Appendix T Cooperation Treaty and Regulations Under the PCT

Article 24 Possible Loss of Effect in Designated States Done at Washington on June 19, 1970, amended Article 25 Review by Designated Of®ces on September 28, 1979, modi®ed on February 3, Article 26 Opportunity to Correct Before 1984, and October 3, 2001 (as in force from April Designated Of®ces 1, 2002) Article 27 National Requirements Article 28 Amendment of the Claims, the TABLE OF CONTENTS 1 Description, and the Drawings, Before Designated Of®ces Article 29 Effects of the International Publication : Introductory Provisions Article 30 Con®dential Nature of the International Article 1 Establishment of a Union Application Article 2 De®nitions CHAPTER II: International Preliminary CHAPTER I: International Application and Examination International Search Article 31 Demand for International Preliminary Article 3 The International Application Examination Article 4 The Request Article 32 The International Preliminary Article 5 The Description Examining Authority Article 6 The Claims Article 33 The International Preliminary Article 7 The Drawings Examination Article 8 Claiming Priority Article 34 Procedure Before the International Article 9 The Applicant Preliminary Examining Authority Article 10 The Receiving Of®ce Article 35 The International Preliminary Article 11 Filing Date and Effects of the Examination Report International Application Article 36 Transmittal, Translation, and Article 12 Transmittal of the International Communication, of the International Application to the International Bureau Preliminary Examination Report and the International Searching Article 37 Withdrawal of Demand or Election Authority Article 38 Con®dential Nature of the International Article 13 Availability of Copy of the Preliminary Examination International Application to Designated Article 39 Copy, Translation, and Fee, to Elected Of®ces Of®ces Article 14 Certain Defects in the International Article 40 Delaying of National Examination and Application Other Processing Article 15 The International Search Article 41 Amendment of the Claims, the Article 16 The International Searching Authority Description, and the Drawings, before Article 17 Procedure Before the International Elected Of®ces Searching Authority Article 42 Results of National Examination in Article 18 The International Elected Of®ces Article 19 Amendment of the Claims Before the International Bureau CHAPTER III: Common Provisions Article 20 Communication to Designated Of®ces Article 43 Seeking Certain Kinds of Protection Article 21 International Publication Article 44 Seeking Two Kinds of Protection Article 22 Copy, Translation, and Fee, to Article 45 Regional Patent Treaties Designated Of®ces Article 46 Incorrect Translation of the Article 23 Delaying of National Procedure International Application

1 Editor©s Note: Table of Contents and Editor©s Notes are added for the convenience of the reader; they do not appear in the signed text of the Treaty. T-1 Rev. 10.2019, June 2020 Art. 1 MANUAL OF PATENT EXAMINING PROCEDURE

Article 47 Time Limits Desiring to facilitate and accelerate access by the Article 48 Delay in Meeting Certain Time Limits public to the technical information contained in Article 49 Right to Practice Before International documents describing new inventions, Authorities

CHAPTER IV: Technical Services Desiring to foster and accelerate the economic Article 50 Patent Information Service development of developing countries through the Article 51 Technical Assistance adoption of measures designed to increase the Article 52 Relations with Other Provisions of the ef®ciency of their legal systems, whether national Treaty or regional, instituted for the protection of inventions by providing easily accessible information on the CHAPTER V: Administrative Provisions availability of technological solutions applicable to Article 53 Assembly their special needs and by facilitating access to the Article 54 Executive Committee ever expanding volume of modern technology, Article 55 International Bureau Article 56 Committee for Technical Cooperation Convinced that cooperation among nations will Article 57 Finances greatly facilitate the attainment of these aims, Article 58 Regulations Have concluded the present Treaty. CHAPTER VI: Disputes Article 59 Disputes Introductory Provisions CHAPTER VII: Revision and Amendments Article 60 Revision of the Treaty Article 61 Amendment of Certain Provisions of Article 1 the Treaty Establishment of a Union CHAPTER VIII: Final Provisions Article 62 Becoming Party to the Treaty (1) The States party to this Treaty (hereinafter Article 63 Entry into Force of the Treaty called ªthe Contracting Statesº) constitute a Union Article 64 Reservations for cooperation in the ®ling, searching, and Article 65 Gradual Application examination, of applications for the protection of Article 66 Denunciation inventions, and for rendering special technical Article 67 Signature and Languages services. The Union shall be known as the Article 68 Depositary Functions International Patent Cooperation Union. Article 69 Noti®cations (2) No provision of this Treaty shall be ______interpreted as diminishing the rights under the Paris Convention for the Protection of Industrial of any national or resident of any country party to The Contracting States, that Convention. Article 2 Desiring to make a contribution to the progress of science and technology, De®nitions Desiring to perfect the legal protection of inventions, For the purposes of this Treaty and the Regulations and unless expressly stated otherwise: Desiring to simplify and render more economical the obtaining of protection for inventions where (i) ªapplicationº means an application for the protection is sought in several countries, protection of an invention; references to an ªapplicationº shall be construed as references to applications for for inventions, inventors'

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certi®cates, utility certi®cates, utility models, patents (xii) ªnational Of®ceº means the government or certi®cates of addition, inventors' certi®cates of authority of a Contracting State entrusted with the addition, and utility certi®cates of addition; granting of patents; references to a ªnational Of®ceº (ii) references to a ªpatentº shall be construed shall be construed as referring also to any as references to patents for inventions, inventors' intergovernmental authority which several States certi®cates, utility certi®cates, utility models, patents have entrusted with the task of granting regional or certi®cates of addition, inventors' certi®cates of patents, provided that at least one of those States is addition, and utility certi®cates of addition; a Contracting State, and provided that the said States have authorized that authority to assume the (iii) ªnational patentº means a patent granted by obligations and exercise the powers which this a national authority; Treaty and the Regulations provide for in respect of (iv) ªregional patentº means a patent granted by national Of®ces; a national or an intergovernmental authority having (xiii) ªdesignated Of®ceº means the national the power to grant patents effective in more than one Of®ce of or acting for the State designated by the State; applicant under Chapter I of this Treaty; (v) ªregional applicationº means an application (xiv) ªelected Of®ceº means the national Of®ce for a regional patent; of or acting for the State elected by the applicant (vi) references to a ªnational applicationº shall under Chapter II of this Treaty; be construed as references to applications for (xv) ªreceiving Of®ceº means the national national patents and regional patents, other than Of®ce or the intergovernmental organization with applications ®led under this Treaty; which the international application has been ®led; (vii) ªinternational applicationº means an (xvi) ªUnionº means the International ®led under this Treaty; Cooperation Union; (viii) references to an ªapplicationº shall be (xvii) ªAssemblyº means the Assembly of the construed as references to international applications Union; and national applications; (xviii) ªOrganizationº means the World (ix) references to a ªpatentº shall be construed Organization; as references to national patents and regional patents; (xix) ªInternational Bureauº means the (x) references to ªnational lawº shall be International Bureau of the Organization and, as long construed as references to the national of a as it subsists, the United International Bureaux for Contracting State or, where a regional application the Protection of Intellectual Property (BIRPI); or a regional patent is involved, to the treaty providing for the ®ling of regional applications or (xx) ªDirector Generalº means the Director the granting of regional patents; General of the Organization and, as long as BIRPI subsists, the Director of BIRPI. (xi) ªpriority date,º for the purposes of computing time limits, means: CHAPTER I International Application and (a) where the international application International Search contains a priority claim under Article 8, the ®ling date of the application whose priority is so claimed; Article 3 (b) where the international application contains several priority claims under Article 8, the The International Application ®ling date of the earliest application whose priority is so claimed; (1) Applications for the protection of inventions (c) where the international application does in any of the Contracting States may be ®led as not contain any priority claim under Article 8, the international applications under this Treaty. international ®ling date of such application; (2) An international application shall contain, as speci®ed in this Treaty and the Regulations, a

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request, a description, one or more claims, one or these indications be furnished at the time of ®ling a more drawings (where required), and an abstract. national application. Otherwise, the said indications (3) The abstract merely serves the purpose of may be furnished either in the request or in separate technical information and cannot be taken into notices addressed to each designated Of®ce whose account for any other purpose, particularly not for national law requires the furnishing of the said the purpose of interpreting the scope of the indications but allows that they be furnished at a protection sought. time later than that of the ®ling of a national (4) The international application shall: application. (i) be in a prescribed language; (2) Every designation shall be subject to the payment of the prescribed fee within the prescribed (ii) comply with the prescribed physical time limit. requirements; (3) Unless the applicant asks for any of the other (iii) comply with the prescribed requirement kinds of protection referred to in Article 43, of unity of invention; designation shall mean that the desired protection (iv) be subject to the payment of the consists of the grant of a patent by or for the prescribed fees. designated State. For the purposes of this paragraph, Article 2(ii) shall not apply. Article 4 (4) Failure to indicate in the request the name The Request and other prescribed data concerning the inventor shall have no consequence in any designated State (1) The request shall contain: whose national law requires the furnishing of the said indications but allows that they be furnished at (i) a petition to the effect that the a time later than that of the ®ling of a national international application be processed according to application. Failure to furnish the said indications this Treaty; in a separate notice shall have no consequence in (ii) the designation of the Contracting State any designated State whose national law does not or States in which protection for the invention is require the furnishing of the said indications. desired on the basis of the international application Article 5 (ªdesignated Statesº); if for any designated State a regional patent is available and the applicant wishes The Description to obtain a regional patent rather than a national patent, the request shall so indicate; if, under a treaty concerning a regional patent, the applicant cannot The description shall disclose the invention in a limit his application to certain of the States party to manner suf®ciently clear and complete for the that treaty, designation of one of those States and invention to be carried out by a person skilled in the the indication of the wish to obtain the regional art. patent shall be treated as designation of all the States party to that treaty; if, under the national law of the Article 6 designated State, the designation of that State has the effect of an application for a regional patent, the The Claims designation of the said State shall be treated as an indication of the wish to obtain the regional patent; The claim or claims shall de®ne the matter for which protection is sought. Claims shall be clear and (iii) the name of and other prescribed data concise. They shall be fully supported by the concerning the applicant and the agent (if any); description. (iv) the title of the invention; (v) the name of and other prescribed data concerning the inventor where the national law of at least one of the designated States requires that

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Article 7 Article 9

The Drawings The Applicant

(1) Subject to the provisions of paragraph (2)(ii), (1) Any resident or national of a Contracting drawings shall be required when they are necessary State may ®le an international application. for the understanding of the invention. (2) The Assembly may decide to allow the (2) Where, without being necessary for the residents and the nationals of any country party to understanding of the invention, the nature of the the Paris Convention for the Protection of Industrial invention admits of illustration by drawings: Property which is not party to this Treaty to ®le (i) the applicant may include such drawings international applications. in the international application when ®led, (3) The concepts of residence and nationality, (ii) any designated Of®ce may require that and the application of those concepts in cases where the applicant ®le such drawings with it within the there are several applicants or where the applicants prescribed time limit. are not the same for all the designated States, are de®ned in the Regulations. Article 8 Article 10 Claiming Priority The Receiving Of®ce (1) The international application may contain a declaration, as prescribed in the Regulations, The international application shall be ®led with the claiming the priority of one or more earlier prescribed receiving Of®ce, which will check and applications ®led in or for any country party to the process it as provided in this Treaty and the Paris Convention for the Protection of Industrial Regulations. Property. Article 11 (2) (a) Subject to the provisions of subparagraph Filing Date and Effects of the International (b), the conditions for, and the effect of, any Application priority claim declared under paragraph (1) shall be as provided in Article 4 of the Stockholm Act of the (1) The receiving Of®ce shall accord as the Paris Convention for the Protection of Industrial international ®ling date the date of receipt of the Property. international application, provided that that Of®ce (b) The international application for which has found that, at the time of receipt: the priority of one or more earlier applications ®led (i) the applicant does not obviously lack, for in or for a Contracting State is claimed may contain reasons of residence or nationality, the right to ®le the designation of that State. Where, in the an international application with the receiving Of®ce, international application, the priority of one or more (ii) the international application is in the national applications ®led in or for a designated State prescribed language, is claimed, or where the priority of an international application having designated only one State is (iii) the international application contains at claimed, the conditions for, and the effect of, the least the following elements: priority claim in that State shall be governed by the (a) an indication that it is intended as an national law of that State. international application, (b) the designation of at least one Contracting State, (c) the name of the applicant, as prescribed,

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Article 13 (d) a part which on the face of it appears to be a description, Availability of Copy of the International (e) a part which on the face of it appears Application to Designated Of®ces to be a claim or claims. (2) (1) Any designated Of®ce may ask the International Bureau to transmit to it a copy of the (a) If the receiving Of®ce ®nds that the international application prior to the communication international application did not, at the time of provided for in Article 20, and the International receipt, ful®ll the requirements listed in paragraph Bureau shall transmit such copy to the designated (1), it shall, as provided in the Regulations, invite Of®ce as soon as possible after the expiration of one the applicant to ®le the required correction. year from the priority date. (b) If the applicant complies with the (2) invitation, as provided in the Regulations, the receiving Of®ce shall accord as the international (a) The applicant may, at any time, transmit ®ling date the date of receipt of the required a copy of his international application to any correction. designated Of®ce. (3) Subject to Article 64(4), any international (b) The applicant may, at any time, ask the application ful®lling the requirements listed in items International Bureau to transmit a copy of his (i) to (iii) of paragraph (1) and accorded an international application to any designated Of®ce, international ®ling date shall have the effect of a and the International Bureau shall transmit such copy regular national application in each designated State to the designated Of®ce as soon as possible. as of the international ®ling date, which date shall (c) Any national Of®ce may notify the be considered to be the actual ®ling date in each International Bureau that it does not wish to receive designated State. copies as provided for in subparagraph (b), in which (4) Any international application ful®lling the case that subparagraph shall not be applicable in requirements listed in items (i) to (iii) of paragraph respect of that Of®ce. (1) shall be equivalent to a regular national ®ling Article 14 within the meaning of the Paris Convention for the Protection of . Certain Defects in the International Application Article 12 (1) Transmittal of the International Application to (a) The receiving Of®ce shall check whether the International Bureau and the International the international application contains any of the Searching Authority following defects, that is to say: (i) it is not signed as provided in the (1) One copy of the international application Regulations; shall be kept by the receiving Of®ce (ªhome copyº), one copy (ªrecord copyº) shall be transmitted to the (ii) it does not contain the prescribed International Bureau, and another copy (ªsearch indications concerning the applicant; copyº) shall be transmitted to the competent (iii) it does not contain a title; International Searching Authority referred to in (iv) it does not contain an abstract; Article 16, as provided in the Regulations. (v) it does not comply to the extent (2) The record copy shall be considered the true provided in the Regulations with the prescribed copy of the international application. physical requirements. (3) The international application shall be (b) If the receiving Of®ce ®nds any of the considered withdrawn if the record copy has not said defects, it shall invite the applicant to correct been received by the International Bureau within the the international application within the prescribed prescribed time limit.

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time limit, failing which that application shall be as much of the relevant as its facilities considered withdrawn and the receiving Of®ce shall permit, and shall, in any case, consult the so declare. documentation speci®ed in the Regulations. (2) If the international application refers to (5)(a) If the national law of the Contracting drawings which, in fact, are not included in that State so permits, the applicant who ®les a national application, the receiving Of®ce shall notify the application with the national Of®ce of or acting for applicant accordingly and he may furnish them such State may, subject to the conditions provided within the prescribed time limit and, if he does, the for in such law, request that a search similar to an international ®ling date shall be the date on which international search (international-type search) be the drawings are received by the receiving Of®ce. carried out on such application. Otherwise, any reference to the said drawings shall (b) If the national law of the Contracting be considered non-existent State so permits, the national Of®ce of or acting for (3) such State may subject any national application ®led with it to an international-type search. (a) If the receiving Of®ce ®nds that, within the prescribed time limits, the fees prescribed under (c) The international-type search shall be Article 3(4)(iv) have not been paid, or no fee carried out by the International Searching Authority prescribed under Article 4(2) has been paid in respect referred to in Article 16 which would be competent of any of the designated States, the international for an international search if the national application application shall be considered withdrawn and the were an international application and were ®led with receiving Of®ce shall so declare. the Of®ce referred to in subparagraphs (a) and (b). If the national application is in a language which the (b) If the receiving Of®ce ®nds that the fee International Searching Authority considers it is not prescribed under Article 4(2) has been paid in respect equipped to handle, the international-type search of one or more (but less than all) designated States shall be carried out on a translation prepared by the within the prescribed time limit, the designation of applicant in a language prescribed for international those States in respect of which it has not been paid applications and which the International Searching within the prescribed time limit shall be considered Authority has undertaken to accept for international withdrawn and the receiving Of®ce shall so declare. applications. The national application and the (4) If, after having accorded an international translation, when required, shall be presented in the ®ling date to the international application, the form prescribed for international applications. receiving Of®ce ®nds, within the prescribed time Article 16 limit, that any of the requirements listed in items (i) to (iii) of Article 11(1) was not complied with at that The International Searching Authority date, the said application shall be considered withdrawn and the receiving Of®ce shall so declare. (1) International search shall be carried out by Article 15 an International Searching Authority, which may be either a national Of®ce or an intergovernmental The International Search organization, such as the International Patent Institute, whose tasks include the establishing of (1) Each international application shall be the documentary search reports on prior art with respect subject of international search. to inventions which are the subject of applications. (2) The objective of the international search is (2) If, pending the establishment of a single to discover relevant prior art. International Searching Authority, there are several International Searching Authorities, each receiving (3) International search shall be made on the Of®ce shall, in accordance with the provisions of basis of the claims, with due regard to the description the applicable agreement referred to in and the drawings (if any). paragraph(3)(b), specify the International Searching (4) The International Searching Authority Authority or Authorities competent for the searching referred to in Article 16 shall endeavor to discover of international applications ®led with such Of®ce.

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(3)(a) International Searching Authorities Regulations, to search, and in the particular case shall be appointed by the Assembly. Any national decides not to search, or Of®ce and any intergovernmental organization satisfying the requirements referred to in (ii) that the description, the claims, or the subparagraph (c) may be appointed as International drawings, fail to comply with the prescribed Searching Authority. requirements to such an extent that a meaningful search could not be carried out, the said Authority (b) Appointment shall be conditional on the shall so declare and shall notify the applicant and consent of the national Of®ce or intergovernmental the International Bureau that no international search organization to be appointed and the conclusion of report will be established. an agreement, subject to approval by the Assembly, between such Of®ce or organization and the (b) If any of the situations referred to in International Bureau. The agreement shall specify subparagraph (a) is found to exist in connection with the rights and obligations of the parties, in particular, certain claims only, the international search report the formal undertaking by the said Of®ce or shall so indicate in respect of such claims, whereas, organization to apply and observe all the common for the other claims, the said report shall be rules of international search. established as provided in Article 18. (c) The Regulations prescribe the minimum (3) requirements, particularly as to manpower and (a) If the International Searching Authority documentation, which any Of®ce or organization considers that the international application does not must satisfy before it can be appointed and must comply with the requirement of unity of invention continue to satisfy while it remains appointed. as set forth in the Regulations, it shall invite the (d) Appointment shall be for a ®xed period applicant to pay additional fees. The International of time and may be extended for further periods. Searching Authority shall establish the international search report on those parts of the international (e) Before the Assembly makes a decision application which relate to the invention ®rst on the appointment of any national Of®ce or mentioned in the claims (ªmain inventionº) and, intergovernmental organization, or on the extension provided the required additional fees have been paid of its appointment, or before it allows any such within the prescribed time limit, on those parts of appointment to lapse, the Assembly shall hear the the international application which relate to interested Of®ce or organization and seek the advice inventions in respect of which the said fees were of the Committee for Technical Cooperation referred paid. to in Article 56 once that Committee has been established. (b) The national law of any designated State may provide that, where the national Of®ce of that Article 17 State ®nds the invitation, referred to in subparagraph (a), of the International Searching Authority justi®ed Procedure Before the International Searching and where the applicant has not paid all additional Authority fees, those parts of the international application which consequently have not been searched shall, (1) Procedure before the International Searching as far as effects in that State are concerned, be Authority shall be governed by the provisions of this considered withdrawn unless a special fee is paid by Treaty, the Regulations, and the agreement which the applicant to the national Of®ce of that State. the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Article 18 Authority. The International Search Report (2)(a) If the International Searching Authority considers: (1) The international search report shall be (i) that the international application established within the prescribed time limit and in relates to a subject matter which the International the prescribed form. Searching Authority is not required, under the

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(2) The international search report shall, as soon as amended or shall contain the full text of the claims as it has been established, be transmitted by the as ®led and specify the amendments, and shall International Searching Authority to the applicant include the statement, if any, referred to in Article and the International Bureau. 19(1). (3) The international search report or the (3) At the request of the designated Of®ce or declaration referred to in Article 17(2)(a) shall be the applicant, the International Searching Authority translated as provided in the Regulations. The shall send to the said Of®ce or the applicant, translations shall be prepared by or under the respectively, copies of the documents cited in the responsibility of the International Bureau. international search report, as provided in the Regulations. Article 19 Article 21 Amendment of the Claims Before the International Bureau International Publication

(1) The applicant shall, after having received the (1) The International Bureau shall publish international search report, be entitled to one international applications. opportunity to amend the claims of the international (2) application by ®ling amendments with the International Bureau within the prescribed time limit. (a) Subject to the exceptions provided for in He may, at the same time, ®le a brief statement, as subparagraph (b) and in Article 64(3), the provided in the Regulations, explaining the international publication of the international amendments and indicating any impact that such application shall be effected promptly after the amendments might have on the description and the expiration of 18 months from the priority date of drawings. that application. (2) The amendments shall not go beyond the (b) The applicant may ask the International disclosure in the international application as ®led. Bureau to publish his international application any time before the expiration of the time limit referred (3) If the national law of any designated State to in subparagraph (a). The International Bureau permits amendments to go beyond the said shall proceed accordingly, as provided in the disclosure, failure to comply with paragraph (2) shall Regulations. have no consequence in that State. (3) The international search report or the Article 20 declaration referred to in Article 17(2)(a) shall be published as prescribed in the Regulations. Communication to Designated Of®ces (4) The language and form of the international publication and other details are governed by the (1) Regulations. (a) The international application, together (5) There shall be no international publication with the international search report (including any if the international application is withdrawn or is indication referred to in Article 17(2)(b)) or the considered withdrawn before the technical declaration referred to in Article 17(2)(a), shall be preparations for publication have been completed. communicated to each designated Of®ce, as provided in the Regulations, unless the designated Of®ce (6) If the international application contains waives such requirement in its entirety or in part. expressions or drawings which, in the opinion of the International Bureau, are contrary to morality or (b) The communication shall include the public order, or if, in its opinion, the international translation (as prescribed) of the said report or application contains disparaging statements as declaration. de®ned in the Regulations, it may omit such (2) If the claims have been amended by virtue expressions drawings, and statements, from its of Article 19(1), the communication shall either publications, indicating the place and number of contain the full text of the claims both as ®led and

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words or drawings omitted, and furnishing, upon Article 23 request, individual copies of the passages omitted. Article 22 Delaying of National Procedure (1) No designated Of®ce shall process or Copy, Translation, and Fee, to Designated Of®ces examine the international application prior to the (1) The applicant shall furnish a copy of the expiration of the applicable time limit under Article international application (unless the communication 22. provided for in Article 20 has already taken place) (2) Notwithstanding the provisions of paragraph and a translation thereof (as prescribed), and pay the (1), any designated Of®ce may, on the express national fee (if any), to each designated Of®ce not request of the applicant, process or examine the later than at the expiration of 30 1 months from the international application at any time. priority date. Where the national law of the Article 24 designated State requires the indication of the name of and other prescribed data concerning the inventor Possible Loss of Effect in Designated States but allows that these indications be furnished at a time later than that of the ®ling of a national (1) Subject, in case (ii) below, to the provisions application, the applicant shall, unless they were of Article 25, the effect of the international contained in the request, furnish the said indications application provided for in Article 11(3) shall cease to the national Of®ce of or acting for the State not in any designated State with the same consequences later than at the expiration of 30 2 months from the as the withdrawal of any national application in that priority date. State: (2) Where the International Searching Authority (i) if the applicant withdraws his international makes a declaration, under Article 17(2)(a), that no application or the designation of that State; international search report will be established, the (ii) if the international application is time limit for performing the acts referred to in considered withdrawn by virtue of Articles 12(3), paragraph (1) of this Article shall be the same as that 14(1)(b), 14(3)(a), or 14(4), or if the designation of provided for in paragraph (1). that State is considered withdrawn by virtue of (3) Any national law may, for performing the Article 14(3)(b); acts referred to in paragraphs (1) or (2), ®x time (iii) if the applicant fails to perform the acts limits which expire later than the time limit provided referred to in Article 22 within the applicable time for in those paragraphs. limit. (2) Notwithstanding the provisions of paragraph (1), any designated Of®ce may maintain the effect provided for in Article 11(3) even where such effect is not required to be maintained by virtue of Article 25(2).

1 Editor's Note: The 30-month time limit, as in force from April 1, 2002, does not apply in respect of any designated Of®ce which has noti®ed the International Bureau of incompatibility with the national law applied by that Of®ce. The 20-month time limit, as in force until March 31, 2002, continues to apply after that date in respect of any such designated Of®ce for as long as Article 22(1), as modi®ed, continues not to be compatible with the applicable national law. Information received by the International Bureau concerning any such incompatibility is published in the Gazette and on the WIPO website at: www.wipo.int/pct/en/texts/reservations/res_incomp.html .

2 Editor's Note: The 30-month time limit, as in force from April 1, 2002, does not apply in respect of any designated Of®ce which has noti®ed the International Bureau of incompatibility with the national law applied by that Of®ce. The 20-month time limit, as in force until March 31, 2002, continues to apply after that date in respect of any such designated Of®ce for as long as Article 22(1), as modi®ed, continues not to be compatible with the applicable national law. Information received by the International Bureau concerning any such incompatibility is published in the Gazette and on the WIPO website at: www.wipo.int/pct/en/texts/reservations/res_incomp.html .

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Article 25 Article 26

Review by Designated Of®ces Opportunity to Correct Before Designated Of®ces

(1)(a) Where the receiving Of®ce has refused No designated Of®ce shall reject an international to accord an international ®ling date or has declared application on the grounds of non-compliance with that the international application is considered the requirements of this Treaty and the Regulations withdrawn, or where the International Bureau has without ®rst giving the applicant the opportunity to made a ®nding under Article 12(3), the International correct the said application to the extent and Bureau shall promptly send, at the request of the according to the procedure provided by the national applicant, copies of any document in the ®le to any law for the same or comparable situations in respect of the designated Of®ces named by the applicant. of national applications. (b) Where the receiving Of®ce has declared that the designation of any given State is considered Article 27 withdrawn, the International Bureau shall promptly send, at the request of the applicant, copies of any National Requirements document in the ®le to the national Of®ce of such State. (1) No national law shall require compliance with requirements relating to the form or contents (c) The request under subparagraphs (a) or of the international application different from or (b) shall be presented within the prescribed time additional to those which are provided for in this limit. Treaty and the Regulations. (2)(a) Subject to the provisions of (2) The provisions of paragraph (1) neither affect subparagraph (b), each designated Of®ce shall, the application of the provisions of Article 7(2) nor provided that the national fee (if any) has been paid preclude any national law from requiring, once the and the appropriate translation (as prescribed) has processing of the international application has started been furnished within the prescribed time limit, in the designated Of®ce, the furnishing: decide whether the refusal, declaration, or ®nding, referred to in paragraph (1) was justi®ed under the (i) when the applicant is a legal entity, of the provisions of this Treaty and the Regulations, and, name of an of®cer entitled to represent such legal if it ®nds that the refusal or declaration was the result entity. of an error or omission on the part of the receiving (ii) of documents not part of the international Of®ce or that the ®nding was the result of an error application but which constitute proof of allegations or omission on the part of the International Bureau, or statements made in that application, including the it shall, as far as effects in the State of the designated con®rmation of the international application by the Of®ce are concerned, treat the international signature of the applicant when that application, as application as if such error or omission had not ®led, was signed by his representative or agent. occurred. (3) Where the applicant, for the purposes of any (b) Where the record copy has reached the designated State, is not quali®ed according to the International Bureau after the expiration of the time national law of that State to ®le a national application limit prescribed under Article 12(3) on account of because he is not the inventor, the international any error or omission on the part of the applicant, application may be rejected by the designated Of®ce. the provisions of subparagraph (a) shall apply only under the circumstances referred to in Article 48(2). (4) Where the national law provides, in respect of the form or contents of national applications, for requirements which, from the viewpoint of applicants, are more favorable than the requirements provided for by this Treaty and the Regulations in respect of international applications, the national Of®ce, the courts and any other competent organs of or acting for the designated State may apply the

T-11 Rev. 10.2019, June 2020 Art. 27 MANUAL OF PATENT EXAMINING PROCEDURE

former requirements, instead of the latter such time limit has expired except with the express requirements, to international applications, except consent of the applicant. where the applicant insists that the requirements (2) The amendments shall not go beyond the provided for by this Treaty and the Regulations be disclosure in the international application as ®led applied to his international application. unless the national law of the designated State (5) Nothing in this Treaty and the Regulations permits them to go beyond the said disclosure. is intended to be construed as prescribing anything (3) The amendments shall be in accordance with that would limit the freedom of each Contracting the national law of the designated State in all respects State to prescribe such substantive conditions of not provided for in this Treaty and the Regulations. patentability as it desires. In particular, any provision in this Treaty and the Regulations concerning the (4) Where the designated Of®ce requires a de®nition of prior art is exclusively for the purposes translation of the international application, the of the international procedure and, consequently, amendments shall be in the language of the any Contracting State is free to apply, when translation. determining the patentability of an invention claimed Article 29 in an international application, the criteria of its national law in respect of prior art and other Effects of the International Publication conditions of patentability not constituting requirements as to the form and contents of (1) As far as the protection of any rights of the applications. applicant in a designated State is concerned, the (6) The national law may require that the effects, in that State, of the international publication applicant furnish evidence in respect of any of an international application shall, subject to the substantive condition of patentability prescribed by provisions of paragraphs (2) to (4), be the same as such law. those which the national law of the designated State provides for the compulsory national publication of (7) Any receiving Of®ce or, once the processing unexamined national applications as such. of the international application has started in the designated Of®ce, that Of®ce may apply the national (2) If the language in which the international law as far as it relates to any requirement that the publication has been effected is different from the applicant be represented by an agent having the right language in which publications under the national to represent applicants before the said Of®ce and/or law are effected in the designated State, the said that the applicant have an address in the designated national law may provide that the effects provided State for the purpose of receiving noti®cations. for in paragraph (1) shall be applicable only from such time as: (8) Nothing in this Treaty and the Regulations is intended to be construed as limiting the freedom (i) a translation into the latter language has of any Contracting State to apply measures deemed been published as provided by the national law, or necessary for the preservation of its national security (ii) a translation into the latter language has or to limit, for the protection of the general economic been made available to the public, by laying open interests of that State, the right of its own residents for public inspection as provided by the national or nationals to ®le international applications. law, or Article 28 (iii) a translation into the latter language has been transmitted by the applicant to the actual or Amendment of the Claims, the Description, and prospective unauthorized user of the invention the Drawings, Before Designated Of®ces claimed in the international application, or (iv) both the acts described in (i) and (iii), or (1) The applicant shall be given the opportunity both the acts described in (ii) and (iii), have taken to amend the claims, the description, and the place. drawings, before each designated Of®ce within the prescribed time limit. No designated Of®ce shall (3) The national law of any designated State may grant a patent, or refuse the grant of a patent, before provide that, where the international publication has

Rev. 10.2019, June 2020 T-12 PATENT COOPERATION TREATY Art. 31

been effected, on the request of the applicant, before applicant, international ®ling date, international the expiration of 18 months from the priority date, application number, and title of the invention. the effects provided for in paragraph (1) shall be (c) The provisions of subparagraph (a) shall applicable only from the expiration of 18 months not prevent any designated Of®ce from allowing from the priority date. access to the international application for the (4) The national law of any designated State may purposes of the judicial authorities. provide that the effects provided for in paragraph (3) The provisions of paragraph (2)(a) shall (1) shall be applicable only from the date on which apply to any receiving Of®ce except as far as a copy of the international application as published transmittals provided for under Article 12(1) are under Article 21 has been received in the national concerned. Of®ce of or acting for such State. The said Of®ce shall publish the date of receipt in its gazette as soon (4) For the purposes of this Article, the term as possible. ªaccessº covers any means by which third parties may acquire cognizance, including individual Article 30 communication and general publication, provided, however, that no national Of®ce shall generally Con®dential Nature of the International publish an international application or its translation Application before the international publication or, if international publication has not taken place by the (1)(a) Subject to the provisions of expiration of 20 months from the priority date, before subparagraph (b), the International Bureau and the the expiration of 20 months from the said priority International Searching Authorities shall not allow date. access by any person or authority to the international application before the international publication of CHAPTER II International Preliminary that application, unless requested or authorized by Examination the applicant. (b) The provisions of subparagraph (a) shall not apply to any transmittal to the competent Article 31 International Searching Authority, to transmittals provided for under Article 13, and to Demand for International Preliminary communications provided for under Article 20. Examination

(2)(a) No national Of®ce shall allow access (1) On the demand of the applicant, his to the international application by third parties, international application shall be the subject of an unless requested or authorized by the applicant, international preliminary examination as provided before the earliest of the following dates: in the following provisions and the Regulations. (i) date of the international publication (2)(a) Any applicant who is a resident or of the international application, national, as de®ned in the Regulations, of a (ii) date of the receipt of the Contracting State bound by Chapter II, and whose communication of the international application under international application has been ®led with the Article 20, receiving Of®ce of or acting for such State, may (iii) date of the receipt of a copy of the make a demand for international preliminary international application under Article 22. examination. (b) The provisions of subparagraph (a) shall (b) The Assembly may decide to allow not prevent any national Of®ce from informing third persons entitled to ®le international applications to parties that it has been designated, or from publishing make a demand for international preliminary that fact. Such information or publication may, examination even if they are residents or nationals however, contain only the following data: of a State not party to this Treaty or not bound by identi®cation of the receiving Of®ce, name of the Chapter II.

T-13 Rev. 10.2019, June 2020 Art. 31 MANUAL OF PATENT EXAMINING PROCEDURE

(3) The demand for international preliminary (3) The provisions of Article 16(3) shall apply, examination shall be made separately from the mutatis mutandis, in respect of International international application. The demand shall contain Preliminary Examining Authorities. the prescribed particulars and shall be in the Article 33 prescribed language and form. (4)(a) The demand shall indicate the The International Preliminary Examination Contracting State or States in which the applicant intends to use the results of the international (1) The objective of the international preliminary preliminary examination (ªelected Statesº). examination is to formulate a preliminary and Additional Contracting States may be elected later. non-binding opinion on the questions whether the Election may relate only to Contracting States claimed invention appears to be novel, to involve an already designated under Article 4. inventive step (to be non-obvious), and to be (b) Applicants referred to in paragraph (2)(a) industrially applicable. may elect any Contracting State bound by Chapter (2) For the purposes of the international II. Applicants referred to in paragraph (2)(b) may preliminary examination, a claimed invention shall elect only such Contracting States bound by Chapter be considered novel if it is not anticipated by the II as have declared that they are prepared to be prior art as de®ned in the Regulations. elected by such applicants. (3) For the purposes of the international (5) The demand shall be subject to the payment preliminary examination, a claimed invention shall of the prescribed fees within the prescribed time be considered to involve an inventive step if, having limit. regard to the prior art as de®ned in the Regulations, (6)(a) The demand shall be submitted to the it is not, at the prescribed relevant date, obvious to competent International Preliminary Examining a person skilled in the art. Authority referred to in Article 32. (4) For the purposes of the international (b) Any later election shall be submitted to preliminary examination, a claimed invention shall the International Bureau. be considered industrially applicable if, according to its nature, it can be made or used (in the (7) Each elected Of®ce shall be noti®ed of its technological sense) in any kind of industry. election. ªIndustryº shall be understood in its broadest sense, Article 32 as in the Paris Convention for the Protection of Industrial Property. The International Preliminary Examining (5) The criteria described above merely serve Authority the purposes of international preliminary examination. Any Contracting State may apply (1) International preliminary examination shall additional or different criteria for the purpose of be carried out by the International Preliminary deciding whether, in that State, the claimed invention Examining Authority. is patentable or not. (2) In the case of demands referred to in Article (6) The international preliminary examination 31(2)(a), the receiving Of®ce, and, in the case of shall take into consideration all the documents cited demands referred to in Article 31(2)(b), the in the international search report. It may take into Assembly, shall, in accordance with the applicable consideration any additional documents considered agreement between the interested International to be relevant in the particular case. Preliminary Examining Authority or Authorities and the International Bureau, specify the International Preliminary Examining Authority or Authorities competent for the preliminary examination.

Rev. 10.2019, June 2020 T-14 PATENT COOPERATION TREATY Art. 34

Article 34 international preliminary examination shall, as far as effects in that State are concerned, be considered Procedure Before the International Preliminary withdrawn unless a special fee is paid by the Examining Authority applicant to the national Of®ce of that State. (c) If the applicant does not comply with the (1) Procedure before the International invitation referred to in subparagraph (a) within the Preliminary Examining Authority shall be governed prescribed time limit, the International Preliminary by the provisions of this Treaty, the Regulations, Examining Authority shall establish an international and the agreement which the International Bureau preliminary examination report on those parts of the shall conclude, subject to this Treaty and the international application which relate to what appears Regulations, with the said Authority. to be the main invention and shall indicate the (2)(a) The applicant shall have a right to relevant facts in the said report. The national law of communicate orally and in writing with the any elected State may provide that, where its national International Preliminary Examining Authority. Of®ce ®nds the invitation of the International Preliminary Examining Authority justi®ed, those (b) The applicant shall have a right to amend parts of the international application which do not the claims, the description, and the drawings, in the relate to the main invention shall, as far as effects prescribed manner and within the prescribed time in that State are concerned, be considered withdrawn limit, before the international preliminary unless a special fee is paid by the applicant to that examination report is established. The amendment Of®ce. shall not go beyond the disclosure in the international application as ®led. (4)(a) If the International Preliminary Examining Authority considers (c) The applicant shall receive at least one written opinion from the International Preliminary (i) that the international application Examining Authority unless such Authority relates to a subject matter on which the International considers that all of the following conditions are Preliminary Examining Authority is not required, ful®lled: under the Regulations, to carry out an international preliminary examination, and in the particular case (i) the invention satis®es the criteria set decides not to carry out such examination, or forth in Article 33(1), (ii) that the description, the claims, or the (ii) the international application complies drawings, are so unclear, or the claims are so with the requirements of this Treaty and the inadequately supported by the description, that no Regulations in so far as checked by that Authority, meaningful opinion can be formed on the , (iii) no observations are intended to be inventive step (non-obviousness), or industrial made under Article 35(2), last sentence. applicability, of the claimed invention, the said (d) The applicant may respond to the written authority shall not go into the questions referred to opinion. in Article 33(1) and shall inform the applicant of this opinion and the reasons therefor. (3)(a) If the International Preliminary Examining Authority considers that the international (b) If any of the situations referred to in application does not comply with the requirement subparagraph (a) is found to exist in, or in connection of unity of invention as set forth in the Regulations, with, certain claims only, the provisions of that it may invite the applicant, at his option, to restrict subparagraph shall apply only to the said claims. the claims so as to comply with the requirement or to pay additional fees. (b) The national law of any elected State may provide that, where the applicant chooses to restrict the claims under subparagraph (a), those parts of the international application which, as a consequence of the restriction, are not to be the subject of

T-15 Rev. 10.2019, June 2020 Art. 35 MANUAL OF PATENT EXAMINING PROCEDURE

Article 35 (2)(a) The international preliminary examination report and its annexes shall be translated The International Preliminary Examination into the prescribed languages. Report (b) Any translation of the said report shall be prepared by or under the responsibility of the (1) The international preliminary examination International Bureau, whereas any translation of the report shall be established within the prescribed time said annexes shall be prepared by the applicant. limit and in the prescribed form. (3)(a) The international preliminary (2) The international preliminary examination examination report, together with its translation (as report shall not contain any statement on the question prescribed) and its annexes (in the original whether the claimed invention is or seems to be language), shall be communicated by the patentable or unpatentable according to any national International Bureau to each elected Of®ce. law. It shall state, subject to the provisions of (b) The prescribed translation of the annexes paragraph (3), in relation to each claim, whether the shall be transmitted within the prescribed time limit claim appears to satisfy the criteria of novelty, by the applicant to the elected Of®ce. inventive step (non-obviousness), and industrial applicability, as de®ned for the purposes of the (4) The provisions of Article 20(3) shall apply, international preliminary examination in Article mutatis mutandis, to copies of any document which 33(1) to (4). The statement shall be accompanied by is cited in the international preliminary examination the citation of the documents believed to support the report and which was not cited in the international stated conclusion with such explanations as the search report. circumstances of the case may require. The statement Article 37 shall also be accompanied by such other observations as the Regulations provide for. Withdrawal of Demand or Election (3)(a) If, at the time of establishing the international preliminary examination report, the (1) The applicant may withdraw any or all International Preliminary Examining Authority elections. considers that any of the situations referred to in (2) If the election of all elected States is Article 34(4)(a) exists, that report shall state this withdrawn, the demand shall be considered opinion and the reasons therefor. It shall not contain withdrawn. any statement as provided in paragraph (2). (3)(a) Any withdrawal shall be noti®ed to (b) If a situation under Article 34(4)(b) is the International Bureau. found to exist, the international preliminary examination report shall, in relation to the claims in (b) The elected Of®ces concerned and the question, contain the statement as provided in International Preliminary Examining Authority subparagraph (a), whereas, in relation to the other concerned shall be noti®ed accordingly by the claims, it shall contain the statement as provided in International Bureau. paragraph (2). (4)(a) Subject to the provisions of Article 36 subparagraph (b), withdrawal of the demand or of the election of a Contracting State shall, unless the Transmittal, Translation, and Communication, national law of that State provides otherwise, be of the International Preliminary Examination considered to be withdrawal of the international Report application as far as that State is concerned. (b) Withdrawal of the demand or of the (1) The international preliminary examination election shall not be considered to be withdrawal of report, together with the prescribed annexes, shall the international application if such withdrawal is be transmitted to the applicant and to the effected prior to the expiration of the applicable time International Bureau. limit under Article 22; however, any Contracting State may provide in its national law that the

Rev. 10.2019, June 2020 T-16 PATENT COOPERATION TREATY Art. 41

aforesaid shall apply only if its national Of®ce has perform the acts referred to in paragraph (1)(a) received, within the said time limit, a copy of the within the time limit applicable under paragraph international application, together with a translation (1)(a) or (b). (as prescribed), and the national fee. (3) Any elected Of®ce may maintain the effect Article 38 provided for in Article 11(3) even where the applicant does not comply with the requirements Con®dential Nature of the International provided for in paragraph (1)(a) or (b). Preliminary Examination Article 40 (1) Neither the International Bureau nor the Delaying of National Examination and Other International Preliminary Examining Authority shall, Processing unless requested or authorized by the applicant, allow access within the meaning, and with the (1) If the election of any Contracting State has proviso, of Article 30(4) to the ®le of the been effected prior to the expiration of the 19th international preliminary examination by any person month from the priority date, the provisions of or authority at any time, except by the elected Article 23 shall not apply to such State and the Of®ces once the international preliminary national Of®ce of or acting for that State shall not examination report has been established. proceed, subject to the provisions of paragraph (2), (2) Subject to the provisions of paragraph (1) to the examination and other processing of the and Articles 36(1) and (3) and 37(3)(b), neither the international application prior to the expiration of International Bureau nor the International the applicable time limit under Article 39. Preliminary Examining Authority shall, unless (2) Notwithstanding the provisions of paragraph requested or authorized by the applicant, give (1), any elected Of®ce may, on the express request information on the issuance or nonissuance of an of the applicant, proceed to the examination and international preliminary examination report and on other processing of the international application at the withdrawal or non-withdrawal of the demand or any time. of any election. Article 41 Article 39 Amendment of the Claims, the Description, and Copy, Translation, and Fee, to Elected Of®ces the Drawings, before Elected Of®ces

(1)(a) If the election of any Contracting State (1) The applicant shall be given the opportunity has been effected prior to the expiration of the 19th to amend the claims, the description, and the month from the priority date, the provisions of drawings, before each elected Of®ce within the Article 22 shall not apply to such State and the prescribed time limit. No elected Of®ce shall grant applicant shall furnish a copy of the international a patent, or refuse the grant of a patent, before such application (unless the communication under Article time limit has expired, except with the express 20 has already taken place) and a translation thereof consent of the applicant. (as prescribed), and pay the national fee (if any), to each elected Of®ce not later than at the expiration (2) The amendments shall not go beyond the of 30 months from the priority date. disclosure in the international application as ®led, unless the national law of the elected State permits (b) Any national law may, for performing them to go beyond the said disclosure. the acts referred to in subparagraph (a), ®x time limits which expire later than the time limit provided (3) The amendments shall be in accordance with for in that subparagraph. the national law of the elected State in all respects not provided for in this Treaty and the Regulations. (2) The effect provided for in Article 11(3) shall cease in the elected State with the same (4) Where an elected Of®ce requires a consequences as the withdrawal of any national translation of the international application, the application in that State if the applicant fails to

T-17 Rev. 10.2019, June 2020 Art. 41 MANUAL OF PATENT EXAMINING PROCEDURE

amendments shall be in the language of the ensuing effect shall be governed by the applicant's translation. indications. For the purposes of this Article, Article Article 42 2(ii) shall not apply.

Results of National Examination in Elected Article 45 Of®ces Regional Patent Treaties No elected Of®ce receiving the international (1) Any treaty providing for the grant of regional preliminary examination report may require that the patents (ªregional patent treatyº), and giving to all applicant furnish copies, or information on the persons who, according to Article 9, are entitled to contents, of any papers connected with the ®le international applications the right to ®le examination relating to the same international applications for such patents, may provide that application in any other elected Of®ce. international applications designating or electing a State party to both the regional patent treaty and the CHAPTER III Common Provisions present Treaty may be ®led as applications for such patents. (2) The national law of the said designated or Article 43 elected State may provide that any designation or election of such State in the international application Seeking Certain Kinds of Protection shall have the effect of an indication of the wish to obtain a regional patent under the regional patent In respect of any designated or elected State whose treaty. law provides for the grant of inventors' certi®cates, utility certi®cates, utility models, patents or Article 46 certi®cates of addition, inventors' certi®cates of addition, or utility certi®cates of addition, the Incorrect Translation of the International applicant may indicate, as prescribed in the Application Regulations, that his international application is for the grant, as far as that State is concerned, of an If, because of an incorrect translation of the inventor's certi®cate, a utility certi®cate, or a utility international application, the scope of any patent model, rather than a patent, or that it is for the grant granted on that application exceeds the scope of the of a patent or certi®cate of addition, an inventor's international application in its original language, the certi®cate of addition, or a utility certi®cate of competent authorities of the Contracting State addition, and the ensuing effect shall be governed concerned may accordingly and retroactively limit by the applicant's choice. For the purposes of this the scope of the patent, and declare it null and void Article and any Rule thereunder, Article 2(ii) shall to the extent that its scope has exceeded the scope not apply. of the international application in its original language. Article 44 Article 47 Seeking Two Kinds of Protection Time Limits In respect of any designated or elected State whose law permits an application, while being for the grant (1) The details for computing time limits referred of a patent or one of the other kinds of protection to in this Treaty are governed by the Regulations. referred to in Article 43, to be also for the grant of (2)(a) All time limits ®xed in Chapters I and another of the said kinds of protection, the applicant II of this Treaty may, outside any revision under may indicate, as prescribed in the Regulations, the Article 60, be modi®ed by a decision of the two kinds of protection he is seeking, and the Contracting States.

Rev. 10.2019, June 2020 T-18 PATENT COOPERATION TREATY Art. 51

(b) Such decisions shall be made in the (2) The International Bureau may provide these Assembly or through voting by correspondence and information services either directly or through one must be unanimous. or more International Searching Authorities or other (c) The details of the procedure are governed national or international specialized institutions, with by the Regulations. which the International Bureau may reach agreement. (3) The information services shall be operated Article 48 in a way particularly facilitating the acquisition by Contracting States which are developing countries Delay in Meeting Certain Time Limits of technical knowledge and technology, including available published know-how. (1) Where any time limit ®xed in this Treaty or the Regulations is not met because of interruption (4) The information services shall be available in the mail service or unavoidable loss or delay in to Governments of Contracting States and their the mail, the time limit shall be deemed to be met in nationals and residents. The Assembly may decide the cases and subject to the proof and other to make these services available also to others. conditions prescribed in the Regulations. (5)(a) Any service to Governments of (2)(a) Any Contracting State shall, as far as Contracting States shall be furnished at cost, that State is concerned, excuse, for reasons admitted provided that, when the Government is that of a under its national law, any delay in meeting any time Contracting State which is a developing country, the limit. service shall be furnished below cost if the difference can be covered from pro®t made on services (b) Any Contracting State may, as far as that furnished to others than Governments of Contracting State is concerned, excuse, for reasons other than States or from the sources referred to in Article those referred to in subparagraph (a), any delay in 51(4). meeting any time limit. (b) The cost referred to in subparagraph (a) Article 49 is to be understood as cost over and above costs normally incident to the performance of the services Right to Practice Before International Authorities of a national Of®ce or the obligations of an International Searching Authority. Any attorney, patent agent, or other person, having (6) The details concerning the implementation the right to practice before the national Of®ce with of the provisions of this Article shall be governed which the international application was ®led, shall by decisions of the Assembly and, within the limits be entitled to practice before the International Bureau to be ®xed by the Assembly, such working groups and the competent International Searching Authority as the Assembly may set up for that purpose. and competent International Preliminary Examining Authority in respect of that application. (7) The Assembly shall, when it considers it necessary, recommend methods of providing ®nancing supplementary to those referred to in CHAPTER IV Technical Services paragraph (5). Article 51 Article 50 Technical Assistance Patent Information Service (1) The Assembly shall establish a Committee (1) The International Bureau may furnish for Technical Assistance (referred to in this Article services by providing technical and any other as ªthe Committeeº). pertinent information available to it on the basis of (2)(a) The members of the Committee shall published documents, primarily patents and be elected among the Contracting States, with due published applications (referred to in this Article as regard to the representation of developing countries. ªthe information servicesº).

T-19 Rev. 10.2019, June 2020 Art. 51 MANUAL OF PATENT EXAMINING PROCEDURE

(b) The Director General shall, on his own (b) The Government of each Contracting initiative or at the request of the Committee, invite State shall be represented by one delegate, who may representatives of intergovernmental organizations be assisted by alternate delegates, advisors, and concerned with technical assistance to developing experts. countries to participate in the work of the Committee. (2)(a) The Assembly shall: (3)(a) The task of the Committee shall be to (i) deal with all matters concerning the organize and supervise technical assistance for maintenance and development of the Union and the Contracting States which are developing countries implementation of this Treaty; in developing their patent systems individually or on a regional basis. (ii) perform such tasks as are speci®cally assigned to it under other provisions of this Treaty; (b) The technical assistance shall comprise, among other things, the training of specialists, the (iii) give directions to the International loaning of experts, and the supply of equipment both Bureau concerning the preparation for revision for demonstration and for operational purposes. conferences; (4) The International Bureau shall seek to enter (iv) review and approve the reports and into agreements, on the one hand, with international activities of the Director General concerning the ®nancing organizations and intergovernmental Union, and give him all necessary instructions organizations, particularly the United Nations, the concerning matters within the competence of the agencies of the United Nations, and the Specialized Union; Agencies connected with the United Nations (v) review and approve the reports and concerned with technical assistance, and, on the other activities of the Executive Committee established hand, with the Governments of the States receiving under paragraph (9), and give instructions to such the technical assistance, for the ®nancing of projects Committee; pursuant to this Article. (vi) determine the program and adopt the (5) The details concerning the implementation triennial 1 budget of the Union, and approve its ®nal of the provisions of this Article shall be governed accounts; by decisions of the Assembly and, within the limits to be ®xed by the Assembly, such working groups (vii) adopt the ®nancial regulations of the as the Assembly may set up for that purpose. Union; Article 52 (viii) establish such committees and working groups as it deems appropriate to achieve the objectives of the Union; Relations with Other Provisions of the Treaty (ix) determine which States other than Nothing in this Chapter shall affect the ®nancial Contracting States and, subject to the provisions of provisions contained in any other Chapter of this paragraph (8), which intergovernmental and Treaty. Such provisions are not applicable to the international non-governmental organizations shall present Chapter or to its implementation. be admitted to its meetings as observers; (x) take any other appropriate action designed to further the objectives of the Union and CHAPTER V Administrative Provisions perform such other functions as are appropriate under this Treaty. Article 53 (b) With respect to matters which are of interest also to other Unions administered by the Assembly Organization, the Assembly shall make its decisions after having heard the advice of the Coordination (1)(a) The Assembly shall, subject to Article Committee of the Organization. 57(8), consist of the Contracting States.

