PCT NEWSLETTER

www.wipo.int/pct/en

May 2017 | No. 05/2017

 

PCT Working Group

The tenth session of the PCT Working Group was held in Geneva from 8 to 12 May 2017.

Agreed Changes to the Regulations

The Working Group agreed to submit the following amendments to the PCT Regulations to the PCT Assembly for approval at its session in October 2017:

  • addition of a proviso to item 5 of the Schedule of Fees and an Understanding to be adopted by the Assembly to clarify the eligibility criteria for applicants to benefit from a 90% reduction in the fees payable to the International Bureau (IB). The reduction is intended to apply only in the case where the applicants indicated in the request are the sole and true owners of the application and under no obligation to assign, grant, convey or license the rights in the invention to another party which is not eligible for the fee reduction.  Notably, it is not permitted for the reduction to be claimed by a director or employee of a company in relation to an application which is being made for the benefit of that company (see document PCT/WG/10/8 and paragraph 35 of document PCT/WG/10/24).
  • aonsequential amendments and a correction to a reference with regard to the provisions which will enter into force on 1 July 2017 relating to the transmittal by the receiving Office of earlier search and/or classification results (see document PCT/WG/10/5).

Electronic Services

The Working Group noted the following documents relating to the development of electronic services:

  • a document setting out priorities for the development of ePCT following the launch of the new “look and feel” in March 2017 (see document PCT/WG/10/21); and
  • reports from the IB and the European Patent Office (EPO) on the implementation of the eSearchCopy service for the electronic transmittal of search copies via the IB (known as “PCT Paperless” at the EPO) – this is proceeding well, but will take some time to complete because of the work involved in testing the changeover for each pair of Offices (see document PCT/WG/10/13 and 22).

PCT Fees

In addition to the agreement to submit amendments to the Schedule of Fees to the PCT Assembly to clarify the eligibility of applicants to a 90% reduction in the fees payable to the IB (see above), the Working Group discussed a proposal to extend fee reductions to applications made by universities from developing countries, informed by a further supplement to the study entitled “Estimating a PCT Fee Elasticity” that had been presented to the seventh session of the Working Group in 2013 (see documents PCT/WG/10/2 and 18).  The Working Group also noted a progress report on implementation of the revised eligibility criteria for reductions in certain fees payable to the IB, which entered into force on 1 July 2015 (see document PCT/WG/10/20). The Working Group agreed that the IB should update the information on use of the fee reductions for the next session and that a workshop should be held on fee reductions and other incentives that could stimulate innovation and patenting activities by universities (see paragraphs 22 to 39 of document PCT/WG/10/24).

The Working Group noted a progress report by the IB in relation to the possible introduction of a “netting structure” for PCT fee transactions to reduce exposure of fee income to movements in currency exchange rates and to reduce cost and efforts for receiving Offices and International Searching Authorities (ISAs) (see document PCT/WG/10/6).  It is also hoped that this process will assist work to introduce electronic payment through ePCT for e-Filings and other services where the payments must be made to Offices other than the IB.  The IB intends to begin a pilot project with several receiving Offices and ISAs for the netting of search fees and international filing fees in the third quarter of 2017 (see paragraph 21 of document PCT/WG/10/24).

Training of Examiners

The Working Group discussed the results of a survey on substantive patent training activities carried out in 2016, whether as a donor Office (providing training to other Offices or contributing to training activities organized by another organization) or as a beneficiary Office (receiving training from other Offices or organizations).  The first such survey, covering training activities from 2013 to 2015, had been presented to the Working Group in 2016, where it was agreed that Offices should report annually to the IB on any training activities carried out or received by an Office (see document PCT/WG/10/7).  The Working Group also noted a document outlining the next steps proposed by the IB to improve the coordination of training of substantive examiners between beneficiary and donor Offices by the development of a competency framework and a learning management system (see document PCT/WG/10/9).

Content of PCT Published Applications

The Working Group invited the Korean Intellectual Property Office to work with the IB and other interested Offices to develop a proposal to provide the option for applicants to propose an English language title of the invention when filing an international application in a language other than English (see document PCT/WG/10/17 and paragraph 53 of document PCT/WG/10/24).

The Working Group invited the IB to consult with Offices and user groups on the appropriate technical standards for effective exchange of national classification symbols, and to present further information concerning the benefits of publishing the Cooperative Patent Classification (CPC) symbols on the front page in addition to the International Patent Classification (IPC) symbols, particularly for Offices that did not use the CPC (see document PCT/WG/10/4 and paragraphs 62 and 63 of document PCT/WG/10/24).

Following a consultation by the IB to seek feedback on issues relating to the quality and length of abstracts, especially from designated Offices, representatives of applicants and patent information users, the Working Group invited the IB to seek further comments on the drafting of patent abstracts to help with the drafting of potential modifications to the PCT Applicant’s Guide and the International Search and Preliminary Examination Guidelines (see document PCT/WG/10/23 and paragraph 58 of document PCT/WG/10/24).

The Working Group noted a report on the revision of WIPO Standard ST.26 for the presentation of nucleotide and amino acid sequence listings using XML and the recommendations for the transition provisions from WIPO Standard ST.25 to ST.26, which will be submitted for approval at the fifth session of the Committee of WIPO Standards, due to take place from 29 May to 2 June 2017 (see document PCT/WG/10/15).

Other Issues

The Working Group requested the IB to convene a workshop dedicated to the issue of incorporation by reference of elements or parts of an international application and the removal of erroneously filed elements or parts, ideally during the eleventh session of the Working Group in 2018 (see document PCT/WG/10/10 and paragraph 93 of document PCT/WG/10/24).

The Working Group invited the IB to seek feedback through a Circular on a refined draft application form for an Office or organization seeking appointment as an International Searching and Preliminary Examining Authority in order to decide whether a proposal should be brought to the PCT Assembly at this stage (see document PCT/WG/10/16 and paragraph 85 of document PCT/WG/10/24).

The Working Group also noted reports concerning:

  • the twenty-fourth session of the Meeting of International Authorities Under the PCT (see document PCT/WG/10/3 and the February 2017 edition of the PCT Newsletter);
  • coordination of technical assistance under the PCT (see document PCT/WG/10/19);
  • the preparatory work to set up a third pilot on collaborative search and examination between the IP5 Offices (document PCT/WG/10/11);
  • a new service provided by the EPO since 1 April 2017, where, in the case of lack of unity of invention, the EPO provides a provisional opinion on the patentability of the first invention mentioned in the claims to the applicant at the same time as establishing the international search report on this invention (see document PCT/WG/10/14); and
  • the methodology and work plan of activities foreseen for 2017 and 2018 in the PCT minimum documentation task force (see document PCT/WG/10/12).

Summary and Documents

The Summary by the Chair (document PCT/WG/10/24) is available from the same page as the working documents on the WIPO website at:

http://www.wipo.int/meetings/en/details.jsp?meeting_code=pct/wg/10

A draft report of the meeting will also be made available on that page in due course.

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