Introductory Provisions
Article 1 Establishment of a Union
(1) The States party to this Treaty (hereinafter called "the Contracting States") constitute a Union for cooperation in the filing, searching, and examination, of applications for the protection of inventions, and for rendering special technical services. The Union shall be known as the International Patent Cooperation Union.
(2) No provision of this Treaty shall be interpreted as diminishing the rights under the Paris Convention for the Protection of Industrial Property of any national or resident of any country party to that Convention.
Article 2 Definitions
For the purposes of this Treaty and the Regulations and unless expressly stated otherwise:
(i) "application" means an application for the protection of an invention; references to an "application" shall be construed as references to applications for patents for inventions, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, and utility certificates of addition;
(ii) references to a "patent" shall be construed as references to patents for inventions, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, and utility certificates of addition;
(iii) "national patent" means a patent granted by a national authority;
(iv) "regional patent" means a patent granted by a national or an intergovernmental authority having the power to grant patents effective in more than one State;
(v) "regional application" means an application for a regional patent;
(vi) references to a "national application" shall be construed as references to applications for national patents and regional patents, other than applications filed under this Treaty;
(vii) "international application" means an application filed under this Treaty;
(viii) references to an "application" shall be construed as references to international applications and national
applications;
(ix) references to a "patent" shall be construed as references to national patents and regional patents;
(x) references to "national law" shall be construed as
references to the national law of a Contracting State or, where a regional application or a regional patent is
involved, to the treaty providing for the filing of regional applications or the granting of regional patents;
(xi) "priority date," for the purposes of computing time limits, means:
(a) where the international application contains a priority claim under Article 8, the filing date of the
application whose priority is so claimed;
(b) where the international application contains several
priority claims under Article 8, the filing date of the
earliest application whose priority is so claimed;
(c) where the international application does not contain any priority claim under Article 8, the international filing
date of such application;
(xii) "national Office" means the government authority of a Contracting State entrusted with the granting of patents;
references to a "national Office" shall be construed as
referring also to any intergovernmental authority which
several States have entrusted with the task of granting regional patents, provided that at least one of those States is a Contracting State, and provided that the said States have authorized that authority to assume the obligations and exercise the powers which this Treaty and the Regulations provide for in respect of national Offices;
(xiii) "designated Office" means the national Office of or acting for the State designated by the applicant under Chapter I of
this Treaty;
(xiv) "elected Office" means the national Office of or acting for the State elected by the applicant under Chapter II of this Treaty;
(xv) "receiving Office" means the national Office or the
intergovernmental organization with which the international application has been filed;
(xvi) "Union" means the International Patent Cooperation Union;
(xvii) "Assembly" means the Assembly of the Union;
(xviii) "Organization" means the World Intellectual Property Organization;
(xix) "International Bureau" means the International Bureau of the Organization and, as long as it subsists, the United International Bureaux for the Protection of Intellectual Property (BIRPI);
(xx) "Director General" means the Director General of the Organization and, as long as BIRPI subsists, the Director of BIRPI.
CHAPTER I International Application and International Search
Article 3 The International Application
(1) Applications for the protection of inventions in any of the Contracting States may be filed as international applications under this Treaty.
(2) An international application shall contain, as specified in this Treaty and the Regulations, a request, a description, one or more claims, one or more drawings (where required), and an abstract.
(3) The abstract merely serves the purpose of technical
informationand cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.
(4) The international application shall:
(i) be in a prescribed language;
(ii) comply with the prescribed physical requirements;
(iii) comply with the prescribed requirement of unity of
invention;
(iv) be subject to the payment of the prescribed fees.
Article 4 The Request
(1) The request shall contain:
(i) a petition to the effect that the international
application be processed according to this Treaty;
(ii) the designation of the Contracting State or States in which protection for the invention is desired on the
basis of the international application ("designated
States"); if for any designated State a regional patent
is available and the applicant wishes to obtain a
regional patent rather than a national patent, the
request shall so indicate; if, under a treaty concerning
a regional patent, the applicant cannot limit his
application to certain of the States party to that
treaty, designation of one of those States and the
indication of the wish to obtain the regional patent
shall be treated as designation of all the States party
to that treaty; if, under the national law of the
designated State, the designation of that State has the effect of an application for a regional patent, the
designation of the said State shall be treated as an
indication of the wish to obtain the regional patent;
(iii) the name of and other prescribed data concerning the applicant and the agent (if any);
(iv) the title of the invention;
(v) the name of and other prescribed data concerning the inventor where the national law of at least one of the designated States requires that these indications be furnished at the time of filing a national application.
Otherwise, the said indications may be furnished either
in the request or in separate notices addressed to each designated Office whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application.
(2) Every designation shall be subject to the payment of the prescribed fee within the prescribed time limit.
(3) Unless the applicant asks for any of the other kinds of protection referred to in Article 43, designation shall mean that the desired protection consists of the grant of a patent by or for the designated State. For the purposes of this paragraph, Article 2(ii) shall not apply.
(4) Failure to indicate in the request the name and other pre scribed data concerning the inventor shall have no consequence in any designated State whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application. Failure to furnish the said indications in a separate notice shall have no consequence in any designated
State whose national law does not require the furnishing of the said indications.
Article 5 The Description
The description shall disclose the invention in a manner
sufficiently clear and complete for the invention to be carried out by a person skilled in the art.
Article 6 The Claims
The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.
Article 7 The Drawings
(1) Subject to the provisions of paragraph (2)(ii), drawings shall be required when they are necessary for the understanding of the invention.
(2) Where, without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings:
(i) the applicant may include such drawings in the
international application when filed,
(ii) any designated Office may require that the applicant file such drawings with it within the prescribed time limit.
Article 8 Claiming Priority
(1) The international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.
(2)
(a) Subject to the provisions of subparagraph (b), the
conditions for, and the effect of, any priority claim
declared under paragraph (1) shall be as provided in
Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property.
(b) The international application for which the priority of one or more earlier applications filed in or for a Contracting State is claimed may contain the designation of that State.
Where, in the international application, the priority of
one or more national applications filed in or for a
designated State is claimed, or where the priority of an
international application having designated only one State is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by the
national law of that State.
Article 9 The Applicant
(1) Any resident or national of a Contracting State may file an international application.
(2) The Assembly may decide to allow the residents and the nationals of any country party to the Paris Convention for the Protection of Industrial Property which is not party to this Treaty to file international applications.
(3) The concepts of residence and nationality, and the application of those concepts in cases where there are several applicants or where the applicants are not the same for all the designated States, are defined in the Regulations.
Article 10 The Receiving Office
The international application shall be filed with the prescribed receiving Office, which will check and process it as provided in this Treaty and the Regulations.
Article 11 Filing Date and Effects of the International Application
(1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of
receipt:
(i) the applicant does not obviously lack, for reasons of
residence or nationality, the right to file an international application with the receiving Office,
(ii) the international application is in the prescribed
language,
(iii) the international application contains at least the
following elements:
(a) an indication that it is intended as an international application,
(b) the designation of at least one Contracting State,
(c) the name of the applicant, as prescribed,
(d) a part which on the face of it appears to be a
description,
(e) a part which on the face of it appears to be a claim or claims.
(2)
(a) If the receiving Office finds that the international application did not, at the time of receipt, fulfill the requirements listed in paragraph (1), it shall, as provided in the Regulations, invite the applicant to file the required correction.
(b) If the applicant complies with the invitation, as provided in the Regulations, the receiving Office shall accord as the international filing date the date of receipt of the required correction.
(3) Subject to Article 64(4), any international application fulfilling the requirements listed in items (1)(i) to (1)(iii) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.
(4) Any international application fulfilling the requirements listed in items (1)(i) to (1)(iii) shall be equivalent to a regular national filing within the meaning of the Paris Convention for the Protection of Industrial Property.
Article 12 Transmittal of the International Application to the International Bureau and the International Searching Authority
(1) One copy of the international application shall be kept by the receiving Office ("home copy"), one copy ("record copy") shall be transmitted to the International Bureau, and another copy
("search copy") shall be transmitted to the competent
International Searching Authority referred to in Article 16, as provided in the Regulations.
(2) The record copy shall be considered the true copy of the international application.
(3) The international application shall be considered withdrawn if the record copy has not been received by the International Bureau within the prescribed time limit.
Article 13 Availability of Copy of the International Application to Designated Offices
(1) Any designated Office may ask the International Bureau to transmit to it a copy of the international application prior to the com munication provided for in Article 20, and the International Bureau shall transmit such copy to the designated Office as soon as possible after the expiration of one year from the priority date.
(2)
(a) The applicant may, at any time, transmit a copy of his international application to any designated Office.
(b) The applicant may, at any time, ask the International Bureau to transmit a copy of his international application to any designated Office, and the International Bureau shall transmit such copy to the designated Office as soon as possible.
(c) Any national Office may notify the International Bureau that it does not wish to receive copies as provided for in subparagraph (b), in which case that subparagraph shall not be applicable in respect of that Office.