1 Editor's Note: Since 1980, the budget of the Union has been biennial.

Rev. 10.2019, June 2020 T-20 PATENT COOPERATION TREATY Art. 54

(3) A delegate may represent, and vote in the at the request of the Executive Committee, or at the name of, one State only. request of one-fourth of the Contracting States. (4) Each Contracting State shall have one vote. (12) The Assembly shall adopt its own rules of (5)(a) One-half of the Contracting States procedure. shall constitute a quorum. Article 54 (b) In the absence of the quorum, the Assembly may make decisions but, with the Executive Committee exception of decisions concerning its own procedure, all such decisions shall take effect only if the quorum (1) When the Assembly has established an and the required majority are attained through voting Executive Committee, that Committee shall be by correspondence as provided in the Regulations. subject to the provisions set forth hereinafter. (6)(a) Subject to the provisions of Articles (2)(a) The Executive Committee shall, 47(2)(b), 58(2)(b), 58(3) and 61(2)(b), the decisions subject to Article 57(8), consist of States elected by of the Assembly shall require two-thirds of the votes the Assembly from among States members of the cast. Assembly. (b) Abstentions shall not be considered as (b) The Government of each State member votes. of the Executive Committee shall be represented by one delegate, who may be assisted by alternate (7) In connection with matters of exclusive delegates, advisors, and experts. interest to States bound by Chapter II, any reference to Contracting States in paragraphs (4), (5), and (6), (3) The number of States members of the shall be considered as applying only to States bound Executive Committee shall correspond to one-fourth by Chapter II. of the number of States members of the Assembly. In establishing the number of seats to be ®lled, (8) Any intergovernmental organization remainders after division by four shall be appointed as International Searching or Preliminary disregarded. Examining Authority shall be admitted as observer to the Assembly. (4) In electing the members of the Executive Committee, the Assembly shall have due regard to (9) When the number of Contracting States an equitable geographical distribution. exceeds forty, the Assembly shall establish an Executive Committee. Any reference to the (5)(a) Each member of the Executive Executive Committee in this Treaty and the Committee shall serve from the close of the session Regulations shall be construed as references to such of the Assembly which elected it to the close of the Committee once it has been established. next ordinary session of the Assembly. (10) Until the Executive Committee has been (b) Members of the Executive Committee established, the Assembly shall approve, within the may be re-elected but only up to a maximum of two-thirds of such members. limits of the program and triennial 1 budget, the annual programs and budgets prepared by the (c) The Assembly shall establish the details Director General. of the rules governing the election and possible re-election of the members of the Executive (11)(a) The Assembly shall meet in every Committee. second calendar year in ordinary session upon convocation by the Director General and, in the (6)(a) The Executive Committee shall: absence of exceptional circumstances, during the (i) prepare the draft agenda of the same period and at the same place as the General Assembly; Assembly of the Organization. (ii) submit proposals to the Assembly in (b) The Assembly shall meet in extraordinary respect of the draft program and biennial budget of session upon convocation by the Director General, the Union prepared by the Director General;

1 Editor's Note: Since 1980, the budget of the Union has been biennial.

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(iii) [Deleted] Article 55 (iv) submit, with appropriate comments, International Bureau to the Assembly the periodical reports of the Director General and the yearly audit reports on the accounts; (1) Administrative tasks concerning the Union (v) take all necessary measures to ensure shall be performed by the International Bureau. the execution of the program of the Union by the (2) The International Bureau shall provide the Director General, in accordance with the decisions secretariat of the various organs of the Union. of the Assembly and having regard to circumstances arising between two ordinary sessions of the (3) The Director General shall be the chief Assembly; executive of the Union and shall represent the Union. (vi) perform such other functions as are (4) The International Bureau shall publish a allocated to it under this Treaty. Gazette and other publications provided for by the Regulations or required by the Assembly. (b) With respect to matters which are of interest also to other Unions administered by the (5) The Regulations shall specify the services Organization, the Executive Committee shall make that national Of®ces shall perform in order to assist its decisions after having heard the advice of the the International Bureau and the International Coordination Committee of the Organization. Searching and Preliminary Examining Authorities in carrying out their tasks under this Treaty. (7)(a) The Executive Committee shall meet once a year in ordinary session upon convocation (6) The Director General and any staff member by the Director General, preferably during the same designated by him shall participate, without the period and at the same place as the Coordination right to vote, in all meetings of the Assembly, the Committee of the Organization. Executive Committee and any other committee or working group established under this Treaty or the (b) The Executive Committee shall meet in Regulations. The Director General, or a staff member extraordinary session upon convocation by the designated by him, shall be ex of®cio secretary of Director General, either on his own initiative or at these bodies. the request of its Chairman or one-fourth of its members. (7)(a) The International Bureau shall, in accordance with the directions of the Assembly and (8)(a) Each State member of the Executive in cooperation with the Executive Committee, make Committee shall have one vote. the preparations for the revision conferences. (b) One-half of the members of the Executive (b) The International Bureau may consult Committee shall constitute a quorum. with intergovernmental and international (c) Decisions shall be made by a simple non-governmental organizations concerning majority of the votes cast. preparations for revision conferences. (d) Abstentions shall not be considered as (c) The Director General and persons votes. designated by him shall take part, without the right (e) A delegate may represent, and vote in the to vote, in the discussions at revision conferences. name of, one State only. (8) The International Bureau shall carry out any (9) Contracting States not members of the other tasks assigned to it. Executive Committee shall be admitted to its Article 56 meetings as observers, as well as any intergovernmental organization appointed as Committee for Technical Cooperation International Searching or Preliminary Examining Authority. (1) The Assembly shall establish a Committee (10) The Executive Committee shall adopt its for Technical Cooperation (referred to in this Article own rules of procedure. as ªthe Committeeº).

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(2)(a) The Assembly shall determine the (b) The Executive Committee may express composition of the Committee and appoint its its views on any advice, recommendation, or other members, with due regard to an equitable activity of the Committee, and may invite the representation of developing countries. Committee to study and report on questions falling (b) The International Searching and within its competence. The Executive Committee Preliminary Examining Authorities shall be ex may submit to the Assembly, with appropriate of®cio members of the Committee. In the case where comments, the advice, recommendations and report such an Authority is the national Of®ce of a of the Committee. Contracting State, that State shall not be additionally (7) Until the Executive Committee has been represented on the Committee. established, references in paragraph (6) to the (c) If the number of Contracting States so Executive Committee shall be construed as allows, the total number of members of the references to the Assembly. Committee shall be more than double the number (8) The details of the procedure of the of ex of®cio members. Committee shall be governed by the decisions of the (d) The Director General shall, on his own Assembly. initiative or at the request of the Committee, invite Article 57 representatives of interested organizations to participate in discussions of interest to them. Finances (3) The aim of the Committee shall be to contribute, by advice and recommendations: (1)(a) The Union shall have a budget. (i) to the constant improvement of the (b) The budget of the Union shall include the services provided for under this Treaty, income and expenses proper to the Union and its contribution to the budget of expenses common to (ii) to the securing, so long as there are the Unions administered by the Organization. several International Searching Authorities and several International Preliminary Examining (c) Expenses not attributable exclusively to Authorities, of the maximum degree of uniformity the Union but also to one or more other Unions in their documentation and working methods and administered by the Organization shall be considered the maximum degree of uniformly high quality in as expenses common to the Unions. The share of the their reports, and Union in such common expenses shall be in proportion to the interest the Union has in them. (iii) on the initiative of the Assembly or the Executive Committee, to the solution of the technical (2) The budget of the Union shall be established problems speci®cally involved in the establishment with due regard to the requirements of coordination of a single International Searching Authority. with the budgets of the other Unions administered by the Organization. (4) Any Contracting State and any interested international organization may approach the (3) Subject to the provisions of paragraph (5), Committee in writing on questions which fall within the budget of the Union shall be ®nanced from the the competence of the Committee. following sources: (5) The Committee may address its advice and (i) fees and charges due for services rendered recommendations to the Director General or, through by the International Bureau in relation to the Union; him, to the Assembly, the Executive Committee, all (ii) sale of, or royalties on, the publications or some of the International Searching and of the International Bureau concerning the Union; Preliminary Examining Authorities, and all or some (iii) gifts, bequests, and subventions; of the receiving Of®ces. (iv) rents, interests, and other miscellaneous (6)(a) In any case, the Director General shall income. transmit to the Executive Committee the texts of all the advice and recommendations of the Committee. (4) The amounts of fees and charges due to the He may comment on such texts. International Bureau and the prices of its publications

T-23 Rev. 10.2019, June 2020 Art. 57 MANUAL OF PATENT EXAMINING PROCEDURE

shall be so ®xed that they should, under normal (c) The terms of payment shall be ®xed by circumstances, be suf®cient to cover all the expenses the Assembly on the proposal of the Director General of the International Bureau connected with the and after it has heard the advice of the Coordination administration of this Treaty. Committee of the Organization. (5)(a) Should any ®nancial year close with (d) Any reimbursement shall be proportionate a de®cit, the Contracting States shall, subject to the to the amounts paid by each Contracting State, taking provisions of subparagraphs (b) and (c), pay into account the dates at which they were paid. contributions to cover such de®cit. (8)(a) In the headquarters agreement (b) The amount of the contribution of each concluded with the State on the territory of which Contracting State shall be decided by the Assembly the Organization has its headquarters, it shall be with due regard to the number of international provided that, whenever the working capital fund is applications which has emanated from each of them insuf®cient, such State shall grant advances. The in the relevant year. amount of these advances and the conditions on (c) If other means of provisionally covering which they are granted shall be the subject of any de®cit or any part thereof are secured, the separate agreements, in each case, between such Assembly may decide that such de®cit be carried State and the Organization. As long as it remains forward and that the Contracting States should not under the obligation to grant advances, such State be asked to pay contributions. shall have an ex of®cio seat in the Assembly and on the Executive Committee. (d) If the ®nancial situation of the Union so permits, the Assembly may decide that any (b) The State referred to in subparagraph (a) contributions paid under subparagraph (a) be and the Organization shall each have the right to reimbursed to the Contracting States which have denounce the obligation to grant advances, by written paid them. noti®cation. Denunciation shall take effect three years after the end of the year in which it has been (e) A Contracting State which has not paid, noti®ed. within two years of the due date as established by the Assembly, its contribution under subparagraph (9) The auditing of the accounts shall be effected (b) may not exercise its right to vote in any of the by one or more of the Contracting States or by organs of the Union. However, any organ of the external auditors, as provided in the ®nancial Union may allow such a State to continue to exercise regulations. They shall be designated, with their its right to vote in that organ so long as it is satis®ed agreement, by the Assembly. that the delay in payment is due to exceptional and Article 58 unavoidable circumstances. (6) If the budget is not adopted before the Regulations beginning of a new ®nancial period, it shall be at the same level as the budget of the previous year, as (1) The Regulations annexed to this Treaty provided in the ®nancial regulations. provide Rules: (7)(a) The Union shall have a working capital (i) concerning matters in respect of which fund which shall be constituted by a single payment this Treaty expressly refers to the Regulations or made by each Contracting State. If the fund becomes expressly provides that they are or shall be insuf®cient, the Assembly shall arrange to increase prescribed, it. If part of the fund is no longer needed, it shall be (ii) concerning any administrative reimbursed. requirements, matters, or procedures, (b) The amount of the initial payment of each (iii) concerning any details useful in the Contracting State to said fund or of its participation implementation of the provisions of this Treaty. in the increase thereof shall be decided by the (2)(a) The Assembly may amend the Assembly on the basis of principles similar to those Regulations. provided for under paragraph (5)(b).

Rev. 10.2019, June 2020 T-24 PATENT COOPERATION TREATY Art. 61

(b) Subject to the provisions of paragraph bring the matter to the attention of the other (3), amendments shall require three-fourths of the Contracting States. votes cast. (3)(a) The Regulations specify the Rules CHAPTER VII Revision and Amendments which may be amended (i) only by unanimous consent, or Article 60 (ii) only if none of the Contracting States whose national Of®ce acts as an International Revision of the Treaty Searching or Preliminary Examining Authority dissents, and, where such Authority is an (1) This Treaty may be revised from time to time intergovernmental organization, if the Contracting by a special conference of the Contracting States. State member of that organization authorized for that purpose by the other member States within the (2) The convocation of any revision conference competent body of such organization does not shall be decided by the Assembly. dissent. (3) Any intergovernmental organization (b) Exclusion, for the future, of any such appointed as International Searching or Preliminary Rules from the applicable requirement shall require Examining Authority shall be admitted as observer the ful®llment of the conditions referred to in to any revision conference. subparagraph (a)(i) or (a)(ii), respectively. (4) Articles 53(5), (9) and (11), 54, 55(4) to (8), (c) Inclusion, for the future, of any Rule in 56, and 57, may be amended either by a revision one or the other of the requirements referred to in conference or according to the provisions of Article subparagraph (a) shall require unanimous consent. 61. (4) The Regulations provide for the Article 61 establishment, under the control of the Assembly, of Administrative Instructions by the Director Amendment of Certain Provisions of the Treaty General. (5) In the case of con¯ict between the provisions (1)(a) Proposals for the amendment of of the Treaty and those of the Regulations, the Articles 53(5), (9) and (11), 54, 55(4) to (8), 56, and provisions of the Treaty shall prevail. 57, may be initiated by any State member of the Assembly, by the Executive Committee, or by the Director General. CHAPTER VI Disputes (b) Such proposals shall be communicated by the Director General to the Contracting States at Article 59 least six months in advance of their consideration by the Assembly. Disputes (2)(a) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly. Subject to Article 64(5), any dispute between two or more Contracting States concerning the (b) Adoption shall require three-fourths of interpretation or application of this Treaty or the the votes cast. Regulations, not settled by negotiation, may, by any (3)(a) Any amendment to the Articles one of the States concerned, be brought before the referred to in paragraph (1) shall enter into force one International Court of Justice by application in month after written noti®cations of acceptance, conformity with the Statute of the Court, unless the effected in accordance with their respective States concerned agree on some other method of constitutional processes, have been received by the settlement. The Contracting State bringing the Director General from three-fourths of the States dispute before the Court shall inform the members of the Assembly at the time it adopted the International Bureau; the International Bureau shall amendment.

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(b) Any amendment to the said Articles thus four of those States each ful®ll any of the following accepted shall bind all the States which are members conditions: of the Assembly at the time the amendment enters (i) the number of applications ®led in the into force, provided that any amendment increasing State has exceeded 40,000 according to the most the ®nancial obligations of the Contracting States recent annual statistics published by the International shall bind only those States which have noti®ed their Bureau, acceptance of such amendment. (ii) the nationals or residents of the State (c) Any amendment accepted in accordance have ®led at least 1,000 applications in one foreign with the provisions of subparagraph (a) shall bind country according to the most recent annual statistics all States which become members of the Assembly published by the International Bureau, after the date on which the amendment entered into force in accordance with the provisions of (iii) the national Of®ce of the State has subparagraph (a). received at least 10,000 applications from nationals or residents of foreign countries according to the CHAPTER VIII Final Provisions most recent annual statistics published by the International Bureau. (b) For the purposes of this paragraph, the Article 62 term ªapplicationsº does not include applications for utility models. Becoming Party to the Treaty (2) Subject to the provisions of paragraph (3), (1) Any State member of the International Union any State which does not become party to this Treaty for the Protection of Industrial Property may become upon entry into force under paragraph (1) shall party to this Treaty by: become bound by this Treaty three months after the date on which such State has deposited its instrument (i) signature followed by the deposit of an of rati®cation or accession. instrument of rati®cation, or (3) The provisions of Chapter II and the (ii) deposit of an instrument of accession. corresponding provisions of the Regulations annexed (2) Instruments of rati®cation or accession shall to this Treaty shall become applicable, however, be deposited with the Director General. only on the date on which three States each of which ful®ll at least one of the three requirements speci®ed (3) The provisions of Article 24 of the in paragraph (1) have become party to this Treaty Stockholm Act of the Paris Convention for the without declaring, as provided in Article 64(1), that Protection of Industrial Property shall apply to this they do not intend to be bound by the provisions of Treaty. Chapter II. That date shall not, however, be prior to (4) Paragraph (3) shall in no way be understood that of the initial entry into force under paragraph as implying the recognition or tacit acceptance by a (1). Contracting State of the factual situation concerning a territory to which this Treaty is made applicable Article 64 by another Contracting State by virtue of the said paragraph. Reservations

Article 63 (1)(a) Any State may declare that it shall not be bound by the provisions of Chapter II. Entry into Force of the Treaty (b) States making a declaration under subparagraph (a) shall not be bound by the (1)(a) Subject to the provisions of paragraph provisions of Chapter II and the corresponding (3), this Treaty shall enter into force three months provisions of the Regulations. after eight States have deposited their instruments of rati®cation or accession, provided that at least (2)(a) Any State not having made a declaration under paragraph(1)(a) may declare that:

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(i) it shall not be bound by the provisions (c) Any State making a declaration under of Article 39(1) with respect to the furnishing of a subparagraph (a) shall, at the same time, state in copy of the international application and a translation writing the date from which, and the conditions thereof (as prescribed), under which, the prior art effect of any international application designating that State becomes effective (ii) the obligation to delay national in that State. This statement may be modi®ed at any processing, as provided for under Article 40, shall time by noti®cation addressed to the Director not prevent publication, by or through its national General. Of®ce, of the international application or a translation thereof, it being understood, however, (5) Each State may declare that it does not that it is not exempted from the limitations provided consider itself bound by Article 59. With regard to for in Articles 30 and 38. any dispute between any Contracting State having made such a declaration and any other Contracting (b) States making such a declaration shall be State, the provisions of Article 59 shall not apply. bound accordingly. (6)(a) Any declaration made under this (3)(a) Any State may declare that, as far as Article shall be made in writing. It may be made at it is concerned, international publication of the time of signing this Treaty, at the time of international applications is not required. depositing the instrument of rati®cation or accession, (b) Where, at the expiration of 18 months or, except in the case referred to in paragraph (5), at from the priority date, the international application any later time by noti®cation addressed to the contains the designation only of such States as have Director General. In the case of the said noti®cation, made declarations under subparagraph (a), the the declaration shall take effect six months after the international application shall not be published by day on which the Director General has received the virtue of Article 21(2). noti®cation, and shall not affect international applications ®led prior to the expiration of the said (c) Where the provisions of subparagraph (b) six-month period. apply, the international application shall nevertheless be published by the International Bureau: (b) Any declaration made under this Article may be withdrawn at any time by noti®cation (i) at the request of the applicant, as addressed to the Director General. Such withdrawal provided in the Regulations, shall take effect three months after the day on which (ii) when a national application or a the Director General has received the noti®cation patent based on the international application is and, in the case of the withdrawal of a declaration published by or on behalf of the national Of®ce of made under paragraph (3), shall not affect any designated State having made a declaration international applications ®led prior to the expiration under subparagraph (a), promptly after such of the said three-month period. publication but not before the expiration of 18 (7) No reservations to this Treaty other than the months from the priority date. reservations under paragraphs (1) to (5) are (4)(a) Any State whose national law provides permitted. for prior art effect of its patents as from a date before publication, but does not equate for prior art purposes Article 65 the priority date claimed under the Paris Convention for the Protection of Industrial Property to the actual Gradual Application ®ling date in that State, may declare that the ®ling outside that State of an international application (1) If the agreement with any International designating that State is not equated to an actual Searching or Preliminary Examining Authority ®ling in that State for prior art purposes. provides, transitionally, for limits on the number or kind of international applications that such Authority (b) Any State making a declaration under undertakes to process, the Assembly shall adopt the subparagraph (a) shall to that extent not be bound measures necessary for the gradual application of by the provisions of Article 11(3). this Treaty and the Regulations in respect of given categories of international applications. This

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provision shall also apply to requests for an (2) The Director General shall transmit two international-type search under Article 15(5). copies, certi®ed by him, of this Treaty and the (2) The Assembly shall ®x the dates from which, Regulations annexed hereto to the Governments of subject to the provision of paragraph (1), all States party to the Paris Convention for the international applications may be ®led and demands Protection of Industrial Property and, on request, to for international preliminary examination may be the Government of any other State. submitted. Such dates shall not be later than six (3) The Director General shall register this months after this Treaty has entered into force Treaty with the Secretariat of the United Nations. according to the provisions of Article 63(1), or after (4) The Director General shall transmit two Chapter II has become applicable under Article copies, certi®ed by him, of any amendment to this 63(3), respectively. Treaty and the Regulations to the Governments of Article 66 all Contracting States and, on request, to the Government of any other State. Denunciation Article 69 (1) Any Contracting State may denounce this Noti®cations Treaty by noti®cation addressed to the Director General. The Director General shall notify the Governments (2) Denunciation shall take effect six months of all States party to the Paris Convention for the after receipt of the said noti®cation by the Director Protection of Industrial Property of: General. It shall not affect the effects of the international application in the denouncing State if (i) signatures under Article 62, the international application was ®led, and, where (ii) deposits of instruments of rati®cation or the denouncing State has been elected, the election accession under Article 62, was made, prior to the expiration of the said six-month period. (iii) the date of entry into force of this Treaty and the date from which Chapter II is applicable in Article 67 accordance with Article 63(3),

Signature and Languages (iv) any declarations made under Article 64(1) to (5), (1)(a) This Treaty shall be signed in a single (v) withdrawals of any declarations made under original in the English and French languages, both Article 64(6)(b), texts being equally authentic. (vi) denunciations received under Article 66, (b) Of®cial texts shall be established by the and Director General, after consultation with the (vii) any declarations made under Article 31(4). interested Governments, in the German, Japanese, Portuguese, Russian and Spanish languages, and such other languages as the Assembly may designate. (2) This Treaty shall remain open for signature at Washington until December 31, 1970. Article 68

Depositary Functions

(1) The original of this Treaty, when no longer open for signature, shall be deposited with the Director General.

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Regulations under the Patent Cooperation Treaty Rule 23 Transmittal of the Search Copy, Translation and Sequence Listing Rule 23 bis Transmittal of Documents Relating to Earlier Search or Classi®cation (as in force from July 1, 2019) Rule 24 Receipt of the Record Copy by the International Bureau Adopted on June 19, 1970, and amended on April Rule 25 Receipt of the Search Copy by the International 14, 1978, October 3, 1978, May 1, 1979, June 16, Searching Authority Rule 26 Checking by, and Correcting before, the Receiving 1980, September 26, 1980, July 3, 1981, September Of®ce of Certain Elements of the International 10, 1982, October 4, 1983, February 3, 1984, Application September 28, 1984, October 1, 1985, July 12, 1991, Rule 26 bis Correction or Addition of Priority Claim Rule 26 ter Correction or Addition of Declarations under Rule October 2, 1991, September 29, 1992, September 4.17 29, 1993, October 3, 1995, October 1, 1997, Rule 27 Lack of Payment of Fees Rule 28 Defects Noted by the International Bureau September 15, 1998, September 29, 1999, March Rule 29 International Applications Considered Withdrawn 17, 2000, October 3, 2000, October 3, 2001, October Rule 30 Time Limit under Article 14(4) 1, 2002, October 1, 2003, October 5, 2004, October Rule 31 Copies Required under Article 13 Rule 32 Extension of Effects of International Application to 5, 2005, October 3, 2006, November 12, 2007, May Certain Successor States 15, 2008, September 29, 2008, October 1, 2009, Rule 33 Relevant Prior Art for the International Search September 29, 2010, October 5, 2011, October 9, Rule 34 Minimum Documentation Rule 35 The Competent International Searching Authority 2012, October 2, 2013, September 30, 2014, October Rule 36 Minimum Requirements for International Searching 14, 2015, October 11, 2016, October 11, 2017, and Authorities Rule 37 Missing or Defective Title October 2, 2018. Rule 38 Missing or Defective Abstract Rule 39 Subject Matter under Article 17(2)(a)(i) Rule 40 Lack of Unity of Invention (International Search) Rule 41 Taking into Account Results of Earlier Search and TABLE OF CONTENTS 1 Classi®cation Rule 42 Time Limit for International Search Part A: Introductory Rules Rule 43 The International Search Report Rule 43 bis Written Opinion of the International Searching Rule 1 Abbreviated Expressions Authority Rule 2 Interpretation of Certain Words Rule 44 Transmittal of the International Search Report, Written Opinion, Etc. Part B: Rules Concerning Chapter I of the Treaty Rule 44 bis International Preliminary Report on Patentability by Rule 3 The Request (Form) the International Searching Authority Rule 4 The Request (Contents) Rule 45 Translation of the International Search Report Rule 5 The Description Rule 45 bis Supplementary International Searches Rule 6 The Claims Rule 46 Amendment of Claims before the International Rule 7 The Drawings Bureau Rule 8 The Abstract Rule 47 Communication to Designated Of®ces Rule 9 Expressions, Etc., Not to Be Used Rule 48 International Publication Rule 10 Terminology and Signs Rule 49 Copy, Translation and Fee under Article 22 Rule 11 Physical Requirements of the International Rule 49 bis Indications as to Protection Sought for Purposes of Application National Processing Rule 12 Language of the International Application and Rule 49 ter Effect of Restoration of Right of Priority by Translations for the Purposes of International Search Receiving Of®ce; Restoration of Right of Priority and International Publication by Designated Of®ce Rule 12 bis Submission by the Applicant of Documents Relating Rule 50 Faculty under Article 22(3) to Earlier Search Rule 51 Review by Designated Of®ces Rule 13 Unity of Invention Rule 51 bis Certain National Requirements Allowed under Rule 13 bis Inventions Relating to Biological Material Article 27 Rule 13 ter Nucleotide and/or Amino Acid Sequence Listings Rule 52 Amendment of the Claims, the Description, and the Rule 14 The Transmittal Fee Drawings, before Designated Of®ces Rule 15 The International Filing Fee Part C: Rules Concerning Chapter II of the Treaty Rule 16 The Search Fee Rule 16 bis Extension of Time Limits for Payment of Fees Rule 53 The Demand Rule 17 The Priority Document Rule 54 The Applicant Entitled to Make a Demand Rule 18 The Applicant Rule 54 bis Time Limit for Making a Demand Rule 19 The Competent Receiving Of®ce Rule 55 Languages (International Preliminary Examination) Rule 20 International Filing Date Rule 56 [Deleted] Rule 21 Preparation of Copies Rule 57 The Handling Fee Rule 22 Transmittal of the Record Copy and Translation Rule 58 The Preliminary Examination Fee

1 Editor©s Note: Table of Contents and Editor©s Notes are added for the convenience of the reader; they do not form part of the Regulations.

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Rule 58 bis Extension of Time Limits for Payment of Fees Rule 90 Agents and Common Representatives Rule 59 The Competent International Preliminary Examining Rule 90 bis Withdrawals Authority Rule 91 Recti®cation of Obvious Mistakes in the Rule 60 Certain Defects in the Demand International Application and Other Documents Rule 61 Noti®cation of the Demand and Elections Rule 92 Correspondence Rule 62 Copy of the Written Opinion by the International Rule 92 bis Recording of Changes in Certain Indications in the Searching Authority and of Amendments under Request or the Demand Article 19 for the International Preliminary Rule 93 Keeping of Records and Files Examining Authority Rule 93 bis Manner of Communication of Documents Rule 62 bis Translation for the International Preliminary Rule 94 Access to Files Examining Authority of the Written Opinion of the Rule 95 Information and Translations from Designated and International Searching Authority Elected Of®ces Rule 63 Minimum Requirements for International Rule 96 The Schedule of Fees Preliminary Examining Authorities Rule 64 Prior Art for International Preliminary Examination Part A Rule 65 Inventive Step or Non-Obviousness Rule 66 Procedure before the International Preliminary Examining Authority Introductory Rules Rule 67 Subject Matter under Article 34(4)(a)(i) Rule 68 Lack of Unity of Invention (International Preliminary Rule 1 Examination) Rule 69 Start of and Time Limit for International Preliminary Examination Abbreviated Expressions Rule 70 International Preliminary Report on Patentability by the International Preliminary Examining Authority (International Preliminary Examination Report) 1.1 Meaning of Abbreviated Expressions Rule 71 Transmittal of the International Preliminary Examination Report Rule 72 Translation of the International Preliminary (a) In these Regulations, the word ªTreatyº Examination Report and of the Written Opinion of means the Patent Cooperation Treaty. the International Searching Authority Rule 73 Communication of the International Preliminary (b) In these Regulations, the words ªChapterº Examination Report or the Written Opinion of the and ªArticleº refer to the speci®ed Chapter or Article International Searching Authority Rule 74 Translations of Annexes of the International of the Treaty. Preliminary Examination Report and Transmittal Thereof Rule 2 Rule 75 [Deleted] Rule 76 Translation of Priority Document; Application of Certain Rules to Procedures before Elected Of®ces Interpretation of Certain Words Rule 77 Faculty under Article 39(1)(b) Rule 78 Amendment of the Claims, the Description, and the Drawings, before Elected Of®ces 2.1 ªApplicantº Part D: Rules Concerning Chapter III of the Treaty

Rule 79 Calendar Whenever the word ªapplicantº is used, it shall be Rule 80 Computation of Time Limits construed as meaning also the agent or other Rule 81 Modi®cation of Time Limits Fixed in the Treaty Rule 82 Irregularities in the Mail Service representative of the applicant, except where the Rule 82 bis Excuse by the Designated or Elected State of Delays contrary clearly follows from the wording or the in Meeting Certain Time Limits nature of the provision, or the context in which the Rule 82 ter Recti®cation of Errors Made by the Receiving Of®ce or by the International Bureau word is used, such as, in particular, where the Rule 82 quater Excuse of Delay in Meeting Time Limits provision refers to the residence or nationality of the Rule 83 Right to Practice before International Authorities applicant. Part E: Rules Concerning Chapter V of the Treaty Rule 84 Expenses of Delegations 2.2 ªAgentº Rule 85 Absence of Quorum in the Assembly Rule 86 The Gazette Rule 87 Communication of Publications Whenever the word ªagentº is used, it shall be Rule 88 Amendment of the Regulations Rule 89 Administrative Instructions construed as meaning an agent appointed under Rule Part F: Rules Concerning Several Chapters of the Treaty 90.1, unless the contrary clearly follows from the wording or the nature of the provision, or the context Rule 89 bis Filing, Processing and Communication of International Applications and Other Documents in in which the word is used. Electronic Form or by Electronic Means Rule 89 ter Copies in Electronic Form of Documents Filed on Paper

Rev. 10.2019, June 2020 T-30 PATENT COOPERATION TREATY Rule 4

2.2 bis ªCommon Representativeº 3.3 Check List

Whenever the expression ªcommon representativeº (a) The request shall contain a list indicating: is used, it shall be construed as meaning an applicant (i) the total number of sheets constituting the appointed as, or considered to be, the common international application and the number of the sheets representative under Rule 90.2. of each element of the international application: request, description (separately indicating the 2.3 ªSignatureº number of sheets of any sequence listing part of the description), claims, drawings, abstract; Whenever the word ªsignatureº is used, it shall be (ii) where applicable, that the international understood that, if the national law applied by the application as ®led is accompanied by a power of receiving Of®ce or the competent International attorney (i.e., a document appointing an agent or a Searching or Preliminary Examining Authority common representative), a copy of a general power requires the use of a seal instead of a signature, the of attorney, a priority document, a sequence listing word, for the purposes of that Of®ce or Authority, in electronic form, a document relating to the shall mean seal. payment of fees, or any other document (to be speci®ed in the check list); 2.4 ªPriority Periodº (iii) the number of that ®gure of the drawings (a) Whenever the term ªpriority periodº is used which the applicant suggests should accompany the in relation to a priority claim, it shall be construed abstract when the abstract is published; in as meaning the period of 12 months from the ®ling exceptional cases, the applicant may suggest more date of the earlier application whose priority is so than one ®gure. claimed. The day of ®ling of the earlier application (b) The list shall be completed by the applicant, shall not be included in that period. failing which the receiving Of®ce shall make the (b) Rule 80.5 shall apply mutatis mutandis to necessary indications, except that the number the priority period. referred to in paragraph (a)(iii) shall not be indicated by the receiving Of®ce. Part B 3.4 Particulars Rules Concerning Chapter I of the Treaty Subject to Rule 3.3, particulars of the printed request Rule 3 form and of a request presented as a computer print-out shall be prescribed by the Administrative The Request (Form) Instructions.

3.1 Form of Request Rule 4

The request shall be made on a printed form or be The Request (Contents) presented as a computer print-out. 4.1 Mandatory and Optional Contents; 3.2 Availability of Forms Signature

Copies of the printed form shall be furnished free of (a) The request shall contain: charge to the applicants by the receiving Of®ce, or, (i) a petition, if the receiving Of®ce so desires, by the International Bureau. (ii) the title of the invention, (iii) indications concerning the applicant and the agent, if there is an agent,

T-31 Rev. 10.2019, June 2020 Rule 4 MANUAL OF PATENT EXAMINING PROCEDURE

(iv) indications concerning the inventor 4.4 Names and Addresses where the national law of at least one of the designated States requires that the name of the (a) Names of natural persons shall be indicated inventor be furnished at the time of ®ling a national by the person's family name and given name(s), the application. family name being indicated before the given name(s). (b) The request shall, where applicable, contain: (b) Names of legal entities shall be indicated by (i) a priority claim, their full, of®cial designations. (ii) indications relating to an earlier search (c) Addresses shall be indicated in such a way as provided in Rules 4.12(i) and 12 bis.1(b) and (d), as to satisfy the customary requirements for prompt (iii) a reference to a parent application or postal delivery at the indicated address and, in any parent patent, case, shall consist of all the relevant administrative (iv) an indication of the applicant's choice units up to, and including, the house number, if any. of competent International Searching Authority. Where the national law of the designated State does not require the indication of the house number, (c) The request may contain: failure to indicate such number shall have no effect (i) indications concerning the inventor where in that State. In order to allow rapid communication the national law of none of the designated States with the applicant, it is recommended to indicate requires that the name of the inventor be furnished any teleprinter address, telephone and facsimile at the time of ®ling a national application, machine numbers, or corresponding data for other like means of communication, of the applicant or, (ii) a request to the receiving Of®ce to where applicable, the agent or the common prepare and transmit the priority document to the representative. International Bureau where the application whose priority is claimed was ®led with the national Of®ce (d) For each applicant, inventor, or agent, only or intergovernmental authority which is the receiving one address may be indicated, except that, if no agent Of®ce, has been appointed to represent the applicant, or all of them if more than one, the applicant or, if there (iii) declarations as provided in Rule 4.17, is more than one applicant, the common (iv) a statement as provided in Rule 4.18, representative, may indicate, in addition to any other (v) a request for restoration of the right of address given in the request, an address to which priority, noti®cations shall be sent. (vi) a statement as provided in Rule 4.12(ii). 4.5 The Applicant (d) The request shall be signed. (a) The request shall indicate: 4.2 The Petition (i) the name,

The petition shall be to the following effect and shall (ii) the address, and preferably be worded as follows: ªThe undersigned (iii) the nationality and residence requests that the present international application be processed according to the Patent Cooperation of the applicant or, if there are several applicants, of Treaty.º each of them. (b) The applicant's nationality shall be indicated 4.3 Title of the Invention by the name of the State of which he is a national. (c) The applicant's residence shall be indicated The title of the invention shall be short (preferably by the name of the State of which he is a resident. from two to seven words when in English or translated into English) and precise. (d) The request may, for different designated States, indicate different applicants. In such a case, the request shall indicate the applicant or applicants

Rev. 10.2019, June 2020 T-32 PATENT COOPERATION TREATY Rule 4

for each designated State or group of designated (ii) an indication that the international States. application is, in respect of each designated State to (e) Where the applicant is registered with the which Article 43 or 44 applies, for the grant of every national Of®ce that is acting as receiving Of®ce, the kind of protection which is available by way of the request may indicate the number or other indication designation of that State; under which the applicant is so registered. (iii) an indication that the international 4.6 The Inventor application is, in respect of each designated State to which Article 45(1) applies, for the grant of a (a) Where Rule 4.1(a)(iv) or (c)(i) applies, the regional patent and also, unless Article 45(2) applies, request shall indicate the name and address of the a national patent. inventor or, if there are several inventors, of each of (b) Notwithstanding paragraph (a)(i), if, on them. October 5, 2005, the national law of a Contracting (b) If the applicant is the inventor, the request, State provides that the ®ling of an international in lieu of the indication under paragraph (a), shall application which contains the designation of that contain a statement to that effect. State and claims the priority of an earlier national application having effect in that State shall have the (c) The request may, for different designated result that the earlier national application ceases to States, indicate different persons as inventors where, have effect with the same consequences as the in this respect, the requirements of the national withdrawal of the earlier national application, any of the designated States are not the same. In such a request in which the priority of an earlier national case, the request shall contain a separate statement application ®led in that State is claimed may contain for each designated State or group of States in which an indication that the designation of that State is not a particular person, or the same person, is to be made, provided that the designated Of®ce noti®es considered the inventor, or in which particular the International Bureau by January 5, 2006, that persons, or the same persons, are to be considered this paragraph shall apply in respect of designations the inventors. of that State and that the noti®cation is still in force 4.7 The Agent on the international ®ling date. The information received shall be promptly published by the (a) If an agent is appointed, the request shall so International Bureau in the Gazette. indicate, and shall state the agent's name and 4.10 Priority Claim address. (b) Where the agent is registered with the (a) Any declaration referred to in Article 8(1) national Of®ce that is acting as receiving Of®ce, the (ªpriority claimº) may claim the priority of one or request may indicate the number or other indication more earlier applications ®led either in or for any under which the agent is so registered. country party to the Paris Convention for the Protection of Industrial Property or in or for any 4.8 Common Representative Member of the that is not party to that Convention. Any priority claim shall If a common representative is appointed, the request be made in the request; it shall consist of a statement shall so indicate. to the effect that the priority of an earlier application is claimed and shall indicate: 4.9 Designation of States; Kinds of (i) the date on which the earlier application Protection; National and Regional Patents was ®led; (a) The ®ling of a request shall constitute: (ii) the number of the earlier application; (i) the designation of all Contracting States (iii) where the earlier application is a national that are bound by the Treaty on the international application, the country party to the Paris Convention ®ling date; for the Protection of Industrial Property or the

T-33 Rev. 10.2019, June 2020 Rule 4 MANUAL OF PATENT EXAMINING PROCEDURE

Member of the World Trade Organization that is not party to that Convention in which it was ®led; the request shall so indicate and shall indicate the relevant parent application or parent patent or other (iv) where the earlier application is a regional parent grant. application, the authority entrusted with the granting of regional patents under the applicable regional (b) The inclusion in the request of an indication patent treaty; under paragraph (a) shall have no effect on the operation of Rule 4.9. (v) where the earlier application is an international application, the receiving Of®ce with 4.12 Taking into Account Results of Earlier which it was ®led. Search (b) In addition to any indication required under paragraph (a)(iv) or (v): If the applicant wishes the International Searching Authority to take into account, in carrying out the (i) where the earlier application is a regional international search, the results of an earlier application or an international application, the international, international-type or national search priority claim may indicate one or more countries carried out by the same or another International party to the Paris Convention for the Protection of Searching Authority or by a national Of®ce (ªearlier Industrial Property for which that earlier application searchº): was ®led; (ii) where the earlier application is a regional (i) the request shall so indicate and shall specify application and at least one of the countries party to the Authority or Of®ce concerned and the application the regional patent treaty is neither party to the Paris in respect of which the earlier search was carried Convention for the Protection of Industrial Property out; nor a Member of the World Trade Organization, the (ii) the request may, where applicable, contain priority claim shall indicate at least one country party a statement to the effect that the international to that Convention or one Member of that application is the same, or substantially the same, Organization for which that earlier application was as the application in respect of which the earlier ®led. search was carried out, or that the international (c) For the purposes of paragraphs (a) and (b), application is the same, or substantially the same, Article 2(vi) shall not apply. as that earlier application except that it is ®led in a different language. 4.11 Reference to Continuation or Continuation-in-Part, or Parent Application 4.13 - 4.14 [Deleted] or Grant 4.14 bis Choice of International Searching (a) If: Authority (i) the applicant intends to make an indication under Rule 49 bis.1(a) or (b) of the wish that the If two or more International Searching Authorities international application be treated, in any designated are competent for the searching of the international State, as an application for a patent of addition, application, the applicant shall indicate his choice certi®cate of addition, inventor's certi®cate of of International Searching Authority in the request. addition or utility certi®cate of addition; or (ii) the applicant intends to make an 4.15 Signature indication under Rule 49 bis.1(d) of the wish that The request shall be signed by the applicant or, the international application be treated, in any if there is more than one applicant, by all of them. designated State, as an application for a continuation or a continuation-in-part of an earlier application;

Rev. 10.2019, June 2020 T-34 PATENT COOPERATION TREATY Rule 5

4.16 Transliteration or Translation of element of the international application referred to Certain Words in Article 11(1)(iii)(d) or (e) or a part of the description, claims or drawings referred to in (a) Where any name or address is written in Rule 20.5(a) is not otherwise contained in the characters other than those of the Latin alphabet, the international application but is completely contained same shall also be indicated in characters of the Latin in the earlier application, that element or part is, alphabet either as a mere transliteration or through subject to con®rmation under Rule 20.6, translation into English. The applicant shall decide incorporated by reference in the international which words will be merely transliterated and which application for the purposes of Rule 20.6. Such a words will be so translated. statement, if not contained in the request on that date, may be added to the request if, and only if, it (b) The name of any country written in was otherwise contained in, or submitted with, the characters other than those of the Latin alphabet shall international application on that date. also be indicated in English. 4.17 Declarations Relating to National 4.19 Additional Matter Requirements Referred to in Rule 51 bis.1(a)(i) to (v) (a) The request shall contain no matter other than that speci®ed in Rules 4.1 to 4.18, provided The request may, for the purposes of the national that the Administrative Instructions may permit, but law applicable in one or more designated States, cannot make mandatory, the inclusion in the request contain one or more of the following declarations, of any additional matter speci®ed in the worded as prescribed by the Administrative Administrative Instructions. Instructions: (b) If the request contains matter other than that speci®ed in Rules 4.1 to 4.18 or permitted under (i) a declaration as to the identity of the inventor, paragraph (a) by the Administrative Instructions, the as referred to in Rule 51 bis.1(a)(i); receiving Of®ce shall ex of®cio delete the additional (ii) a declaration as to the applicant's matter. entitlement, as at the international ®ling date, to Rule 5 apply for and be granted a patent, as referred to in Rule 51 bis.1(a)(ii); The Description (iii) a declaration as to the applicant's entitlement, as at the international ®ling date, to 5.1 Manner of the Description claim priority of the earlier application, as referred to in Rule 51 bis.1(a)(iii); (a) The description shall ®rst state the title of (iv) a declaration of inventorship, as referred to the invention as appearing in the request and shall: in Rule 51 bis.1(a)(iv), which shall be signed as (i) specify the technical ®eld to which the prescribed by the Administrative Instructions; invention relates; (v) a declaration as to non-prejudicial disclosures (ii) indicate the background art which, as far or exceptions to lack of novelty, as referred to in as known to the applicant, can be regarded as useful Rule 51 bis.1(a)(v). for the understanding, searching and examination of 4.18 Statement of Incorporation by the invention, and, preferably, cite the documents Reference re¯ecting such art; (iii) disclose the invention, as claimed, in Where the international application, on the date on such terms that the technical problem (even if not which one or more elements referred to in expressly stated as such) and its solution can be Article 11(1)(iii) were ®rst received by the receiving understood, and state the advantageous effects, if Of®ce, claims the priority of an earlier application, any, of the invention with reference to the the request may contain a statement that, where an background art;

T-35 Rev. 10.2019, June 2020 Rule 6 MANUAL OF PATENT EXAMINING PROCEDURE

(iv) brie¯y describe the ®gures in the Rule 6 drawings, if any; (v) set forth at least the best mode The Claims contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of 6.1 Number and Numbering of Claims examples, where appropriate, and with reference to the drawings, if any; where the national law of the (a) The number of the claims shall be reasonable designated State does not require the description of in consideration of the nature of the invention the best mode but is satis®ed with the description of claimed. any mode (whether it is the best contemplated or (b) If there are several claims, they shall be not), failure to describe the best mode contemplated numbered consecutively in Arabic numerals. shall have no effect in that State; (c) The method of numbering in the case of the (vi) indicate explicitly, when it is not obvious amendment of claims shall be governed by the from the description or nature of the invention, the Administrative Instructions. way in which the invention is capable of exploitation in industry and the way in which it can be made and 6.2 References to Other Parts of the used, or, if it can only be used, the way in which it International Application can be used; the term ªindustryº is to be understood in its broadest sense as in the Paris Convention for (a) Claims shall not, except where absolutely the Protection of Industrial Property. necessary, rely, in respect of the technical features of the invention, on references to the description or (b) The manner and order speci®ed in paragraph drawings. In particular, they shall not rely on such (a) shall be followed except when, because of the references as: ªas described in part ... of the nature of the invention, a different manner or a description,º or ªas illustrated in ®gure ... of the different order would result in a better understanding drawings.º and a more economic presentation. (b) Where the international application contains (c) Subject to the provisions of paragraph (b), drawings, the technical features mentioned in the each of the parts referred to in paragraph (a) shall claims shall preferably be followed by the reference preferably be preceded by an appropriate heading signs relating to such features. When used, the as suggested in the Administrative Instructions. reference signs shall preferably be placed between 5.2 Nucleotide and/or Amino Acid Sequence parentheses. If inclusion of reference signs does not Disclosure particularly facilitate quicker understanding of a claim, it should not be made. Reference signs may (a) Where the international application contains be removed by a designated Of®ce for the purposes disclosure of one or more nucleotide of publication by such Of®ce. and/or amino acid sequences, the description shall 6.3 Manner of Claiming contain a sequence listing complying with the standard provided for in the Administrative (a) The de®nition of the matter for which Instructions and presented as a separate part of the protection is sought shall be in terms of the technical description in accordance with that standard. features of the invention. (b) Where the sequence listing part of the (b) Whenever appropriate, claims shall contain: description contains any free text as de®ned in the standard provided for in the Administrative (i) a statement indicating those technical Instructions, that free text shall also appear in the features of the invention which are necessary for the main part of the description in the language thereof. de®nition of the claimed subject matter but which, in combination, are part of the prior art, (ii) a characterizing portion Ð preceded by the words ªcharacterized in that,º ªcharacterized by,º ªwherein the improvement comprises,º or any

Rev. 10.2019, June 2020 T-36 PATENT COOPERATION TREATY Rule 8

other words to the same effect Ð stating concisely provisions of its national law concerning utility the technical features which, in combination with models once the processing of the international the features stated under (i), it is desired to protect. application has started in that State, provided that the applicant shall be allowed at least two months (c) Where the national law of the designated from the expiration of the time limit applicable under State does not require the manner of claiming Article 22 to adapt his application to the provided for in paragraph (b), failure to use that requirements of the said provisions of the national manner of claiming shall have no effect in that State law. provided the manner of claiming actually used satis®es the national law of that State. Rule 7 6.4 Dependent Claims The Drawings (a) Any claim which includes all the features of one or more other claims (claim in dependent form, 7.1 Flow Sheets and Diagrams hereinafter referred to as ªdependent claimº) shall do so by a reference, if possible at the beginning, to Flowsheets and diagrams are considered drawings. the other claim or claims and shall then state the additional features claimed. Any dependent claim which refers to more than one other claim (ªmultiple 7.2 Time Limit dependent claimº) shall refer to such claims in the alternative only. Multiple dependent claims shall not The time limit referred to in Article 7(2)(ii) shall be serve as a basis for any other multiple dependent reasonable under the circumstances of the case and claim. Where the national law of the national Of®ce shall, in no case, be shorter than two months from acting as International Searching Authority does not the date of the written invitation requiring the ®ling allow multiple dependent claims to be drafted in a of drawings or additional drawings under the said manner different from that provided for in the provision. preceding two sentences, failure to use that manner of claiming may result in an indication under Article Rule 8 17(2)(b) in the international search report. Failure to use the said manner of claiming shall have no The Abstract effect in a designated State if the manner of claiming actually used satis®es the national law of that State. 8.1 Contents and Form of the Abstract (b) Any dependent claim shall be construed as including all the limitations contained in the claim (a) The abstract shall consist of the following: to which it refers or, if the dependent claim is a (i) a summary of the disclosure as contained multiple dependent claim, all the limitations in the description, the claims, and any drawings; the contained in the particular claim in relation to which summary shall indicate the technical ®eld to which it is considered. the invention pertains and shall be drafted in a way (c) All dependent claims referring back to a which allows the clear understanding of the technical single previous claim, and all dependent claims problem, the gist of the solution of that problem referring back to several previous claims, shall be through the invention, and the principal use or uses grouped together to the extent and in the most of the invention; practical way possible. (ii) where applicable, the chemical formula 6.5 Utility Models which, among all the formulae contained in the international application, best characterizes the invention. Any designated State in which the grant of a is sought on the basis of an international (b) The abstract shall be as concise as the application may, instead of Rules 6.1 to 6.4, apply disclosure permits (preferably 50 to 150 words if it in respect of the matters regulated in those Rules the is in English or when translated into English).

T-37 Rev. 10.2019, June 2020 Rule 9 MANUAL OF PATENT EXAMINING PROCEDURE

(c) The abstract shall not contain statements on (i) expressions or drawings contrary to morality; the alleged merits or value of the claimed invention (ii) expressions or drawings contrary to public or on its speculative application. order; (d) Each main technical feature mentioned in (iii) statements disparaging the products or the abstract and illustrated by a drawing in the processes of any particular person other than the international application shall be followed by a applicant, or the merits or validity of applications or reference sign, placed between parentheses. patents of any such person (mere comparisons with 8.2 Figure the prior art shall not be considered disparaging per se); (a) If the applicant fails to make the indication (iv) any statement or other matter obviously referred to in Rule 3.3(a)(iii), or if the International irrelevant or unnecessary under the circumstances. Searching Authority ®nds that a ®gure or ®gures other than that ®gure or those ®gures suggested by 9.2 Noting of Lack of Compliance the applicant would, among all the ®gures of all the drawings, better characterize the invention, it shall, The receiving Of®ce, the International Searching subject to paragraph (b), indicate the ®gure or ®gures Authority, the Authority speci®ed for supplementary which should accompany the abstract when the latter search and the International Bureau may note lack is published by the International Bureau. In such of compliance with the prescriptions of Rule 9.1 and case, the abstract shall be accompanied by the ®gure may suggest to the applicant that he voluntarily or ®gures so indicated by the International Searching correct his international application accordingly, in Authority. Otherwise, the abstract shall, subject to which case the receiving Of®ce, the competent paragraph (b), be accompanied by the ®gure or International Searching Authority, the competent ®gures suggested by the applicant. Authority speci®ed for supplementary search and the International Bureau, as applicable, shall be (b) If the International Searching Authority ®nds informed of the suggestion. that none of the ®gures of the drawings is useful for the understanding of the abstract, it shall notify the International Bureau accordingly. In such case, the 9.3 Reference to Article 21(6) abstract, when published by the International Bureau, shall not be accompanied by any ®gure of the ªDisparaging statements,º referred to in Article drawings even where the applicant has made a 21(6), shall have the meaning as de®ned in Rule suggestion under Rule 3.3(a)(iii). 9.1(iii).

