Patents Regulations (Amendment) (Cth)
__________________
I, WILLIAM PATRICK DEANE, Governor-General
of the Commonwealth of Australia, acting with the advice of the Federal
Executive Council, make the following Regulations under the
Dated 18 June 1998.
WILLIAM DEANE
Governor-General
By His Excellency’s Command,
j. moore
Minister for Industry, Science and Tourism
____________
1.1 Regulations 3, 4 and 5 commence on 1 July 1998.
1.2 The remainder of these Regulations commence on gazettal.
2.1 The Patents Regulations are amended as set out in these Regulations.
3.1 Subregulation 1.4 (2):
Omit “1 January 1998”, substitute “1 July 1998”.
4.1 Regulation 22.15:
Omit the regulation, substitute:
“
“
5.1 Omit the Schedule, substitute Schedule 2A set out in the Schedule to these Regulations.
6.1 Clause 7 (Writing of textual matter):
Subclause 7 (1):
Omit “typewritten or printed.”, substitute “typewritten or otherwise machine printed.”.
REGULATIONS UNDER THE PATENT COOPERATION TREATY
Adopted on June 19, 1970, and amended on April 14, 1978, on October 3, 1978, on May 1, 1979, on June 16, 1980, on September 26, 1980, on July 3, 1981, on September 10, 1982, on October 4, 1983, on February 3, 1984, on September 28, 1984, on October 1, 1985, on July 12, 1991, on October 2, 1991, on September 29, 1992, on September 29, 1993 and on 1 October, 1997.
TABLE OF PROVISIONS
Rule 1 Abbreviated Expressions
1.1 Meaning of Abbreviated Expressions
Rule 2 Interpretation of Certain Words
2.1 “Applicant”
2.2 “Agent”
2.2
bis “Common Representative”
2.3 “Signature”
Rule 3 The Request (Form)
3.1 Form of Request
3.2 Availability of Forms
3.3 Check List
3.4 Particulars
Rule 4 The Request (Contents)
