The Working and Future of the PCT

APAAHong Kong, November 19, 2009

Outline

• PCT Status• The Future of the PCT

PCT Status

=PCT

AlbaniaAlgeriaAngolaAntigua and BarbudaArmeniaAustraliaAustriaAzerbaijanBahrain BarbadosBelarusBelgiumBelizeBeninBosnia and HerzegovinaBotswana BrazilBulgariaBurkina FasoCameroonCanadaCentral African RepublicChadChileChina Colombia Comoros Congo

Costa RicaCôte d'IvoireCroatiaCubaCyprusCzech RepublicDemocratic People's Republic of KoreaDenmarkDominicaDominican RepublicEcuadorEgyptEl SalvadorEquatorial Guinea EstoniaFinlandFrance,

GabonGambiaGeorgia GermanyGhana GreeceGrenadaGuatemalaGuinea

Guinea-Bissau HondurasHungaryIcelandIndiaIndonesiaIreland IsraelItalyJapanKazakhstanKenyaKyrgyzstanLao People’s Dem Rep.Latvia Lesotho LiberiaLibyan Arab JamahiriyaLiechtenstein LithuaniaLuxembourgMadagascar

MalawiMalaysiaMaliMaltaMauritaniaMexicoMonacoMongoliaMontenegroMoroccoMozambiqueNamibia NetherlandsNew ZealandNicaraguaNigerNigeriaNorwayOmanPapua New GuineaPeruPhilippines

PolandPortugalRepublic of Korea Republic of MoldovaRomaniaRussian FederationSaint LuciaSaint Vincent and the Grenadines San MarinoSao Tomé e PrincipeSenegalSeychellesSierra LeoneSingaporeSlovakiaSloveniaSouth AfricaSpainSri LankaSudanSwaziland

St. Kitts and NevisSwedenSwitzerlandSyrian Arab RepublicTajikistan Thailand (24 Dec. 2009)The former Yugoslav Republic of Macedonia TogoTrinidad and Tobago TunisiaTurkeyTurkmenistanUgandaUkraineUnited Arab EmiratesUnited KingdomUnited Republic of TanzaniaUnited States of AmericaUzbekistanViet NamYugoslaviaZambiaZimbabwe

142 PCT States

PCT Statistics

0

20000

40000

60000

80000

100000

120000

140000

160000

180000

78 80 82 84 86 88 90 92 94 96 98 00 02 04 06 08

Jan to August ’09

WIPO believes there may be a potential fall of between 5 and 10% overall in 2009

0

5'000

10'000

15'000

20'000

25'000

30'000

US JP DE KR CN FR GB NL CH SE IT CA FI AU IL

International applications received in 2009 by country of origin (Jan-Aug.)

US: -15%CN: +20%GB: +6%JP: +11%

China overtakes France

The active ISAs are the following 14 patent offices: – Australia– Austria– Brazil– Canada– China– Finland– Japan– Republic of Korea– Russian Federation– Spain– Sweden– United States of America– European Patent Office– Nordic Patent Institute

Appointed but not yet acting: IndiaAppointed at the 2009 PCT Assembly: Egypt and

Israel

The PCT International Searching Authorities

• Appointments of Egyptian Patent Office and Israel Patent Office as ISAs/IPEAs

• Amendments to the Regulations:– Supplementary international search—amending Rules

45bis.1, 45bis.2, 45bis.3, 45bis.5, 45bis.6, 45bis.9, and 96.1 concerning limitations and conditions an SISA can set in its agreement, and refunds of SIS fees

• Entry into force: July 1, 2010, applying to any IA for which SIS request is made on or after July 1, 2010

– Form of amendments—amending Rules 46.5 and 66.8 and the proposed addition of new Rule 70.2(c-bis), requiring applicants to indicate the basis for amendments in IA as filed

• Entry into force: July 1, 2010 , applying to any IA where amendment is made on or after July 1, 2010

Outcome of the 2009 PCT Assembly (1)

• Modifications of Assembly Directives on Establishment of Equivalent Amounts of Certain Fees (and relevant Rules)

