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  • The International Bureau shall refund the SIS fee if the international application is withdrawn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  

  • Did you know that by using the Global PPH system, a positive PCT report from Nordic Patent Institute can give you the possibility of fast-tracking a corresponding application at 16 other patent offices?
  • Did you know that for a small additional fee, we can add a claim chart to your validity search report, conveniently mapping the relevant references against the claim features for clarity purposes?
  • Did you know that both the Norwegian and the Danish Patent Offices, which perform all searches for Nordic Patent Institute, have over 100 years' experience with patent searching?
  • Did you know that when carrying out their PCT searches, our examiners always search Nordic (Norwegian, Danish, Swedish and Finnish) material?
  • Did you know that in validity searches performed by Nordic Patent Institute, references of particular relevance or obviousness-type references were found in about 70 % of the tasks given to us?
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  • Did you know that the combined languages skills of our examiners bring our searching fluency to over 30 languages?
  • Did you know that all the prior art searches done by Nordic Patent Institute are performed by the highly qualified and experienced PCT examiners at the Danish and Norwegian Patent Offices?
  • Did you know that our examiners spend about 60 % of their time examining patent applications and 40 % of their time providing prior art searches and assessments to businesses and IP law firms?
  • Did you know that when it comes to the timeliness of ISAs in transmitting ISRs, Nordic Patent Institute has from the beginning been among the best ISAs?
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