The PCT Assembly in Geneva - Amendments to the PCT regulations

The PCT Assembly held its 38th Session in Geneva, September 22 to 30, 2008, and adopted a number of amendments to the PCT regulations concerning the introduction of the new supplementary international searches. The Assembly also decided on a number of minor amendments to the current regulations.

Amendments concerning the Supplementary International Search (SIS) are mainly of a consequential nature in order to fill in the gaps of the previous proposed regulations introducing the SIS.

As previously announced the Nordic Patent Institute will offer SIS from January 1, 2009, along with the Swedish and Russian international search authorities.

The main amendments to SIS are outlined below:

  • The International Bureau shall refund the SIS fee if the international application is withdrawn
  • Rules relating agents and common representatives is updated to include SIS
  • Rules concerning withdrawal of a SIS request
     

Other amendments to the PCT regulations:

  • The receiving office shall notify the applicant of its intention to issue a declaration of withdrawal. The applicant is given the possibility to submit arguments within two month of notification
  • When amending patent claims the applicant is required to submit a complete set of replacement claims. In addition hereto, the applicant shall identify the amendments and draw attention to the differences between claims originally filed and amended claims
  • When amending description and drawings the applicant is required to submit a replacement sheet for every sheet which differs from the original sheet. In addition hereto, the applicant shall identify the amendments and draw attention to the differences between sheets originally filed and amended sheets
  • New criteria’s for adding any future languages of publication under the PCT is introduced.

Further details can be found on WIPO’s website