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Changes to the PCT Regulations which came into effect on 1 January 2004. Main changes to the PCT Regulations which came into effect on 1 January 2004. Enhanced international search and preliminary examination (EISPE) system Concept and operation of the designation system

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main changes to the pct regulations which came into effect on 1 january 2004
Main changes to the PCT Regulations which came into effect on 1 January 2004
  • Enhanced international search and preliminary examination (EISPE) system
  • Concept and operation of the designation system
  • Signature requirements, indications concerning applicants and powers of attorney
  • Access to file

For further information on the amendments adopted by the PCT Assembly of September 23 to October 1, 2002 (including the Assembly report (PCT/A/31/10)) and of September 22 to October 1, 2003 (including the Assembly report (PCT/A/32/8)), see http://www.wipo.int/documents/en/document/govbody/wo_pct/index_31.htm and http://www.wipo.int/documents/en/document/govbody/wo_pct/index_32.htm

eispe system main features
EISPE system: main features
  • Convergence of Chapter I and II procedures
    • but Chapters I and II remain legally distinct
  • International preliminary report on patentability (IPRP) forevery application
    • Chapter I: IPRP = written opinion by ISA
    • Chapter II: IPRP = IPER
  • Main difference
    • Chapter I: no applicant/examiner dialogue or amendments before IPRP issuance
    • Chapter II: dialogue with examiner and amendments possible before IPRP issuance
eispe system written opinion by isa examiner
EISPE system: Written opinion by ISA examiner
  • ISA examiner prepares ISR plus detailed written opinion (IPRP) for every application
  • Written opinion by ISA has similar scope and content as current written opinion by IPEA
  • Written opinion by ISA sent to applicant with ISR
  • ISR is published with application; written opinion by ISA is not published per se
  • Applicant may submit comments on written opinion by ISA informally to IB
eispe system chapter i
EISPE system: Chapter I
  • If applicant does not request IPE:
    • IB establishes “international preliminary report on patentability” IPRP (Chapter I)) on basis of written opinion by ISA
    • IPRP (Chapter I) and any comments by the applicant
      • are sent to designated Offices
      • are made publicly available (but not “published” like application and ISR)
      • but not before the expiration of 30 months from the priority date
eispe system chapter ii
EISPE system: Chapter II
  • If applicant requests IPE:
    • written opinion by ISA becomes written opinion by IPEA (exception: IPEA decides not to accept written opinions by certain ISAs)
    • subject to Rule 66.4bis, any amendments under Article 34 and/or arguments should be submitted together with the demand and within the applicable time limit underRule 54bis.1(a)
    • comments by applicant on written opinion by ISA not sent to IPEA (Article 34 amendments/arguments only)
    • “normal” IPE procedure
    • IPEA establishes IPRP (Chapter II) (= current IPER)
    • IPRP (Chapter II) is sent to elected Offices and made publicly available by IB on behalf of any elected Office which so requests, but not before the expiration of 30 months from the priority date
eispe system time limit to file demand
EISPE system:Time limit to file demand
  • New time limit for filing the demand for IPE:
    • three months after the issuance of the international search report and the written opinion of the ISA (or of the declaration under Article 17.2(a)), or
    • 22 months from the priority date, whichever expires later
  • NOTE: The 19-month time limit to file a demand in order to postpone the time limit to enter the national phase from 20 to 30 months continues to apply in respect of States which have notified the International Bureau that they will not apply the 30-month time limit under Chapter I
slide8

Non-applicability of modified (30 month) time limit under Article 22(1)

  • The Offices of the following States have notified the International Bureau that they will not apply the 30 month time limit under Chapter I, as of 1 April 2002, for as long as modified Article 22(1) is not compatible with their national law (7 Offices – situation as of 26 July 2004):

CH Switzerland*

FI Finland*

LU Luxembourg*

SE Sweden*

TZ United Republic of Tanzania**

UG Uganda**

ZM Zambia**

* Where this State has been designated for the purposes of a European patent, the applicable time limit before the EPO, as of 2 January 2002, is 31 months

** Where this State has been designated for the purposes of an ARIPO patent, the applicable time limit before ARIPO, as of 1 April 2002, is 31 months