4.1 Mandatory and Optional Contents; Signature
4.2 The Petition
4.3 Title of the Invention
4.4 Names and Addresses
4.5 The Applicant
4.6 The Inventor
4.7 The Agent
4.8 Common Representative
4.9 Designation of States
4.10 Priority Claim
4.11 Reference to Earlier Search
4.12 Choice of Certain Kinds of Protection
4.13 Identification of Parent Application or Parent Grant
4.14 Continuation or Continuation in Part
4.14
bis Choice of International Searching Authority
4.15 Signature
4.16 Transliteration or Translation of Certain Words
4.17 Additional Matter
Rule 5 The Description
5.1 Manner of the Description
5.2 Nucleotide and/or Amino Acid Sequence Disclosure
Rule 6 The Claims
6.1 Number and Numbering of Claims
6.2 References to Other Parts of the International Application
6.3 Manner of Claiming
6.4 Dependent Claims
6.5 Utility Models
Rule 7 The Drawings
7.1 Flow Sheets and Diagrams
7.2 Time Limit
Rule 8 The Abstract
8.1 Contents and Form of the Abstract
8.2 Figure
8.3 Guiding Principles in Drafting
Rule 9 Expressions, Etc., Not to Be Used
9.1 Definition
9.2 Noting of Lack of Compliance
9.3 Reference to Article 21 (6)
Rule 10 Terminology and Signs
10.1 Terminology and Signs
10.2 Consistency
Rule 11 Physical Requirements of the International Application
11.1 Number of Copies
11.2 Fitness for Reproduction
11.3 Material to be Used
11.4 Separate Sheets, Etc.
11.5 Size of Sheets
11.6 Margins
11.7 Numbering of Sheets
11.8 Numbering of Lines
11.9 Writing of Text Matter
11.10 Drawings, Formulae, and Tables, in Text Matter
11.11 Words in Drawings
11.12 Alterations, Etc.
11.13 Special Requirements for Drawings
11.14 Later Documents
Rule 12 Language of the International Application and Translation for the Purposes of International Search
12.1 Languages Accepted for the Filing of International Applications
12.2 Language of Changes in the International Application
12.3 Translation for the Purposes of International Search
Rule 13 Unity of Invention
13.1 Requirement
13.2 Circumstances in Which the Requirement of Unity of Invention Is to Be Considered Fulfilled
13.3 Determination of Unity of Invention Not Affected by Manner of Claiming
13.4 Dependent Claims
13.5 Utility Models
Rule 13
bis Inventions Relating to Biological Material13
bis .1 Definition13
bis .2 References (General)13
bis .3 References: Contents; Failure to Include Reference or Indication13
bis .4 References: Time Limit for Furnishing Indications13
bis .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 Notified13
bis .6 Furnishing of Samples13
bis .7 National Requirements: Notification and PublicationRule 13
ter Nucleotide and/or Amino Acid Sequence Listings13
ter .1 Sequence Listing for International Authorities13
ter .2 Sequence Listing for Designated OfficeRule 14 The Transmittal Fee
14.1 The Transmittal Fee
Rule 15 The International Fee
15.1 Basic Fee and Designation Fee
15.2 Amounts
15.4 Time Limit for Payment; Amount Payable
15.5 Fees under Rule 4.9 (
c )15.6 Refund
Rule 16 The Search Fee
16.1 Right to Ask for a Fee
16.2 Refund
16.3 Partial Refund
Rule 16
bis Extension of Time Limits for Payment of Fees16
bis .1 Invitation by the Receiving Office16
bis .2 Late Payment FeeRule 17 The Priority Document
17.1 Obligation to Submit Copy of Earlier National or International Application
17.2 Availability of Copies
Rule 18 The Applicant
18.1 Residence and Nationality
18.3 Two or More Applicants
18.4 Information on Requirements Under National Law as to Applicants
Rule 19 The Competent Receiving Office
19.1 Where to File
19.2 Two or More Applicants
19.3 Publication of Fact of Delegation of Duties of Receiving Office
19.4 Transmittal to the International Bureau as Receiving Office
Rule 20 Receipt of the International Application
20.1 Date and Number
20.2 Receipt on Different Days
20.3 Corrected International Application
20.4 Determination under Article 11 (1)
20.5 Positive Determination
20.6 Invitation to Correct
20.7 Negative Determination
20.8 Error by the Receiving Office
20.9 Certified Copy for the Applicant
Rule 21 Preparation of Copies
21.1 Responsibility of the Receiving Office
Rule 22 Transmittal of the Record Copy and Translation
22.1 Procedure
22.3 Time Limit under Article 12 (3)
Rule 23 Transmittal of the Search Copy, Translation and Sequence Listing
23.1 Procedure
Rule 24 Receipt of the Record Copy by the International Bureau
24.2 Notification of Receipt of the Record Copy
Rule 25 Receipt of the Search Copy by the International Searching Authority
25.1 Notification of Receipt of the Search Copy
Rule 26 Checking by, and Correcting before, the Receiving Office of Certain Elements of the International Application
