WIPO Pushes Members On Patent Treaty Compliance; US Wants PCT II

The secretariat of the World Intellectual Property Organization is working this week to gain support for a proposal to get countries to better implement the UN organisation’s core revenue-generating instrument, the Patent Cooperation Treaty (PCT). But some developing countries are wary of the proposed changes, even as the United States is calling for a new PCT.

The PCT allows a patent filer in one signatory nation to have their application recognised in other nations that are party to the treaty.

The WIPO Patent Cooperation Treaty Working Group is meeting from 4-8 May.

A key issue under discussion this week is a document from the secretariat, PCT/WG/2/3, on the Future of the PCT, which outlines a “roadmap” to getting governments to fully implement their treaty obligations.

The approach suggested by WIPO is intended to reduce duplication within national offices, reduce duplication and encourage work-sharing between offices, and improve the quality of search and examination reports, according to the document.

The roadmap would include an agreement from international search authorities that searches carried by them from 1 January, 2010 “will not be repeated by them as designated office if the international application enters the national phase,” the proposal said.

Second, the proposal would eliminate inconsistencies in the many reservations, notifications, and declarations of incompatibility in force relating to various PCT components. By January 2011, all PCT offices along with the WIPO International Bureau would complete a review of reservations and incompatibilities.

The proposal also sets out suggested timelines for a number of other initiatives such as developing a system by January 2011 for third party observations on novelty and inventive step, and including “top-up” searches to find “secret prior art” in international preliminary examination by July 2011.

Other suggestions target elimination of unnecessary processing, collaborative international search and preliminary examination, and coordinating on fees and other national measures.

“We believe the PCT has the capacity to contribute significantly to the challenges facing the international patent system today,” a WIPO official said. “It was designed to address many of the challenges the system is facing such cost, backlog, work-sharing, and duplication reduction. Why isn’t it achieving those things?”

If approved this week, the roadmap would head to the annual PCT General Assembly in September for final approval.

But some concern is rippling among developing countries who appear to sense, among other things, that this could be a backdoor to long-sought harmonisation of substantive national patent laws.

The WIPO official argued that the proposal is not about harmonisation, and that the PCT specifically excludes substantive patent issues, so cannot involve harmonisation, except of procedures.

WIPO officials also insisted the proposal does not call for a new treaty or substantive changes to the existing treaty.

WIPO has been meeting intensively with governments and others on the idea of improving PCT implementation. WIPO Director General Francis Gurry, who took office in October, invited the heads of national offices appointed as international searching and preliminary examining authorities and six other major PCT offices to a meeting on 23 February.

Gurry then invited representatives of a number of user organisations commonly represented at PCT meetings, as well as representatives from some of the largest PCT filers, to a meeting on 2 March, the document said. The secretariat said those in attendance “warmly welcomed” the initiative.

WIPO, like national patent offices, is facing the prospect of slowing patent applications during the economic downturn.

The improvement of international searches is seen as key to PCT improvement.

“Offices are not doing searches to the level they ought to be,” said a WIPO official. “If searches were the highest possible quality, they would get much better work-sharing.” In addition, duplication would go down, trust would be built between offices, and the well-known patent application backlogs plaguing many offices would go down, he said.

The proposed changes emerged after WIPO analysed why the PCT system is not working as intended by founders, an official said. The analysis showed the problems were not legal, but rather related to implementation and practice by those who are part of the system.

“When we realised where the problem was we decided to push them a bit,” the WIPO official said. “We thought, ‘Now we need to push you all to do it as it was intended it to be done.’”

US Proposal for PCT II

There are a number of other documents and proposals on the agenda this week, including one from the United States that calls for a new PCT agreement as a more comprehensive way to reform the PCT. According to the document, PCT/WG/2/12, the US Patent and Trademark Office made this proposal in September 2008 to the trilateral offices, which include Europe and Japan.

The proposed new PCT would avoid the ineffective “piecemeal” improvements being sought to the existing PCT and would combine international and national processing, bring collaboration among authorities, allow for the submission of prior art by the applicant, and allow for third-party prior art submissions.

The new PCT, to be developed over several years, would result in an “extremely high quality final work product” that should be acceptable to national offices. It also would address issues of substantive harmonisation and sovereignty 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,” the US document said.

But some participants said this proposal was not well-received on the first day of this week’s working group meeting, and that even WIPO is not seeking negotiation of a new treaty.

“It is not necessary to talk about a new treaty at this point,” said one participant.