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PCT Report

Takao OchiMember of The Patent Committee

2008/10/21

MOVEMENT OF THE PCT IN 2008

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1.PCT Working Group held in Geneva on May 26-301.PCT Working Group held in Geneva on May 26-30

(1) Topics(1) Topics

(a)(a) Proposal by Israel Proposal by Israel

(i) Establishment of criteria for the addition of a new language of PCT publication (i) Establishment of criteria for the addition of a new language of PCT publication

(ii) Timeliness of the international search and examination(ii) Timeliness of the international search and examination

(iii) Simplify the processing of computer program listings(iii) Simplify the processing of computer program listings

(iv) Reevaluation of the PCT Rule 11(iv) Reevaluation of the PCT Rule 11

(v) International Form for National Phase Entry(v) International Form for National Phase Entry

(b) Enhancing the Value of International Search and Preliminary Examination Under the PCT (b) Enhancing the Value of International Search and Preliminary Examination Under the PCT

(c) Filing and Processing of Sequence Listings Under the PCT (c) Filing and Processing of Sequence Listings Under the PCT (d) Physical Requirements of the International Application (d) Physical Requirements of the International Application

(e) Criteria for Addition of Languages of Publication under the PCT(e) Criteria for Addition of Languages of Publication under the PCT(f) Supplementary International Search: Further Consequential Amendments(f) Supplementary International Search: Further Consequential Amendments 　　　　(g) Transmittal of the International Application, Translations and Related Documents (g) Transmittal of the International Application, Translations and Related Documents

(h) Proposals by the United States of America With Respect to Missing Elements and Parts(h) Proposals by the United States of America With Respect to Missing Elements and Parts

(i) Proposals by the United States of America With Respect to Rectification of Obvious (i) Proposals by the United States of America With Respect to Rectification of Obvious Mistakes Mistakes

(j) Proposals by the United States of America With Respect to Processing Under Article(j) Proposals by the United States of America With Respect to Processing Under Article  14(4)14(4)

(k) Proposals by the United States of America Regarding the Treatment of Extraneous (k) Proposals by the United States of America Regarding the Treatment of Extraneous MatterMatter

(l) Proposals by the United States of America With Respect to Amendment of Claims(l) Proposals by the United States of America With Respect to Amendment of Claims

(m) Proposals by the European Patent Office With Respect to Claims Fees (m) Proposals by the European Patent Office With Respect to Claims Fees

(n) Proposals by the European Patent Office, the Japan Patent Office and the United States (n) Proposals by the European Patent Office, the Japan Patent Office and the United States Patent and Trademark Office for Modification of the PCT Administrative InstructionsPatent and Trademark Office for Modification of the PCT Administrative Instructions

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2. What Will Change in Future2. What Will Change in Future

(1) Supplementary International Search (1) Supplementary International Search

-- Further Consequential Amendments ---- Further Consequential Amendments --

・・ There was found a vacant area in the regulation concerning the refund of There was found a vacant area in the regulation concerning the refund of supplementary search fee and handling fee in the case where the supplementary search fee and handling fee in the case where the international application is withdrawn or is considered withdrawn and the international application is withdrawn or is considered withdrawn and the right of an agent to practice before International Searching Authorities right of an agent to practice before International Searching Authorities specified for supplementary international search is not clear. specified for supplementary international search is not clear.

・ ・ In order to fill the outstanding matters with appropriate provisions, the In order to fill the outstanding matters with appropriate provisions, the amendments to Rule 45bis.2(d), 45bis.3(d) were proposed so as to make amendments to Rule 45bis.2(d), 45bis.3(d) were proposed so as to make those clear that the supplementary fee and handling fee are refunded when those clear that the supplementary fee and handling fee are refunded when the international application is withdrawn or considered withdrawn in addition the international application is withdrawn or considered withdrawn in addition to the provision concerning the refund in the case where the supplementary to the provision concerning the refund in the case where the supplementary search request is withdrawn or considered not to have been submitted, and search request is withdrawn or considered not to have been submitted, and amendment to Rule 90 was proposed to include the right of an agent to amendment to Rule 90 was proposed to include the right of an agent to practice before any ISAs to which a supplementary international search is practice before any ISAs to which a supplementary international search is requested. requested.

