"PCT Developments and the spirit of the PLT"

1. "PCT Developments and the spirit of the PLT" APAA 59th Council Meeting Patents Committee Matthew Bryan Director, PCT Legal Division, WIPO November 13, 2011 Makati City

2. 144 PCT States =PCT Albania Algeria Angola Antigua and Barbuda Armenia Australia Austria Azerbaijan Bahrain Barbados Belarus Belgium Belize Benin Bosnia and Herzegovina Botswana Brazil Bulgaria Burkina Faso Cameroon Canada Central African Republic Chad Chile China Colombia Comoros Congo Costa Rica Côte d'Ivoire Croatia Cuba Cyprus Czech Republic Democratic People's Republic of Korea Denmark Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland France, Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea • Malawi • Malaysia • Mali • Malta • Mauritania • Mexico • Monaco • Mongolia • Montenegro • Morocco • Mozambique • Namibia • Netherlands • New Zealand • Nicaragua • Niger • Nigeria • Norway • Oman • Papua New Guinea • Peru • Philippines Guinea-Bissau Honduras Hungary Iceland India Indonesia Ireland Israel Italy Japan Kazakhstan Kenya Kyrgyzstan Lao People’s Dem Rep. Latvia Lesotho Liberia Libyan Arab Jamahiriya Liechtenstein Lithuania Luxembourg Madagascar • St. Kitts and Nevis • Sweden • Switzerland • Syrian Arab Republic • Tajikistan • Thailand • The former Yugoslav • Republic of Macedonia • Togo • Trinidad and Tobago • Tunisia • Turkey • Turkmenistan • Uganda • Ukraine • United Arab Emirates • United Kingdom • United Republic of Tanzania • United States of America • Uzbekistan • Viet Nam • Zambia • Zimbabwe Poland Portugal Qatar Republic of Korea Republic of Moldova Romania Rwanda Russian Federation Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tomé e Principe Senegal Serbia Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan Swaziland

3. Patent Law Treaty (PLT) • Aim: harmonize and streamline formal procedures in respect of national and regional patent applications and patents, and thus to make such procedures more user-friendly • With the exception of the filing date requirements, the PLT provides maximum sets of requirements, which the Office of a Contracting Party may apply • Includes: • Standardized filing date requirements (claims not required) • Model forms, accepted by all PLT parties • Simplified procedures, including avoiding unintentional loss of rights • Implementation of electronic filing and communication

4. PCT and PLT: Background (1) • PLT connected to PCT from the beginning • PLT Art. 6(1)--form and contents • PLT Art. 16--Effect of Revisions, Amendments and Modifications of the Patent Cooperation Treaty • Further rapprochment between PCT and PLT began in 2001 with the 1st session of the Committe on Reform of the PCT (remember that PLT DipCon was in 2000) • “there is a general need for the PCT to be reviewed to see what changes are necessary or desirable to bring it into line with the letter and spirit of the PLT” (expressed by various delegations--PCT/R/WG/1/5, page 2) • Initial proposals made in 2001 • One objective of PCT Reform (2001) • Alignment of the PCT, to the maximum extent possible, with the provisions of the PLT

5. PCT and PLT: Background (2) • PCT WG agreed that priority should be given to those PLT matters which would result in the greatest and most immediate practical benefit for users, which were determined to be: • Restoration of priority • Missing parts • Addition or correction of a priority claim had already been added to the PCT • PLT Art. 13(1) was modeled on PCT Rule 26bis • More possibilities for PCT/PLT alignment, but they get hard to do because of PCT Treaty language

6. Restoration of Priority • PLT Article 13(2) → PCT Rules 26bis.3, 49ter.1 and 49ter.2 • PCT Rule 26bis.3: Restoration of Right of Priority by Receiving Office • PCT Rule 49ter.1: Effect of Restoration of Right of Priority by Receiving Office • PCT Rule 49ter.2: Restoration of Right of Priority by Designated Office • Entered into force April 1, 2007