Article 14 Certain Defects in the International Application
(1)
(a) The receiving Office shall check whether the international application contains any of the following defects, that is to say:
(i) it is not signed as provided in the Regulations;
(ii) it does not contain the prescribed indications
concerning the applicant;
(iii) it does not contain a title;
(iv) it does not contain an abstract;
(v) it does not comply to the extent provided in the
Regulations with the prescribed physical requirements.
(b) If the receiving Office finds any of the said defects, it shall invite the applicant to correct the international
application within the prescribed time limit, failing which
that application shall be considered withdrawn and the
receiving Office shall so declare.
(2) If the international application refers to drawings which, in fact, are not included in that application, the receiving Office shall notify the applicant accordingly and he may furnish them within the prescribed time limit and, if he does, the international filing date shall be the date on which the drawings are received by the receiving Office. Otherwise, any reference to the said drawings shall be considered non-existent.
(3)
(a) If the receiving Office finds that, within the prescribed time limits, the fees prescribed under Article 3(4)(iv) have not been paid, or no fee prescribed under Article 4(2) has been paid in respect of any of the designated States, the international application shall be considered withdrawn and the receiving Office shall so declare.
(b) If the receiving Office finds that the fee prescribed under Article 4(2) has been paid in respect of one or more (but less than all) designated States within the prescribed time limit, the designation of those States in respect of which it has not been paid within the prescribed time limit shall be considered withdrawn and the receiving Office shall so declare.
(4) If, after having accorded an international filing date to the international application, the receiving Office finds, within the prescribed time limit, that any of the requirements listed in Article 11(1)(i) to 11(1)(iii) was not complied with at that date, the said application shall be considered withdrawn and the receiving Office shall so declare.
Article 15 The International Search
(1) Each international application shall be the subject of international search.
(2) The objective of the international search is to discover relevant prior art.
(3) International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any).
(4) The International Searching Authority referred to in Article 16 shall endeavor to discover as much of the relevant prior art as its facilities permit, and shall, in any case, consult the documentation specified in the Regulations.
(5)
(a) If the national law of the Contracting State so permits, the applicant who files a national application with the national Office of or acting for such State may, subject to the conditions provided for in such law, request that a search similar to an international search ("international-type search") be carried out on such application.
(b) If the national law of the Contracting State so permits, the national Office of or acting for such State may subject any national application filed with it to an
international-type search.
(c) The international-type search shall be carried out by the International Searching Authority referred to in Article 16
which would be competent for an international search if the national application were an international application and were filed with the Office referred to in subparagraphs (a)
and (b). If the national application is in a language which the International Searching Authority considers it is not equipped to handle, the international-type search shall be carried out on a translation prepared by the applicant in a language prescribed for international applications and which the International Searching Authority has undertaken to accept for international applications. The national application and the translation, when required, shall be presented in the form prescribed for international applications.
Article 16 The International Searching Authority
(1) International search shall be carried out by an International Searching Authority, which may be either a national Office or an intergovernmental organization, such as the International Patent Institute, whose tasks include the establishing of documentary search reports on prior art with respect to inventions which are the subject of applications.
(2) If, pending the establishment of a single International Searching Authority, there are several International Searching Authorities, each receiving Office shall, in accordance with the provisions of the applicable agreement referred to in paragraph (3)(b), specify the International Searching Authority or Authorities competent for the searching of international applications filed with such Office.
(3)
(a) International Searching Authorities shall be appointed by the Assembly. Any national Office and any intergovernmental organization satisfying the requirements referred to in subparagraph (c) may be appointed as International Searching Authority.
(b) Appointment shall be conditional on the consent of the national Office or intergovernmental organization to be appointed and the conclusion of an agreement, subject to approval by the Assembly, between such Office or organization and the International Bureau. The agreement shall specify the rights and obligations of the parties, in particular, the formal undertaking by the said Office ororganization to apply and observe all the common rules of international search.
(c) The Regulations prescribe the minimum requirements, particularly as to manpower and documentation, which anyOffice or organization must satisfy before it can beappointed and must continue to satisfy while it remainsappointed.
(d) Appointment shall be for a fixed period of time and may be extended for further periods.
(e) Before the Assembly makes a decision on the appointment of any national Office or intergovernmental organization, or on the extension of its appointment, or before it allows any such appointment to lapse, the Assembly shall hear the interested Office or organization and seek the advice of the Committee for Technical Cooperation referred to in
Article 56 once that Committee has been established.
Article 17 Procedure before the International Searching Authority
(1) Procedure before the International Searching Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.
(2)
(a) If the International Searching Authority considers
(i) that the international application relates to a
subject matter which the International Searching
Authority is not required, under the Regulations, to
search, and in the particular case decides not to
search, or
(ii) that the description, the claims, or the drawings,
fail to comply with the prescribed requirements to
such an extent that a meaningful search could not be
carried out,
the said Authority shall so declare and shall notify the
applicant and the International Bureau that no
international search report will be established.
(b) If any of the situations referred to in subparagraph (a) is found to exist in connection with certain claims only, the international search report shall so indicate in respect of such claims, whereas, for the other claims, the said report shall be established as provided in Article 18.
(3)
(a) If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the
Regulations, it shall invite the applicant to pay
additional fees. The International Searching Authority
shall establish the international search report on those
parts of the international application which relate to the invention first mentioned in the claims ("main invention")
and, provided the required additional fees have been paid within the prescribed time limit, on those parts of the international application which relate to inventions in respect of which the said fees were paid.
(b) The national law of any designated State may provide that, where the national Office of that State finds the invitation, referred to in subparagraph (a), of the International Searching Authority justified and where the applicant has not paid all additional fees, those parts of the international application which consequently have not been searched shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.
Article 18 The International Search Report
(1) The international search report shall be established within the prescribed time limit and in the prescribed form.
(2) The international search report shall, as soon as it has been established, be transmitted by the International Searching Authority to the applicant and the International Bureau.
(3) The international search report or the declaration referred to in Article 17(2)(a) shall be translated as provided in the Regulations. The translations shall be prepared by or under the responsibility of the International Bureau.
Article 19 Amendment of the Claims before the International Bureau
(1) The applicant shall, after having received the international search report, be entitled to one opportunity to amend the
claims of the international application by filing amendments with the International Bureau within the prescribed time limit.
He may, at the same time, file a brief statement, as provided in the Regulations, explaining the amendments and indicating any impact that such amendments might have on the description and the drawings.
(2) The amendments shall not go beyond the disclosure in the international application as filed.
(3) If the national law of any designated State permits amend ments to go beyond the said disclosure, failure to comply with paragraph (2) shall have no consequence in that State.
Article 20 Communication to Designated Offices
(1)
(a) The international application, together with the
international search report (including any indication
referred to in Article 17(2)(b)) or the declaration
referred to in Article 17(2)(a), shall be communicated to
each designated Office, as provided in the Regulations,
unless the designated Office waives such requirement in its entirety or in part.
(b) The communication shall include the translation (as
prescribed) of the said report or declaration.
(2) If the claims have been amended by virtue of Article 19(1), the communication shall either contain the full text of the claims both as filed and as amended or shall contain the full text of the claims as filed and specify the amendments, and shall include the statement, if any, referred to in Article 19(1).
(3) At the request of the designated Office or the applicant, the International Searching Authority shall send to the said Office or the applicant, respectively, copies of the documents cited in the international search report, as provided in the Regulations.
Article 21 International Publication
(1) The International Bureau shall publish international
applications.
(2)
(a) Subject to the exceptions provided for in subparagraph (b)
and in Article 64(3), the international publication of the
international application shall be effected promptly after the expiration of 18 months from the priority date of that application.
(b) The applicant may ask the International Bureau to publish his international application any time before the
expiration of the time limit referred to in
subparagraph (a). The International Bureau shall proceed accordingly, as provided in the Regulations.
(3) The international search report or the declaration referred to
in Article 17(2)(a) shall be published as prescribed in the Regulations.
(4) The language and form of the international publication and
other details are governed by the Regulations.
(5) There shall be no international publication if the
international application is withdrawn or is considered
withdrawn before the technical preparations for publication have been completed.
(6) If the international application contains expressions or drawings which, in the opinion of the International Bureau, are contrary to morality or public order, or if, in its opinion,
the international application contains disparaging statements as defined in the Regulations, it may omit such expressions, drawings, and statements, from its publications, indicating the place and number of words or drawings omitted, and furnishing, upon request, individual copies of the passages omitted.
Article 22 Copy, Translation, and Fee, to Designated Offices
(1) The applicant shall furnish a copy of the international application (unless the communication provided for in Article 20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each designated Office not later than at the expiration of 20 months from the priority date. Where the national law of the designated State requires the indication of the name of and other prescribed data concerning the inventor but allows that these indications be furnished at a time later than that of the filing of a national application, the applicant shall, unless they were contained in the request, furnish the said indications to the national Office of or acting for the State not later than at the expiration of 20 months from the priority date.
