Modifications of the Patent Cooperation Treaty (PCT)

As we have already announced in the InfoPi issue of last February, we continue with our information pills on the modifications of various Rules of the Regulation of the Patent Cooperation Treaty (hereinafter, PCT) that will enter into force on the 1^st July 2020.

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 focus on the second point.

2. Corrections and additions of indications under Rule 4.11.

Currently there are no legal provisions in the PCT or its Regulations for the correction or addition during the international phase of two indications:

• Indications of Rule 4.11.ai) by which the applicant can indicate in the request form that the international application is processed, not for the granting of a patent but for the granting of another type of protection (addition patent, certificate of addition, inventor's certificate or utility certificate of addition);
• Indications of Rule 4.11.a) ii) by which the applicant can indicate in the request form that the international application is processed, either as a “continuation” or as a “continuation in part” of a previous application.

Therefore, a new Rule 26quater has been adopted to provide a legal basis for the correction or addition of the indications provided for in Rule 4.11.a) i) and ii) within a period of 16 months from the priority date or before the International Bureau has completed the technical preparations for the international publication.

The new Rule 26quater will take effect on July 1, 2020 and will apply to any international application whose international filing date coincides with or after that date.

More information:

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