8.3 Guiding Principles in Drafting Rule 10

The abstract shall be so drafted that it can ef®ciently Terminology and Signs serve as a scanning tool for purposes of searching in the particular art, especially by assisting the scientist, engineer or researcher in formulating an 10.1 Terminology and Signs opinion on whether there is a need for consulting (a) Units of weights and measures shall be the international application itself. expressed in terms of the metric system, or also expressed in such terms if ®rst expressed in terms Rule 9 of a different system. Expressions, Etc., Not to Be Used (b) Temperatures shall be expressed in degrees Celsius, or also expressed in degrees Celsius, if ®rst expressed in a different manner. 9.1 De®nition (c) [Deleted] The international application shall not contain: (d) For indications of heat, energy, light, sound, and magnetism, as well as for mathematical formulae

Rev. 10.2019, June 2020 T-38 PATENT COOPERATION TREATY Rule 11

and electrical units, the rules of international practice (c) Only one side of each sheet shall be used. shall be observed; for chemical formulae, the (d) Subject to Rule 11.10(d) and Rule 11.13(j), symbols, atomic weights, and molecular formulae, each sheet shall be used in an upright position (i.e., in general use, shall be employed. the short sides at the top and bottom). (e) In general, only such technical terms, signs and symbols should be used as are generally 11.3 Material to Be Used accepted in the art. All elements of the international application shall (f) When the international application or its be on paper which shall be ¯exible, strong, white, translation is in Chinese, English or Japanese, the smooth, non-shiny, and durable. beginning of any decimal fraction shall be marked by a period, whereas, when the international 11.4 Separate Sheets, Etc. application or its translation is in a language other than Chinese, English or Japanese, it shall be marked (a) Each element (request, description, claims, by a comma. drawings, abstract) of the international application 10.2 Consistency shall commence on a new sheet. (b) All sheets of the international application The terminology and the signs shall be consistent shall be so connected that they can be easily turned throughout the international application. when consulted, and easily separated and joined again if they have been separated for reproduction Rule 11 purposes. 11.5 Size of Sheets Physical Requirements of the International Application The size of the sheets shall be A4 (29.7 cm x 21 cm). However, any receiving Of®ce may accept 11.1 Number of Copies international applications on sheets of other sizes provided that the record copy, as transmitted to the (a) Subject to the provisions of paragraph (b), International Bureau, and, if the competent the international application and each of the International Searching Authority so desires, the documents referred to in the check list (Rule search copy, shall be of A4 size. 3.3(a)(ii)) shall be ®led in one copy. (b) Any receiving Of®ce may require that the 11.6 Margins international application and any of the documents referred to in the check list (Rule 3.3(a)(ii)), except (a) The minimum margins of the sheets the receipt for the fees paid or the check for the containing the description, the claims, and the payment of the fees, be ®led in two or three copies. abstract, shall be as follows: In that case, the receiving Of®ce shall be responsible for verifying the identity of the second and the third - top: 2 cm copies with the record copy. - left side: 2.5 cm - right side: 2 cm 11.2 Fitness for Reproduction - bottom: 2 cm.

(a) All elements of the international application (b) The recommended maximum, for the (i.e., the request, the description, the claims, the margins provided for in paragraph (a), is as follows: drawings, and the abstract) shall be so presented as to admit of direct reproduction by photography, - top: 4 cm electrostatic processes, photo offset, and - left side: 4 cm micro®lming, in any number of copies. - right side: 3 cm (b) All sheets shall be free from creases and - bottom: 3 cm. cracks; they shall not be folded.

T-39 Rev. 10.2019, June 2020 Rule 11 MANUAL OF PATENT EXAMINING PROCEDURE

(c) On sheets containing drawings, the surface characters in the Chinese or Japanese language may, usable shall not exceed 26.2 cm x 17.0 cm. The when necessary, be written by hand or drawn. sheets shall not contain frames around the usable or (c) The typing shall be 1 1/2-spaced. used surface. The minimum margins shall be as follows: (d) All text matter shall be in characters the capital letters of which are not less than 0.28 cm - top: 2.5 cm high, and shall be in a dark, indelible color, - left side: 2.5 cm satisfying the requirements speci®ed in Rule 11.2, - right side: 1.5 cm provided that any text matter in the request may be - bottom: 1 cm. in characters the capital letters of which are not less than 0.21 cm high. (d) The margins referred to in paragraphs (a) to (e) As far as the spacing of the typing and the (c) apply to A4-size sheets, so that, even if the size of the characters are concerned, paragraphs (c) receiving Of®ce accepts other sizes, the A4-size and (d) shall not apply to texts in the Chinese or record copy and, when so required, the A4-size Japanese language. search copy shall leave the aforesaid margins. 11.10 Drawings, Formulae, and Tables, in (e) Subject to paragraph (f) and to Rule 11.8(b), Text Matter the margins of the international application, when submitted, must be completely blank. (a) The request, the description, the claims and (f) The top margin may contain in the left-hand the abstract shall not contain drawings. corner an indication of the applicant's ®le reference, (b) The description, the claims and the abstract provided that the reference appears within 1.5 cm may contain chemical or mathematical formulae. from the top of the sheet. The number of characters in the applicant's ®le reference shall not exceed the (c) The description and the abstract may contain maximum ®xed by the Administrative Instructions. tables; any claim may contain tables only if the subject matter of the claim makes the use of tables 11.7 Numbering of Sheets desirable. (a) All the sheets contained in the international (d) Tables and chemical or mathematical application shall be numbered in consecutive Arabic formulae may be placed sideways on the sheet if numerals. they cannot be presented satisfactorily in an upright position thereon; sheets on which tables or chemical (b) The numbers shall be centered at the top or or mathematical formulae are presented sideways bottom of the sheet, but shall not be placed in the shall be so presented that the tops of the tables or margin. formulae are at the left side of the sheet. 11.8 Numbering of Lines 11.11 Words in Drawings

(a) It is strongly recommended to number every (a) The drawings shall not contain text matter, ®fth line of each sheet of the description, and of each except a single word or words, when absolutely sheet of claims. indispensable, such as ªwater,º ªsteam,º ªopen,º (b) The numbers should appear in the right half ªclosed,º ªsection on AB,º and, in the case of of the left margin. electric circuits and block schematic or ¯ow sheet diagrams, a few short catchwords indispensable for 11.9 Writing of Text Matter understanding. (a) The request, the description, the claims and (b) Any words used shall be so placed that, if the abstract shall be typed or printed. translated, they may be pasted over without interfering with any lines of the drawings. (b) Only graphic symbols and characters, chemical or mathematical formulae, and certain

Rev. 10.2019, June 2020 T-40 PATENT COOPERATION TREATY Rule 12

11.12 Alterations, Etc. (j) The different ®gures shall be arranged on a sheet or sheets without wasting space, preferably in Each sheet shall be reasonably free from erasures an upright position, clearly separated from one and shall be free from alterations, overwritings, and another. Where the ®gures are not arranged in an interlineations. Non-compliance with this Rule may upright position, they shall be presented sideways be authorized if the authenticity of the content is not with the top of the ®gures at the left side of the sheet. in question and the requirements for good (k) The different ®gures shall be numbered in reproduction are not in jeopardy. Arabic numerals consecutively and independently of the numbering of the sheets. 11.13 Special Requirements for Drawings (l) Reference signs not mentioned in the description shall not appear in the drawings, and (a) Drawings shall be executed in durable, black, vice versa. suf®ciently dense and dark, uniformly thick and well-de®ned, lines and strokes without colorings. (m) The same features, when denoted by reference signs, shall, throughout the international (b) Cross-sections shall be indicated by oblique application, be denoted by the same signs. hatching which should not impede the clear reading of the reference signs and leading lines. (n) If the drawings contain a large number of reference signs, it is strongly recommended to attach (c) The scale of the drawings and the distinctness a separate sheet listing all reference signs and the of their graphical execution shall be such that a features denoted by them. photographic reproduction with a linear reduction in size to two-thirds would enable all details to be 11.14 Later Documents distinguished without dif®culty. (d) When, in exceptional cases, the scale is given Rules 10, and 11.1 to 11.13, also apply to any on a drawing, it shall be represented graphically. documentÐfor example, replacement sheets, amended claims, translationsÐsubmitted after the (e) All numbers, letters and reference lines, ®ling of the international application. appearing on the drawings, shall be simple and clear. Brackets, circles or inverted commas shall not be Rule 12 used in association with numbers and letters. (f) All lines in the drawings shall, ordinarily, be Language of the International Application drawn with the aid of drafting instruments. and Translations for the Purposes of (g) Each element of each ®gure shall be in International Search and International proper proportion to each of the other elements in Publication the ®gure, except where the use of a different proportion is indispensable for the clarity of the 12.1 Languages Accepted for the Filing of ®gure. International Applications (h) The height of the numbers and letters shall not be less than 0.32 cm. For the lettering of (a) An international application shall be ®led in drawings, the Latin and, where customary, the Greek any language which the receiving Of®ce accepts for alphabets shall be used. that purpose. (i) The same sheet of drawings may contain (b) Each receiving Of®ce shall, for the ®ling of several ®gures. Where ®gures on two or more sheets international applications, accept at least one form in effect a single complete ®gure, the ®gures language which is both: on the several sheets shall be so arranged that the (i) a language accepted by the International complete ®gure can be assembled without concealing Searching Authority, or, if applicable, by at least any part of any of the ®gures appearing on the one of the International Searching Authorities, various sheets. competent for the international searching of

T-41 Rev. 10.2019, June 2020 Rule 12 MANUAL OF PATENT EXAMINING PROCEDURE

international applications ®led with that receiving be in the language in which the application is ®led, Of®ce, and provided that: (ii) a language of publication. (i) where a translation of the international application is required under Rule 12.3(a), 12.4(a) (c) Notwithstanding paragraph (a), the request or 55.2(a), recti®cations referred to in Rule shall be ®led in any language of publication which 91.1(b)(ii) and (iii) shall be ®led in both the language the receiving Of®ce accepts for the purposes of this of the application and the language of that paragraph. translation; (d) Notwithstanding paragraph (a), any text (ii) where a translation of the request is matter contained in the sequence listing part of the required under Rule 26.3 ter(c), recti®cations description referred to in Rule 5.2(a) shall be referred to in Rule 91.1(b)(i) need only be ®led in presented in accordance with the standard provided the language of that translation. for in the Administrative Instructions. (c) Any correction under Rule 26 of a defect in 12.1 bis Language of Elements and Parts the international application shall be in the language Furnished under Rule 20.3, 20.5 or 20.6 in which the international application is ®led. Any correction under Rule 26 of a defect in a translation An element referred to in Article 11(1)(iii)(d) or (e) of the international application furnished under Rule furnished by the applicant under Rule 20.3(b) or 12.3 or 12.4, any correction under Rule 55.2(c) of a 20.6(a) and a part of the description, claims or defect in a translation furnished under Rule 55.2(a), drawings furnished by the applicant under or any correction of a defect in a translation of the Rule 20.5(b) or 20.6(a) shall be in the language of request furnished under Rule 26.3 ter(c), shall be in the international application as ®led or, where a the language of the translation. translation of the application is required under 12.3 Translation for the Purposes of Rule 12.3(a) or 12.4(a), in both the language of the International Search application as ®led and the language of that translation. (a) Where the language in which the international application is ®led is not accepted by 12.1 ter Language of Indications Furnished the International Searching Authority that is to carry under Rule 13 bis.4 out the international search, the applicant shall, within one month from the date of receipt of the Any indication in relation to deposited biological international application by the receiving Of®ce, material furnished under Rule 13 bis.4 shall be in furnish to that Of®ce a translation of the international the language in which the international application application into a language which is all of the is ®led, provided that, where a translation of the following: international application is required under Rule (i) a language accepted by that Authority, 12.3(a) or 12.4(a), any such indication shall be and furnished in both the language in which the application is ®led and the language of that (ii) a language of publication, and translation. (iii) a language accepted by the receiving Of®ce under Rule 12.1(a), unless the international 12.2 Language of Changes in the application is ®led in a language of publication. International Application (b) Paragraph (a) shall not apply to the request nor to any sequence listing part of the description. (a) Any amendment of the international application shall, subject to Rules 46.3 and 55.3, be (c) Where, by the time the receiving Of®ce sends in the language in which the application is ®led. to the applicant the noti®cation under Rule 20.2(c), the applicant has not furnished a translation required (b) Any recti®cation under Rule 91.1 of an under paragraph (a), the receiving Of®ce shall, obvious mistake in the international application shall

Rev. 10.2019, June 2020 T-42 PATENT COOPERATION TREATY Rule 12bis

preferably together with that noti®cation, invite the (c) Where the applicant has not, within the time applicant: limit referred to in paragraph (a), furnished a (i) to furnish the required translation within translation required under that paragraph, the the time limit under paragraph (a); receiving Of®ce shall invite the applicant to furnish the required translation, and to pay, where (ii) in the event that the required translation applicable, the late furnishing fee required under is not furnished within the time limit under paragraph paragraph (e), within 16 months from the priority (a), to furnish it and to pay, where applicable, the date. Any translation received by the receiving late furnishing fee referred to in paragraph (e), within Of®ce before that Of®ce sends the invitation under one month from the date of the invitation or two the previous sentence shall be considered to have months from the date of receipt of the international been received before the expiration of the time limit application by the receiving Of®ce, whichever under paragraph (a). expires later. (d) Where the applicant has not, within the time (d) Where the receiving Of®ce has sent to the limit under paragraph (c), furnished the required applicant an invitation under paragraph (c) and the translation and paid any required late furnishing fee, applicant has not, within the applicable time limit the international application shall be considered under paragraph (c)(ii), furnished the required withdrawn and the receiving Of®ce shall so declare. translation and paid any required late furnishing fee, Any translation and any payment received by the the international application shall be considered receiving Of®ce before that Of®ce makes the withdrawn and the receiving Of®ce shall so declare. declaration under the previous sentence and before Any translation and any payment received by the the expiration of 17 months from the priority date receiving Of®ce before that Of®ce makes the shall be considered to have been received before the declaration under the previous sentence and before expiration of that time limit. the expiration of 15 months from the priority date shall be considered to have been received before the (e) The furnishing of a translation after the expiration of that time limit. expiration of the time limit under paragraph (a) may be subjected by the receiving Of®ce to the payment (e) The furnishing of a translation after the to it, for its own bene®t, of a late furnishing fee equal expiration of the time limit under paragraph (a) may to 25% of the international ®ling fee referred to in be subjected by the receiving Of®ce to the payment item 1 of the Schedule of Fees, not taking into to it, for its own bene®t, of a late furnishing fee equal account any fee for each sheet of the international to 25% of the international ®ling fee referred to in application in excess of 30 sheets. item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international Rule 12bis application in excess of 30 sheets. Submission by the Applicant of Documents Relating to Earlier Search 12.4 Translation for the Purposes of International Publication 12 bis.1 Furnishing by the Applicant of (a) Where the language in which the Documents Related to Earlier Search in Case international application is ®led is not a language of of Request under Rule 4.12 publication and no translation is required under Rule 12.3(a), the applicant shall, within 14 months from (a) Where the applicant has, under Rule 4.12, the priority date, furnish to the receiving Of®ce a requested the International Searching Authority to translation of the international application into any take into account the results of an earlier search language of publication which the receiving Of®ce carried out by the same or another International accepts for the purposes of this paragraph. Searching Authority or by a national Of®ce, the applicant shall, subject to paragraphs (b) to (d), (b) Paragraph (a) shall not apply to the request submit to the receiving Of®ce, together with the nor to any sequence listing part of the description. international application, a copy of the results of the earlier search, in whatever form (for example, in the

T-43 Rev. 10.2019, June 2020 Rule 13 MANUAL OF PATENT EXAMINING PROCEDURE

form of a search report, a listing of cited prior art or (b) Where the earlier search was carried out by an examination report) they are presented by the the same International Searching Authority, or by Authority or Of®ce concerned. the same Of®ce as that which is acting as the (b) Where the earlier search was carried out by International Searching Authority, or where a copy the same Of®ce as that which is acting as the or translation referred to in paragraph (a) is available receiving Of®ce, the applicant may, instead of to the International Searching Authority in a form submitting the copy referred to in paragraph (a), and manner acceptable to it, for example, from a indicate the wish that the receiving Of®ce prepare digital library, or in the form of the priority and transmit it to the International Searching document, no copy or translation referred to in Authority. Such request shall be made in the request paragraph (a) shall be required to be submitted under and may be subjected by the receiving Of®ce to the that paragraph. payment to it, for its own bene®t, of a fee. (c) Where the request contains a statement under (c) Where the earlier search was carried out by Rule 4.12(ii) to the effect that the international the same International Searching Authority, or by application is the same, or substantially the same, the same Of®ce as that which is acting as the as the application in respect of which the earlier International Searching Authority, no copy referred search was carried out, or that the international to in paragraph (a) shall be required to be submitted application is the same, or substantially the same, under that paragraph. as that earlier application except that it is ®led in a different language, no copy or translation referred (d) Where a copy referred to in paragraph (a) is to in paragraphs (a)(i) and (ii) shall be required to available to the receiving Of®ce or the International be submitted under those paragraphs. Searching Authority in a form and manner acceptable to it, for example, from a digital library, and the Rule 13 applicant so indicates in the request, no copy shall be required to be submitted under that paragraph. Unity of Invention 12 bis.2 Invitation by the International 13.1 Requirement Searching Authority to Furnish Documents Related to Earlier Search in Case of Request The international application shall relate to one under Rule 4.12 invention only or to a group of inventions so linked as to form a single general inventive concept (a) The International Searching Authority may, (ªrequirement of unity of inventionº). subject to paragraphs (b) and (c), invite the applicant to furnish to it, within a time limit which shall be reasonable under the circumstances: 13.2 Circumstances in Which the Requirement of Unity of Invention Is to Be (i) a copy of the earlier application Considered Ful®lled concerned; (ii) where the earlier application is in a Where a group of inventions is claimed in one and language which is not accepted by the International the same international application, the requirement Searching Authority, a translation of the earlier of unity of invention referred to in Rule 13.1 shall application into a language which is accepted by that be ful®lled only when there is a technical Authority; relationship among those inventions involving one (iii) where the results of the earlier search or more of the same or corresponding special are in a language which is not accepted by the technical features. The expression ªspecial technical International Searching Authority, a translation of featuresº shall mean those technical features that those results into a language which is accepted by de®ne a contribution which each of the claimed that Authority; inventions, considered as a whole, makes over the prior art. (iv) a copy of any document cited in the results of the earlier search.

Rev. 10.2019, June 2020 T-44 PATENT COOPERATION TREATY Rule 13bis

13.3 Determination of Unity of Invention Not 13 bis.2 References (General) Affected by Manner of Claiming Any reference to deposited biological material shall The determination whether a group of inventions is be made in accordance with this Rule and, if so so linked as to form a single general inventive made, shall be considered as satisfying the concept shall be made without regard to whether the requirements of the national law of each designated inventions are claimed in separate claims or as State. alternatives within a single claim. 13 bis.3 References: Contents; Failure to 13.4 Dependent Claims Include Reference or Indication

Subject to Rule 13.1, it shall be permitted to include (a) A reference to deposited biological material in the same international application a reasonable shall indicate: number of dependent claims, claiming speci®c forms (i) the name and the address of the depositary of the invention claimed in an independent claim, institution with which the deposit was made; even where the features of any dependent claim could be considered as constituting in themselves (ii) the date of deposit of the biological an invention. material with that institution; (iii) the accession number given to the 13.5 Utility Models deposit by that institution; and (iv) any additional matter of which the Any designated State in which the grant of a utility International Bureau has been noti®ed pursuant to model is sought on the basis of an international Rule 13 bis.7(a)(i), provided that the requirement to application may, instead of Rules 13.1 to 13.4, apply indicate that matter was published in the Gazette in in respect of the matters regulated in those Rules the accordance with Rule 13 bis.7(c) at least two months provisions of its national law concerning utility before the ®ling of the international application. models once the processing of the international (b) Failure to include a reference to deposited application has started in that State, provided that biological material or failure to include, in a the applicant shall be allowed at least two months reference to deposited biological material, an from the expiration of the time limit applicable under indication in accordance with paragraph (a), shall Article 22 to adapt his application to the have no consequence in any designated State whose requirements of the said provisions of the national national law does not require such reference or such law. indication in a national application. Rule 13bis 13 bis.4 References: Time Limit for Furnishing Indications Inventions Relating to Biological Material (a) Subject to paragraphs (b) and (c), if any of 13 bis.1 De®nition the indications referred to in Rule 13 bis.3(a) is not included in a reference to deposited biological material in the international application as ®led but For the purposes of this Rule, ªreference to deposited is furnished to the International Bureau: biological materialº means particulars given in an international application with respect to the deposit (i) within 16 months from the priority date, of biological material with a depositary institution the indication shall be considered by any designated or to the biological material so deposited. Of®ce 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 Of®ce to have been furnished on the last day of that time limit if it reaches the

T-45 Rev. 10.2019, June 2020 Rule 13bis MANUAL OF PATENT EXAMINING PROCEDURE

International Bureau before the technical (b) References to different deposits of the preparations for international publication have been biological material may be made for different completed. designated States. (b) If the national law applicable by a designated (c) Any designated Of®ce may disregard a Of®ce so requires in respect of national applications, deposit made with a depositary institution other than that Of®ce may require that any of the indications one noti®ed by it under Rule 13 bis.7(b). referred to in Rule 13 bis.3(a) be furnished earlier 13 bis.6 Furnishing of Samples than 16 months from the priority date, provided that the International Bureau has been noti®ed of such Pursuant to Articles 23 and 40, no furnishing of requirement pursuant to Rule 13 bis.7(a)(ii) and has samples of the deposited biological material to which published such requirement in the Gazette in a reference is made in an international application accordance with Rule 13 bis.7(c) at least two months shall, except with the authorization of the applicant, before the ®ling of the international application. take place before the expiration of the applicable (c) Where the applicant makes a request for early time limits after which national processing may start publication under Article 21(2)(b), any designated under the said Articles. However, where the Of®ce may consider any indication not furnished applicant performs the acts referred to in Articles 22 before the technical preparations for international or 39 after international publication but before the publication have been completed as not having been expiration of the said time limits, the furnishing of furnished in time. samples of the deposited biological material may (d) The International Bureau shall notify the take place, once the said acts have been performed. applicant of the date on which it received any Notwithstanding the previous provision, the indication furnished under paragraph (a), and: furnishing of samples of the deposited biological material may take place under the national law (i) if the indication was received before the applicable by any designated Of®ce as soon as, under technical preparations for international publication that law, the international publication has the effects have been completed, publish the indication of the compulsory national publication of an furnished under paragraph (a), and an indication of unexamined national application. the date of receipt, together with the international application; 13 bis.7 National Requirements: Noti®cation (ii) if the indication was received after the and Publication technical preparations for international publication have been completed, notify that date and the (a) Any national Of®ce may notify the relevant data from the indication to the designated International Bureau of any requirement of the Of®ces. national law: 13 bis.5 References and Indications for the (i) that any matter speci®ed in the Purposes of One or More Designated States; noti®cation, in addition to those referred to in Rule Different Deposits for Different Designated 13 bis.3(a)(i), (ii) and (iii), is required to be included States; Deposits with Depositary Institutions in a reference to deposited biological material in a national application; Other than Those Noti®ed (ii) that one or more of the indications (a) A reference to deposited biological material referred to in Rule 13 bis.3(a) are required to be shall be considered to be made for the purposes of included in a national application as ®led or are all designated States, unless it is expressly made for required to be furnished at a time speci®ed in the the purposes of certain of the designated States only; noti®cation which is earlier than 16 months from the same applies to the indications included in the the priority date. reference. (b) Each national Of®ce shall notify the International Bureau of the depositary institutions with which the national law permits deposits of biological materials to be made for the purposes of

Rev. 10.2019, June 2020 T-46 PATENT COOPERATION TREATY Rule 13ter

patent procedure before that Of®ce or, if the national taking into account any fee for each sheet of the law does not provide for or permit such deposits, of international application in excess of 30 sheets, that fact. provided that a late furnishing fee may be required (c) The International Bureau shall promptly under either paragraph (a) or (b) but not both. publish in the Gazette requirements noti®ed to it (d) If the applicant does not, within the time limit under paragraph (a) and information noti®ed to it ®xed in the invitation under paragraph (a) or under paragraph (b). (b), furnish the required sequence listing and pay any required late furnishing fee, the International Rule 13ter Searching Authority shall only be required to search the international application to the extent that a Nucleotide and/or Amino Acid Sequence meaningful search can be carried out without the Listings sequence listing. (e) Any sequence listing not contained in the 13 ter.1 Procedure before the International international application as ®led, whether furnished Searching Authority in response to an invitation under paragraph (a) or (b) or otherwise, shall not form part of the (a) Where the international application contains international application, but this paragraph shall disclosure of one or more nucleotide and/or amino not prevent the applicant from amending the acid sequences, the International Searching Authority description in relation to a sequence listing pursuant may invite the applicant to furnish to it, for the to Article 34(2)(b). purposes of the international search, a sequence listing in electronic form complying with the (f) Where the International Searching Authority standard provided for in the Administrative ®nds that the description does not comply with Rule Instructions, unless such listing in electronic form 5.2(b), it shall invite the applicant to submit the is already available to it in a form and manner required correction. Rule 26.4 shall apply mutatis acceptable to it, and to pay to it, where applicable, mutandis to any correction offered by the applicant. the late furnishing fee referred to in paragraph (c), The International Searching Authority shall transmit within a time limit ®xed in the invitation. the correction to the receiving Of®ce and to the International Bureau. (b) Where at least part of the international application is ®led on paper and the International 13 ter.2 Procedure before the International Searching Authority ®nds that the description does Preliminary Examining Authority not comply with Rule 5.2(a), it may invite the applicant to furnish, for the purposes of the Rule 13 ter.1 shall apply mutatis mutandis to the international search, a sequence listing in paper form procedure before the International Preliminary complying with the standard provided for in the Examining Authority. Administrative Instructions, unless such listing in paper form is already available to it in a form and 13 ter.3 Sequence Listing for Designated manner acceptable to it, whether or not the furnishing Of®ce of a sequence listing in electronic form is invited under paragraph (a), and to pay, where applicable, No designated Of®ce shall require the applicant to the late furnishing fee referred to in paragraph (c), furnish to it a sequence listing other than a sequence within a time limit ®xed in the invitation. listing complying with the standard provided for in (c) The furnishing of a sequence listing in the Administrative Instructions. response to an invitation under paragraph (a) or (b) may be subjected by the International Searching Authority to the payment to it, for its own bene®t, of a late furnishing fee whose amount shall be determined by the International Searching Authority but shall not exceed 25% of the international ®ling fee referred to in item 1 of the Schedule of Fees, not

T-47 Rev. 10.2019, June 2020 Rule 14 MANUAL OF PATENT EXAMINING PROCEDURE

Rule 14 payment of the international ®ling fee, an equivalent amount of that fee in the prescribed currency The Transmittal Fee according to directives given by the Assembly, and the amount in that currency shall promptly be 14.1 The Transmittal Fee transferred by the receiving Of®ce to the International Bureau; (a) Any receiving Of®ce may require that the (ii) is not freely convertible into Swiss francs, applicant pay a fee to it, for its own bene®t, for the receiving Of®ce shall be responsible for the receiving the international application, transmitting conversion of the international ®ling fee from the copies to the International Bureau and the competent prescribed currency into Swiss francs and shall International Searching Authority, and performing promptly transfer that fee in Swiss francs, in the all the other tasks which it must perform in amount set out in the Schedule of Fees, to the connection with the international application in its International Bureau. Alternatively, if the receiving capacity of receiving Of®ce (ªtransmittal feeº). Of®ce so wishes, it may convert the international (b) The amount of the transmittal fee, if any, ®ling fee from the prescribed currency into euros or shall be ®xed by the receiving Of®ce. US dollars and promptly transfer the equivalent amount of that fee in euros or US dollars, as (c) The transmittal fee shall be paid within one established by the Director General according to month from the date of receipt of the international directives given by the Assembly as referred to in application. The amount payable shall be the amount item (i), to the International Bureau. applicable on that date of receipt. 15.3 Time Limit for Payment; Amount Rule 15 Payable The International Filing Fee The international ®ling fee shall be paid to the receiving Of®ce within one month from the date of 15.1 The International Filing Fee receipt of the international application. The amount payable shall be the amount applicable on that date Each international application shall be subject to the of receipt. payment of a fee for the bene®t of the International Bureau (ªinternational ®ling feeº) to be collected 15.4 Refund by the receiving Of®ce. The receiving Of®ce shall refund the international 15.2 Amount ®ling fee to the applicant:

(a) The amount of the international ®ling fee is (i) if the determination under Article 11(1) is as set out in the Schedule of Fees. negative, (b) The international ®ling fee shall be payable (ii) if, before the transmittal of the record copy in the currency or one of the currencies prescribed to the International Bureau, the international by the receiving Of®ce ("prescribed currency"). application is withdrawn or considered withdrawn, (c) Where the prescribed currency is the Swiss or franc, the receiving Of®ce shall promptly transfer (iii) if, due to prescriptions concerning national the said fee to the International Bureau in Swiss security, the international application is not treated francs. as such. (d) Where the prescribed currency is a currency other than the Swiss franc and that currency: (i) is freely convertible into Swiss francs, the Director General shall establish, for each receiving Of®ce which prescribes such a currency for the

Rev. 10.2019, June 2020 T-48 PATENT COOPERATION TREATY Rule 16bis

Rule 16 received is more, the difference will belong to the International Bureau. The Search Fee (f) As to the time limit for payment of the search fee and the amount payable, the provisions of Rule 16.1 Right to Ask for a Fee 15.3 relating to the international ®ling fee shall apply mutatis mutandis. (a) Each International Searching Authority may 16.2 Refund require that the applicant pay a fee (ªsearch feeº) for its own bene®t for carrying out the international The receiving Of®ce shall refund the search fee to search and for performing all other tasks entrusted the applicant: to International Searching Authorities by the Treaty and these Regulations. (i) if the determination under Article 11(1) is (b) The search fee shall be collected by the negative, receiving Of®ce. The said fee shall be payable in (ii) if, before the transmittal of the search copy the currency prescribed by that Of®ce (ªprescribed to the International Searching Authority, the currencyº). international application is withdrawn or considered (c) Where the prescribed currency is the withdrawn, or currency in which the International Searching (iii) if, due to prescriptions concerning national Authority has ®xed the said fee (ª®xed currencyº), security, the international application is not treated the receiving Of®ce shall promptly transfer the said as such. fee to that Authority in that currency. (d) Where the prescribed currency is not the 16.3 Partial Refund ®xed currency and that currency: Where the International Searching Authority takes (i) is freely convertible into the ®xed into account, under Rule 41.1, the results of an currency, the Director General shall establish, for earlier search in carrying out the international search, each receiving Of®ce which prescribes such a that Authority shall refund the search fee paid in currency for the payment of the search fee, an connection with the international application to the equivalent amount of that fee in the prescribed extent and under the conditions provided for in the currency according to directives given by the agreement under Article 16(3)(b). Assembly, and the amount in that currency shall promptly be transferred by the receiving Of®ce to the International Searching Authority; Rule 16bis (ii) is not freely convertible into the ®xed Extension of Time Limits for Payment of Fees currency, the receiving Of®ce shall be responsible for the conversion of the search fee from the prescribed currency into the ®xed currency and shall 16 bis.1 Invitation by the Receiving Of®ce promptly transfer that fee in the ®xed currency, in (a) Where, by the time they are due under Rules the amount ®xed by the International Searching 14.1(c), 15.3 and 16.1(f), the receiving Of®ce ®nds Authority, to the International Searching Authority. that no fees were paid to it, or that the amount paid (e) Where, in respect of the payment of the to it is insuf®cient to cover the transmittal fee, the search fee in a prescribed currency, other than the international ®ling fee and the search fee, the ®xed currency, the amount actually received under receiving Of®ce shall, subject to paragraph (d), invite paragraph (d)(i) of this Rule by the International the applicant to pay to it the amount required to Searching Authority in the prescribed currency is, cover those fees, together with, where applicable, when converted by it into the ®xed currency, less the late payment fee under Rule 16 bis.2, within a than that ®xed by it, the difference will be paid to time limit of one month from the date of the the International Searching Authority by the invitation. International Bureau, whereas, if the amount actually (b) [Deleted]

T-49 Rev. 10.2019, June 2020 Rule 17 MANUAL OF PATENT EXAMINING PROCEDURE

(c) Where the receiving Of®ce has sent to the a copy of that earlier application, certi®ed by the applicant an invitation under paragraph (a) and the authority with which it was ®led (ªthe priority applicant has not, within the time limit referred to documentº), shall, unless that priority document has in that paragraph, paid in full the amount due, already been ®led with the receiving Of®ce together including, where applicable, the late payment fee with the international application in which the under Rule 16 bis.2, the receiving Of®ce shall, priority claim is made, and subject to paragraphs (b) subject to paragraph (e): and (b -bis), be submitted by the applicant to the (i) make the applicable declaration under International Bureau or to the receiving Of®ce not Article 14(3), and later than 16 months after the priority date, provided that any copy of the said earlier application which (ii) proceed as provided in Rule 29. is received by the International Bureau after the (d) Any payment received by the receiving expiration of that time limit shall be considered to Of®ce before that Of®ce sends the invitation under have been received by that Bureau on the last day paragraph (a) shall be considered to have been of that time limit if it reaches it before the date of received before the expiration of the time limit under international publication of the international Rule 14.1(c), 15.3 or 16.1(f), as the case may be. application. (e) Any payment received by the receiving (b) Where the priority document is issued by the Of®ce before that Of®ce makes the applicable receiving Of®ce, the applicant may, instead of declaration under Article 14(3) shall be considered submitting the priority document, request the to have been received before the expiration of the receiving Of®ce to prepare and transmit the priority time limit referred to in paragraph (a). document to the International Bureau. Such request shall be made not later than 16 months after the 16 bis.2 Late Payment Fee priority date and may be subjected by the receiving Of®ce to the payment of a fee. (a) The payment of fees in response to an invitation under Rule 16 bis.1(a) may be subjected (b-bis) Where the priority document is, in by the receiving Of®ce to the payment to it, for its accordance with the Administrative Instructions, own bene®t, of a late payment fee. The amount of made available to the International Bureau from a that fee shall be: digital library prior to the date of international publication of the international application, the (i) 50% of the amount of unpaid fees which applicant may, instead of submitting the priority is speci®ed in the invitation, or, document, request the International Bureau, prior to (ii) if the amount calculated under item (i) is the date of international publication, to obtain the less than the transmittal fee, an amount equal to the priority document from such digital library. transmittal fee. (c) If the requirements of none of the three (b) The amount of the late payment fee shall not, preceding paragraphs are complied with, any however, exceed the amount of 50% of the designated Of®ce may, subject to paragraph (d), international ®ling fee referred to in item 1 of the disregard the priority claim, provided that no Schedule of Fees, not taking into account any fee designated Of®ce shall disregard the priority claim for each sheet of the international application in before giving the applicant an opportunity to furnish excess of 30 sheets. the priority document within a time limit which shall be reasonable under the circumstances. Rule 17 (d) No designated Of®ce shall disregard the priority claim under paragraph (c) if the earlier The Priority Document application referred to in paragraph (a) was ®led with it in its capacity as national Of®ce or if the 17.1 Obligation to Submit Copy of Earlier priority document is, in accordance with the National or International Application Administrative Instructions, available to it from a digital library. (a) Where the priority of an earlier national or international application is claimed under Article 8,

Rev. 10.2019, June 2020 T-50 PATENT COOPERATION TREATY Rule 18

17.2 Availability of Copies Contracting State shall be considered residence in that State, and (a) Where the applicant has complied with Rule (ii) a legal entity constituted according to the 17.1(a), (b) or (b- bis), the International Bureau shall, national law of a Contracting State shall be at the speci®c request of the designated Of®ce, considered a national of that State. promptly but not prior to the international publication of the international application, furnish a copy of (c) Where the international application is ®led the priority document to that Of®ce. No such Of®ce with the International Bureau as receiving Of®ce, shall ask the applicant himself to furnish it with a the International Bureau shall, in the circumstances copy. The applicant shall not be required to furnish speci®ed in the Administrative Instructions, request a translation to the designated Of®ce before the the national Of®ce of, or acting for, the Contracting expiration of the applicable time limit under Article State concerned to decide the question referred to in 22. Where the applicant makes an express request paragraph (a). The International Bureau shall inform to the designated Of®ce under Article 23(2) prior to the applicant of any such request. The applicant shall the international publication of the international have an opportunity to submit arguments directly to application, the International Bureau shall, at the the national Of®ce. The national Of®ce shall decide speci®c request of the designated Of®ce, furnish a the said question promptly. copy of the priority document to that Of®ce promptly 18.2 [Deleted] after receiving it. (b) The International Bureau shall not make 18.3 Two or More Applicants copies of the priority document available to the public prior to the international publication of the If there are two or more applicants, the right to ®le international application. an international application shall exist if at least one (c) Where the international application has been of them is entitled to ®le an international application published under Article 21, the International Bureau according to Article 9. shall furnish a copy of the priority document to any person upon request and subject to reimbursement 18.4 Information on Requirements under of the cost unless, prior to that publication: National Law as to Applicants (i) the international application was withdrawn, (a) and (b) [Deleted] (ii) the relevant priority claim was withdrawn (c) The International Bureau shall, from time to or considered, under Rule 26 bis.2(b), not to have time, publish information on the various national been made. laws in respect of the question who is quali®ed (inventor, successor in title of the inventor, owner Rule 18 of the invention, or other) to ®le a national application and shall accompany such information The Applicant by a warning that the effect of the international application in any designated State may depend on 18.1 Residence and Nationality whether the person designated in the international application as applicant for the purposes of that State (a) Subject to the provisions of paragraphs (b) is a person who, under the national law of that State, and (c), the question whether an applicant is a is quali®ed to ®le a national application. resident or national of the Contracting State of which he claims to be a resident or national shall depend on the national law of that State and shall be decided by the receiving Of®ce. (b) In any case, (i) possession of a real and effective industrial or commercial establishment in a

T-51 Rev. 10.2019, June 2020 Rule 19 MANUAL OF PATENT EXAMINING PROCEDURE

Rule 19 (ii) the international application may be ®led with the International Bureau under Rule 19.1(a)(iii) The Competent Receiving Of®ce if at least one of the applicants is a resident or national of a Contracting State. 19.1 Where to File 19.3 Publication of Fact of Delegation of Duties of Receiving Of®ce (a) Subject to the provisions of paragraph (b), the international application shall be ®led, at the (a) Any agreement referred to in Rule 19.1(b) option of the applicant, shall be promptly noti®ed to the International Bureau (i) with the national Of®ce of or acting for by the Contracting State which delegates the duties the Contracting State of which the applicant is a of the receiving Of®ce to the national Of®ce of or resident, acting for another Contracting State or an intergovernmental organization. (ii) with the national Of®ce of or acting for the Contracting State of which the applicant is a (b) The International Bureau shall, promptly national, or upon receipt, publish the noti®cation in the Gazette. (iii) irrespective of the Contracting State of 19.4 Transmittal to the International Bureau which the applicant is a resident or national, with as Receiving Of®ce the International Bureau. (b) Any Contracting State may agree with (a) Where an international application is ®led another Contracting State or any intergovernmental with a national Of®ce which acts as a receiving organization that the national Of®ce of the latter Of®ce under the Treaty but State or the intergovernmental organization shall, (i) that national Of®ce is not competent under for all or some purposes, act instead of the national Rule 19.1 or 19.2 to receive that international Of®ce of the former State as receiving Of®ce for application, or applicants who are residents or nationals of that (ii) that international application is not in a former State. Notwithstanding such agreement, the language accepted under Rule 12.1(a) by that national Of®ce of the former State shall be national Of®ce but is in a language accepted under considered the competent receiving Of®ce for the that Rule by the International Bureau as receiving purposes of Article 15(5). Of®ce, or (c) In connection with any decision made under (iii) that national Of®ce and the International Article 9(2), the Assembly shall appoint the national Bureau agree, for any reason other than those Of®ce or the intergovernmental organization which speci®ed under items (i) and (ii), and with the will act as receiving Of®ce for applications of authorization of the applicant, that the procedure residents or nationals of States speci®ed by the under this Rule should apply, that international Assembly. Such appointment shall require the application shall, subject to paragraph (b), be previous consent of the said national Of®ce or considered to have been received by that Of®ce on intergovernmental organization. behalf of the International Bureau as receiving Of®ce 19.2 Two or More Applicants under Rule 19.1(a)(iii). (b) Where, pursuant to paragraph (a), an If there are two or more applicants: international application is received by a national Of®ce on behalf of the International Bureau as (i) the requirements of Rule 19.1 shall be receiving Of®ce under Rule 19.1(a)(iii), that national considered to be met if the national Of®ce with Of®ce shall, unless prescriptions concerning national which the international application is ®led is the security prevent the international application from national Of®ce of or acting for a Contracting State being so transmitted, promptly transmit it to the of which at least one of the applicants is a resident International Bureau. Such transmittal may be or national; subjected by the national Of®ce to the payment of a fee, for its own bene®t, equal to the transmittal fee

Rev. 10.2019, June 2020 T-52 PATENT COOPERATION TREATY Rule 20

charged by that Of®ce under Rule 14. The 20.2 Positive Determination under Article international application so transmitted shall be 11(1) considered to have been received by the International Bureau as receiving Of®ce under Rule 19.1(a)(iii) (a) If the receiving Of®ce determines that, at on the date of receipt of the international application the time of receipt of the papers purporting to be an by that national Of®ce. international application, the requirements of Article (c) For the purposes of Rules 14.1(c), 15.3 and 11(1) were ful®lled, the receiving Of®ce shall accord 16.1(f), where the international application was as the international ®ling date the date of receipt of transmitted to the International Bureau under the international application. paragraph (b), the date of receipt of the international (b) The receiving Of®ce shall stamp the request application shall be considered to be the date on of the international application which it has accorded which the international application was actually an international ®ling date as prescribed by the received by the International Bureau. For the Administrative Instructions. The copy whose request purposes of this paragraph, the last sentence of has been so stamped shall be the record copy of the paragraph (b) shall not apply. international application. Rule 20 (c) The receiving Of®ce shall promptly notify the applicant of the international application number International Filing Date and the international ®ling date. At the same time, it shall send to the International Bureau a copy of 20.1 Determination under Article 11(1) the noti®cation sent to the applicant, except where it has already sent, or is sending at the same time, (a) Promptly after receipt of the papers the record copy to the International Bureau under purporting to be an international application, the Rule 22.1(a). receiving Of®ce shall determine whether the papers 20.3 Defects under Article 11(1) ful®ll the requirements of Article 11(1). (b) For the purposes of Article 11(1)(iii)(c), it (a) Where, in determining whether the papers shall be suf®cient to indicate the name of the purporting to be an international application ful®ll applicant in a way which allows the identity of the the requirements of Article 11(1), the receiving applicant to be established even if the name is Of®ce ®nds that any of the requirements of Article misspelled, the given names are not fully indicated, 11(1) are not, or appear not to be ful®lled, it shall or, in the case of legal entities, the indication of the promptly invite the applicant, at the applicant's name is abbreviated or incomplete. option: (c) For the purposes of Article 11(1)(ii), it shall (i) to furnish the required correction under be suf®cient that the part which appears to be a Article 11(2); or description (other than any sequence listing part (ii) where the requirements concerned are thereof) and the part which appears to be a claim or those relating to an element referred to in Article claims be in a language accepted by the receiving 11(1)(iii)(d) or (e), to con®rm in accordance with Of®ce under Rule 12.1(a). Rule 20.6(a) that the element is incorporated by (d) If, on October 1, 1997, paragraph (c) is not reference under Rule 4.18; compatible with the national law applied by the receiving Of®ce, paragraph (c) shall not apply to and to make observations, if any, within the that receiving Of®ce for as long as it continues not applicable time limit under Rule 20.7. If that time to be compatible with that law, provided that the limit expires after the expiration of 12 months from said Of®ce informs the International Bureau the ®ling date of any application whose priority is accordingly by December 31, 1997. The information claimed, the receiving Of®ce shall call that received shall be promptly published by the circumstance to the attention of the applicant. International Bureau in the Gazette. (b) Where, following an invitation under paragraph (a) or otherwise:

T-53 Rev. 10.2019, June 2020 Rule 20 MANUAL OF PATENT EXAMINING PROCEDURE

(i) the applicant furnishes to the receiving 20.5 Missing Parts Of®ce the required correction under Article 11(2) after the date of receipt of the purported international (a) Where, in determining whether the papers application but on a later date falling within the purporting to be an international application ful®ll applicable time limit under Rule 20.7, the receiving the requirements of Article 11(1), the receiving Of®ce shall accord that later date as the international Of®ce ®nds that a part of the description, claims or ®ling date and proceed as provided in Rule 20.2(b) drawings is or appears to be missing, including the and (c); case where all of the drawings are or appear to be missing but not including the case where an entire (ii) an element referred to in element referred to in Article 11(1)(iii)(d) or (e) is Article 11(1)(iii)(d) or (e) is, under Rule 20.6(b), or appears to be missing, it shall promptly invite the considered to have been contained in the applicant, at the applicant's option: international application on the date on which one or more elements referred to in Article 11(1)(iii) (i) to complete the purported international were ®rst received by the receiving Of®ce, the application by furnishing the missing part; or receiving Of®ce shall accord as the international (ii) to con®rm, in accordance with ®ling date the date on which all of the requirements Rule 20.6(a), that the part was incorporated by of Article 11(1) are ful®lled and proceed as provided reference under Rule 4.18; in Rule 20.2(b) and (c). (c) If the receiving Of®ce later discovers, or on and to make observations, if any, within the the basis of the applicant's reply realizes, that it has applicable time limit under Rule 20.7. If that time erred in issuing an invitation under paragraph (a) limit expires after the expiration of 12 months from since the requirements of Article 11(1) were ful®lled the ®ling date of any application whose priority is when the papers were received, it shall proceed as claimed, the receiving Of®ce shall call that provided in Rule 20.2. circumstance to the attention of the applicant. 20.4 Negative Determination under Article (b) Where, following an invitation under 11(1) paragraph (a) or otherwise, the applicant furnishes to the receiving Of®ce, on or before the date on which all of the requirements of Article 11(1) are If the receiving Of®ce does not receive, within the ful®lled but within the applicable time limit under applicable time limit under Rule 20.7, a correction Rule 20.7, a missing part referred to in paragraph or con®rmation referred to in Rule 20.3(a), or if a (a) so as to complete the international application, correction or con®rmation has been received but the that part shall be included in the application and the application still does not ful®ll the requirements of receiving Of®ce shall accord as the international Article 11(1), the receiving Of®ce shall: ®ling date the date on which all of the requirements of Article 11(1) are ful®lled and proceed as provided (i) promptly notify the applicant that the in Rule 20.2(b) and (c). application is not and will not be treated as an international application and shall indicate the (c) Where, following an invitation under reasons therefor; paragraph (a) or otherwise, the applicant furnishes to the receiving Of®ce, after the date on which all (ii) notify the International Bureau that the of the requirements of Article 11(1) were ful®lled number it has marked on the papers will not be used but within the applicable time limit under Rule 20.7, as an international application number; a missing part referred to in paragraph (a) so as to (iii) keep the papers constituting the purported complete the international application, that part shall international application and any correspondence be included in the application, and the receiving relating thereto as provided in Rule 93.1; and Of®ce shall correct the international ®ling date to (iv) send a copy of the said papers to the the date on which the receiving Of®ce received that International Bureau where, pursuant to a request part, notify the applicant accordingly and proceed by the applicant under Article 25(1), the International as provided for in the Administrative Instructions. Bureau needs such a copy and specially asks for it.