26.1 Time Limit for Check
26.2 Time Limit for Correction
26.3 Checking of Physical Requirements under Article 14 (1) (
a ) (v)26.3
bis Invitation under Article 14 (1) (b ) to Correct Defects under Rule 1126.3
ter Invitation to Correct Defects under Article 3 (4) (i)
26.4 Procedure
26.5 Decision of the Receiving Office
26.6 Missing Drawings
Rule 26
bis Correction or Addition of Priority Claim26
bis .1 Correction or Addition of Priority Claim26
bis .2 Invitation to Correct Defects in Priority ClaimsRule 27 Lack of Payment of Fees
27.1 Fees
Rule 28 Defects Noted by the International Bureau
28.1 Note on Certain Defects
Rule 29 International Applications or Designations Considered Withdrawn
29.1 Finding by Receiving Office
29.3 Calling Certain Facts to the Attention of the Receiving Office
29.4 Notification of Intent to Make Declaration under Article 14 (4)
Rule 30 Time Limit under Article 14 (4)
30.1 Time Limit
Rule 31 Copies Required under Article 13
31.1 Request for Copies
31.2 Preparation of Copies
Rule 32 Extension of Effects of International Application to Certain Successor States
32.1 Request for Extension of International Application to Successor State
32.2 Effects of Extension to Successor State
Rule 33 Relevant Prior Art for the International Search
33.1 Relevant Prior Art for the International Search
33.2 Fields to be Covered by the International Search
33.3 Orientation of the International Search
Rule 34 Minimum Documentation
34.1 Definition
Rule 35 The Competent International Searching Authority
35.1 When Only One International Searching Authority is Competent
35.2 When Several International Searching Authorities are Competent
35.3 When the International Bureau is Receiving Office under Rule 19.1 (
a ) (iii)Rule 36 Minimum Requirements for International Searching Authorities
36.1 Definition of Minimum Requirements
Rule 37 Missing or Defective Title
37.1 Lack of Title
37.2 Establishment of Title
Rule 38 Missing or Defective Abstract
38.1 Lack of Abstract
38.2 Establishment of Abstract
Rule 39 Subject Matter under Article 17 (2) (
a ) (i)
39.1 Definition
Rule 40 Lack of Unity of Invention (International Search)
40.1 Invitation to Pay
40.2 Additional Fees
40.3 Time Limit
Rule 41 Earlier Search Other Than International Search
41.1 Obligation to Use Results; Refund of Fee
Rule 42 Time Limit for International Search
42.1 Time Limit for International Search
Rule 43 The International Search Report
43.1 Identifications
43.2 Dates
43.3 Classification
43.4 Language
43.5 Citations
43.6 Fields Searched
43.7 Remarks Concerning Unity of Invention
43.8 Authorized Officer
43.9 Additional Matter
43.10 Form
Rule 44 Transmittal of the International Search Report, Etc.
44.1 Copies of Report or Declaration
44.2 Title or Abstract
44.3 Copies of Cited Documents
Rule 45 Translation of the International Search Report
45.1 Languages
Rule 46 Amendment of Claims before the International Bureau
46.1 Time Limit
46.2 Where to File
46.3 Language of Amendments
46.4 Statement
46.5 Form of Amendments
Rule 47 Communication to Designated Offices
47.1 Procedure
47.2 Copies
47.3 Languages
47.4 Express Request under Article 23 (2)
Rule 48 International Publication
48.1 Form
48.2 Contents
48.3 Languages
48.4 Earlier Publication on the Applicant's Request
48.5 Notification of National Publication
48.6 Announcing of Certain Facts
Rule 49 Copy, Translation and Fee under Article 22
49.1 Notification
49.2 Languages
49.3 Statements under Article 19; Indications under Rule 13
bis .449.4 Use of National Form
49.5 Contents of and Physical Requirements for the Translation
Rule 50 Faculty under Article 22 (3)
50.1 Exercise of Faculty
Rule 51 Review by Designated Offices
51.1 Time Limit for Presenting the Request to Send Copies
51.2 Copy of the Notice
51.3 Time Limit for Paying National Fee and Furnishing Translation
Rule 51
bis Certain National Requirements Allowed under Article 27 (1), (2), (6) and (7)51
bis .1 Certain National Requirements Allowed51
bis .2 Opportunity to Comply with National RequirementsRule 52 Amendment of the Claims, the Description, and the Drawings, before Designated Offices
52.1 Time Limit
Rule 53 The Demand
53.1 Form
53.2 Contents
53.3 The Petition
53.4 The Applicant
53.5 Agent or Common Representative
53.6 Identification of the International Application
53.7 Election of States
53.8 Signature
53.9 Statement Concerning Amendments
Rule 54 The Applicant Entitled to Make a Demand
54.1 Residence and Nationality
54.2 Right to Make a Demand
54.3 International Applications Filed with the International Bureau as Receiving Office
54.4 Applicant Not Entitled to Make a Demand
