Background

At the PCT Assembly in September 2001, the PCT Article 22 was modified, with effect from 1 April, so that the Chapter I time limit is extended from 20 months to 30 months. However, as of January 2002, a number of countries had not yet adapted their national law. Therefore, a demand for international preliminary examination still has to be filed to enable national entry at 30/31 months in these countries.

The PCT Assembly also gave a mandate to a PCT Working Group to deal with three major aspects of PCT reform, as discussed below:

Coordination of Search and examination - Expanded International Search

Many developing countries had the understanding that the modified Art 22 time limit was coupled to an undertaking of the PCT authorities to assess all major criteria of patentability even under Chapter I of the PCT. In this way, these countries would obtain a basis on which to decide whether a patent should be granted or not country. So, there was a general agreement to go ahead with an expanded international search system, where the search examiner should not only search the application to find relevant prior art but also prepare a first opinion on the inventive step or non- obviousness of the claimed invention. Accordingly, under the proposed new procedure, the International Searching Authority (ISA) should issue an Expanded International Search Report (EISR) including an International Search Report (ISR) as well as an opinion on patentability, a so called International Search Opinion (ISO).

The EISR should be mandatory and be concluded within the current time frame, i.e. within about 16 months. However, since the applicant would have no time to comment on the Opinion (ISO) before publication, it was agreed that the ISO should be communicated to the applicant but not be published together with the application in the pamphlet at 18 months.

In case the applicant chooses to proceed with Chapter I, he can file comments on the ISO, make claim amendments, or do nothing. On the other hand, if he chooses to proceed under Chapter II, he will have to request IPE, pay the fee for IPE within a certain time limit, possibly comment on the ISO, and make amendments in the description and claims.

The International Patent Examination Authority (IPEA) would normally treat the ISO as the first written opinion. If the IPEA is not the same Office as the ISA, the IPEA would be entitled, but not obliged, to treat the ISO as the first written opinion. Then, the IPE procedure would progress as today, and an IPER would be issued and communicated the usual way.

Automatic Designation System

There was general agreement to establish an Automatic Designation System involving an automatic indication of all designations (and elections) possible under the PCT. There should be a single, "flat" international fee. However, the choice of which kind of protection was sought (patent or utility model) would be deferred to the national phase.

In order to cope with the problem of self-designations causing automatic withdrawal of an earlier application, especially in Germany and Japan, a reservation provision should be included which would enable applicants to exclude and/or withdraw the designation of such states.

PLT related changes

Basically, the provisions of the Patent Law Treaty of 2000 are only applicable to national/regional applications and the national/regional phase of PCT applications. However, some PLT provisions could preferably be implemented also in the international phase of the PCT system, such as:

• the requirements to accord a filing date (no claims)
  
  
• restoration of priority right under "unintentional" or "all due care" standard
  
  
• missed time limit for entering national/regional stage
  
  
• reference filings

Issues of concern to FICPI

The changes now being discussed in the PCT Reform Working Group give rise to concern for the users, applicants, third parties and their representatives, as regards a number of issues, which will have to be resolved shortly:

• should it be permitted to appoint different PCT authorities for EIS and IPEA?
  
  
• is the PCT application to be made publicly available after 18 months?
  
  
• should the applicant (or the International Bureau) be obliged to translate the comments on the ISO into another language?
  
  
• what is an appropriate time limit for initiating full IPE by paying a fee?
  
  
• does the automatic designation of all states affect the prior art effect of the PCT application?
  
  
• which standard shall be applied for restoring priority rights in a PCT application ("unintentional" of "all due care")?

The next Working Group meeting on PCT Reform will take place in the first week of May 2002, and it is likely that a number of rule changes (implementing the above changes) will be proposed to the PCT Assembly next September.