Nice TE

FICPI/AIPLA COLLOQUIUM ON REFORM OF THE PCT (NICE, 8-9 APRIL 2003) “PROBLEMS AND ADVANTAGES THE PCT HAS FOR OFFICES”

Nice Role of the EPO in the Framework of the PCT  Receiving Office  International Authority international search (ISA) international preliminary examination (IPEA)  Designated / elected Office

Nice The EPO Acting As PCT Receiving Office  direct filing (in 2002: 15,888)  filing via national Offices of EPC contracting states (in 2002: 23,274)  electronic filing via as from 1 November 2002  filing at the IB

Nice The EPO Acting As PCT Authority (ISA and IPEA)  Worldwide competence  Special conditions for developing countries  Limitations exclusion of certain technical fields  Biotechnology, business methods  Additionally in Ch. II: telecommunication

Nice EPO’s ISA & IPEA Work Share

Nice Partnership of European ISAs  Swedish Office competent for Nordic countries  Spanish Office for applications filed in Spanish language  Close cooperation in training quality control technical tools

Nice Problems  varying “filing culture” excluded subject matter “complex”/“mega” applications  strict time limits (PCT work comes first)  differences to handling of EP applications (forms, procedure etc)  interface to European phase ca. 35% drop out use of EPO’s form 1200

Nice Origin of

Nice Some Examples for Problems Before the EPO/RO  Missing signatures  Title differs in request and description  Confusion about confirmation fee under R and payment of missing designation fees under R.16bis PCT  Outdated request form  EPO incompetent RO

Nice Some Examples for Problems Before the EPO/ISA  Late receipt of search copy  Time limit under R. 42 PCT  Missing parts  Missing SQLs under R. 13ter PCT Standard compliance  Non-unity procedure under R. 40 PCT

Nice Some Examples for Problems Before the EPO/IPEA  Different data in request (form 101) and demand (form 401)  Demands filed with EPO being not the competent Authority Transmittal of files Refund of fees  Late filed demands – problem of the past

IS THE EUROPEAN PATENT OFFICE ISA/IPEA IN THE FOLLOWING CASES WHERE THE APPLICATION RELATES TO A TECHNICAL FIELD WHERE THE EPO HAS LIMITED ITS COMPETENCE? Receiving Office Applicant(s) is (are) national/resident of EPO or EPC Contracting State USPTO IB (Provided EPO is competent ISA/IPEA) Other National Office for which the EPO is ISA/IPEA eg. Canada EPC Contracting State (s) yesnot applicableyesnot applicable United State(s)not applicableno not applicable Other state(s) eg. Canada not applicable yes United States & EPC Contracting State(s) yesnoyesnot applicable United States & other state(e) eg. Canada not applicableno yes

Nice Advantages  Attractive filing system (EP = 1 designation)  …and more  International publication may take place of EP publication (Art. 158 EPC)  ISR by the EPO* may take place of the EP search report (* Art. 157 EPC)  ISR by Non-european ISA – 20% reduction of EP search fee  IPER by the EPO may reduce the EP examination fee by 50%

Nice TE

Nice FUTURE  EPO internal maintain high quality BEST expansion Phoenix for PCT files  European ISA Partnership  Trilateral Cooperation  Bilateral EPO – WIPO (e.g. e- filing)  consolidation of 1 st stage of reform  listen to users before further change

Nice