1. PCT Reform - FICPI views Jan Modin Chair, FICPI CET Group 3 PCT Reform - FICPI views Jan Modin Chair, FICPI CET Group 3 Colloquium on PCT –Nice, 9 April 2003 Jan Modin, European Patent Attorney, Ehrner & Delmar Patentbyrå AB, Stockholm Ehrner & Delmar Patentbyrå AB, Stockholm FICPI

2. Jan Modin FICPI CET GROUP 3 2 New Search and Examination System January 2004 ISR and 1st written opinion ISR and 1st written opinion Demand at 22 months Demand at 22 months (+3 months) (+3 months) National/Regional entry 30/31 months even without demand National/Regional entry 30/31 months even without demand Why file demand? Why file demand? FICPI

3. Jan Modin FICPI CET GROUP 3 3 Normal Situation ISR cites X and Y references 1st written opinion -expressly states: invention lacks novelty and inventive step -expressly states: invention lacks novelty and inventive step - contains reasoned statement supporting negative conclusion FICPI

4. Jan Modin FICPI CET GROUP 3 4 Applicant’s two options Let 1st written opinion stand Let 1st written opinion stand (possibly file comments) (possibly file comments) File demand File demand FICPI

5. Jan Modin FICPI CET GROUP 3 5 First option – no demand International Report on Patentability (Chapter I of PCT) = written opinion contains negative conclusion contains negative conclusion  sent to all designated offices FICPI

6. Jan Modin FICPI CET GROUP 3 6 First option - national entry before big office Starting point: report with negative conclusion and reasoned statement Applicant files arguments and amended claims arguments and amended claims Must convince examiner and reverse previous position FICPI

7. Jan Modin FICPI CET GROUP 3 7 First option – national entry before small office Starting point: report with negative conclusion and reasoned statement report with negative conclusion and reasoned statement No examiner to argue with Wait for outcome at other offices FICPI

8. Jan Modin FICPI CET GROUP 3 8 Second option – demand I nternational phase prosecution cost-effective: Fee pays off National/regional prosecution greatly facilitated FICPI

9. Jan Modin FICPI CET GROUP 3 9 International phase – applicant’s situation today File demand and new claims distinguished over references cited in ISR, broad in scope Effectively two chances in 9 months period: Written opinion in many cases Written opinion in many cases Response with restricted claims, Response with restricted claims, conditional request for interview conditional request for interview Interview and agreement on acceptable claims Interview and agreement on acceptable claims FICPI

10. Jan Modin FICPI CET GROUP 3 10 International phase – applicant’s situation 2004 File demand, new claims and arguments to reverse negative written opinion Effectively one chance in 6 months: Informal notice by Examiner Informal notice by Examiner (normally not in written form) (normally not in written form) Interview and restriction of claims Interview and restriction of claims FICPI

11. Jan Modin FICPI CET GROUP 3 11 Internation phase – why more dialogue? Inherent right under Article 34 Inherent right under Article 34 Applicant has paid examination fee Applicant has paid examination fee Less workload at national offices Less workload at national offices Users will use PCT only if it works Users will use PCT only if it works Positive report vital for financial support from investors Positive report vital for financial support from investors Positive report vital for successful processing nationally and regionally Positive report vital for successful processing nationally and regionally Overall cost-effectiveness Overall cost-effectiveness FICPI

12. Jan Modin FICPI CET GROUP 3 12 International phase – what do users need (1) All PCT offices do search and examination: ISA and IPEA Initial search not sufficient Further BEST-like, flexible procedure: BEST early, why not BEST later too? FICPI

13. Jan Modin FICPI CET GROUP 3 13 International phase – what do users need (2) Further search efforts: Supplemental searches other geographical regions other languages Top up search prior patent applications published late FICPI

14. Jan Modin FICPI CET GROUP 3 14 International phase – what do users need (3) BEST: Bringing Examination and Searh Together A traditional working method at major patent offices (DE, US, JP) A traditional working method at major patent offices (DE, US, JP) Not only examination, but also further search: supplementary and top-up Not only examination, but also further search: supplementary and top-up Users have different needs Users have different needs FICPI

15. Jan Modin FICPI CET GROUP 3 15 Flexibility – various options for ”further processing” Applicant pays fee for further processing and opts for: Further search only Further search only Further search and examination Further search and examination Further examination only Further examination only FICPI

16. Jan Modin FICPI CET GROUP 3 16 Flexibility – various options for ”further processing” Option 1: Further searches only: Supplementary and top-up searches Supplementary and top-up searches Attractive to big companies Attractive to big companies First fee level First fee level FICPI

17. Jan Modin FICPI CET GROUP 3 17 Flexibility – various options for ”further processing” Option 2: Further search and examination with dialogue, compressed to 6 months: Attractive to all applicants that want broad geographical coverage in later national/regional phase applications Attractive to all applicants that want broad geographical coverage in later national/regional phase applications Primary examiner issues a second written opinion after obtaining further search results, expansion of first written opinion Primary examiner issues a second written opinion after obtaining further search results, expansion of first written opinion Second fee level higher than first fee level Second fee level higher than first fee level FICPI

18. Jan Modin FICPI CET GROUP 3 18 Flexibility – various options for ”further processing” Option 3: Further examination only, with dialogue: Attractive for all applicants when initial search has revealed very pertinent prior art (small chance to find better references) Attractive for all applicants when initial search has revealed very pertinent prior art (small chance to find better references) Applicant uses fall back positions to restrict scope of claims when filing demand Applicant uses fall back positions to restrict scope of claims when filing demand Third fee level lower than second fee level Third fee level lower than second fee level FICPI

19. Jan Modin FICPI CET GROUP 3 19 PCT Search and Examination FICPI Conclusions High quality PCT search program most important High quality PCT search program most important Right to a dialogue Right to a dialogue Flexibility with options Flexibility with options Workload, Certainty, Costs Workload, Certainty, Costs FICPI

20. Jan Modin FICPI CET GROUP 3 20 PCT Reform FICPI views Thank you Thank you jan.modin@ jan.modin@ ehrner-delmar.com ehrner-delmar.com FICPI