Problems and Advantages the PCT has for Offices the Need for Further Reform

1
Problems and Advantages the PCT has for Offices
the Need for Further Reform

• Lois E. Boland
• Administrator for External Affairs
• United States Patent and Trademark Office

2
The PCT Problems and Advantages

• Duplication of processing among IB, ROs,
  Authorities and national offices
• Need for simplification and streamlining
• Need for uniform electronic filing solution
• Filing levels and workload issues
• Need to facilitate work sharing

3
The PCT Problems and Advantages

• Compatibility with Patent Law Treaty
• Integration and convergence of national and
  international practices
• Timing issues for Chapter I search/examination
  in 30 month period
• Rule changes vis-à-vis treaty articles
• Cost and quality issues

4
PCT Reform - Background

• 1999 - 2000 - United States circulated draft
  reform proposal
• September 2000 United States presented proposal
  to the Assembly
• Two Stages
• 15 first stage proposals to be accomplished in
  the short term
• 4 wider ranging second stage proposals aimed at
  overhaul of entire PCT system

5
PCT Reform - Background

• PCT Assembly Actions
• September 2001, adopted change in Article 22(1)
  time limit from 20 to 30 months
• September 2002, adopted proposals as recommended
  by the PCT Reform Committee
• Directed toward streamlining, simplification,
  workload reduction, and PLT compliance
• Further reforms are necessary to achieve even
  more efficient PCT system

6
Future PCT Reforms

• Outstanding Rule Changes
• Timing issues
• Electronic filing
• Restoration of the right of priority
• Formalities review
• Quality Initiative
• Article Changes
• Residence Nationality Requirement
• Claim Requirement

7
Future PCT Reforms (cont.)

• Convergence of National and International
  Practice
• Other Issues
• Fee Reductions
• Coordinate Patent Reform Efforts
• Work sharing
• New United States Proposal

8
Future PCT Reforms Timing Issues

• Conflict between current Rules and those coming
  into effect 01 January 2004
• PCT Rule 26bis Applicant currently has 16
  months from priority date to make corrections or
  additions to priority claim
• New ISA Written Opinion must be established
  between 9 and approximately 16 months from
  priority date
• New Opinion must take into account priority date

9
Future PCT Reforms Timing Issues (cont.)

• Authorities having difficulty meeting current
  search time limit
• Unity of invention issues
• Resolution of protests causing search delays
• Sequence listing issues
• 50 of cases filed without proper listing
• Several invitations necessary before acceptable
  listing filed
• Continuing workload/backlog issues

10
Future PCT Reforms Timing Issues (cont.)

• U.S. proposal for May 2004 Working Group
• Search Report and Written Opinion to be
  established between 17 and 22 months from
  priority date
• Makes more effective use of entire 30 month
  period
• Eliminates conflict with existing time limits
• Allows sufficient time for search related issues
  to be addressed

11
Future PCT Reforms Electronic Filing

• Currently no single electronic filing system
• Efforts underway to establish common electronic
  solutions
• Standards for filing being established in the
  context of the PCT Administrative Instructions
• U.S. currently piloting e-Phoenix electronic
  image application processing system
• Adoption of system scheduled for Summer 2003
• Full implementation scheduled for 2005

12
Future PCT Reforms Right of Priority

• Reform necessary for compliance with PLT
• Provides for the restoration of the right of
  priority
• Ongoing Working Group consideration of issues
• Standard Due care vs. Unintentional
• Binding effect Procedural vs. Substantive

13
Future PCT Reforms Formalities Review

• Formalities review performed by ROs
• Identical review later performed by IB
• Unnecessary duplication of effort
• Waste of resources
• Needless expenditure of applicants fees
• Further streamlining of PCT necessary to
  eliminate duplicate work

14
Future PCT Reforms Quality Initiative

• Currently no means to insure uniform quality from
  all Authorities
• UK proposal to establish quality framework
• Quality standards in search examination
  guidelines
• Quality review system
• Increased confidence in the Authorities work
• Increased mutual exploitation of work product and
  work sharing by Authorities and Offices

15
Future PCT Reforms Residence Nationality
Requirement

• Article 11 requires residence or nationality in a
  contracting State
• Not a PLT filing date requirement
• Possible solutions
• Complete elimination Anyone may file
• Partial elimination Any resident or national of
  a contracting State may file in any RO
• Relocation Make the requirement an Article 14
  defect which is correctable

16
Future PCT Reforms Requirement for Claims

• Article 11 requires part which on its face
  appears to be a claim
• Not a PLT filing date requirement
• Article change is needed to remove this
  unnecessary filing date requirement and bring the
  PCT into compliance with the PLT

17
Future PCT Reforms National/International
Convergence

• Most PCT applications either preceded or followed
  by a national/regional application in the Office
  which serves as the Search and/or Examination
  Authority
• Large amount of duplicative processing
• Greatest efficiency and streamlining gains to be
  attained by simultaneous processing

18
Future PCT Reforms Other Issues

• Fee Reductions
• The United States continues to press for fee
  reform, resulting in reduced PCT fees
• At a minimum, an 8 reduction in fees paid to
  International Bureau will be sought
• Reduction should be reflected in new flat
  international filing fee
• United States proposal on PCT fees is in
  development

19
Future PCT Reforms Other Issues

• Coordinate Patent Reform Efforts
• In context of implementing the PLT, reforming the
  PCT, and drafting the SPLT, strive to keep all
  three treaties in agreement with each other
• Work sharing among offices for both national and
  international applications
• New United States Proposal
• New USPTO proposal for reform currently in
  development

20
Future PCT Reforms - Goal

• To facilitate and streamline the filing and
  processing of national and international patent
  applications, preferably in electronic form, in
  any office, with predictability of outcome on
  both formal and substantive matters

21
Thank you