・・ The proposed amendments were agreed by the working group and adopted The proposed amendments were agreed by the working group and adopted by the PCT Assembly.by the PCT Assembly.

・・ The amendments will enter into force on January 1, 2009.The amendments will enter into force on January 1, 2009.

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--Start of Supplementary International Search Service as of --Start of Supplementary International Search Service as of January 1, 2009 --January 1, 2009 --

・・ The Federal Service for Intellectual Property, Patents and The Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation), the Swedish patent and Registration Trademarks (Russian Federation), the Swedish patent and Registration Office and the Nordic Patent Institute will start the supplementary Office and the Nordic Patent Institute will start the supplementary search serve as of January 1, 2009. search serve as of January 1, 2009.

・・ The Austrian Patent Office will start the supplementary search The Austrian Patent Office will start the supplementary search service later in 2009.service later in 2009.

・・ The European Patent Office and the National Board of Patents and The European Patent Office and the National Board of Patents and Registration of Finland will start the supplementary search service as Registration of Finland will start the supplementary search service as of 2010.of 2010.

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(2) Proposals With Respect to Amendment of Claims(2) Proposals With Respect to Amendment of Claims

・・ When amending the claims in an international application under the PCT When amending the claims in an international application under the PCT Articles 19 and 34 , the applicant is required to submit a replacement sheet. Articles 19 and 34 , the applicant is required to submit a replacement sheet. This would result in confusion and increased workload for examiners both in This would result in confusion and increased workload for examiners both in the Chapter II and the prosecution of the national phase. Thus, it was proposed the Chapter II and the prosecution of the national phase. Thus, it was proposed to amend the related Regulations to require the applicant to submit a to amend the related Regulations to require the applicant to submit a complete set of claims whenever any of claims are amended. complete set of claims whenever any of claims are amended.

Observation & ConclusionObservation & Conclusion・・ From a userFrom a user’’s point of view, it is not convenient to submit a complete set of s point of view, it is not convenient to submit a complete set of claims in case of only minor amendment.claims in case of only minor amendment.

・・ Submission of amendment by claim-by-claim basis would be convenient for Submission of amendment by claim-by-claim basis would be convenient for applicants.applicants.

・・ It would be necessary to reliably identify all differences between the original It would be necessary to reliably identify all differences between the original and amended claims since both the examiner and third parties would be and amended claims since both the examiner and third parties would be concerned to ensure that no change other than the ones indicated in the concerned to ensure that no change other than the ones indicated in the accompanying letter had in fact made.accompanying letter had in fact made.

・・ The working group approved the proposed amendment to Rules 46.5 and The working group approved the proposed amendment to Rules 46.5 and 66.8.66.8.

Entry Into ForceEntry Into Force ・・ The PCT Assembly adopted the proposed amendments and determined that The PCT Assembly adopted the proposed amendments and determined that

it shall enter into force on July 1, 2009. it shall enter into force on July 1, 2009.

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(3) Filing and Processing of Sequence Listings Under the PCT(3) Filing and Processing of Sequence Listings Under the PCT

---Modification of Administrative Instruction------Modification of Administrative Instruction---

(i) (i) ““Mixed modeMixed mode”” sequence listing application is not permitted. sequence listing application is not permitted.

((““mixed modemixed mode”” sequence listing application : the body of the description is sequence listing application : the body of the description is in paper format and a sequence listing is provided either both on paper and in in paper format and a sequence listing is provided either both on paper and in electronic form on a physical medium, or else only in electronic form on a electronic form on a physical medium, or else only in electronic form on a physical medium)physical medium)

(ii) Instead of a maximum of 400 page fees payable, no page fee would be (ii) Instead of a maximum of 400 page fees payable, no page fee would be payable for a sequence listing filed in ST.25 text format but full page fees payable for a sequence listing filed in ST.25 text format but full page fees would be payable for all pages of a sequence listing filed in an ST.25 image would be payable for all pages of a sequence listing filed in an ST.25 image format (as well as for sequence listings filed on paper, as at present)format (as well as for sequence listings filed on paper, as at present)

(iii) Copies of sequence listings submitted for the purposes of international (iii) Copies of sequence listings submitted for the purposes of international search are made publicly availablesearch are made publicly available

(iv) The acceptable electronic document format is ST.25 text format for filing (iv) The acceptable electronic document format is ST.25 text format for filing of sequence listings under the basic common standard of sequence listings under the basic common standard

・・ Modifications to the Administrative Instructions will be promulgated with Modifications to the Administrative Instructions will be promulgated with effect from January 1, 2009. effect from January 1, 2009.

