1 / 32

PCT Working Group 4th Session Geneva June 6-10 2011 Shigeyuki Nagaoka and Paul Harrison

PCT Working Group 4th Session Geneva June 6-10 2011 Shigeyuki Nagaoka and Paul Harrison. AGENDA PCT Statics MIA 18th/19th Session Future Development of PCT System (a) Recommendations to Improve Functioning of PCT (b) Global Surge in Filings

natan
Download Presentation

PCT Working Group 4th Session Geneva June 6-10 2011 Shigeyuki Nagaoka and Paul Harrison

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. PCT Working Group 4th SessionGeneva June 6-10 2011Shigeyuki NagaokaandPaul Harrison

  2. AGENDA • PCT Statics • MIA 18th/19th Session • Future Development of PCT System (a) Recommendations to Improve Functioning of PCT (b) Global Surge in Filings (c) Coordination of Technical Assistance (d) PCT Meeting its Aims (e) Third Party Observations System (f) UK Fast Track

  3. AGENDA 4. Proposed changes to PCT procedural and legal framework (a) PCT Minimum Documentation (b) Presentation of Sequence Listings under PCT (c) Proposed Amendments of Rules 17.1(b-bis) and 20.7(b) (d) Excuse of Delay in Meeting Certain Time Limits 5. Supplementary International Searches 6. PCT Online Services (e-PCT) 7. Contribution of PCT WG to Development Agenda 8. Other matters 9. Future Work

  4. 1. PCT Statistics • China for the first time more applications than Korea • CN 55.6% increase over last year • India 36% increase • Korea 20% increase • Europe a mixture of growth and decline • US a decline of 1.6% but still largest user • WIPO views Asian Region as a very important stake holder and user of the PCT system as well as high percentage growth area • WIPO considers engagement with APAA members and users as vital

  5. 2. MIA 18th Session • Meeting of International Authorities • Held in Moscow March 2011 • Intended to discuss operational aspects of PCT system and in particular • Effective processes and solutions for quality assurance • Effective quality improvement measures • JIPA Association presented a Paper • “Evaluating usefulness of ISR in JP/EP/US PCT Applications” • CA Patent Office proposed standardisation of ISR and IPER clauses • Both well received but resource issues prevented implementation

  6. 2. MIA 18th Session • Next meeting in Canberra Australia Feb 8-10 RECOMMENDATION MIA arguably has more immediate and practical effect on members practices. There is no observer status for MIA. However, WIPO Secretariat has given cautious support for a welcome reception potentially sponsored by APAA. This would seem an excellent opportunity for further interaction between APAA and WIPO in particular International Authorities. IP Australia has also indicated there support.

  7. 3. Future Development of PCT • Considerable controversy and discussion • WIPO needs to balance assistance to all users with available resources • Becoming highly politicised • DAG group promote allocation of resources to least developed and developing nations

  8. 3. Future Development of PCT • Other challenges for WIPO • Improving Functioning of PCT • Global Surge in Patent Filings • Technical Assistance and Developing Countries • Is PCT meeting its aims of • “disseminating technical information” • “facilitating access to technology” • “organising technical assistance to developing countries”

  9. 3(a) Recommendations to Improve Functioning of PCT • Many proposals from various Countries most of which are underway but take time • Training examiners • Timeliness in International Phase • Quality of Searching • Incentives, Cost and Accessibility Issues • But some are best left to other forums eg • Enablement and Disclosure Requirements • Patent thickets • Patents as business tools rather than rewards for Innovation

  10. 3(b) Global Surge in Patent Filings • First growth period 1983-1990 • 1983-1990 (28.9% total) • Japanese contribution 16.9% • Second growth period 1995-2007 • 1995-2007 (83.7% total) • US contribution 17.5% • CN contribution 15.5% • KR contribution 14.1% • JP contribution 10.6% • Increasing workload and backlogs but pendency rates fluctuate markedly between offices