Rev. 10.2019, June 2020 T-54 PATENT COOPERATION TREATY Rule 20

(d) Where, following an invitation under (iv) in the case of a part of the description, paragraph (a) or otherwise, a part referred to in claims or drawings, an indication as to where that paragraph (a) is, under Rule 20.6(b), considered to part is contained in the earlier application and, where have been contained in the purported international applicable, in any translation referred to in item (iii). application on the date on which one or more elements referred to in Article 11(1)(iii) were ®rst (b) Where the receiving Of®ce ®nds that the received by the receiving Of®ce, the receiving Of®ce requirements of Rule 4.18 and paragraph (a) have shall accord as the international ®ling date the date been complied with and that the element or part on which all of the requirements of Article 11(1) are referred to in paragraph (a) is completely contained ful®lled and proceed as provided in Rule 20.2(b) in the earlier application concerned, that element or and (c). part shall be considered to have been contained in the purported international application on the date (e) Where the international ®ling date has been on which one or more elements referred to in Article corrected under paragraph (c), the applicant may, in 11(1)(iii) were ®rst received by the receiving Of®ce. a notice submitted to the receiving Of®ce within one month from the date of the noti®cation under (c) Where the receiving Of®ce ®nds that a paragraph (c), request that the missing part requirement under Rule 4.18 or paragraph (a) has concerned be disregarded, in which case the missing not been complied with or that the element or part part shall be considered not to have been furnished referred to in paragraph (a) is not completely and the correction of the international ®ling date contained in the earlier application concerned, the under that paragraph shall be considered not to have receiving Of®ce shall proceed as provided for in been made, and the receiving Of®ce shall proceed Rule 20.3(b)(i), 20.5(b) or 20.5(c), as the case may as provided for in the Administrative Instructions. be. 20.6 Con®rmation of Incorporation by 20.7 Time Limit Reference of Elements and Parts (a) The applicable time limit referred to in (a) The applicant may submit to the receiving Rules 20.3(a) and (b), 20.4, 20.5(a), (b) and (c), Of®ce, within the applicable time limit under and 20.6(a) shall be: Rule 20.7, a written notice con®rming that an (i) where an invitation under Rule 20.3(a) element or part is incorporated by reference in the or 20.5(a), as applicable, was sent to the applicant, international application under Rule 4.18, two months from the date of the invitation; accompanied by: (ii) where no such invitation was sent to the (i) a sheet or sheets embodying the entire applicant, two months from the date on which one element as contained in the earlier application or or more elements referred to in Article 11(1)(iii) embodying the part concerned; were ®rst received by the receiving Of®ce. (ii) where the applicant has not already (b) Where neither a correction under Article complied with Rule 17.1(a), (b) or (b- bis) in relation 11(2) nor a notice under Rule 20.6(a) con®rming to the priority document, a copy of the earlier the incorporation by reference of an element referred application as ®led; to in Article 11(1)(iii)(d) or (e) is received by the (iii) where the earlier application is not in receiving Of®ce prior to the expiration of the the language in which the international application applicable time limit under paragraph (a), any such is ®led, a translation of the earlier application into correction or notice received by that Of®ce after the that language or, where a translation of the expiration of that time limit but before it sends a international application is required under noti®cation to the applicant under Rule 20.4(i) shall Rule 12.3(a) or 12.4(a), a translation of the earlier be considered to have been received within that time application into both the language in which the limit. international application is ®led and the language of 20.8 Incompatibility with National Laws that translation; and (a) If, on October 5, 2005, any of Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d),

T-55 Rev. 10.2019, June 2020 Rule 21 MANUAL OF PATENT EXAMINING PROCEDURE

and 20.6 are not compatible with the national law Rule 21 applied by the receiving Of®ce, the Rules concerned shall not apply to an international application ®led Preparation of Copies with that receiving Of®ce for as long as they continue not to be compatible with that law, provided that the said Of®ce informs the International Bureau 21.1 Responsibility of the Receiving Of®ce accordingly by April 5, 2006. The information (a) Where the international application is received shall be promptly published by the required to be ®led in one copy, the receiving Of®ce International Bureau in the Gazette. shall be responsible for preparing the home copy (a-bis) Where a missing element or part cannot and the search copy required under Article 12(1). be incorporated by reference in the international (b) Where the international application is application under Rules 4.18 and 20.6 because of required to be ®led in two copies, the receiving the operation of paragraph (a) of this Rule, the Of®ce shall be responsible for preparing the home receiving Of®ce shall proceed as provided for in copy. Rule 20.3(b)(i), 20.5(b) or 20.5(c), as the case may be. Where the receiving Of®ce proceeds as provided (c) If the international application is ®led in less for in Rule 20.5(c), the applicant may proceed as than the number of copies required under Rule provided for in Rule 20.5(e). 11.1(b), the receiving Of®ce shall be responsible for the prompt preparation of the number of copies (b) If, on October 5, 2005, any of required, and shall have the right to ®x a fee for Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), performing that task and to collect such fee from the and 20.6 are not compatible with the national law applicant. applied by the designated Of®ce, the Rules concerned shall not apply in respect of that Of®ce 21.2 Certi®ed Copy for the Applicant in relation to an international application in respect of which the acts referred to in Article 22 have been Against payment of a fee, the receiving Of®ce shall performed before that Of®ce for as long as they furnish to the applicant, on request, certi®ed copies continue not to be compatible with that law, provided of the international application as ®led and of any that the said Of®ce informs the International Bureau corrections thereto. accordingly by April 5, 2006. The information received shall be promptly published by the Rule 22 International Bureau in the Gazette. (c) Where an element or part is considered to Transmittal of the Record Copy and have been incorporated by reference in the Translation international application by virtue of a ®nding of the receiving Of®ce under Rule 20.6(b), but that 22.1 Procedure incorporation by reference does not apply to the international application for the purposes of the (a) If the determination under Article 11(1) is procedure before a designated Of®ce because of the positive, and unless prescriptions concerning national operation of paragraph (b) of this Rule, the security prevent the international application from designated Of®ce may treat the application as if the being treated as such, the receiving Of®ce shall international ®ling date had been accorded under transmit the record copy to the International Bureau. Rule 20.3(b)(i) or 20.5(b), or corrected under Rule Such transmittal shall be effected promptly after 20.5(c), as the case may be, provided that Rule 82 ter receipt of the international application or, if a check .1(c) and (d) shall apply mutatis mutandis. to preserve national security must be performed, as soon as the necessary clearance has been obtained. In any case, the receiving Of®ce shall transmit the record copy in time for it to reach the International Bureau by the expiration of the 13th month from the priority date. If the transmittal is effected by mail,

Rev. 10.2019, June 2020 T-56 PATENT COOPERATION TREATY Rule 23

the receiving Of®ce shall mail the record copy not Of®ce unless it has already noti®ed them under later than ®ve days prior to the expiration of the 13th paragraph (c). month from the priority date. (h) Where the international application is to be (b) If the International Bureau has received a published in the language of a translation furnished copy of the noti®cation under Rule 20.2(c) but is under Rule 12.3 or 12.4, that translation shall be not, by the expiration of 13 months from the priority transmitted by the receiving Of®ce to the date, in possession of the record copy, it shall remind International Bureau together with the record copy the receiving Of®ce that it should transmit the record under paragraph (a) or, if the receiving Of®ce has copy to the International Bureau promptly. already transmitted the record copy to the (c) If the International Bureau has received a International Bureau under that paragraph, promptly copy of the noti®cation under Rule 20.2(c) but is after receipt of the translation. not, by the expiration of 14 months from the priority 22.2 [Deleted] date, in possession of the record copy, it shall notify the applicant and the receiving Of®ce accordingly. 22.3 Time Limit under Article 12(3) (d) After the expiration of 14 months from the priority date, the applicant may request the receiving The time limit referred to in Article 12(3) shall be Of®ce to certify a copy of his international three months from the date of the noti®cation sent application as being identical with the international by the International Bureau to the applicant under application as ®led and may transmit such certi®ed Rule 22.1(c) or (g). copy to the International Bureau. (e) Any certi®cation under paragraph (d) shall Rule 23 be free of charge and may be refused only on any of the following grounds: Transmittal of the Search Copy, Translation (i) the copy which the receiving Of®ce has and Sequence Listing been requested to certify is not identical with the international application as ®led; 23.1 Procedure (ii) prescriptions concerning national security (a) Where no translation of the international prevent the international application from being application is required under Rule 12.3(a), the search treated as such; copy shall be transmitted by the receiving Of®ce to (iii) the receiving Of®ce has already the International Searching Authority at the latest transmitted the record copy to the International on the same day as the record copy is transmitted to Bureau and that Bureau has informed the receiving the International Bureau unless no search fee has Of®ce that it has received the record copy. been paid. In the latter case, it shall be transmitted (f) Unless the International Bureau has received promptly after payment of the search fee. the record copy, or until it receives the record copy, (b) Where a translation of the international the copy certi®ed under paragraph (e) and received application is furnished under Rule 12.3, a copy of by the International Bureau shall be considered to that translation and of the request, which together be the record copy. shall be considered to be the search copy under (g) If, by the expiration of the time limit Article 12(1), shall be transmitted by the receiving applicable under Article 22, the applicant has Of®ce to the International Searching Authority, performed the acts referred to in that Article but the unless no search fee has been paid. In the latter case, designated Of®ce has not been informed by the a copy of the said translation and of the request shall International Bureau of the receipt of the record be transmitted promptly after payment of the search copy, the designated Of®ce shall inform the fee. International Bureau. If the International Bureau is (c) Any sequence listing in electronic form not in possession of the record copy, it shall which is furnished for the purposes of Rule 13 ter promptly notify the applicant and the receiving but submitted to the receiving Of®ce instead of the

T-57 Rev. 10.2019, June 2020 Rule 23bis MANUAL OF PATENT EXAMINING PROCEDURE

International Searching Authority shall be promptly with the search copy, a copy of the results of any transmitted by that Of®ce to that Authority. such earlier search, in whatever form (for example, in the form of a search report, a listing of cited prior Rule 23bis art or an examination report) they are available to the Of®ce, and a copy of the results of any such Transmittal of Documents Relating to Earlier earlier classi®cation effected by the Of®ce, if already Search or Classi®cation available. The receiving Of®ce may, subject to Article 30(2)(a) as applicable by virtue of Article 23 bis.1 Transmittal of Documents Relating 30(3), also transmit to the International Searching to Earlier Search in Case of Request under Authority any further documents relating to such an Rule 4.12 earlier search which it considers useful to that Authority for the purposes of carrying out the (a) The receiving Of®ce shall transmit to the international search. International Searching Authority, together with the (b) Notwithstanding paragraph (a), a receiving search copy, any copy referred to in Rule 12 bis.1(a) Of®ce may notify the International Bureau by April related to an earlier search in respect of which the 14, 2016 that it may, on request of the applicant applicant has made a request under Rule 4.12, submitted together with the international application, provided that any such copy: decide not to transmit the results of an earlier search (i) has been submitted by the applicant to the to the International Searching Authority. The receiving Of®ce together with the international International Bureau shall publish any noti®cation application; under this provision in the Gazette. (ii) has been requested by the applicant to be (c) At the option of the receiving Of®ce, prepared and transmitted by the receiving Of®ce to paragraph (a) shall apply mutatis mutandis where that Authority; or the international application claims the priority of one or more earlier applications ®led with an Of®ce (iii) is available to the receiving Of®ce in a different from the one which is acting as the form and manner acceptable to it, for example, from receiving Of®ce and that Of®ce has carried out an a digital library, in accordance with Rule 12 bis.1(d). earlier search in respect of such an earlier application (b) If it is not included in the copy of the results or has classi®ed such earlier application, and the of the earlier search referred to in Rule 12 bis.1(a), results of any such earlier search or classi®cation the receiving Of®ce shall also transmit to the are available to the receiving Of®ce in a form and International Searching Authority, together with the manner acceptable to it, for example, from a digital search copy, a copy of the results of any earlier library. classi®cation effected by that Of®ce, if already (d) Paragraphs (a) and (c) shall not apply where available. the earlier search was carried out by the same 23 bis.2 Transmittal of Documents Relating International Searching Authority or by the same to Earlier Search or Classi®cation for the Of®ce as that which is acting as the International Purposes of Rule 41.2 Searching Authority, or where the receiving Of®ce is aware that a copy of the earlier search or (a) For the purposes of Rule 41.2, where the classi®cation results is available to the International international application claims the priority of one Searching Authority in a form and manner acceptable or more earlier applications ®led with the same to it, for example, from a digital library. Of®ce as that which is acting as the receiving Of®ce (e) To the extent that, on October 14, 2015, the and that Of®ce has carried out an earlier search in transmission of the copies referred to in paragraph respect of such an earlier application or has classi®ed (a), or the transmission of such copies in a particular such earlier application, the receiving Of®ce shall, form, such as those referred to in paragraph (a), subject to Article 30(2)(a) as applicable by virtue of without the authorization by the applicant is not Article 30(3) and paragraphs (b), (d) and (e), transmit compatible with the national law applied by the to the International Searching Authority, together receiving Of®ce, that paragraph shall not apply to

Rev. 10.2019, June 2020 T-58 PATENT COOPERATION TREATY Rule 26

the transmission of such copies, or to the Rule 25 transmission of such copies in the particular form concerned, in respect of any international application Receipt of the Search Copy by the ®led with that receiving Of®ce for as long as such International Searching Authority transmission without the authorization by the applicant continues not to be compatible with that law, provided that the said Of®ce informs the 25.1 Noti®cation of Receipt of the Search International Bureau accordingly by April 14, 2016. Copy The information received shall be promptly published by the International Bureau in the Gazette. The International Searching Authority shall promptly notify the International Bureau, the applicant, and - Rule 24 unless the International Searching Authority is the same as the receiving Of®ce - the receiving Of®ce, Receipt of the Record Copy by the of the fact and the date of receipt of the search copy. International Bureau Rule 26 24.1 [Deleted] Checking by, and Correcting before, the 24.2 Noti®cation of Receipt of the Record Receiving Of®ce of Certain Elements of the Copy International Application

(a) The International Bureau shall promptly 26.1 Invitation under Article 14(1)(b) to notify: Correct (i) the applicant, (ii) the receiving Of®ce, and The receiving Of®ce shall issue the invitation to correct provided for in Article 14(1)(b) as soon as (iii) the International Searching Authority possible, preferably within one month from the (unless it has informed the International Bureau that receipt of the international application. In the it wishes not to be so noti®ed), of the fact and the invitation, the receiving Of®ce shall invite the date of receipt of the record copy. The noti®cation applicant to furnish the required correction, and give shall identify the international application by its the applicant the opportunity to make observations, number, the international ®ling date and the name within the time limit under Rule 26.2. of the applicant, and shall indicate the ®ling date of any earlier application whose priority is claimed. 26.2 Time Limit for Correction The noti®cation sent to the applicant shall also contain a list of the designated Of®ces and, in the case of a designated Of®ce which is responsible for The time limit referred to in Rule 26.1 shall be two granting regional patents, of the Contracting States months from the date of the invitation to correct. It designated for such regional patent. may be extended by the receiving Of®ce at any time before a decision is taken. (b) [Deleted] (c) If the record copy is received after the 26.2 bis Checking of Requirements under expiration of the time limit ®xed in Rule 22.3, the Article 14(1)(a)(i) and (ii) International Bureau shall promptly notify the applicant, the receiving Of®ce, and the International (a) For the purposes of Article 14(1)(a)(i), if Searching Authority, accordingly. there is more than one applicant, it shall be suf®cient that the request be signed by one of them. (b) For the purposes of Article 14(1)(a)(ii), if there is more than one applicant, it shall be suf®cient that the indications required under Rule 4.5(a)(ii)

T-59 Rev. 10.2019, June 2020 Rule 26 MANUAL OF PATENT EXAMINING PROCEDURE

and (iii) be provided in respect of one of them who from the language of the description and the claims, is entitled according to Rule 19.1 to ®le the the receiving Of®ce shall, unless international application with the receiving Of®ce. (i) a translation of the international 26.3 Checking of Physical Requirements application is required under Rule 12.3(a), or under Article 14(1)(a)(v) (ii) the abstract or the text matter of the drawings is in the language in which the international (a) Where the international application is ®led application is to be published, invite the applicant in a language of publication, the receiving Of®ce to furnish a translation of the abstract or the text shall check: matter of the drawings into the language in which (i) the international application for the international application is to be published. compliance with the physical requirements referred Rules 26.1, 26.2, 26.3, 26.3 bis , 26.5 and 29.1 shall to in Rule 11 only to the extent that compliance apply mutatis mutandis. therewith is necessary for the purpose of reasonably (b) If, on October 1, 1997, paragraph (a) is not uniform international publication; compatible with the national law applied by the (ii) any translation furnished under Rule 12.3 receiving Of®ce, paragraph (a) shall not apply to for compliance with the physical requirements that receiving Of®ce for as long as it continues not referred to in Rule 11 to the extent that compliance to be compatible with that law, provided that the therewith is necessary for the purpose of satisfactory said Of®ce informs the International Bureau reproduction. accordingly by December 31, 1997. The information received shall be promptly published by the (b) Where the international application is ®led International Bureau in the Gazette. in a language which is not a language of publication, the receiving Of®ce shall check: (c) Where the request does not comply with Rule 12.1(c), the receiving Of®ce shall invite the applicant (i) the international application for to ®le a translation so as to comply with that Rule. compliance with the physical requirements referred Rules 3, 26.1, 26.2, 26.5 and 29.1 shall apply to in Rule 11 only to the extent that compliance mutatis mutandis. therewith is necessary for the purpose of satisfactory reproduction; (d) If, on October 1, 1997, paragraph (c) is not compatible with the national law applied by the (ii) any translation furnished under Rule 12.3 receiving Of®ce, paragraph (c) shall not apply to or 12.4 and the drawings for compliance with the that receiving Of®ce for as long as it continues not physical requirements referred to in Rule 11 to the to be compatible with that law, provided that the extent that compliance therewith is necessary for the said Of®ce informs the International Bureau purpose of reasonably uniform international accordingly by December 31,1997. The information publication. received shall be promptly published by the 26.3 bis Invitation under Article 14(1)(b) to International Bureau in the Gazette. Correct Defects under Rule 11 26.4 Procedure

The receiving Of®ce shall not be required to issue A correction of the request offered to the receiving the invitation under Article 14(1)(b) to correct a Of®ce may be stated in a letter addressed to that defect under Rule 11 where the physical Of®ce if the correction is of such a nature that it can requirements referred to in that Rule are complied be transferred from the letter to the request without with to the extent required under Rule 26.3. adversely affecting the clarity and the direct reproducibility of the sheet on to which the 26.3 ter Invitation to Correct Defects under correction is to be transferred; otherwise, and in the Article 3(4)(i) case of a correction of any element of the international application other than the request, the (a) Where the abstract or any text matter of the applicant shall be required to submit a replacement drawings is ®led in a language which is different sheet embodying the correction and the letter

Rev. 10.2019, June 2020 T-60 PATENT COOPERATION TREATY Rule 26bis

accompanying the replacement sheet shall draw applicable priority date and which has not already attention to the differences between the replaced expired shall be computed from the priority date as sheet and the replacement sheet. so changed. 26 bis.2 Defects in Priority Claims 26.5 Decision of the Receiving Of®ce (a) Where the receiving Of®ce or, if the The receiving Of®ce shall decide whether the receiving Of®ce fails to do so, the International applicant has submitted the correction within the Bureau, ®nds in relation to a priority claim: applicable time limit under Rule 26.2, and, if the (i) that the international application has an correction has been submitted within that time limit, international ®ling date which is later than the date whether the international application so corrected is on which the priority period expired and that a or is not to be considered withdrawn, provided that request for restoration of the right of priority under no international application shall be considered Rule 26 bis.3 has not been submitted; withdrawn for lack of compliance with the physical requirements referred to in Rule 11 if it complies (ii) that the priority claim does not comply with those requirements to the extent necessary for with the requirements of Rule 4.10; or the purpose of reasonably uniform international (iii) that any indication in the priority claim publication. is inconsistent with the corresponding indication appearing in the priority document; Rule 26bis the receiving Of®ce or the International Bureau, as Correction or Addition of Priority Claim the case may be, shall invite the applicant to correct the priority claim. In the case referred to in item (i), 26 bis.1 Correction or Addition of Priority where the international ®ling date is within two Claim months from the date on which the priority period expired, the receiving Of®ce or the International (a) The applicant may correct a priority claim Bureau, as the case may be, shall also notify the or add a priority claim to the request by a notice applicant of the possibility of submitting a request submitted to the receiving Of®ce or the International for the restoration of the right of priority in Bureau within a time limit of 16 months from the accordance with Rule 26 bis.3, unless the receiving priority date or, where the correction or addition Of®ce has noti®ed the International Bureau under would cause a change in the priority date, 16 months Rule 26 bis.3(j) of the incompatibility of Rule from the priority date as so changed, whichever 26 bis.3(a) to (i) with the national law applied by 16-month period expires ®rst, provided that such a that Of®ce. notice may be submitted until the expiration of four (b) If the applicant does not, before the months from the international ®ling date. The expiration of the time limit under Rule 26 bis.1(a), correction of a priority claim may include the submit a notice correcting the priority claim, that addition of any indication referred to in Rule 4.10. priority claim shall, subject to paragraph (c), for the (b) Any notice referred to in paragraph (a) purposes of the procedure under the Treaty, be received by the receiving Of®ce or the International considered not to have been made (ªconsidered Bureau after the applicant has made a request for voidº) and the receiving Of®ce or the International early publication under Article 21(2)(b) shall be Bureau, as the case may be, shall so declare and shall considered not to have been submitted, unless that inform the applicant accordingly. Any notice request is withdrawn before the technical correcting the priority claim which is received before preparations for international publication have been the receiving Of®ce or the International Bureau, as completed. the case may be, so declares and not later than one month after the expiration of that time limit shall be (c) Where the correction or addition of a priority considered to have been received before the claim causes a change in the priority date, any time expiration of that time limit. limit which is computed from the previously

T-61 Rev. 10.2019, June 2020 Rule 26bis MANUAL OF PATENT EXAMINING PROCEDURE

(c) A priority claim shall not be considered void namely, that the failure to ®le the international only because: application within the priority period: (i) the indication of the number of the earlier (i) occurred in spite of due care required by application referred to in Rule 4.10(a)(ii) is missing; the circumstances having been taken; or (ii) an indication in the priority claim is (ii) was unintentional. inconsistent with the corresponding indication appearing in the priority document; or Each receiving Of®ce shall apply at least one of (iii) the international application has an those criteria and may apply both of them. international ®ling date which is later than the date (b) A request under paragraph (a) shall: on which the priority period expired, provided that (i) be ®led with the receiving Of®ce within the international ®ling date is within the period of the time limit applicable under paragraph (e); two months from that date. (ii) state the reasons for the failure to ®le the (d) Where the receiving Of®ce or the international application within the priority period; International Bureau has made a declaration under and paragraph (b) or where the priority claim has not been considered void only because paragraph (c) (iii) preferably be accompanied by any applies, the International Bureau shall publish, declaration or other evidence required under together with the international application, paragraph (f). information concerning the priority claim as (c) Where a priority claim in respect of the prescribed by the Administrative Instructions, as earlier application is not contained in the well as any information submitted by the applicant international application, the applicant shall submit, concerning such priority claim which is received by within the time limit applicable under paragraph (e), the International Bureau prior to the completion of a notice under Rule 26 bis.1(a) adding the priority the technical preparations for international claim. publication. Such information shall be included in the communication under Article 20 where the (d) The submission of a request under paragraph international application is not published by virtue (a) may be subjected by the receiving Of®ce to the of Article 64(3). payment to it, for its own bene®t, of a fee for requesting restoration, payable within the time limit (e) Where the applicant wishes to correct or add applicable under paragraph (e). The amount of that a priority claim but the time limit under Rule 26 bis.1 fee, if any, shall be ®xed by the receiving Of®ce. has expired, the applicant may, prior to the expiration The time limit for payment of the fee may be of 30 months from the priority date and subject to extended, at the option of the receiving Of®ce, for the payment of a special fee whose amount shall be a period of up to two months from the expiration of ®xed in the Administrative Instructions, request the the time limit applicable under paragraph (e). International Bureau to publish information concerning the matter, and the International Bureau (e) The time limit referred to in shall promptly publish such information. paragraphs (b)(i), (c) and (d) shall be two months from the date on which the priority period expired, 26 bis.3 Restoration of Right of Priority by provided that, where the applicant makes a request Receiving Of®ce for early publication under Article 21(2)(b), any request under paragraph (a) or any notice referred (a) Where the international application has an to in paragraph (c) submitted, or any fee referred to international ®ling date which is later than the date in paragraph (d) paid, after the technical preparations on which the priority period expired but within the for international publication have been completed period of two months from that date, the receiving shall be considered as not having been submitted or Of®ce shall, on the request of the applicant, and paid in time. subject to paragraphs (b) to (g) of this Rule, restore (f) The receiving Of®ce may require that a the right of priority if the Of®ce ®nds that a criterion declaration or other evidence in support of the applied by it (ªcriterion for restorationº) is satis®ed, statement of reasons referred to in paragraph (b)(ii)

Rev. 10.2019, June 2020 T-62 PATENT COOPERATION TREATY Rule 26ter

be ®led with it within a time limit which shall be in that respect. The International Bureau shall reasonable under the circumstances. promptly publish such information in the Gazette. (g) The receiving Of®ce shall not refuse, totally (j) If, on October 5, 2005, paragraphs (a) to (i) or in part, a request under paragraph (a) without are not compatible with the national law applied by giving the applicant the opportunity to make the receiving Of®ce, those paragraphs shall not apply observations on the intended refusal within a time in respect of that Of®ce for as long as they continue limit which shall be reasonable under the not to be compatible with that law, provided that the circumstances. Such notice of intended refusal by said Of®ce informs the International Bureau the receiving Of®ce may be sent to the applicant accordingly by April 5, 2006. The information together with any invitation to ®le a declaration or received shall be promptly published by the other evidence under paragraph (f). International Bureau in the Gazette. (h) The receiving Of®ce shall promptly: Rule 26ter (i) notify the International Bureau of the receipt of a request under paragraph (a); Correction or Addition of Declarations under (ii) make a decision upon the request; Rule 4.17 (iii) notify the applicant and the International 26 ter.1 Correction or Addition of Bureau of its decision and the criterion for restoration upon which the decision was based; Declarations

(iv) subject to paragraph (h- bis), transmit to The applicant may correct or add to the request any the International Bureau all documents received from declaration referred to in Rule 4.17 by a notice the applicant relating to the request under paragraph submitted to the International Bureau within a time (a) (including a copy of the request itself, any limit of 16 months from the priority date, provided statement of reasons referred to in paragraph (b)(ii) that any notice which is received by the International and any declaration or other evidence referred to in Bureau after the expiration of that time limit shall paragraph (f)). be considered to have been received on the last day (h-bis) The receiving Of®ce shall, upon a of that time limit if it reaches it before the technical reasoned request by the applicant or on its own preparations for international publication have been decision, not transmit documents or parts thereof completed. received in relation to the request under paragraph (a), if it ®nds that: 26 ter.2 Processing of Declarations (i) this document or part thereof does not obviously serve the purpose of informing the public (a) Where the receiving Of®ce or the about the international application; International Bureau ®nds that any declaration referred to in Rule 4.17 is not worded as required (ii) publication or public access to any such or, in the case of the declaration of inventorship document or part thereof would clearly prejudice referred to in Rule 4.17(iv), is not signed as required, the personal or economic interests of any person; the receiving Of®ce or the International Bureau, as and the case may be, may invite the applicant to correct (iii) there is no prevailing public interest to the declaration within a time limit of 16 months from have access to that document or part thereof. the priority date. (b) Where the International Bureau receives any Where the receiving Of®ce decides not to transmit declaration or correction under Rule 26 ter.1 after documents or parts thereof to the International the expiration of the time limit under Rule 26 ter.1, Bureau, it shall notify the International Bureau the International Bureau shall notify the applicant accordingly. accordingly and shall proceed as provided for in the (i) Each receiving Of®ce shall inform the Administrative Instructions. International Bureau of which of the criteria for restoration it applies and of any subsequent changes

T-63 Rev. 10.2019, June 2020 Rule 27 MANUAL OF PATENT EXAMINING PROCEDURE

Rule 27 the international application is considered withdrawn: Lack of Payment of Fees (i) the receiving Of®ce shall transmit the record copy (unless already transmitted), and any correction 27.1 Fees offered by the applicant, to the International Bureau; (a) For the purposes of Article 14(3)(a), ªfees (ii) the receiving Of®ce shall promptly notify prescribed under Article 3(4)(iv)º means: the both the applicant and the International Bureau of transmittal fee (Rule 14), the international ®ling fee the said declaration, and the International Bureau (Rule 15.1), the search fee (Rule 16), and, where shall in turn notify each designated Of®ce which has required, the late payment fee (Rule 16 bis.2). already been noti®ed of its designation; (b) For the purposes of Article 14(3)(a) and (b), (iii) the receiving Of®ce shall not transmit the ªthe fee prescribed under Article 4(2)º means the search copy as provided in Rule 23, or, if such copy international ®ling fee (Rule 15.1) and, where has already been transmitted, it shall notify the required, the late payment fee (Rule 16 bis.2). International Searching Authority of the said declaration; Rule 28 (iv) the International Bureau shall not be required to notify the applicant of the receipt of the Defects Noted by the International Bureau record copy; 28.1 Note on Certain Defects (v) no international publication of the international application shall be effected if the (a) If, in the opinion of the International Bureau, noti®cation of the said declaration transmitted by the international application contains any of the the receiving Of®ce reaches the International Bureau defects referred to in Article 14(1)(a)(i), (ii) or (v), before the technical preparations for international the International Bureau shall bring such defects to publication have been completed. the attention of the receiving Of®ce. 29.2 [Deleted] (b) The receiving Of®ce shall, unless it disagrees with the said opinion, proceed as provided in Article 29.3 Calling Certain Facts to the Attention 14(1)(b) and Rule 26. of the Receiving Of®ce Rule 29 If the International Bureau or the International International Applications Considered Searching Authority considers that the receiving Of®ce should make a ®nding under Article 14(4), Withdrawn it shall call the relevant facts to the attention of the receiving Of®ce. 29.1 Finding by Receiving Of®ce 29.4 Noti®cation of Intent to Make If the receiving Of®ce declares, under Article Declaration under Article 14(4) 14(1)(b) and Rule 26.5 (failure to correct certain defects), or under Article 14(3)(a) (failure to pay the (a) Before the receiving Of®ce issues any prescribed fees under Rule 27.1(a)), or under Article declaration under Article 14(4), it shall notify the 14(4) (later ®nding of non-compliance with the applicant of its intent to issue such declaration and requirements listed in items (i) to (iii) of Article the reasons therefor. The applicant may, if he 11(1)), or under Rule 12.3(d) or 12.4(d) (failure to disagrees with the tentative ®nding of the receiving furnish a required translation or, where applicable, Of®ce, submit arguments to that effect within two to pay a late furnishing fee), or under Rule 92.4(g)(i) months from the date of the noti®cation. (failure to furnish the original of a document), that (b) Where the receiving Of®ce intends to issue a declaration under Article 14(4) in respect of an

Rev. 10.2019, June 2020 T-64 PATENT COOPERATION TREATY Rule 32

element mentioned in Article 11(1)(iii)(d) or (e), Rule 32 the receiving Of®ce shall, in the noti®cation referred to in paragraph (a) of this Rule, invite the applicant Extension of Effects of International to con®rm in accordance with Rule 20.6(a) that the Application to Certain Successor States element is incorporated by reference under Rule 4.18. For the purposes of Rule 20.7(a)(i), the invitation sent to the applicant under this paragraph 32.1 Extension of International Application shall be considered to be an invitation under Rule to Successor State 20.3(a)(ii). (a) The effects of any international application (c) Paragraph (b) shall not apply where the whose international ®ling date falls in the period receiving Of®ce has informed the International de®ned in paragraph (b) are extended to a State (ªthe Bureau in accordance with Rule 20.8(a) of the successor Stateº) whose territory was, before the incompatibility of Rules 20.3(a)(ii) and (b)(ii) and independence of that State, part of the territory of a 20.6 with the national law applied by that Of®ce. Contracting State designated in the international Rule 30 application which subsequently ceased to exist (ªthe predecessor Stateº), provided that the successor State Time Limit under Article 14(4) has become a Contracting State through the deposit, with the Director General, of a declaration of continuation the effect of which is that the Treaty is 30.1 Time Limit applied by the successor State.

The time limit referred to in Article 14(4) shall be (b) The period referred to in paragraph (a) starts four months from the international ®ling date. on the day following the last day of the existence of the predecessor State and ends two months after the date on which the declaration referred to in Rule 31 paragraph (a) was noti®ed by the Director General to the Governments of the States party to the Paris Copies Required under Article 13 Convention for the Protection of Industrial Property. However, where the date of independence of the 31.1 Request for Copies successor State is earlier than the date of the day following the last day of the existence of the (a) Requests under Article 13(1) may relate to predecessor State, the successor State may declare all, some kinds of, or individual international that the said period starts on the date of its applications in which the national Of®ce making the independence; such a declaration shall be made request is designated. Requests for all or some kinds together with the declaration referred to in paragraph of such international applications must be renewed (a) and shall specify the date of independence. for each year by means of a noti®cation addressed (c) Information on any international application by that Of®ce before November 30 of the preceding whose ®ling date falls within the applicable period year to the International Bureau. under paragraph (b) and whose effect is extended to (b) Requests under Article 13(2)(b) shall be the successor State shall be published by the subject to the payment of a fee covering the cost of International Bureau in the Gazette. preparing and mailing the copy. 32.2 Effects of Extension to Successor State 31.2 Preparation of Copies (a) Where the effects of the international The preparation of copies required under Article 13 application are extended to the successor State in shall be the responsibility of the International accordance with Rule 32.1, Bureau. (i) the successor State shall be considered as having been designated in the international application, and

T-65 Rev. 10.2019, June 2020 Rule 33 MANUAL OF PATENT EXAMINING PROCEDURE

(ii) the applicable time limit under Article 33.2 Fields to Be Covered by the 22 or 39(1) in relation to that State shall be extended International Search until the expiration of at least six months from the date of the publication of the information under Rule (a) The international search shall cover all those 32.1(c). technical ®elds, and shall be carried out on the basis of all those search ®les, which may contain material (b) The successor State may ®x a time limit pertinent to the invention. which expires later than that provided in paragraph (a)(ii). The International Bureau shall publish (b) Consequently, not only shall the art in which information on such time limits in the Gazette. the invention is classi®able be searched but also analogous arts regardless of where classi®ed. Rule 33 (c) The question what arts are, in any given case, to be regarded as analogous shall be considered in Relevant Prior Art for the International the light of what appears to be the necessary essential Search function or use of the invention and not only the speci®c functions expressly indicated in the 33.1 Relevant Prior Art for the International international application. Search (d) The international search shall embrace all subject matter that is generally recognized as (a) For the purposes of Article 15(2), relevant equivalent to the subject matter of the claimed prior art shall consist of everything which has been invention for all or certain of its features, even made available to the public anywhere in the world though, in its speci®cs, the invention as described by means of written disclosure (including drawings in the international application is different. and other illustrations) and which is capable of being of assistance in determining that the claimed 33.3 Orientation of the International Search invention is or is not new and that it does or does not involve an inventive step (i.e., that it is or is not (a) International search shall be made on the obvious), provided that the making available to the basis of the claims, with due regard to the description public occurred prior to the international ®ling date. and the drawings (if any) and with particular (b) When any written disclosure refers to an oral emphasis on the inventive concept towards which disclosure, use, exhibition, or other means whereby the claims are directed. the contents of the written disclosure were made (b) In so far as possible and reasonable, the available to the public, and such making available international search shall cover the entire subject to the public occurred on a date prior to the matter to which the claims are directed or to which international ®ling date, the international search they might reasonably be expected to be directed report shall separately mention that fact and the date after they have been amended. on which it occurred if the making available to the public of the written disclosure occurred on a date Rule 34 which is the same as, or later than, the international ®ling date. Minimum Documentation (c) Any published application or any patent whose publication date is the same as, or later than, 34.1 De®nition but whose ®ling date, or, where applicable, claimed priority date, is earlier than the international ®ling (a) The de®nitions contained in Article 2(i) and date of the international application searched, and (ii) shall not apply for the purposes of this Rule. which would constitute relevant prior art for the (b) The documentation referred to in Article purposes of Article 15(2) had it been published prior 15(4) (ªminimum documentationº) shall consist of: to the international ®ling date, shall be specially (i) the ªnational patent documentsº as mentioned in the international search report. speci®ed in paragraph (c),

Rev. 10.2019, June 2020 T-66 PATENT COOPERATION TREATY Rule 35

(ii) the published international (PCT) such Authority shall be entitled to keep either the applications, the published regional applications for application only or the patent or utility certi®cate patents and inventors' certi®cates, and the published () only. regional patents and inventors' certi®cates, (e) Any International Searching Authority (iii) such other published items of non-patent whose of®cial language, or one of whose of®cial literature as the International Searching Authorities languages, is not Chinese, Japanese, Korean, Russian shall agree upon and which shall be published in a or Spanish is entitled not to include in its list by the International Bureau when agreed upon documentation those patent documents of the for the ®rst time and whenever changed. People©s Republic of China, Japan, the Republic of Korea, the Russian Federation and the former Soviet (c) Subject to paragraphs (d) and (e), the Union as well as those patent documents in the ªnational patent documentsº shall be the following: Spanish language, respectively, for which no (i) the patents issued in and after 1920 by abstracts in the English language are generally France, the former Reichspatentamt of , available. English abstracts becoming generally Japan, the former Soviet Union, (in the available after the date of entry into force of these French and German languages only), the United Regulations shall require the inclusion of the patent Kingdom, and the United States of America, documents to which the abstracts refer no later than six months after such abstracts become generally (ii) the patents issued by the Federal Republic available. In case of the interruption of abstracting of Germany, the People's Republic of China, the services in English in technical ®elds in which Republic of Korea and the Russian Federation, English abstracts were formerly generally available, (iii) the patent applications, if any, published the Assembly shall take appropriate measures to in and after 1920 in the countries referred to in items provide for the prompt restoration of such services (i) and (ii), in the said ®elds. (iv) the inventors' certi®cates issued by the (f) For the purposes of this Rule, applications former Soviet Union, which have only been laid open for public inspection (v) the utility certi®cates issued by, and the are not considered published applications. published applications for utility certi®cates of, Rule 35 France, (vi) such patents issued by, and such patent The Competent International Searching applications published in, any other country after Authority 1920 as are in the English, French, German or Spanish language and in which no priority is 35.1 When Only One International Searching claimed, provided that the national Of®ce of the Authority Is Competent interested country sorts out these documents and places them at the disposal of each International Searching Authority. Each receiving Of®ce shall, in accordance with the terms of the applicable agreement referred to in (d) Where an application is republished once Article 16(3)(b), inform the International Bureau (for example, an Offenlegungsschrift as an which International Searching Authority is ) or more than once, no International competent for the searching of the international Searching Authority shall be obliged to keep all applications ®led with it, and the International versions in its documentation; consequently, each Bureau shall promptly publish such information. such Authority shall be entitled not to keep more than one version. Furthermore, where an application 35.2 When Several International Searching is granted and is issued in the form of a patent or a Authorities Are Competent utility certi®cate (France), no International Searching Authority shall be obliged to keep both the (a) Any receiving Of®ce may, in accordance application and the patent or utility certi®cate with the terms of the applicable agreement referred (France) in its documentation; consequently, each

T-67 Rev. 10.2019, June 2020 Rule 36 MANUAL OF PATENT EXAMINING PROCEDURE

to in Article 16(3)(b), specify several International employees with suf®cient technical quali®cations Searching Authorities: to carry out searches; (i) by declaring all of them competent for (ii) that Of®ce or organization must have in its any international application ®led with it, and possession, or have access to, at least the minimum leaving the choice to the applicant, or documentation referred to in Rule 34, properly (ii) by declaring one or more competent for arranged for search purposes, on paper, in microform certain kinds of international applications ®led with or stored on electronic media; it, and declaring one or more others competent for (iii) that Of®ce or organization must have a staff other kinds of international applications ®led with which is capable of searching the required technical it, provided that, for those kinds of international ®elds and which has the language facilities to applications for which several International understand at least those languages in which the Searching Authorities are declared to be competent, minimum documentation referred to in Rule 34 is the choice shall be left to the applicant. written or is translated; (b) Any receiving Of®ce availing itself of the (iv) that Of®ce or organization must have in faculty provided in paragraph (a) shall promptly place a quality management system and internal inform the International Bureau, and the International review arrangements in accordance with the common Bureau shall promptly publish such information. rules of international search; 35.3 When the International Bureau Is (v) that Of®ce or organization must hold an Receiving Of®ce under Rule 19.1 (a)(iii) appointment as an International Preliminary Examining Authority. (a) Where the international application is ®led Rule 37 with the International Bureau as receiving Of®ce under Rule 19.1(a)(iii), an International Searching Missing or Defective Title Authority shall be competent for the searching of that international application if it would have been competent had that international application been 37.1 Lack of Title ®led with a receiving Of®ce competent under Rule 19.1(a)(i) or (ii), (b) or (c) or Rule 19.2(i). If the international application does not contain a title and the receiving Of®ce has noti®ed the (b) Where two or more International Searching International Searching Authority that it has invited Authorities are competent under paragraph (a), the the applicant to correct such defect, the International choice shall be left to the applicant. Searching Authority shall proceed with the (c) Rules 35.1 and 35.2 shall not apply to the international search unless and until it receives International Bureau as receiving Of®ce under Rule noti®cation that the said application is considered 19.1(a)(iii). withdrawn. Rule 36 37.2 Establishment of Title Minimum Requirements for International If the international application does not contain a Searching Authorities title and the International Searching Authority has not received a noti®cation from the receiving Of®ce 36.1 De®nition of Minimum Requirements to the effect that the applicant has been invited to furnish a title, or if the said Authority ®nds that the The minimum requirements referred to in Article title does not comply with Rule 4.3, it shall itself 16(3)(c) shall be the following: establish a title. Such title shall be established in the language in which the international application is to (i) the national Of®ce or intergovernmental be published or, if a translation into another language organization must have at least 100 full-time was transmitted under Rule 23.1(b) and the

Rev. 10.2019, June 2020 T-68 PATENT COOPERATION TREATY Rule 40

International Searching Authority so wishes, in the modi®es the abstract, it shall notify the modi®cation language of that translation. to the International Bureau.

Rule 38 Rule 39

Missing or Defective Abstract Subject Matter under Article 17(2)(a)(i)

38.1 Lack of Abstract 39.1 De®nition

If the international application does not contain an No International Searching Authority shall be abstract and the receiving Of®ce has noti®ed the required to search an international application if, and International Searching Authority that it has invited to the extent to which, its subject matter is any of the applicant to correct such defect, the International the following: Searching Authority shall proceed with the international search unless and until it receives (i) scienti®c and mathematical theories, noti®cation that the said application is considered (ii) plant or animal varieties or essentially withdrawn. biological processes for the production of plants and animals, other than microbiological processes and 38.2 Establishment of Abstract the products of such processes, (iii) schemes, rules or methods of doing If the international application does not contain an business, performing purely mental acts or playing abstract and the International Searching Authority games, has not received a noti®cation from the receiving Of®ce to the effect that the applicant has been invited (iv) methods for treatment of the human or to furnish an abstract, or if the said Authority ®nds animal body by surgery or therapy, as well as that the abstract does not comply with Rule 8, it shall diagnostic methods, itself establish an abstract. Such abstract shall be (v) mere presentations of information, established in the language in which the international (vi) computer programs to the extent that the application is to be published or, if a translation into International Searching Authority is not equipped another language was transmitted under Rule 23.1(b) to search prior art concerning such programs. and the International Searching Authority so wishes, in the language of that translation. Rule 40

38.3 Modi®cation of Abstract Lack of Unity of Invention (International Search) The applicant may, until the expiration of one month from the date of mailing of the international search 40.1 Invitation to Pay Additional Fees; Time report, submit to the International Searching Limit Authority:

(i) proposed modi®cations of the abstract; or The invitation to pay additional fees provided for in Article 17(3)(a) shall: (ii) where the abstract has been established by the Authority, proposed modi®cations of, or (i) specify the reasons for which the international comments on, that abstract, or both modi®cations application is not considered as complying with the and comments; requirement of unity of invention; and the Authority shall decide whether to modify (ii) invite the applicant to pay the additional fees the abstract accordingly. Where the Authority within one month from the date of the invitation, and indicate the amount of those fees to be paid; and

T-69 Rev. 10.2019, June 2020 Rule 41 MANUAL OF PATENT EXAMINING PROCEDURE

(iii) invite the applicant to pay, where applicable, Rule 41 the protest fee referred to in Rule 40.2(e) within one month from the date of the invitation, and indicate Taking into Account Results of Earlier the amount to be paid. Search and Classi®cation 40.2 Additional Fees 41.1 Taking into Account Results of Earlier (a) The amount of the additional fees due for Search in Case of a Request under Rule 4.12 searching under Article 17(3)(a) shall be determined by the competent International Searching Authority. Where the applicant has, under Rule 4.12, requested (b) The additional fees due for searching under the International Searching Authority to take into Article 17(3)(a) shall be payable direct to the account the results of an earlier search and has International Searching Authority. complied with Rule 12 bis.1 and: (c) Any applicant may pay the additional fees (i) the earlier search was carried out by the same under protest, that is, accompanied by a reasoned International Searching Authority, or by the same statement to the effect that the international Of®ce as that which is acting as the International application complies with the requirement of unity Searching Authority, the International Searching of invention or that the amount of the required Authority shall, to the extent possible, take those additional fees is excessive. Such protest shall be results into account in carrying out the international examined by a review body constituted in the search; framework of the International Searching Authority, which, to the extent that it ®nds the protest justi®ed, (ii) the earlier search was carried out by another shall order the total or partial reimbursement to the International Searching Authority, or by an Of®ce applicant of the additional fees. On the request of other than that which is acting as the International the applicant, the text of both the protest and the Searching Authority, the International Searching decision thereon shall be noti®ed to the designated Authority may take those results into account in Of®ces together with the international search report. carrying out the international search. The applicant shall submit any translation thereof 41.2 Taking into Account Results of Earlier with the furnishing of the translation of the international application required under Article 22. Search and Classi®cation in Other Cases (d) The membership of the review body referred (a) Where the international application claims to in paragraph (c) may include, but shall not be the priority of one or more earlier applications in limited to, the person who made the decision which respect of which an earlier search has been carried is the subject of the protest. out by the same International Searching Authority, (e) The examination of a protest referred to in or by the same Of®ce as that which is acting as the paragraph (c) may be subjected by the International International Searching Authority, the International Searching Authority to the payment to it, for its own Searching Authority shall, to the extent possible, bene®t, of a protest fee. Where the applicant has not, take the results of any such earlier search into within the time limit under Rule 40.1(iii), paid any account in carrying out the international search. required protest fee, the protest shall be considered (b) Where the receiving Of®ce has transmitted not to have been made and the International to the International Searching Authority a copy of Searching Authority shall so declare. The protest fee the results of any earlier search or of any earlier shall be refunded to the applicant where the review classi®cation under Rule 23 bis.2(a) or (c), or where body referred to in paragraph (c) ®nds that the such a copy is available to the International protest was entirely justi®ed. Searching Authority in a form and manner acceptable to it, for example, from a digital library, the International Searching Authority may take those results into account in carrying out the international search.

Rev. 10.2019, June 2020 T-70 PATENT COOPERATION TREATY Rule 43

Rule 42 in which the international application to which it relates is to be published, provided that: Time Limit for International Search (i) if a translation of the international application into another language was transmitted under Rule 42.1 Time Limit for International Search 23.1(b) and the International Searching Authority so wishes, the international search report and any The time limit for establishing the international declaration made under Article 17(2)(a) may be in search report or the declaration referred to in Article the language of that translation; 17(2)(a) shall be three months from the receipt of the search copy by the International Searching (ii) if the international application is to be Authority, or nine months from the priority date, published in the language of a translation furnished whichever time limit expires later. under Rule 12.4 which is not accepted by the International Searching Authority and that Authority Rule 43 so wishes, the international search report and any declaration made under Article 17(2)(a) may be in a language which is both a language accepted by The International Search Report that Authority and a language of publication referred to in Rule 48.3(a). 43.1 Identi®cations 43.5 Citations The international search report shall identify the International Searching Authority which established (a) The international search report shall contain it by indicating the name of such Authority, and the the citations of the documents considered to be international application by indicating the relevant. international application number, the name of the (b) The method of identifying any cited applicant, and the international ®ling date. document shall be regulated by the Administrative Instructions. 43.2 Dates (c) Citations of particular relevance shall be specially indicated. The international search report shall be dated and (d) Citations which are not relevant to all the shall indicate the date on which the international claims shall be cited in relation to the claim or claims search was actually completed. It shall also indicate to which they are relevant. the ®ling date of any earlier application whose priority is claimed or, if the priority of more than (e) If only certain passages of the cited document one earlier application is claimed, the ®ling date of are relevant or particularly relevant, they shall be the earliest among them. identi®ed, for example, by indicating the page, the column, or the lines, where the passage appears. If 43.3 Classi®cation the entire document is relevant but some passages are of particular relevance, such passages shall be (a) The international search report shall contain identi®ed unless such identi®cation is not the classi®cation of the subject matter at least practicable. according to the International Patent Classi®cation. 43.6 Fields Searched (b) Such classi®cation shall be effected by the International Searching Authority. (a) The international search report shall list the classi®cation identi®cation of the ®elds searched. 43.4 Language If that identi®cation is effected on the basis of a classi®cation other than the International Patent Every international search report and any declaration Classi®cation, the International Searching Authority made under Article 17(2)(a) shall be in the language shall publish the classi®cation used.

T-71 Rev. 10.2019, June 2020 Rule 43bis MANUAL OF PATENT EXAMINING PROCEDURE

(b) If the international search extended to 43.8 Authorized Of®cer patents, inventors' certi®cates, utility certi®cates, utility models, patents or certi®cates of addition, The international search report shall indicate the inventors' certi®cates of addition, utility certi®cates name of the of®cer of the International Searching of addition, or published applications for any of those Authority responsible for that report. kinds of protection, of States, periods, or languages, not included in the minimum documentation as 43.9 Additional Matter de®ned in Rule 34, the international search report shall, when practicable, identify the kinds of documents, the States, the periods, and the languages The international search report shall contain no to which it extended. For the purposes of this matter other than that speci®ed in Rules 33.1(b) and paragraph, Article 2(ii) shall not apply. (c), 43.1 to 43.3, 43.5 to 43.8, and 44.2, and the indication referred to in Article 17(2)(b), provided (c) If the international search was based on, or that the Administrative Instructions may permit the was extended to, any electronic data base, the inclusion in the international search report of any international search report may indicate the name of additional matter speci®ed in the Administrative the data base and, where considered useful to others Instructions. The international search report shall and practicable, the search terms used. not contain, and the Administrative Instructions shall 43.6 bis Consideration of Recti®cations of not permit the inclusion of, any expressions of Obvious Mistakes opinion, reasoning, arguments, or explanations.

(a) A recti®cation of an obvious mistake that is 43.10 Form authorized under Rule 91.1 shall, subject to paragraph (b), be taken into account by the The physical requirements as to the form of the International Searching Authority for the purposes international search report shall be prescribed by the of the international search and the international Administrative Instructions. search report shall so indicate. (b) A recti®cation of an obvious mistake need Rule 43bis not be taken into account by the International Searching Authority for the purposes of the Written Opinion of the International international search if it is authorized by or noti®ed Searching Authority to that Authority, as applicable, after it has begun to draw up the international search report, in which 43 bis.1 Written Opinion case the report shall, if possible, so indicate, failing which the International Searching Authority shall (a) Subject to Rule 69.1(b -bis), the International notify the International Bureau accordingly and the Searching Authority shall, at the same time as it International Bureau shall proceed as provided for establishes the international search report or the in the Administrative Instructions. declaration referred to in Article 17(2)(a), establish a written opinion as to: 43.7 Remarks Concerning Unity of Invention (i) whether the claimed invention appears to If the applicant paid additional fees for the be novel, to involve an inventive step (to be international search, the international search report non-obvious), and to be industrially applicable; shall so indicate. Furthermore, where the (ii) whether the international application international search was made on the main invention complies with the requirements of the Treaty and only or on less than all the inventions (Article these Regulations in so far as checked by the 17(3)(a)), the international search report shall International Searching Authority. indicate what parts of the international application were and what parts were not searched. The written opinion shall also be accompanied by such other observations as these Regulations provide for.

Rev. 10.2019, June 2020 T-72 PATENT COOPERATION TREATY Rule 44bis

(b) For the purposes of establishing the written (b) The International Searching Authority may opinion, Articles 33(2) to (6) and 35(2) and (3) and require that the party (applicant or designated Of®ce) Rules 43.4, 43.6 bis , 64, 65, 66.1(e), 66.7, 67, presenting the request pay to it the cost of preparing 70.2(b) and (d), 70.3, 70.4(ii), 70.5(a), 70.6 to 70.10, and mailing the copies. The level of the cost of 70.12, 70.14 and 70.15(a) shall apply mutatis preparing copies shall be provided for in the mutandis. agreements referred to in Article 16(3)(b) between (c) The written opinion shall contain a the International Searching Authorities and the noti®cation informing the applicant that, if a demand International Bureau. for international preliminary examination is made, (c) [Deleted] the written opinion shall, under Rule 66.1 bis(a) but (d) Any International Searching Authority may subject to Rule 66.1 bis(b), be considered to be a perform the obligations referred to in paragraphs (a) written opinion of the International Preliminary and (b) through another agency responsible to it. Examining Authority for the purposes of Rule 66.2(a), in which case the applicant is invited to Rule 44bis submit to that Authority, before the expiration of the time limit under Rule 54 bis.1(a), a written reply International Preliminary Report on together, where appropriate, with amendments. Patentability by the International Searching Rule 44 Authority

Transmittal of the International Search 44 bis.1 Issuance of Report; Transmittal to Report, Written Opinion, Etc. the Applicant

(a) Unless an international preliminary 44.1 Copies of Report or Declaration and examination report has been or is to be established, Written Opinion the International Bureau shall issue a report on behalf of the International Searching Authority (in this Rule The International Searching Authority shall, on the referred to as ªthe reportº) as to the matters referred same day, transmit one copy of the international to in Rule 43 bis.1(a). The report shall have the same search report or of the declaration referred to in contents as the written opinion established under Article 17(2)(a), and one copy of the written opinion Rule 43 bis.1. established under Rule 43 bis.1 to the International Bureau and one copy to the applicant. (b) The report shall bear the title ªinternational preliminary report on patentability (Chapter I of the 44.2 Title or Abstract Patent Cooperation Treaty)º together with an indication that it is issued under this Rule by the International Bureau on behalf of the International The international search report shall either state that Searching Authority. the International Searching Authority approves the title and the abstract as submitted by the applicant (c) The International Bureau shall promptly or be accompanied by the text of the title and/or transmit one copy of the report issued under abstract as established by the International Searching paragraph (a) to the applicant. Authority under Rules 37 and 38. 44 bis.2 Communication to Designated Of®ces 44.3 Copies of Cited Documents (a) Where a report has been issued under Rule (a) The request referred to in Article 20(3) may 44 bis.1, the International Bureau shall communicate be presented any time during seven years from the it to each designated Of®ce in accordance with Rule international ®ling date of the international 93 bis.1 but not before the expiration of 30 months application to which the international search report from the priority date. relates.

