the international application.
“(3) Where—
(a) an international application to which this section applies contains an indication under Article 43 of the Treaty that the international application is for the grant, as far as Australia is concerned, of a petty patent; or
(b) at any time before a request under section 47 for the examination of an international application is made by the applicant, the applicant lodges in the Patent Office a request in writing signed by him that the international application be treated as an application for a petty patent,
then, subject to section 58c—
(c) the international application shall, for the purposes of this Act other than this Part, be treated as an application under this Act for a petty patent;
(d) the description, claims and drawings contained in the international application shall be treated as a petty patent specification lodged in respect of the application; and
(e) the application and specification shall be treated as having been lodged by the applicant in the Patent Office on the international filing date of the international application.
“(4) Where—
(a) an international application that is filed in a receiving Office other than the Patent Office complies with paragraph (a) of sub-section (1);
(b) the receiving Office does not accord the international application and international filing date; and
(c) the Commissioner is satisfied that the international application should, in accordance with Article 25(2)(a) of the Treaty, be treated as if it had been accorded an international filing date,
the international application shall be treated as if it had been accorded an international filing date under Article 11 of the Treaty.
“(5) Where sub-section (4) applies to an international application, the international filing date of the international application shall be taken to be the date that, in the opinion of the Commissioner, should have been accorded to the international application as its international filing date in accordance with the provisions of the Treaty.
“58c. (1) Where, by virtue of section 58b, an international application is to be treated as an application under this Act for a standard patent or an application under this Act for a petty patent, the international application shall be taken to have complied with the requirements of paragraphs (c), (d), (e) and (f) of sub-section (1) of section 35 and with the requirements of sub-section (2) of section 35 but shall not be taken, by virtue only of section 58b, to have complied with the requirements of paragraph (a) or (b) of sub-section (1) of section 35.
“(2) Where the description, claims and drawings contained in an international application are, by virtue of section 58b, to be treated as a complete specification in relation to the international application, the description, claims and drawings shall not, by virtue only of that section, be taken to have complied with the requirements of sub-section (1) or (2) of section 40.
“(3) Where the description, claims and drawings contained in an international application are, by virtue of section 58b, to be treated as a petty patent specification in relation to the international application, the description, claims and drawings shall not, by virtue only of that section, be taken to have complied with the requirements of sub-section (1a) or (2) of section 40.
“(4) Where an international application to which section 58b applies is to be treated as an application under this Act for a standard patent, the Commissioner shall not give a direction under section 47a or 47b in relation to the international application before—
(a) where paragraph (b) does not apply—the date of the expiration of the applicable time limit referred to in Article 23 of the Treaty; or
(b) where there has been a demand in accordance with Article 31 of the Treaty for an international preliminary examination of the international application—the date of the expiration of the applicable time limit referred to in Article 40 of the Treaty.
“(5) Where an international application to which section 58b applies is to be treated as an application under this Act for a petty patent, the Commissioner shall not, unless the applicant requests the Commissioner in writing to do so, consider the international application in accordance with section 49a before—
(a) where paragraph (b) does not apply—the date of the expiration of the applicable time limit referred to in Article 23 of the Treaty; or
(b) where there has been a demand in accordance with Article 31 of the Treaty for an international preliminary examination of the international application—the date of the expiration of the applicable time limit referred to in Article 40 of the Treaty.
“(6) An international application to which section 58b applies may be withdrawn under section 37 and shall be taken to be withdrawn where the effect, in relation to the international application, of Article 11(3) of the Treaty ceases in Australia in accordance with the provisions of Article 24 of the Treaty.
“(7) Sections 54a, 54b and 62a do not apply to an international application to which section 58b applies.
“(8) Subject to sub-section (9), an international application to which section 58b applies shall be taken to have become open to public inspection, and as having been published in Australia, on the day on which a copy of the international application, as published under Article 21 of the Treaty, is received in the Patent Office.
“(9) Where Article 25 of the Treaty applies to an international application to which section 58b applies, the international application shall be taken to have become open to public inspection, and as having been published in Australia—
(a) where paragraph (b) does not apply and the international application is published under Article 21 of the Treaty—on the day on which a copy of the international application, as published under that Article, is received in the Patent Office; and
(b) where a notification is published in the
Official Journal in relation to the international application under sub-section (2) or (3) of section 58g—on the day on which the notification is published in theOfficial Journal.
“(10) An applicant is not entitled to request that any action be taken or that he be allowed to take any action (whether by way of publication, search, examination, amendment or otherwise) in relation to an international application to which section 58b applies unless—
(a) both—
(i) a copy of the international application; and
(ii) where the international application is not filed in the receiving Office in the English language, a translation of the international application into the English language, verified, by declaration or otherwise, to the satisfaction of the Commissioner,
have been received in the Patent Office; and
(b) the prescribed fees have been paid to the Commisssioner.
“(11) Section 176 does not apply to an international application to which section 58b applies.
“(12) Except as otherwise provided by this Part or by regulations made pursuant to section 58j, the provisions of this Act (including Part XVI) and the regulations apply to an international application to which section 58b applies as if it were an application under this Act.
“58d. (1) For the purposes of the application of section 54c in relation to an international application that is to be treated as an application under this Act for a standard patent, the reference in that section to the complete specification becoming open to public inspection shall be read as a reference to the international application being deemed, under sub-section (8) or (9) of section 58c, to have become open to public inspection.
