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Appendix AI - Administrative Instructions Under the PCT

(as in force from September 16, 2012) TABLE OF CONTENTS [ Table of Contents added for the convenience of the reader; it is not part of the Administrative Instructions.]

PART 1 - INSTRUCTIONS RELATING TO GENERAL MATTERS

1

Section 101    Abbreviated Expressions and Interpretation

  • (a) In these Administrative Instructions:
    • (i) “Treaty” means the Patent Cooperation Treaty;
    • (ii) “Regulations” means the Regulations under the Treaty;
    • (iii) “Article” means an Article of the Treaty;
    • (iv) “Rule” means a Rule of the Regulations;
    • (v) “International Bureau” means the International Bureau as defined in Article 2 (xix) of the Treaty;
    • (vi) “International Authorities” means the receiving Offices, the International Searching Authorities, the International Preliminary Examining Authorities, and the International Bureau;
    • (vii) “Annex” means an Annex to these Administrative Instructions, unless the contrary clearly follows from the wording or the nature of the provision, or the context in which the word is used;
    • (viii) “Form” means a Form contained in Annex A; [Annex A is published separately by the World Intellectual Property Organization.]
    • (ix) “WIPO Standard” means a Standard established by the World Intellectual Property Organization;
    • (x) “Director General” means the Director General as defined in Article 2(xx) of the Treaty;
    • (xi) “electronic” technology includes that having electrical, digital, magnetic, optical or electromagnetic capabilities;
    • (xii) the expressions “sequence listing”, “sequence listing forming part of the international application” and “sequence listing not forming part of the international application” have the same meaning as in Annex C.
  • (b) The Annexes are part of these Administrative Instructions.

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Section 102    Use of the Forms

  • (a) Subject to paragraphs (b) to (i) and Section 103 , the International Authorities shall use, or require the use of, the mandatory Forms specified below:
    • (i) Forms for use by the applicant:

      PCT/RO/101 (request Form)

      PCT/IPEA/401 (demand Form)

    • (ii) Forms for use by the receiving Offices:
      PCT/RO/103 PCT/RO/115 PCT/RO/152
      PCT/RO/104 PCT/RO/117 PCT/RO/153
      PCT/RO/105 PCT/RO/118 PCT/RO/154
      PCT/RO/106 PCT/RO/123 PCT/RO/155
      PCT/RO/107 PCT/RO/126 PCT/RO/156
      PCT/RO/109 PCT/RO/133 PCT/RO/157
      PCT/RO/110 PCT/RO/136 PCT/RO/158
      PCT/RO/111 PCT/RO/143 PCT/RO/159
      PCT/RO/112 PCT/RO/147
      PCT/RO/113 PCT/RO/150
      PCT/RO/114 PCT/RO/151
    • (iii) Forms for use by the International Searching Authorities:
      PCT/ISA/201 PCT/ISA/212 PCT/ISA/234
      PCT/ISA/202 PCT/ISA/217 PCT/ISA/235
      PCT/ISA/203 PCT/ISA/218 PCT/ISA/236
      PCT/ISA/205 PCT/ISA/219 PCT/ISA/237
      PCT/ISA/206 PCT/ISA/220
      PCT/ISA/209 PCT/ISA/225
      PCT/ISA/210 PCT/ISA/233
    • (iv) Forms for use by the International Bureau:
      PCT/IB/301 PCT/IB/325 PCT/IB/357
      PCT/IB/304 PCT/IB/326 PCT/IB/358
      PCT/IB/305 PCT/IB/331 PCT/IB/360
      PCT/IB/306 PCT/IB/332 PCT/IB/366
      PCT/IB/307 PCT/IB/335 PCT/IB/367
      PCT/IB/308 PCT/IB/336 PCT/IB/368
      PCT/IB/310 PCT/IB/337 PCT/IB/369
      PCT/IB/311 PCT/IB/338 PCT/IB/370
      PCT/IB/313 PCT/IB/339 PCT/IB/371
      PCT/IB/314 PCT/IB/344 PCT/IB/373
      PCT/IB/315 PCT/IB/345 PCT/IB/374
      PCT/IB/316 PCT/IB/346 PCT/IB/376
      PCT/IB/317 PCT/IB/349 PCT/IB/377
      PCT/IB/318 PCT/IB/350 PCT/IB/378
      PCT/IB/319 PCT/IB/351 PCT/IB/379
      PCT/IB/320 PCT/IB/353 PCT/IB/399
      PCT/IB/321 PCT/IB/354
      PCT/IB/323 PCT/IB/356
    • (v) Forms for use by the International Preliminary Examining Authorities:
      PCT/IPEA/402 PCT/IPEA/414 PCT/IPEA/440
      PCT/IPEA/404 PCT/IPEA/415 PCT/IPEA/441
      PCT/IPEA/405 PCT/IPEA/416 PCT/IPEA/442
      PCT/IPEA/407 PCT/IPEA/420 PCT/IPEA/443
      PCT/IPEA/408 PCT/IPEA/425 PCT/IPEA/444
      PCT/IPEA/409 PCT/IPEA/431
      PCT/IPEA/412 PCT/IPEA/436
  • (b) Slight variations in layout necessary in view of the printing of the Forms referred to in paragraph (a) in various languages are permitted.
  • (c) Slight variations in layout in the Forms referred to in paragraph (a)(ii) to (v) are permitted to the extent necessary to meet the particular office requirements of the International Authorities, in particular in view of the production of the Forms by computer or of the use of window envelopes.
  • (d) Where the receiving Office, the International Searching Authority and/or the International Preliminary Examining Authority are each part of the same Office, the obligation to use the Forms referred to in paragraph (a) does not extend to communications within that same Office.
  • (e) The annexes to Forms PCT/RO/106, PCT/RO/118, PCT/ISA/201, PCT/ISA/205, PCT/ISA/206, PCT/ISA/210, PCT/ISA/219, PCT/IB/313, PCT/IB/336, PCT/IPEA/404, PCT/IPEA/405 and PCT/IPEA/415 may be omitted in cases where they are not used.
  • (f) The notes attached to Forms PCT/RO/101 (request Form), PCT/IB/375 (supplementary search request Form) and PCT/IPEA/401 (demand Form) shall be distributed by the International Authorities concerned together with the printed versions of those Forms. The notes attached to Form PCT/ISA/220 shall accompany the Form when sent to the applicant.
  • (g) The use of Forms other than those referred to in paragraph (a) is optional.
  • (h) Where the request or the demand is presented as a computer print-out, such print-out shall be prepared as follows:
    • (i) the layout and contents of the request and the demand when presented as computer print-outs shall correspond to the format of Forms PCT/RO/101 (request Form) and PCT/IPEA/401 (demand Form) (“the printed Forms”), with the same information being presented on the corresponding pages;
    • (ii) all boxes shall be drawn by solid lines; double lines may be presented as single lines;
    • (iii) the box numbers and box titles shall be included even where no information is supplied therein;
    • (iv) the boxes for use by the International Authorities shall be at least as large as those on the printed Forms;
    • (v) all other boxes shall be within one cm in size of those on the printed Forms;
    • (vi) all text shall be 9 points or larger in size;
    • (vii) titles and other information shall be clearly distinguished;
    • (viii) explanatory notes presented in italics on the printed Forms may be omitted.
  • (i) Other formats permitted for the presentation of the request and the demand as computer print-outs may be determined by the Director General. Any such format shall be published in the Gazette.

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Section 102 bis    Filing of PCT-EASY Request Together with PCT-EASY Physical Medium Containing Request Data and Abstract

  • (a) Pursuant to Rule 89ter , any receiving Office may, if it is prepared to do so, accept the filing with it of an international application containing the request presented as a print-out prepared using the PCT-EASY features of the PCT-SAFE software made available by the International Bureau (“PCT-EASY request”) together with a physical medium that has been specified by the receiving Office in accordance with Annex F. Such physical medium shall contain a copy in electronic form of the data contained in the request and of the abstract (“PCT-EASY physical medium”).
  • (b) Any receiving Office which, under paragraph (a), accepts the filing of PCT-EASY requests together with PCT-EASY physical media shall notify the International Bureau accordingly. The International Bureau shall promptly publish this information in the Gazette.
  • (c) Item 4(a) of the Schedule of Fees annexed to the Regulations shall apply to reduce the fees payable in respect of an international application containing a PCT-EASY request filed, together with a PCT-EASY physical medium, with a receiving Office which, under paragraph (a), accepts the filing of such international applications.

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Section 103    Languages of the Forms Used by International Authorities

  • (a) The language of the Forms used by any receiving Office shall be the same as the language in which the international application is filed, provided that:
    • (i) where the international application is to be published in the language of a translation required under Rule 12.3 (a) or 12.4 (a), the receiving Office shall use the Forms in such language;
    • (ii) the receiving Office may, in its communications to the applicant, use the Forms in any other language being one of its official languages.
  • (b) Subject to Section 104(b) , the language or languages of the Forms to be used by any International Searching Authority shall be specified in the applicable agreement referred to in Article 16 (3)(b).
  • (c) Subject to Section 104(b) , the language or languages of the Forms to be used by any International Preliminary Examining Authority shall be specified in the applicable agreement referred to in Article 32 (3).
  • (d) The language of any Form used by the International Bureau shall be English where the language of the international application is English, and it shall be French where the language of the international application is French. Where the language of the international application is neither English nor French, the language of any Form used by the International Bureau in its communications to any other International Authority shall be English or French according to the wishes of such Authority, and in its communications to the applicant it shall be English or French according to the wishes of the applicant.

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Section 104    Language of Correspondence in Cases Not Covered by Rule 92.2

  • (a) The language of any letter from the applicant to the receiving Office shall be the same as the language of the international application to which such letter relates, provided that, where the international application is to be published in the language of a translation required under Rule 12.3 (a) or 12.4 (a), any letter shall be in such language. However, the receiving Office may expressly authorize the use of any other language.
  • (b) The language of any letter to the International Bureau shall be English where the language of the international application is English, and it shall be French where the language of the international application is French. Where the language of the international application is neither English nor French, the language of any letter to the International Bureau shall be English or French, provided that any copy, sent to the International Bureau as a notification addressed to it, of a Form sent to the applicant by the receiving Office, the International Searching Authority or the International Preliminary Examining Authority, does not require translation into English or French.

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Section 105    Identification of International Application with Two or More Applicants

Where any international application indicates two or more applicants, it shall be sufficient, for the purpose of identifying that application, to indicate, in any Form or correspondence relating to such application, the name of the applicant first named in the request. The provisions of the first sentence of this Section do not apply to the demand.

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Section 106    Change of Common Representative

Where a change is recorded under Rule 92bis.1 (a) in the person of an applicant who was considered to be the common representative under Rule 90.2 (b), the new applicant shall be considered to be the common representative under Rule 90.2 (b) if he is entitled according to Rule 19.1 to file an international application with the receiving Office.

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Section 107    Identification of International Authorities and of Designated and Elected Offices

  • (a) Whenever the nature of any communication from or to the applicant, from or to any International Authority or, before national processing or examination has started, from or to any designated or elected Office so permits, any International Authority or any designated or elected Office may be indicated in the communication by the two-letter code referred to in Section 115 .
  • (b) The indication of a receiving Office, an International Searching Authority, an International Preliminary Examining Authority or a designated or elected Office shall be preceded by the letters “RO,” “ISA”, “IPEA,” “DO,” or “EO,” respectively, followed by a slant (e.g., “RO/JP,” “ISA/US”, “IPEA/SE,” “DO/EP,” “EO/AU”).

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Section 108    Correspondence Intended for the Applicant

  • (a) For the purpose of this Section, where there are two or more agents whose appointments are in force, “first mentioned agent” means the agent first mentioned in the document containing the appointments or, where the appointments are contained in two or more documents, in that which was filed first.
  • (b) Where a sole applicant has appointed an agent or agents under Rule 90.1 (a), correspondence intended for the applicant from the International Authorities shall, subject to paragraph (d), be addressed to the agent or, where applicable, to the first mentioned agent.
  • (c) Where there are two or more applicants, correspondence intended for the applicants from the International Authorities shall, subject to paragraph (d), be addressed:
    • (i) if no common agent has been appointed under Rule 90.1 —to the common representative or, where applicable, to his agent or first mentioned agent; or
    • (ii) if the applicants have appointed a common agent or common agents under Rule 90.1 (a)—to that common agent or, where applicable, to the first mentioned common agent.
  • (d) Where an agent has or agents have been appointed under Rule 90.1 (b), (c) or (d)(ii), paragraphs (b) and (c) shall apply to correspondence intended for the applicant relating to the procedure before the International Searching Authority or the International Preliminary Examining Authority, as the case may be, as if those paragraphs referred to the agent or agents so appointed.
  • (e) Where, in accordance with paragraph (c), correspondence intended for the applicants from the International Authorities is to be addressed to the common representative but the indication required under Rule 4.5 (a)(ii) has not been provided for the common representative, correspondence shall be addressed:
    • (i) to the first applicant named in the request who is entitled according to Rule 19.1 to file an international application with the receiving Office and in respect of whom the indication required under Rule 4.5 (a)(ii) has been provided; or, if there is no such applicant,
    • (ii) to the applicant first named in the request who is entitled according to Article 9 to file an international application and in respect of, whom the indication required under Rule 4.5 (a)(ii) has been provided; or, if there is no such applicant,
    • (iii) to the applicant first named in the request in respect of whom the indication required under Rule 4.5 (a)(ii) has been provided.

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Section 109    File Reference

  • (a) Where any document submitted by the applicant contains an indication of a file reference, that reference shall not exceed 12 characters in length and may be composed of either letters of the Latin alphabet or Arabic numerals, or both.
  • (b) Correspondence from International Authorities intended for the applicant shall indicate any such file reference.

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Section 110    Dates

Any date in the international application, or used in any correspondence emanating from International Authorities relating to the international application, shall be indicated by the Arabic number of the day, by the name of the month, and by the Arabic number of the year. The receiving Office, where the applicant has not done so, or the International Bureau, where the applicant has not done so and the receiving Office fails to do so, shall, after, above, or below any date indicated by the applicant in the request, repeat the date, in parentheses, by indicating it by two-digit Arabic numerals each for the number of the day and for the number of the month followed by the number of the year in four digits, in that order and with a period, slant or hyphen after the digit pairs of the day and of the month (for example, “20 March 2004 (20.03.2004),” “20 March 2004 (20/03/2004),” or “20 March 2004 (20-03-2004)”).

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Section 111    Procedure in the Case of Excuse of the Delay in Meeting Certain Time Limits under Rule 82 quater

Where an Office in its capacity as a receiving Office, an International Searching Authority, an Authority specified for supplementary search or an International Preliminary Examining Authority receives a request under Rule 82 quater for the excuse of a delay in meeting a time limit, it shall promptly:

    • (i) communicate its decision whether or not to excuse such a delay to the interested party; and
    • (ii) transmit a copy of such a request, a copy of any evidence furnished and of its decision to the International Bureau.

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Section 112    Ceasing of Effect under Articles 24(1)(iii) and 39(2), Review under Article 25 (2) and Maintaining of Effect under Articles 24(2) and 39(3)

  • (a) Each national Office shall, in its capacity as designated Office, notify the International Bureau once a year of:
    • (i) the number of international applications in respect of which, during the preceding calendar year, the time limit applicable under Article 22 has expired;
    • (ii) the number of international applications in respect of which, during the preceding calendar year, the requirements provided for in Article 22 have not been complied with before the expiration of the time limit applicable under that Article, with the consequence that the effects of the international applications concerned have ceased under Article 24 (1)(iii).
  • (b) Each national Office shall, in its capacity as elected Office, notify the International Bureau once a year of:
    • (i) the number of international applications in respect of which, during the preceding calendar year, the time limit applicable under Article 39 (1) has expired;
    • (ii) the number of international applications in respect of which, during the preceding calendar year, the requirements provided for in Article 39 (1) have not been complied with before the expiration of the time limit applicable under that Article, with the consequence that the effects of the international applications concerned have ceased under Article 39 (3).
  • (c) Where, under Article 25 (2), the designated Office decides that the refusal, declaration or finding referred to in Article 25 (1) was not justified, it shall promptly notify the International Bureau that it will treat the international application as if the error or omission referred to in Article 25 (2) had not occurred. The notification shall preferably contain the reasons for the decision of the designated Office.
  • (d) Where, under Article 24 (2) or under Article 39 (3), the designated or elected Office maintains the effect provided for in Article 11 (3), it shall promptly notify the International Bureau accordingly. The notification shall preferably contain the reasons for the decision of the designated or elected Office.

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Section 113    Special Fees Payable to the International Bureau

  • (a) The special publication fee provided for in Rule 48.4 shall be 200 Swiss francs.
  • (b) The special fee provided for in Rule 91.3 (d) shall be payable to the International Bureau and shall be 50 Swiss francs plus 12 Swiss francs for each sheet in excess of one. Where that fee has not been paid prior to the expiration of the time limit under Rule 91.3 (d), the request for rectification, the reasons for refusal by the authority and any further brief comments submitted by the applicant shall not be published. Where the last sentence of Rule 91.3 (d) applies and the said fee has not been paid before the time of the communication of the international application under Article 20 , a copy of the request for rectification shall not be included in that communication.
  • (c) The special fee provided for in Rule 26bis.2(e) shall be payable to the International Bureau and shall be 50 Swiss francs plus 12 Swiss francs for each sheet in excess of one.

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Section 114    [Deleted]

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Section 115    Indications of States, Territories and Intergovernmental Organizations

The indication of a State, territory, or intergovernmental organization shall be made either by its full name, by a generally accepted short title which, if the indications are in English or French, shall be as appears in WIPO Standard ST.3 (Recommended Standard Two-Letter Code for the Representation of Countries, and of Other Entities and International Organizations Issuing or Registering Industrial Property Titles), or by the two-letter code as appears in that Standard. [ Published in the WIPO Handbook on Industrial Property Information and Documentation.]

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PART 2 - INSTRUCTIONS RELATING TO THE INTERNATIONAL APPLICATION

2

Section 201    Language of the International Application

The language in which the international application is filed shall preferably be indicated in the request.

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Section 202    [Deleted]

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Section 203    Different Applicants for Different Designated States

  • (a) Different applicants may be indicated for different States designated for a regional patent.
  • (b) Where a particular State has been designated for both a national patent and a regional patent, the same applicant or applicants shall be indicated for both designations.

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Section 204    Headings of the Parts of the Description

  • (a) The headings of the parts of the description should be as follows:
    • (i) for matter referred to in Rule 5.1(a)(i) , “Technical Field”;
    • (ii) for matter referred to in Rule 5.1(a)(ii) , “Background Art”;
    • (iii) for matter referred to in Rule 5.1(a)(iii) , “Disclosure of Invention” or “Summary of Invention”;
    • (iv) for matter referred to in Rule 5.1(a)(iv) , “Brief Description of Drawings”;
    • (v) for matter referred to in Rule 5.1(a)(v) , “Best Mode for Carrying out the Invention,” or, where appropriate, “Mode(s) for Carrying Out the Invention” or “Description of Embodiments”;
    • (vi) for matter referred to in Rule 5.1(a)(vi) , “Industrial Applicability”;
    • (vii) for matter referred to in Rule 5.2(a) , “Sequence Listing”;
    • (viii) for matter referred to in Rule 5.2(b) , “Sequence Listing Free Text.”
  • (b) The heading “Title of Invention” shall preferably precede the title of the invention.

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Section 204 bis    Numbering of Claims

The number of each claim referred to in Rule 6.1(b) shall preferably be preceded by the expression “Claim” (for example, “Claim 1”, “Claim 2”, “Claim 3”).

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Section 205    Numbering and Identification of Claims upon Amendment

  • (a) Amendments to the claims under Article 19 or Article 34 (2)(b) may be made either by cancelling one or more entire claims, by adding one or more new claims or by amending the text of one or more of the claims as filed. Where a claim is cancelled, no renumbering of the other claims shall be required. In all cases where claims are renumbered, they shall be renumbered consecutively in Arabic numerals.
  • (b) The applicant shall, in the letter referred to in Rule 46.5(b) or Rule 66.8(c) , indicate the differences between the claims as filed and the claims as amended or, as the case may be, differences between the claims as previously amended and currently amended. He shall, in particular, indicate in the said letter, in connection with each claim appearing in the international application (it being understood that identical indications concerning several claims may be grouped), whether:
    • (i) the claim is unchanged;
    • (ii) the claim is cancelled;
    • (iii) the claim is new;
    • (iv) the claim replaces one or more claims as filed;
    • (v) the claim is the result of the division of a claim as filed;
    • (vi) the claim replaces one or more claims as previously amended;
    • (vii) the claim is the result of the division of a claim as previously amended.

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Section 206    Unity of Invention

The determination by the International Searching Authority, the International Preliminary Examining Authority and the designated and elected Offices whether an international application complies with the requirement of unity of invention under Rule 13 shall be made in accordance with Annex B.

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Section 207    Arrangement of Elements and Numbering of Sheets of the International Application

  • (a) In effecting the sequential numbering of the sheets of the international application in accordance with Rule 11.7 , the elements of the international application shall be placed in the following order:
    • (i) the request;
    • (ii) the description (if applicable, including the sequence listing free text referred to in Rule 5.2(b) but excluding the sequence listing part of the description referred to in item (vi) of this paragraph):
    • (iii) the claims;
    • (iv) the abstract;
    • (v) if applicable, the drawings;
    • (vi) if applicable, the sequence listing part of the description.
  • (b) The sequential numbering of the sheets shall be effected by using the following separate series of numbering:
    • (i) the first series applying to the request only and commencing with the first sheet of the request;
    • (ii) the second series commencing with the first sheet of the description (as referred to in paragraph (a)(ii)) and continuing through the claims until the last sheet of the abstract;
    • (iii) if applicable, a further series applying to the sheets of the drawings only and commencing with the first sheet of the drawings; the number of each sheet of the drawings shall consist of two Arabic numerals separated by a slant, the first being the sheet number and the second being the total number of sheets of drawings (for example, 1/3, 2/3, 3/3);
    • (iv) if applicable, a further series applying to the sequence listing part of the description, commencing with the first sheet of that part.

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Section 208    Sequence Listings

Any sequence listing, whether on paper or in electronic form, whether forming part of the international application or not forming part of the international application, shall comply with Annex C.

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Section 209    Indications as to Deposited Biological Material on a Separate Sheet

  • (a) To the extent that any indication with respect to deposited biological material is not contained in the description, it may be given on a separate sheet. Where any such indication is so given, it shall preferably be on Form PCT/RO/134 and, if furnished at the time of filing, the said Form shall, subject to paragraph (b), preferably be attached to the request and referred to in the check list referred to in Rule 3.3 (a)(ii).
  • (b) For the purposes of designated Offices, which have so notified the International Bureau under Rule 13bis .7 (a), paragraph (a) applies only if the said Form or sheet is included as one of the sheets of the description of the international application at the time of filing.

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Section 210    [Deleted]

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Section 211    Declaration as to the Identity of the Inventor

  • (a) Any declaration as to the identity of the inventor, referred to in Rule 4.17(i) , shall be worded as follows:
“Declaration as to the identity of the inventor ( Rules 4.17(i) and 51bis.1(a)(i) ):
in relation to [this] international application [No. PCT/…], … (name) of … (address) is the inventor of the subject matter for which protection is sought by way of [the] [this] international application”
  • (b) This declaration need not be made if the name and address of the inventor are otherwise indicated in the request.
  • (c) This declaration may, where applicable, be combined, in accordance with Section 212(b) , with the declaration referred to in Section 212(a) .