Rule 55 Languages (International Preliminary Examination)
55.1 Language of Demand
55.2 Translation of International Application
55.3 Translation of Amendments
Rule 56 Later Elections
56.1 Elections Submitted Later Than the Demand
56.2 Identification of the International Application
56.3 Identification of the Demand
56.4 Form of Later Elections
56.5 Language of Later Elections
Rule 57 The Handling Fee
57.1 Requirement to Pay
57.2 Amount
57.3 Time Limit for Payment; Amount Payable
57.6 Refund
Rule 58 The Preliminary Examination Fee
58.1 Right to Ask for a Fee
58.3 Refund
Rule 58
bis Extension of Time Limits for Payment of Fees58
bis .1 Invitation by the International Preliminary Examining Authority58
bis .2 Late Payment FeeRule 59 The Competent International Preliminary Examining Authority
59.1 Demands under Article 31 (2) (
a )59.2 Demands under Article 31 (2) (
b )59.3 Transmittal of Demand to the Competent International Preliminary Examining Authority
Rule 60 Certain Defects in the Demand or Elections
60.1 Defects in the Demand
60.2 Defects in Later Elections
Rule 61 Notification of the Demand and Elections
61.1 Notification to the International Bureau and the Applicant
61.2 Notification to the Elected Offices
61.3 Information for the Applicant
61.4 Publication in the Gazette
Rule 62 Copy of Amendments Under Article 19 for the International Preliminary Examining Authority
62.1 Amendments Made before the Demand is Filed
62.2 Amendments Made after the Demand is Filed
Rule 63 Minimum Requirements for International Preliminary Examining Authorities
63.1 Definition of Minimum Requirements
Rule 64 Prior Art for International Preliminary Examination
64.1 Prior Art
64.2 Non-Written Disclosures
64.3 Certain Published Documents
Rule 65 Inventive Step or Non-Obviousness
65.1 Approach to Prior Art
65.2 Relevant Date
Rule 66 Procedure before the International Preliminary Examining Authority
66.1 Basis of the International Preliminary Examination
66.2 First Written Opinion of the International Preliminary Examining Authority
66.3 Formal Response to the International Preliminary Examining Authority
66.4 Additional Opportunity for Submitting Amendments or Arguments
66.4
bis Consideration of Amendments and Arguments
66.5 Amendment
66.6 Informal Communications with the Applicant
66.7 Priority Document
66.8 Form of Amendments
66.9 Language of Amendments
Rule 67 Subject Matter under Article 34 (4) (
a ) (i)
67.1 Definition
Rule 68 Lack of Unity of Invention (International Preliminary Examination)
68.1 No Invitation to Restrict or Pay
68.2 Invitation to Restrict or Pay
68.3 Additional Fees
68.4 Procedure in the Case of Insufficient Restriction of the Claims
68.5 Main Invention
Rule 69 Start of and Time Limit for International Preliminary Examination
69.1 Start of International Preliminary Examination
69.2 Time Limit for International Preliminary Examination
Rule 70 The International Preliminary Examination Report
70.1 Definition
70.2 Basis of the Report
70.3 Identifications
70.4 Dates
70.5 Classification
70.6 Statement under Article 35 (2)
70.7 Citations under Article 35 (2)
70.8 Explanations under Article 35 (2)
70.9 Non-Written Disclosures
70.10 Certain Published Documents
70.11 Mention of Amendments
70.12 Mention of Certain Defects and Other Matters
70.13 Remarks Concerning Unity of Invention
70.14 Authorized Officer
70.15 Form
70.16 Annexes to the Report
70.17 Languages of the Report and the Annexes
Rule 71 Transmittal of the International Preliminary Examination Report
71.1 Recipients
71.2 Copies of Cited Documents
Rule 72 Translation of the International Preliminary Examination Report
72.1 Languages
72.2 Copy of Translation for the Applicant
72.3 Observations on the Translation
Rule 73 Communication of the International Preliminary Examination Report
73.1 Preparation of Copies
73.2 Time Limit for Communication
Rule 74 Translations of Annexes of the International Preliminary Examination Report and Transmittal Thereof
74.1 Contents of Translation and Time Limit for Transmittal Thereof
Rule 76 Copy, Translation and Fee under Article 39 (1); Translation of Priority Document
76.4 Time Limit for Translation of Priority Document
76.5 Application of Rules 22.1 (g), 49 and 51
bis 76.6 Transitional Provision
Rule 77 Faculty under Article 39 (1) (
b )
77.1 Exercise of Faculty
Rule 78 Amendment of the Claims, the Description, and the Drawings, before Elected Offices
78.1 Time Limit Where Election Is Effected prior to Expiration of 19 Months from Priority Date
78.2 Time Limit Where Election Is Effected After Expiration of 19 Months from Priority Date
