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Amendments of Regulations under the PCT (Patent Cooperation Treaty)

June 27, 2014

We inform you that, as announced publicly from Ministry of Foreign Affairs of Japan on June 18, amendments of Regulations under the PCT adopted in October, 2013 will be enforced from July 1, 2014, and with regard to international applications, there are changes in respect of the following 1 and 2.
Please keep in mind that different practices are applied according to the timing of a demand for international preliminary examination or a filing of an international application.

1. Top-up search (Rule 66.1ter)

The IPEA (International Preliminary Examining Authority) shall conduct a top-up search on an international application whose international preliminary examination is demanded for on and after July 1, 2014.
A top-up search means a search to discover documents which have been published or have become available to the IPEA for search subsequent to the date on which the ISR (International Search Report) was established. The purpose of the search is to improve the quality of international preliminary examination by discovering (1) documents which were unpublished or (2) documents which could not be searched due to a delay of their accumulation into the database, on the date of establishment of the ISR.

2. Public availability of the written opinion of the ISA (International Searching Authority) etc. on the date of international publication

In the past, written opinion of the ISA was not released until 30 months had past from the priority date. However, because the total sentence of Rule 44ter is decided to be deleted, written opinion of the ISA on an international application filed as from July 1, 2014 will be publicly available on the WIPO website( External link ) in its original language as of the date of international publication. Also, any informal comments on written opinion of the ISA submitted by the applicant will be publicly available on the WIPO website( External link ) in its original language.
In addition, the IPRP (International Preliminary Report on Patentability) Chapter Ⅰ and its translation will continue to be made available after 30 months from the priority date.

1International preliminary report on Patentability Chapter Ⅰ is prepared by International Bureau, when international preliminary examination is not demanded for. The content of the IPRP Chapter Ⅰ is the same as that of written opinion of the ISA,

(Reference 1): Regulations under the PCT after amendment

Rule 66.1ter: Top-up search (newly created)

The International Preliminary Examining Authority shall conduct a search (“top-up search”) to discover documents referred to in Rule 64 which have been published or have become available to the said Authority for search subsequent to the date on which the international search report was established, unless it considers that such a search would serve no useful purpose. If the Authority finds that any of the situations referred to in Article 34(3) or (4) or Rule 66.1(e) exists, the top-up search shall cover only those parts of the international application that are the subject of international preliminary examination.

(Reference 2): Regulations under the PCT before amendment

Rule 44ter: Confidential Nature of Written Opinion, Report, Translation and Observations (total sentence will be deleted)

Rule 44ter.1: Confidential Nature

  • (a)The International Bureau and the International Searching Authority shall not, unless requested or authorized by the applicant, allow access by any person or authority before the expiration of 30 months from the priority date:
    • (ⅰ) to the written opinion established under Rule 43bis.1, to any translation thereof prepared under Rule 44bis.3(d) or to any written observations on such translation sent by the applicant under Rule 44bis.4;
    • (ⅱ) if a report is issued under Rule 44bis.1, to that report, to any translation of it prepared under Rule 44bis.3(b) or to any written observations on that translation sent by the applicant under Rule 44bis.4.
  • (b)For the purposes of paragraph (a), the term “access” covers any means by which third parties may acquire cognizance, including individual communication and general publication.

[Last updated 27 June 2014]

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