PCT Some New Developments 2006

www.smithmoorelaw.com

2006 Hot Topics and Updates for
Intellectual Property Paralegals
N.C. Bar Center, Cary, NC
Friday, Oct. 27, 2006

Patent Cooperation Treaty (PCT)
Some New Developments

Presentation by Stan Antolin
Smith Moore LLP
Greensboro, NC


Many Thanks to

Jay Erstling

Director, Office of the PCT

World Intellectual Property Organization


Patents


Paris Convention Timeline

Traditional Patent Systems

(months) 0
12 File
applications
abroad
File
applications
locally


Patent Cooperation Treaty (PCT)
Applications
• Postpone some foreign filing expense
• Multilateral treaty concluded in Washington in
1970 and entered into force in 1978.
• Administered by the International Bureau (IB)
of the World Intellectual Property
Organization (WIPO), headquartered
Geneva, Switzerland
• Online PCT Information
http://www.wipo.int/pct/en/index.html


PCT Timeline
PCT TIMELINE – Chapter II
(for international applications filed on or after 1 January 2004)

Early filing of demand**
International publication
National/Regional/
International search
PCT filing/
resort (ISR) and
(priority date)
Chapter II
written opinion
30 national
(WO) of ISA*
phase entry
PCT filing

0 12 16 18 19 22 28
(months)

IE communicales
2 months from ISR:
IPRF (Chapter II)
file claims amendments
to EOs
Filing of demand and Article 34
amendments and/or arguments***

IPRP (Chapter 1)
established


Contents

• Effect of the new search and examination
system introduced in 2004

• 2006 Rule changes

• 2007 Rule changes

• Changes under discussion


Effect of the New Search and
Examination System Introduced in 2004
Background

• First PCT Reform discussions started in 2000
on two main subjects
– overall and automatic designation system
– search and examination system
• Introduction in 2001 of single time limit for
national phase entry: 30 months
• First package of significant Rules changes
– adopted in October 2002
– entered into force on January 1, 2004


Is the New Search and Examination
System a Better System?
• Objective:
– To solve PCT workload problems and streamline the
system
• by reducing the demand for international preliminary
examination
• while still providing quality service to users
• Methodology:
– Amend the Regulations to mold and stretch the legal
framework
• but leave the Treaty intact
• Query: Does the new system meet its objectives?


International Search and Preliminary
Examination
- Overview of the Procedure -
Chapter I only

International
Written International Preliminary
Search
Opinion Report on Patentability
Report No
of the (IPRP ch.I)
ISA -established by IB-

ch.II
international
(month) 0 12 16 18 30
22 preliminary
examination
Priority PCT Publication
National
?
filing
28 phase
International Preliminary
Report on Patentability
Yes
(IPRP ch.II)
Chapter I and Chapter II
-established by IPEA-


PCT Growth
140000

120000

100000

80000

60000

40000

20000

0
2000 2001 2002 2003 2004 2005

2000 2001 2002 2003 2004 2005
Total IAs filed 93,240 108,231 110,390 115,198 122,607 134,073
Percent increase 16.1% 2.0% 4.4% 6.4% 9.4%


Country Ranking - 2005
Applications Growth

USA 45,111 3.9%
Japan 25,145 24.1%
Germany 15,870 4.3%
France 5,522 6.5%
United Kingdom 5,115 1.7%
Republic of Korea 4,747 33.5%
Netherlands 4,435 4.7%
Switzerland 3,096 6.9%
Sweden 2,784 -2.1%
China 2,452 43.8%


Top Applicants - 2005

1. Philips 11. Kodak
2. Matsushita 12. Honeywell
3. Siemens 13. Ericsson
4. Nokia 14. Samsung
5. Bosch 15. Procter & Gamble
6. Intel 16. Sony
7. BASF 17. Mitsubishi
8. 3M 18. Dupont
9. Motorola 19. Toyota
10. DiamlerChrysler 20. Thomson


Chapter II Demands
90000
80000
70000
60000
50000
40000
30000
20000
10000
0
1999 2000 2001 2002 2003 2004 2005