78.3 Utility Models
Rule 79 Calendar
79.1 Expressing Dates
Rule 80 Computation of Time Limits
80.1 Periods Expressed in Years
80.2 Periods Expressed in Months
80.3 Periods Expressed in Days
80.4 Local Dates
80.5 Expiration on a Non-Working Day
80.6 Date of Documents
80.7 End of Working Day
Rule 81 Modification of Time Limits Fixed in the Treaty
81.1 Proposal
81.2 Decision by the Assembly
81.3 Voting by Correspondence
Rule 82 Irregularities in the Mail Service
82.1 Delay or Loss in Mail
82.2 Interruption in the Mail Service
Rule 82
bis Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits82
bis .1 Meaning of “Time Limit” in Article 48 (2)82
bis .2 Reinstatement of Rights and Other Provisions to which Article 48 (2) AppliesRule 82
ter Rectification of Errors Made by the Receiving Office or by the International Bureau82
ter .1 Errors Concerning the International Filing Date and the Priority ClaimRule 83 Right to Practice before International Authorities
83.1 Proof of Right
83.1
bis Where the International Bureau is the Receiving Office
83.2 Information
Rule 84 Expenses of Delegations
84.1 Expenses Borne by Governments
Rule 85 Absence of Quorum in the Assembly
85.1 Voting by Correspondence
Rule 86 The Gazette
86.1 Contents and Form
86.2 Languages; Access to the Gazette
86.3 Frequency
86.4 Sale
86.5 Title
86.6 Further Details
Rule 87 Copies of Publications
87.1 International Searching and Preliminary Examining Authorities
87.2 National Offices
Rule 88 Amendment of the Regulations
88.1 Requirement of Unanimity
88.3 Requirement of Absence of Opposition by Certain States
88.4 Procedure
Rule 89 Administrative Instructions
89.1 Scope
89.2 Source
89.3 Publication and Entry into Force
Rule 90 Agents and Common Representatives
90.1 Appointment as Agent
90.2 Common Representative
90.3 Effects of Acts by or in Relation to Agents and Common Representatives
90.4 Manner of Appointment of Agent or Common Representative
90.5 General Power of Attorney
90.6 Revocation and Renunciation
Rule 90
bis Withdrawals90
bis .1 Withdrawal of the International Application90
bis .2 Withdrawal of Designations90
bis .3 Withdrawal of Priority Claims90
bis .4 Withdrawal of the Demand, or of Elections90
bis .5 Signature90
bis .6 Effect of Withdrawal90
bis .7 Faculty under Article 37 (4) (b )Rule 91 Obvious Errors in Documents
91.1 Rectification
Rule 92 Correspondence
92.1 Need for Letter and for Signature
92.2 Languages
92.3 Mailings by National Offices and Intergovernmental Organizations
92.4 Use of Telegraph, Teleprinter, Facsimile Machine, Etc.
Rule 92
bis Recording of Changes in Certain Indications in the Request or the Demand92
bis .1 Recording of Changes by the International BureauRule 93 Keeping of Records and Files
93.1 The Receiving Office
93.2 The International Bureau
93.3 The International Searching and Preliminary Examining Authorities
93.4 Reproductions
Rule 94 Access to Files
94.1 Access to the File Held by the International Bureau
94.2 Access to the File Held by the International Preliminary Examining Authority
94.3 Access to the File Held by the Elected Office
Rule 95 Availability of Translations
95.1 Furnishing of Copies of Translations
Rule 96 The Schedule of Fees
96.1 Schedule of Fees Annexed to Regulations
REGULATIONS UNDER THE PATENT COOPERATION TREATY
PART A
1.1
(
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2.1
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
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.
2.2
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
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.
PART B
3.1
The request shall be made on a printed form or be presented as a computer print-out.
3.2
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
(
(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 computer readable 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.
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3.4
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
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(i) a petition,
(ii) the title of the invention,
(iii) indications concerning the applicant and the agent, if there is an agent,
(iv) the designation of States,
(v) 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.
(
(i) a priority claim,
(ii) a reference to any earlier international, international-type or other search,
(iii) choices of certain kinds of protection,
(iv) an indication that the applicant wishes to obtain a regional patent,
(v) a reference to a parent application or a parent patent,
(vi) an indication of the applicant’s choice of competent International Searching Authority.
