Commonwealth Numbered Regulations

1993 No. 227 PATENTS REGULATIONS (AMENDMENT) - REG 4

4.1 Table of Provisions (portion relating to the Regulations): Omit "Rule 32
(Deleted)", substitute:

"Rule 32 Extension of Effects of International Application to Certain
Successor States
32.1 Request for Extension of International Application to Successor State
32.2 Effects of Extension to Successor State".
4.2 Table of Provisions (portion relating to the Regulations): Omit "Rule 55.1
The Demand", substitute :

"Rule 55.1 Language of Demand
55.2 Translation of International Application
55.3 Translation of Amendments".
4.3 Regulations (note after heading): Omit "and on October 2, 1991",
substitute ", October 2, 1991 and on September 29, 1992".
4.4 Regulations (new Rule 32): After Rule 31, insert:

"Rule 32
Extension of Effects of International Application to Certain
Successor States

"32.1 Request for Extension of International Application to Successor State

   (a)  The effects of any international application whose international
        filing date falls in the period defined in paragraph (b) may, subject
        to the performance by the applicant of the acts specified in paragraph
        (c), be
extended to a State ("the successor State") whose territory was, before the
independence of that State, part of the territory of a Contracting State which
subsequently ceased to exist ("the predecessor State"), provided that the
successor State has become a Contracting State through the deposit, with the
Director General, of a declaration of continuation the effect of which is that
the Treaty is applied by the successor State.

   (b)  The period referred to in paragraph (a) starts on the day following
        the last day of the existence of the predecessor State and ends two
        months after the date on which the declaration referred to in
        paragraph (a) was notified by the Director General to the Governments
        of the States party to the Paris Convention for the Protection of
        Industrial Property. However, where the date of independence of
        the successor State is earlier than the date of the day following the
        last day of the existence of the predecessor State, the
        successor State may declare that the said period starts on the date of
        its independence; such a declaration shall be made together with the
        declaration referred to in paragraph (a) and shall specify the date of
        independence.

   (c)  In respect of any international application whose filing date falls
        within the applicable period under paragraph (b), the International
        Bureau shall send the applicant a notification informing him that he
        may make a request for extension by performing, within three months
        from the date of that notification, the following acts:

        (i)    filing with the International Bureau the request for extension;

        (ii)   paying to the International Bureau an extension fee in Swiss
               francs, the amount of which shall be the same as the amount of
               the designation fee referred to in Rule 15.2 (a).

   (d)  This Rule shall not apply to the Russian Federation.

"32.2 Effects of Extension to Successor State

   (a)  Where a request for extension is made in accordance with Rule 32.1,

        (i)    the successor State shall be considered as having been
               designated in the international application, and

        (ii)   the applicable time limit under Article 22 or 39 (1) in
               relation to that State shall be extended until the expiration
               of at least three months from the date of the request for
               extension.

   (b)  Where, in the case of a successor State which is bound by Chapter II
        of the Treaty, the request for extension was made after, but the
        demand was made before, the expiration of the 19th month from the
        priority date, and a later election is made of the successor State
        within three months from the date of the request for extension, the
        applicable time limit under paragraph (a) (ii) shall be at least 30
        months from the priority date.

   (c)  The successor State may fix time limits which expire later than those
        provided in paragraphs (a) (ii) and (b). The International Bureau
        shall publish information on such time limits in the Gazette.".
4.5 Regulations (Rule 37.2): Add at the end:

"Such title shall be established in the language in which the international
application is published or, if a translation was transmitted under Rule 12.1
(c) and the International Searching Authority so wishes, in the language of
that translation.".
4.6 Regulations (Rule 38.2, paragraph (a)): Omit the paragraph, substitute:

"38.2 Establishment of Abstract

   (a)  If the international application does not contain an abstract and the
        International Searching Authority has not received a notification from
        the receiving Office to the effect that the applicant has been invited
        to furnish an abstract, or if the said Authority finds that the
        abstract does not comply with Rule 8, it shall itself establish an
        abstract. Such abstract shall be established in the language in which
        the international application is published or, if a translation was
        transmitted under Rule 12.1 (c) and the International Searching
        Authority so wishes, in the language of that translation.".
4.7 Regulation (Rule 43.4): After "published", add "or, if a translation was
transmitted under Rule 12.1 (c) and the International Searching Authority so
wishes, in the language of that translation".
4.8 Regulations (Rule 55.1): Omit the Rule, substitute:

"55.1 Language of Demand
The demand shall be in the language of the international application or, if
the international application has been filed in a language other than the
language in which it is published, in the language of publication. However, if
a translation of the international application is required under Rule 55.2,
the demand shall be in the language of that translation.

"55.2 Translation of International Application

   (a)  Where the international application is neither filed nor published in
        the language, or one of the languages, specified in the agreement
        concluded between the International Bureau and the International
        Preliminary Examining Authority competent for the international
        preliminary examination of that application, that Authority may
        require that, subject to paragraph (b), the applicant furnish with the
        demand a translation of the international application into the
        language, or one of the languages, specified in the said agreement.

