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RECENT PCT CHANGES THAT IMPACT MANAGEMENT OF IP

RECENT PCT CHANGES THAT IMPACT MANAGEMENT OF IP. AIPLA –MIPA Licensing Road Show March 12, 2003. John W. Branch Darby & Darby P.C. Seattle, WA jbranch@darbylaw.com. New Examination System.

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RECENT PCT CHANGES THAT IMPACT MANAGEMENT OF IP

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  1. RECENT PCT CHANGES THAT IMPACT MANAGEMENT OF IP AIPLA –MIPA Licensing Road Show March 12, 2003 John W. Branch Darby & Darby P.C. Seattle, WA jbranch@darbylaw.com

  2. New Examination System • International Searching Authority (ISA) will issue a written opinion (ISA-WO) at the same time as their Search Report (ISR) • Demand no longer necessary to receive WO • ISA plants to issue ISA-WO at 16-17 months from filing

  3. Changes That Became 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. ISA-WO Contents • ISA-WO will contain the similar elements as the written opinion under the old examination system • Novelty • Inventive Step • Industrial Applicability

  7. Third-Party Access to ISA-WO • ISA-WO not published with ISR • ISA or IB will not allow any person or authority to access the ISA-WO before 30 months from filing date • May be forwarded to DO upon National Phase entry

  8. Why file a Demand under the new system? • To submit arguments to the IPEA, and have those arguments considered in their International Preliminary Report on Patentability (IPRP, formerly IPER) • Still required to prolong national phase entry countries who have not assented to the expanded 30 month time limit for Chapter 1 • e.g. Norway, Brazil, Serbia, Montenegro

  9. Deadlines for filing a Demand • To postpone national phase entry in, for example, Norway and Brazil: 19 months from priority date • To submit arguments to IPEA: • Three months from the transmittal of ISA-WO and ISR; or • 22 months from priority date, whichever is later. • Should file as soon as you are aware that you wish to traverse ISA-WO in international stage

  10. If a Demand is filed • Time and resources permitting, the IPEA may issue written opinions after considering the applicants amendments and/or arguments • File Demand early! • In any event, IPEA will issue a IPRP after considering the applicants amendments and/or arguments submitted with the Demand • IPRP issued around 28 months from priority date

  11. If no Demand is filed • IB will convert the ISA-WO to an IPRP on behalf of the ISA • IPRP will be issued after expiration for filing a Demand has passed

  12. Purpose of the New Examination System • To provide a Written Opinion to all applicants to facilitate National Prosecution • Otherwise, most applicants would not receive a written opinion, since Chapter II is generally not required to prolong national phase entry

  13. PCT System 30 20 File PCT Publication Chapter I 18 (months) 0 12 16 19 Enter national phase ISR and ISA-WO OR File First Appl’n FileDemand? 30 Chapter II International Preliminary Examination

  14. 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.

  15. 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.

  16. Conclusion • Users wanted flexibility in the PCT system, and the new changes seem to provide that (languages, electronic filing, digital signatures, Powers). • Chapter II Demand will be more of an exception for many users. • Reinstatement of priority rights under at least Due Care standard

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