Talks Ongoing To Raise Quality Of International Patents

Big patent offices worldwide are leading talks to raise the quality of international patents under the Patent Cooperation Treaty (PCT). This comes as it has become harder, yet more urgent than ever, for stakeholders to inject some reforms into the more than four-decade old system amid the unprecedented rise in applications and faster technology turnaround.

The discussions which started three to four years ago have picked up steam recently, with the World Intellectual Property Organization expecting to see results starting in the next two to three years, according to sources.

Administered by WIPO, the PCT serves as a tool primarily for filing international patent applications and for work-sharing among patent offices in now 146 contracting states in the area of search and examination of applications. WIPO sources the bulk of its budget from the PCT system.

The report [pdf] presented by the PCT Working Group to the Assembly included specific recommendations and projects being pursued by bigger patent offices, including the IP5 – composed of the European Patent Office (EPO), the Japan Patent Office, the Korean Intellectual Property Office, the State Intellectual Property Office of China and the United States Patent and Trademark Office.

Almost all of the recommendations are directed at improving the quality of international patents and plugging in the seemingly widening gap between patent offices with more resources – both in terms of manpower and areas of expertise – and those patent offices with either less resources or that have just joined the international patent system.

Proposals and projects include laying out criteria for substantive examination of patent applications and providing training, technical assistance and capacity building to offices in developing countries.

For instance, it gave instructions on a set of proposals from the EPO. “While noting that more time was needed to carefully study the proposals, to consult with user groups and to consider the possible impact on respective national laws, all delegations which took the floor on the matter generally welcomed the initiative taken by the European Patent Office,” the report read.

“Whereas some delegations expressed support for at least some of the proposals, concerns were raised by some delegations on particular proposals in the document, notably those which would affect national laws or national phase processing,” it added.

In the area of technical assistance, a delicate topic in the talks, discussions among member states are ongoing on “whether the issues relating to the provision of PCT technical assistance should be looked at in the context of the PCT Working Group, the PCT Committee on Technical Assistance or the WIPO Committee on Development and Intellectual Property (CDIP),” according to WIPO Director for PCT Business Development Division Claus Matthes told Intellectual Property Watch in an interview at the sidelines of the UN agency’s 50^th General Assembly.

The CDIP is the WIPO committee tasked with overseeing the implementation of the agency’s 45 adopted recommendations under its Development Agenda.

“For the time being, member states have agreed to continue to address those issues in the PCT Working Group,” he said.

Article 51 of the PCT provides for the establishment of a committee for technical assistance which requires “due regard to the representation of developing countries.”

Improving the PCT as a Work-Sharing Tool

As a patent application tool, the PCT over the years has proven itself to be successful. Last year alone, the PCT received 180,000 applications.

To a patent applicant, the PCT presents an option for filing multiple international applications and getting a limited monopoly for an invention in other jurisdictions. The other alternative is through the Paris Convention for the Protection of Industrial Property, the treaty which allows for a bilateral agreement on patent filing between member states.

Among its advantages, the PCT system allows an applicant to “buy time,” the industry jargon for the strategic leeway from the filing of application to the conclusion application. The acquired time, ranging from 12 months to 30 months, could help an applicant decide whether to pursue an application in a jurisdiction of his choice or drop the application and instead look for licensees for his invention.

“Under the PCT system, an applicant buys time and obtains an international search report and a preliminary opinion on patentability and, as a result, he obtains a much better basis to help him decide whether or not to pursue his application,” Matthes said.

The report refers to the assessment of the invention as against the criteria of patentability, a test granting patent to an application provided it is a patentable subject matter, novel or new, non-obvious (US) or has inventive step (Europe), and is useful or has industrial application.

As a work-sharing tool, however, member states have noted at the assembly that the PCT system needs further improvement. Patent offices in PCT contracting states rely on the system to find prior art or earlier similar inventions which can be used as reference to invalidate a patent application.

The report [pdf] on the Quality Management Systems for International Authorities submitted to the Assembly by the International Bureau of the PCT mentioned a proposal by the EPO to undertake a study “on a set of characteristics” of international search reports with the “aim of developing indicators of what should be the focus of the work of the offices.”

“It was noted that the proposed metrics would enhance mutual understanding of common and different practices. In addition, changes in the metrics if repeated over a number of years might also provide significant pointers for quality units,” the report read.

One of the concerns raised by bigger patent offices is that offices in smaller countries tend to lack the capacity to conduct their search and examination process at the same level of quality as bigger offices. Among patent offices, national patent search and examination greatly varies. Some offices cannot afford to hire examiners or do not have the expertise to examine certain technologies.

At last week’s assembly, it was clear that developing and least developed member states have begun to make significant inroads into the international IP system. In his opening address to the Assembly, WIPO Director-General Francis Gurry noted that the growth in patent activities is now coming from fast-rising and developing economies led by China.

To illustrate, smaller countries such as Myanmar, Brunei Darussalam and Sierra Leone reported to the assembly their initiatives to develop their respective national patent systems.

The PCT now has 18 international searching and preliminary examining offices, with the National Institute Property of Chile becoming the latest addition to the system. The Chilean office is positioned to serve the requirements of the Spanish-speaking applicants in Latin America.