PCT Report in Takao Ochi Member of The Patents Committee 2009/11/19

Transcription

1 PCT Report in 2009 Takao Ochi Member of The Patents Committee 2009/11/19 1

2 PCT Working Group held on May 4-8, Proposed Topics (1) Future of the PCT (2) Proposals to Enhance Quality and Efficiency of the PCT Route (3) Enhancing the Value of International Search and Preliminary Examination Under the PCT: Making International Preliminary Examination More Useful (4) Three track PCT System (5) Comprehensive Proposal For PCT Reform (6) Form of Amendments (7) Eligibility Criteria for Reductions in Certain Fees (8) Establishment of Equivalent Amounts of Certain Fees (9) International Form for National Phase Entry (10) Presentation of Revisions to International Applications (11) Supplementary International Searches 2

3 2. Discussions (1) Future of the PCT Background Quality of International Search in 2006 Enhancing the Value of International Search and Preliminary Examination in 2008 Roadmap Proposed General Principles of Roadmap (i) Ensure confidences in the work performed by other Offices (ii) Deliver good results (search reports, international publications and international preliminary examination reports) for the needs of PCT users and for assisting Offices (iii) Ensure a high presumption of validity in patents granted on the basis of international applications (iv) Eliminate unnecessary actions for Offices and applicants 3

4 Areas of work (i) Compliance and Consistency (ii) Making International Examination More Complete, Relevant and Useful (iii) Eliminating Unnecessary Processing (iv) Collaborative International Search and Preliminary Examination (v) Fees and Other National Measures 4

5 (i) Compliance and Consistency Offices acting as International Authorities are asked to accept that international searches carried out by them will not be repeated by them as designated Office if the international application enters the national phase except for conducting a top-up search for finding any secret prior arts, conducting additional search to cover claims or aspects of the invention which were not the subject of the international search, and citing additional relevant documents which are known to the examiner. 5

6 Review of Reservations 150 reservations, notifications and declarations of incompatibility in force relating to various PCT Provisions. Significant differences in the effect of the international application, including different priority dates and different contents. Seek to eliminate these inconsistencies. PCT Offices, in cooperation with the International Bureau, are asked to complete a review of reservations, notifications and incompatibilities with the PCT which apply in their Office, State or region, identifying the reasons for such reservations and, to the extent possible, routes and timetables for the elimination of reservations which no longer have policy reasons requiring their maintenance. The results of the reviews will be reported to the PCT Working Group by the International Bureau. 6

7 (ii) Making International Examination More Complete, Relevant and Useful It is proposed to develop a system for third party observations on novelty and inventive step to be furnished and made available to the International Preliminary Examining Authorities and designated Offices. It is proposed to include "top-up" searches in international preliminary examination to find "secret prior art. (iii) Collaborative International Search and Preliminary Examination It is proposed to build in the concept of supplementary international search to offer an option where the international search and preliminary examination are conducted by a "virtual" Authority, consisting of, for example, three examiners from different Offices to work together on the same application to establish a single common report (international search report, written opinion). 7

8 (iv) Fees and Other National Measures It is proposed to discuss in the PCT working group what measure could be undertaken to ensure that procedures and fee structures are appropriate to encourage use of the PCT system in a manner which is efficient and beneficial for all applicants and Offices. It is proposed to consider innovative approach to ensuring that the system is accessible to individuals and small businesses from developing countries including technical assistance programs of Offices acting as International Authorities. 8

9 (a) General Comments A number of delegations and representatives of users recognized the need for action to improve the system to address issues, including excessive backlogs of work in some Offices and the quality of granted patents, and supported the principle of the roadmap as a way of organizing work and addressing the critical needs of the PCT system quickly within the existing legal framework. Questions were raised concerning some of terminology used in the proposed Roadmap as that it is not clear what exactly is meant by "duplication of work", "high presumption of validity", etc. 9