(2)* Where the International Searching Authority makes a
declaration, under Article 17(2)(a), that no international
search report will be established, the time limit for
performing the acts referred to in paragraph (1) of this
Article shall be the same as that provided for in paragraph (1).
* The text of Article 22(2) ("Notwithstanding the
provisions of paragraph (1), where the International
Searching Authority makes a declaration, under
Article 17(2)(a), that no international search report
will be established, the time limit for performing the
acts referred to in paragraph (1) of this Article shall
be two months from the date of the notification sent to
the applicant of the said declaration.") was modified by
a decision taken by the Assembly of the PCT Union on
February 3, 1984. In addition to that modification, the
decision of the Assembly contains the following
provisions:
"(2) The modification enters into force on January 1, 1985.
However, as long as that time limit is incompatible with
the national law applied by the designated Office, a time
limit of two months from the date of the notification sent
to the applicant of the said declaration shall, during that
transitory period, apply with respect to that designated
Office, provided that such Office has made a notification
to that effect to the International Bureau.
(3) The notification referred to in paragraph (2) shall be
addressed to the International Bureau before October 1,
1984. It shall be promptly published by the International
Bureau in the Gazette, and it shall become effective on
January 1, 1985.
(4) Any notification effected under paragraph (3) may be
withdrawn at any time. Such withdrawal shall be promptly
published by the International Bureau in the Gazette, and
it shall be effective two months after its publication in
the Gazette or at any later date as indicated in the notice
of withdrawal."
(3) Any national law may, for performing the acts referred to in
paragraphs (1) or (2), fix time limits which expire later than
the time limit provided for in those paragraphs.
Article 23 Delaying of National Procedure
(1) No designated Office shall process or examine the international
application prior to the expiration of the applicable time
limit under Article 22.
(2) Notwithstanding the provisions of paragraph (1), any designated
Office may, on the express request of the applicant, process or
examine the international application at any time.
Article 24 Possible Loss of Effect in Designated States
(1) Subject, in case (ii) below, to the provisions of Article 25,
the effect of the international application provided for in
Article 11(3) shall cease in any designated State with the same
consequences as the withdrawal of any national application in
that State:
(i) if the applicant withdraws his international application
or the designation of that State;
(ii) if the international application is considered withdrawn
by virtue of Articles 12(3), 14(1)(b), 14(3)(a), or
14(4), or if the designation of that State is considered
withdrawn by virtue of Article 14(3)(b);
(iii) if the applicant fails to perform the acts referred to
in Article 22 within the applicable time limit.
(2) Notwithstanding the provisions of paragraph (1), any designated
Office may maintain the effect provided for in Article 11(3)
even where such effect is not required to be maintained by
virtue of Article 25(2).
Article 25 Review by Designated Offices
(1)
(a) Where the receiving Office has refused to accord an
international filing date or has declared that the
international application is considered withdrawn, or where
the International Bureau has made a finding under
Article 12(3), the International Bureau shall promptly
send, at the request of the applicant, copies of any
document in the file to any of the designated Offices named
by the applicant.
(b) Where the receiving Office has declared that the
designation of any given State is considered withdrawn, the
International Bureau shall promptly send, at the request of
the applicant, copies of any document in the file to the
national Office of such State.
(c) The request under subparagraphs (a) or (b) shall be
presented within the prescribed time limit.
(2)
(a) Subject to the provisions of subparagraph (b), each
designated Office shall, provided that the national fee (if any) has been paid and the appropriate translation (as prescribed) has been furnished within the prescribed time limit, decide whether the refusal, declaration, or finding,
referred to in paragraph (1) was justified under the
provisions of this Treaty and the Regulations, and, if it
finds that the refusal or declaration was the result of an error or omission on the part of the receiving Office or that the finding was the result of an error or omission on the part of the International Bureau, it shall, as far as effects in the State of the designated Office are concerned, treat the international application as if such error or omission had not occurred.
(b) Where the record copy has reached the International Bureau
after the expiration of the time limit prescribed under
Article 12(3) on account of any error or omission on the
part of the applicant, the provisions of subparagraph (a)
shall apply only under the circumstances referred to in
Article 48(2).
Article 26 Opportunity to Correct before Designated Offices No designated Office shall reject an international application on the grounds of non-compliance with the requirements of this Treaty
and the Regulations without first giving the applicant the opportunity to correct the said application to the extent and according to the procedure provided by the national law for the
same or comparable situations in respect of national applications.
Article 27 National Requirements
(1) No national law shall require compliance with requirements
relating to the form or contents of the international
application different from or additional to those which are provided for in this Treaty and the Regulations.
(2) The provisions of paragraph (1) neither affect the application
of the provisions of Article 7(2) nor preclude any national law
from requiring, once the processing of the international
application has started in the designated Office, the
furnishing:
(i) when the applicant is a legal entity, of the name of an
officer entitled to represent such legal entity,
(ii) of documents not part of the international application
but which constitute proof of allegations or statements
made in that application, including the confirmation of
the international application by the signature of the
applicant when that application, as filed, was signed by
his representative or agent.
(3) Where the applicant, for the purposes of any designated State,
is not qualified according to the national law of that State to
file a national application because he is not the inventor, the
international application may be rejected by the designated
Office.
(4) Where the national law provides, in respect of the form or
contents of national applications, for requirements which, from
the view point of applicants, are more favorable than the
requirements provided for by this Treaty and the Regulations in
respect of international applications, the national Office, the
courts and any other competent organs of or acting for the
designated State may apply the former requirements, instead of
the latter requirements, to international applications, except
where the applicant insists that the requirements provided for
by this Treaty and the Regulations be applied to his
international application.
(5) Nothing in this Treaty and the Regulations is intended to be
construed as prescribing anything that would limit the freedom
of each Contracting State to prescribe such substantive
conditions of patentability as it desires. In particular, any
provision in this Treaty and the Regulations concerning the
definition of prior art is exclusively for the purposes of the
international procedure and, consequently, any Contracting
State is free to apply, when determining the patentability of
an invention claimed in an international application, the
criteria of its national law in respect of prior art and other
conditions of patentability not constituting requirements as to
the form and contents of applications.
(6) The national law may require that the applicant furnish
evidence in respect of any substantive condition of
patentability prescribed by such law.
(7) Any receiving Office or, once the processing of the
international application has started in the designated Office,
that Office may apply the national law as far as it relates to
any requirement that the applicant be represented by an agent
having the right to represent applicants before the said Office
andaor that the applicant have an address in the designated
State for the purpose of receiving notifications.
(8) Nothing in this Treaty and the Regulations is intended to be
construed as limiting the freedom of any Contracting State to
apply measures deemed necessary for the preservation of its
national security or to limit, for the protection of the
general economic interests of that State, the right of its own
residents or nationals to file international applications.
Article 28 Amendment of the Claims, the Description, and the Drawings,
before Designated Offices
(1) The applicant shall be given the opportunity to amend the
claims, the description, and the drawings, before each
designated Office within the prescribed time limit. No
designated Office shall grant a patent, or refuse the grant of
a patent, before such time limit has expired except with the
express consent of the applicant.
(2) The amendments shall not go beyond the disclosure in the
international application as filed unless the national law of
the designated State permits them to go beyond the said
disclosure.
(3) The amendments shall be in accordance with the national law of
the designated State in all respects not provided for in this
Treaty and the Regulations.
(4) Where the designated Office requires a translation of the
international application, the amendments shall be in the
language of the translation.
Article 29 Effects of the International Publication
(1) As far as the protection of any rights of the applicant in a
designated State is concerned, the effects, in that State, of
the international publication of an international application
shall, subject to the provisions of paragraphs (2) to (4), be
the same as those which the national law of the designated
State provides for the compulsory national publication of
unexamined national applications as such.
(2) If the language in which the international publication has been
effected is different from the language in which publications
under the national law are effected in the designated State,
the said national law may provide that the effects provided for
in paragraph (1) shall be applicable only from such time as:
(i) a translation into the latter language has been
published as provided by the national law, or
(ii) a translation into the latter language has been made available to the public, by laying open for public
inspection as provided by the national law, or
(iii) a translation into the latter language has been
transmitted by the applicant to the actual or
prospective unauthorized user of the invention claimed
in the international application, or
(iv) both the acts described in (i) and (iii), or both the
acts described in (ii) and (iii), have taken place.
(3) The national law of any designated State may provide that,
where the international publication has been effected, on the request of the applicant, before the expiration of 18 months from the priority date, the effects provided for in paragraph (1) shall be applicable only from the expiration of
18 months from the priority date.
(4) The national law of any designated State may provide that the
effects provided for in paragraph (1) shall be applicable only from the date on which a copy of the international application as published under Article 21 has been received in the national Office of or acting for such State. The said Office shall publish the date of receipt in its gazette as soon as possible.
Article 30 Confidential Nature of the International Application
(1)
(a) Subject to the provisions of subparagraph (b), the
International Bureau and the International Searching
Authorities shall not allow access by any person or
authority to the international application before the
international publication of that application, unless
requested or authorized by the applicant.
