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AIPLA/FICPI Colloquium on Reform of the PCT Hotel Radisson SAS, Nice April 8-9, 2003

AIPLA/FICPI Colloquium on Reform of the PCT Hotel Radisson SAS, Nice April 8-9, 2003. OVERVIEW OF RECENT CHANGES Claus Matthes Head, PCT Reform Section, WIPO. PCT Reform : Changes adopted so far.

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AIPLA/FICPI Colloquium on Reform of the PCT Hotel Radisson SAS, Nice April 8-9, 2003

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  1. AIPLA/FICPIColloquium on Reform of the PCT Hotel Radisson SAS, NiceApril 8-9, 2003 OVERVIEW OF RECENT CHANGES Claus MatthesHead, PCT Reform Section, WIPO

  2. PCT Reform :Changes adopted so far • Increased time limit under Article 22(1) for national phase entry under Chapter I from 20 to 30 months (4/2002) • Enhanced international search and preliminary examination (EISPE) system (1/2004) • Concept and operation of the designation system (1/2004) • plus a number of related changes • Align certain PCT requirements with those of PLT • Missed time limit for entering the national phase (1/2003) • Availability of priority documents from digital libraries (when technically possible) (1/2004)

  3. 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) • Entry into force on 1 Apr 02, subject to transitional reservations based on incompatibility with national law: • 24 countries made reservations, 11 have since withdrawn (24 March 2003) • still in force: BR, CH*, DK*, FI*, LU*, NO, SE*, SG, TZ, UG**, YU, ZA, ZM** (* = EPO; ** = ARIPO)

  4. EISPE system: main features • Convergence of Chapter I and II procedures • but Chapters I and II remain legally distinct • Every application subject of ISR plus ISA written opinion • Every application subject of international preliminary report on patentability (IPRP): • Chapter I: IPRP = repackaged ISA opinion • Chapter II: IPRP = IPER • Main distinction: • Chapter I (no demand for IPE filed): no dialogue with ISA examiner before establishment of IPRP • Chapter II (demand for IPE is filed): dialogue with IPEA examiner before establishment of IPRP (IPER)

  5. EISPE system 0-12 mths IA filed ISA opinion on 16 ISR patentability criteria Art. 19 amdts Int’l publication: IA + ISR 18 (+ Art. 19 amendments) Chapter II Chapter I later of: (+ Art. 34 ISO+3 Demand arguments, No demand filed * amendments) 22 or 1st written IPE opinion = ISA opinion (unless IPEA has declared otherwise) IPE procedure Applicant comments on ISA opinion to IB (if no IPER established) (informal procedure) International preliminary report International preliminary report on patentability by ISA (IPRP) on patentability by IPEA (IPRP) (Chapter I of the PCT) (Chapter II of the PCT) (= IPER) IPRP (Chapter I) IPRP (Chapter II) 30 (+ any comments) to EOs to DOs IPRP (Chapter I) IPRP (Chapter II) (+ any comments) publicly available publicly available (on request of EO) National phase entry National phase entry * must in practice file demand by 19 months for Article 22 transitional reservation countries

  6. Concept and operation of designation system • Automatic and all-inclusive – all possible designations • Postpone choices to national phase (e.g. patent or utility model, national or regional patent) • can exclude DE, KR and RU under transitional reservations for countries with “self-designation” provisions

  7. Designation system:related changes • Automatic and all-inclusive elections under Chapter II • Flat “international filing fee” (eliminate separate basic fee and designation fees) • also eliminate separate handling fee? (proposals for Assembly in 2003) • “Communication-on-request” system • documents communicated to designated Offices only upon request by the Office and at the time specified in the request (IMPACT)

  8. Designation system:related changes (continued) • Signature – sufficient that request be signed by one applicant – BUT: • signature of all applicants needed for withdrawals under Rule 90bis • designated/elected Offices may require absent signatures and indications (see below) 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 power of attorney

  9. 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 (BY, CA, CN, DE, EP, GB, HR, IN, JP, KR, LV, MX, NZ, PH, PL, PT, SG, YU)

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