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Section 212    Declaration as to the Applicant’s Entitlement to Apply for and Be Granted a Patent

  • (a)  Any declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent, referred to in Rule 4.17(ii) , shall be worded as follows, with such inclusion, omission, repetition and re-ordering of the matters listed as items (i) to (viii) as is necessary to explain the applicant’s entitlement:
“Declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent (Rules 4.17(ii) and 51bis.1(a)(ii) ), in a case where the declaration under Rule 4.17(iv) is not appropriate:

in relation to [this] international application [No. PCT/…],

(name) is entitled to apply for and be granted a patent by virtue of the following:
(i) ... (name) of ... (address) … is the inventor of the subject matter for which protection is sought by way of [the] [this] international application
(ii) … (name) [is] [was] entitled as employer of the inventor, … (inventor’s name)
(iii) an agreement between … (name) and … (name), dated …
(iv) an assignment from … (name) to … (name), dated …
(v) consent from … (name) in favor of … (name), dated …
(vi) a court order issued by … (name of court), effecting a transfer from … (name) to … (name), dated …
(vii) transfer of entitlement from … (name) to … (name) by way of … (specify kind of transfer), dated ...
(viii) the applicant’s name changed from … (name) to … (name) on … (date)
  • (b) The declaration referred to in paragraph (a) may, where applicable, be combined with the declaration referred to in Section 211(a) , in which case the introductory phrase shall be worded as follows and the remainder of the combined declaration shall be worded as prescribed in paragraph (a):
    “Combined declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent ( Rules 4.17(ii) and 51bis.1(a)(ii) ) and as to the identity of the inventor ( Rules 4.17(i) and 51bis.1(a)(i) ), in a case where the declaration under Rule 4.17(iv) is not appropriate:”

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Section 213    Declaration as to the Applicant’s Entitlement to Claim Priority of Earlier Application

Any declaration as to the applicant’s entitlement, as at the international filing date, to claim priority of the earlier application, referred to in Rule 4.17(iii) , shall be worded as follows, with such inclusion, omission, repetition and re-ordering of the matters listed as items (i) to (viii) as is necessary to explain the applicant’s entitlement:

“Declaration as to the applicant’s entitlement, as at the international filing date, to claim the priority of the earlier application specified below, where the applicant is not the applicant who filed the earlier application or where the applicant’s name has changed since the filing of the earlier application ( Rules 4.17(iii) and 51bis.1(a)(iii) ):

in relation to [this] international application [No. PCT/…],

... (name) is entitled to claim priority of earlier application No. … by virtue of the following:

(i) the applicant is the inventor of the subject matter for which protection was sought by way of the earlier application

(ii) … (name) [is] [was] entitled as employer of the inventor, … (inventor’s name)
(iii) an agreement between … (name) and … (name), dated …
(iv) an assignment from … (name) to … (name), dated …
(v) consent from … (name) in favor of … (name), dated …
(vi) a court order, issued by …. (name of court), effecting a transfer from … (name) to … (name), dated …
(vii) transfer of entitlement from … (name) to … (name) by way of … (specify kind of transfer), dated …
(viii) the applicant’s name changed from … (name) to … (name) on … (date)

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Section 214    Declaration of Inventorship

  • (a) A declaration of inventorship, referred to in Rule 4.17 (iv), that is made for the purposes of the designation of the United States of America shall be worded as follows:
    “Declaration of inventorship (Rules 4.17 (iv) and 51bis .1 (a)(iv)) for the purposes of the designation of the United States of America:

    I hereby declare that I believe I am the original inventor or an original joint inventor of a claimed invention in the application.

    This declaration is directed to the international application of which it forms a part (if filing declaration with application).

    This declaration is directed to international application No. PCT/… (if furnishing declaration pursuant to Rule 26ter ).

    I hereby declare that the above-identified international application was made or authorized to be made by me.

    I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.

    Name: …

    Residence: … (city and either US state, if applicable, or country)

    Mailing Address: …

    Inventor’s Signature: … (The signature must be that of the inventor, not that of the agent)

    Date: …”

  • (b) Where there is more than one inventor and all inventors do not sign the same declaration referred to in paragraph (a), each declaration shall indicate the names of all the inventors.
  • (c) Any correction or addition under Rule 26 ter.1 of a declaration referred to in paragraph (a) shall take the form of a declaration referred to in that paragraph and be signed by the inventor. In addition, any such correction shall be entitled “Supplemental declaration of inventorship (Rules 4.17 (iv) and 51bis .1 (a)(iv))”.

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Section 215    Declaration as to Non-Prejudicial Disclosures or Exceptions to Lack of Novelty

Any declaration as to non-prejudicial disclosures or exceptions to lack of novelty shall be worded as follows, with such inclusion, omission, repetition and re-ordering of the matters listed as items (i) to (iv) as is necessary:

“Declaration as to non-prejudicial disclosures or exceptions to lack of novelty ( Rules 4.17(v) and  51bis.1(a)(v) ):

in relation to [this] international application [No. PCT/…],

(name) declares that the subject matter claimed in [the] [this] international application was disclosed as follows:
(i) kind of disclosure (include as applicable) :

(a) international exhibition

(b) publication

(c) abuse

(d) other: ... (specify)

(ii) date of disclosure: ...

(iii) title of disclosure ( if applicable ): ...
(iv) place of disclosure ( if applicable ): ...”

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Section 216    Notice of Correction or Addition of a Declaration under Rule 26ter

Any notice referred to in Rule 26ter.1 shall consist of a replacement sheet containing a corrected declaration, or of an additional sheet containing a declaration, and an accompanying letter explaining the correction or addition.

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PART 3 - INSTRUCTIONS RELATING TO THE RECEIVING OFFICE

3

Section 301    Notification of Receipt of Purported International Application

Before the determination under Article 11 (1), the receiving Office may notify the applicant of the receipt of the purported international application. The notification should indicate the date of actual receipt and the international application number of the purported international application referred to in Section 307 as well as, where useful for purposes of identification, the title of the invention.

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Section 302    Priority Claim Considered Not to Have Been Made

Where the receiving Office declares, under Rule 26bis.2 (b), that a priority claim is considered not to have been made, that Office shall enclose the priority claim concerned within square brackets, draw a line between the square brackets, while still leaving legible the indications concerned, and enter, in the margin, the words “NOT TO BE CONSIDERED FOR PCT PROCEDURE (RO)” or their equivalent in the language of publication of the international application, and shall notify the applicant accordingly. If copies of the international application have already been sent to the International Bureau and the International Searching Authority, the receiving Office shall also notify that Bureau and that Authority.

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Section 303    Deletion of Additional Matter in the Request

  • (a) Where, under Rule 4.19 (b), the receiving Office deletes ex officio any matter contained in the request, it shall do so by enclosing such matter within square brackets and entering, in the margin, the words “DELETED BY RO” or their equivalent in the language of publication of the international application, and shall notify the applicant accordingly. If copies of the international application have already been sent to the International Bureau and the International Searching Authority, the receiving Office shall also notify that Bureau and that Authority.
  • (b) The receiving Office shall not delete ex officio any indication made in declarations referred to in Rule 4.17 which are contained in the request.

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Section 304    Invitation to Pay Fees Before Date on Which They Are Due

If the receiving Office finds, before the date on which they are due, that the transmittal fee, the international filing fee (including any supplement per sheet over 30) or the search fee are lacking in whole or in part, it may invite the applicant to pay the missing amounts within one month from the date of receipt of the international application.

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Section 305    Identifying the Copies of the International Application

  • (a) Where, under Rule 11.1 (a), the international application has been filed in one copy, the receiving Office shall, after preparing under Rule 21.1 (a) the additional copies required under Article 12 (1), mark,
    • (i) the words “RECORD COPY” in the upper left-hand corner of the first page of the original copy,
    • (ii) in the same space on one additional copy, the words “SEARCH COPY”, and
    • (iii) in the same space on the other such copy, the words “HOME COPY,” or their equivalent in the language of publication of the international application.
  • (b) Where, under Rule 11.1 (b), the international application has been filed in more than one copy, the receiving Office shall choose the copy most suitable for reproduction purposes, and mark the words “RECORD COPY,” or their equivalent in the language of publication of the international application, in the upper left-hand corner of its first page. After verifying the identity of any additional copies and, if applicable, preparing under Rule 21.1 (b) the home copy, it shall mark, in the upper left-hand corner of the first page of one such copy, the words “SEARCH COPY,” and, in the same space on the other such copy, the words “HOME COPY,” or their equivalent in the language of publication of the international application.

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Section 305 bis    Preparation, Identification and Transmittal of the Copies of the Translation of the International Application

  • (a) Where a translation of the international application is furnished under Rule 12.3 , the receiving Office shall:
    • (i) be responsible for the prompt preparation of any additional copies required where the translation is furnished in less than the number of copies required for the purposes of this paragraph, and shall have the right to fix a fee for performing that task and to collect such fee from the applicant;
    • (ii) mark the words “RECORD COPY- TRANSLATION ( RULE 12.3 )” in the upper left-hand corner of the first page of the original copy of the translation and transmit that copy to the International Bureau;
    • (iii) mark the words “SEARCH COPY- TRANSLATION ( RULE 12.3 )” in the same space on one additional copy of the translation which, together with a copy of the request marked “SEARCH COPY” under Section 305(a)(ii) , is considered pursuant to Rule 23.1 (b) to be the search copy, and transmit such search copy to the International Searching Authority; and
    • (iv) mark the words “HOME COPY- TRANSLATION ( RULE 12.3 )” in the same space on the other such copy of the translation, and keep that copy in its files.
  • (b) The receiving Office may, when marking the copies of the translation under paragraph (a), use, instead of the words referred to in that paragraph, the equivalent of those words in the language of publication of the international application.
  • (c) Where a translation of the international application is furnished under Rule 12.4 , the receiving Office shall:
    • (i) be responsible for the prompt preparation of any additional copies required where the translation is furnished in less than the number of copies required for the purposes of this paragraph, and shall have the right to fix a fee for performing that task and to collect such fee from the applicant;
    • (ii) mark the words “RECORD COPY – TRANSLATION (RULE 12.4 )” in the upper left-hand corner of the first page of the original copy of the translation and transmit that copy to the International Bureau; and
    • (iii) mark the words “HOME COPY – TRANSLATION (RULE 12.4 )” in the same space on the other such copy of the translation, and keep that copy in its files.

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Section 305 ter    Identification and Transmittal of the Translation of an Earlier Application Furnished under Rule 20.6(a)(iii)

Where a translation of an earlier application is furnished under Rule 20.6 (a)(iii), the receiving Office shall mark the words “TRANSLATION OF EARLIER APPLICATION (RULE 20.6 (a)(iii))” in the upper left-hand corner of the first page of the translation and, after having made a finding under Rule 20.6 (b) or (c), transmit the translation to the International Bureau.

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Section 306    Delayed Transmittal of Search Copy

Where the search copy will be transmitted to the International Searching Authority after the date on which the record copy is transmitted to the International Bureau, the receiving Office shall notify the International Bureau. The notification may be made by marking a check-box provided for this purpose on the request.

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Section 307    System of Numbering International Applications

Papers purporting to be an international application under Rule 20.1 (a) shall be allocated an international application number, consisting of the letters “PCT,” a slant, the two-letter code referred to in Section 115 , indicating the receiving Office, a four-digit indication of the year in which such papers were first received, a slant and a six-digit number, allotted in sequential order corresponding to the order in which the international applications are received (e.g., “PCT/SE2004/000001”). Where the International Bureau acts as receiving Office, the two-letter code “IB” shall be used.

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Section 308    Marking of the Sheets of the International Application and of the Translation Thereof

  • (a) Upon receipt of papers purporting to be an international application, the receiving Office shall indelibly mark the date of actual receipt on the request of each copy received.
  • (b) The receiving Office shall indelibly mark the international application number referred to in Section 307 in the upper right-hand corner of each sheet of each copy of the purported international application and of any translation of the international application furnished under Rule 12.3 or 12.4 .
  • (c) If a positive determination is made under Rule 20.2 , the receiving Office shall mark on the request the name of the receiving Office and the words “PCT International Application” or “Demande internationale PCT”. If the official language of the receiving Office is neither English nor French, the words “International Application” or “Demande internationale” may be accompanied by a translation of these words in the official language of the receiving Office.
  • (d) If a negative determination is made under Rule 20.4 or a declaration is made under Article 14 (4), the letters “PCT” shall be deleted by the receiving Office from the indication of the international application number on any papers marked previously with that number, and the said number shall be used without such letters in any future correspondence relating to the purported international application.

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Section 308 bis    Marking of Later Submitted Sheets

The receiving Office shall indelibly mark any sheet containing an element referred to in Article 11 (1)(iii)(d) or (e), or a part referred to in Rule 20.5 (a), received on a date later than the date on which sheets were first received (“later submitted sheet”), in the upper right-hand corner of each sheet, with the international application number referred to in Section 307 and the date of actual receipt of that sheet.

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Section 309    Procedure in the Case of Later Submitted Sheets Furnished for the Purposes of Incorporation by Reference

  • (a) This Section applies, subject to paragraph (f), to later submitted sheets which accompany a notice confirming under Rule 20.6 that an element or part embodied in those sheets was incorporated by reference.
  • (b) Where later submitted sheets as referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 and the receiving Office makes a finding under Rule 20.6 (b), the receiving Office shall:
    • (i) indelibly mark, in the middle of the bottom margin of each later submitted sheet, the words “INCORPORATED BY REFERENCE (RULE 20.6 )”, or their equivalent in the language of publication of the international application;
    • (ii) notify the applicant that the element or part contained in the later submitted sheets is considered to have been contained in the international application or purported international application on the date when sheets were first received and that that date has been accorded or retained, as the case may be, as the international filing date;
    • (iii) keep in its files a copy of the later submitted sheets marked under item (i) and of the notice under Rule 20.6 (a);
    • (iv) where transmittals under Article 12 (1) have already been made, notify the International Bureau and the International Searching Authority accordingly, and transmit the later submitted sheets marked under item (i) to the said Bureau and a copy thereof to the said Authority;
    • (v) where transmittals under Article 12 (1) have not yet been made, attach the later submitted sheets marked under item (i) and the notice under Rule 20.6 (a) to the record copy and a copy thereof to the search copy.
  • (c) Where later submitted sheets referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 and the receiving Office makes a finding under Rule 20.6 (c), the receiving Office shall, subject to Section 310bis :
    • (i) effect the required correction of the international filing date or accord as the international filing date the date of receipt of the later submitted sheets;
    • (ii) notify the applicant that the content of the later submitted sheets is not considered to have been contained in the international application or purported international application on the date when sheets were first received and that the international filing date has been accorded as, or corrected to, as the case may be, the date on which the new sheets were received;
    • (iii) keep in its files a copy of the later submitted sheets and of the notice under Rule 20.6 (a);
    • (iv) where transmittals under Article 12 (1) have already been made, notify the International Bureau and the International Searching Authority accordingly and transmit a copy of the corrected first and last sheets of the request, the later submitted sheets and the notice under Rule 20.6 (a) to the said Bureau and a copy thereof to the said Authority;
    • (v) where transmittals under Article 12 (1) have not yet been made, attach the later submitted sheets and the notice under Rule 20.6 (a) to the record copy and a copy thereof to the search copy.
  • (d) Where later submitted sheets referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 but the purported international application still does not fulfill the requirements of Article 11 (1), the receiving Office shall proceed as provided in Rule 20.4 , but not before the expiration of the time limit under Rule 20.7 .
  • (e) Where later submitted sheets referred to in paragraph (a) are received after the expiration of the applicable time limit referred to in Rule 20.7 , the receiving Office shall proceed as provided in Section 310ter .
  • (f) Where later submitted sheets referred to in paragraph (a) are received but a missing element or part contained in those sheets cannot be incorporated by reference in the international application under Rules 4.18 and 20.6 because of the operation of Rule 20.8 ( a), the receiving Office shall:
    • (i) inform the applicant that the notice under Rule 20.6 (a) confirming the incorporation by reference of the missing element or part has been disregarded:
    • (ii) proceed in accordance with Section 310(b) , which shall apply mutatis mutandis, as if the notice under Rule 20.6 (a) were a correction furnished under Rule 20.3 (b)(i), or a missing part furnished under Rules 20.5 (b) or (c), as the case may be; and
    • (iii) proceed in accordance with Section 310bis(b) where the applicant requests, within the time limit under Rule 20.5 (e), that the missing part concerned be disregarded.

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Section 310    Procedure in the Case of Later Submitted Sheets Not Furnished for the Purposes of Incorporation by Reference

  • (a) This Section applies to later submitted sheets which do not accompany a notice confirming under Rule 20.6 that an element or part embodied in those sheets was incorporated by reference.
  • (b) Where later submitted sheets as referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 and where the international filing date is to be accorded under Rules 20.3 (b)(i) or 20.5 (b), or corrected under Rule 20.5 (c), the receiving Office shall, subject to Section 310bis :
    • (i) accord the international filing date in accordance with Rules 20.3 (b)(i) or 20.5 (b), or effect the required correction of the international filing date in accordance with Rule 20.5 (c), as the case may be;
    • (ii) notify the applicant of the correction or the according of the international filing date effected under item (i);
    • (iii) keep in its files a copy of the later submitted sheets;
    • (iv) where transmittals under Article 12 (1) have already been made, notify the International Bureau and the International Searching Authority accordingly and transmit a copy of the corrected first and last sheets of the request and the later submitted sheets to the said Bureau and a copy thereof to the said Authority;
    • (v) where transmittals under Article 12 (1) have not yet been made, attach the later submitted sheets to the record copy and a copy thereof to the search copy.
  • (c) Where later submitted sheets referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 but the purported international application still does not fulfill the requirements of Article 11 (1), the receiving Office shall proceed as provided in Rule 20.4 .
  • (d) Where later submitted sheets referred to in paragraph (a) are received after the expiration of the applicable time limit referred to in Rule 20.7 , the receiving Office shall proceed as provided in Section 310ter .

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Section 310 bis    Procedure in the Case of Later Submitted Sheets Resulting in the Correction of the International Filing Date under Rule 20.5(c)

  • (a) Where, following the receipt of later submitted sheets referred to in Sections 309(a) or 310(a) within the applicable time limit referred to in Rule 20.7 , the international filing date has been corrected under Rule 20.5 (c), the receiving Office shall, in addition to proceeding under Sections 309(c)(i) to (iii), or 310(b)(i) to (iii), as the case may be:
    • (i) draw the attention of the applicant to the procedure available under Rule 20.5 (e);
    • (ii) proceed under Sections 309(c)(iv) or (v), or 310(b)(iv) or (v), as the case may be, but only after the expiration of the time limit under Rule 20.5 (e) and only where the applicant has not made a request under that Rule.
  • (b) Where the applicant requests within the time limit under Rule 20.5 (e) that the missing part concerned be disregarded, the receiving Office shall:
    • (i) restore the international filing date to that which had applied prior to its correction under Rule 20.5 (c);
    • (ii) indelibly mark, in the middle of the bottom margin of each sheet containing the missing part concerned, the words “NOT TO BE CONSIDERED (RULE 20.5 (e))”, or their equivalent in the language of publication of the international application;
    • (iii) notify the applicant that the missing part is considered not to have been furnished and that the international filing date has been restored to that which had applied prior to its correction under Rule 20.5 (c);
    • (iv) keep in its files a copy of the later submitted sheets marked under item (ii) and of the request made under Rule 20.5 (e);
    • (v) where transmittals under Article 12 (1) have already been made, notify the International Bureau and the International Searching Authority accordingly, and transmit a copy of the corrected first and last sheets of the request, the later submitted sheets marked under item (ii) and the request made under Rule 20.5 (e) to the said Bureau and a copy thereof to the said Authority;
    • (vi) where transmittals under Article 12 (1) have not yet been made, notify the International Bureau accordingly and attach the later submitted sheets marked under item (ii), the notice under Rule 20.6 (a) and the request under Rule 20.5 (e) to the record copy.

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Section 310 ter    Procedure in the Case of Later Submitted Sheets Furnished after the Expiration of the Applicable Time Limit Referred to in Rule 20.7

Where later submitted sheets referred to in Sections 309(a) or 310(a) are received after the expiration of the applicable time limit referred to in Rule 20.7 , the receiving Office shall:

  • (i) notify the applicant of the fact and of the date of receipt of the later submitted sheets, and of the fact that they will not be considered for the PCT procedure;
  • (ii) indelibly mark, in the middle of the bottom margin of each sheet containing the missing element or part concerned, the words “NOT TO BE CONSIDERED (RULE 20.7 )”, or their equivalent in the language of publication of the international application;
  • (iii) keep in its files a copy of the later submitted sheets marked under item (ii) and, where applicable, of the notice under Rule 20.6 (a);
  • (iv) where transmittals under Article 12 (1) have already been made, notify the International Bureau accordingly, and transmit the later submitted sheets marked under item (ii) and, where applicable, the notice under Rule 20.6 (a) to the said Bureau;
  • (v) where transmittals under Article 12 (1) have not yet been made, notify the International Bureau accordingly, and attach the later submitted sheets marked under item (ii) and, where applicable, the notice under Rule 20.6 (a) to the record copy.

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Section 311    Renumbering in the Case of Deletion, Substitution or Addition of Sheets of the International Application and of the Translation Thereof

  • (a) The receiving Office shall, subject to Section 207 , sequentially renumber the sheets of the international application when necessitated by the addition of any new sheet, the deletion of entire sheets, a change in the order of the sheets or any other reason.
  • (b) The sheets of the international application shall be provisionally renumbered in the following manner:
    • (i) when a sheet is deleted, the receiving Office shall either include a blank sheet with the same number and with the word “DELETED,” or its equivalent in the language of publication of the international application, below the number, or insert, in brackets, below the number of the following sheet, the number of the deleted sheet with the word “DELETED” or its equivalent in the language of publication of the international application;
    • (ii) when one or more sheets are added, each sheet shall be identified by the number of the preceding sheet followed by a slant and then by another Arabic numeral such that the additional sheets are numbered consecutively, starting always with number one for the first sheet added after an unchanged sheet (e.g., 10/1, 15/1, 15/2, 15/3, etc.); when later additions of sheets to an existing series of added sheets are necessary, an extra numeral shall be used for identifying the further additions (e.g., 15/1, 15/1/1, 15/1/2, 15/2, etc.).
  • (c) In the cases mentioned in paragraph (b), it is recommended that the receiving Office should write, below the number of the last sheet, the total number of the sheets of the international application followed by the words “TOTAL OF SHEETS” or their equivalent in the language of publication of the international application. It is further recommended that, at the bottom of any last sheet added, the words “LAST ADDED SHEET” or their equivalent in the language of publication of the international application should be inserted.
  • (d) Paragraphs (a) to (c) shall apply mutatis mutandis to any translation of the international application furnished under Rule 12.3 or 12.4 .

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Section 312    Notification of Decision Not to Issue Declaration that the International Application Is Considered Withdrawn

Where the receiving Office, after having notified the applicant under Rule 29.4(a) of its intent to issue a declaration under Article 14 (4), decides not to issue such a declaration, it shall notify the applicant accordingly.

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Section 313    Documents Filed with the International Application; Manner of Marking the Necessary Annotations in the Check List

  • (a) Any power of attorney, any priority document, any fee calculation sheet and any separate sheet referred to in Section 209(a) containing indications as to deposited biological material, filed with the international application shall accompany the record copy; any other document referred to in Rule 3.3 (a)(ii) shall be sent only at the specific request of the International Bureau. If any document which is indicated in the check list as accompanying the international application is not, in fact, filed at the latest by the time the record copy leaves the receiving Office, that Office shall so note on the check list and the said indication shall be considered as if it had not been made.
  • (b) Where, under Rule 3.3 (b), the receiving Office itself completes the check list, that Office shall enter, in the margin, the words “COMPLETED BY RO” or their equivalent in the language of publication of the international application. Where only some of the indications are completed by the receiving Office, the said words and each indication completed by that Office shall be identified by an asterisk.
  • (c) Any sequence listing not forming part of the international application, whether on paper or in electronic form, that is furnished for the purposes of the international search to the receiving Office together with the international application or subsequent to the filing of the international application, shall be transmitted to the International Searching Authority together with the search copy. Where such a sequence listing is received by the receiving Office after the transmittal of the search copy, that sequence listing shall be promptly transmitted to the International Searching Authority.

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Section 314    Correction or Addition of a Priority Claim Under Rule 26 bis

  • (a) Where the applicant, in a notice submitted to the receiving Office, corrects or adds a priority claim under Rule 26bis , that Office shall enter the correction or addition in the request, draw a line through, while still leaving legible, any indication deleted as a result of the correction, and enter, in the margin, the letters “RO.”
  • (b) The applicant and, if copies of the international application have already been sent to the International Bureau and the International Searching Authority, that Bureau and that Authority shall be promptly notified by the receiving Office of any correction or addition of a priority claim under Rule 26bis and of the date on which it received such correction or addition.

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Section 315    [Deleted]

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Section 316    Procedure in the Case Where the International Application Lacks the Prescribed Signature

Where, under Article 14 (1)(a)(i), the receiving Office finds that the international application is defective in that it lacks the prescribed signature, that Office shall send to the applicant, together with the invitation to correct under Article 14 (1)(b), a copy of the relevant sheet of the request part of the international application. The applicant shall, within the prescribed time limit, return said copy after affixing thereto the prescribed signature.

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Section 317    Transmittal of a Notice of Correction or Addition of a Declaration under Rule 26ter.1

If a notice under Rule 26ter.1 is submitted by the applicant to the receiving Office, that Office shall mark the date of receipt on the notice and transmit it promptly to the International Bureau. The notice shall be considered to have been received by the International Bureau on the date marked.

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Section 318    Cancellation of Designations of Non-Contracting States

The receiving Office shall cancel ex officio the designation of any State which is not a Contracting State, shall enclose that designation within square brackets, shall draw a line between the square brackets while still leaving the designation legible, shall enter, in the margin, the words “CANCELLED EX OFFICIO BY RO” or their equivalent in the language of publication of the international application, and shall promptly notify the applicant accordingly. If the record copy has already been sent to the International Bureau, the receiving Office shall also notify that Bureau.

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Section 319    Procedure under Rule 4.9(b)

  • (a) Where the receiving Office finds that the request contains an indication under Rule 4.9 (b) that the designation of a State is not made but the request does not contain a priority claim to an earlier national application filed in that State, the receiving Office shall promptly notify the applicant accordingly and shall draw the applicant’s attention to Rule 26bis .
  • (b) If the receiving Office does not, before the expiration of the time limit under Rule 26bis .1 (a), receive a notice correcting or adding a priority claim to an earlier national application filed in the State, the designation of which is not made, it shall cancel ex officio the indication under Rule 4.9 (b), shall enclose that indication in square brackets, draw a line between the square brackets while still leaving the indication legible, enter, in the margins, the words “CANCELLED EX OFFICIO BY RO” or their equivalent in the language of publication of the international application, and promptly notify the applicant accordingly. If the record copy has already been sent to the International Bureau, the receiving Office shall also notify that Bureau.

