[A2k] WIPO: Concerns raised over Secretariat's push for patent road-map

[Sangeeta]

There has been quite a bit in the news on the US proposal for PCT II.
However equally important is for attention to be given to the Secretariat's
document in PCT/WG/2/3 which is intended to reform the PCT systems and as
far as possible to reduce search and examination by national patent offices=
.

Below is a story on the WIPO's Secretariat's document.

Regards
Sangeeta
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WIPO: Concerns raised over Secretariat's push for patent road-map
SUNS #6698 Tuesday 12 May 2009

Geneva, 11 May (Sangeeta Shashikant) -- Developing countries voiced concern=
s
over harmonization of patent application, search and examination procedures
at a meeting of the Patent Cooperation Treaty (PCT) Working Group, which
resulted in deferment of the consideration of a road-map outlining actions
needed to reform the PCT.

This came despite intense pressure by the WIPO Secretariat, the developed
countries and the users of the patent system that are largely based in thes=
e
countries to endorse the road-map at the week-long meeting of the Working
Group, which ended on 8 May.

The road-map, titled "The Future of the PCT" (PCT/WG/2/3), is a Secretariat
document. It sets out general principles and actions that need to be taken
to reform the PCT system, as well as containing a resolution for adoption b=
y
the General Assembly that would give life to the road-map.

The PCT is a system that allows an applicant to seek patent protection for
an invention simultaneously in many countries by filing an "international"
patent application. The application is then subjected to an "international
search" carried out by offices designated as International Searching
Authority (ISA) and optionally followed by a preliminary examination,
performed by an International Preliminary Examining Authority (IPEA).

There are two phases to the system: the first phase is the international
phase, while the second phase is the national and regional phase, wherein
different procedures for filing, search and examination of patent
applications usually exist. This adds to the checks and balances of the
patent system, ensuring that only patents of "quality" suitable to the leve=
l
of development are granted.

However, the Secretariat's road-map appears to move in the direction of
removing many of these checks and balances.

It proposes inter alia the removal of reservations to PCT Articles and Rule=
s
made by members in exercise of their rights under the PCT; and promotes
greater coordination in such a manner that the work of a few patent offices
designated as ISAs determines the outcomes of the national examination
substantially by raising a presumption of validity of patent applications
examined by the ISAs.

Several developing countries raised concerns over the direction in which th=
e
road-map was heading and sought more time to study the need for, and conten=
t
of, such reform.

They also highlighted the need for the 45 Development Agenda (DA)
Recommendations to be considered in any move towards PCT reform.

The concerns of the developing countries heightened as they heard a proposa=
l
by the United States for a new version of the PCT (PCT II), which would
automatically grant a patent in PCT countries so long as it is approved by
three or less international authorities.

According to intellectual property experts, this would effectively erode th=
e
flexibility of PCT Member States to grant patents on the basis of their own
patentability standards.

The US proposal was not accepted by Member States.

The WIPO Secretariat has also been pressuring developing-country delegates
to accept the road-map, raising suspicions as to the Secretariat's motives
and interest behind the road-map.

According to diplomatic sources, the WIPO Secretariat contacted missions,
ministries and patent offices of delegates from developing countries that
queried the intent and purpose of the road-map and thus sought more time fo=
r
considering the road-map.

Sources also say that WIPO Director-General Dr Francis Gurry has also
attempted to persuade the participants of the PCT Working Group of the
irrelevance of the DA recommendations, as the matter being discussed was
more procedural rather than substantive.

Opposition to a quick endorsement of the road-map resulted in an agreement
on 8 May that the PCT bodies should continue to improve the PCT within the
existing legal framework of the treaty "without limiting the freedom of
contracting states to prescribe, interpret and apply substantive conditions
of patentability and without seeking substantive patent law harmonization o=
r
harmonization of national search and examination procedures".

The meeting also agreed that the relevant PCT bodies should discuss ways in
which this objective could be achieved, taking an "incremental approach",
"in a member-driven process involving broad-based consultations with all
stakeholder groups, including regional information workshops"; "taking into
account the recommendations contained in the Development Agenda"; and
"taking into consideration the topics addressed in the draft road map
proposed by the International Bureau" and "any other topics which
contracting states may wish to address in order to achieve the objective"
set out.

An in-depth study was further agreed to, including on the following
elements: outlining the background of the need to improve the functioning o=
f
the PCT system; identifying the existing problems and challenges facing the
PCT system; analyzing the causes underlying the problems; identifying
possible options to address the problems; evaluating the impact of the
proposed options; defining and clarifying concepts such as "duplication of
work", "unnecessary actions" etc. The study is to be submitted at least two
months before the next Working Group meeting.

The decision also states that proposals should be prepared, including fee
reductions and capacity-building measures to increase access of independent
inventors, Small and Medium Enterprises, universities and research
institutions, particularly from developing and least developed countries to
the PCT. The need for technical assistance for national and regional office=
s
of developing countries in order to benefit from the PCT system was also
mentioned.

The road-map was first released in February 2009 as a memorandum by
Director-General Gurry for informal consultations with certain PCT offices
and users of the PCT system, and later presented at the sixteenth Meeting o=
f
International Authorities (MIA) in Seoul in March 2009. The version
presented to the Working Group is an updated memorandum following the
sixteenth MIA.

The Secretariat document outlines several reasons for the road-map,
including large backlogs of patent applications in patent offices;
duplication of examination in patent offices; prohibitive cost of obtaining
patent protection in multiple states; lack of examination capacity in paten=
t
offices; and increase in the grant of invalid patents.

As such, the document proposes national offices eliminating procedures whic=
h
encourage duplicative processing, and unnecessary actions, creating a syste=
m
that meets the needs of applicants and designated offices of all types, and
granting of patents on the basis of international applications having a hig=
h
presumption of validity.

