PCT Yearly Review - WIPO

Section c
development of the pct system
C.3
Legal Developments
Changes in the PCT Regulations that entered into force
or were adopted by the Assembly of the International
Patent Cooperation Union (PCT Assembly) in 2012, as
well as the main legal changes at national or regional level
having an impact on PCT filings, are presented below:
C.3.1 Changes to the legal framework
Amendments adopted by the PCT Assembly in
September/October 2011, which entered into force on
July 1, 2012, consist of the following:
Act (for further information on the effects of this act on
PCT applicants, see C.3.2). They include changes to:
a) PCT rules 4.15, 53.8 and 90bis.5 in relation to the
matter of signatures; and
b) PCT rule 51bis.1 and 2 simplifying the provisions that
allow documents containing oaths or declarations
of inventorship to be required by the designated office
in certain circumstances, and limiting the extent
to which the designated office may require further
documents or evidence relating to such oaths and
declarations furnished during the international phase.
C.3.2 Changes consequential to the
Leahy-Smith America Invents Act
a) an effective extension of the time limit within which
the applicant can request the IB to obtain a priority
document from a digital library (PCT rule 17.1(b-bis));
b) a clarification concerning the time limits in relation
to correcting defects under PCT article 11
(PCT rule 20.7);
c) the incorporation of patent documents from China
into the PCT minimum documentation used in carrying
out international searches (PCT rule 34); and
d) the deletion of PCT rule 82.2 (interruption in the mail
service) and the addition of a general provision for
an excuse of delay in meeting certain PCT time
limits due to force majeure circumstances (new PCT
rule 82quater (excuse of delay in meeting time limits)).
As a consequence of the above-mentioned amendments
to the regulations under the PCT, modifications to the
administrative instructions under the PCT and to the PCT
Receiving Office Guidelines were made accordingly, with
effect from the same date.
The amendments adopted by the PCT Assembly
in October 2012, which entered into force on
January 1, 2013, serve to simplify the procedures for
applicants from all PCT contracting states made possible
by the enactment of the Leahy-Smith America Invents
Since the entry into force, on September 16, 2012, of
certain changes to the patent law of the United States of
America under the America Invents Act, there is no longer
a requirement that inventors be named as applicants
solely for the purpose of designating the US. This change
has greatly simplified the signature requirements under
the PCT. Notwithstanding this change, the US national
law still requires that a US inventor’s oath or declaration
be submitted; however, the wording of that declaration
has been amended.
Several PCT resources have been amended to take
into account these important changes, namely the PCT
Regulations (see C.3.1), the PCT request form, PCT-SAFE
software, ePCT Private Services (addition of an online
action to prepare and submit the US declaration of inventorship
electronically), the administrative instructions
under the PCT, the PCT Receiving Office Guidelines and
the PCT Applicant’s Guide.
Furthermore, to assist PCT users in implementing the
change in practice resulting therefrom, detailed information
was published in the PCT Newsletter, and frequently
asked questions on the subject were made available on
the PCT website.
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