The purpose of my presentation is to consider the effects of the recent. changes to the PCT, and the proposed changes that have been suggested for the

Transcription

1 Tony Rollins, Chartered Institute of Patent Agents The purpose of my presentation is to consider the effects of the recent changes to the PCT, and the proposed changes that have been suggested for the future. Now, clearly, this is important for the future operation of the PCT, particularly as most users of the PCT system are also third parties, at one time or another. The challenge, in my presentation, is to try and do it in 10 minutes without repeating what everybody else has said already. So here goes. Many, if not all, of the recent amendments to the PCT are user-friendly, as we ve discussed previously. But are they third party-friendly? What are third parties looking for? Well, third parties appreciate greater certainty in relation to potential validity of their competitors patent applications. Now what I d like to consider is: do the changes to the PCT and the proposed changes actually give this. One of the changes that we have heard mentioned before is the overhaul of the designation system and the introduction of a flat fee. As we know, it puts off designation of the countries you want until the national phase. Most large companies would have probably designated all countries in the past anyway, and similarly, in my experience, most universities tend to do that. However, in 2002, 19 percent of applicants still did not designate all states. And going back through the PCT WIPO reports for the past few years, it looks as if year about an

2 additional 10 percent of applicants have decided to designate all states. So, it would be interesting to know if that 19 percent of applicants is SMEs, or whether it s people who don t understand the system, or, alternatively, whether it is simply people, as somebody said, who are buying time, because they wanted 30 months in which to decide where they wanted to file. Now, to my opinion, the overhaul of the designation system and introduction of a flat fee is going to have probably minimal effect on third parties, as most companies, our competitors for example, would designate at least the U.S., Europe and Japan anyway, and these are the key markets. A second change we ve heard discussed is the enhanced international search and preliminary examination. With the introduction of the 30-month term for entering a national phase from Chapter I, WIPO anticipated many applications would enter national phase without the IPER. It proposed amendments therefore to the PCT so that a written opinion is effected in Chapter I. Now I think as the previous speakers also mentioned, that this should result in less clearly invalid cases going into the national phase. However, amendment before entry into the national phase is less likely, than it would have been otherwise. On balance, I would say that the changes will have a positive effect. I ll just mention the increase in number of the international search authorities. Well, I think this is both a good thing, and potentially a bad thing. It s

3 a good thing because it spreads expertise across patent offices throughout the world, but it could be a bad thing because it becomes more difficult to ensure the quality of the search and the examination procedure, and to get consistency between the ISAs. There is a clear need for consistency and harmonization across the searching authorities to ensure the reliability of the search reports that third parties require. Now there are proposals currently under consideration that should assist this, including that from the U.K. Patent Office on the common quality framework. Again, this has been mentioned already by one of the previous speakers, and I notice there is a paper on this in the pack coming out from FICPI. The benefits of a common quality framework are that consistent search and examination reports would clearly be a benefit. However, there aren t proposals for harmonization in the U.K. proposal, and the proposals for external review were deleted, my understanding is that this was because of opposition from the international searching authorities. However, if we can have a common quality framework, this should increase the confidence of the national offices and the general public in the work product of the ISAs. This, in turn, should enable less duplication of effort, and the national offices would be able to reduce their backlog. Patents should therefore be granted quicker, as there s more reliability in the search reports. This helps create less uncertainly and is therefore a benefit to third parties.

4 Secondly, the proposals put forward on patent examination should be a benefit to SMEs, either as applicants or as third parties, if we can ensure, as is proposed in the U.K. proposals, that only important objections are raised, the objections and explanation are in a straightforward language, and the applicant must either amend or argue the objection. A simple denial of the objection from the applicant would be insufficient. There are also a number of other proposals for amendment, which include proposals on search quality, for example, those from Holland and the U.S. In particular, the proposal from the U.S. that the ISAs should be consolidated and/or regionalized. That clearly would help giving greater consistency and a better standard. Similarly, the central availability of status information on entry into the national phase is proposed by France would benefit third parties. The proposal from the U.S. to defer entry into the regional phase would clearly be adverse to third party interests, because it would increase uncertainty. And, again, the restoration of the right of priority to take the PCT into alignment with the PLT would not be in the interest of third parties. Finally, allowing elected offices to obtain examination results from elsewhere, a proposal from India, could benefit third parties.

5 In conclusion, the implemented changes probably are neutral for third parties. I wanted to be fairly controversial, so I said they don t benefit third parties in my slide, but I think, at the end of the day, they re probably neutral. However, some of the proposed changes could well be a benefit, particularly those that are concerned with improving the quality of search and examination. It is my believe, therefore, that the common quality framework should be supported, and if possible, we should have some external system for monitoring the quality of the searching authorities. If the various improvements are pursued, then this will be a benefit. If they re not, then I believe the reputation of the PCT will suffer. Thank you very much. (Applause)