“(2) For the purposes of the application of section 54d in relation to an international application that is to be treated as an application under this Act for a petty patent, the reference in that section to the petty patent specification becoming open to public inspection shall be read as a reference to the international application being deemed, under sub-section (8) or (9) of section 58c, to have become open to public inspection.
“58e. (1) Where—
(a) an international application specifies Australia as a designated State under Article 4(1)(ii) of the Treaty;
(b) the Patent Office is the receiving Office in relation to the international application;
(c) the international application is not accorded an international filing date in accordance with Article 11 of the Treaty; and
(d) the applicant lodges in the Patent Office a request in writing signed by him that the international application be treated as an application under this Act for a standard patent or as an application under this Act for a petty patent,
then—
(e) the international application shall be treated as an application under this Act for a standard patent or as an application under this Act for a petty patent, in accordance with the applicant’s request;
(f) where the applicant requests that the international application be treated as an application under this Act for a standard patent—the description, claims and drawings contained in the international application shall be treated as a complete specification lodged in respect of the application;
(g) where the applicant requests that the international application be treated as an application under this Act for a petty patent— the description, claims and drawings contained in the international application shall be treated as a petty patent specification lodged in respect of the application; and
(h) the application and specification shall be treated as having been lodged in the Patent Office on the date on which the international application was filed in the Patent Office.
“(2) Where, by virtue of sub-section (1), an international application is to be treated as an application under this Act for a standard patent or an application under this Act for a petty patent, the international application shall be taken to have complied with the requirements of paragraphs (c), (d), (e) and (f) of sub-section (1) of section 35 and with the requirements of sub-section (2) of section 35 but shall not be taken, by virtue only of sub-section (1) of this section, to have complied with the requirements of paragraph (a) or (b) of sub-section (1) of section 35.
“(3) Where the description, claims and drawings contained in an international application are, by virtue of sub-section (1), to be treated as a complete specification in relation to the international application, the description, claims and drawings shall not, by virtue only of that sub-section, be taken to have complied with the requirements of sub-section (1) or (2) of section 40.
“(4) Where the description, claims and drawings contained in an international application are, by virtue of sub-section (1), to be treated as a petty patent specification in relation to the international application, the description, claims and drawings shall not, by virtue only of that sub-section, be taken to have complied with the requirements of sub-section (1a) or (2) of section 40.
“(5) Except as otherwise provided by this section, the provisions of this Act (including Part XVI) and the regulations apply to an international application to which sub-section (1) applies as if it were an application under this Act.
“58f. Where—
(a) an application lodged under this Act is accompanied by a provisional specification;
(b) not later than 12 months after the date of lodgment of the application referred to in paragraph (a), the applicant files in a receiving Office an international application to which section 58b applies; and
(c) a claim in the international application is fairly based on matter disclosed in the provisional specification,
the priority date of the claim shall be the date of lodgment of the provisional specification.
“58g.
(1) Where a copy of an international application, as published under Article 21
of the Treaty, is received in the Patent Office, the Commissioner shall
forthwith publish in the
“(2) Where—
(a) Article 25 of the Treaty applies in relation to an international application to which section 58b applies;
(b) the applicant, in writing, requests the Commissioner to publish in the
Official Journal a notification that the international application is open to inspection; and(c) the Commissioner is satisfied that the international application will not be published in accordance with Article 21 of the Treaty,
the
Commissioner shall forthwith publish a notification in the
“(3) Where—
(a) Article 25 of the Treaty applies in relation to an international application to which section 58b applies;
(b) a period of 18 months after the priority date of the international application has expired;
(c) the applicant has not made a request under sub-section (2) in relation to the international application; and
(d) the Commissioner is satisfied that the international application will not be published in accordance with Article 21 of the Treaty,
the
Commissioner shall, forthwith after the expiration of the period referred to in
paragraph (b), publish a notification in the
“(4) Upon publication in the
“58h.
The Commissioner may certify, by writing under his hand and the seal of the
Patent Office, that any matter or thing required or permitted by or under this
Act or the Treaty to be made or done, or required not to be made or done, as
the case requires, in relation to an international application has, or has not,
as the case may be, been made or done and any such certificate is
“58j. Regulations made under section 177 may—
(a) prescribe, in relation to international applications to which section 58b applies, matters necessary or convenient to be prescribed for carrying out or the giving effect to the Treaty; and
(b) exclude or vary the operation of the provisions of this Act in relation to international applications that are treated as applications under this Act by virtue of section 58b.”.
“SCHEDULE 1”.
————
THE SCHEDULE Section 7
SCHEDULE TO BE ADDED TO THE PRINCIPAL ACT
“SCHEDULE 2 Section 58a
PATENT COOPERATION TREATY
The Contracting States,
Desiring to make a contribution to the progress of science and technology,
Desiring to perfect the legal protection of inventions,
Desiring to simplify and render more economical the obtaining of protection for inventions where protection is sought in several countries,
Desiring to facilitate and accelerate access by the public to the technical information contained in documents describing new inventions,
Desiring to foster and accelerate the economic development of developing countries through the adoption of measures designed to increase the efficiency of their legal systems, whether national or regional, instituted for the protection of inventions by providing easily accessible information on the availability of technological solutions applicable to their special needs and by facilitating access to the ever expanding volume of modern technology,
Convinced that cooperation among nations will greatly facilitate the attainment of these aims,
Have concluded the present Treaty.