(b) The provisions of subparagraph (a) shall not apply to any transmittal to the competent International Searching
Authority, to transmittals provided for under Article 13,
and to communications provided for under Article 20.
(2)
(a) No national Office shall allow access to the international
application by third parties, unless requested or
authorized by the applicant, before the earliest of the
following dates:
(i) date of the international publication of the
international application,
(ii) date of the receipt of the communication of the
international application under Article 20,
(iii) date of the receipt of a copy of the international
application under Article 22.
(b) The provisions of subparagraph (a) shall not prevent any national Office from informing third parties that it has been designated, or from publishing that fact. Such information or publication may, however, contain only the following data: identification of the receiving Office, name of the applicant, international filing date, international application number, and title of the invention.
(c) The provisions of subparagraph (a) shall not prevent any
designated Office from allowing access to the international
application for the purposes of the judicial authorities.
(3) The provisions of paragraph (2)(a) shall apply to any receiving
Office except as far as transmittals provided for under
Article 12(1) are concerned.
(4) For the purposes of this Article, the term "access" covers any means by which third parties may acquire cognizance, including
individual communication and general publication, provided,
however, that no national Office shall generally publish an international application or its translation before the
international publication or, if international publication has not taken place by the expiration of 20 months from the priority date, before the expiration of 20 months from the said priority date.
CHAPTER II International Preliminary Examination
Article 31 Demand for International Preliminary Examination
(1) On the demand of the applicant, his international application shall be the subject of an international preliminary examination as provided in the following provisions and the Regulations.
(2)
(a) Any applicant who is a resident or national, as defined in the Regulations, of a Contracting State bound by Chapter II, and whose international application has been
filed with the receiving Office of or acting for such
State, may make a demand for international preliminary
examination.
(b) The Assembly may decide to allow persons entitled to fileinternational applications to make a demand for
international preliminary examination even if they are
residents or nationals of a State not party to this Treaty or not bound by Chapter II.
(3) The demand for international preliminary examination shall be
made separately from the international application. The demand shall contain the prescribed particulars and shall be in the prescribed language and form.
(4)
(a) The demand shall indicate the Contracting State or States
in which the applicant intends to use the results of the
international preliminary examination ("elected States").
Additional Contracting States may be elected later.
Election may relate only to Contracting States already
designated under Article 4.
(b) Applicants referred to in paragraph (2)(a) may elect any Contracting State bound by Chapter II. Applicants referred to in paragraph (2)(b) may elect only such Contracting States bound by Chapter II as have declared that they are prepared to be elected by such applicants.
(5) The demand shall be subject to the payment of the prescribed
fees within the prescribed time limit.
(6)
(a) The demand shall be submitted to the competent Interna tional Preliminary Examining Authority referred to in
Article 32.
(b) Any later election shall be submitted to the International Bureau.
(7) Each elected Office shall be notified of its election.
Article 32 The International Preliminary Examining Authority
(1) International preliminary examination shall be carried out by
the International Preliminary Examining Authority.
(2) In the case of demands referred to in Article 31(2)(a), the
receiving Office, and, in the case of demands referred to in
Article 31(2)(b), the Assembly, shall, in accordance with the applicable agreement between the interested International
Preliminary Examining Authority or Authorities and the
International Bureau, specify the International Preliminary
Examining Authority or Authorities competent for the
preliminary examination.
(3) The provisions of Article 16(3) shall apply, mutatis mutandis,
in respect of International Preliminary Examining Authorities.
Article 33 The International Preliminary Examination
(1) The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the
questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.
(2) For the purposes of the international preliminary examination,
a claimed invention shall be considered novel if it is not
anticipated by the prior art as defined in the Regulations.
(3) For the purposes of the international preliminary examination,
a claimed invention shall be considered to involve an inventive
step if, having regard to the prior art as defined in the
Regulations, it is not, at the prescribed relevant date,
obvious to a person skilled in the art.
(4) For the purposes of the international preliminary examination,
a claimed invention shall be considered industrially applicable
if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. "Industry" shall
be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.
(5) The criteria described above merely serve the purposes of
international preliminary examination. Any Contracting State may ap ply additional or different criteria for the purpose of deciding whether, in that State, the claimed invention is patentable or not.
(6) The international preliminary examination shall take into
consideration all the documents cited in the international
search report. It may take into consideration any additional
documents considered to be relevant in the particular case.
Article 34 Procedure before the International Preliminary Examining
Authority
(1) Procedure before the International Preliminary Examining
Authority shall be governed by the provisions of this Treaty,
the Regulations, and the agreement which the International
Bureau shall conclude, subject to this Treaty and the
Regulations, with the said Authority.
(2)
(a) The applicant shall have a right to communicate orally and
in writing with the International Preliminary Examining
Authority.
(b) The applicant shall have a right to amend the claims, the
description, and the drawings, in the prescribed manner and
within the prescribed time limit, before the international
preliminary examination report is established. The
amendment shall not go beyond the disclosure in the
international application as filed.
(c) The applicant shall receive at least one written opinion
from the International Preliminary Examining Authority
unless such Authority considers that all of the following
conditions are fulfilled:
(i) the invention satisfies the criteria set forth in
Article 33(1),
(ii) the international application complies with the
requirements of this Treaty and the Regulations in
so far as checked by that Authority,
(iii) no observations are intended to be made under
Article 35(2), last sentence.
(d) The applicant may respond to the written opinion.
(3)
(a) If the International Preliminary Examining Authority con
siders that the international application does not comply
with the requirement of unity of invention as set forth in
the Regulations, it may invite the applicant, at his
option, to restrict the claims so as to comply with the
requirement or to pay additional fees.
(b) The national law of any elected State may provide that,
where the applicant chooses to restrict the claims under
subparagraph (a), those parts of the international
application which, as a consequence of the restriction, are
not to be the subject of international preliminary
examination shall, as far as effects in that State are
concerned, be considered withdrawn unless a special fee is
paid by the applicant to the national Office of that State.
(c) If the applicant does not comply with the invitation
referred to in subparagraph (a) within the prescribed time
limit, the International Preliminary Examining Authority
shall establish an international preliminary examination
report on those parts of the international application
which relate to what appears to be the main invention and
shall indicate the relevant facts in the said report. The
national law of any elected State may provide that, where
its national Office finds the invitation of the
International Preliminary Examining Authority justified,
those parts of the international application which do not
relate to the main invention shall, as far as effects in
that State are concerned, be considered withdrawn unless a
special fee is paid by the applicant to that Office.
(4)
(a) If the International Preliminary Examining Authority
considers
(i) that the international application relates to a
subject matter on which the International
Preliminary Examining Authority is not required,
under the Regulations, to carry out an international
preliminary examination, and in the particular case
decides not to carry out such examination, or
(ii) that the description, the claims, or the drawings,
are so unclear, or the claims are so inadequately supported
by the description, that no meaningful opinion can be
formed on the novelty, inventive step (non-obvious ness),
or industrial applicability, of the claimed invention, the
said Authority shall not go into the questions referred to
in Article 33(1) and shall inform the applicant of this
opinion and the reasons therefor.
(b) If any of the situations referred to in subparagraph (a) is
found to exist in, or in connection with, certain claims
only, the provisions of that subparagraph shall apply only
to the said claims.
Article 35 The International Preliminary Examination Report
(1) The international preliminary examination report shall be
established within the prescribed time limit and in the
prescribed form.
(2) The international preliminary examination report shall not
contain any statement on the question whether the claimed
invention is or seems to be patentable or unpatentable
according to any national law. It shall state, subject to the
provisions of paragraph (3), in relation to each claim, whether
the claim appears to satisfy the criteria of novelty, inventive
step (non-obviousness), and industrial applicability, as
defined for the purposes of the international preliminary
examination in Article 33(1) to 33(4). The statement shall be
accompanied by the citation of the documents believed to
support the stated conclusion with such explanations as the
circumstances of the case may require. The statement shall also
be accompanied by such other observations as the Regulations
provide for.
(3)
(a) If, at the time of establishing the international
preliminary examination report, the International
Preliminary Examining Authority considers that any of the
situations referred to in Article 34(4)(a) exists, that
report shall state this opinion and the reasons therefor.
It shall not contain any statement as provided in
paragraph (2).
(b) If a situation under Article 34(4)(b) is found to exist,
the international preliminary examination report shall, in
relation to the claims in question, contain the statement
as provided in subparagraph (a), whereas, in relation to
the other claims, it shall contain the statement as
provided in paragraph (2).
Article 36 Transmittal, Translation, and Communication, of the
International Preliminary Examination Report
(1) The international preliminary examination report, together with
the prescribed annexes, shall be transmitted to the applicant
and to the International Bureau.
(2)
(a) The international preliminary examination report and its
annexes shall be translated into the prescribed languages.
(b) Any translation of the said report shall be prepared by or
under the responsibility of the International Bureau,
whereas any translation of the said annexes shall be
prepared by the applicant.
