Changes to the Patent Cooperation Treaty Regulations

In September/October 2005, the meeting of the Assembly of the Patent Cooperation Treaty (PCT) Union agreed to the amendment of certain PCT Regulations. Some of the amendments became effective on April 1, 2006, while others will enter into force on April 1, 2007.

The purpose of this notice is to provide an overview of the amendments which came into force on April 1, 2006, and to elaborate upon their practical effect for practitioners dealing with the Canadian Intellectual Property Office (CIPO) as an International Authority under the PCT. The changes apply to international applications whose international filing date is on or after April 1, 2006.

Note: This notice is intended to provide a general overview of the new amendments. A more detailed description of the changes and the revised text of the Regulations as submitted to the PCT Assembly are available on the World Intellectual Property Organization's website.

Proposed Amendments of the PCT Regulations

Exceptions to all-inclusive designation system

Prior to April 1, 2006, PCT Rule 4.9(b) provided for a limited exception to the automatic and all-inclusive coverage of all designations available under the PCT. This exception was designed to address the issue of the "self-designation" provisions which appear in the national law of certain Contracting States. However, a literal reading of the Rule had the unintended effect of allowing the exclusion of such a State in the case of any international application, regardless of whether or not it claims the priority of an earlier application filed in that State. The amendment to Rule 4.9(b) states expressly that exclusion of such a State is only allowed in respect of an international application in which the priority of an earlier national application filed in that State is claimed.

The opportunity was also taken to make such exclusions dependent on the existence of a current notification by the designated office of the Contracting State, and the revised wording thus relates to the making of such an exclusion dependent on whether a notification under the provision is still in force as of the international filing date.

Arabic as a language of publication

PCT Rule 48.3 specifies the languages of publication.Where an application is not filed in a language of publication, the applicant must provide to the receiving Office a translation into a language of publication within 14 months of the priority date.

PCT Rule 48.3 has been amended to include Arabic as a language of publication. The languages of publication are now Arabic, Chinese, English, French, German, Japanese, Russian and Spanish.

International Publication and PCT Gazette in electronic form

The PCT Regulations were amended so as to enable the International Bureau to publish international applications and the PCT Gazette in electronic form. The electronic version, rather than the paper version, is now the legally determinative version.

Should you require more information, contact CIPO's Client Service Centre.