Dear all
Some of you may recall that the UK patent office announced the abolition
of the application fee for UK national patent applications, effective
October 1st 1998. It has just come to my attention that this has had
unforeseen consequences on the PCT front.
The same law change eliminated the need to pay a fee for
English-language PCT cases to enter the British national phase (N.B. we
are not talking about designating GB via the EP regional route here -
only direct designation of GB - and this ONLY affects cases where the WO
document was in English).
This has had 2 unexpected results ;
(i) from 1 Oct 1998, ALL PCT applications which published in English
have been entering the British national phase *automatically*, since the
only obstacle (payment of the application fee) was removed.
HOWEVER, in the absence of any event such as a fee payment, the GBPO has
no mechanism in place for national phase entry to be monitored or
recorded. Without any means to monitor when the 20 months from priority
has elapsed, nothing has been going into the gazette. Consequently,
neither the GBPO nor INPADOC has definitive data on national phase entry
since 1 Oct.
(ii) by the same mechanism, all PCT applications in English have become
part of the state of the art under section 2(3) of the Patents Act,
which allows a PCT application which was filed *before* but not
published until *after* another patent application to be novelty
destroying to the latter. Prior to October 1st, a substantial portion
of PCT cases did not enter GB national phase, and were only counted as
state of the art vs. GB applications from their publication date, not
their priority date.
There are proposals in hand to amend the law to re-introduce a small fee
for national phase entry. This will be a sufficient "memory jogger" to
ensure that the office can again start to collect reliable data on
whether a PCT has in fact entered national phase.
The questions for documentation are :
i) does EPIDOS know about the current situation? - i.e. is the current
set of GB national phase entry data in INPADOC correct?
ii) in what form does EPIDOS get its data, and has it been affected by
this?
iii) do searchers know about the applications since 1 Oct being part of
the state of the art?
I am copying this to the EPO list server in the hope that someone from
INPADOC will respond.
-- Stephen Adams Magister Ltd. - Patents Documentation Consultancy 62 Norton Road, Reading, RG1 3QJ, GB Tel/fax: +44 (0)118 926 7981 e-mail: stevea@magister.co.ukRegistered in England and Wales. Company No. 3407685 Registered address : Canada House, 272 Field End Road, Eastcote, Ruislip, Middlesex HA4 9NA.