8.15.1 Key Features of the Legislation

Also in this Chapter:

• 8.15.2 National Phase Preliminaries

• 8.15.3 Formality Requirements

• 8.15.4 Priority Sources

• 8.15.5 Determining Whether Amendments Made Under Articles and Rules of the PCT are Considered During Examination

• 8.15.6 Amendments During Examination

Key Legislation:

Patents Act:

• s88 (Superseded)
• s89 (Superseded)

Patents Regulations:

• reg 8.2 (Superseded)

Patent Cooperation Treaty:

• a3 The International Application
• a4 The Request
• a8 Claiming Priority 
• a11 Filing Date and Effects of the International Application
• a19 Amendment of the Claims Before the International Bureau
• a27 National Requirements
• a34 Procedure Before the International Preliminary Examining Authority
• a41 Amendment of the Claims, the Desccription, and the Drawings, Before Elected Offices

Regulations under the PCT:

• rule 91 Rectification of Obvious Mistakes in the International Application and Other Documents
• rule 92bis Recording of Changes in Certain Indications
  in the Request or the Demand

On this page

• PCT
• Patents Act
• Patents Regulations

Particular aspects of the PCT, the Patents Act and the Patents Regulations are relevant to considerations in the national phase.

PCT

Article 3: An international application shall contain a request, description, claim(s), drawing(s) where required and an abstract.

Article 4: The request shall designate the contracting states (e.g. Australia) in which protection is sought.

Article 8: The international application may claim priority from an earlier national application(s).

Article 11: The international filing date is the date of receipt of the international application by the receiving Office, if requirements of right to apply and language and application formalities are met. This date is considered the actual filing date in each designated state.

Article 19: After receiving the ISR and ISO, the applicant is entitled to one opportunity to amend the claims at the International Bureau. A statement in support may also be made. The amendments should not go beyond the disclosure in the international application as filed.

Article 27: No national law shall require compliance with requirements relating to the form or contents (e.g. formality requirements) of the international application different from, or additional to, those of the PCT.

Article 34: Before the IPEA establishes the IPER/IPRPII, the applicant is entitled to amend the claims, description and drawings. The amendments should not go beyond the disclosure in the international application as filed.

Article 41: In the national phase, amendments should not go beyond the disclosure in the international application as filed, unless this is permitted under national law.

Rule 91: Obvious mistakes in the international application may be rectified by the relevant authority upon request by the applicant.

The relevant authority to which the applicant sends a request to rectify the application differs depending on what part of the international application is to be rectified. The receiving Office may only correct mistakes in the request. The ISA and IPEA can correct mistakes occurring in the application and documents submitted to the authority, but not those that occur in the request. The International Bureau is the relevant authority for correcting mistakes occurring in documents which do not form part of the application or amendments/corrections to the application.

Rule 92bis: The International Bureau shall record changes in the person, name, residence, nationality or address of the applicant, at the request of the applicant or receiving Office, only if the request is made within the time limit.

Patents Act

Section 88(1): A PCT application must be treated as a complete application for a standard patent.

Section 88(3): The description, drawings and claims of a PCT application are treated as the complete specification, but, in accordance with s89(2), are not presumed to satisfy s40.

Section 88(4): The filing date of a PCT application is its international filing date.

Section 89(1): A PCT application is to be taken to comply with the prescribed requirements for a patent application (see reg 8.1(3)), but is not taken to comply with other applicable requirements.

Section 89(3): The applicant cannot ask that any action be taken in relation to an application unless the required documents are filed and the fees paid.  

Section 89(4): Where a translation has been filed, an application is taken to have been amended, on the day on which the translation was filed, by substituting the translation for the international application.

Section 89(5): An application is taken to be amended by amendments made under Article 19 or Article 34 (if timing provisions are met), or by rectifications made under Rule 91, on their date of filing.

Patents Regulations

Regulation 8.2(5): For a PCT application, the applicant is taken to be the nominated person.