Updated PCT Newsletter summary

An updated PCT newsletter summary is available in the download section of this website. The summary contains the practical advices of all newsletters and some further information that I thought could be useful. Of course you should judge for yourself if the summary is complete enough to take to the EQE. The practical advices usually are quite good studying material. Try to answer the question yourself first before reading the answer....did you come up with the same ???

Don't forget to get yourself a copy of the excellent book on the PCT by Cees Mulder !

Updated version of the Cross-Referenced PCT available

Please note that the 2010 edition of the book “The Cross-Referenced Patent Cooperation Treaty” has been issued. The new edition of the book has been updated taking account of the amendments of the “Regulations under the PCT” on 1 July 2010.

In the 2010-edition all references to the PCT Applicant’s Guide – International phase and the PCT Applicant’s Guide – National Phase have been renumbered in keeping with the re-structuring of the Guide by the International Bureau.

The 2010 edition of the “X-Ref PCT” is the one needed if you are preparing for the European Qualifying Examination (EQE) to be held in March 2011.

The new edition of the “X-Ref PCT” also provides reference to the Articles and Implementing Regulations of the EPC [1 April 2010], the Rules relating to Fees [1 July 2010] and to the new edition of the “Guidelines for Examination in the EPO” [April 2010] in as far as relevant for the PCT. As of 1 July 2010, the EPO will start acting as Authority competent to carry out Supplementary International Searches (SISA).


In addition, all references and appendices have been updated in the new edition.


Click here to go to the website.


Learning the PCT is not an easy thing to do. A possible (yet probably not the ultimate) way is to read the chapters on the PCT in Visser using the X-Ref PCT to actually read the articles and rules whereas you make further annotations and/or notes at the same time (both in Visser as in the X Ref PCT). Likewise it is advisable to get to know the Applicant's Guide. Learn how it's organised and learn how to use the index.

If you read through the Visser part at least once it is then also a good idea to take a look at the PCT forms  and to read/check the Articles and Rules that apply to each box in each form. Ask yourself questions like "what would happen if I tick/ untick this box", "why is this box here in the firt place", "if I make a mistake, what would happen, what would be the remedy and what do I need to do". I only found out the usefulness of doing this after having read through the part in Visser at least twice, but can really recommend doing it in an early stage. In fact doing this may even be the start of your "PCT experience".

The same basically goes for the practical advices that are published in the PCT Newsletter. Use the X-Ref PCT to follow the explanations on the subjects you find in these advices. Making notes and further annotations will help you in understanding how it all works.

Hope this helps a bit ...

PCT Newsletter - April 2010 (No. 04/2010)

The latest issue of the PCT Newsletter (No. 04/2010) is now available on
the PCT Resources page in:

http://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_04.pdf

Although interesting to read, w.r.t. importance for the EQE you can skip the practical advice in my view as it does not relate to the law as such but more or less is aimed at providing strategic advice for applicants. More in particular the advice is aimed at whether or not is appropriate to file a demand. I personally wonder why the WIPO decided to do this.

Anyway, I've copied the items which I think are important to the PCT summary.
- EPO will be SISA as per July 1st 2010
- Notifications by e-mail
- Example request forms
- Updated ISA and IPEA agreements
- Power of Attorney waivers

PCT Procedures and Passage into the European Phase: 2nd edition available

Peter Watchorn and Andrea Veronese brought to my attention that as of March 2010 the second edition of their book "PCT Procedures and Passage into the European Phase" is available. 

Peter and Andrea wrote the following :

This second edition of "PCT Procedures" incorporates and explains all legal changes which came into force for the EPC and the PCT since the first edition of this book was published in 2006 (including, in particular, the coming into force of the EPC-2000). 

It also pre-empts changes to the EPC and the PCT which will comeinto force in 2010 (on 1 April and 1 July respectively). It explains in particular the changes regarding the limitation of supplementary searches in the European system, changes to the filing of divisional applications (relevant to non-unitary cases entering the European phase from the PCT) as well as changes to the procedures for making and indicating amendments in the EPC and the requirement to reply to EPO opinions or reports after entry into the European phase. 

Likewise for the PCT, the new Supplementary International Search, new procedures for the acquisition of a filing date and the late filing of application documents in the PCT as well as new procedures for correcting application documents are also explained in detail.

More information can be found on their website : http://www.pct-compass.com/

More links to study material can be found here.

PCT Newsletter - March 2010 (No. 03/2010)

The latest issue of the PCT Newsletter (No. 03/2010) is now available on the PCT Resources page in:
PDF at: http://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_03.pdf

I've copied the (in my opinion) most interesting parts w.r.t. the EQE to the summary available here.

PCT Newsletter - February 2010 (No. 02/2010)

http://eqetools.blogspot.com/2009/06/downloads.htmlThe latest issue of the PCT Newsletter (No. 02/2010) is now available on the PCT Resources page in:

PDF at: http://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_02.pdf
HTML at: http://www.wipo.int/pct/en/newslett/

The PCT summary will be updated soon (I'm a bit behind with the summaries, sorry for that..)

Download summaries here.

PCT Newsletter - January 2010 (No. 01/2010)

The latest issue of the PCT Newsletter (No. 01/2010) is now available on the PCT Resources page in:

PDF at: http://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_01.pdf
HTML at: http://www.wipo.int/pct/en/newslett/

For the EQE there is an interesting item with respect to the material you should (?) take to the exam. The PDF's are about 1700 pages in total, so think carefully before you hit the "print" button. The key question you will have is whether or not to take these documents to the EQE.

