Extension to Jersey of the PCT, Hague Agreement, Madrid Protocol and Nice Agreement

STATES OF JERSEY

EXTENSION TO JERSEY OF THE PCT, HAGUE AGREEMENT, MADRID PROTOCOL AND NICE AGREEMENT

Lodged au Greffe on 22nd December 2025 by the Minister for External Relations Earliest date for debate: 3rd February 2025

STATES GREFFE

2025  P.117

PROPOSITION

THE STATES are asked to decide whether they are of opinion

1. to refer to the text of the Patent Cooperation Treaty, as set out in Appendix 1 to the accompanying Report, and to agree that the Minister for External Relations  should  request  the  extension  of  the  Treaty  from  the  United Kingdom of Great Britain and Northern Ireland to the Bailiwick of Jersey;
2. to refer to the text of the Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs, as set out in Appendix 2 to the accompanying Report, and to agree that the Minister for External Relations should request the extension of the Treaty from the United Kingdom of Great Britain and Northern Ireland to the Bailiwick of Jersey;
3. to  refer  to  the  text  of  the  Protocol  Relating  to  the  Madrid  Agreement Concerning the International Registration of Marks, as set out in Appendix 3 to the accompanying Report, and to agree that the Minister for External Relations  should  request  the  extension  of  the  Treaty  from  the  United Kingdom of Great Britain and Northern Ireland to the Bailiwick of Jersey; and
4. to refer to the text of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as set out in Appendix 4 to the accompanying Report, and to agree that the Minister for External Relations should request the extension of the Treaty from the United Kingdom of Great Britain and Northern Ireland to the Bailiwick of Jersey.

MINISTER FOR EXTERNAL RELATIONS

REPORT

Executive Summary

Following the States Assembly's approval of P.48/2024 and P.86/2025 to advance the modernisation of Jersey's intellectual property (IP) framework, this Proposition asks the States Assembly to refer to the text of the below treaties (together, the Treaties) and to agree that the Minister for External Relations (the Minister) should request the extension of the Treaties from the United Kingdom of Great Britain and Northern Ireland to the Bailiwick of Jersey.

• the Patent Cooperation Treaty (the PCT);

• the Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement);

• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol); and  

• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the Nice Agreement).

This Proposition seeks to progress the IP framework modernisation in a timely and efficient manner, in the spirit of work being finalised by the Legislative Advisory Panel regarding the State Assembly's approval of treaties, without further delay.

Background

The modernisation of Jersey's IP legislation and registry infrastructure is a priority for the Government of Jersey to support Jersey's future economy.

The PCT, the Hague Agreement and the Madrid Protocol all create systems that allow users to seek international protection for the IP to which those treaties relate, in a large number of countries worldwide, by filing a single application. The Nice Agreement establishes a system of classification of goods and services for the purposes of trade mark registration.

All four of the Treaties are published on the website of the World Intellectual Property Organization (the WIPO).

In September 2024, the States Assembly approved the Patents Law and Registered Designs Law (Jersey) Amendment Regulations 202- (the 2024 Regulations). These made a small number of changes to the Patents (Jersey) Law 1957 (the Patents Law) and the Registered Designs (Jersey) Law 1957 (the Registered Designs Law) to ensure compliance of these Laws with the PCT and the Hague Agreement and to enable an extension request to be made. In particular, the 2024 Regulations amend the Patents Law  and  Registered  Designs  Law  to  make  provision  in  relation  to  so-called "international patents (UK)" and "international registered designs (UK)".

Under the Patents Law, as amended, if a patent derived from a PCT application, is granted in the UK, it will automatically provide protection in Jersey. The same principle applies to design rights granted in the UK in accordance with the Hague Agreement.

In November 2025, the States Assembly also adopted the Trade Marks (Jersey) Law 202- (the Trade Marks Law 202-). The Trade Marks Law 202- ensures compliance of

Jersey law with the Madrid Protocol and the Nice Agreement. The Madrid Protocol is a key international trade mark agreement that streamlines the process of international trade  mark  registration  in  a  large  number  of  jurisdictions  worldwide,  offering  a convenient and cost-effective one-stop-shop' solution for registering and managing trade marks globally. The Trade Marks Law 202- marked a turning point in Jersey's approach to trade mark application and registration by introducing a new and modern system of primary trade mark registration in the Island.

Inclusion in the Madrid Protocol will make Jersey more attractive for foreign investment and would also assist any local businesses wishing to obtain trade mark protection in other jurisdictions. The Nice Agreement creates a uniform system for classifying goods and services for trade mark registration.

The 2024 Regulations and the Trade Marks Law 202- make all the necessary provision to ensure compliance with the Treaties. In addition, the States Assembly has approved the establishment of a new IP register to be administered by the Jersey Financial Services Commission in accordance with the Registrar of Intellectual Property (Jersey) Law 202- (P.98/2025).

Subject to the approval of the States Assembly, the Minister will request the extension of the Treaties through the Official Channel as soon as practicable. If Members approve this Proposition, the extension of the UK's ratification of the Treaties would not require any further legislative changes in addition to those already approved by this Assembly in the 2024 Regulations and the Trade Marks Law 202-.

Further detail on the individual treaties

The process whereby Jersey can benefit from participation international treaties is outlined on the Government's website. This also explains that, in general, participation in international treaties can help:

• boost the Island's connectivity;

• maximise opportunities in trade and investment; and

• enhance Jersey's position as a responsible global citizen.1

This, along with the reduction of red tape, was part of the rationale for seeking the extension of the international IP treaties referred to in this Report and was further elaborated on in the Reports accompanying the 2024 Regulations and the Trade Marks Law 202- . Further detail the Treaties also is provided below.

1. The PCT

The PCT is an international treaty administered by the WIPO. As outlined on the WIPO website,  "it  establishes  an  international  patent  system  that  helps  companies  and innovators seek patent protection in multiple countries through a single, cost-effective procedure".2 The PCT enables them to file a single PCT application', in one language, at no more than one patent Office. This has the same legal effect as filing separate patent applications in all of the contracting states of the treaty. As such, filing through the PCT is more convenient than filing separate national patent applications in multiple countries

1 Treaties and conventions - Jersey.

2 Introduction to the Patent Cooperation Treaty (PCT).

and helps companies and innovators save the effort and unnecessary cost of seeking patent protection in a number of countries.

As outlined above, the 2024 Regulations make provision for applications for registration that extend to the UK, in accordance with the PCT system, to automatically extend to Jersey. Accordingly, when an applicant files a PCT application designating the UK, upon grant, the UK patent will automatically provide protection in Jersey without the proprietor having to re-register it in Jersey. On extension of the PCT, residents and businesses located in Jersey can likewise benefit from the single, cost-effective procedure described above, meaning they will be able to file new PCT applications with the UK IPO with automatic extension to Jersey.

As explained to the States Assembly at the time the 2024 Regulations were debated, the new Jersey IP Registry will not be participating in the PCT as a separate designation as this would require substantive examination of the application to be carried out in the Island, which would not be cost effective to resource.

By making the 2024 Regulations, the States Assembly agreed all the necessary changes to the Patents Law to enable the Minister to request the extension to Jersey of the PCT. The intention of making such a request was explicitly referenced in the Report accompanying the 2024 Regulations and elaborated upon by the Assistant Minister during the debate in the States Assembly on 10 September 2024. [3]

2. The Hague Agreement

The Hague System for the international registration of industrial designs is based on the Hague Agreement Concerning the International Registration of Industrial Designs, which is centred on the Geneva Act (1999). There are three separate Acts of the Hague Agreement, namely, the London Act (1934), the Hague Act (1960) and the Geneva Act (1999), which coexist with respect to their substantive provisions on the international registration of industrial designs. [4]This Proposition specifically concerns the Geneva Act of the Hague Agreement signed in 1999 and, if adopted, will set the process in train for the extension of the UK's ratification of this international agreement to Jersey.

As explained on the WIPO website, "The Hague Agreement allows applicants to register an industrial design by filing a single application with the International Bureau of WIPO, enabling design owners to protect their designs with minimum formalities in multiple countries or regions. The Hague Agreement also simplifies the management of an industrial design registration, since it is possible to record subsequent changes and to renew the international registration through a single procedural step." The 2024 Regulations make similar provision in relation to registered designs as is made in relation to patents, thus providing for automatic effect in Jersey of any international registered design protection extending to the UK. More specifically, the 2024 Regulations stipulate that an international registered design (UK) appearing on the International Register is taken to be a registered design under the Registered Designs Law, and the date of registration is taken to be the date on which the design is entered on the International Register.