10 (b) Proposals to Enhance Quality and Efficiency of the PCT Route by JPO Development of the International Search rather than the International preliminary Examination Establish ISR/WO after the international publication to enable the search to cover all "secret prior art" and to consider any information submitted by third party through a third party observation system. Maintain the current timing of establishment of the ISR/WO as an option, for the benefit of an applicant who desires ISR/WO before the publication. Might be worth considering to extend the time limits of IPE proceedings, such as demand for IPE or the establishment of IPER and subsequent time limit (i.e., national phase entry), in case that it would be necessary to respond to legitimate demands to enrich IPE process. Concerns were raised about that the delayed establishment of the international search and written opinion with different timing would cause complexity in the PCT system to result in an overall negative impact of the deferral workflow entirely. 10

11 (c) Three track PCT System by KIPO Introduce an accelerated procedure into the PCT system. Conduct international search within three months of the date on which the search copies are received. Request International preliminary examination within three months of the date on which the ISR and written opinions are transmitted. Complete International preliminary examination within six months of the commencement of the examination, regardless of the priority date. Concerns were raised about the possibility that the three different search and examination tracks could lead to three different quality levels in the PCT system, with consequential confusion and reduced confidence in reports by national Offices. 11

12 (d) Comprehensive Proposal For PCT Reform by USPTO Combine international and national processing to enable more efficient processing in the Authority/national office performing the search and examination. Collaborate three Authorities to perform search/examination. Submit prior art by third party. If a positive report was issued at the end of the international/national processing by the third Authority, issuance of national patents can be automatically realized under such possible system similarly as a Hague (1999) type system whereby the national office would have a specific period of time to issue a notification of refusal. Substantive harmonization and sovereignty issues could be overcome through a protocol system whereby a member State would have a given amount of time following the issuance of a positive International Patentability Report to issue a notification of refusal indicating that the conditions for the grant of protection have not been met. Concerns were raised about that the proposal is distant from the focus on issues which could be addressed within the current legal framework and would be ineffective in the absence of substantive patent law harmonization. 12

13 (e) Proposed Resolution and Statement It was proposed that the following resolution be adopted by the Assembly: --The Assembly of the Contracting States of the International Patent Cooperation Union, Noting the continued duplication of work in the Offices of Contracting States in relation to the protection of inventions which are the subject of international applications under the PCT, Being Convinced that the Treaty can function more effectively to deliver results which meet the needs of applicants, Offices and third parties in all Contracting States and of the general public, Resolves to: (1) instruct the PCT Working Group and the Meeting of International Authorities under the PCT to investigate means to make the PCT more effective for the benefit of applicants, Offices and third parties from all Contracting States and of the general public, in accordance with the general principles and areas of work outlined in the roadmap annexed to this resolution; (2) request the International Bureau to study issues arising from the areas of work outlined in the roadmap, to conduct informal consultations as required with Offices, applicants and user groups, and to present proposals for action to the Working Group and the Meeting of International Authorities.-- 13

14 In addition, it was proposed that Offices which act as receiving Offices, International Authorities and/or designated and elected Offices adopt the following statement: --The Offices Holding Responsibilities Under the Patent Cooperation Treaty as receiving Offices, International Authorities and/or designated and elected Offices, Noting the continued duplication of work in the Offices of Contracting States in relation to the protection of inventions which are the subject of international applications under the PCT, Being Convinced that the Treaty can function more effectively to deliver results which meet the needs of applicants, Offices and third parties in all Contracting States, Agree to: (1) review the implementation of Treaty obligations within their Offices; (2) consider what measures could be taken to increase the confidence of other Offices in the quality and usefulness of any work performed as receiving Office and/or International Searching and Preliminary Examining Authority under the Treaty; (3) consider what measures could be undertaken to ensure that procedures and fee structures are appropriate to encourage use of the PCT system in a manner which is efficient and beneficial for all applicants and Offices; (4) consider the extent to which reservations, notifications and declarations of incompatibility in force in that Office, State or region are necessary or the work which might be undertaken towards removing them.-- 14

15 Furthermore, it was proposed that Offices which act as International Searching Authorities under the PCT adopt the following statement: --The Offices Holding Responsibilities Under the Patent Cooperation Treaty as International Searching Authorities, Noting the Treaty obligation that an International Searching Authority shall endeavor to discover as much of the relevant prior art as its facilities permit, Noting that it is essential that work is done in accordance with Treaty obligations and that there is confidence that has been done in accordance with such obligations, Agree to: not to repeat search work carried out by them acting as International Searching Authorities where the international application enters the national phase before the same Office acting as designated or elected Office, in accordance with the Roadmap adopted by the Assembly annexed to this statement.-- 15