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(4) Proposal of Section Heading in PCT Application (Common (4) Proposal of Section Heading in PCT Application (Common Application Format) by the European Patent Office, the Application Format) by the European Patent Office, the Japan Patent Office and the United States Patent and Japan Patent Office and the United States Patent and Trademark Office for Modification of the PCT Administrative Trademark Office for Modification of the PCT Administrative InstructionsInstructions

Background and content of the proposalBackground and content of the proposal

・・ Trilateral Offices developed a common application format (CAF) in the Trilateral Offices developed a common application format (CAF) in the course of their trilateral cooperation for use in applications via Paris course of their trilateral cooperation for use in applications via Paris Convention Route. Convention Route.

・・ From the point of view that It will be beneficial for both users and offices to From the point of view that It will be beneficial for both users and offices to extend to PCT application, it was proposed to modify the Administrative extend to PCT application, it was proposed to modify the Administrative Instructions to include those relating to headings such as "Summary of Instructions to include those relating to headings such as "Summary of Invention", "Description of Embodiments", etc in the description of an Invention", "Description of Embodiments", etc in the description of an international application in line with the CAF as recommendation.international application in line with the CAF as recommendation.

Observation & ConclusionObservation & Conclusion

・・ Many applicants do not use headings. In fact, Rule 5.1(c) indicates that Many applicants do not use headings. In fact, Rule 5.1(c) indicates that the headings are optional.the headings are optional.

・・ The proposed modification will enter into force on July 1, 2009.The proposed modification will enter into force on July 1, 2009.

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(5) Establishment of Criteria for Addition of New Language of (5) Establishment of Criteria for Addition of New Language of PCT Publication PCT Publication

・・ At present, 8 international publication languages ( Arabic, Chinese, English, At present, 8 international publication languages ( Arabic, Chinese, English, French, German, Japanese, Russian and Spanish)French, German, Japanese, Russian and Spanish)

・・ Korean and Portuguese will become international publication languages from Korean and Portuguese will become international publication languages from January 1, 2009.January 1, 2009.

・・ In order to consider a proper balance between the interests of different users, In order to consider a proper balance between the interests of different users, some conditions should be placed on future PCT publication languages. some conditions should be placed on future PCT publication languages.

・・ Proposed criteria are: Proposed criteria are:

●● A new publication language should be accepted for processing by at least one A new publication language should be accepted for processing by at least one ISA.ISA.

●● A new publication language should only be added if the combined number of A new publication language should only be added if the combined number of applications which are first filed in that language in all Offices which accept that applications which are first filed in that language in all Offices which accept that language represent a certain number of all first filings worldwide, for example, language represent a certain number of all first filings worldwide, for example, 20,000 per year.20,000 per year.

●● A new publication language should only be added if adequate machine A new publication language should only be added if adequate machine translation tools are publicly available for translation into at least English.translation tools are publicly available for translation into at least English.

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・ ・ Observation & ConclusionObservation & Conclusion

・・ The required application number The required application number ““20,00020,000”” is too high. Instead of the is too high. Instead of the application number, the filing trend and/or percentage may be used.application number, the filing trend and/or percentage may be used.

・・ If too many languages become publication languages, third parties If too many languages become publication languages, third parties cannot monitor all PCT applications. cannot monitor all PCT applications.

・・ The WG agreed that a draft Common Understanding setting out criteria The WG agreed that a draft Common Understanding setting out criteria for the addition of new PCT publication languages will be submitted to the for the addition of new PCT publication languages will be submitted to the PCT Assembly, taking into account the discussion and the PCT Assembly PCT Assembly, taking into account the discussion and the PCT Assembly adopted it.adopted it.

