Effect of the 2007 PCT Reforms in Europe

Patent Cooperation Treaty (PCT) came into effect on April 1, 2007 and introduced changes which allow applicants to:

1. Late file missing elements and parts of the PCT application;
2. Restore priority rights when cases are filed outside the normal 12 month priority period; and
3. Rectify obvious mistakes more easily than before.

A number of Receiving and Designated offices, have filed reservations to declare their incompatibility with one or more of these rule changes. For the period from April 1, 2007 until December 13, 2007 when EPC 2007 came into force, the EPO had declared its incompatibility with the rule changes concerning (1) the missing elements and parts of the PCT application; and (2) the restoration of the right of priority. We set out these rule changes in more detail below to consider how rule changes (1) and (2) might affect the patent situation in Europe, both before and after EPC 2000 comes into force.

Missing elements and parts of the International Application

Where a PCT application is filed with an element or part missing, it is currently possible to file the missing element or part, but one loses the original filing date, and the date when the missing element or part is filed becomes the new PCT filing date. This can lead to invalidity of the patent application. (An "element" in this sense is considered to be e.g. all of the description or all of the claims, whereas a "part" is considered to be part of the description, part of the claims, or part or all of the drawings.) The provisions of the PCT are currently in line with the provisions of the EPC in this regard.

Rule 20 PCT will be substantially revised to deal with this situation, most notably by allowing late filing of the missing element or part without loss of the original filing date, if the missing element or part was completely contained in the priority document. One of the main points to note is that the missing element or part must be incorporated without any change. If a discrepancy is found, the filing date will be corrected to the date of filing of the missing part, as is currently the case. Otherwise, references to the missing element or part will have to be deleted. The application documents will also have to include a statement of incorporation by reference of the priority document, but a standard statement will be included on the PCT Request Forms produced by WIPO, so this should be automatic. The onus is on the Applicant to a certain extent in that action must generally be taken within two months from filing the PCT application.

This PCT rule change is in line with the corresponding provisions of EPC 2000, however, is a “window” from April 1, 2007 until December 13, 2007, during which this rule change will not be recognised in Europe.

During this “window”, although a PCT application filed with a missing element or part may have been assigned the first filing date, the EPO will not accept this filing date. Upon entering the European Regional phase, the filing date of the European patent application will be considered to be the date on which the missing part was furnished. This could of course mean that the priority claim becomes invalid if the new (later) filing date falls outside the priority period. However, it should be noted that in these circumstances, Rule 82ter will continue to apply so that the earlier filing date can be restored by removing the missing element or part before the EPO. This will of course only be an option if the missing element or part was not essential to the validity of the patent application.

Restoration of the priority right

This change enable a PCTs application to claim priority from an earlier filed application, even if the PCT application is filed outside the priority year, in specified circumstances. Formally this amendment does not provide an extension of the priority period, however, it does have the same practical effect, wherein the maximum extension allowed for the priority period is two months.

In order for the extension to be granted, the Receiving Office must be satisfied that the failure to file the International Application within the priority period:

• occurred in spite of due care required by the circumstances having been taken; or
• was unintentional.

The amended rule sets out that each Receiving Office must apply at least one of those criteria and may apply both of them. This issue is important - if the restoration occurs under the more stringent "in spite of due care" criterion, that restoration must be recognised by all Designated Offices (subject to reservations having been made, as in the case of the EPO). Restorations based on the "unintentional" criterion will only be recognised by those countries that apply the "unintentional" criterion in their national law. Accordingly, the priority right will be recognised far more widely if the failure to file the PCT application during the normal priority year can be shown to have occurred "in spite of due care", rather than if the failure was merely "unintentional".

This PCT rule change is in line with the corresponding provisions of EPC 2000. Again, however, there is a “window” from April 1, 2007 until December 13, 2007, during which this rule change will not be recognised in Europe.

Rectification of obvious mistakes

Rule 91 PCT has been substantially revised to make it easier to rectify obvious mistakes, but in practice, it can be assumed that the revised rule makes little change to the type of rectifications that can be made. The most notable change is that now the mistake must be obvious to "the competent authority" rather than to "anyone". There is also a new time limit which requires that a request for rectification may be submitted within 26 months from the priority date, instead of the current 17 month deadline.

Rule 91(d) provides that in case of a mistake in the description, claims or drawings, the competent authority shall only take into account the contents of the description, claims and drawings. Mistakes which are not rectifiable under Rule 91 include:

• missing pages and parts;
• a mistake in the abstract;
• mistakes in Article 19 amendments; and
• mistakes in priority claims.

The EPO has not submitted any reservation with respect to this rule change.

Effects of EPC 2000

EPC 2000 introduces a number of changes to the European patent procedure, however this article is limited to discussing the effects of EPC 2000 on missing elements and parts of the International Application and restoration of the priority right.

Missing elements and parts of the International Application

Rule 39a(3) of EPC 2000 provides essentially the same remedy as catered for by the corresponding PCT rule change. It will be interesting to see how the EPO treats incomplete PCT applications filed within the “window” mentioned above, i.e. incomplete PCT applications filed after April 1, 2007 which then enter the European procedure after EPC 2000 comes into force. It is likely the EPO will quite strict in their approach and perhaps will not accept the “first” filing date assigned to the PCT application in these circumstances. A related point to note is that EPC 2000 provides that the inclusion of one or more claims will no longer be a prerequisite for the accordance of a filing date. Therefore, once EPC 2000 comes into force, missing claims will not be an issue for obtaining a filing date in Europe.