The Finnish Patent Office as an International PCT Authority

Maarit Löytömäki
Director
The National Board of Patents and Registration of Finland

Finland has been member of the PCT for 26 years. The positive attitude of the clients was notable from the very beginning.

Finland became party to the Patent Cooperation Treaty (the PCT) in 1980. At that time, some 4000 international patent applications were filed world-wide every year. The volume has steadily grown, which shows that the system is highly popular among the applicants. In 2001, the 100,000/year limit was exceeded (108,228), and last year the number of applications filed rose to 134,100. The estimate for 2006 is 140,500 (Fig 1).

The National Board of Patents and Registration of Finland (the NBPR) has served as a Receiving Office in respect of international applications since 1980, the year of its accession. The number of international applications filed with the NBPR has stabilised at a thousand a year. Last year 1,056 applications were filed at NBPR, whereas the total number of international applications of Finnish origin was 1,884. (Fig. 2)

The NBPR was approved and appointed as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) at the General Assembly of the World Intellectual Property Organization (WIPO) in autumn 2003.
Finland started its operation as an International PCT Authority on 1 April 2005.

Preparations began in 2000
Preparations for the new duties took a relatively long time, as for instance the reorganisation of the data systems was inevitable due to new time limits, new fees and new forms. The Office also wanted to bring the training of the examiners into an advanced level.

Preparations for training and recruitment started as early as 2000 and the training preparations began at full capacity in autumn 2003, immediately following the approval at the General Assembly.

According to an agreement concluded with WIPO, the NBPR is competent to examine international applications filed on or after 1 April 2005 in which the NBPR is specified as the International Searching Authority and/or the International Preliminary Examining Authority.

The applicant may also choose the Swedish Patent Office (PRV) or the European Patent Office (EPO) as the International Searching Authority or as the International Preliminary Examining Authority.

A uniform search fee adopted
In June 2005 the Administrative Council of the European Patent Organisation decided that the reduction of the supplementary European search fee will be the same for the international applications for which the international search report has been drawn up by another European International PCT Authority.

The languages of processing used at the NBPR are Finnish, Swedish and English.

The new position of the NBPR well received
2005, the first year of operations, exceeded all expectations. According to a conservative estimate some 250 applications were expected to be filed, but at the end of December the number totalled 426. The positive attitude of the clients was notable from the very beginning. Among the applications filed with the NBPR as the Receiving Office, the NBPR was chosen as the ISA in about 55 per cent of them, whereas a quarter had chosen the Swedish Patent Office (PRV) and about 20 per cent EPO. (Fig.3)

Nearly two thirds of the applications (270) filed with the NBPR were in English.

In the first half of 2006 (January – May), the NBPR has already received nearly 400 requests for international searches. The NBPR has been chosen as ISA in 66 per cent and PRV and EPO both in 17 per cent of these applications. (Fig. 3)
It is estimated that in 2006 the NBPR will be chosen in roughly 650 applications.

PCT application searches done independently
The NBPR has aimed at creating a system where, as a general rule, searches on international applications are carried out by a different person than the one who examined the corresponding national priority application. In the search process, a team of two or more examiners is also used, thereby ensuring uniform processing of applications and the highest possible search quality.

The wish that different examiners be used was expressed in particular by the applicants. The adopted practice of the Office may well explain their eagerness to specifically use the NBPR in novelty searches.

International PCT authorities are required to show a certain quality standard in their work.

The ISO 2001 quality control system adopted
In the beginning of 2006 the NBPR adopted a quality control system which is based on the ISO 9001 : 2000 system. The Office aims to have the quality control system certified during 2006.

An international PCT authority also has to observe certain time limits within which the international search report or the international preliminary examination report has to be established. The time limits are defined in the PCT Rules (R 42.1 and R 69). As a basic principle, the time limit for a novelty search is about 16 months from the date of priority (or the international filing date, if priority has not been claimed) and the time limit for an international preliminary examination is about 28 months from the corresponding date.

The NBPR has been able to fully observe the time limits laid down in the Rules.

So far some 50 demands for international preliminary examinations have been received. The novelty searches in respect of those applications have, with a few exceptions been conducted by the NBPR.