Nice-2003 1

TTEE

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 9

PCT work at the EPO

DE,FR,GB39%

oth EPC18%

US34%

CA3%

other5%JP

1%

Origin of

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Outdated request form EPO incompetent RO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 15

TTEE

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

Nice-2003 17