New System for PCT Application

November 6, 2003
Harakenzo World Patent & Trademark
Ayako KAWANO

Introduction
PCT Application is the system that enables the protection of invention in many countries by filing single application, so it realizes advantageous route to international patent protection.
The features of this system are the unified form, integrated International Publication, and issuance of International Search Report (hereinafter referred to as ISR) / International Preliminary Examination Report (hereinafter referred to as IPER) and so on. We can find the following advantages that cannot be realized by Application based on Paris Convention.

1. Advantage in Time Limit
In the Application based on Paris Convention, it is necessary to submit the application documents which meet the requirements of each designated states and are translated to languages thereof within 12 months from priority date, whereas in the PCT system, it is possible to obtain the date of application which is effective in many countries only with the single application by a single language (ex. Japanese) within 12 months from priority date, and moreover, possible to prolong the time limit to 30 months from priority date to decide the states and translate application documents to the languages thereof.

2. Advantage in Cost
In this PCT system, since the choice is possible not to proceed to national phase because of non-patentability of application based on the contents of ISR, and IPER, so as to reduce unnecessary expenses for translation or national procedure.
As mentioned above, the PCT system is simple and high cost-effective means for applicants who hope to protect patent rights in two or more countries. And the above ISR and IPER are also very useful for Patent Office as designated or elected office to judge to grant patent to application proceeded to national phase.
Actually seeing the condition under which this system is used, we can find the number of the PCT application increasing favorably since the start in 1978, and it counted 114,048 in 2002 all over the world. This number was 9.7% increase as compared with that of the previous year.
The contracting states are also increasing every year (122 nations joined in the world as of Dec. 2003), so we can try to acquire patent right in more and more countries.
Turning to the situation of Japan, PCT application filed by applicant having Japanese nationality is 11.9% of all in 2002, it was the third subsequently to the U.S. and Germany in the world.