INTRODUCTORY PROVISIONS
(1) The States party to this Treaty (hereinafter called “the Contracting States”) constitute a Union for cooperation in the filing, searching, and examination, of applications for the protection of inventions, and for rendering special technical services. The Union shall be known as the International Patent Cooperation Union.
(2) No provision of this Treaty shall be interpreted as diminishing the rights under the Paris Convention for the Protection of Industrial Property of any national or resident of any country party to that Convention.
For the purposes of this Treaty and the Regulations and unless expressly stated otherwise:
(i) “application” means an application for the protection of an invention; references to an “application” shall be construed as references to applications for patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition;
(ii) references to a “patent” shall be construed as references to patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition;
(iii) “national patent” means a patent granted by a national authority;
(iv) “regional patent” means a patent granted by a national or an intergovernmental authority having the power to grant patents effective in more than one State;
(v) “regional application” means an application for a regional patent;
(vi) references to a “national application” shall be construed as references to applications for national patents and regional patents, other than applications filed under this Treaty;
(vii) “international application” means an application filed under this Treaty;
(viii) references to an “application” shall be construed as references to international applications and national applications;
(ix) references to a “patent” shall be construed as references to national patents and regional patents;
(x) references to “national law” shall be construed as references to the national law of a Contracting State or, where a regional application or a regional patent is involved, to the treaty providing for the filing of regional applications or the granting of regional patents;
(xi) “priority date,” for the purposes of computing time limits, means;
(
(
(
(xii) “national Office” means the government authority of a Contracting State entrusted with the granting of patents; references to a “national Office” shall be construed as referring also to any intergovernmental authority which several States have entrusted with the task of granting regional patents, provided that at least one of those States is a Contracting State, and provided that the said States have authorized that authority to assume the obligations and exercise the powers which this Treaty and the Regulations provide for in respect of national Offices;
(xiii) “designated Office” means the national Office of or acting for the State designated by the applicant under Chapter I of this Treaty;
(xiv) “elected Office” means the national Office of or acting for the State elected by the applicant under Chapter II of this Treaty;
(xv) “receiving Office” means the national Office or the intergovernmental organization, with which the international application has been filed;
(xvi) “Union” means the International Patent Corporation Union;
(xvii) “Assembly” means the Assembly of the Union;
(xviii) “Organization” means the World Intellectual Property Organization;
(xix) “International Bureau” means the International Bureau of the Organization and, as long as it subsists, the United International Bureaux for the Protection of Intellectual Property (BIRPI);
(xx) “Director General” means the Director General of the Organization and, as long as BIRPI subsists, the Director of BIRPI.
CHAPTER I
INTERNATIONAL APPLICATION AND INTERNATIONAL SEARCH
(1) Applications for the protection of inventions in any of the Contracting States may be filed as international applications under this Treaty.
(2) An international application shall contain, as specified in this Treaty and the Regulations, a request, a description, one or more claims, one or more drawings (where required), and an abstract.
(3) The abstract merely serves the purpose of technical information and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.
(4) The international application shall:
(i) be in a prescribed language;
(ii) comply with the prescribed physical requirements;
(iii) comply with the prescribed requirement of unity of invention;
(iv) be subject to the payment of the prescribed fees.
(1) The request shall contain:
(i) a petition to the effect that the international application be processed according to this Treaty;
(ii) the designation of the Contracting State or States in which protection for the invention is desired on the basis of the international application (“designated States”); if for any designated State a regional patent is available and the applicant wishes to obtain a regional patent rather than a national patent, the request shall so indicate; if, under a treaty concerning a regional patent, the applicant cannot limit his application to certain of the States party to that treaty, designation of one of those States and the indication of the wish to obtain the regional patent shall be treated as designation of all the States party to that treaty; if, under the national law of the designated State, the designation of that State has the effect of an application for a regional patent, the designation of the said State shall be treated as an indication of the wish to obtain the regional patent;
(iii) the name of and other prescribed data concerning the applicant and the agent (if any);
(iv) the title of the invention;
(v) the name of and other prescribed data concerning the inventor where the national law of at least one of the designated States requires that these indications be furnished at the time of filing a national application. Otherwise, the said indications may be furnished either in the request or in separate notices addressed to each designated Office whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application.
(2) Every designation shall be subject to the payment of the prescribed fee within the prescribed time limit.
(3) Unless the applicant asks for any of the other kinds of protection referred to in Article 43, designation shall mean that the desired protection consists of the grant of a patent by or for the designated State. For the purposes of this paragraph, Article 2 (ii) shall not apply.
(4) Failure to indicate in the request the name and other prescribed data concerning the inventor shall have no consequence in any designated State whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application. Failure to furnish the said indications in a separate notice shall have no consequence in any designated State whose national law does not require the furnishing of the said indications.
The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.
The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.
(1) Subject to the provisions of paragraph (2)(ii), drawings shall be required when they are necessary for the understanding of the invention.
(2) Where, without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings:
(i) the applicant may include such drawings in the international application when filed,
(ii) any designated Office may require that the applicant file such drawings with it within the prescribed time limit.
(1) The international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.
(2) (
(
(1) Any resident or national of a Contracting State may file an international application.
(2) The Assembly may decide to allow the residents and the nationals of any country party to the Paris Convention for the Protection of Industrial Property which is not party to this Treaty to file international applications.