By making the 2024 Regulations, the States Assembly agreed all the necessary changes to the Registered Designs Law to enable the Minister to request the extension to Jersey

of  the  Hague Agreement. The  intention  of making  such a  request  was  explicitly referenced in the Report accompanying the 2024 Regulations and elaborated upon by the Assistant Minister during the debate in the States Assembly on 10 September 2024.

3. The Madrid Protocol

The Madrid Protocol was adopted in 1989, but only came into operation on 1 April 1996, and is administered by the WIPO.

The  Madrid  Protocol  establishes  a  centralised  system  for  obtaining  trade  mark protection in multiple jurisdictions through a single application. Under this framework, a trade mark owner who has a national application or registration in a contracting party can file one international application designating any or all other contracting parties. This significantly simplifies and streamlines the process of seeking multinational trade mark  protection  by  replacing  numerous  separate  national  filings  with  a  unified administrative procedure.

An international registration under the Madrid Protocol has the same legal effect as if the mark had been directly filed in each of the designated contracting parties. Each designated country then examines the mark under its own national law. If a country does not refuse protection within the prescribed period, the mark automatically receives protection within that territory. This structure reduces administrative burden, translation requirements, and costs, while still preserving the substantive autonomy of each national trade mark office.

The  Madrid  system  also  provides  a  mechanism  for  the  subsequent  expansion  of protection. After the initial international registration is issued, the trade mark holder may later request protection in additional contracting parties without needing to start a new application. Renewals and record of details - such as changes of ownership or address - likewise occur through the WIPO, enabling continued central management of a mark's international portfolio. Together, these features promote efficiency and legal certainty for businesses operating in multiple jurisdictions.

On 25 November 2025, the States Assembly unanimously adopted the Trade Marks Law 202-. As the Assistant Minister explained to the States Assembly, the Trade Marks Law 202- has two main objectives. Firstly, it introduces a system of primary trade mark application and registration that works for local people and businesses and makes obtaining trade mark protection in the Island more accessible, particularly for small businesses that primarily trade within Jersey. Secondly, it includes all the necessary provisions to enable Jersey to seek participation in the Madrid Protocol.

The main difference between the 2024 Regulations and the Trade Marks Law 202- is that the latter introduced a system of primary grant of rights in Jersey, whilst the former ensured automatic recognition of certain international patents and registered designs within Jersey's system of patent and registered design re-registration. As explained in the Report on the Trade Marks Law 202-, the introduction of a system of primary trade mark registration will involve considerable extra work for the Registrar of trade marks and  necessitate  the  establishment  of  a  new  Jersey  IP  Register.  The  Registrar  of Intellectual Property (Jersey) Law 202-, which was also adopted unanimously on 25 November, makes provision for the appointment of the Registrar of Intellectual Property and the establishment of the Jersey Intellectual Property Register.5

5 States Assembly | P.98/2025.

As such, in order to ensure compliance with the PCT and Hague Agreement, only a small number of changes were needed to the Patents Law and Registered Designs Law to automatically recognise international patents and registered designs designating the UK. However, as the Trade Marks Law 202- introduces a system of primary trade mark registration in Jersey, enabling Jersey to become a separate designation in the Madrid System, Jersey's compliance with the Protocol needs to be fully assessed against the Island's own legislation in this area. This is achieved by virtue of the more substantive Trade Marks Law 202- and, in particular, Part 3 of that Law.

As outlined, the Madrid Protocol provides a centralised system for obtaining and managing trade mark protection in multiple countries through a single application, administered by the WIPO. It does not create a universal trade mark, however, as each designated country examines and protects the mark under its own domestic law. The Trade Marks Law 202-, in relation to international registrations, amongst other things, makes provision in relation to:

• The office of origin' (as every international application must be based on a national application or registration). The office of origin is typically the IP office where the application has a connection (e.g. nationality or domicile).

• The territorial extension of international registrations (as applicants can designate' countries in the Madrid System in which protection is sought).

• The substantive examination (distinctiveness, conflicts with earlier marks, etc.) which is conducted by the Jersey IP Office under the Trade Marks Law-.

• Provisional refusal and, subsequently in certain cases, total refusal. If there are no grounds for refusal and all relevant proceedings before the Jersey IP Office have been completed, it will send a statement that the international trade mark

is granted protection in Jersey.

• The automatic extension to Jersey of international registrations that are the subject of a request for territorial extension to Jersey if the Jersey IP Office does not send a notice of provisional refusal to the International Bureau before the end of the refusal period.

• "Replacement", which allows the holder of an international registration to benefit from an earlier date of protection in a jurisdiction covered by an earlier national right.

• The renewal of an international registration in accordance with the Madrid Protocol and the continued effect in thereof in Jersey.

• "Transformation", which is where the International Bureau has cancelled an international registration due to the ceasing of effect of the basic mark. In those cases, the holder has the option of securing continued protection in the members designated in that international registration by transforming this to national or regional rights.

• Changes recorded in the International Register (such as assignments, owner name/address changes, limitations, renunciations) have effect in Jersey as if they are entered in its register of trade marks.

By adopting the Trade Marks Law 202-, the States Assembly agreed all the necessary changes to enable the Minister to request the extension to Jersey of the Madrid Protocol. The intention of making such a request was explicitly referenced in the Report accompanying the 2024 Regulations and elaborated upon by the Assistant Minister during the debate in the States Assembly on 25 November 2025. [5]

4. The Nice Agreement

The Nice Agreement establishes a system of classification of goods and services for the purposes of registering trade marks. It requires that trade mark offices of contracting parties must indicate, in official documents and publications in connection with each registration, the numbers of the classes of the classification to which the goods or services for which the mark is registered belong.7 The adoption of the Trade Marks Law 202- enables the Minister to request the extension to Jersey of the Nice Agreement The intention  of  making  such  a  request  was  explicitly  referenced  in  the  Report accompanying the 2024 Regulations and elaborated upon by the Assistant Minister during the debate in the States Assembly on 25 November 2025.

Extending the UK's ratification of the Nice Agreement would be of benefit to local trade mark  owners  as  their  marks  would  be  covered  by  the  same  class  numbers  and descriptions as used in over 90 other countries, including the UK. It would also bring more certainty to Jersey trade mark owners by reducing the risks of misclassification while  bringing  a  level  of  familiarity  to  both  local  residents  and  businesses  and international rightsholders considering registration of their trade marks in Jersey.

Consultation

There has been extensive engagement with stakeholders in relation to the IP Framework modernisation, including the benefits of treaty extension.

1. The Economic and International Affairs Scrutiny Panel (the Panel) has received briefings from Government of Jersey Officers in relation to both the 2024 Regulations and the Trade Marks Law 202-. The Panel has also questioned the Minister for External Relations and the Assistant Minister on these subject matters during Quarterly Hearings.

With respect to the 2024 Regulations, the Panel agreed:

"that it is sensible to seek further inclusion within beneficial treaties concerning Intellectual Property".

Furthermore,  the  Panel  understood  that  extension of  the  PCT  and  Hague Agreement:

,

 "will aid in the Common Strategic Policy Priority to Reduce red tape, enhance  opportunities  for  business  and  strengthen  Jersey's international reputation".8

In relation to the Madrid Protocol and Nice Agreement, the Panel advised that it:

"understands that the inclusion of Jersey in these treaties could result in  the  Island  becoming  more  attractive  for  foreign  trade  mark registration and assist local businesses seeking trade mark protection abroad".9

7 https://www.wipo.int/en/web/treaties/classification/nice/index. 8 P-48-2024-Com-EIA.pdf.

9 P-86-2025-Com-EIA.pdf.

2. Two rounds of public consultation were undertaken in relation to the Trade Marks Law 202-. As part of the consultation process, Government officials directly engaged with various local stakeholders to ensure input was obtained from a wide group of interested parties and industry experts. This included representatives from the legal, financial, and IP management sectors.

As outlined in the Report accompanying the Law, there was widespread support for the introduction of a new trade marks law which complies with the Madrid Protocol with some stakeholders describing it as an "absolute must" and necessary to "achieve international recognition as a jurisdiction that takes IP rights seriously". In addition, the first round of consultation also set out Government's proposed approach and changes to the Patents Law and Registered Designs Law to enable a request for extension of the PCT and Hague Agreement to be made. No concerns were raised on this matter by stakeholders.

Financial and staffing implications

There would be no additional resource implications for the Government of Jersey if the States Assembly approves this Proposition. Funding of £300,000 (later reduced to £240,000) was included in the Government Plan 2024-27 [6]for the modernisation of Jersey's  IP Framework and for the  operation of the  new IP registry to meet the requirements, in particular, of the Madrid Protocol. The long-term aim is that the new Registry should offset its costs as far as possible through application and renewal fees. In accordance with the Public Finances Manual, any funds will only be provided on an as-needed basis' and any unspent monies must be returned to the Treasurer of the States.

