PCT Newsletter Highlights for April 2006

The April 2006 issue of the PCT Newsletter is now available on WIPO's Internet site at http://www.wipo.int/edocs/pctndocs/en/2006/pct_news_2006_4.pdf. Here are the highlights:

PCT-SAFE Update

A new version of the PCT-SAFE Client software (version 3.51.005.180), dated 1 April 2006, may now be downloaded from the PCT-SAFE website at www.wipo.int/pct-safe/en/support/download_client.htm. This version includes changes due to the amendments to the PCT Regulations and Administrative Instructions under the PCT (with effect from 1 April 2006), in particular the possibility to irrevocably exclude the designation of Japan (JP) and the fact that declarations (i), (ii), (iii) and (v) no longer contain indications of the designated States for which they are made. This version also permits residents and/ or nationals of the United States of America, filing with RO/US to indicate ISA/KR as the International Searching Authority. Other PCT updates, including new fee schedules, are also included.
Further details are available on the PCT-SAFE website at www.wipo.int/pct-safe/en/index.htm

Updated Regulations

The consolidated texts of the Regulations under the PCT in English and French, as in force from 1 April 2006, are available at, respectively:
www.wipo.int/pct/en/texts/pdf/pct_regs.pdf
www.wipo.int/pct/fr/texts/pdf/pct_regs.pdf

New editions of the Patent Cooperation Treaty and Regulations (WIPO publication No. 274 (E)
and (F)), as in force from 1 April 2006, will also be available shortly.

PowerPoint Presentation on Amendments to the PCT Regulations

A PowerPoint presentation containing an overview of the amendments to the PCT Regulations that entered into force on 1 April 2006 is now available at
www.wipo.int/pct/en/texts/ppt/2006changes.ppt

Updated Request and Demand Forms

The April 2006 versions of the Request Form (PCT/RO/101) and Demand Form (PCT/IPEA/401) in English, French, German and Spanish, in editable PDF format, are now
available on the PCT web site at www.wipo.int/pct/en/forms/. The USPTO recommends that applicants continue to use the “Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371” (Form PTO-1390) when electronically filing documents for entry into the US national stage under 35 U.S.C. 371.

Updated PCT Applicant's Guide

Several parts of the PCT Applicant's Guide have been updated to take into account
the PCT Rule changes that entered into force on 1 April 2006 and have been published on the PCT web site at www.wipo.int/pct/guide/en/

PatentScope Replaces Electronic PCT Gazette

From July 2005 to 1 April 2006, searching international patent applications was possible
through two databases: the electronic PCT Gazette and the PCT Online File Inspection. Until April 2006, the latter was published as a prototype. This prototype had been developed
with the aim of publication of international applications and of the PCT Gazette only in
electronic form according to a decision of WIPO Member States taken in September
2005. On April 1, 2006, the PCT Gazette and the PCT Online File Inspection were merged into one single source of data which is easy to use. This is available at www.wipo.int/pctdb/en/ and
www.wipo.int/pctdb/fr/. Further information is available at www.wipo.int/pctdb/en/news.html, and www.wipo.int/edocs/prdocs/en/2006/wipo_pr_2006_443.html


Automatic Withdrawl of National Applications

The national law of Germany, as well as those of Japan, the Republic of Korea and the Russian Federation, provides for automatic withdrawal, at a certain moment, of an earlier national application if a later filed international application claims the priority of that earlier national application and designates that State. This means that if the designation concerned is not withdrawn from the international application, the earlier national application will be considered withdrawn at a time defined in the national law. In connection with this, the abovementioned
four States have notified WIPO that PCT Rule 4.9(b), as amended with effect from 1 April 2006, applies in respect of the designation of each of those States.

Further information about the designation system in general is included in the following "practical advice” articles:

• The non-designation of certain States in the new Request form, applicable as from 1 January 2004 – PCT Newsletter No. 11/2003;
• Signature requirements for the withdrawal of the US designation – PCT Newsletter
  No. 01/2004;
• The procedure for withdrawing designations – PCT Newsletter No. 02/2004;
• Automatic designation of the US: the consequences of the applicant/inventor being a
  resident and national of a non-PCT Contracting State – PCT Newsletter No. 03/2004;
• Automatic designation of the US: indication of the inventors as “inventors only” where there is no intention to enter the US national phase – PCT Newsletter No. 04/2004;
• Automatic designation of all PCT Contracting States: alternative to withdrawing a designation – PCT Newsletter No. 05/2004; and
• Maintaining the US designation where a US national application has already been filed –
  PCT Newsletter No. 02/2006.