The new PCT rules are here! You have to know these changes.

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Release time:2016-07-25

Editor's note: With the enhancement of my country's innovation capabilities and the improvement of public awareness of intellectual property rights, more and more applicants choose to deploy overseas intellectual property rights through the "Patent Cooperation Treaty" (PCT). On July 1, 2016, the newly revised rules for the implementation of the Patent Cooperation Treaty came into effect. This newspaper specially invited industry experts to discuss the amendments to the rules and the important impact of the new regulations on applicants for readers.

Original title: New PCT Implementation Rules Amendment Content and Impact

 What are the changes?

The 47th Session of the International Patent Cooperation Union (PCT Union) adopted the new Patent Cooperation Treaty Regulations (hereinafter referred to as the Regulations), which entered into force on July 1, 2016. The amendment involves a total of 6 articles and 11 paragraphs, covering the terminology of PCT international patent applications, the restoration of priority rights, the content of international publication, the forgiveness of time delay, the provisions of communication language, and the acquisition of international application documents. The contents of the revised rules mainly involve the following aspects:

 

  Revision of "words not to be used"

Amend rule 9, paragraph 2: "Discovered non-compliance"

 

  Description of Modification:The new rules provide that, in addition to the receiving office and the international search authority, the supplementary international search authority or the International Bureau of the World Intellectual Property Organization (hereinafter referred to as the International Bureau) may also point out the words that are not allowed to be used in the international application documents, and suggest that the applicant voluntarily make corresponding amendments to his international application and notify the other three offices or units of the proposal.

This amendment applies to any international patent application filed on or after July 1, 2016.

 

  Amendments to "restoration of priority rights by the receiving office"

Amend rule 26 bis, paragraph 3: "Restoration of priority rights by the receiving office"

 

  Description of Modification:The new rules stipulate that in the priority restoration procedure, the receiving office shall transmit to the International Bureau all relevant documents, including: the priority restoration request made by the applicant, the decision made by the receiving office on the request and the restoration criteria on which the decision was based, a copy of the priority restoration request, the reason for not filing the international application within the priority period, and the statement or other evidence supporting the reason. At the same time, if the above documents involve information that is not suitable for disclosure, the receiving office may not transmit it to the International Bureau.

This amendment applies to any international patent application filed on or after July 1, 2016.

 

  Amendments to "International Publication"

Amendment of Rule 48, paragraph 2: "Contents (of international publication)"

 

  Description of Modification:The new rules provide that before the International Bureau completes the technical preparation for international publication, the applicant may request the International Bureau to delete the information that is not suitable for disclosure from the international publication document. At the same time, when the receiving office, the international search authority, the designated supplementary search authority or the international bureau has noticed any of the above information, it may advise the applicant to make a request to the international bureau to delete the information from the international publication document. If the International Bureau accepts the applicant's request, it shall immediately notify the Bureau and the unit holding the relevant documents.

This amendment applies to any international patent application filed on or after July 1, 2016.

 

  About modification of "acquisition of document"

Amend Rule 94, paragraph 1: "Access to documents held by the International Bureau";

Add rule 94, paragraph 1 bis: "Access to documents held by the receiving Office";

Add rule 94, paragraph 1 ter: "Access to documents held by international searching entities";

Amend rule 94, paragraph 2: "Access to documents held by international preliminary examination units";

Add rule 94, paragraph 2 bis: "Access to documents held by designated offices";

Amend rule 94, paragraph 3: "Access to documents held by selected offices".

 

  Description of Modification:The new rules stipulate that the International Bureau shall not provide documents containing information that is not suitable for disclosure and documents that are not disclosed at the request of the applicant. In addition, the International Bureau shall not provide any documents contained in its files that are for the internal use of the International Bureau only.

The receiving office, the international search unit, the supplementary international search unit and the international preliminary examination unit may, at the request of the applicant or any person authorized by the applicant, provide any document contained in the document held by the unit after charging a service fee. If the national law applicable to the designated or selected office allows third parties to access the documents of the national application, the office may allow any documents related to the international application to be provided for a service fee to the same extent as the national law provides for access to the documents of the national application. The receiving Office, the International Searching Authority, the Supplementary International Searching Authority and the International First Instance Authority shall not provide documents containing any information that has been deleted from the internationally published documents or that has not been disclosed at the request of the applicant to the International Bureau.

The amendments to the above provisions apply to any international patent application filed on or after July 1, 2016.

 

  Revision of "Forgiveness of Deadline Delay"

Amendment of rule 82 quater, paragraph 1: "Condonement of delay"

 

  Description of Modification:The new rules add grounds for the general non-availability of electronic communication services as an excuse for deadline delays. This amendment applies to any international patent application in which the event causing the delay occurs on or after 1 July 2016.

