VIEWS ON THE NEW INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY PROCEDURE MERGER OF PCT CHAPTERS

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VIEWS ON THE NEW INTERNATIONAL PRELIMINARY REPORT
ON PATENTABILITY PROCEDURE (MERGER OF PCT
CHAPTERS I AND II) ADVANTAGES, PROBLEMS AND
FUTURE OPPORTUNITIESRICK D. NYDEGGERPRESIDENT-E
LECT AMERICAN INTELLECTUAL PROPERTY LAW
ASSOCIATIONNICE, FRANCE APRIL 9, 2003
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From the Users Perspective, What Are the Goals
That the PCT System Should Strive to Achieve?

• On One Level, A Single, Standardized Procedure
  for
• Filing
• User friendly electronic filing that permits
  national/region stage entry using the same
  electronic application filed in the PCT, and
  elimination of specialized forms for
  national/regional stage entry as much as possible
• Simplification and flexibility in regard to
  filing formalities simplification and reduction
  of fees, ease and availability of priority
  documents, designation and election procedures,
  relaxation of signature and other filing
  requirements
• Searching the Prior Art
• Uniformity of quality, e.g., a common,
  standardized database of prior art from at least
  the tri-lateral offices, with a common
  classification system, search engine and
  standardized search strategy requirements
• Timeliness of search results

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From the Users Perspective, What Are the Goals
That the PCT System Should Strive to Achieve?

• On Another Level, Increased Harmonization of
  Substantive Patent Law and the More Timely
  Issuance in the Member States of Patents of
  Higher Quality
• By facilitating better work sharing, and hence
  more timely substantive examination in the member
  states
• Through continued efforts on PLT and SPLT, and by
  eliminating as much inconsistency as possible
  between the PCT Treaty, PLT and SPLT
• By eliminating/avoiding inconsistent versions of
  the PCT Treaty and using the current treaty to
  accommodate PCT reform as much as possible

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How Well Does the Current PCT Reform Effort In
Merging Chapters I and II Meet These Goals?

• The new International Preliminary Report on
  Patentability (IPRP) represents a critically
  important first step toward realization of many
  of these goals.
• Immediate advantages of merger which may be
  expected
• Better search results, focused more directly on
  the relevant claimed invention this will aid
  users in making more timely, more informed
  decisions about whether to pursue protection
  given anticipated scope of protection
• Upon regional/national stage entry, more complete
  information available to competitors and the
  public in general this will aid competitors and
  the public in analyzing potential risk of
  infringement, so as to avoid infringement and
  reduce the potential for costly litigation
• Better work sharing and hence more timely
  issuance of patents in the member states upon
  regional/national stage entry

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What Are the Problems That Still Confront Merger
and Prevent It from Realizing More Fully the
Desired Goals?

• Quality Standards for search and examination are
  needed currently no means to insure uniform
  quality from all Authorities
• UK proposal to establish a quality framework is
  important first effort toward search
  examination guidelines and a quality review
  system
• Quality Standards are critical to expanding the
  PCT search capability, increasing
  decentralization so as to avoid burdening
  individual ISAs, and insuring ongoing timeliness
  of search results for member states

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What Are the Problems That Still Confront Merger
and Prevent It from Realizing More Fully the
Desired Goals?

• Need for Further Effort to Insure Timeliness of
  the ISR/IPRP
• Unity of Invention Issues need for more
  efficient resolution of protests to eliminate
  causing search delays need for effective
  handling of complex applications (biotech) (unity
  of invention must be established to properly
  search and apply prior art)
• Priority Issues arising from conflicting rules
  currently the IPRP should be established between
  9 16 months, but applicant currently has up to
  16 months to make corrections or additions to
  priority claim (priority must be established to
  properly search and apply prior art)
• Efforts by some member states to extend the time
  limits for searching because of work loads
  undercuts timeliness better solution is improved
  Quality Standards and decentralization, as noted
  above

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What Are the Problems That Still Confront Merger
and Prevent It from Realizing More Fully the
Desired Goals?

• Need for Better Infrastructure to Support Merger
• Need for establishment of a common, standardized
  database containing prior art from at least the
  tri-lateral offices, a common classification
  system and a common search engine for accessing
  the database
• Need to establish a common database for cases
  entering the regional/national stage to let
  competitors and the public know when and where
  protection is being sought

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What Are the Problems That Still Confront Merger
and Prevent It from Realizing More Fully the
Desired Goals?

• Need for at least minimal harmonization of key
  issues to support effective merger
• Definition of prior art
• Definition of standards for determination of
  patentability, on matters such as
  obviousness/inventive step

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The new merger procedure for Chapters I and II is
potentially the most significant change in PCT
procedure to come along since the PCT was first
instituted. Realization of the potential of
that change for driving a standardized filing and
search procedure that will truly result in the
realization of i) improved work sharing, and
ii) issuance in the member states of better
quality, more timely patentswill depend on the
level of resolve to see that the additional
reforms are put into place that are needed, as
noted above. If there is a silver lining to
the current crisis created by the backlog of
cases now pending in the major IP offices of the
PCT member states, perhaps it is that that crisis
will fuel the resolve to make sure that this
reform effort does not fail.
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THANK YOU!