And then, it is said that Japan ranked the second above Germany in the first half of 2003.
It hears from above that PCT application procedure is worldwide recognized to be very useful and is actually utilized all over the world including Japan.
This system is based on the Patent Cooperation Treaty concluded in 1970, and system reform has been promoted positively aiming at further simplifying and streamline.
It is certain that the constant evolution in order to be more effective is an important factor in the worldwide utilization of PCT application system.
PCT reform is continued now, and recently, many revised rules were adopted in the PCT assembly in October 2002.
The chief aims of this revision were (1) to maintain consistency under the Patent Law Treaty (PLT) and (2) to streamline procedures and exclude duplication. So mainly 6 subjects were taken up therein as below.
1.EISPE: Enhanced International Search and Preliminary Examination
2. Concept and Operation of Designation System: Individual designation of states is no longer possible, the designation of all Contracting States are bound by the Treaty on international filing.
3. Consistency of PCT Requirements under the Patent Law Treaty
4. Translation for International Publication
5. Fee Reduction by Electric Filing (Same fee as PCT-EASY Application)
6. Appointment of Canada Patent Office as ISA/IPEA
Hereafter, we would like to pick up concretely above 1, 2, and 3 that seem to be especially important in application to foreign counties from Japan.
1. Enhanced International Search and Preliminary Examination
Revised Rule : PCT Rule43 et al.
Entry in Force : January 1, 2004 (Applied to international application filed thereafter)
Purpose : Streamline and efficiency of International Search and International Preliminary Examination
Contents : For all international application, "International Search Opinion (ISO)" is issued at the same time as "ISR". "ISO" is corresponding to present "Written Opinion" which is issued after the demand of international preliminary examination (PCT ChapterII Procedure) . Since thereby opinion of examiner regarding novelty, inventive step, and industrial applicability of filed invention is shown regularly with prior art search results, the applicant can determine to demand international preliminary examination or not after considering the necessity of argument or amendment on the basis of this opinion.
We would like to show the workflow after issuance of "International Search Opinion" dividing into two cases to demand international preliminary examination or not as follows.
In the case that the applicant does not demand international preliminary examination
The applicant receives "International Search Opinion" issued by the International Search Authority.
→The applicant can present the comment unofficially to the International Bureau (hereinafter referred to as, IB).
→IB rewrites "International Search Opinion" into "International Preliminary Report on Patentability (ChapterI)".
→"International Preliminary Report on Patentability (ChapterI)" and the comment of the applicant are sent to designated offices, and can be inspected 30 months later from priority date. (Not to be published.)
In the case that the applicant demands international preliminary examination
The applicant receives "International Search Opinion" issued by the International Search Authority.
->The applicant demands international preliminary examination
->Argument against "International Search Opinion" (Written Reply) and amendment under article 34 are submitted to the IPEA suitably. (Normally, on demanding international preliminary examination)
-> (When the applicant exceptionally receives the second Written Opinion from IPEA, the applicant can submit again Argument or Amendment besides.)
->The International Preliminary Examination Authority (hereinafter referred to as IPEA)prepares the "International Preliminary Report on Patentability (ChapterII)" (= International Preliminary Examination Report under present treaty).
-> "International Preliminary Report on Patentability (ChapterII)" is sent to the elected office from IB and can be inspected 30 months later from priority date. Also IB can open it instead of elected office if it is requested.
Note :
1. "International Search Opinion" is preliminary and non-binding opinion of examiner as in present written opinion.
2. On demanding of international preliminary examination, "ISO" is competent as the first Written Opinion of IPEA. (It is possible that IPEA determines not to accept a certain "ISO".)
Though ISR will be published, ISO will not.
Time limit of demanding preliminary examination is set up to any one that is later 3 months from issuance date of "ISR" and "ISO" or 22 months from the priority date. (In order to extend the time limit of entering into the national phase to the states reserving the revision under Article 22, this demand should be filed within 19 months from the priority date.)
2. Concepts and Operation of Designation System
Revised Rule : PCT Rule4.9
Entry in Force : January 1, 2004
Purpose : To reduce the mistakes or omission of international application forms, especially designation of the states, and to intensify the advantages of international application that it is possible to postpone the final decision to national phase while maximizing the advantage of PCT application.
Contents : At the present, it is necessary to designate the contracting states in order to proceed to the national phase and check (entry) them as "Designated Sates" in request. In new treaty, the check (entry) is entirely abolished, and the all contracting states are considered to be designated at filing. (The designation of all Contracting States)
Thereby, international application is regarded to designate the all contracting states that are bound by treaty on the international filing date, and it is possible to proceed to national phase to all designated states before expiry date of each country.
Furthermore, at the present, it is required to choose the "Kinds of Protection", for example Patent or Utility Model, or National or Regional Patent etc., as in "Designation of States" in request. After revision of rule, it is not required at the filing but at the national phase thereafter to specify the kinds of protection approved by each designated state.
Notes :
1) All international application is automatically considered to select Japan as designated states ("Self-Designation").
->In the case the claiming priority is based on Japanese application, the earlier Japanese application is automatically regarded as to be withdrawn. Therefore, the measures to this matter should be taken as followings a) or b).
a) Prepare the new specification including the contents of earlier application and proceed national phase to Japan.
b) Withdraw designation of Japan. (It should be done before the expiration of 15 months from the priority date, so in fact it is preferable to withdraw designation of Japan at the same time as filing the international application in the case of application just before limit of priority.)
2) All international application is automatically considered to select U.S.A. as designated states.
-> Since the inventors should be applicants in U.S.A., under the present rule, on international application designating U.S.A., it was required to describe "name" "address" and "nationality" of all inventors as applicants in request that should be also signed or sealed by them. (In the case of application by agent, signature or seal of inventors in power of attorney was required instead in request.)
If such requirements were applied to all applications under new rule, it became great trouble especially for the applicants who do not hope to designate U.S.A. Thus, the requirements of description and signature of applicants are vastly simplified.
That is to say, "name" of all applicants (including all inventors) should be described in request, but regarding "address" and "nationality", it is enough to describe them of the only single applicant who is competent to request to receiving office.
Regarding signature on the request, merely the single signature (or seal) of the one of all applicants is required. But as to the signature or seal on power of attorney, the opinion of JPO is not yet shown; whether single signature (or signet) of the one of applicants is enough or not.
3) "Designation Fee" (11,600 JP yen per state, but maximum fee is 58,000 JP yen corresponding to five states.) paid on filing is abolished.
New "International Application Fee" (650 Swiss francs per single application and 15 Swiss francs per sheet over 30 of application documents. JP yen setting is not yet decided.) is instructed, which is mixed with present "Designation Fee" and "Basic Fee"(54,000 JP yen per single application and 1,200 JP yen per sheet over 30).
4) "Selected States" in demand of international preliminary examination is handled comprehensively like "Designated States" in request. (It is applicable to the demand of international preliminary examination filed after January 1, 2004.)
Consistency of PCT Requirements under the Patent Law Treaty
Purpose : Concretely disclose "Gentle (User-Friendly) Regulation to Applicants" also in the PCT Application System pursuant to Patent Law Treaty (PLT).
1. The Reinstatement of Right Regarding Lapse of Limit to Proceed National Phase Revised Rule : PCT Rule49.6
Entry in Force : January 1, 2004 *It is applicable to the case its time limit is over thereafter.
Contents : In the case that the national phase expiration of 30 months from the priority date lapses without obeying the predetermined requirement of national phase procedure (under PCT Article 22) for inevitable matter, the designated office can reinstate lost right of application if it accepts the reason why it lapsed entered by applicant is valid.
Notes :
1) "Inevitable matter" is the case that designated Office finds that "any delay in meeting that time limit was unintentional" or "the failure to meet that time limit occurred in spite of due care required by the circumstances having been taken".

The designated office of each country should provide only one standard of the two mentioned above into their national law. And interpretation of each standard and requirements for reinstatement is based on the national law of each country. Therefore, it is necessary to confirm the standards, interpretation, and requirements respectively if applicants want to ask for the reinstatement.
2) In some countries including Japan, this revision is postponed to be operative therein by transitional rule until national laws correspond to it. (In web site of WIPO, it can be seen which country applies transitional rule.)
(http://www.wipo.int/pct/en/texts/pdf/rule_49_6.pdf)
2.Acquisition of the priority documents from a digital library
Revised Rule : PCT Rule17
Entry in Force : January 1, 2004
Contents : In respect of that the priority of earlier application is claimed on PCT filing, only two measures were hitherto available a) to submit priority documents ordered by the applicant to the receiving office, or b) to ask receiving office in request to send the relevant documents to International Bureau. But now it is possible c) to request receiving office or International Bureau to furnish the priority documents from digital library too.
Conclusion
As mentioned above, international application system is coming to a reform on a large scale. We would like to help applicants to effectively acquire the patent right with using new system fully. And we expect that further improvement of PCT system should be continued from now so that the system can be more and more accessible for applicants.