(3) The concepts of residence and nationality, and the application of those concepts in cases where there are several applicants or where the applicants are not the same for all the designated States, are defined in the Regulations.
The international application shall be filed with the prescribed receiving Office, which will check and process it as provided in this Treaty and the Regulations.
(1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:
(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,
(ii) the international application is in the prescribed language,
(iii) the international application contains at least the following elements:
(
a ) an indication that it is intended as an international application,(
b )the designation of at least one Contracting State,(
c ) the name of the applicant, as prescribed,(
d )a part which on the face of it appears to be a description,(
e ) a part which on the face of it appears to be a claim or claims.
(2) (
(
(3) Subject to Article 64 (4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.
(4) Any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) shall be equivalent to a regular national filing within the meaning of the Paris Convention for the Protection of Industrial Property.
(1) One copy of the international application shall be kept by the receiving Office (“home copy”), one copy (“record copy”) shall be transmitted to the International Bureau, and another copy (“search copy”) shall be transmitted to the competent International Searching Authority referred to in Article 16, as provided in the Regulations.
(2) The record copy shall be considered the true copy of the international application.
(3) The international application shall be considered withdrawn if the record copy has not been received by the International Bureau within the prescribed time limit.
(1) Any designated Office may ask the International Bureau to transmit to it a copy of the international application prior to the communication provided for in Article 20, and the International Bureau shall transmit such copy to the designated Office as soon as possible after the expiration of one year from the priority date.
(2) (
(
(
(1) (
(i) it is not signed as provided in the Regulations;
(ii) it does not contain the prescribed indications concerning the applicant;
(iii) it does not contain a title;
(iv) it does not contain an abstract;
(v) it does not comply to the extent provided in the Regulations with the prescribed physical requirements.
(
(2) If the international application refers to drawings which, in fact, are not included in that application, the receiving Office shall notify the applicant accordingly and he may furnish them within the prescribed time limit and, if he does, the international filing date shall be the date on which the drawings are received by the receiving Office. Otherwise, any reference to the said drawings shall be considered non-existent.
(3) (
(
(4) If, after having accorded an international filing date to the international application, the receiving Office finds, within the prescribed time limit, that any of the requirements listed in items (i) to (iii) of Article 11 (1) was not complied with at that date, the said application shall be considered withdrawn and the receiving Office shall so declare.
(1) Each international application shall be the subject of international search.
(2) The objective of the international search is to discover relevant prior art.
(3) International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any).
(4) The International Searching Authority referred to in Article 16 shall endeavour to discover as much of the relevant prior art as its facilities permit, and shall, in any case, consult the documentation specified in the Regulations.
(5) (
(
(
(1) International search shall be carried out by an International Searching Authority, which may be either a national Office or an intergovernmental organization, such as the International Patent Institute, whose tasks include the establishing of documentary search reports on prior art with respect to inventions which are the subject of applications.
(2) If, pending
the establishment of a single International Searching Authority, there are
several International Searching Authorities, each receiving Office shall, in
accordance with the provisions of the applicable agreement referred to in
paragraph (3) (
(3) (
(
(
(
(
(1) Procedure before the International Searching Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.
(2) (
(i) that the international application relates to a subject matter which the International Searching Authority is not required, under the Regulations, to search, and in the particular case decides not to search, or
(ii) that the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out,
the said Authority shall so declare and shall notify the applicant and the International Bureau that no international search report will be established.
(
(3) (
(
(1) The international search report shall be established within the prescribed time limit and in the prescribed form.
(2) The international search report shall, as soon as it has been established, be transmitted by the International Searching Authority to the applicant and the International Bureau.
(3) The
international search report or the declaration referred to in Article 17 (2) (
(1) The applicant shall, after having received the international search report, be entitled to one opportunity to amend the claims of the international application by filing amendments with the International Bureau within the prescribed time limit. He may, at the same time, file a brief statement, as provided in the Regulations, explaining the amendments and indicating any impact that such amendments might have on the description and the drawings.
(2) The amendments shall not go beyond the disclosure in the international application as filed.
(3) If the national law of any designated State permits amendments to go beyond the said disclosure, failure to comply with paragraph (2) shall have no consequence in that State.
(1) (
(
(2) If the claims have been amended by virtue of Article 19 (1), the communication shall either contain the full text of the claims both as filed and as amended or shall contain the full text of the claims as filed and specify the amendments, and shall include the statement, if any, referred to in Article 19 (1).
(3) At the request of the designated Office or the applicant, the International Searching Authority shall send to the said Office or the applicant, respectively, copies of the documents cited in the international search report, as provided in the Regulations.
(1) The International Bureau shall publish international applications.
(2) (
(
(3) The
international search report or the declaration referred to in Article 17 (2) (
(4) The language and form of the international publication and other details are governed by the Regulations.
(5) There shall be no international publication if the international application is withdrawn or is considered withdrawn before the technical preparations for publication have been completed.
(6) If the international application contains expressions or drawings which, in the opinion of the International Bureau, are contrary to morality or public order, or if, in its opinion, the international application contains disparaging statements as defined in the Regulations, it may omit such expressions, drawings, and statements, from its publications, indicating the place and number of words or drawings omitted, and furnishing, upon request, individual copies of the passages omitted.
