Announcements Concerning the PCT:

The amount of the search fee for the European Patent Office (EPO) to act as the International Searching Authority (ISA) will increase to $2496, effective 01 April 2008. The revised PCT Fee Schedule will be posted at: http://www.uspto.gov/web/offices/pac/dapps/pct/fees.htm.

Certain Fee Increase and Revised Transmittal Letter to the United States Receiving Office (form PTO-1382)

Effective 09 November 2007, the amount of the search fee for the USPTO to act as the International Searching Authority will increase to $1800 for all international applications. The Office will no longer provide a reduced search fee for having a corresponding prior non-provisional application under 35 U.S.C. 111(a). Further, the amount of the supplemental search fee (per additional invention) to the ISA/US will increase to $1800. In addition, the amount of the fee for requesting restoration of the right of priority will increase to $1410. The revised PCT Fee Schedule is posted at http://www.uspto.gov/web/offices/pac/dapps/pct/fees.htm.

The second page of the Transmittal Letter to the RO/US (form PTO-1382) for providing the corresponding prior application information has been deleted. The revised Transmittal Letter is posted at: http://www.uspto.gov/web/offices/pac/dapps/pct/files/chap1/ed_1382.pdf.

Fee for Certified Copy of US Priority Documents to IB Waived

As of 31 August 2007, the USPTO will begin electronically transferring certified copies of US priority applications to the IB for PCT applications filed in the US Receiving Office (RO/US) where the applicant has made a request in accordance with PCT Rule 17.1(b) and 37 CFR 1.451(b).  The USPTO will not require a fee for the electronic transfer of certified copies of US priority documents to the IB for PCT international applications filed with the RO/US on or after 31 August 2007.  Accordingly, the fee set out in 37 CFR 1.19(b)(1)(iii)(A), for electronically providing a copy of a patent application as filed, is hereby waived, for certified copies of US priority applications electronically transmitted to the IB in accordance with PCT Rule 17.1(b) and 37 CFR 1.451(b) for PCT international applications filed with the RO/US on or after 31 August 2007.

The $20 fee under 37 CFR 1.19(b)(1) will continue to be required for the transmittal of a US priority document to the IB in accordance with PCT Rule 17.1(b) and 37 CFR 1.451(b) for international applications filed with the RO/US prior to 31 August 2007.

Changes to the PCT Regulations that will enter into force on 01 April 2007

Various amendments to the Regulations under the PCT will enter into force on 01 April 2007. The purposes of these amendments are to: (1) bring the provisions of the PCT into closer alignment with the provisions of the Patent Law Treaty (PLT); and (2) clarify the circumstances and procedures under which the correction of an obvious mistake may be made in an international application.

The following are the main changes to the PCT Regulations that will enter into force on 01 April 2007:

1) Missing elements and parts of the international application (Rule 20)

• Enable inclusion of omitted elements or parts that are contained in a priority application without affecting the international filing date by confirmation of incorporation by reference
• USPTO will implement in accordance with the amended regulation

2) Restoration of the right of priority (Rule 26bis.3)

• Allow a priority claim to an earlier filed application even if the international application is filed outside the priority year, but within two months of the expiration of the priority year
• RO/US will implement in accordance with the amended regulation under the interim procedure
• Request for restoration will be treated as petition under 37 CFR 1.182 with the requisite fee of $400 until the fee for restoration of priority is finalized in the final rule package
• Any priority restored under Rule 26bis.3 by the RO/US or any other RO will not entitle applicants to a right of priority to such prior application in any application which enters the national stage under 35 U.S.C. 371, or in any application filed under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 and 365(c) to an international application in which the right to priority has been restored

3) Rectification of obvious mistakes (Rule 91)

• Mistake must now only be obvious to “the competent Authority” and no longer to “anyone”
• Time periods for submitting a request have been revised

4) Physical requirements (Rule 11.9(d))

• All text matter in the international application should be in characters the capital letters of which are not less than 0.28 cm high (this is approximately equal to a Times New Roman 12 point font)

Detailed information of the April 2007 PCT Rule Changes is available on the WIPO website at: http://www.wipo.int/pct/en/index.html

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