Children's Rights Impact Assessment

I consider that this proposition has no direct or indirect impact on children and that the duty to have due regard to the UN Convention on the Rights of the Child does not arise. Accordingly, a Children's Rights Impact Assessment is not required under the Children (Conventions Rights) (Jersey) Law 2022.

Patent Cooperation Treaty (PCT)

Done at Washington on June 19, 1970,

amended on September 28, 1979,

 modified on February 3, 1984, and on October 3, 2001

Editor's Note: For details concerning amendments and modifications to the Patent Cooperation Treaty (PCT), and for access to decisions of the Assembly of the International Patent Cooperation Union (PCT Assembly) concerning their entry into force and transitional arrangements, reference should be made to the relevant reports of the PCT Assembly available from the International Bureau or via the WIPO website at: www.wipo.int/pct/en/meetings/assemblies/reports.html.

Patent Cooperation Treaty

Done at Washington on June 19, 1970, amended on September 28, 1979,

 modified on February 3, 1984, and on October 3, 2001

TABLE OF CONTENTS*

Preamble

Introductory Provisions

Article  1  Establishment of a Union Article  2  Definitions

Chapter I: International Application and International Search

Article  3  The International Application

Article  4  The Request

Article  5  The Description

Article  6  The Claims

Article  7  The Drawings

Article  8  Claiming Priority

Article  9  The Applicant

Article  10  The Receiving Office

Article  11  Filing Date and Effects of the International Application Article  12  Transmittal of the International Application to the

International Bureau and the International Searching Authority

Article  13  Availability of Copy of the International Application to

Designated Offices

Article  14  Certain Defects in the International Application

Article  15  The International Search

Article  16  The International Searching Authority

Article  17  Procedure before the International Searching Authority Article  18  The International Search Report

Article  19  Amendment of the Claims before the International

Bureau

Article  20  Communication to Designated Offices

Article  21  International Publication

Article  22  Copy, Translation, and Fee, to Designated Offices Article  23  Delaying of National Procedure

* Table of Contents and Editor's Notes are added for the convenience of the reader; they do not form part of the Treaty.

Article  24  Possible Loss of Effect in Designated States Article  25  Review by Designated Offices

Article  26  Opportunity to Correct before Designated Offices Article  27  National Requirements

Article  28  Amendment of the Claims, the Description, and the Drawings, before Designated Offices

Article  29  Effects of the International Publication

Article  30  Confidential Nature of the International Application

Chapter II: International Preliminary Examination

Article  31  Demand for International Preliminary Examination Article  32  The International Preliminary Examining Authority Article  33  The International Preliminary Examination

Article  34  Procedure before the International Preliminary

Examining Authority

Article  35  The International Preliminary Examination Report Article  36  Transmittal, Translation, and Communication, of the

International Preliminary Examination Report

Article  37  Withdrawal of Demand or Election

Article  38  Confidential Nature of the International Preliminary

Examination

Article  39  Copy, Translation, and Fee, to Elected Offices

Article  40  Delaying of National Examination and Other Processing Article  41  Amendment of the Claims, the Description, and the

Drawings, before Elected Offices

Article  42  Results of National Examination in Elected Offices

Chapter III: Common Provisions

Article  43  Seeking Certain Kinds of Protection

Article  44  Seeking Two Kinds of Protection

Article  45  Regional Patent Treaties

Article  46  Incorrect Translation of the International Application Article  47  Time Limits

Article  48  Delay in Meeting Certain Time Limits

Article  49  Right to Practice before International Authorities

Chapter IV: Technical Services

Article  50  Patent Information Services

Article  51  Technical Assistance

Article  52  Relations with Other Provisions of the Treaty

Chapter V: Administrative Provisions

Article  53  Assembly

Article  54  Executive Committee

Article  55  International Bureau

Article  56  Committee for Technical Cooperation Article  57  Finances

Article  58  Regulations

Chapter VI: Disputes

Article  59  Disputes

Chapter VII: Revision and Amendment

Article  60  Revision of the Treaty

Article  61  Amendment of Certain Provisions of the Treaty

Chapter VIII: Final Provisions

Article  62  Becoming Party to the Treaty Article  63  Entry into Force of the Treaty Article  64  Reservations

Article  65  Gradual Application

Article  66  Denunciation

Article  67  Signature and Languages Article  68  Depositary Functions

Article  69  Notifications

The Contracting States,

Desiring  to  make  a  contribution  to  the  progress  of  science  and technology,

Desiring to perfect the legal protection of inventions,

Desiring to simplify  and  render more  economical the obtaining  of protection for inventions where protection is sought in several countries,

Desiring  to  facilitate  and  accelerate  access  by  the  public  to  the technical information contained in documents describing new inventions,

Desiring  to  foster  and  accelerate  the  economic  development  of developing  countries  through  the  adoption  of  measures  designed  to increase the efficiency of their legal systems, whether national or regional, instituted for the protection of inventions by providing easily accessible information on the availability of technological solutions applicable to their special needs and by facilitating access to the ever expanding volume of modern technology,

Convinced that cooperation among nations will greatly facilitate the attainment of these aims,

Have concluded the present Treaty.

INTRODUCTORY PROVISIONS

Article 1 Establishment of a Union

1. The States party to this Treaty (hereinafter called "the Contracting

States") constitute a Union for cooperation in the filing, searching, and examination,  of  applications  for  the  protection  of  inventions,  and  for rendering special technical services. The Union shall be known as the International Patent Cooperation Union.

2. No provision of this Treaty shall be interpreted as diminishing the

rights under the Paris Convention for the Protection of Industrial Property of any national or resident of any country party to that Convention.

Article 2 Definitions

For  the  purposes  of  this  Treaty  and  the  Regulations  and  unless expressly stated otherwise:

1. "application"  means  an  application  for  the  protection  of  an

invention; references to an "application" shall be construed as references to applications for patents for inventions, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, and utility certificates of addition;

2. references to a "patent" shall be construed as references to

patents  for  inventions,  inventors'  certificates,  utility  certificates,  utility models,  patents  or  certificates  of  addition,  inventors'  certificates  of addition, and utility certificates of addition;

3. "national patent" means a patent granted by a national authority;
4. "regional patent" means a patent granted by a national or an

intergovernmental authority having the power to grant patents effective in more than one State;

5. "regional  application"  means  an  application  for  a  regional

patent;

6. references to a "national application" shall be construed as

references to applications for national patents and regional patents, other than applications filed under this Treaty;

7. "international application" means an application filed under this

Treaty;

(viii) references to an "application" shall be construed as references to international applications and national applications;

9. references to a "patent" shall be construed as references to

national patents and regional patents;

10. references to "national law" shall be construed as references to

the national law of a Contracting State or, where a regional application or a regional patent is involved, to the treaty providing for the filing of regional applications or the granting of regional patents;

11. "priority date," for the purposes of computing time limits, means:

1. where the international application contains a priority claim

under  Article 8, the filing date of the application whose priority is so claimed;

2. where the international application contains several priority

claims under Article 8, the filing date of the earliest application whose priority is so claimed;

3. where the international application does not contain any

priority  claim  under  Article  8,  the  international  filing  date  of  such application;

12. "national  Office"  means  the  government  authority  of  a

Contracting State entrusted with the granting of patents; references to a "national  Office"  shall  be  construed  as  referring  also  to  any intergovernmental authority which several States have entrusted with the task of granting regional patents, provided that at least one of those States is a Contracting State, and provided that the said States have authorized that authority to assume the obligations and exercise the powers which this Treaty and the Regulations provide for in respect of national Offices;

(xiii) "designated Office" means the national Office of or acting for the State designated by the applicant under Chapter I of this Treaty;

14. "elected Office" means the national Office of or acting for the

State elected by the applicant under Chapter II of this Treaty;

15. "receiving  Office"  means  the  national  Office  or  the

intergovernmental organization with which the international application has been filed;

16. "Union" means the International Patent Cooperation Union;

(xvii) "Assembly" means the Assembly of the Union;

(xviii) "Organization"  means  the  World  Intellectual  Property Organization;

19. "International Bureau" means the International Bureau of the

Organization and, as long as it subsists, the United International Bureaux for the Protection of Intellectual Property (BIRPI);

20. "Director  General"  means  the  Director  General  of  the

Organization and, as long as BIRPI subsists, the Director of BIRPI.

CHAPTER I

INTERNATIONAL APPLICATION AND INTERNATIONAL SEARCH

Article 3

The International Application

1. Applications  for  the  protection  of  inventions  in  any  of  the

Contracting States may be filed as international applications under this Treaty.

2. An international application shall contain, as specified in this Treaty

and the Regulations, a request, a description, one or more claims, one or more drawings (where required), and an abstract.

3. The abstract merely serves the purpose of technical information

and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.