While the Secretariat document states that the process of improving the use
of the PCT does not seek to address matters of substantive patent law
harmonization or of a unified "international patent", the outcome of the
road-map is broadly intended to discourage examination of patents at the
national level according to national patentability criteria, with the aim o=
f
expediting the processing of patent applications.

The main winners of such a system would be the developed countries and thei=
r
entities that are the main applicants and users of the PCT system, while
developing countries are likely to suffer from the effects of such a system=
,
in particular, more foreign patents being granted at the national level tha=
t
would further hamper access to the tools needed for development.

The concrete actions that the Secretariat document proposes to overcome the
perceived problems of the PCT system include:

(a) Search done by the ISA during the international phase of a patent
application is not repeated at the national level when the same application
enters the national phase before the same office. This is to be achieved by
January 1, 2010.

(b) PCT Contracting States should eliminate the approximately 150
reservations, notifications and declarations of incompatibility in force fo=
r
various States under Article 64 of the PCT in respect of various PCT
Articles, Rules and Administrative Instructions.

It is proposed that by January 2011, all PCT Offices in cooperation with th=
e
International Bureau will have completed a review of reservations,
notifications and incompatibilities with the PCT that apply to their Office=
,
identify the reasons for such reservations and the possibility, mode and
time-line for their elimination.

( c) Identifying by March 2010, the different types of parallel application=
s
which occur in different offices and if reasons for different applications
are merely procedural, the MIA should consider changes in office procedures
and fee structures to encourage that an international application be pursue=
d
in preference to a duplicative national one.

(d) Conduct collaborative international search and preliminary examination,
that is, if an international application is found to meet the requirements
of the PCT to the satisfaction of, for example, three offices, to consider
it safe for any office to consider that it would also meet its own
examination requirements.

In this regard, the road-map calls by July 2010, a pilot project testing
models for allowing examiners from at least three different Patent Offices
to work jointly on the same application to establish a single common report
(international search report, written opinion, or both).

The intent here is to create a high degree of presumption of validity with
the effect that if a PCT application is approved by three offices (for
example, the US Patent and Trademark Office, Japan Patent Office and
European Patent Office), it can become binding for other offices.

The idea is based on an initiative of developed countries called Patent
Prosecution Highway (PPH). Integrating this arrangement as it exists betwee=
n
the US Patent and Trademark Office (USPTO), Japan Patent Office (JPO),
Korean Intellectual Property Office, and the Canadian, UK and German patent
offices will imply making all national offices that are ISEA connected to
the PPH.

The likely overall effect is that the USPTO, JPO and European Patent Office
will collectively be responsible for most of the world's search and
examination work and results from these offices will become the basis for
granting monopolies over the world's most important technologies and bindin=
g
on other offices in the long run, hence, constraining the autonomy of
national Patent Offices, including patent offices of developing countries
which have become ISEA.

The proposal for the adoption of the road-map implies according to IP
experts a substantial revision to the PCT system and appears to move in the
direction of harmonization of patent application, search and examination
procedures, including discouraging national offices from conducting their
own search and examination of patent applications.

As a consequence, opposition to a quick endorsement of the road-map that
began with a few countries on 4 May, ended by the end of the week with the
African Group, the group of Latin American countries (GRULAC), India,
Indonesia and the Philippines calling for more time.

India said that there were gaps in the road-map and that the language needs
to be redrafted. It stressed that member states need to do a thorough job,
in particular, by outlining the problems that the PCT system currently has,
defining terms and concepts and a study that is objective and factual on wh=
y
we are where we are today and options to address the problems.

Brazil stressed that it did not favour any reform that leads to patent
harmonization or undermining the leeway that exists in relation to
patentability criteria. It reiterated the need for more time to consider th=
e
proposal and spoke of the need to move things forward on a gradual
step-by-step basis.

South Africa said that while it was in favour of ensuring a more effective
PCT system, it would like to reflect on it and bring a broader approach on
the link between norm-setting and the PCT system. It added that they should
not be considered in isolation.

Costa Rica (on behalf of GRULAC), the African Group, Sri Lanka, Indonesia
and the Philippines also spoke of the need for more time to consider the
road-map.

On the other hand, developed countries and agencies representing the users
of the patent system that are largely based in the developed countries
persisted in seeking the endorsement of the road-map.

Japan said that the PCT system was intended to provide users with a
simplified process and the road-map was a methodology to do so. It added
that adoption would send a good signal to the users.

The US, UK, France, Germany, and Sweden echoed that it was not appropriate
to postpone consideration of the matter. Switzerland even went as far as to
note a reservation in relation to the section of the decision that speaks o=
f
the Development Agenda.

User groups such as the American IP Law Association (AIPLA), the Japan IP
Association (JIPA), and the German Association of Industrial Property and
Copyright (GRUR) reprimanded countries that called for more time to further
consider the road-map.

This provoked a strong response from the developing countries.

AIPLA said that not adopting the roadmap would make WIPO =B3impotent=B2 in
resolving the needs of users and threatened to create a similar system
outside WIPO.

Brazil requested observers to =B3not disrespect=B2 member states adding tha=
t
every country is equally relevant to participate in an equal footing and if
Brazil has anything to say, it was Brazil=B9s right to say it adding that t=
he
WG was a =B3multilateral exercise=B2.

Sri Lanka reminded participants that observers could not submit amendments,
proposals and motions according to the rules of procedure.

India said that the contention that the user groups represent all group is
contestable. It stressed the need to take into account policy space and
sovereignty of member states.  PCT=B9s members have a right to say what the=
y
think about the roadmap, it also added. It further added that it wont hinde=
r
solving the problems plurilaterally or bilaterally. +