PCT Working Group 4th SessionGeneva June 6-10 2011

Shigeyuki Nagaokaand

Paul Harrison

 AGENDA

1. PCT Statics 2. MIA 18th/19th Session 3. Future Development of PCT System (a) Recommendations to Improve Functioning of PCT (b) Global Surge in Filings (c) Coordination of Technical Assistance (d) PCT Meeting its Aims (e) Third Party Observations System (f) UK Fast Track

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 AGENDA

4. Proposed changes to PCT procedural and legal framework (a) PCT Minimum Documentation (b) Presentation of Sequence Listings under PCT (c) Proposed Amendments of Rules 17.1(b-bis) and 20.7(b) (d) Excuse of Delay in Meeting Certain Time Limits 5. Supplementary International Searches6. PCT Online Services (e-PCT)7. Contribution of PCT WG to Development Agenda 8. Other matters 9. Future Work

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1. PCT Statistics• China for the first time more applications than Korea• CN 55.6% increase over last year• India 36% increase• Korea 20% increase• Europe a mixture of growth and decline• US a decline of 1.6% but still largest user

• WIPO views Asian Region as a very important stake holder and user of the PCT system as well as high percentage growth area

• WIPO considers engagement with APAA members and users as vital

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2. MIA 18th Session• Meeting of International Authorities• Held in Moscow March 2011• Intended to discuss operational aspects of PCT system

and in particular– Effective processes and solutions for quality assurance– Effective quality improvement measures

• JIPA Association presented a Paper– “Evaluating usefulness of ISR in JP/EP/US PCT Applications”

• CA Patent Office proposed standardisation of ISR and IPER clauses

• Both well received but resource issues prevented implementation

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2. MIA 18th Session

• Next meeting in Canberra Australia Feb 8-10

RECOMMENDATION

MIA arguably has more immediate and practical effect on members practices. There is no observer status for MIA. However, WIPO Secretariat has given cautious support for a welcome reception potentially sponsored by APAA.

This would seem an excellent opportunity for further interaction between APAA and WIPO in particular International Authorities. IP Australia has also indicated there support.

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3. Future Development of PCT

• Considerable controversy and discussion• WIPO needs to balance assistance to all users with

available resources• Becoming highly politicised• DAG group promote allocation of resources to least

developed and developing nations

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3. Future Development of PCT

• Other challenges for WIPO– Improving Functioning of PCT– Global Surge in Patent Filings– Technical Assistance and Developing Countries– Is PCT meeting its aims of

• “disseminating technical information”• “facilitating access to technology”• “organising technical assistance to developing countries”

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3(a) Recommendations to Improve Functioning of PCT• Many proposals from various Countries most of

which are underway but take time– Training examiners– Timeliness in International Phase– Quality of Searching– Incentives, Cost and Accessibility Issues

• But some are best left to other forums eg– Enablement and Disclosure Requirements– Patent thickets– Patents as business tools rather than rewards for

Innovation

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3(b) Global Surge in Patent Filings• First growth period 1983-1990

– 1983-1990 (28.9% total)– Japanese contribution 16.9%

• Second growth period 1995-2007– 1995-2007 (83.7% total)– US contribution 17.5%– CN contribution 15.5%– KR contribution 14.1%– JP contribution 10.6%

• Increasing workload and backlogs but pendency rates fluctuate markedly between offices

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The Double Surge in Patent Filings

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Pendancy Rates

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3(b) Global Surge in Patent Filings• Despite general downward trend on R&D spend

– US, Russian Federation, Netherlands and Switzerland increasing

• Reasoning for Surge– Multiple filings on same invention– Changes in R&D productivity– Strong Patenting philosophy in certain technologies

• First filings strong in– China, Japan, Korea, Russian Federation

• Subsequent filings growth– Europe, Canada, US

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3(b) Global Surge in Patent Filings

• Further Research by Chief Economist– Link between R&D spend and filings– “richer” data to breakdown economic and technology

factors– Determine why pendency rates fluctuate in offices

• Filing numbers• Technology• Training, Resources etc

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3(c) Co-Ordination of Technical Assistance• Interim Committee set up in 1970 to formalise PCT

Committee for Technical Assistance (CTA)• 7 meetings up until 1978 to form CTA• CTA has never met• Immediate steps to Revive CTA• Funding issues were clarified in detail• Secretariat provided detailed information on TA

programs under the PCT including– Training on IP generally– Tech transfer of PCT matters– Education to member countries

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3(d) PCT Aims

• Previous WG recommended a study be conducted to determine how well the PCT was performing in– “disseminating technical information”– “facilitating access to technology”– “organising technical assistance to developing countries”

• Study has been Delayed• DAG group again reiterated urgent need for this

study• Secretariat confirmed completion of study by IB and

additional information at 5th Session

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3. Future Development of PCT System      3(e) Third Party Observations System; Quality Feedback System

WG supported introduction of this system because it would improve quality of PCT work product

System is still under development Some concerns with regard to specific features of this

system FR: Third party observations should be accessible to public

and applicant should be able to respond DAG: System should allow submission on clarity and

sufficiency of disclosure JPO: Valuable information about novelty and inventive

step may come from third parties

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3. Future Development of PCT System 3(f) UK Experiences of Encouraging More Effective Use of

Int’l Phase: PCT (UK) Fast Track

PCT (UK) fast track service introduced in 2010 to encourage more effective use of int’l phase

Two purposes • (1) To encourage applicants to file higher quality

applications under PCT • (2) To eliminate remaining defects by taking action

to amend PCT applications during international phase

Eligible if PCT application receives positive international report on patentability

