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Influence of changes to the PCT Regulations on applicants (I)
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Changes to the PCT Regulations have entered into force on April 1, 2007, which involves 25 items of 11 rules, including:
1. Missing elements and parts of the international application;
2.Restoration of the right of priority;
3. Rectification of obvious mistakes;
4. Physical requirements;
5. Correction procedure;
6. PCT minimum documentation: Addition of patent documents of the Republic of Korea;
7. Minimum requirements for ISAs
As the new changes take effect, the World Intellectual Property Organization (WIPO) issues a batch of new forms and modify the original forms. The one that influences the applicant greatly is the two newly-attached instructions ““Restoration of the right of priority” and “Incorporation by reference” to the international application form (PCT/R0/101). The State Intellectual Property Office (SIPO) also modifies the declaration of PCT application entering the national phase (PCT/CN/501). All the new forms begin to be used from April 1, 2007.
In the following part, the main changes and influences brought on the applicant will be stated and the new form and content will be briefly introduced.
1. Missing elements and parts of the international application through incorporation by reference to the priority files (Rules 4.18, 20.5, 20.6)
This rule enables inclusion of accidentally omitted elements or parts that are contained in a priority application without affecting the international filing date. Element here refers to all of the description or all of the claims; part refers to part of the description, part of claims or part or all of pages of drawings.
Following conditions shall be met for this rule:
(1) Priority application contains the element or part (Rule 20.6(b));
(2) Request contains statement of (conditional) incorporation by reference (Rule 4.18);
(3) Timely confirmation of incorporation by reference (Rules 20.6 and 20.7). Time limit in this item is two months from filing or from invitation to correct (Rule 20.7).
Documents shall be filed in this rule (Rule 20.6):
(1) notice of confirmation;
(2) missing sheets;
(3) copy of the earlier application as filed unless the priority document already submitted;
(4) translation if not in the language of the international application;
(5) indication as to where in the priority document (and translation) the missing sheets are contained.
If not all requirements for incorporation by reference are fulfilled, the international application is assigned a later filing date (date of receipt of missing element or part) or applicant may request that missing part be disregarded (Rule 20.5(e)). Information incorporated by reference will be notified together with the international application.
China’s SIPO, as RO may accept this rule, but shall make reservations as DO, which means that the SIPO may not confirm the element or part that are contained in a priority application of the PCT application entering the national phase in accordance with this rule.
As of the “statement of incorporation by reference contained in the international application form submitted by the applicant” in this rule, the WIPO has modified the international application form (PCT/R0/101) and added a format rule in the column VI of the application form, i.e. “Incorporation by reference”.
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Incorporation by reference: If part of an element of international application defined in the Rule 11 (1) (iii) (d) or (e) or the instruction defined in the Rule 20.5 (a), right claim or attached drawing is not contained in the international application, but contained in a first-to-file application and the applicant requires the priority of first-to-file on the date when the RO first receives one or several elements defined in the Rule 11 (1) (iii), this element or part may be taken as target incorporation by reference into the international application after confirmation according to Rule 20.6.
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Since China’s SIPO, as DO reserve this rule, the SIPO modifies the declaration of PCT application entering the national phase (PCT/CN/501). The tenth column is added in the form, requiring the applicant to indicate the content and time of incorporation by reference in the international phase in the application form, which will not be confirmed when the examiner checks if the patent can be granted.
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10. Content of incorporation by reference in the international phase
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Instruction,
Right claim,
Attached drawing,
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Page______, Time: __________________________
Element______, Time: __________________________
Page______, Time: _________________________
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(1) China’s SIPO is the international searching authority. If after the examiner completes the international search report, the applicant asks to incorporate new content by reference, the international searching authority can re-produce the international search report according to the applicant’s requirement under the condition that the time limit of completing the international search report has not expired and the examiner has enough time to re-produce the report within the prescribed period.
(2) China’s SIPO is the designated office for reservation. This indicates that when the PCT application using this Rule in the international phase enters the national phase, the element or part incorporated by reference to the priority documents can’t be granted by the SIPO and the content is deemed as having not been filed.
(3) Where the applicant handles the entering procedure, in accordance with Rule 102 of the Implementing Regulations of the Patent Law he shall provide the Chinese version of the instruction and right claim (including content incorporated by reference) of the original application files as well as a copy of the Chinese translation without incorporation by reference (the first-filed one). Surcharge of the instruction and the items will be charged according to the Chinese translation without incorporation by reference (the first-filed one).
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