(1) The applicant shall furnish a copy of the international application (unless the communication provided for in Article 20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each designated Office not later than at the expiration of 20 months from the priority date. Where the national law of the designated State requires the indication of the name of and other prescribed data concerning the inventor but allows that these indications be furnished at a time later than that of the filing of a national application, the applicant shall, unless they were contained in the request, furnish the said indications to the national Office of or acting for that State not later than at the expiration of 20 months from the priority date.
(2)
Notwithstanding the provisions of paragraph (1), where the International
Searching Authority makes a declaration, under Article 17 (2) (
(3) Any national law may, for performing the acts referred to in paragraphs (1) or (2), fix time limits which expire later than the time limit provided for in those paragraphs.
(1) No designated Office shall process or examine the international application prior to the expiration of the applicable time limit under Article 22.
(2) Notwithstanding the provisions of paragraph (1), any designated Office may, on the express request of the applicant, process or examine the international application at any time.
(1) Subject, in case (ii) below, to the provisions of Article 25, the effect of the international application provided for in Article 11 (3) shall cease in any designated State with the same consequences as the withdrawal of any national application in that State:
(i) if the applicant withdraws his international application or the designation of that State;
(ii) if the
international application is considered withdrawn by virtue of Articles 12 (3),
14 (1) (
(iii) if the applicant fails to perform the acts referred to in Article 22 within the applicable time limit.
(2) Notwithstanding the provisions of paragraph (1), any designated Office may maintain the effect provided for in Article 11 (3) even where such effect is not required to be maintained by virtue of Article 25 (2).
(1) (
(
(
(2) (
(
No designated Office shall reject an international application on the grounds of non-compliance with the requirements of this Treaty and the Regulations without first giving the applicant the opportunity to correct the said application to the extent and according to the procedure provided by the national law for the same or comparable situations in respect of national applications.
(1) No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations.
(2) The provisions of paragraph (1) neither affect the application of the provisions of Article 7 (2) nor preclude any national law from requiring, once the processing of the international application has started in the designated Office, the furnishing:
(i) when the applicant is a legal entity, of the name of an officer entitled to represent such legal entity,
(ii) of documents not part of the international application but which constitute proof of allegations or statements made in that application, including the confirmation of the international application by the signature of the applicant when that application, as filed, was signed by his representative or agent.
(3) Where the applicant, for the purposes of any designated State, is not qualified according to the national law of that State to file a national application because he is not the inventor, the international application may be rejected by the designated Office.
(4) Where the national law provides, in respect of the form or contents of national applications, for requirements which, from the viewpoint of applicants, are more favourable than the requirements provided for by this Treaty and the Regulations in respect of international applications, the national Office, the courts and any other competent organs of or acting for the designated State may apply the former requirements, instead of the latter requirements, to international applications, except where the applicant insists that the requirements provided for by this Treaty and the Regulations be applied to his international application.
(5) Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires. In particular, any provision in this Treaty and the Regulations concerning the definition of prior art is exclusively for the purposes of the international procedure and, consequently, any Contracting State is free to apply, when determining the patentability of an invention claimed in an international application, the criteria of its national law in respect of prior art and other conditions of patentability not constituting requirements as to the form and contents of applications.
(6) The national law may require that the applicant furnish evidence in respect of any substantive condition of patentability prescribed by such law.
(7) Any receiving Office or, once the processing of the international application has started in the designated Office, that Office may apply the national law as far as it relates to any requirement that the applicant be represented by an agent having the right to represent applicants before the said Office and/or that the applicant have an address in the designated State for the purpose of receiving notifications.
(8) Nothing in this Treaty and the Regulations is intended to be construed as limiting the freedom of any Contracting State to apply measures deemed necessary for the preservation of its national security or to limit, for the protection of the general economic interests of that State, the right of its own residents or nationals to file international applications.
(1) The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each designated Office within the prescribed time limit. No designated Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired except with the express consent of the applicant.
(2) The amendments shall not go beyond the disclosure in the international application as filed unless the national law of the designated State permits them to go beyond the said disclosure.
(3) The amendments shall be in accordance with the national law of the designated State in all respects not provided for in this Treaty and the Regulations.
(4) Where the designated Office requires a translation of the international application, the amendments shall be in the language of the translation.
(1) As far as the protection of any rights of the applicant in a designated State is concerned, the effects, in that State, of the international publication of an international application shall, subject to the provisions of paragraphs (2) to (4), be the same as those which the national law of the designated State provides for the compulsory national publication of unexamined national applications as such.
(2) If the language in which the international publication has been effected is different from the language in which publications under the national law are effected in the designated State, the said national law may provide that the effects provided for in paragraph (1) shall be applicable only from such time as:
(i) a translation into the latter language has been published as provided by the national law, or
(ii) a translation into the latter language has been made available to the public, by laying open for public inspection as provided by the national law, or
(iii) a translation into the latter language has been transmitted by the applicant to the actual or prospective unauthorized user of the invention claimed in the international application, or
(iv) both the acts described in (i) and (iii), or both the acts described in (ii) and (iii), have taken place.
(3) The national law of any designated State may provide that, where the international publication has been effected, on the request of the applicant, before the expiration of 18 months from the priority date, the effects provided for in paragraph (1) shall be applicable only from the expiration of 18 months from the priority date.
(4) The national law of any designated State may provide that the effects provided for in paragraph (1) shall be applicable only from the date on which a copy of the international application as published under Article 21 has been received in the national Office of or acting for such State. The said Office shall publish the date of receipt in its gazette as soon as possible.
