Progress is Made on PCT Reform
Geneva, September 30, 2002
Press Updates UPD/2002/175
The PCT system offers inventors and industry an advantageous route for obtaining patent protection internationally. By filing one international patent application under the PCT, protection for an invention can be sought simultaneously in each of a large number of countries. Both applicants and patent offices of PCT member states benefit from the uniform formality requirements, the international search and preliminary examination reports, and the centralized international publication provided by the PCT system.
The PCT procedure consists of two main phases, the so-called international phase and the national phase. The international phase consists, under Chapter I of the PCT, of the filing of the international application, the establishment of the international search report (setting out the relevant prior art documents that might affect the patentability of the claimed invention), the publication of the international application together with the international search report and optionally, under Chapter II of the PCT, if requested, the establishment of an international preliminary examination report (containing a preliminary and non-binding opinion on the patentability of the claimed invention).
With the international search report and the international preliminary examination report, the applicant is in a much better position to decide whether to proceed with the national patent granting procedure in the various designated patent offices. If the applicant considers, in the light of those reports, that it is worthwhile continuing to seek patent protection in several countries, he may then decide to enter the national phase in those countries and pay the national fees and professional fees for patent agents abroad, and translation costs. The search and examination work of patent offices in those countries can be considerably reduced or virtually eliminated thanks to the international search report and, where applicable, the international preliminary examination report that accompany the international application.
Following the adoption by the PCT Assembly of a 30-month time limit for entering the national phase under Chapter I (see PR/2001/291), it is expected that many applicants will no longer request international preliminary examination under Chapter II and that many applications will thus enter the national phase without an international preliminary examination report, contrary to the need of many designated offices, particularly small and medium-sized offices in developing countries, for such examiners opinions.
To address this need, the 2002 session of the PCT Assembly adopted amendments to the PCT Regulations to introduce an enhanced international search and preliminary examination system, aimed at further rationalizing the PCT international search and international preliminary examination procedures. This is an important step towards greater convergence of international and national procedures. The main feature of the new enhanced system is that one of the main elements of the present international preliminary examination procedure under Chapter II, namely, the establishment of an examiners opinion, will in effect be advanced and incorporated into the international search procedure under Chapter I. Under the new system, the International Searching Authority (ISA) will be responsible for establishing a preliminary and non-binding written opinion addressing the question whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable (the main internationally accepted criteria for patentability). That written opinion of the ISA will be used for Chapter I and, if requested, for international preliminary examination in Chapter II, thus combining the international search and international preliminary examination procedures to a much greater extent than is the case at present.
The PCT Assembly also agreed to streamline and rationalize the way in which applicants can designate the PCT contracting states in which they wish the international application to have effect. Under the new designation system, the applicant will obtain an automatic and all-inclusive coverage of all designations available under the Treaty without, at the time of filing the international application, having to designate individual contracting states, choose certain kinds of protection or indicate whether national or regional protection is sought. Such matters will be dealt with in the national phase.
In the context of introducing a new designation system, the introduction of a flat international filing fee was also approved. This fee, once established, will replace the current basic fee and the fee payable for every designation made. Furthermore, the system of systematic communication to a designated office of all documents relating to international applications designating that office is to be replaced by a communication on request system. Under this system, documents will be communicated to a designated office only upon request by the office and at the time specified by it.
Steps were also taken to further align PCT requirements with those of the Patent Law Treaty (PLT). The adopted amendments relate to the language of the international application and translations, the reinstatement of rights after failure to comply with requirements for entering the national phase within the applicable time limit, and the availability of priority documents from digital libraries. The PLT, which was concluded in 2000 but has yet to enter into force, seeks to simplify and streamline procedures for obtaining and maintaining a patent, promises to reduce the cost of patent protection and to make the process more user-friendly and widely accessible.
The PCT Assembly also decided on the dates of entry into force of the amendments outlined above and on transitional arrangements in relation to international applications which are pending at the dates of entry into force of those amendments. The amendments relating to the language of the international application and translations and to the missed time limit for entering the national phase will enter into force on January 1, 2003, while the amendments relating to the enhanced international search and preliminary examination system, the overhaul of the designation system, and the availability of priority documents from digital libraries will enter into force on January 1, 2004.
The PCT Assembly also agreed on a program of work for further reform of the PCT system. It agreed that two sessions of the Working Group on Reform of the PCT should be convened between the September 2002 and September 2003 sessions of the Assembly of the PCT Union to consider issues of three kinds. First, those proposals for reform which had already been submitted to the Committee or the Working Group, but not yet considered in detail, should be reviewed. Second, consideration should be given to options for revising the Treaty itself. Third, the Working Group should commence discussions on the development of a common quality framework for the international search and international preliminary examination procedures under the PCT.
PCT users will also benefit from a fee reduction for international applications filed in electronic form, following a decision to reduce the cost of filing international applications in electronic form by 200 Swiss francs, in line with the fee reduction granted to international applications filed using the PCT-EASY software. The amended schedule of fees will enter into force on October 17, 2002.
This follows the implementation of the legal framework and technical standard in January 2002, to enable electronic filing and processing of international applications under the PCT. Since that time, any receiving office having the necessary technical systems in place is able to decide to accept the filing of international applications in electronic form. Although no receiving offices have yet decided to do so, it is expected that certain receiving Offices will do so in the near future.
Appointment of the Canadian Commissioner of Patents as an International Searching Authority and International Preliminary Examining Authority
The Canadian Commissioner of Patents was appointed by the PCT Assembly as an International Searching Authority and as an International Preliminary Examining Authority, bringing the total number of such authorities to 11. It is anticipated that the Canadian Commissioner of Patents will commence acting as an International Searching Authority and International Preliminary Examining Authority in the summer of 2004.
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