PRODUCT EVALUATION

The advent of the Patent Co-operation Treaty (PCT) in 1970 and subsequent amendments in 1979 and 1984 has proven to form a highly valued system, allowing simultaneous application for patent in each of over 80 countries and by region in some cases, by globally centralizing the application procedure. Each member State, as well as the International Bureau of the WIPO in Geneva, may act as a receiving office for the PCT application, called a PCT Request. Further, the PCT system allows the flexibility for applicants to reap the advantages of filing first in their resident State and then filing the international application up to a year later; or using the PCT filing date as their priority date and entering the national phase of the home State through the PCT application process. It is essential to be precise in remembering, especially for purposes of this inquiry, that there is no such thing as a PCT patent-- only a PCT application-- as the PCT is a mechanism for filing applications simultaneously: the patent must still be gained from each country individually.
Before filing a PCT Request, the applicant may wish to perform a preliminary search of prior art, as defined under the PCT, in order to evaluate whether the expected returns warrant that the requisite time and money to be spent in the filing process. Included in this prior art, yet having a separate utility as well, is the ability to search for PCT Requests and/or patents granted through the PCT system. Both of these issues will be explored below.

Prior Art Under the PCT

International searching is provided in Article 15 of the PCT. In order to prepare for the novelty requirements applied to a PCT Request, the applicant will most likely be best served by searching the material to which the application will be compared. The searches are performed by one of the International Searching Authorities (ISA's): Australian Patent Office, Chinese Patent Office, European Patent Office (EPO), Japanese Patent Office, Russian Patent Office, Swedish Patent Office, and the United States PTO. The receiving office in each member State makes a designation to the International Bureau at WIPO under Rule 35 of the PCT Regulations of the ISA which is "competent" to perform the International Search for PCT Requests it receives. The International Bureau may itself be a receiving office under Rule 19, but the competent ISA's are still determined according to those for the State of residency. These are published by the International Bureau, as well as changes which may arise. Some member States only have one competent ISA, and others have several. When completing a PCT Request, Box VII on the form provides a space for the required designation of the International Search Authority which the applicant wishes to evaluate the application. Where there is only one competent ISA designated by the applicant's State of residency, the ISA will automatically be employed; where there is more than one available, the applicant must specify one. When filing a PCT Request with the receiving office at the US PTO or the International Bureau of WIPO, U.S. applicants may designate either the US PTO or the EPO as the preferred International Search Authority. Factors which may play in this decision are language capabilities of the office, the effect on fees when entering national or regional stages of the application process, and the availability of International Preliminary Examiners which flow directly from the ISA used.

For instance, designating the US PTO as the ISA for a Request filed at the US PTO would have some downstream cost benefits over using the EPO, such as a lower fee when filing the Request initially, a reduced fee when entering the US national phase (where the PCT filing date is the first filing), and a lower fee for searching additional inventions where the claims are found to lack unity. However, the EPO would have other benefits, such as language capabilities, use of the international class system, no fee when entering the European Regional phase (required when choosing to file in Belgium, France, Greece, Ireland, Italy, and/or Monaco, and an option when filing in States which are other members to the European Patent Convention), and the flexibility to still designate the US PTO or the EPO to perform the International Preliminary Examination.(The PCT System for Worldwide Filing of Patent Applications, WIPO 1996). It may also be wise to consult the Official Gazette before deciding, in case of information such as that in October of 1994 when there was a shortage of work at the EPO. Certain applications which claimed no priority to a past application were filtered over to the Hague for international search regardless of the designation. 1167 OG 74 (Oct. 18, 1994). An applicant could have gained a significant time advantage by designating the EPO as the ISA, allowing fewer time constraints to amend claims prior to the international publication date.

There can be no doubt as to the quality of the search performed by the ISA's, due to the stringent requirements placed upon a patent office in Rule 36 of the Regulations to maintain ISA status, in regard to the staff requirements and the extent of documentation maintained and searched by the office. The quality of the search can pay dividends, however, for the applicant. The results of the International Search are provided to the applicant in an International Search Report. The report "lists citations of prior art relevant to the claims of [the application] and gives an indication of the possible relevance of the citations to the questions of novelty and inventive step" similar to the 17 USC §103 non-obvious requirement (Basic Facts about the Patent Cooperation Treaty, WIPO April 1995). The ISA will also check for unity of invention, as well as whether title and abstract requirements are met under the PCT Regulations (Rules 4.3 and 8, respectively). In order to pay an unfruitful filing fee, however, the applicant may wish to perform a similar prior art search beforehand.

The prior art searched is set out by Rules 33 and 34 in the PCT Regulations. Rule 33.1 lists the basic definitions of "Relevant Prior Art for the International Search," and includes "everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and illustrations) and which is capable of being of assistance in determining that the claimed invention is or is not new and that it does or does not involve an inventive step. . ., provided that the making available to the public occurred prior to the international filing date." While this may seem uselessly broad, there is a more refined and definite list given in Rule 34 of the "Minimum Documentation" to be searched under Article 15(4) of the Treaty. First, the ISA will search what are known as the "national patent documents."
These include:


PCT Regulations, Rule 34.1(c). Other interested countries may provide patents and applications published after 1920, so long as they are published in English, French, German, or Spanish, and so long as the interested country sorts the documents and "places them at the disposal of each International Search Authority." Rule 34.1(d) (emphasis added).