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(6) Transmittal of the International Application, Translations (6) Transmittal of the International Application, Translations and Related Documents and Related Documents

・・ The working group agreed to the International Bureau's plan that The working group agreed to the International Bureau's plan that the receiving office will be able to transmit the search copy and the receiving office will be able to transmit the search copy and other documents such as the translation necessary for international other documents such as the translation necessary for international search to the International Searching Authority in electronic form via search to the International Searching Authority in electronic form via the International Bureau, using the receiving Office's existing PCT the International Bureau, using the receiving Office's existing PCT Electronic Data Interchange (EDI) communication link to the Electronic Data Interchange (EDI) communication link to the International Bureau so as to improve the current transmission International Bureau so as to improve the current transmission system with saving costs and time in view of the circumstances system with saving costs and time in view of the circumstances where 85 % of record copies of international applications are where 85 % of record copies of international applications are received by the IB from the receiving Office in electronic form and received by the IB from the receiving Office in electronic form and the remainder are converted into electronic form by way of scanning the remainder are converted into electronic form by way of scanning by the IB. by the IB.

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3. Continued Discussion Matters3. Continued Discussion Matters

(1) Enhancing the Value of International Search and Preliminary (1) Enhancing the Value of International Search and Preliminary Examination Under the PCTExamination Under the PCT

BackgroundBackground

Major patent offices are increasingly looking at work sharing to reduce the Major patent offices are increasingly looking at work sharing to reduce the unnecessary duplication work as far as possible and are attempting new schemes unnecessary duplication work as far as possible and are attempting new schemes for applications via Paris route as the Patent Prosecution Highway (PPH) , New for applications via Paris route as the Patent Prosecution Highway (PPH) , New Route and Triway search and examination program. The PCT system already has Route and Triway search and examination program. The PCT system already has mechanisms in place designed to address problems which may be faced by the mechanisms in place designed to address problems which may be faced by the PPH , New Route and Triway. Yet, the PCT system is not being used to its full PPH , New Route and Triway. Yet, the PCT system is not being used to its full potential with the fact that many Offices remain distrustful of international search potential with the fact that many Offices remain distrustful of international search reports and international preliminary reports on patentability except for only a reports and international preliminary reports on patentability except for only a few Offices using those reports either as the basis for grant or at least as the few Offices using those reports either as the basis for grant or at least as the basis for an accelerated, simplified or reduced examination process. In view of basis for an accelerated, simplified or reduced examination process. In view of these circumstances, discussion was made to focus on enhance of the value of these circumstances, discussion was made to focus on enhance of the value of international search and preliminary examination under the PCT. international search and preliminary examination under the PCT.

DiscussionDiscussion

The discussion was made item by item as follows.The discussion was made item by item as follows.

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(1) Contents of International Search Reports, Written Opinion and (1) Contents of International Search Reports, Written Opinion and International Preliminary Reports on PatentabilityInternational Preliminary Reports on Patentability

・ ・ More effective ways of collaboration in different Offices need to be found for More effective ways of collaboration in different Offices need to be found for improvement of prior art search in light of language problems although improvement of prior art search in light of language problems although machine translation is improving.machine translation is improving.

・・ The EPO will attempt to propose to develop the PCT quality framework. The EPO will attempt to propose to develop the PCT quality framework.

・・ All International Searching Authorities should effectively conduct the search All International Searching Authorities should effectively conduct the search at least the complete PCT minimum documentation, without limitations such at least the complete PCT minimum documentation, without limitations such as those related to the provision of English language abstracts in Ruleas those related to the provision of English language abstracts in Rule   34.1(e).34.1(e).

・・ There is a lack of consistency in the depth and coverage of the reports from There is a lack of consistency in the depth and coverage of the reports from different Authorities.different Authorities.

・ ・ The written opinions should consistently include not only detailed reasoning The written opinions should consistently include not only detailed reasoning related to novelty, inventive step and industrial applicability but also those related to novelty, inventive step and industrial applicability but also those relating to lack of clarity and support in the description for the claims.relating to lack of clarity and support in the description for the claims.

・・ The current structure of the forms for written opinions and international The current structure of the forms for written opinions and international preliminary reports on patentability is too rigid and dependent on the marking preliminary reports on patentability is too rigid and dependent on the marking of check-boxes to allow the examiners to address all issues efficiency.of check-boxes to allow the examiners to address all issues efficiency.

