Highlights of the PCT Reform December 2003. User demand (= Patent Office workload) PCT filings.
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Transcript of Highlights of the PCT Reform December 2003. User demand (= Patent Office workload) PCT filings.
Highlights of the PCT Reform
December 2003
User demand (= Patent Office workload) PCT filings
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Use of IPE Procedure
PCT reform objectives
• Simplify system, streamline procedures, reduce costs, reduce duplication
• Enable Authorities to meet workload while maintaining quality
• Meet needs of large, medium and small Offices• Balance between interests of applicants and third parties• Needs of developing countries (especially technical)• Take maximum advantage of modern IT• Conformity with PLT
PCT reform program
• PCT Assembly agreed in 2000 to reform in 2 stages– based on proposal by USA
• Proposed 1st stage– simplification, streamlining, alignment with PLT
• Proposed 2nd stage– overhaul of entire PCT system
• Committee and Working Group meetings• Proposals adopted by Assembly in 2001, 2002 and 2003• Working Group meetings Nov 02, May 03 and Nov 03
30-month Article 22 time limit:adopted October 2001
• Modification of Treaty itself• Increased time limit under Article 22(1) for national
phase entry under Chapter I from 20 to 30 months (same as for Chapter II)
• Entered into force, in general, on 1 Apr 02• Applies to applications for which the 20-month time
limit had not yet expired on 1 Apr 02, and for which the acts necessary to enter the national phase have not yet been performed
30 months: entry into force;transitional reservations
• Entry into force on 1 Apr 02, subject to transitional reservations based on incompatibility with national law:
– 24 countries made reservations
– Currently ( as of 1 January 2004) there are 10 countries with reservations
• IMPORTANT: If States of interest to applicant make reservations, a demand for IPE must still be filed by 19 months in order to preserve 30 month national phase entry time limit in those States
– see http://www.wipo.int/pct/en or PCT Newsletter
Rule changes adopted October 2002
• Enhanced international search and preliminary examination (EISPE) system
• Concept and operation of the designation system
– plus a number of related changes
• Align certain PCT requirements with those of PLT
– Missed time limit for entering the national phase
– Availability of priority documents from digital libraries (when technically possible)
• Translation for the purposes of international publication
• Fee reduction for electronic filing (same reduction as for PCT-EASY filing)
Entry into force
• From 1 Apr 02– 30 month time limit under Article 22 (subject to
transitional reservations as to entry into force)• From 17 Oct 02
– fee reduction for e-filing (effective only when e-filing introduced)
• From 1 Jan 03– missed time limit for entering the national phase
• applies if applicable time limit expires on or after 1 Jan 2003
Changes to the PCT Regulations which will come into effect on 1
January 2004 Concept and operation of the designation system
Signature requirements, indications concerning applicants and powers of attorney
Communication on request
Access to file
Enhanced international search and preliminary examination (EISPE) system
Changes in numbering system and year format
For further information on the amendments adopted by the PCT Assembly of September 23 to October 1, 2002 (including the Assembly report (PCT/A/31/10)) and of September 22 to October 1, 2003 (including the Assembly report (PCT/A/32/8)), see http://www.wipo.int/documents/en/document/govbody/wo_pct/index_31.htm and http://www.wipo.int/documents/en/document/govbody/wo_pct/index_32.htm06.10.03
EISPE system: main features Convergence of Chapter I and II procedures
– but Chapters I and II remain legally distinct
International preliminary report on patentability (IPRP) forevery application
– Chapter I: IPRP = written opinion by ISA
– Chapter II: IPRP = IPER
Main difference
– Chapter I: no applicant/examiner dialogue or amendments before IPRP issuance
– Chapter II: dialogue with examiner and amendments possible before IPRP issuance
03.10.02
EISPE system: Written opinion by ISA examiner
ISA examiner prepares ISR plus detailed written opinion (IPRP) for every application
Written opinion by ISA has similar scope and content as current written opinion by IPEA
Written opinion by ISA sent to applicant with ISR
ISR is published with application; written opinion by ISA is not published per se
Applicant may submit comments on written opinion by ISA informally to IB
30.04.03
EISPE system: Chapter I
If applicant does not request IPE:
– IB establishes “international preliminary report on patentability” IPRP (Chapter I)) on basis of written opinion by ISA
– IPRP (Chapter I) and any comments by the applicant
• are sent to designated Offices
• are made publicly available (but not “published” like application and ISR)
