VIEWS ON THE NEW INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY PROCEDURE (“MERGER OF PCT CHAPTERS I AND II”): ADVANTAGES, PROBLEMS AND FUTURE OPPORTUNITIES RICK D. NYDEGGER PRESIDENT-ELECT AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION NICE, FRANCE – APRIL 9, 2003

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

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

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

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

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

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

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

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 patents will 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.

THANK YOU!