   (b)  Where a translation of the international application into a language
        referred to in paragraph (a) was transmitted to the International
        Searching Authority under Rule 12.1 (c) and the International
        Preliminary Examining Authority is part of the same national Office or
        intergovernmental organization as the International Searching
        Authority, the applicant need not furnish a translation under
        paragraph (a). In such a case, unless the applicant furnishes a
        translation under paragraph (a), the international preliminary
        examination shall be carried out on the basis of the translation
        transmitted under Rule 12.1 (c).

   (c)  If the requirement of paragraph (a) is not complied with and paragraph
        (b) does not apply, the International Preliminary Examining Authority
        shall invite the applicant to furnish the required translation within
        a time limit which shall be reasonable under the circumstances. That
        time limit shall not be less than one month from the date of the
        invitation. It may be extended by the International Preliminary
        Examining Authority at any time before a decision is taken.

   (d)  If the applicant complies with the invitation within the time limit
        under paragraph (c), the said requirement shall be considered to have
        been complied with. If the applicant fails to do so, the demand shall
        be considered not to have been submitted.

   (e)  Paragraphs (a) to (d) shall apply only where the International
        Preliminary Examining Authority has declared, in a notification
        addressed to the International Bureau, that it accepts to carry out
        international preliminary examination on the basis of the translation
        referred to in those paragraphs.

"55.3 Translation of Amendments

   (a)  Where a translation of the international application is required under
        Rule 55.2, any amendments which are referred to in the statement
        concerning amendments under Rule 59.3 and which the applicant wishes
        to be taken into account for the purposes of the international
        preliminary examination, and any amendments under Article 19 which are
        to be taken into account under Rule 66.1 (c), shall be in the language
        of that translation. Where such amendments have been or are filed in
        another language, a translation shall also be furnished.

   (b)  Where the required translation of an amendment referred to in
        paragraph (a) is not furnished, the International Preliminary
        Examining Authority shall invite the applicant to furnish the missing
        translation within a time limit which shall be reasonable under the
        circumstances. That time limit shall not be less than one month from
        the date of the invitation. It may be extended by the International
        Preliminary Examining Authority at any time before a decision is
        taken.

   (c)  If the applicant fails to comply with the invitation within the time
        limit under paragraph (b), the amendment shall not be taken into
        account for the purposes of the international preliminary
        examination.".
4.9 Regulations (Rule 60.1, paragraph (a)): Omit "55", substitute "55.1".
4.10 Regulations (Rule 61.1, paragraph (b)): After "54.4 (a),", insert "55.2
(d),".
4.11 Regulations (Rule 66.9): Omit "If", substitute "(a) Subject to paragraphs
(b) and (c), if".
4.12 Regulations (Rule 66.9): Add at the end:

"(b) If the international preliminary examination is carried out, pursuant to
Rule 55.2, on the basis of a translation of the international application, any
amendment, as well as any letter referred to in paragraph (a), shall be
submitted in the language of that translation.

   (c)  Subject to Rule 55.3, if an amendment or a letter is not submitted in
        a language as required under paragraph (a) or (b), the International
        Preliminary Examining Authority shall, if practicable having regard to
        the time limit for establishing the international preliminary
        examination report, invite the applicant to furnish the amendment or
        letter in the required language within a time limit which shall be
        reasonable under the circumstances.

   (d)  If the applicant fails to comply, within the time limit under
        paragraph (c), with the invitation to furnish an amendment in the
        required language, the amendment shall not be taken into account for
        the purposes of the international preliminary examination. If the
        applicant fails to comply, within the time limit under paragraph (c),
        with the invitation to furnish a letter referred to in paragraph (a)
        in the required language, the amendment concerned need not be taken
        into account for the purposes of the international preliminary
        examination.".
4.13 Regulations (Rule 70.17, paragraph (a)): Add at the end ", or, if the
international preliminary examination is carried out, pursuant to Rule 55.2,
on the basis of a translation of the international application, in the
language of that translation".
4.14 Regulations (Rule 74.1): Omit the Rule, substitute:

"74.1 Contents of Translation and Time Limit for Transmittal Thereof

   (a)  Where the furnishing of a translation of the international application
        is required by the elected Office under Article 39 (1), the applicant
        shall, within the time limit applicable under Article 39 (1), transmit
        a translation of any replacement sheet referred to in Rule 70.16 which
        is annexed to the international preliminary examination report, unless
        such sheet is in the language of the required translation of the
        international application. The same time limit shall apply where the
        furnishing of a translation of the international application to the
        elected Office must, because of a declaration made under Article 64
        (2) (a) (i), be effected within the time limit applicable under
        Article 22.

   (b)  Where the furnishing under Article 39 (1) of a translation of the
        international application is not required by the elected Office, that
        Office may require the applicant to furnish, within the time limit
        applicable under that Article, a translation into the language in
        which the international application was published of any replacement
        sheet referred to in Rule 70.16 which is annexed to the international
        preliminary examination and is not in that language.".
4.15 Regulations (Rule 92.2, paragraph (a)): Omit the second sentence,
substitute "However, where a translation of the international application has
been transmitted under Rule 12.1 (c) or furnished under Rule 55.2 (a) or (c),
the language of such translation shall be used.".