・・ In the proceeding of the chapter II, the applicant is given very little In the proceeding of the chapter II, the applicant is given very little opportunity for a real dialog with the examiner, which resulted in a generally opportunity for a real dialog with the examiner, which resulted in a generally unsatisfactory unsatisfactory ““price/usefulness ratioprice/usefulness ratio”” for services offered under the chapter II. for services offered under the chapter II. The International Bureau is required to study this issue and to submit more The International Bureau is required to study this issue and to submit more specific recommendations to the working group at its next sessionspecific recommendations to the working group at its next session..

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・・ APAAAPAA’’s remarkss remarks

AA good ISR with written opinion could be accomplished by good good ISR with written opinion could be accomplished by good search that is first priority on this matter and good search would come from search that is first priority on this matter and good search would come from the good sorting out system for sorting many applications with a variety of the good sorting out system for sorting many applications with a variety of technical fields properly out to appropriate classification. In this connection, technical fields properly out to appropriate classification. In this connection, it seems to us that all international searching authorities do not always it seems to us that all international searching authorities do not always consult the PCT Minimum documentation particularly concerning the PCT consult the PCT Minimum documentation particularly concerning the PCT Rule 34. 1 paragraph (e) in spite that the English abstract of the patent Rule 34. 1 paragraph (e) in spite that the English abstract of the patent documents written in Japanese, Korean, Russian and Spanish are available. documents written in Japanese, Korean, Russian and Spanish are available. We strongly desire that all ISAs fulfils the requirement provided for in the We strongly desire that all ISAs fulfils the requirement provided for in the PCT Article and regulation to at least consult all PCT minimum PCT Article and regulation to at least consult all PCT minimum documentation by seeking a way to further develop the machine-translation documentation by seeking a way to further develop the machine-translation and to establish a common data base to which all ISAs are accessible and to establish a common data base to which all ISAs are accessible without any language problem so that any additional supplementary search without any language problem so that any additional supplementary search is not necessary.is not necessary.

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(2) Necessity of amendment without filing demand(2) Necessity of amendment without filing demand

・ ・ Most of delegations expressed that no benefits would be gained by Most of delegations expressed that no benefits would be gained by permitting amendment of the description and the drawings during the permitting amendment of the description and the drawings during the international phase without demanding international preliminary international phase without demanding international preliminary examination. examination.

(3) Availability and use of Information(3) Availability and use of Information

・ ・ It would be helpful to designated Offices if information on national It would be helpful to designated Offices if information on national phase processing including search and examination results were phase processing including search and examination results were available from a centralized database, accessible by all designated available from a centralized database, accessible by all designated Offices. In this regard, it is noted that the International BureauOffices. In this regard, it is noted that the International Bureau ’’s s Patentscope is now providing such information.ⓇPatentscope is now providing such information.Ⓡ

(4) Revising the Distinction Between International and National Phases(4) Revising the Distinction Between International and National Phases

・・ The JPO introduced the The JPO introduced the ““parallel processingparallel processing”” of national and of national and international applications conducted by the JPO, which processing international applications conducted by the JPO, which processing provides the applicant with an international search report and written provides the applicant with an international search report and written opinion which has substantially the same conclusions as a first opinion which has substantially the same conclusions as a first national action for directly comparable applications by the same national action for directly comparable applications by the same examiner to minimize the risk of arriving at different conclusions for examiner to minimize the risk of arriving at different conclusions for the international and national applications while the applicant can the international and national applications while the applicant can enjoy a reduction of the international search fee. enjoy a reduction of the international search fee.

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(2) Proposals by the European Patent Office With Respect (2) Proposals by the European Patent Office With Respect to Claims Feesto Claims Fees

Background and content of the proposalBackground and content of the proposal

・・ The average size of PCT applications is increasing and the page The average size of PCT applications is increasing and the page fee is not a sufficient deterrent to filing unnecessarily large fee is not a sufficient deterrent to filing unnecessarily large applications. Many national patent system has a claim fee. applications. Many national patent system has a claim fee. Including too many claims in a single application is an abuse of the Including too many claims in a single application is an abuse of the PCT system. This adversely affects the search and examination PCT system. This adversely affects the search and examination qualities.qualities.