1999 2000 2001 2002 2003 2004 2005
Ch 2 Demand 56,610 67,831 80,922 80,806 64,905 42,051 24,900
Growth 19.8% 19.3% -0.1% -19.7% -35.2% -40.8%


International PCT Filings
http://www.wipo.int/pct/en/seminar/basic_1/


Electronic Filing and Processing

160000
140000
120000
100000
80000
60000
40000
20000
0
2001 2005
2003
2002 2004

Paper Only Easy+Paper E-Filing


USPTO EFS-Web PCT Filing Overview
Access EFS-Web
Access EFS-Web
As Unregistered
As Unregistered
User Filer
User Filer Choose
Choose
Accesses USPTO
Accesses USPTO PCT Filing
PCT Filing
Portal
Portal Authenticate Type
Authenticate Type
as
as
Registered
Registered
Filer
Filer

Attach PCT-SAFE
Attach PCT-SAFE
.ZIP File
.ZIP File
Submit and Pay
Form RO 101 Submit and Pay
Form RO 101 Review Attached Calculate Fees
Review Attached Calculate Fees Receive PCT number
Receive PCT number
Files (Optional)
Files (Optional) immediately
and/or immediately

Attach .PDF File
Attach .PDF File


International PCT Filings – Unregistered
Filer

Select Type of
Application

New Choice:
International PCT
filings


International PCT Filings – Registered
Filer

Digital Cert
Eastern Time
Authenticated
stated on
every page

New Choice:
International PCT
filings


PCT Application Data

Enter Key
Bibliographic
Data

Enter Applicant
Information

Enter Customer
Number for PAIR
Access


PCT Application Data

Correspondence
Address


PCT
Attach PCT-Safe Files - .ZIP

Bibliographic Data
Echoed Back to Filer

Attach a PCT-
SAFE .ZIP file


PCT
Attach Files - PDF

Attach RO 101 PDF’s in addition
to the .ZIP file or in lieu of .ZIP file

New Disclaimer
about Credit Card
form (PTO-2038)


PCT
Calculate Fees

Discount for using
EFS and PCT-SAFE


PCT
Confirm/Submit

Save Package before
submitting to USPTO

Confirm by clicking the
“Submit” button


PCT
Acknowledgment Receipt

Time and Date
Stamp in EASTERN
time

PCT application number
automatically issued


International Searching Authorities - 2005
ISA ISR/WOSA (%)
European Patent Office 64,146 49.3%
United States 25,583 19.7%
Japan 23,016 17.7%
Sweden 3,961 3.0%
Republic of Korea 3,357 2.6%
Australia 2,688 2.1%
China 2,474 1.9%
Canada 2,048 1.6%
Austria 976 0.7%
Spain 881 0.7%
Russian Federation 610 0.5%
Finland 426 0.3%


Contracting States

• Non-stop growth: over one million
applications
• Non-stop expansion: 132 Contracting States


Timeliness
21%
53%

26%

0-16 months 16-18 months
18 months or more

19-20 months 4%
0-16 months 53%
20-21 months 3%
16-17 months 14%
21-30 months 11%
17-18 months 7%
30+ months 3%
18-19 months 5%


2006 Rule Changes, Adopted in
October 2005
• Publication
– E-Publication
– Arabic, new publication language
– Publication of all declarations for national
phase purposes
• Designation system
– Exclusions to overall designation system


Electronic Publication Replaced Paper as
the Legal Publication
• Since April 1, 2006 (in practice, Thursday,
April 6)
• Full text of all international applications
• PCT Gazette
• Via WIPO’s new portal “PatentScope”
• Paper copies of published international
applications will continue to be sent to
applicants until end June 2006


http://www.wipo.int/pctdb/en/search-adv.jsp


Arabic Became New Official Publication
Language
Since April 1, 2006
• But applications will only be published as of October
2006

• Only for applications filed in Arabic at receiving
Offices accepting Arabic as a filing language

• For these applications, translation into a search and
examination language still required

