Patent Cooperation Treaty Reform and Beyond

1
Patent Cooperation Treaty Reform and Beyond

• A United States Perspective
• American Bar Association
• 17th Annual Intellectual Property Law Conference
• April 11-12, 2002
• Lois E. Boland
• Office of Legislative and International Affairs
• USPTO

2
Overview

• PCT reform in the context of worldwide patent
  reform
• Background of current reform efforts
• PLT 2000
• PCT reform
• Next Steps substantive harmonization, WIPOnet,
  Trilateral, etc.
• Conclusion

3
Driving Forces for World-wide Patent 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
• Workload concerns at patent offices

4
Driving Forces for World-wide Patent Reform

• Calls for cost reduction, simplification and
  streamlining
• Integration of electronic filing, processing and
  communication efficiencies
• Integration of national and international
  processing
• Message received status quo is not an option
  reform is imperative

5
Background to Current Efforts

• Efforts to create a comprehensive patent law
  treaty date back a number of years
• Patent Cooperation Treaty in force and growing
  since 1978
• TRIPS Agreement established minimum standards for
  protection URAA
• AIPA
• PLT 2000 formalities treaty

6
Patent Law Treaty of 2000

• Discussions began at WIPO in 1995, Treaty
  concluded at Geneva in 2000
• 27 Articles and 21 Rules
• Governs the maximum formal or procedural
  requirements that may be imposed upon patent
  applicants and patentees.

7
Patent Law Treaty of 2000

• Filing Date must be given if applicant files
• (1) indication that elements are application
• (2) indications for identifying/contacting
  applicant
• (3) description or drawing in any language
• Application/communication requirements
• Representation issues
• Relief in respect of time limits, reinstatement
  of rights and restoration of priority right

8
Patent Law Treaty of 2000

• No formal requirements different from or
  additional to those in the Patent Cooperation
  Treaty may be imposed.
• Provisions articles and rules - cover wide
  range of formalities.
• Ratification and implementation packages
  currently under development in the United States.

9
Next Steps

• PCT reform
• Convergence of national and international
  practices
• Substantive patent law harmonization
• Trilateral Cooperation and WIPOnet
• Work sharing, mutual recognition and full faith
  and credit
• The global patent

10
PCT Reform

• United States Proposal for PCT Reform
• Results of the September 2001 PCT Union and
  November 2001 PCT Reform Working Group Meetings
• Current focus of PCT reform efforts

11
PCT Reform

• United States Proposal to Reform the PCT in
  PCT/R/1/2
• Stage 1 - Simplification of procedures and
  conformance to the PLT.
• Stage 2 - Comprehensive overhaul of the PCT
  system.

12
PCT Reform

• PCT Assembly in September 2000 decided to convene
  a Committee to Reform the PCT at WIPO, responsive
  to U.S. proposal.
• First Meeting of Reform Committee in May 2001
  results in formation of Working Group to consider
  technical issues and draft language. First
  meeting of Working Group held in November 2001
  next in April 2002.

13
PCT Reform

• Major elements of First Stage
• Elimination of designations
• Conforming filing date to PLT
• Elimination of 20-month deadline for national
  stage entry
• Elimination of demands
• Combination of search and examination

14
PCT Reform

• Time Frame -
• First Stage within next few years elimination
  of 20 month deadline adopted at PCT Assembly in
  September 2001.
• Second Stage - Longer term plan

15
PCT Reform

• Results of the 2001 PCT Union Meeting, the
  Assembly
• (i) unanimously adopted the modifications of the
  time limits fixed in Article 22(1) of the PCT
  from 20 months to 30 months for performing acts
  necessary to enter the national phase, and
• (ii) unanimously adopted the decisions relating
  to entry into force and transitional arrangements
  entry into force on April 1, 2002 for any
  international application for which 20 month
  period expires on or after that date, with
  transitional arrangements, as necessary.