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Section 320    Invitation to Pay Fees under Rule 16 bis.1(a)

When issuing an invitation under Rule 16bis.1 (a), the receiving Office shall, if it received moneys from the applicant before the due date, inform the applicant of the fees to which those moneys have been applied.

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Section 321    Application of Moneys Received by the Receiving Office in Certain Cases

  • (a) The receiving Office shall, to the extent that it has received instructions from the applicant as to the fees to which it shall apply moneys received by it from the applicant, apply those moneys accordingly.
  • (b) Where the receiving Office receives moneys from the applicant which, together with any other moneys so received, are not sufficient to cover in full the transmittal fee (if any), the international filing fee and the search fee (if any), the receiving Office shall, to the extent that it has not received instructions from the applicant as to the fees to which it shall apply the moneys which are available for the purpose, apply those moneys in payment, successively, of the fees set out below to the extent that they are due and unpaid and in the order in which they appear below:
    • (i) the transmittal fee;
    • (ii) the international filing fee;
    • (iii) the search fee.

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Section 322    Invitation to Submit a Request for Refund of the Search Fee

The receiving Office may, before making a refund of the search fee under Rule 16.2 , first invite the applicant to submit a request for the refund.

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Section 323    Transmittal of Priority Documents to International Bureau

  • (a) Any priority document which is submitted to the receiving Office under Rule 17.1 (a) shall be transmitted by that Office to the International Bureau together with the record copy or, if received after the record copy has been sent to the International Bureau, promptly after having been received by that Office.
  • (b) Where the priority document is issued by the receiving Office and the applicant has, not later than 16 months after the priority date, requested the receiving Office under Rule 17.1 (b) to prepare and transmit it to the International Bureau, the receiving Office shall, promptly after receipt of such request (“request for priority document”) and, where applicable, the payment of the fee referred to in that Rule, transmit the priority document to the International Bureau. Where such request for priority document has been made but the required fee has not been paid, the receiving Office shall promptly notify the applicant that the request for priority document will be considered not to have been made unless the fee is paid not later than 16 months after the priority date or, in the case referred to in Article 23 (2), not later than at the time the processing or examination of the international application is requested.
  • (c) When transmitting a priority document, the receiving Office shall notify the International Bureau of the date on which it received the priority document or the request for priority document.
  • (d) Where a request for priority document has, under paragraph (b), been considered not to have been made, the receiving Office shall promptly notify the International Bureau. Where the receiving Office fails to notify the International Bureau accordingly within 17 months from the priority date, the receiving Office shall prepare and transmit the priority document to the International Bureau even though the required fee has not been paid by the applicant.
  • (e) Where a request for priority document has been received by the receiving Office later than 16 months after the priority date, or where such request has, under paragraph (b), been considered not to have been made, the receiving Office shall promptly notify the applicant accordingly, directing attention to the requirements of Rule 17.1 (a).

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Section 324    Copy of Notification of the International Application Number and the International Filing Date under Rule 20.2 (c)

The copy, sent to the International Bureau, of the notification of the international application number and the international filing date under Rule 20.2 (c) shall also include, if the priority of an earlier application is claimed in the international application, the date of filing – as indicated in the international application – of that earlier application. If the priority of several earlier applications is claimed, the earliest filing date shall be indicated.

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Section 325    Corrections of Defects under Rule 26.4 , Rectifications of Obvious Mistakes under Rule 91 , and Corrections under Rule 9.2

  • (a) Where the receiving Office receives a correction of defects under Rule 26.4 or authorizes a rectification of an obvious mistake under Rule 91 , it shall:
    • (i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
    • (ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “SUBSTITUTE SHEET (RULE 26 )” (where the replacement sheet contains a correction of defects under Rule 26 ) or “RECTIFIED SHEET (RULE 91 )” (where the replacement sheet contains the rectification of an obvious mistake under Rule 91 ) or their equivalent in the language of publication of the international application;
    • (iii) indelibly mark on the letter containing the correction or rectification, or accompanying any replacement sheet, the date on which that letter was received;
    • (iv) keep in its files a copy of the letter containing the correction or rectification or, when the correction or rectification is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet, and a copy of the replacement sheet;
    • (v) subject to item (vi), promptly transmit any letter and any replacement sheet to the International Bureau, and a copy thereof to the International Searching Authority;
    • (vi) where transmittals under Article 12 (1) have not yet been made, transmit any letter and any replacement sheet to the International Bureau together with the record copy and, except where the international application is considered withdrawn and Rule 29.1 (iii) applies, a copy of the said letter or replacement sheet to the International Searching Authority together with the search copy. The record copy and the search copy shall contain any replaced sheet.
  • (b) Where the receiving Office refuses to authorize the rectification of an obvious mistake under Rule 91 , it shall proceed as indicated under paragraph (a)(i), (iii) and (iv) and promptly transmit any letter and any proposed replacement sheet to the International Bureau. If the record copy has not yet been sent to the International Bureau, any letter and any proposed replacement sheet shall be transmitted together with the record copy.
  • (c) Where the receiving Office receives corrections aimed at complying with Rule 9.1 , paragraphs (a) and (b) shall apply mutatis mutandis, provided that, where a sheet is marked as indicated in paragraph (a)(ii), the words “SUBSTITUTE SHEET (RULE 9.2 )” shall be used.

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Section 326    Withdrawal by Applicant under Rule 90 bis.1, 90bis.2 or 90bis.3

  • (a) The receiving Office shall promptly transmit to the International Bureau any notice from the applicant effecting withdrawal of the international application under Rule 90bis.1 , of a designation under Rule 90bis.2 or of a priority claim under Rule 90bis.3 which has been filed with it together with an indication of the date of receipt of the notice. If the record copy has not yet been sent to the International Bureau, the receiving Office shall transmit the said notice together with the record copy.
  • (b) If the search copy has already been sent to the International Searching Authority and the international application is withdrawn under Rule 90bis.1 or a priority claim is withdrawn under Rule 90bis.3 , the receiving Office shall promptly transmit a copy of the notice effecting withdrawal to the International Searching Authority.
  • (c) If the search copy has not yet been sent to the International Searching Authority and the international application is withdrawn under Rule 90bis.1 , the receiving Office shall not send the search copy to the International Searching Authority and shall, subject to Section 322 , refund the search fee to the applicant unless it has already been transferred to the International Searching Authority. If the search fee has already been transferred to the International Searching Authority, the receiving Office shall send a copy of the request and of the notice effecting withdrawal to that Authority.
  • (d) If the search copy has not yet been sent to the International Searching Authority and a priority claim is withdrawn under Rule 90bis.3 , the receiving Office shall transmit a copy of the notice effecting withdrawal to the International Searching Authority together with the search copy.

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Section 327    Ex Officio Correction of Request by the Receiving Office

  • (a) Subject to paragraph (d), where the record copy has not yet been sent to the International Bureau and the request requires correction because it contains an inconsistency or a minor defect such as non-compliance with the requirement for indications under Section 115 , the receiving Office may correct the request ex officio. If the receiving Office does so, it shall notify the applicant accordingly.
  • (b) When making a correction under paragraph (a), the receiving Office shall enter, in the margin, the letters “RO.” Where any matter is to be deleted, the receiving Office shall enclose such matter within square brackets and shall draw a line between the square brackets while still leaving the deleted matter legible. Where any matter is to be replaced, both the first and second sentences of this paragraph shall apply.
  • (c) The receiving Office shall check the number of characters of the file reference, if any, and shall delete any characters beyond the number permitted by Section 109 .
  • (d) The receiving Office shall not make any ex officio correction to declarations referred to in Rule 4.17 which are contained in the request.

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Section 328    Notifications Concerning Representation

  • (a) Where a power of attorney or a document containing the revocation or renunciation of an appointment is submitted to the receiving Office and the record and search copies have already been transmitted, the receiving Office shall immediately notify the International Bureau and the International Searching Authority by sending them a copy of the power of attorney or document and request the International Bureau to record a change in the indications concerning the agent or common representative under Rule 92bis.1 (a)(ii).
  • (b) If the record copy and/or search copy have not yet been transmitted by the receiving Office, a copy of the power of attorney or document containing the revocation or renunciation of an appointment shall be transmitted by the receiving Office with the record copy and/or search copy.

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Section 329    Correction of Indications Concerning the Applicant’s Residence or Nationality

Where, in response to an invitation to correct a defect under Article 11 (1)(i), evidence is submitted indicating to the satisfaction of the receiving Office that, in fact, the applicant had, on the date on which the international application was actually received, the right to file an international application with that receiving Office, the invitation shall be considered to be an invitation to correct a defect under Article 14 (1)(a)(ii) and Rule 4.5 in the prescribed indications concerning the applicant’s residence and/or nationality, and the applicant may correct those indications accordingly. If such correction is made, no defect shall be considered to exist under Article 11 (1)(i).

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Section 330    Transmittal of Record Copy Prevented or Delayed by National Security Prescriptions

  • (a) Where prescriptions concerning national security prevent the transmittal of the record copy by the receiving Office to the International Bureau under Rule 22.1 (a), the receiving Office shall notify the applicant and the International Bureau accordingly .
  • (b) The notifications under paragraph (a) shall be sent before the expiration of 13 months from the priority date. Where the receiving Office believes that national security clearance is imminent, it may postpone the sending of the notifications, but shall send them before the expiration of 17 months from the priority date if no clearance has been given by that time.

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Section 331    Receipt of Confirmation Copy

Where, subject to Rule 92.4 , the receiving Office receives an international application by facsimile machine transmission and subsequently receives the original of that international application, it shall mark such original with the words “CONFIRMATION COPY” or their equivalent in the language of publication of the international application on the bottom of the first page of the request and on the first page of the description. The marking under Section 325 is not required in such a case. The international application as received by facsimile machine transmission shall constitute the record copy. The confirmation copy shall be transmitted to the International Bureau in addition to the record copy.

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Section 332    Notification of Languages Accepted by the Receiving Office under Rules 12.1 (a) and (c) and 12.4 (a)

  • (a) Each receiving Office shall notify the International Bureau of the language or languages which, having regard to Rule 12.1 (b), it is prepared to accept under Rule 12.1 (a) for the filing of international applications.
  • (b) Each receiving Office shall notify the International Bureau of any change to the information notified under paragraphs (a), (d) and (e). If the change means that
    • (i) the receiving Office is no longer prepared to accept the filing of international applications in a language that it had previously notified the International Bureau that it was prepared to accept; or
    • (ii) the receiving Office is no longer prepared to accept the translation of international applications into a language of publication that it had previously notified the International Bureau that it was prepared to accept; or
    • (iii) the receiving Office is no longer prepared to accept the filing of requests in a language that it had previously notified the International Bureau that it was prepared to accept,

    the effective date of such change shall be two months after the date of publication of the notification of the change in the Gazette pursuant to Section 405 or such later date as may be determined by the receiving Office.

  • (c) Nothing in paragraph (a), (b), (d) or (e) prevents any receiving Office from accepting, in a particular case,
    • (i) the filing of an international application in a language that it has not notified the International Bureau that it is prepared to accept; or
    • (ii) the translation of an international application into a language of publication that it has not notified the International Bureau that it is prepared to accept; or
    • (iii) the filing of a request in a language that it has not notified the International Bureau that it is prepared to accept.
  • (d) Each receiving Office concerned shall notify the International Bureau of the language or languages which it is prepared to accept under Rule 12.4 (a) for the translation of international applications into a language of publication.
  • (e) Each receiving Office shall notify the International Bureau of the language or languages which it is prepared to accept under Rule 12.1 (c) for the filing of requests.

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Section 333    Transmittal of International Application to the International Bureau as Receiving Office

  • (a) Where a national Office intends to proceed under Rule 19.4 (b) having regard to Rule 19.4 (a)(i) or (ii), it shall, if it requires payment of the fee referred to in Rule 19.4 (b) and that fee has not already been paid, promptly invite the applicant to pay that fee within a time limit of 15 days from the date of the invitation.
  • (b) Where a national Office intends to proceed under Rule 19.4 (b) having regard to Rule 19.4 (a)(iii), it shall promptly request the International Bureau as receiving Office to agree to the transmittal of the international application. The International Bureau as receiving Office shall promptly respond to that request. If the International Bureau as receiving Office agrees to the transmittal, the national Office shall promptly invite the applicant:
    • (i) if the transmittal has not already been authorized by the applicant, to submit to that Office, within a time limit of 15 days from the date of the invitation, an authorization of the transmittal, and,
    • (ii) if the Office requires payment of the fee referred to in Rule 19.4 (b) and that fee has not already been paid, to pay that fee within the time limit referred to in item (i).
  • (c) The national Office:
    • (i) need not proceed under Rule 19.4 (b) having regard to Rule 19.4 (a)(i) to (iii) if the Office requires payment of the fee referred to in Rule 19.4 (b) and the applicant does not pay that fee;
    • (ii) shall not proceed under Rule 19.4 (b) having regard to Rule 19.4 (a)(iii) if the International Bureau as receiving Office does not agree to, or if the applicant does not authorize, the transmittal of the international application under Rule 19.4 (a)(iii).

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Section 334    Notification to Applicant of Submission of Demand after the Expiration of 19 Months from the Priority Date

Where the demand is submitted after the expiration of 19 months from the priority date to a receiving Office and the time limit under Article 22 (1), as in force from April 1 2002, does not apply in respect of all designated Offices, the receiving Office shall:

  • (i) promptly notify the applicant accordingly, directing attention to the fact that the time limit under Article 39 (1)(a) does not apply, and that Article 22 (1), as in force until March 31, 2002, continues to apply in respect of any such designated Office, and
  • (ii) proceed under Rule 59.3 .

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Section 335    Transmittal of PCT-EASY Request Data and Abstract

The request data and abstract contained on a PCT-EASY physical medium furnished to the receiving Office in accordance with Section 102bis shall be transmitted by that Office to the International Bureau, in a form and manner agreed upon by that Office and that Bureau, at the same time as the record copy.

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Section 336    Waivers under Rules 90.4 (d) and 90.5 (c)

  • (a) Where, in accordance with Rule 90.4 (d), a receiving Office waives the requirement under Rule 90.4 (b) that a separate power of attorney be submitted to it, the receiving Office shall notify the International Bureau accordingly.
  • (b) Where, in accordance with Rule 90.5 (c), a receiving Office waives the requirement under Rule 90.5 (a)(ii) that a copy of a general power of attorney be attached to the request or any separate notice, the receiving Office shall notify the International Bureau accordingly.
  • (c) A receiving Office may require a separate power of attorney, or a copy of a general power of attorney, in particular instances even if the receiving Office has waived the requirement in general.
  • (d) A receiving Office which has notified the International Bureau under paragraph (a) or (b) shall notify the International Bureau of any change to the information notified under those paragraphs.

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Section 337    Transmittal of copy of results of earlier search

Where the applicant has

  • (i) submitted a copy of the results of an earlier search to the receiving Office under Rule 12bis .1(a) together with the international application; or
  • (ii) requested the receiving Office under Rule 12 bis.1 (c) to prepare and transmit a copy of the results of the earlier search, a copy of the earlier application concerned and/or a copy of any document cited in the results of the earlier search;

the receiving Office shall promptly transmit any such copy to the International Searching Authority, preferably together with the search copy.

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PART 4 - INSTRUCTIONS RELATING TO THE INTERNATIONAL BUREAU

4

Section 401    Marking of the Sheets of the Record Copy

  • (a) The International Bureau shall, upon receipt of the record copy, mark the date of receipt of the record copy in the appropriate space on the request.
  • (b) If the receiving Office has failed to mark any sheet as provided in Sections 311 and 325 , the marking which has not been made may be inserted by the International Bureau.

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Section 402    Correction or Addition of a Priority Claim under Rule 26 bis

  • (a) Where the applicant, in a notice submitted to the International Bureau, corrects or adds a priority claim under Rule 26bis , that Bureau shall enter the correction or addition in the request, draw a line through, while still leaving legible, any indication deleted as a result of the correction, and enter, in the margin, the letters “IB”.
  • (b) [Deleted]
  • (c) The applicant, the receiving Office and the International Searching Authority shall be promptly notified by the International Bureau of any correction or addition of a priority claim under Rule 26bis and of the date on which it received such correction or addition.
  • (d) [Deleted]

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Section 403    Transmittal of Protest Against Payment of Additional Fees and Decision Thereon Where International Application Is Considered to Lack Unity of Invention

Where, under Rules 40.2 (c) or 68.3(c), the International Bureau receives a request from the applicant to forward to any designated or elected Office the texts of both the protest against payment of additional fees as provided for in Articles 17(3)(a) and 34(3)(a) where the international application is considered to lack unity of invention and the decision thereon by the International Searching Authority or the International Preliminary Examining Authority, as the case may be, it shall proceed according to such request.

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Section 404    International Publication Number of International Application

The International Bureau shall assign to each published international application an international publication number which shall be different from the international application number. The international publication number shall be used on the published international application and in the Gazette entry. It shall consist of the two-letter code “WO” followed by a four-digit indication of the year of publication, a slant, and a serial number consisting of six digits (e.g., “WO 2004/123456”).

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Section 405    Publication of Notifications of Languages Accepted by the receiving Office under Rules 12.1 (a) and (c) and 12.4 (a)

The International Bureau shall promptly publish in the Gazette any notification under Section 332 (a), (b), (d), or (e).

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Section 406    Publication of International Applications

  • (a) International applications shall be published on a given day of the week.
  • (b) International applications may be published, for the purposes of Article 21, on paper or wholly or partly in electronic form.
  • (c) Details concerning the publication of international applications, and the form and particulars of the front page of each published international application, shall be decided by the Director General, after consultation with the Offices or Authorities which have a direct interest in those details.

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Section 407    The Gazette

  • (a) The Gazette referred to in Rule 86.1 shall be published in electronic form on the Internet. It may be made available by any other electronic means as determined by the Director General after consultation with the Offices or Authorities which have a direct interest in the means by which the Gazette is published.
  • (b) In addition to the contents specified in Rule 86.1 , the Gazette shall contain, in respect of each published international application, the data indicated in Annex D.
  • (c) The information referred to in Rule 86.1 (a)(v) shall be that which is indicated in Annex E.
  • (d) Details concerning the form and further particular content of the Gazette shall be decided by the Director General after consultation with Offices and Authorities which have a direct interest in those details.

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Section 408    Priority Application Number

  • (a) [Deleted]
  • (b) If the number of the earlier application referred to in Rule 4.10 (a)(ii) (“priority application number”) is furnished after the expiration of the prescribed time limit, the International Bureau shall inform the applicant and the designated Offices of the date on which the said number was furnished. It shall indicate the said date in the international publication by including on the front page of the published international application next to the priority application number the words “FURNISHED LATE ON... (date),” and the equivalent of such words in the language in which the international application is published if that language is other than English.
  • (c) If the priority application number has not been furnished at the time of the completion of the technical preparations for international publication, the International Bureau shall indicate that fact by including on the front page of the published international application in the space provided for the priority application number the words “NOT FURNISHED” and the equivalent of such words in the language in which the international application is published if that language is other than English.

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Section 409    Priority Claim Considered Not to Have Been Made

Where the International Bureau declares, under Rule 26bis.2 (b), that a priority claim is considered not to have been made, that Bureau shall enclose the priority claim concerned within square brackets, draw a line between the square brackets, while still leaving legible the indications concerned, and enter, in the margin, the words “NOT TO BE CONSIDERED FOR PCT PROCEDURE (IB)” or their equivalent in the language of publication of the international application, and shall notify the applicant accordingly. The International Bureau shall also notify the receiving Office and the International Searching Authority.

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Section 410    Numbering of Sheets for the Purposes of International Publication; Procedure in Case of Missing Sheets

  • (a) In the course of preparing the international application for international publication, the International Bureau shall sequentially renumber the sheets to be published only when necessitated by the addition of any new sheet, the deletion of entire sheets or a change in the order of the sheets. Otherwise, the numbering provided under Section 207 shall be maintained.
  • (b) Where a sheet has not been filed or is not to be taken into consideration for the purposes of international processing under Section 310bis or 310ter, the International Bureau shall include an indication to that effect in the published international application.

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Section 411    Receipt of Priority Document

  • (a) The International Bureau shall, in respect of any priority document received or obtained by it, record the date on which the priority document has been received or obtained by it, and notify the applicant and the designated Offices accordingly. The notification should indicate whether the priority document was or was not submitted,transmitted, or obtained in compliance with Rule 17.1 (a),(b) or (b- bis), and with respect to the designated Offices, should preferably be made together with the notification under Rule 47.1 (a- bis).
  • (b) Where the priority document has been submitted, transmitted, or obtained but not in compliance with Rule 17.1 (a),(b) or (b- bis), the International Bureau shall, in the notification under paragraph (a) of this Section, direct the attention of the applicant and the designated Offices to the provisions of Rule 17.1 (c).

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Section 411 bis    Receipt of Translation of Earlier Application under Rule 20.6(a)(iii)

The International Bureau shall indicate the words “TRANSLATION (RULE 20.6 (a)(iii))”, or their equivalent in French, on any translation received under Rule 20.6 (a)(iii).

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Section 412    Notification of Lack of Transmittal of Search Copy

If the International Bureau does not receive from the International Searching Authority a notification under Rule 25.1 within two months from the date of receipt of the record copy, the International Bureau shall remind the receiving Office to transmit the search copy to the International Searching Authority. A copy of the reminder shall be sent to the International Searching Authority.

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Section 413    Incorporations by Reference under Rule 20, Corrections of Defects under Rule 26.4, Rectifications of Obvious Mistakes under Rule 91, and Corrections under Rule 9.2

  • (a) Where the International Bureau receives from the receiving Office a letter containing a correction of any defects under Rule 26.4 , or a replacement sheet and the letter accompanying it, the International Bureau shall transfer the correction to the record copy, together with the indication of the date on which the receiving Office received the letter, or shall insert the replacement sheet in the record copy. Any letter and any replaced sheet shall be kept in the file of the international application.
  • (b) Paragraph (a) shall apply mutatis mutandis to rectifications of obvious mistakes under Rule 91 authorized by the receiving Office, by the International Searching Authority or, where a demand has been made, by the International Preliminary Examining Authority and to corrections submitted by the applicant to the receiving Office or the International Searching Authority aimed at complying with the prescription of Rule 9.1 concerning certain expressions, drawings, statements or other matter.

    (b- bis) Where the International Bureau receives from the receiving Office, under Sections 309(c)(iv) , 310(b)(iv) , or 310bis(b)(v) , corrected sheets of the request or later submitted sheets, the International Bureau shall transfer any correction to the record copy and insert any later submitted sheets in the record copy.

  • (c) Where the International Bureau is notified by the International Searching Authority under Rule 43.6bis (b) that the rectification of an obvious mistake authorized under Rule 91 has not been taken into account for the purposes of the international search, the International Bureau shall notify the applicant, the designated Offices and, where a demand has been made, the International Preliminary Examining Authority accordingly.
  • (d) Where the International Bureau is notified by the International Preliminary Examining Authority under Rule 70.2 (e) that the rectification of an obvious mistake authorized under Rule 91 has not been taken into account for the purposes of the international preliminary examination, the International Bureau shall notify the applicant and the elected Offices accordingly.

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Section 413 bis    Rectifications of Obvious Mistakes under Rule 91

  • (a) Where the International Bureau authorizes a rectification under Rule 91 , it shall:
    • (i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
    • (ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “RECTIFIED SHEET (RULE 91 )” or their equivalent in the language of publication of the international application;
    • (iii) indelibly mark on the letter containing the rectification or accompanying any replacement sheet the date on which that letter was received;
    • (iv) keep in its files a copy of the letter containing the rectification or, when the rectification is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet, and a copy of the replacement sheet.
  • (b) Where the International Bureau refuses to authorize a rectification under Rule 91 , it shall proceed as indicated under paragraph (a)(i), (iii) and (iv).
  • (c) Where the International Bureau authorizes or refuses to authorize the rectification of an obvious mistake under Rule 91 , it shall notify the applicant, the International Searching Authority, where a demand has been made, the International Preliminary Examining Authority, as well as the designated or elected Offices accordingly and, where the International Bureau refuses to authorize a rectification, the notification shall also include the reasons for the refusal.

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Section 414    Notification to the International Preliminary Examining Authority Where the International Application is Considered Withdrawn

If a demand has been submitted and the international application is considered withdrawn under Article 14 (1), (3) or (4), the International Bureau shall promptly notify the International Preliminary Examining Authority, unless the international preliminary examination report has already issued.

