The Regulations under the Patent Cooperation Treaty were amended with effect from January 1, 2004. Major changes are as follows:

Changes in the search and examination system

Under the new system, the International Search Authority will not only report on its search but at the same time will also issue a written opinion as to its view of whether the claims of international applications meet the requirements of novelty, inventive step and industrial applicability set out in the Patent Cooperation Treaty. Under new Rules 43 bis, 44 bis and 44 ter and amended Rule 44, if the applicant requests International Preliminary Examination, the search report issued by the Search Authority will be considered as the written opinion that has hitherto been produced by the Examination Authority. Comments on the written opinion are to be sent to the Examination Authority. If no demand is filed for International Preliminary Examination, the written opinion will be sent by the International Bureau to the designated offices but, unless requested otherwise by the applicant, this will happen no earlier than thirty months from the claimed priority date. The report will have the title “International Preliminary Report on Patentability (Chapter I of the Patent Cooperation Treaty)”. Under new Rule 54 bis, the term for filing a demand for International Preliminary Examination will be the later of three months from the issue of the search report and written opinion or twenty-two months from the claimed priority date.

A Revised and Streamlined Designation and Election System

As from January 1, 2004, in general all International Applications will be deemed to designate all PCT member states. This provision is, however, subject to a caveat that it does not apply in certain countries where the filing of an international application designating that country has the effect of annulling an earlier national application from which the international application claims priority. Germany, South Korea and Russia have advised that this situation applies to them and that the PCT rule change in question will not apply to them. This change in the rules will probably have the effect of significantly broadening the prior art effect of a PCT application since it is likely that it will now be found to be relevant prior art as of its international filing date in most countries of the world, even if the applicant has no interest in securing patent protection in many of those countries. Coupled with this change is one which provides that the application will be deemed to be one for any protection type that is available in the member countries without the applicant having to state this specifically.

A New Filing Fee Structure

Under revised Rule 15, the filing fee will no longer be split into a basic fee and designation fees, but rather a single flat fee will be charged. This change does not, however, affect the right of a receiving office to charge its own transmittal fee on top of the new flat fee. The new flat fee will be the same as the old basic fee.

Changes with Respect to Priority Claims

Under the previous rules, if a copy of the priority document is not available to the International Preliminary Examination Authority because the applicant was required to supply such a copy and failed to do so, the International Preliminary Examination Authority is required to draw up its report as if priority had not been claimed. Under the revised rules, the Examination Authority should only do this if it was unable to obtain a copy of the priority document itself from a digital library.