T-73 Rev. 10.2019, June 2020 Rule 45 MANUAL OF PATENT EXAMINING PROCEDURE

(b) Where the applicant makes an express Rule 45 request to a designated Of®ce under Article 23(2), the International Bureau shall communicate a copy Translation of the International Search of the written opinion established by the International Report Searching Authority under Rule 43 bis.1 to that Of®ce promptly upon the request of that Of®ce or of the applicant. 45.1 Languages

44 bis.3 Translation for Designated Of®ces International search reports and declarations referred to in Article 17(2)(a) shall, when not in English, be (a) Any designated State may, where a report translated into English. has been issued under Rule 44 bis.1 in a language other than the of®cial language, or one of the of®cial Rule 45bis languages, of its national Of®ce, require a translation of the report into English. Any such requirement shall be noti®ed to the International Bureau, which Supplementary International Searches shall promptly publish it in the Gazette. 45 bis.1 Supplementary Search Request (b) If a translation is required under paragraph (a), it shall be prepared by or under the responsibility (a) The applicant may, at any time prior to the of the International Bureau. expiration of 22 months from the priority date, (c) The International Bureau shall transmit a request that a supplementary international search be copy of the translation to any interested designated carried out in respect of the international application Of®ce and to the applicant at the same time as it by an International Searching Authority that is communicates the report to that Of®ce. competent to do so under Rule 45 bis.9. Such requests may be made in respect of more than one (d) In the case referred to in Rule 44 bis.2(b), such Authority. the written opinion established under Rule 43 bis.1 shall, upon request of the designated Of®ce (b) A request under paragraph (a) concerned, be translated into English by or under (ªsupplementary search requestº) shall be submitted the responsibility of the International Bureau. The to the International Bureau and shall indicate: International Bureau shall transmit a copy of the (i) the name and address of the applicant and translation to the designated Of®ce concerned within of the agent (if any), the title of the invention, the two months from the date of receipt of the request international ®ling date and the international for translation, and shall at the same time transmit application number; a copy to the applicant. (ii) the International Searching Authority that 44 bis.4 Observations on the Translation is requested to carry out the supplementary international search (ªAuthority speci®ed for The applicant may make written observations as to supplementary searchº); and the correctness of the translation referred to in Rule (iii) where the international application was 44 bis.3(b) or (d) and shall send a copy of the ®led in a language which is not accepted by that observations to each of the interested designated Authority, whether any translation furnished to the Of®ces and to the International Bureau. receiving Of®ce under Rule 12.3 or 12.4 is to form the basis of the supplementary international search. (c) The supplementary search request shall, where applicable, be accompanied by: (i) where neither the language in which the international application was ®led nor that in which a translation (if any) has been furnished under Rule 12.3 or 12.4 is accepted by the Authority speci®ed

Rev. 10.2019, June 2020 T-74 PATENT COOPERATION TREATY Rule 45bis

for supplementary search, a translation of the (d) The International Bureau shall refund the international application into a language which is supplementary search handling fee to the applicant accepted by that Authority; if, before the documents referred to in Rule 45 bis.4(e)(i) to (iv) are transmitted to the Authority (ii) preferably, a copy of a sequence listing speci®ed for supplementary search, the international in electronic form complying with the standard application is withdrawn or considered withdrawn, provided for in the Administrative Instructions, if or the supplementary search request is withdrawn required by the Authority speci®ed for or is considered not to have been submitted under supplementary search. Rule 45 bis.1(e). (d) Where the International Searching Authority 45 bis.3 Supplementary Search Fee has found that the international application does not comply with the requirement of unity of invention, (a) Each International Searching Authority the supplementary search request may contain an carrying out supplementary international searches indication of the wish of the applicant to restrict the may require that the applicant pay a fee supplementary international search to one of the (ªsupplementary search feeº) for its own bene®t for inventions as identi®ed by the International carrying out such a search. Searching Authority other than the main invention referred to in Article 17(3)(a). (b) The supplementary search fee shall be collected by the International Bureau. Rules 16.1(b) (e) The supplementary search request shall be to (e) shall apply mutatis mutandis. considered not to have been submitted, and the International Bureau shall so declare: (c) As to the time limit for payment of the supplementary search fee and the amount payable, (i) if it is received after the expiration of the the provisions of Rule 45 bis.2(c) shall apply mutatis time limit referred to in paragraph (a); or mutandis. (ii) if the Authority speci®ed for (d) The International Bureau shall refund the supplementary search has not stated, in the supplementary search fee to the applicant if, before applicable agreement under Article 16(3)(b), its the documents referred to in Rule 45 bis.4(e)(i) to preparedness to carry out such searches or is not (iv) are transmitted to the Authority speci®ed for competent to do so under Rule 45 bis.9(b). supplementary search, the international application 45 bis.2 Supplementary Search Handling Fee is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or is (a) The supplementary search request shall be considered not to have been submitted under Rule subject to the payment of a fee for the bene®t of the 45 bis.1(e) or 45 bis.4(d). International Bureau ("supplementary search (e) The Authority speci®ed for supplementary handling fee") as set out in the Schedule of Fees. search shall, to the extent and under the conditions (b) The supplementary search handling fee shall provided for in the applicable agreement under be paid in the currency in which the fee is set out in Article 16(3)(b), refund the supplementary search the Schedule of Fees or in any other currency fee if, before it has started the supplementary prescribed by the International Bureau. The amount international search in accordance with Rule in such other currency shall be the equivalent, in 45 bis.5(a), the supplementary search request is round ®gures, as established by the International considered not to have been submitted under Rule Bureau, of the amount as set out in the Schedule of 45 bis.5(g). Fees, and shall be published in the Gazette. 45 bis.4 Checking of Supplementary Search (c) The supplementary search handling fee shall Request; Correction of Defects; Late be paid to the International Bureau within one month Payment of Fees; Transmittal to Authority from the date of receipt of the supplementary search Speci®ed for Supplementary Search request. The amount payable shall be the amount applicable on the date of payment. (a) Promptly after receipt of a supplementary search request, the International Bureau shall check

T-75 Rev. 10.2019, June 2020 Rule 45bis MANUAL OF PATENT EXAMINING PROCEDURE

whether it complies with the requirements of Rule (vi) any invitation by the International 45 bis.1(b) and (c)(i) and shall invite the applicant Searching Authority to pay additional fees referred to correct any defects within a time limit of one to in Article 17(3)(a); and month from the date of the invitation. (vii) any protest by the applicant under Rule (b) Where, by the time they are due under Rules 40.2(c) and the decision thereon by the review body 45 bis.2(c) and 45 bis.3(c), the International Bureau constituted in the framework of the International ®nds that the supplementary search handling fee and Searching Authority. the supplementary search fee have not been paid in full, it shall invite the applicant to pay to it the (f) Upon request of the Authority speci®ed for amount required to cover those fees, together with supplementary search, the written opinion referred the late payment fee under paragraph (c), within a to in paragraph (e)(v) shall, when not in English or time limit of one month from the date of the in a language accepted by that Authority, be invitation. translated into English by or under the responsibility of the International Bureau. The International Bureau (c) The payment of fees in response to an shall transmit a copy of the translation to that invitation under paragraph (b) shall be subject to the Authority within two months from the date of receipt payment to the International Bureau, for its own of the request for translation, and shall at the same bene®t, of a late payment fee whose amount shall time transmit a copy to the applicant. be 50% of the supplementary search handling fee. (d) If the applicant does not furnish the required 45 bis.5 Start, Basis and Scope of correction or does not pay the amount in full of the Supplementary International Search fees due, including the late payment fee, before the expiration of the time limit applicable under (a) The Authority speci®ed for supplementary paragraph (a) or (b), respectively, the supplementary search shall start the supplementary international search request shall be considered not to have been search promptly after receipt of the documents submitted and the International Bureau shall so speci®ed in Rule 45 bis.4(e)(i) to (iv), provided that declare and shall inform the applicant accordingly. the Authority may, at its option, delay the start of the search until it has also received the documents (e) On ®nding that the requirements of Rule speci®ed in Rule 45 bis.4(e)(v) or until the expiration 45 bis.1(b) and (c)(i), 45 bis.2(c) and 45 bis.3(c) of 22 months from the priority date, whichever have been complied with, the International Bureau occurs ®rst. shall promptly, but not before the date of receipt by it of the international search report or the expiration (b) The supplementary international search shall of 17 months from the priority date, whichever be carried out on the basis of the international occurs ®rst, transmit to the Authority speci®ed for application as ®led or of a translation referred to in supplementary search a copy of each of the Rule 45 bis.1(b)(iii) or 45 bis.1(c)(i), taking due following: account of the international search report and the written opinion established under Rule 43 bis.1 (i) the supplementary search request; where they are available to the Authority speci®ed (ii) the international application; for supplementary search before it starts the search. Where the supplementary search request contains (iii) any sequence listing furnished under an indication under Rule 45 bis.1(d), the Rule 45 bis.1(c)(ii); and supplementary international search may be restricted (iv) any translation furnished under Rule to the invention speci®ed by the applicant under 12.3, 12.4 or 45 bis.1(c)(i) which is to be used as the Rule 45 bis.1(d) and those parts of the international basis of the supplementary international search; application which relate to that invention. (c) For the purposes of the supplementary and, at the same time, or promptly after their later international search, Article 17(2) and Rules 13 ter.1, receipt by the International Bureau: 33 and 39 shall apply mutatis mutandis. (v) the international search report and the (d) Where the international search report is written opinion established under Rule 43 bis.1; available to the Authority speci®ed for

Rev. 10.2019, June 2020 T-76 PATENT COOPERATION TREATY Rule 45bis

supplementary search before it starts the search under (iii) inform the applicant of the possibility paragraph (a), that Authority may exclude from the of requesting, within the time limit referred to in supplementary search any claims which were not paragraph (c), a review of the opinion. the subject of the international search. (b) In considering whether the international (e) Where the International Searching Authority application complies with the requirement of unity has made the declaration referred to in Article of invention, the Authority shall take due account 17(2)(a) and that declaration is available to the of any documents received by it under Rule Authority speci®ed for supplementary search before 45 bis.4(e)(vi) and (vii) before it starts the it starts the search under paragraph (a), that Authority supplementary international search. may decide not to establish a supplementary international search report, in which case it shall so (c) The applicant may, within one month from declare and promptly notify the applicant and the the date of the noti®cation under paragraph (a)(ii), International Bureau accordingly. request the Authority to review the opinion referred to in paragraph (a). The request for review may be (f) The supplementary international search shall subjected by the Authority to the payment to it, for cover at least the documentation indicated for that its own bene®t, of a review fee whose amount shall purpose in the applicable agreement under Article be ®xed by it. 16(3)(b). (d) If the applicant, within the time limit under (g) If the Authority speci®ed for supplementary paragraph (c), requests a review of the opinion by search ®nds that carrying out the search is entirely the Authority and pays any required review fee, the excluded by a limitation or condition referred to in opinion shall be reviewed by the Authority. The Rule 45 bis.9(a), other than a limitation under Article review shall not be carried out only by the person 17(2) as applicable by virtue of Rule 45 bis.5(c), the who made the decision which is the subject of the supplementary search request shall be considered review. Where the Authority: not to have been submitted, and the Authority shall so declare and shall promptly notify the applicant (i) ®nds that the opinion was entirely and the International Bureau accordingly. justi®ed, it shall notify the applicant accordingly; (h) The Authority speci®ed for supplementary (ii) ®nds that the opinion was partially search may, in accordance with a limitation or unjusti®ed but still considers that the international condition referred to in Rule 45 bis.9(a), decide to application does not comply with the requirement restrict the search to certain claims only, in which of unity of invention, it shall notify the applicant case the supplementary international search report accordingly and, where necessary, proceed as shall so indicate. provided for in paragraph (a)(i); 45 bis.6 Unity of Invention (iii) ®nds that the opinion was entirely unjusti®ed, it shall notify the applicant accordingly, establish the supplementary international search (a) If the Authority speci®ed for supplementary report on all parts of the international application search ®nds that the international application does and refund the review fee to the applicant. not comply with the requirement of unity of invention, it shall: (e) On the request of the applicant, the text of both the request for review and the decision thereon (i) establish the supplementary international shall be communicated to the designated Of®ces search report on those parts of the international together with the supplementary international search application which relate to the invention ®rst report. The applicant shall submit any translation mentioned in the claims ("main invention"); thereof with the furnishing of the translation of the (ii) notify the applicant of its opinion that the international application required under Article 22. international application does not comply with the (f) Paragraphs (a) to (e) shall apply mutatis requirement of unity of invention and specify the mutandis where the Authority speci®ed for reasons for that opinion; and supplementary search decides to restrict the supplementary international search in accordance with the second sentence of Rule 45 bis.5(b) or with

T-77 Rev. 10.2019, June 2020 Rule 45bis MANUAL OF PATENT EXAMINING PROCEDURE

Rule 45 bis.5(h), provided that any reference in the 45 bis.8 Transmittal and Effect of the said paragraphs to the "international application" Supplementary International Search Report shall be construed as a reference to those parts of the international application which relate to the (a) The Authority speci®ed for supplementary invention speci®ed by the applicant under Rule search shall, on the same day, transmit one copy of 45 bis.1(d) or which relate to the claims and those the supplementary international search report or the parts of the international application for which the declaration that no supplementary international Authority will carry out a supplementary search report shall be established, as applicable, to international search, respectively. the International Bureau and one copy to the 45 bis.7 Supplementary International Search applicant. Report (b) Subject to paragraph (c), Article 20(1) and Rules 45.1, 47.1(d) and 70.7(a) shall apply as if the (a) The Authority speci®ed for supplementary supplementary international search report were part search shall, within 28 months from the priority date, of the international search report. establish the supplementary international search (c) A supplementary international search report report, or make the declaration referred to in Article need not be taken into account by the International 17(2)(a) as applicable by virtue of Rule 45 bis.5(c) Preliminary Examining Authority for the purposes that no supplementary international search report of a written opinion or the international preliminary will be established. examination report if it is received by that Authority (b) Every supplementary international search after it has begun to draw up that opinion or report. report, any declaration referred to in Article 17(2)(a) as applicable by virtue of Rule 45 bis.5(c) and any 45 bis.9 International Searching Authorities declaration under Rule 45 bis.5(e) shall be in a Competent to Carry Out Supplementary language of publication. International Search

(c) For the purposes of establishing the (a) An International Searching Authority shall supplementary international search report, Rules be competent to carry out supplementary 43.1, 43.2, 43.5, 43.6, 43.6 bis , 43.8 and 43.10 shall, international searches if its preparedness to do so is subject to paragraphs (d) and (e), apply mutatis stated in the applicable agreement under Article mutandis. Rule 43.9 shall apply mutatis mutandis, 16(3)(b), subject to any limitations and conditions except that the references therein to Rules 43.3, 43.7 set out in that agreement. and 44.2 shall be considered non-existent. Article 20(3) and Rule 44.3 shall apply mutatis mutandis. (b) The International Searching Authority carrying out the international search under Article (d) The supplementary international search 16(1) in respect of an international application shall report need not contain the citation of any document not be competent to carry out a supplementary cited in the international search report, except where international search in respect of that application. the document needs to be cited in conjunction with other documents that were not cited in the (c) The limitations referred to in paragraph (a) international search report. may, for example, include limitations as to the subject matter for which supplementary international (e) The supplementary international search searches will be carried out, other than limitations report may contain explanations: under Article 17(2) as applicable by virtue of Rule (i) with regard to the citations of the 45 bis.5(c), limitations as to the total number of documents considered to be relevant; supplementary international searches which will be (ii) with regard to the scope of the carried out in a given period, and limitations to the supplementary international search. effect that the supplementary international searches will not extend to any claim beyond a certain number of claims. ------

Rev. 10.2019, June 2020 T-78 PATENT COOPERATION TREATY Rule 47

Rule 46 made only in connection with an amendment of that claim. Amendment of Claims before the 46.5 Form of Amendments International Bureau (a) The applicant, when making amendments 46.1 Time Limit under Article 19, shall be required to submit a replacement sheet or sheets containing a complete The time limit referred to in Article 19 shall be two set of claims in replacement of all the claims months from the date of transmittal of the originally ®led. international search report to the International (b) The replacement sheet or sheets shall be Bureau and to the applicant by the International accompanied by a letter which: Searching Authority or 16 months from the priority (i) shall identify the claims which, on account date, whichever time limit expires later, provided of the amendments, differ from the claims originally that any amendment made under Article 19 which ®led, and shall draw attention to the differences is received by the International Bureau after the between the claims originally ®led and the claims expiration of the applicable time limit shall be as amended; considered to have been received by that Bureau on the last day of that time limit if it reaches it before (ii) shall identify the claims originally ®led the technical preparations for international which, on account of the amendments, are cancelled; publication have been completed. (iii) shall indicate the basis for the amendments in the application as ®led. 46.2 Where to File Rule 47 Amendments made under Article 19 shall be ®led directly with the International Bureau. Communication to Designated Of®ces

46.3 Language of Amendments 47.1 Procedure

If the international application has been ®led in a (a) The communication provided for in Article language other than the language in which it is 20 shall be effected by the International Bureau to published, any amendment made under Article 19 each designated Of®ce in accordance with Rule shall be in the language of publication. 93 bis.1 but, subject to Rule 47.4, not prior to the international publication of the international application. 46.4 Statement (a-bis) The International Bureau shall notify (a) The statement referred to in Article 19(1) each designated Of®ce, in accordance with Rule shall be in the language in which the international 93 bis.1, of the fact and date of receipt of the record application is published and shall not exceed 500 copy and of the fact and date of receipt of any words if in the English language or if translated into priority document. that language. The statement shall be identi®ed as (b) Any amendment received by the International such by a heading, preferably by using the words Bureau within the time limit under Rule 46.1 which ªStatement under Article 19(1)º or their equivalent was not included in the communication provided for in the language of the statement. in Article 20 shall be communicated promptly to the (b) The statement shall contain no disparaging designated Of®ces by the International Bureau, and comments on the international search report or the the latter shall notify the applicant accordingly. relevance of citations contained in that report. (c) The International Bureau shall, promptly Reference to citations, relevant to a given claim, after the expiration of 28 months from the priority contained in the international search report may be date, send a notice to the applicant indicating:

T-79 Rev. 10.2019, June 2020 Rule 48 MANUAL OF PATENT EXAMINING PROCEDURE

(i) the designated Of®ces which have (b) Where the language in which the requested that the communication provided for in international application is published is different Article 20 be effected under Rule 93 bis.1 and the from the language in which it was ®led, the date of such communication to those Of®ces; and International Bureau shall furnish to any designated Of®ce, upon the request of that Of®ce, a copy of (ii) the designated Of®ces which have not that application in the language in which it was ®led. requested that the communication provided for in Article 20 be effected under Rule 93 bis.1. 47.4 Express Request under Article 23(2) prior to International Publication (c-bis) The notice referred to in paragraph (c) shall be accepted by designated Of®ces: Where the applicant makes an express request to a (i) in the case of a designated Of®ce referred designated Of®ce under Article 23(2) prior to the to in paragraph (c)(i), as conclusive evidence that international publication of the international the communication provided for in Article 20 was application, the International Bureau shall, upon effected on the date speci®ed in the notice; request of the applicant or the designated Of®ce, (ii) in the case of a designated Of®ce referred promptly effect the communication provided for in to in paragraph (c)(ii), as conclusive evidence that Article 20 to that Of®ce. the Contracting State for which that Of®ce acts as designated Of®ce does not require the furnishing, Rule 48 under Article 22, by the applicant of a copy of the international application. International Publication (d) Each designated Of®ce shall, when it so requires, receive the international search reports and 48.1 Form and Means the declarations referred to in Article 17(2)(a) also in the translation referred to in Rule 45.1. The form in which and the means by which (e) Where any designated Of®ce has not, before international applications are published shall be the expiration of 28 months from the priority date, governed by the Administrative Instructions. requested the International Bureau to effect the communication provided for in Article 20 in 48.2 Contents accordance with Rule 93 bis.1, the Contracting State for which that Of®ce acts as designated Of®ce shall (a) The publication of the international be considered to have noti®ed the International application shall contain: Bureau, under Rule 49.1(a- bis), that it does not (i) a standardized front page; require the furnishing, under Article 22, by the applicant of a copy of the international application. (ii) the description; (iii) the claims; 47.2 Copies (iv) the drawings, if any; The copies required for communication shall be (v) subject to paragraph (g), the international prepared by the International Bureau. Further details search report or the declaration under Article concerning the copies required for communication 17(2)(a); may be provided for in the Administrative (vi) any statement ®led under Article 19(1), Instructions. unless the International Bureau ®nds that the statement does not comply with the provisions of 47.3 Languages Rule 46.4; (a) The international application communicated (vii) where the request for publication under under Article 20 shall be in the language in which Rule 91.3(d) was received by the International it is published. Bureau before the completion of the technical preparations for international publication, any request for recti®cation of an obvious mistake, any

Rev. 10.2019, June 2020 T-80 PATENT COOPERATION TREATY Rule 48

reasons and any comments referred to in (vi) where applicable, an indication that the Rule 91.3(d); published international application contains (viii) the indications in relation to deposited information under Rule 26 bis.2 (d); biological material furnished under Rule 13 bis (vii) where applicable, an indication that the separately from the description, together with an published international application contains indication of the date on which the International information concerning a request under Rule 26 bis.3 Bureau received such indications; for restoration of the right of priority and the decision (ix) any information concerning a priority of the receiving Of®ce upon such request. claim referred to in Rule 26 bis .2(d); (c) Where a declaration under Article 17(2)(a) (x) any declaration referred to in Rule 4.17, has issued, the front page shall conspicuously refer and any correction thereof under Rule 26 ter.1, to that fact and need include neither a drawing nor which was received by the International Bureau an abstract. before the expiration of the time limit under Rule (d) The ®gure or ®gures referred to in paragraph 26 ter.1; (b)(ii) shall be selected as provided in Rule 8.2. (xi) any information concerning a request Reproduction of such ®gure or ®gures on the front under Rule 26 bis.3 for restoration of the right of page may be in a reduced form. priority and the decision of the receiving Of®ce upon (e) If there is not enough room on the front page such request, including information as to the criterion for the totality of the abstract referred to in paragraph for restoration upon which the decision was based. (b)(iii), the said abstract shall appear on the back of (b) Subject to paragraph (c), the front page shall the front page. The same shall apply to the include: translation of the abstract when such translation is required to be published under Rule 48.3(c). (i) data taken from the request sheet and such other data as are prescribed by the Administrative (f) If the claims have been amended under Instructions; Article 19, the publication of the international application shall contain the full text of the claims (ii) a ®gure or ®gures where the international both as ®led and as amended. Any statement referred application contains drawings, unless Rule 8.2(b) to in Article 19(1) shall be included as well, unless applies; the International Bureau ®nds that the statement does (iii) the abstract; if the abstract is both in not comply with the provisions of Rule 46.4. The English and in another language, the English text date of receipt of the amended claims by the shall appear ®rst; International Bureau shall be indicated. (iv) where applicable, an indication that the (g) If, at the time of the completion of the request contains a declaration referred to in Rule technical preparations for international publication, 4.17 which was received by the International Bureau the international search report is not yet available, before the expiration of the time limit under Rule the front page shall contain an indication to the effect 26 ter.1; that that report was not available and that the international search report (when it becomes (v) where the international ®ling date has available) will be separately published together with been accorded by the receiving Of®ce under a revised front page. Rule 20.3(b)(ii) or 20.5(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 (h) If, at the time of the completion of the of an element or part, an indication to that effect, technical preparations for international publication, together with an indication as to whether the the time limit for amending the claims under Article applicant, for the purposes of Rule 20.6(a)(ii), relied 19 has not expired, the front page shall refer to that on compliance with Rule 17.1(a), (b) or (b- bis) in fact and indicate that, should the claims be amended relation to the priority document or on a separately under Article 19, then, promptly after receipt by the submitted copy of the earlier application concerned; International Bureau of such amendments within the time limit under Rule 46.1, the full text of the claims as amended will be published together with a revised

T-81 Rev. 10.2019, June 2020 Rule 48 MANUAL OF PATENT EXAMINING PROCEDURE

front page. If a statement under Article 19(1) has been ®led, that statement shall be published as well, Rule 26.4 shall apply mutatis mutandis as to the unless the International Bureau ®nds that the manner in which the applicant shall present the statement does not comply with the provisions of information which is the subject of a request made Rule 46.4. under this paragraph. (i) If the authorization by the receiving Of®ce, (m) Where the receiving Of®ce, the International the International Searching Authority or the Searching Authority, the Authority speci®ed for International Bureau of a recti®cation of an obvious supplementary search or the International Bureau mistake in the international application under Rule notes any information meeting the criteria set out 91.1 is received by or, where applicable, given by under paragraph (l), that Of®ce, Authority or Bureau the International Bureau after completion of the may suggest to the applicant to request the omission technical preparations for international publication, from international publication in accordance with a statement re¯ecting all the recti®cations shall be paragraph (l). published, together with the sheets containing the (n) Where the International Bureau has omitted recti®cations, or the replacement sheets and the letter information from international publication in furnished under Rule 91.2, as the case may be, and accordance with paragraph (l) and that information the front page shall be republished. is also contained in the ®le of the international (j) If, at the time of completion of the technical application held by the receiving Of®ce, the preparations for international publication, a request International Searching Authority, the Authority under Rule 26 bis.3 for restoration of the right of speci®ed for supplementary search or the priority is still pending, the published international International Preliminary Examining Authority, the application shall contain, in place of the decision by International Bureau shall promptly notify that the receiving Of®ce upon that request, an indication Of®ce and Authority accordingly. to the effect that such decision was not available and that the decision, when it becomes available, will be 48.3 Languages of Publication separately published. (a) If the international application is ®led in (k) If a request for publication under Rule Arabic, Chinese, English, French, German, Japanese, 91.3(d) was received by the International Bureau Korean, Portuguese, Russian or Spanish (ªlanguages after the completion of the technical preparations of publicationº), that application shall be published for international publication, the request for in the language in which it was ®led. recti®cation, any reasons and any comments referred to in that Rule shall be promptly published after the (b) If the international application is not ®led in receipt of such request for publication, and the front a language of publication and a translation into a page shall be republished. language of publication has been furnished under Rule 12.3 or 12.4, that application shall be published (l) The International Bureau shall, upon a in the language of that translation. reasoned request by the applicant received by the International Bureau prior to the completion of the (c) If the international application is published technical preparations for international publication, in a language other than English, the international omit from publication any information, if it ®nds search report to the extent that it is published under that: Rule 48.2(a)(v), or the declaration referred to in Article 17(2)(a), the title of the invention, the (i) this information does not obviously serve abstract and any text matter pertaining to the ®gure the purpose of informing the public about the or ®gures accompanying the abstract shall be international application; published both in that language and in English. The (ii) publication of such information would translations, if not furnished by the applicant under clearly prejudice the personal or economic interests Rule 12.3, shall be prepared under the responsibility of any person; and of the International Bureau. (iii) there is no prevailing public interest to have access to that information.

Rev. 10.2019, June 2020 T-82 PATENT COOPERATION TREATY Rule 49

48.4 Earlier Publication on the Applicant's Rule 49 Request Copy, Translation and Fee under Article 22 (a) Where the applicant asks for publication under Articles 21(2)(b) and 64(3)(c)(i) and the 49.1 Noti®cation international search report, or the declaration referred to in Article 17(2)(a), is not yet available for (a) Any Contracting State requiring the publication together with the international furnishing of a translation or the payment of a application, the International Bureau shall collect a national fee, or both, under Article 22, shall notify special publication fee whose amount shall be ®xed the International Bureau of: in the Administrative Instructions. (i) the languages from which and the (b) Publication under Articles 21(2)(b) and language into which it requires translation, 64(3)(c)(i) shall be effected by the International Bureau promptly after the applicant has asked for it (ii) the amount of the national fee. and, where a special fee is due under paragraph (a), (a-bis) Any Contracting State not requiring the after receipt of such fee. furnishing, under Article 22, by the applicant of a copy of the international application (even though 48.5 Noti®cation of National Publication the communication of the copy of the international application by the International Bureau under Rule Where the publication of the international application 47 has not taken place by the expiration of the time by the International Bureau is governed by Article limit applicable under Article 22) shall notify the 64(3)(c)(ii), the national Of®ce concerned shall, International Bureau accordingly. promptly after effecting the national publication referred to in the said provision, notify the (a-ter) Any Contracting State which, pursuant International Bureau of the fact of such national to Article 24(2), maintains, if it is a designated State, publication. the effect provided for in Article 11(3) even though a copy of the international application is not 48.6 Announcing of Certain Facts furnished by the applicant by the expiration of the time limit applicable under Article 22 shall notify the International Bureau accordingly. (a) If any noti®cation under Rule 29.1(ii) reaches the International Bureau at a time later than that at (b) Any noti®cation received by the International which it was able to prevent the international Bureau under paragraphs (a), (a- bis) or (a- ter) shall publication of the international application, the be promptly published by the International Bureau International Bureau shall promptly publish a notice in the Gazette. in the Gazette reproducing the essence of such (c) If the requirements under paragraph (a) noti®cation. change later, such changes shall be noti®ed by the (b) [Deleted] Contracting State to the International Bureau and that Bureau shall promptly publish the noti®cation (c) If the international application, the in the Gazette. If the change means that translation designation of any designated State or the priority is required into a language which, before the change, claim is withdrawn under Rule 90 bis after the was not required, such change shall be effective only technical preparations for international publication with respect to international applications ®led later have been completed, notice of the withdrawal shall than two months after the publication of the be published in the Gazette. noti®cation in the Gazette. Otherwise, the effective date of any change shall be determined by the Contracting State.

T-83 Rev. 10.2019, June 2020 Rule 49 MANUAL OF PATENT EXAMINING PROCEDURE

49.2 Languages (a-bis) No designated Of®ce shall require the applicant to furnish to it a translation of any text The language into which translation may be required matter contained in the sequence listing part of the must be an of®cial language of the designated Of®ce. description if such sequence listing part complies If there are several of such languages, no translation with Rule 12.1(d) and if the description complies may be required if the international application is in with Rule 5.2(b). one of them. If there are several of®cial languages (b) Any designated Of®ce requiring the and a translation must be furnished, the applicant furnishing of a translation of the request shall furnish may choose any of those languages. Notwithstanding copies of the request form in the language of the the foregoing provisions of this paragraph, if there translation free of charge to the applicants. The form are several of®cial languages but the national law and contents of the request form in the language of prescribes the use of one such language for the translation shall not be different from those of foreigners, a translation into that language may be the request under Rules 3 and 4; in particular, the required. request form in the language of the translation shall not ask for any information that is not in the request 49.3 Statements under Article 19; Indications as ®led. The use of the request form in the language under Rule 13 bis.4 of the translation shall be optional. (c) Where the applicant did not furnish a For the purposes of Article 22 and the present Rule, translation of any statement made under Article any statement made under Article 19(1) and any 19(1), the designated Of®ce may disregard such indication furnished under Rule 13 bis.4 shall, statement. subject to Rule 49.5(c) and (h), be considered part (c-bis) Where the applicant furnishes, to a of the international application. designated Of®ce which requires under paragraph (a)(ii) a translation of both the claims as ®led and 49.4 Use of National Form the claims as amended, only one of the required two translations, the designated Of®ce may disregard No applicant shall be required to use a national form the claims of which a translation has not been when performing the acts referred to in Article 22. furnished or invite the applicant to furnish the missing translation within a time limit which shall 49.5 Contents of and Physical Requirements be reasonable under the circumstances and shall be for the Translation ®xed in the invitation. Where the designated Of®ce chooses to invite the applicant to furnish the missing (a) For the purposes of Article 22, the translation translation and the latter is not furnished within the of the international application shall contain the time limit ®xed in the invitation, the designated description (subject to paragraph (a- bis)), the claims, Of®ce may disregard those claims of which a any text matter of the drawings and the abstract. If translation has not been furnished or consider the required by the designated Of®ce, the translation international application withdrawn. shall also, subject to paragraphs (b), (c -bis) and (e), (d) If any drawing contains text matter, the (i) contain the request, translation of that text matter shall be furnished either in the form of a copy of the original drawing (ii) if the claims have been amended under with the translation pasted on the original text matter Article 19, contain both the claims as ®led and the or in the form of a drawing executed anew. claims as amended (the claims as amended shall be furnished in the form of a translation of the complete (e) Any designated Of®ce requiring under set of claims furnished under Rule 46.5(a) in paragraph (a) the furnishing of a copy of the replacement of all the claims originally ®led), and drawings shall, where the applicant failed to furnish such copy within the time limit applicable under (iii) be accompanied by a copy of the Article 22, invite the applicant to furnish such copy drawings. within a time limit which shall be reasonable under the circumstances and shall be ®xed in the invitation.

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(f) The expression ªFig.º does not require respect to that international application if it ®nds translation into any language. that any delay in meeting that time limit was (g) Where any copy of the drawings or any unintentional or, at the option of the designated drawing executed anew which has been furnished Of®ce, that the failure to meet that time limit under paragraph (d) or (e) does not comply with the occurred in spite of due care required by the physical requirements referred to in Rule 11, the circumstances having been taken. designated Of®ce may invite the applicant to correct (b) The request under paragraph (a) shall be the defect within a time limit which shall be submitted to the designated Of®ce, and the acts reasonable under the circumstances and shall be referred to in Article 22 shall be performed, within ®xed in the invitation. whichever of the following periods expires ®rst: (h) Where the applicant did not furnish a (i) two months from the date of removal of translation of the abstract or of any indication the cause of the failure to meet the applicable time furnished under Rule 13 bis.4, the designated Of®ce limit under Article 22; or shall invite the applicant to furnish such translation, (ii) 12 months from the date of the expiration if it deems it to be necessary, within a time limit of the applicable time limit under Article 22; which shall be reasonable under the circumstances and shall be ®xed in the invitation. provided that the applicant may submit the request (i) Information on any requirement and practice at any later time if so permitted by the national law of designated Of®ces under the second sentence of applicable by the designated Of®ce. paragraph (a) shall be published by the International (c) The request under paragraph (a) shall state Bureau in the Gazette. the reasons for the failure to comply with the (j) No designated Of®ce shall require that the applicable time limit under Article 22. translation of the international application comply (d) The national law applicable by the designated with physical requirements other than those Of®ce may require: prescribed for the international application as ®led. (i) that a fee be paid in respect of a request (k) Where a title has been established by the under paragraph (a); International Searching Authority pursuant to Rule 37.2, the translation shall contain the title as (ii) that a declaration or other evidence in established by that Authority. support of the reasons referred to in paragraph (c) be ®led. (l) If, on July 12, 1991, paragraph (c- bis) or paragraph (k) is not compatible with the national (e) The designated Of®ce shall not refuse a law applied by the designated Of®ce, the paragraph request under paragraph (a) without giving the concerned shall not apply to that designated Of®ce applicant the opportunity to make observations on for as long as it continues not to be compatible with the intended refusal within a time limit which shall that law, provided that the said Of®ce informs the be reasonable under the circumstances. International Bureau accordingly by December 31, (f) If, on October 1, 2002, paragraphs (a) to (e) 1991. The information received shall be promptly are not compatible with the national law applied by published by the International Bureau in the Gazette. the designated Of®ce, those paragraphs shall not 49.6 Reinstatement of Rights after Failure apply in respect of that designated Of®ce for as long to Perform the Acts Referred to in Article 22 as they continue not to be compatible with that law, provided that the said Of®ce informs the International Bureau accordingly by January 1, 2003. (a) Where the effect of the international The information received shall be promptly application provided for in Article 11(3) has ceased published by the International Bureau in the Gazette. because the applicant failed to perform the acts referred to in Article 22 within the applicable time limit, the designated Of®ce shall, upon request of the applicant, and subject to paragraphs (b) to (e) of this Rule, reinstate the rights of the applicant with

T-85 Rev. 10.2019, June 2020 Rule 49bis MANUAL OF PATENT EXAMINING PROCEDURE

Rule 49bis applicant that the international application is to be treated as an application for that kind of protection Indications as to Protection Sought for and the designated Of®ce shall inform the applicant accordingly. Purposes of National Processing 49 bis.2 Time of Furnishing Indications 49 bis.1 Choice of Certain Kinds of Protection (a) No designated Of®ce shall require the applicant to furnish, before performing the acts (a) If the applicant wishes the international referred to in Article 22, any indication referred to application to be treated, in a designated State in in Rule 49 bis.1 or, where applicable, any indication respect of which Article 43 applies, as an application as to whether the applicant seeks the grant of a not for the grant of a patent but for the grant of national patent or a regional patent. another kind of protection referred to in that Article, (b) The applicant may, if so permitted by the the applicant, when performing the acts referred to national law applicable by the designated Of®ce in Article 22, shall so indicate to the designated concerned, furnish such indication or, if applicable, Of®ce. convert from one kind of protection to another, at (b) If the applicant wishes the international any later time. application to be treated, in a designated State in Rule 49ter respect of which Article 44 applies, as an application for the grant of more than one kind of protection referred to in Article 43, the applicant, when Effect of Restoration of Right of Priority by performing the acts referred to in Article 22, shall Receiving Of®ce; Restoration of Right of so indicate to the designated Of®ce and shall Priority by Designated Of®ce indicate, if applicable, which kind of protection is sought primarily and which kind is sought 49 ter.1 Effect of Restoration of Right of subsidiarily. Priority by Receiving Of®ce (c) In the cases referred to in paragraphs (a) and (b), if the applicant wishes the international (a) Where the receiving Of®ce has restored a application to be treated, in a designated State, as an right of priority under Rule 26 bis.3 based on a application for a patent of addition, certi®cate of ®nding by it that the failure to ®le the international addition, inventor's certi®cate of addition or utility application within the priority period occurred in certi®cate of addition, the applicant, when spite of due care required by the circumstances performing the acts referred to in Article 22, shall having been taken, that restoration shall, subject to indicate the relevant parent application, parent patent paragraph (c), be effective in each designated State. or other parent grant. (b) Where the receiving Of®ce has restored a (d) If the applicant wishes the international right of priority under Rule 26 bis.3 based on a application to be treated, in a designated State, as an ®nding by it that the failure to ®le the international application for a continuation or a application within the priority period was continuation-in-part of an earlier application, the unintentional, that restoration shall, subject to applicant, when performing the acts referred to in paragraph (c), be effective in any designated State Article 22, shall so indicate to the designated Of®ce whose applicable national law provides for and shall indicate the relevant parent application. restoration of the right of priority based on that criterion or on a criterion which, from the viewpoint (e) Where no express indication under paragraph of applicants, is more favorable than that criterion. (a) is made by the applicant when performing the acts referred to in Article 22 but the national fee (c) A decision by the receiving Of®ce to restore referred to in Article 22 paid by the applicant a right of priority under Rule 26 bis.3 shall not be corresponds to the national fee for a particular kind effective in a designated State where the designated of protection, the payment of that fee shall be Of®ce, a court or any other competent organ of or considered to be an indication of the wish of the acting for that designated State ®nds that a

Rev. 10.2019, June 2020 T-86 PATENT COOPERATION TREATY Rule 49ter

requirement under Rule 26 bis.3(a), (b)(i) or (c) was (i) occurred in spite of due care required by not complied with, taking into account the reasons the circumstances having been taken; or stated in the request submitted to the receiving Of®ce under Rule 26 bis.3(a) and any declaration or other (ii) was unintentional. evidence ®led with the receiving Of®ce under Rule 26 bis.3(b)(iii). Each designated Of®ce shall apply at least one of those criteria and may apply both of them. (d) A designated Of®ce shall not review the decision of the receiving Of®ce unless it may (b) A request under paragraph (a) shall: reasonably doubt that a requirement referred to in (i) be ®led with the designated Of®ce within paragraph (c) was complied with, in which case the a time limit of one month from the applicable time designated Of®ce shall notify the applicant limit under Article 22 or, where the applicant makes accordingly, indicating the reasons for that doubt an express request to the designated Of®ce under and giving the applicant an opportunity to make Article 23(2), within a time limit of one month from observations within a reasonable time limit. the date of receipt of that request by the designated (e) No designated State shall be bound by a Of®ce; decision of the receiving Of®ce refusing a request (ii) state the reasons for the failure to ®le the under Rule 26 bis.3 for restoration of the right of international application within the priority period priority. and preferably be accompanied by any declaration (f) Where the receiving Of®ce has refused a or other evidence required under paragraph (c); and request for the restoration of the right of priority, (iii) be accompanied by any fee for any designated Of®ce may consider that request to requesting restoration required under paragraph (d). be a request for restoration submitted to that designated Of®ce under Rule 49 ter.2(a) within the (c) The designated Of®ce may require that a time limit under that Rule. declaration or other evidence in support of the statement of reasons referred to in paragraph (b)(ii) (g) If, on October 5, 2005, paragraphs (a) to (d) be ®led with it within a time limit which shall be are not compatible with the national law applied by reasonable under the circumstances. the designated Of®ce, those paragraphs shall not apply in respect of that Of®ce for as long as they (d) The submission of a request under continue not to be compatible with that law, provided paragraph (a) may be subjected by the designated that the said Of®ce informs the International Bureau Of®ce to the payment to it, for its own bene®t, of a accordingly by April 5, 2006. The information fee for requesting restoration. received shall be promptly published by the (e) The designated Of®ce shall not refuse, totally International Bureau in the Gazette. or in part, a request under paragraph (a) without giving the applicant the opportunity to make 49 ter.2 Restoration of Right of Priority by observations on the intended refusal within a time Designated Of®ce limit which shall be reasonable under the circumstances. Such notice of intended refusal may (a) Where the international application claims be sent by the designated Of®ce to the applicant the priority of an earlier application and has an together with any invitation to ®le a declaration or international ®ling date which is later than the date other evidence under paragraph (c). on which the priority period expired but within the period of two months from that date, the designated (f) Where the national law applicable by the Of®ce shall, on the request of the applicant in designated Of®ce provides, in respect of the accordance with paragraph (b), restore the right of restoration of the right of priority, for requirements priority if the Of®ce ®nds that a criterion applied by which, from the viewpoint of applicants, are more it (ªcriterion for restorationº) is satis®ed, namely, favorable than the requirements provided for under that the failure to ®le the international application paragraphs (a) and (b), the designated Of®ce may, within the priority period: when determining the right of priority, apply the requirements under the applicable national law instead of the requirements under those paragraphs.

T-87 Rev. 10.2019, June 2020 Rule 50 MANUAL OF PATENT EXAMINING PROCEDURE

(g) Each designated Of®ce shall inform the Rule 51 International Bureau of which of the criteria for restoration it applies, of the requirements, where Review by Designated Of®ces applicable, of the national law applicable in accordance with paragraph (f), and of any subsequent changes in that respect. The International Bureau 51.1 Time Limit for Presenting the Request shall promptly publish such information in the to Send Copies Gazette. The time limit referred to in Article 25(1)(c) shall (h) If, on October 5, 2005, paragraphs (a) to (g) be two months computed from the date of the are not compatible with the national law applied by noti®cation sent to the applicant under Rule 20.4(i), the designated Of®ce, those paragraphs shall not 24.2(c) or 29.1(ii). apply in respect of that Of®ce for as long as they continue not to be compatible with that law, provided that the said Of®ce informs the International Bureau 51.2 Copy of the Noti®cation accordingly by April 5, 2006. The information received shall be promptly published by the Where the applicant, after having received a negative International Bureau in the Gazette. determination under Article 11(1), requests the International Bureau, under Article 25(1), to send Rule 50 copies of the ®le of the purported international application to any of the named Of®ces he has Faculty under Article 22(3) attempted to designate, he shall attach to his request a copy of the noti®cation referred to in Rule 20.4(i). 50.1 Exercise of Faculty 51.3 Time Limit for Paying National Fee and (a) Any Contracting State allowing a time limit Furnishing Translation expiring later than the time limits provided for in Article 22(1) or (2) shall notify the International The time limit referred to in Article 25(2)(a) shall Bureau of the time limits so ®xed. expire at the same time as the time limit prescribed (b) Any noti®cation received by the International in Rule 51.1. Bureau under paragraph (a) shall be promptly published by the International Bureau in the Gazette. Rule 51bis (c) Noti®cations concerning the shortening of the previously ®xed time limit shall be effective in Certain National Requirements Allowed relation to international applications ®led after the under Article 27 expiration of three months computed from the date on which the noti®cation was published by the 51 bis.1 Certain National Requirements International Bureau. Allowed (d) Noti®cations concerning the lengthening of the previously ®xed time limit shall become effective (a) Subject to Rule 51 bis.2, the national law upon publication by the International Bureau in the applicable by the designated Of®ce may, in Gazette in respect of international applications accordance with Article 27, require the applicant to pending at the time or ®led after the date of such furnish, in particular: publication, or, if the Contracting State effecting the (i) any document relating to the identity of noti®cation ®xes some later date, as from the latter the inventor, date. (ii) any document relating to the applicant's entitlement to apply for or be granted a patent, (iii) any document containing any proof of the applicant's entitlement to claim priority of an earlier application where the applicant is not the

Rev. 10.2019, June 2020 T-88 PATENT COOPERATION TREATY Rule 51bis

applicant who ®led the earlier application or where (e) The national law applicable by the the applicant's name has changed since the date on designated Of®ce may, in accordance with which the earlier application was ®led, Article 27, require the applicant to furnish a translation of the priority document, provided that (iv) where the international application such a translation may only be required: designates a State whose national law requires, on October 9, 2012, the furnishing of an oath or (i) where the validity of the priority claim is declaration of inventorship, any document containing relevant to the determination of whether the an oath or declaration of inventorship, invention concerned is patentable; or (v) any evidence concerning non-prejudicial (ii) where the international ®ling date has disclosures or exceptions to lack of novelty, such as been accorded by the receiving Of®ce under disclosures resulting from abuse, disclosures at Rule 20.3(b)(ii) or 20.5(d) on the basis of the certain exhibitions and disclosures by the applicant incorporation by reference under Rules 4.18 and 20.6 during a certain period of time; of an element or part, for the purposes of determining under Rule 82 ter.1(b) whether that element or part (vi) the con®rmation of the international is completely contained in the priority document application by the signature of any applicant for the concerned, in which case the national law applicable designated State who has not signed the request; by the designated Of®ce may also require the (vii) any missing indication required under applicant to furnish, in the case of a part of the Rule 4.5(a)(ii) and (iii) in respect of any applicant description, claims or drawings, an indication as to for the designated State. where that part is contained in the translation of the priority document. (b) The national law applicable by the designated Of®ce may, in accordance with Article 27(7), require 51 bis.2 Certain Circumstances in Which that Documents or Evidence May Not Be (i) the applicant be represented by an agent Required having the right to represent applicants before that Of®ce and/or have an address in the designated State The designated Of®ce shall not, unless it may for the purpose of receiving noti®cations, reasonably doubt the veracity of the indications or (ii) the agent, if any, representing the declaration concerned, require any document or applicant be duly appointed by the applicant. evidence: (c) The national law applicable by the (i) relating to the identity of the inventor (Rule designated Of®ce may, in accordance with Article 51 bis.1(a)(i)) (other than a document containing an 27(1), require that the international application, the oath or declaration of inventorship (Rule translation thereof or any document relating thereto 51 bis.1(a)(iv)), if indications concerning the be furnished in more than one copy. inventor, in accordance with Rule 4.6, are contained (d) The national law applicable by the designated in the request or if a declaration as to the identity of Of®ce may, in accordance with Article 27(2)(ii), the inventor, in accordance with Rule 4.17(i), is require that the translation of the international contained in the request or is submitted directly to application furnished by the applicant under Article the designated Of®ce; 22 be: (ii) relating to the applicant's entitlement, as at (i) veri®ed by the applicant or the person the international ®ling date, to apply for and be having translated the international application in a granted a patent (Rule 51 bis.1(a)(ii)), if a declaration statement to the effect that, to the best of his as to that matter, in accordance with Rule 4.17(ii), knowledge, the translation is complete and faithful; is contained in the request or is submitted directly to the designated Of®ce; (ii) certi®ed by a public authority or sworn translator, but only where the designated Of®ce may (iii) relating to the applicant's entitlement, as at reasonably doubt the accuracy of the translation. the international ®ling date, to claim priority of an earlier application (Rule 51 bis.1(a)(iii)), if a declaration as to that matter, in accordance with Rule

T-89 Rev. 10.2019, June 2020 Rule 52 MANUAL OF PATENT EXAMINING PROCEDURE

4.17(iii), is contained in the request or is submitted Rule 52 directly to the designated Of®ce; (iv) containing an oath or declaration of Amendment of the Claims, the Description, inventorship (Rule 51 bis.1(a)(iv)), if a declaration and the Drawings, before Designated Of®ces of inventorship, in accordance with Rule 4.17(iv), is contained in the request or is submitted directly 52.1 Time Limit to the designated Of®ce. 51 bis.3 Opportunity to Comply with (a) In any designated State in which processing National Requirements or examination starts without special request, the applicant shall, if he so wishes, exercise the right (a) Where any of the requirements referred to in under Article 28 within one month from the Rule 51 bis.1(a)(i) to (iv) and (c) to (e), or any other ful®llment of the requirements under Article 22, requirement of the national law applicable by the provided that, if the communication under Rule 47.1 designated Of®ce which that Of®ce may apply in has not been effected by the expiration of the time accordance with Article 27(1) or (2), is not already limit applicable under Article 22, he shall exercise ful®lled during the same period within which the the said right not later than four months after such requirements under Article 22 must be complied expiration date. In either case, the applicant may with, the designated Of®ce shall invite the applicant exercise the said right at any later time if so to comply with the requirement within a time limit permitted by the national law of the said State. which shall not be less than two months from the (b) In any designated State in which the national date of the invitation. Each designated Of®ce may law provides that examination starts only on special require that the applicant pay a fee for complying request, the time limit within or the time at which with national requirements in response to the the applicant may exercise the right under Article invitation. 28 shall be the same as that provided by the national (b) Where any requirement of the national law law for the ®ling of amendments in the case of the applicable by the designated Of®ce which that Of®ce examination, on special request, of national may apply in accordance with Article 27(6) or (7) applications, provided that such time limit shall not is not already ful®lled during the same period within expire prior to, or such time shall not come before, which the requirements under Article 22 must be the expiration of the time limit applicable under complied with, the applicant shall have an paragraph (a). opportunity to comply with the requirement after Part C the expiration of that period. (c) If, on March 17, 2000, paragraph (a) is not Rules Concerning Chapter II of the Treaty compatible with the national law applied by the Rule 53 designated Of®ce in relation to the time limit referred to in that paragraph, the said paragraph shall not apply in respect of that Of®ce in relation to that The Demand time limit for as long as the said paragraph continues not to be compatible with that law, provided that the 53.1 Form said Of®ce informs the International Bureau accordingly by November 30, 2000. The information (a) The demand shall be made on a printed form received shall be promptly published by the or be presented as a computer print out. The International Bureau in the Gazette. particulars of the printed form and of a demand presented as a computer print out shall be prescribed by the Administrative Instructions. (b) Copies of printed demand forms shall be furnished free of charge by the receiving Of®ce or by the International Preliminary Examining Authority.

