Szabadalmi Közlöny és Védjegyértesítő, 2003. január-március (108. évfolyam, 1-3. szám)

2003-01-01 / 1. szám

2003/1 - SZKV

35

68.2 Invitation to Restrict or Pay

Where the International Preliminary Examining Authority finds that the requirement of unity of invention is not complied with and chooses to invite the applicant, at his option, to restrict the claims or to pay additional fees, it shall specify at least one possibility of restriction which, in the opinion of the International Preliminary Examining Authority, would be in compliance with the applicable requirement, and shall specify the amount of the additional fees and the reasons for which the international application is not considered as complying with the requirement of unity of invention. It shall, at the same time, fix a time limit, with regard to the circumstances of the case, for complying with the invitation; such time limit shall not be shorter than one month, and it shall not be longer than two months, from the date of the invitation.

68.3 Additional Fees

a) The amount of the additional fee due for international preliminary examination under Article 34(3) a) shall be determined by the competent International Preliminary Examining Authority.

b) The additional fee due for international preliminary examination under Article 34(3) a) shall be payable direct to the International Preliminary Examining Authority.

c) Any applicant may pay the additional fee under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the amount of the required additional fee is excessive. Such protest shall be examined by a three-member board or other special instance of the International Preliminary Examining Authority, or any competent higher authority, which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fee. On the request of the applicant, the text of both the protest and the decision thereon shall be notified to the elected Offices as an annex to the international preliminary examination report.

d) The three-member board, special instance or competent higher authority, referred to in paragraph c), shall not comprise any person who made the decision which is the subject of the protest.

e) Where the applicant has, under paragraph c), paid an additional fee under protest, the International Preliminary Examining Authority may, after a prior review of the justification for the invitation to pay an additional fee, require that the applicant pay a fee for the examination of the protest („protest fee”). The protest fee shall be paid within one month from the date of the notification to the applicant of the result of the review. If the protest fee is not so paid, the protest shall be considered withdrawn. The protest fee shall be refunded to the applicant where the three-member board, special instance or higher authority referred to in paragraph c) finds that the protest was entirely justified.

68.4 Procedure in the Case of Insufficient Restriction of the Claims

If the applicant restricts the claims but not sufficiently to comply

with the requirement of unity of invention, the International Preliminary Examining Authority shall proceed as provided in Article 34(3) c).

68.5 Main Invention

In case of doubt which invention is the main invention for the purposes of Article 34(3) c), the invention first mentioned in the claims shall be considered the main invention.

Rule 69

Start of and Time Limit for International Preliminary Examination

69.1 Start of International Preliminary Examination

a) Subject to paragraphs b) to e), the International Preliminary Examining Authority shall start the international preliminary examination when it is in possession both of the demand and of either the international search report or a notice of the declaration by the

International Searching Authority under Article 17(2) a) that no international search report will be established.

b) If the competent International Preliminary Examining Authority is part of the same national Office or intergovernmental organization as the competent International Searching Authority, the international preliminary examination may, if the International Preliminary Examining Authority so wishes and subject to paragraph d), start at the same time as the international search.

c) Where the statement concerning amendments contains an indication that amendments under Article 19 are to be taken into account (Rule 53.9 a) (i)), the International Preliminary Examining Authority shall not start the international preliminary examination before it has received a copy of the amendments concerned.

d) Where the statement concerning amendments contains an indication that the start of the international preliminary examination is to be postponed (Rule 53.9 b)), the International Preliminary Examining Authority shall not start the international preliminary examination before

(i) it has received a copy of any amendments made under Article 19,

(ii) it has received a notice from the applicant that he does not wish to make amendments under Article 19, or

(Hi) the expiration of 20 months from the priority date, whichever occurs first.

e) Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand (Rule 53.9 c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Authority shall not start the international preliminary examination before it has received the amendments or before the time limit fixed in the invitation referred to in Rule 60.1 g) has expired, whichever occurs first.

69.2 Time Limit for International Preliminary Examination

The time limit for establishing the international preliminary examination report shall be:

(i) 28 months from the priority date, or

(ii) eight months from the date of payment of the fees referred to in Rules 57.1 and 58.1 a), or

(iii) eight months from the date of receipt by the International Preliminary Examining Authority of the translation furnished under Rule 55.2, whichever expires last.

Rule 70

The International Preliminary Examination Report

70.1 Definition

For the purposes of this Rule, „report” shall mean international preliminary examination report.

70.2 Basis of the Report

a) If the claims have been amended, the report shall issue on the claims as amended.

b) If, pursuant to Rule 66.7 a) or b), the report is established as if the priority had not been claimed, the report shall so indicate.

c) If the International Preliminary Examining Authority considers that any amendment goes beyond the disclosure in the international application as filed, the report shall be established as if such amendment had not been made, and the report shall so indicate. It shall also indicate the reasons why it considers that the amendment goes beyond the said disclosure.

d) Where claims relate to inventions in respect of which no international search report has been established and have therefore not been the subject of international preliminary examination, the international preliminary examination report shall so indicate.

70.3 Identifications

The report shall identify the International Preliminary Examining Authority which established it by indicating the name of such Authority, and the international application by indicating the international