The International Patent System July 2016 PCT Rule

The International Patent System July 2016 PCT Rule Changes Matthias Reischle-Park Deputy Director, PCT Legal Division June 28, 2016

Overview ■ Five sets of amendments: q Languages for submission using e. PCT q Expansion of Rule 82 quater q Rule 9 q Omission of certain information from publication or public file access (Rules 48 and 94) q Transmission of documents in the context of restoration of the priority right (Rule 26 bis. 3) July 2016 rule changes-2 11. 03. 2016 The International Patent System

Accepted languages of communications through e. PCT ■ Amendment to PCT Rule 92. 2(d) and Section 104(c) q. Expansion of the accepted languages of communication from the applicant to the International Bureau through e. PCT to the particular language of publication (in addition to English and French) q. Language of communications by IB to the applicant: § English or French (no change) q. Effective as from 1 July 2016 for applications filed on or after that date, and for applications filed before that date where such correspondence is received by the IB on or after that date July 2016 rule changes-3 11. 03. 2016 The International Patent System

Expansion of Rule 82 quater (1) ■ Extension of force majeure provision to time limits missed due to “general unavailability of electronic communication services” q Scope of Rule 82 quater ■ No particular forms have been created but reference to Rule 82 quater was added to final Box “Date of actual receipt of request/demand” in Forms PCT/SISA/375 and PCT/IPEA/401) ■ Effective as from 1 July 2016 for applications filed on or after that date, and for applications filed before that date where the “event” occurred on or after that date July 2016 rule changes-4 11. 03. 2016 The International Patent System

Expansion of Rule 82 quater (2) ■ How should this term be interpreted? q PCT Assembly Understanding: § “In adopting the amendments to Rule 82 quater. 1, the Assembly noted that the [Offices and Authorities] should, in considering [such a request], interpret ‘general unavailability of electronic communications’ to apply to outages that affect widespread geographical areas or many individuals, as distinct from localized problems associated with a particular building or single user. ” q Amended paragraph 30 of RO Guidelines: § Element of “unforeseeable” must be present § No reasonable alternative filing means available July 2016 rule changes-5 11. 03. 2016 The International Patent System

Amended Rule 9 ■ Extension of Rule 9. 2 to the IB and SISA to suggest to the applicant to correct the PCT application before publication if it contains certain expressions defined under Rule 9. 1 ■ Effective as from 1 July 2016 for applications filed on or after that date July 2016 rule changes-6 11. 03. 2016 The International Patent System

Omission of certain information from publication or public file access (1) ■ Amendment to PCT Rules 48 and 94 q Omission of certain information from publication (Rule 48) or public file access (Rule 94) q Only upon reasoned request by the applicant to the IB (new Form PCT/IB/384 created for this purpose) q Information must be omitted from publication/public file access, if § it does not obviously serve the purpose of informing the public about the international application, § publication of or public access to such information would clearly prejudice the personal or economic interests of any person, and § if there is no prevailing public interest to have access to that information July 2016 rule changes-7 11. 03. 2016 The International Patent System

Omission of certain information from publication or public file access (2) ■ Possible examples: q Cooking recipe in description about propeller q Actual social security number in description q Private address of inventor in request form q Medical certificate in 26 bis. 3 request q Cases of other clients accidently mentioned in 92 bis request July 2016 rule changes-8 11. 03. 2016 The International Patent System

Omission of certain information from publication or public file access (3) ■ Time limit for a request under Rule 48: q Completion of technical preparations for international publication (normally, 15 days before the actual date of publication) ■ Time limit for a request under Rule 94: q Any time ■ RO, ISA, SISA or IB may draw the applicant’s attention to information which it believes would qualify for omission from publication under Rule 48, and suggest to the applicant to make a request under Rule 48 q New Forms PCT/RO/130 for ROs, PCT/ISA/215 for ISA, PCT/IB/383 for the IB and PCT/SISA/512 for SISA July 2016 rule changes-9 11. 03. 2016 The International Patent System

Omission of certain information from publication or public file access (4) ■ IB may also draw the applicant’s attention to information which it believes would qualify for omission from public file access under Rule 94, and suggest to the applicant to make a request under Rule 94 q New Form PCT/IB/383 ■ Where the IB grants a request under Rule 48 or 94, it informs all relevant Offices and Authorities not to give access to that information q New Form PCT/IB/385 ■ Negative decision by IB: new Form PCT/IB/386 July 2016 rule changes-10 11. 03. 2016 The International Patent System

Omission of certain information from publication or public file access (5) ■ Visibility of Forms and related documents in the files of Offices q Positive decision (“Omission of information”): § Forms and documents (or parts thereof) concerned will not be visible in the file of the IB, RO, ISA, SISA or IPEA § Forms and documents (or parts thereof) concerned will not be communicated to DO/EOs q Negative decision (“Refusal to omit certain information”) § Documents concerned will be visible in the respective files § Request by applicant to omit certain information and decision by IB will not be visible § Documents will be communicated to DO/EOs ■ Effective as from 1 July 2016 for applications filed on or after that date July 2016 rule changes-11 11. 03. 2016 The International Patent System

Transmission of documents in the context of restoration of the priority right (1) ■ Amendment to PCT Rule 26 bis. 3 July 2016 rule changes-12 11. 03. 2016 q General Rule: Obligation of the RO to forward to the IB all documents received from the applicant in relation to a request to restore the priority right q Exception: § RO shall not forward information, upon reasoned request by the applicant or on its own decision, if Ø it does not obviously serve the purpose of informing the public about the international application, Ø publication of or public access to such information would clearly prejudice the personal or economic interests of any person, and Ø if there is no prevailing public interest to have access to that information q Effective as from 1 July 2016 for applications filed on or after that date The International Patent System

Transmission of documents in the context of restoration of the priority right (2) ■ Possible examples: q Medical certificates q Names of individuals other than the applicant ■ Decision of RO will be provided on Form PCT/RO/159 July 2016 rule changes-13 11. 03. 2016 The International Patent System

14 PCT Information and Training ■ PCT Highlights ■ PCT Newsletter ■ Learn the PCT video series ■ PCT Distance Learning Course in all ten PCT languages ■ PCT Webinars q. Free updates on developments in PCT procedures q. Available on request for companies or law firms ■ On-site PCT seminars and training sessions ■ Annual advanced PCT seminar at WIPO in the Fall July 2016 rule changes-14 11. 03. 2016 The International Patent System

Need More Information? ■ PCT Resources qhttp: //www. wipo. int/pct/en/ ■ PCT Information Service q. Telephone: (+41 -22) 338 83 38 q. E-mail: pct. infoline@wipo. int July 2016 rule changes-15 11. 03. 2016 The International Patent System

July 2016 rule changes-16 11. 03. 2016 The International Patent System