Rev. 10.2019, June 2020 T-90 PATENT COOPERATION TREATY Rule 54

53.2 Contents 53.7 Election of States

(a) The demand shall contain: The ®ling of a demand shall constitute the election (i) a petition, of all Contracting States which are designated and are bound by Chapter II of the Treaty. (ii) indications concerning the applicant and the agent if there is an agent, 53.8 Signature (iii) indications concerning the international application to which it relates, The demand shall be signed by the applicant or, if (iv) where applicable, a statement concerning there is more than one applicant, by all applicants amendments. making the demand. (b) The demand shall be signed. 53.9 Statement Concerning Amendments 53.3 The Petition (a) If amendments under Article 19 have been The petition shall be to the following effect and shall made, the statement concerning amendments shall preferably be worded as follows: ªDemand under indicate whether, for the purposes of the international Article 31 of the Patent Cooperation Treaty: The preliminary examination, the applicant wishes those undersigned requests that the international amendments: application speci®ed below be the subject of (i) to be taken into account, in which case a international preliminary examination according to copy of the amendments and of the letter required the Patent Cooperation Treaty.º under Rule 46.5(b) shall preferably be submitted with the demand; or 53.4 The Applicant (ii) to be considered as reversed by an amendment under Article 34. As to the indications concerning the applicant, Rules 4.4 and 4.16 shall apply, and Rule 4.5 shall apply (b) If no amendments under Article 19 have been mutatis mutandis. made and the time limit for ®ling such amendments has not expired, the statement may indicate that, 53.5 Agent or Common Representative should the International Preliminary Examining Authority wish to start the international preliminary examination at the same time as the international If an agent or common representative is appointed, search in accordance with Rule 69.1(b), the applicant the demand shall so indicate. Rules 4.4 and 4.16 wishes the start of the international preliminary shall apply, and Rule 4.7 shall apply mutatis examination to be postponed in accordance with mutandis. Rule 69.1(d). 53.6 Identi®cation of the International (c) If any amendments under Article 34 are Application submitted with the demand, the statement shall so indicate. The international application shall be identi®ed by Rule 54 the name and address of the applicant, the title of the invention, the international ®ling date (if known The Applicant Entitled to Make a Demand to the applicant) and the international application number or, where such number is not known to the 54.1 Residence and Nationality applicant, the name of the receiving Of®ce with which the international application was ®led. (a) Subject to the provisions of paragraph (b), the residence or nationality of the applicant shall, for the purposes of Article 31(2), be determined according to Rule 18.1(a) and (b).

T-91 Rev. 10.2019, June 2020 Rule 54bis MANUAL OF PATENT EXAMINING PROCEDURE

(b) The International Preliminary Examining Rule 54bis Authority shall, in the circumstances speci®ed in the Administrative Instructions, request the receiving Time Limit for Making a Demand Of®ce or, where the international application was ®led with the International Bureau as receiving Of®ce, the national Of®ce of, or acting for, the 54 bis.1 Time Limit for Making a Demand Contracting State concerned to decide the question (a) A demand may be made at any time prior to whether the applicant is a resident or national of the the expiration of whichever of the following periods Contracting State of which he claims to be a resident expires later: or national. The International Preliminary Examining Authority shall inform the applicant of any such (i) three months from the date of transmittal request. The applicant shall have an opportunity to to the applicant of the international search report or submit arguments directly to the Of®ce concerned. the declaration referred to in Article 17(2)(a), and The Of®ce concerned shall decide the said question of the written opinion established under Rule promptly. 43 bis.1; or 54.2 Right to Make a Demand (ii) 22 months from the priority date. (b) Any demand made after the expiration of the The right to make a demand under Article 31(2) shall time limit applicable under paragraph (a) shall be exist if the applicant making the demand or, if there considered as if it had not been submitted and the are two or more applicants, at least one of them is a International Preliminary Examining Authority shall resident or national of a Contracting State bound by so declare. Chapter II and the international application has been Rule 55 ®led with a receiving Of®ce of or acting for a Contracting State bound by Chapter II. Languages (International Preliminary 54.3 International Applications Filed with Examination) the International Bureau as Receiving Of®ce 55.1 Language of Demand Where the international application is ®led with the International Bureau as receiving Of®ce under Rule The demand shall be in the language of the 19.1(a)(iii), the International Bureau shall, for the international application or, if the international purposes of Article 31(2)(a), be considered to be application has been ®led in a language other than acting for the Contracting State of which the the language in which it is published, in the language applicant is a resident or national. of publication. However, if a translation of the international application is required under Rule 55.2, 54.4 Applicant Not Entitled to Make a the demand shall be in the language of that Demand translation. 55.2 Translation of International Application If the applicant does not have the right to make a demand or, in the case of two or more applicants, if (a) Where neither the language in which the none of them has the right to make a demand under international application is ®led nor the language in Rule 54.2, the demand shall be considered not to which the international application is published is have been submitted. accepted by the International Preliminary Examining Authority that is to carry out the international preliminary examination, the applicant shall, subject to paragraph (b), furnish with the demand a translation of the international application into a language which is both:

Rev. 10.2019, June 2020 T-92 PATENT COOPERATION TREATY Rule 55

(i) a language accepted by that Authority, submitted and the International Preliminary and Examining Authority shall so declare. (ii) a language of publication. 55.3 Language and Translation of Amendments and Letters (a-bis) A translation of the international application into a language referred to in paragraph (a) Subject to paragraph (b), if the international (a) shall include any element referred to in Article application has been ®led in a language other than 11(1)(iii)(d) or (e) furnished by the applicant under the language in which it is published, any Rule 20.3(b) or 20.6(a) and any part of the amendment under Article 34, as well as any letter description, claims or drawings furnished by the referred to in Rule 66.8(a), Rule 66.8(b) and Rule applicant under Rule 20.5(b) or 20.6(a) which is 46.5(b) as applicable by virtue of Rule 66.8(c), shall considered to have been contained in the be submitted in the language of publication. international application under Rule 20.6(b). (b) Where a translation of the international (a-ter) The International Preliminary Examining application is required under Rule 55.2: Authority shall check any translation furnished under paragraph (a) for compliance with the physical (i) any amendment and any letter referred to requirements referred to in Rule 11 to the extent that in paragraph (a); and compliance therewith is necessary for the purposes (ii) any amendment under Article 19 which of the international preliminary examination. is to be taken into account under Rule 66.1(c) or (d) (b) Where a translation of the international and any letter referred to in Rule 46.5(b); application into a language referred to in paragraph (a) was transmitted to the International Searching shall be in the language of that translation. Where Authority under Rule 23.1(b) and the International such amendments or letters have been or are Preliminary Examining Authority is part of the same submitted in another language, a translation shall national Of®ce or intergovernmental organization also be submitted. as the International Searching Authority, the (c) If an amendment or letter is not submitted in applicant need not furnish a translation under a language as required under paragraph (a) or (b), paragraph (a). In such a case, unless the applicant the International Preliminary Examining Authority furnishes a translation under paragraph (a), the shall invite the applicant to submit the amendment international preliminary examination shall be or letter in the required language within a time limit carried out on the basis of the translation transmitted which shall be reasonable under the circumstances. under Rule 23.1(b). That time limit shall not be less than one month from (c) If a requirement referred to in paragraphs (a), the date of the invitation. It may be extended by the (a- bis ) and (a- ter ) is not complied with and International Preliminary Examining Authority at paragraph (b) does not apply, the International any time before a decision is taken. Preliminary Examining Authority shall invite the (d) If the applicant fails to comply, within the applicant to furnish the required translation or the time limit under paragraph (c), with the invitation required correction, as the case may be, within a to furnish an amendment in the required language, time limit which shall be reasonable under the the amendment shall not be taken into account for circumstances. That time limit shall not be less than the purposes of the international preliminary one month from the date of the invitation. It may be examination. If the applicant fails to comply, within extended by the International Preliminary Examining the time limit under paragraph (c), with the invitation Authority at any time before a decision is taken. to furnish a letter referred to in paragraph (a) in the (d) If the applicant complies with the invitation required language, the amendment concerned need within the time limit under paragraph (c), the said not be taken into account for the purposes of the requirement shall be considered to have been international preliminary examination. complied with. If the applicant fails to do so, the demand shall be considered not to have been

T-93 Rev. 10.2019, June 2020 Rule 56 MANUAL OF PATENT EXAMINING PROCEDURE

Rule 56 established by the Director General according to directives given by the Assembly as referred to in [Deleted] item (i), to the International Bureau. 57.3 Time Limit for Payment; Amount Rule 57 Payable

The Handling Fee (a) Subject to paragraphs (b) and (c), the handling fee shall be paid within one month from 57.1 Requirement to Pay the date on which the demand was submitted or 22 months from the priority date, whichever expires Each demand for international preliminary later. examination shall be subject to the payment of a fee (b) Subject to paragraph (c), where the demand for the bene®t of the International Bureau (ªhandling was transmitted to the International Preliminary feeº) to be collected by the International Preliminary Examining Authority under Rule 59.3, the handling Examining Authority to which the demand is fee shall be paid within one month from the date of submitted. receipt by that Authority or 22 months from the priority date, whichever expires later. 57.2 Amount (c) Where, in accordance with Rule 69.1(b), the (a) The amount of the handling fee is as set out International Preliminary Examining Authority in the Schedule of Fees. wishes to start the international preliminary examination at the same time as the international (b) The handling fee shall be payable in the search, that Authority shall invite the applicant to currency or one of the currencies prescribed by the pay the handling fee within one month from the date International Preliminary Examining Authority of the invitation. ("prescribed currency"). (d) The amount of the handling fee payable shall (c) Where the prescribed currency is the Swiss be the amount applicable on the date of payment. franc, the Authority shall promptly transfer the said fee to the International Bureau in Swiss francs. 57.4 Refund (d) Where the prescribed currency is a currency The International Preliminary Examining Authority other than the Swiss franc and that currency: shall refund the handling fee to the applicant: (i) is freely convertible into Swiss francs, the Director General shall establish, for each Authority (i) if the demand is withdrawn before the which prescribes such a currency for the payment demand has been sent by that Authority to the of the handling fee, an equivalent amount of that fee International Bureau, or in the prescribed currency according to directives (ii) if the demand is considered, under Rule 54.4 given by the Assembly, and the amount in that or 54 bis.1(b), not to have been submitted. currency shall promptly be transferred by the Authority to the International Bureau; Rule 58 (ii) is not freely convertible into Swiss francs, the Authority shall be responsible for the conversion The Preliminary Examination Fee of the handling fee from the prescribed currency into Swiss francs and shall promptly transfer that fee in 58.1 Right to Ask for a Fee Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau. Alternatively, (a) Each International Preliminary Examining if the Authority so wishes, it may convert the Authority may require that the applicant pay a fee handling fee from the prescribed currency into euros (ªpreliminary examination feeº) for its own bene®t or US dollars and promptly transfer the equivalent for carrying out the international preliminary amount of that fee in euros or US dollars, as examination and for performing all other tasks

Rev. 10.2019, June 2020 T-94 PATENT COOPERATION TREATY Rule 58bis

entrusted to International Preliminary Examining where applicable, the late payment fee under Rule Authorities under the Treaty and these Regulations. 58 bis.2, within a time limit of one month from the (b) The amount of the preliminary examination date of the invitation. fee, if any, shall be ®xed by the International (b) Where the International Preliminary Preliminary Examining Authority. As to the time Examining Authority has sent an invitation under limit for payment of the preliminary examination paragraph (a) and the applicant has not, within the fee and the amount payable, the provisions of Rule time limit referred to in that paragraph, paid in full 57.3 relating to the handling fee shall apply mutatis the amount due, including, where applicable, the late mutandis. payment fee under Rule 58 bis.2, the demand shall, (c) The preliminary examination fee shall be subject to paragraph (c), be considered as if it had payable directly to the International Preliminary not been submitted and the International Preliminary Examining Authority. Where that Authority is a Examining Authority shall so declare. national Of®ce, it shall be payable in the currency (c) Any payment received by the International prescribed by that Of®ce, and where the Authority Preliminary Examining Authority before that is an intergovernmental organization, it shall be Authority sends the invitation under paragraph (a) payable in the currency of the State in which the shall be considered to have been received before the intergovernmental organization is located or in any expiration of the time limit under Rule 57.3 or other currency which is freely convertible into the 58.1(b), as the case may be. currency of the said State. (d) Any payment received by the International 58.2 [Deleted] Preliminary Examining Authority before that Authority proceeds under paragraph (b) shall be 58.3 Refund considered to have been received before the expiration of the time limit under paragraph (a). The International Preliminary Examining Authorities 58 bis.2 Late Payment Fee shall inform the International Bureau of the extent, if any, to which, and the conditions, if any, under (a) The payment of fees in response to an which, they will refund any amount paid as a invitation under Rule 58 bis.1(a) may be subjected preliminary examination fee where the demand is by the International Preliminary Examining considered as if it had not been submitted, and the Authority to the payment to it, for its own bene®t, International Bureau shall promptly publish such of a late payment fee. The amount of that fee shall information. be: Rule 58bis (i) 50% of the amount of unpaid fees which is speci®ed in the invitation, or, Extension of Time Limits for Payment of Fees (ii) if the amount calculated under item (i) is less than the handling fee, an amount equal to the 58 bis.1 Invitation by the International handling fee. Preliminary Examining Authority (b) The amount of the late payment fee shall not, however, exceed double the amount of the handling (a) Where the International Preliminary fee. Examining Authority ®nds: (i) that the amount paid to it is insuf®cient to cover the handling fee and the preliminary examination fee; or (ii) by the time they are due under Rules 57.3 and 58.1(b), that no fees were paid to it; the Authority shall invite the applicant to pay to it the amount required to cover those fees, together with,

T-95 Rev. 10.2019, June 2020 Rule 59 MANUAL OF PATENT EXAMINING PROCEDURE

Rule 59 preliminary examination of the international application, that Of®ce or Authority shall mark the The Competent International Preliminary date of receipt on the demand and, unless it decides to proceed under paragraph (f), transmit the demand Examining Authority promptly to the International Bureau. 59.1 Demands under Article 31(2)(a) (b) If the demand is submitted to the International Bureau, the International Bureau shall (a) For demands made under Article 31(2)(a), mark the date of receipt on the demand. each receiving Of®ce of or acting for a Contracting (c) Where the demand is transmitted to the State bound by the provisions of Chapter II shall, in International Bureau under paragraph (a) or accordance with the terms of the applicable submitted to it under paragraph (b), the International agreement referred to in Article 32(2) and (3), inform Bureau shall promptly: the International Bureau which International (i) if there is only one competent Preliminary Examining Authority is or which International Preliminary Examining Authority, International Preliminary Examining Authorities are transmit the demand to that Authority and inform competent for the international preliminary the applicant accordingly, or examination of international applications ®led with it. The International Bureau shall promptly publish (ii) if two or more International Preliminary such information. Where several International Examining Authorities are competent, invite the Preliminary Examining Authorities are competent, applicant to indicate, within the time limit applicable the provisions of Rule 35.2 shall apply mutatis under Rule 54 bis.1(a) or 15 days from the date of mutandis. the invitation, whichever is later, the competent International Preliminary Examining Authority to (b) Where the international application was ®led which the demand should be transmitted. with the International Bureau as receiving Of®ce under Rule 19.1(a)(iii), Rule 35.3(a) and (b) shall (d) Where an indication is furnished as required apply mutatis mutandis. Paragraph (a) of this Rule under paragraph (c)(ii), the International Bureau shall not apply to the International Bureau as shall promptly transmit the demand to the competent receiving Of®ce under Rule 19.1(a)(iii). International Preliminary Examining Authority indicated by the applicant. Where no indication is 59.2 Demands under Article 31(2)(b) so furnished, the demand shall be considered not to have been submitted and the International Bureau As to demands made under Article 31(2)(b), the shall so declare. Assembly, in specifying the International (e) Where the demand is transmitted to a Preliminary Examining Authority competent for competent International Preliminary Examining international applications ®led with a national Of®ce Authority under paragraph (c), it shall be considered which is an International Preliminary Examining to have been received on behalf of that Authority on Authority, shall give preference to that Authority; the date marked on it under paragraph (a) or (b), as if the national Of®ce is not an International applicable, and the demand so transmitted shall be Preliminary Examining Authority, the Assembly considered to have been received by that Authority shall give preference to the International Preliminary on that date. Examining Authority recommended by that Of®ce. (f) Where an Of®ce or Authority to which the 59.3 Transmittal of the Demand to the demand is submitted under paragraph (a) decides to Competent International Preliminary transmit that demand directly to the competent Examining Authority International Preliminary Examining Authority, paragraphs (c) to (e) shall apply mutatis mutandis. (a) If the demand is submitted to a receiving Of®ce, an International Searching Authority, or an International Preliminary Examining Authority which is not competent for the international

Rev. 10.2019, June 2020 T-96 PATENT COOPERATION TREATY Rule 61

Rule 60 Preliminary Examining Authority shall proceed as provided for in Rules 66.1 and 69.1(a) or (b). Certain Defects in the Demand (g) Where the statement concerning amendments contains an indication that amendments under Article 60.1 Defects in the Demand 34 are submitted with the demand (Rule 53.9(c)) but no such amendments are, in fact, submitted, the (a) Subject to paragraphs (a -bis) and (a- ter), if International Preliminary Examining Authority shall the demand does not comply with the requirements invite the applicant to submit the amendments within speci®ed in Rules 53.1, 53.2(a)(i) to (iii), 53.2(b), a time limit ®xed in the invitation and shall proceed 53.3 to 53.8 and 55.1, the International Preliminary as provided for in Rule 69.1(e). Examining Authority shall invite the applicant to Rule 61 correct the defects within a time limit which shall be reasonable under the circumstances. That time limit shall not be less than one month from the date Noti®cation of the Demand and Elections of the invitation. It may be extended by the International Preliminary Examining Authority at 61.1 Noti®cation to the International Bureau any time before a decision is taken. and the Applicant (a-bis) For the purposes of Rule 53.4, if there (a) The International Preliminary Examining are two or more applicants, it shall be suf®cient that Authority shall indicate on the demand the date of the indications referred to in Rule 4.5(a)(ii) and (iii) receipt or, where applicable, the date referred to in be provided in respect of one of them who has the Rule 60.1(b). The International Preliminary right according to Rule 54.2 to make a demand. Examining Authority shall promptly either send the (a-ter) For the purposes of Rule 53.8, if there demand to the International Bureau and keep a copy are two or more applicants, it shall be suf®cient that in its ®les or send a copy to the International Bureau the demand be signed by one of them. and keep the demand in its ®les. (b) If the applicant complies with the invitation (b) The International Preliminary Examining within the time limit under paragraph (a), the demand Authority shall promptly notify the applicant of the shall be considered as if it had been received on the date of receipt of the demand. Where the demand actual ®ling date, provided that the demand as has been considered under Rules 54.4, 55.2(d), submitted permitted the international application to 58 bis.1(b) or 60.1(c) as if it had not been submitted, be identi®ed; otherwise, the demand shall be the International Preliminary Examining Authority considered as if it had been received on the date on shall notify the applicant and the International which the International Preliminary Examining Bureau accordingly. Authority receives the correction. 61.2 Noti®cation to the Elected Of®ces (c) If the applicant does not comply with the invitation within the time limit under paragraph (a), (a) The noti®cation provided for in Article 31(7) the demand shall be considered as if it had not been shall be effected by the International Bureau. submitted and the International Preliminary Examining Authority shall so declare. (b) The noti®cation shall indicate the number and ®ling date of the international application, the (d) [Deleted] name of the applicant, the ®ling date of the (e) If the defect is noticed by the International application whose priority is claimed (where priority Bureau, it shall bring the defect to the attention of is claimed) and the date of receipt by the the International Preliminary Examining Authority, International Preliminary Examining Authority of which shall then proceed as provided in paragraphs the demand. (a) to (c). (c) The noti®cation shall be sent to the elected (f) If the demand does not contain a statement Of®ce together with the communication provided concerning amendments, the International for in Article 20. Elections effected after such

T-97 Rev. 10.2019, June 2020 Rule 62 MANUAL OF PATENT EXAMINING PROCEDURE

communication shall be noti®ed promptly after they (ii) a copy of any amendment under Article 19, have been made. any statement referred to in that Article, and the (d) Where the applicant makes an express letter required under Rule 46.5(b), unless that request to an elected Of®ce under Article 40(2) prior Authority has indicated that it has already received to the international publication of the international such a copy. application, the International Bureau shall, upon 62.2 Amendments Made after the Demand request of the applicant or the elected Of®ce, Is Filed promptly effect the communication provided for in Article 20 to that Of®ce. If, at the time of ®ling any amendments under Article 61.3 Information for the Applicant 19, a demand has already been submitted, the applicant shall preferably, at the same time as he The International Bureau shall inform the applicant ®les the amendments with the International Bureau, in writing of the noti®cation referred to in Rule 61.2 also ®le with the International Preliminary and of the elected Of®ces noti®ed under Article Examining Authority a copy of such amendments, 31(7). any statement referred to in that Article and the letter required under Rule 46.5(b). In any case, the 61.4 Publication in the Gazette International Bureau shall promptly transmit a copy of such amendments, statement and letter to that Authority. The International Bureau shall, promptly after the ®ling of the demand but not before the international publication of the international application, publish Rule 62bis in the Gazette information on the demand and the elected States concerned, as provided in the Translation for the International Preliminary Administrative Instructions. Examining Authority of the Written Opinion of the International Searching Authority Rule 62 62 bis.1 Translation and Observations Copy of the Written Opinion by the International Searching Authority and of (a) Upon request of the International Preliminary Amendments under Article 19 for the Examining Authority, the written opinion established under Rule 43 bis.1 shall, when not in English or in International Preliminary Examining a language accepted by that Authority, be translated Authority into English by or under the responsibility of the International Bureau. 62.1 Copy of Written Opinion by (b) The International Bureau shall transmit a International Searching Authority and of copy of the translation to the International Amendments Made before the Demand Is Preliminary Examining Authority within two months Filed from the date of receipt of the request for translation, and shall at the same time transmit a copy to the Upon receipt of a demand, or a copy thereof, from applicant. the International Preliminary Examining Authority, (c) The applicant may make written observations the International Bureau shall promptly transmit to as to the correctness of the translation and shall send that Authority: a copy of the observations to the International (i) a copy of the written opinion established Preliminary Examining Authority and to the under Rule 43 bis.1, unless the national Of®ce or International Bureau. intergovernmental organization that acted as International Searching Authority is also acting as International Preliminary Examining Authority; and

Rev. 10.2019, June 2020 T-98 PATENT COOPERATION TREATY Rule 64

Rule 63 application under international preliminary examination; Minimum Requirements for International (ii) where the international application under Preliminary Examining Authorities international preliminary examination claims the priority of an earlier application and has an 63.1 De®nition of Minimum Requirements international ®ling date which is within the priority period, the ®ling date of such earlier application, The minimum requirements referred to in Article unless the International Preliminary Examining 32(3) shall be the following: Authority considers that the priority claim is not valid; (i) the national Of®ce or intergovernmental (iii) where the international application under organization must have at least 100 full-time international preliminary examination claims the employees with suf®cient technical quali®cations priority of an earlier application and has an to carry out examinations; international ®ling date which is later than the date (ii) that Of®ce or organization must have at its on which the priority period expired but within the ready disposal at least the minimum documentation period of two months from that date, the ®ling date referred to in Rule 34, properly arranged for of such earlier application, unless the International examination purposes; Preliminary Examining Authority considers that the (iii) that Of®ce or organization must have a staff priority claim is not valid for reasons other than the which is capable of examining in the required fact that the international application has an technical ®elds and which has the language facilities international ®ling date which is later than the date to understand at least those languages in which the on which the priority period expired. minimum documentation referred to in Rule 34 is 64.2 Non-Written Disclosures written or is translated; (iv) that Of®ce or organization must have in In cases where the making available to the public place a quality management system and internal occurred by means of an oral disclosure, use, review arrangements in accordance with the common exhibition or other non-written means (ªnon-written rules of international preliminary examination; disclosureº) before the relevant date as de®ned in (v) that Of®ce or organization must hold an Rule 64.1(b) and the date of such non-written appointment as an International Searching Authority. disclosure is indicated in a written disclosure which has been made available to the public on a date Rule 64 which is the same as, or later than, the relevant date, the non-written disclosure shall not be considered Prior Art for International Preliminary part of the prior art for the purposes of Article 33(2) Examination and (3). Nevertheless, the international preliminary examination report shall call attention to such 64.1 Prior Art non-written disclosure in the manner provided for in Rule 70.9. (a) For the purposes of Article 33(2) and (3), everything made available to the public anywhere 64.3 Certain Published Documents in the world by means of written disclosure (including drawings and other illustrations) shall be In cases where any application or any patent which considered prior art provided that such making would constitute prior art for the purposes of Article available occurred prior to the relevant date. 33(2) and (3) had it been published prior to the relevant date referred to in Rule 64.1 was published (b) For the purposes of paragraph (a), the on a date which is the same as, or later than, the relevant date shall be: relevant date but was ®led earlier than the relevant (i) subject to items (ii) and (iii), the date or claimed the priority of an earlier application international ®ling date of the international

T-99 Rev. 10.2019, June 2020 Rule 65 MANUAL OF PATENT EXAMINING PROCEDURE

which had been ®led prior to the relevant date, such account for the purposes of the international published application or patent shall not be preliminary examination unless superseded, or considered part of the prior art for the purposes of considered as reversed, by an amendment under Article 33(2) and (3). Nevertheless, the international Article 34. preliminary examination report shall call attention (d) Any amendments under Article 19 made after to such application or patent in the manner provided the demand was ®led and any amendments under for in Rule 70.10. Article 34 submitted to the International Preliminary Examining Authority shall, subject to Rule 66.4 bis Rule 65 , be taken into account for the purposes of the international preliminary examination. Inventive Step or Non-Obviousness (d- bis) A recti®cation of an obvious mistake that is authorized under Rule 91.1 shall, subject to 65.1 Approach to Prior Art Rule 66.4 bis , be taken into account by the International Preliminary Examining Authority for For the purposes of Article 33(3), the international the purposes of the international preliminary preliminary examination shall take into consideration examination. the relation of any particular claim to the prior art (e) Claims relating to inventions in respect of as a whole. It shall take into consideration the claim©s which no international search report has been relation not only to individual documents or parts established need not be the subject of international thereof taken separately but also its relation to preliminary examination. combinations of such documents or parts of documents, where such combinations are obvious 66.1 bis Written Opinion of the International to a person skilled in the art. Searching Authority

65.2 Relevant Date (a) Subject to paragraph (b), the written opinion established by the International Searching Authority For the purposes of Article 33(3), the relevant date under Rule 43 bis.1 shall be considered to be a for the consideration of inventive step written opinion of the International Preliminary (non-obviousness) is the date prescribed in Rule Examining Authority for the purposes of Rule 64.1. 66.2(a). (b) An International Preliminary Examining Rule 66 Authority may notify the International Bureau that paragraph (a) shall not apply to the procedure before Procedure before the International it in respect of written opinions established under Preliminary Examining Authority Rule 43 bis.1 by the International Searching Authority or Authorities speci®ed in the noti®cation, provided that such a noti®cation shall not apply to 66.1 Basis of the International Preliminary cases where the national Of®ce or intergovernmental Examination organization that acted as International Searching Authority is also acting as International Preliminary (a) Subject to paragraphs (b) to (d), the Examining Authority. The International Bureau shall international preliminary examination shall be based promptly publish any such noti®cation in the on the international application as ®led. Gazette. (b) The applicant may submit amendments under (c) Where the written opinion established by the Article 34 at the time of ®ling the demand or, subject International Searching Authority under Rule to Rule 66.4 bis , until the international preliminary 43 bis.1 is not, by virtue of a noti®cation under examination report is established. paragraph (b), considered to be a written opinion of (c) Any amendments under Article 19 made the International Preliminary Examining Authority before the demand was ®led shall be taken into for the purposes of Rule 66.2(a), the International

Rev. 10.2019, June 2020 T-100 PATENT COOPERATION TREATY Rule 66

Preliminary Examining Authority shall notify the the clarity of the claims, the description, and the applicant accordingly in writing. drawings, or the question whether the claims are (d) A written opinion established by the fully supported by the description, International Searching Authority under Rule (vi) considers that a claim relates to an 43 bis.1 which is not, by virtue of a noti®cation invention in respect of which no international search under paragraph (b), considered to be a written report has been established and has decided not to opinion of the International Preliminary Examining carry out the international preliminary examination Authority for the purposes of Rule 66.2(a) shall in respect of that claim, or nevertheless be taken into account by the International Preliminary Examining Authority in (vii) considers that a nucleotide and/or amino proceeding under Rule 66.2(a). acid sequence listing is not available to it in such a form that a meaningful international preliminary 66.1 ter Top-up Searches examination can be carried out, the said Authority shall notify the applicant accordingly in writing. The International Preliminary Examining Authority Where the national law of the national Of®ce acting shall conduct a search (ªtop-up searchº) to discover as International Preliminary Examining Authority documents referred to in Rule 64 which have been does not allow multiple dependent claims to be published or have become available to the said drafted in a manner different from that provided for Authority for search subsequent to the date on which in the second and third sentences of Rule 6.4(a), the the international search report was established, unless International Preliminary Examining Authority may, it considers that such a search would serve no useful in case of failure to use that manner of claiming, purpose. If the Authority ®nds that any of the apply Article 34(4)(b). In such case, it shall notify situations referred to in Article 34(3) or (4) or Rule the applicant accordingly in writing. 66.1(e) exists, the top-up search shall cover only (b) The noti®cation shall fully state the reasons those parts of the international application that are for the opinion of the International Preliminary the subject of international preliminary examination. Examining Authority. 66.2 Written Opinion of the International (c) The noti®cation shall invite the applicant to Preliminary Examining Authority submit a written reply together, where appropriate, with amendments. (a) If the International Preliminary Examining (d) The noti®cation shall ®x a time limit for the Authority reply. The time limit shall be reasonable under the (i) considers that any of the situations circumstances. It shall normally be two months after referred to in Article 34(4) exists, the date of noti®cation. In no case shall it be shorter than one month after the said date. It shall be at least (ii) considers that the international two months after the said date where the preliminary examination report should be negative international search report is transmitted at the same in respect of any of the claims because the invention time as the noti®cation. It shall, subject to paragraph claimed therein does not appear to be novel, does (e), not be more than three months after the said date. not appear to involve an inventive step (does not appear to be non-obvious), or does not appear to be (e) The time limit for replying to the noti®cation industrially applicable, may be extended if the applicant so requests before its expiration. (iii) notices that there is some defect in the form or contents of the international application 66.3 Formal Response to the International under the Treaty or these Regulations, Preliminary Examining Authority (iv) considers that any amendment goes (a) The applicant may respond to the invitation beyond the disclosure in the international application referred to in Rule 66.2(c) of the International as ®led, Preliminary Examining Authority by making (v) wishes to accompany the international amendments or - if he disagrees with the opinion of preliminary examination report by observations on

T-101 Rev. 10.2019, June 2020 Rule 66 MANUAL OF PATENT EXAMINING PROCEDURE

that Authority - by submitting arguments, as the case applicant, or whether it wishes to reply to any may be, or do both. informal written communication from the applicant. (b) Any response shall be submitted directly to the International Preliminary Examining Authority. 66.7 Copy and Translation of Earlier Application Whose Priority Is Claimed 66.4 Additional Opportunity for Submitting Amendments or Arguments (a) If the International Preliminary Examining Authority needs a copy of the earlier application (a) If the International Preliminary Examining whose priority is claimed in the international Authority wishes to issue one or more additional application, the International Bureau shall, on written opinions, it may do so, and Rules 66.2 and request, promptly furnish such copy. If that copy is 66.3 shall apply. not furnished to the International Preliminary (b) On the request of the applicant, the Examining Authority because the applicant failed International Preliminary Examining Authority may to comply with the requirements of Rule 17.1, and give him one or more additional opportunities to if that earlier application was not ®led with that submit amendments or arguments. Authority in its capacity as a national Of®ce or the priority document is not available to that Authority 66.4 bis Consideration of Amendments, from a digital library in accordance with the Arguments and Recti®cations of Obvious Administrative Instructions, the international Mistakes preliminary examination report may be established as if the priority had not been claimed. Amendments, arguments and recti®cations of (b) If the application whose priority is claimed obvious mistakes need not be taken into account by in the international application is in a language other the International Preliminary Examining Authority than the language or one of the languages of the for the purposes of a written opinion or the International Preliminary Examining Authority, that international preliminary examination report if they Authority may, where the validity of the priority are received by, authorized by or noti®ed to that claim is relevant for the formulation of the opinion Authority, as applicable, after it has begun to draw referred to in Article 33(1), invite the applicant to up that opinion or report. furnish a translation in the said language or one of the said languages within two months from the date 66.5 Amendment of the invitation. If the translation is not furnished within that time limit, the international preliminary Any change, other than the recti®cation of an examination report may be established as if the obvious mistake, in the claims, the description, or priority had not been claimed. the drawings, including cancellation of claims, omission of passages in the description, or omission 66.8 Form of Amendments of certain drawings, shall be considered an amendment. (a) Subject to paragraph (b), when amending the description or the drawings, the applicant shall be 66.6 Informal Communications with the required to submit a replacement sheet for every sheet of the international application which, on Applicant account of an amendment, differs from the sheet previously ®led. The replacement sheet or sheets The International Preliminary Examining Authority shall be accompanied by a letter which shall draw may, at any time, communicate informally, over the attention to the differences between the replaced telephone, in writing, or through personal interviews, sheets and the replacement sheets, shall indicate the with the applicant. The said Authority shall, at its basis for the amendment in the application as ®led discretion, decide whether it wishes to grant more and shall preferably also explain the reasons for the than one personal interview if so requested by the amendment.

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(b) Where the amendment consists in the Rule 68 deletion of passages or in minor alterations or additions, the replacement sheet referred to in Lack of Unity of Invention (International paragraph (a) may be a copy of the relevant sheet of Preliminary Examination) the international application containing the alterations or additions, provided that the clarity and direct reproducibility of that sheet are not adversely 68.1 No Invitation to Restrict or Pay affected. To the extent that any amendment results in the cancellation of an entire sheet, that amendment Where the International Preliminary Examining shall be communicated in a letter which shall Authority ®nds that the requirement of unity of preferably also explain the reasons for the invention is not complied with and chooses not to amendment. invite the applicant to restrict the claims or to pay additional fees, it shall proceed with the international (c) When amending the claims, Rule 46.5 shall preliminary examination, subject to Article 34(4)(b) apply mutatis mutandis. The set of claims submitted and Rule 66.1(e), in respect of the entire international under Rule 46.5 as applicable by virtue of this application, but shall indicate, in any written opinion paragraph shall replace all the claims originally ®led and in the international preliminary examination or previously amended under Articles 19 or 34, as report, that it considers that the requirement of unity the case may be. of invention is not ful®lled and it shall specify the Rule 67 reasons therefor.

Subject Matter under Article 34(4)(a)(i) 68.2 Invitation to Restrict or Pay

67.1 De®nition Where the International Preliminary Examining Authority ®nds that the requirement of unity of No International Preliminary Examining Authority invention is not complied with and chooses to invite shall be required to carry out an international the applicant, at his option, to restrict the claims or preliminary examination on an international to pay additional fees, the invitation shall: application if, and to the extent to which, its subject (i) specify at least one possibility of restriction matter is any of the following: which, in the opinion of the International Preliminary (i) scienti®c and mathematical theories, Examining Authority, would be in compliance with the applicable requirement; (ii) plant or animal varieties or essentially biological processes for the production of plants and (ii) specify the reasons for which the animals, other than microbiological processes and international application is not considered as the products of such processes, complying with the requirement of unity of invention; (iii) schemes, rules or methods of doing business, performing purely mental acts or playing (iii) invite the applicant to comply with the games, invitation within one month from the date of the invitation; (iv) methods for treatment of the human or animal body by surgery or therapy, as well as (iv) indicate the amount of the required diagnostic methods, additional fees to be paid in case the applicant so chooses; and (v) mere presentations of information, (v) invite the applicant to pay, where applicable, (vi) computer programs to the extent that the the protest fee referred to in Rule 68.3(e) within one International Preliminary Examining Authority is month from the date of the invitation, and indicate not equipped to carry out an international preliminary the amount to be paid. examination concerning such programs.

T-103 Rev. 10.2019, June 2020 Rule 69 MANUAL OF PATENT EXAMINING PROCEDURE

68.3 Additional Fees Examining Authority shall proceed as provided in Article 34(3)(c). (a) The amount of the additional fees due for international preliminary examination under Article 68.5 Main Invention 34(3)(a) shall be determined by the competent International Preliminary Examining Authority. In case of doubt which invention is the main (b) The additional fees due for international invention for the purposes of Article 34(3)(c), the preliminary examination under Article 34(3)(a) shall invention ®rst mentioned in the claims shall be be payable direct to the International Preliminary considered the main invention. Examining Authority. (c) Any applicant may pay the additional fees Rule 69 under protest, that is, accompanied by a reasoned statement to the effect that the international Start of and Time Limit for International application complies with the requirement of unity Preliminary Examination of invention or that the amount of the required additional fees is excessive. Such protest shall be 69.1 Start of International Preliminary examined by a review body constituted in the Examination framework of the International Preliminary Examining Authority which, to the extent that it (a) Subject to paragraphs (b) to (e), the ®nds the protest justi®ed, shall order the total or International Preliminary Examining Authority shall partial reimbursement to the applicant of the start the international preliminary examination when additional fees. On the request of the applicant, the it is in possession of all of the following: text of both the protest and the decision thereon shall (i) the demand; be noti®ed to the elected Of®ces as an annex to the international preliminary examination report. (ii) the amount due (in full) for the handling fee and the preliminary examination fee, including, (d) The membership of the review body referred where applicable, the late payment fee under Rule to in paragraph (c) may include, but shall not be 58 bis.2; and limited to, the person who made the decision which is the subject of the protest. (iii) either the international search report or the declaration by the International Searching (e) The examination of a protest referred to in Authority under Article 17(2)(a) that no international paragraph (c) may be subjected by the International search report will be established, and the written Preliminary Examining Authority to the payment to opinion established under Rule 43 bis.1; it, for its own bene®t, of a protest fee. Where the applicant has not, within the time limit under Rule 68.2(v), paid any required protest fee, the protest unless the applicant expressly requests to postpone shall be considered not to have been made and the the start of the international preliminary examination International Preliminary Examining Authority shall until the expiration of the applicable time limit under so declare. The protest fee shall be refunded to the Rule 54 bis.1(a). applicant where the review body referred to in (b) If the national Of®ce or intergovernmental paragraph (c) ®nds that the protest was entirely organization that acts as International Searching justi®ed. Authority also acts as International Preliminary Examining Authority, the international preliminary 68.4 Procedure in the Case of Insuf®cient examination may, if that national Of®ce or Restriction of the Claims intergovernmental organization so wishes and subject to paragraphs (d) and (e), start at the same time as If the applicant restricts the claims but not the international search. suf®ciently to comply with the requirement of unity (b-bis) Where, in accordance with paragraph (b), of invention, the International Preliminary the national Of®ce or intergovernmental organization that acts as both International Searching Authority

Rev. 10.2019, June 2020 T-104 PATENT COOPERATION TREATY Rule 70

and International Preliminary Examining Authority (ii) six months from the time provided under wishes to start the international preliminary Rule 69.1 for the start of the international examination at the same time as the international preliminary examination; or search and considers that all of the conditions (iii) six months from the date of receipt by the referred to in Article 34(2)(c)(i) to (iii) are ful®lled, International Preliminary Examining Authority of that national Of®ce or intergovernmental the translation furnished under Rule 55.2. organization need not, in its capacity as International Searching Authority, establish a written opinion Rule 70 under Rule 43 bis.1. (c) Where the statement concerning amendments International Preliminary Report on contains an indication that amendments under Article Patentability by the International 19 are to be taken into account (Rule 53.9(a)(i)), the Preliminary Examining Authority International Preliminary Examining Authority shall (International Preliminary Examination not start the international preliminary examination Report) before it has received a copy of the amendments concerned. 70.1 De®nition (d) Where the statement concerning amendments contains an indication that the start of the For the purposes of this Rule, ªreportº shall mean international preliminary examination is to be international preliminary examination report. postponed (Rule 53.9(b)), the International Preliminary Examining Authority shall not start the 70.2 Basis of the Report international preliminary examination before whichever of the following occurs ®rst: (a) If the claims have been amended, the report (i) it has received a copy of any amendments shall issue on the claims as amended. made under Article 19; (b) If, pursuant to Rule 66.7(a) or (b), the report (ii) it has received a notice from the applicant is established as if the priority had not been claimed, that he does not wish to make amendments under the report shall so indicate. Article 19; or (c) If the International Preliminary Examining (iii) the expiration of the applicable time limit Authority considers that any amendment goes under Rule 46.1. beyond the disclosure in the international application as ®led, the report shall be established as if such (e) Where the statement concerning amendments amendment had not been made, and the report shall contains an indication that amendments under Article so indicate. It shall also indicate the reasons why it 34 are submitted with the demand (Rule 53.9(c)) but considers that the amendment goes beyond the said no such amendments are, in fact, submitted, the disclosure. International Preliminary Examining Authority shall not start the international preliminary examination (c-bis) If the claims, description or drawings before it has received the amendments or before the have been amended but the replacement sheet or time limit ®xed in the invitation referred to in Rule sheets were not accompanied by a letter indicating 60.1(g) has expired, whichever occurs ®rst. the basis for the amendment in the application as ®led, as required under Rule 46.5(b)(iii), Rule 69.2 Time Limit for International 46.5(b)(iii) being applicable by virtue of Rule Preliminary Examination 66.8(c), or Rule 66.8(a), as applicable, the report may be established as if the amendment had not been The time limit for establishing the international made, in which case the report shall so indicate. preliminary examination report shall be whichever (d) Where claims relate to inventions in respect of the following periods expires last: of which no international search report has been established and have therefore not been the subject (i) 28 months from the priority date; or of international preliminary examination, the

T-105 Rev. 10.2019, June 2020 Rule 70 MANUAL OF PATENT EXAMINING PROCEDURE

international preliminary examination report shall Instructions, and shall be accompanied by the so indicate. citations, explanations and observations, if any, (e) If a recti®cation of an obvious mistake is referred to in the last sentence of Article 35(2). taken into account under Rule 66.1, the report shall (b) If any of the three criteria referred to in so indicate. If a recti®cation of an obvious mistake Article 35(2) (that is, novelty, inventive step (non- is not taken into account pursuant to Rule 66.4 bis , obviousness), industrial applicability) is not satis®ed, the report shall, if possible, so indicate, failing which the statement shall be negative. If, in such a case, the International Preliminary Examining Authority any of the criteria, taken separately, is satis®ed, the shall notify the International Bureau accordingly and report shall specify the criterion or criteria so the International Bureau shall proceed as provided satis®ed. for in the Administrative Instructions. 70.7 Citations under Article 35(2) (f) The report shall indicate the date on which a top-up search under Rule 66.1 ter was made, or else (a) The report shall cite the documents state that no top-up search was made. considered to be relevant for supporting the 70.3 Identi®cations statements made under Article 35(2), whether or not such documents are cited in the international search report. Documents cited in the international search The report shall identify the International report need only be cited in the report when they are Preliminary Examining Authority which established considered by the International Preliminary it by indicating the name of such Authority, and the Examining Authority to be relevant. international application by indicating the international application number, the name of the (b) The provisions of Rule 43.5(b) and (e) shall applicant, and the international ®ling date. apply also to the report. 70.8 Explanations under Article 35(2) 70.4 Dates The Administrative Instructions shall contain The report shall indicate: guidelines for cases in which the explanations referred to in Article 35(2) should or should not be (i) the date on which the demand was submitted, given and the form of such explanations. Such and guidelines shall be based on the following principles: (ii) the date of the report; that date shall be the date on which the report is completed. (i) explanations shall be given whenever the statement in relation to any claim is negative; 70.5 Classi®cation (ii) explanations shall be given whenever the (a) The report shall repeat the classi®cation statement is positive unless the reason for citing any given under Rule 43.3 if the International document is easy to imagine on the basis of Preliminary Examining Authority agrees with such consultation of the cited document; classi®cation. (iii) generally, explanations shall be given if the (b) Otherwise, the International Preliminary case provided for in the last sentence of Rule 70.6(b) Examining Authority shall indicate in the report the obtains. classi®cation, at least according to the International 70.9 Non-Written Disclosures Patent Classi®cation, which it considers correct. 70.6 Statement under Article 35(2) Any non-written disclosure referred to in the report by virtue of Rule 64.2 shall be mentioned by (a) The statement referred to in Article 35(2) indicating its kind, the date on which the written shall consist of the words ªYESº or ªNO,º or their disclosure referring to the non-written disclosure equivalent in the language of the report, or some was made available to the public, and the date on appropriate sign provided for in the Administrative which the non-written disclosure occurred in public.

Rev. 10.2019, June 2020 T-106 PATENT COOPERATION TREATY Rule 70

70.10 Certain Published Documents international application or the international preliminary examination was restricted under Article Any published application or any patent referred to 34(3), the report shall so indicate. Furthermore, in the report by virtue of Rule 64.3 shall be where the international preliminary examination was mentioned as such and shall be accompanied by an carried out on restricted claims (Article 34(3)(a)), indication of its date of publication, of its ®ling date, or on the main invention only (Article 34(3)(c)), the and its claimed priority date (if any). In respect of report shall indicate what parts of the international the priority date of any such document, the report application were and what parts were not the subject may indicate that, in the opinion of the International of international preliminary examination. The report Preliminary Examining Authority, such date has not shall contain the indications provided for in Rule been validly claimed. 68.1, where the International Preliminary Examining Authority chose not to invite the applicant to restrict 70.11 Mention of Amendments the claims or to pay additional fees.

If, before the International Preliminary Examining 70.14 Authorized Of®cer Authority, amendments have been made, this fact shall be indicated in the report. Where any The report shall indicate the name of the of®cer of amendment has resulted in the cancellation of an the International Preliminary Examining Authority entire sheet, this fact shall also be speci®ed in the responsible for that report. report. 70.15 Form; Title 70.12 Mention of Certain Defects and Other Matters (a) The physical requirements as to the form of the report shall be prescribed by the Administrative Instructions. If the International Preliminary Examining Authority considers that, at the time it prepares the report: (b) The report shall bear the title ªinternational preliminary report on patentability (Chapter II of the (i) the international application contains any of Patent Cooperation Treaty)º together with an the defects referred to in Rule 66.2(a)(iii), it shall indication that it is the international preliminary include this opinion and the reasons therefor in the examination report established by the International report; Preliminary Examining Authority. (ii) the international application calls for any of 70.16 Annexes to the Report the observations referred to in Rule 66.2(a)(v), it may include this opinion in the report and, if it does, (a) The following replacement sheets and letters it shall also indicate in the report the reasons for such shall be annexed to the report: opinion; (i) each replacement sheet under Rule 66.8 (iii) any of the situations referred to in Article containing amendments under Article 34 and each 34(4) exists, it shall state this opinion and the reasons letter under Rule 66.8(a), Rule 66.8(b) and Rule therefor in the report; 46.5(b) as applicable by virtue of Rule 66.8(c); (iv) a nucleotide and/or amino acid sequence (ii) each replacement sheet under Rule 46.5 listing is not available to it in such a form that a containing amendments under Article 19 and each meaningful international preliminary examination letter under Rule 46.5; and can be carried out, it shall so state in the report. (iii) each replacement sheet under Rule 26.4 70.13 Remarks Concerning Unity of as applicable by virtue of Rule 91.2 containing a Invention recti®cation of an obvious mistake authorized by that Authority under Rule 91.1(b)(iii) and each letter If the applicant paid additional fees for the under Rule 26.4 as applicable by virtue of Rule 91.2; international preliminary examination, or if the

T-107 Rev. 10.2019, June 2020 Rule 71 MANUAL OF PATENT EXAMINING PROCEDURE

Rule 71 unless any such replacement sheet has been superseded or considered reversed by a later Transmittal of the International Preliminary replacement sheet or an amendment resulting in the Examination Report cancellation of an entire sheet under Rule 66.8(b); and 71.1 Recipients (iv) where the report contains an indication referred to in Rule 70.2(e), any sheet and letter The International Preliminary Examining Authority relating to a recti®cation of an obvious mistake shall, on the same day, transmit one copy of the which is not taken into account pursuant to Rule international preliminary examination report and its 66.4 bis . annexes, if any, to the International Bureau, and one (b) Notwithstanding paragraph (a), each copy to the applicant. superseded or reversed replacement sheet referred to in that paragraph and any letter referred to in that 71.2 Copies of Cited Documents paragraph relating to such superseded or reversed sheet shall also be annexed to the report where: (a) The request under Article 36(4) may be (i) the International Preliminary Examining presented any time during seven years from the Authority considers that the relevant superseding or international ®ling date of the international reversing amendment goes beyond the disclosure in application to which the report relates. the international application as ®led and the report (b) The International Preliminary Examining contains an indication referred to in Rule 70.2(c); Authority may require that the party (applicant or (ii) the relevant superseding or reversing elected Of®ce) presenting the request pay to it the amendment was not accompanied by a letter cost of preparing and mailing the copies. The level indicating the basis for the amendment in the of the cost of preparing copies shall be provided for application as ®led and the report is established as in the agreements referred to in Article 32(2) if the amendment had not been made and contains between the International Preliminary Examining an indication referred to in Rule 70.2(c- bis ). Authorities and the International Bureau. (c) [Deleted] In such a case, the superseded or reversed (d) Any International Preliminary Examining replacement sheet shall be marked as provided by Authority may perform the obligations referred to the Administrative Instructions. in paragraphs (a) and (b) through another agency 70.17 Languages of the Report and the responsible to it. Annexes Rule 72

The report and any annex shall be in the language Translation of the International Preliminary in which the international application to which they Examination Report and of the Written relate is published, or, if the international preliminary Opinion of the International Searching examination is carried out, pursuant to Rule 55.2, on the basis of a translation of the international Authority application, in the language of that translation. 72.1 Languages

(a) Any elected State may require that the international preliminary examination report, established in any language other than the of®cial language, or one of the of®cial languages, of its national Of®ce, be translated into English.