• Change introduced at the request of Egypt


Publication of All Declarations for National
Phase Purposes
• Declarations for national phase purposes
– identity of the inventor
– right to file application and obtain a patent
– right to claim priority
– inventorship (for the US designation)
– non-prejudicial disclosures and exceptions to lack of
novelty
• Are all published with the full text of the applications
• Continue to be referred to
– on the front page of the published application and in
the gazette
• Effective April 1, 2006, regardless of date of
application filing date


Changes to Exclusions to Overall
Designation System
• Concerns the “self-designation” effect under certain
national laws
• Loophole existing in PCT Rule since 2004 now
closed
• Two conditions must be fulfilled
– priority application must have been filed in the country
to be excluded [this condition was missing from
previous wording of the Rule]
and
– designated Office must have notified WIPO
• Now, exclusion system applies to DE, JP, KR, RU


Exclusion system applies to DE, JP, KR, RU


2007 Rule Changes, Adopted in
October 2005
PLT-related changes
• Incorporation by reference of missing
elements of the application
• Restoration of priority rights
• Rectifications of obvious mistakes

Non PLT-related change
• Inclusion of Korean language patent
documents in PCT minimum documentation


Incorporation by Reference of
Missing Elements of the Application
• Missing elements or parts
– description, claims, drawings
• Three conditions
– elements or parts contained in the priority document
– incorporation by reference contained in the PCT
application
– incorporation by reference confirmed by filing a copy of
the document within the prescribed time limit
(2 months)
• International filing date will not be affected
• Some Offices have filed notifications of
incompatibility with their national laws and will not
be bound


Restoration of Priority Rights (1)
• PCT filing is
– more than 12 months after priority date
– but within 2 months of the 12-month period
• Priority claim to be maintained
– for all steps in the international phase
– for calculation of time limits
• Receiving and designated Offices will restore priority
claims
– on the basis of applicant’s request for restoration showing
(with evidence) either
due care, or
unintentionality
• Some Offices have filed notifications of incompatibility
with their national laws and will not be bound



If priority claim restored by receiving Office on the
basis of
• due care
– all designated Offices will have to recognize priority
claim unless they have notified incompatibility
• unintentionality
– only designated Offices which have not notified
incompatibility and which already accept such criteria
(or a more liberal one) will have to recognize priority
claim
• effects will therefore vary amongst designated
Offices



• If priority claim not restored by receiving Office
– either because request for restoration not convincing
on Office or because receiving Office refused to review
applicant’s request
– applicant must submit request for restoration to
designated Offices upon national phase entry
• Each designated Office will review request for
restoration (with evidence)
– on the basis of due care
– or unintentionality
– unless the Office has notified incompatibility


Rectification of Obvious Mistakes

• Determination of obviousness of mistake and of
rectification by “competent authority” and no longer
by “anyone”
• No external document other than the priority
document will be accepted as evidence
• New time limit of 26 months from the priority date
– for all types of mistakes
– in all types of documents (the application, etc.)
• Rule does not permit Offices to notify incompatibility
but any designated Office may disregard
rectification


Addition of Korean Patent Documents
to PCT Minimum Documentation
• At the request of the Republic of Korea
• Patent documents published by the Office (KIPO)
– Patents
– published patent applications
– English language abstracts of patents and patent
applications
– not utility models
• As for documents in Japanese, Russian or Spanish:
– Searching Authorities only obliged to include those
documents that have English abstracts


Changes Under Discussion

PCT Reform Working Group (8th session)
(May 8 to 12, 2006)
• Multiple language publication
• Supplementary international search
• “quality framework” for International Authorities
• Disclosure of traditional knowledge and genetic
resources
• Color drawings, font size
Also:
• Digital access service for priority documents (PCT,
• PLT, Paris)


very much

Thank you for your attention

Stan Antolin
Smith Moore LLP
300 North Greene Street
Suite 1400
Greensboro, NC 27401
336.378.5516 (voice)
336.433.7591 (direct fax)
stan.antolin@smithmoorelaw.com

PCT Some New Developments 2006

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