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Patent Cooperation Treaty Reform … and Beyond

Patent Cooperation Treaty Reform … and Beyond. A United States Perspective American Bar Association 17 th Annual Intellectual Property Law Conference April 11-12, 2002 Lois E. Boland Office of Legislative and International Affairs USPTO. Overview.

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Patent Cooperation Treaty Reform … and Beyond

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  1. Patent Cooperation Treaty Reform … and Beyond A United States Perspective American Bar Association 17th Annual Intellectual Property Law Conference April 11-12, 2002 Lois E. Boland Office of Legislative and International Affairs USPTO

  2. Overview • PCT reform in the context of worldwide patent reform • Background of current reform efforts • PLT 2000 • PCT reform • Next Steps – substantive harmonization, WIPOnet, Trilateral, etc. • Conclusion LEBoland –USPTO/OLIA

  3. Driving Forces for World-wide Patent Reform • Positive correlation between strong patent protection and economic development • Patent application filing increases throughout the world • Costs associated with obtaining, maintaining and litigating patents • Duplication of effort among patent offices • Workload concerns at patent offices LEBoland –USPTO/OLIA

  4. Driving Forces for World-wide Patent Reform • Calls for cost reduction, simplification and streamlining • Integration of electronic filing, processing and communication efficiencies • Integration of national and international processing • Message received – status quo is not an option; reform is imperative LEBoland –USPTO/OLIA

  5. Background to Current Efforts • Efforts to create a comprehensive patent law treaty date back a number of years • Patent Cooperation Treaty – in force and growing since 1978 • TRIPS Agreement established minimum standards for protection – URAA • AIPA • PLT 2000 – formalities treaty LEBoland –USPTO/OLIA

  6. Patent Law Treaty of 2000 • Discussions began at WIPO in 1995, Treaty concluded at Geneva in 2000 • 27 Articles and 21 Rules • Governs the maximum formal or procedural requirements that may be imposed upon patent applicants and patentees. LEBoland –USPTO/OLIA

  7. Patent Law Treaty of 2000 • Filing Date must be given if applicant files: • (1) indication that elements are application • (2) indications for identifying/contacting applicant • (3) description or drawing in any language • Application/communication requirements • Representation issues • Relief in respect of time limits, reinstatement of rights and restoration of priority right LEBoland –USPTO/OLIA

  8. Patent Law Treaty of 2000 • No formal requirements different from or additional to those in the Patent Cooperation Treaty may be imposed. • Provisions – articles and rules - cover wide range of formalities. • Ratification and implementation packages currently under development in the United States. LEBoland –USPTO/OLIA

  9. Next Steps • PCT reform • Convergence of national and international practices • Substantive patent law harmonization • Trilateral Cooperation and WIPOnet • Work sharing, mutual recognition and full faith and credit • The “global” patent LEBoland –USPTO/OLIA

  10. PCT Reform • United States Proposal for PCT Reform • Results of the September 2001 PCT Union and November 2001 PCT Reform Working Group Meetings • Current focus of PCT reform efforts LEBoland –USPTO/OLIA

  11. PCT Reform • United States Proposal to Reform the PCT – in PCT/R/1/2: • Stage 1 - Simplification of procedures and conformance to the PLT. • Stage 2 - Comprehensive overhaul of the PCT system. LEBoland –USPTO/OLIA

  12. PCT Reform • PCT Assembly in September 2000 decided to convene a Committee to Reform the PCT at WIPO, responsive to U.S. proposal. • First Meeting of Reform Committee in May 2001 results in formation of Working Group to consider technical issues and draft language. First meeting of Working Group held in November 2001; next in April 2002. LEBoland –USPTO/OLIA

  13. PCT Reform • Major elements of “First Stage”: • Elimination of designations • Conforming filing date to PLT • Elimination of 20-month deadline for national stage entry • Elimination of demands • Combination of search and examination LEBoland –USPTO/OLIA

  14. PCT Reform • Time Frame - • First Stage – within next few years; elimination of 20 month deadline adopted at PCT Assembly in September 2001. • Second Stage - Longer term plan LEBoland –USPTO/OLIA

  15. PCT Reform • Results of the 2001 PCT Union Meeting, the Assembly: • (i) unanimously adopted the modifications of the time limits fixed in Article 22(1) of the PCT – from 20 months to 30 months for performing acts necessary to enter the national phase, and • (ii) unanimously adopted the decisions relating to entry into force and transitional arrangements – entry into force on April 1, 2002 for any international application for which 20 month period expires on or after that date, with transitional arrangements, as necessary. LEBoland –USPTO/OLIA

