Monday, May 11, 2009

USPTO Reform at WIPO: New PCT Procedures Being Proposed for "PCT II"

At the May 2008 session of the Working Group, the International Bureau (IB) presented a paper titled "Enhancing the Value of International Search and Preliminary Examination Under the PCT" (PCT/WG/1/3), where the paper addressed shortcomings of the PCT to exploit work product of various offices. According to the group, worksharing would greatly assist in reducing the overall workload of patent offices worldwide through the use of the international reports either as the basis for grant or at least as the basis for an accelerated examination process.

In other words, the general idea is place greater weight on reports issued from the international/national stage so that a positive report would automatically indicate a potential patent grant in all member states, referred to as a "PCT II Patentability Report." After the report issues, national offices would have a specific period of time to issue a notification of refusal.

According to the report, the system

[W]ould result in an extremely high quality final work product that should be able to be heavily relied on, if not accepted, by national offices due to the fact that it is the result of a comprehensive search of multiple offices that incorporates prior art submissions by the applicant and third parties. It will have the additional confidence factor of being prepared in conjunction with the processing of the national application [in the issuing search office], thus resulting in either a patent grant or a final rejection in that office.

Some highlights of the system include:

(1) the combining of international and national processing "that will enable more efficient processing in the Authority/national office performing the search and examination,"

(2) search/examination collaboration among Authorities,

(3) allowing for the submission of prior art by the applicant, and

(4) allowing for third party prior art submissions.

-- Read/download a copy of the report here (link)

-- Read other documents relating to the "Patent Cooperation Treaty Working Group : First Session" (May 26, 2008 to May 30, 2008) here (link).

3 Comentários:

Anonymous said...

Do any companies find that the international search report provides any value? Does anyone actually respond to these at the international stage? If not, I wonder if the recommended changes are just putting lipstick on a pig.

MaxDrei said...

A WO-ISA out of the EPO is useful. Replying to it and getting a +ve IPRP is useful because Applicant then has an EP-B for the taking, and the file wrapper is a +ve asset for prosecution in the rest of the world. Only problem is, the dialogue with the IPEA(EPO) Exr, and the EPO-style amendment to the claims, is likely harmful to the file wrapper on the eventual US issue, no?

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