PCT - general practice, newsletters, PCT.App updates

We have just completed our major update of PCT.App for the legal changes in July & August. Most of the changes relate to sequence listings, which is now much more integrated into PCT. We have also changed some core structures to improve the layout and to distribute legal provisions in a more logical way.

In the self-editable online version of our PCT commentary, all changes of the update are rolled-out automatically, while personal user annotations from before the update are retained and can be exported into a customized printable PDF offline version. As usual, we further published this September 2022 edition as standalone softcover books in English or German with same content.

1. Structural updates
   • We avoid repetition as much as possible to limit the default printable length. So, the relevance of Articles and Rules in all Parts was checked, and where necessary provisions were moved, deleted or partially hidden. Where necessary, links to other relevant Parts were added.
   • Parts 2.10.1 & 2.10.2 were amended to clarify the difference between the Paris Convention references.
     • The Art. 4 PC comment box in each Part was changed to “Overview of Requirements from Paris Convention”, and for each provision of A. 4 PC, an indication is given of the Part where that provision is found.
     • The A. 4 PC comment box in each Part was moved to just before the included A. 4 provisions sections.
     • The empty A. 4 PC provision headers with links were removed in each Part.
   • Old Part 3.8 was deleted because it was fully covered by Parts 2.13 & 3.1.
     • Any user-made annotations were automatically moved to Part 2.13 where R. 26ter is cited. Any user-made hyperlinks to Part 3.8 were automatically updated to Part 2.13. Old Part 3.9 was renumbered to new Part 3.8.
   • Old Part 7.10.1 and old Part 7.10.2 were combined into new Part 7.10 because the contents were almost identical.
     • Any user-made hyperlinks to Parts 7.10.1 or 7.10.2 were automatically updated to new Part 7.10.
   • The old Sections 14 to 18 had a different structure to the rest, where the Parts were mainly determined by the article order in the last chapters of PCT. These Sections were updated to the subject-oriented structure, and the titles of the Parts were renamed to subjects instead of PCT articles.
     • Old Sections 14 & 15 were combined to form new Section 14 “Technical Services and Administrative Provisions”.
     • Old Sections 16, 17 & 18 were combined to form new Section 15 “Disputes, Amendment, Becoming Party to the Treaty and Reservations”.
     • Any user-made hyperlinks to the old Sections and old Parts were automatically updated.
   • New Part 14.4 “International Authorities and International Bureau” (old Part 15.5) was expanded to cover administration and operation of ISA’s, IPEA’s and the IB.
     
2. Legal status of key facts
   • In many places, key facts from the PCT Applicant’s Guide are included to provide a more complete picture with a date (1 Sep 22) indicating the last status check. For example, A. 64(2)(a)(i) has a side note that on 1 Sep 22, there were no A. 64(2)(a)(i) declarations.
   • However, before relying on these key facts in practice, the latest status should always be double-checked on the WIPO website.
     
3. “Big-bang” change to ST.26 standard for sequence listings
   • For any PCT application filed on or after 1 Jul 22, sequence listings must be provided in XML according to the ST. 26 standard. The latest Applicants Guide (August 2022) includes fully updated paragraphs AG-INT 5.011 to 5.013, AG-INT 5.099 to 5.103, and AG-NAT: 6.033 reflecting these changes
     • Part 2.2.1 was limited to a general overview of the requirements for an application. Part 2.16.2 focusses now more on actions before the RO relating to sequence listings.
     • Part 8.11 and 12.12 are the main Parts covering sequence listings respectively in the international and national phases. Both were completely updated. Because the changes are so important and because the details of the procedure are still hidden within the PCT documentation, we have added extensive comments covering “Key issues”, “Possible practical problems with ST.26” and “Definitions and Requirements”. Also “Outline of procedure” was added to Part 8.11, and “Procedure before DO/EO’s” was added to Part 12.12.
       • We will evaluate the need for all these comments in the future as more official documentation appears. For users not interested in sequence listings, comment boxes can be hidden.
   • Language-dependent free text no longer needs to be repeated in the main part of the description because it can easily be added and viewed in the XML file. However, this means that the content of sequence listings must now comply with the language requirements.
     • RO will now forward application to IB if language of free text in sequence listing is not accepted by RO – R. 19.4(a)(ii), or if electronic format of filing not accepted by RO – R. 19.4(a)(ii-bis), so comments were added to Part 2.3.
     • ST.26 compliant sequence listings do not affect the page fee, so comments were added to Part 2.2.1.
   • Language-dependent free text may be filed in more than 1 language, so this may be used to comply with language & translation requirements
     • Comments were added to Parts 3.2.1 & 3.3 about sequence listings.
   • Similar to drawings, sequence listings are considered part of the description disclosing the invention – R. 5.1(a)(iii) – but presented as a separate part of the application.
     • Comments were added to Part 3.4.1 about sequence listings.
   • R. 13ter.1(f) was officially deleted, so there is no correction needed of free text in the main part of the description.
     • Any correction of a sequence listing must now be filed using a new ST.26 listing – AI Annex C
       
4. R. 82quater safeguards strengthened
   • Under R. 82quater.3, additional safeguards may be available for PCT time limits set in Rules which expire on or after 1 Jul 22, if a general disruption affects operation of the Office or Authority.
     • New R. 82quater.3 was annotated and added to Part 8.8. A link to the new paragraph (AG-INT 11.065D) of the latest Applicants Guide (August 2022) was added.
     • Comments in Part 8.8 and Part 8.15 were expanded to include R. 82quater.3
   • General disruptions are defined under R. 82quater.1, which now includes “epidemic”. Offices may now also waive the requirement for evidence under R. 82quater.1
     
