Review of Effect in Reform of PCT
September 24, 2004 (Rev.0)
Review of effect in reform of PCT
Takao Ochi (Japan)
Member of Patent Committee
Introduction
The committee of reform of the PCT was first held in WIPO on May 2001, and a great number of discussions were conducted by the working group. As a result, a number of significant changes/new system have already been adopted and come into force.
Now, it's a good time to review and discuss the effects in the reform of the PCT.
The modification of the PCT Article 22(1) can be interpreted as one of the significant changes in the PCT system. According to the modification of the PCT Article 22(1), the 30-month time limit from the priority date is applied irrespective of whether a demand has been filed by 19-month from the priority date or not. Therefore, a ratio of filing of a demand would be expected to be greatly reduced in comparison to 80% in the case before modifying the PCT Article 22(1).
Merits and demerits of ISO
In view of the above situation and the improved coordination of the international search and international preliminary examination as well, the enhanced international search and preliminary examination system has been adopted, so that an international search opinion (ISO) which is analogous to a written opinion in the international preliminary examining procedure is issued at the same time the international search report is issued.
It seems that an ISO would be helpful to applicants and designated offices, in particular to small offices in one hand because the ISO includes a written opinion concerning whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable. On the other hand, for applicants who do not wish to receive any written opinion concerning such patentability, the ISO would have a possibly unilateral character of international searching authorities. Because, although the applicant is able to submit comments on the ISO to the International Bureau, such comments by the applicant is nothing but informal basis and is not provided in the regulations. This may result in burden to the applicant because the applicant must file a demand even if the applicant did not wish to receive an international preliminary examination report (International Preliminary Report on Patentability (Chapter II) so as to prevent the Examiners of some designated office from taking a position based on the unilateral opinion of the international searching authority by submitting arguments and amendments in the proceedings of the international preliminary examination. We all understand that any designated offices are not bound to the ISO but applicants will still have great concern on how the ISO has influences on the national prosecution on some designated offices. Actually, there is a fact that the international search report by the ISA must be established together with the ISO within three months. Under such busy circumstances, there are raised questions of whether the Examiner is able to fully understand the subject matter of the claimed invention without any communication or dialog with the applicant, whether the Examiner's opinion indicated on the ISO is appropriate in connection with the claimed invention, whether the level of an inventive step to be applied is practically unified over all ISAs although the level of an inventive step is theoreticallystandardized, etc. In another point of view, a first written opinion provided for in the PCT Article 34(2)(c) reminds us of the fact that functions as a safeguard so as to prevent undesirable international preliminary examination report from being established without communication with the applicant. If the ISO containing negative indication by the Examiner was treated as though an IPER in some designated offices, the applicant may suffer undesirable situation and the PCT system may be no longer attractive for the applicant.
Modification of International Preliminary Examination
--Further Written Opinion--
The PCT Rule 66.1bis (a) newly added provides as the written opinion established by the International Searching Authority under Rule 43bis.1 shall be considered to be a written opinion of the International Preliminary Examining Authority. According to this rule, the IPEA can establish the International Preliminary Examination Report without issuing further written opinion. In this regard, several non-governmental organizations including the APAA proposed in the second session of reform of the PCT held on May 2002 that the applicant should be guaranteed a second written opinion after filing a demand, that is in addition to the ISO. This proposal, however, was not adopted in the session because of the reason why the International Preliminary Examination Guidelines, which the IPEAs are obliged to apply and observe, provide for the issuance of a further opinion where the applicant made a serious attempt to respond to a (first) written opinion. Although we do not have any data that the applicant has suffered serious disadvantages on this matter, I believe that it is necessary to add the above-mentioned proposal into the PCT Regulation so that the International Preliminary Examination should move toward more attractive system for users.
Reconsideration of Time Limit for International Preliminary Examination----Need Flexibility--
The time limit for International Preliminary Examination provided for in Rule 69.2 should be reconsidered under the circumstances where the 30-month time limit is applied irrespective of demand and therefore the applicant wishes high quality of the IPER rather than buying time as in the previous situation. In any events, an ISO that contains the Examiner's opinion concerning novelty, inventive step and industrial applicability of the claimed invention is issued in the PCT chapter I. Therefore, the applicant has at least information concerning possibility of a patent in each designated office. Under those circumstances, one of reasons why the applicant files a demand is to desire receiving more detailed thinking or opinion by the Examiner by means of more closer communication between the IPEA and the applicant so as to enhance the possibility of patents in the elected offices with spending time and costs as minimum as possible.
Therefore, I believe that it's a good time for reconsidering the International Preliminary Examination to move toward more sophisticated system for users.
Matters to be discussed in the Committee
In view of the foregoing, I would like to propose followings matters to be discussed in the committee.
(1) Merits and Demerits of ISO
How does an ISO have influences on the national prosecution?
(i) What are merits and demerits of an ISO for applicant (user)?
Is an ISO helpful for you as a representative to prosecute the PCT application in your patent office as a designated office?
(ii) What are merits and demerits of an ISO for designatedoffice?
Does an ISO expedite prosecution of the PCT application in your patent office? Otherwise, is there any possibility that an ISO will become any bar to expediting of an issuance as a patent in your patent office?
(iii) Should the applicant's comment to an ISO be formally provided in the PCT regulations?
(2) Modification of International Preliminary Examination
(i) Whether further (second) written opinion should be guaranteed in the case where the applicant filed an amendment?
(ii) Whether 6-month time limit for International Preliminary Examination is sufficient or more flexibility should be introduced?
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