16 (f) Discussion and Conclusion A number of delegations of developing countries expressed about question of the scope of the project that there were some fundamental issues which needed to be clarified before the proposed work program could proceed. Some delegations indicated that some of the proposals appeared to imply a move towards de facto harmonization and they could not support any measures which moved towards increased harmonization of substantive patent law, whether directly or as a result of enforcement of new standards through the effect of the agreement. In the course of discussion developing counties presented their position paper which was finally approved as conclusion of the discussion about the future of the PCT as follows instead of the resolution. 16

17 The Meeting agreed that the relevant PCT bodies should continue their work to improve the PCT. The Meeting agreed that the PCT system can and should function more effectively, within the existing legal framework of the Treaty provisions, to deliver results which meet the needs of applicants, Offices and third parties in all Contracting States; without limiting the freedom of Contracting States to prescribe, interpret and apply substantive conditions of patentability and without seeking substantive patent law harmonization or harmonization of national search and examination procedures. The Meeting agreed that the relevant PCT bodies should discuss ways in which the objective set out in the above paragraph could be achieved, taking an incremental approach; in a member-driven process, involving broad-based consultations with all stakeholder groups, including regional information workshops; taking into account the recommendations contained in the WIPO Development Agenda; taking into consideration the topics addressed in the draft roadmap proposed by the International Bureau, subject to the discussions set out in the Working Group s report, taking note of certain concerns expressed by Contracting States, and taking note of any other topics which Contracting States may wish to address in order to achieve the objective set out in the above paragraph. 17

18 The Meeting agreed that the work set out in the above paragraph should be informed by an in-depth study factoring in, but not limited to, the following elements: outlining the background of the need to improve the functioning of the PCT system; identifying the existing problems and challenges facing the PCT system; analyzing the causes underlying the problems; identifying possible options to address the problems; evaluating the impact of the proposed options; defining and clarifying concepts, such as duplication of work, unnecessary actions etc. The Meeting recommended that this study be prepared and submitted to the Working Group at least two months before the next Working Group meeting. 18

19 The Meeting agreed on the importance of fee reductions and capacity building measures, including in patent drafting and filing, and agreed that the relevant PCT bodies should prepare proposals, including fee reductions and capacity building measures, to increase access to the PCT for independent inventors and/or natural persons, small and medium sized enterprises and Universities and research institutions, in particular from developing and least developed countries. The Meeting recommended that technical assistance be enhanced for national and regional Offices of developing and least developed countries in order that they may benefit fully from the PCT system, and the Meeting agreed on the importance of facilitating participation by representatives of Offices of developing and least developed countries in the meetings of the PCT Working Group. 19

20 (2) Form of Amendments (a) Amendments to the PCT Rule 46.5 and Rule 66.8 Oblige the applicant to indicate the basis for amendments in the application as filed so as to alleviate the burden on the Examiner. IPEA would have the option to make a request to do so in the first written opinion. A failure to reply would allow the IPEA to ignore the amendments when drawing up the IPER. If the basis for the amendments can be retrieved without substantial effort from the content of the application as filed, the Examiner would not make such a request and would have no reason to ignore the amendments. (b) Discussion and Conclusion The working group agreed the proposed amendments and Rule 70 to clarify that an IPEA would be entitled to establish the IPER as if an amendment had not been made where the applicant did not comply with the requirement to indicate the basis for the amendment, along the lines of existing Rule 70.2(c) but as a may rather than a shall provision. 20

21 (3) Eligibility Criteria for Reductions in Certain Fees (a) Background Concerns raised as the eligibility criteria specified in sub-paragraph 4(a) of the Schedule of Fees under the PCT being unclear. The International Bureau presented in the PCT assembly held in 2008 the proposal for determining the group of developing and least developed countries whose applicants should benefit from a reduction in certain PCT fees based on criteria based on income as an economic indicator of development used by multilateral organizations for the purposes of assessing development assistance needs, and criteria based on the size of a country, reasoned by size of economy. An international application benefits from the 90% fee reduction if it is filed by an applicant who meets criteria. 21

