New PCT Regulations

On 1 January 2004, a number of changes to the PCT Regulations came into force. Here we have highlighted three of the more significant changes impacting most day-to-day practice. The complete set of changes can be found at http://www.wipo.int/pct-reform/en/measures_adopted.htm

1. Written opinion brought forward into Chapter I

For every application, the International Searching Authority (ISA) will draw up a Written Opinion alongside the usual International Search Report (ISR). If the EPO is the ISA, this combined search report and written opinion (together called the “Chapter I Report) will effectively be the first office action when the application enters the European regional phase. There will be practically no need to demand Chapter II processing.

Chapter II processing will become a rarity. By bringing the Written Opinion forward into the Chapter I stage, the time required in Chapter II for considering amendments from the applicant and for drawing up the International Preliminary Examination Report (IPER) is reduced from 8 months to 6 months. This in turn means that the deadline for filing a Demand for Chapter II processing can be postponed from the previous 19 month deadline to 22 months. This is illustrated in our figures.

Figure 1

Figure 2

Why bother with Chapter II?

First we show the old procedure in which the Demand (if filed) is due at 19 months and the Written Opinion and IPER are drawn up in the Chapter II phase between 19 months and 30 months from the earliest priority date.

In Fig. 2 we have shown the new procedures in which the Written Opinion is drawn up at the same time as the ISR (in the Chapter I phase) and is set aside in the confidential part of the file ready for the Chapter II phase (in the event a Demand is filed) or ready to be supplied to the national/regional offices on national phase entry. If the applicant files a Demand, any amendments or comments in response to issues raised in the Written Opinion must be filed before the new 22-month deadline. Thus, on commencing Chapter II, all the necessary steps will have been taken for the International Preliminary Examining Authority to draw up the IPER without further delay. An exception is that the IPEA can decline to consider the Written Opinion of the ISA, in which case the IPEA must promptly draw up its own Written Opinion. The EPO and the JPO have declared that for these purposes they will not accept the Written Opinion of any ISA but themselves (as at present with the International Search Report).

Under the new procedure, applicants are not expected to initiate Chapter II processing, thereby reducing the burden on the examining offices.. If there is to be no Chapter II, applicants need to give more careful consideration as to whether to amend the application in Chapter I (i.e. under PCT Article 19). This opportunity will be more widely used, because the Written Opinion will be available at an earlier stage (see right hand diagram) and it will be possible to file amendments under Article 19 in response to that Opinion.

Note that the Written Opinion is not published with the ISR at 18 months. It remains confidential until the conclusion of the PCT procedure at 30 months from the earliest priority date. Then it is open to the public, even if no Demand has been filed. The only way to suppress publication of the Written Opinion is by withdrawal of the entire application before that time.

• What applicants should do before publication – If, as is intended under the new system, Chapter II processing is unnecessary and not to be requested, an applicant’s principal opportunity to improve the application in response to the ISR is the brief period under Article 19, which is 1 month following receipt of the ISR. Applicants should make good use of this opportunity. Amendments made at this time will be published with the application. This can be important from the point of view of damage awards later.
• What applicants should do at 19 months from priority - The existing 19-month deadline for filing the Demand remains for a very small number of states (see www.wipo.int/portal/index.html.en/en/texts/reservations/res_incomp.pdf for a complete list). If protection in those States is required, either the Demand must be filed before the 19-month deadline or national processing in those States must commence within the Chapter I deadline set by those States (the minimum being 20 months from the earliest priority date).
• What applicants should do at 22 months from priority - By the 22 month deadline, applicants should decide whether Chapter II processing is required in the International Phase. Before the last round of changes in April 2002 (see “The End of PCT Chapter II” Jenkins Patent Issues Summer 2002), the principal reason for filing of a Demand for International Preliminary Examination was to delay having to commence national/regional phase processing. This is no longer the case. These days, with very few exceptions (see above), most countries permit national/regional entry at the 30/31 month stage without the filing of a Demand. Fewer applicants have been filing Demands since the 2002 changes came into effect.
• Why file a Demand? – Apart from delaying commencement of national/regional phase processing, applicants may previously have filed a Demand in order to obtain a Written Opinion or examination report before deciding whether to proceed to national/regional processing. Under the new procedure, the Written Opinion will be provided to the applicant by the ISA without the need for filing a Demand. Why, then, file a Demand? There remains one key reason why an applicant may now wish to do so, and this is for the purposes of changing the opinion of the IPEA through amendments or comments filed with the Demand, so that the IPER reports positively on the patentability of the claimed invention before the application enters the national/regional phase. A positive IPER will sometimes influence other patent offices. A positive IPER may have other benefits to applicants – e.g. it may be of assistance in obtaining funds for the national/regional phase entry.

