Nations Eye Amendments To PCT, WIPO’s Top Revenue-Earning Treaty 10/06/2014 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)The Patent Cooperation Treaty is a cornerstone of the World Intellectual Property Organization and provides its main source of revenue. This week, a working group is gathered to explore proposed amendments to the treaty regulations, including fee reductions for developing countries, small businesses and non-profits. The 7th session of the Patent Cooperation Treaty (PCT) Working Group is meeting from 10-13 June. The PCT is a treaty administered by WIPO that allows international patent applicants to file one international patent applications under the PCT and be protected in 148 member countries of the PCT. The agenda [pdf] of the PCT Working Group meeting includes a number of items to be discussed, such as fee reductions [pdf] for small and medium-sized enterprises (SMEs), universities and not-for-profit research institutes; fee reduction [pdf] for certain applicants from developing and least-developed countries; the coordination of technical assistance [pdf] under the PCT, and the formal integration of the Patent Prosecution Highway (PPH) into the PCT. Also on the agenda are technical issues such as time zones used for electronic submissions; colour drawings in international applications; and the PCT sequence listing standard. During the last session of the working group, the issue of fee reductions and the integration of the PCT in the PPH in order to expedite national phase processing was discussed without conclusion (IPW, WIPO, 25 May 2014). The PPH is a collaboration between a range of – mostly developed – countries’ patent offices, by which those offices share data and can provide accelerated patent examination. No decision was taken on fee reductions at the last session. Although the PCT allows for fee reductions for certain countries, the decision is left to national legislation. Developing countries were of the view that a compulsory system of fee reductions would be more adequate, a view that was not shared by developed countries. The WIPO secretariat also was tasked to deliver a study [pdf] estimating “PCT fee elasticity.” This study looks into how responsive PCT filings are to changes in the international filing fee. The study estimates fee responsiveness to be “highly inelastic.” According to WIPO, the PCT current international filing fee is CHF 1,330 (about US$ 1,450). Applicants also have to pay a search fee, which can vary from about US$410 to US$2,400 depending on the International Searching Authority chosen, and a “small” transmittal fee. Today, after considering fee reduction for SMEs, universities and not-for-profit research institutes, most delegations taking the floor expressed interest in such reductions but no concrete proposals were put forward on how to implement this reduction. Both documents on fee elasticity and fee reduction for SMEs, universities and not-for-profit research institutes were noted and the secretariat is expected to explore the impact of a fee reduction for universities on WIPO’s revenue. The PCT Working Group is also expected to look at a document outlining policy considerations to be taken into account, in the secretariat’s view, in the review of the procedures and criteria for the appointment of an office as an International Searching and Preliminary Examining Authority under the PCT. In particular, the document proposes a change to the current appointment procedures “so as to ensure a proper expert review of an application by an office prior to a decision being taken by the PCT.” According to WIPO, international search is being provided by a number of International Searching Authorities, among which are the national offices of Australia, Brazil, Canada, China, Egypt, India, Japan, Sweden, and the United States, plus the European Patent Office and the Nordic Patent Institute. “The availability of a particular ISA to the nationals or residents of a country is determined by the receiving Office where the international application was filed,” says the WIPO website. 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."Nations Eye Amendments To PCT, WIPO’s Top Revenue-Earning Treaty" by Intellectual Property Watch is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.