WIPO Group To Consider Substantive Amendment To Patent Cooperation Treaty

On the agenda of the normally technical World Intellectual Property Organization working group on the Patent Cooperation Treaty (PCT) next week is a proposal for an amendment that would incorporate the bilateral Patent Prosecution Highway (PPH) used by some countries into the PCT. This has stirred concern among countries that are currently outside the PPH system.

The PCT Working Group will meet from 21-24 May. Documents are available here. The proposal, PCT/WG/6/17, is entitled, “Formal Integration of the Patent Prosecution Highway into the PCT,” and was submitted by the United Kingdom and the United States.

The 147-member PCT, managed by WIPO, “makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an ‘international’ patent application,” according to a WIPO information sheet.

In a working group known for its work on technical tweaks to the PCT system, this proposal from the United Kingdom and United States is drawing attention from member states and observers because of its potential bigger implications.

Questions are cropping up over the potential impact of the proposal on national laws and practices, as it would likely lead to pressure on countries to sign up for the Patent Prosecution Highway championed by the United States and other major patent-owning countries.

Some members also are asking whether such an amendment is big enough to warrant an amendment to the treaty itself – which requires a full diplomatic conference, a high-level treaty negotiation.

The proposal is intended to amend only the PCT Regulations and Administrative Instructions in order to formally integrate the PPH into the PCT system. It is not proposed to amend the treaty itself.

The PPH allows an applicant who has received a ruling from a first office of filing that at least one claim is patentable to fast-track the examination of corresponding applications in a second office.

The proposal cites benefits of the PPH to date, including: “accelerated examination, a significantly higher allowance rate, a decreased cost of prosecution resulting from the fact that PPH cases generally have fewer actions prior to allowance, and reduced pendency.”

“Currently, all but two of the International Authorities as well as a large number of non-Authorities have entered into PPH agreements with at least one other national or regional Office,” the proposal states. “By formally incorporating the PPH into the PCT system, the need for many of these separate agreements could be eliminated. Further, the requirements for receiving PPH treatment before a given Office can differ from PPH agreement to another. Adoption of the proposal to formally integrate the PPH into the PCT would, therefore, have the added benefit of standardizing many of these requirements, and thus simplifying the process for applicants.”

As to concerns about national sovereignty, the proposal says “the PPH in no way provides for an automatic or mandatory grant of a patent as a result of positive indications under PCT Article 33(2)-(4).”

PCT Article 33 states:

“The International Preliminary Examination

(1) The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.
(2) For the purposes of the international preliminary examination, a claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations.
(3) For the purposes of the international preliminary examination, a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.
(4) For the purposes of the international preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. “Industry” shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.
(5) The criteria described above merely serve the purposes of international preliminary examination. Any Contracting State may apply additional or different criteria for the purpose of deciding whether, in that State, the claimed invention is patentable or not.
(6) The international preliminary examination shall take into consideration all the documents cited in the international search report. It may take into consideration any additional documents considered to be relevant in the particular case.”

The proposal says work on the idea was begun in June 2012 and has been progressing since then.

A US Patent and Trademark Office (USPTO) spokesperson told Intellectual Property Watch: “The availability of expedited processing under the Patent Prosecution Highway (PPH) has been shown to provide benefits for offices and applicants alike, including accelerated examination, a significantly higher allowance rate, a decreased cost of prosecution and reduced pendency.”

“Formal incorporation of the PPH into the PCT system,” he said, “would also obviate the need for many of the large number of separate agreements which currently exist between individual offices, and would help to standardize the differing PPH requirements, thus simplifying the process for applicants.”

Caution Suggested

Developing countries this week are looking more closely at the proposal, and are suggesting caution until it can be better understood.

The PPH is “very recent,” said one developing country official. “There is not a lot of experience with it. It is still too early to incorporate it into the PCT.”

Another official said, “This proposal would introduce a substantive change in the nature of the treaty, to the extent that it reaches the national phase and thereby influences the process of examination of patent application by national IP offices. This proposal has still to be fully fleshed out in order to allow for a solid assessment of its consequences.”

Prof. Fred Abbott of Florida State University law school said in preliminary comments to Intellectual Property Watch that the proposal might provide the ability to “jump the queue” of patent applications at a time when patent offices around the world are facing backlogs of applications, Abbott said. This would give “a significant advantage” to major enterprise inventors who have the resources to use the PCT system, he said, compared with local inventors that file only national patent applications – who will be put to the back of the queue.

“Given the scarce resources available to patent offices, this will compound problems for smaller local inventors, whether in in developing or developed countries,” he said. “It is basically calling for a two-tier patent system.”

On the question of flexibility for countries, Abbott said the proposal indicates that countries may reserve provisions of their patent law which are not compatible with PCT examination criteria. But, he said, developing country governments “may well be concerned over pressures that would inevitably arise to conform national laws to the PCT examination standards, even if reservations are entered.”

Abbott also said that while the proposal suggests that approval by either International Search Authority (ISA) or the International Preliminary Examination Authority (IPEA) will be enough to give fast-track status, in fact Section 901(a)(i) of the instructions “create some ambiguity about that, suggesting that more than one such favourable opinion is required.”

On whether such a change could be done as an amendment to the regulations or requires convening a special negotiating conference, Abbott said more analysis is needed, but noted that even for an amendment to the regulations, a three-fourths majority of members is needed for it to pass – a “pretty high hurdle.”