I don't think anyone can give you a clear answer on that. However, you could ask yourself how much marks you will loose if you don't know the specific detail that the specific D question asks for. In addition, if you don't know your way around this huge document it is pointless printing it out and carrying it to the EQE.

So, not much of a help from my side so far.

For what it's worth, I did not bring it along last year. I merely copied the relevant information for the countries that I thought could be part of a question (EP, US, JP, CN) only to find out that I did not even need that....

I personally find it absurd that candidates should print so many pages and wonder why the Examination Committee does not limit the scope to only a small selection of countries/regions. It's all about knowing the principle rather than being able to find out pecularities of how the PCT is implemented in Zimbabwe for example isn't it .....

I'll update the PCT Summary 2010 shortly and post a link in the downloads section


Update : Pete Pollard has made a summary of PCT material to take to the EQE, click here.

PCT Newsletter Summary 2009 complete

The PCT Newsletter Summary 2009 has been updated and now contains all practical advices as published (and some additional information). From 2010 I'll move to the Google Docs platform, saving myself some time in editing, converting to PDF, uploading etc...

In addition (I just keep on trying...) the latter platform allows for (realtime) collaboration. So, if you want to contribute, please send me an e-mail.

Download it here.

PCT Newsletter - December 2009 (No. 12/2009)

The latest issue of the PCT Newsletter (No. 12/2009) is now available on the PCT Resources page:

http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_12.pdf

This is the last PCT newsletter of 2009. I'll update the PCT summary also including the PCT newsletters published beginning of this year (if this appears necessary).

Missing parts under the PCT and the EPC

Under the EPC applicants have the possibility to file missing parts while keeping the same filing date provided the missing parts are completely contained in the priority application.

A similar possibility exists under the PCT, however there is a slight difference, in the sense that under the PCT the missing parts must be completely contained in the priority application(s) from which priority is claimed upon filing. The EPC provisions do not appear to have this requirement.

As a result an applicant may be allowed (after having filed his application) to first add an additional priority claim and then file "missing parts" of the application based on this later added priority claim.

During a seminar of the EPI on the PCT earlier today,  this difference was brought under the attention to a speaker from the EPO. Although he more or less agreed with the person making this comment that adding "missing part" in this way probably contravenes Article 123(2) he admitted that it is not forbidden under the EPC per se.

This appears to be one of the loopholes in the law which one day will be solved either by case law or revision of the law.

More snippets from this seminar to come....

PCT Newsletter - November 2009 available

The latest issue of the PCT Newsletter (No. 11/2009) is now available on

the PCT Resources page in:

PDF at:
http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_11.pdf

The practical advice this month is mainly related to electronic filing, to my opinion not so relevant for the EQE. One thing to remember both for the EPC and PCT is that a fee reduction applies when applicants file electronically. Thus, e-filing is in the interest of your D2 client, hence mentioning this may be worth a mark (you never know...).

For what it's worth, I will update the PCT summary.

Update of PCT applicant's guide

The WIPO has published an updated version of the applicant's guide. The applicant's guide is quite a useful guide for learning/ understanding the PCT. It is advisable to take a copy of the latest version to the EQE. Please keep in mind that it will not help you to "just take it" without having looked at how the guide works. In the exam there is simply no time to start looking for an answer. You should basically already know approximately where you could find the answer and then use the (detailed) index to find it. Of course this guide should be used in addition to the official PCT Articles and Rules. I can further recommend taking a look at the book of Cees Mulder in that respect.

In the EQE 2009 there were not a lot of PCT related questions (luckily), but you never know if this is the start of a trend or not.....

Download the Applicant's Guide here.

PCT Newsletter #9 available for download

The September issue of the PCT Newsletter is available for download here.

The Practical Advice will be copied to the PCT Newsletter summary.

PCT Newsletter 2009 #7 and #8

The combined July and August edition of the PCT Newsletter is available for download, click here.

The National Institute of Industrial Property (Brazil) was appointed as ISA and IPEA and will begin functioning as such with effect from August 7, 2009.

Question from the practical advice:

I have heard that a number of changes took place on 1 July 2009 concerning the filing of sequence listings, for example, that there is no longer a fee benefit for sequence listings over 400 pages. As I plan on filing an international application containing a sequence listing of about 500 pages, please could you explain the options available to me for filing the sequence listing part - will I now have to pay a fee per sheet for that part?

The answer can be found in the Newsletter. This advice concerns sequence listings and is quite specific. I personally think it is not that important for the EQE ...

That said, I copied the entire advice and the other information above to the PCT Newsletter Summary, which will be available in the download area soon.

PCT Newsletter 2009 #6

The June 2009 issue of the PCT Newsletter is available for download, click here.

Several rule changes will enter into force from July 1, 2009. A document with all the changes can be downloaded here and a presentation (Powerpoint) here.

Make sure you update your PCT legal texts !!

With effect from 1 June 2009 the French National Institute of Industrial Property (INPI) has withdrawn it's reservation under Rule 26bis.3(j). As a result Rule 26bis.3(a) to (i) apply with respect to the INPI in it's capacity as Receiving Office. The INPI further notified that it will apply the "due care" criterion".

The practical advice and some of the information above has been copied to the PCT Newsletter 2009 Summary (which will be available from the download area on short term).

Happy reading !

PCT Newsletter 2009 #5

The latest issue of the PCT Newsletter (No. 05/2009) is now available on the PCT Resources page

http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_05.pdf

With respect to the EQE, at least read the practical advice ...