Recent changes to the PCT - Impact on Third Parties

Introduction

- Many, if not all, of recent amendments to PCT are user friendly

- are they third party friendly?- third parties appreciate greater certainty in relation to

potential validity of competitors’ patent applications- do the changes create this?

April 2003

Recent changes to the PCT - Impact on Third Parties

Overhaul of the Designation System - Introduction of a Flat Fee

- puts designation off until national phase- most large companies will have designated all

countries anyway - no effect- in 2002, 19% of applicants did not designate all states- SME’s?

April 2003

Recent changes to the PCT - Impact on Third Parties

Enhanced International Search and Preliminary Examination- with introduction of 30 months term for entering

national phase from Chapter 1, WIPO anticipated many applications will enter national phase without IPER

- amendment of PCT so that written opinion will be effected in Chapter 1

- should result in less clearly invalid cases going into national phase

- amendment before national phase still less likely though

April 2003

Recent changes to the PCT - Impact on Third Parties

Increase in Number of ISAs

- good that the work, and hence expertise, is spread over more offices

- BUT need for consistency across the ISAs.

April 2003

Recent changes to the PCT - Impact on Third Parties

UK Proposal for Common Quality Framework- Consistent Search and examination reports will be of

benefit- however neither harmonisation of substantive law nor

external review required by UK proposal- should increase confidence of national offices and

public in ISAs- enabling less duplication of effort- national offices will be able to reduce their backlog- patents granted quicker as more reliability in search

reports

April 2003

Recent changes to the PCT - Impact on Third Parties

UK Proposal for Common Quality Framework (2)

- the proposals put forward on patent examination should be of benefit in particular to SMEs, either as applicants or third parties if can ensure (as proposed)- only important objections raised- the objections and explanation are in straightforward language- the applicant must either amend or argue the objection (simple denial being insufficient)

April 2003

Recent changes to the PCT - Impact on Third Parties

Conclusion

- Implemented changes do not benefit third parties- Proposals for Common Quality Framework should be

of benefit and supported

April 2003