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Wednesday, 4 July 2012

Observations on the PCT

WIPO's electronic interface for the international patent application system, which is imaginatively named ePCT, is coming on in leaps and bounds. The IPKat (or at least one of his incarnations) has been pleasantly surprised by the ease with which documents can be submitted online, at least once an account has been set up.

The new link on the Patentscope result page
The latest functions to be added to ePCT are:

(1) the ability for anyone to submit third party observations on patentability of a PCT application, and 

(2) the ability for the applicant to submit observations on the closest prior art. 

The functions can be accessed through a link which is accessible on the (also impressive and user-friendly) PatentScope website page for any given application.  

A new document is available from WIPO explaining the third party observation system in minute detail, within which the IPKat pounced gratefully on the following succinct outline of how it all works.
"The key points of the service are as follows:
  • Observations on an IA can be submitted from the international publication date until 28 months from the priority date using the service described in this guide. 
  • A person may only make a single observation on any particular IA. 
  • A maximum of ten observations may be submitted on any particular IA. 
  • An observation consists of a list of at least one and up to a maximum of ten citations that refer to documents published prior to the international filing date (or patent documents having a priority date before the international filing date), together with a brief indication of how each one is considered to be relevant to the novelty or inventive step of the claimed invention. 
  • Preferably, the observation should be accompanied by a copy of each relevant cited document, which will be made available to the applicant and Offices, but will not be made publicly available on PATENTSCOPE. 
  • The applicant is permitted to respond to observations by third parties until 30 months from the priority date, but is not required to do so. This can be done either through ePCT private services or by sending a letter to the International Bureau. 
  • The observations and any responses by the applicant will be notified to the applicant, ISA (if the international search report has not yet been received by the IB), IPEA (if applicable and the international preliminary report on patentability has not been received by the IB) and DOs. 
  • It is up to the individual Offices to decide what use to make of an observation. The person who submitted the observation does not have any additional right to intervene in the processing of the international application, save what may be possible in the national phase through opposition and similar procedures. 
  • The observations (excluding copies of cited documents) and any responses by the applicant will be made publicly available on PATENTSCOPE.  
  • Submissions made by third parties other than through this system (for example on paper or by uploading a PDF file) will normally not be treated as an observation and will not be visible on the file of the international application, whether for the applicant, Offices or publicly through PATENTSCOPE."
Rupture factor: excessive
For the Applicant's prior art observations, the ePCT User Guide has been updated. This exhausting exhaustive 139 page document gets to the new observations system at around page 103, and again the IPKat was again gratified to find a bullet list summarising the system there:
"The key points are as follows:
  • Observations on close prior art regarding a specific IA may be submitted by the applicant, or on behalf of the applicant, until 30 months from the priority date, including before publication, provided that the IA has not been withdrawn. 
  • This service should not be used for responding to a written opinion as part of Chapter II proceedings – for this you should write to the IPEA directly. It can be used to bring attention to relevant prior art or, if you wish, to respond informally to third party observations. Alternatively, for the latter purpose, you may upload a letter in PDF format using the document type “Applicant Comments on Third Party Observation”. 
  •  Applicants may make multiple observations on any particular IA (not limited to one observation per IA as is the case with the third party observation service). 
  • An observation consists of a list of at least one and up to a maximum of ten citations that refer to documents published prior to the international filing date (or patent documents having a priority date before the international filing date), together with a comment on how the claims differ from them. 
  • Preferably, the observation should be accompanied by a copy of each relevant cited document, which will be made available to Offices, but will not be made publicly available on PATENTSCOPE. 
  • The observations will be notified to the ISA (if the international search report has not yet been received by the IB), to the IPEA (if applicable and the international preliminary report on patentability has not been received by the IB) and to DOs. It is up to the individual Offices to decide what use to make of an observation. 
  •  The observations (excluding copies of cited documents) will be made publicly available on PATENTSCOPE."
The ease with which third party observations can be submitted is naturally either a very good thing or a rather unwelcome development, depending on whether you're the person pulling the trigger or the unfortunate staring down the gun's barrel, but overall the IPKat welcomes anything that makes life easier for all concerned with the patent system and which improves the prospects that a good decision will be arrived at earlier in the process.

5 comments:

Roufousse T. Fairfly said...

I can't identify the legal basis for this new facility. Can someone tell me whether there is any? The whole idea looks more than a bit flaky to me.

Rule 114 EPC, which implements Art. 115 EPC, has a requirement that the observations be filed in an official language of the EPO. In what language should PCT observations be filed? What is the interaction between comments made in the international phase and the facility provided at the regional level? How can one justify limiting the number of third party observations and cited documents?

Some regional offices, in particular the USPTO, do not welcome third party involvement and impose rather off-putting conditions on it. How would the PCT system mesh with those?

BTW, if one really wanted to improve the PCT, how about letting applications of US origin being handled by the same examiner at the national and at US/ISA, like it is the case at the EPO. All those talks of reducing duplication of work and all that jazz should begin at home.

Why do the references cited by the USPTO at the national level seldom, if not never, have anything to do with those cited by the same USPTO acting under the PCT? FTI/FTF does not explain everything... Why is PCT work from the USPTO so rarely usable?

Roufousse T. Fairfly said...

I found a partial answer to my own question. There is a reference to the submission of third party observations in part 8 of the PCT administrative instructions.

Rule 89 PCT provides that the administrative instructions shall contain provisions concerning matters in respect of which these Regulations expressly refer to such Instructions, and concerning any details in respect of the application of these Regulations.

The instructions are just that, instructions.

A provision for the new facility must be foreseen in the Articles and Rules of the PCT before administrative instructions can be issued for their implementation.

I still can't identify the basis in either the Rules nor the Articles of the treaty, and therefore entertain the greatest doubts about the legality of providing a system of third party observations in the international phase.

Anonymous said...

It seems a bit open to abuse that, once ten people have filed observations on a particular application, no-one else can. The straw men could be out in force!

Anonymous said...

"BTW, if one really wanted to improve the PCT, how about letting applications of US origin being handled by the same examiner at the national and at US/ISA, like it is the case at the EPO. All those talks of reducing duplication of work and all that jazz should begin at home.

Why do the references cited by the USPTO at the national level seldom, if not never, have anything to do with those cited by the same USPTO acting under the PCT? FTI/FTF does not explain everything... Why is PCT work from the USPTO so rarely usable?"

Could it have something to do with the outsourcing of search work by the USPTO ?

Anonymous said...

I've recently filed a rather fine PCT application and I will now file ten sets of observations praising the merits of the invention so as to block any unwanted negative comments from third parties.

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