[PIUG List] Changes in PCT published applications / Question on US CIP

Dear colleagues,
The PCT newsletter of January 2008 announces a change in the format of
PCT published applications. This applies to all cases with a PCT filing
date of 1 Jan 2008 or later.
 From the information specialist's point of view, most of the changes
seem fairly innocuous - they relate to various declarations and
requests, which will be stored separately under the Documents tab in
PatentScope.

However, one apparently significant change is that it appears that
sequence listings, whether filed on paper or electronically, will now
ALWAYS be published separately from the text specification. Up to now,
this was the case if the sequence listing exceeded a certain number of
pages. The implication of this announcement is that all specifications
with any sequence listing, however short, will now consist of two parts
- the main specification which will be in what we consider the "WO
document", and a separately published annex contain the sequence
listing. The annex will also be stored at the Documents tab of
PatentScope records. It does however raise the question of what other
document suppliers will need to do in the future when they get a request
for a "WO document" - assume the requestor only wants the text, or spend
time locating/making a link to any annexes as well.

If anyone from WIPO who monitors the list would like to comment, I would
welcome clarification
- have I understood the situation correctly?
- what will be the impact on commercial document suppliers (or indeed
services like esp_at_cenet which load the "whole document")?

Following up Syed Ali's question on PCT designations, I would like to
point out that there was a change to PCT practice effective 1 Jan 2004.
Despite the text of Article 4 to which Rick has referred, the
Regulations have changed since the coming into force of the Treaty. An
article in the PCT Newsletter No.11 of 2003 gave a summary of the
changes which were brought into force on 1 Jan 2004, and one of these is
that it will no longer be possible to designate a partial list of member
states. The Newsletter refers to a revision of PCT Rule 4.9(a). The
impact of the revised text is described in the Newsletter as follows:

"The applicant will no longer be able to designate States separately
since, under new PCT Rule 4.9(a) the filing of a request will
constitute: (a) the designation of all Contracting States that are bound
by the PCT on the international filing date; (b) an indication that the
international application is for the grant of every kind of protection
which is available by way of the designation of that State; and (c) an
indication that the international application, where applicable in
respect of the State concerned, is for the grant of a regional and a
national patent.

 This does not prevent the applicant from withdrawing specific
designations by submitting a notice of withdrawal under PCT Rule 90bis.2."

In other words, designation of a single contracting state is now taken
as designation of all states, by all routes, for all IP titles
applicable in those countries, and what we see at INID 81 is merely a
list of all the PCT member states as of the date of filing.

The issue of exclusion of Germany, Japan, Russia and Korea, to which
Rick Niefeld refers, is dealt with in the same PCT Newsletter at p.11.
This is a method of dealing with the phenomenon of "self-designation".
Under the national law in these countries, if you file a national
application and subsequently file an international PCT application
claiming priority from it, and the PCT application designates that
country, the earlier national application is automatically treated as
withdrawn. Effectively, these countries have a national requirement
which means that they cannot have a national filing and a PCT filing
claiming that national priority and designating their country, in effect
at the same time. The PCT authorities therefore introduced a
transitional provision to allow for the exclusion of states which have
such a requirement. But this does not affect the overall principle in
force now, which is that designation is, by default, to all member states.

Stephen Adams

--
Stephen Adams
Magister Ltd.
Crown House, 231 Kings Road, Reading, RG1 4LS, GB
Tel: +44 (0)118 966 6520
Fax: +44 (0)118 966 6620
E-mail: stevea_at_magister.co.uk (replace _at_ by @ to use)
Website : http://www.magister.co.uk

Registered in England and Wales. Company No. 3407685

-------------------------------------------
-----------------------------------------------------------------------
PIUG List owner: Patent Information Users' Group Inc. (R), http://
www.piug.org
PIUG List rules and guidelines: http://www.piug.org/list.php
PIUG List admin: piug_discussion_list-owner(at)v2(dot)listbox(dot)com
PIUG Discussion List @ Listbox


Received on Wed Jan 30 2008 - 11:16:54