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Section 415    Notification of Withdrawal Under Rule 90bis.1 , 90bis.2 , 90bis.3 , 90bis.3bis or 90bis.4

  • (a) The fact of withdrawal by the applicant of the international application under Rule 90bis.1 , of designations under Rule 90bis.2 , or of a priority claim under Rule 90bis.3 , together with the date on which the notice effecting withdrawal reached the International Bureau, the International Preliminary Examining Authority or the receiving Office, shall be recorded by the International Bureau and promptly notified by it to the receiving Office, the applicant, the designated Offices affected by the withdrawal and, where the withdrawal concerns the international application or a priority claim and where the international search report, or the declaration referred to in Article 17 (2)(a), and the written opinion of the International Searching Authority have not yet issued, the International Searching Authority. However, where the withdrawal concerns the international application and where the notice effecting withdrawal was filed with the receiving Office before the sending of the record copy to the International Bureau, that Bureau shall send the notifications referred to in the preceding sentence and in Rule 24.2 (a) to the receiving Office and the applicant only.
  • (b) If, at the time of the withdrawal of the international application under Rule 90bis.1 , or of a priority claim under Rule 90bis.3 , a demand has already been submitted and the international preliminary examination report has not yet issued, the International Bureau shall, unless the notice effecting withdrawal was submitted to the International Preliminary Examining Authority, promptly notify the fact of withdrawal to that Authority, together with the date on which the notice effecting withdrawal has reached the International Bureau or the receiving Office.
  • (c) If, at the time of the withdrawal of the international application under Rule 90bis.1 , or of a priority claim under Rule 90bis.3 , a supplementary search request has already been submitted and the supplementary international search report has not yet been established, the International Bureau shall promptly notify the fact of withdrawal to the Authority specified for supplementary search, together with the date on which the notice effecting withdrawal has reached the International Bureau or the receiving Office.
  • (d) The fact of withdrawal by the applicant of the supplementary search request under Rule 90 bis.3 bis, together with the date on which the notice effecting withdrawal was, or was considered to have been, submitted to the International Bureau, shall be promptly notified by that Bureau:
    • (i) to the applicant, and
    • (ii) to the Authority specified for supplementary search, unless the notice effecting withdrawal was submitted to that Authority.
  • (e) The fact of withdrawal by the applicant of the demand or of one or more elections under Rule 90bis.4 , together with the date on which the notice effecting withdrawal was, or was considered to have been, submitted to the International Bureau, shall be promptly notified by that Bureau:
    • (i) to the applicant,
    • (ii) to each elected Office affected by the withdrawal, except where it has not yet been notified of its election, and
    • (iii) in the case of withdrawal of the demand or of all elections, to the International Preliminary Examining Authority, unless the notice effecting withdrawal was submitted to that Authority.

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Section 416    Correction of Request in Record Copy

  • (a) Where the request requires correction as a consequence of the withdrawal of a designation or of a change made under Rule 92bis , the International Bureau shall make the necessary correction in the record copy and shall notify the applicant and the receiving Office accordingly.
  • (b) When making a correction under paragraph (a), the International Bureau shall enter, in the margin, the letters “IB.” Where the correction involves the deletion or replacement of some matter, the International Bureau shall enclose such matter within square brackets and shall draw a line between the square brackets while still leaving the deleted or replaced matter legible.

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Section 417    Processing of Amendments Under Article 19

  • (a) The International Bureau shall record the date on which, under Rule 46.1 , any amendment made under Article 19 was received, shall notify the applicant of that date and indicate it in any publication or copy issued by it.
  • (b) The International Bureau shall mark, in the upper right-hand corner of each replacement sheet submitted under Rule 46.5 (a), the international application number, the date on which that sheet was received under Rule 46.1 and, in the middle of the bottom margin, the words “AMENDED SHEET ( ARTICLE 19 ).” It shall keep in its files any replaced sheet and the letter accompanying the replacement sheet or sheets.
  • (c) The International Bureau shall insert any replacement sheet or sheets in the record copy.
  • (d) If, at the time when the demand is received by the International Bureau, the international search report and the written opinion of the International Searching Authority have been established and no amendments under Article 19 have been made, the International Bureau shall inform the International Preliminary Examining Authority accordingly, unless the Authority has informed the International Bureau that it wishes not to be so notified.

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Section 418    Notifications to Elected Offices Where the Demand Is Considered Not to Have Been Submitted or Made

Where, after any elected Office has been notified of its election under Article 31 (7), the demand is considered not to have been submitted or made, the International Bureau shall notify the said Office accordingly.

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Section 419    Processing of a Declaration under Rule 26ter

  • (a)  Where any declaration referred to in Rule 4.17 , or any correction thereof under Rule 26ter .1, is submitted to the International Bureau within the time limit under Rule 26ter .1, the International Bureau shall indicate the date on which it received the declaration or correction and insert the additional sheet or replacement sheet in the record copy.
  • (b) The International Bureau shall promptly notify the applicant, the receiving Office and the International Searching Authority of any declaration corrected or added under Rule 26ter .1.
  • (c) The International Bureau shall not make any ex officio correction to declarations referred to in Rule 4.17 which are contained in the request.
  • (d) Where any declaration referred to in Rule 4.17 , or any correction thereof under Rule 26ter .1, is submitted to the International Bureau after the expiration of the time limit under Rule 26ter .1, the International Bureau shall notify the applicant accordingly and inform the applicant that such a declaration or correction should be submitted directly to the designated Office or Offices concerned. Any declaration referred to in Rule 4.17 (iv), signed as prescribed in Section 214 , which is submitted to the International Bureau after the expiration of the time limit under Rule 26ter .1 shall be returned to the applicant.

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Section 420    Copy of International Application,International Search Report and Supplementary International Search Report for the International Preliminary Examining Authority

  • (a) Where the International Preliminary Examining Authority is not part of the same national Office or intergovernmental organization as the International Searching Authority, the International Bureau shall, promptly upon receipt of the international search report or, if the demand was received after the international search report, promptly upon receipt of the demand, send a copy of the international application, the international search report and, where applicable, a copy of the English translation of the said report to the International Preliminary Examining Authority. In cases where, instead of the international search report, a declaration under Article 17(2)(a) was issued, references in the preceding sentence to the international search report shall be considered references to the said declaration.
  • (b) Where an Authority specified for supplementary search has established a supplementary international search report under Rule 45bis.7 , and the International Preliminary Examining Authority is not part of the same national Office or intergovernmental organization as the Authority specified for supplementary search, the International Bureau shall, promptly upon receipt of the supplementary international search report, send a copy of the supplementary international search report and, where applicable, a copy of the English translation of the said report to the International Preliminary Examining Authority ( Rule 45bis.8(c) ). In cases where, instead of the supplementary international search report, a declaration under Article 17(2)(a) was issued, references in the preceding sentence to the supplementary international search report shall be considered references to the said declaration.

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Section 421    Invitation to Furnish a Copy of the Priority Document

Where a request for a copy of the application whose priority is claimed in the international application is made under Rule 43bis.1 (b) by the International Searching Authority or, under Rule 66.7 (a), by either the International Searching Authority, or the International Preliminary Examining Authority before the International Bureau has received the priority document under Rule 17.1 , the International Bureau shall, unless the applicable time limit referred to in Rule 17.1 (a) has already expired, inform the applicant of such request and remind him of the requirements of Rule 17.1 .

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Section 422    Notifications Concerning Changes Recorded Under Rule 92 bis.1

  • (a) The International Bureau shall give notifications concerning changes recorded by it under Rule 92bis.1 (a), except changes which are the subject of notifications under Section 425 :
    • (i) to the receiving Office;
    • (ii) as long as the international search report, or the declaration referred to in Article 17 (2)(a), and the written opinion of the International Searching Authority have not been established, to the International Searching Authority;
    • (iii) to the designated Offices unless the change can be duly reflected in the published international application used for the purposes of the communication under Article 20 ;
    • (iv) as long as the international preliminary examination report has not been established, to the International Preliminary Examining Authority;
    • (v) to the elected Offices, unless the change can be duly reflected in the published international application used for the purposes of the communication under Article 20 ;
    • (vi) to the applicant; where the change consists of a change in the person of the applicant, the notification shall be sent to the earlier applicant and the new applicant, provided that, where the earlier applicant and the new applicant are represented by the same agent, one notification only shall be sent to the said agent.
  • (b) Where Rule 92bis.1 (b) applies, the International Bureau shall notify the applicant accordingly and, if the change was requested by the receiving Office, that Office.

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Section 422 bis    Objections Concerning Changes in the Person of the Applicant Recorded under Rule 92 bis.1(a)

  • (a) Where a change recorded by the International Bureau under Rule 92bis.1 (a):
    • (i) consists of a change in the person of the applicant, and
    • (ii) the request under Rule 92bis.1 (a) was not signed by or on behalf of both the earlier and the new applicant, and
    • (iii) the earlier applicant objects to the change in writing,

the change under Rule 92bis.1 (a) shall be considered as if it had not been recorded.

  • (b) Where paragraph (a) applies, the International Bureau shall notify all those who received a notification under Section 422 (a) accordingly.

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Section 423    Cancellation of Designations and Elections

  • (a) The International Bureau shall, if the receiving Office has failed to do so, cancel ex officio the designation of any State which is not a Contracting State, shall enclose that designation within square brackets, draw a line between the square brackets while still leaving the designation legible, enter, in the margin, the words “CANCELLED EX OFFICIO BY IB” or their equivalent in French, and notify the applicant and the receiving Office accordingly.
  • (b) The International Bureau shall cancel ex officio:
    • (i) the election of any State which is not a designated State;
    • (ii) the election of any State not bound by Chapter II of the Treaty, if the International Preliminary Examining Authority has failed to do so.
  • (c) The International Bureau shall enclose the cancelled election within square brackets, draw a line between the square brackets while still leaving the election legible, enter, in the margin, the words “CANCELLED EX OFFICIO BY IB” or their equivalent in French, and notify the applicant and, if the election is in the demand, the International Preliminary Examining Authoring accordingly.

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Section 424    Procedure under Rule 4.9(b)

  • (a) Where the International Bureau finds, if the Receiving Office has failed to do so, that the request contains an indication under Rule 4.9 (b) that the designation of a State is not made but the request does not contain a priority claim to an earlier national application filed in that State, the International Bureau shall promptly notify the applicant accordingly and shall draw the applicant’s attention to Rule 26bis .
  • (b) If the International Bureau does not, before the expiration of the time limit under Rule 26bis.1 (a), receive a notice correcting or adding a priority claim to an earlier national application filed in the State, the designation of which is not made, it shall cancel ex officio the indication under Rule 4.9 (b), shall enclose that indication in square brackets, draw a line between the square brackets while still leaving the indication legible, enter, in the margins, the words “CANCELLED EX OFFICIO BY IB” or their equivalent in French, and notify the applicant and the receiving Office accordingly.

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Section 425    Notifications Concerning Representation

Where a power of attorney or a document containing the revocation or renunciation of an appointment is submitted to the International Bureau, the International Bureau shall immediately notify the receiving Office, the International Searching Authority, the Authority specified for supplementary search and the International Preliminary Examining Authority by sending them a copy of the power of attorney or document and shall record a change in the indications concerning the agent or common representative under Rule 92bis . In the case of a renunciation of an appointment, the International Bureau shall also notify the applicant. Where the International Bureau receives a notification concerning representation under Section 328 , it shall immediately notify the Authority specified for supplementary search and the International Preliminary Examining Authority accordingly.

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Section 426    [Deleted]

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Section 427    [Deleted]

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Section 428    [Deleted]

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Section 429    [Deleted]

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Section 430    Notification of Designations under Rule 32

Where the effects of any international application are extended to a successor State under Rule 32.1 (a), the International Bureau shall promptly, but not before the international publication of the international application, effect the communication under Article 20 to the designated Office concerned, and notify that Office under Rule 47.1 (a- bis)

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Section 431    Publication of Notice of Submission of Demand

  • (a) For international applications in respect of which a demand is filed before January 1, 2004, the publication in the Gazette of information on the demand and the elected States concerned, as referred to in Rule 61.4 , as in force until December 31, 2003, shall consist of a notice indicating that a demand has been submitted prior to the expiration of 19 months from the priority date and, as applicable, indicating that all eligible States have been elected or, where not all eligible States have been elected, indicating those eligible States which have not been elected.
  • (b) For international applications in respect of which a demand is filed on or after January 1, 2004, the publication in the Gazette of information on the demand and the elected States concerned, as referred to in Rule 61.4 , as in force from January 1, 2004, shall consist of a notice indicating that a demand has been submitted prior to the expiration of the applicable time limit under Rule 54bis.1 (a) and that all Contracting States which were designated and were bound by Chapter II of the Treaty have been elected. Where the demand is made subsequent to the expiration of 19 months from the priority date and the time limit under Article 22 (1), as in force from April 1, 2002, does not apply in respect of all designated Offices, the notice shall also indicate that fact.

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Section 432    Notification to Applicant of Submission of Demand after the Expiration of 19 Months from the Priority Date

Where the demand is submitted after the expiration of 19 months from the priority date and subsequently transmitted to the International Bureau under Rule 59.3 (a), or is submitted after the expiration of 19 months from the priority date to the International Bureau, and the time limit under Article 22 (1), as in force from April 1, 2002, does not apply in respect of all designated Offices, the International Bureau shall, together with the notification sent to the applicant under Rule 59.3 (c)(i) or the invitation sent to the applicant under Rule 59.3 (c)(ii), as the case may be:

  • (i) promptly notify the applicant accordingly, directing attention to the fact that the time limit under Article 39 (1)(a) does not apply, and that Article 22 (1), as in force until March 31, 2002, continues to apply in respect of any such designated Office,
  • (ii) proceed under Rule 59.3 .

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Section 433    Waivers under Rule 90.4 (d)

  • (a) Where, in accordance with Rule 90.4 (d), the International Bureau waives the requirement under Rule 90.4 (b) that a separate power of attorney be submitted to it, the International Bureau shall publish a notice of this fact in the Gazette.
  • (b) The International Bureau may require a separate power of attorney in particular instances even if the International Bureau has waived the requirement in general.

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Section 434    Publication of Information Concerning Waivers under 90.4 (d) and 90.5 (c)

  • (a) Any waivers of the requirement under Rule 90.4(b) that a separate power of attorney be submitted, or any changes to the information, notified to the International Bureau under Sections 336(a) , 517(a) , or 617(a) shall be promptly published in the Gazette. The effective date of any change shall be two months after the date of publication of the change in the Gazette, or such later date as may be determined by the International Bureau.
  • (b) Any waivers of the requirement under Rule 90.5(a)(ii) that a copy of a general power of attorney be attached to the request, the demand or any separate notice, or any changes to the information, notified to the International Bureau under Sections 336(b) , 517(b) , or 617(b) shall be promptly published in the Gazette. The effective date of any change shall be two months after the date of publication of the change in the Gazette, or such later date as may be determined by the International Bureau.

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Section 435    Communication of Publications and Documents

  • (a) Subject to paragraph (b), publications under Rule 87.1 and documents under Rule 93bis .1 shall be communicated in electronic form via the International Bureau’s electronic data exchange services.
  • (b) Where so agreed between the International Bureau and the Authority or Office concerned, publications under Rule 87.1 and documents under Rule 93bis .1 may be communicated in other forms and by other means.
  • (c) Pursuant to Rule 93 bis.1 (b), where so agreed between the International Bureau and the Office concerned, the communication of documents under Rule 93bis .1 shall be considered to be effected at the time when the International Bureau makes the document available to that Office in electronic form via the International Bureau’s electronic data exchange services.
  • (d) Technical details concerning the communication of publications under Rule 87.1 and of documents under Rule 93bis .1 shall be agreed between the International Bureau and the Authority or Office concerned.

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Section 436    Preparation, Identification and Transmittal of the Copies of the Translation of the International Application

Where, for the purposes of a supplementary international search, a translation of the international application is furnished under Rule 45 bis.1(c)(i), the International Bureau shall mark the words “TRANSLATION (RULE 45 bis.1(c)(i))” in the upper left-hand corner of the first page of the translation and transmit a copy of that translation to the Authority specified for the supplementary search.

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PART 5 - INSTRUCTIONS RELATING TO THE INTERNATIONAL SEARCHING AUTHORITY

5

Section 501    Corrections Submitted to the International Searching Authority Concerning Expressions, Etc., Not to Be Used in the International Application

Where the International Searching Authority receives corrections aimed at complying with Rule 9.1 , Section 511 shall apply mutatis mutandis, provided that, where a sheet is marked as indicated in Section 511 (a)(ii), the words “SUBSTITUTE SHEET ( RULE 9.2 )” shall be used.

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Section 502    Transmittal of Protest against Payment of Additional Fees and Decision Thereon Where International Application Is Considered to Lack Unity of Invention

The International Searching Authority shall transmit to the applicant, preferably at the latest together with the international search report, any decision which it has taken under Rule 40.2 (c) on the protest of the applicant against payment of additional fees where the international application is considered to lack unity of invention. At the same time, it shall transmit to the International Bureau a copy of both the protest and the decision thereon, as well as any request by the applicant to forward the texts of both the protest and the decision thereon to the designated Offices.

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Section 503    Method of Identifying Documents Cited in the International Search Report and the Written Opinion of the International Searching Authority

Identification of any document cited in the international search report shall be as provided in WIPO Standard ST.14 (Recommendation for the Inclusion of References Cited in Patent Documents). [ Editor’s Note: Published in the WIPO Handbook on Industrial Property Information and Documentation. ] Any document cited in the international search report may be referred to in a shortened form in the written opinion of the International Searching Authority, provided that the reference to the document is unambiguous.

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Section 504    Classification of the Subject Matter of the International Application

  • (a) Where the subject matter of the international application is such that classification thereof requires more than one classification symbol according to the principles to be followed in the application of the International Patent Classification to any given patent document, the international search report shall indicate all such symbols.
  • (b) Where any national classification system is used, the international search report may indicate all the applicable classification symbols also according to that system.
  • (c) Where the subject matter of the international application is classified both according to the International Patent Classification and to any national classification system, the international search report shall, wherever possible, indicate the corresponding symbols of both classifications opposite each other.
  • (d) The version of the International Patent Classification applicable at the time the international application is published under Article 21 shall be used whenever feasible.

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Section 505    Indication of Citations of Particular Relevance in the International Search Report

  • (a) Where any document cited in the international search report is of particular relevance, the special indication required by Rule 43.5 (c) shall consist of the letter(s) “X” and/or “Y” placed next to the citation of the said document.
  • (b) Category “X” is applicable where a document is such that when taken alone, a claimed invention cannot be considered novel or cannot be considered to involve an inventive step.
  • (c) Category “Y” is applicable where a document is such that a claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art.

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Section 506    [Deleted]

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Section 507    Manner of Indicating Certain Special Categories of Documents Cited in the International Search Report

  • (a) Where any document cited in the international search report refers to an oral disclosure, use, exhibition, or other means referred to in Rule 33.1 (b), the separate indication required by that Rule shall consist of the letter “O” placed next to the citation of the said document.
  • (b) Where any document cited in the international search report is a published application or patent as defined in Rule 33.1 (c), the special mention required by that Rule shall consist of the letter “E” placed next to the citation of the said document.
  • (c) Where any document cited in the international search report is not considered to be of particular relevance requiring the use of categories “X” and/or “Y” as provided in Section 505 but defines the general state of the art, it shall be indicated by the letter “A” placed next to the citation of the said document.
  • (d) Where any document cited in the international search report is a document whose publication date occurred earlier than the international filing date of the international application, but later than the priority date claimed in that application, it shall be indicated by the letter “P” next to the citation of the said document.
  • (e) Where any document cited in the international search report is a document whose publication date occurred after the filing date or the priority date of the international application and is not in conflict with the said application, but is cited for the principle or theory underlying the invention, which may be useful for a better understanding of the invention, or is cited to show that the reasoning or the facts underlying the invention are incorrect, it shall be indicated by the letter “T” next to the citation of the document.
  • (f) Where in the international search report any document is cited for reasons other than those referred to in paragraphs (a) to (e), for example:

    — a document which may throw doubt on a priority claim,

    — a document cited to establish the publication date of another citation,

    such document shall be indicated by the letter “L” next to the citation of the document and the reason for citing the document shall be given.

  • (g) Where a document is a member of a patent family, it shall, whenever feasible, be mentioned in the international search report in addition to the one cited belonging as well to this family and should be preceded by the sign ampersand (&). Members of a patent family may also be mentioned on a separate sheet, provided that the family to which they belong shall be clearly identified and that any text matter on that sheet, if not in the English language, shall also be furnished to the International Bureau in English translation.
  • (h) A document whose contents have not been verified by the search examiner but are believed to be substantially identical with those of another document which the search examiner has inspected, may be cited in the international search report in the manner indicated for patent family members in the first sentence of paragraph (g).

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Section 508    Manner of Indicating the Claims to Which the Documents Cited in the International Search Report Are Relevant

  • (a) The claims to which cited documents are relevant shall be indicated by placing in the appropriate column of the international search report:
    • (i) where the cited document is relevant to one claim, the number of that claim; for example, “2” or “17”;
    • (ii) where the cited document is relevant to two or more claims numbered in consecutive order, the number of the first and last claims of the series connected by a hyphen; for example, “1-15” or “2-3”;
    • (iii) where the cited document is relevant to two or more claims that are not numbered in consecutive order, the number of each claim placed in ascending order and separated by a comma or commas; for example, “1, 6” or “1, 7, 10”;
    • (iv) where the cited document is relevant to more than one series of claims under (ii), above, or to claims of both categories (ii) and (iii), above, the series or individual claim numbers and series placed in ascending order using commas to separate the several series, or to separate the numbers of individual claims and each series of claims; for example, “1-6, 9-10, 12-15” or “1, 3-4, 6, 9-11.”
  • (b) Where different categories apply to the same document cited in an international search report in respect of different claims or groups of claims, each relevant claim or group of claims shall be listed separately opposite each indicated category of relevance. Each category and each relevant claim or group of claims may be separated by a line.

The following example illustrates the situation where a document is of particular relevance under Section 505 (b) as to claims 1 to 3 and under Section 505 (c) as to claim 4, and indicates the general state of the art under Section 507 (c) as to claims 11 and 12:

Example of Cited References in PCT Search Report

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Section 509    International Search and Written Opinion of the International Searching Authority on the Basis of a Translation of the International Application

Where the International Searching Authority has carried out the international search and established the written opinion on the basis of a translation of the international application transmitted to that Authority under Rule 23.1 (b), the international search report and the written opinion of the International Searching Authority shall so indicate.

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Section 510    Refund of Search Fee in Case of Withdrawal of International Application

  • (a) Where the international application is withdrawn or is considered withdrawn before the International Searching Authority has started the international search, that Authority shall, subject to paragraphs (b) and (c), refund the search fee to the applicant.
  • (b) If the refund referred to in paragraph (a) is not compatible with the national law of the national Office acting as International Searching Authority and as long as it continues to be not compatible with that law, the International Searching Authority may abstain from refunding the search fee.
  • (c) The International Searching Authority may, before making a refund under paragraph (a), first invite the applicant to submit a request for the refund.

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Section 511    Rectifications of Obvious Errors under Rule 91

  • (a) Where the International Searching Authority authorizes a rectification under Rule 91 , it shall:
    • (i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
    • (ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “RECTIFIED SHEET ( RULE 91 )” or their equivalent in the language of publication of the international application as well as an indication of the International Searching Authority as provided for in Section 107 (b);
    • (iii) indelibly mark on the letter containing the rectification or accompanying any replacement sheet the date on which that letter was received;
    • (iv) keep in its files a copy of the letter containing the rectification or, when the rectification is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet, and a copy of the replacement sheet;
    • (v) promptly transmit any letter and any replacement sheet to the International Bureau and a copy thereof to the receiving Office.
  • (b) Where the International Searching Authority refuses to authorize a rectification under Rule 91 , it shall proceed as indicated under paragraph (a)(i), (iii), and (iv) and promptly transmit any letter and any proposed replacement sheet to the International Bureau.

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Section 512    Notifications Concerning Representation

Where a power of attorney or a document containing the revocation or renunciation of an appointment is submitted to the International Searching Authority, that Authority shall immediately notify the International Bureau by sending it a copy of the power of attorney or document and request the International Bureau to record a change in the indications concerning the agent or common representative under Rule 92bis.1 (a)(ii).

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Section 513    Sequence Listings

  • (a) Where the International Searching Authority receives a correction of a defect under Rule 13ter.1 (f), it shall:
    • (i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
    • (ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “SUBSTITUTE SHEET ( RULE 13ter.1 (f))” or their equivalent in the language of publication of the international application;
    • (iii) indelibly mark on the letter containing the correction, or accompanying any replacement sheet, the date on which that letter was received;
    • (iv) keep in its files a copy of the letter containing the correction or, when the correction is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet, and a copy of the replacement sheet;
    • (v) promptly transmit any letter and any replacement sheet to the International Bureau, and a copy thereof to the receiving Office.
  • (b) Where the international search report and the written opinion of the International Searching Authority are based on a sequence listing not forming part of the international application but furnished for the purposes of the international search, the international search report and the written opinion of the International Searching Authority shall so indicate.
  • (c) Where a meaningful international search cannot be carried out and a meaningful written opinion, as to whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious) and to be industrially applicable, cannot be established because a sequence listing is not available to the International Searching Authority in the required form, that Authority shall so state in the international search report or declaration referred to in Article 17 (2)(a), and in the written opinion.
  • (d) The International Searching Authority shall indelibly mark, on the first sheet of any sequence listing on paper which does not form part of the international application but was furnished for the purposes of the international search, the words “SEQUENCE LISTING NOT FORMING PART OF THE INTERNATIONAL APPLICATION” or their equivalent in the language of publication of the international application. Where such sequence listing is furnished in electronic form on a physical medium, that Authority shall physically label that medium accordingly.
  • (e) The International Searching Authority shall:
    • (i) keep in its files one copy of any sequence listing, whether on paper or in electronic form, which does not form part of the international application but was furnished for the purposes of the international search; and
    • (ii) where the sequence listing which does not form part of the international application but was furnished for the purposes of the international search is in electronic form, transmit one copy thereof to the International Bureau together with the copy of the international search report. If that listing in electronic form is filed on a physical medium in less than the number of copies required by the International Searching Authority, that Authority shall be responsible for the preparation of the additional copy and shall have the right to fix a fee for performing that task and to collect such fee from the applicant.
  • (f) Any International Searching Authority which requires, for the purposes of the international search, the furnishing of a sequence listing in electronic form shall notify the International Bureau accordingly. In that notification, the Authority shall specify the means of transmittal of the sequence listing in electronic form accepted by it in accordance with Annex F. The International Bureau shall promptly publish details of the notification in the Gazette.