(1) (
(
(2) (
(i) date of the international publication of the international application,
(ii) date of the receipt of the communication of the international application under Article 20,
(iii) date of the receipt of a copy of the international application under Article 22.
(
(
(3) The provisions
of paragraph (2) (
(4) For the purposes of this Article, the term “access” covers any means by which third parties may acquire cognizance, including individual communication and general publication, provided, however, that no national Office shall generally publish an international application or its translation before the international publication or, if international publication has not taken place by the expiration of 20 months from the priority date, before the expiration of 20 months from the said priority date.
CHAPTER II
(1) On the demand of the applicant, his international application shall be the subject of an international preliminary examination as provided in the following provisions and the Regulations.
(2) (
(
(3) The demand for international preliminary examination shall be made separately from the international application. The demand shall contain the prescribed particulars and shall be in the prescribed language and form.
(4) (
(
(5) The demand shall be subject to the payment of the prescribed fees within the prescribed time limit.
(6) (
(
(7) Each elected Office shall be notified of its election.
(1) International preliminary examination shall be carried out by the International Preliminary Examining Authority.
(2) In the case of
demands referred to in Article 31 (2) (
(3) The provisions
of Article 16 (3) shall apply,
(1) The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.
(2) For the purposes of the international preliminary examination, a claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations.
(3) For the purposes of the international preliminary examination, a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.
(4) For the purposes of the international preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. “Industry” shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.
(5) The criteria described above merely serve the purposes of international preliminary examination. Any Contracting State may apply additional or different criteria for the purposes of deciding whether, in that State, the claimed invention is patentable or not.
(6) The international preliminary examination shall take into consideration all the documents cited in the international search report. It may take into consideration any additional documents considered to be relevant in the particular case.
(1) Procedure before the International Preliminary Examining Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.
(2) (
(
(
(i) the invention satisfies the criteria set forth in Article 33 (1),
(ii) the international application complies with the requirements of this Treaty and the Regulations in so far as checked by that Authority,
(iii) no observations are intended to be made under Article 35 (2), last sentence.
(
(3) (
(
(
(4) (
(i) that the international application relates to a subject matter on which the International Preliminary Examining Authority is not required, under the Regulations, to carry out an international preliminary examination, and in the particular case decides not to carry out such examination, or
(ii) that the description, the claims, or the drawings, are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness), or industrial applicability, of the claimed invention,
the said Authority shall not go into the questions referred to in Article 33 (1) and shall inform the applicant of this opinion and the reasons therefor.
(
(1) The international preliminary examination report shall be established within the prescribed time limit and in the prescribed form.
(2) The international preliminary examination report shall not contain any statement on the question whether the claimed invention is or seems to be patentable or unpatentable according to any national law. It shall state, subject to the provisions of paragraph (3), in relation to each claim, whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined for the purposes of the international preliminary examination in Article 33 (1) to (4). The statement shall be accompanied by the citation of the documents believed to support the stated conclusion with such explanations as the circumstances of the case may require. The statement shall also be accompanied by such other observations as the Regulations provide for.
(3) (
(
(1) The international preliminary examination report, together with the prescribed annexes, shall be transmitted to the applicant and to the International Bureau.
(2) (
(
(3) (
(
(4) The provisions
of Article 20 (3) shall apply,
(1) The applicant may withdraw any or all elections.
(2) If the election of all elected States is withdrawn, the demand shall be considered withdrawn.
(3) (
(
(4) (
(
(1) Neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or authorized by the applicant, allow access within the meaning, and with the proviso, of Article 30 (4) to the file of the international preliminary examination by any person or authority at any time, except by the elected Offices once the international preliminary examination report has been established.
(2) Subject to the
provisions of paragraph (1) and Articles 36 (1) and (3) and 37 (3) (
(1) (
(
(2) The effect
provided for in Article 11 (3) shall cease in the elected State with the same
consequences as the withdrawal of any national application in that State if the
applicant fails to perform the acts referred to in paragraph (1) (
(3) Any elected
Office may maintain the effect provided for in Article 11 (3) even where the
applicant does not comply with the requirements provided for in paragraph (1) (
(1) If the election of any Contracting State has been effected prior to the expiration of the 19th month from the priority date, the provisions of Article 23 shall not apply to such State and the national Office of or acting for that State shall not proceed, subject to the provisions of paragraph (2), to the examination and other processing of the international application prior to the expiration of the applicable time limit under Article 39.
(2) Notwithstanding the provisions of paragraph (1), any elected Office may, on the express request of the applicant, proceed to the examination and other processing of the international application at any time.
(1) The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each elected Office within the prescribed time limit. No elected Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired, except with the express consent of the applicant.
(2) The amendments shall not go beyond the disclosure in the international application as filed, unless the national law of the elected State permits them to go beyond the said disclosure.
(3) The amendments shall be in accordance with the national law of the elected State in all respects not provided for in this Treaty and the Regulations.
(4) Where an elected Office requires a translation of the international application, the amendments shall be in the language of the translation.
No elected Office receiving the international preliminary examination report may require that the applicant furnish copies, or information on the contents, of any papers connected with the examination relating to the same international application in any other elected Office.
