Article 150 - OJ 1993, 764

PCT
The International Bureau of WIPO as alternative receiving Office under the
PCT - changes to PCT regulations

- OJ 1993, 764 -

As of 1 January 1994, applicants from all PCT Contracting States will have the option of filing international applications with the International Bureau as receiving Office. In order to afford the International Bureau the requisite legal competence under Article 10 PCT to act as receiving Office and to make practical provisions for its new role, a number of changes to the PCT regulations will take effect on 1 January 1994. These changes are described below¹.

1. Competence of the International Bureau as receiving Office
- Rules 19.1 and 19.2 PCT

Rule 19.1(a)(iii) includes the International Bureau as an alternative receiving Office for any resident/national of a PCT Contracting State.

Rule 19.2(ii) provides that where there are two or more applicants the International Bureau may act as receiving Office provided at least one of the applicants is a resident/national of a PCT Contracting State.

2. Competence of International Bureau where an international application is filed with a non-competent receiving Office - Rule 19.4 PCT

Rule 19.4 provides that where an international application is filed at a receiving Office which, due to the applicant's residence/nationality, is not competent to receive it, that receiving Office shall, subject to any provisions concerning national security (not applicable to the EPO) transmit the international application to the International Bureau. Provided the requirements of Article 11(1) PCT (as to the language requirement for filing with the International Bureau, see paragraph 6 below) are met, the date of receipt by the non-competent receiving Office, which in this context is considered to be acting on behalf of the International Bureau, will be accorded as the international filing date. The non-competent receiving Office is entitled to charge a special transmittal fee².

3. Competent ISA where an international application is filed with the International Bureau as receiving Office - Rule 35.3 PCT

The competent ISA is that ISA which would have been competent had the international application been filed at the receiving Office which is the national Office of, or acting for, a Contracting State of which the applicant is a resident/national. Where more than one ISA would be competent, the choice is left to the applicant and must be indicated in the PCT request form (Rules 4.1(b)(vi) and 4.14bis PCT).

The new provisions broaden in some cases the applicant's choice of competent ISA. For example, an international application filed with the International Bureau by a US national and a French national would allow them to choose between the USPTO and the EPO, a choice not open to them under the previous provisions if they had filed the international application at the EPO or French Industrial Property Office. A sole applicant having US nationality but resident in France would have the same choice.

4. Competent IPEA where an international application is filed with the International Bureau - Rule 59.1(b) PCT

As is the case for the ISA, the competent IPEA is that IPEA which would have been competent had the international application been filed at the receiving Office which is the national Office of, or acting for, a Contracting State of which the applicant is a resident/national.

5. Representation - Rule 83.1bis , 90.1(a) and (d) PCTRule 90.1(i) PCT

Rule 83.1bis(a) extends the right to practise before the International Bureau as receiving Office to any agent who would have been entitled to represent the applicant had the international application been filed at the national Office of, or acting for, the Contracting State of which the applicant is a resident or national (or, if there are two or more applicants, any of the applicants).

Rule 83.1bis(b) parallels Article 49 PCT. It extends the right to practise before the ISA and IPEA to any person having the right to practise before the International Bureau as receiving Office.

Consequential amendments have been made to Rule 90.1(a) and (d)(i).

6. Admitted languages for international applications filed with the International Bureau as receiving Office

All of the publication languages under the PCT, i.e. Chinese, English, French, German, Japanese, Russian and Spanish are admitted languages for the purpose of filing an international application with the International Bureau. In any particular case the language of filing will be determined by the applicant's choice of ISA; the international application must be in a language for which the ISA has agreed to perform the international search (Rule 12.1 PCT).

It should be noted that international applications which are in a language other than one of the PCT publication languages but for which the ISA has agreed to perform the international search, may only be filed with the receiving Office which has declared itself willing to accept such international applications, not with the International Bureau. For example, international applications in the Dutch language for which the EPO is the competent ISA may only be filed with the Netherlands Patent Office or, where appropriate, the Belgian Industrial Property Office.