WIPO Global Symposium of Intellectual Property Authorities Geneva, 17&18 September 2009

1. WIPO Global Symposium of Intellectual Property AuthoritiesGeneva, 17&18 September 2009 PCT backbone of the global patent system - in need of support Wim van der Eijk Acting Vice-President Directorate General 5 European Patent Office

2. Now generally accepted that enhanced international cooperation in IP is essential Reasons: • Mounting workloads - currently 3.5 million pending patent applications globally, 750 000 in US alone • Increasing complexity and specialisation of technology • Increased demand for IP protection worldwide • No one seriously insists on a "go it alone" approach but traditional barriers to placing greater reliance on work of other offices remain Reasons: • Perceived variations in quality • Slow progress on substantive patent law harmonisation

3. Concept of "worksharing", particularly improving search quality now firmly established at international level but marked differences of opinion exist about how to realise maximum benefit from worksharing models, ranging from those who continue to advocate a global patent to those who see the solution in increased use of bilateral and plurilateral agreements.

4. IP5 offices currently engaged on a number of "foundation projects" including: Common classification Common documentation Common application format Common dossier access Mutual machine translation Common search recordation Good progress being made; however when it comes to the legal foundation upon which future work sharing initiatives at international level should be based, EPO is firmly of the view that PCT should have a pre-eminent role. Bilateral schemes such as PPH can have benefits. EPO has recently decided to extend its year long PPH agreement with the US and is contemplating a similar arrangement with JPO. But PPH should not be seen as an alternative or even rival to PCT.

5. Why does the EPO favour PCT? • Tried and tested - favoured by applicants • Number of PCT applications grew 2.3% in 2008 even at time of global recession - nearly 164 000 applications last year - growth rate of 12% in China and Korea • Wide geographical coverage - covers both developed and developing countries - affords access to same high level search and examination facilities even for countries which could not contemplate devoting the required resources to a national patent office • Avoids need for lengthy and difficult negotiations on creating a new legal instrument at international level

6. If PCT is so attractive, why has it not solved the world's IP problems - are the shortcomings of the PCT inherent or are they down to its application? Let's look at two key "weaknesses": • Timeliness • Ideally IB publishes international application and ISR together at 18 months from priority date but in 2008 only 51% of ISRs were received by the IB at 16 months from priority as envisaged by Rule 42 PCT • 18% were received after 20 months from the priority date • This shows that timeliness is a problem affecting all ISAs - need to ensure greater compliance with 18 month publication and avoid separate publication of ISR

7. Duplication of effort • All international applications are now subject to ISR and WO-ISA • This should increase confidence that further search and examination as a matter of routine during national processing is unnecessary but PCT has no influence over what happens following national phase entry • Perception still exists that PCT work is of lesser quality than national work - some offices eg. USPTO, openly admit that quality of international search not equivalent to national search Feeling exists that PCT is sometimes used in order to defer national processing until 30/31 months from priority and thus defer translation/attorney costs until then, maybe altogether if application withdrawn Deferral of costs is undeniably a big advantage in terms of financing/flexibility but PCT could deliver more to tackle problems of delay in granting patents if greater confidence in reliability/timeliness of work performed during international phase existed.

8. What can be done to address these problems? • Quality QMS: • EPO has taken lead role in developing QMS provisions: • Each candidate for PCT ISA/IPEA status must now have QMS in place • New reporting requirements - International Authorities must give regular feedback to MIA • Overhaul of Chapter 21 PCT Guidelines underway - will contain updated provision on quality standards, review, transparency • Development of Quality Standards especially important given increase in number of International Authorities - now stands at 15 with 2 new requests pending

9. Improve effectiveness of Treaty Spring 2009: DG WIPO launched a "vision" for future of PCT with accompanying roadmap: • Avoids widescale Treaty reform or legal overhaul rather targets specific areas in implementation of PCT which should be addressed, primarily by PCT Authorities, to encourage greater acceptance of international phase work • Generally welcomed in PCT MIA but more mixed reaction in PCT Working Group last May • No agreement to submit roadmap to PCT Assembly this year but agreement to take account of it in further talks on developing PCT

10. Next steps • EPO wishes to keep process moving - encourages discussion in PCT Working Group and MIA but also favours parallel action within IP5, Trilateral, European PCT Authorities • Specific measures under consideration: • Timing of ISR • Situation has improved slightly in 2009 but still too many A2 publications - JPO has called for postponement of international publication date to take account of "secret prior art" • EPO does not favour this - instead would propose amendment of Rule 42 PCT to allow priority to be given to ISRs approaching 16 month time limit, less priority to ISRs where Rule 42 time limit looming but international publication date still far off - eg. 1st filings approaching 9 month time limit • This would ensure greater efficiency and better allocation of resources by ISAs

11. Enhance PCT II • No longer any "buying time" advantages in using PCT II • Only applicants genuinely interested in responding to WO-ISA and making amendments/overcoming objections use it • EPO ready to reconsider long standing policy of issuing only one Written Opinion prior to IPER • Hope is that this will encourage more applicants to "perfect" international application during international phase so that elected offices will have high degree of confidence in international phase work

12. Collaborative international search and IPE • Idea put forward in WIPO roadmap but lack of direct progress on roadmap should not put this project on ice • Basic concept is that examiners from different Authorities work on same application to produce single high quality ISR/WO-ISA • EPO has launched discussions on pilot project in IP5

13. Other possible initiatives being considered • Allow filing of third party observations • Create incentives for applicant to put application in order during international phase • Apply more RTB proposals to PCT eg. compulsory reply to WO-ISA/IPRP - more such provisions introduced with EP direct application in mind could be applied to PCT international phase

14. EPO to offer SIS from 2010 • Numbers will initially be limited but as experience increases situation will be reviewed • EPO has been consistent advocate of SIS despite reticence of some other ISAs • EPO believes SIS will offer genuine improvement in search quality by allowing access to multiple ISAs as necessary • Increases potential for truly comprehensive search during international phase and minimises risk of "surprise" citations

15. Conclusions Intensity of discussion at international level on worksharing shows problems are being taken seriously • Some advocate strengthening national systems/Paris route and increased bilateral cooperation • EPO does not see bilateral agreement and developing PCT as mutually exclusive but • EPO strongly favours development of PCT - solid foundation, 40 years of experience - proven track record • We should avoid searching for alternatives and concentrate on making progress on the application of PCT