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Section 514    Authorized Officer

The officer of the International Searching Authority responsible for the international search report, as referred to in Rule 43.8 , and for the written opinion of the International Searching Authority, as referred to in Rule 43bis.1 (b), means the person who actually performed the search work and prepared the search report and the written opinion of the International Searching Authority, or another person who was responsible for supervising the search and the establishment of the written opinion.

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Section 515    Modification of Abstract in Response to Applicant’s Comments

The International Searching Authority shall inform the applicant and the International Bureau of any modifications made by it to an abstract under Rule 38.3 .

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Section 516    Notification to Applicant of Submission of Demand after the Expiration of 19 Months from the Priority Date

Where the demand is submitted after the expiration of 19 months from the priority date to an International Searching Authority and the time limit under Article 22 (1), as in force from April 1, 2002, does not apply in respect of all designated Offices, that Authority shall:

  • (i) promptly notify the applicant accordingly, directing attention to the fact that the time limit under Article 39 (1)(a) does not apply, and that Article 22 (1), as in force until March 31, 2002, continues to apply in respect of any such designated Office,
  • (ii) proceed under Rule 59.3.

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Section 517    Waivers under Rule 90.4(d) and Rule 90.5(c)

  • (a) Where, in accordance with Rule 90.4 (d), an International Searching Authority waives the requirement under Rule 90.4 (b) that a separate power of attorney be submitted to it, the International Searching Authority shall notify the International Bureau accordingly.
  • (b) Where, in accordance with Rule 90.5 (c), an International Searching Authority waives the requirement under Rule 90.5 (a)(ii) that a copy of a general power of attorney be attached to any separate notice, it shall notify the International Bureau accordingly.
  • (c) An International Searching Authority may require a separate power of attorney, or a copy of a general power of attorney, in particular instances even if the International Searching Authority has waived the requirement in general.
  • (d) An International Searching Authority which has notified the International Bureau under paragraph (a) or (b) shall notify the International Bureau of any change to the information notified under those paragraphs.

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Section 518    Guidelines for Explanations Contained in the Written opinion of the International Searching Authority

For the purposes of establishing the written opinion of the International Searching Authority, Section 604 shall apply mutatis mutandis .

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Section 519    Notification of Receipt of Copy of International Application for the Purposes of Supplementary International Search

The Authority specified for supplementary search shall promptly notify the International Bureau and the applicant of the fact and the date of receipt of the copy of the international application for the purposes of the supplementary international search.

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Section 520    Withdrawal by Applicant under Rule 90 bis.3 bis

The Authority specified for supplementary search shall promptly transmit to the International Bureau any notice from the applicant effecting withdrawal of the supplementary search request under Rule 90 bis.3 bis which has been filed with it. The Authority specified for supplementary search shall mark the notice with the date on which it was received.

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PART 6 - INSTRUCTIONS RELATING TO THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY

6

Section 601    Notification to Applicant of Submission of Demand after the Expiration of 19 Months from the Priority Date

  • (a) Where the demand is submitted after the expiration of 19 months from the priority date and the time limit under Article 22 (1), as in force from April 1, 2002, does not apply in respect of all designated Offices, the International Preliminary Examining Authority shall promptly notify the applicant accordingly, directing attention to the fact that the time limit under Article 39 (1)(a) does not apply, and that Article 22 (1), as in force until March 31, 2002, continues to apply in respect of any such designated Office.
  • (b) Where the demand is submitted after the expiration of 19 months from the priority date to an International Preliminary Examining Authority which is not competent for the international preliminary examination of the international application, and the time limit under Article 22 (1), as in force from April 1, 2002, does not apply in respect of all designated Offices, that Authority shall:
    • (i) promptly notify the applicant accordingly, directing attention to the fact that the time limit under Article 39 (1)(a) does not apply, and that Article 22 (1), as in force until March 31, 2002, continues to apply in respect of any such designated Office,
    • (ii) proceed under Rule 59.3 .

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Section 602    Processing of Amendments by the International Preliminary Examining Authority

  • (a) The International Preliminary Examining Authority shall:
    • (i) indelibly mark, in the upper right-hand corner of each replacement sheet submitted under Rule 66.8 , the international application number and the date on which that sheet was received;
    • (ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “AMENDED SHEET” or their equivalent in the language of the demand as well as an indication of the International Preliminary Examining Authority as provided for in Section 107 (b);
    • (iii) subject to item (iv), keep in its files any replaced sheet, the letter accompanying any replacement sheet, and any superseded replacement sheet or any letter referred to in the last sentence of Rule 66.8 (b) as well as a copy of any replacement sheet which is annexed to the international preliminary examination report;
    • (iv) where any superseded replacement sheet referred to in item (iii) is to be annexed to the international preliminary examination report under Rule 70.16 (b), indelibly mark, in addition to the markings referred to in items (i) and (ii), in the middle of the bottom margin of each superseded replacement sheet, without obscuring the marking made under item (ii), the words “SUPERSEDED REPLACEMENT SHEET (RULE 70.16(b))”;
    • (v) annex to the copy of the international preliminary examination report which is transmitted to the International Bureau any replacement sheet as provided for under Rule 70.1 6;
    • (vi) annex to the copy of the international preliminary examination report which is transmitted to the applicant a copy of each replacement sheet as provided for under Rule 70.16 .
  • (b) Section 311 (b)(ii) relating to the numbering of replacement sheets shall apply when one or more sheets are added under Rule 66.8 .
  • (c) Where the International Preliminary Examining Authority receives from the applicant a copy of a purported amendment under Article 19 submitted after the time limit set forth in Rule 46.1 , the International Preliminary Examining Authority may consider such an amendment as an amendment under Article 34 in which case it shall inform the applicant accordingly.
  • (d) Where the International Preliminary Examining Authority receives a copy of an amendment under Article 19 , paragraphs (a) and (b) shall apply mutatis mutandis .

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Section 603    Transmittal of Protest against Payment of Additional Fees and Decision Thereon Where International Application Is Considered to Lack Unity of Invention

The International Preliminary Examining Authority shall transmit to the applicant, preferably at the latest together with the international preliminary examination report, any decision which it has taken under Rule 68.3 (c) on the protest of the applicant against payment of additional fees where the international application is considered to lack unity of invention. At the same time, it shall transmit to the International Bureau a copy of both the protest and the decision thereon, as well as any request by the applicant to forward the texts of both the protest and the decision thereon to the elected Offices.

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Section 604    Guidelines for Explanations Contained in the International Preliminary Examination Report

  • (a) Explanations under Rule 70.8 shall clearly point out to which of the three criteria of novelty, inventive step (non-obviousness) and industrial applicability referred to in Article 35 (2), taken separately, any cited document is applicable and shall clearly describe, with reference to the cited documents, the reasons supporting the conclusion that any of the said criteria is or is not satisfied.
  • (b) Explanations under Article 35 (2) shall be concise and preferably in the form of short sentences.

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Section 605    File to Be Used for International Preliminary Examination

Where the International Preliminary Examining Authority is part of the same national Office or intergovernmental organization as the International Searching Authority, the same file shall serve the purposes of international search and international preliminary examination.

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Section 606    Cancellation of Elections

  • (a) The International Preliminary Examining Authority shall cancel ex officio :
    • (i) the election of any State which is not a designated State;
    • (ii) the election of any State not bound by Chapter II of the Treaty.
  • (b) The International Preliminary Examining Authority shall enclose that election within square brackets, shall draw a line between the square brackets while still leaving the election legible and shall enter, in the margin, the words “CANCELLED EX OFFICIO BY IPEA” or their equivalent in the language of the demand, and shall notify the applicant accordingly.

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Section 607    Rectifications of Obvious Mistakes under Rule 91

Where the International Preliminary Examining Authority authorizes a rectification of an obvious mistake under Rule 91 , Section 602 (a)(i) to (iii) and (b) shall apply mutatis mutandis, provided that, where a sheet is marked as indicated in Section 602 , the words “RECTIFIED SHEET (RULE 91 )” shall be used.

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Section 608    Notifications Concerning Representation

Where a power of attorney or a document containing the revocation or renunciation of an appointment is submitted to the International Preliminary Examining Authority, that Authority shall immediately notify the International Bureau by sending it a copy of the power of attorney or document and request the International Bureau to record a change in the indications concerning the agent or common representative under Rule 92bis.1 (a)(ii).

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Section 609    Withdrawal by Applicant under Rules 90 bis. 1, 90bis. 2, or 90bis. 3

The International Preliminary Examining Authority shall promptly transmit to the International Bureau any notice from the applicant effecting withdrawal of the international application under Rule 90bis.1 (b), of a designation under Rule 90bis.2 (d), or of a priority claim under Rule 90bis.3 (c) which has been filed with it. The International Preliminary Examining Authority shall mark the notice with the date on which it was received.

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Section 610    Sequence Listings

  • (a) Where the written opinion of the International Preliminary Examining Authority or the international preliminary examination report is based on a sequence listing not forming part of the international application but furnished for the purposes of the international preliminary examination, the written opinion and the international preliminary examination report of the International Preliminary Examining Authority shall so indicate.
  • (b) Where a meaningful written opinion of the International Preliminary Examining Authority cannot be established, or a meaningful international preliminary examination cannot be carried out, as to whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious) and to be industrially applicable, because a sequence listing is not available to the International Preliminary Examining Authority in the required form, that Authority shall so state in the written opinion and in the international preliminary examination report.
  • (c) The International Preliminary Examining Authority shall indelibly mark, on the first sheet of any sequence listing on paper which does not form part of the international application but was furnished for the purposes of the international preliminary examination, the words “SEQUENCE LISTING NOT FORMING PART OF THE INTERNATIONAL APPLICATION” or their equivalent in the language of publication of the international application. Where such sequence listing is furnished in electronic form on a physical medium, that Authority shall physically label that medium accordingly.
  • (d) The International Preliminary Examining Authority shall keep in its files one copy of any sequence listing, whether on paper or in electronic form, which does not form part of the international application but was furnished for the purposes of the international preliminary examination.
  • (e) Any International Preliminary Examining Authority which requires, for the purposes of the international preliminary examination, the furnishing of a sequence listing in electronic form shall notify the International Bureau accordingly. In that notification, the Authority shall specify the means of transmittal of the sequence listing in electronic form accepted by it in accordance with Annex F. The International Bureau shall promptly publish details of the notification in the Gazette.
  • (f) Where the national Office or intergovernmental organization that acted as the International Searching Authority also acts as the International Preliminary Examining Authority, any sequence listing not forming part of the international application but furnished to that Office or organization for the purposes of the international search shall be considered to have been furnished to it also for the purposes of the international preliminary examination.

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Section 611    Method of Identification of Documents in the International Preliminary Examination Report

Any document cited in the international preliminary examination report which was not cited in the international search report shall be cited in the same form as required under Section 503 for international search reports. Any document cited in the international preliminary examination report which was previously cited in the international search report may be cited in a shortened form, provided that the reference to the document is unambiguous.

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Section 612    Authorized Officer

The officer of the International Preliminary Examining Authority responsible for the international preliminary examination report, as referred to in Rule 70.1 4, means the person who actually performed the examination work and prepared the international preliminary examination report or another person who was responsible for supervising the examination.

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Section 613    Invitation to Submit a Request for Refund of Fees under Rule 57.4 or 58.3

The International Preliminary Examining Authority may, before making a refund under Rule 57.4 or 58.3 , first invite the applicant to submit a request for the refund.

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Section 614    Evidence of Right to File Demand

Where a demand is considered as not having been made under Rule 61.1 (b) by the International Preliminary Examining Authority because the applicant appeared, on the basis of the indication made in the demand, not to have the right to file a demand with that Authority under Rule 54 but evidence is submitted indicating to the satisfaction of the International Preliminary Examining Authority that in fact, an applicant had, on the date on which the demand was received, the right to file the demand with that Authority, the International Preliminary Examining Authority shall regard the requirements under Article 31 (2)(a) as having been fulfilled on the date of actual receipt of the demand.

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Section 615    Invitation to Pay Fees before Date on Which They Are Due

If the International Preliminary Examining Authority finds, before the date on which they are due, that the handling fee or the international preliminary examination fee are lacking in whole or in part, it may invite the applicant to pay the missing amounts within the time limit under Rule 57.3 or 58.1(b), as the case may be.

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Section 616    International Preliminary Examination on the Basis of a Translation of the International Application

Where the International Preliminary Examining Authority has carried out international preliminary examination on the basis of a translation of the international application furnished to that Authority under Rule 55.2 (a) or, in the case referred to in Rule 55.2 (b), transmitted, under Rule 23.1 (b), to the national Office or intergovernmental organization of which that Authority is part, the international preliminary examination report shall so indicate.

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Section 617    Waivers under Rule 90.4 (d) and 90.5 (c)

  • (a) Where, in accordance with Rule 90.4 (d), an International Preliminary Examining Authority waives the requirement under Rule 90.4 (b) that a separate power of attorney be submitted to it, the International Preliminary Examining Authority shall notify the International Bureau accordingly.
  • (b) Where, in accordance with Rule 90.5 (c), an International Preliminary Examining Authority waives the requirement under Rule 90.5 (a)(ii) that a copy of a general power of attorney be attached to the demand or any separate notice, it shall notify the International Bureau accordingly.
  • (c) An International Preliminary Examining Authority may require a separate power of attorney, or a copy of a general power of attorney, in particular instances even if the International Preliminary Examining Authority has waived the requirement in general.
  • (d) An International Preliminary Examining Authority which has notified the International Bureau under paragraph (a) or (b) shall notify the International Bureau of any change to the information notified under those paragraphs.

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PART 7 - INSTRUCTIONS RELATING TO THE FILING AND PROCESSING IN ELECTRONIC FORM OF INTERNATIONAL APPLICATIONS

7

Section 701    Abbreviated Expressions

For the purposes of this Part and Annex F, from the wording, the nature of the provision or the context:

  • (i) “electronic package” means a package of one or more electronic files assembled for the purposes of transmission of one or more documents in electronic form;
  • (ii) “electronic document format” means the presentation or arrangement of the information in a document in electronic form;
  • (iii) “means of transmittal,” in connection with a document in electronic form, means the manner in which a document is transmitted, for example, by electronic means or physical means;
  • (iv) “electronic signature” means information in electronic form which is attached to, or logically associated with, a document in electronic form, which may be used to identify the signer and which indicates the signer’s approval of the content of the document;
  • (v) “basic common standard” means the basic common standard for electronic filing of international applications provided for in Annex F;
  • (vi) “communication” of an international application or other document has the same meaning as in Rule 89bis .3 ;
  • (vii) words and expressions whose meanings are explained in Annex F have the same meanings in this Part.

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Section 702    Filing, Processing and Communication in Electronic Form of International Applications

  • (a) The filing, processing and communication of international applications filed in electronic form, and the processing and communication in electronic form of international applications filed on paper, shall be in accordance with this Part and Annex F.
  • (b) Subject to this Part, an international application that is filed, processed or communicated in electronic form shall not be denied legal effect merely because it is in electronic form.
  • (c) [Deleted]

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Section 703    Filing Requirements; Basic Common Standard

  • (a) An international application may, subject to this Part, be filed in electronic form if the receiving Office has notified the International Bureau in accordance with Rule 89bis.1(d) that it is prepared to receive international applications in such form.
  • (b) An international application filed in electronic form shall be:
    • (i) in an electronic document format that has been specified by the receiving Office in accordance with Annex F or that complies with the basic common standard;
    • (ii) filed by a means of transmittal that has been specified by the receiving Office in accordance with Annex F or that complies with the basic common standard;
    • (iii) in the form of an electronic package, appropriate to the means of transmittal, that has been specified by the receiving Office in accordance with Annex F or that complies with the basic common standard;
    • (iv) prepared and filed using electronic filing software that has been specified by the receiving Office in accordance with Annex F or that complies with the basic common standard; and
    • (v) free of viruses and other forms of malicious logic in accordance with Annex F or that complies with the basic common standard.
  • (c) An international application filed in electronic form shall, for the purposes of Article 14 (1)(a)(i), be signed by the applicant using a type of electronic signature that has been specified by the receiving Office in accordance with Annex F or, subject to Section 704(g) , that complies with the basic common standard.
  • (d) A receiving Office which has not notified the International Bureau in accordance with Rule 89 .1 (d) that it is prepared to receive international applications in electronic form may nevertheless decide in a particular case to receive an international application submitted to it in such form, in which case this Part shall apply accordingly.
  • (e) Any receiving Office may refuse to receive an international application submitted to it in electronic form if the application does not comply with paragraph (b), or may decide to receive the application.
  • (f) If, on 7 January 2002, the applicable national law and the technical systems of a national Office provide for the filing with it of national applications in electronic form according to requirements which are incompatible with any of items (ii) to (iv) of paragraph (b):
    • (i) the provisions concerned shall not apply in respect of the Office in its capacity as a receiving Office for as long as the incompatibility continues; and
    • (ii) the Office may instead provide for the filing with it of international applications in electronic form according to that national law and those technical systems; provided that the Office informs the International Bureau accordingly by the date on which the Office sends the International Bureau a notification under Rule 89 .1 (d) and in any case no later than 7 April 2002. The information received shall be promptly published by the International Bureau in the Gazette.

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Section 704    Receipt; International Filing Date; Signature; Physical Requirements

  • (a) The receiving Office shall promptly notify the applicant of, or otherwise enable the applicant to obtain confirmation of, the receipt of any purported international application filed with it in electronic form. The notification or confirmation shall indicate or contain:
    • (i) the identity of the Office;
    • (ii) the date of receipt;
    • (iii) any reference number or application number assigned to the purported application by the Office; and
    • (iv) a message digest, generated by the Office, of the purported application as received; and may, at the option of the Office, also indicate or contain other information such as:
    • (v) the names and sizes of the electronic files received;
    • (vi) the dates of creation of the electronic files received; and
    • (vii) a copy of the purported application as received.
  • (b) Where the receiving Office refuses in accordance with Rule 89bis.1(d) or Section 703 (e) to receive a purported international application submitted to it in electronic form, it shall, if practicable having regard to the indications furnished by the applicant, promptly notify the applicant accordingly.
  • (c) Promptly after receiving a purported international application in electronic form, the receiving Office shall determine whether the purported application complies with the requirements of Article 11 (1) and shall proceed accordingly.
  • (d) Where an international application filed in electronic form is not signed in compliance with Section 703( c), the application shall be considered not to comply with the requirements of Article 14 (1)(a)(i) and the receiving Office shall proceed accordingly.
  • (e) Where an international application filed in electronic form does not comply with Section 703 (b) but the receiving Office decides, under Section 703 (e), to receive it, that non-compliance shall be considered to be non-compliance with the physical requirements referred to in Article 14 (1)(a)(v) and the receiving Office shall proceed accordingly, having regard to whether compliance is necessary for the purpose of reasonably uniform international publication (Rule 26.3 ) and satisfactory electronic communications.
  • (f) An international application filed in electronic form may, in accordance with the provisions of Rule 19.4 , be transmitted by the Office with which the application was filed to the International Bureau as receiving Office.
  • (g) Where an international application filed in electronic form was signed using a type of electronic signature that complies with the basic common standard but that has not been specified by the receiving Office under Section 703 (c), the Office may require that any subsequent document or correspondence submitted to it in electronic form be signed using a type of electronic signature that has been so specified. If that requirement is not complied with, Rule 92.1 (b) and (c) shall apply mutatis mutandis.
  • (h) The provisions of this Part, other than paragraph (g), shall apply mutatis mutandis to other documents and correspondence relating to international applications.

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Section 705    Home Copy, Record Copy and Search Copy Where International Application is Filed in Electronic Form

  • (a) Where an international application is filed in electronic form as a wrapped and signed package in accordance with Annex F, the home copy and the record copy in relation to that application for the purposes of Article 12 shall each consist of a copy in electronic form of that package.
  • (b) Where an international application is filed in electronic form but is not filed as a wrapped and signed package in accordance with Annex F, the home copy and the record copy in relation to that application for the purposes of Article 12 shall each consist of a copy in electronic form of the application as filed. If the application as filed was encrypted, the home copy and the record copy shall consist of the decrypted version. If the application as filed was infected by a virus or other form of malicious logic, the home copy and the record copy shall consist of the disinfected version.
  • (c) Where the international application is filed in electronic form on a physical medium, the home copy and the record copy shall not include the physical medium, but the receiving Office shall, for the purposes of Rule 93.1 , retain the application as originally filed, together with the physical medium.
  • (d) Where the International Searching Authority has notified the International Bureau in accordance with Rule 89.1 (d) that it is prepared to process international applications in electronic form, paragraphs (a) and (b) apply mutatis mutandis to the search copy; otherwise, the search copy shall consist of a copy of the application printed on paper by the receiving Office.

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Section 705bis    Processing in Electronic Form of International Applications Filed on Paper; Home Copy, Record Copy and Search Copy

  • (a) Where an international application is filed on paper, it may, subject to this Part, be processed and kept as a complete and accurate copy in electronic form prepared by the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau. Any receiving Office, International Searching Authority or International Preliminary Examining Authority which proceeds under this paragraph shall notify the International Bureau accordingly.
  • (b) Pursuant to paragraph and for the purposes of Article 12 , where an international application is filed on paper:
    • (i) the receiving Office may keep a copy in electronic form referred to in that paragraph as the home copy;
    • (ii) the International Bureau may keep a copy in electronic form referred to in that paragraph as the record copy;
    • (iii) the International Searching Authority may keep a copy in electronic form referred to in that paragraph as the search copy.
  • (c) Where a copy in electronic form is kept as the record copy under paragraph (b)(ii), the original of the international application as filed on paper shall be kept, for a period of at least 10 years from the international filing date, by the International Bureau or, where so agreed by the receiving Office and the International Bureau, by the receiving Office on behalf of the International Bureau. The original shall be marked with the words “INTERNATIONAL APPLICATION— ORIGINAL AS FILED ON PAPER (SECTION 705bis )” or their equivalent in the language of publication of the international application on the bottom of the first page of the request and of the first page of the description.
  • (d) Where, before the expiration of the period referred to in paragraph (c), the International Bureau finds, upon request for correction made by the applicant or otherwise, that a copy in electronic form kept as the record copy under paragraph (b)(ii) is not in fact a complete and accurate copy of the original kept under paragraph (c), it shall correct the record copy so as to bring it into conformity with the original. If the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or a designated or elected Office considers that the International Bureau should make a finding under the first sentence of this paragraph, it shall call the relevant facts to the attention of the International Bureau.
  • (e) Where the International Bureau has corrected the record copy in accordance with paragraph (d), it shall promptly notify the applicant, publish the corrected international application together with a revised front page, and publish a notice of this fact in the Gazette. Section 422( a)(i) to (v) shall apply mutatis mutandis with regard to the notification of the receiving Office, the International Searching Authority, the International Preliminary Examining Authority and the designated and elected Offices.

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Section 706    Documents in Pre-Conversion Format

  • (a) Where, for the purposes of filing the international application in electronic form, the document making up the international application has been prepared by conversion from a different electronic document format (“pre-conversion format”), the applicant may, if the receiving Office so permits and the pre-conversion format is accepted for that purpose by that Office, submit, together with the international application, the document in the pre-conversion format, in which case:
    • (i) the document in the pre-conversion format shall be identified as such and shall be accompanied by a statement by the applicant that the international application as filed in electronic form is a complete and accurate copy of the document in the pre-conversion format;
    • (ii) the request shall preferably contain an indication that the document in the pre-conversion format is submitted under Section 706 together with the international application.
  • (b) Where it is found that the international application as filed in electronic form is not in fact a complete and accurate copy of the document in the pre-conversion format submitted under paragraph (a), the applicant may, within 30 months from the priority date, request the receiving Office to correct the international application so as to bring it into conformity with the document in the pre-conversion format. Rule 26.4 shall apply mutatis mutandis to the manner in which corrections under this paragraph shall be requested.
  • (c) Where the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau discovers what appears to be a correctable defect under paragraph (b), that Office, Authority or Bureau, as the case may be, may bring such defect to the attention of the applicant, drawing attention to the correction procedure under paragraph (b).
  • (d) The applicant and, if copies of the international application have already been sent to the International Bureau and the International Searching Authority, that Bureau and that Authority shall be promptly notified by the receiving Office of any correction under paragraph (b). If required, the International Bureau shall notify the International Preliminary Examining Authority accordingly. Where a correction is made after the completion of the technical preparations for international publication, the International Bureau shall promptly publish the corrected international application together with a revised front page.
  • (e) A correction under paragraph (b) shall be taken into account by the International Searching Authority for the purposes of the international search and the establishment of the written opinion, and by the International Preliminary Examining Authority for the purposes of the international preliminary examination, if it is notified to that Authority before it has begun to draw up the international search report, the written opinion or the international preliminary examination report, as applicable, in which case the said report or opinion shall so indicate.
  • (f) Paragraphs (a) to (e) shall apply mutatis mutandis to any document making up any element of the international application referred to in Article 3(2) .

