The End of PCT Chapter II?

With effect from 1 April 2002, Article 22 PCT has been amended to provide that an applicant does not have to initiate the national/regional phases of an application until 30 months from the priority date (later where the relevant national/regional law allows) regardless of whether or not a Demand is filed. Thus, the applicant is no longer required to file a Demand for International Preliminary Examination in order to prolong the life of an International application beyond 20 months from the priority date of the application. At present, this change has already been implemented in the European Patent Convention and United Kingdom patent laws, and in the US. It is believed this change will not come into effect in Japan until some time around September/October 2002. Other states whose national laws have not yet been amended to bring the change are understood to include Australia, Israel, the Republic of Korea, Norway and South Africa. A complete list of the states that have informed WIPO that their national laws would not be amended to implement the modification to Article 22 PCT as well as a table setting out the current national/regional phase entry deadlines for the PCT contracting states can be found at www.wipo.int/portal/index.html.en.

Comment

In the long term, once this change takes full effect, an applicant will only need to file a Demand for International Preliminary Examination if an examination on the merits of the application is required before making the decision as to whether to enter the application into the national/regional phases. Regardless of whether a Demand is filed, the earliest deadline for entering the national/regional phase will be 30 months from the priority date of the International application. However, during the present transitional period, it will still be necessary for applicants to consider filing a Demand, purely to delay the date by which national/regional processing must start in those PCT contracting states that have yet to align their national/regional laws with Article 22 PCT.

Once the transitional period is over and the sole reason for requesting International Preliminary Examination will be to obtain an examination on the merits, consideration will need to be given as to the value of such examination. Applicants wishing to defer incurring costs will no doubt not seek International Preliminary Examination. Equally, there will be no purpose in seeking International Preliminary Examination at the EPO for applications containing claims for subject-matter the EPO has said it will no longer examine in PCT applications (this excluded subject-matter is discussed in more detail below). However, there will be cases where the invention is of considerable commercial importance where a relatively early high class examination report will be of value and such a report would also prove worthwhile if the applicant intends to proceed with the national phases in designations where the local patent office tends to rely on the examination results from a major granting authority such as the EPO or USPTO. For some applicants, at least, the issue of a favourable International Preliminary Examination Report prepared by the EPO might be of considerable value in deciding whether to incur the costs of entering the regional phase before the EPO.

UK and European Patent Convention Rules to comply with Article 22 PCT

Rule 85 of the Patents Rules 1995 has been amended with effect from 1 April 2002 so that there is now a uniform period of 31 months for entering the national phase in the United Kingdom, irrespective of whether a Demand for International Preliminary Examination is filed.

The new Rule 85 applies to any designation of the United Kingdom in an International patent application in respect of which the national phase processing had not commenced and the term of 21 months under Chapter I of the PCT had not expired by 1 April 2002. The Implementary Regulations of the European Patent Convention were amended to reflect the change to Article 22 PCT before the amendment to the PCT came into force. The amendment to Rule 107 EPC came into effect on 2 January 2002 and since then, the earliest deadline for commencing regional phase processing at the European Patent Office has been 31 months from the priority date of the International application, whether or not a Demand for International Preliminary Examination has been requested under Chapter II PCT.