Transcript AIPLA PCT Issues Committee

Highlights of the
PCT Reform
December 2003
User demand (= Patent Office workload)
PCT filings
120,000
100,000
80,000
60,000
40,000
20,000
0
1979
1984
1989
1994
1999
Use of IPE Procedure
80000
70000
60000
50000
40000
30000
20000
2001
2000
99
98
97
96
95
94
93
92
91
90
89
88
87
86
0
85
10000
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
06.10.03
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.htm
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) for
every 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
03.10.02
– Chapter II: dialogue with examiner and amendments
possible before IPRP issuance
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 under
Rule 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
EISPE system
0-12 mths
IA filed
16
ISR
ISA opinion on
patentability
criteria
Art. 19 amdts
Int’l publication: IA + ISR
(+ Art. 19 amendments)
18
Chapter II
Chapter I
later of:
WO of ISA+3
or 22*
Demand
No demand filed
(+ Art. 34
arguments,
amendments)
1st written IPE opinion =
ISA opinion (unless IPEA
has declared otherwise)
IPE procedure
Applicant comments
on ISA opinion to IB
(if no IPER
established)
(informal
procedure)
International preliminary report
on patentability by ISA (IPRP)
(Chapter I of the PCT)
30
03.10.02
International preliminary report
on patentability by IPEA (IPRP)
(Chapter II of the PCT) (= IPER)
IPRP (Chapter I)
(+ any comments)
to DOs
IPRP (Chapter I)
(+ any comments)
publicly available
IPRP (Chapter II)
publicly available
(on request of EO)
National phase entry
National phase entry
IPRP (Chapter II)
to EOs
* must in practice file demand by 19 months for Article 22 transitional reservation countries
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 30month 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
29.09.03
 Powers of attorney – RO, ISA, IPEA, IB may waive
requirement for separate and/or for copy of general
power of attorney
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 coded
format (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 francs
28.11.03
Communications to DO/EOs
Rule 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/US2004/123456
PCT/IB2004/123456
PCT/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 reform
Committee, 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- and
mid-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- and
mid-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- and
mid-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- and
mid-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