• Late PCT searches and their irksome consequences

     

    Devoted readers with good memories (!) will recall that inour Spring 2004 Newsletter we presented some timeline diagrams to show theeffects of the changes in PCT Regulations at that time, and in particular theeffect of producing a Written Opinion alongside the International SearchReport. An abstruse subject perhaps, but nevertheless a useful and populararticle judging by the hits to our website.

    Unfortunately, the timeline is going a little awry with thebacklog of searching at the EPO. We find we need to provide another timelinescenario to show how a PCT application can proceed if the International SearchReport is late.

    With greater and greater frequency we are seeing searchreports for PCT applications issue from the EPO after the Internationalapplication has been published, and sometimes even a year or more late. TheInternational application lasts for only 30 months from the priority date (or31 months, for the EPO), after which it splits out into national and regionalapplications. So if the search report is late, it doesn’t leave much time toamend the application centrally before the national and regional phase begins.If a Demand for International Preliminary Examination is filed with the EPO, itis not unusual for the PCT and the national/regional process to overlap. Inthese circumstances, the International application is still with theInternational Preliminary Examining Authority for some months after enteringthe national and regional offices.

    Figure 1 shows how the process should be:

    • the ISR is issued before publication;

    • there is a brief opportunity to submit a Chapter I amendment (under Article 19) before publication;

    • the application is published at 18 months with the ISR;

    • the Demand must be filed at the 22 month stage (with a Chapter II amendment under Article 34 if not already amended in Chapter I);

    • the IPER is complete before national/regional entry at 30 or 31 months.

    Figure 2 shows how matters proceed if the ISR is late:

    • the ISR is published separately as an A3 publication (the Written Opinion is not included in the A3 publication);

    • two time limits start to run – a 2-month limit for Chapter I amendment under Article 19 and a 3-month limit for Chapter II amendment under Article 34;

    • if a Demand is filed within the 3-month limit, the IPER is drawn up, but may not be complete until some time after national/regional entry at 30 or 31 months.

    In this scenario, is there any point in filing an amendmentin Chapter I under Article 19? Not really. The only benefit is to have anamendment entered centrally with a view to a small saving in costs through nothaving to ask associates around the world to enter the amendment onnational/regional phase entry. Even then, national/regional amendment may benecessary or advisable to comply with local requirements.

    What about amending in Chapter II under Article 34 with aDemand for International Preliminary Examination? The answer is unchanged from2004. An applicant may still wish to do so for the purposes of changing theopinion of the IPEA, so that the IPER reports positively on the patentabilityof the claimed invention before the national or regional office commencesexamination. Just don’t expect to receive the results of examination in time tomake a go/no-go decision on whether to enter the national phase. The decision asto whether to proceed in a given office will have to be made based on theapplicant’s own analysis of the prior art and the Written Opinion.

  • Comment

    We have seen an increase in the popularity of the EPO as anInternational Preliminary Examining Authority. The USPTO used to be popular, ifonly to enter Chapter II and get the benefit of delayed national/regional phaseentry. Since that benefit was eliminated in 2004, Chapter II generally hasbecome much less used, but where it is used, the EPO is popular, and we arebeing asked by corporate in-house departments to review Written Opinions theyhave received and consider preparing amendments at this stage.

    In practice, a delayed process does not affectthe go/no-go decision, it merely reduces the window within which to take thatdecision.  The decision is usually basedon the ISR and its Written Opinion rather than the IPER (whether it is on-timeor delayed).