DATE: October 1, 1997
WORLD INTELLECTUAL PROPERTY ORGANIZATION
INTERNATIONAL PATENT COOPERATION UNION
Twenty-Fourth Session (11th Ordinary)
Geneva, September 16 to October 1, 1997
adopted by the Assembly
1. The Assembly, which opened its session on September 16, 1997, was concerned with the following items of the Consolidated Agenda of the thirty-first series of meetings (September-October 1997) of the Governing Bodies of WIPO (document AB/XXXI/1 Prov.2): 2, 5, 6, 10, 21, 28, 29 and 30.
2. The report on the said items, with the exception of item 10, is contained in the General Report (document AB/XXXI/12). The list of participants in the Assembly for the period from September 16 to 19, 1997, appears in document PCT/A/XXIV/INF/1.
3. The report on item 10 is contained in the present document.
ITEM 10 OF THE CONSOLIDATED AGENDA:
MATTERS CONCERNING THE PCT UNION
OPENING OF THE SESSION
4. The session was opened by Mr. François Curchod, Deputy Director General.
ELECTION OF A CHAIRMAN AND TWO VICE-CHAIRMEN
5. Mr. Bruce Murray (Australia) was elected Chairman of the Assembly; Mr. Jorge Amigo Castañeda (Mexico) and Mr. Jan-Eric Bodin (Sweden) were elected Vice-Chairmen. When the Assembly met to adopt the present report, the Chairman and both Vice-Chairmen being absent, Mr. Roland Grossenbacher (Switzerland) was elected Acting Chairman.
ADOPTION OF THE AGENDA
6. The Assembly adopted, in connection with matters falling under item 10 of the Consolidated Agenda, the agenda appearing in Annex I to this report.
7. Other matters considered by the Assembly are contained in the Consolidated Agenda (see paragraph 1, above).
INTERNATIONAL SEARCHING AUTHORITIES AND INTERNATIONAL PRELIMINARY EXAMINING AUTHORITIES: EXTENSION OF APPOINTMENTS; RENEWAL OF THE AGREEMENTS WITH THE INTERNATIONAL BUREAU
8. Discussions were based on documents PCT/A/XXIV/3 and 3 Corr. (French only), relating to the proposed extension, under Articles 16 and 32, of the appointments of the Australian Patent Office, the Austrian Patent Office, the Chinese Patent Office, the European Patent Office, the Japanese Patent Office, the Russian Agency for Patents and Trademarks, the Swedish Patent and Registration Office, and the United States Patent and Trademark Office as International Searching Authorities and International Preliminary Examining Authorities, and of the Spanish Patent and Trademark Office as an International Searching Authority.
9. The Assembly:
(i) approved the texts of the Agreements with the International Bureau appearing in Appendices I to IX to document PCT/A/XXIV/3, subject to the modifications to the French texts thereof appearing in document PCT/A/XXIV/3 Corr., relating to the functions of the Authorities mentioned in the previous paragraph;
(ii) extended the appointments of those Authorities until December 31, 2007.
APPOINTMENT OF THE KOREAN INDUSTRIAL PROPERTY OFFICE AS AN INTERNATIONAL SEARCHING AUTHORITY AND INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
10. Discussions were based on documents PCT/A/XXIV/4 and 4 Corr. (French only).
11. In response to an invitation by the Chairman and pursuant to Article 16(3)(e), the Delegation of the Republic of Korea made a statement to the Assembly, the text of which appears in Annex II to this report.
12. The Assembly noted the recommendation made by the PCT Committee for Technical Cooperation at its nineteenth session held in Geneva from May 26 to 30, 1997 (see document PCT/CTC/XIX/5, paragraphs 6 to 11), that the Assembly appoint the Korean Industrial Property Office as an International Searching Authority and International Preliminary Examining Authority, provided that the appointment should take effect upon entry into force of the Agreement between the Office and the International Bureau in relation to the functioning of the Office as an International Searching Authority and International Preliminary Examining Authority, and that such entry into force should be one month after the date on which the Office notified the Director General of WIPO that it had in its possession the PCT minimum documentation referred to in Rule 34, properly arranged for search purposes, including both
(a) the complete collection of patent documents referred to in Rule 34.1(b)(i) and (ii), including the missing documents indicated in document PCT/CTC/XIX/3, and
(b) the non-patent literature as published in the PCT List of Periodicals to Be Used for Search and Examination according to Rule 34.1(b)(iii), including all missing items,
and noted, in this connection, that the draft Agreement appearing in Appendix II to document PCT/A/XXIV/4 made provision accordingly.