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(b) Any such requirement shall be noti®ed to 73.2 Communication to Elected Of®ces the International Bureau, which shall promptly publish it in the Gazette. (a) The International Bureau shall effect the 72.2 Copy of Translation for the Applicant communication provided for in Article 36(3)(a) to each elected Of®ce in accordance with Rule 93 bis.1 but not before the expiration of 30 months from the The International Bureau shall transmit a copy of priority date. the translation referred to in Rule 72.1(a) of the international preliminary examination report to the (b) Where the applicant makes an express applicant at the same time as it communicates such request to an elected Of®ce under Article 40(2), the translation to the interested elected Of®ce or Of®ces. International Bureau shall, upon the request of that Of®ce or of the applicant, 72.2 bis Translation of the Written Opinion (i) if the international preliminary of the International Searching Authority examination report has already been transmitted to Established under Rule 43 bis.1 the International Bureau under Rule 71.1, promptly effect the communication provided for in Article In the case referred to in Rule 73.2(b)(ii), the written 36(3)(a) to that Of®ce; opinion established by the International Searching (ii) if the international preliminary Authority under Rule 43 bis.1 shall, upon request of examination report has not been transmitted to the the elected Of®ce concerned, be translated into International Bureau under Rule 71.1, promptly English by or under the responsibility of the communicate a copy of the written opinion International Bureau. The International Bureau shall established by the International Searching Authority transmit a copy of the translation to the elected under Rule 43 bis.1 to that Of®ce. Of®ce concerned within two months from the date (c) Where the applicant has withdrawn the of receipt of the request for translation, and shall at demand or any or all elections, the communication the same time transmit a copy to the applicant. provided for in paragraph (a) shall nevertheless be effected, if the International Bureau has received the 72.3 Observations on the Translation international preliminary examination report, to the elected Of®ce or Of®ces affected by the withdrawal. The applicant may make written observations as to the correctness of the translation of the international Rule 74 preliminary examination report or of the written opinion established by the International Searching Translations of Annexes of the International Authority under Rule 43 bis.1 and shall send a copy Preliminary Examination Report and of the observations to each of the interested elected Transmittal Thereof Of®ces and to the International Bureau. 74.1 Contents of Translation and Time Limit Rule 73 for Transmittal Thereof

Communication of the International (a) Where the furnishing of a translation of the Preliminary Examination Report or the international application is required by the elected Written Opinion of the International Of®ce under Article 39(1), the applicant shall, within Searching Authority the time limit applicable under Article 39(1), transmit a translation of any replacement sheet 73.1 Preparation of Copies referred to in Rule 70.16 which is annexed to the international preliminary examination report, unless such sheet is in the language of the required The International Bureau shall prepare the copies of translation of the international application. The same the documents to be communicated under Article time limit shall apply where the furnishing of a 36(3)(a). translation of the international application to the

T-109 Rev. 10.2019, June 2020 Rule 75 MANUAL OF PATENT EXAMINING PROCEDURE

elected Of®ce must, because of a declaration made (iii) the words ªinternational applications ®ledº under Article 64(2)(a)(i), be effected within the time in Rule 49.1(c) shall be replaced by the words ªa limit applicable under Article 22. demand submitted;º (b) Where the furnishing under Article 39(1) of (iv) for the purposes of Article 39(1), where an a translation of the international application is not international preliminary examination report has required by the elected Of®ce, that Of®ce may been established, a translation of any amendment require the applicant to furnish, within the time limit under Article 19 shall only be required if that applicable under that Article, a translation into the amendment is annexed to that report; language in which the international application was (v) the reference in Rule 47.1(a) to Rule 47.4 published of any replacement sheet referred to in shall be construed as a reference to Rule 61.2(d). Rule 70.16 which is annexed to the international preliminary examination report and is not in that Rule 77 language. Rule 75 Faculty under Article 39(1)(b)

[Deleted] 77.1 Exercise of Faculty (a) Any Contracting State allowing a time limit Rule 76 expiring later than the time limit provided for in Article 39(1)(a) shall notify the International Bureau Translation of Priority Document; of the time limit so ®xed. Application of Certain Rules to Procedures (b) Any noti®cation received by the International before Elected Of®ces Bureau under paragraph (a) shall be promptly published by the International Bureau in the Gazette. 76.1, 76.2 and 76.3 [Deleted] (c) Noti®cations concerning the shortening of the previously ®xed time limit shall be effective in 76.4 Time Limit for Translation of Priority relation to demands submitted after the expiration Document of three months computed from the date on which the noti®cation was published by the International The applicant shall not be required to furnish to any Bureau. elected Of®ce a translation of the priority document (d) Noti®cations concerning the lengthening of before the expiration of the applicable time limit the previously ®xed time limit shall become effective under Article 39. upon publication by the International Bureau in the Gazette in respect of demands pending at the time 76.5 Application of Certain Rules to or submitted after the date of such publication, or, Procedures before Elected Of®ces if the Contracting State effecting the noti®cation ®xes some later date, as from the latter date. Rules 13 ter.3, 20.8(c), 22.1(g), 47.1, 49, 49 bis , 49 ter and 51 bis shall apply, provided that: Rule 78

(i) any reference in the said Rules to the Amendment of the Claims, the Description, designated Of®ce or to the designated State shall be and the Drawings, before Elected Of®ces construed as a reference to the elected Of®ce or to the elected State, respectively; 78.1 Time Limit (ii) any reference in the said Rules to Article 22, Article 23(2) or Article 24(2) shall be construed as (a) The applicant shall, if he so wishes, exercise a reference to Article 39(1), Article 40(2) or Article the right under Article 41 to amend the claims, the 39(3), respectively; description and the drawings, before the elected Of®ce concerned within one month from the

Rev. 10.2019, June 2020 T-110 PATENT COOPERATION TREATY Rule 80

ful®llment of the requirements under Article calendars, they shall also express any date in terms 39(1)(a), provided that, if the transmittal of the of the Christian era and the Gregorian calendar. international preliminary examination report under Article 36(1) has not taken place by the expiration Rule 80 of the time limit applicable under Article 39, he shall exercise the said right not later than four months Computation of Time Limits after such expiration date. In either case, the applicant may exercise the said right at any later time if so permitted by the national law of the said 80.1 Periods Expressed in Years State. When a period is expressed as one year or a certain (b) In any elected State in which the national number of years, computation shall start on the day law provides that examination starts only on special following the day on which the relevant event request, the national law may provide that the time occurred, and the period shall expire in the relevant limit within or the time at which the applicant may subsequent year in the month having the same name exercise the right under Article 41 shall be the same and on the day having the same number as the month as that provided by the national law for the ®ling of and the day on which the said event occurred, amendments in the case of the examination, on provided that if the relevant subsequent month has special request, of national applications, provided no day with the same number the period shall expire that such time limit shall not expire prior to, or such on the last day of that month. time shall not come before, the expiration of the time limit applicable under paragraph (a). 80.2 Periods Expressed in Months 78.2 [Deleted] When a period is expressed as one month or a certain 78.3 Utility Models number of months, computation shall start on the day following the day on which the relevant event The provisions of Rules 6.5 and 13.5 shall apply, occurred, and the period shall expire in the relevant mutatis mutandis, before elected Of®ces. If the subsequent month on the day which has the same election was made before the expiration of the 19th number as the day on which the said event occurred, month from the priority date, the reference to the provided that if the relevant subsequent month has time limit applicable under Article 22 is replaced by no day with the same number the period shall expire a reference to the time limit applicable under Article on the last day of that month. 39. 80.3 Periods Expressed in Days Part D When a period is expressed as a certain number of Rules Concerning Chapter III of the Treaty days, computation shall start on the day following the day on which the relevant event occurred, and Rule 79 the period shall expire on the day on which the last day of the count has been reached. Calendar 80.4 Local Dates 79.1 Expressing Dates (a) The date which is taken into consideration Applicants, national Of®ces, receiving Of®ces, as the starting date of the computation of any period International Searching and Preliminary Examining shall be the date which prevails in the locality at the Authorities, and the International Bureau, shall, for time when the relevant event occurred. the purposes of the Treaty and the Regulations, (b) The date on which any period expires shall express any date in terms of the Christian era and be the date which prevails in the locality in which the Gregorian calendar, or, if they use other eras and

T-111 Rev. 10.2019, June 2020 Rule 81 MANUAL OF PATENT EXAMINING PROCEDURE

the required document must be ®led or the required national Of®ce or intergovernmental organization fee must be paid. shall treat the period starting from the date of the 80.5 Expiration on a Non-Working Day or document or letter as expiring later by an additional number of days which is equal to the number of days Of®cial Holiday which the document or letter was received later than seven days after the date it bears. If the expiration of any period during which any document or fee must reach a national Of®ce or 80.7 End of Working Day intergovernmental organization falls on a day: (a) A period expiring on a given day shall expire (i) on which such Of®ce or organization is not at the moment the national Of®ce or open to the public for the purposes of the transaction intergovernmental organization with which the of of®cial business; document must be ®led or to which the fee must be (ii) on which ordinary mail is not delivered in paid closes for business on that day. the locality in which such Of®ce or organization is (b) Any Of®ce or organization may depart from situated; the provisions of paragraph (a) up to midnight on (iii) which, where such Of®ce or organization the relevant day. is situated in more than one locality, is an of®cial holiday in at least one of the localities in which such Rule 81 Of®ce or organization is situated, and in circumstances where the national law applicable by Modi®cation of Time Limits Fixed in the that Of®ce or organization provides, in respect of Treaty national applications, that, in such a case, such period shall expire on a subsequent day; or 81.1 Proposal (iv) which, where such Of®ce is the government authority of a Contracting State entrusted with the (a) Any Contracting State or the Director granting of patents, is an of®cial holiday in part of General may propose a modi®cation under Article that Contracting State, and in circumstances where 47(2). the national law applicable by that Of®ce provides, (b) Proposals made by a Contracting State shall in respect of national applications, that, in such a be presented to the Director General. case, such period shall expire on a subsequent day; the period shall expire on the next subsequent day 81.2 Decision by the Assembly on which none of the said four circumstances exists. (a) When the proposal is made to the Assembly, 80.6 Date of Documents its text shall be sent by the Director General to all Contracting States at least two months in advance Where a period starts on the day of the date of a of that session of the Assembly whose agenda document or letter emanating from a national Of®ce includes the proposal. or intergovernmental organization, any interested (b) During the discussion of the proposal in the party may prove that the said document or letter was Assembly, the proposal may be amended or mailed on a day later than the date it bears, in which consequential amendments proposed. case the date of actual mailing shall, for the purposes of computing the period, be considered to be the date (c) The proposal shall be considered adopted if on which the period starts. Irrespective of the date none of the Contracting States present at the time of on which such a document or letter was mailed, if voting votes against the proposal. the applicant offers to the national Of®ce or 81.3 Voting by Correspondence intergovernmental organization evidence which satis®es the national Of®ce or intergovernmental (a) When voting by correspondence is chosen, organization that the document or letter was received the proposal shall be included in a written more than seven days after the date it bears, the communication from the Director General to the

Rev. 10.2019, June 2020 T-112 PATENT COOPERATION TREATY Rule 82bis

Contracting States, inviting them to express their due diligence should have noticed - the delay or the vote in writing. loss, and in no case later than six months after the (b) The invitation shall ®x the time limit within expiration of the time limit applicable in the given which the reply containing the vote expressed in case. writing must reach the International Bureau. That (d) Any national Of®ce or intergovernmental time limit shall not be less than three months from organization which has noti®ed the International the date of the invitation. Bureau that it will do so shall, where a delivery (c) Replies must be either positive or negative. service other than the postal authorities is used to Proposals for amendments or mere observations shall mail a document or letter, apply the provisions of not be regarded as votes. paragraphs (a) to (c) as if the delivery service was a postal authority. In such a case, the last sentence of (d) The proposal shall be considered adopted if paragraph (a) shall not apply but evidence may be none of the Contracting States opposes the offered only if details of the mailing were recorded amendment and if at least one-half of the Contracting by the delivery service at the time of mailing. The States express either approval or indifference or noti®cation may contain an indication that it applies abstention. only to mailings using speci®ed delivery services or Rule 82 delivery services which satisfy speci®ed criteria. The International Bureau shall publish the information so noti®ed in the Gazette. Irregularities in the Mail Service (e) Any national Of®ce or intergovernmental 82.1 Delay or Loss in Mail organization may proceed under paragraph (d): (i) even if, where applicable, the delivery (a) Any interested party may offer evidence that service used was not one of those speci®ed, or did he has mailed the document or letter ®ve days prior not satisfy the criteria speci®ed, in the relevant to the expiration of the time limit. Except in cases noti®cation under paragraph (d), or where surface mail normally arrives at its destination (ii) even if that Of®ce or organization has within two days of mailing, or where no airmail not sent to the International Bureau a noti®cation service is available, such evidence may be offered under paragraph (d). only if the mailing was by airmail. In any case, evidence may be offered only if the mailing was by Rule 82bis mail registered by the postal authorities. (b) If the mailing, in accordance with paragraph Excuse by the Designated or Elected State of (a), of a document or letter is proven to the Delays in Meeting Certain Time Limits satisfaction of the national Of®ce or intergovernmental organization which is the 82 bis.1 Meaning of ªTime Limitº in Article addressee, delay in arrival shall be excused, or, if 48(2) the document or letter is lost in the mail, substitution for it of a new copy shall be permitted, provided that The reference to ªany time limitº in Article 48(2) the interested party proves to the satisfaction of the shall be construed as comprising a reference: said Of®ce or organization that the document or letter offered in substitution is identical with the (i) to any time limit ®xed in the Treaty or these document or letter lost. Regulations; (c) In the cases provided for in paragraph (b), (ii) to any time limit ®xed by the receiving evidence of mailing within the prescribed time limit, Of®ce, the International Searching Authority, the and, where the document or letter was lost, the International Preliminary Examining Authority or substitute document or letter as well as the evidence the International Bureau or applicable by the concerning its identity with the document or letter receiving Of®ce under its national law; lost shall be submitted within one month after the date on which the interested party noticed - or with

T-113 Rev. 10.2019, June 2020 Rule 82ter MANUAL OF PATENT EXAMINING PROCEDURE

(iii) to any time limit ®xed by, or in the national (ii) a requirement under Rule 4.18, 20.6(a)(i) law applicable by, the designated or elected Of®ce, or 51 bis.1(e)(ii) has not been complied with; or for the performance of any act by the applicant before that Of®ce. (iii) the element or part is not completely contained in the priority document concerned; 82 bis.2 Reinstatement of Rights and Other Provisions to Which Article 48(2) Applies the designated or elected Of®ce may, subject to paragraph (c), treat the international application as The provisions of the national law which is referred if the international ®ling date had been accorded to in Article 48(2) concerning the excusing, by the under Rule 20.3(b)(i) or 20.5(b), or corrected under designated or elected State, of any delay in meeting Rule 20.5(c), as applicable, provided that Rule any time limit are those provisions which provide 17.1(c) shall apply mutatis mutandis. for reinstatement of rights, restoration, restitutio in (c) The designated or elected Of®ce shall not integrum or further processing in spite of treat the international application under paragraph (b) non-compliance with a time limit, and any other as if the international ®ling date had been accorded provision providing for the extension of time limits under Rule 20.3(b)(i) or 20.5(b), or corrected under or for excusing delays in meeting time limits. Rule 20.5(c), without giving the applicant the opportunity to make observations on the intended Rule 82ter treatment, or to make a request under paragraph (d), within a time limit which shall be reasonable under Recti®cation of Errors Made by the Receiving the circumstances. Of®ce or by the International Bureau (d) Where the designated or elected Of®ce, in accordance with paragraph (c), has noti®ed the 82 ter.1 Errors Concerning the International applicant that it intends to treat the international Filing Date and the Priority Claim application as if the international ®ling date had been corrected under Rule 20.5(c), the applicant may, in (a) If the applicant proves to the satisfaction of a notice submitted to that Of®ce within the time limit any designated or elected Of®ce that the international referred to in paragraph (c), request that the missing ®ling date is incorrect due to an error made by the part concerned be disregarded for the purposes of receiving Of®ce or that the priority claim has been national processing before that Of®ce, in which case erroneously considered void by the receiving Of®ce that part shall be considered not to have been or the International Bureau, and if the error is an furnished and that Of®ce shall not treat the error such that, had it been made by the designated international application as if the international ®ling or elected Of®ce itself, that Of®ce would rectify it date had been corrected. under the national law or national practice, the said Of®ce shall rectify the error and shall treat the Rule 82quater international application as if it had been accorded the recti®ed international ®ling date or as if the Excuse of Delay in Meeting Time Limits priority claim had not been considered void. (b) Where the international ®ling date has been 82 quater.1 Excuse of Delay in Meeting Time accorded by the receiving Of®ce under Limits Rule 20.3(b)(ii) or 20.5(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 (a) Any interested party may offer evidence that of an element or part but the designated or elected a time limit ®xed in the Regulations for performing Of®ce ®nds that: an action before the receiving Of®ce, the International Searching Authority, the Authority (i) the applicant has not complied with speci®ed for supplementary search, the International Rule 17.1(a), (b) or (b- bis) in relation to the priority Preliminary Examining Authority or the International document; Bureau was not met due to war, revolution, civil disorder, strike, natural calamity, a general

Rev. 10.2019, June 2020 T-114 PATENT COOPERATION TREATY Rule 85

unavailability of electronic communications services International Searching Authority and competent or other like reason in the locality where the International Preliminary Examining Authority. interested party resides, has his place of business or is staying, and that the relevant action was taken as 83.2 Information soon as reasonably possible. (a) The national Of®ce or the intergovernmental (b) Any such evidence shall be addressed to the organization which the interested person is alleged Of®ce, Authority or the International Bureau, as the to have a right to practice before shall, upon request, case may be, not later than six months after the inform the International Bureau, the competent expiration of the time limit applicable in the given International Searching Authority, or the competent case. If such circumstances are proven to the International Preliminary Examining Authority, satisfaction of the addressee, delay in meeting the whether such person has the right to practice before time limit shall be excused. it. (c) The excuse of a delay need not be taken into (b) Such information shall be binding upon the account by any designated or elected Of®ce before International Bureau, the International Searching which the applicant, at the time the decision to Authority, or the International Preliminary excuse the delay is taken, has already performed the Examining Authority, as the case may be. acts referred to in Article 22 or Article 39. ------Part E

Rule 83 Rules Concerning Chapter V of the Treaty

Right to Practice before International Rule 84 Authorities Expenses of Delegations 83.1 Proof of Right 84.1 Expenses Borne by Governments The International Bureau, the competent International Searching Authority, and the competent The expenses of each Delegation participating in International Preliminary Examining Authority may any organ established by or under the Treaty shall require the production of proof of the right to be borne by the Government which has appointed practice referred to in Article 49. it.

83.1 bis Where the International Bureau Is Rule 85 the Receiving Of®ce Absence of Quorum in the Assembly (a) Any person who has the right to practice before the national Of®ce of, or acting for, a 85.1 Voting by Correspondence Contracting State of which the applicant or, if there are two or more applicants, any of the applicants is In the case provided for in Article 53(5)(b), the a resident or national shall be entitled to practice in International Bureau shall communicate the decisions respect of the international application before the of the Assembly (other than those concerning the International Bureau in its capacity as receiving Assembly©s own procedure) to the Contracting States Of®ce under Rule 19.1(a)(iii). which were not represented and shall invite them to (b) Any person having the right to practice express in writing their vote or abstention within a before the International Bureau in its capacity as period of three months from the date of the receiving Of®ce in respect of an international communication. If, at the expiration of that period, application shall be entitled to practice in respect of the number of Contracting States having thus that application before the International Bureau in expressed their vote or abstention attains the number any other capacity and before the competent of Contracting States which was lacking for attaining

T-115 Rev. 10.2019, June 2020 Rule 86 MANUAL OF PATENT EXAMINING PROCEDURE

the quorum in the session itself, such decisions shall in the Gazette on, or as soon as possible after, the take effect provided that at the same time the date of publication of the international application. required majority still obtains. 86.3 Frequency

Rule 86 The frequency of publication of the Gazette shall be determined by the Director General. The Gazette 86.4 Sale 86.1 Contents The subscription and other sale prices of the Gazette The Gazette referred to in Article 55(4) shall contain: shall be determined by the Director General.

(i) for each published international application, 86.5 Title the data speci®ed by the Administrative Instructions taken from the front page of the publication of the The title of the Gazette shall be determined by the international application, the drawing (if any) Director General. appearing on the said front page, and the abstract; (ii) the schedule of all fees payable to the 86.6 Further Details receiving Of®ces, the International Bureau, and the International Searching and Preliminary Examining Further details concerning the Gazette may be Authorities; provided for in the Administrative Instructions. (iii) notices the publication of which is required under the Treaty or these Regulations; Rule 87 (iv) information concerning events at the designated and elected Of®ces noti®ed to the Communication of Publications International Bureau under Rule 95.1 in relation to published international applications; 87.1 Communication of Publications on (v) any other useful information prescribed by Request the Administrative Instructions, provided access to such information is not prohibited under the Treaty The International Bureau shall communicate, free or these Regulations. of charge, every published international application, the Gazette and any other publication of general 86.2 Languages; Form and Means of interest published by the International Bureau in Publication; Timing connection with the Treaty or these Regulations, to International Searching Authorities, International (a) The Gazette shall be published in English Preliminary Examining Authorities and national and French at the same time. The translations shall Of®ces upon request by the Authority or Of®ce be ensured by the International Bureau in English concerned. Further details concerning the form in and French. which and the means by which publications are (b) The Assembly may order the publication of communicated shall be governed by the the Gazette in languages other than those referred Administrative Instructions. to in paragraph (a). (c) The form in which and the means by which the Gazette is published shall be governed by the Administrative Instructions. (d) The International Bureau shall ensure that, for each published international application, the information referred to in Rule 86.1(i) is published

Rev. 10.2019, June 2020 T-116 PATENT COOPERATION TREATY Rule 89

Rule 88 Rule 89

Amendment of the Regulations Administrative Instructions

88.1 Requirement of Unanimity 89.1 Scope

Amendment of the following provisions of these (a) The Administrative Instructions shall contain Regulations shall require that no State having the provisions: right to vote in the Assembly vote against the (i) concerning matters in respect of which proposed amendment: these Regulations expressly refer to such Instructions, (i) Rule 14.1 (Transmittal Fee), (ii) concerning any details in respect of the (ii) [Deleted] application of these Regulations. (iii) Rule 22.3 (Time Limit under Article 12(3)), (b) The Administrative Instructions shall not be (iv) Rule 33 (Relevant Prior Art for International in con¯ict with the provisions of the Treaty, these Search), Regulations, or any agreement concluded by the International Bureau with an International Searching (v) Rule 64 (Prior Art for International Authority, or an International Preliminary Examining Preliminary Examination), Authority. (vi) Rule 81 (Modi®cation of Time Limits Fixed in the Treaty), 89.2 Source

(vii) the present paragraph (i.e., Rule 88.1). (a) The Administrative Instructions shall be 88.2 [Deleted] drawn up and promulgated by the Director General after consultation with the receiving Of®ces and the 88.3 Requirement of Absence of Opposition International Searching and Preliminary Examining Authorities. by Certain States (b) They may be modi®ed by the Director Amendment of the following provisions of these General after consultation with the Of®ces or Regulations shall require that no State referred to in Authorities which have a direct interest in the Article 58(3)(a)(ii) and having the right to vote in proposed modi®cation. the Assembly vote against the proposed amendment: (c) The Assembly may invite the Director General to modify the Administrative Instructions, (i) Rule 34 (Minimum Documentation), and the Director General shall proceed accordingly. (ii) Rule 39 (Subject Matter under Article 89.3 Publication and Entry into Force 17(2)(a)(i)), (iii) Rule 67 (Subject Matter under Article (a) The Administrative Instructions and any 34(4)(a)(i)), modi®cation thereof shall be published in the (iv) the present paragraph (i.e., Rule 88.3). Gazette. (b) Each publication shall specify the date on 88.4 Procedure which the published provisions come into effect. The dates may be different for different provisions, Any proposal for amending a provision referred to provided that no provision may be declared effective in Rules 88.1 or 88.3 shall, if the proposal is to be prior to its publication in the Gazette. decided upon in the Assembly, be communicated to all Contracting States at least two months prior to the opening of that session of the Assembly which is called upon to make a decision on the proposal.

T-117 Rev. 10.2019, June 2020 Rule 89bis MANUAL OF PATENT EXAMINING PROCEDURE

Part F Bureau shall publish the information so noti®ed in the Gazette. Rules Concerning Several Chapters of the (e) No receiving Of®ce which has given the Treaty International Bureau a noti®cation under paragraph (d) may refuse to process an international application Rule 89bis ®led in electronic form or by electronic means which complies with the applicable requirements under the Filing, Processing and Communication of Administrative Instructions. International Applications and Other Documents in Electronic Form or by 89 bis.2 Other Documents Electronic Means Rule 89 bis.1 shall apply mutatis mutandis to other documents and correspondence relating to 89 bis.1 International Applications international applications. (a) International applications may, subject to paragraphs (b) to (e), be ®led and processed in 89 bis.3 Communication between Of®ces electronic form or by electronic means, in accordance with the Administrative Instructions, Where the Treaty, these Regulations or the provided that any receiving Of®ce shall permit the Administrative Instructions provide for the ®ling of international applications on paper. communication, noti®cation or transmittal (ªcommunicationº) of an international application, (b) These Regulations shall apply mutatis noti®cation, communication, correspondence or mutandis to international applications ®led in other document by one national Of®ce or electronic form or by electronic means, subject to intergovernmental organization to another, such any special provisions of the Administrative communication may, where so agreed by both the Instructions. sender and the receiver, be effected in electronic (c) The Administrative Instructions shall set out form or by electronic means. the provisions and requirements in relation to the ®ling and processing of international applications Rule 89ter ®led, in whole or in part, in electronic form or by electronic means, including but not limited to, Copies in Electronic Form of Documents provisions and requirements in relation to Filed on Paper acknowledgment of receipt, procedures relating to the according of an international ®ling date, physical requirements and the consequences of 89 ter.1 Copies in Electronic Form of non-compliance with those requirements, signature Documents Filed on Paper of documents, means of authentication of documents and of the identity of parties communicating with Any national Of®ce or intergovernmental Of®ces and authorities, and the operation of Article organization may provide that, where an international 12 in relation to the home copy, the record copy and application or other document relating to an the search copy, and may contain different provisions international application is ®led on paper, a copy and requirements in relation to international thereof in electronic form, in accordance with the applications ®led in different languages. Administrative Instructions, may be furnished by the applicant. (d) No national Of®ce or intergovernmental organization shall be obliged to receive or process international applications ®led in electronic form or by electronic means unless it has noti®ed the International Bureau that it is prepared to do so in compliance with the applicable provisions of the Administrative Instructions. The International

Rev. 10.2019, June 2020 T-118 PATENT COOPERATION TREATY Rule 90

Rule 90 (ii) speci®cally before the International Searching Authority, any Authority speci®ed for Agents and Common Representatives supplementary search or the International Preliminary Examining Authority, provided that any 90.1 Appointment as Agent person so appointed as sub-agent has the right to practice before the national Of®ce or (a) A person having the right to practice before intergovernmental organization which acts as the the national Of®ce with which the international International Searching Authority, the Authority application is ®led or, where the international speci®ed for supplementary search or the application is ®led with the International Bureau, International Preliminary Examining Authority, as having the right to practice in respect of the the case may be. international application before the International 90.2 Common Representative Bureau as receiving Of®ce may be appointed by the applicant as his agent to represent him before the (a) Where there are two or more applicants and receiving Of®ce, the International Bureau, the the applicants have not appointed an agent International Searching Authority, any Authority representing all of them (a ªcommon agentº) under speci®ed for supplementary search and the Rule 90.1(a), one of the applicants who is entitled International Preliminary Examining Authority. to ®le an international application according to (b) A person having the right to practice before Article 9 may be appointed by the other applicants the national Of®ce or intergovernmental organization as their common representative. which acts as the International Searching Authority (b) Where there are two or more applicants and may be appointed by the applicant as his agent to all the applicants have not appointed a common represent him speci®cally before that Authority. agent under Rule 90.1(a) or a common representative (b-bis) A person having the right to practice under paragraph (a), the applicant ®rst named in the before the national Of®ce or intergovernmental request who is entitled according to Rule 19.1 to ®le organization which acts as the Authority speci®ed an international application with the receiving Of®ce for supplementary search may be appointed by the shall be considered to be the common representative applicant as his agent to represent him speci®cally of all the applicants. before that Authority. 90.3 Effects of Acts by or in Relation to (c) A person having the right to practice before Agents and Common Representatives the national Of®ce or intergovernmental organization which acts as the International Preliminary (a) Any act by or in relation to an agent shall Examining Authority may be appointed by the have the effect of an act by or in relation to the applicant as his agent to represent him speci®cally applicant or applicants concerned. before that Authority. (b) If there are two or more agents representing (d) An agent appointed under paragraph (a) may, the same applicant or applicants, any act by or in unless otherwise indicated in the document relation to any of those agents shall have the effect appointing him, appoint one or more sub-agents to of an act by or in relation to the said applicant or represent the applicant as the applicant©s agent: applicants. (i) before the receiving Of®ce, the (c) Subject to Rule 90 bis.5, second sentence, International Bureau, the International Searching any act by or in relation to a common representative Authority, any Authority speci®ed for supplementary or his agent shall have the effect of an act by or in search and the International Preliminary Examining relation to all the applicants. Authority, provided that any person so appointed as sub-agent has the right to practice before the national 90.4 Manner of Appointment of Agent or Of®ce with which the international application was Common Representative ®led or to practice in respect of the international application before the International Bureau as (a) The appointment of an agent shall be effected receiving Of®ce, as the case may be; by the applicant signing the request, the demand or

T-119 Rev. 10.2019, June 2020 Rule 90 MANUAL OF PATENT EXAMINING PROCEDURE

a separate power of attorney. Where there are two (b) The general power of attorney shall be or more applicants, the appointment of a common deposited with the receiving Of®ce, provided that, agent or common representative shall be effected by where it appoints an agent under Rule 90.1(b), each applicant signing, at his choice, the request, the (b- bis), (c) or (d)(ii), it shall be deposited with the demand or a separate power of attorney. International Searching Authority, the Authority (b) Subject to Rule 90.5, a separate power of speci®ed for supplementary search or the attorney shall be submitted to either the receiving International Preliminary Examining Authority, as Of®ce or the International Bureau, provided that, the case may be. where a power of attorney appoints an agent under (c) Any receiving Of®ce, any International Rule 90.1(b), (b- bis), (c) or (d)(ii), it shall be Searching Authority, any Authority competent to submitted to the International Searching Authority, carry out supplementary searches and any the Authority speci®ed for supplementary search or International Preliminary Examining Authority may the International Preliminary Examining Authority, waive the requirement under paragraph (a)(ii) that as the case may be. a copy of the general power of attorney is attached (c) If the separate power of attorney is not to the request, the demand or the separate notice, as signed, or if the required separate power of attorney the case may be. is missing, or if the indication of the name or address (d) Notwithstanding paragraph (c), where the of the appointed person does not comply with Rule agent submits any notice of withdrawal referred to 4.4, the power of attorney shall be considered in Rules 90 bis.1 to 90 bis.4 to the receiving Of®ce, non-existent unless the defect is corrected. the Authority speci®ed for supplementary search, (d) Subject to paragraph (e), any receiving the International Preliminary Examining Authority Of®ce, any International Searching Authority, any or the International Bureau, as the case may be, a Authority competent to carry out supplementary copy of the general power of attorney shall be searches, any International Preliminary Examining submitted to that Of®ce, Authority or Bureau. Authority and the International Bureau may waive 90.6 Revocation and Renunciation the requirement under paragraph (b) that a separate power of attorney be submitted to it, in which case (a) Any appointment of an agent or common paragraph (c) shall not apply. representative may be revoked by the persons who (e) Where the agent or the common made the appointment or by their successors in title, representative submits any notice of withdrawal in which case any appointment of a sub-agent under referred to in Rules 90 bis.1 to 90 bis.4, the Rule 90.1(d) by that agent shall also be considered requirement under paragraph (b) for a separate power as revoked. Any appointment of a sub-agent under of attorney shall not be waived under paragraph (d). Rule 90.1(d) may also be revoked by the applicant concerned. 90.5 General Power of Attorney (b) The appointment of an agent under Rule (a) Appointment of an agent in relation to a 90.1(a) shall, unless otherwise indicated, have the particular international application may be effected effect of revoking any earlier appointment of an by referring in the request, the demand or a separate agent made under that Rule. notice to an existing separate power of attorney (c) The appointment of a common representative appointing that agent to represent the applicant in shall, unless otherwise indicated, have the effect of relation to any international application which may revoking any earlier appointment of a common be ®led by that applicant (i.e., a ªgeneral power of representative. attorneyº), provided that: (d) An agent or a common representative may (i) the general power of attorney has been renounce his appointment by a noti®cation signed deposited in accordance with paragraph (b), and by him. (ii) a copy of it is attached to the request, the (e) Rule 90.4(b) and (c) shall apply, mutatis demand or the separate notice, as the case may be; mutandis, to a document containing a revocation or that copy need not be signed. renunciation under this Rule.

Rev. 10.2019, June 2020 T-120 PATENT COOPERATION TREATY Rule 90bis

Rule 90bis withdrawal sent by the applicant or transmitted by the receiving Of®ce or the International Preliminary Withdrawals Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed. 90 bis.1 Withdrawal of the International Application 90 bis.3 Withdrawal of Priority Claims

(a) The applicant may withdraw the international (a) The applicant may withdraw a priority claim, application at any time prior to the expiration of 30 made in the international application under Article months from the priority date. 8(1), at any time prior to the expiration of 30 months from the priority date. (b) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to (b) Where the international application contains the International Bureau, to the receiving Of®ce or, more than one priority claim, the applicant may where Article 39(1) applies, to the International exercise the right provided for in paragraph (a) in Preliminary Examining Authority. respect of one or more or all of the priority claims. (c) No international publication of the (c) Withdrawal shall be effective on receipt of international application shall be effected if the a notice addressed by the applicant, at his option, to notice of withdrawal sent by the applicant or the International Bureau, to the receiving Of®ce or, transmitted by the receiving Of®ce or the where Article 39(1) applies, to the International International Preliminary Examining Authority Preliminary Examining Authority. reaches the International Bureau before the technical (d) Where the withdrawal of a priority claim preparations for international publication have been causes a change in the priority date, any time limit completed. which is computed from the original priority date 90 bis.2 Withdrawal of Designations and which has not already expired shall, subject to paragraph (e), be computed from the priority date (a) The applicant may withdraw the designation resulting from that change. of any designated State at any time prior to the (e) In the case of the time limit referred to in expiration of 30 months from the priority date. Article 21(2)(a), the International Bureau may Withdrawal of the designation of a State which has nevertheless proceed with the international been elected shall entail withdrawal of the publication on the basis of the said time limit as corresponding election under Rule 90 bis.4. computed from the original priority date if the notice (b) Where a State has been designated for the of withdrawal sent by the applicant or transmitted purpose of obtaining both a national patent and a by the receiving Of®ce or the International regional patent, withdrawal of the designation of Preliminary Examining Authority reaches the that State shall be taken to mean withdrawal of only International Bureau after the completion of the the designation for the purpose of obtaining a technical preparations for international publication. national patent, except where otherwise indicated. 90 bis.3 bis Withdrawal of Supplementary (c) Withdrawal of the designations of all Search Request designated States shall be treated as withdrawal of the international application under Rule 90 bis.1. (a) The applicant may withdraw a supplementary (d) Withdrawal shall be effective on receipt of search request at any time prior to the date of a notice addressed by the applicant, at his option, to transmittal to the applicant and to the International the International Bureau, to the receiving Of®ce or, Bureau, under Rule 45 bis.8(a), of the supplementary where Article 39(1) applies, to the International international search report or the declaration that no Preliminary Examining Authority. such report will be established. (e) No international publication of the (b) Withdrawal shall be effective on receipt, designation shall be effected if the notice of within the time limit under paragraph (a), of a notice addressed by the applicant, at his option, to the

T-121 Rev. 10.2019, June 2020 Rule 91 MANUAL OF PATENT EXAMINING PROCEDURE

Authority speci®ed for supplementary search or to (b-bis) Where a supplementary search request the International Bureau, provided that, where the is withdrawn under Rule 90 bis.3 bis , the notice does not reach the Authority speci®ed for supplementary international search by the Authority supplementary search in suf®cient time to prevent concerned shall be discontinued. the transmittal of the report or declaration referred (c) Where the demand or all elections are to in paragraph (a), the communication of that report withdrawn under Rule 90 bis.4, the processing of or declaration under Article 20(1), as applicable by the international application by the International virtue of Rule 45 bis.8(b), shall nevertheless be Preliminary Examining Authority shall be effected. discontinued. 90 bis.4 Withdrawal of the Demand, or of 90 bis.7 Faculty under Article 37(4)(b) Elections (a) Any Contracting State whose national law (a) The applicant may withdraw the demand or provides for what is described in the second part of any or all elections at any time prior to the expiration Article 37(4)(b) shall notify the International Bureau of 30 months from the priority date. in writing. (b) Withdrawal shall be effective upon receipt (b) The noti®cation referred to in paragraph (a) of a notice addressed by the applicant to the shall be promptly published by the International International Bureau. Bureau in the Gazette, and shall have effect in (c) If the notice of withdrawal is submitted by respect of international applications ®led more than the applicant to the International Preliminary one month after the date of such publication. Examining Authority, that Authority shall mark the Rule 91 date of receipt on the notice and transmit it promptly to the International Bureau. The notice shall be considered to have been submitted to the Recti®cation of Obvious Mistakes in the International Bureau on the date marked. International Application and Other Documents 90 bis.5 Signature 91.1 Recti®cation of Obvious Mistakes Any notice of withdrawal referred to in Rules 90 bis.1 to Rule 90 bis.4 shall be signed by the (a) An obvious mistake in the international applicant or, if there are two or more applicants, by application or another document submitted by the all of them. An applicant who is considered to be applicant may be recti®ed in accordance with this the common representative under Rule 90.2(b) shall Rule if the applicant so requests. not be entitled to sign such a notice on behalf of the other applicants. (b) The recti®cation of a mistake shall be subject to authorization by the ªcompetent authorityº, that is to say: 90 bis.6 Effect of Withdrawal (i) in the case of a mistake in the request part (a) Withdrawal under Rule 90 bis of the of the international application or in a correction international application, any designation, any thereof - by the receiving Of®ce; priority claim, the demand or any election shall have (ii) in the case of a mistake in the description, no effect in any designated or elected Of®ce where claims or drawings or in a correction thereof, unless the processing or examination of the international the International Preliminary Examining Authority application has already started under Article 23(2) is competent under item (iii) - by the International or Article 40(2). Searching Authority; (b) Where the international application is (iii) in the case of a mistake in the withdrawn under Rule 90 bis.1, the international description, claims or drawings or in a correction processing of the international application shall be thereof, or in an amendment under Article 19 or 34, discontinued. where a demand for international preliminary

Rev. 10.2019, June 2020 T-122 PATENT COOPERATION TREATY Rule 91

examination has been made and has not been (ii) in the case of a mistake in a document withdrawn and the date on which international other than the international application as ®led, preliminary examination shall start in accordance including a mistake in a correction or an amendment with Rule 69.1 has passed - by the International of the international application - the date on which Preliminary Examining Authority; the document was submitted. (iv) in the case of a mistake in a document (g) A mistake shall not be recti®able under this not referred to in items (i) to (iii) submitted to the Rule if: receiving Of®ce, the International Searching (i) the mistake lies in the omission of one or Authority, the International Preliminary Examining more entire elements of the international application Authority or the International Bureau, other than a referred to in Article 3(2) or one or more entire mistake in the abstract or in an amendment under sheets of the international application; Article 19 - by that Of®ce, Authority or Bureau, as the case may be. (ii) the mistake is in the abstract; (c) The competent authority shall authorize the (iii) the mistake is in an amendment under recti®cation under this Rule of a mistake if, and only Article 19, unless the International Preliminary if, it is obvious to the competent authority that, as Examining Authority is competent to authorize the at the applicable date under paragraph (f), something recti®cation of such mistake under paragraph (b)(iii); else was intended than what appears in the document or concerned and that nothing else could have been (iv) the mistake is in a priority claim or in a intended than the proposed recti®cation. notice correcting or adding a priority claim under (d) In the case of a mistake in the description, Rule 26 bis.1(a), where the recti®cation of the claims or drawings or in a correction or amendment mistake would cause a change in the priority date; thereof, the competent authority shall, for the provided that this paragraph shall not affect the purposes of paragraph (c), only take into account operation of Rules 20.4, 20.5, 26 bis and 38.3. the contents of the description, claims and drawings and, where applicable, the correction or amendment (h) Where the receiving Of®ce, the International concerned. Searching Authority, the International Preliminary (e) In the case of a mistake in the request part Examining Authority or the International Bureau of the international application or a correction discovers what appears to be a recti®able obvious thereof, or in a document referred to in paragraph mistake in the international application or another (b)(iv), the competent authority shall, for the document, it may invite the applicant to request purposes of paragraph (c), only take into account recti®cation under this Rule. the contents of the international application itself 91.2 Requests for Recti®cation and, where applicable, the correction concerned, or the document referred to in paragraph (b)(iv), A request for recti®cation under Rule 91.1 shall be together with any other document submitted with submitted to the competent authority within 26 the request, correction or document, as the case may months from the priority date. It shall specify the be, any priority document in respect of the mistake to be recti®ed and the proposed recti®cation, international application that is available to the and may, at the option of the applicant, contain a authority in accordance with the Administrative brief explanation. Rule 26.4 shall apply mutatis Instructions, and any other document contained in mutandis as to the manner in which the proposed the authority's international application ®le at the recti®cation shall be indicated. applicable date under paragraph (f). (f) The applicable date for the purposes of 91.3 Authorization and Effect of paragraphs (c) and (e) shall be: Recti®cations (i) in the case of a mistake in a part of the international application as ®led - the international (a) The competent authority shall promptly ®ling date; decide whether to authorize or refuse to authorize a

T-123 Rev. 10.2019, June 2020 Rule 92 MANUAL OF PATENT EXAMINING PROCEDURE

recti®cation under Rule 91.1 and shall promptly only if it ®nds that it would not have authorized the notify the applicant and the International Bureau of recti®cation under Rule 91.1 if it had been the the authorization or refusal and, in the case of competent authority, provided that no designated refusal, of the reasons therefor. The International Of®ce shall disregard any recti®cation that was Bureau shall proceed as provided for in the authorized under Rule 91.1 without giving the Administrative Instructions, including, as required, applicant the opportunity to make observations, notifying the receiving Of®ce, the International within a time limit which shall be reasonable under Searching Authority, the International Preliminary the circumstances, on the Of®ce's intention to Examining Authority and the designated and elected disregard the recti®cation. Of®ces of the authorization or refusal. Rule 92 (b) Where the recti®cation of an obvious mistake has been authorized under Rule 91.1, the document Correspondence concerned shall be recti®ed in accordance with the Administrative Instructions. 92.1 Need for Letter and for Signature (c) Where the recti®cation of an obvious mistake has been authorized, it shall be effective: (a) Any paper submitted by the applicant in the (i) in the case of a mistake in the international course of the international procedure provided for application as ®led, from the international ®ling in the Treaty and these Regulations, other than the date; international application itself, shall, if not itself in the form of a letter, be accompanied by a letter (ii) in the case of a mistake in a document identifying the international application to which it other than the international application as ®led, relates. The letter shall be signed by the applicant. including a mistake in a correction or an amendment of the international application, from the date on (b) If the requirements provided for in paragraph which that document was submitted. (a) are not complied with, the applicant shall be informed as to the non-compliance and invited to (d) Where the competent authority refuses to remedy the omission within a time limit ®xed in the authorize a recti®cation under Rule 91.1, the invitation. The time limit so ®xed shall be reasonable International Bureau shall, upon request submitted in the circumstances; even where the time limit so to it by the applicant within two months from the ®xed expires later than the time limit applying to date of the refusal, and subject to the payment of a the furnishing of the paper (or even if the latter time special fee whose amount shall be ®xed in the limit has already expired), it shall not be less than Administrative Instructions, publish the request for 10 days and not more than one month from the recti®cation, the reasons for refusal by the authority mailing of the invitation. If the omission is remedied and any further brief comments that may be within the time limit ®xed in the invitation, the submitted by the applicant, if possible together with omission shall be disregarded; otherwise, the the international application. A copy of the request, applicant shall be informed that the paper has been reasons and comments (if any) shall if possible be disregarded. included in the communication under Article 20 where the international application is not published (c) Where non-compliance with the requirements by virtue of Article 64(3). provided for in paragraph (a) has been overlooked and the paper taken into account in the international (e) The recti®cation of an obvious mistake need procedure, the non-compliance shall be disregarded. not be taken into account by any designated Of®ce in which the processing or examination of the 92.2 Languages international application has already started prior to the date on which that Of®ce is noti®ed under (a) Subject to Rules 55.1 and 55.3 and to Rule 91.3(a) of the authorization of the recti®cation paragraph (b) of this Rule, any letter or document by the competent authority. submitted by the applicant to the International (f) A designated Of®ce may disregard a Searching Authority or the International Preliminary recti®cation that was authorized under Rule 91.1 Examining Authority shall be in the same language as the international application to which it relates.

Rev. 10.2019, June 2020 T-124 PATENT COOPERATION TREATY Rule 92

However, where a translation of the international (c) Where the applicant has attempted to transmit application has been transmitted under Rule 23.1(b) a document by any of the means referred to in or furnished under Rule 55.2, the language of such paragraph (a) but part or all of the received document translation shall be used. is illegible or part of the document is not received, (b) Any letter from the applicant to the the document shall be treated as not having been International Searching Authority or the International received to the extent that the received document is Preliminary Examining Authority may be in a illegible or that the attempted transmission failed. language other than that of the international The national Of®ce or intergovernmental application, provided the said Authority authorizes organization shall promptly notify the applicant the use of such language. accordingly. (c) [Deleted] (d) Any national Of®ce or intergovernmental organization may require that the original of any (d) Any letter from the applicant to the document transmitted by any of the means referred International Bureau shall be in English, French or to in paragraph (a) and an accompanying letter any other language of publication as may be identifying that earlier transmission be furnished permitted by the Administrative Instructions. within 14 days from the date of the transmission, (e) Any letter or noti®cation from the provided that such requirement has been noti®ed to International Bureau to the applicant or to any the International Bureau and the International Bureau national Of®ce shall be in English or French. has published information thereon in the Gazette. The noti®cation shall specify whether such 92.3 Mailings by National Of®ces and requirement concerns all or only certain kinds of Intergovernmental Organizations documents. (e) Where the applicant fails to furnish the Any document or letter emanating from or original of a document as required under paragraph transmitted by a national Of®ce or an (d), the national Of®ce or intergovernmental intergovernmental organization and constituting an organization concerned may, depending on the kind event from the date of which any time limit under of document transmitted and having regard to Rules the Treaty or these Regulations commences to run 11 and 26.3, shall be sent by air mail, provided that surface mail may be used instead of air mail in cases where (i) waive the requirement under paragraph surface mail normally arrives at its destination within (d), or two days from mailing or where air mail service is (ii) invite the applicant to furnish, within a not available. time limit which shall be reasonable under the circumstances and shall be ®xed in the invitation, 92.4 Use of Telegraph, Teleprinter, Facsimile the original of the document transmitted, provided Machine, Etc. that, where the document transmitted contains defects, or shows that the original contains defects, (a) A document making up the international in respect of which the national Of®ce or application, and any later document or intergovernmental organization may issue an correspondence relating thereto, may, invitation to correct, that Of®ce or organization may notwithstanding the provisions of Rules 11.14 and issue such an invitation in addition to, or instead of, 92.1(a), but subject to paragraph (h), be transmitted, proceeding under item (i) or (ii). to the extent feasible, by telegraph, teleprinter, (f) Where the furnishing of the original of a facsimile machine or other like means of document is not required under paragraph (d) but communication resulting in the ®ling of a printed or the national Of®ce or intergovernmental organization written document. considers it necessary to receive the original of the (b) A signature appearing on a document said document, it may issue an invitation as provided transmitted by facsimile machine shall be recognized for under paragraph (e)(ii). for the purposes of the Treaty and these Regulations (g) If the applicant fails to comply with an as a proper signature. invitation under paragraph (e)(ii) or (f):

T-125 Rev. 10.2019, June 2020 Rule 92bis MANUAL OF PATENT EXAMINING PROCEDURE

(i) where the document concerned is the or, where no international ®ling date is accorded, international application, the latter shall be from the date of receipt. considered withdrawn and the receiving Of®ce shall so declare; 93.2 The International Bureau (ii) where the document concerned is a (a) The International Bureau shall keep the ®le, document subsequent to the international application, including the record copy, of any international the document shall be considered as not having been application for at least 30 years from the date of submitted. receipt of the record copy. (h) No national Of®ce or intergovernmental (b) The basic records of the International Bureau organization shall be obliged to receive any shall be kept inde®nitely. document submitted by a means referred to in paragraph (a) unless it has noti®ed the International 93.3 The International Searching and Bureau that it is prepared to receive such a document Preliminary Examining Authorities by that means and the International Bureau has published information thereon in the Gazette. Each International Searching Authority and each Rule 92bis International Preliminary Examining Authority shall keep the ®le of each international application it Recording of Changes in Certain Indications receives for at least 10 years from the international ®ling date. in the Request or the Demand 93.4 Reproductions 92 bis.1 Recording of Changes by the International Bureau For the purposes of this Rule, records, copies and ®les may be kept as photographic, electronic or other (a) The International Bureau shall, on the request reproductions, provided that the reproductions are of the applicant or the receiving Of®ce, record such that the obligations to keep records, copies and changes in the following indications appearing in ®les under Rules 93.1 to 93.3 are met. the request or demand: (i) person, name, residence, nationality or Rule 93bis address of the applicant, (ii) person, name or address of the agent, the Manner of Communication of Documents common representative or the inventor. (b) The International Bureau shall not record the 93 bis.1 Communication on Request; requested change if the request for recording is Communication via Digital Library received by it after the expiration of 30 months from the priority date. (a) Where the Treaty, these Regulations or the Administrative Instructions provide for the Rule 93 communication, noti®cation or transmittal (ªcommunicationº) of an international application, Keeping of Records and Files noti®cation, communication, correspondence or other document (ªdocumentº) by the International 93.1 The Receiving Of®ce Bureau to any designated or elected Of®ce, such communication shall be effected only upon request Each receiving Of®ce shall keep the records relating by the Of®ce concerned and at the time speci®ed by to each international application or purported that Of®ce. Such request may be made in relation international application, including the home copy, to individually speci®ed documents or a speci®ed for at least 10 years from the international ®ling date class or classes of documents.

