• Late PCT searches and their irksome consequences

     

    Devoted readers with good memories (!) will recall that in our Spring 2004 Newsletter we presented some timeline diagrams to show the effects of the changes in PCT Regulations at that time, and in particular the effect of producing a Written Opinion alongside the International Search Report.  An abstruse subject perhaps, but nevertheless a useful and popular article judging by the hits to our website.

    Unfortunately, the timeline is going a little awry with the backlog of searching at the EPO.  We find we need to provide another timeline scenario to show how a PCT application can proceed if the International Search Report is late.

    With greater and greater frequency we are seeing search reports for PCT applications issue from the EPO after the International application has been published, and sometimes even a year or more late.  The International application lasts for only 30 months from the priority date (or 31 months, for the EPO), after which it splits out into national and regional applications.  So if the search report is late, it doesn’t leave much time to amend the application centrally before the national and regional phase begins.  If a Demand for International Preliminary Examination is filed with the EPO, it is not unusual for the PCT and the national/regional process to overlap.  In these circumstances, the International application is still with the International Preliminary Examining Authority for some months after entering the national and regional offices.

    Figure 1 shows how the process should be:

    • the ISR is issued before publication;

    • there is a brief opportunity to submit a Chapter I amendment (under Article 19) before publication;

    • the application is published at 18 months with the ISR;

    • the Demand must be filed at the 22 month stage (with a Chapter II amendment under Article 34 if not already amended in Chapter I);

    • the IPER is complete before national/regional entry at 30 or 31 months.

    Figure 2 shows how matters proceed if the ISR is late:

    • the ISR is published separately as an A3 publication (the Written Opinion is not included in the A3 publication);

    • two time limits start to run – a 2-month limit for Chapter I amendment under Article 19 and a 3-month limit for Chapter II amendment under Article 34;

    • if a Demand is filed within the 3-month limit, the IPER is drawn up, but may not be complete until some time after national/regional entry at 30 or 31 months.

    In this scenario, is there any point in filing an amendment in Chapter I under Article 19?  Not really.  The only benefit is to have an amendment entered centrally with a view to a small saving in costs through not having to ask associates around the world to enter the amendment on national/regional phase entry.  Even then, national/regional amendment may be necessary or advisable to comply with local requirements.

    What about amending in Chapter II under Article 34 with a Demand for International Preliminary Examination?  The answer is unchanged from 2004.  An applicant may still wish to do so for the purposes of changing the opinion of the IPEA, so that the IPER reports positively on the patentability of the claimed invention before the national or regional office commences examination.  Just don’t expect to receive the results of examination in time to make a go/no-go decision on whether to enter the national phase.  The decision as to whether to proceed in a given office will have to be made based on the applicant’s own analysis of the prior art and the Written Opinion.

  • Comment

    We have seen an increase in the popularity of the EPO as an International Preliminary Examining Authority.  The USPTO used to be popular, if only to enter Chapter II and get the benefit of delayed national/regional phase entry.  Since that benefit was eliminated in 2004, Chapter II generally has become much less used, but where it is used, the EPO is popular, and we are being asked by corporate in-house departments to review Written Opinions they have received and consider preparing amendments at this stage.

    In practice, a delayed process does not affect the go/no-go decision, it merely reduces the window within which to take that decision.  The decision is usually based on the ISR and its Written Opinion rather than the IPER (whether it is on-time or delayed).