united states patent and trademark office

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United States Patent and Trademark Office

Revised PCT International Search andPreliminary Examination Guidelines

Biotech/ChemPharm Customer Partnership Meeting

February 3, 2003

Jasemine C. Chambers Director, Technology Center 1600

United States Patent and Trademark [email protected]

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Overview

BackgroundBenefitsRevision ProcessGeneral FeaturesObjectivesOrganization of ContentIndividual Chapters – claims, unity of invention, prior art, inventive step, industrial applicability, international search, common quality framework

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Background

In September 2002 , the PCT Assembly adopted proposals by the PCT Reform Committee to introduce an enhanced international search and preliminary examination (EISPE) system.

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Background – cont.

EISPE systemConvergence of Chapter I and II proceduresIn Chapter I, ISA establishes both ISR and WOWO of the ISA will have the same scope and content as today’s WO of the IPEAWO of the ISA is sent to applicant along with the ISRISR will be published with application, but WO of the ISA will not beApplicant may informally submit comments to the IB

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EISPE system – cont.

If no demand is filed by applicant, a Chapter I IPRP is issued, which is a repackaged WO of the ISA

If a demand is filed, then in Chapter II:WO of the ISA is considered the first WO of the IPEAA new WO of the IPEA is issued only in rare circumstances

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The introduction of the EISPE system necessitated a significant revision of the PCT international search and preliminary examination guidelines to reflect new rules and procedures, and a single, combined set of guidelines for both search and examination.

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Benefits

Opportunity to create an international standard for processes and methodologies to be used by each International Authority.

Will assist in the work sharing efforts.

Will assist in standardizing practices around the globe.

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Revision Process

October 2002 Trilateral Meeting - USPTO agreed to take the lead in the drafting of the revised guidelines.

November 2002 Trilateral Conference – USPTO presented an action plan, which was adopted by the trilateral offices.

Three meetings of the IAs took place in February, May, and July 2003.

December 2003 – Final text of the revised guidelines established by the International Bureau after consultation with the IAs.

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General Features of the Revised Guidelines

Serve as common rules.

Do not have binding authority of a legal text.

Effective for applications filed on or after January 1, 2004.

Incorporated changes resulting from amendments to the Regulations under the PCT adopted by the Assembly in September 2002 as well as subsequent amendments.

Combined previously separate search and examination guidelines into a single text.

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General Features of the Revised Guidelines - cont.

Necessary because of convergence of the traditional Chapter I and Chapter II procedures under the EISPE system.

Will enhance consistency between the searching and examining authorities.

Detail the establishment (under the EISPE system) of the written opinion of the searching authority and the rules and guidelines governing such.

Detail the new search and examination timeline under the EISPE system.

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Objectives of the Revised Guidelines

To provide more practical guidance to examiners.

To work toward a common approach wherever possible; however,

Where there were divergent practices in the national offices, the divergent practices were set forth in the appendices to the individual chapters.

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Objectives of the Revised Guidelines – cont.

To reflect current search and examination practices, especially in:

Use of automated search tools.Application of utility criteria.Assessment of inventive step.Analytical framework for assessing a holding of lack of unity.

USPTO examiners will have on-line access to the revised guidelines.

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Organization of Content of the Revised Guidelines

Part I – Introduction and OverviewChapter 1 –IntroductionChapter 2 – Overview of the International Search StageChapter 3 – Overview of the International Preliminary Examination Stage

Part II – The International ApplicationChapter 4 – Content of the International Application (Other than the Claims)Chapter 5 – ClaimsChapter 6 – PriorityChapter 7 – Classification of International ApplicationsChapter 8 – Rule 91 – Obvious Errors in Documents

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Organization of Content of the Revised Guidelines – cont.

Part III – Examiner Considerations Common to Both the International Searching Authority and the International Preliminary Examining Authority

Chapter 9 – Exclusions From, and Limitations of, International Search and International Preliminary Examination

Chapter 10 – Unity of InventionChapter 11 – Prior ArtChapter 12 – NoveltyChapter 13 – Inventive StepChapter 14 – Industrial Applicability

Part IV – The International SearchChapter 15 – The International SearchChapter 16 - International Search Report

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Organization of Content of the Revised Guidelines – cont.

Part V – Written Opinions/International Preliminary Examination Report

Chapter 17 – Content of Written Opinions and the International Preliminary Examination Report

Part VI – The International Preliminary Examination Stage (Other than the International Preliminary Report)

Chapter 18 – Preliminary Procedure on receipt of the DemandChapter 19 – Examination Procedure Before the International Preliminary

Examining AuthorityChapter 20 – Amendments

Part VII– QualityChapter 21 – A Common Quality Framework for International Search and

Preliminary ExaminationPart VIII– Clerical and Administrative Procedures

Chapter 22 – Clerical and Administrative Procedures

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Chapter 5 - Claims

Provides additional guidance to examiners with respect to:Claim construction.Conciseness.Enablement.Relationship of claims to the disclosure.

Includes an appendix that sets forth divergent practices on:Multiple dependent claims.Use claims.Product by process claims.Conciseness.

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Chapter 10 – Unity of Invention

Provides an analytical framework for assessing a holding of lack of unity.

Includes new biotechnology examples.

Fully incorporated Annex B of PCT Administrative Instructions.

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Chapter 11 – Prior Art

Includes guidance to examiners on how to address disclosure on the Internet.

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Chapter 13 – Inventive Step

Sets forth the assessment of inventive step.

Includes an appendix that sets forth:Problem-solution approach.Examples in which a single document calls into question the inventive step.

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Chapter 14 – Industrial Applicability

Includes an appendix that sets forth the application of the utility criteria.

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Chapter 15 – The International Search

Revised to allow a more complete documentation of international search to assist examiners at the national stage.

Revised to reflect the use of automated search tools.

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Chapter 21 – A Common Quality Framework for International Search and Preliminary Examination

New chapter

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THANK YOU

Jasemine C. Chambers Director, Technology Center 1600

United States Patent and Trademark [email protected]