PCT - general practice, newsletters, PCT.App updates

As part of our updating process, we regular monitor the WIPO and EPO websites. See below for the most important PCT-related changes that we are currently aware of. The changes of 1 Jul 22 will be included in the Sept. 2022 edition of PCT.App.

The main themes in 2022 are the “big bang” change to the ST.26 standard for sequence listings, the adoption of more electronic communication, and improved safeguards for online systems.

Future Changes

• 1 Jul 22: New standard (ST.26) for Sequence Listings
  • Rules 5, 12, 13ter, 19 and 49 to be amended. 
  • WIPO Standard ST.26 “Recommended Standard for Presentation of […] Sequence Listings using XML” to be implemented
  • Applies to any application with a PCT filing date on or after 1 Jul 22
  • See PCT/A/53, PCT/WG/13/8 and PCT/WG/13/14 (para 4 & 5).
  • See also WIPO Sequence page with more details & software for preparation and validation. There is also FAQ: Implementation of ST.26.
• 1 Jul 22: R. 82quater to be amended
  • Safeguards for applicants and third parties in case of general disruption that affect meeting time limits under PCT Regulations to be strengthened.
  • Applies to any time limit that expires on or after 1 Jul 22
  • See PCT/WG/14/11 and paragraphs 8 to 14 of PCT/WG/14/18
• 1 Jul 22: AI (Administrative Instructions) and Forms updated & available
  • Amended to enable the new WIPO Standard ST.26 to be used for PCT applications on or after 1 Jul 22, and to continue to allow ST.25 files to be used in the processing of earlier filed applications.
    • See right-hand side of legal texts page for updated AI parts 1-8 & Annexes, for Annex F Main & App II-IV and for Annex F App I
    • See PCT Forms in force from 1 Jul 2022 for updated applicant and office forms
• 30 Jun 22: IB will cease support for PCT-SAFE
  • IB will end development, distribution and support of the PCT-SAFE software; the final scheduled release will be in April 2022, and no further updates to the software will be provided after that date.
  • It is expected that RO’s that still accept PCT-SAFE (DE, IL, KR, UK, US) will also notify that they will no longer accept such filings. Filing from 1 Jul 22 with PCT-SAFE is done at the applicants own risk.
  • Any existing PCT-SAFE users should change to e-PCT as soon as possible. Currently, 77 RO’s accept filing with e-PCT.
• 30 Apr 22: IQ (Iraq) becomes bound by PCT

Recent Changes

• In 2021, the number of PCT applications reached an estimated 277,500 filed. This is a growth of about 1%, despite the COVID-19 disruptions. See WIPO press article.

Updated Documents

• 6 Jan 22: AG-IP (Introduction to International Phase) updated
  • Amended to reflect that e-mail is now considered the default option for applicants to receive notifications from Offices that provide such a service.
  • 5.028, 5.029 & 5.50, 8.017 & 8.021, 10.018A & 10.021A, R. 4.4(c): general details added about use of emails by Offices and IB, including SISA and IPEA. Details also added about use of emails in communicating with applicants, agents or common representatives. Check Annex B for each Office to see how they use email, and whether this replaces paper notifications.
  • 6.038, R. 91: reference added to rectifying defective priority claims as an obvious mistake under R. 91 within 28m.
  • 11.065B, R. 82quater.2: link added to page with unavailability notifications by Offices of electronic means of communication.
• 1 Jan 22: AI (Administrative Instructions) and Forms updated
  • Amended to encourage wider use of electronic communication between Offices and applicants; to clarify a future decommissioning of PCT-SAFE; and to provide a legal basis for XML conversion of applications and subsequent processing.
  • 705bis: clarified that paper filings are to be scanned into electronic form as a complete and accurate copy (“scanned copy”) and processed on the basis of the scanned copy. Further markings or tags about processing the application do not become part of the record copy, but the info is associated with the record copy.
  • 705ter: (new section). IA’s filed in electronic form and scanned copies may be converted into XML (“converted copy“), and processed on the basis of converted copy. The initial or scanned electronic format is to be kept for at least 5 years by IB. If the converted copy is not a complete and accurate copy of original, it may be corrected up to 5 years from filing.
  • 709: amended. Previously, electronic communication with RO was optional. It has now been amended to the preferred option where RO offers electronic communication, replacing postal mail. However, applicant may request that postal mail be used. Option added of electronic mailbox. Where RO provides such a service, document considered transmitted on day that that it was made available for retrieval, and applicant was informed. RO may also use IB to transmit to applicant by electronic means.
  • Applicant forms updated to indicate that notifications are to be sent exclusively by e-mail, unless otherwise indicated. RO/101, IPEA/401, IB/375: Indicating an e-mail address above authorizes RO, ISA, SISA, IPEA and IB, if they provide such a service, to send notifications exclusively by e-mail to that address, unless the separate box is marked: [ ] notifications are requested to be sent exclusively by postal mail.

Specific Offices

• DE: from 1 May 22, national entry time limit increased from 30m to 31m. For applications where old 30m time limit has not yet expired on 30 Apr 22, and applicant has not effectively requested entry before 1 May 22 under A. 23(2) and A. 4(2). See AG: Nat Chap-DE.
• EP: from 1 Mar 22, PCT-EPO Guidelines for Search and Examination have been updated. The updates include the expansion of Part A with a new chapter on languages, and a section on entitlement to claim priority.
• EP: allows delays to be excused under R. 82quater.2(a) due to unavailability of electronic communications. EPO list outages on the EPO website and on the WIPO website.
• EP: from 1 Apr 22, EPO as RO no longer attaches copy of RO/101 form to RO/105 Notification of Application Number & Filing Date, unless RO has performed an ex officio correction. This allows applicants to immediately detect that a change was made, and reduces paper.
• US: effective 11 Mar 22, USPTO will no longer accept Global PPH requests based on work performed by Rospatent (RU office). See USPTO notice.

Miscellaneous

• WIPO: PCT distance learning course has been updated
• WIPO: new recordings of webinars are now available
• SLW Institute: 15 training webinars on PCT procedure, docketing, filing and strategic use. From 8 Feb to 18 Mar 22. Presented by Carl Oppedahl.

Sources: most of these topics are found in PCT Newsletter Mar 2022 (#03). Every month, WIPO publishes a PCT Newsletter with important updates and practical advice. It is possible to subscribe to one or more Newsletters.