Modifications of the Patent Cooperation Treaty (PCT)

On July 1, 2020, the modifications of several Rules of the Regulations of the Patent Cooperation Treaty (PCT) will come into force. In order to know these modifications well in advance, we will make a brief summary.

Modifications can be classified into the following groups:

a) Safeguard in case of interruptions affecting the Offices (Rule 82quater)

b) Corrections and additions of indications under Rule 4.11 (Rule 26quater)

c) Elements and parts of international applications filed in error (Rules 4, 12, 20, 40bis, 55 and 82ter)

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

e) Availability of the file held by the Administration responsible for the international preliminary examination (Rules 71 and 94)

Since the modifications are enough, we will explain them in brief pills in successive InfoPI numbers. In this issue we tell you the first point.

a) Safeguard in case of interruptions affecting the Offices.

There was no provision in the PCT that allowed the Offices to excuse applicants who did not meet a deadline for submitting documents or paying fees when their filing systems were not operational, unless such applicants made a request for an excuse to be excused. the delay according to the circumstances of each case under Rule 82quater. 1.

To that end, applicants had to resort to a complex procedure to excuse a delay in accordance with Rule 82quater.1 and potentially justify decisions to subsequently excuse the delay in the national phase. In addition, the Offices had to evaluate the applications according to the circumstances of each case under Rule 82quater.1, which constituted a cumbersome procedure. This added some uncertainty when the application enters the national phase, given the lack of publicly available information.

Therefore, a new Rule 82quater.2 is included in order to address this situation in a way that provides flexibility to the Offices. The proposal refers only to failures in electronic services, and not to paper transmissions. On the other hand, the modification will make it possible to excuse the breach of a deadline before the Offices even if only one of several possible services had ceased to be available, as long as the procedure is carried out on the first working day in which all electronic means are available.

In this sense, the Offices are obliged to publish the necessary information on the unavailability of the services, as well as the expected duration. At this point, it is clear that if, by the time the information on unavailability is published, the applicant has performed the acts of art. 22 or 39 PCT, the designated or elected Office will not consider the excuse of a delay in meeting a deadline.

This modification will take effect on July 1, 2020 and will apply to any term to which Rule 82quater.2a) that expires on that date or later applies.

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