 

  Modification of "Communication Language"

Amend rule 92, paragraph 2: "Language (for communications)"

 

  Description of Modification:The new rules provide for an increase in the number of languages available for correspondence submitted by the applicant to the International Bureau from the original English or French to any of the languages of international publication. This amendment applies to any international patent application with a date of communication on or after July 1, 2016. (Li Li)

 

 What is the impact of the modification?

On July 1, the Patent Cooperation Treaty Regulations (hereinafter referred to as the Regulations) ushered in some new regulations that came into effect. How do these new regulations affect applicants?

 

  Applicants using the International Bureau's online system (ePCT) may choose more than one language to communicate with the International Bureau (Rule 92, paragraph 2 (d) and Rule 104 (c) of the Administrative Instructions)

The International Bureau online system is a "single common network interface" system that integrates application, acceptance, review and process management functions, and has been used by more and more applicants. This revision gives users of the system a particular benefit, namely that ePCT users will be able to communicate with the International Bureau in internationally published languages other than French and English. Take the amendment of the claim by the applicant in accordance with Article 19 of the Patent Cooperation Treaty as an example. Before the amendment, the applicant, whether or not he is an ePCT user, should submit a letter written in English or French when making the amendment. After the amendment, if the applicant is an ePCT user, the letter can be written in English or French as well as in the publication language of the application.

 

  The general failure of the electronic transmission service is a reason for the applicant to request a term forgiveness (rule 82 quater)

If the patent application is delayed due to "force majeure" in the international phase, the applicant may request a deadline forgiveness. Before the reform, "force majeure" was clearly defined as war, revolution, riot, strike, natural disaster and other situations; after the reform, the situation of "force majeure" was extended to include "universal failure of electronic transmission services.

As used herein, a "general failure of an electronic delivery service" refers to an outage situation that affects a wide geographic area or a plurality of individuals, rather than a localized problem related to a particular building or a single individual, where the occurrence of the situation is unpredictable and the applicant has no other means of delivery to choose from when the situation occurs. For example, if an applicant has the option of submitting documents to a local admissibility situation despite an unpredictable outage, he or she may not request a period of forgiveness on the grounds of "widespread failure of electronic delivery services.

The Applicant is reminded that the term forgiveness described in the detailed rules does not apply to the priority period and the period of entry into the national phase, whether before or after the change.

 Applicants have more opportunities to be reminded to correct defective representations in the application documents (Rule 9)

As a basic requirement for the expression of the application document, the PCT international patent application document shall not contain terms and drawings that violate morality or public order, as well as expressions that are derogatory to others or have nothing to do with the content of the application. Prior to the amendment, the receiving Office and the International Search Authority are obliged to remind the applicant to correct such defective statements; after the amendment, the International Bureau and the Supplementary International Search Authority will also assume this reminder obligation.

 

 The applicant may request the deletion of certain information from documents made public by the International Bureau (Rules 48 and 94).

The relevant application documents that will be made public or have been made public by the International Bureau may contain some information that is not suitable for disclosure. This law gives the applicant the opportunity to request the deletion of such information.

Specifically, when the applicant submits a deletion request to the International Bureau, he must clarify that the information requested to be deleted meets the following conditions at the same time: first, the information is obviously not related to the disclosure of the content of the patent application; Second, the disclosure of the information is obviously detrimental to the personal interests or economic interests of others; Third, the public interest related to the disclosure of the information does not occupy the dominant consideration. For example, a confidential cooking recipe recorded in the specification of a PCT international patent application relating to an aircraft propeller, or a person's real identification number recorded in the specification of a PCT international patent application, and a doctor's diagnosis certificate included in the evidence submitted by the applicant for the restoration of priority may constitute such information.

The time limit for the applicant to make a request for deletion is related to the source of the information requested for deletion. If the information belongs to the content of international publication, for example, the information is contained in the specification or claims, the applicant shall make a request for deletion before the completion of the international publication technology; if the information does not belong to the content of international publication but exists in a letter and other documents, the applicant may make a request for deletion at any time, even if the information has been made public, he may also request the International Bureau to withdraw it.

 

  The documents relating to the applicant's request for restoration of priority will be transmitted by the receiving Office to the International Bureau (Rule 26 bis, paragraph 3).

The applicant's request for restoration of priority in the international phase is usually accompanied by some written statement or statement, and it is possible to submit some necessary evidence. Prior to the amendment, the receiving Office would not be able to transmit these documents to the International Bureau after receiving them; after the amendment, the receiving Office would be obliged to transmit these documents. However, if these documents contain the aforementioned information that the applicant can request to be deleted, the applicant may also request the receiving office not to transmit the documents containing these information.

In summary, the recently effective PCT regulations give applicants more flexible and lenient treatment in terms of language use, information disclosure and term relief, which should be paid more attention to and used by applicants.

 

(Source: China Intellectual Property News)