Significant changes to PCT Chapter I & II procedures went into effect on January 1, 2004. The changes apply to PCT applications filed on or after January 1, 2004. The changes affect the scope, timing, and secrecy of the International Search Report (ISR). Moreover, the changes affect the Chapter II demand deadline and restrict the ability of an applicant to present positions in favor of patentability at the international stage unless a Chapter II demand is filed.
PCT Chapter I Changes
Prior to Jan. 1, 2004, the International Searching Authority (ISA) designated by the applicant issued an ISR identifying prior art that might impact on the patentability of PCT patent application claims. The ISR did not include an opinion regarding the patentabilty of any PCT application claim. The ISR was published along with the PCT application about 18 months from the application priority date.
Under new PCT Rule 44, the ISR will go further. Not only will the ISA identify pertinent prior art in the ISR, it will also issue a written opinion regarding the novelty, inventive step (obviousness), and industrial applicability (usefulness) of the application claims. The ISR and written opinion will be transmitted to the applicant, but the written opinion will not be published at 18 months with the international application. Indeed, the written opinion will be kept confidential and unavailable to the public until the expiration of 30 months from the application priority date.
The right of an applicant to respond to the ISR and written opinion will depend upon whether the applicant chooses to file a Chapter II demand.
If a Chapter II demand is NOT filed:
- The applicant has the right to submit amendments to the claims under PCT Article 19.
- The applicant does not have the right to amend the specification or drawings.
- The applicant does not have the right to file amendments or present arguments in favor of patentability and have them considered by the ISA.
- The applicant may submit “informal” comments and arguments in favor of patentability that will be transmitted to the Designated Offices (DO) but that will not be delivered to nor considered by the ISA
- If no Demand is filed, the written opinion established by the ISA will be converted into an “international preliminary report on patentability” that will be transmitted to DO’s on a date no earlier than 30 months from the earliest claimed priority date - unless the applicant requests an earlier transmittal.
If a Chapter II demand IS filed:
- Unless the IPEA states otherwise, the written opinion established by the ISA will generally be used by the International Preliminary Examining Authority (IPEA) and issued as its own first opinion.
- The applicant will be given an opportunity to file amendments to the description, drawings as well as to the claims under Article 34. Any arguments traversing the written opinion will be considered by the IPEA.
- The IPEA will issue an International Preliminary Report of Patentability (IPRP) about 28 months from the earliest claimed priority date. The IPRP will be transmitted to the DO’s, but not before the expiration of 30 months from the earliest claimed priority date.
- The IPRP will not be publicly available until after 30 months from the earliest claimed priority date.
Chapter II Demand Timing
The transmittal date of the new ISR and written opinion may vary. Therefore, the applicant will be given until the later of (1) 22 months from the priority date; or (2) three months from the transmittal date of the ISR to file a Demand for Chapter II examination.
A Demand must still be filed within 19 months from the earliest claimed priority date if the applicant wishes to postpone entry into the national phase in one of the few elected counties that have not withdrawn their requirement for such a demand in order to extend the national phase filing deadline from 20 to 30 months from the earliest claimed priority date.
Since the deadline for filing a Chapter II demand can vary depending upon the circumstances of each application, you should consider docketing the demand filing deadline at both 19 months - the demand deadline if the PCT application designates countries that have not waived the demand requirement; and at 22 months - the earliest deadline for filing a demand to provoke the issuance of an opinion from the IPEA.
Chapter II Demand Considerations
The decision whether or not to file a demand for Chapter II examination will likely depend upon (1) the results of the ISR and written opinion; and (2) whether or not the application designates countries that have not opted out of the demand requirement. More importantly, if may be beneficial to file a Demand where the applicant wishes to use the international preliminary examination stage to obtain a positive IPER before proceeding to the national stage. Obtaining a positive IPER can reduce prosecution costs and accelerate patent issuance in the national stage.
More information about these PCT rule changes can be found at http://www.wipo.int/pct/en/. A list of the countries that have not waived the Chapter II demand requirement can be found at http://www.wipo.int/pct/en/texts/reservations/res_incomp.pdf.
Please e-mail Blair Hughes of McDonnell Boehnen Hulbert & Berghoff at Hughes@mbhb.com with any questions that you might have about these materials.
The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.
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