by
Alexander R. Schlee
Viering, Jentschura &
Partners, L.A. Office
Many changes will come at the beginning of 2004. The following represents a selection of the most important changes. More details can be found in WIPO's PCT Newsletter (www.wipo.org/pct/en/newslett). This article discusses changes announced in the November 2003 PCT Newsletter.
New PCT Request and Chapter II Demand forms
· Beginning January 1, 2004, new forms can be downloaded from http://www.wipo.org/pct/en/forms/index.htm
Automatic designation of all countries and all types of protection
· There will be no possibility to opt out from the designation of specific countries other than from Germany, Korea and the Russian Federation. By separate withdrawal notice it is be possible to withdraw any designation simultaneously when filing the PCT application. The USPTO and WIPO are still working on a solution for withdrawal of the U.S. designation without the need for signatures from the inventors.
· Without express indication, all available types of patent or utility model protection or national and regional protection are covered by the automatic designation.
· An express indication of a parent application or patent should be made when filing the PCT application if the relation to the parent is one of the following: application for a patent of addition, certificate of addition, inventor’s certificate of addition, utility certificate of addition, continuation or continuation-in-part application.
EPO again ISA and IPEA for all applicants and in all “technical” fields
· U.S. applicants will have the option again to use the European Patent Office (EPO) as International Search Authority (ISA) or International Preliminary Examining Authority (IPEA) in the field of biotechnology from 1 January 2004 and as IPEA in the field of telecommunications from 1 July 2004. Business methods will continue to be excluded as “non-technical” by the EPO.
New Chapter II Demand deadline
· The new term for filing a Chapter II Demand will be 22 months from the oldest priority date or 3 months from the date of transmittal of the International Search Report (ISR) or declaration that no ISR will be prepared, whichever term expires later.
New ISR and IPER
· All PCT applications filed on or after 1 January 2004 will receive a combined ISR and Written opinion called “international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty)”. This Written Opinion will be used as a first Written Opinion by IPEA unless IPEA notifies WIPO to the contrary. The IPER will change its name to “international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)”
New fees
· When using WIPO as Receiving Office (RO): 1,400 Swiss Francs filing fee. For Chapter II Demands 200 Swiss Francs handling fee (in addition of fees charged by the IPEA). For fees at other ROs see applicants guide at http://www.wipo.org/pct/guide/en/index.html
PCT-SAFE substitutes PCT-EASY
· The new software can be downloaded from www.wipo.int/pct-safe/en. Fee reductions apply for filing a PCT application with PCT-SAFE