(3)
(a) The international preliminary examination report, together
with its translation (as prescribed) and its annexes (in
the original language), shall be communicated by the
International Bureau to each elected Office.
(b) The prescribed translation of the annexes shall be
transmitted within the prescribed time limit by the
applicant to the elected Offices.
(4) The provisions of Article 20(3) shall apply, mutatis mutandis,
to copies of any document which is cited in the international
preliminary examination report and which was not cited in the
international search report.
Article 37 Withdrawal of Demand or Election
(1) The applicant may withdraw any or all elections.
(2) If the election of all elected States is withdrawn, the demand
shall be considered withdrawn.
(3)
(a) Any withdrawal shall be notified to the International
Bureau.
(b) The elected Offices concerned and the International
Preliminary Examining Authority concerned shall be notified
accordingly by the International Bureau.
(4)
(a) Subject to the provisions of subparagraph (b), withdrawal
of the demand or of the election of a Contracting State
shall, unless the national law of that State provides
otherwise, be considered to be withdrawal of the
international application as far as that State is con
cerned.
(b) Withdrawal of the demand or of the election shall not be
considered to be withdrawal of the international
application if such withdrawal is effected prior to the
expiration of the applicable time limit under Article 22;
however, any Contracting State may provide in its national
law that the aforesaid shall apply only if its national
Office has received, within the said time limit, a copy of
the international application, together with a translation
(as prescribed), and the national fee.
Article 38 Confidential Nature of the International Preliminary
Examination
(1) Neither the International Bureau nor the International
Preliminary Examining Authority shall, unless requested or
authorized by the applicant, allow access within the meaning,
and with the proviso, of Article 30(4) to the file of the
international preliminary examination by any person or
authority at any time, except by the elected Offices once the
international preliminary examination report has been
established.
(2) Subject to the provisions of paragraph (1) and Articles 36(1)
and 36(3) and 37(3)(b), neither the International Bureau nor
the International Preliminary Examining Authority shall, unless
requested or authorized by the applicant, give information on
the issuance or non issuance of an international preliminary
examination report and on the withdrawal or nonwithdrawal of
the demand or of any election.
Article 39 Copy, Translation, and Fee, to Elected Offices
(1)
(a)* If the election of any Contracting State has been effected
prior to the expiration of the 19th month from the priority
date, the provisions of Article 22 shall not apply to such
State and the applicant shall furnish a copy of the
international application (unless the communication under
Article 20 has already taken place) and a translation
thereof (as prescribed), and pay the national fee (if any),
to each elected Office not later than at the expiration of
30 months from the priority date.
* The text of Article 39(1)(a) ("If the election of any
Contracting State has been effected prior to the
expiration of the 19th month from the priority date,
the provisions of Article 22 shall not apply to such
State and the applicant shall furnish a copy of the
international application (unless the communication
under Article 20 has already taken place) and a
translation thereof (as prescribed), and pay the
national fee (if any), to each elected Office not
later than at the expiration of 25 months from the
priority date.") was modified by a decision taken by
the Assembly of the PCT Union on February 3, 1984.
In addition to that modification, the decision of
the Assembly contains the following provisions:
"(2) The modification enters into force on January 1, 1985.
However, as long as the said time limit of 30 months is
incompatible in all cases with the national law applied
by the elected Office, a time limit of 25 months from
the priority date shall, during that transitory period,
apply with respect to that elected Office, provided
that such Office has made a notification to that effect
to the International Bureau.
(3) The notification referred to in paragraph (2) shall be
addressed to the International Bureau before October 1,
1984. It shall be promptly published by the
International Bureau in the Gazette, and it shall
become effective on January 1, 1985.
(4) Any notification effected under paragraph (3) may be
withdrawn at any time. Such withdrawal shall be
promptly published by the International Bureau in the
Gazette, and it shall be effective two months after its
publication in the Gazette or at any later date as
indicated in the notice of withdrawal."
(b) Any national law may, for performing the acts referred to
in subparagraph (a), fix time limits which expire later
than the time limit provided for in that subparagraph.
(2) The effect provided for in Article 11(3) shall cease in the
elected State with the same consequences as the withdrawal of
any national application in that State if the applicant fails
to perform the acts referred to in paragraph (1)(a) within the
time limit applicable under paragraph (1)(a) or (1)(b).
(3) Any elected Office may maintain the effect provided for in
Article 11(3) even where the applicant does not comply with the
requirements provided for in paragraph (1)(a) or (1)(b).
Article 40 Delaying of National Examination and Other Processing
(1) If the election of any Contracting State has been effected
prior to the expiration of the 19th month from the priority
date, the provisions of Article 23 shall not apply to such
State and the national Office of or acting for that State shall
not proceed, subject to the provisions of paragraph (2), to the
examination and other processing of the international
application prior to the expiration of the applicable time
limit under Article 39.
(2) Notwithstanding the provisions of paragraph (1), any elected
Office may, on the express request of the applicant, proceed to
the examination and other processing of the international
application at any time.
Article 41 Amendment of the Claims, the Description, and the Drawings,
before Elected Offices
(1) The applicant shall be given the opportunity to amend the
claims, the description, and the drawings, before each elected
Office within the prescribed time limit. No elected Office
shall grant a patent, or refuse the grant of a patent, before
such time limit has expired, except with the express consent of
the applicant.
(2) The amendments shall not go beyond the disclosure in the
international application as filed, unless the national law of
the elected State permits them to go beyond the said disclosure.
(3) The amendments shall be in accordance with the national law of
the elected State in all respects not provided for in this
Treaty and the Regulations.
(4) Where an elected Office requires a translation of the
international application, the amendments shall be in the
language of the translation.
Article 42 Results of National Examination in Elected Offices
No elected Office receiving the international preliminary
examination report may require that the applicant furnish copies,
or information on the contents, of any papers connected with the
examination relating to the same international application in any
other elected Office.
CHAPTER III Common Provisions
Article 43 Seeking Certain Kinds of Protection
In respect of any designated or elected State whose law provides
for the grant of inventors' certificates, utility certificates,
utility models, patents or certificates of addition, inventors'
certificates of addition, or utility certificates of addition, the
applicant may indicate, as prescribed in the Regulations, that his
international application is for the grant, as far as that State is
concerned, of an inventor's certificate, a utility certificate, or
a utility model, rather than a patent, or that it is for the grant
of a patent or certificate of addition, an inventor's certificate
of addition, or a utility certificate of addition, and the ensuing
effect shall be governed by the applicant's choice. For the
purposes of this Article and any Rule thereunder, Article 2(ii)
shall not apply.
Article 44 Seeking Two Kinds of Protection
In respect of any designated or elected State whose law permits an
application, while being for the grant of a patent or one of the
other kinds of protection referred to in Article 43, to be also for
the grant of another of the said kinds of protection, the applicant
may indicate, as prescribed in the Regulations, the two kinds of
protection he is seeking, and the ensuing effect shall be governed
by the applicant's indications. For the purposes of this Article,
Article 2(ii) shall not apply.
Article 45 Regional Patent Treaties
(1) Any treaty providing for the grant of regional patents
("regional patent treaty"), and giving to all persons who,
according to Article 9, are entitled to file international
applications the right to file applications for such patents,
may provide that international applications designating or
electing a State party to both the regional patent treaty and
the present Treaty may be filed as applications for such
patents.
(2) The national law of the said designated or elected State may
provide that any designation or election of such State in the
international application shall have the effect of an
indication of the wish to obtain a regional patent under the
regional patent treaty.
Article 46 Incorrect Translation of the International Application
If, because of an incorrect translation of the international
applica tion, the scope of any patent granted on that application
exceeds the scope of the international application in its original
language, the competent authorities of the Contracting State
concerned may accordingly and retroactively limit the scope of the
patent, and declare it null and void to the extent that its scope
has exceeded the scope of the international application in its
original language.
Article 47 Time Limits
(1) The details for computing time limits referred to in this
Treaty are governed by the Regulations.
(2)
(a) All time limits fixed in Chapter I and Chapter II of this
Treaty may, outside any revision under Article 60, be
modified by a decision of the Contracting States.
(b) Such decisions shall be made in the Assembly or through
voting by correspondence and must be unanimous.
(c) The details of the procedure are governed by the
Regulations.
Article 48 Delay in Meeting Certain Time Limits
(1) Where any time limit fixed in this Treaty or the Regulations is
not met because of interruption in the mail service or
unavoidable loss or delay in the mail, the time limit shall be
deemed to be met in the cases and subject to the proof and
other conditions prescribed in the Regulations.
(2)
(a) Any Contracting State shall, as far as that State is
concerned, excuse, for reasons admitted under its national
law, any delay in meeting any time limit.
(b) Any Contracting State may, as far as that State is
concerned, excuse, for reasons other than those referred to
in subparagraph (a), any delay in meeting any time limit.
Article 49 Right to Practice before International Authorities
Any attorney, patent agent, or other person, having the right to
practice before the national Office with which the international
application was filed, shall be entitled to practice before the
International Bureau and the competent International Searching
Authority and competent International Preliminary Examining
Authority in respect of that application.