4. The international application shall:

1. be in a prescribed language;
2. comply with the prescribed physical requirements;
3. comply with the prescribed requirement of unity of invention;
4. be subject to the payment of the prescribed fees.

Article 4 The Request

1. The request shall contain:

1. a petition  to the effect that the international application be

processed according to this Treaty;

2. the designation of the Contracting State or States in which

protection for the invention is desired on the basis of the international application ("designated States"); if for any designated State a regional patent is available and the applicant wishes to obtain a regional patent rather than a national patent, the request shall so indicate; if, under a treaty  concerning  a  regional  patent,  the  applicant  cannot  limit  his application to certain of the States party to that treaty, designation of one  of those States and the indication of the wish to obtain the regional patent shall be treated as designation of all the States party to that treaty; if, under the national law of the designated State, the designation of that State has the effect of an application for a regional patent, the designation of the said State shall be treated as an indication of the wish to obtain the regional patent;

3. the name of and other prescribed data concerning the applicant

and the agent (if any);

4. the title of the invention;
5. the name of and other prescribed data concerning the inventor

where the national law of at least one of the designated States requires that  these  indications  be  furnished  at  the  time  of  filing  a  national application. Otherwise, the said indications may be furnished either in the request or in separate notices addressed to each designated Office whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application.

2. Every designation shall be subject to the payment of the prescribed

fee within the prescribed time limit.

3. Unless the applicant asks for any of the other kinds of protection

referred to in Article 43, designation shall mean that the desired protection consists of the grant of a patent by or for the designated State. For the purposes of this paragraph, Article 2(ii) shall not apply.

4. Failure to indicate in the request the name and other prescribed

data  concerning  the  inventor  shall  have  no  consequence  in  any designated State whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application. Failure to furnish the said indications in a separate notice shall have no  consequence in any designated  State whose national law does not require the furnishing of the said indications.

Article 5 The Description

The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.

Article 6 The Claims

The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.

Article 7 The Drawings

1. Subject to the provisions of paragraph (2)(ii), drawings shall be

required when they are necessary for the understanding of the invention.

2. Where,  without  being  necessary  for  the  understanding  of  the

invention, the nature of the invention admits of illustration by drawings:

1. the applicant may include such drawings in the international

application when filed,

2. any designated Office may require that the applicant file such

drawings with it within the prescribed time limit.

Article 8 Claiming Priority

(1) The  international  application  may  contain  a  declaration,  as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.

(2)(a) Subject to the provisions of subparagraph (b), the conditions for, and the effect of, any priority claim declared under paragraph (1) shall be as provided in Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property.

(b) The international application for which the priority of one or more earlier applications filed in or for a Contracting State is claimed may contain  the  designation  of  that  State. Where,  in  the  international application, the priority of one or more national applications filed in or for a designated State is claimed, or where the priority of an international application having designated only one State is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by the national law of that State.

Article 9 The Applicant

1. Any  resident  or  national  of  a  Contracting  State  may  file  an

international application.

2. The Assembly may decide to allow the residents and the nationals

of any country party to the Paris Convention for the Protection of Industrial Property which is not party to this Treaty to file international applications.

3. The concepts of residence and nationality, and the application of

those concepts in cases where there are several applicants or where the applicants are not the same for all the designated States, are defined in the Regulations.

Article 10 The Receiving Office

The international application shall be filed with the prescribed receiving Office, which will check and process it as provided in this Treaty and the Regulations.

Article 11

Filing Date and Effects of the International Application

(1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:

1. the applicant does not obviously lack, for reasons of residence

or nationality, the right to file an international application with the receiving Office,

2. the international application is in the prescribed language,
3. the  international  application  contains  at  least  the  following

elements:

1. an  indication  that  it  is  intended  as  an  international

application,

2. the designation of at least one Contracting State,
3. the name of the applicant, as prescribed,
4. a part which on the face of it appears to be a description,
5. a part which on the face of it appears to be a claim or claims.

(2)(a) If the receiving Office finds that the international application did not, at the time of receipt, fulfill the requirements listed in paragraph (1), it  shall, as provided in the Regulations, invite the applicant to file the required correction.

(b) If the applicant complies with the invitation, as provided in the Regulations, the receiving Office shall accord as the international filing date the date of receipt of the required correction.

3. Subject to Article 64(4), any international application fulfilling the

requirements listed in items (i) to (iii) of paragraph (1) and accorded an international  filing  date  shall  have  the  effect  of  a  regular  national application in each designated State as of the international filing date, which  date  shall  be  considered  to  be  the  actual  filing  date  in  each designated State.

4. Any international application fulfilling the requirements listed in

items (i) to (iii) of paragraph (1) shall be equivalent to a regular national filing within the meaning of the Paris Convention for the Protection of Industrial Property.

Article 12

Transmittal of the International Application to the International Bureau and the International Searching Authority

1. One copy of the international application shall be kept by the

receiving  Office  ("home  copy"),  one  copy  ("record  copy")  shall  be transmitted to the International Bureau, and another copy ("search copy") shall be transmitted to the competent International Searching Authority referred to in Article 16, as provided in the Regulations.

2. The  record  copy  shall  be  considered  the  true  copy  of  the

international application.

3. The international application shall be considered withdrawn if the

record copy has not been received by the International Bureau within the prescribed time limit.

Article 13

Availability of Copy of the International Application to Designated Offices

1. Any designated Office may ask the International Bureau to transmit

to it a copy of the international application prior to the communication provided for in Article 20, and the International Bureau shall transmit such copy to the designated Office as soon as possible after the expiration of one year from the priority date.

(2)(a) The  applicant  may,  at  any  time,  transmit  a  copy  of  his

international application to any designated Office.

2. The applicant may, at any time, ask the International Bureau to

transmit a copy of his international application to any designated Office, and the International Bureau shall transmit such copy to the designated Office as soon as possible.

3. Any national Office may notify the International Bureau that it

does not wish to receive copies as provided for in subparagraph (b), in which case that subparagraph shall not be applicable in respect of that Office.

Article 14

Certain Defects in the International Application

(1)(a) The  receiving  Office  shall  check  whether  the  international

application contains any of the following defects, that is to say:

1. it is not signed as provided in the Regulations;
2. it does not contain the prescribed indications concerning the

applicant;

3. it does not contain a title;
4. it does not contain an abstract;
5. it does not comply to the extent provided in the Regulations

with the prescribed physical requirements.

(b) If the receiving Office finds any of the said defects, it shall invite the applicant to correct the international application within the prescribed time limit, failing which that application shall be considered withdrawn and the receiving Office shall so declare.

2. If the international application refers to drawings which, in fact, are

not  included  in  that  application,  the  receiving  Office  shall  notify  the applicant accordingly and he may furnish them within the prescribed time limit and, if he does, the international filing date shall be the date on which the  drawings  are  received  by  the  receiving  Office.   Otherwise,  any reference to the said drawings shall be considered non-existent.

(3)(a) If the receiving Office finds that, within the prescribed time limits, the fees prescribed under Article 3(4)(iv) have not been paid, or no fee prescribed under  Article 4(2) has been paid in respect of any of the designated  States,  the  international  application  shall  be  considered withdrawn and the receiving Office shall so declare.

(b) If  the  receiving  Office  finds  that  the  fee  prescribed  under Article 4(2) has been paid in respect of one or more (but less than all) designated States within the prescribed time limit, the designation of those States in respect of which it has not been paid within the prescribed time limit shall be considered withdrawn and the receiving Office shall so declare.

(4) If,  after  having  accorded  an  international  filing  date  to  the international application, the receiving Office finds, within the prescribed time  limit,  that  any  of  the  requirements  listed  in  items  (i)  to  (iii)  of Article 11(1) was not complied with at that date, the said application shall be considered withdrawn and the receiving Office shall so declare.

Article 15

The International Search

1. Each international application shall be the subject of international

search.

2. The objective of the international search is to discover relevant

prior art.

3. International search shall be made on the basis of the claims, with

due regard to the description and the drawings (if any).

4. The International Searching Authority referred to in Article 16 shall

endeavor to discover as much of the relevant prior art as its facilities permit, and shall, in any case, consult the documentation specified in the Regulations.

(5)(a) If the national law of the Contracting State so permits, the applicant who files a national application with the national Office of or acting for such State may, subject to the conditions provided for in such law, request that a search similar to an international search ("international- type search") be carried out on such application.

2. If the national law of the Contracting State so permits, the

national Office  of or acting for  such  State may subject any  national application filed with it to an international-type search.