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Section 707    Calculation of International Filing Fee and Fee Reduction

  • (a) Where an international application is filed in electronic form, the international filing fee shall, subject to paragraph (a- bis), be calculated on the basis of the number of sheets that the application would contain if presented as a print-out complying with the physical requirements prescribed in Rule 11. [Noting that Rule 11 leaves some flexibility as to the margins of the sheets (see Rule 11.6 ) and the size of the characters (see Rule 11.9 (d)), the international filing fee should be calculated on the basis of the number of sheets that the application would contain if presented as a print-out complying with the minimum margin and character size requirements. In practice, however, the receiving Office should not print-out the international application but rather rely on the number of pages of the international application as calculated by the electronic filing software and indicated in the request.]

    (a- bis) Where an international application filed in electronic form contains a sequence listing as referred to in Rule 5.2 (a), the calculation of the international filing fee shall not take into account any sheet of the sequence listing nor any sheet of any tables related thereto in excess of 400 sheets.

  • (a-bis) Where a sequence listing is contained in an international application filed in electronic form, the calculation of the international filing fee shall not take into account any sheet of the sequence listing if that listing is presented as a separate part of the description in accordance with Rule 5.2(a) and is in the electronic document format specified in paragraph 40 of Annex C.
  • (b) Item 4(b), (c), and (d) of the Schedule of Fees annexed to the Regulations shall apply to reduce the fees payable in respect of an international application filed in electronic form with a receiving Office which has notified the International Bureau under Section 710(a) that it is prepared to receive international applications in electronic form or which has decided to receive such an application in accordance with Section 703(d) .

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Section 708    Special Provisions Concerning Legibility, Completeness, Infection by Viruses, Etc.

  • (a) Where an international application is filed in electronic form, the receiving Office shall promptly check whether the application is legible and whether it appears to have been fully received. Where the Office finds that all or part of the international application is illegible or that part of the application appears not to have been received, the international application shall be treated as not having been received to the extent that it is illegible or, where transmitted by electronic means, that the attempted transmission failed, and the Office shall, if practicable having regard to the indications furnished by the applicant, promptly notify the applicant accordingly.
  • (b) Where a purported international application is received in electronic form, the receiving Office shall promptly check it for infection by viruses and other forms of malicious logic. Where the Office finds that the purported application is so infected:
    • (i) the Office is not required to disinfect the purported application and may, under Section 703( e), refuse to receive it;
    • (ii) if the Office decides under Section 703 (e) to receive the purported application, the Office shall use means reasonably available under the circumstances to read it, for example, by disinfecting it or preparing a backup copy under Section 706 , and to store it in such a way that its contents may be ascertained if necessary;
    • (iii) if the Office finds that it is able to read and store the purported application as mentioned in item (ii), it shall determine whether an international filing date should be accorded;
    • (iv) if the Office accords an international filing date to the application, it shall, if possible having regard to the indications furnished by the applicant, promptly notify the applicant and, if necessary, invite the applicant to submit a substitute copy of the application free of infection;
    • (v) if the Office accords an international filing date to the application, it shall prepare the home copy, the record copy and the search copy on the basis of the disinfected application, the backup copy or the substitute copy referred to in items (ii) or (iv), as applicable, provided that the application shall be stored by the Office, as referred to in item (ii), for the purposes of Rule 93.1 .

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Section 709    Means of Communication with the Receiving Office

  • (a) Where an international application is filed in electronic form and by electronic means of transmittal, the receiving Office shall, if practicable, send any notifications, invitations and other correspondence to the applicant by electronic means of transmittal in accordance with Annex F, or by such other means indicated by the applicant from among those offered by the Office.
  • (b) Where it appears to the receiving Office that a notification, invitation or other correspondence sent to the applicant by electronic means of transmittal was not successfully transmitted, the Office shall, if practicable, promptly retransmit the notification, invitation or other correspondence by the same or another means.
  • (c) At times when the electronic systems of the receiving Office are not available for the filing of documents in electronic form or by electronic means of transmittal, the Office shall, if possible, promptly publish information to that effect by means reasonably available to it under the circumstances, for example, by including a notice on the Office’s Internet site, if any.

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Section 710    Notification and Publication of Receiving Offices’ Requirements and Practices

  • (a) A notification by a receiving Office to the International Bureau under Rule 89 bis.1 (d) and Section 703(a) that it is prepared to receive international applications in electronic form shall indicate, where applicable:
    • (i) the electronic document formats (including, where applicable, the versions of such electronic document formats), means of transmittal, types of electronic packages, electronic filing software and types of electronic signature specified by it under Section 703 (b)(i) to (iv) and (c), and any options specified by it under the basic common standard;
    • (ii) the conditions, rules and procedures relating to electronic receipt, including hours of operation, choices for processes to verify or acknowledge receipt, choices for electronic communication of invitations and notifications, any methods of online payment, details concerning any help desks, electronic and software requirements and other administrative matters related to the filing in electronic form of international applications and related documents;
    • (iii) the kinds of documents which may be transmitted to or by the Office in electronic form;
    • (iv) whether and under what conditions the Office accepts the filing, under Section 706 (a) and (f), of documents in pre-conversion format and the electronic document formats (including, where applicable, the versions of such electronic document formats) accepted by it under that Section;
    • (v) procedures for notification of applicants and procedures which applicants may follow as alternatives when the electronic systems of the Office are not available;
    • (vi) the certification authorities that are accepted by the Office, and the electronic addresses of the certificate policies under which certificates are issued;
    • (vii) the procedures relating to access to the files of international applications filed or stored in electronic form.
  • (b) The receiving Office shall notify the International Bureau of any change in the matters previously indicated by it in a notification under Section 705bis (a) or paragraph (a) of this Section.
  • (c) The International Bureau shall promptly publish in the Gazette any notification received by it under Section 705bis (a) or paragraph (a) or (b) of this Section.
  • (d) The effective date of any change notified under paragraph (b) shall be as specified by the receiving Office in the notification, provided that any change which restricts filing options shall not be effective earlier than two months after the date of publication of the notification of the change in the Gazette.

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Section 711    Electronic Records Management

  • (a) Records, copies and files in electronic form in relation to international applications shall be processed and, for the purposes of Rule 93 , kept in accordance with the requirements of authentication, integrity, confidentiality and non-repudiation, and having due regard to the principles of electronic records management, set out in Annex F.
  • (b) Upon request by the applicant or other interested party in relation to a particular international application, the receiving Office shall, subject to any restrictions applicable under the Treaty as to access by third parties, [Articles 30 and 38 and Rule 94 restrict access.] certify that any electronic records relating to that application are maintained and stored by it in accordance with paragraph (a).

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Section 712    Access to Electronic Records

Access permitted by the Treaty, the Regulations or these Administrative Instructions to documents contained in the file of an international application filed, processed or kept in electronic form may, at the option of the national Office or intergovernmental organization concerned, be provided by electronic means or in electronic form, having due regard to the need to ensure the integrity and where applicable confidentiality of data, the principles of electronic records management set out in Annex F, and the need to ensure security of the electronic networks, systems and applications of the Office or organization.

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Section 713    Application of Provisions to International Authorities and the International Bureau, and to Notifications, Communications, Correspondence and Other Documents

  • (a) The provisions of this Part, other than Sections 703(c) , 704 (c) to (g), 706 , 707 , 708 (b)(iii) to (v), 710 (a)(iv) and 714 (b), shall, if they are capable of applying but do not expressly apply to the International Searching Authorities, the International Preliminary Examining Authorities and the International Bureau, apply mutatis mutandis to those Authorities and that Bureau.
  • (b) The provisions of this Part, other than Sections 703 (c), 704 (c) to (f), 705 , 705 bis(b) to (e), 706 , 707 , 708 (b)(iii) to (v) and 710 (a)(iv), shall, if they are capable of applying but do not expressly apply to notifications, communications, correspondence or other documents relating to international applications that are filed, processed or communicated in electronic form, apply mutatis mutandis to such notifications, communications, correspondence or other documents relating to international applications.

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Section 714    Furnishing by the International Bureau of Copies of Documents Kept in Electronic Form; Designated Offices’ Signature Requirements

  • (a) Where any International Searching Authority, International Preliminary Examining Authority or designated Office has not notified the International Bureau in accordance with Rule 89bis .1 (d) or Section 705bis (a) that it is prepared to process international applications in electronic form, the International Bureau shall furnish to that Office or Authority a copy on paper of any document which is kept by the International Bureau in electronic form and which that Office or Authority is entitled to receive. The International Bureau may also, upon request by the Authority or Office concerned, furnish such copy in electronic form.
  • (b) Any designated Office may require that any document or correspondence submitted to it by the applicant in electronic form be signed by the applicant using a type of electronic signature specified by it in accordance with Annex F.

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Section 715    Availability of Priority Documents from Digital Libraries

  • (a) For the purposes of Rules 17.1(b- bis), 17.1(d) (where appropriate, as applicable by virtue of Rules 17.1(c) and 82 ter.1(b)), 66.7(a) (where appropriate, as applicable by virtue of Rule 43 bis.1(b)) and 91.1(e), a priority document shall be considered to be available from a digital library to the International Bureau, a designated Office, the International Searching Authority or the International Preliminary Examining Authority, as the case may be:
    • (i) if the Office or Authority concerned has notified the International Bureau, or the International Bureau has declared, as the case may be, that it is prepared to obtain priority documents from that digital library; and
    • (ii) the priority document concerned is held in that digital library and the applicant has, to the extent required by the procedures for accessing the relevant digital library, authorized the Office or Authority concerned or the International Bureau, as the case may be, to access that priority document.
  • (b) A notification to the International Bureau under paragraph 12 of the Framework Provisions for the Digital Access Service for Priority Documents [ Editor’s Note: Established by the International Bureau on 31 March 2009 and available from the WIPO website at: www.wipo.int/patentscope/en/pdocforum/pdf/fp.pdf .] by
    • (i) the International Bureau; or
    • (ii) an Office in its capacity as designated Office, International Searching Authority or International Preliminary Examining Authority,

    that it is prepared to obtain priority documents via the Digital Access Service shall be taken as a declaration or notification under paragraph (a)(i) that the International Bureau or Office acting in the relevant capacity will obtain priority documents through the Digital Access Service from any digital library which has been the subject of a notification in accordance with paragraph 10 of the Framework Provisions, including libraries for which such a notification is subsequently made with effect prior to the date on which the Office or Bureau is requested to retrieve the priority document.

  • (c) An Office or Authority which has given a notification to the International Bureau under paragraph (a)(i) or (b) shall notify the International Bureau of any change in the information so notified.
  • (d) The International Bureau shall promptly publish in the Gazette any notification received by it under paragraph (a)(i) or (b) of this Section, any declaration made by it under paragraph (a)(i) or (b), and any change in the information so declared.
  • (e) The effective date of any change published under paragraph (d) shall be as specified by the Office or Authority concerned or by the International Bureau, as the case may be, provided that any change which restricts the ability of the applicant to request the Office, the Authority or the International Bureau to obtain a priority document from the digital library shall, except in the case where priority documents are no longer held in the digital library, not be effective earlier than two months after the date of publication of the change in the Gazette.

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Section 716    Request that Priority Document Be Obtained from a Digital Library under Rule 17.1(b- bis)

  • (a) Any request under Rule 17.1(b- bis):
    • (i) shall identify the priority document concerned in accordance with Rule 4.10(a); and
    • (ii) shall, where required, include the access code provided to the applicant by the International Bureau or by the Office with which the earlier application was filed.
  • (b) Where the applicant, in accordance with Rule 17.1(b- bis) and paragraph (a) of this Section, requests the International Bureau to obtain a priority document which, in accordance with Section 715(a), is considered to be available from a digital library to it, but the International Bureau finds that the priority document is in fact not available to it, the International Bureau, shall notify the applicant, giving the opportunity to furnish the priority document to it, or to ensure that the document is made available to it from a digital library, within a time limit of not less than two months from the date of the notification or within the time limit specified in Rule 17.1(a), whichever time limit expires later. Where the priority document is furnished or becomes available to the International Bureau within that time limit, the requirements of Rule 17.1(b- bis) shall be considered to have been met. If the priority document is not so furnished or does not become available within that time limit, the request that the document be obtained from a digital library shall be considered not to have been made.
  • (c) Where the applicant requests the International Bureau under Rule 17.1(b- bis) to obtain a priority document from a digital library but that request does not comply with the requirements of that Rule and paragraph (a) of this Section, or the priority document concerned is not considered to be available to it in accordance with Section 715(a), the International Bureau shall promptly inform the applicant accordingly.

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PART 8 - INSTRUCTIONS RELATING TO OBSERVATIONS BY THIRD PARTIES

8

Section 801    Third Party Observation System

  • (a)  The International Bureau shall provide an electronic system for third parties to make observations referring to prior art which they believe to be relevant to the question of whether the invention claimed in the international application is new and/or involves an inventive step (“third party observation system”).
  • (b)  The third party observation system:
    • (i) shall provide a third party with the option to remain anonymous;
    • (ii) shall allow observations to include a brief explanation of the relevance of each prior art document referred to in the observation and to include a copy of the prior art document;
    • (iii) may limit the number of prior art documents which may be referred to in one observation; and
    • (iv) may limit the number of observations permitted to be made in relation to one international application, per third party and in total.
  • (c)  The International Bureau shall take technical steps to prevent abuse of the third party observation system.
  • (d) The International Bureau may temporarily or indefinitely suspend the use of the third party observation system if it considers it necessary to do so.

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Section 802    Filing of a Third Party Observation

  • (a) An observation by a third party made in relation to an international application shall:
    • (i) be submitted to the International Bureau through the third party observation system as provided in Section 801;
    • (ii) be submitted between the date of international publication and 28 months from the priority date of the international application indicated;
    • (iii) be in a language of publication, with the exception that copies of submitted prior art documents may be in any language;
    • (iv) relate to the international application indicated;
    • (v) refer to prior art;
    • (vi) be free of viruses or other forms of malicious logic;
    • (vii) be free of comments or other matter not relevant to the question of novelty or inventive step of the invention claimed in the international application; and
    • (viii) be free of comments or other matter which are an abuse of the third party observation system.
  • (b) Any purported observation by a third party which, in the view of the International Bureau, appears not to be in compliance with paragraph (a) shall not be treated as a third party observation. The International Bureau shall inform the third party accordingly, unless the purported observation appears to be a clear attempt at abuse of the system. The purported observation shall not be open to public inspection and shall not be communicated to the applicant, any International Authority or any designated Office.

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Section 803    Availability of an Observation and Related Information

  • (a) Any third party observation shall be promptly made available for public inspection, with the exception that copies of prior art documents uploaded through the system shall be made available only to the applicant, competent International Authorities and designated Offices.
  • (b) Where the third party requests the International Bureau to remain anonymous as provided in Section 801(b) , the International Bureau shall not reveal any details of the third party to the public, the applicant, any International Authority or any designated Office.

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Section 804    Notification of Receipt of an Observation to the Applicant and Comments by the Applicant in Response to an Observation

  • (a) The International Bureau shall notify the applicant when the first third party observation is received in relation to an international application. If further observations are received, the International Bureau shall notify the applicant of the receipt of all further observations promptly after the expiration of 28 months from the priority date.
  • (b) The applicant may, within 30 months from the priority date, submit comments in response to any third party observation which has been received. The comments shall be submitted in English, French or the language of publication of the international application, at the choice of the applicant, and shall be promptly made available for public inspection.

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Section 805    Communication of Observations and Comments to International Authorities and Designated Offices

  • (a) The International Bureau shall communicate any third party observation and any comment by the applicant promptly to the International Searching Authority specified to carry out the international search, the International Searching Authority specified to carry out the supplementary international search and the International Preliminary Examining Authority specified to carry out the international preliminary examination, unless the international search report, the supplementary international search report or the international preliminary examination report, respectively, has already been received by the International Bureau.
  • (b) Promptly after the expiration of 30 months from the priority date, the International Bureau shall communicate any third party observation and any comment by the applicant to all designated Offices, subject to Rule 93bis. The designated Offices shall not be obliged to take either the observations or any comments into account during national processing.

[Annexes follow]

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Annex A FORMS

[This Annex, which is not reproduced here, contains Forms for use by applicants and by the International Authorities, including those referred to in Section 102 of the Administrative Instructions. It consists of five Parts , as follows:

Part I: Forms Relating to the Receiving Office;

Part II: Forms Relating to the International Searching Authority;

Part III: Forms Relating to the International Bureau;

Part IV: Forms Relating to the International Preliminary Examining Authority;

Part V: Request and Demand Forms.

These forms are available from the WIPO web site at: www.wipo.int/pct/en/texts/index.htm; paper copies are available from the International Bureau on request .]

[Annex B follows]

Annex B UNITY OF INVENTION

  • (a) Unity of Invention. Rule 13.1 deals with the requirement of unity of invention and states the principle that an international application should relate to only one invention or, if there is more than one invention, that the inclusion of those inventions in one international application is only permitted if all inventions are so linked as to form a single general inventive concept.
  • (b) Technical Relationship. Rule 13.2 defines the method for determining whether the requirement of unity of invention is satisfied in respect of a group of inventions claimed in an international application. Unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding “special technical features”. The expression “special technical features” is defined in Rule 13.2 as meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art. The determination is made on the contents of the claims as interpreted in light of the description and drawings (if any).
  • (c) Independent and Dependent Claims. Unity of invention has to be considered in the first place only in relation to the independent claims in an international application and not the dependent claims. By “dependent” claim is meant a claim which contains all the features of another claim and is in the same category of claim as that other claim (the expression “category of claim” referring to the classification of claims according to the subject matter of the invention claimed for example, product, process, use or apparatus or means, etc.).
    • (i) If the independent claims avoid the prior art and satisfy the requirement of unity of invention, no problem of lack of unity arises in respect of any claims that depend on the independent claims. In particular, it does not matter if a dependent claim itself contains a further invention. Equally, no problem arises in the case of a genus/species situation where the genus claim avoids the prior art. Moreover, no problem arises in the case of a combination/subcombination situation where the subcombination claim avoids the prior art and the combination claim includes all the features of the subcombination.
    • (ii) If, however, an independent claim does not avoid the prior art, then the question whether there is still an inventive link between all the claims dependent on that claim needs to be carefully considered. If there is no link remaining, an objection of lack of unity a posteriori (that is, arising only after assessment of the prior art) may be raised. Similar considerations apply in the case of a genus/species or combination/subcombination situation.
    • (iii) This method for determining whether unity of invention exists is intended to be applied even before the commencement of the international search. Where a search of the prior art is made, an initial determination of unity of invention, based on the assumption that the claims avoid the prior art, may be reconsidered on the basis of the results of the search of the prior art.
  • (d) Illustrations of Particular Situations. There are three particular situations for which the method for determining unity of invention contained in Rule 13.2 is explained in greater detail:
    • (i) combinations of different categories of claims;
    • (ii) so-called “Markush practice”; and
    • (iii) intermediate and final products.

    Principles for the interpretation of the method contained in Rule 13.2 , in the context of each of those situations are set out below. It is understood that the principles set out below are, in all instances, interpretations of and not exceptions to the requirements of Rule 13.2 .

    Examples to assist in understanding the interpretation on the three areas of special concern referred to in the preceding paragraph are set out below.

  • (e) Combinations of Different Categories of Claims. The method for determining unity of invention under Rule 13.2 shall be construed as permitting, in particular, the inclusion of any one of the following combinations of claims of different categories in the same international application:
    • (i) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product, and an independent claim for a use of the said product, or
    • (ii) in addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out the said process, or
    • (iii) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product and an independent claim for an apparatus or means specifically designed for carrying out the said process,

      it being understood that a process is specially adapted for the manufacture of a product if it inherently results in the product and that an apparatus or means is specifically designed for carrying out a process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art.

      Thus, a process shall be considered to be specially adapted for the manufacture of a product if the claimed process inherently results in the claimed product with the technical relationship being present between the claimed product and claimed process. The words “specially adapted” are not intended to imply that the product could not also be manufactured by a different process.

      Also an apparatus or means shall be considered to be “specifically designed for carrying out” a claimed process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art. Consequently, it would not be sufficient that the apparatus or means is merely capable of being used in carrying out the claimed process. However, the expression “specifically designed” does not imply that the apparatus or means could not be used for carrying out another process, nor that the process could not be carried out using an alternative apparatus or means.

  • (f) “Markush Practice”. The situation involving the so-called “Markush practice” wherein a single claim defines alternatives (chemical or non-chemical) is also governed by Rule 13.2 . In this special situation, the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2 , shall be considered to be met when the alternatives are of a similar nature.
    • (i) When the Markush grouping is for alternatives of chemical compounds, they shall be regarded as being of a similar nature where the following criteria are fulfilled:
      • (A) all alternatives have a common property or activity, and
      • (B)
        • (1) a common structure is present, i.e., a significant structural element is shared by all of the alternatives, or
      • (B)
        • (2) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.
    • (ii) In paragraph (f)(i)(B)(1), above, the words “significant structural element is shared by all of the alternatives” refer to cases where the compounds share a common chemical structure which occupies a large portion of their structures, or in case the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion in view of existing prior art, and the common structure is essential to the common property or activity. The structural element may be a single component or a combination of individual components linked together.
    • (iii) In paragraph (f)(i)(B)(2), above, the words “recognized class of chemical compounds” mean that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. In other words, each member could be substituted one for the other, with the expectation that the same intended result would be achieved.
    • (iv) The fact that the alternatives of a Markush grouping can be differently classified shall not, taken alone, be considered to be justification for a finding of a lack of unity of invention.
    • (v) When dealing with alternatives, if it can be shown that at least one Markush alternative is not novel over the prior art, the question of unity of invention shall be reconsidered by the examiner. Reconsideration does not necessarily imply that an objection of lack of unity shall be raised.
  • (g) Intermediate and Final Products. The situation involving intermediate and final products is also governed by Rule 13.2 .
    • (i) The term “intermediate” is intended to mean intermediate or starting products. Such products have the ability to be used to produce final products through a physical or chemical change in which the intermediate loses its identity.
    • (ii) Unity of invention shall be considered to be present in the context of intermediate and final products where the following two conditions are fulfilled:
      • (A) the intermediate and final products have the same essential structural element, in that:
        • (1) the basic chemical structures of the intermediate and the final products are the same, or
        • (2) the chemical structures of the two products are technically closely interrelated, the intermediate incorporating an essential structural element into the final product, and
      • (B) the intermediate and final products are technically interrelated, this meaning that the final product is manufactured directly from the intermediate or is separated from it by a small number of intermediates all containing the same essential structural element.
    • (iii) Unity of invention may also be considered to be present between intermediate and final products of which the structures are not known—for example, as between an intermediate having a known structure and a final product the structure of which is not known, or as between an intermediate of unknown structure and a final product of unknown structure. In order to satisfy unity in such cases, there shall be sufficient evidence to lead one to conclude that the intermediate and final products are technically closely interrelated as, for example, when the intermediate contains the same essential element as the final product or incorporates an essential element into the final product.
    • (iv) It is possible to accept in a single international application different intermediate products used in different processes for the preparation of the final product, provided that they have the same essential structural element.
    • (v) The intermediate and final products shall not be separated, in the process leading from one to the other, by an intermediate which is not new.
    • (vi) If the same international application claims different intermediates for different structural parts of the final product, unity shall not be regarded as being present between the intermediates.
    • (vii) If the intermediate and final products are families of compounds, each intermediate compound shall correspond to a compound claimed in the family of the final products. However, some of the final products may have no corresponding compound in the family of the intermediate products so that the two families need not be absolutely congruent.
  • (h) As long as unity of invention can be recognized applying the above interpretations, the fact that, besides the ability to be used to produce final products, the intermediates also exhibit other possible effects or activities shall not affect the decision on unity of invention.
  • (i) Rule 13.3 requires that the determination of the existence of unity of invention be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
  • (j) Rule 13.3 is not intended to constitute an encouragement to the use of alternatives within a single claim, but is intended to clarify that the criterion for the determination of unity of invention (namely, the method contained in Rule 13.2 ) remains the same regardless of the form of claim used.
  • (k) Rule 13.3 does not prevent an International Searching or Preliminary Examining Authority or an Office from objecting to alternatives being contained within a single claim on the basis of considerations such as clarity, the conciseness of claims or the claims fee system applicable in that Authority or Office.
  • (l) Examples giving guidance on how these principles may be interpreted in particular cases are set out in the PCT International Search and Preliminary Examination Guidelines.

