INTERNATIONAL TREATIES
PCT
Changes in respect of PCT applications filed as of 1 January 2004
As part of the ongoing reform of the PCT a number of changes agreed upon by the PCT Assembly will take effect as from 1 January 2004. The most significant changes in so far as they affect the EPO as PCT Authority and designated or elected Office are summarised below. For a complete synopsis of the rule changes see PCT Newsletter 10/2002 and 10/2003 and WIPO website www.wipo.int.
Enhanced international search and preliminary examination
For all PCT applications filed as from 1 January 2004 an enhanced international search system will apply. Besides the current international search report (ISR), the International Searching Authority will issue an "international search opinion", ie a preliminary non-binding written opinion on the issues of novelty, inventive step and industrial applicability (WO/ISA - Rule 43bis PCT). The enhanced international search system is governed by Chapter I of the PCT. The WO/ISA will be prepared at the same time as the ISR for delivery to the applicant and the International Bureau of WIPO, however while the ISR will be published together with the international application at 18 months from the priority date, the WO/ISA will not be published; rather if no PCT Chapter II demand is filed, it will be communicated to the designated Offices by the International Bureau as an "international preliminary report on patentability" (IPRP Chapter I - Rule 44bis PCT); it will be made available for public inspection at 30 months from the priority date by the International Bureau (Rule 44ter PCT and Rule 94.1(b) PCT) and, subject to national law, by the designated Offices. In content the WO/ISA is intended to be similar to a current detailed written opinion under PCT Chapter II (see OJ EPO 11/2001, 539)1.
The aim of this new procedure is to bring forward a report akin to the present preliminary examination report thus allowing the applicant to assess at a much earlier stage whether to proceed to national/regional phase entry. However, the applicant's right to file a PCT Chapter II demand remains intact. The time limit for filing a demand is 3 months from the issue of the ISR and WO/ISA or 22 months from the priority date whichever is later (Rule 54bis PCT). In contrast to the procedure under PCT Chapter I which provides no opportunity for dialogue between applicant and ISA (except the opportunity to present "informal" written comments to the International Bureau if so desired - no express provision for this is made in the PCT Regulations), the applicant has the right under Article 34 Rule 66.1 and Rule 66.1bis PCT to submit arguments and/or amendments in response to the WO/ISA within the same time limit as that for filing the demand (see also Rule 66.4bis PCT). A written opinion prepared by the EPO as ISA will be considered as first written opinion under PCT Chapter II before the EPO as IPEA. Whether a further written opinion is issued before establishment of the IPER is entirely at the discretion of the EPO. The IPER will continue to be established at around 28 months from the priority date (Rule 69 PCT) and will be communicated by the International Bureau to all elected Offices as an "international preliminary report on patentability Chapter II" (Rule 70 PCT) at 30 months from the priority date.
Streamlined designation system
The revised designation system provides that on filing the international application the applicant obtains automatic all inclusive coverage of all designations available under the PCT including all types of protection and national/regional protection without the need to designate individual contracting states (Rule 4.9 PCT). The right to withdraw individual designations will remain. A similar provision for elections under PCT Chapter II has been introduced, ie all eligible states will be considered elected on filing a demand (Rule 53.7 PCT).
Flat international filing fee
The current basic fee and designation fees are to be abolished and replaced by a flat international filing fee2 which will include the prescribed fee for every designation. The amount of the flat international filing fee has been set at CHF 1400.
Powers of attorney - waiver
The EPO will, pursuant to new rule 90.5(c) PCT, waive the requirement under rule 90.5(a)(ii) PCT that a copy of any general power of attorney be attached to the request, demand or separate notice. The EPO will also, pursuant to rule 90.4(d) PCT, waive the requirement under rule 90.4(b) PCT to submit a separate power of attorney.