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3. Future Development of PCT System 3(f) UK Experiences of Encouraging More Effective Use of

Int’l Phase: PCT (UK) Fast Track

First Office Action is issued in two months Patent is granted in six months

To use PCT system to its full potential To allow DO to benefit from amendment actions

because they would reduce duplication of work in national phase

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4. Proposed changes to PCT procedural and legal framework

4(a) PCT Minimum Documentation

Addition of Chinese patent documents China is now #4 PCT filer and #2 patent filer Rule 34 will be amended Will go to PCT Assembly this September

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4. Proposed changes to PCT procedural and legal framework     4(b) Presentation of Sequence Listings under PCT

Discussions commenced in WIPO’s Committee on WIPO Standards (CWS) aimed at establishing new WIPO XML Sequence Listing Standard

Currently there are two standards: WIPO Sequence Listing Standard ST.25 and PCT Sequence Listing Standard, neither in XML environment

New Standard differs substantially from ST.25 Some ISAs are not ready to accept sequence listings in XML format WIPO will review relationship between PCT Administrative Instructions

and relevant WIPO Standard

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4. Proposed changes to PCT procedural and legal framework

     4(c) Proposed Amendments of Rules 17.1(b-bis) and 20.7(b) Rule 17.1(b-bis): Where the priority document is, in

accordance with the Administrative Instructions, made available [to the RO or] to the IB from a digital library prior to the date of international publication of the international application, the applicant may, [as the case may be,] instead of submitting the priority document:

[(i) request the RO to obtain the priority document from such digital library and transmit it to the IB; or

(ii)] request the IB prior to the date of international publication to obtain the priority document from such digital library.

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4. Proposed changes to PCT procedural and legal framework

     4(c) Proposed Amendments of Rules 17.1(b-bis) and 20.7(b) Rule 20.7(b): Where neither a correction under Art.

11(2) nor [or] a notice under Rule 20.6(a) confirming the incorporation by reference of an element referred to in Art. 11(1)(iii)(d) or (e) is received by the RO prior to [after] the expiration of the applicable time limit under paragraph(a), any such correction or notice received by that Office after the expiration of that time limit but before it [that Office] sends a notification to the applicant under Rule 20.4(i)[, that correction or notice] shall be considered to have been received within that time limit.

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4. Proposed changes to PCT procedural and legal framework

4(d) Excuse of Delay in Meeting Certain Time Limits due to Force Majeure

PCT legal framework does not contain general provision for excuse of delay in meeting PCT time limits due to circumstances beyond control of applicant

JPO: PCT would be able to provide proper safeguards to PCT users who are in difficult circumstances

Australia: Current PCT Rules are not sufficiently flexible to deal with major natural disasters

Rule 82quater.1 will be introduced

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4. Proposed changes to PCT procedural and legal framework

4(d) Excuse of Delay in Meeting Certain Time Limits due to Force Majeure

Rule 82quater.1: (a) Any interested party may offer evidence that a time limit

fixed in the Regulations was not met due to war, revolution, civil disorder, strike, natural calamity or other like reason in the locality where the interested party resides, has hi place of business or is staying, and that the relevant action was taken as soon as reasonably possible. Any such evidence shall be submitted not later than six months after the expiration of the time limit applicable in the given case.

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4. Proposed changes to PCT procedural and legal framework

4(d) Excuse of Delay in Meeting Certain Time Limits due to Force Majeure

Rule 82quater.1: (b) If such circumstances are proven to the satisfaction

of the national Office or intergovernmental organization which is the addressee, delay in meeting the time limit shall be excused, provided that any such excuse shall have no effect in any DO or EO where the processing or examination of the int’l application has already started.

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5. Supplementary International Searches

Very few applicants has used this system (24 demands in 2009, and 41 demands in 2010)

Six ISAs are participating (Russian, Nordic, Sweden, Finland, European and Austrian Patent Offices)

Some ISAs expressed the need to review this system and identify how to make the system more attractive

Feedback from users may be helpful JPO emphasized that at this point it had no intention

to offer supplementary international searches FICPI: Supplementary search should find new pieces

of prior art, be truly supplementary and be less expensive. JPO, Chinese Patent Office and other major Offices should participate in this system 27

6. PCT Online Services (e-PCT)

New online private file inspection system This new IT system is called ePCT Applicants and attorneys can access their

international applications online in secure manner Accessible even before international publication User account is needed Applicant can check on current status of international

application

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7. Contribution of PCT WG to implementation of respective development agenda recommendations

New agenda squeezed by DAG DAG: Development is integral part of PCT, and WG is

required to report to WIPO General Assembly as to how WG was contributing to implementation of Development Agenda Recommendations

Art. 51 mandates establishment of Committee for Technical Assistance to organize and supervise technical assistance for developing countries

CDIP (Committee for Development and Intellectual Property) provides some technical assistance to developing countries

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8. Other matters Collaborative Search and Examination Pilot Project

KIPO, EPO and USPTO carried out pilot project to test concept of collaborative search and examination

Objective is to allow examiners from different ISAs in different regions with different language specialties to work together to produce one common high-quality ISR and written opinion

First pilot was concluded in September 2010 Results: very positive and more promising than expected

“this concept is realistic” “added value to quality” “increased legal certainty ”

Second pilot will be conducted to make more qualitative and quantitative evaluation

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9. Future Work Next WG Session is scheduled to be held in

Geneva in June 2012

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Thank you !

Shigeyuki NagaokaFujimura Patent Bureau, P. C.

Tokyo, Japan&

Paul HarrisonShelston IP

Sydney, Australia

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