Further amendment to the Rule 26.3ter

The Japan Patent Office has sent the following proposal to the International Bureau for posting on this wiki.  You can print a version of this proposal by clicking here. 

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Proposal

Dear Colleagues,

1. As we commented during the 16th WG in February 2023, we would like to discuss a further amendment to Rule 26.3ter (a)(I). Rule 26.3ter(a), as adopted by the PCT Assembly in July 2023 and will enter into force from July 1, 2024, reads as follows (see Annex III to document PCT/A/55/2).

2. In our understanding, it seems that Rule 26.3ter(a)(i) does not cover cases for which the description and the claims are filed in one of the publication languages, and a translation under Rule 12.3 for the purpose of international search is also required at the same time.

3. In other words, the current rule does not allow the receiving Office to invite the applicant to submit the translation of the text matter of the drawings and the abstract in the publication language in the following case:

• The description and claims are filed in Arabic, Chinese, French, German, Japanese, Korean, Portuguese, Russian or Spanish ( any of the languages of publication under Rule 48.3(a) except English),
• The abstract and the text matter of the drawings are filed in English, and
• The translation under Rule 12.3 is submitted in English.

4. As a result, neither the abstract nor the text matter of the drawings would be in the language in which the international application is to be published (Rule 48.3(a)).

5. When Rule 12.3 was introduced and Rule 26.3ter(a) was amended to take account of the new provision, the working document[1] of the 24th session of the PCT Assembly in 1997 that adopted the amendments provides the following explanation:

[COMMENT: Where the abstract is in a different language from that of the description and claims, a translation of the abstract will, in general, be required under paragraph (a). Such translation will have to be into the language in which the international application is to be published. However, no translation of the abstract would be required if a translation of the international application is required under Rule 12.3(a), since the abstract would need to be included in the translation furnished under that Rule. Nor would a translation of the abstract be required if it is already in the language in which the international application is to be published, even if the description and claims are filed in another language. The position in relation to translations of any text matter in the drawings is the same as that just explained in relation to the abstract.

• EXAMPLE 1: Description and claims filed in German with the German Patent Office; abstract filed in French. The European Patent Office is the competent International Searching Authority; the international application will be published in German. A translation of the abstract into German is required.
• EXAMPLE 2: Description and claims filed in Italian with the Italian Patent and Trademark Office; text matter in drawings is in French. The European Patent Office is the competent International Searching Authority. Under Rule 12.3(a), a translation of the (entire) international application, including the text matter in the drawings, is required for the purposes of international search and international publication (that translation may be into English, French or German). A translation of that text matter into Italian is not required.[2]]

6. The case shown in paragraph 3 above, where the translation to be provided under Rule 12.3 is not in the language in which the international application is to be published, seems not to have been considered at the 24th session of the PCT Assembly.

7. Considering that the PCT system has become more multilingual, and that there are presently a total of ten publication languages, after consulting with the IB, we would like to propose the following amendment which could cover the case referred to in paragraph 3.

8. It is our view that publishing all the elements of the international application in one language is consistent with Articles 3(4)(i) and Rule 48.3(a). In addition, from third parties’ point of view, the convenience of users would be served by having all of the elements written in one language.

9. We also recognize that in certain technical fields, there is no need to translate the text matter of the drawings, which can be published as is, even though the language of the text matter of the drawings and the abstract are different from those of the description and the claims. Therefore, we are wondering whether the Receiving Office Guidelines can be amended so that the applicant can reply to the invitation from the RO by explaining that there is no need to translate the text matter of the drawings, since this is obvious within the technical field.

10. Any feedback received from you by 20 October 2023 regarding this matter and the amendment mentioned in paragraphs 7 to 9 would be greatly appreciated.

Thank you very much in advance.

[1] See the PCT/A/XXIV/6 (PCT Union – Assembly　 September 16 to October 1, 1997)　paragraph 14,  ANNEX I page7, age18、19　

https://www.wipo.int/edocs/mdocs/govbody/en/pct_a_xxiv/pct_a_xxiv_6.pdf

[2] A third example was provided in the explanation relating to a provision that is no longer applicable (Rule 48.3(b) in force in 1997 was deleted by the PCT Assembly in 2002 with effect from January 1, 2003. The present Rule 48.3(b) was numbered Rule 48.3(a-bis) before 2003 (see footnote 7 in Annex IV to document PCT/A/31/10).