Issue 82 | June 12, 2003
USPTO Proposes New�Rules for PCT
Starting January 1, 2004
 On May 30, 2003, the United States Patent and Trademark Office ("USPTO") announced proposed rule changes for implementing the revised Patent Cooperation Treaty ("PCT") Regulations that will take effect on January 1, 2004. The proposed changes will create a modified fee system, automatic and all-inclusive designations, relaxed identification and signature requirements, and an enhanced international search and preliminary examination process. Comments on the proposed rules must be received by the USPTO on or before June 30.

With regard to fees, the current "basic" and "designation" fees are being replaced with a single international filing fee. The new fee will have a first component for up to 30 sheets of paper and a second component for the remaining sheets over 30. Other fee changes include raising the surcharge for each additional invention from $210 to $1000 and increasing the search fee where there is no prior U.S. National application from $700 to $1000.

The automatic and all-inclusive designations will cover all Contracting States, regions and types of protection under the PCT. Similarly, the filing of a Demand for international preliminary examination will constitute the election of all designated States. Thus, the current procedures for precautionary designations/elections are being eliminated.

As a consequence of the automatic designation system, applicants/inventors will now have to be named in the international application. However, the Request needs to be signed by only one of the applicants and the required identifying information (address, residence, and nationality) need only be provided for one applicant who is entitled to file the application with the Receiving Office ("RO"). Thus, for the RO/US, this information must be provided for at least one applicant who is a citizen or resident of the United States.

The written opinion currently established by the International Preliminary Examining Authority ("IPEA") under Chapter II procedure will be added to the Chapter I procedure. The International Searching Authority ("ISA") will therefore be responsible for establishing a preliminary and non-binding written opinion on novelty, inventive step, and industrial applicability. If a Demand for international preliminary examination is not filed, then the written opinion of the ISA will form the basis for the so-called "International Preliminary Report on Patentability (Chapter I of the Patent Cooperation Treaty)," or "IPRP," by the International Bureau ("IB") on behalf of the ISA.

The time limit for filing a Demand for international preliminary examination will also change. Specifically, the Demand will have to be filed within the later of: (1) 3 months from issuance of the international search report and the written opinion of the ISA (or of the declaration under Article 17.2(a) where a search can not be made); or (2) 22 months from the priority date. However, applicants may still want to file the Demand within 19 months from the priority date in order to delay entry into the national stage for those few remaining Contracting States that have taken a reservation to the 30-month time limit in Article 22 of the treaty. Any arguments or amendments in response to the ISA opinion must be submitted within the time limit for the Demand in order to ensure consideration by the IPEA

If a Demand for international preliminary examination is filed without an Article 34 amendment, then the written opinion of the ISA will become the written opinion of the IPEA. If a Demand is filed with amendments, then the IPEA will issue a report entitled "International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty)." The IPRP will then be communicated to all designated Offices and made available for public inspection after the expiration of 30 months from the priority date.

For more background on this topic, "Basic Facts About the PCT" is available http://www.wipo.org/pct/en/basic_facts/basic_facts.pdf�and http://www.wipo.org/pct/en/treaty/about.htm. More�detailed information is�also available from�the "PCT Applicant's Guide" at http://www.wipo.org/pct/guide/en/index.html.

Please feel free to contact the author, Bill Heinze (billheinze@tkhr.com) at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia USA�to discuss your thoughts on these changes, or to suggest�other topics for future issues of this newsletter.

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.