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Memorandum: Extension of the Appointments of existing International Searching and Preliminary Examining Authorities; Global Dossier Expansion

April 10, 2017

Author: Sam Frost

It is probably a little appreciated fact that the existing International Searching and Preliminary Examination Authorities were appointed until the end of 2017. Thus, the existing 22 Authorities need to be reappointed from the beginning of 2018. Given the continuing strong growth in PCT filings, and hence demand for International searching and examining capabilities, it seems safe to assume that they will all be reappointed.

Additionally, it is proposed to appoint the Intellectual Property Office of the Philippines as an International Searching and Preliminary Examining Authority. For the same reasons, it seems likely that this appointment will proceed.

Each Office is required to submit an application to extend its appointment, and documents from all offices can be found here . The CIPO submission has been reviewed with the assistance of the Patent Offices of Australia, Israel and the United Kingdom, and one assumes that submission by other Offices would include corresponding reciprocal assistance. The documents submitted by the Canadian Intellectual Property office (“CIPO”) while providing necessary and routine information for evaluation include some interesting facts.

The International Searching and Examination capabilities of CIPO are, of course, well used by Canadian Applicants. However, CIPO is also presently a competent authority for many Caribbean countries, and also Nigeria and Saudi Arabia.

CIPO also participates in WIPO’s International Cooperation for the Searching and Examination of Inventions Program (ICSEI) offered to developing countries. It is noted that CIPO is presently filling a void as it is the only Office to offer ICSEI services in French.

On the issue of the number of filings, CIPO is traditionally an Office of second filing with 79% of National applications filed as National Entries from PCT applications.

Statistics are included for 5 annual periods, which shows some interesting changes in the number of applications filed. Over that 5 year period, the number of Canadian PCT applications filed, contrary to International trends, has dropped by about 8.5%, almost all attributed to a drop in filings relating to electrical/electronic technology. The number of Canadian Chapter II Demands has increased slightly, but still represents little more than 10% of the number of PCT applications filed.

In contrast, the number of National applications in Canada has increased, modestly, by about 4%; it is noteworthy that number of applications in mechanical field has increased by over 35%, with some drops in other technologies, particularly chemistry. Analyzing the route used for the National applications, again, following International trends, shows that a greater percentage are now filed as PCT National Phase Entry applications, and first filings and Paris Priority applications show steady decreases.

Figures for processing time are of interest. CIPO reports that the average time to issue a first examination report is just over 10 months, with little variation between disciplines, and that the total time to grant from examination has improved from over 48 months of the start of the 5 year period to under 36 months; there is some variation between disciplines, with biotech showing a significantly longer period than the average.

Over the 5 year period, the number of “disposal” of applications has increased slightly, but interestingly, the number of Grants has increased significantly by almost 20%.

Global Dossier Enhancement

The USPTO has recently announced that it had entered into an Agreement with WIPO to integrate its Centralized Access to Search and Examination (WIPO-CASE) system with the Global Dossier. This enhancement expands Global Dossier access to include all International applications filed under the Patent Cooperation Treaty (PCT) as well as those applications from the WIPO-CASE participating Offices. A list of the WIPO-CASE Offices can be found here, and this includes Australia, Canada, China, the Eurasian Patent Office and Israel.

The Global Dossier page at the USPTO now includes a drop down menu enabling one to search using the PCT application number the application number from one of the WIPO CASE countries. To this extent, the Dossier has been extended to those countries; however, early indications are that not all the Dossier information from the WIPO CASE countries has been linked. At least Dossier information from the Canadian Intellectual Property Office (CIPO) is not directly linked; but, with the Canadian application identified, one can access the Dossier information directly at CIPO.

Information on this website is for information only. It is not, and should not be taken as, legal advice. You should not rely on, or take or not take any action, based upon this information. Professional legal advice should be promptly obtained. Bereskin & Parr LLP professionals will be pleased to advise you.

 

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