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Explanatory Memorandum on Modifications to the Patent Cooperation Treaty (01/03/02)

Title of the Treaty
Modifications of Article 22 of the Patent Cooperation Treaty (PCT) and Amendments of the Regulations Under the PCT adopted by the Assembly of the International Patent Cooperation Union at its 30th (13th Ordinary) session on 3 October 2001.
Command Paper Number: Cm 5457
Modifications of Article 22 of the Patent Cooperation Treaty (PCT)  (PDF, 159K)  
Subject Matter
The Treaty was done at Washington on 19 June 1970 (Treaty Series No. 78 (1978) Cmnd 7340) and has previously been amended on 28 September 1979 and modified on 3 February 1984.  The present modifications to the Treaty were adopted by the PCT Assembly on 3 October 2001 with effect from 1 April 2002. In addition, numerous amendments have been adopted to the Regulations under the Treaty.
The Treaty establishes an international system for filing, searching, and examination of applications for the protection of inventions by patents.  It also makes provision for international programmes of technical assistance to developing countries in developing their patent systems.
An applicant files an international application through this system.  An international authority then conducts a search to find record of earlier disclosures of the invention involved and, optionally, an examination to see whether the application meets other common requirements for patent protection.
The applicant is then required to provide fees and documents to patent offices where he wishes patents to be granted within certain time periods, to be set by the law governing the offices in question.
Prior to modification the Treaty provided a minimum time limit of 20 months, unless international examination had been requested, in which case the minimum period is 30 months.  The modification sets the minimum to 30 months in either case.
Ministerial Responsibility
The Secretary of State for Trade and Industry has responsibility for policy matters relating to intellectual property and, in particular, the filing of patent applications.  The Secretary of State for Foreign and Commonwealth Affairs has overall responsibility for the conclusion and implementation of treaty obligations and responsibility for their application in Overseas Territories.
Policy Considerations

(i)         General
The modifications recognise that many applicants request international examination of applications under this system simply to obtain additional time before having to commit to the expense of proceeding with the application in each individual state.  This expense can be considerable in official and professional fees together with translations of the applications into the various languages which may be needed.
Setting the same time limits whether or not examination is requested removes the need for patent applicants to pay for a service that they did not want and consequently reduces the demands on the international authorities, who have difficulty coping with the volume of work.  Users of the system agree that this is  necessary to avoid the system breaking down because of backlogs of work at these authorities, pending a more permanent solution being found to the problem of work-loads.
(ii)        Financial
This measure removes a cost to patent applicants in requesting international examination merely to defer other, larger, costs.  It has no significant cost to the United Kingdom government, since the Patent Office is not an international authority for this system and the cost of national processing, which already includes a full examination, is covered by the national fees.
(iii)       Transitional Arrangements
Contracting States are permitted to notify the Director General of the World Intellectual Property Organization that their law is not compatible with the modifications.  The United Kingdom has made such a notification and will consequently not be bound until the law has been amended.  A Decision of the Assembly on adoption of the modifications recommended that national laws should be made compatible as quickly as possible to reduce to a minimum the period of confusion to users of the system, who will be subject to significantly different time limits for protection in different states.
Amendment to the Patents Rules 1995 is required to give effect to the modifications to the Treaty.
Representatives of European business and patent professionals were consulted prior to adoption of the Modifications.  They recognised the need for them because it was considered that otherwise the international authorities might cease to be able to perform their duties under the system effectively.
Presented to Parliament        
March 2002

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