  11. The Double Surge in Patent Filings

  12. USA Japan China European Patent Office Republic of Korea 200 150 Patent Filings, 1972=100 100 50 0 1985 1987 1989 1991 1993 1995 1997 1999 2001 2003 2005 1981 1983 2007 Pendancy Rates

  13. 3(b) Global Surge in Patent Filings • Despite general downward trend on R&D spend • US, Russian Federation, Netherlands and Switzerland increasing • Reasoning for Surge • Multiple filings on same invention • Changes in R&D productivity • Strong Patenting philosophy in certain technologies • First filings strong in • China, Japan, Korea, Russian Federation • Subsequent filings growth • Europe, Canada, US

  14. 3(b) Global Surge in Patent Filings • Further Research by Chief Economist • Link between R&D spend and filings • “richer” data to breakdown economic and technology factors • Determine why pendency rates fluctuate in offices • Filing numbers • Technology • Training, Resources etc

  15. 3(c) Co-Ordination of Technical Assistance • Interim Committee set up in 1970 to formalise PCT Committee for Technical Assistance (CTA) • 7 meetings up until 1978 to form CTA • CTA has never met • Immediate steps to Revive CTA • Funding issues were clarified in detail • Secretariat provided detailed information on TA programs under the PCT including • Training on IP generally • Tech transfer of PCT matters • Education to member countries

  16. 3(d) PCT Aims • Previous WG recommended a study be conducted to determine how well the PCT was performing in • “disseminating technical information” • “facilitating access to technology” • “organising technical assistance to developing countries” • Study has been Delayed • DAG group again reiterated urgent need for this study • Secretariat confirmed completion of study by IB and additional information at 5th Session

  17. 3. Future Development of PCT System 3(e) Third Party Observations System; Quality Feedback System • WG supported introduction of this system because it would improve quality of PCT work product • System is still under development • Some concerns with regard to specific features of this system • FR: Third party observations should be accessible to public and applicant should be able to respond • DAG: System should allow submission on clarity and sufficiency of disclosure • JPO: Valuable information about novelty and inventive step may come from third parties

  18. 3. Future Development of PCT System 3(f) UK Experiences of Encouraging More Effective Use of Int’l Phase: PCT (UK) Fast Track • PCT (UK) fast track service introduced in 2010 to encourage more effective use of int’l phase • Two purposes • (1) To encourage applicants to file higher quality applications under PCT • (2) To eliminate remaining defects by taking action to amend PCT applications during international phase • Eligible if PCT application receives positive international report on patentability

  19. 3. Future Development of PCT System 3(f) UK Experiences of Encouraging More Effective Use of Int’l Phase: PCT (UK) Fast Track • First Office Action is issued in two months • Patent is granted in six months • To use PCT system to its full potential • To allow DO to benefit from amendment actions because they would reduce duplication of work in national phase

  20. 4. Proposed changes to PCT procedural and legal framework 4(a) PCT Minimum Documentation • Addition of Chinese patent documents • China is now #4 PCT filer and #2 patent filer • Rule 34 will be amended • Will go to PCT Assembly this September

  21. 4. Proposed changes to PCT procedural and legal framework 4(b) Presentation of Sequence Listings under PCT • Discussions commenced in WIPO’s Committee on WIPO Standards (CWS) aimed at establishing new WIPO XML Sequence Listing Standard • Currently there are two standards: WIPO Sequence Listing Standard ST.25 and PCT Sequence Listing Standard, neither in XML environment • New Standard differs substantially from ST.25 • Some ISAs are not ready to accept sequence listings in XML format • WIPO will review relationship between PCT Administrative Instructions and relevant WIPO Standard

  22. 4. Proposed changes to PCT procedural and legal framework 4(c) Proposed Amendments of Rules 17.1(b-bis) and 20.7(b) • Rule 17.1(b-bis): Where the priority document is, in accordance with the Administrative Instructions, madeavailable [to the RO or] to the IB from a digital library prior to the date of international publication of the international application, the applicant may, [as the case may be,] instead of submitting the priority document: [(i) request the RO to obtain the priority document from such digital library and transmit it to the IB; or (ii)] request the IB prior to the date of international publication to obtain the priority document from such digital library.