• but not before the expiration of 30 months from the priority date
03.10.02
EISPE system: Chapter II
If applicant requests IPE:
– written opinion by ISA becomes written opinion by IPEA (exception: IPEA decides not to accept written opinions by certain ISAs)
– subject to Rule 66.4bis, any amendments under Article 34 and/or arguments should be submitted together with the demand and within the applicable time limit underRule 54bis.1(a)
– comments by applicant on written opinion by ISA not sent to IPEA (Article 34 amendments/arguments only)
– “normal” IPE procedure
– IPEA establishes IPRP (Chapter II) (= current IPER)
– IPRP (Chapter II) is sent to elected Offices and made publicly available by IB on behalf of any elected Office which so requests, but not before the expiration of 30 months from the priority date
16.10.03
IA filed
1st written IPE opinion =ISA opinion (unless IPEAhas declared otherwise)
IPE procedure
IPRP (Chapter II)to EOs
IPRP (Chapter II)publicly available (on request of EO)
Art. 19 amdts
No demand filed
Applicant commentson ISA opinion to IB
IPRP (Chapter I)(+ any comments)
to DOsIPRP (Chapter I)
(+ any comments)publicly available
National phase entry
Int’l publication: IA + ISR(+ Art. 19 amendments)
National phase entry
0-12 mths
16
18
later of:WO of ISA+3
or 22*
30
ISRISA opinion on patentability
criteria
Chapter I Chapter II
International preliminary report on patentability by ISA (IPRP)
(Chapter I of the PCT)
(informal procedure)
* must in practice file demand by 19 months for Article 22 transitional reservation countries
(+ Art. 34 arguments,
amendments)Demand
(if no IPERestablished)
International preliminary report on patentability by IPEA (IPRP) (Chapter II of the PCT) (= IPER)
EISPE system
03.10.02
EISPE system:Time limit to file demand
New time limit for filing the demand for IPE:
– three months after the issuance of the international search report and the written opinion of the ISA (or of the declaration under Article 17.2(a)), or
– 22 months from the priority date, whichever expires later
NOTE: The 19-month time limit to file a demand in order to postpone the time limit to enter the national phase from 20 to 30 months continues to apply in respect of States which have notified the International Bureau that they will not apply the 30-month time limit under Chapter I
15.11..03
EISPE system:Start of international preliminary
examination
IPEA will start the international preliminary examination when it is in possession of:
the demand
the applicable fees
the ISR and the written opinion of the ISA
but not before the expiration of the applicable time limit under Rule 54bis.1(a) unless the applicant expressly request an early start
16.10.03
Concept and operation of designation system
Automatic and all-inclusive – all possible designations
– Form will only provide for exceptions for the designation of DE, KR and RU (countries with particular rules on “self-designation”)
– but withdrawals of designations will be possible
Postpone required choice of types of protection until national phase entry (e.g. patent or utility model, national or regional patent)
Include “parent” information in PCT request form (for search purposes) for continuation applications and patents of addition
11.07.03
Designation system:Signature requirements, indications
concerning the applicant and powers of attorney
Sufficient that request be signed by one applicant – BUT:
– signature of all applicants needed for withdrawals under Rule 90bis
– designated Offices permitted to require absent signatures and indications in national phase
Indications concerning applicants – needed only for one applicant entitled to file with the RO concerned
Powers of attorney – RO, ISA, IPEA, IB may waive requirement for separate and/or for copy of general power of attorney
29.09.03
Related changes:Filing of Chapter II demand
Automatic and all-inclusive elections under Chapter II
codifies what demand form already provides today
no longer possible to exclude certain States from being elected
however, withdrawals of elections remain possible
Sufficient that demand be signed by one applicant – BUT:
– signature of all applicants needed for withdrawals of demand or election
Indications concerning applicants – needed only for one applicant entitled to make a demand
11.07.03
New PCT fee structure Flat “international filing fee” (replaces separate basic and designation fee)
amount: 1400 Swiss francs
reductions:
100 Swiss francs for paper filings where the request is created using the PCT-EASY features that will be incorporated into the PCT-SAFE software and is presented as a computer printout together with a diskette prepared using that software
200 Swiss francs for electronic filings where the text of the description, claims and abstract is NOT in character coded format (XML)
300 Swiss francs for electronic filings where the text of the description, claims and abstract IS in character codedformat (XML)
payable within one month from the date of receipt of the international application (Rule 15.4) (extendable under Rule 16bis)
