PCT REFORM: Why It Is Needed and What Lies Ahead Charles A. Pearson Director Office of PCT Legal Administration

Overview The Need for Worldwide Patent Reform Patent Reform Progress to Date Next Steps Toward Patent Reform Conclusions

Need For 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 Calls for cost reduction, simplification and streamlining Integration of electronic filing, processing and communication efficiencies

Patent Reform Progress To Date Paris Convention - March 20,1883 The current Patent Cooperation Treaty - June 19,1970 Regional arrangements - EPO, EAPO, ARIPO and OAPI Recently concluded Patent Law Treaty - June 2, 2000

Next Steps PCT reform Convergence of national and international practices Substantive patent law harmonization Work sharing, full faith and credit The global patent

Next Steps - PCT Reform The United States circulated draft reform proposal September, Proposal had evolved sufficiently and was presented to the Assembly of the PCT Union for consideration –The proposal consisted of: 15 proposals to be accomplished in the next 5 years during a first stage of PCT reform; and 4 wider ranging proposals aimed at a more comprehensive second stage of PCT Reform

Next Steps - PCT Reform Member states decided to establish special body to consider proposals for PCT reform that would pursue the same objectives as those in first stage of US proposal The First Session of the Committee on Reform of the Patent Cooperation Treaty was held May 21 to 25, 2001 in Geneva

Next Steps - PCT Reform In addition to the US proposal, 21 additional proposals and resolutions addressing PCT reform were presented for consideration –The Committee focused its attention primarily on the 15 First Stage US proposals The Committee decided to form a Working Group to consider those proposals that met with a favorable consensus –Tasked with developing the necessary specific Article, Regulation, and procedural changes

Next Steps - PCT Reform 7 US proposals considered appropriate for consideration by the Working Group Elimination Of 20 Months Deadline; Elimination Of Demands; Combined Search And Examination; Elimination Of Designations; Conform Filing Date Requirements With The PLT; Conform Missing Part Requirements With The PLT; Other PLT Consistent Changes

EISR * PCT Reform - Possible Implementation Example Of US Core Proposals PCT FILED NAT. APP. FILED INT. APP. PUBLISHED EISR ISSUES ART. 34 REPLY IPER ISSUES NAT. STAGE ENTRY All States designated/elected Portion of Search/Examination fees due Only IA published at this time EISR = combination of current ISR and Written Opinion Sets 3 month period for reply IB to possibly publish If filed, ISPEA prepares IPER If filed, remaining S/E fees due If not filed, modified EISR will be IPER ISPEA issues IPER IB makes IPER available All apps. get 30 months *or later as provided under national law

PCT Reform - Filing Of International Application All applicants will automatically have 30 months to enter the national stage All States automatically designated/elected –Applicant may specifically exclude specific States from designation/election Filing fees due, including reduced Search/Examination fees, upon filing –The remainder of the Search/Examination fees will be required upon filing of a response to the Expanded International Search Report

PCT Reform - Publication Of The International Application International Application as filed will continue to be published at 18 months. If EISR is issued prior to 18 month publication of the IA, then any EISR publication will take place in conjunction with the 18 month publication.

PCT Reform - Expanded International Search Report EISR is envisioned as being a combination of the current International Search Report and the Written Opinion EISR will set a 3 month period for applicant to respond with an Article 34 reply Upon issuance of the EISR, the IB will publish either: –The Cited References page of the EISR; or –The full EISR If EISR issued early, then no EISR publication will occur prior to the 18 month publication of the IA

PCT Reform - Article 34 Reply Prior to the expiration of the period set in the EISR applicant may file a response under Article 34 –The reply is to be filed only in cases where applicant disagrees with the findings of the EISR –The reply should be accompanied by: The remaining Search/Examination fees due; and Applicants arguments against the reasoning in the EISR and/or amendments to overcome the references applied in the EISR

PCT Reform - International Preliminary Examination Report IPER will be issued by the ISPEA after expiration of the time period set in the EISR –If Art. 34 reply is timely filed, ISPEA will prepare IPER considering arguments and amendments submitted with the reply –If a reply is not timely filed, EISR information will issue as the IPER Upon issuance of the IPER, the IB will make the IPER available to all Offices

Next Steps - Other Issues Convergence of National and International Practices –Recently concluded PLT - incorporation of PCT form and content requirements –Consistency between a reformed PCT and the PLT –Objective - ability to prepare a simplified application in a single format, preferably in electronic form, that would be accepted by all patent offices as national/international application

Next Steps - Other Issues Substantive Patent Law Harmonization –Standing Committee on the Law of Patents met in November 2000 and May 2001 to consider further development of international patent law –SCP agreed to pursue, in the near term, substantive harmonization of issues relating to the drafting and examination of patent applications –SCP will review, in November 2001, whether additional issues should be included

Next Steps - Other Issues Work-sharing, Full Faith and Credit –Work-sharing - benefits of IPDLs –Work of SCP critical to full faith and credit effort so that offices may confidently rely on work by other offices The Global Patent –Rights of inventors recognized without having to seek patent protection in each of the countries of the world

Conclusions Conclusion of PLT - first step down the road to global patent reform Next Steps –PCT Reform –Substantive harmonization –Work-sharing and full faith and credit Result - major overhaul and convergence of the worlds patent systems - the global patent

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