2. No more designation fees

Instead of separate basic and designation fees, WIPO has introduced a single International Filing Fee, set at a little below the previous fees for filing and designating the maximum number of states (which, under the previous fee structure required payment of designation fees equivalent to five states). Since almost every International patent application filed under the previous scheme included payment of the maximum fees and designation of all states (very few indeed included less than five designations), this change amounts to a minor simplification. Designations cannot be dispensed with altogether, as that would require amendment to the Treaty, but WIPO has worked around the problem by treating all states as designated by default under the new scheme.

One complication arising from the change is that caution needs to be exercised if there is an existing application in certain countries that do not permit parallel national and PCT applications. In the cases of Germany, Korea and Russia, boxes are provided in the new application form to allow those countries to be excluded from designation (Caution! Staff are used to checking boxes to positively include designations – now a cross in the box will exclude these countries). Furthermore, in Japan any earlier national application will be deemed withdrawn BUT NO CHECK BOX HAS YET BEEN PROVIDED in the application form.

3. Signature requirements

It is no longer necessary for all applicants to sign the request form or any power of attorney. Where there is more than one applicant, it is now sufficient if just one of the applicants signs. Since it is common for the inventor to be the applicant in respect of the US designation and the Assignee to be the applicant in respect of all other states, the existence of multiple applicants in International patent applications is the norm rather than the exception. The ability, therefore, to forgo the need for the inventor’s signature is a matter of significant convenience.

For the purposes of the US part of the patent application, the signature of the inventor will be required in due course. Applicants are advised to draw up a US oath or declaration at an early stage. Too often when the time comes to enter the US national phase, the inventor is not available or unwilling to sign these documents. is not avoided, but the difficulty and expense of proving the inventor’s refusal to sign can be put off until the conclusion of the international phase.

Comment

The new process in which the Written Opinion is drawn up at the same time as the International Search Report is designed to encourage the filing of a Demand if comments or amendments are to be submitted, and to discourage the filing of Demands if the Written Opinion is favourable. This reduces the burden on offices that act as IPEAs, although there is the additional burden upon the ISA of preparing a Written Opinion.

Whether an applicant will chose to file a Demand in cases where the Written Opinion is negative (e.g. raises objections of lack of novelty or of obviousness) is a matter of judgement case-by-case. If, for example, it is intended to process the application nationally in only one or two offices, there may be little or no advantage in putting the application in order during the international phase. This is especially true if the US is one of the intended countries for national processing and the applicant wants to avoid written statements on the file that may prejudice interpretation later, preferring to “hold fire” and request an examiner interview at the USPTO.

By contrast, if the application is to be processed in many national and regional offices, sorting out the claims at this stage and entering the national/regional phase with a positive IPER can be crucial if costs are to be kept down. Dealing with objections in each individual office later through local patent agents/attorneys can be expensive and time consuming.

If an applicant wants an EP patent fairly quickly, it would be well to choose the EPO as the ISA and respond (if necessary) to the Written Opinion. Jenkins can be appointed as the representative to deal with the objections in the preferred EPO manner so that work required during the EP regional phase is minimized.

Note, however, that the EPO will only conduct a search where the application is in English, French, German or Dutch, so if applicants in Japan, Korea, China or elsewhere have their ISRs and Written Opinions drawn up by their respective national offices, and these will usually be ignored by the EPO on entry to the European regional phase.

WIPOSPEAK

With the new PCT procedure we have some new terms. Here is our summary.

Chapter I Report – This is the “International Preliminary Report on Patentability (Chapter I of the Patent Cooperation Treaty)” – the new name that will be given to the Written Opinion in cases where the application does not proceed to examination in the International Phase.

Chapter II Report – This is the “International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty)” – the new name for the old International Preliminary Examination Report.