CHAPTER IV Technical Services
Article 50 Patent Information Services
(1) The International Bureau may furnish services by providing
technical and any other pertinent information available to it
on the basis of published documents, primarily patents and
published applications (referred to in this Article as "the
information services").
(2) The International Bureau may provide these information ser
vices either directly or through one or more International
Searching Authorities or other national or international
specialized institutions, with which the International Bureau
may reach agreement.
(3) The information services shall be operated in a way
particularly facilitating the acquisition by Contracting States
which are developing countries of technical knowledge and
technology, including available published know-how.
(4) The information services shall be available to Governments of
Contracting States and their nationals and residents. The
Assembly may decide to make these services available also to
others.
(5)
(a) Any service to Governments of Contracting States shall be
furnished at cost, provided that, when the Government is
that of a Contracting State which is a developing country,
the service shall be furnished below cost if the difference
can be covered from profit made on services furnished to
others than Governments of Contracting States or from the
sources referred to in Article 51(4).
(b) The cost referred to in subparagraph (a) is to be
understood as cost over and above costs normally incident
to the performance of the services of a national Office or
the obligations of an International Searching Authority.
(6) The details concerning the implementation of the provisions of
this Article shall be governed by decisions of the Assembly
and, within the limits to be fixed by the Assembly, such
working groups as the Assembly may set up for that purpose.
(7) The Assembly shall, when it considers it necessary, recommend
methods of providing financing supplementary to those referred
to in paragraph (5).
Article 51 Technical Assistance
(1) The Assembly shall establish a Committee for Technical
Assistance (referred to in this Article as "the Committee").
(2)
(a) The members of the Committee shall be elected among the
Contracting States, with due regard to the representation
of developing countries.
(b) The Director General shall, on his own initiative or at the
request of the Committee, invite representatives of
intergovernmental organizations concerned with technical
assistance to developing countries to participate in the
work of the Committee.
(3)
(a) The task of the Committee shall be to organize and
supervise technical assistance for Contracting States which
are developing countries in developing their patent systems
individually or on a regional basis.
(b) The technical assistance shall comprise, among other
things, the training of specialists, the loaning of
experts, and the supply of equipment both for demonstration
and for operational purposes.
(4) The International Bureau shall seek to enter into agreements,
on the one hand, with international financing organizations and
intergovernmental organizations, particularly the United
Nations, the agencies of the United Nations, and the
Specialized Agencies connected with the United Nations
concerned with technical assistance, and, on the other hand,
with the Governments of the States receiving the technical
assistance, for the financing of projects pursuant to this
Article.
(5) The details concerning the implementation of the provisions of
this Article shall be governed by decisions of the Assembly
and, within the limits to be fixed by the Assembly, such
working groups as the Assembly may set up for that purpose.
Article 52 Relations with Other Provisions of the Treaty
Nothing in this Chapter shall affect the financial provisions
contained in any other Chapter of this Treaty. Such provisions are
not applicable to the present Chapter or to its implementation.
CHAPTER V Administrative Provisions
Article 53 Assembly
(1)
(a) The Assembly shall, subject to Article 57(8), consist of
the Contracting States.
(b) The Government of each Contracting State shall be
represented by one delegate, who may be assisted by
alternate delegates, advisors, and experts.
(2)
(a) The Assembly shall:
(i) deal with all matters concerning the maintenance and
development of the Union and the implementation of
this Treaty;
(ii) perform such tasks as are specifically assigned to
it under other provisions of this Treaty;
(iii) give directions to the International Bureau
concerning the preparation for revision conferences;
(iv) review and approve the reports and activities of the
Director General concerning the Union, and give him
all necessary instructions concerning matters within
the competence of the Union;
(v) review and approve the reports and activities of the
Executive Committee established under paragraph (9),
and give instructions to such Committee;
(vi) determine the program and adopt the triennial*
budget of the Union, and approve its final accounts;
* Editor's Note: Since 1980, the budget of the Union
is biennial.
(vii) adopt the financial regulations of the Union;
(viii) establish such committees and working groups as it
deems appropriate to achieve the objectives of the
Union;
(ix) determine which States other than Contracting States
and, subject to the provisions of paragraph (8),
which intergovernmental and international
non-governmental organizations shall be admitted to
its meetings as observers;
(x) take any other appropriate action designed to
further the objectives of the Union and perform such
other functions as are appropriate under this Treaty.
(b) With respect to matters which are of interest also to other
Unions administered by the Organization, the Assembly shall
make its decisions after having heard the advice of the
Coordination Committee of the Organization.
(3) A delegate may represent, and vote in the name of, one State
only.
(4) Each Contracting State shall have one vote.
(5)
(a) One-half of the Contracting States shall constitute a
quorum.
(b) In the absence of the quorum, the Assembly may make
decisions but, with the exception of decisions concerning
its own procedure, all such decisions shall take effect
only if the quorum and the required majority are attained
through voting by correspondence as provided in the
Regulations.
(6)
(a) Subject to the provisions of Articles 47(2)(b), 58(2)(b),
58(3) and 61(2)(b), the decisions of the Assembly shall
require two-thirds of the votes cast.
(b) Abstentions shall not be considered as votes.
(7) In connection with matters of exclusive interest to States
bound by Chapter II, any reference to Contracting States in
paragraphs (4), (5), and (6), shall be considered as applying
only to States bound by Chapter II.
(8) Any intergovernmental organization appointed as International
Searching or Preliminary Examining Authority shall be admitted
as observer to the Assembly.
(9) When the number of Contracting States exceeds forty, the
Assembly shall establish an Executive Committee. Any reference
to the Executive Committee in this Treaty and the Regulations
shall be construed as references to such Committee once it has
been established.
(10) Until the Executive Committee has been established, the
Assembly shall approve, within the limits of the program and
triennial budget, the annual programs and budgets prepared by
the Director General.*
* Editor's Note: Since 1980, the program and budget of the
Union are biennial.
(11)
(a) The Assembly shall meet in every second calendar year in
ordinary session upon convocation by the Director General
and, in the absence of exceptional circumstances, during
the same period and at the same place as the General
Assembly of the Organization.
(b) The Assembly shall meet in extraordinary session upon
convocation by the Director General, at the request of the
Executive Committee, or at the request of one-fourth of the
Contracting States.
(12) The Assembly shall adopt its own rules of procedure.
Article 54 Executive Committee
(1) When the Assembly has established an Executive Committee, that
Committee shall be subject to the provisions set forth
hereinafter.
(2)
(a) The Executive Committee shall, subject to Article 57(8),
consist of States elected by the Assembly from among States
members of the Assembly.
(b) The Government of each State member of the Executive
Committee shall be represented by one delegate, who may be
assisted by alternate delegates, advisors, and experts.
(3) The number of States members of the Executive Committee shall
correspond to one-fourth of the number of States members of the
Assembly. In establishing the number of seats to be filled,
remainders after division by four shall be disregarded.
(4) In electing the members of the Executive Committee, the
Assembly shall have due regard to an equitable geographical
distribution.
(5)
(a) Each member of the Executive Committee shall serve from the
close of the session of the Assembly which elected it to
the close of the next ordinary session of the Assembly.
(b) Members of the Executive Committee may be re-elected but
only up to a maximum of two-thirds of such members.
(c) The Assembly shall establish the details of the rules
governing the election and possible re-election of the
members of the Executive Committee.
(6)
(a) The Executive Committee shall:
(i) prepare the draft agenda of the Assembly;
(ii) submit proposals to the Assembly in respect of the
draft program and biennial budget of the Union
prepared by the Director General;
(iii) deleted
(iv) submit, with appropriate comments, to the Assembly
the periodical reports of the Director General and
the yearly audit reports on the accounts;
(v) take all necessary measures to ensure the execution
of the program of the Union by the Director General,
in accordance with the decisions of the Assembly and
having regard to circumstances arising between two
ordinary sessions of the Assembly;
(vi) perform such other functions as are allocated to it
under this Treaty.
(b) With respect to matters which are of interest also to other
Unions administered by the Organization, the Executive
Committee shall make its decisions after having heard the
advice of the Coordination Committee of the Organization.
(7)
(a) The Executive Committee shall meet once a year in ordinary
session upon convocation by the Director General,
preferably during the same period and at the same place as
the Coordination Committee of the Organization.
(b) The Executive Committee shall meet in extraordinary session
upon convocation by the Director General, either on his own
initiative or at the request of its Chairman or one-fourth
of its members.
(8)
(a) Each State member of the Executive Committee shall have one
vote.
(b) One-half of the members of the Executive Committee shall
constitute a quorum.
(c) Decisions shall be made by a simple majority of the votes
cast.
(d) Abstentions shall not be considered as votes.
(e) A delegate may represent, and vote in the name of, one
State only.
(9) Contracting States not members of the Executive Committee shall
be admitted to its meetings as observers, as well as any
intergovernmental organization appointed as International
Searching or Preliminary Examining Authority.
(10) The Executive Committee shall adopt its own rules of procedure.