CHAPTER III
COMMON PROVISIONS
In respect of any designated or elected State whose law provides for the grant of inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, or utility certificates of addition, the applicant may indicate, as prescribed in the Regulations, that his international application is for the grant, as far as that State is concerned, of an inventor’s certificate, a utility certificate, or a utility model, rather than a patent, or that it is for the grant of a patent or certificate of addition, an inventor’s certificate of addition, or a utility certificate of addition, and the ensuing effect shall be governed by the applicant’s choice. For the purposes of this Article and any Rule thereunder, Article 2 (ii) shall not apply.
In respect of any designated or elected State whose law permits an application, while being for the grant of a patent or one of the other kinds of protection referred to in Article 43, to be also for the grant of another of the said kinds of protection, the applicant may indicate, as prescribed in the Regulations, the two kinds of protection he is seeking, and the ensuing effect shall be governed by the applicant’s indications. For the purposes of this Article, Article 2 (ii) shall not apply.
(1) Any treaty providing for the grant of regional patents (“regional patent treaty”), and giving to all persons who, according to Article 9, are entitled to file international applications the right to file applications for such patents, may provide that international applications designating or electing a State party to both the regional patent treaty and the present Treaty may be filed as applications for such patents.
(2) The national law of the said designated or elected State may provide that any designation or election of such State in the international application shall have the effect of an indication of the wish to obtain a regional patent under the regional patent treaty.
If, because of an incorrect translation of the international application, the scope of any patent granted on that application exceeds the scope of the international application in its original language, the competent authorities of the Contracting State concerned may accordingly and retroactively limit the scope of the patent, and declare it null and void to the extent that its scope has exceeded the scope of the international application in its original language.
(1) The details for computing time limits referred to in this Treaty are governed by the Regulations.
74
If, at the time of the withdrawal of the international application or of the designation of all designated States under Rule 32.1, a demand for international preliminary examination has already been submitted and the international preliminary examination report has not yet issued, the International Bureau shall promptly notify the fact of withdrawal, together with the date of receipt of the notice effecting withdrawal, to the International Preliminary Examining Authority.
75.1
(
(
75.2
(
(
75.3
The fact that the demand or all elections have been withdrawn shall be promptly notified by the International Bureau to the International Preliminary Examining Authority if, at the time of the withdrawal, the latter had been informed of the existence of the demand.
75.4
(
(
76.1
(
(i) the languages from which and the language into which it requires translation,
(ii) the amount of the national fee.
(
(
76.2
The language into which translation may be required must be an official language of the elected 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.
76.3
For the purposes of Article 39 and the present Rule, any statement made under Article 19 (1) shall be considered as part of the international application.
76.4
The applicant shall not be required to furnish to any elected Office a certified translation of the priority document before the expiration of the applicable time limit under Article 39.
77.1
(
(
(
(
78.1
(
(
78.2
Where the election of any Contracting State has been effected after the expiration of the 19th month from the priority date and the applicant wishes to make amendments under Article 41, the time limit for making amendments under Article 28 shall apply.
78.3
The provisions of
Rules 6.5 and 13.5 shall apply,
PART D
RULES CONCERNING CHAPTER III OF THE TREATY
79.1
Applicants, national Offices, receiving Offices, International Searching and Preliminary Examining Authorities, and the International Bureau, shall, for the purposes of the Treaty and the Regulations, express any date in terms of the Christian era and the Gregorian calendar, or, if they use other eras and calendars, they shall also express any date in terms of the Christian era and the Gregorian calendar.
80.1
When a period is expressed as one year or a certain number of years, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent year in the month having the same name and on the day having the same number as the month and the day on which the said event occurred provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.
80.2
When a period is expressed as one month or a certain number of months, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent month on the day which has the same number as the day on which the said event occurred, provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.
80.3
When a period is expressed as a certain number of days, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire on the day on which the last day of the count has been reached.
80.4
(
(
80.5
If the expiration of any period during which any document or fee must reach a national Office or intergovernmental organization falls on a day on which such Office or organization is not open to the public for the purposes of the transaction of official business, or on which ordinary mail is not delivered in the locality in which such Office or organization is situated, the period shall expire on the next subsequent day on which neither of the said two circumstances exists.
80.6
Where a period starts on the day of the date of a document or letter emanating from a national Office or intergovernmental organization, any interested party may prove that the said document or letter was mailed on a day later than the date it bears, in which case the date of actual mailing shall, for the purposes of computing the period, be considered to be the date on which the period starts.
80.7
(
(
(
81.1
(
(
81.2
(
(
(
81.3
(
(
(
(
82.1
(
(
(
82.2
(
(
83.1
The International Bureau, the competent International Searching Authority, and the competent International Preliminary Examining Authority, may require the production of proof of the right to practice referred to in Article 49.
83.2
(
(
PART E
RULES CONCERNING CHAPTER V OF THE TREATY
84.1
The expenses of each Delegation participating in any organ established by or under the Treaty shall be borne by the Government which has appointed it.
85.1
In the case
provided for in Article 53 (5) (
86.1
The Gazette referred to in Article 55 (4) shall contain:
(i) for each published international application, data specified by the Administrative Instructions taken from the front page of the pamphlet published under Rule 48, the drawing (if any) appearing on the said front page, and the abstract,
(ii) the schedule of all fees payable to the receiving Offices, the International Bureau, and the International Searching and Preliminary Examining Authorities,
(iii) notices the publication of which is required under the Treaty or these Regulations,
(iv) information, if and to the extent furnished to the International Bureau by the designated or elected Offices, on the question whether the requirements provided for in Articles 22 or 39 have been complied with in respect of the international applications designating or electing the Office concerned,
(v) any other useful information prescribed by the Administrative Instructions, provided access to such information is not prohibited under the Treaty or these Regulations.