3. The  international-type  search  shall  be  carried  out  by  the

International Searching Authority referred to in Article 16 which would be competent for an international search if the national application were an international  application  and  were filed with the Office  referred  to  in subparagraphs (a) and (b). If the national application is in a language which the International Searching Authority considers it is not equipped to handle, the international-type search shall be carried out on a translation  prepared  by  the  applicant  in  a  language  prescribed  for  international applications  and  which  the  International  Searching  Authority  has undertaken  to  accept  for  international  applications.   The  national application and the translation, when required, shall be presented in the form prescribed for international applications.

Article 16

The International Searching Authority

1. International  search  shall  be  carried  out  by  an  International

Searching  Authority,  which  may  be  either  a  national  Office  or  an intergovernmental organization, such as the International Patent Institute, whose tasks include the establishing of documentary search reports on prior art with respect to inventions which are the subject of applications.

2. If, pending the establishment of a single International Searching

Authority,  there  are  several  International  Searching  Authorities,  each receiving Office shall, in accordance with the provisions of the applicable agreement  referred  to  in  paragraph (3)(b),  specify  the  International Searching  Authority  or  Authorities  competent  for  the  searching  of international applications filed with such Office.

(3)(a) International Searching Authorities shall be appointed by the Assembly. Any national Office and any intergovernmental organization satisfying  the  requirements  referred  to  in  subparagraph (c)  may  be appointed as International Searching Authority.

2. Appointment shall be conditional on the consent of the national

Office  or  intergovernmental  organization  to  be  appointed  and  the conclusion  of  an  agreement,  subject  to  approval  by  the  Assembly, between such Office or organization and the International Bureau. The agreement  shall  specify  the  rights  and  obligations  of  the  parties,  in particular, the formal undertaking by the said Office or organization to apply and observe all the common rules of international search.

3. The  Regulations  prescribe  the  minimum  requirements,

particularly as to manpower and documentation, which any Office or organization must satisfy before it can be appointed and must continue to satisfy while it remains appointed.

4. Appointment shall be for a fixed period of time and may be

extended for further periods.

5. Before the Assembly makes a decision on the appointment of

any national Office or intergovernmental organization, or on the extension of its appointment, or before it allows any such appointment to lapse, the  Assembly shall hear the interested Office or organization and seek the advice of the Committee for Technical Cooperation referred to in Article 56 once that Committee has been established.

Article 17

Procedure before the International Searching Authority

(1) Procedure before the International Searching Authority shall be governed  by  the  provisions  of  this  Treaty,  the  Regulations,  and  the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.

2. If the International Searching Authority considers

1. that the international application relates to a subject matter which the International Searching Authority is not required, under the Regulations, to search, and in the particular case decides not to search, or
2. that the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out,

the said Authority shall so declare and shall notify the applicant and the International Bureau that no international search report will be established.

(b) If any of the situations referred to in subparagraph (a) is found to exist in connection with certain claims only, the international search report shall so indicate in respect of such claims, whereas, for the other claims, the said report shall be established as provided in Article 18.

3. If  the  International  Searching  Authority  considers  that  the

international application does not comply with the requirement of unity of invention as set forth in the Regulations, it shall invite the applicant to pay additional fees. The International Searching Authority shall establish the international search report on those parts of the international application which relate to the invention first mentioned in the claims ("main invention") and, provided the required additional fees have been paid within the prescribed time limit, on those parts of the international application which relate to inventions in respect of which the said fees were paid.

(b) The national law of any designated State may provide that, where the national Office of that State finds the invitation, referred to in subparagraph (a), of the International Searching Authority justified and where the applicant has not paid all additional fees, those parts of the international application which consequently have not been searched shall,  as  far  as  effects  in  that  State  are  concerned,  be  considered  withdrawn unless a special fee is paid by the applicant to the national Office of that State.

Article 18

The International Search Report

1. The international search report shall be established within the

prescribed time limit and in the prescribed form.

2. The international search report shall, as soon as it has been

established, be transmitted by the International Searching Authority to the applicant and the International Bureau.

3. The international search report or the declaration referred to in

Article 17(2)(a) shall be translated as provided in the Regulations. The translations  shall  be  prepared  by  or  under  the  responsibility  of  the International Bureau.

Article 19

Amendment of the Claims before the International Bureau

1. The applicant shall, after having received the international search

report,  be  entitled  to  one  opportunity  to  amend  the  claims  of  the international  application  by  filing  amendments  with  the  International Bureau within the prescribed time limit. He may, at the same time, file a brief  statement,  as  provided  in  the  Regulations,  explaining  the amendments and indicating any impact that such amendments might have on the description and the drawings.

2. The  amendments  shall  not  go  beyond  the  disclosure  in  the

international application as filed.

3. If the national law of any designated State permits amendments to

go beyond the said disclosure, failure to comply with paragraph (2) shall have no consequence in that State.

Article 20 Communication to Designated Offices

1. The  international  application,  together  with  the  international

search report (including any indication referred to in Article 17(2)(b)) or the declaration referred to in Article 17(2)(a), shall be communicated to each designated Office, as provided in the Regulations, unless the designated Office waives such requirement in its entirety or in part.

(b) The communication shall include the translation (as prescribed)

of the said report or declaration.

2. If the claims have been amended by virtue of Article 19(1), the

communication shall either contain the full text of the claims both as filed and as amended or shall contain the full text of the claims as filed and specify the amendments, and shall include the statement, if any, referred to in Article 19(1).

3. At  the  request  of  the  designated  Office  or  the  applicant,  the

International Searching Authority shall send to the said Office or the applicant, respectively, copies of the documents cited in the international search report, as provided in the Regulations.

Article 21 International Publication

1. The International Bureau shall publish international applications.
   2. Subject to the exceptions provided for in subparagraph (b) and

in Article 64(3), the international publication of the international application shall be effected promptly after the expiration of 18 months from the priority date of that application.

(b) The applicant may ask the International Bureau to publish his international application any time before the expiration of the time limit referred to in subparagraph (a). The International Bureau shall proceed accordingly, as provided in the Regulations.

3. The international search report or the declaration referred to in

Article 17(2)(a) shall be published as prescribed in the Regulations.

4. The language and form of the international publication and other

details are governed by the Regulations.

5. There  shall  be  no  international  publication  if  the  international

application is withdrawn or is considered withdrawn before the technical preparations for publication have been completed.

6. If the international application contains expressions or drawings

which, in the opinion of the International Bureau, are contrary to morality or public order, or if, in its opinion, the international application contains disparaging statements as defined in the Regulations, it may omit such expressions, drawings, and statements, from its publications, indicating the place and number of words or drawings omitted, and furnishing, upon request, individual copies of the passages omitted.

Article 22

Copy, Translation, and Fee, to Designated Offices

1. The applicant shall furnish a copy of the international application

(unless the communication provided for in Article 20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each designated Office not later than at the expiration of 30[7] months from the priority date. Where the national law of the designated State requires the indication of the name of and other prescribed data concerning the inventor but allows that these indications be furnished at a time later than that of the filing of a national application, the applicant shall, unless they were contained in the request, furnish the said indications to the national Office of or acting for the State not later than at the expiration of 301 months from the priority date.

2. Where the International Searching Authority makes a declaration,

under  Article 17(2)(a), that no international search report will be established, the time limit for performing the acts referred to in paragraph (1) of this Article shall be the same as that provided for in paragraph (1).

3. Any national law may, for performing the acts referred to in

paragraphs (1) or (2), fix time limits which expire later than the time limit provided for in those paragraphs.

Article 23

Delaying of National Procedure

1. No designated Office shall process or examine the international

application prior to the expiration of the applicable time limit under Article 22.

2. Notwithstanding the provisions of paragraph (1), any designated

Office may, on the express request of the applicant, process or examine the international application at any time.

Article 24

Possible Loss of Effect in Designated States

1. Subject, in case (ii) below, to the provisions of Article 25, the effect

of the international application provided for in Article 11(3) shall cease in any designated State with the same consequences as the withdrawal of any national application in that State:

1. if the applicant withdraws his international application or the

designation of that State;

2. if the international application is considered withdrawn by virtue

of Articles 12(3), 14(1)(b), 14(3)(a), or 14(4), or if the designation of that State is considered withdrawn by virtue of Article 14(3)(b);

3. if the applicant fails to perform the acts referred to in Article 22

within the applicable time limit.

2. Notwithstanding the provisions of paragraph (1), any designated

Office may maintain the effect provided for in Article 11(3) even where such effect is not required to be maintained by virtue of Article 25(2).

Article 25

Review by Designated Offices

1. Where  the  receiving  Office  has  refused  to  accord  an

international filing date or has declared that the international application is considered withdrawn, or where the International Bureau has made a finding under Article 12(3), the International Bureau shall promptly send, at the request of the applicant, copies of any document in the file to any of the designated Offices named by the applicant.

2. Where the receiving Office has declared that the designation of

any given State is considered withdrawn, the International Bureau shall promptly send, at the request of the applicant, copies of any document in the file to the national Office of such State.

