July 2009 Rule on Amending PCT Applications Revised

In a Federal Register notice on July 1, 2009, the U.S. Patent and Trademark Office announced a revision to PCT procedures to conform U.S. patent rules to changes in PCT practice.

Under the PCT, applicants are required to submit replacement pages for only those pages which contain changes. The revision of PCT rules requires applicants to submit a complete set of the claims when amending any of the claims. 37 CFR §1.485 is amended as well to conform to the PCT changes. The changes to 37 CFR 1.485 are effective on July 1, 2009, and apply to any amendment filed in an international application on or after that date regardless of the filing date of the international application.

The Federal Register Notice can be found here:
http://edocket.access.gpo.gov/2009/pdf/E9-15303.pdf

2003 Revision of PCT Procedure

In October 2003, U.S. Patent and Trademark Office published amendments to the rules of practice to conform them to amendments made to PCT regulations that took effect on January 1, 2004. The revised U.S. rules were also effective January 1, 2004.

The rule changes can be found here:
http://www.patentsusa.com/20031020_PCT.pdf

Under the new procedures, the USPTO, acting as International Searching Authority (ISA), became responsible for establishing a preliminary and non-binding written opinion during Chapter 1 procedure. Previously, written opinions were part of Chapter II procedure and were established if a PCT applicant filed a Chapter II demand to request international examination. Under the new procedure, if an applicant were to timely file a Demand for international preliminary examination, the written opinion of the ISA would be considered to be the written opinion of the International Preliminary Examining Authority. If a Chapter II demand was not timely filed, the written opinion of the ISA would form the basis for the issuance of an International Preliminary Report on Patentability.

Under the revised system, the time limit for filing a Chapter II Demand changed to the later of three months from issuance of the international search report and written opinion of the ISA or twenty-two months from the priority date.

The comments noted that, although Chapter II Demands were no longer necessary in the U.S., applicants might desire to file the Demand prior to the expiration of nineteen months from the priority date in order to delay entry into the national stage for the few remaining contracting states that took a reservation to the new thirty month time limit.

The amendments also resulted in automatic designation of all states upon filing a PCT application. A simplified fee system was also introduced, and other changes were made.