Transcript Changes to the PCT Regulations which came into effect on 1 January 2004 WIPO Recentdv03-1

Changes to the PCT Regulations which
came into effect on 1 January 2004
WIPO
Recentdv03-1
Main changes to the PCT Regulations which
came into effect on 1 January 2004
 Enhanced international search and preliminary
examination (EISPE) system
 Concept and operation of the designation system
 Signature requirements, indications concerning applicants
and powers of attorney
 Access to file
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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
– Chapter II: dialogue with examiner and amendments
possible before IPRP issuance
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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
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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
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
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
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)
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– 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
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
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Non-applicability of modified (30 month) time limit
under Article 22(1)

The Offices of the following States have notified the International
Bureau that they will not apply the 30 month time limit under
Chapter I, as of 1 April 2002, for as long as modified Article 22(1)
is not compatible with their national law (7 Offices – situation as
of 26 July 2004):
CH
FI
LU
SE
*
**

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Switzerland* TZ
Finland*
UG
Luxembourg* ZM
Sweden*
United Republic of Tanzania**
Uganda**
Zambia**
Where this State has been designated for the purposes of a European patent, the applicable time limit
before the EPO, as of 2 January 2002, is 31 months
Where this State has been designated for the purposes of an ARIPO patent, the applicable time limit before
ARIPO, as of 1 April 2002, is 31 months
If no demand for international preliminary examination is filed
before the expiration of 19 months in respect of above States,
the national phase will have to be entered before the expiration
of 20 or 21 months from the priority date
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
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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
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
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* must in practice file demand by 19 months for Article 22 transitional reservation countries
Concept and operation of designation system
 Automatic and all-inclusive – all possible designations
– Form only provides for exceptions for the designation of DE,
KR and RU (countries with particular rules on “selfdesignation”)
– 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
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Designation system:
Signature requirements, indications concerning
the applicant
 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
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Waiver of requirement that a power of attorney
has to be furnished
(Rules 90.4(d) and 90.5(c))
1. As of 1 January 2004, the RO, the ISA, the IPEA and the IB
may waive the requirement that:
– a separate power of attorney; and/or
the RO, the ISA, the IPEA may waive the requirement that
– a copy of a general power of attorney
has to be furnished
2. All Offices and Authorities may nevertheless require that a
power of attorney has to be furnished in particular instances
even if it has waived the requirement in general
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3. Information as to whether an Office or Authority has made
such a waiver will be published in the PCT Gazette, the
PCT Newsletter, the PCT Applicant’s Guide and on WIPO’s
Internet page
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
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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 have been 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
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 amount: 200 Swiss francs
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
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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
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
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

other exceptions also