    [Annex C follows]

Annex C STANDARD FOR THE PRESENTATION OF NUCLEOTIDE AND AMINO ACID SEQUENCE LISTINGS IN INTERNATIONAL PATENT APPLICATIONS UNDER THE PCT

  INTRODUCTION

  • 1. This Standard has been elaborated so as to provide standardization of the presentation of nucleotide and amino acid sequence listings in international patent applications. The Standard is intended to allow the applicant to draw up a single sequence listing which is acceptable to all receiving Offices, International Searching and Preliminary Examining Authorities for the purposes of the international phase, and to all designated and elected Offices for the purposes of the national phase. It is intended to enhance the accuracy and quality of presentations of nucleotide and amino acid sequences given in international applications, to make for easier presentation and dissemination of sequences for the benefit of applicants, the public and examiners, to facilitate searching of sequence data and to allow the exchange of sequence data in electronic form and the introduction of sequence data onto computerized databases.

  DEFINITIONS

  • 2. For the purposes of this Standard:
    • (i)

      the expression “sequence listing” means a nucleotide and/or amino acid sequence listing which gives a detailed disclosure of the nucleotide and/or amino acid sequences and other available information;

    • (i-bis) the expression “sequence listing forming part of the international application” means a sequence listing contained in the international application as filed (as referred to in paragraph 3), including any sequence listing or part thereof which is included in the international application under Rule 20.5(b) or (c), which is considered to have been contained in the international application under Rule 20.6(b), or which has been corrected under Rule 26, rectified under Rule 91 or amended under Article 34(2); or a sequence listing included in the international application by way of an amendment under Article 34(2)(b) of the description in relation to sequences contained in the international application as filed (as referred to in paragraphs 3 bis and 3 ter);
    • (i-ter) the expression “sequence listing not forming part of the international application” means a sequence listing which does not form part of the international application but is furnished for the purposes of the international search or international preliminary examination (as referred to in paragraphs 4 and 4 bis);
    • (ii) sequences which are included are any unbranched sequences of four or more amino acids or unbranched sequences of ten or more nucleotides. Branched sequences, sequences with fewer than four specifically defined nucleotides or amino acids as well as sequences comprising nucleotides or amino acids other than those listed in Appendix 2, Tables 1, 2, 3 and 4, are specifically excluded from this definition;
    • (iii) “nucleotides” embrace only those nucleotides that can be represented using the symbols set forth in Appendix 2, Table 1. Modifications, for example, methylated bases, may be described as set forth in Appendix 2, Table 2, but shall not be shown explicitly in the nucleotide sequence;
    • (iv) “amino acids” are those L-amino acids commonly found in naturally occurring proteins and are listed in Appendix 2, Table 3. Those amino acid sequences containing at least one D-amino acid are not intended to be embraced by this definition. Any amino acid sequence that contains post-translationally modified amino acids may be described as the amino acid sequence that is initially translated using the symbols shown in Appendix 2, Table 3, with the modified positions, for example, hydroxylations or glycosylations, being described as set forth in Appendix 2, Table 4, but these modifications shall not be shown explicitly in the amino acid sequence. Any peptide or protein that can be expressed as a sequence using the symbols in Appendix 2, Table 3, in conjunction with a description elsewhere to describe, for example, abnormal linkages, cross-links (for example, disulfide bridge) and end caps, non-peptidyl bonds, etc., is embraced by this definition;
    • (v) “sequence identifier” is a unique integer that corresponds to the SEQ ID NO assigned to each sequence in the listing;
    • (vi) “numeric identifier” is a three-digit number which represents a specific data element;
    • (vii) “language-neutral vocabulary” is a controlled vocabulary used in the sequence listing that represents scientific terms as prescribed by sequence database providers (including scientific names, qualifiers and their controlled-vocabulary values, the symbols appearing in Appendix 2, Tables 1, 2, 3 and 4, and the feature keys appearing in Appendix 2, Tables 5 and 6);
    • (viii) “competent Authority” is the International Searching Authority that is to carry out the international search and to establish the written opinion of the International Searching Authority on the international application, or the International Preliminary Examining Authority that is to carry out the international preliminary examination on the international application.

  SEQUENCE LISTINGS

  Sequence Listing Forming Part of the International Application

  • 3. A sequence listing which is contained in the international application as filed:
    • (i) shall be presented as a separate part of the description, be placed at the end of the application, preferably be entitled “Sequence Listing”, begin on a new page and have independent page numbering; preferably, the sequence listing shall not be reproduced in any other part of the application; subject to paragraph 36, it is unnecessary to describe the sequences elsewhere in the description;
    • (ii) shall present the sequences represented in the sequence listing and other available information in the sequence listing in accordance with paragraphs 5 to 35;
    • (iii) if contained in an international application filed in electronic form, shall be in an electronic document format and filed by a means of transmittal in accordance with paragraph 37.
  • 3bis. Any correction under Rule 26, rectification under Rule 91 or amendment under Article 34(2) of the description submitted in relation to a sequence listing contained in the international application filed on paper and any sequence listing included in the international application by way of an amendment under Article 34(2)(b) of the description in relation to sequences contained in the international application filed on paper shall be submitted in accordance with Rule 26.4, Rule 91 or Rule 66.8, respectively.
  • 3ter. Any correction under Rule 26, rectification under Rule 91 or amendment under Article 34(2)(b) of the description submitted in relation to a sequence listing contained in the international application filed in electronic form and any sequence listing included in the international application by way of an amendment under Article 34(2)(b) of the description in relation to sequences contained in the international application filed in electronic form shall be submitted in the form of a sequence listing in electronic form comprising the entire listing with the relevant correction, rectification or amendment. Any such sequence listing:
    • (i) shall preferably be entitled “Sequence Listing – Correction”, “Sequence Listing – Rectification” or “Sequence Listing – Amendment”, as the case may be, and have independent page numbering;
    • (ii) shall present the sequences represented in the sequence listing and other available information in the sequence listing in accordance with paragraphs 5 to 35; where applicable, the original numbering of the sequences in the international application as filed (as referred to in paragraph 5) shall be maintained; otherwise, the sequences shall be numbered in accordance with paragraph 5;
    • (iii) shall be in an electronic document format and filed by a means of transmittal in accordance with paragraph 38.

  Sequence Listing Not Forming Part of the International Application

  • 4. A sequence listing furnished under Rule 13 ter for the purposes of the international search or international preliminary examination:
    • (i) shall preferably be entitled “Sequence Listing – Rule 13 ter”;
    • (ii) shall present the sequences represented in the sequence listing and other available information in the sequence listing in accordance with paragraphs 5 to 35; where applicable, the original numbering of the sequences in the international application as filed (as referred to in paragraph 5) shall be maintained; otherwise, the sequences shall be numbered in accordance with paragraph 5;
    • (iii) if furnished on paper in accordance with Rule 13 ter.1(b), shall have independent page numbering;
    • (iv) if furnished in electronic form, shall be in an electronic document format and filed by a means of transmittal in accordance with paragraph 39;
    • (v) if furnished in electronic form together with the international application, shall be identical to the sequence listing as contained in the application and be accompanied by a statement that “the information recorded in electronic form furnished under Rule 13 ter is identical to the sequence listing as contained in the international application”;
    • (vi) if furnished subsequently to the filing of the international application, shall not go beyond the disclosure in the international application as filed and be accompanied by a statement to that effect; any such sequence listing shall contain only those sequences that were disclosed in the international application as filed.
  • 4bis. Any correction under Rule 26, rectification under Rule 91 or amendment under Article 34(2)(b) of the description submitted in relation to a sequence listing contained in the international application as filed and any sequence listing included in the international application by way of an amendment under Article 34(2)(b) of the description in relation to sequences contained in the international application as filed shall be accompanied, for the purposes of the international search or international preliminary examination, by a sequence listing in electronic form in an electronic document format in accordance with paragraph 39, comprising the entire listing including any such correction, rectification or amendment, whenever this is required by the competent authority, unless such listing in electronic form is already available to that authority in a form and manner acceptable to it. Any such sequence listing in electronic form:
    • (i) shall preferably be entitled “Sequence Listing – Correction – Rule 13 ter”, “Sequence Listing – Rectification – Rule 13 ter” or “Sequence Listing – Amendment – Rule 13 ter”, as the case may be;
    • (ii) shall present the sequences represented in the sequence listing and other available information in the sequence listing in accordance with paragraphs 5 to 35; where applicable, the original numbering of the sequences in the international application as filed (as referred to in paragraph 5) shall be maintained; otherwise, the sequences shall be numbered in accordance with paragraph 5;
    • (iii) shall be filed by a means of transmittal in accordance with paragraph 39;
    • (iv) shall be identical to the corrected or amended sequence listing and be accompanied by a statement that “the information recorded in electronic form furnished under Rule 13 ter is identical to the corrected sequence listing” (or to the “amended sequence listing”, as the case may be).

    Where such sequence listing in electronic form and, where applicable, such statement is not available to the competent authority, any such correction, rectification or amendment need only be taken into account by that authority for the purposes of the international search or preliminary examination to the extent that a meaningful search or preliminary examination can be carried out without such sequence listing in electronic form.

  PRESENTATION OF SEQUENCES

  • 5. Each sequence shall be assigned a separate sequence identifier. The sequence identifiers shall begin with 1 and increase sequentially by integers. If no sequence is present for a sequence identifier, the code 000 should appear under numeric identifier <400>, beginning on the next line following the SEQ ID NO. The response for numeric identifier <160> shall include the total number of SEQ ID NOs, whether followed by a sequence or by the code 000.
  • 6. In the description, claims or drawings of the application, the sequences represented in the sequence listing shall be referred to by the sequence identifier and preceded by “SEQ ID NO:”.
  • 7. Nucleotide and amino acid sequences should be represented by at least one of the following three possibilities:
    • (i) a pure nucleotide sequence;
    • (ii) a pure amino acid sequence;
    • (iii) a nucleotide sequence together with its corresponding amino acid sequence.

    For those sequences disclosed in the format specified in option (iii), above, the amino acid sequence must be disclosed separately in the sequence listing as a pure amino acid sequence with a separate integer sequence identifier.

  Nucleotide Sequences

Symbols to Be Used

  • 8. A nucleotide sequence shall be presented only by a single strand, in the 5’-end to 3’-end direction from left to right. The terms 3’ and 5’ shall not be represented in the sequence.
  • 9. The bases of a nucleotide sequence shall be represented using the one-letter code for nucleotide sequence characters. Only lower case letters in conformity with the list given in Appendix 2, Table 1, shall be used.
  • 10. Modified bases shall be represented as the corresponding unmodified bases or as “n” in the sequence itself if the modified base is one of those listed in Appendix 2, Table 2, and the modification shall be further described in the feature section of the sequence listing, using the codes given in Appendix 2, Table 2. These codes may be used in the description or the feature section of the sequence listing but not in the sequence itself (see also paragraph 32). The symbol “n” is the equivalent of only one unknown or modified nucleotide.

Format to Be Used

  • 11. A nucleotide sequence shall be listed with a maximum of 60 bases per line, with a space between each group of 10 bases.
  • 12. The bases of a nucleotide sequence (including introns) shall be listed in groups of 10 bases, except in the coding parts of the sequence. Leftover bases, fewer than 10 in number at the end of non-coding parts of a sequence, should be grouped together and separated from adjacent groups by a space.
  • 13. The bases of the coding parts of a nucleotide sequence shall be listed as triplets (codons).
  • 14. The enumeration of the nucleotide shall start at the first base of the sequence with number 1. It shall be continuous through the whole sequence in the direction 5’ to 3’. It shall be marked in the right margin, next to the line containing the one-letter codes for the bases, and giving the number of the last base of that line. The enumeration method for nucleotide sequences set forth above remains applicable to nucleotide sequences that are circular in configuration, with the exception that the designation of the first nucleotide of the sequence may be made at the option of the applicant.
  • 15. A nucleotide sequence that is made up of one or more non-contiguous segments of a larger sequence or of segments from different sequences shall be numbered as a separate sequence, with a separate sequence identifier. A sequence with a gap or gaps shall be numbered as a plurality of separate sequences with separate sequence identifiers, with the number of separate sequences being equal in number to the number of continuous strings of sequence data.

  Amino Acid Sequences

Symbols to Be Used

  • 16. The amino acids in a protein or peptide sequence shall be listed in the amino to carboxy direction from left to right. The amino and carboxy groups shall not be represented in the sequence.
  • 17. The amino acids shall be represented using the three-letter code with the first letter as a capital and shall conform to the list given in Appendix 2, Table 3. An amino acid sequence that contains a blank or internal terminator symbols (for example, “Ter” or “*” or “.”) may not be represented as a single amino acid sequence, but shall be presented as separate amino acid sequences (see paragraph 22).
  • 18. Modified and unusual amino acids shall be represented as the corresponding unmodified amino acids or as “Xaa” in the sequence itself if the modified amino acid is one of those listed in Appendix 2, Table 4, and the modification shall be further described in the feature section of the sequence listing, using the codes given in Appendix 2, Table 4. These codes may be used in the description or the feature section of the sequence listing but not in the sequence itself (see also paragraph 32). The symbol “Xaa” is the equivalent of only one unknown or modified amino acid.

Format to Be Used

  • 19. A protein or peptide sequence shall be listed with a maximum of 16 amino acids per line, with a space provided between each amino acid.
  • 20. Amino acids corresponding to the codons in the coding parts of a nucleotide sequence shall be placed immediately under the corresponding codons. Where a codon is split by an intron, the amino acid symbol should be given below the portion of the codon containing two nucleotides.
  • 21. The enumeration of amino acids shall start at the first amino acid of the sequence, with number 1. Optionally, the amino acids preceding the mature protein, for example pre-sequences, pro-sequences, pre-pro-sequences and signal sequences, when present, may have negative numbers, counting backwards starting with the amino acid next to number 1. Zero (0) is not used when the numbering of amino acids uses negative numbers to distinguish the mature protein. It shall be marked under the sequence every five amino acids. The enumeration method for amino acid sequences set forth above remains applicable for amino acid sequences that are circular in configuration, with the exception that the designation of the first amino acid of the sequence may be made at the option of the applicant.
  • 22. An amino acid sequence that is made up of one or more non-contiguous segments of a larger sequence or of segments from different sequences shall be numbered as a separate sequence, with a separate sequence identifier. A sequence with a gap or gaps shall be numbered as a plurality of separate sequences with separate sequence identifiers, with the number of separate sequences being equal in number to the number of continuous strings of sequence data.

  OTHER AVAILABLE INFORMATION IN THE SEQUENCE LISTING

  • 23. The order of the items of information in the sequence listings shall follow the order in which those items are listed in the list of numeric identifiers of data elements as defined in Appendix 1.
  • 24. Only numeric identifiers of data elements as defined in Appendix 1 shall be used for the presentation of the items of information in the sequence listing. The corresponding numeric identifier descriptions shall not be used. The provided information shall follow immediately after the numeric identifier while only those numeric identifiers for which information is given need appear on the sequence listing. Two exceptions to this requirement are numeric identifiers <220> and <300>, which serve as headers for “Feature” and “Publication Information,” respectively, and are associated with information in numeric identifiers <221> to <223> and <301> to <313>, respectively. When feature and publication information is provided in the sequence listing under those numeric identifiers, numeric identifiers <220> and <300>, respectively, should be included, but left blank. Generally, a blank line shall be inserted between numeric identifiers when the digit in the first or second position of the numeric identifier changes. An exception to this general rule is that no blank line should appear preceding numeric identifier <310>. Additionally, a blank line shall precede any repeated numeric identifier.

Mandatory Data Elements

  • 25. The sequence listing shall include, in addition to and immediately preceding the actual nucleotide and/or amino acid sequence, the following items of information defined in Appendix 1 (mandatory data elements).
    <110> Applicant name
    <120> Title of invention
    <160> Number of SEQ ID NOs
    <210> SEQ ID NO: x
    <211> Length
    <212> Type
    <213> Organism
    <400> Sequence

    Where the name of the applicant (numeric identifier <110>) is written in characters other than those of the Latin alphabet, it shall also be indicated in characters of the Latin alphabet either as a mere transliteration or through translation into English.

    The data elements, except those under numeric identifiers <110>, <120> and <160>, shall be repeated for each sequence included in the sequence listing. Only the data elements under numeric identifiers <120> and <400> are mandatory if no sequence is present for a sequence identifier (see paragraph 5, above, and SEQ ID NO: 4 in the example depicted in Appendix 3 of this Standard).

  • 26. In addition to the data elements identified in paragraph 25, above, when a sequence listing is furnished at any time following the assignment of an application number, the following data element shall be included in the sequence listing:
    <130> File reference
  • 27. In addition to the data elements identified in paragraph 25, above, when a sequence listing is furnished at any time following the assignment of an application number, the following data elements shall be included in the sequence listing:
    <140> Current patent application
    <141> Current filing date
  • 28. In addition to the data elements identified in paragraph 25, above, when a sequence listing is filed relating to an application which claims the priority of an earlier application, the following data elements shall be included in the sequence listing:
    <150> Earlier patent application
    <151> Earlier application filing date
  • 29. If “n” or “Xaa” or a modified base or modified/unusual L-amino acid is used in the sequence, the following data elements are mandatory:
    <220> Feature
    <221> Name/key
    <222> Location
    <223> Other information
  • 30. If the organism (numeric identifier <213>) is “Artificial Sequence” or “Unknown,” the following data elements are mandatory:
    <220> Feature
    <223> Other information

Optional Data Elements

  • 31. All data elements defined in Appendix 1, not mentioned in paragraphs 25 to 30, above, are optional (optional data elements).

Presentation of Features

  • 32. When features of sequences are presented (that is, numeric identifier <220>), they shall be described by the “feature keys” set out in Appendix 2, Tables 5 and 6.

Free Text

  • 33. “Free text” is a wording describing characteristics of the sequence under numeric identifier <223> (Other information) which does not use language-neutral vocabulary as referred to in paragraph 2(vii).
  • 34. The use of free text shall be limited to a few short terms indispensable for the understanding of the sequence. It shall not exceed four lines with a maximum of 65 characters per line for each given data element, when written in English. Any further information shall be included in the main part of the description in the language thereof.
  • 35. Any free text should preferably be in the English language.

  REPETITION OF FREE TEXT IN MAIN PART OF DESCRIPTION

  • 36. Where the sequence listing forming part of the international application contains free text, any such free text shall be repeated in the main part of the description in the language thereof. It is recommended that the free text in the language of the main part of the description be put in a specific section of the description called “Sequence Listing Free Text”.

  SEQUENCE LISTINGS IN ELECTRONIC FORM

  • 37. Any sequence listing referred to in paragraph 3 contained in an international application filed in electronic form shall be in an electronic document format and be filed by a means of transmittal that has been specified by the receiving Office for the purposes of filing of international applications in electronic form, provided that any such sequence listing shall preferably be in the electronic document format specified in paragraph 40 and be filed, if possible, by a means of transmittal which has been specified by both the receiving Office and the competent authority.
  • 38. Any sequence listing in electronic form referred to in paragraph 3ter shall be in an electronic document format that has been specified by the receiving Office (in the case of a correction) or by the competent authority (in the case of a rectification or an amendment) for the purposes of filing of international applications in electronic form, provided that any such listing shall preferably be in the electronic document format specified in paragraph 40. Any such listing shall be filed by a means of transmittal which has been specified by the receiving Office or the competent authority, as applicable, for the purposes of this paragraph; if possible, it shall preferably be filed by a means of transmittal which has been specified by both the receiving Office and the competent authority.
  • 39. Any sequence listing in electronic form referred to in paragraphs 4 and 4 bis furnished for the purposes of the international search or international preliminary examination shall be in the electronic document format specified in paragraph 40 and be filed by a means of transmittal which has been specified by the competent authority for the purposes of this paragraph.
  • 40. For the purposes of the international search and international preliminary examination, any sequence listing in electronic form shall be contained within one electronic file encoded using IBM Code Page 437, IBM Code Page 932 or a compatible code page to represent the sequence listing as set out in paragraphs 5 to 36 with no other codes included. A compatible code page, as would be required for, for example, Japanese, Chinese, Cyrillic, Arabic, Greek or Hebrew characters, is one that assigns the Roman alphabet and numerals to the same hexadecimal positions as do the specified code pages.
  • 41. Any sequence listing in the electronic document format specified in paragraph 40 shall preferably be created by dedicated software such as PatentIn.

  PROCEDURE BEFORE DESIGNATED AND ELECTED OFFICES

  • 42. For the purposes of the procedure before a designated or elected Office before which the processing of an international application which contains the disclosure of one or more nucleotide and/or amino acid sequences has started (see Rule 13 ter.3):
    • (i) any reference to the receiving Office or the competent authority shall be construed as a reference to the designated or elected Office concerned;
    • (ii) any reference to a sequence listing which is included in the international application by way of a rectification under Rule 91 or an amendment under Article 34(2)(b) of the description in relation to sequences contained in the application as filed shall be construed to also include any sequence listing included in the application, under the national law applied by the designated or elected Office concerned, by way of a rectification (of an obvious mistake) or amendment of the description in relation to sequences contained in the application as filed;
    • (iii) any reference to a sequence listing furnished for the purposes of international search or international preliminary examination shall be construed to also include any such listing furnished to the designated or elected Office concerned for the purposes of national search or examination by that Office;
    • (iv) the designated or elected Office concerned may invite the applicant to furnish to it, within a time limit which shall be reasonable under the circumstances, for the purposes of national search and/or examination, a sequence listing in electronic form complying with this Standard, unless such listing in electronic form is already available to that Office in a form and manner acceptable to it.

  Appendices

Appendix 1: Numeric Identifiers

Appendix 2: Nucleotide and Amino Acid Symbols and Feature Table

Table 1: List of Nucleotides
Table 2: List of Modified Nucleotides
Table 3: List of Amino Acids
Table 4: List of Modified and Unusual Amino Acids
Table 5: List of Feature Keys Related to Nucleotide Sequences
Table 6: List of Feature Keys Related to Protein Sequences

Appendix 3: Specimen Sequence Listing

[Appendices 1 to 3 to Annex C follow]

Annex C, Appendix 1 Numeric Identifiers

Only numeric identifiers as defined below may be used in sequence listings submitted in applications. The text of the data element headings given below shall not be included in the sequence listings.

Numeric identifiers of mandatory data elements, that is, data elements which must be included in all sequence listings (see paragraph 25 of this Standard: items 110, 120, 160, 210, 211, 212, 213 and 400) and numeric identifiers of data elements which must be included in circumstances specified in this Standard (see paragraphs 26, 27, 28, 29 and 30 of this Standard: items 130, 140, 141, 150 and 151, and 220 to 223) are marked by the symbol “M.”

Numeric identifiers of optional data elements (see paragraph 31 of this Standard) are marked by the symbol “O.”