Next, the ISA will search "the published international PCT applications, the published regional applications for. . ., and the published regional patents and inventors' certificates. . . ." Rule 34 (b). The regional patents may cover those listed in Box V of the PCT Request: the ARIPO patents which developed out of the Harare Protocol (Kenya, Lesotho, Malawi, Sudan, Swaziland, Uganda, etc.); the Eurasian patents which developed out of the Eurasian Patent Convention (Azerbaijan, Belarus, Kazakstan, Russia, etc.); the European Patent discussed above; and the OAPI patent States (Burkina Faso, Benin, Congo, Cameroon, Niger, Togo, etc.).

Finally, the ISA will search "such other published items of non-patent literature as the International Searching Authorities shall agree upon and which shall be published. . . the first time and whenever changed." Id. This will include technical publications in Chinese, English, French, German, Japanese, Russian, and Spanish (the most likely application languages).
The periodicals, decided upon in the Fifth Session of PCT Meetings in 1981, number 169-- 168 primary periodicals in various languages, and one secondary source, Chemical Abstracts. The First Twenty-Five Years of the Patent Cooperation Treaty, 1970-1995 (WIPO Geneva 1995). since then, the list has been again narrowed to about 135. The periodicals must be kept for at least five years, but earlier sources are commonly archived. Thought a listing of these sources may be obtained from the International Bureau at WIPO, or in PCT Gazette No. 23/1993 (Sept. 16, 1993) they do not guarantee uniformity, for each ISA is required to utilize any other sources available to them (which are not necessarily available to other ISA's). Hence, searching the list provided by the IB may not be comprehensive in regard to the ISA chosen.

Finding International Patent Information on Questel-Orbit

So how does one go about looking for this information? One avenue which the researcher would be wise to travel is first acquiring the IB listing of non-patent materials in the PCT Gazette listing above, as well as the "PCT Search Guidelines" in PCT Gazette No. 30/1992 (Dec. 10, 192), with amendments published in No. 29/1993 (Dec. 9, 1993). For international patent materials, Questel-Orbit offers a handful of databases which each offer something to the user and have some disadvantages. Questel offers the comprehensive EDOC database, which includes the search material referenced by the EPO, in regard to patents and published patent applications. This database provides such information from all countries in Rule 34 back to at least 1920, except for the Soviet Union, which extends back only to 1986. Twelve other countries are included, along with PCT applications, and OAPI patents. Though the database provides all that is needed for searching patent materials under the minimum documentation of Rule 34 of the PCT Regulations, provided the EPO is selected as the competent ISA, the database is only updated monthly, and perhaps the largest drawback, it is conveyed in French.

Orbit's WPAT file (Derwent World Patent Index, also available on DIALOG, though in two separate files with 1981 as demarcation year) covers patents and equivalents on new inventions back to 1963 for all the Rule 34.1(c) authorities and 28 more, in addition to published applications under the EPO and PCT. Advantages of the system come in the form of search capabilities and drawings, weekly updating since 1981, and data is given in English. The only real drawback is in the dates of coverage for PCT Rule 34 requirements. The best plan for language limitations as to EDOC could be in using EDOC to ferret out dates of prior art which occur after 1963. Then the user could enter the more expensive Derwent with those patent numbers to obtain English versions of those patents. Perhaps those PCT applications will contain the references to the other prior art cited in EDOC. Nevertheless, the text of those prior patents would still be limited to French language if EDOC were the only available other source.

INPADOC on Orbit is less expensive and expands coverage range, but the user sacrifices generally about 10 years in coverage dates compared to Derwent, except for EPO coverage, which goes back to the standard 1978. It offers references to Chemical Abstracts, Derwent Accession Numbers, and Patent Abstracts of Japan. The information is prepared by the EPO and updated weekly. The database also offers the INPANEW feature for current awareness. To make fuller searches with INPADOC, it would need to be combined with other databases, such as Questel/Orbit PCTPAT, which provides PCT application coverage, also back to 1978. Questel-Orbit Database Catalog (1996).

Problems arise when attempting to search non-patent literature. There is no guarantee that one's search would be comprehensive, even if every periodical on the IB's list were exhausted. Hence, it is to the applicant's discretion to decide if, based upon good results in the patent-related search, it would be economical to go ahead and file the application and allow the ISA to perform the search with the hopes of either the same negligible results as the patent literature or the ability to amend the claims appropriately. The fees for searches by the ISA are not so exorbitant, especially with the U.S. as the authority, considering that even INPADOC can run up to $100/hr on Orbit just for connect time. Questel Orbit Price List (1996). Imagine searching through at least 135 different periodicals, each of which, assuming accessible, could be in various combinations in different databases of varying prices! If the researcher could search each periodical on the minimum documentation list in ten minutes, that's around twenty-four hours of search time. If the total cost of the database(s) used averaged $70/hr, the price tag on a search could total nearly $1700 + patent-related search costs. Even under the most drastic circumstances using the EPO as the ISA, single invention searches will not cost this much. True, the filing fees must also be paid to reach the search stage, but these will have to be paid either way, assuming that the inventor decides to go ahead with the invention. Hence, in my humble opinion, it would be wisest to (1) obtain the IB periodical lists and search guidelines from WIPO, (2) search the patent-related literature and readily available periodicals, such as Chemical Abstracts (where applicable), and (3) make an educated guess regarding patentability based upon the information collected. If the applicant intends to proceed, the practitioner may then save time by speculating on and preparing for possible amendments to claims, while letting the ISA search the other sources before turning out the International Search Report. If all goes well, the priority date will at least be earlier and the temporal and monetary costs for full search results will likely be lower. Given a prudent guess after viewing the patent-related literature, the most that will then be required is to make slight claim modifications to circumvent moderately-related published articles. With close analysis beforehand, these amendments may be prepared for to some extent, making the PCT application process a fairly streamlined series of events, as it was intended to be.


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