Rev. 10.2019, June 2020 T-126 PATENT COOPERATION TREATY Rule 94

(b) A communication under paragraph (a) shall, (ii) public access to such information would where so agreed by the International Bureau and the clearly prejudice the personal or economic interests designated or elected Of®ce concerned, be of any person; and considered to be effected at the time when the International Bureau makes the document available (iii) there is no prevailing public interest to to that Of®ce in electronic form in a digital library, have access to that information. in accordance with the Administrative Instructions, from which that Of®ce is entitled to retrieve that Rule 26.4 shall apply mutatis mutandis as to the document. manner in which the applicant shall present the information which is the subject of a request made Rule 94 under this paragraph. (f) Where the International Bureau has omitted Access to Files information from public access in accordance with paragraphs (d) or (e), and that information is also 94.1 Access to the File Held by the contained in the ®le of the international application International Bureau held by the receiving Of®ce, the International Searching Authority, the Authority speci®ed for (a) At the request of the applicant or any person supplementary search or the International authorized by the applicant, the International Bureau Preliminary Examining Authority, the International shall furnish, subject to reimbursement of the cost Bureau shall promptly notify that Of®ce and of the service, copies of any document contained in Authority accordingly. its ®le. (g) The International Bureau shall not provide (b) The International Bureau shall, at the request access to any document contained in its ®le which of any person but not before the international was prepared solely for internal use by the publication of the international application and International Bureau. subject to Article 38 and paragraphs (d) to (g), furnish copies of any document contained in its ®le. 94.1 bis Access to the File Held by the The furnishing of copies may be subject to Receiving Of®ce reimbursement of the cost of the service. (a) At the request of the applicant or any person (c) The International Bureau shall, if so authorized by the applicant, the receiving Of®ce requested by an elected Of®ce, furnish copies of the may provide access to any document contained in international preliminary examination report under its ®le. The furnishing of copies of documents may paragraph (b) on behalf of that Of®ce. The be subject to reimbursement of the cost of the International Bureau shall promptly publish details service. of any such request in the Gazette. (b) The receiving Of®ce may, at the request of (d) The International Bureau shall not provide any person, but not before the international access to any information contained in its ®le which publication of the international application and has been omitted from publication under Rule 48.2(l) subject to paragraph (c), provide access to any and to any document contained in its ®le relating to document contained in its ®le. The furnishing of a request under that Rule. copies of documents may be subject to (e) Upon a reasoned request by the applicant, reimbursement of the cost of the service. the International Bureau shall not provide access to (c) The receiving Of®ce shall not provide access any information contained in its ®le and to any under paragraph (b) to any information in respect of document contained in its ®le relating to such a which it has been noti®ed by the International request, if it ®nds that: Bureau that the information has been omitted from (i) this information does not obviously serve publication in accordance with Rule 48.2(l) or from the purpose of informing the public about the public access in accordance with Rule 94.1(d) or (e). international application;

T-127 Rev. 10.2019, June 2020 Rule 95 MANUAL OF PATENT EXAMINING PROCEDURE

94.1 ter Access to the File Held by the information has been omitted from publication in International Searching Authority accordance with Rule 48.2(l) or from public access in accordance with Rule 94.1(d) or (e). (a) At the request of the applicant or any person 94.2 bis Access to the File Held by the authorized by the applicant, the International Designated Of®ce Searching Authority may provide access to any document contained in its ®le. The furnishing of If the national law applicable by any designated copies of documents may be subject to Of®ce allows access by third parties to the ®le of a reimbursement of the cost of the service. national application, that Of®ce may allow access (b) The International Searching Authority may, to any documents relating to the international at the request of any person, but not before the application, contained in its ®le, to the same extent international publication of the international as provided by the national law for access to the ®le application and subject to paragraph (c), provide of a national application, but not before the earliest access to any document contained in its ®le. The of the dates speci®ed in Article 30(2)(a). The furnishing of copies of documents may be subject furnishing of copies of documents may be subject to reimbursement of the cost of the service. to reimbursement of the cost of the service. (c) The International Searching Authority shall not provide access under paragraph (b) to any 94.3 Access to the File Held by the Elected information in respect of which it has been noti®ed Of®ce by the International Bureau that the information has been omitted from publication in accordance If the national law applicable by any elected Of®ce withRule 48.2(l) or from public access in accordance allows access by third parties to the ®le of a national with Rule 94.1(d) or (e). application, that Of®ce may allow access to any (d) Paragraphs (a) to (c) shall apply mutatis documents relating to the international application, mutandis to the Authority speci®ed for including any document relating to the international supplementary search. preliminary examination, contained in its ®le, to the same extent as provided by the national law for 94.2 Access to the File Held by the access to the ®le of a national application, but not International Preliminary Examining before the earliest of the dates speci®ed in Article Authority 30(2)(a). The furnishing of copies of documents may be subject to reimbursement of the cost of the (a) At the request of the applicant or any person service. authorized by the applicant, the International Preliminary Examining Authority shall provide Rule 95 access to any document contained in its ®le. The furnishing of copies of documents may be subject Information and Translations from to reimbursement of the cost of the service. Designated and Elected Of®ces (b) At the request of any elected Of®ce, but not before the establishment of the international 95.1 Information Concerning Events at the preliminary examination report and subject to Designated and Elected Of®ces paragraph (c), the International Preliminary Examining Authority shall provide access to any Any designated or elected Of®ce shall notify the document contained in its ®le. The furnishing of International Bureau of the following information copies of documents may be subject to concerning an international application within two reimbursement of the cost of the service. months, or as soon as reasonably possible thereafter, (c) The International Preliminary Examining of the occurrence of any of the following events: Authority shall not provide access under paragraph (b) to any information in respect of which it has been (i) following the performance by the applicant noti®ed by the International Bureau that the of the acts referred to in Article 22 or Article 39, the

Rev. 10.2019, June 2020 T-128 PATENT COOPERATION TREATY Rule 96

date of performance of those acts and any national a copy of the translation of the international application number which has been assigned to the application furnished by the applicant to that Of®ce. international application; (b) The International Bureau may, upon request (ii) where the designated or elected Of®ce and subject to reimbursement of the cost, furnish to explicitly publishes the international application any person copies of the translations received under under its national law or practice, the number and paragraph (a). date of that national publication; Rule 96 (iii) where a patent is granted, the date of grant of the patent and, where the designated or elected The Schedule of Fees Of®ce explicitly publishes the international application in the form in which it is granted under its national law, the number and date of that national 96.1 Schedule of Fees Annexed to publication. Regulations

95.2 Furnishing of Copies of Translations The amounts of the fees referred to in Rules 15, 45 bis.2 and 57 shall be expressed in Swiss currency. (a) At the request of the International Bureau, They shall be speci®ed in the Schedule of Fees any designated or elected Of®ce shall provide it with which is annexed to these Regulations and forms an integral part thereof.

T-129 Rev. 10.2019, June 2020 MANUAL OF PATENT EXAMINING PROCEDURE

SCHEDULE OF FEES

Fees Amounts 1. International ®ling fee: 1,330 Swiss francs plus 15 Swiss francs for each sheet (Rule 15.2) of the international application in excess of 30 sheets 2. Supplementary search handling fee: 200 Swiss francs (Rule 45 bis.2) 3. Handling Fee: 200 Swiss francs (Rule 57.2) Reductions 4. The international ®ling fee is reduced by the following amount if the international application is, as provided for in the Administrative Instructions, ®led: (a) in electronic form, the request not being in character coded format: 100 Swiss francs (b) in electronic form, the request being in character coded format: 200 Swiss francs (c) in electronic form, the request, description, claims and abstract being in character coded format: 300 Swiss francs 5. The international ®ling fee under item 1 (where applicable, as reduced under item 4), the supplementary search handling fee under item 2 and the handling fee under item 3 are reduced by 90% if the international application is ®led by: (a) an applicant who is a natural person and who is a national of and resides in a State that is listed as being a State whose per capita gross domestic product is below US$25,000 (according to the most recent 10-year average per capita gross domestic product ®gures at constant 2005 US$ values published by the United Nations), and whose nationals and residents who are natural persons have ®led less than 10 international applications per year (per million population) or less than 50 international applications per year (in absolute numbers) according to the most recent ®ve-year average yearly ®ling ®gures published by the International Bureau; or (b) an applicant, whether a natural person or not, who is a national of and resides in a State that is listed as being classi®ed by the United Nations as a least developed country; provided that, at the time of ®ling of the international application, there are no bene®cial owners of the international application who would not satisfy the criteria in sub-item (a) or (b) and provided that, if there are several applicants, each must satisfy the criteria set out in either sub-item (a) or (b). The lists of States referred to in sub-items (a) and (b) 1 shall be updated by the Director General at least every ®ve years according to directives given by the Assembly. The criteria set out in sub-items (a) and (b) shall be reviewed by the Assembly at least every ®ve years. ______

1 Editor's Note: The ®rst lists of States were published in the Gazette of February 12, 2015, page 32 (see www.wipo.int/pct/en/of®cial_notices/index.html).

Rev. 10.2019, June 2020 T-130 PATENT COOPERATION TREATY

PCT INDEX

LEGEND

Acronym/Term Meaning Art. Patent Cooperation Treaty Article A.I. Patent Cooperation Treaty Administrative Instruction CFR U.S. Code of Federal Regulations DO Designated Of®ce EO Elected Of®ce HC Home Copy of International Application IA International Application IB International Bureau IPE International Preliminary Examination IPEA International Preliminary Examining Authority IPER International Preliminary Examination Report Ipub International Publication IS International Search ISA International Searching Authority ISR International Search Report PCT Patent Cooperation Treaty PD Priority Date of Earlier Filed National Application RC Record Copy of International Application RO Receiving Of®ce Rule Patent Cooperation Treaty Rule SC Search Copy of International Application U.S.C. United States Code USPTO United States Patent and Of®ce Administrative instructions - scope, source, entry into A force ...... Rule 89 Abandonment of IA as to USPTO ...... Administrative provisions of the PCT ...... 37 CFR 1.495(h) Assembly ...... Art. 53 Abbreviated expressions used in IA Committee for technical cooperation .. Art. 56 Meaning of ...... A.I. 101 37 CFR 1.401 Executive committee ...... Art. 54 Codes/Indications ...... A.I. 115 Finances ...... Art. 57 Abstract ...... Rule 8 International Bureau ...... Art. 55 Amendment by ISA in response to applicant's Regulations ...... Art. 58 comments ...... A.I. 515 Agent Missing or defective ...... Rule 38 See also Common representative U.S. Rule regarding ...... 37 CFR 1.438 See also Representative Absence of quorum in assembly, voting ... Rule 85 ªApplicantº encompasses the term ªagentº in Access to ®les ...... Rule 94 37 CFR 1.14 certain situations ...... Rule 2.1 Additional (new) matter in request, deletion of ...... Appointment of ...... Rule 90.1 ...... A.I. 303 Changes, recording of by IB .... Rule 92 bis.1 Addresses of applicants, inventors and agents ...... In general ...... Rule 2.2, Rule 4.7, Rule 90 ...... Rule 4.4 Indications concerning,

T-131 Rev. 10.2019, June 2020 MANUAL OF PATENT EXAMINING PROCEDURE

In demand ...... Rule 53.2 , Rule 53.5 Different applicants for different designated In request ...... Art. 4, Rule 4.1, Rule 4.7 states ...... Rule 4.5(d), A.I. 203 National law requirements ...... Entitled to make a demand ...... Art. 27, Rule 51 bis.1b ...... Art. 31(2), Rule 54 Notice of change of agent sent to IB ...... First named used to identify IA ...... A.I. 105 ...... A.I. 328 In general ...... Notice of change of agent sent from IB to RO, ...... Art. 9, Rule 2.1 , Rule 4.5 , Rule 18 ISA and IPEA ...... A.I. 425 Recording by IB of changes regarding applicant Notice of change of agent sent from ISA to IB...... Rule 92 bis ...... A.I. 512 U.S. regulations regarding ...... 37 CFR 1.421 Notice of change of agent sent from IPEA to IB Application - See International application ...... A.I. 608 Assembly of PCT contracting states ...... Art. 53 Right of agent to practice before international Executive committee established by .... Art. 54 authorities ...... Art. 49 Assignment Amendment Of IA, possible requirement to furnish to a Copy of amendment under Article 19 for IPEA national Of®ce ...... Rule 51 bis.1 ...... Rule 62 Recording by USPTO if U.S. is a designated Copy of amendment under Article 19 sent country in the IA ...... 37 CFR 3.21 (communicated) to DO ...... Authorized of®cer ...... Art. 20, Rule 47.1(b) ...... Rule 43.8, Rule 70.14, A.I. 514, A.I. 612 De®nition of, before IPEA ...... Rule 66.5 Availability of translation of IA to IB ...... Rule 95 Form of, before IPEA ...... Rule 66.8 B Language of amendments to the IA ...... Rule 12.2 Biological material invention, ...... Rule 13 bis Processing of Article 19 amendment by IB ...... Deposited, Indications as to ...... A.I. 209 ...... A.I. 417 See also Processing of by IPEA ...... A.I. 602 Nucleotide or amino acid sequence listing Of abstract by ISA ...... A.I. 515 Sequence listing Of claims before DO ...... Art. 28, Rule 52 Of claims before IB ...... Art. 19, Rule 46 C Of claims before IPEA ...... Calendar (Gregorian to express dates) .... Rule 79 ...... Art. 34 Rule 66.3 37 CFR 1.485 See also Dates Of claims before EO ...... Art. 41, Rule 78 Changes in person, name or address of applicants and Of claims Numbering and identi®cation in inventors (international phase) .... 37 CFR 1.472 amendment ...... A.I. 205 National stage inventorship ...... Of description before IPEA ...... 37 CFR 1.41(e) 37 CFR 1.48 ...... Art. 34 Rule 66.3 37 CFR 1.485 Check list (In request) Of description before DO .... Art. 28, Rule 52 Re documents ®led with IA ...... Rule 3.3 Of description before EO .... Art. 41, Rule 78 Necessary annotations by RO ...... A.I. 313 Of drawings before DO ...... Art. 28, Rule 52 Citations (proper) of documents in the ISR ...... Of drawing before EO ...... Art. 41, Rule 78 ...... A.I. 503 Of drawing before IPEA ...... Claims ...... Art. 34 37 CFR 1.485 Amendment before DO ...... Art. 28, Rule 52 Of certain PCT provisions ...... Art. 61 Amendment before EO ...... Art. 41, Rule 78 See also Revision of PCT Amendment before IB ...... Art. 19, Rule 46 Of PCT regulations ...... Rule 88, Art. 58 Amendment before IPEA ...... Sheet(s) later submitted for incorporation by ...... Art. 34, Rule 66.4, Rule 66.8 reference ...... A.I. 309 In general ...... Art. 6, Rule 6 Applicant Numbering and identi®cation upon amendment Changes before RO/US ...... 37 CFR 1.472 ...... A.I. 205 U.S. regulation regarding ...... 37 CFR 1.436

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Classi®cation of IA subject matter ...... A.I. 504 After which applicant can request RO to Committee established by assembly of states ...... certify copy of IA as identical with IA as ...... Art. 56 ®led and applicant can send certi®ed copy Common representative .... Rule 2.2 bis, Rule 90.2 to IB (14 months from PD) ... Rule 22.1 Change of ...... A.I. 106 To correct Article 14(1) defects in IA ...... Notice of change sent from RO to IB and ISA ...... Art. 14(1)(b) ...... A.I. 328 Extensions of time available ... Rule 26.2 Notice of change sent from IB to RO, ISA, & To correct defects under Article 11 to obtain IPEA ...... A.I. 425 an international ®ling date ...... Notice of change sent by ISA to IB ... A.I. 512 ...... Art. 11(2), Rule 20 Notice of change sent by IPEA to IB ...... To provide missing drawings (two months) ...... A.I. 608 ...... Art. 14(2) Rule 20.7 37 CFR 1.437 Communication To pay de®ciencies in transmittal fee ( Rule From IB, of IA, ISR, or any Article 17(2)(a) 14 ), international ®ling fee ( Rule 15.1 ), determination and indication that no search will search fee ( Rule 16 ), late payment fee ( be established, to each DO .. Art. 20, Rule 47 Rule 16 bis.2 ) ...... Communication transmitted electronically ...... Art. 14(3) Rule 16 bis 37 CFR 1.431 ...... Rule 89 bis , A.I. 701 - 714, A.I. Annex F Extension of time - One month set by RO Competent IPEA ...... Rule 59 when RO ®nds de®ciency ...... Competent ISA ...... Art. 16, Rule 35 ...... Rule 16 bis.1 Competent RO ...... Art. 11(1)(i), Rule 19 To pay de®ciencies when RO ®nds Con®dential nature discrepancies before fees are due ...... Of IA ...... Art. 30 ...... A.I. 304 Of IPE ...... Art. 38 (2) Before the ISA Con®rmation copy of facsimile transmission (N/A in To amend claims under Article 19 before U.S.) ...... Rule 92.4, A.I. 331 IB ...... Rule 46.1 Continuation or continuation-in-part, IA treated as in To submit priority document ...... any designated state ...... Rule 4.11, 49 bis.1(d) ...... Rule 17.1 Copies Where lack of unity of invention is held .. In electronic form ...... Art. 17(3) Rule 40 37 CFR 1.476 Of documents ®led on paper .... Rule 89 ter (3) Before the IPEA Of international application in pre-conversion To amend claims, description, or drawings format ...... A.I. 706 under Article 34 before the IPE ...... Making home copy and search copy from original ...... Rule 66 37 CFR 1.485 IA by RO ...... Art. 12, Rule 21 To amend claims, description, or drawings Identifying RC, SC, and HC by RO ...... under Article 34 before the IPEA ...... A.I. 305, A.I. 804(d) ...... Rule 66.1, Rule 66.4 bis Correction of request by RO ex of®cio .. A.I. 327 To correct defects in demand ...... Corrections and amendments during international ...... Rule 60.1 processing...... Rule 26, Rule 46 To ®le a demand ...... Rule 54 bis Correspondence To provide translation of priority document For applicant, to whom sent ...... A.I. 108 upon invitation by IPEA ...... Rule 66.7 In general ...... Rule 92 To respond (including Article 34 amendments) to a written opinion within D time set therein ...... Rule 66.2 Dates (using Gregorian calendar) ...... Rule 79 Time for reply set in written opinion is Format of, in IA ...... A.I. 110 non-extendable ...... 37 CFR 1.484(d) Deadlines (See also Time limit) Where lack of unity of invention is held by Applicable to Applicants IPEA ...... (1) Before the RO ...... Art. 34(3) Rule 68.2 37 CFR 1.488

T-133 Rev. 10.2019, June 2020 MANUAL OF PATENT EXAMINING PROCEDURE

When ®ling a demand for IPE, must pay Entitlement to apply for a patent ...... handling fee ...... Rule 57 ...... Rule 4.17(ii), Rule 51 bis.1(a)(ii), A.I. 212 When seeking IPE, preliminary examination Entitlement to claim priority ...... fee ...... Rule 58 bis .... Rule 4.17(iii), Rule 51 bis.1(a)(iii), A.I. 213 (4) Before the DO/EO Exceptions to lack of novelty ...... To enter the National Stage under 35 U.S.C...... Rule 4.17(v), Rule 51 bis.1(a)(v), A.I. 215 371 ...... 37 CFR 1.495 Identity of inventor ...... To amend claims description, or drawing ...... Rule 4.17(i), Rule 51 bis.1(a)(i), A.I. 211 under Article 28 before the DO ...... Inventorship ...... Rule 52 .... Rule 4.17(iv), Rule 51 bis.1(a)(iv), A.I. 214 To amend claims, description, or drawings Non-prejudicial disclosures ...... before EO (varies) ...... Rule 78 ...... Rule 4.17(v), Rule 51 bis.1(a)(v), A.I. 215 Applicable to the RO Processing by IB ...... Rule 26 ter.2, A.I. 419 For RO to check certain elements of IA ...... Defects ...... Rule 26.1 Correction For RO to hold IA withdrawn for lack of Of indications re applicant's residence or compliance with Article 11(1), items (i) to (iii) nationality ...... A.I. 329 after IA has already been accorded a ®ling Of obvious defects, by RO ...... A.I. 325 date ...... Art. 14(4), Rule 30 Of request, ex of®cio, by RO ...... A.I. 327 For RO to transmit record copy to IB ...... Processing by IB ...... A.I. 413 ...... Rule 22 IA held withdrawn because of failure to correct For RO to transmit search copy to ISA ...... certain defects ...... Rule 29.1 ...... Rule 23 In abstract ...... Rule 38 Applicable to the IB In certain original documents submitted to For IB to notify applicant, RO, ISA and DO of national Of®ce ...... Rule 92.4 fact and date receipt of record copy of IA .... In demand ...... Rule 60.1 ...... Rule 24 In drawings furnished to DO under Rule 49.5, International publication of IA promptly after possibly permitting correction by invitation ... expiration of 18 months from PD, unless ...... Rule 49.5(g) earlier publication requested under Articles In power of attorney - consequences ...... 21(2)(b) and 64(3)(c)(i) .... Art. 21, Rule 48 ...... Rule 90.4(c) Applicable to the ISA In the title ...... Rule 37 For ISA to establish the ISR ...... Rule 42 Invitation to correct Article 14(1)(b) defects .... Applicable to the IPEA ...... Rule 26.3 bis For IPEA to establish the IPER ... Rule 69.2 Invitation to correct Article 3(4)(i) defects ...... For IPEA to start IPE ...... Rule 69.1 ...... Rule 26.3 ter IPEA shall promptly notify applicant of receipt Noted by IB ...... Rule 28 of the demand ...... Rule 61.1 De®nition of PCT terms .... Art. 2 37 CFR 1.401 Deceased inventor (U.S. Rule) ...... 37 CFR 1.43 Delays in meeting time limits, excuse of ...... Declarations relating to national requirements ...... Rule 82 37 CFR 1.468 ..... Rule 4.17, Rule 51 bis.1(a), A.I. 211 - A.I. 215 Demand for international preliminary examination Correction of or addition of ...... (IPE) ...... Rule 26 ter.1, A.I. 216, A.I. 317 Applicant entitled to make demand .... Rule 54 Ex of®cio corrections are not to be made Copy sent by IPEA to IB ...... Rule 61.1 by RO ...... A.I. 327(d) Defects in ...... Rule 60.1 by IB ...... A.I. 419(c) Evidence of right to ®le demand ...... A.I. 614 Invitation for, by IB or RO ...... Filed with other than a competent IPEA, treatment ...... Rule 26 ter.2(a) of ...... 59.3 Processing by IB ...... In general ...... Art. 31, Rule 53 ...... Rule 26 ter.2(b), A.I. 419 Not considered to have been made: Noti®cation by IB to EOs ...... A.I. 418

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Notice sent by IPEA re ®ling after 19 months Manner of marking necessary annotations in from PD ...... A.I. 601 checklist sent to IB by RO with RC of IA ...... Publication of notice of demand .... Rule 61.4 ...... A.I. 313 Recording by IB of changes: ...... Rule 92 bis Drawing(s) Noti®cations regarding this sent by IB ...... Amendment of, before DO .... Art. 28, Rule 52 ...... A.I. 422 Amendment of, before EO .... Art. 41, Rule 78 Time limit for making ...... Rule 54 bis Amendment of, before IPEA ...... Art. 34 U.S. regulation regarding ...... 37 CFR 1.480 Flowsheets and diagrams considered as ...... Deposited microorganism ...... Rule 7.1 Indications on separate sheet ...... In general ...... Art. 7, Rule 7 ...... Rule 13 bis , A.I. 209 Missing - RO procedure concerning ...... Description ...... Rule 20.5, A.I. 310 Amendment before DO ...... Art. 28, Rule 52 Time set to ®le where not necessary to Amendment before EO ...... Art. 41, Rule 78 understanding of invention ...... Rule 7.2 Amendment before IPEA ...... Art. 34 Referred to, but not included in IA ...... Headings for parts of ...... A.I. 204 ...... Art. 14(2) In general ...... Art. 5, Rule 5 U.S. regulation regarding ...... 37 CFR 1.437 Of nucleotide/amino acid sequence ...... E ...... Rule 5.2, A.I. Annex C U.S. regulation regarding ...... 37 CFR 1.435 Elected Of®ce (EO) Design - not mentioned as subject matter for IA ..... Noti®cation to IB of number of applications ®led ...... Art. 2(i) after national stage deadline ...... A.I. 112 Designated Of®ce (DO) U.S. as ...... 37 CFR 1.414 Amendment of claims, description, and drawings Election(s) before DO ...... Art. 28, Rule 52 Cancellation of ex of®cio by IB ... A.I. 423(b) Communication of IA, ISR, or declaration under Cancellation of ex of®cio by IPEA ...... Article 17(2)(a) ...... Art. 20, Rule 47 ...... A.I. 606 Not accepting sequence listings in electronic form Errors ...... Rule 13 ter.3 By RO or IB, recti®cation of ...... Rule 82 ter Noti®cation by DO to IB of number of IAs that Ex Of®cio correction of request by RO ... A.I. 327 did not enter the national stage timely ...... Expenses of delegations ...... Rule 84 ...... A.I. 112 Expressions and language, not to be used ... Rule 9 Opportunity to correct IA before DO .. Art. 26 See also Language prohibited Review by ...... Art. 25 Correction of ...... A.I. 501 U.S. regulation regarding ...... 37 CFR 1.414 Extension of time Designated states Before IPEA ...... Rule 58 bis Possible loss of effect in ...... Art. 24 to pay international ®ling fee, search fee, Withdrawal of/held withdrawn ...... and transmittal fee - under Rules 14, 15, ...... Art. 24, Rule 29, Rule 90 bis.2 and 16 ...... Rule 16 bis Designation of States Cancellation, ex of®cio, by IB ...... A.I. 423 F Cancellation of designations of noncontracting Fee(s) States by RO, ex of®cio ...... A.I. 318 Additional fees per invention where lack of unity U.S. regulation regarding ...... 37 CFR 1.432 is found by Diagrams, considered as drawings ...... Rule 7.1 IPEA/US ...... Disputes ...... Art. 59 ...... Art. 34(3) Rule 68 37 CFR 1.482(a)(2) Docket reference (applicant's IA ®le reference) ..... ISA/US ...... A.I. 109 ...... Art. 17(3) Rule 40 37 CFR 1.445(a)(3) Documents cited in ISR ...... A.I. 503 Application of money received by RO in certain Documents ®led with IA cases ...... A.I. 321 Associated with demand

T-135 Rev. 10.2019, June 2020 MANUAL OF PATENT EXAMINING PROCEDURE

Handling fee ...... File (IA) reference (IA docket no. of applicant) ...... Rule 57, Rule 96.1 37 CFR 1.482(b) ...... A.I. 109 Late payment fees ...... Rule 58 bis.2 On IA sheets ...... Rule 11.6(f) Time limit for payment ...... Filing date ...... Rule 57.3, Rule 58 bis.1 Of IA ...... Art. 11, 35 U.S.C. 363 Preliminary examination fee ...... Finances (budget) of union of PCT states .. Art. 57 ...... Rule 58 37 CFR 1.482(a) Flowsheets, considered as drawings ...... Rule 7.1 Late payment fees ...... Rule 58 bis.2 Form(s) Time limit for payment ...... Computer generated ...... A.I. 102(h) & (i) ...... Rule 58.1(b), Rule 58 bis.1 Request ...... Rule 3.1 Associated with request Demand ...... Rule 53.1(a) Extension of time to pay international ®ling fee, PCT ...... A.I. Annex A search fee, and transmittal fee - under Rules PCT, use of ...... A.I. 102 14, 15, and 16 ...... Rule 16 bis G International ®ling fees ...... Rule 15 International ®ling fee ...... Gazette, PCT ...... Rule 15, Rule 96.1 ...... Rule 86 , A.I. 407, A.I. Annexes D and E PCT search fee ...... Rule 16 Free communication of, to ISA, IPEA, national U.S. regulation regarding...... Of®ce ...... Rule 87 ...... 37 CFR 1.445(b) Transmittal fee ...... Rule 14 H U.S. rule ...... 37 CFR 1.445(a)(1) Handling fee for IPE (re demand) ...... Invitation by RO to pay before date due ...... Rule 57 Rule 96.1 37 CFR 1.482(b) ...... A.I. 304 Home Copy (HC) of IA, preparation of ...... Invitation by RO to request search fee refund...... Rule 21, A.I. 305 bis ...... A.I. 322 Invitation to pay fees ...... A.I. 320 I Invitation to request refund of fees before IPEA Identi®cation ...... A.I. 613 Of copies of the IA ...... A.I. 305 Lack of payment of ...... Rule 27 Of DO ...... A.I. 107 Late payment fee re international ®ling fee, search Of EO ...... A.I. 107 fee, and transmittal fee - under Rules 14, 15, and Of IA having two or more applicants ...... 16 ...... Rule 16 bis.2 ...... A.I. 105 National stage fee to DO ...... Art. 22 Of IA ®le (docket reference by applicant) ...... U.S. statute regarding ...... 35 U.S.C. 376 ...... A.I. 109 U.S. regulation regarding .... 37 CFR 1.492 Of international authorities ...... A.I. 107 National stage fee to EO ...... Art. 39 Incorporation by reference ...... U.S. statute regarding ...... 35 U.S.C. 376 ...... Rule 4.18, Rule 20.6, Rule 82 ter.1(b) U.S. regulation regarding .... 37 CFR 1.492 Indications (two letter codes identifying countries and Preliminary examination fee ...... Rule 58 other entities) ...... A.I. 115 Refund of IA ®ling and processing fees ...... Industrial applicability ...... Rule 15.4, Rule 16.2, Rule 40.2(c) . Art. 33(4) ,Art. 34(4) ,Article 35(2) ,Rule 66.2 ,PCT Rule 70.6 U.S. regulation regarding .... 37 CFR 1.446 Intellectual property protected under PCT ...... Schedule of fees ...... Rule 96 ...... Art. 2(i) Special fees for publication, payable to the IB . International application (IA) ...... A.I. 113 Application no...... A.I. 307 Surcharge for ®ling oath or declaration later than Indelibly marked on each sheet of IA ...... 30 months from PD under 37 CFR 1.495(c) ...... A.I. 308 ...... 37 CFR 1.492(h) Arrangement of contents/elements .... A.I. 207 Transmittal fee ...... Availability of, to DO ...... Art. 13 ...... Rule 14 37 CFR 1.445(a)(1) Certain defects in ...... Art. 14

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Checking by RO and correcting parts of before Patent information services provided by ...... RO ...... Rule 26 ...... Art. 50 Communicated (sent) to each DO by IB ...... U.S. regulation regarding ...... 37 CFR 1.415 ...... Art. 20, Rule 47 International ®ling fee ...... Rule 15 Considered withdrawn ...... International ®ling date ...... Rule 20 . Rule 12.2, Rule 15.4, Rule 16.2, Rule 26.5, Rule International29 preliminary examination (IPE) Copy of IA sent from IB to IPEA .... A.I. 420 Conduct of, in U.S...... 37 CFR 1.484 Copy, translation and national fee to EO ...... Con®dential nature of ...... Art. 38 ...... Art. 39 Copy, translation and fee for, furnished to EO .. Effect of IA designation of U.S ...... Art. 39 ...... 35 U.S.C. 363 Delay to enter national stage ...... Filing date and effects of ...... Art. 11, Rule 20 ...... Art. 39(1)(a), Art. 40 Filing in electronic form ...... Demand for ...... Art. 31 . Rule 89 bis , A.I. 701 - A.I. 713, A.I. Annex F Withdrawal of ...... Art. 37 In general ...... Art. 3 In general ...... Art. 33 Ipub number of ...... A.I. 404 Inventive step ...... Rule 65, Art. 33(3) Language of ...... Rule 12 IPEA ...... Art. 32 Numbering - three sets: one for request, another Top-up search performed by .... Rule 66.1 ter for description, and a third for drawings ...... IPER ...... Art. 35, Rule 70 ...... A.I. 207 Communication of IPER ...... Rule 73 Numbering system of IA...... A.I. 307 Guidelines for explanations in ...... A.I. 604 Copy of noti®cation of IA number and IA ®ling Method of identifying documents cited in ..... and PD(s) sent to IB ...... A.I. 324 ...... A.I. 611 Marking each sheet of IA with ...... A.I. 308 Translation of ...... Rule 72 Physical requirements of ...... Translation of annexes and transmittal ...... Rule 11, 37 CFR 1.433 ...... Rule 74 Publication of ...... Rule 48 Prior art for ...... Rule 64 Purported IA, noti®cation of receipt of, by RO Start of, and time limit for ...... Rule 69 ...... A.I. 301 Transmittal, translation, and communication Requirements, U.S. regulation regarding ...... of IPER to applicant and IB .. Art. 36, Rule 71 ...... 37 CFR 1.431 Use of same ®le for ISA and IPEA ... A.I. 605 Sheet numbering (separate sets for request, Written opinion by IPEA .... Art. 34 , Rule 66 description, and drawings) ...... A.I. 207 Amendment of claims, description, and For Ipub ...... A.I. 410 drawing under Article 34 in response to ...... Sheet(s) ...... Art. 34 Cancellation, substitution, addition, International Preliminary Examining Authority renumbering by RO ...... A.I. 311 (IPEA) Translation of IA sent by applicant to DO ...... Competent IPEA ...... Rule 59 ...... Art. 22 In general ...... Art. 32 Transmittal of IA to IB and ISA ...... Art. 12 Lack of unity determination ...... Rule 68 Transmittal of IA to IB as RO ...... Minimum requirements for ...... Rule 63 ...... Rule 19.4, A.I. 333 Nonexaminable subject matter ...... Rule 67 Transmittal of Priority Documents to IB ...... Noti®cation by IPEA of date of receipt of demand ...... A.I. 323 and of election to IB and applicant ...... Treated as continuation or continuation-in-part ...... Rule 61.1 ...... Rule 4.11(a)(ii), Rule 49 bis.1(d) Procedure before ...... Art. 34, Rule 66 Withdrawn IA, U.S. statute regarding ...... U.S. regulation regarding ...... 37 CFR 1.416 ...... 35 U.S.C. 366 U.S. statute regarding ...... 35 U.S.C. 362 International Bureau (IB) International preliminary report on patentability In general ...... Art. 55 By the IPEA ...... Rule 70 By the ISA ...... Rule 44 bis

T-137 Rev. 10.2019, June 2020 MANUAL OF PATENT EXAMINING PROCEDURE

International publication L By IB of IA ...... Art. 21, Rule 48, A.I. 406, A.I. 805 Lack of unity of invention Communication of publications to ISA, IPEA, In IPE ...... national of®ces ...... Rule 87 ...... Rule 68 37 CFR 1.475 37 CFR 1.488 Effect of, in United States ...... 35 U.S.C. 374 In IS ...... Number ...... A.I. 404 . Rule 40 37 CFR 1.475 37 CFR 1.476 37 CFR 1.477 Of IA, effects of ...... Art. 29 In national stage ...... Provisional Rights (in U.S.) ...... 37 CFR 1.475 37 CFR 1.499 ...... 35 U.S.C. 154(d) Unity of invention in IA, in general ...... Publication number (WO) ...... A.I. 404 ...... Rule 13, Rule 40, Rule 68 International search (IS) ...... Art. 15 Language Time limit for accomplishing ...... Rule 42 Of correspondence by applicant to IB and RO . International Searching Authority (ISA) .... Art. 16 ...... A.I. 104 Competent ...... Rule 35 Of demand for IPE ...... Rule 55 Minimum requirements ...... Rule 36 Of forms used by international authorities ...... Procedure before ...... Art. 17 ...... A.I. 103 U.S. statute regarding ...... 35 U.S.C. 362 Of IA ...... Art. 11(1)(ii), Rule 12 U.S. regulation regarding ...... 37 CFR 1.413 Of Ipub of IA ...... Rule 48.3 International search fee ...... Rule 16 Of IPER ...... Rule 72 International search report (ISR) Of ISA ...... Rule 43.4 Communicated (sent) from IB to DO ...... Of translation of IA ...... Rule 12.3, Rule 49.2 ...... Art. 20, Rule 47 Prohibited expressions ...... Rule 9 Copy of IA provided by IB for ISA ... A.I. 420 Correction of ...... A.I. 501 Indication of citations of relevance in ...... Later elections (elections submitted after the demand) ...... A.I. 505 Later submitted sheets, RO procedure ...... Indications of special categories of documents ...... A.I. 309, A.I. 310 cited in ...... A.I. 507 Loss of effect of IA in designated states .... Art. 24 Indication of claims to which documents are (Same consequences as withdrawal of IA) relevant ...... A.I. 508 In general ...... Art. 18 M Method of identifying documents cited in ...... Mail service ...... A.I. 503 Irregularities in ...... Rule 82 Subject matter not required to be searched ...... Microbiological inventions ...... Rule 39 See Biological material inventions Time limit for establishing ...... Rule 42 Nucleotide/amino acid sequence listings Transmittal of, from ISA to IB ...... Rule 44 Minimum documentation in ISA ...... Translation of ISR ...... Rule 45 ...... Art. 15(4), Rule 34 International-type search ...... Missing drawings, RO procedure ...... Art. 15(5)(a), Rule 4.12, Rule 41.1 ...... Art. 14(2), Rule 20.5, A.I. 310 Inventive step ...... Rule 65, Art. 33(3) Mistakes Inventions Recti®cation of obvious Protection available under PCT ...... Authorization of by IPEA ...... Art. 43, Art. 44 ...... Rule 91.1, A.I. 607 Indications of kinds of protection ... Rule 4.9 Authorization of by ISA ...... Inventor(s) ...... Rule 91.1, A.I. 511 Correction of ...... Rule 92 bis Authorization of by RO .. Rule 91.1, A.I. 325 Deceased or legally incapacitated ...... Processing by IB ...... 37 CFR 1.43 ...... Rule 91, A.I. 413, A.I. 413 bis Joint ...... 37 CFR 1.45 37 CFR 1.421(b)

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Transmitted by RO to ISA ...... A.I. 313(c) N Number and numbering of claims ...... Rule 6.1 National Of®ce Number of (accorded to) IA ...... Rule 20 Right to practice before ...... Number of copies of IA to be ®led ...... Rule 11.1 ...... Art. 49, Rule 83, Rule 90.1 Numbering of amendments ...... National stage ...... Rule 6.1, A.I. 205, A.I. 207, A.I. 311 Amendment of claims, description, and drawings Numbering of lines on a page of IA ...... Rule 11.8 before DOs ...... Art. 28, Rule 52 Numbering of sheets of IA ...... Rule 11.7 Before EOs ...... Art. 41, Rule 78 Numbering of sheets for Ipub ...... A.I. 410 Certain national requirements allowed under O Article 27(1),(2),(6),(7) ...... Art. 27, Rule 51 bis Oath or declaration in U.S. national stage application Copy of IA, translation and fee to DO ...... 37 CFR 1.497 ...... Art. 22 Obvious mistakes in documents ...... Rule 91 Copy of IA, translation and fee to DO ...... Recti®cation of ...... Rule 91.1, A.I. 511 ...... Art. 39 Obviousness/nonobviousness .. Art. 33(3), Rule 65 Express request for early entry into ...... See also Inventive step ...... Art. 23, Art. 40, 35 U.S.C. 371(f) Opportunity to correct IA before DO ...... Art. 26 Protection available P As well as patent protection ...... Art. 44 Other than patent protection ...... Art. 43 Patent Cooperation Treaty (PCT) Requirements ...... Art. 27 Administrative provisions ...... Arts. 53 - 58 Results of national examination in different Amendment of certain provisions ...... Art. 61 countries ...... Art. 42 Assembly of contracting states ...... Art. 53 United States Becoming a party to ...... Art. 62 Commencement in ...... 37 CFR 1.491 Committee for technical cooperation .. Art. 56 Entry into U.S., requirements ...... Denunciation ...... Art. 66 ...... 37 CFR 1.495 Depositary functions ...... Art. 68 Entry into U.S., time of ...... 37 CFR 1.491 Disputes ...... Art. 59 Examination in ...... 37 CFR 1.496 Entry into force of PCT ...... Art. 63 National U.S. patent issued on IA, effect ...... Executive committee of assembly ...... Art. 54 ...... 35 U.S.C. 375 Final provisions (becoming party to treaty, entry into National security prescriptions ...... force of treaty, reservations, gradual application, ...... Art. 27(8), 35 U.S.C. 368 denunciation, signature and languages, depositary Delay or prevention of transmittal of RC to IB . functions, noti®cations) ...... Art. 62 ...... A.I. 330 Finances ...... Art. 57 Nationality Gradual application of PCT in a state .. Art. 65 Quali®cations ...... Rule 18.2 International Bureau (IB) ...... Art. 55 In demand ...... Rule 54.1 Noti®cations to states/governments re PCT Recording of changes to by the IB ...... issues ...... Art. 69 ...... Rule 92 bis.1 Reservations by any state re Application of PCT Nationality or residence of applicant, correction of provisions ...... Art. 64 ...... A.I. 329, A.I. 614 Revision of PCT ...... Art. 60 New (additional) matter Patent information services furnished by IB ...... In request, deletion of ex of®cio ...... A.I. 303 ...... Art. 50 Nomenclature - See also Terminology and signs .... Physical requirements of IA ...... Rule 11 ...... Rule 10 Power of attorney Noti®cation by IPEA of date of receipt of demand to De®nition ...... Rule 3.3(a)(ii) IB and applicant ...... Rule 61 General ...... Rule 90.5 Nucleotide and/or amino acid sequence listings ..... Practice before international authorities ...... Rule 13 ter , A.I. Annex C Right to do so ...... Art. 49, Rule 83, Rule 90

T-139 Rev. 10.2019, June 2020 MANUAL OF PATENT EXAMINING PROCEDURE

Preliminary examination fee ...... Rule 58 Publication - See International publication Prior art Q Citation of (proper method) ...... A.I. 503 For IPE ...... Rule 64 Quorum, absence of Indications ...... A.I. 505 Voting by correspondence ...... Rule 85 Of special categories of documents ... A.I. 507 Relevant to IS ...... Rule 33.1 R Priority application number ...... A.I. 408 Receipt of IA by RO ...... Rule 20 Later indication of re: undesignated State ...... Noti®cation of by RO to IB ...... Rule 20 ...... Rule 4.9(b), A.I. 319 Noti®cation of by RO to applicant .... A.I. 301 Priority claim in IA ...... Rule 4.10 Receiving Of®ce (RO) Correction or addition processed by RO ...... Competent ...... Rule 19 ...... Rule 26 bis.2, A.I. 314 In general ...... Art. 10 Correction or addition processed by IB ...... U.S. RO ...... 37 CFR 1.412 ...... Rule 26 bis.2, A.I. 402 Record copy (RC) (originally ®led IA) Invitation to correct defects in ...... De®nition ...... Art. 12 Not considered to have been made ...... Transmittal to IB by RO ...... Rule 66.7, A.I. 302, A.I. 323(b) ...... Rule 22 37 CFR 1.461 Notice to that effect by IB, if not by RO ...... Marking sheets of, by IB ...... A.I. 401 ...... A.I. 409 Receipt by IB ...... Rule 24 Restoration of right Recti®cation of obvious mistakes ...... Rule 91 By DO ...... Rule 49 ter.2 Authorized by IPEA ...... A.I. 607 By RO ...... Rule 26 bis.3, Rule 49 ter.1 Authorized or not by the ISA ...... A.I. 511 U.S. regulation regarding ...... 37 CFR 1.451 Handling of, by RO ...... A.I. 325 Withdrawal of, by applicant ...... Rule 90 bis.3 Refund Priority, right of (in U.S.) ...... 35 U.S.C. 365 If international search takes into account an Bene®t of ®ling date of a prior application ...... earlier search ...... Rule 16.3 ...... , 37 CFR 1.55 37 CFR 1.78 Invitation by RO to request search fee refund ... Priority document ...... Rule 17 ...... A.I. 322 Bene®t of ®ling date of a prior application ...... Invitation to request refund of fees before IPEA ...... 37 CFR 1.55 37 CFR 1.78 ...... A.I. 613 Fee for certi®ed copy of, from USPTO ...... Of handling fee ...... Rule 57.4 ...... 37 CFR 1.19(b)(1) Of international ®ling fee ...... Rule 15.4 In proceedings before IPEA ...... Rule 66.7 Of IPE fee ...... Rule 58.3 Invitation by IB to furnish ...... A.I. 421 Of IS fee ...... Rule 16 Receipt of by IB ...... A.I. 411 Regional patent treaties ...... Art. 45 Translation and time limit to furnish to EO ...... Regulations of the PCT ...... Art. 58 ...... Rule 76.4 Representation/representative Translation and time limit to furnish to IPEA ... See also Common representative ...... Rule 66.7 Appointment of ...... Rule 90.4 Transmittal by RO to IB ...... A.I. 323 Notice by IB to RO, ISA and IPEA ...... U.S. regulation regarding ...... 37 CFR 1.451 ...... A.I. 425 Protection available under PCT ...... Notice by IPEA to IB ...... A.I. 608 ...... Art. 43 , Art. 44 , Art. 45 Notice by ISA to IB ...... A.I. 512 Indications of kinds of protection in request ..... Notice by RO to IB ...... A.I. 328 ...... Rule 4.11(a)(iii) Common (de®nition) ...... Rule 2.2 bis Protest against payment of additional fees re holding General power of attorney ...... Rule 90.5 of lack of unity ...... Limited recognition in patent cases ...... Rule 68, Rule 40, A.I. 403, A.I. 502 ...... 37 CFR 11.9 Before U.S. IPEA ...... 37 CFR 1.489 Revocation and renunciation of representative . Before U.S. ISA ...... 37 CFR 1.477 ...... Rule 90.6

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U.S. regulation regarding ...... 37 CFR 1.455 Preparation of by RO ...... Rule 21 Request (part of IA) Transmittal of to IB ...... Rule 23 Contents ...... Art. 4, Rule 4 Receipt of by ISA ...... Rule 25.1 Declaration relating to national requirements ... Noti®cation of lack of transmittal of SC by IB ...... Rule 4.17, Rule 51 bis.1(a) ...... A.I. 412 Deletion of additional material ...... A.I. 303 Search other than IS ...... Rule 41 Form ...... Rule 3 Search, Top-up ...... Rule 66.1 ter In general ...... Art. 4 Security measures of national Of®ce delaying or Recording of changes in, by IB .... Rule 92 bis preventing transmittal of RC to IB ...... A.I. 330 Noti®cation of changes recorded by IB ...... U.S. statute regarding ...... 35 U.S.C. 368 ...... A.I. 422 Sequence listings in electronic form ...... Recti®cation of, including limitations on ability ...... Rule 13 ter ,A.I. 513, A.I. 610, A.I. Annex C to rectify ...... Rule 91.1 Considered by ISA ...... A.I. 513 U.S. regulation regarding ...... 37 CFR 1.434 Transmittal of ...... Rule 23, A.I. 610 Residence: Sheets Corrections to Deletion, addition, substitution, and renumbering Invitation by RO ...... A.I. 329 of by RO ...... A.I. 311 In demand ...... Rule 54.1 Later submitted -RO handling of ...... A.I. 309 Quali®cations ...... Rule 18 Size of IA ...... Rule 11.5 Recording of changes to by the IB ...... Signature ...... Rule 92 bis.1 By parties to the PCT ...... Art. 62 Restriction: Noti®cation by director general re .... Art. 69 See Lack of unity of invention Defective, in IA ...... Art.14(1) See Unity of invention IA lacking prescribed signature - RO Results of national examination in EO ...... Art. 42 procedure ...... A.I. 316 Revival of U.S. national stage application ...... De®nition (includes ªsealº) ...... Rule 2.3 ...... 37 CFR 1.137 Lacking, in demand ...... Rule 60.1(d) Review of RO determinations by other international National requirements ...... Art. 27 authorities re Of PCT in English and French ...... Art. 67 Declaration that an IA is to be withdrawn ...... Requirements re correspondence ...... Rule 92 ...... Art. 25 Requirements re demand ...... Rule 53.8 Review by USPTO ...... 35 U.S.C. 367 Requirements re request ...... Rule 4.15 Designation of a state considered withdrawn ... Requirements re withdrawals .... Rule 90 bis.5 ...... Art. 25 Signs (terminology) ...... Rule 10 Review by USPTO ...... 35 U.S.C. 367 Size of IA sheets ...... Rule 11.5 Failure to accord an international ®ling date .... Subject matter that is proper in IA ...... Rule 67 ...... Art. 25 Successor states ...... Rule 32 Review by USPTO ...... 35 U.S.C. 367 Surcharge - See also Fees: Late payment fee Review by DOs of T Declaration that an IA is withdrawn .... Art. 25 IB decided the IA is withdrawn under Article Technical Services 12(3) ...... Art. 25 Patent information services furnished by IB ..... Refusal to accord ®ling date to IA ...... Art. 25 ...... Art. 50 Revision of PCT ...... Art. 60 Relation to other PCT provisions ...... Art. 52 See also Amendment of PCT provisions Technical assistance committee ...... Art. 51 Right to practice before international authorities .... Terminology and signs ...... Rule 10 ...... Rule 83, Art. 49 Time limit Computation of ...... Rule 80 S Delay in meeting certain ...... Art. 48 Search - See also international search report Delays due to mail service ...... Rule 82 Search Copy (SC) of IA

T-141 Rev. 10.2019, June 2020 MANUAL OF PATENT EXAMINING PROCEDURE

Excuse by the designated or elected state of Of application processing based on PD ...... delays in meeting certain time limits ...... Rule 4.10 37 CFR 1.465 ...... Rule 82 bis To furnish drawings which are not necessary for Extended beyond or shortened with respect to the understanding of the invention ...... Article 39 deadline for copy, translation, and fee ...... Art. 7.2, Rule 7.2 ®led with EO ...... Rule 77 To furnish IA copy, translation, and fee to DO Extensions of, for payment of fees beyond time limit allowed by Article 22 ...... For amendments before DO ...... Rule 52 ...... Rule 50 For amendments before EO ...... Rule 78 To pay fees before ISA in response to a holding For amendment of claims before the IB ...... of lack of unity of invention ...... Rule 40.1 ...... Art. 19, Rule 46.1 To request review by DO of failure to accord For amendment of claims, description, and international ®ling date ...... Art. 25 drawings before DO ...... Rule 52.1 Utility models ...... Rule 6.5 For applicant to request IB to send ®les to any Title of invention in IA DO pursuant to Article 25(1)(c) so DO can Content ...... Rule 4.3 review adverse holding by RO or IB ...... Missing or defective ...... Rule 37 ...... Rule 51.1 Top-up search ...... Rule 66.1 ter For check by RO of certain defects in the IA .... Translation ...... Rule 26.2 Availability of translations ...... Rule 95 For communication by the IB of IPER translation By applicant, IS based on ...... Art. 15 and annexes to each EO) ...... Rule 73.2 Defective/incorrect of IA ...... Art. 46 For considering IA withdrawn re Article 12(3) For purpose of international search ...... Rule 22.3 ...... Rule 12.3 For considering IA withdrawn re Article 14(4) Of certain words not in Latin alphabet, in request ...... Rule 30 ...... Rule 4.16 For correcting priority claim ...... Rule 26 bis Of IA, availability to IB ...... Rule 95 For correction by applicant of certain defects Of IA, transmittal by IB to DOs ...... Art. 22 found by and invited by RO to correct ...... Of IA, transmittal by IB to EOs ...... Art. 39 ...... Rule 26.2 Of IA, requirement for veri®ed or certi®ed ...... For establishing the ISR ...... Rule 42 ...... Rule 51 bis.1(d) For establishing the IPER ...... Rule 69.2 Of IPER ...... Art. 36, Rule 72 For paying national fee and furnishing translation Of IPER annexes, and transmittal of, to EOs by before DO pursuant to Article 25(2)(a) so DO applicant ...... Rule 74 can review adverse holding by RO or IB ...... Of Ipub, affecting protection of rights in any ...... Rule 51.3 designated state ...... Art. 29 For presenting request by applicant for IB to send Of ISR ...... Art. 18, Rule 45 copies of IA to DO after receiving determination Of priority document before EO ...... Rule 76 that IA is withdrawn ...... Rule 51 Of priority document before IPEA .. Rule 66.7 For start of, and establishment of, IPE ...... Transmitted to ISA ...... Rule 23 ...... Rule 69 Transmittal For submitting priority document ...... Rule 17 Fee ...... Rule 14 For translation of priority document before EO In electronic form ...... Rule 76.4 . Rule 89 bis , Rule 89 ter , A.I. 701 - 703, A.I. Annex F For transmittal by applicant of translation of any Sequence Listings and/or tables relating thereto replacement sheet referred to in Rule 70.16 that ...... Rule 13 ter , A.I. Annex C is attached to the IPER ...... Rule 74.1 Of RC to IB by RO ...... In general ...... Art. 47 ...... Rule 22 37 CFR 1.461 Meaning of term ªTime Limitº in Article 48(2) Of SC to ISA by RO ...... Rule 23 ...... Rule 82 bis Delayed ...... A.I. 306 Modi®cation of time limit ®xed in PCT ...... Treaty - See also Patent Cooperation Treaty ...... Rule 81

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U Unity of invention Compliance with Rule 13 ...... A.I. 206 During U.S. national stage .... 37 CFR 1.499 Guidelines ...... A.I. Annex B In general ...... Rule 13 37 CFR 1.475 Lack of unity before IPEA ...... Art. 34(3) Rule 68 37 CFR 1.488 37 CFR 1.489 Lack of unity before ISA ...... Art. 17(3) Rule 40 37 CFR 1.476 37 CFR 1.477 Transmittal of protest to pay fees for additional claimed inventions Transmittal by IB ...... A.I. 403 Transmittal by IPEA ...... A.I. 603 Transmittal by ISA ...... A.I. 502 W WO - See also International publication number Withdrawals (by applicant), in general ...... Rule 90 bis , A.I. 326 Of demand or election .. Art. 37, Rule 90 bis.4 Withdrawn Application, U.S. statute regarding ...... 35 U.S.C. 366 Determination by RO re IA ...... Rule 29 Decision by RO not to hold withdrawn after notifying applicant of intent to so hold ...... A.I. 312 Noti®cation to IPEA by IB ...... A.I. 414 Review of by DO ...... Art. 25, Rule 51 Determination by IB under Article 12(3) Review by DO ...... Art. 25, Rule 51 Written opinion by IPEA ...... Art. 34, Rule 66 Amendment of claims, description, and drawing under Article 34 in response to Written opinion by ISA ...... Art. 34, Rule 43 bis

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