Numeric Identifier Numeric Identifier Description Mandatory (M) or Optional (O) Comment
<110> Applicant name M where the name of the applicant is written in characters other than those of the Latin alphabet, the same shall also be indicated in characters of the Latin alphabet either as a mere transliteration or through translation into English
<120> Title of Invention M
<130> File Reference M, in the circumstances specified in paragraph 26 of this Standard see paragraph 26 of this Standard
<140> Current patent application M, in the circumstances specified in paragraph 27 of this Standard see paragraph 27 of this Standard; the current patent application shall be identified, in the following order, by the two-letter code indicated in accordance with WIPO Standard ST.3 and the application number (in the format used by the industrial property Office with which the current patent application is filed) or, for an international application, by the international application number
<141> Current filing date M, in the circumstances specified in paragraph 27 of this Standard see paragraph 27 of this Standard; the date shall be indicated in accordance with WIPO Standard ST.2 (CCYY MM DD)
<150> Earlier patent application M, in the circumstances specified in paragraph 28 of this Standard see paragraph 28 of this Standard; the earlier patent application shall be identified, in the following order, by the two-letter code indicated in accordance with WIPO Standard ST.3 and the application number (in the format used by the industrial property Office with which the earlier patent application was filed) or, for an international application, by the international application number
<151> Earlier application filing date M, in the circumstances specified in paragraph 28 of this Standard see paragraph 28 of this Standard; the date shall be indicated in accordance with WIPO Standard ST.2 (CCYY MM DD)
<160> Number of SEQ ID NOs M
<170> Software O
<210> Information for SEQ ID NO: x M response shall be an integer representing the SEQ ID NO shown
<211> Length M sequence length expressed in number of base pairs or amino acids
<212> Type M type of molecule sequenced in SEQ ID NO: x, either DNA, RNA or PRT; if a nucleotide sequence contains both DNA and RNA fragments, the value shall be “DNA”; in addition, the combined DNA/RNA molecule shall be further described in the <220> to <223> feature section
<213> Organism M Genus Species (that is, scientific name) or “Artificial Sequence” or “Unknown”
<220> Feature M, in the circumstances specified in paragraph 29 and 30 of this Standard leave blank; see paragraphs 29 and 30 of this Standard; description of points of biological significance in the sequence in SEQ ID NO: x) (may be repeated depending on the number of features indicated)
<221> Name/key M in the circumstances specified in paragraph 29 of this Standard see paragraph 29 of this Standard; only those keys as described in Table 5 or 6 of Appendix 2 shall be used
<222> Location M, in the circumstances specified in paragraph 29 of this Standard see paragraph 29 of this Standard; - from (number of first base/amino acid in the feature) - to (number of last base/amino acid in the feature) - base pairs (numbers refer to positions of base pairs in a nucleotide sequence) - amino acids (numbers refer to positions of amino acid residues in an amino acid sequence) - whether feature is located on the complementary strand to that filed in the sequence listing
<223> Other information: M, in the circumstances specified in paragraphs 29 and 30 of this Standard see paragraphs 29 and 30 of this Standard; any other relevant information, using language neutral vocabulary, or free text (preferably in English); any free text is to be repeated in the main part of the description in the language thereof (see paragraph 36 of this Standard); where any modified base or modified/unusual L-amino acid appearing in Appendix 2, Tables 2 and 4, is in the sequence, the symbol associated with that base or amino acid from Appendix 2, Tables 2 and 4, should be used
<300> Publication information O leave blank; repeat section for each relevant publication
<301> Authors O
<302> Title O title of publication
<303> Journal O journal name in which data published
<304> Volume O journal volume in which data published
<305> Issue O journal issue number in which data published
<306> Pages O journal page numbers on which data published
<307> Date O journal date on which data published; if possible, the date shall be indicated in accordance with WIPO Standard ST.2 (CCYY MM DD)
<308> Database accession number O accession number assigned by database including database name
<309> Database entry date O date of entry in database; the date shall be indicated in accordance with WIPO Standard ST.2 (CCYY MM DD)
<310> Document number O document number, for patent type citations only; the full document shall specify, in the following order, the two-letter code indicated in accordance with WIPO Standard ST.3, the publication number indicated in accordance with WIPO Standard ST.6, and the kind-of-document code indicated in accordance with WIPO Standard ST.16
<311> Filing date O document filing date, for patent-type citations only; the date shall be indicated in accordance with WIPO Standard ST.2 (CCYY MM DD)
<312> Publication date O document publication date; for patent-type citations only; the date shall be indicated in accordance with WIPO Standard ST.2 (CCYY MM DD)
<313> Relevant residues in SEQ ID NO: x: from to O
<400> Sequence M SEQ ID NO: x should follow the numeric identifier and should appear on the line preceding the sequence (see Appendix 3)

Annex C, Appendix 2 Nucleotide and Amino Acid Symbols and Feature Table

Table 1: List of Nucleotides
Symbol Meaning Origin of designation
a a adenine
g g guanine
c c cytosine
t t thymine
u u uracil
r g or a pu rine
y t/u or c p yrimidine
m a or c a mino
k g or t/u keto
s g or c strong interactions 3H-bonds
w a or t/u weak interactions 2H-bonds
b g or c or t/u not a
d a or g or t/u not c
h a or c or t/u not g
v a or g or c not t, not u
n a or g or c or t/u, unknown, or other a ny
Table 2: List of Modified Nucleotides
Symbol Meaning
ac4c 4-acetylcytidine
chm5u 5-(carboxyhydroxymethyl)uridine
cm 2'-O-methylcytidine
cmnm5s2u 5-carboxymethylaminomethyl-2-thiouridine
cmnm5u 5-carboxymethylaminomethyluridine
d dihydrouridine
fm 2'-O-methylpseudouridine
gal q beta, D-galactosylqueuosine
gm 2'-O-methylguanosine
i inosine
i6a N6-isopentenyladenosine
m1a 1-methyladenosine
m1f 1-methylpseudouridine
m1g 1-methylguanosine
m1i 1-methylinosine
m22g 2,2-dimethylguanosine
m2a 2-methyladenosine
m2g 2-methylguanosine
m3c 3-methylcytidine
m5c 5-methylcytidine
m6a N6-methyladenosine
m7g 7-methylguanosine
mam5u 5-methylaminomethyluridine
mam5s2u 5-methoxyaminomethyl-2-thiouridine
man q beta, D-mannosylqueuosine
mcm5s2u 5-methoxycarbonylmethyl-2-thiouridine
mcm5u 5-methoxycarbonylmethyluridine
mo5u 5-methoxyuridine
ms2i6a 2-methylthio-N6-isopentenyladenosine
ms2t6a N-((9-beta-D-ribofuranosyl-2-methylthiopurine-6-yl)carbamoyl)threonine
mt6a N-((9-beta-D-ribofuranosylpurine-6-yl)N-methylcarbamoyl)threonine
mv uridine-5-oxyacetic acid-methylester
o5u uridine-5-oxyacetic acid
osyw wybutoxosine
p pseudouridine
q queuosine
s2c 2-thiocytidine
s2t 5-methyl-2-thiouridine
s2u 2-thiouridine
s4u 4-thiouridine
t 5-methyluridine
t6a N-((9-beta-D-ribofuranosylpurine-6-yl)-carbamoyl)threonine
tm 2'-O-methyl-5-methyluridine
um 2'-O-methyluridine
yw wybutosine
x 3-(3-amino-3-carboxy-propyl)uridine, (acp3)u
Table 3: List of Amino Acids
Symbol Meaning
Ala Alanine
Cys Cysteine
Asp Aspartic Acid
Glu Glutamic Acid
Phe Phenylalanine
Gly Glycine
His Histidine
Ile Isoleucine
Lys Lysine
Leu Leucine
Met Methionine
Asn Asparagine
Pro Proline
Gln Glutamine
Arg Arginine
Ser Serine
Thr Threonine
Val Valine
Trp Tryptophan
Tyr Tyrosine
Asx Asp or Asn
Glx Glu or Gln
Xaa unknown or other
Table 4: List of Modified and Unusual Amino Acids
Symbol Meaning
Aad 2-Aminoadipic acid
bAad 3-Aminoadipic acid
bAla beta-Alanine, beta-Aminopropionic acid
Abu 2-Aminobutyric acid
4Abu 4-Aminobutyric acid, piperidinic acid
Acp 6-Aminocaproic acid
Ahe 2-Aminoheptanoic acid
Aib 2-Aminoisobutyric acid
bAib 3-Aminoisobutyric acid
Apm 2-Aminopimelic acid
Dbu 2,4 Diaminobutyric acid
Des Desmosine
Dpm 2,2'-Diaminopimelic acid
Dpr 2,3-Diaminopropionic acid
EtGly N-Ethylglycine
EtAsn N-Ethylasparagine
Hyl Hydroxylysine
aHyl allo-Hydroxylysine
3Hyp 3-Hydroxyproline
4Hyp 4-Hydroxyproline
Ide Isodesmosine
aIle allo-Isoleucine
MeGly N-Methylglycine, sarcosine
MeIle N-Methylisoleucine
MeLys 6-N-Methyllysine
MeVal N-Methylvaline
Nva Norvaline
Nle Norleucine
Orn Ornithine
Table 5: List of Feature Keys Related to Nucleotide Sequences
Key Description
allele a related individual or strain contains stable, alternative forms of the same gene which differs from the presented sequence at this location (and perhaps others)
attenuator (1) region of DNA at which regulation of termination of transcription occurs, which controls the expression of some bacterial operons; (2) sequence segment located between the promoter and the first structural gene that causes partial termination of transcription
C_region constant region of immunoglobulin light and heavy chains, and T-cell receptor alpha, beta, and gamma chains; includes one or more exons depending on the particular chain
CAAT_signal CAAT box; part of a conserved sequence located about 75 bp up-stream of the start point of eukaryotic transcription units which may be involved in RNA polymerase binding; consensus=GG (C or T) CAATCT
CDS coding sequence; sequence of nucleotides that corresponds with the sequence of amino acids in a protein (location includes stop codon); feature includes amino acid conceptual translation
conflict independent determinations of the “same” sequence differ at this site or region
D-loop displacement loop; a region within mitochondrial DNA in which a short stretch of RNA is paired with one strand of DNA, displacing the original partner DNA strand in this region; also used to describe the displacement of a region of one strand of duplex DNA by a single stranded invader in the reaction catalyzed by RecA protein
D-segment diversity segment of immunoglobulin heavy chain, and T-cell receptor beta chain
enhancer a cis-acting sequence that increases the utilization of (some) eukaryotic promoters, and can function in either orientation and in any location (upstream or downstream) relative to the promoter
exon region of genome that codes for portion of spliced mRNA; may contain 5'UTR all CDSs, and 3'UTR
GC_signal GC box; a conserved GC-rich region located upstream of the start point of eukaryotic transcription units which may occur in multiple copies or in either orientation; consensus=GGGCGG
gene region of biological interest identified as a gene and for which a name has been assigned
iDNA intervening DNA; DNA which is eliminated through any of several kinds of recombination
intron a segment of DNA that is transcribed, but removed from within the transcript by splicing together the sequences (exons) on either side of it
J_segment joining segment of immunoglobulin light and heavy chains, and T-cell receptor alpha, beta, and gamma chains
LTR long terminal repeat, a sequence directly repeated at both ends of a defined sequence, of the sort typically found in retroviruses
mat_peptide mature peptide or protein coding sequence; coding sequence for the mature or final peptide or protein product following post-translational modification; the location does not include the stop codon (unlike the corresponding CDS)
misc_binding site in nucleic acid which covalently or non-covalently binds another moiety that cannot be described by any other Binding key (primer_bind or protein_bind)
misc_difference feature sequence is different from that presented in the entry and cannot be described by any other Difference key (conflict, unsure, old_sequence, mutation, variation, allele, or modified_base)
misc_feature region of biological interest which cannot be described by any other feature key; a new or rare feature
misc_recomb site of any generalized, site-specific or replicative recombination event where there is a breakage and reunion of duplex DNA that cannot be described by other recombination keys (iDNA and virion) or qualifiers of source key (/insertion_seq, /transposon, /proviral)
misc_RNA any transcript or RNA product that cannot be defined by other RNA keys (prim_transcript, precursor_RNA, mRNA, 5'clip, 3'clip, 5'UTR, 3'UTR, exon, CDS, sig_peptide, transit_peptide, mat_peptide, intron, polyA_site, rRNA, tRNA, scRNA, and snRNA)
misc_signal any region containing a signal controlling or altering gene function or expression that cannot be described by other Signal keys (promoter, CAAT_signal, TATA_signal, -35_signal, -10_signal, GC_signal, RBS, polyA_signal, enhancer, attenuator, terminator, and rep_origin)
misc_structure any secondary or tertiary structure or conformation that cannot be described by other Structure keys (stem_loop and D-loop)
modified_base the indicated nucleotide is a modified nucleotide and should be substituted for by the indicated molecule (given in the mod_base qualifier value)
mRNA messenger RNA; includes 5' untranslated region (5'UTR), coding sequences (CDS, exon) and 3' untranslated region (3'UTR)
mutation a related strain has an abrupt, inheritable change in the sequence at this location
N_region extra nucleotides inserted between rearranged immunoglobulin segments
old_sequence the presented sequence revises a previous version of the sequence at this location
polyA_signal recognition region necessary for endonuclease cleavage of an RNA transcript that is followed by polyadenylation; consensus=AATAAA
polyA_site site on an RNA transcript to which will be added adenine residues by post-transcriptional polyadenylation
precursor_RNA any RNA species that is not yet the mature RNA product; may include 5' clipped region (5'clip), 5' untranslated region (5'UTR), coding sequences (CDS, exon), intervening sequences (intron), 3' untranslated region (3'UTR), and 3' clipped region (3'clip)
prim_transcript primary (initial, unprocessed) transcript; includes 5' clipped region (5'clip), 5' untranslated region (5'UTR), coding sequences (CDS, exon), intervening sequences (intron), 3' untranslated region (3'UTR), and 3' clipped region (3' clip)
primer_bind non-covalent primer binding site for initiation of replication, transcription, or reverse transcription; includes site(s) for synthetic, for example, PCR primer elements
promoter region on a DNA molecule involved in RNA polymerase binding to initiate transcription
protein_bind non-covalent protein binding site on nucleic acid
RBS ribosome binding site
repeat_region region of genome containing repeating units
repeat_unit single repeat element
rep_origin origin of replication; starting site for duplication of nucleic acid to give two identical copies
rRNA mature ribosomal RNA; the RNA component of the ribonucleoprotein particle (ribosome) which assembles amino acids into proteins
S_region switch region of immunoglobulin heavy chains; involved in the rearrangement of heavy chain DNA leading to the expression of a different immunoglobulin class from the same B-cell
satellite many tandem repeats (identical or related) of a short basic repeating unit; many have a base composition or other property different from the genome average that allows them to be separated from the bulk (main band) genomic DNA
scRNA small cytoplasmic RNA; any one of several small cytoplasmic RNA molecules present in the cytoplasm and (sometimes) nucleus of a eukaryote
sig_peptide signal peptide coding sequence; coding sequence for an N-terminal domain of a secreted protein; this domain is involved in attaching nascent polypeptide to the membrane; leader sequence
snRNA small nuclear RNA; any one of many small RNA species confined to the nucleus; several of the snRNAs are involved in splicing or other RNA processing reactions
source identifies the biological source of the specified span of the sequence; this key is mandatory; every entry will have, as a minimum, a single source key spanning the entire sequence; more than one source key per sequence is permissable
stem_loop hairpin; a double-helical region formed by base-pairing between adjacent (inverted) complementary sequences in a single strand of RNA or DNA
STS Sequence Tagged Site; short, single-copy DNA sequence that characterizes a mapping landmark on the genome and can be detected by PCR; a region of the genome can be mapped by determining the order of a series of STSs
TATA_signal TATA box; Goldberg-Hogness box; a conserved AT-rich septamer found about 25 bp before the start point of each eukaryotic RNA polymerase II transcript unit which may be involved in positioning the enzyme for correct initiation; consensus=TATA(A or T)A(A or T)
terminator sequence of DNA located either at the end of the transcript or adjacent to a promoter region that causes RNA polymerase to terminate transcription; may also be site of binding of repressor protein
transit_peptide transit peptide coding sequence; coding sequence for an N-terminal domain of a nuclear-encoded organellar protein; this domain is involved in post-translational import of the protein into the organelle
tRNA mature transfer RNA, a small RNA molecule (75-85 bases long) that mediates the translation of a nucleic acid sequence into an amino acid sequence
unsure author is unsure of exact sequence in this region
V_region variable region of immunoglobulin light and heavy chains, and T-cell receptor alpha, beta, and gamma chains; codes for the variable amino terminal portion; can be made up from V_segments, D_segments, N_regions, and J_segments
V_segment variable segment of immunoglobulin light and heavy chains, and T-cell receptor alpha, beta, and gamma chains; codes for most of the variable region (V_region) and the last few amino acids of the leader peptide
variation a related strain contains stable mutations from the same gene (for example, RFLPs, polymorphisms, etc.) which differ from the presented sequence at this location (and possibly others)
3'clip 3'-most region of a precursor transcript that is clipped off during processing
3'UTR region at the 3′ end of a mature transcript (following the stop codon) that is not translated into a protein
5'clip 5'-most region of a precursor transcript that is clipped off during processing
5'UTR region at the 5' end of a mature transcript (preceding the initiation codon) that is not translated into a protein
-10_signal pribnow box; a conserved region about 10 bp upstream of the start point of bacterial transcription units which may be involved in binding RNA polymerase; consensus=TAtAaT
-35_signal a conserved hexamer about 35 bp upstream of the start point of bacterial transcription units; consensus=TTGACa [ ] or TGTTGACA [ ]
Table 6: List of Feature Keys Related to Protein Sequences
Key Description
CONFLICT different papers report differing sequences
VARIANT authors report that sequence variants exist
VARSPLIC description of sequence variants produced by alternative splicing
MUTAGEN site which has been experimentally altered
MOD_RES post-translational modification of a residue
ACETYLATION N-terminal or other
AMIDATION generally at the C-terminal of a mature active peptide
BLOCKED undetermined N- or C-terminal blocking group
FORMYLATION of the N-terminal methionine
GAMMA-CARBOXYGLUTAMIC ACID HYDROXYLATION of asparagine, aspartic acid, proline or lysine
METHYLATION generally of lysine or arginine
PHOSPHORYLATION of serine, threonine, tyrosine, aspartic acid or histidine
PYRROLIDONE CARBOXYLIC ACID N-terminal glutamate which has formed an internal cyclic lactam
SULFATATION generally of tyrosine
LIPID covalent binding of a lipidic moiety
MYRISTATE myristate group attached through an amide bond to the N-terminal glycine residue of the mature form of a protein or to an internal lysine residue
PALMITATE palmitate group attached through a thioether bond to a cysteine residue or through an ester bond to a serine or threonine residue
FARNESYL farnesyl group attached through a thioether bond to a cysteine residue
GERANYL-GERANYL geranyl-geranyl group attached through a thioether bond to a cysteine residue
GPI-ANCHOR glycosyl-phosphatidylinositol (GPI) group linked to the alpha-carboxyl group of the C-terminal residue of the mature form of a protein
N-ACYL DIGLYCERIDE N-terminal cysteine of the mature form of a prokaryotic lipoprotein with an amide-linked fatty acid and a glyceryl group to which two fatty acids are linked by ester linkages
DISULFID disulfide bond; the ‘FROM’ and ‘TO’ endpoints represent the two residues which are linked by an intra-chain disulfide bond; if the ‘FROM’ and ‘TO’ endpoints are identical, the disulfide bond is an interchain one and the description field indicates the nature of the cross-link
THIOLEST thiolester bond; the ‘FROM’ and ‘TO’ endpoints represent the two residues which are linked by the thiolester bond
THIOETH thioether bond; the ‘FROM’ and ‘TO’endpoints represent the two residues which are linked by the thioether bond
CARBOHYD glycosylation site; the nature of the carbohydrate (if known) is given in the description field
METAL binding site for a metal ion; the description field indicates the nature of the metal
BINDING binding site for any chemical group (co-enzyme, prosthetic group, etc.); the chemical nature of the group is given in the description field
SIGNAL extent of a signal sequence (prepeptide)
TRANSIT extent of a transit peptide (mitochondrial, chloroplastic, or for a microbody)
PROPEP extent of a propeptide
CHAIN extent of a polypeptide chain in the mature protein
PEPTIDE extent of a released active peptide
DOMAIN extent of a domain of interest on the sequence; the nature of that domain is given in the description field
CA_BIND extent of a calcium-binding region
DNA_BIND extent of a DNA-binding region
NP_BIND extent of a nucleotide phosphate binding region; the nature of the nucleotide phosphate is indicated in the description field
TRANSMEM extent of a transmembrane region
ZN_FING extent of a zinc finger region
SIMILAR extent of a similarity with another protein sequence; precise information, relative to that sequence is given in the description field
REPEAT extent of an internal sequence repetition
HELIX secondary structure: Helices, for example, Alpha-helix, 3(10) helix, or Pi-helix
STRAND secondary structure: Beta-strand, for example, Hydrogen bonded beta-strand, or Residue in an isolated beta-bridge
TURN secondary structure Turns, for example, H-bonded turn (3-turn, 4-turn or 5-turn)
ACT_SITE amino acid(s) involved in the activity of an enzyme
SITE any other interesting site on the sequence
INIT_MET the sequence is known to start with an initiator methionine
NON_TER the residue at an extremity of the sequence is not the terminal residue; if applied to position 1, this signifies that the first position is not the N-terminus of the complete molecule; if applied to the last position, it signifies that this position is not the C-terminus of the complete molecule; there is no description field for this key
NON_CONS non consecutive residues; indicates that two residues in a sequence are not consecutive and that there are a number of unsequenced residues between them
UNSURE uncertainties in the sequence; used to describe region(s) of a sequence for which the authors are unsure about the sequence assignment

[Annex C, Appendix 3, follows]

Annex C, Appendix 3 Specimen Sequence Listing

Sample Sequence Listing [Page 1 of 2]
Sample Sequence Listing [Page 2 of 2]

[Annex C- bis follows]

Annex D INFORMATION FROM FRONT PAGE OF PUBLISHED INTERNATIONAL APPLICATION TO BE INCLUDED IN THE GAZETTE UNDER RULE 86.1(i)

The following information shall be extracted from the front page of the publication of the international publication for each published international application and shall, in accordance with Rule 86.1 (i), appear in the corresponding entry of the Gazette:

  • 1. as to the international publication:
    • 1.1 the international publication number
    • 1.2 the date of the international publication
    • 1.3 an indication whether the following items were published in the published international application:
      • 1.31 international search report
      • 1.32 declaration under Article 17 (2)
      • 1.33 claims amended under Article 19 (1)
      • 1.34 statement under Article 19 (1)
      • 1.35 [ Deleted]
      • 1.36 request for rectification under the third sentence of Rule 91.3 (d)
      • 1.37 information concerning the incorporation by reference of an element or part as referred to in Rule 48.2 (b)(v)

        1.38 information concerning a priority claim under Rule 26 bis.2 (d)

        1.39 information concerning a request under Rule 26bis .3 for restoration of the right of priority

        1.40 information on copies of any declaration or other evidence furnished under Rule 26 bis.3 (f)

    • 1.4 the language in which the international application was filed
    • 1.5 the language of publication of the international application
  • 2. as to the international application:
    • 2.1 the title of the invention
    • 2.2 the symbol(s) of the International Patent Classification (IPC)
    • 2.3 the international application number
    • 2.4 the international filing date
  • 3. as to any priority claim:
    • 3.1 the application number of the earlier application
    • 3.2 the date on which the earlier application was filed
    • 3.3 where the earlier application is:
      • 3.31 a national application: the country in which the earlier application was filed
      • 3.32 a regional application: the authority entrusted with the granting of regional patents under the applicable regional patent treaty and, in the case referred to in Rule 4.1 0(b)(ii), a country party to the Paris Convention for the Protection of Industrial Property for which that earlier application was filed
      • 3.33 an international application: the receiving Office with which it was filed
  • 4. as to the applicant, inventor and agent:
    • 4.1 their name(s)
    • 4.2 their mailing address(es)
  • 5. as to the designated States:
    • 5.1 their names
    • 5.2 the indication of any wish for a regional patent
    • 5.3 the indication that every kind of protection available is sought, unless otherwise indicated
  • 6. as to a statement concerning non-prejudicial disclosure or exception to lack of novelty:
    • 6.1 the date of the disclosure
    • 6.2 the place of the disclosure
    • 6.3 the kind of the disclosure (e.g., exhibition, scientific publication, conference reports, etc.)
    • 6.4 the title of the exhibition, publication or conference
  • 7. as to any indication in relation to deposited biological material furnished under Rule 13bis separately from the description:
    • 7.1 the fact that such indication is published
    • 7.2 the date on which the International Bureau received such indication
  • 8. as to any declaration referred to in Rule 4.17 which was received by the International Bureau before the expiration of the time limit under Rule 26ter.1 :
    • 8.1 the fact that such a declaration was made and a reference to the applicable item in Rule 4.17 under which it was made

    [Annex E follows]

Annex E INFORMATION TO BE PUBLISHED IN THE GAZETTE UNDER RULE 86.1(v)

  • 1. The time limits applicable under Articles 22 and 39 in respect of each Contracting State.
  • 2. The list of the non-patent literature agreed upon by the International Searching Authorities for inclusion in the minimum documentation.
  • 3. The names of the national Offices which do not wish to receive copies under Article 13 (2)(c).
  • 4. The provisions of the national laws of Contracting States concerning international-type search.
  • 5. The text of the agreements entered into between the International Bureau and the International Searching Authorities or the International Preliminary Examining Authorities.
  • 6. The names of the national Offices which entirely or in part waived their rights to any communication under Article 20 .
  • 7. The names of the Contracting States which are bound by Chapter II of the PCT.
  • 8. Index of concordance of international application numbers and international publication numbers, listed according to international application numbers.
  • 9. Index of applicants’ names giving, for each name, the corresponding international publication number(s).
  • 10. Index of international publication numbers, grouped according to the International Patent Classification symbols.
  • 11. Indication of any subject matter that will not be searched or examined by the various International Searching and Preliminary Examining Authorities under Rules 39 and 67.
  • 12. Requirements of designated and elected Offices under Rules 49.5 and 76.5 in relation to the furnishing of translations.
  • 13. The dates defining the period referred to in Rule 32.1(b) during which the international application, whose effects may be extended to a successor State under Rule 32.1, must have been filed.
  • 14. The criteria for restoration of the right of priority applied by receiving Offices under Rule 26bis .3 or designated Offices under Rule 49ter .2, and any subsequent changes in that respect.

[Annex F follows]

Annex F STANDARD FOR THE ELECTRONIC FILING AND PROCESSING OF INTERNATIONAL APPLICATIONS

[ Annex F consists of nine main sections and four appendices, the titles of which are reproduced below. The full text of Annex F and its Appendices are set out in two separate documents available from the WIPO Web site at: http://www.wipo.int/pct/en/texts/index.html . .

  • 1. Introduction
  • 2. The E-PCT standard: Overview and vision
  • 3. E-PCT submission structure and format
  • 4. IA documents packaging
  • 5. Transmission
  • 6. Electronic filing software
  • 7. [Deleted]
  • 8. Principles of electronic records management
  • 9. Abbreviated expressions, interpretation and glossary

Appendix I XML DTDs for the E-PCT Standard

Appendix II PKI Architecture for the E-PCT Standard

Appendix III Basic Common Standard for Electronic Filing

Appendix IV Use of Physical Media for the E-PCT Standard

[End of Appendix, Annex and document]

 

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