WIPO Members Debate Reduction Of PCT Fees; Send Back PPH Proposal 25/05/2013 by Catherine Saez, Intellectual Property Watch Leave a Comment Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window)Members of the World Intellectual Property Organization Patent Cooperation Treaty (PCT) met this week to discuss possible amendments to the regulations under the treaty. Among issues discussed were possible fee reductions, the proposed formal integration of the Patent Prosecution Highway into the treaty, and the coordination of technical assistance under the treaty. The 6th session of the PCT Working Group took place from 21-24 May. The working group is tasked with preparatory work “for matters which require submission to the Assembly,” according to WIPO. Fee reductions and the PPH proposal will both be the subject of further discussions at the next session of the PCT Working Group. On technical assistance coordination, the working group just took note of the issue. Chair Victor Portelli, general manager of the Patents and Plant Breeder’s Rights Group at IP Australia, issued a draft summary by the chair [pdf] on the final morning, which was replaced by a revised version [pdf] later in the morning after some modifications were requested by member states. The revised version was then discussed and approved with a number of changes. Fee Reductions = Political and Economic Challenge, Gurry Says At the start of the meeting, WIPO Director General Francis Gurry said the full agenda of the working group was an indication of the recognition of the PCT, according to an extract of transcript [pdf] of the meeting. The PCT, Gurry said, “is responsible for the generation of a roundabout 75 percent of the revenue of this organisation.” One of the main issues discussed this week was reductions in PCT fee for certain applicants, such as small and medium-sized enterprises, universities, and developing and least-developed countries. PCT fee reductions, Gurry said, are a sensitive item both politically and financially for WIPO. “From the point of view of SMEs or universities, PCT fees are less than one percent of international patenting fees,” he said. The major element of the cost, he said, is the cost for international patenting lawyer fees, the second element being translation costs, followed by national and regional office fees. A reduction in fees could have a considerable impact on WIPO while only offering a small advantage to applicants, he said. Another sensitive subject is the class of countries eligible for the PCT fee reduction. Fee reductions were discussed based on document PCT/WG/6/10 [pdf], which addressed the issue of fee reductions for small and medium-sized enterprises (SMEs), universities and not-for-profit research institutes, “especially but not limited to those from developing and least-developed countries,” and the issue “of eligibility criteria for fee reductions for certain applicants from developing and least developed countries.” Key for Developing Countries, Group B Cautious Some developing country sources told Intellectual Property Watch that fee reductions were of key importance for developing and least-developed countries. The current mechanism allows for fee reductions, but is left to national legislations to decide if and how to apply them. Developing countries would like a compulsory system of fee reductions, they said. Group B developed countries issued a statement [pdf] that for fee reductions for SMEs, universities and not-for-profit research institutions, it would be useful for member states to have a compilation of the different definitions of SMEs at the national and regional levels. The statement also said the group would welcome further study by the WIPO chief economist on the elasticity of fee reductions for universities and not-for-profit research institutes. On fee reductions for developing and least-developed countries, Group B said in a statement that further work “was urgently needed” so that a dynamic system be developed, which “can take into account, providing regular review, the changes that occur in the development of the economy worldwide.” “The objective of a system of fee reduction is to ensure that the PCT system is attractive and affordable for applicants in all parts of the world, and in particular for least-developed countries and developing countries which are currently using the system infrequently while ensuring a sustainable level of revenue for WIPO,” said Group B in the statement. PCT fees, they said, are not only financing PCT activities, but “many other important activities in the Organization as well, including development activities and technical assistance.” The working group decided to ask the WIPO secretariat to invite member states that grant reductions of national pre-grant patent fees to SMEs to provide information on their national experiences. In addition, the secretariat is tasked with the preparation of a working document on various existing definitions of SMEs, according to the draft summary by the chair. The draft summary also indicated that the lack of data would prevent the WIPO chief economist from carrying out a detailed study on the question to what extent fee reductions would enable SMEs to better participate in the international patent system (paragraph 45). According to sources, developing countries asked that paragraph 44 and 45 be changed to reflect the fact that a study should be carried out by the chief economist, taking into account the reduced available data. The draft summary was modified accordingly, sources said. On fee reductions for developing and least-developed countries, according to the draft summary by the chair, the working group did not find a clear way forward. In particular, Group B suggested that the WIPO secretariat prepare a working document for discussion that could examine “a system of fee reductions that would combine the two criteria of income and innovation” and “make a projection on possible thresholds.” This proposal was opposed by one delegation, according to the summary. PPH Discussions Pushed to Next Meeting Another issue was the formal integration of the Patent Prosecution Highway (PPH) – a bilateral sharing of work between patent offices – into the PCT (IPW, WIPO, 18 May 2013). Some countries, according to the draft summary, “expressed concerns over possible effects on national sovereignty for reuse of work by other Offices and the quality of national processing as a result of accelerated search and examination.” According to sources, a developing country asked that the support of this position from civil society be reflected in the summary, since there was a mention of representatives of applicants supporting the acceleration of national phase procedures. According to the draft summary, many of countries whose offices participated in existing bilateral PPH arrangements supported the proposal of integrating the PPH into the PCT. The working group decided that the United States and the United Kingdom, which proposed the integration of the PPH into the PCT, should issue revised proposals and further information at the next session of the working group, taking into account comments made and concerns raised. PCT-Related Technical Assistance The WIPO secretariat updated the working group about discussions about the External Review on WIPO technical assistance, discussed at the last sessions of the WIPO Committee on Development and IP (CDIP), (IPW, WIPO, 17 May 2013), according to the draft summary. In particular, technical assistance projects related to the PCT carried out in 2012 were presented to the PCT by the secretariat, and several delegations “expressed their satisfaction about the fact that it had been agreed that such reports would from now on be included as a regular agenda item of future sessions of the Working Group.” The working group agreed that reports on technical assistance projects relating to the PCT be included as regular agenda items of the working group at its last session (29 May – 1 June 2012). Divergent opinions were noted by the chair, on whether or not the working group discussions on technical assistance-related part of the PCT Roadmap recommendations should be delayed until the outcome of the discussions of the External Review and related documents in the CDIP. No agreement was reached either on whether the PCT working group should submit the report on PCT related technical assistance activities to the CDIP, according to the draft summary. According to sources, developing countries said that this would serve to show progress in the PCT in the implementation of the Development Agenda Recommendations and would contribute to the discussions in the CDIP. However, some developing country sources told Intellectual Property Watch that developed countries found that this would duplicate work. The summary by the chair indicates that some countries said the CDIP was already considering other documents linked to patent-related technical assistance. The WIPO secretariat also presented the PCT Yearly Review 2013 recently published. The next session of the PCT working group is tentatively scheduled to be held in May/June 2014. Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window) Related Catherine Saez may be reached at csaez@ip-watch.ch."WIPO Members Debate Reduction Of PCT Fees; Send Back PPH Proposal" by Intellectual Property Watch is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.