PCT- Recent Changes and Prospective New Changes Lawrence T. Welch

1. ABA Spring CLE Conference 12 April 2002 PCT- Recent Changes and Prospective New ChangesLawrence T. Welch

2. The PCT Has Been A Very Effective Vehicle for US Applicants • The PCT has provided the luxury of time for informed decision- making • The option for using the US or EPO for search and examination has been of great value • Most US applicants have found that using the EPO for search and examination is preferable, for a variety of reasons, e.g.: • Positive IPER from EPO usually leads to quick EP grant • Can compare with US examination in priority or parallel filing if desired • IPER’s from EPO given greater deference in national phase in other countries

3. Attributes of An Ideal Patent System • Prompt filing with a minimum of formalities • Preparation of a "global" application suitable for filing anywhere • Maximum deferral of prosecution and attendant costs • Optimal use of international patent offices, e.g., worksharing or mutual recognition of results, to avoid duplication of effort (and attendant costs) • An early indication of patent prospects • Option for searches from more than one of the major patent offices (US, EPO, Japan)

4. PCT Changes • PCT options have been changed several respects • PCT Article 22 deadline for Chapter I entry is changed to 30 months • But, many countries have not yet amended their national laws to accommodate this change • EPO is limiting its search and examination activities for US applicants • Will no longer search or examine biotech, telecommunications or business methods • Amendment of the agreement between EPO and WIPO permits EPO to stop search and examination for all PCT applications from US applicants with appropriate notice

5. PCT Reform has much broader goals • Full conformance with the Patent Law Treaty (PLT) • Elimination of the concept of designations • Elimination of nationality/residency requirements • Availability of multiple searches • Combining search and examination • Providing more time to enter the national phase • All of these will be valuable (particularly 3-6) • Focus today is on the current decrease in EP activity

6. The PCT is Changing for the Better • The future of the PCT is bright, the options will be expanding, and something closer to an ideal patent system is clearly possible • The amendment of Article 22, providing the option to have some cases receive only a search, and still obtain a 30-month period for national entry, will be useful when all countries amend their national law, particularly e.g., Japan, China, Korea, Brazil, Canada

7. What does one do in this transitional period? • Until the national laws change, little use will probably be made of the Article 22 extension option • US applicants can still use the EPO for non-biotech, telecommunications, and business method cases • Cases with mixed US and EP applicants, filed at the EPO, can still request EP search and examination for all technologies the EPO will search • However, if you want to use the EPO, and you want a complete examination, you need to ask for it

8. The EPO “Rationalized” Examination • Cases with only “A” references cited get an automatic “positive” IPER, with little commentary of value for the future • Cases with any “X” or “Y” references cited will get a “rationalized” written opinion, in a standard format, with a short period for response • If you want more, you need to ask for it • Indeed, the fees remain the same, so you should ask for it, as you paid for it

9. Notice from March 2002 PCT Newsletter • “Some applicants have inquired as to how such a request [for non-”rationalized” examination] should be made. The EPO has informed the International Bureau that • a letter, which can be sent at the time of filing the demand, requesting detailed examination would be sufficient. • Subsequently, if the international preliminary examination is to be based on amendments made underPCT Articles 19or34or • if any arguments are made as a response to a rationalized written opinion, a detailed examination may be requested upon the filing of such amendments/arguments. • Note, however, that the applicant should be clear as to his intentions, for example, simply commenting on the international search report or on the rationalized written opinion may not necessarily be deemed to indicate a wish for a detailed examination.”

10. “Rationalized” EPO Written Opinions • They are apparently computer generated • They generally contain conflicting statements, e.g., Boxes III and V in Paragraph 2 are both marked, despite the seeming contradiction: indicating the “non-establishment” of an opinion regarding novelty, inventive step or industrial applicability (III) and yet providing a “reasoned statement” with regard to novelty, inventive step, and industrial applicability (v) • They do not identify any examiner

11. Rationalized EPO Written Opinions (cont’d) • They indicate that in view of the documents cited in the search report “at least one independent claim does not appear to meet the criteria mentioned in Article 33(1) PCT, i.e., does not appear to be novel, and or involve an inventive step.” However, no claim is identified. • They also generally note that “if the application contains an unjustified plurality of independent claims” no examination will be carried out.

12. Response to “Rationalized” Written Opinion • First, you should be able to avoid getting them by asking for a non-rationalized examination when filing the demand • Second, if you do get such a rationalized written opinion, and you want a more complete examination, whatever response you make should indicate clearly that you want to have a non-rationalized examination • Finally, it is difficult to assess how to respond in a detailed way to a written opinion that is computer generated, written in the alternative, and identifies no claims, but merely refers to the search report • Thus, one approach is to respond promptly in a similar general fashion

13. Sample Suggested Text of Letter Filed with Demand • “In connection with the Demand for Preliminary Examination for the above-identified PCT application, which is being filed concurrently herewith, applicant requests that this application receive a detailed, non-rationalized, examination under the new EPO preliminary examination guidelines. • Applicant further requests the opportunity for an interview in the event that, after reviewing this application, the Examiner intends to issue an IPER which is not entirely positive.”

14. Suggested Portion of Text for Response to “Rationalized” Written Opinion • Unless otherwise expressed herein, applicant disagrees with any statement in the Written Opinion to the effect that the invention as disclosed and claimed in the present application fails to possess novelty, inventive step, or industrial applicability, or that is not useful or is obvious. Any arguments or amendments submitted herewith are for the purpose of obtaining a preliminary and non-binding opinion under the provisions of PCT Article 33 and should be considered without prejudice to any arguments or amendments which may be advanced in the national or regional phase examination of this application. • Applicant requests that this application receive a detailed, non-rationalized, examination under the new EPO preliminary examination guidelines. Applicant further requests the opportunity for an interview in the event that, after consideration of the foregoing arguments, the Examiner intends to issue an IPER which is not entirely positive.