Patent Cooperation Treaty (PCT) - Revised Regulations

Newsletters and Bulletins / February 2002 / Patent Cooperation Treaty

A number of amendments to the regulations relating to the filing of International Patent Applications under the Patent Cooperation Treaty ("PCT") became effective on March 1, 2001. For the most part they are aimed at simplifying procedures when entering the national phase. Some of the more important changes are noted below.

(1) The possibility of adding declarations in prescribed form to the initial request for an International Patent Application on any of the following matters so that such declarations will not be required at the point of national phase entry:

(2) as to the identity of the inventor;

(3) as to the applicant's entitlement to file the patent application;

(4) as to the applicant's entitlement to claim priority from an earlier application;

(5) of inventorship; and

(6) as to non-prejudicial disclosures or exceptions to lack of novelty.

It should be noted that failure to use the prescribed wording for a declaration could result in it being ineffective to avoid the need for further formalities when entering the national phase. It will be possible to correct declarations of this type up to sixteen months from the claimed priority date.

The new regulations also restrict the right of member countries to impose certain requirements with respect to PCT national phase entry unless such restriction is incompatible with a country's national law as it existed on March 17, 2000. The requirements subject to these provisions are:

(1) submission of translation of a priority document into a national language of a country unless this is necessary to determine the validity of the priority claim so as to make a determination of patentability. The European, British, Danish, Korean, Singapore, Spanish and Swiss Patent Offices have advised that such provision was contrary to their national law on March 17, 2000 and so are not bound by this rule change.

(2) requiring any document to prove any of the facts covered by declarations (a), (b) or (c) mentioned above if such declarations were filed with the request, unless there is reasonable doubt as to the veracity of the declaration in question. The Canadian, Danish, Hungarian, Swiss and Swedish Patent Offices indicated that at least part of this provision was contrary to their national law on March 17, 2000, and so are not fully bound by this rule change.

Additionally, unless contrary to national law on March 17, 2000, the new regulations provide that applicants who have not complied with any formal national requirements within the prescribed period when entering the national phase shall be given an opportunity to do so within two months of being notified of the deficiency. Hungary, Korea, Singapore and Switzerland have indicated that this provision was contrary to the relevant national law and so are not bound by it.

February 2002 Index

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