  16. PCT Reform • Implementation in the United States of the 20 to 30 month change for Chapter I processing: • USPTO published a final rule on January 4, 2002, to amend 37 CFR 1.494, effective April 1, 2002 – Federal Register – Vol. 67, No. 3, page 520, et seq. • Implementation in other contracting states LEBoland –USPTO/OLIA

  17. PCT Reform • Other Assembly Actions: • Reduced fees by decreasing the maximum number of designation fees payable from 6 to 5, to enter into force on January 1, 2002 • Approved establishment of a working group on PCT Reform, first session – Nov 2001 • Appointed the Spanish Patent and Trademark Office as an IPEA • Approved text of amended Agreement between the EPO and the International Bureau LEBoland –USPTO/OLIA

  18. PCT Reform • EPO-IB Agreement amendments - the EPO may, as of November 1, 2001,: • Cease acting as ISA/IPEA for certain international applications; • Limit the number of such applications; or • Limit the fields of such applications. • EPO Notice - www.european-patent-office.org/epo/president/e/2001_12_11_e.htm LEBoland –USPTO/OLIA

  19. PCT Reform • EPO Notice – EPO will not carry out - • International search in respect of any international application filed on or after 1 March 2002 by a national or resident of the United States where such application contains one or more claims relating to certain fields of biotechnology or business methods • International preliminary examination in respect of any such application where such application contains one or more claims as above or relating to the field of telecommunication • Initial duration of limitations will be three years LEBoland –USPTO/OLIA

  20. PCT Reform • USPTO Notice – in response to amended agreement between WIPO and EPO - http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/epodoc.htm • Impact at USPTO – not yet known • 20 to 30 month change may relieve some workload pressure on EPO LEBoland –USPTO/OLIA

  21. PCT Reform Focus at November WG and continuing focus • Certain items from initial US proposal, with modifications per EPO proposal • national stage entry at 30 months • combination of search and examination - expanded international search report - EISR • IPER triggered only if applicant responds to expanded international search report • Implementation - integrated processing of national and international applications in the USPTO LEBoland –USPTO/OLIA

  22. PLT 2000 and PCT Reform • Convergence of national and international practices • 2000 PLT - incorporation of PCT “form and content” requirements • Reformed PCT - among other changes, PLT-consistency • Objective - ability to prepare a relatively simplified application in a single format, preferably in electronic form, that would be accepted by all patent offices as national/international application LEBoland –USPTO/OLIA

  23. Next Steps – Substantive Harmonization • November 2000, Standing Committee on Law of Patents resumes substantive harmonization discussion. • Met May 14-19, 2001 and November 5-9, 2001 to discuss treaty drafts • Next meeting – May 2002 • All documents for SCP meetings available on WIPO’s website LEBoland –USPTO/OLIA

  24. Next Steps – Substantive Harmonization • New approach - “Deep Harmonization” - for both law and underlying practice • Determine the “Best Practice” involving drafting, filing and examination of patent applications. • Goal is “work sharing” or “mutual recognition” among Patent Offices. LEBoland –USPTO/OLIA

  25. Next Steps – Substantive Harmonization • Success would allow applicants to draft a single application for use in multiple countries without amendment, with similar substantive results. • Building on PLT 2000 and PCT Reform efforts • First-to-invent vs. first-to-file issue – not currently on the table • USPTO/U.S. currently in preparation for May 2002 SCP meeting which will consider new draft of treaty, regulations LEBoland –USPTO/OLIA

  26. Next Steps – Trilateral Cooperation • Trilateral Cooperation • efficient exchange of information • reduce duplication of effort, workload issues – “mutual exploitation” with JPO • TRI-Net • common documentation resources and database search tools • search and examination exchanges/studies LEBoland –USPTO/OLIA

  27. Next Steps - WIPOnet • WIPOnet • access to and exchange of IP information for all WIPO countries • global cooperation • benefits to smaller patent offices and offices in developing countries LEBoland –USPTO/OLIA

  28. Next Steps – Mutual Recognition, etc. • Work-sharing, mutual recognition, full faith and credit • Work-sharing - benefits of IPDLs • Work of SCP important to “full faith and credit” effort so that offices may confidently rely on work by other offices • Sovereignty issues • The “global” patent - rights of inventors recognized without having to seek patent protection in each of the countries of the world LEBoland –USPTO/OLIA

  29. Conclusion • URAA and AIPA implemented • Harmonization moving forward: TRIPs, PLT 2000, PCT Reform, substantive talks at SCP • Integration of national and international requirements and processing • Benefits of electronic filing and processing • Goal: Global protection of patent rights by the overhaul and convergence of existing national and international systems LEBoland –USPTO/OLIA

  30. Contact Information • Office of Legislative and International Affairs • (703) 305-9300 • USPTO • www.uspto.gov LEBoland –USPTO/OLIA

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