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