3. The request under subparagraphs (a) or (b) shall be presented

within the prescribed time limit.

2. Subject to the provisions of subparagraph (b), each designated

Office shall, provided that the national fee (if any) has been paid and the appropriate translation (as prescribed) has been furnished within the prescribed time limit, decide whether the refusal, declaration, or finding, referred to in paragraph (1) was justified under the provisions of this Treaty and the Regulations, and, if it finds that the refusal or declaration was the result of an error or omission on the part of the receiving Office or that the finding was the result of an error or omission on the part of the International  Bureau, it shall, as far as effects in the State of the designated Office are concerned, treat the international application as if such error or omission had not occurred.

(b) Where the record copy has reached the International Bureau after the expiration of the time limit prescribed under Article 12(3) on account of any error or omission on the part of the applicant, the provisions of subparagraph (a) shall apply only under the circumstances referred to in Article 48(2).

Article 26

Opportunity to Correct before Designated Offices

No designated Office shall reject an international application on the grounds of non-compliance with the requirements of this Treaty and the Regulations without first giving the applicant the opportunity to correct the said application to the extent and according to the procedure provided by the national law for the same or comparable situations in respect of national applications.

Article 27 National Requirements

1. No national law shall require compliance with requirements relating

to the form or contents of the international application different from or additional  to  those  which  are  provided  for  in  this  Treaty  and  the Regulations.

2. The provisions of paragraph (1) neither affect the application of the

provisions of Article 7(2) nor preclude any national law from requiring, once the processing of the international application has started in the designated Office, the furnishing:

1. when the applicant is a legal entity, of the name of an officer

entitled to represent such legal entity,

2. of documents not part of the international application but which

constitute proof of allegations or statements made in that application, including the confirmation of the international application by the signature of  the  applicant  when  that  application,  as  filed,  was  signed  by  his representative or agent.

3. Where the applicant, for the purposes of any designated State, is

not qualified according to the national law of that State to file a national application because he is not the inventor, the international application may be rejected by the designated Office.

4. Where the national law provides, in respect of the form or contents

of national applications, for requirements which, from the viewpoint of applicants, are more favorable than the requirements provided for by this Treaty and the Regulations in respect of international applications, the national Office, the courts and any other competent organs of or acting for the designated State may apply the former requirements, instead of the latter  requirements,  to  international  applications,  except  where  the applicant insists that the requirements provided for by this Treaty and the Regulations be applied to his international application.

5. Nothing  in  this  Treaty  and  the  Regulations  is  intended  to  be

construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires. In particular, any provision in this Treaty and the Regulations concerning the definition of prior art is exclusively for the purposes of the international procedure and, consequently, any Contracting State is free to apply, when determining the patentability of an invention claimed in an international application, the criteria of its national law in respect of prior art and other conditions of patentability not constituting requirements as to the form and contents of applications.

6. The national law may require that the applicant furnish evidence in

respect of any substantive condition of patentability prescribed by such law.

7. Any receiving Office or, once the processing of the international

application has started in the designated Office, that Office may apply the national law as far as it relates to any requirement that the applicant be represented by an agent having the right to represent applicants before the said Office and/or that the applicant have an address in the designated State for the purpose of receiving notifications.

8. Nothing  in  this  Treaty  and  the  Regulations  is  intended  to  be

construed  as  limiting  the  freedom  of  any  Contracting  State  to  apply measures deemed necessary for the preservation of its national security or to limit, for the protection of the general economic interests of that State, the right of its own residents or nationals to file international applications.

Article 28

Amendment of the Claims, the Description, and the Drawings, before Designated Offices

1. The applicant shall be given the opportunity to amend the claims,

the description, and the drawings, before each designated Office within the prescribed time limit. No designated Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired except with the express consent of the applicant.

2. The  amendments  shall  not  go  beyond  the  disclosure  in  the

international application as filed unless the national law of the designated State permits them to go beyond the said disclosure.

3. The amendments shall be in accordance with the national law of

the designated State in all respects not provided for in this Treaty and the Regulations.

4. Where  the  designated  Office  requires  a  translation  of  the

international application, the amendments shall be in the language of the translation.

Article 29

Effects of the International Publication

1. As  far  as  the  protection  of  any  rights  of  the  applicant  in  a

designated  State  is  concerned,  the  effects,  in  that  State,  of  the international publication of an international application shall, subject to the provisions of paragraphs (2) to (4), be the same as those which the national law of the designated State provides for the compulsory national publication of unexamined national applications as such.

2. If the language in which the international publication has been

effected is different from the language in which publications under the national law are effected in the designated State, the said national law may provide that the effects provided for in paragraph (1) shall be applicable only from such time as:

1. a translation into the latter language has been published as

provided by the national law, or

2. a translation into the latter language has been made available

to the public, by laying open for public inspection as provided by the national law, or

3. a translation into the latter language has been transmitted by

the  applicant  to  the  actual  or  prospective  unauthorized  user  of  the invention claimed in the international application, or

4. both the acts described in (i) and (iii), or both the acts described

in (ii) and (iii), have taken place.

3. The national law of any designated State may provide that, where

the international publication has been effected, on the request of the applicant, before the expiration of 18 months from the priority date, the effects provided for in paragraph (1) shall be applicable only from the expiration of 18 months from the priority date.

4. The national law of any designated State may provide that the

effects provided for in paragraph (1) shall be applicable only from the date on  which  a  copy  of  the  international  application  as  published  under Article 21 has been received in the national Office of or acting for such State. The said Office shall publish the date of receipt in its gazette as soon as possible.

Article 30

Confidential Nature of the International Application

1. Subject to the provisions of subparagraph (b), the International

Bureau and the International Searching Authorities shall not allow access by any person or authority to the international application before the international publication of that application, unless requested or authorized by the applicant.

(b) The  provisions  of  subparagraph  (a)  shall  not  apply  to  any transmittal to the competent International Searching Authority, to transmit- tals provided for under Article 13, and to communications provided for under Article 20.

2. No  national  Office  shall  allow  access  to  the  international

application  by  third  parties,  unless  requested  or  authorized  by  the applicant, before the earliest of the following dates:

1. date  of  the  international  publication  of  the  international

application,

2. date of the receipt of the communication of the international

application under Article 20,

3. date of the receipt of a copy of the international application

under Article 22.

2. The provisions of subparagraph (a) shall not prevent any na-

tional Office from informing third parties that it has been designated, or from publishing that fact. Such information or publication may, however, contain only the following data: identification of the receiving Office, name  of the applicant, international filing date, international application number, and title of the invention.

3. The  provisions  of  subparagraph (a)  shall  not  prevent  any

designated Office from allowing access to the international application for the purposes of the judicial authorities.

3. The provisions of paragraph (2)(a) shall apply to any receiving

Office except as far as transmittals provided for under Article 12(1) are concerned.

4. For the purposes of this Article, the term "access" covers any

means by which third parties may acquire cognizance, including individual communication  and  general  publication,  provided,  however,  that  no national Office shall generally publish an international application or its translation  before  the  international  publication  or,  if  international publication has not taken place by the expiration of 20 months from the priority date, before the expiration of 20 months from the said priority date.

CHAPTER II INTERNATIONAL PRELIMINARY EXAMINATION

Article 31

Demand for International Preliminary Examination

(1) On the demand of the applicant, his international application shall be the subject of an international preliminary examination as provided in the following provisions and the Regulations.

(2)(a) Any applicant who is a resident or national, as defined in the Regulations, of a Contracting State bound by Chapter II, and whose international application has been filed with the receiving Office of or acting for  such  State,  may  make  a  demand  for  international  preliminary examination.

(b) The  Assembly  may  decide  to  allow  persons  entitled  to  file international applications to make a demand for international preliminary examination even if they are residents or nationals of a State not party to this Treaty or not bound by Chapter II.

(3) The demand for international preliminary examination shall be made separately from the international application. The demand shall contain the prescribed particulars and shall be in the prescribed language and form.

(4)(a) The demand shall indicate the Contracting State or States in which  the  applicant  intends  to  use  the  results  of  the  international preliminary examination ("elected States"). Additional Contracting States may be elected later. Election may relate only to Contracting States already designated under Article 4.

(b) Applicants  referred  to  in  paragraph (2)(a)  may  elect  any Contracting  State  bound  by  Chapter  II. Applicants  referred  to  in paragraph (2)(b)  may  elect  only  such  Contracting  States  bound  by Chapter II as have declared that they are prepared to be elected by such applicants.

(5) The demand shall be subject to the payment of the prescribed fees

within the prescribed time limit.

(6)(a) The demand shall be submitted to the competent International

Preliminary Examining Authority referred to in Article 32.

(b) Any later election shall be submitted to the International Bureau.

