Amendments to the Regulations for the Patent Cooperation Treaty (IV)

This will be the last of the informative pills on the modifications of various Rules of the Regulation of the Patent Cooperation Treaty (hereinafter, PCT) that we have been publishing in different issues of this magazine.

We remind you that the modifications can be classified into the following groups:

1. Safeguard in the event of interruptions affecting the Offices (Rule 82quater)
2. Corrections and additions of indications under Rule 4.11 (Rule 26quater)
3. Elements and parts of international applications filed in error (Rules 4, 12, 20, 40bis, 55 and 82ter)
4. Transfer of PCT fees (Rules 15, 16, 57 and 96)
5. Availability of the file held by the Administration in charge of the international preliminary examination (Rules 71 and 94)

In this InfoPI we will finish with the fourth and fifth points.

4. Transfer of PCT fees (Rules 15, 16, 57 and 96)

The International Bureau launched the project, called the “Balance Compensation Project”, with the main objective of reducing the risk of exposure to exchange rate fluctuations and improving cash management, reducing costs and efforts and simplify procedures for the different Offices involved. The amendment of the aforementioned rules is intended to create a legal framework that establishes a clear basis for the transfer of all PCT fee transactions through the International Bureau, now called the "fee transfer service".

Specifically, a new Rule 96.2 is included regarding the collection and transfer of fees. The established procedure is that the Office that receives the fees in favor of another Office (Beneficiary Office) will notify the beneficiary Office of the collection of said fees and will transfer them to the International Bureau. The beneficiary Office will act as if it has received the fees. The detailed development of the procedure is left to the Administrative Instructions.

These modifications took effect on July 1, 2020 and will apply to any international application for which the office that receives the fees transfers them on or after that date.

5. Availability of the file held by the Administration in charge of the international preliminary examination (Rules 71 and 94)

These amendments are intended to require the International Preliminary Examination Administration (IPEA) to forward to the International Bureau some documents contained in the file in its possession. This would allow easier access to these documents for examiners from the chosen Offices. In addition, the International Bureau will make the documents available to the public on behalf of the chosen Office, which will make the international preliminary examination process more transparent.

These modifications have also entered into force on July 1, 2020 and will apply to any document received or issued by the International Preliminary Examination Administration on or after that date.

More information

https://www.wipo.int/pct/es/