  • If no demand for international preliminary examination is filed before the expiration of 19 months in respect of above States, the national phase will have to be entered before the expiration of 20 or 21 months from the priority date
eispe system start of international preliminary examination
EISPE system:Start of international preliminary examination
  • IPEA will start the international preliminary examination when it is in possession of:
    • the demand
    • the applicable fees
    • the ISR and the written opinion of the ISA

but not before the expiration of the applicable time limit under Rule 54bis.1(a) unless the applicant expressly request an early start

slide10

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

WO of ISA+3

Demand

arguments,

No demand filed

*

amendments)

or

22

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

concept and operation of designation system
Concept and operation of designation system
  • Automatic and all-inclusive – all possible designations
    • Form only provides for exceptions for the designation of DE, KR and RU (countries with particular rules on “self-designation”)
    • but withdrawals of designations will be possible
  • Postpone required choice of types of protection until national phase entry (e.g. patent or utility model, national or regional patent)
  • Include “parent” information in PCT request form (for search purposes) for continuation applications and patents of addition
designation system signature requirements indications concerning the applicant
Designation system:Signature requirements, indications concerning the applicant
  • Sufficient that request be signed by one applicant – BUT:
    • signature of all applicants needed for withdrawals under Rule 90bis
    • designated Offices permitted to require absent signatures and indications in national phase
  • Indications concerning applicants – needed only for one applicant entitled to file with the RO concerned
waiver of requirement that a power of attorney has to be furnished rules 90 4 d and 90 5 c
Waiver of requirement that a power of attorney has to be furnished(Rules 90.4(d) and 90.5(c))

1. As of 1 January 2004, the RO, the ISA, the IPEA and the IB may waive the requirement that:

– a separate power of attorney; and/or

the RO, the ISA, the IPEA may waive the requirement that

– a copy of a general power of attorney

has to be furnished

2. All Offices and Authorities may nevertheless require that a power of attorney has to be furnished in particular instances even if it has waived the requirement in general

3. Information as to whether an Office or Authority has made such a waiver will be published in the PCT Gazette, the PCT Newsletter, the PCT Applicant’s Guide and on WIPO’s Internet page

related changes filing of chapter ii demand
Related changes:Filing of Chapter II demand
  • Automatic and all-inclusive elections under Chapter II
    • codifies what demand form already provides today
    • no longer possible to exclude certain States from being elected
    • however, withdrawals of elections remain possible
  • Sufficient that demand be signed by one applicant – BUT:
    • signature of all applicants needed for withdrawals of demand or election
  • Indications concerning applicants – needed only for one applicant entitled to make a demand
new pct fee structure
New PCT fee structure
  • Flat “international filing fee” (replaces separate basic and designation fee)
    • amount: 1400 Swiss francs
    • reductions:
      • 100 Swiss francs for paper filings where the request is created using the PCT-EASY features that have been incorporated into the PCT-SAFE software and is presented as a computer printout together with a diskette prepared using that software
      • 200 Swiss francs for electronic filings where the text of the description, claims and abstract is NOT in character coded format (XML)
      • 300 Swiss francs for electronic filings where the text of the description, claims and abstract IS in character codedformat (XML)
    • payable within one month from the date of receipt of the international application (Rule 15.4) (extendable under Rule 16bis)
  • Handling fee
    • amount: 200 Swiss francs
access to the file of an international application rules 44 ter and 94
Access to the file of an international application(Rules 44ter and 94)
  • Access to the file of the International Bureau will include:
    • Written opinion of the ISA
    • IPRP (Chapter I) and/or any translation thereof
    • IPRP (Chapter II), if so authorized by an elected Office
  • Time when access will be given:
    • Written opinion of the ISA and IPRP (Chapter I): only after the expiration of 30 months from the priority date
    • IPER (Chapter II): only after the expiration of 30 months from the priority date
entry into force transitional arrangements
Entry into force;transitional arrangements
  • From January 1, 2004
    • EISPE system
    • concept and operation of the designation system
    • apply only to IAs whose international filing date is on or after January 1, 2004
      • exception: all-inclusive elections if demand for IPE is filed on or after January 1, 2004, whenever application filed
      • exception: IPER available to third parties on or after January 1, 2004, irrespective of whether the international filing date is before, on or after January 1, 2004
      • other exceptions also