16
PCT Reform

• Implementation in the United States of the 20 to
  30 month change for Chapter I processing
• USPTO published a final rule on January 4, 2002,
  to amend 37 CFR 1.494, effective April 1, 2002
  Federal Register Vol. 67, No. 3, page 520, et
  seq.
• Implementation in other contracting states

17
PCT Reform

• Other Assembly Actions
• Reduced fees by decreasing the maximum number of
  designation fees payable from 6 to 5, to enter
  into force on January 1, 2002
• Approved establishment of a working group on PCT
  Reform, first session Nov 2001
• Appointed the Spanish Patent and Trademark Office
  as an IPEA
• Approved text of amended Agreement between the
  EPO and the International Bureau

18
PCT Reform

• EPO-IB Agreement amendments - the EPO may, as of
  November 1, 2001,
• Cease acting as ISA/IPEA for certain
  international applications
• Limit the number of such applications or
• Limit the fields of such applications.
• EPO Notice - www.european-patent-office.org/epo/pr
  esident/e/2001_12_11_e.htm

19
PCT Reform

• EPO Notice EPO will not carry out -
• International search in respect of any
  international application filed on or after 1
  March 2002 by a national or resident of the
  United States where such application contains one
  or more claims relating to certain fields of
  biotechnology or business methods
• International preliminary examination in respect
  of any such application where such application
  contains one or more claims as above or relating
  to the field of telecommunication
• Initial duration of limitations will be three
  years

20
PCT Reform

• USPTO Notice in response to amended agreement
  between WIPO and EPO - http//www.uspto.gov/web/of
  fices/pac/dapp/opla/preognotice/epodoc.htm
• Impact at USPTO not yet known
• 20 to 30 month change may relieve some workload
  pressure on EPO

21
PCT Reform

• Focus at November WG and continuing focus
• Certain items from initial US proposal, with
  modifications per EPO proposal
• national stage entry at 30 months
• combination of search and examination - expanded
  international search report - EISR
• IPER triggered only if applicant responds to
  expanded international search report
• Implementation - integrated processing of
  national and international applications in the
  USPTO

22
PLT 2000 and PCT Reform

• Convergence of national and international
  practices
• 2000 PLT - incorporation of PCT form and
  content requirements
• Reformed PCT - among other changes,
  PLT-consistency
• Objective - ability to prepare a relatively
  simplified application in a single format,
  preferably in electronic form, that would be
  accepted by all patent offices as
  national/international application

23
Next Steps Substantive Harmonization

• November 2000, Standing Committee on Law of
  Patents resumes substantive harmonization
  discussion.
• Met May 14-19, 2001 and November 5-9, 2001 to
  discuss treaty drafts
• Next meeting May 2002
• All documents for SCP meetings available on
  WIPOs website

24
Next Steps Substantive Harmonization

• New approach - Deep Harmonization - for both
  law and underlying practice
• Determine the Best Practice involving drafting,
  filing and examination of patent applications.
• Goal is work sharing or mutual recognition
  among Patent Offices.

25
Next Steps Substantive Harmonization

• Success would allow applicants to draft a single
  application for use in multiple countries without
  amendment, with similar substantive results.
• Building on PLT 2000 and PCT Reform efforts
• First-to-invent vs. first-to-file issue not
  currently on the table
• USPTO/U.S. currently in preparation for May 2002
  SCP meeting which will consider new draft of
  treaty, regulations

26
Next Steps Trilateral Cooperation

• Trilateral Cooperation
• efficient exchange of information
• reduce duplication of effort, workload issues
  mutual exploitation with JPO
• TRI-Net
• common documentation resources and database
  search tools
• search and examination exchanges/studies

27
Next Steps - WIPOnet

• WIPOnet
• access to and exchange of IP information for all
  WIPO countries
• global cooperation
• benefits to smaller patent offices and offices in
  developing countries

28
Next Steps Mutual Recognition, etc.

• Work-sharing, mutual recognition, full faith and
  credit
• Work-sharing - benefits of IPDLs
• Work of SCP important to full faith and credit
  effort so that offices may confidently rely on
  work by other offices
• Sovereignty issues
• The global patent - rights of inventors
  recognized without having to seek patent
  protection in each of the countries of the world

29
Conclusion

• URAA and AIPA implemented
• Harmonization moving forward TRIPs, PLT 2000,
  PCT Reform, substantive talks at SCP
• Integration of national and international
  requirements and processing
• Benefits of electronic filing and processing
• Goal Global protection of patent rights by the
  overhaul and convergence of existing national and
  international systems

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Contact Information

• Office of Legislative and International Affairs
• [phone]
• USPTO
• www.uspto.gov