page 3
Notes to the request form (PCT/RO/101) (page 3) (July 2020)
However, for the reasons explained below, it is possible
to indicate, by marking the applicable check-box(es), that
DE Germany, JP Japan and/or KR Republic of Korea are not
designated for any kind of national protection. Each of those
States has notifi ed the International Bureau that Rule 4.9(b)
applies to it since its national law provides that the fi ling of an
international application which contains the designation of that
State and claims the priority, at the time of fi ling or subsequently
under Rule 26bis.1, of an earlier national application (for DE:
for the same kind of protection) having eff ect in that State shall
have the result that the earlier national application ceases, where
applicable, after the expiration of certain time limits, to have
eff ect with the same consequences as the withdrawal of the
earlier national application. The designation of DE Germany
for the purposes of a EP European patent is not aff ected by what
is said above. For details see the PCT Applicant’s Guide, in the
relevant Annex B.
Only the three States mentioned above may be excluded from
the all-inclusive coverage of all designations in Box No. V. For
any other PCT Contracting State which the applicant wishes
to exclude from the all-inclusive coverage of all designations,
the applicant should submit a separate notice of withdrawal of
the designation concerned under Rule 90bis.2. Important:
Should a notice of withdrawal be fi led, that notice will have
to be signed by the applicant or, if there are two or more
applicants, by all of them (Rule 90bis.5), or by an agent
or a common representative whose appointment has been
eff ected by each applicant signing, at his choice, the request,
the demand or a separate power of attorney (Rule 90.4(a)).
BOX No. VI
Priority Claim(s) (Rule 4.10): If the priority of an earlier
application is claimed, the declaration containing the priority
claim must be made in the request.
The request must indicate the date on which the earlier
application from which priority is claimed was fi led and the
number it was assigned. Note that that date must fall within
the period of 12 months preceding the international fi ling date.
Where the earlier application is a national application,
the country party to the Paris Convention for the Protection
of Industrial Property, or the Member of the World Trade
Organization that is not a party to that Convention, in which
that earlier application was fi led must be indicated. Where the
earlier application is a regional application, the regional Offi ce
concerned must be indicated. Where the earlier application is
an international application, the receiving Offi ce with which
that earlier application was fi led must be indicated.
Where the earlier application is a regional application (see
however below), or an international application, the priority
claim may also, if the applicant so wishes, indicate one or more
countries party to the Paris Convention for which that earlier
application was fi led (Rule 4.10(b)(i)); such an indication is
not, however, mandatory. Where the earlier application is a
regional application and at least one of the countries party to the
regional patent treaty is neither party to the Paris Convention
nor a Member of the World Trade Organization, at least one
country party to the Paris Convention or one Member of the
World Trade Organization for which that earlier application was
fi led must be indicated (Rule 4.10(b)(ii)) in the Supplemental
Box.
As to the possibility of correcting or adding a priority claim,
see Rule 26bis.1 and the PCT Applicant’s Guide, International
Phase.
Restoration of the Right of Priority (Rules 4.1(c)(v)
and 26bis.3): The procedure for restoration of the right of
priority is not applicable to a receiving Offi ce which has provided
notice to the International Bureau under Rule 26bis.3(j) of the
incompatibility of Rule 26bis.3(a) to (i) with the national law
applied by that Offi ce. Where the international application is
fi led on a date which is later than the date on which the priority
period (see Rule 2.4) expired but within the period of two months
from that date, the applicant may request the receiving Offi ce to
restore the right of priority (Rule 26bis.3). Such a request must
be fi led with the receiving Offi ce within two months from the
date on which the priority period expired; it may be included in
the request (Rule 4.1(c)(v)) by identifying the priority claim(s)
in Box No. VI. If, in Box No. VI, a priority claim is identifi ed
in respect of which a request to restore the right of priority is
made, in such case, a separate document should be submitted
entitled “Statement for Restoration of the Right of Priority”. This
separate document should indicate, for each earlier application
concerned, the fi ling date, the earlier application number and
the name or two-letter code of the country, Member of WTO,
regional Offi ce or receiving Offi ce. Then, for each earlier
application concerned, the applicant should state the reasons for
the failure to fi le the international application within the priority
period (Rules 26bis.3(a) and 26bis.3(b)(ii)). Note that such a
request may be subjected by the receiving Offi ce to the payment
to it of a fee, payable within the time limit referred to above
(Rule
26bis.3(e)). According to Rule 26bis.3(d), the time limit for
payment of the fee may be extended, at the option of the receiving
Offi ce, for a period of up to two months from the expiration of
the time limit applicable under Rule 26bis.3(e). Note further
that the receiving Offi ce may require the furnishing, within
a reasonable time limit, of a declaration or other evidence in
support of the statement of reasons; preferably, such declaration
or other evidence should already be submitted to the receiving
Offi ce together with the request for restoration (Rule 26bis.3(b)
and (f)). The receiving Offi ce shall restore the right of priority
if it fi nds that a criterion for restoration applied by the Offi ce is
satisfi ed (Rule 26bis.3(a)). For information on which criteria a
receiving Offi ce applies see the PCT Applicant’s Guide, Annex C.
Incorporation by Reference (Rules 4.18 and 20): The
procedure for incorporation by reference is not applicable to a
receiving Offi ce which has provided notice to the International
Bureau, under Rule 20.8(a) or (a-bis), of the incompatibility of
the provisions on incorporation by reference with its national law.
Where the receiving Offi ce fi nds that any of the requirements
of Article 11(1)(iii)(d) and (e) are not or appear not to be
fulfi lled, it will invite the applicant to either furnish the required
correction or confi rm that the element concerned referred to in
Article 11(1)(iii)(d) or (e) is incorporated by reference under
Rule 4.18. Where the applicant furnishes the required correction
under Article 11(2), the international fi ling date will be the date on
which the receiving Offi ce receives the required correction (see
Rule 20.3(a)(ii) and (b)(i)), provided that all other requirements
of Article 11(1) are fulfi lled. However, where the applicant
confi rms the incorporation by reference of an element referred
to in Article 11(1)(iii)(d) or (e) which is completely contained
in an earlier application the priority of which is claimed in the
international application, that element will be considered to
have been contained in the purported international application
on the date on which one or more elements referred to in
Article 11(1)(iii) were fi rst received by the receiving Offi ce,
and the international fi ling date will be the date on which all
Article 11(1) requirements are fulfi lled (see Rule 20.3(a)(ii)
and (b)(ii)).
Where the applicant furnishes a missing part to the receiving
Offi ce after the date on which all of the requirements of
Article 11(1) were fulfi lled but within the applicable time limit
under Rule 20.7, that part will be included in the international
application and the international fi ling date will be corrected
to the date on which the receiving Offi ce received that part
(see Rule 20.5(c)). In such a case, the applicant will be given
the opportunity to request the receiving Offi ce to disregard the
missing part concerned, in which case the missing part would be
considered not to have been furnished and the correction of the
international fi ling date not to have been made (see Rule 20.5(e)).
However, where the applicant confi rms the incorporation by
reference of a missing part in accordance with Rule 20.6(a) and
the receiving Offi ce fi nds that all the requirements of Rules 4.18
and 20.6(a) are complied with, that part will be considered to
have been contained in the purported international application
on the date on which one or more elements referred to in
Article 11(1)(iii) were fi rst received by the receiving Offi ce, and
the international fi ling date will be the date on which all of the
requirements of Article 11(1) are fulfi lled (see Rule 20.5(d)).
Where, in the case of an element or part having been
erroneously fi led, the applicant furnishes the correct element
or part to the receiving Office after the date on which all of