New Developments under the Patent Cooperation Treaty (PCT) System

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  • June 20, 2016
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  • Patent

The Patent Cooperation Treaty (PCT) administered by the World Intellectual Property Organization (WIPO) assists applicants in seeking patent protection internationally for their inventions, helps patent Offices with their patent granting decisions, and facilitates public access to a wealth of technical information relating to those inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in a very large number of countries.

Recent PCT developments include the appointment of Visegrad Patent Institute (VPI) as a International Searching Authority (ISA). As many may know, VPI is a joint initiative by the IP Offices of Poland, Hungary, Slovakia and Czech Republic. There have also been several amendments to the PCT Regulations which enter into force on July 1st 2016. These include: legal basis and procedure for removing/withholding certain “sensitive information” from public access on applicant’s request (Rules 9, 48 & 94); required transmittal by Receiving Office (RO) to International Bureau (IB) of documents submitted in support of requests for restoration of priority right (Rules 26bis & 48); “general unavailability of electronic communications services” as grounds for excuse of delay in meeting certain time limits (Rule 82quater); and language of communication with IB via ePCT opened to all publication languages (Rule 92).
In addition there are several amendments to the PCT Regulations which will enter into force on July 1st 2017. These include: Designated Offices required to provide IB with timely national phase entry and related data (Rules 86 & 95) and transmittal by RO of earlier search and/or classification results to ISA, where national law permits (Rules 12bis, 23bis & 41).
Some of the outcomes of the 2016 PCT Working Group include: recommendation to PCT Assembly to appoint Turkish Patent Institute as ISA; Amendments to PCT Regulations agreed, such as: Modifying time limit to request Supplementary International Search (from 19 to 22 months); Further small change to Rule 23bis; Removal of unnecessary incompatibility provisions. Other outcomes include: Support of IB’s future work on PCT online services and Report provided on upcoming 3rd pilot of IP5 collaborative search and examination. The IB will also consult with Offices and user groups on several issues such as: proposed pilot for ePCT national phase entry functionality; technical/legal/administrative issues related to color drawings; translation difficulties relating to the number of words in abstracts and drawings; and inclusion of CPC/other national classification symbols on front page of published international applications. On examiner training, the IB will undertake the following tasks: compile info on examiner training provided by offices; invite offices to provide training to examiners from other offices; develop concept for improved coordination of examiner training; and invite sharing of training materials
In light of the above, it is clear that one of the challenges faced by PCT is its growth given the number of states who are members of PCT and the number of PCT filings it receives. Another challenge is trying to continue to make the PCT even more successful as a worksharing tool (as intended by its founders). Another complex challenge is trying to keep PCT from being politicized. There are also language issues as non-English applications increase including Japanese (18.7%), Chinese (10.7%), German (7.7%), Korean (5.1%) 34.5% in Asian languages. The PCT Legal Division has also identified other challenges such as: Helping developing countries (applicants, Offices, 3rd
parties) benefit from PCT; Helping PCT users stay abreast of new developments and strategies; Assisting Contracting State offices in implementing PCT related information technology services for offices and applicants; and Unscrupulous companies/individuals who want to mislead PCT applicants into paying unrelated and unnecessary fees.
Sources: Matthew Bryan, Presentation at WIPO-WTO Colloquium for Teachers of Intellectual Property, June 13-24, 2016

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