Article 55 International Bureau
(1) Administrative tasks concerning the Union shall be performed by
the International Bureau.
(2) The International Bureau shall provide the secretariat of the
various organs of the Union.
(3) The Director General shall be the chief executive of the Union
and shall represent the Union.
(4) The International Bureau shall publish a Gazette and other
publications provided for by the Regulations or required by the
Assembly.
(5) The Regulations shall specify the services that national
Offices shall perform in order to assist the International
Bureau and the International Searching and Preliminary
Examining Authorities in carrying out their tasks under this
Treaty.
(6) The Director General and any staff member designated by him
shall participate, without the right to vote, in all meetings
of the Assembly, the Executive Committee and any other
committee or working group established under this Treaty or the
Regulations. The Director General, or a staff member designated
by him, shall be ex officio secretary of these bodies.
(7)
(a) The International Bureau shall, in accordance with the
directions of the Assembly and in cooperation with the
Executive Committee, make the preparations for the revision
conferences.
(b) The International Bureau may consult with intergovernmental
and international non-governmental organizations concerning
preparations for revision conferences.
(c) The Director General and persons designated by him shall
take part, without the right to vote, in the discussions at
revision conferences.
(8) The International Bureau shall carry out any other tasks as
signed to it.
Article 56 Committee for Technical Cooperation
(1) The Assembly shall establish a Committee for Technical
Cooperation (referred to in this Article as "the Committee").
(2)
(a) The Assembly shall determine the composition of the
Committee and appoint its members, with due regard to an
equitable representation of developing countries.
(b) The International Searching and Preliminary Examining
Authorities shall be ex officio members of the Committee.
In the case where such an Authority is the national Office
of a Contracting State, that State shall not be
additionally represented on the Committee.
(c) If the number of Contracting States so allows, the total
number of members of the Committee shall be more than
double the number of ex officio members.
(d) The Director General shall, on his own initiative or at the
request of the Committee, invite representatives of
interested organizations to participate in discussions of
interest to them.
(3) The aim of the Committee shall be to contribute, by advice and
recommendations:
(i) to the constant improvement of the services provided for
under this Treaty,
(ii) to the securing, so long as there are several
International Searching Authorities and several
International Preliminary Examining Authorities, of the
maximum degree of uniformity in their documentation and
working methods and the maximum degree of uniformly high
quality in their reports, and
(iii) on the initiative of the Assembly or the Executive
Committee, to the solution of the technical problems
specifically involved in the establishment of a single
International Searching Authority.
(4) Any Contracting State and any interested international
organization may approach the Committee in writing on questions
which fall within the competence of the Committee.
(5) The Committee may address its advice and recommendations to the
Director General or, through him, to the Assembly, the
Executive Committee, all or some of the International Searching
and Preliminary Examining Authorities, and all or some of the
receiving Offices.
(6)
(a) In any case, the Director General shall transmit to the
Executive Committee the texts of all the advice and
recommendations of the Committee. He may comment on such
texts.
(b) The Executive Committee may express its views on any
advice, recommendation, or other activity of the Committee,
and may invite the Committee to study and report on
questions falling within its competence. The Executive
Committee may submit to the Assembly, with appropriate
comments, the advice, recommendations and report of the
Committee.
(7) Until the Executive Committee has been established, references
in paragraph (6) to the Executive Committee shall be construed
as references to the Assembly.
(8) The details of the procedure of the Committee shall be governed
by the decisions of the Assembly.
Article 57 Finances
(1)
(a) The Union shall have a budget.
(b) The budget of the Union shall include the income and
expenses proper to the Union and its contribution to the
budget of expenses common to the Unions administered by the
Organization.
(c) Expenses not attributable exclusively to the Union but also
to one or more other Unions administered by the
Organization shall be considered as expenses common to the
Unions. The share of the Union in such common expenses
shall be in proportion to the interest the Union has in
them.
(2) The budget of the Union shall be established with due regard to
the requirements of coordination with the budgets of the other
Unions administered by the Organization.
(3) Subject to the provisions of paragraph (5), the budget of the
Union shall be financed from the following sources:
(i) fees and charges due for services rendered by the
International Bureau in relation to the Union;
(ii) sale of, or royalties on, the publications of the
International Bureau concerning the Union;
(iii) gifts, bequests, and subventions;
(iv) rents, interests, and other miscellaneous income.
(4) The amounts of fees and charges due to the International Bureau
and the prices of its publications shall be so fixed that they
should, under normal circumstances, be sufficient to cover all
the expenses of the International Bureau connected with the
administration of this Treaty.
(5)
(a) Should any financial year close with a deficit, the
Contracting States shall, subject to the provisions of
subparagraphs (b) and (c), pay contributions to cover such
deficit.
(b) The amount of the contribution of each Contracting State
shall be decided by the Assembly with due regard to the
number of international applications which has emanated
from each of them in the relevant year.
(c) If other means of provisionally covering any deficit or any
part thereof are secured, the Assembly may decide that such
deficit be carried forward and that the Contracting States
should not be asked to pay contributions.
(d) If the financial situation of the Union so permits, the
Assembly may decide that any contributions paid under
subparagraph (a) be reimbursed to the Contracting States
which have paid them.
(e) A Contracting State which has not paid, within two years of
the due date as established by the Assembly, its
contribution under subparagraph (b) may not exercise its
right to vote in any of the organs of the Union. However,
any organ of the Union may allow such a State to continue
to exercise its right to vote in that organ so long as it
is satisfied that the delay in payment is due to
exceptional and unavoidable circumstances.
(6) If the budget is not adopted before the beginning of a new
financial period, it shall be at the same level as the budget
of the previous year, as provided in the financial regulations.
(7)
(a) The Union shall have a working capital fund which shall be
constituted by a single payment made by each Contracting
State. If the fund becomes insufficient, the Assembly shall
arrange to increase it. If part of the fund is no longer
needed, it shall be reimbursed.
(b) The amount of the initial payment of each Contracting State
to the said fund or of its participation in the increase
thereof shall be decided by the Assembly on the basis of
principles similar to those provided for under
paragraph (5)(b).
(c) The terms of payment shall be fixed by the Assembly on the
proposal of the Director General and after it has heard the
advice of the Coordination Committee of the Organization.
(d) Any reimbursement shall be proportionate to the amounts
paid by each Contracting State, taking into account the
dates at which they were paid.
(8)
(a) In the headquarters agreement concluded with the State on
the territory of which the Organization has its
headquarters, it shall be provided that, whenever the
working capital fund is insufficient, such State shall
grant advances. The amount of these advances and the
conditions on which they are granted shall be the subject
of separate agreements, in each case, between such State
and the Organization. As long as it remains under the
obligation to grant advances, such State shall have an ex
officio seat in the Assembly and on the Executive Committee.
(b) The State referred to in subparagraph (a) and the
Organization shall each have the right to denounce the
obligation to grant advances, by written notification.
Denunciation shall take effect three years after the end of
the year in which it has been notified.
(9) The auditing of the accounts shall be effected by one or more
of the Contracting States or by external auditors, as provided
in the financial regulations. They shall be designated, with
their agreement, by the Assembly.
Article 58 Regulations
(1) The Regulations annexed to this Treaty provide Rules:
(i) concerning matters in respect of which this Treaty
expressly refers to the Regulations or expressly
provides that they are or shall be prescribed,
(ii) concerning any administrative requirements, matters, or
procedures,
(iii) concerning any details useful in the implementation of
the provisions of this Treaty.
(2)
(a) The Assembly may amend the Regulations.
(b) Subject to the provisions of paragraph (3), amendments
shall require three-fourths of the votes cast.
(3)
(a) The Regulations specify the Rules which may be amended
(i) only by unanimous consent, or
(ii) only if none of the Contracting States whose
national Office acts as an International Searching
or Preliminary Examining Authority dissents, and,
where such Authority is an intergovernmental
organization, if the Contracting State member of
that organization authorized for that purpose by the
other member States within the competent body of
such organization does not dissent.
(b) Exclusion, for the future, of any such Rules from the
applicable requirement shall require the fulfillment of the conditions referred to in subparagraph (a)(i) or (a)(ii), respectively.
(c) Inclusion, for the future, of any Rule in one or the other of the requirements referred to in subparagraph (a) shall require unanimous consent.
(4) The Regulations provide for the establishment, under the control of the Assembly, of Administrative Instructions by the Director General.
(5) In the case of conflict between the provisions of the Treaty and those of the Regulations, the provisions of the Treaty shall prevail.
CHAPTER VI Disputes
Article 59 Disputes
Subject to Article 64(5), any dispute between two or more Contracting States concerning the interpretation or application of this Treaty or the Regulations, not settled by negotiation, may, by any one of the States concerned, be brought before the International Court of Justice by application in conformity with the Statute of the Court, unless the States concerned agree on some other method of settlement. The Contracting State bringing the dispute before the Court shall inform the International Bureau; the International Bureau shall bring the matter to the attention of the other Contracting States.
