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The New Disincentive in the U.s. to File a U.s. National Application Prior To, and in Addition To, a Pct Application

The New Disincentive in the U.S. to File a U.S. National Application Prior to, and in addition to, a PCT Application, and the Increased Incentive to Elect KIPO as the ISA

On February 16, 2007, the USPTO published in the Federal Register a notice of proposed rule making entitled "April 2007 Revision of Patent Cooperation Treaty Procedures", at 7583 FR 72. The proposed rules are in my opinion almost certain to be implemented. They include the following.

1. Elimination of the reduced search fee of only $300, as now specified in 37 CFR 1.445(a)(2), for a PCT application, when there was a prior filed "corresponding" US application.

2. Increased USPTO ISA search fee for PCT applications, of $1800, up from $1000.

The net effect of these changes is an increase of either $800 or $1500 in the cost of requesting the USPTO to be the ISA.

A U.S. applicant may choose the USPTO, the EPO (except for business method patents), or KIPO, as the ISA. After these rules are enacted, the costs for an international search report from these three jurisdictions will be: USPTO $1800; EPO roughly $2100; and KIPO roughly $250. Thus, there is now a very strong financial incentive to elect KIPO as the ISA when filing PCT applications. Moreover, KIPO has been providing search reports much faster than the USPTO.

In addition, there no longer is any financial incentive to prior file a U.S. application, relative to a PCT application.

Ironically, the motivation for this rules package had nothing to do with fees. Instead, as noted in the Notice, the motivation is to make U.S. regulations compliant with changes to the PCT regulations. The changes to the PCT regulations are intended to protect applicants against certain errors in filing PCT applications, specifically: (1) late filings and (2) incomplete filings.

The USPTO is incapable of implementing protection against late filings. Such protection would require extending the Paris Convention right of priority to 14 months from the Paris priority date. This is because the USPTO lacks the authority to do so. The USPTO has no authority to contravene the 12 month limits imposed in U.S. statutory law sections 35 USC 102(d) and the last clause of 35 USC 119(a).

The USPTO can and will implement the safeguarding provision against incomplete PCT filings by allowing an applicant to import disclosure from the priority document into an otherwise incomplete PCT application. The USPTO intends to do so by including in the PCT filing form an incorporation by reference statement.

Since these changes will be effective when the rules are implemented, it is important, when filing PCT applications prior to the effective date, to make an appropriate ISA designation. Moreover, any applicant that can take advantage of the fee reduction specified in 37 CFR 1.445(a)(2), should do so prior to implementation of the new rules.

If you have any other questions or need further information please feel free to contact us via email at http://www.neifeld.com.

Richard Neifeld,

President, Neifeld IP Law, PC

Richard A. Neifeld

Richard Neifeld, Ph.D.

Patent Attorney

Email address: general @ neifeld.com

Education
J.D. The George Washington University Law School 1994 Ph.D. Rutgers University (Solid State Physics) 1985 B.S./B.A. University of Rochester (Physics and Mathematics)
(Cum Laude and Honors) 1980

Experience

Neifeld IP Law P.C. - 2002

Partner in the IP law firm of Oblon, Spivak, McClelland, Maier & Neustadt, PC. - 1996

Patent Attorney - 1994

Patent Agent - 1992

Patent Technical Consultant - 1990

Staff Scientist for the U.S. Army's Laboratory Command - 1986

Post-doctoral Fellow, Rutgers University - 1985-1986

Former chair of the Interference Committee and current chair of the Services Subcommittee of the Interference Committee of the American Intellectual Property Lawyers Association (AIPLA). Member of the AIPLA, American Bar Association, Maryland Patent Lawyers Association, and the Patent Information Users Group. Extensive experience in "specialty matters" in the U.S. patent office, such as appeals, petitions, reexaminations, reissues, public protests, and extensive experience in foreign prosecution, and interferences and related litigation. Extensive experience in due diligence work, including investigations, database searching, and opinions.

Admitted to practice before the United States Patent and Trademark Office, the Virginia State Courts, the United States Court of Appeals for the Fourth Circuit, and the United States District Court for the District of Columbia.

Widely published in IP law publications, frequent lecturer to patent attorneys on patent law topics, and an active member of the patent bar associations. Founder and moderator for the popular "patentinterference" group on the groups.yahoo.com/group/patentinterference web site, which is a forum for general information on patent law and practice with a focus on patent interference issues.

Co-founder of the www.PatentValuePredictor.com automated patent valuation service, co-inventor of the underlying macro-economic model for valuing patents, and programmer of some of the code powering the automated valuations.

Five years of scientific research in applied physics areas of electro-optics, III-V materials, microwaves, vacuum deposition technology, superconductors, and electronics directed towards the U.S. Army's electronics, communication, and signal processing needs.

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