PCT - general practice, newsletters, PCT.App updates

We have completed our major update of PCT.App for recent legal changes. Most of the changes relate to handling of languages by the RO, and the new additional reasons for forwarding to the IB under Rule 19.4 and Rule 26.3ter. The most relevant PCT updates are found at PCT Highlights.

In the self-editable online version, all changes are rolled-out automatically, retaining your personal user annotations from before the update, and allowing export to your own customized printable PDF. The same contents are also published as standalone softcover books in English or German.

1. PCT.app organization
130 Subjects & Parts are organized into 15 Sections, in the order of the PCT Articles and the chronological order of the PCT Applicants Guide. Parts include an Overview, Links to other relevant Parts, General comments, and the most relevant paragraphs from Articles, Rules & Administrative Instructions. We avoid repetition in the law as much as possible to limit the printable length. Each legal paragraph is recited completely at least once. To help navigate, a Content Overview and Detailed Contents are provided. Specific Articles and Rules can be found by scanning the Detailed Contents or the Index of Legal Provisions.

2. Structural updates

• PCT forms are valuable for understanding how PCT works in practice. So, many of the form details were moved to separate comment boxes to make them easier to find in the Detailed Contents and the relevant Part’s Overview. For example, RO/133 is found in Part 2.21, RO/103 & RO/104 are in Part 3.2.1 and RO/104, RO/115 & RO/143 are found in Part 3.2.2.

• In the English version, “may” was changed to “can” or “should” to make texts clearer for non-native speakers. There is no change in meaning – “can” means that an option is possible if the other relevant requirements are satisfied. Where there is no discretion for an action, “must” is used.
• During the last 2 years, the D EQE-Committee has started requiring more complete legal basis for full marks, In some cases, “umbrella” Articles are required even if they contain no relevant details. We have therefore added more legal citations so that they can be copied quickly when answering D1 questions.

3. Major updates

• In Part 1.4 “Legal Effects of Filing Date and Publication”, the comments were clarified to explain that the national effect of Article 11(3) is suspended before each DO/EO until national entry is completed – A. 23(1) / A. 40(1).

• Part 2.2.1 “General – Filing – Main contents of International Application”: added references to R. 26.3ter, A. 14(1)(a)(v), & R. 26.3 in A. 3(4)(i).

• Part 2.3 “The Competent Receiving Office (rO)” was expanded to fully cover forwarding to the IB under Rule 19.4. The new safeguard for “mixed language” applications under R. 26.3ter is very welcome, but the freedom available to the RO’s to determine policies means that forwarding to the IB will probably occur more often. If one of the languages used in the description & claims, or in a sequence listing, is not accepted by the RO – R. 12.1(a), the RO transmits the application to IB – R. 19.4. If the description & claims are in more than one accepted filing language, the RO can invite the applicant to provide a translation of the description & claims into a single filing language within 1m from the receipt of application – R. 26.3ter(e). As explained in the new comment box, the main issue with forwarding will be dealing with the fees. It may thus be better to file at the IB directly because they handle “any language”.

• In Part 2.3, R. 12.1 and AI Sec. 333 was added to the relevant law. In Part 2.3, the comments on National Security and A. 27(8) & Sec. 330 were moved to Part 3.8 “Transmittal of Application to IB and ISA”.

• The comments in Part 2.10.1 “Claiming Priority – Procedural Requirements” was updated to clarify that there is no thorough and reliable check of priority claims made during the international phase under PCT, and that ePCT ONLY checks the expiry of 12m period.
• In Part 2.20.3: the title was changed from “Physical Requirements” to “Physical and Electronic Requirements”, and more details were included about the electronic requirements for filing applications and documents. In the relevant law, R. 89bis was moved from Part 8.7 to Part 2.20.3, and AI Section 703 was added. Added comments on “satisfactory reproduction” and “reasonably uniform publication” in the sidenotes of R. 11.

• The comments in Part 3.3 “Translations of International Application for Search and Publication” were completely rewritten. Comments on “Language of Description & Claims” and a comment box “Translation of Description & Claims” were added explaining the rO procedure from 1 Jul 24 for dealing with mixed-language applications. R. 26.3ter was added to the relevant law. Comment boxes “translation of Request” and “Translation of Abstract and Drawings” were added.

• In Part 3.5.1 “Defects in International Application – General – Defects“, the “Outline of Procedure and main defects” was rewritten. In Part 3.5.2 “Defects in International Application – Invitation to Correct Defects”, the “Outline of Procedure and main defects” was rewritten.

• In Part 8.14 “Loss of Rights in International Phase”, an overview was added of translations which could lead to the application being considered withdrawn. Added R. 29.1 as amended on 1 July 24 to the relevant law.

4, Other updates

• Part 1.1 “The PCT Union”: there are currently 180 Paris Convention (PC) States – Fiji (FI) became bound on 19 Jan 24.

• In Part 7.1 “General – International Preliminary Examination”, the “Legal Effect of a Demand” was clarified and the legal basis was corrected from A. 34(4)(a) to A. 31(4)(a).

• Part 2.15 “Signature of Applicant, Common Representative or Agent”: AI Sec. 316 was deleted from the relevant law because it is also in Part 3.5.2 “Invitation to Correct Defects”.

• In Part 3.7 “Restoration of Priority before Receiving Office (rO)”, R. 89bis.1 was moved from the relevant law to Part 2.20.3, and R. 89bis.3 was moved to Part 14.4.

• In Part 3.8 “Transmittal of Application to IB and ISA”, more details about National Security were added.

• In Part 15.5 “Reservations and Incompatibilities”, the phrases explaining each reservation, were clarified and made more consistent.

5. Legal texts

• The updated versions of the PCT Rules, AI and RO Guidelines are available. Updated portions include GL/RO/21: 41 and GL/RO/21: 65A to 65F. Unfortunately, the Applicants Guide Introductions and the EPO Euro-PCT Guide have NOT yet been updated.