(
(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 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.
(
4.2
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
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
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4.5
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4.6
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4.7
If agents are designated, the request shall so indicate, and shall state their names and addresses.
4.8
If a common representative is designated, the request shall so indicate.
4.9
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(i) in the case of designations for the purpose of obtaining national patents, by an indication of each State concerned;
(ii) in the case of designations for the purpose of obtaining a regional patent, by an indication that a regional patent is desired either for all Contracting States which are party to the regional patent treaty concerned or only for such Contracting States as are specified.
(
(i) at least one Contracting State is designated under paragraph (
a ), and(ii) the request also contains a statement that any designation made under this paragraph is subject to confirmation as provided in paragraph (
c ) and that any designation which is not so confirmed before the expiration of 15 months from the priority date is to be regarded as withdrawn by the applicant at the expiration of that time limit.
(
(i) filing with the receiving Office a written notice containing an indication as referred to in paragraph (
a ) (i) or (ii), and(ii) paying to the receiving Office the designation fee and the confirmation fee referred to in Rule 15.5
within the time limit under paragraph (b) (ii).
4.10
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(i) the date on which the earlier application was filed, being a date falling within the period of 12 months preceding the international filing date;
(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 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.
(
(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 the countries party to the regional patent treaty are not all party to the Paris Convention for the Protection of Industrial Property, the priority claim shall indicate at least one country party to that Convention for which that earlier application was filed.
(
4.11
If an international or international-type search has been requested on an application under Article 15 (5) or if the applicant wishes the International Searching Authority to base the international search report wholly or in part on the results of a search, other than an international or international-type search, made by the national Office or intergovernmental organization which is the International Searching Authority competent for the international application, the request shall contain a reference to that fact. Such reference shall either identify the application (or its translation, as the case may be) in respect of which the earlier search was made by indicating country, date and number, or the said search by indicating, where applicable, date and number of the request for such search.
4.12
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4.13
If the applicant wishes his international application to be treated, in any designated State, as an application for a patent or certificate of addition, inventor’s certificate of addition, or utility certificate of addition, he shall identify the parent application or the parent patent, parent inventor’s certificate, or parent utility certificate to which the patent or certificate of addition, inventor’s certificate of addition, or utility certificate of addition, if granted, relates. For the purposes of this paragraph, Article 2 (ii) shall not apply.
4.14
If the applicant wishes his international application to be treated, in any designated State, as an application for a continuation or a continuation-in-part of an earlier application, he shall so indicate in the request and shall identify the parent application involved.
4.14
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
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4.16
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4.17
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5.1
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(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.
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5.2
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6.1
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6.2
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6.3
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(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.
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6.4
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6.5
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 are considered drawings.
7.2
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
(
(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.
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8.2
(
(
8.3
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
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
The receiving Office and the International Searching Authority 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. If the lack of compliance was noted by the receiving Office, that Office shall inform the competent International Searching Authority and the International Bureau; if the lack of compliance was noted by the International Searching Authority, that Authority shall inform the receiving Office and the International Bureau.
9.3
“Disparaging statements,” referred to in Article 21 (6), shall have the meaning as defined in Rule 9.1 (iii).
10.1
(
(
(
(
(
10.2
The terminology and the signs shall be consistent throughout the international application.
11.1
(
(
11.2
(
(
(
(
11.3
All elements of the international application shall be on paper which shall be flexible, strong, white, smooth, non-shiny, and durable.
11.4
(
(
11.5
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
(
— top: 2 cm
— left side: 2.5 cm
— right side: 2 cm
— bottom: 2 cm
(
— top: 4 cm
— left side: 4 cm
— right side: 3 cm
— bottom: 3 cm
(
— top: 2.5 cm
— left side: 2.5 cm
— right side: 1.5 cm
— bottom: 1.0 cm
(
(
(
11.7
(
(
11.8
(
(
11.9
(
(
(
(
(
11.10
(
(
(
(
11.11
(
(
11.12
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
(
(
(
(
(
(
(
(
(
(
(
(
(
(
11.14
Rules 10, and 11.1 to 11.13, also apply to any document—for example, corrected pages, amended claims, translations—submitted after the filing of the international application.