5. Less relevant provisions removed, more relevant provisions added
   • Part 1.1 – A. 1(3) PC hidden, already covered in Part 1.2. Also A. 1(4) PC hidden, moved to Part 1.2. Also A. 62(1) added, moved from Part 1.5.
   • Part 1.2 – A. 1(4) PC unhidden, moved from Part 1.1
   • Part 1.5 – A. 62(1) removed, moved to Part 1.1.
   • Part 2.2.1 – R. 12.1ter, R. 13bis.3 & AI Section 209 removed, already covered in Parts 8.10 & 12.11. Also R. 13bis.1 & R. 13bis.2 added because they are general rules.
   • Part 2.3 – R. 93.1 added.
   • Part 2.7 – R. 18.4 removed, already covered in Part 2.6.
   • Part 2.16.2 – AI Section 208 removed, already covered in Parts 8.11 & 12.12.
   • Part 2.17 – R. 45bis.9 removed, already shown in full in Part 5.1.
   • Part 3.2.2 – R. 20.1 removed, already covered in Part 3.2.1.
   • Part 3.3 – R. 43.4 removed, already shown in full in Part 4.9.
   • New Part 3.8 (old Part 3.9) – R. 20.2(a) & (b) hidden, R. 20.2 is already covered in Part 3.2.1.
   • Part 4.2 – R. 87 & R. 87.1 removed, moved to new Part 14.4 (old Part 15.5). Also R. 93.3 added. Also A. 16(3)(a), (c), (d), (e) hidden, already covered in Part 15.3.
   • Part 4.3 – R. 25 & R. 25.1 removed, R. 25 is already shown in full in Parts 3.9 & 4.1. Also R. 43.4 removed, already shown in full in Part 4.9.
   • Part 4.8 – A. 14(1)(a), (b) removed, already covered in Parts 2.5 and 2.19.
   • Part 6.1 – R.22 removed, R. 22.1 (a), (b), (d), (e), (f), (h) hidden, R. 22.2 removed, R. 22 is already shown in full in Part 3.9. Also R. 93.2 added.
   • Part 6.6.1 – AI Section 435 removed, moved to new Part 14.4 (old Part 15.5).
   • Part 6.6.2 – AI Section 435 removed, moved to new Part 14.4 (old Part 15.5).
   • Part 6.8 – R. 93bis.1 removed, moved to new Part 14.4 (old Part 15.5). Also R. 87.1 added because IB sends all publications on request to offices.
   • Part 7.2 – R. 87 & R. 87.1 removed, moved to new Part 14.4 (old Part 15.5).
   • Part 8.9.1 – R. 93 & R. 93.4 removed, R. 93 is already shown in full in Part 8.9.1.
   • Part 8.11 – AI Section 335 added. Also R. 26.4 removed because R. 13ter.1(f) was officially deleted. Also R. 12.1 (b), (c) hidden.
   • Part 8.14 – R. 37.1 & R. 38.1 removed, R. 37 & R. 38 already shown in full in Part 4.8. Also R. 48.6 removed, already covered in Part 6.4.2.
   • Part 8.15 – R. 19.4, R. 20.7 & R. 26.2 removed, already covered in other Parts.
   • Part 9.1 – R. 93bis.1 removed, moved to new Part 14.4 (old Part 15.5). Also R. 87.1 added because IB sends all publications on request to offices.
   • Part 10.1.1 – R. 76, R. 76.1, R. 76.2 & R. 76.3 removed, moved to Part 11.4.
   • Part 11.4 – R. 82ter.1 removed, already covered in Part 12.6 and part 12.9. Also R. 76, R. 76.1, R. 76.2 & R. 76.3 added, moved from Part 10.1.1.
   • Part 12.7 – AI Section 113(b) removed, moved to Part 8.3. Also R. 91.3(a), (b), (c), (d) hidden, R. 91.3 is already fully shown in Part 8.3.
   • Part 12.10 – R. 82quater.1(c) & R. 82quater.3(c) added because they relate to national entry.
   • New Part 14.4 (old Part 15.5) – A. 65 added, moved from old Part 18.4. Also R. 87 & R. 87.1 added, moved from Part 4.2 and Part 7.2. Also R. 93bis.1 added, moved from Part 6.8 and Part 9.1. Also AI Section 435 added, moved from Part 6.6.1 and Part 6.6.2. Also R. 93 added in full.
   • New Part 15.2 (old Part 17.1) – A. 58(4) hidden, A. 58 is already fully shown in Parts 14.7 & 1.3.
     
6. Other important changes
   • Part 2.2.1 – reference links added to relevant Parts 2.16.1, 2.16.2, 8.10, 8.11, 12.11 & 12.12.
   • Part 3.1 – reference links added to R. 26ter.2(a) (Processing of R. 4.17 declarations) in list of main checks performed by RO.
   • Part 8.8 – reference links added to relevant Parts 3.7 & 12.5 covering restoration of priority. Also reference links added to relevant Part 8.6 covering time limit calculation and Part 8.14 covering loss of rights.
   • Part 8.15 – reference links added to relevant Parts 3.7 & 12.5 covering restoration of priority.