16 July 2010

So You Want to Attack an Invalid PCT Application...

The World Intellectual Property Office (WIPO) has been working on a number of enhancements to the international patent application system operating under the Patent Cooperation Treaty (PCT), in response to a study by the International Bureau (IB) entitled “The Need for Improving the Functioning of the PCT System”.

According to the current (July-August) edition of the PCT Newsletter, a number of recommendations were endorsed at a recent meeting of the PCT Working Group.

One of these, reportedly due to be implemented in the near future, is to develop an online system to accept third party observations in relation to pending PCT applications.  This will enable any person having information (typically prior art) relevant to the validity of claims in a pending PCT application to submit that information via a web form hosted on the WIPO site.  The submitted documents would be accessible to international examiners, to examiners in the various national offices, and to third parties (via the PATENTSCOPE service).

Similar provisions are already in place at some national patent offices.  For example, any third party can submit observations and pertinent prior art in respect of any application pending before the European Patent Office (EPO), which will generally be considered by the Examining Division.  In Australia, section 27 of the Patents Act 1990 provides for any person to submit information to the patent office that may affect the validity of the claims of a patent application.

The proposed system will enable relevant information to be brought to the attention of examiners, and applicants, at an earlier stage of the application process.  This should provide benefits to all stake holders:
  1. third parties concerned about the validity of patent claims that may impact upon their businesses will be able to submit prior art via a single international interface, rather than having to do so before separate national offices (where permitted);
  2. the attention of international examiners, and examiners in national offices, may be drawn to prior art known to persons with relevant industry knowledge, that might not be easily identifiable through searching;
  3. applicants may become aware of relevant prior art at an earlier stage, before committing to the filing of national applications; and
  4. the patent system generally may be improved by providing additional avenues by which relevant prior art may be brought to light.
We will watch keenly for the implementation of this system!

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