(7) Each elected Office shall be notified of its election.

Article 32

The International Preliminary Examining Authority

1. International preliminary examination shall be carried out by the

International Preliminary Examining Authority.

2. In the case of demands referred to in Article 31(2)(a), the receiving

Office, and, in the case of demands referred to in Article 31(2)(b), the Assembly, shall, in accordance with the applicable agreement between the interested International Preliminary Examining Authority or Authorities and  the  International  Bureau,  specify  the  International  Preliminary Examining  Authority  or  Authorities  competent  for  the  preliminary examination.

3. The provisions of Article 16(3) shall apply, mutatis mutandis, in

respect of International Preliminary Examining Authorities.

Article 33

The International Preliminary Examination

1. The objective of the international preliminary examination is to

formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.

2. For the purposes of the international preliminary examination, a

claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations.

3. For the purposes of the international preliminary examination, a

claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.

4. For the purposes of the international preliminary examination, a

claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. "Industry" shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.

5. The  criteria  described  above  merely  serve  the  purposes  of

international preliminary examination. Any Contracting State may apply additional or different criteria for the purpose of deciding whether, in that State, the claimed invention is patentable or not.

6. The  international  preliminary  examination  shall  take  into

consideration all the documents cited in the international search report. It may take into consideration any additional documents considered to be relevant in the particular case.

Article 34

Procedure before the International Preliminary Examining Authority

(1) Procedure  before  the  International  Preliminary  Examining Authority  shall  be  governed  by  the  provisions  of  this  Treaty,  the Regulations, and the agreement which the International Bureau shall conclude,  subject  to  this  Treaty  and  the  Regulations,  with  the  said Authority.

2. The applicant shall have a right to communicate orally and in

writing with the International Preliminary Examining Authority.

2. The  applicant  shall  have  a  right  to  amend  the  claims,  the

description, and the drawings, in the prescribed manner and within the prescribed time limit, before the international preliminary examination report is established. The amendment shall not go beyond the disclosure in the international application as filed.

3. The applicant shall receive at least one written opinion from the

International  Preliminary  Examining  Authority  unless  such  Authority considers that all of the following conditions are fulfilled:

1. the invention satisfies the criteria set forth in Article 33(1),
2. the international application complies with the requirements

of this Treaty and the Regulations in so far as checked by that Authority,

3. no observations are intended to be made under Article 35(2),

last sentence.

4. The applicant may respond to the written opinion.

3. If the International Preliminary Examining Authority considers

that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it may invite the applicant, at his option, to restrict the claims so as to comply with the requirement or to pay additional fees.

2. The national law of any elected State may provide that, where

the applicant chooses to restrict the claims under subparagraph (a), those parts of the international application which, as a consequence of the restriction,  are  not  to  be  the  subject  of  international  preliminary examination  shall,  as far  as  effects  in  that  State  are  concerned,  be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.

3. If the applicant does not comply with the invitation referred to in

subparagraph (a)  within  the  prescribed  time  limit,  the  International Preliminary  Examining  Authority  shall  establish  an  international preliminary  examination  report  on  those  parts  of  the  international application which relate to what appears to be the main invention and shall indicate the relevant facts in the said report. The national law of any elected State may provide that, where its national Office finds the invitation of the International Preliminary Examining Authority justified, those parts of the international application which do not relate to the main invention shall,  as  far  as  effects  in  that  State  are  concerned,  be  considered withdrawn unless a special fee is paid by the applicant to that Office.

4. If the International Preliminary Examining Authority considers

1. that the international application relates to a subject matter on which the International Preliminary Examining Authority is not required, under the Regulations, to carry out an international preliminary examination, and in the particular case decides not to carry out such examination, or
2. that  the  description,  the  claims,  or  the  drawings,  are  so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the  novelty,  inventive  step  (non-obviousness),  or  industrial applicability, of the claimed invention,

the said Authority shall not go into the questions referred to in Article 33(1) and shall inform the applicant of this opinion and the reasons therefor.

(b) If any of the situations referred to in subparagraph (a) is found to exist in, or in connection with, certain claims only, the provisions of that subparagraph shall apply only to the said claims.

Article 35

The International Preliminary Examination Report

1. The  international  preliminary  examination  report  shall  be

established within the prescribed time limit and in the prescribed form.

2. The international preliminary examination report shall not contain

any statement on the question whether the claimed invention is or seems to be patentable or unpatentable according to any national law. It shall state, subject to the provisions of paragraph (3), in relation to each claim, whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined for the purposes of the international preliminary examination in Article 33(1) to (4). The statement shall be accompanied by the citation of the documents believed to  support  the  stated  conclusion  with  such  explanations  as  the circumstances of the case may require. The statement shall also be accompanied by such other observations as the Regulations provide for.

(3)(a) If,  at  the  time  of  establishing  the  international  preliminary examination  report,  the  International  Preliminary  Examining  Authority considers that any of the situations referred to in Article 34(4)(a) exists, that report shall state this opinion and the reasons therefor. It shall not contain any statement as provided in paragraph (2).

(b) If  a  situation  under  Article 34(4)(b) is  found  to  exist,  the international preliminary examination report shall, in relation to the claims in  question,  contain  the  statement  as  provided  in  subparagraph (a), whereas, in relation to the other claims, it shall contain the statement as provided in paragraph (2).

Article 36

Transmittal, Translation, and Communication, of the International Preliminary Examination Report

(1) The international preliminary examination report, together with the prescribed annexes, shall be transmitted to the applicant and to the International Bureau.

2. The international preliminary examination report and its annexes

shall be translated into the prescribed languages.

(b) Any translation of the said report shall be prepared by or under the responsibility of the International Bureau, whereas any translation of the said annexes shall be prepared by the applicant.

3. The international preliminary examination report, together with

its translation (as prescribed) and its annexes (in the original language), shall be communicated by the International Bureau to each elected Office.

(b) The prescribed translation of the annexes shall be transmitted

within the prescribed time limit by the applicant to the elected Offices.

(4) The provisions of Article 20(3) shall apply, mutatis mutandis, to copies of any document which is cited in the international preliminary examination report and which was not cited in the international search report.

Article 37 Withdrawal of Demand or Election

1. The applicant may withdraw any or all elections.
2. If the election of all elected States is withdrawn, the demand shall

be considered withdrawn.

3. Any withdrawal shall be notified to the International Bureau.

(b) The elected Offices concerned and the International Preliminary Examining  Authority  concerned  shall  be  notified  accordingly  by  the International Bureau.

4. Subject to the provisions of subparagraph (b), withdrawal of the

demand or of the election of a Contracting State shall, unless the national law of that State provides otherwise, be considered to be withdrawal of the international application as far as that State is concerned.

(b) Withdrawal  of  the  demand  or  of  the  election  shall  not  be considered  to  be  withdrawal  of  the  international  application  if  such withdrawal is effected prior to the expiration of the applicable time limit  under  Article 22; however, any Contracting State may provide in its national law that the aforesaid shall apply only if its national Office has received, within the said time limit, a copy of the international application, together with a translation (as prescribed), and the national fee.

Article 38

Confidential Nature of the International Preliminary Examination

1. Neither the International Bureau nor the International Preliminary

Examining  Authority  shall,  unless  requested  or  authorized  by  the applicant, allow access within the meaning,  and with the proviso,  of Article 30(4) to the file of the international preliminary examination by any person or authority at any time, except by the elected Offices once the international preliminary examination report has been established.

2. Subject  to  the  provisions  of  paragraph (1)  and  Articles 36(1)

and (3) and 37(3)(b), neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or authorized by the applicant, give information on the issuance or nonissuance of an international preliminary examination report and on the withdrawal or nonwithdrawal of the demand or of any election.

Article 39

Copy, Translation, and Fee, to Elected Offices

1. If the election of any Contracting State has been effected prior

to the expiration of the 19th month from the priority date, the provisions of Article 22 shall not apply to such State and the applicant shall furnish a copy of the international application (unless the communication under Article 20 has  already  taken  place)  and  a  translation  thereof  (as prescribed), and pay the national fee (if any), to each elected Office not later than at the expiration of 30 months from the priority date.

(b) Any national law may, for performing the acts referred to in subparagraph (a), fix time limits which expire later than the time limit provided for in that subparagraph.

2. The effect provided for in Article 11(3) shall cease in the elected

State with the same consequences as the withdrawal of any national application in that State if the applicant fails to perform the acts referred to in paragraph (1)(a) within the time limit applicable under paragraph (1)(a) or (b).

3. Any  elected  Office  may  maintain  the  effect  provided  for  in

Article 11(3) even  where  the  applicant  does  not  comply  with  the requirements provided for in paragraph (1)(a) or (b).