22 (a) a natural person who is a national of and resides in a State that is listed as being a State whose per capita national income is below the threshold used by the World Bank for establishing the high income category (according to the most recent four year average per capita national income figures published by the United Nations); or (b) a natural person who is a national of and resides in a State that is listed as being a State whose per capita national income is not more than 50% above the threshold used by the World Bank for establishing the high income category (according to the most recent four year average per capita national income figures published by the United Nations) and whose gross domestic product is less than 0.1% of the world total gross domestic product (according to the most recent four year average gross domestic product figures published by the United Nations); or (c) a natural person or legal entity, who is a national of and resides in a State that is listed as being classified by the United Nations as a least developed country. To date, however, no consensus has been reached. 22

23 (b) Discussion and Conclusion It would be preferable to use a couple of parameters for the criteria for fee reduction instead of a one-size-fits-all approach as the current average per capita income. The size-based criteria benchmarks, not more than 50% above the threshold/or establishing the high-income category and not more than 0.1% of world GDP of the paragraph (b) in the proposed criteria was unclear and appeared arbitrary because those were borrowing concepts and measurements developed in other international organization for other purpose and therefore it was necessary to consider innovation criterion so as to spur or encourage innovation. The working group agreed to request the International Bureau to carry out further study to present those studies to the next session of the Working Group. 23

24 (4) Establishment of Equivalent Amounts of Certain Fees Move much of the content of present PCT Rules 15 and 16 to the Directives so as to restructure the PCT Regulation and Directives by removing the duplication and making both easier to read. In the Rules 15.2, 16.1 and 57.2, there are provided a clear distinction between : (i) the case where the prescribed currency is Swiss franc (or, as regards the search fee, the currency fixed by the International Searching Authority); (ii) the case where the prescribed currency is a currency different from Swiss franc (respectively, different from the fixed currency) but is freely convertibly into Swiss franc (respectively, into the fixed currency); and (iii) the case where the prescribed currency is a currency different from Swiss franc (respectively, the fixed currency) which is not freely convertibly into Swiss franc (respectively, the fixed currency). Move the cycle of regular review of exchange rate to a yearly review cycle instead of the current biennial review cycle. As to the adaptation of the equivalent amounts where there are strong fluctuations of exchange rates, move the period for reviewing the exchange rates to 4 consecutive Fridays instead of the current 30 consecutive days and apply the 5% criterion to all fees concerned so as to simplify the procedures. 24

25 (5) International Form for National Phase Entry The International Bureau provided the proposed idea including many check boxes for satisfying the requirements of all national offices for national entry. The idea of an international form for national phase entry would not be useful for various reasons, mainly, due to the fact that it might be quite cumbersome for applicants to be certain that they had selected the correct options or met the correct requirements for any particular national Office. It might also be an administrative burden for Offices to process such a form, containing many entries which were of no relevance to their particular national law. Local agents are fully familiar with the use of national forms which contained the specific information required for national phase entry in their countries. No consensus in the WG for further work on this matter 25

26 (6) Supplementary International Searches (a) Content of the proposal In order to eliminate any question in interpretation of the PCT Rule 45bis. 9(a) concerning the scope of a supplementary international search, the amendment to the PCT Rule 45bis. was proposed so as to make it clear in the Rule 45bis.9(c) that any limitation such as a subject matter, maximum number of claims to be subject to supplementary search can be set in the agreement between the International Bureau and the Authority. Other minor amendment to the Rule 45bis. was proposed to clarity the situations in which the supplementary search handing fee and the supplementary search fee are refunded by the International Bureau where the request for supplementary international search is considered not to have been submitted. (b) Discussion and Conclusion The Working Group approved the proposed amendments and those will be sent to the PCT Assembly of this year. 3. Future Work A third session working group is scheduled to be held in

27 4 Thailand will become contracting party of the PCT on December 24, Start of New PPH Pilot Program within Trilateral Offices on January 29, 2010 PCT application with positive ISR/IPER eligible for PPH --- End--- 27

28 Thank you!! 28