Insights on Patent Law Perspectives in Asia
highlights from the 2018 PCT WG Workshop on new matters under 20.5 & 20.5BIS, including attitudes towards human errors, perspectives from Korea, Japan, and Australia, and incorporation by reference in patent filings.
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2018 PCT WG WORKSHOP REVIEW ON NEW MATTERS UNDER 20.5 & 20.5BIS June 19, 2018 Mincheol KIM ASIAN PATENT ATTORNEY ASSOCIATION
Overview of APAA Since 1969 2400 members from 20 Recognized Groups 6 Standing Committees including Patent Committee http://www.apaaonline.org/ 2 2018 PCT WG Workshop APAA
Attitude on Human Mistakes Stability vs. Flexibility In Korea, stability is more emphasized than flexibility for procedural laws. In Australia, Generous on errors if they are bona fide Error Correction Strict Generous Korea Japan Australia 3 2018 PCT WG Workshop APAA
KR Group Perspective Korean Patent Act has very strict standard on filing date and new matter. Not adopted 20.5 and 20.6 yet. Users are not familiar with Missing Part System. 4 2018 PCT WG Workshop APAA
JP Group Perspective Adopted both of PCT missing part system and PLT erroneous part system. Applying the missing part rules on PCT applications, while applying the erroneous part rules of PLT on Paris Convention applications. When applying erroneous part rules, it is possible to add a part but not possible to delete a part without changing the application date. 5 2018 PCT WG Workshop APAA
AU Group Perspective With respect to error correction, AU national Act is generous even more than PLT. Limited time for corrections can be extended. Strict as RO but Generous as DO 6 2018 PCT WG Workshop APAA
Questions What is Missing or Erroneously filed ? To what extent is the incorporation by reference possible for missing part or erroneous part? Detailed examples? 7 2018 PCT WG Workshop APAA
Example 1: Missing Part Incorporation by Replacing as a Whole Priority Documents : A(a,b,c) Intended PCT Filing : A(a,b,c)+B Actual PCT Filing : A(a,b)+B Proper Submission : A(a,b,c) Followed by A(a,b)+B Insufficient Recovery of A(a,b,c)+B 8 2018 PCT WG Workshop APAA
Example 2: Missing Part Incorporation by Paragraph(s) Priority Documents : A(a,b,c) Intended PCT Filing : A(a,b,c)+B Actual PCT Filing : A(a,b)+B Proper Submission : A(a,b,c)+B Incorporating Missing part c indeed completed the invention A 9 2018 PCT WG Workshop APAA
Example 3: Missing Part Possible Abuse of Incorporation by Paragraph(s) Priority Documents : A+B, A+C Actual PCT Filing Context of Missing Paragraph of C cites as: In addition to the above-disclosed device, it is also combine C into the device. ~~~ Proper Submission : A+B, A+C : A+B Possible Submission : A+B, A+B+C New matter over Priority 10 2018 PCT WG Workshop APAA
Main Concern: New Matter Divergence of practice may bring new matter issues by skillful and combined corrections, which are sometimes improper. How do ROs find out new matters in a limited time frame without substantive examination??? Any Objective Guidelines from experienced ROs or DOs? 11 2018 PCT WG Workshop APAA
Example 4: Erroneous Part Possible Abuse of Incorporation by Paragraph(s) Priority Documents : A+B, A+C Erroneous Filing : A+B, A+D Context of Missing Paragraph of C cites as: In addition to the above-disclosed device, it is also combine C into the device. ~~~ Proper Submission : A+B, A+C Possible Submission : A+B, A+B+C New matter over Priority 12 2018 PCT WG Workshop APAA
Main Concern: New Matter Combination of Partial removals and Partial incorporation by reference may bring new matter issues more and require more detailed Guidelines. One solution of the new matter is re-dating, but this is not allowable under the PCT system 13 2018 PCT WG Workshop APAA
One Solution Steps For Correcting Means for Correcting Adding - Incorporation by Reference - Proposed 20.5 for Missing part - 20.5bis (a) (ii) for Erroneous Part - Article 19/34 Amendment - National Phase Amendment Deleting 14 2018 PCT WG Workshop APAA
THANK YOU Mincheol KIM mckim@gviplaw.com APAA Paul Harrison PaulHarrison@ShelstonIP.com APAA