Article 40

Delaying of National Examination and Other Processing

1. If the election of any Contracting State has been effected prior to

the expiration of the 19th month from the priority date, the provisions of Article 23 shall not apply to such State and the national Office of or acting for that State shall not proceed, subject to the provisions of paragraph (2), to the examination and other processing of the international application prior to the expiration of the applicable time limit under Article 39.

2. Notwithstanding the provisions of paragraph (1), any elected Office

may, on the express request of the applicant, proceed to the examination and other processing of the international application at any time.

Article 41

Amendment of the Claims, the Description, and the Drawings, before Elected Offices

1. The applicant shall be given the opportunity to amend the claims,

the description, and the drawings, before each elected Office within the prescribed time limit. No elected Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired, except with the express consent of the applicant.

2. The  amendments  shall  not  go  beyond  the  disclosure  in  the

international application as filed, unless the national law of the elected State permits them to go beyond the said disclosure.

3. The amendments shall be in accordance with the national law of

the elected State in all respects not provided for in this Treaty and the Regulations.

4. Where an elected Office requires a translation of the international

application, the amendments shall be in the language of the translation.

Article 42

Results of National Examination in Elected Offices

No elected Office receiving the international preliminary examination report may require that the applicant furnish copies, or information on the contents, of any papers connected with the examination relating to the same international application in any other elected Office.

CHAPTER III COMMON PROVISIONS

Article 43

Seeking Certain Kinds of Protection

In respect of any designated or elected State whose law provides for the grant of inventors' certificates, utility certificates, utility models, patents or  certificates  of  addition,  inventors'  certificates  of  addition,  or  utility certificates of addition, the applicant may indicate, as prescribed in the Regulations, that his international application is for the grant, as far as that State is concerned, of an inventor's certificate, a utility certificate, or a utility model, rather than a patent, or that it is for the grant of a patent or certificate  of addition, an inventor's certificate  of  addition, or a  utility certificate of addition, and the ensuing effect shall be governed by the applicant's  choice.   For  the  purposes  of  this  Article  and  any  Rule thereunder, Article 2(ii) shall not apply.

Article 44

Seeking Two Kinds of Protection

In respect of any designated or elected State whose law permits an application, while being for the grant of a patent or one of the other kinds of protection referred to in Article 43, to be also for the grant of another of the said kinds of protection, the applicant may indicate, as prescribed in the Regulations, the two kinds of protection he is seeking, and the ensuing effect shall be governed by the applicant's indications. For the purposes of this Article, Article 2(ii) shall not apply.

Article 45 Regional Patent Treaties

1. Any treaty providing for the grant of regional patents ("regional

patent treaty"), and giving to all persons who, according to Article 9, are entitled to file international applications the right to file applications for such patents, may provide that international applications designating or electing a State party to both the regional patent treaty and the present Treaty may be filed as applications for such patents.

2. The national law of the said designated or elected State may

provide that any designation or election of such State in the international application shall have the effect of an indication of the wish to obtain a regional patent under the regional patent treaty.

Article 46

Incorrect Translation of the International Application

If, because of an incorrect translation of the international application, the scope of any patent granted on that application exceeds the scope of the  international  application  in  its  original  language,  the  competent authorities  of  the  Contracting  State  concerned  may  accordingly  and retroactively limit the scope of the patent, and declare it null and void to the extent that its scope has exceeded the scope of the international application in its original language.

Article 47 Time Limits

(1) The details for computing time limits referred to in this Treaty are

governed by the Regulations.

2. All time limits fixed in  Chapters I and II of this Treaty may,

outside any revision under Article 60, be modified by a decision of the Contracting States.

2. Such decisions shall be made in the Assembly or through voting

by correspondence and must be unanimous.

3. The details of the procedure are governed by the Regulations.

Article 48

Delay in Meeting Certain Time Limits

(1)  Where any time limit fixed in this Treaty or the Regulations is not met because of interruption in the mail service or unavoidable loss or delay in the mail, the time limit shall be deemed to be met in the cases and subject to the proof and other conditions prescribed in the Regulations.

(2)(a) Any Contracting State shall, as far as that State is concerned, excuse, for reasons admitted under its national law, any delay in meeting any time limit.

(b)  Any Contracting State may, as far as that State is concerned, excuse, for reasons other than those referred to in subparagraph (a), any delay in meeting any time limit.

Article 49

Right to Practice before International Authorities

Any attorney, patent agent, or other person, having the right to practice before the national Office with which the international application was filed, shall  be  entitled  to  practice  before  the  International  Bureau  and  the  competent International Searching Authority and competent International Preliminary Examining Authority in respect of that application.

CHAPTER IV TECHNICAL SERVICES

Article 50

Patent Information Services

1. The  International  Bureau  may  furnish  services  by  providing

technical and any other pertinent information available to it on the basis of published  documents,  primarily  patents  and  published  applications (referred to in this Article as "the information services").

2. The International Bureau may provide these information services

either directly or through one or more International Searching Authorities or other national or international specialized institutions, with which the International Bureau may reach agreement.

3. The information services shall be operated in a way particularly

facilitating the acquisition by Contracting States which are developing countries  of  technical  knowledge  and  technology,  including  available published know-how.

4. The information services shall be available to Governments of

Contracting States and their nationals and residents. The Assembly may decide to make these services available also to others.

(5)(a) Any service to Governments of Contracting States shall be furnished  at  cost,  provided  that,  when  the  Government  is  that  of  a Contracting State which is a developing country, the service shall be furnished below cost if the difference can be covered from profit made on services furnished to others than Governments of Contracting States or from the sources referred to in Article 51(4).

(b) The cost referred to in subparagraph (a) is to be understood as cost over and above costs normally incident to the performance of the services  of  a  national  Office  or  the  obligations  of  an  International Searching Authority.

6. The details concerning the implementation of the provisions of this

Article shall be governed by decisions of the Assembly and, within the limits to be fixed by the Assembly, such working groups as the Assembly may set up for that purpose.

7. The Assembly shall, when it considers it necessary, recommend

methods of providing financing supplementary to those referred to in paragraph (5).

Article 51 Technical Assistance

(1) The  Assembly  shall  establish  a  Committee  for  Technical

Assistance (referred to in this Article as "the Committee").

2. The members of the Committee shall be elected among the

Contracting States, with due regard to the representation of developing countries.

(b) The Director General shall, on his own initiative or at the request of  the  Committee,  invite  representatives  of  intergovernmental organizations concerned with technical assistance to developing countries to participate in the work of the Committee.

3. The task of the Committee shall be to organize and supervise

technical assistance for Contracting States which are developing countries in developing their patent systems individually or on a regional basis.

(b) The technical assistance shall comprise, among other things, the  training  of specialists,  the  loaning  of  experts,  and  the supply  of equipment both for demonstration and for operational purposes.

4. The International Bureau shall seek to enter into agreements, on

the  one  hand,  with  international  financing  organizations  and intergovernmental  organizations,  particularly  the  United  Nations,  the agencies of the United Nations, and the Specialized Agencies connected with the United Nations concerned with technical assistance, and, on the other hand, with the Governments of the States receiving the technical assistance, for the financing of projects pursuant to this Article.

5. The details concerning the implementation of the provisions of this

Article shall be governed by decisions of the Assembly and, within the limits to be fixed by the Assembly, such working groups as the Assembly may set up for that purpose.

Article 52

Relations with Other Provisions of the Treaty

Nothing in this Chapter shall affect the financial provisions contained in any other Chapter of this Treaty. Such provisions are not applicable to the present Chapter or to its implementation.

CHAPTER V ADMINISTRATIVE PROVISIONS

Article 53 Assembly

1. The Assembly shall, subject to  Article 57(8), consist of the

Contracting States.

(b) The Government of each Contracting State shall be represented by one delegate, who may be assisted by alternate delegates, advisors, and experts.

2. The Assembly shall:

1. deal with all matters concerning the maintenance and

development of the Union and the implementation of this Treaty;

2. perform such tasks as are specifically assigned to it under

other provisions of this Treaty;

3. give directions to the International Bureau concerning the

preparation for revision conferences;

4. review and approve the reports and activities of the Director

General concerning the Union, and give him all necessary instructions concerning matters within the competence of the Union;

5. review and approve the reports and activities of the Executive

Committee established under paragraph (9), and give instructions to such Committee;

6. determine the program and adopt the triennial[8] budget of the

Union, and approve its final accounts;

7. adopt the financial regulations of the Union;

(viii) establish such committees and working groups as it deems appropriate to achieve the objectives of the Union;

9. determine which States other than Contracting States and,

subject to the provisions of paragraph (8), which intergovernmental and international non-governmental organizations shall be admitted to its meetings as observers;

10. take any other appropriate action designed to further the

objectives of the Union and perform such other functions as are appropriate under this Treaty.