12.1
(
(
(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.
(
(
12.2
Any amendment of the international application shall, subject to Rules 46.3, 55.3 and 66.9, be in the language in which the application is filed.
Any rectification under Rule 91.1 of an obvious error 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 12.3 (a), 48.3 (b) or 55.2 (a), rectifications referred to in Rule 91.1 (e) (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 26.3
ter (c), rectifications referred to in Rule 91.1 (e) (i) need only be filed in the language of that translation.
(
12.3
(
(i) a language accepted by that Authority, and
(ii) a language of publication, and
(iii) a language accepted by the receiving Office under Rule 12.1 (a), unless the international application is filed in a language of publication.
(
(
(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.
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.
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 50% of the basic fee.
13.1
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
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
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
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
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.
13
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.
13
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.
13
(
(i) the name and 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 13
bis .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.
(
13
(
(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.
(
(
(
(i) if the indication was received before the technical preparations for international publication have been completed, indicate that date, and include the relevant data from the indication, in the pamphlet published under Rule 48;
(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.
13
(
(
(
13
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.
13
(
(i) that any matter specified in the notification, in addition to those referred to in Rule 13
bis .3 (a) (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 13
bis .3 (a) 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.
(
(
13
(
(i) the international application does not contain a sequence listing complying with the standard provided for in the Administrative Instructions, that Authority may invite the applicant to furnish to it, within a time limit fixed in the invitation, a sequence listing complying with that standard;
(ii) the applicant has not already furnished a sequence listing in computer readable form complying with the standard provided for in the Administrative Instructions, that Authority may invite the applicant to furnish to it, within a time limit fixed in the invitation, a sequence listing in such a form complying with that standard.
(
(
(
(
13
Once the processing
of the international application has started before a designated Office,
Rule 13
14.1
(
(
(
15.1
Each international application shall be subject to the payment of a fee for the benefit of the International Bureau (“international fee”) to be collected by the receiving Office and consisting of,
(i) a “basic fee,” and
(ii) as many “designation fees” as there are national patents and regional patents sought under Rule 4.9 (a), except that, where Article 44 applies in respect of a designation, only one designation fee shall be due for that designation, and that the Schedule of Fees may indicate a maximum number of designation fees payable.
15.2
(
(
(
(
15.4
(
(
(i) one year from the priority date, or
(ii) one month from the date of receipt of the international application if that one-month period expires later than one year from the priority date.
(
15.5
(
(
15.6
The receiving Office shall refund the international 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
(
(
(
(
(
(
16.2
The receiving Office shall refund the search fee to the applicant:
(i) as a Gazette in paper form, which shall contain the data specified by the Administrative Instructions taken from the front page of the pamphlet published under Rule 48 (‘bibliographic data’) and the matters referred to in paragraph (
a ) (ii) to (v);(ii) as a Gazette in electronic form, which shall contain the bibliographic data, the drawing (if any) appearing on the said front page, and the abstract.
86.2
(
(
(
86.3
The frequency of publication of the Gazette shall be determined by the Director General.
86.4
The subscription and other sale prices of the Gazette shall be determined by the Director General.
86.5
The title of the Gazette shall be determined by the Director General.
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),
(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).
88.3
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) (
a ) (i)),(iii) Rule 67 (Subject Matter Under Article 34 (4) (
a ) (i)),(iv) the present paragraph (i.
e ., Rule 88.3).
88.4
Any proposal for amending a provision referred to in Rules 88.1 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
90.1
(
(
(
(
(i) before the receiving Office, the International Bureau, the International Searching Authority and the International Preliminary Examining Authority, provided that any person so appointed as sub-agent has the right to practice before the national Office with which the international application was filed or to practice in respect of the international application before the International Bureau as receiving Office, as the case may be;
(ii) specifically before the International Searching Authority or the International Preliminary Examining Authority, provided that any person so appointed as sub-agent has the right to practice before the national Office or intergovernmental organization which acts as the International Searching Authority or International Preliminary Examining Authority, as the case may be.
