"PCT Developments and the spirit of the PLT"

APAA 59th Council MeetingPatents Committee

November 13, 2011Makati City 　

Matthew Bryan

Director, PCT Legal Division, WIPO

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=PCT

AlbaniaAlgeriaAngolaAntigua and BarbudaArmeniaAustraliaAustriaAzerbaijanBahrain BarbadosBelarusBelgiumBelizeBeninBosnia and HerzegovinaBotswana BrazilBulgariaBurkina FasoCameroonCanadaCentral African RepublicChadChileChina Colombia Comoros Congo

Costa RicaCôte d'IvoireCroatiaCubaCyprusCzech RepublicDemocratic People's Republic of KoreaDenmarkDominicaDominican RepublicEcuadorEgyptEl SalvadorEquatorial Guinea EstoniaFinlandFrance,

GabonGambiaGeorgia GermanyGhana GreeceGrenadaGuatemalaGuinea

Guinea-Bissau HondurasHungaryIcelandIndiaIndonesiaIreland IsraelItalyJapanKazakhstanKenyaKyrgyzstanLao People’s Dem Rep.Latvia Lesotho LiberiaLibyan Arab JamahiriyaLiechtenstein LithuaniaLuxembourgMadagascar

MalawiMalaysiaMaliMaltaMauritaniaMexicoMonacoMongoliaMontenegroMoroccoMozambiqueNamibia NetherlandsNew ZealandNicaraguaNigerNigeriaNorwayOmanPapua New GuineaPeruPhilippines

PolandPortugalQatarRepublic of Korea Republic of MoldovaRomaniaRwandaRussian FederationSaint LuciaSaint Vincent and the Grenadines San MarinoSao Tomé e PrincipeSenegalSerbiaSeychellesSierra LeoneSingaporeSlovakiaSloveniaSouth AfricaSpainSri LankaSudanSwaziland

St. Kitts and NevisSwedenSwitzerlandSyrian Arab RepublicTajikistan ThailandThe former Yugoslav Republic of Macedonia TogoTrinidad and Tobago TunisiaTurkeyTurkmenistanUgandaUkraineUnited Arab EmiratesUnited KingdomUnited Republic of TanzaniaUnited States of AmericaUzbekistanViet NamZambiaZimbabwe

144 PCT States

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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 partiesSimplified procedures, including avoiding unintentional

loss of rightsImplementation of electronic filing and communication

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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

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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

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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

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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

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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

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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

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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)

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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 OfficeCZ Industrial Property Office (Czech Republic)DE German Patent and Trade Mark OfficeDZ Algerian National Institute of Industrial PropertyES Spanish Patent and Trademark OfficeGR Industrial Property Organization (OBI) (Greece) ID Directorate General of Intellectual Property (Indonesia) IN Patent Office (India) IT Italian Patent and Trademark OfficeJP Japan Patent Office KR Korean Intellectual Property OfficeNO Norwegian Patent OfficePH Intellectual Property Office of the Philippines

Asian region countries highlighted for ease of reference

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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 OfficeCN State Intellectual Property Office of the People’s Republic of ChinaCO Superintendence of Industry and Commerce (Colombia)CU Cuban Industrial Property OfficeCZ Industrial Property Office (Czech Republic) DE German Patent and Trade Mark OfficeDZ Algerian National Institute of Industrial PropertyES Spanish Patent and Trademark Office ID Directorate General of Intellectual Property (Indonesia) IN Patent Office (India)JP Japan Patent OfficeKR Korean Intellectual Property OfficeLT Lithuanian Patent OfficeMX Mexican Institute of Industrial PropertyNO Norwegian Patent OfficePH Intellectual Property Office of the PhilippinesTR Turkish Patent InstituteUS United States Patent and Trademark Office

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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 OfficeCN State Intellectual Property Office of the People’s Republic of ChinaCO Superintendence of Industry and Commerce (Colombia)CU Cuban Industrial Property OfficeCZ Industrial Property Office (Czech Republic)DE German Patent and Trade Mark OfficeDZ Algerian National Institute of Industrial PropertyES Spanish Patent and Trademark Office ID Directorate General of Intellectual Property (Indonesia) IN Patent Office (India)JP Japan Patent OfficeKR Korean Intellectual Property OfficeLT Lithuanian Patent OfficeMX Mexican Institute of Industrial PropertyNO Norwegian Patent OfficePH Intellectual Property Office of the PhilippinesTR Turkish Patent InstituteUS United States Patent and Trademark Office

14Reinstatement of rights for failure to timely enter national phase

PLT Article 12 → PCT Rule 49.6

Incompatibilities:CA Canadian Intellectual Property OfficeCN State Intellectual Property Office of the People’s Republic of

ChinaDE German Patent and Trade Mark Office IN Patent Office (India)JP Japan Patent OfficeKR Korean Intellectual Property OfficeLV Latvian Patent OfficeMX Mexican Institute of Industrial PropertyNZ Intellectual Property Office of New ZealandPH Intellectual Property Office (Philippines)PL Patent Office of the Republic of Poland

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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 ChinaCU Cuban Industrial Property OfficeCZ Industrial Property Office (Czech Republic)DE German Patent and Trade Mark OfficeID Directorate General of Intellectual Property (Indonesia)JPJapan Patent OfficeKR Korean Intellectual Property OfficeLT Lithuanian Patent OfficeMX Mexican Institute of Industrial PropertyPH Intellectual Property Office of the PhilippinesTR Turkish Patent Institute

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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

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US JP DE CN KR FR GB NL CH SE CA IT FI AU ES

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

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Offices of the Asian RegionEast 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