Overview

1. Amendments to the PCT Regulations, Administrative Instructions and other practice changes as from 1 July 2008

2. Overview • Applicants may request the ISA to take into account the results of earlier searches carried out by another ISA or any national Office • Possible extension of the time limit for paying the fee for requesting restoration of the right of priority • Clarification that international publication can only be reliably prevented by way of an express withdrawal received by the IB prior to completion of technical preparations for international publication • Reduction of the international filing fee by 5% (CHF 1,330 instead of 1,400) • Reduction of the international filing fee and the handling fee by 90% (instead of 75%) for applicants from certain States • Submission of “pre-converted” files as a safeguard for electronically filed international applications • PCT Authorities may send advance copies of invitations and notifications by e-mail

3. Request to take into account the results of earlier searches (Rules 12bis.1 and 41) • Applicants may request the ISA to take into account, in carrying out the international search, not only, as at present, the results of an earlier search carried out by that ISA but also the results of an earlier search carried out by another ISA or any national Office • Where the earlier search was carried out by the same Office that now acts as ISA, the earlier search results must be taken into account • Where the earlier search was carried out by any other Office, the ISA may take the earlier search results into account

4. Request to take into account the results of earlier searches – formality requirements (Rules 4.12 and 12bis.1) • Formality requirements which must be met at the time of filing: • such requests must be made in the request form (PCT/RO/101, Box VII) • the earlier search results must be furnished to the RO at the time of filing Exceptions: • if the ISA carried out the earlier search • if the RO carried out the earlier search; the applicant may request, against payment of a fee, that the RO prepares and transmits a copy of the earlier search results to the ISA • if the earlier search results are available to the ISA in a form and manner acceptable to it (e.g. digital library) and if the applicant so indicated in the request form

5. Request to take into account theresults of an earlier search – invitation by the ISA(Rule 12bis.1(b)) • Additional formality requirements which may be required by the ISA (subject to invitation by ISA): • copy of the earlier application • translation of the earlier application, if not in a language accepted by the ISA • translation of the search results, if not in a language accepted by the ISA • copy of any documents cited in the earlier search reports

6. Request to take into account theresults of an earlier search – invitation by the ISA(Rule 12bis.1(b)) (continued) Exceptions: • if the ISA carried out the earlier search itself, it should never require such additional documents • if the applicant requested the RO in the request form to transmit copies of the required documents to the ISA • if the applicant stated in the request form that the international application is the same, or substantially the same, as the application for which the earlier search was performed (even if the language of the earlier application was different), a copy of the earlier application or its translation is not required • if any of the required documents are available to the ISA in a form and manner acceptable to it (e.g. digital library) and if the applicant so indicated in the request form

7. Partial refund of the search fee (Rule 16.3) Partial refund of the search fee is available: • where the ISA took into account the results of an earlier search in carrying out the international search, BUT ONLY to the extent and under the conditions provided for in the agreement between the IB and the ISA/IPEA under Article 16(3)(b)

8. Extension of the time limit for payment of the restoration fee • The time limit for payment of the fee requesting the restoration of the right of priority is two months from the date on which the priority period expired • The RO may extend this time limit for a period of up to two months (Rule 26bis.3(d))

9. Prevention of international publication • Clarification that international publication can only be reliably prevented by way of an express withdrawal received by the IB prior to completion of technical preparations for international publication • A notification by the RO that the international application is considered withdrawn will only have this effect if it reaches the IB before the completion of technical preparations for international publication (Rule 29.1(v)) • A corresponding warning has been added to Form PCT/RO/117

10. Reduction of international fees • The revised schedule of fees: Applies to international applications filed on or after 1 July 2008 • Reduces the international filing fee by 5% (CHF 1,330 instead of 1,400) • Reduces the international filing fee and the handling fee by 90% (instead of 75%) for applicants from certain States • Adds 9 additional States (Antigua and Barbuda, Bahrain, Barbados, the Libyan Arab Jamahiriya, Oman, Singapore, Trinidad and Tobago, the United Arab Emirates, and the Seychelles) to the list of States whose nationals and residents, if they are natural persons, qualify for the 90% fee reduction

11. E-filing: submission of pre-converted files • In the process of converting from the document format in which an application has been drafted (e.g. MS-WORD) to a format accepted for electronic filing (e.g. XML or PDF), the international application data may accidentally be modified or altered • Modified Section 706 of the Administrative Instructions allows ROs to accept the submission of the international application in its pre-converted format • ROs will have to opt-in to the system and specify their accepted pre-conversion formats for this purpose • If an applicant realizes that a conversion error has occurred, he may request the RO to correct the international application within 30 months from the priority date • Work is underway so that the software to be used for filing international applications with ROs, accepting the attachment of pre-converted files, will provide for the inclusion of pre-converted files

12. Use of e-mail for advance copiesof notifications (1) A field has been included in the request and demand forms to allow applicants to: • Indicate an e-mail address (of the main applicant and/or agent) • Authorize use of this e-mail by checking the corresponding check-box in those forms • Without specific authorization, the e-mail address can only be used for rapid informal communications (replacing telephone calls) • With specific authorization, all PCT Authorities may send advance copies of any invitation or notification by e-mail

13. Use of e-mail for advance copiesof notifications (2) • E-mail communications do not replace paper notifications: • the legal copy remains the paper copy • date of paper copy is relevant date for Rule 80.6 • Changes to the e-mail address, new addresses and authorizations to receive advance copies by e-mail can be requested under Rule 92bis.1 • IMPORTANT: • applicants should not attempt to respond to such e-mail communications • any submissions which must be signed must continue to be submitted by mail, fax or through on-line submission provided by PCT Authorities