PCT Member States Endorse Recommendations to Enhance International Patent System

    By Donald Zuhn --

On Friday, the World Intellectual Property Organization (WIPO) announced that the member states of WIPO's Patent Cooperation Treaty (PCT) had endorsed a series of recommendations for enhancing the international patent system.  The announcement came at the conclusion of PCT Working Group discussions that took place from June 14-18, 2010.  WIPO Director General Francis Gurry noted that the recommendations would "go a long way in creating the conditions that will enable WIPO member states to gain greater benefits from the international patent system."

The recommendations that the member states endorsed were set forth in a "fairly lengthy" 66-page, 212 paragraph WIPO study entitled "The Need for Improving the Functioning of the PCT System," which the PCT Working Group had commissioned in May 2009.  The study examines how the PCT has measured up to its stated aims, and is based on response to a Questionnaire the International Bureau distributed to Offices, Contracting States, and other interested parties in November 2009.  The Executive Summary of the study states that:

The Working Group decided that efforts should continue on improving the PCT, noting that the system can and should function more effectively on behalf of all stakeholders, within the existing legal framework, without limiting the freedom of Contracting States to control substantive patent law issues as well as national search and examination procedures.

Among the "simple changes" the study proposes are to allow third parties to comment on pending applications, make national search reports available, and encourage applicants to file higher quality applications and correct defects before entering the national phase.

Discussing the track record of the PCT, the study declares that:

Almost 32 years after the beginning of operations of the PCT system, it can be stated that not only have most (though not all) of the expectations of the founders of the PCT been met, many have been exceeded to an extent which the founders of the PCT could not have envisaged.

The study notes that the PCT has expanded from 18 member states as of June 1, 1978 to 142 member states today.  (The original member states were Brazil, Cameroon, the Central African Republic, Chad, the Congo, France, Gabon, Germany (Federal Republic of), Luxembourg, Madagascar, Malawi, Senegal, the Soviet Union, Sweden, Switzerland, Togo, the United Kingdom, and the United States of America.)  The study also notes that while a "modest" 636 international applications were filed in the first six months of PCT operations in 1978, more than 1.8 million applications were filed between 1978 and 2009, and 155,900 applications were filed in 2009 alone.

The study sets forth eleven problems or challenges facing the PCT, including worldwide application backlogs, the timeliness of the International phase, and examination quality.  With respect to the backlogs, the study states that "backlogs in many (but by no means all) Offices of PCT Contracting States continue to increase, both in terms of absolute numbers and in terms of pendency."  The WIPO announcement regarding the study pegs the worldwide backlog at roughly 4.2 million unprocessed patent applications.  As for the timeliness of the International phase, the study notes that 26% of international applications were published without an International Search Report (ISR) in 2009 and 6% of all ISRs were delivered more than 30 months from the priority date (i.e., at a time when the international application might already have been required to enter the national phase).  Finally, with respect to examination quality, the study acknowledges that "[t]he patent system generally is frequently criticized for allowing too many patents to be granted which are invalid according to the relevant national laws as well as for the time and cost involved in challenging patents which are believed to be invalid."

The final 24 pages of the study are devoted to discussing and evaluating a number of options for addressing the problems and challenges facing the PCT.  The WIPO press release notes that among the options specified in the study are measures to help reduce the worldwide application backlog and improve the quality of granted patents, including, for example, the deployment of computer systems that allow third parties to alert patent offices about information relevant to patentability.  In addition, the study recommends that other electronic systems be developed to support technology transfer by promoting the licensing of inventions and helping to identify information about technologies that are in the public domain.

Comments

[Dan Feigelson]

Thanks Don. Interesting that the document doesn't mention anything about filing color drawings (something that I understand from the PCT's Matthew Bryan has been tied up for years over the issue of the standard to be adopted), or the possibility of requiring the searching office to provide a refund if it doesn't timely issue the search report. Regarding the former, it's ridiculous that all the leading scientific journals will accept and publish color figures, and that such figures can be more informative than B/W figures, but the PCT is still mired in 19th century concepts of patent drawings. Regarding the latter, if refunds aren't realistic, maybe the PCT should move to charging part of the search fee up front but the majority of the fee after the search report has been prepared. If the report was prepared on time, then you'd have to pay up in order to enter national phase. If the report wasn't prepared on time, applicants would only pay additional fees if they wanted to see the report.

[Erin]

Patent Infringement is a growing problem. Since law does not require manufacturers to inform patent owners that they are using the patent owner’s invention, Patent infringement can be unintentional. In most cases, it will be up to the owner of the patent to pursue Patent Litigation, a costly and time consuming process. It is always a good idea, if you are going to get a patent, that you do extensive research to make sure that no one already has a patent, and that you continue to monitor the industry to ensure that no one uses your patent with out your consent.

[Gena777]

Despite the details and imperfections that need to be worked out, I'm glad to see that implementation of the PCT is moving along. International worksharing efforts are critical in our current global environment. As long as the member states all retain their sovereignty, there are few convincing arguments against international worksharing in patent law.
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