86.2
(
(
86.3
(
(
86.4
(
(
86.5
The title of the Gazette shall be “Gazette of International Patent Applications,” and “Gazette des Demandes internationales de brevets,” respectively.
86.6
Further details concerning the Gazette may be provided for in the Administrative Instructions.
87.1
Any International Searching or Preliminary Examining Authority shall have the right to receive, free of charge, two copies of every published international application, of the Gazette, and of any other publication of general interest published by the International Bureau in connection with the Treaty or these Regulations.
87.2
(
(
88.1
Amendment of the following provisions of these Regulations shall require that no State having the right to vote in the Assembly vote against the proposed amendment:
(i) Rule 14.1 (Transmittal Fee),
(ii) Rule 22.2 (Transmittal of the Record Copy; Alternative Procedure),
(iii) Rule 22.3 (Time Limit Under Article 12 (3)),
(iv) Rule 33 (Relevant Prior Art for International Search),
(v) Rule 64 (Prior Art for International Preliminary Examination),
(vi) Rule 81 (Modification of Time Limits Fixed in the Treaty),
(vii) the present paragraph (i.e., Rule 88.1).
88.2
During the first 5 years after the entry into force of the Treaty, amendment of the following provisions of these Regulations shall require that no State having the right to vote in the Assembly vote against the proposed amendment:
(i) Rule 5 (The Description),
(ii) Rule 6 (The Claims),
(iii) the present paragraph (i.e., Rule 88.2).
88.3
Amendment of the
following provisions of these Regulations shall require that no State referred
to in Article 58 (3) (
(i) Rule 34 (Minimum Documentation),
(ii) Rule 39
(Subject Matter Under Article 17 (2) (
(iii) Rule 67
(Subject Matter Under Article 34 (4) (
(iv) the present paragraph (i.e., Rule 88.3).
88.4
Any proposal for amending a provision referred to in Rules 88.1, 88.2 or 88.3, shall, if the proposal is to be decided upon in the Assembly, be communicated to all Contracting States at least 2 months prior to the opening of that session of the Assembly which is called upon to make a decision on the proposal.
89.1
(
(i) concerning matters in respect of which these Regulations expressly refer to such Instructions,
(ii) concerning any details in respect of the application of these Regulations.
(
89.2
(
(
(
89.3
(
(
PART F
RULES CONCERNING SEVERAL CHAPTERS OF THE TREATY
90.1
For the purposes of Rule 90.2 and Rule 90.3:
(i) “agent” means any of the persons referred to in Article 49;
(ii) “common representative” means the applicant referred to in Rule 4.8.
90.2
(
(
(
(
90.3
(
(
(
90.4
(
(
91.1
(
(
(
(
(
(i) of the receiving Office if the error is in the request,
(ii) of the International Searching Authority if the error is in any part of the international application other than the request or in any paper submitted to that Authority,
(iii) of the International Preliminary Examining Authority if the error is in any part of the international application other than the request or in any paper submitted to that Authority, and
(iv) of the International Bureau if the error is in any paper, other than the international application or amendments or corrections to that application, submitted to the International Bureau.
(
(
(i) in the case of authorization given by the receiving Office and the International Bureau, the communication of the international application under Article 20;
(ii) in the case
of authorization given by the International Searching Authority, the
establishment of the international search report or the making of a declaration
under Article 17 (2) (
(iii) in the case of authorization given by the International Preliminary Examining Authority, the establishment of the international preliminary examination report.
(
(
(
92.2
(
(
(
(
(
92.3
Any document or letter emanating from or transmitted by a national Office or an intergovernmental organization and constituting an event from the date of which any time limit under the Treaty or these Regulations commences to run shall be sent by registered air mail, provided that surface mail may be used instead of air mail in cases where surface mail normally arrives at its destination within 2 days from mailing or where air mail service is not available.
93.1
Each receiving Office shall keep the records relating to each international application or purported international application, including the home copy, for at least 10 years from the international filing date or, where no international filing date is accorded, from the date of receipt.
93.2
(
(
93.3
Each International Searching Authority and each International Preliminary Examining Authority shall keep the file of each international application it receives for at least 10 years from the international filing date.
93.4
For the purposes of this Rule, records, copies and files shall also mean photographic reproductions of records, copies, and files, whatever may be the form of such reproductions (microfilms or other).
94.1
At the request of the applicant or any person authorized by the applicant, the International Bureau and the International Preliminary Examining Authority shall furnish, subject to reimbursement of the cost of the service, copies of any document contained in the file of the applicant’s international application or purported international application.
95.1
(
(
96.1
The amounts of the fees referred to in Rules 15 and 57 shall be expressed in Swiss currency. They shall be specified in the Schedule of Fees which is annexed to these Regulations and forms an integral part thereof.
SCHEDULE OF FEES
1. | |
| |
| 325 Swiss francs |
|
|
2.
| 78 Swiss francs |
3.
| 100 Swiss francs |
4.
| 100 Swiss francs”. |
1. Act No. 188, 1978; assented to 4 December 1979.
2. Act No. 42, 1952, as amended. For previous amendments
see
0
0
0