The EPO made two proposals:The EPO made two proposals:

●● To permit a claim fee under the PCT in the same way as in To permit a claim fee under the PCT in the same way as in the EPCthe EPC

●● To allow ISA to limit the international search to one To allow ISA to limit the international search to one independent claim independent claim per category in situations where the per category in situations where the inclusion of more than one inclusion of more than one independent claim is not justifiedindependent claim is not justified

・・ The EPO relies upon Article 6 to justify their position.The EPO relies upon Article 6 to justify their position.

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ObservationObservation

・・ The problem of excessive number of claims is recognized by The problem of excessive number of claims is recognized by everyone. Mega-applications are creating some problems. everyone. Mega-applications are creating some problems. However, Rule 6.1 indicates that an applicant can present a However, Rule 6.1 indicates that an applicant can present a reasonable number of claims in consideration of the nature of the reasonable number of claims in consideration of the nature of the invention.invention.

・・ A severe sanction such as withdrawal of the PCT application may A severe sanction such as withdrawal of the PCT application may be introduced if an applicant fails to pay a claim fee.be introduced if an applicant fails to pay a claim fee.

・・ Article 6 simply mentions that claims shall be clear and concise. Article 6 simply mentions that claims shall be clear and concise. Thus, even if two or more independent claims are included in a Thus, even if two or more independent claims are included in a single application, the requirements of Article 6 are met as long as single application, the requirements of Article 6 are met as long as these independent claims are understandable. these independent claims are understandable.

ConclusionConclusion

・・ There was broad support for further consideration of the proposal There was broad support for further consideration of the proposal for the claim fee.for the claim fee.

・・ There was little support for the proposal to permit ISA to limit the There was little support for the proposal to permit ISA to limit the international search to one independent claim per category.international search to one independent claim per category.

・・ The suction such as withdrawal of the PCT application is harsh.The suction such as withdrawal of the PCT application is harsh.

・・ The EPO will prepare a more detailed proposal in future meeting. The EPO will prepare a more detailed proposal in future meeting.

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(3) Proposal With respect To Physical Requirements of the (3) Proposal With respect To Physical Requirements of the International ApplicationInternational Application

・・ In order to consider the need of inclusion of color drawings in an In order to consider the need of inclusion of color drawings in an international patent application, to facilitate optical character international patent application, to facilitate optical character recognition processes to an international application filed on recognition processes to an international application filed on paper, and to treat with the other matters for physical paper, and to treat with the other matters for physical requirements of the international application in the Rule 11, the requirements of the international application in the Rule 11, the working group agreed that the International Bureau should further working group agreed that the International Bureau should further develop recommendation relating to the physical requirements of develop recommendation relating to the physical requirements of the international application, taking into account the comments the international application, taking into account the comments appeared in the working group and any conclusion reported by the appeared in the working group and any conclusion reported by the ST.22 Task Force of the Standards and Documentation Working ST.22 Task Force of the Standards and Documentation Working Group of the Standing Committee on Information Technologies Group of the Standing Committee on Information Technologies (SCIT/SDWG) together with developing proposal for modifying the (SCIT/SDWG) together with developing proposal for modifying the PCT Receiving Office Guidelines.PCT Receiving Office Guidelines.

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(4) Proposals With Respect to Missing Elements and Parts(4) Proposals With Respect to Missing Elements and Parts

・・ Since current Rule 4.18, in combination with Rule 26bis, allows Since current Rule 4.18, in combination with Rule 26bis, allows an applicant to use an applicant to use ““incorporation by referenceincorporation by reference”” without specifying without specifying what extent the priority application must be identified, amendment what extent the priority application must be identified, amendment of Rule 4.18 was proposed to require that the priority claim should of Rule 4.18 was proposed to require that the priority claim should positively identify the prior application on the international filing positively identify the prior application on the international filing date. date.

・・ Amendment of Rule 20.6 was proposed to give the applicant an Amendment of Rule 20.6 was proposed to give the applicant an additional opportunity to comply with the requirements for additional opportunity to comply with the requirements for incorporation by reference of a missing element or part where the incorporation by reference of a missing element or part where the element or part to be incorporated contains minor differences from element or part to be incorporated contains minor differences from the earlier application.the earlier application.

・・ As a result of variety of observations, the WG agreed to refer As a result of variety of observations, the WG agreed to refer those matters to the IB for further consideration.those matters to the IB for further consideration.

--- End------ End---

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Thank you!!Thank you!!