90.2
(
(
90.3
(
(
(
90.4
(
(
(
90.5
(
(i) the general power of attorney has been deposited in accordance with paragraph (
b ), and(ii) a copy of it is attached to the request, the demand or the separate notice, as the case may be; that copy need not be signed.
(
90.6
(
(
(
(
(
90
(
(
(
90
(
(
(
(
(
90
(
(
(
(
(
90
(
(
(
90
(
(
(i) a statement is furnished explaining, to the satisfaction of the receiving Office, the International Bureau or the International Preliminary Examining Authority, as the case may be, the lack of signature of the applicant concerned, or
(ii) in the case of a notice of withdrawal referred to in Rule 90
bis .1 (b ), 90bis .2 (d ) or 90bis .3 (c ), the applicant concerned did not sign the request but the requirements of Rule 4.15 (b ) were complied with, or(iii) in the case of a notice of withdrawal referred to in Rule 90
bis .4 (b ), the applicant concerned did not sign the demand but the requirements of Rule 53.8 (b ) were complied with, or did not sign the later election concerned but the requirements of Rule 56.1 (c ) were complied with.
90
(
(
(
90
(
(
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,
(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) where it is given by the receiving Office or by the International Searching Authority, if its notification to the International Bureau reaches that Bureau before the expiration of 17 months from the priority date;
(ii) where it is given by the International Preliminary Examining Authority, if it is given before the establishment of the international preliminary examination report;
(iii) where it is given by the International Bureau, if it is given before the expiration of 17 months from the priority date.
(g
(
(
92.1
(
(
(
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 air mail, provided that surface mail may be used instead of air mail in cases where surface mail normally arrives at its destination within two days from mailing or where air mail service is not available.
92.4
(
(
(
(
(
(i) waive the requirement under paragraph (
d ), or(ii) invite the applicant to furnish, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation, the original of the document transmitted,
provided that, where the document transmitted contains defects, or shows that the original contains defects, in respect of which the national Office or intergovernmental organization may issue an invitation to correct, that Office or organization may issue such an invitation in addition to, or instead of, proceeding under item (i) or (ii).
(
(
(i) where the document concerned is the international application, the latter shall be considered withdrawn and the receiving Office shall so declare;
(ii) where the document concerned is a document subsequent to the international application, the document shall be considered as not having been submitted.
(
92
(
(i) person, name, residence, nationality or address of the applicant,
(ii) person, name or address of the agent, the common representative or the inventor.
(
(i) of the time limit referred to in Article 22 (1), where Article 39 (1) is not applicable with respect to any Contracting State;
(ii) of the time limit referred to in Article 39 (1) (
a ), where Article 39 (1) is applicable with respect to at least one Contracting State.
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 may be kept as photographic, electronic or other reproductions, provided that the reproductions are such that the obligations to keep records, copies and files under Rules 93.1 to 93.3 are met.
94.1 Access to the File Held by the International Bureau
(
(
94.2
At the request of the applicant or any person authorized by the applicant, or, once the international preliminary examination report has been established, of any elected Office, the International Preliminary Examining Authority shall furnish, subject to reimbursement of the cost of the service, copies of any document contained in its file.
94.3
The furnishing of copies of documents may be subject to reimbursement of the cost of the service.
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. Basic Fee:
(Rule 15.2 ( | |
| 650 Swiss francs |
| 650 Swiss francs plus 15 Swiss francs for each sheet in excess of 30 sheets |
2. Designation Fee:
(Rule 15.2 ( | |
( | 150 Swiss francs
per designation, provided that any designation made under Rule 4.9 ( |
| 150 Swiss francs per designation |
3. Handling Fee:
(Rule 57.2 ( | 233 Swiss francs |
All fees are reduced by 75% for international applications filed by any applicant who is a natural person and who is a national of and resides in a State whose per capita national income is below US$3,000 (according to the average per capita national income figures used by the United Nations for determining its scale of assessments for the contributions payable for the years 1995, 1996 and 1997); if there are several applicants, each must satisfy those criteria.
1. Notified in the
Commonwealth of Australia Gazette on 25 June 1998.2. Statutory Rules 1991 No. 71 as amended by 1991 No. 456; 1992 No. 148; 1993 Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 Nos. 192 and 345; 1998 Nos. 45 and 56.
0
0
0