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PCT REFORM: Why It Is Needed and What Lies Ahead

PCT REFORM: Why It Is Needed and What Lies Ahead. Charles A. Pearson Director Office of PCT Legal Administration . Overview. The Need for Worldwide Patent Reform Patent Reform Progress to Date Next Steps Toward Patent Reform Conclusions. Need For Reform.

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PCT REFORM: Why It Is Needed and What Lies Ahead

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  1. PCT REFORM:Why It Is Needed andWhat Lies Ahead Charles A. Pearson Director Office of PCT Legal Administration

  2. Overview • The Need for Worldwide Patent Reform • Patent Reform Progress to Date • Next Steps Toward Patent Reform • Conclusions

  3. Need For 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 • Calls for cost reduction, simplification and streamlining • Integration of electronic filing, processing and communication efficiencies

  4. Patent Reform Progress To Date • Paris Convention - March 20,1883 • The current Patent Cooperation Treaty - June 19,1970 • Regional arrangements - EPO, EAPO, ARIPO and OAPI • Recently concluded Patent Law Treaty - June 2, 2000

  5. Next Steps • PCT reform • Convergence of national and international practices • Substantive patent law harmonization • Work sharing, full faith and credit • The “global” patent

  6. Next Steps - PCT Reform • 1999 - 2000 - The United States circulated draft reform proposal • September, 2000 - Proposal had evolved sufficiently and was presented to the Assembly of the PCT Union for consideration • The proposal consisted of: • 15 proposals to be accomplished in the next 5 years during a first stage of PCT reform; and • 4 wider ranging proposals aimed at a more comprehensive second stage of PCT Reform

  7. Next Steps - PCT Reform • Member states decided to establish “special body” to consider proposals for PCT reform that would pursue the same objectives as those in first stage of US proposal • The First Session of the Committee on Reform of the Patent Cooperation Treaty was held May 21 to 25, 2001 in Geneva

  8. Next Steps - PCT Reform • In addition to the US proposal, 21 additional proposals and resolutions addressing PCT reform were presented for consideration • The Committee focused its attention primarily on the 15 First Stage US proposals • The Committee decided to form a Working Group to consider those proposals that met with a favorable consensus • Tasked with developing the necessary specific Article, Regulation, and procedural changes

  9. Next Steps - PCT Reform • 7 US proposals considered appropriate for consideration by the Working Group • Elimination Of 20 Months Deadline; • Elimination Of Demands; • Combined Search And Examination; • Elimination Of Designations; • Conform Filing Date Requirements With The PLT; • Conform Missing Part Requirements With The PLT; • Other PLT Consistent Changes

  10. PCT Reform - Possible Implementation Example Of US Core Proposals NAT. APP. FILED PCT FILED INT. APP. PUBLISHED EISR ISSUES ART. 34 REPLY IPER ISSUES NAT. STAGE ENTRY 0 12 18 18+ EISR+3 28 30* All States designated/elected Portion of Search/Examination fees due Only IA published at this time EISR = combination of current ISR and Written Opinion Sets 3 month period for reply IB to possibly publish If filed, ISPEA prepares IPER If filed, remaining S/E fees due If not filed, modified EISR will be IPER ISPEA issues IPER IB makes IPER available All apps. get 30 months *or later as provided under national law

  11. PCT Reform - Filing Of International Application • All applicants will automatically have 30 months to enter the national stage • All States automatically designated/elected • Applicant may specifically exclude specific States from designation/election • Filing fees due, including reduced Search/Examination fees, upon filing • The remainder of the Search/Examination fees will be required upon filing of a response to the Expanded International Search Report

  12. PCT Reform - Publication Of The International Application • International Application as filed will continue to be published at 18 months. • If EISR is issued prior to 18 month publication of the IA, then any EISR publication will take place in conjunction with the 18 month publication.

  13. PCT Reform - Expanded International Search Report • EISR is envisioned as being a combination of the current International Search Report and the Written Opinion • EISR will set a 3 month period for applicant to respond with an Article 34 reply • Upon issuance of the EISR, the IB will publish either: • The Cited References page of the EISR; or • The full EISR • If EISR issued early, then no EISR publication will occur prior to the 18 month publication of the IA

  14. PCT Reform - Article 34 Reply • Prior to the expiration of the period set in the EISR applicant may file a response under Article 34 • The reply is to be filed only in cases where applicant disagrees with the findings of the EISR • The reply should be accompanied by: • The remaining Search/Examination fees due; and • Applicant’s arguments against the reasoning in the EISR and/or amendments to overcome the references applied in the EISR

  15. PCT Reform - International Preliminary Examination Report • IPER will be issued by the ISPEA after expiration of the time period set in the EISR • If Art. 34 reply is timely filed, ISPEA will prepare IPER considering arguments and amendments submitted with the reply • If a reply is not timely filed, EISR information will issue as the IPER • Upon issuance of the IPER, the IB will make the IPER available to all Offices

  16. Next Steps - Other Issues • Convergence of National and International Practices • Recently concluded PLT - incorporation of PCT “form and content” requirements • Consistency between a reformed PCT and the PLT • Objective - ability to prepare a simplified application in a single format, preferably in electronic form, that would be accepted by all patent offices as national/international application

  17. Next Steps - Other Issues • Substantive Patent Law Harmonization • Standing Committee on the Law of Patents met in November 2000 and May 2001 to consider further development of international patent law • SCP agreed to pursue, in the near term, substantive harmonization of issues relating to the drafting and examination of patent applications • SCP will review, in November 2001, whether additional issues should be included

  18. Next Steps - Other Issues • Work-sharing, Full Faith and Credit • Work-sharing - benefits of IPDLs • Work of SCP critical to “full faith and credit” effort so that offices may confidently rely on work by other offices • The “Global” Patent • Rights of inventors recognized without having to seek patent protection in each of the countries of the world

  19. Conclusions • Conclusion of PLT - first step down the road to global patent reform • Next Steps • PCT Reform • Substantive harmonization • Work-sharing and full faith and credit • Result - major overhaul and convergence of the world’s patent systems - the global patent

  20. Thank You

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