7. Missing parts • PLT Article 5 → PCT Rule 20.6 • PCT Rule 20.6—Confirmation of Incorporation by Reference of Elements and Parts • Entered into force April 1, 2007

8. Excuse of delay in entering national phase • PLT Article 12 → PCT Rule 49.6 • PCT Rule 49.6— Reinstatement of Rights after Failure to Perform the Acts Referred to in Article 22 • Entered into force January 1, 2003

9. PCT and PLT: Incompatibilities (1) • A number of countries, for each PLT-related provision, expressed the view that enacting these in the PCT would not be consistent with the existing national law • As a result, “incompatibility” provisions were added to those PCT Rules effecting the implementation of the PLT spirit • still outstanding “incompatibility notifications” are collected on a consolidated list on WIPO website: http://www.wipo.int/pct/en/texts/reservations/res_incomp.html • PCT Roadmap on Incompatibilities • total of approx. 150 instances

10. PCT and PLT: Incompatibilities (2) • “Finally, Offices need to eliminate inconsistencies in effect or processing of an international application due to reservations or notices of incompatibility with certain Articles, Rules and Administrative Instructions by States and Offices. There are around 150 such reservations and notices, the effect of some of which can be that priority claims are not effective in some States, or that the content of the international application itself may be considered to be different in some States. Such differences will clearly make international search and preliminary examination less relevant to some national phases and result in complications and substantive differences for both applicants and Offices for reasons which are unrelated to substantive national conditions of patentability.” --PCT/WG/2/3, para. 18, 2009 (PCT Roadmap)

11. Restoration of Priority(2) • PCT Rule 26bis.3: Restoration of Right of Priority by Receiving Office • Incompatibilities: • BE Intellectual Property Office (Belgium) • BR National Institute of Industrial Property (Brazil) • CO Superintendence of Industry and Commerce (Colombia) • CU Cuban Industrial Property Office • CZ Industrial Property Office (Czech Republic) • DE German Patent and Trade Mark Office • DZ Algerian National Institute of Industrial Property • ES Spanish Patent and Trademark Office • GR Industrial Property Organization (OBI) (Greece) • ID Directorate General of Intellectual Property (Indonesia) • IN Patent Office (India) • IT Italian Patent and Trademark Office • JP Japan Patent Office • KR Korean Intellectual Property Office • NO Norwegian Patent Office • PH Intellectual Property Office of the Philippines Asian region countries highlighted for ease of reference

12. Restoration of Priority(3) • PCT Rule 49ter.1: Effect of Restoration of Right of Priority by Receiving Office • Incompatibilities: • BR National Institute of Industrial Property (Brazil) • CA Canadian Intellectual Property Office • CN State Intellectual Property Office of the People’s Republic of China • CO Superintendence of Industry and Commerce (Colombia) • CU Cuban Industrial Property Office • CZ Industrial Property Office (Czech Republic) • DE German Patent and Trade Mark Office • DZ Algerian National Institute of Industrial Property • ES Spanish Patent and Trademark Office • ID Directorate General of Intellectual Property (Indonesia) • IN Patent Office (India) • JP Japan Patent Office • KR Korean Intellectual Property Office • LT Lithuanian Patent Office • MX Mexican Institute of Industrial Property • NO Norwegian Patent Office • PH Intellectual Property Office of the Philippines • TR Turkish Patent Institute • US United States Patent and Trademark Office

13. Restoration of Priority(4) • PCT Rule 49ter.2: Restoration of Right of Priority by Designated Office • Incompatibilities: • BR National Institute of Industrial Property (Brazil) • CA Canadian Intellectual Property Office • CN State Intellectual Property Office of the People’s Republic of China • CO Superintendence of Industry and Commerce (Colombia) • CU Cuban Industrial Property Office • CZ Industrial Property Office (Czech Republic) • DE German Patent and Trade Mark Office • DZ Algerian National Institute of Industrial Property • ES Spanish Patent and Trademark Office • ID Directorate General of Intellectual Property (Indonesia) • IN Patent Office (India) • JP Japan Patent Office • KR Korean Intellectual Property Office • LT Lithuanian Patent Office • MX Mexican Institute of Industrial Property • NO Norwegian Patent Office • PH Intellectual Property Office of the Philippines • TR Turkish Patent Institute • US United States Patent and Trademark Office

