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WIPO offers new search service for PCT applications
11/02/2009

On 1 January 2009, the World Intellectual Property Organization (WIPO) introduced a new service for patent applicants: searching for relevant prior art in languages not covered by the initial international search.

The International Search Authority gives Patent Co-operation Treaty (PCT) applicants a good idea of whether they should incur the cost of filing national phase applications. However, it does not search documents published in languages it is not skilled in.

Applicants can choose to use the new service when they know there are prior art documents in a particular technical field, published in a language not covered by the international search.

The service will help reduce the financial risk of finding fatal prior art only at the national phase.

Currently only the Russian, Nordic and Swedish Patent Offices offer the Supplementary International Search (SIS). However, WIPO says that more authorities are expected to start offering the service later this year and in 2010.

An applicant must request an SIS at least 19 months from the priority date. The deadline cannot be extended.

Danie Pienaar
Candidate Attorney
danie-p@adamsadams.co.za
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   Featured Case Law Recognition of a decision on restoration of priority under PCT in South Africa
In terms of the Paris Convention, a patent application may claim priority from a prior filed application in a convention country relating to the same subject matter, provided that the prior filed application in the convention country was lodged not earlier than one year before lodgement of the application claiming priority. In other words, there exists a 12 month period in which to claim priority. Rule 26bis.3 of the regulations of the Patent Cooperation Treaty (PCT) makes provision for the restoration of the right to claim priority if an international application has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date. Upon request of the applicant, the receiving Office shall restore the right of priority if the Office finds that a criterion applied by it (“criterion for restoration”) is satisfied, namely, that the failure to file the international application within the priority period:
(i) occurred in spite of due care required by the circumstances having 		  Related People Dieter Welthagen
Partner
Patent Attorney
Tel: +27 (0) 12 432 6207
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