Regulations under the PCT

Rule 51bis
Certain National Requirements Allowed under Article 27

 

51bis.1       Certain National Requirements Allowed 11
 
  (a)
  Subject to Rule 51bis.2, the national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish, in particular:
 
  (i)
  any document relating to the identity of the inventor,
 
  (ii)
  any document relating to the applicant’s entitlement to apply for or be granted a patent,
 
  (iii)
  any document containing any proof of the applicant’s entitlement to claim priority of an earlier application where the applicant is not the applicant who filed the earlier application or where the applicant’s name has changed since the date on which the earlier application was filed,
 
  (iv)
  where the international application designates a State whose national law requires that national applications be filed by the inventor, any document containing an oath or declaration of inventorship,
 
  (v)
  any evidence concerning non-prejudicial disclosures or exceptions to lack of novelty, such as disclosures resulting from abuse, disclosures at certain exhibitions and disclosures by the applicant during a certain period of time;
 
  (vi)
  the confirmation of the international application by the signature of any applicant for the designated State who has not signed the request;
 
  (vii)
  any missing indication required under Rule 4.5(a)(ii) and (iii) in respect of any applicant for the designated State.
 
  (b)
  The national law applicable by the designated Office may, in accordance with Article 27(7), require that
 
  (i)
  the applicant be represented by an agent having the right to represent applicants before that Office and/or have an address in the designated State for the purpose of receiving notifications,
 
  (ii)
  the agent, if any, representing the applicant be duly appointed by the applicant.
 
  (c)
  The national law applicable by the designated Office may, in accordance with Article 27(1), require that the international application, the translation thereof or any document relating thereto be furnished in more than one copy.
 
  (d)
  The national law applicable by the designated Office may, in accordance with Article 27(2)(ii), require that the translation of the international application furnished by the applicant under Article 22 be:
 
  (i)
  verified by the applicant or the person having translated the international application in a statement to the effect that, to the best of his knowledge, the translation is complete and faithful;
 
  (ii)
  certified by a public authority or sworn translator, but only where the designated Office may reasonably doubt the accuracy of the translation.
 
  (e)
  The national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish a translation of the priority document, provided that such a translation may only be required:
 
  (i)
  where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable; or
 
  (ii)
  where the international filing date has been accorded by the receiving Office under Rule 20.3(b)(ii) or 20.5(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part, for the purposes of determining under Rule 82ter.1(b) whether that element or part is completely contained in the priority document concerned, in which case the national law applicable by the designated Office may also require the applicant to furnish, in the case of a part of the description, claims or drawings, an indication as to where that part is contained in the translation of the priority document.
 
  (f)
  If, on March 17, 2000, the proviso in paragraph (e) is not compatible with the national law applied by the designated Office, that proviso shall not apply in respect of that Office for as long as that proviso continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.12
 

51bis.2       Certain Circumstances in Which Documents or Evidence May Not Be Required
 
  (a)
  Where the applicable national law does not require that national applications be filed by the inventor, the designated Office shall not, unless it may reasonably doubt the veracity of the indications or declaration concerned, require any document or evidence:
 
  (i)
  relating to the identity of the inventor (Rule 51bis.1(a)(i)), if indications concerning the inventor, in accordance with Rule 4.6, are contained in the request or if a declaration as to the identity of the inventor, in accordance with Rule 4.17(i), is contained in the request or is submitted directly to the designated Office;
 
  (ii)
  relating to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent (Rule 51bis.1(a)(ii)), if a declaration as to that matter, in accordance with Rule 4.17(ii), is contained in the request or is submitted directly to the designated Office;
 
  (iii)
  relating to the applicant’s entitlement, as at the international filing date, to claim priority of an earlier application (Rule 51bis.1(a)(iii)), if a declaration as to that matter, in accordance with Rule 4.17(iii), is contained in the request or is submitted directly to the designated Office.
 
  (b)
  Where the applicable national law requires that national applications be filed by the inventor, the designated Office shall not, unless it may reasonably doubt the veracity of the indications or declaration concerned, require any document or evidence:
 
  (i)
  relating to the identity of the inventor (Rule 51bis.1(a)(i)) (other than a document containing an oath or declaration of inventorship (Rule 51bis.1(a)(iv))), if indications concerning the inventor, in accordance with Rule 4.6, are contained in the request;
 
  (ii)
  relating to the applicant’s entitlement, as at the international filing date, to claim priority of an earlier application (Rule 51bis.1(a)(iii)), if a declaration as to that matter, in accordance with Rule 4.17(iii), is contained in the request or is submitted directly to the designated Office;
 
  (iii)
  containing an oath or declaration of inventorship (Rule 51bis.1(a)(iv)), if a declaration of inventorship, in accordance with Rule 4.17(iv), is contained in the request or is submitted directly to the designated Office.
 
  (c)
  If, on March 17, 2000, paragraph (a) is not compatible, in relation to any item of that paragraph, with the national law applied by the designated Office, paragraph (a) shall not apply in respect of that Office in relation to that item for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.12
 

51bis.3       Opportunity to Comply with National Requirements
 
  (a)
  Where any of the requirements referred to in Rule 51bis.1(a)(i) to (iv) and (c) to (e), or any other requirement of the national law applicable by the designated Office which that Office may apply in accordance with Article 27(1) or (2), is not already fulfilled during the same period within which the requirements under if Article 22 must be complied with, the designated Office shall invite the applicant to comply with the requirement within a time limit which shall not be less than two months from the date of the invitation. Each designated Office may require that the applicant pay a fee for complying with national requirements in response to the invitation.
 
  (b)
  Where any requirement of the national law applicable by the designated Office which that Office may apply in accordance with Article 27(6) or (7) is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the applicant shall have an opportunity to comply with the requirement after the expiration of that period.
 
  (c)
  If, on March 17, 2000, paragraph (a) is not compatible with the national law applied by the designated Office in relation to the time limit referred to in that paragraph, the said paragraph shall not apply in respect of that Office in relation to that time limit for as long as the said paragraph continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.12

 

 

11

Editor's Note: Rule 51bis.1 as in force from April 1, 2007, shall apply to international applications whose international filing date is on or after April 1, 2007, provided that it shall not apply to international applications in respect of which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office before April 1, 2007.

12

Editor's Note: This information is also published on the WIPO website at: www.wipo.int/pct/en/texts/reservations/res_incomp.pdf.
 
  <<   >>
Table of Contents