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The JPO reserved changes to the PCT regulations that entered into force on April 1, 2007

July 4, 2008

(1) Incorporation by reference

The Japanese Patent Office has notified the International Bureau of incompatibility of Rules 20.3(a)(ii) and 20.5(a)(ii) and (d), and 20.6 with its national/regional law.

A PCT application nationalized in Japan will not be entitled to the benefit of confirmation of incorporation by reference of elements and parts made pursuant to Rules 20.3(a)(ii) and 20.5(a)(ii) and (d), and 20.6.  That is, the JPO will deem the international filing date to be the date of filing of the confirmation of incorporation by reference even if the receiving office accepts the international filing date by confirming the incorporation by reference made pursuant to Rules 20.6 and 20.7 at the international stage.

In that case, the JPO will issue a Notice informing the applicant that the international date has been corrected to the filing date of the confirmation of incorporation by reference of elements and parts.  If the applicant would like to maintain the international date, it is necessary to cancel the added elements or parts that were contained in a priority application.  In other words, in response to the Notice, the applicant may file a Request pursuant to PCT Rule 82ter.1 within 30 days from the date of the Notice together with an amendment to cancel the added elements or parts that were contained in a priority application.


(2) Restoration of the right of priority.

The change to the regulations regarding restoration of the right of priority was reserved by the Japanese Patent Office.  Therefore, a PCT application nationalized in Japan will not be entitled to the benefit of a priority claim made pursuant to Rule 26bis.3.  That is, it will be deemed that priority from the original application has not been claimed even if the receiving office accepts the restoration of the right of priority at the international stage.

Please also refer to the following URLs:
http://www.wipo.int/pct/en/texts/rules/r26bis.htm#_26bis_3_j
http://www.wipo.int/export/sites/www/pct/en/texts/ppt/2007changes.ppt