2003 Revision of PCT Procedure

In October 2003, U.S. Patent and Trademark Office published amendments to the rules of practice to conform them to amendments made to PCT regulations that took effect on January 1, 2004. The revised U.S. rules were also effective January 1, 2004.

The rule changes can be found here:
http://www.patentsusa.com/20031020_PCT.pdf

Under the new procedures, the USPTO, acting as International Searching Authority (ISA), became responsible for establishing a preliminary and non-binding written opinion during Chapter 1 procedure. Previously, written opinions were part of Chapter II procedure and were established if a PCT applicant filed a Chapter II demand to request international examination. Under the new procedure, if an applicant were to timely file a Demand for international preliminary examination, the written opinion of the ISA would be considered to be the written opinion of the International Preliminary Examining Authority. If a Chapter II demand was not timely filed, the written opinion of the ISA would form the basis for the issuance of an International Preliminary Report on Patentability.

Under the revised system, the time limit for filing a Chapter II Demand changed to the later of three months from issuance of the international search report and written opinion of the ISA or twenty-two months from the priority date.

The comments noted that, although Chapter II Demands were no longer necessary in the U.S., applicants might desire to file the Demand prior to the expiration of nineteen months from the priority date in order to delay entry into the national stage for the few remaining contracting states that took a reservation to the new thirty month time limit.

The amendments also resulted in automatic designation of all states upon filing a PCT application. A simplified fee system was also introduced, and other changes were made.

2002 Revision of Time Limit for National Stage Commencement

The United States Patent and Trademark Office revised the rules of practice relating to PCT applications in view of an amendment to Article 22 of the Patent Cooperation Treaty that changed the time limit for entering the national stage from 20 months to 30 months. The rule changes were effective April 1, 2002.

The rule changes can be found here:
http://www.patentsusa.com/20020104_30_Mo_National_Stage.pdf

The changes in the rules applied to any international PCT application in which the twenty-month period from the priority date expired on or after April 1, 2002 and in which the applicant had not yet entered the national stage. The rule changes were in response to the amendment to PCT Article 22 that changed the time limit for entering the national stage from 20 months from the priority date of the PCT application to 30 month. After the changes to Article 22, a Chapter II Demand for International Preliminary Examination was no longer necessary for entry in the national stage in countries that adopted the changes. After the changes to the U.S. rules, PCT applicants interested in the national stage in the U.S. no longer needed to file a Demand for International Preliminary Examination and pay examination fees in their PCT applications. Not all countries modified their national laws promptly, but the U.S. did modify the patent rules effective April 1, 2002.