  23. 4. Proposed changes to PCT procedural and legal framework 4(c) Proposed Amendments of Rules 17.1(b-bis) and 20.7(b) • Rule 20.7(b): Where neithera correction under Art. 11(2) nor [or] a notice under Rule 20.6(a) confirming the incorporation by reference of an element referred to in Art. 11(1)(iii)(d) or (e) is received by the RO prior to [after] the expiration of the applicable time limit under paragraph(a), any such correction or notice received by that Office after the expiration of that time limit but beforeit [that Office] sends a notification to the applicant under Rule 20.4(i)[, that correction or notice] shall be considered to have been received within that time limit.

  24. 4. Proposed changes to PCT procedural and legal framework 4(d) Excuse of Delay in Meeting Certain Time Limits due to Force Majeure • PCT legal framework does not contain general provision for excuse of delay in meeting PCT time limits due to circumstances beyond control of applicant • JPO: PCT would be able to provide proper safeguards to PCT users who are in difficult circumstances • Australia: Current PCT Rules are not sufficiently flexible to deal with major natural disasters • Rule 82quater.1 will be introduced

  25. 4. Proposed changes to PCT procedural and legal framework 4(d) Excuse of Delay in Meeting Certain Time Limits due to Force Majeure • Rule 82quater.1: (a) Any interested party may offer evidence that a time limit fixed in the Regulations 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 hi place of business or is staying, and that the relevant action was taken as soon as reasonably possible. Any such evidence shall be submitted not later than six months after the expiration of the time limit applicable in the given case.

  26. 4. Proposed changes to PCT procedural and legal framework 4(d) Excuse of Delay in Meeting Certain Time Limits due to Force Majeure • Rule 82quater.1: (b) If such circumstances are proven to the satisfaction of the national Office or intergovernmental organization which is the addressee, delay in meeting the time limit shall be excused, provided that any such excuse shall have no effect in any DO or EO where the processing or examination of the int’l application has already started.

  27. 5. Supplementary International Searches • Very few applicants has used this system (24 demands in 2009, and 41 demands in 2010) • Six ISAs are participating (Russian, Nordic, Sweden, Finland, European and Austrian Patent Offices) • Some ISAs expressed the need to review this system and identify how to make the system more attractive • Feedback from users may be helpful • JPO emphasized that at this point it had no intention to offer supplementary international searches • FICPI: Supplementary search should find new pieces of prior art, be truly supplementary and be less expensive. JPO, Chinese Patent Office and other major Offices should participate in this system

  28. 6. PCT Online Services (e-PCT) • New online private file inspection system • This new IT system is called ePCT • Applicants and attorneys can access their international applications online in secure manner • Accessible even before international publication • User account is needed • Applicant can check on current status of international application

  29. 7. Contribution of PCT WG to implementation of respective development agenda recommendations • New agenda squeezed by DAG • DAG: Development is integral part of PCT, and WG is required to report to WIPO General Assembly as to how WG was contributing to implementation of Development Agenda Recommendations • Art. 51 mandates establishment of Committee for Technical Assistance to organize and supervise technical assistance for developing countries • CDIP (Committee for Development and Intellectual Property) provides some technical assistance to developing countries

  30. 8. Other matters • Collaborative Search and Examination Pilot Project • KIPO, EPO and USPTO carried out pilot project to test concept of collaborative search and examination • Objective is to allow examiners from different ISAs in different regions with different language specialties to work together to produce one common high-quality ISR and written opinion • First pilot was concluded in September 2010 • Results: very positive and more promising than expected “this concept is realistic” “added value to quality” “increased legal certainty ” • Second pilot will be conducted to make more qualitative and quantitative evaluation

  31. 9. Future Work Next WG Session is scheduled to be held in Geneva in June 2012

  32. Thank you ! Shigeyuki Nagaoka Fujimura Patent Bureau, P. C. Tokyo, Japan & Paul Harrison Shelston IP Sydney, Australia

More Related