CHAPTER VII Revision and Amendment
Article 60 Revision of the Treaty
(1) This Treaty may be revised from time to time by a special conference of the Contracting States.
(2) The convocation of any revision conference shall be decided by the Assembly.
(3) Any intergovernmental organization appointed as International Searching or Preliminary Examining Authority shall be admitted as observer to any revision conference.
(4) Articles 53(5), 53(9) and 53(11), 54, 55(4) to 55(8), 56, and 57, may be amended either by a revision conference or according to the provisions of Article 61.
Article 61 Amendment of Certain Provisions of the Treaty
(1)
(a) Proposals for the amendment of Articles 53(5), 53(9) and 53(11), 54, 55(4) to 55(8), 56, and 57, may be initiated by any State member of the Assembly, by the Executive Committee, or by the Director General.
(b) Such proposals shall be communicated by the Director General to the Contracting States at least six months in advance of their consideration by the Assembly.
(2)
(a) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly.
(b) Adoption shall require three-fourths of the votes cast.
(3)
(a) Any amendment to the Articles referred to in paragraph (1) shall enter into force one month after written notifications of acceptance, effected in accordance with their respective constitutional processes, have been received by the Director General from three-fourths of the States members of the Assembly at the time it adopted the amendment.
(b) Any amendment to the said Articles thus accepted shall bind all the States which are members of the Assembly at the time the amendment enters into force, provided that any amendment increasing the financial obligations of the Contracting States shall bind only those States which have notified their acceptance of such amendment.
(c) Any amendment accepted in accordance with the provisions of subparagraph (a) shall bind all States which become members of the Assembly after the date on which the amendment entered into force in accordance with the provisions of subparagraph (a).
CHAPTER VIII Final Provisions
Article 62 Becoming Party to the Treaty
(1) Any State member of the International Union for the Protection of Industrial Property may become party to this Treaty by:
(i) signature followed by the deposit of an instrument of ratification, or
(ii) deposit of an instrument of accession.
(2) Instruments of ratification or accession shall be deposited the Director General.
(3) The provisions of Article 24 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property shall apply to this Treaty.
(4) Paragraph (3) shall in no way be understood as implying the recognition or tacit acceptance by a Contracting State of the factual situation concerning a territory to which this Treaty is made applicable by another Contracting State by virtue of the said paragraph.
Article 63 Entry into Force of the Treaty
(1)
(a) Subject to the provisions of paragraph (3), this Treaty shall enter into force three months after eight States have deposited their instruments of ratification or accession, provided that at least four of those States each fulfill any of the following conditions:
(i) the number of applications filed in the State has exceeded 40,000 according to the most recent annual statistics published by the International Bureau,
(ii) the nationals or residents of the State have filed at least 1,000 applications in one foreign country according to the most recent annual statistics published by the International Bureau,
(iii) the national Office of the State has received at least 10,000 applications from nationals or residents of foreign countries according to the most recent annual statistics published by the International Bureau.
(b) For the purposes of this paragraph, the term "applications" does not include applications for utility models.
(2) Subject to the provisions of paragraph (3), any State which does not become party to this Treaty upon entry into force under paragraph (1) shall become bound by this Treaty three months after the date on which such State has deposited its instrument of ratification or accession.
(3) The provisions of Chapter II and the corresponding provisions of the Regulations annexed to this Treaty shall become applicable, however, only on the date on which three States each of which fulfill at least one of the three requirements specified in paragraph (1) become party to this Treaty without declaring, as provided in Article 64(1), that they do not intend to be bound by the provisions of Chapter II. That date shall not, however, be prior to that of the initial entry into force under paragraph (1).
Article 64 Reservations
(1)
(a) Any State may declare that it shall not be bound by the provisions of Chapter II.
(b) States making a declaration under subparagraph (a) shall not be bound by the provisions of Chapter II and the corresponding provisions of the Regulations.
(2)
(a) Any State not having made a declaration under
paragraph (1)(a) may declare that:
(i) it shall not be bound by the provisions of
Article 39(1) with respect to the furnishing of a
copy of the international application and a
translation thereof (as prescribed),
(ii) the obligation to delay national processing, as
provided for under Article 40, shall not prevent
publication, by or through its national Office, of
the international application or a translation
thereof, it being understood, however, that it is
not exempted from the limitations provided for in
Articles 30 and 38.
(b) States making such a declaration shall be bound accordingly.
(3)
(a) Any State may declare that, as far as it is concerned, international publication of international applications is not required.
(b) Where, at the expiration of 18 months from the priority date, the international application contains the
designation only of such States as have made declarations under subparagraph (a), the international application shall not be published by virtue of Article 21(2).
(c) Where the provisions of subparagraph (b) apply, the international application shall nevertheless be published by the International Bureau:
(i) at the request of the applicant, as provided in the Regulations,
(ii) when a national application or a patent based on the international application is published by or on behalf of the national Office of any designated State having made a declaration under subparagraph (a), promptly after such publication but not before the expiration of 18 months from the priority date.
(4)
(a) Any State whose national law provides for prior art effect of its patents as from a date before publication, but does not equate prior art purposes the priority date claimed under the Paris Convention for the Protection of Industrial Property to the actual filing date in that State, may declare that the filing outside that State of an international application designating that State is not equated to an actual filing in that State for prior art purposes.
(b) Any State making a declaration under subparagraph (a) shall to that extent not be bound by the provisions of Article 11(3).
(c) Any State making a declaration under subparagraph (a) shall, at the same time, state in writing the date from which, and the conditions under which, the prior art effect of any international application designating that State becomes effective in that State. This statement may be modified at any time by notification addressed to the Director General.
(5) Each State may declare that it does not consider itself bound by Article 59. With regard to any dispute between any Contracting State having made such a declaration and any other Contracting State, the provisions of Article 59 shall not apply.
(6)
(a) Any declaration made under this Article shall be made in writing. It may be made at the time of signing this Treaty, at the time of depositing the instrument of ratification or accession, or, except in the case referred to in paragraph (5), at any later time by notification addressed to the Director General. In the case of the said notification, the declaration shall take effect six months after the day on which the Director General has received the notification, and shall not affect international applications filed prior to the expiration of the said six-month period.
(b) Any declaration made under this Article may be withdrawn at any time by notification addressed to the Director General.
Such withdrawal shall take effect three months after the day on which the Director General has received the
notification and, in the case of the withdrawal of a
declaration made under paragraph (3), shall not affect
international applications filed prior to the expiration of
the said three-month period.
(7) No reservations to this Treaty other than the reservations under paragraphs (1) to (5) are permitted.
Article 65 Gradual Application
(1) If the agreement with any International Searching or Preliminary Examining Authority provides, transitionally, for limits on the number or kind of international applications that such Authority undertakes to process, the Assembly shall adopt the measures necessary for the gradual application of this Treaty and the Regulations in respect of given categories of international applications. This provision shall also apply to requests for an international-type search under Article 15(5).
(2) The Assembly shall fix the dates from which, subject to the provision of paragraph (1), international applications may be filed and demands for international preliminary examination may be submitted. Such dates shall not be later than six months after this Treaty has entered into force according to the
provisions of Article 63(1), or after Chapter II has become applicable under Article 63(3), respectively.
Article 66 Denunciation
(1) Any Contracting State may denounce this Treaty by notification addressed to the Director General.
(2) Denunciation shall take effect six months after receipt of the said notification by the Director General. It shall not affect the effects of the international application in the denouncing State if the international application was filed, and, where the denouncing State has been elected, the election was made, prior to the expiration of the said six-month period.
Article 67 Signature and Languages
(1)
(a) This Treaty shall be signed in a single original in the English and French languages, both texts being equally authentic.
(b) Official texts shall be established by the Director General, after consultation with the interested Governments, in the German, Japanese, Portuguese, Russian and Spanish languages, and such other languages as the Assembly may designate.
(2) This Treaty shall remain open for signature at Washington until December 31, 1970.
Article 68 Depositary Functions
(1) The original of this Treaty, when no longer open for signature, shall be deposited with the Director General.
(2) The Director General shall transmit two copies, certified by him, of this Treaty and the Regulations annexed hereto to the Governments of all States party to the Paris Convention for the Protection Industrial Property and, on request, to the Government of any other State.
(3) The Director General shall register this Treaty with the Secretariat of the United Nations.
(4) The Director General shall transmit two copies, certified by him, of any amendment to this Treaty and the Regulations to the Governments of all Contracting States and, on request, to the Government of any other State.
Article 69 Notifications
The Director General shall notify the Governments of all States party to the Paris Convention for the Protection of Industrial Property of:
(i) signatures under Article 62,
(ii) deposits of instruments of ratification or accession under Article 62,
(iii) the date of entry into force of this Treaty and the date from which Chapter II is applicable in accordance with Article 63(3),
(iv) any declarations made under Article 64(1) to 64(5),
(v) withdrawals of any declarations made under Article 64(6)(b),
(vi) denunciations received under Article 66, and
(vii) any declarations made under Article 31(4).