Handling fee
amount: 200 Swiss francs28.11.03
Communications to DO/EOsRule 93bis
“Communication-on-request (COR)” system for communications to designated and elected Offices:
COR will be the general standard
– documents communicated to designated and elected Offices only upon request by the Office and at the time specified by the Office
– possibility to create a digital library to simplify the communication of documents
11.07.03
Access to the file of an international application
(Rules 44ter and 94)
Access to the file of the International Bureau will include:
Written opinion of the ISA
IPRP (Chapter I) and/or any translation thereof
IPRP (Chapter II), if so authorized by an elected Office
Time when access will be given:
Written opinion of the ISA and IPRP (Chapter I): only after the expiration of 30 months from the priority date
IPER (Chapter II): only after the expiration of 30 months from the priority date
23.09.03
Entry into force;transitional arrangements
From January 1, 2004
– EISPE system
– concept and operation of the designation system
– apply only to IAs whose international filing date is on or after January 1, 2004
exception: all-inclusive elections if demand for IPE is filed on or after January 1, 2004, whenever application filed
exception: IPER available to third parties on or after January 1, 2004, irrespective of whether the international filing date is before, on or after January 1, 2004
29.09.03
Changes in numbering system and year format
( Administrative Instructions Sections 110 and 307)
PCT Application numbering system will go from 5 digits to 6 digits and year format will go from 2 digits to 4 digits:
PCT/US2004/123456PCT/IB2004/123456PCT/AU2004/123456
See PCT Gazette No. 47/2001, November 22, 2001, pp. 21584 and 21586
11.07.03
Missed time limit for entering the national phase
• designated/elected Offices to reinstate rights if applicant misses time limit for entering national phase:
– in spite of due care required by the circumstances having been taken
or, at the option of the Office– where the delay was unintentional
• transitional reservations – 18 Offices – see PCT Gazette 30 Jan 03 and PCT Newsletter Feb 03
Further reformCommittee, Assembly, and Working Group decisions,
conclusions and discussions:• Revise the Treaty itself:
– whether? – yes, probably– what ? – not yet clear– when ? – not just yet– how (phase the old out and the new in)? – ???
• Further develop search and examination system– which directions?– common quality framework
• Specific proposals (changes to Regulations)
Restoration of priority right where time limit missed
• “Due care”, “unintentionality” or both as the criterion? – PLT requires restoration, leaving choice of criterion
to each Office, but the PCT is multi-jurisdictional– need to ensure proper effect of Receiving office
decision in national phase• Substantive or procedural matter? (it seems to be
procedural under the PLT)• Is a uniform solution under the PCT a realistic aim?
– If not, then maybe seek a short-term or compromise solution
Some possible short- andmid-term changes
• This is by no means an exhaustive list• Fees:
– late furnishing fee for late submission of sequence listing to ISA
– eliminate “per page” fee (for electronic filings)– introduce claims fee for complex applications
• Simplified protest procedure in case of non-unity of invention• Priority claims: streamline correction and addition• Non-compliance with nationality/residence requirements to
be a correctable defect
Some possible short- andmid-term changes (continued)
• Further conformity with PLT:– e.g. missing parts requirements– Avoid duplication in formality checking by RO and
IB• Rectification of clear mistakes (obvious error)• Central electronic deposit system for nucleotide and
amino acid sequence listings• Electronic processing• Copyright issues associated with copying of ISR
citations
Some possible short- andmid-term changes (continued)
• Standard (optional) form for national phase entry• Deferred time limit for furnishing national phase
translations• Centrally available status information on national
phase entry of particular applications• Publication of translations for sake of national phase• Technical assistance for developing countries (in
context of WIPO’s development cooperation program)• Declaration of source and genetic resources and
traditional knowledge in patent applications
Some possible short- andmid-term changes (continued)
• Further development of international search and examination system
– options paper for broader changes– standards and quality: revised PCT search and
examination guidelines (see MIA document on WIPO’s website)
– common quality framework (see virtual task force on WIPO’s website)
The long term
• Two different questions which might have different answers:
– how should the PCT system be improved?– what should the international patent system of the
future look like?• What role should the PCT play in the future of the
international patent system?
Thank you