• Amendments of ISA/IPEA Agreements• Good support for PCT Roadmap, but still concerns by

developing countries and NGOs ,and great interest in studies to be provided for next WG– fear that this process will be used to achieve stealth

harmonization of substantive patent law

Outcome of the 2009 PCT Assembly (2)

• Trilateral offices will begin a pilot project in January 2010 in which positive PCT search reports and written opinions will be a basis for Patent Prosecution Highway requests in the Trilateral offices– Announced formally at the November 2009 Trilateral Conference in

Kyoto

PPH and the PCT

Practical PCT developments• Private file inspection

– Document upload system pilot under way • Digital Access Service for priority documents• PCT webinars• New resources for PCT applicants

– PCT Caselaw database now available• PatentScope® enhancements

– Full file contents available for IAs filed on or after 1 Jan. 2009– National phase entry data now for 36 offices (Singapore and Viet Nam

recently added—includes CN, JP, NZ, PH, KR, SG, VN)– Searchable national collections in new interface for public testing

• ARIPO, Korea, Singapore, South Africa, Cuba, Mexico, Vietnam, Israel, PCT, All

• 10 query language choices, 10 interface language choices, customizable settings, integration of GoogleTranslate, graphical results

– PatentScope search interface in Japanese, and text searchable in Japanese and Korean

PatentScope®

Certain national collections now searchable via PatentScope®

The Future of the PCT

A PCT Vision for the Future (1)• Realizations in late 2008:

– Significant discussions multinationally about reduction of duplication of work and increasing patent office worksharing--and when you look at the founding PCT documents and the vision of its founders, the PCT was created to do just that

– PCT can and should be used more effectively in order to help it contribute more fully to solutions to the problems facing the international patent system

– PCT is not currently reaching its potential:• NOT because of legal deficiencies• because the International Authorities are not using it as intended

– PPH’s existence proves that worksharing and confidence are possible• Wrote a paper setting out a “PCT Roadmap”

A PCT Vision for the Future (2)• Thus, Offices of PCT member States (in particular, ISAs and

IPEAs) should:

– Fully implement their PCT obligations• including the obligation to make their PCT workproducts as good as

or better than their national workproducts

– Minimize duplication within Offices– Minimize duplication between Offices – Ensure that practices, fee structures and workproducts

encourage work-sharing and duplication reduction– Be encouraged to withdraw the incompatibility notifications

between PCT and national law/practice which were designed to only be temporary measures (some 150 of these currently)

A PCT Vision for the Future (3)

• The PCT should be made more useful and attractive by – Reviving IPE (“Chapter II”)

• devise appropriate national phase incentives for use and for its effective use

– such as fee incentives, PPH effect, or both tied to positive IPRPs• allow for submission of third party observations• include top-up searches to find secret prior art• have all IPEAs issue at least one WO before any negative

IPRP

– Building on SIS and moving towards collaborative/multi-Office PCT search and examination

A PCT Vision for the Future (4)

• Discuss with member states:– Incentives to encourage PCT applicants to make full use of

the PCT international phase (resolving defects, amending to resolve potential patentability issues, etc.), for example:

• Fee reductions• Accelerated/simplified national processing

Procedural background:

– 23 February 2009: informal discussions with Heads of Offices of 20 biggest PCT Offices, including all ISAs

– 2 March 2009: informal discussions with certain user organizations and representatives of some of largest PCT filers

– 16-18 March 2009: Meeting of International Authorities – 4-8 May 2009: PCT Working Group– September 2009: PCT Assembly, noting the WG’s discussions– 2010 Working Group

A number of countries/groups have already begun to implement…

A PCT Vision for the Future (5)

• Studies for the IB to do:– background of need to improve PCT functioning, problems,

challenges, causes, options, etc. (“why did we propose the PCT Roadmap?”)

– fee reduction criteria for small and medium-sized enterprises (SMEs)

– eligibility criteria for 90% fee reductions

• The PCT and Green Technologies

Looking forward to the next PCT WG(June 14-18, 2010)

Questions?