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USER REACTION TO RECENT CHANGES IN THE PCT

USER REACTION TO RECENT CHANGES IN THE PCT. AIPLA – FICPI COLLOQUIUM NICE, FRANCE April 8, 2003. Melvin C. Garner Darby & Darby P.C. New York, NY 10022 mgarner@darbylaw.com. Source of Information. AIPLA PCT Issues Committee Leadership

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USER REACTION TO RECENT CHANGES IN THE PCT

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  1. USER REACTION TO RECENT CHANGES IN THE PCT AIPLA – FICPI COLLOQUIUM NICE, FRANCE April 8, 2003 Melvin C. Garner Darby & Darby P.C. New York, NY 10022 mgarner@darbylaw.com

  2. Source of Information • AIPLA PCT Issues Committee Leadership • Papers Delivered at the Mid-Winter Meeting of the Committee, including those from non-US representatives

  3. Changes Effective As of 1/1/03 • 30/31 Month National Phase Entry from Chapter I • Reinstatement of Priority Rights • Discount For Electronic Filing • Languages, Powers & Priority Documents

  4. Changes Effective As of 1/1/04 • Enhanced International Search and Preliminary Examination in Chapter I • Automatic Designation of All States

  5. 30 Month Entry in National Phase From Chapter I • Applicant gets ISR and can amend under Art. 19, if received early enough, without making a request under Chap. II. • Positive Response from Users because: • Save expense of Chap. II Exam. • More time to see progress of parent application. • Get info, and may be able to amend before national stage.

  6. Reinstatement of Rights • Failure to enter national phase on time can be corrected by showing it occurred despite “due care.” National office can use an “unintentional” standard. • Ability to get reinstatement is viewed positively. • “Due Care” standard, instead of “unintentional,” is viewed as a negative.

  7. Reduced Fee For Electronic Filing • Filing of applications, DNA sequences and tables related to DNA. Discount for electronic filing. • All efforts at implementing electronic filing is positively received. • Except for Request forms and DNA sequences, it remains to be seen how effective it will be for US users.

  8. Languages, Powers & Priority Documents • New requirements on use of languages to align with PLT, the elimination of Powers and use of digital priority documents are authorized. • These minor changes all appear to be to the benefit of users.

  9. Enhanced Inter. Search &Preliminary Exam • In Chapter I, under the Enhanced International Search and Preliminary Examination (EISPE) system, the user gets the standard ISR, as well as an International Preliminary Report on Patentability (IPRP). • Users view this positively because they get more information before the national stage, and without having to enter Chapter II. • Users have concern there may not be sufficient time or rules to assure an informal dialog with the examiner in Chapter I.

  10. Enhanced Inter. Search &Preliminary Exam – Cont. • The user can enter Chapter II and the IPRP becomes the Written Opinion. • Users are concerned that they will not have time to amend/comment and get a second Opinion in Chapter II. • What will be the effect in the national offices of IPRP (Chap. I) v. Written Opinion (Chap. II) and IPRP from different IEA?

  11. Automatic Designation Of All States • One flat fee will cover the basic fee and the designation fee for all states. • This is viewed positively by users because it delays the time for deciding the states in which national stage processing is necessary. • There is concern that the combined fee may be too great.

  12. Conclusion • Users want flexibility in the system, and the new changes seem to provide that. • However, there is concern that convenience and work load considerations for the governmental agencies take precedence over the interests of the users.

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