14. Reinstatement of rights for failure to timely enter national phase • PLT Article 12 → PCT Rule 49.6 • Incompatibilities: • CA Canadian Intellectual Property Office • CN State Intellectual Property Office of the People’s Republic of China • DE German Patent and Trade Mark Office • IN Patent Office (India) • JP Japan Patent Office • KR Korean Intellectual Property Office • LV Latvian Patent Office • MX Mexican Institute of Industrial Property • NZ Intellectual Property Office of New Zealand • PH Intellectual Property Office (Philippines) • PL Patent Office of the Republic of Poland

15. Missing parts • PLT Article 5 → PCT Rule 20.6 • Incompatibilities: • 20.8(a) (Receiving Office) • BE Intellectual Property Office (Belgium) • CU Cuban Industrial Property Office • CZ Industrial Property Office (Czech Republic) • DE German Patent and Trade Mark Office • ID Directorate General of Intellectual Property (Indonesia) • IT Italian Patent and Trademark Office • JP Japan Patent Office • KR Korean Intellectual Property Office • MX Mexican Institute of Industrial Property • PH Intellectual Property Office of the Philippines • 20.8(b)  (Designated Office) • CN State Intellectual Property Office of the People’s Republic of China • CU Cuban Industrial Property Office • CZ Industrial Property Office (Czech Republic) • DE German Patent and Trade Mark Office • ID Directorate General of Intellectual Property (Indonesia) • JPJapan Patent Office • KR Korean Intellectual Property Office • LT Lithuanian Patent Office • MX Mexican Institute of Industrial Property • PH Intellectual Property Office of the Philippines • TR Turkish Patent Institute

16. Excuse of delay: force majeur • PLT Article 11 → new PCT 82quater 82quater.1   Excuse of Delay in Meeting Time Limits (a)  Any interested party may offer evidence that a time limit fixed in the Regulations for performing an action before the receiving Office, the International Searching Authority, the Authority specified for supplementary search, the International Preliminary Examining Authority or the International Bureau was not met due to war, revolution, civil disorder, strike, natural calamity or other like reason in the locality where the interested party resides, has his place of business or is staying, and that the relevant action was taken as soon as reasonably possible. (b)  Any such evidence shall be addressed to the Office, Authority or the International Bureau, as the case may be, not later than six months after the expiration of the time limit applicable in the given case. If such circumstances are proven to the satisfaction of the addressee, delay in meeting the time limit shall be excused. (c)  The excuse of a delay need not be taken into account by any designated or elected Office before which the applicant, at the time the decision to excuse the delay is taken, has already performed the acts referred to in Article 22 or Article 39. • Enters into force July 1, 2012

17. International applications received in 2010 by country of origin US: -1.6% JP: +8% DE: +4.5% KR: +20.3% CN: +55.6% IN: +36.6% 2010: the year East Asia overtook North America and Western Europe to become the subregion accounting for most PCT filings

18. Offices of the Asian Region • East Asian Region now leads all other world subregions in use of PCT • Average annual growth rate (2002-2010) of 15.1% • Setting admirable example for the rest of the world in terms of timeliness of PCT work, quality of work products, and seriousness with which they take their Treaty obligations • This seriousness, dedication and hard work is noted and greatly appreciated! • Now, WIPO urges the IP Offices of this dynamic region to provide their applicants with all of the protections and flexibilities set out in both the PCT and the PLT: • enacting the necessary legal changes • withdrawing incompatibility notifications (where necessary), and • joining the PLT and PCT where they have not done so