FICPI/AIPLA COLLOQUIUM ON REFORM OF THE PCT
(NICE, 8-9 APRIL 2003)
“PROBLEMS AND
ADVANTAGES THE PCT HAS
FOR OFFICES”
Nice-2003 3
Role of the EPOin the Framework of the PCT
Receiving Office International Authority
international search (ISA) international preliminary examination
(IPEA) Designated / elected Office
Nice-2003 4
The EPO Acting As PCT Receiving Office
direct filing (in 2002: 15,888) filing via national Offices of EPC
contracting states (in 2002: 23,274)
electronic filing via as from 1 November 2002
filing at the IB
Nice-2003 5
The EPO Acting As PCT Authority(ISA and IPEA)
Worldwide competence Special conditions for developing
countries Limitations
exclusion of certain technical fields Biotechnology, business methods Additionally in Ch. II: telecommunication
Nice-2003 6
PCT ISA work
EPO56%
USPTO23%
JPO11%
other10%
EPO’s ISA & IPEA Work Share
PCT IPEA work
EPO52%
USPTO30%
JPO7%
other11%
Nice-2003 7
Partnership of European ISAs
Swedish Office competent for Nordic countries
Spanish Office for applications filed in Spanish language
Close cooperation in training quality control technical tools
Nice-2003 8
Problems varying “filing culture”
excluded subject matter “complex”/“mega” applications
strict time limits (PCT work comes first)
differences to handling of EP applications (forms, procedure etc)
interface to European phase ca. 35% drop out use of EPO’s form 1200
Nice-2003 10
Some Examples for Problems Before the EPO/RO
Missing signatures Title differs in request and description Confusion about confirmation fee
under R. 15.5 and payment of missing designation fees under R.16bis PCT
Outdated request form EPO incompetent RO
Nice-2003 11
Some Examples for Problems Before the EPO/ISA
Late receipt of search copy Time limit under R. 42 PCT Missing parts Missing SQLs under R. 13ter PCT
Standard compliance Non-unity procedure under R. 40 PCT
Nice-2003 12
Some Examples for Problems Before the EPO/IPEA
Different data in request (form 101) and demand (form 401)
Demands filed with EPO being not the competent Authority Transmittal of files Refund of fees
Late filed demands – problem of the past
IS THE EUROPEAN PATENT OFFICE ISA/IPEA IN THE FOLLOWING CASES WHERE THE APPLICATION RELATES TO A TECHNICAL FIELD WHERE THE EPO HAS LIMITED ITS COMPETENCE?
ReceivingOffice
Applicant(s)is (are)national/resident of
EPO or EPC Contracting State
USPTOIB
(Provided EPO is competent ISA/IPEA)
Other National Office for which the EPO is ISA/IPEA eg.
Canada
EPC Contracting State (s)
yes not applicable yes not applicable
United State(s) not applicable no no not applicable
Other state(s)eg. Canada
not applicable not applicable yes yes
United States & EPCContracting State(s)
yes no yes not applicable
United States & other state(e)eg. Canada
not applicable no no yes
Nice-2003 14
Advantages Attractive filing system
(EP = 1 designation) …and more International publication may take
place of EP publication (Art. 158 EPC)
ISR by the EPO* may take place of the EP search report (* Art. 157 EPC)
ISR by Non-european ISA – 20% reduction of EP search fee
IPER by the EPO may reduce the EP examination fee by 50%
Nice-2003 16
FUTURE
EPO internal
maintain high quality BEST expansion Phoenix for PCT files
European ISA Partnership Trilateral Cooperation Bilateral EPO – WIPO (e.g. e-filing) consolidation of 1st stage of reform listen to users before further change
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