13. The Assembly:
(i) approved the text of the Agreement between the Korean Industrial Property Office and the International Bureau appearing in Appendix II to document PCT/A/XXIV/4, subject to the modification of the French text thereof appearing in document PCT/A/XXIV/4 Corr.;
(ii) appointed the Korean Industrial Property Office as an International Searching Authority and International Preliminary Examining Authority, with effect from the entry into force of that Agreement, until December 31, 2007.
14. The Delegations of Japan, the United States of America and France, and the Representative of the European Patent Organisation, congratulated the Korean Industrial Property Office on its appointment and assured the Korean Industrial Property Office of their continued support. The Chairman congratulated the Korean Industrial Property Office on behalf of the Assembly.
AMENDMENT OF THE REGULATIONS; DIRECTIVES OF THE ASSEMBLY RELATING TO THE ESTABLISHMENT OF NEW EQUIVALENT AMOUNTS OF CERTAIN FEES
15. The Assembly considered proposed amendments of the Regulations contained in documents PCT/A/XXIV/2, 6 and 7 (prepared by the International Bureau), PCT/A/XXIV/8 (proposal by the United States of America) and PCT/A/XXIV/9 (proposal by France), as well as a number of proposals presented during its session. The proposed amendments related to the following topics:
(i) PCT minimum documentation (see document PCT/A/XXIV/2);
(ii) language of the international application (see documents PCT/A/XXIV/6, paragraphs 8 to 17 and Annex I, and PCT/A/XXIV/8, pages 2 and 3);
(iii) electronic filing of international applications (see documents PCT/A/XXIV/6, paragraphs 18 to 30 and Annex II, and PCT/A/XXIV/8, pages 4 and 5);
(iv) priority claims and priority documents (see documents PCT/A/XXIV/6, paragraphs 31 to 44 and Annex III, and PCT/A/XXIV/8, page 6);
(v) deposits of biological materials (see documents PCT/A/XXIV/6, paragraph 45 and Annex IV, and PCT/A/XXIV/8, page 7);
(vi) Rules and directives relating to fees (see documents PCT/A/XXIV/2 and PCT/A/XXIV/6, paragraphs 46 to 56 and Annexes V and VI; as to the new amounts of certain PCT fees appearing in the Schedule of Fees, see paragraphs 43 and 44, below);
(vii) nucleotide and amino acid sequence listings (see documents PCT/A/XXIV/7, paragraphs 8 to 11 and Annex I, and PCT/A/XXIV/8, pages 8 and 9);
(viii) PCT Gazette (see documents PCT/A/XXIV/7, paragraphs 12 to 19 and Annex II, PCT/A/XXIV/8, page 10, and PCT/A/XXIV/9);
(ix) international preliminary examination (see documents PCT/A/XXIV/7, paragraphs 20 to 27 and Annex III, and PCT/A/XXIV/8, page 11).
16. The Assembly unanimously adopted amendments of the Regulations as appearing in Annex III to this report (as to the new amounts of certain PCT fees appearing in the Schedule of Fees, see paragraphs 43 and 44, below), and decided:
(i) that the amendments of the Regulations, with the exception of those referred to in items (ii) and (iii), below, would enter into force on July 1, 1998 (as to the new amounts of certain PCT fees appearing in the Schedule of Fees, see paragraphs 43 and 44, below);
(ii) that the amendments of Rule 86 would enter into force on January 1, 1998, on the understanding noted in paragraph 37, below;
(iii) that new Rules 89bis and 89ter would enter into force at the same time as the modifications of the Administrative Instructions implementing those new Rules, the effective date to be included in the promulgation of those modifications by the Director General;
(iv) that Rule 94 as amended would apply only in respect of international applications filed on or after July 1, 1998, and that present Rule 94 would continue to apply after July 1, 1998, in respect of international applications filed before that date.
17. The Assembly unanimously adopted, with effect from July 1, 1998, modified directives relating to the establishment of new equivalent amounts of certain fees as appearing in Annex IV to this report, replacing those adopted at its third session held from April 25 to May 1, 1979 (see document PCT/A/III/11, paragraph 20).
18. Certain matters noted by the Assembly, by various delegations and by the International Bureau in connection with the amendments of the Regulations or in connection with particular Rules are set out in the following paragraphs.
Language of the international application
19. Rules 12.3 and 55.2. In connection with the adoption of Rule 12.3 and the amendment of Rule 55.2, the Assembly noted that there was no requirement for any Office or Authority to check the accuracy or completeness of any translation of the international application furnished under those Rules. The Assembly recognized the importance of the accuracy and completeness of any such translation, the ensuring of which was the responsibility of the applicant. However, the Assembly decided not to introduce a requirement for verification by the applicant for the purposes of the international phase, nor to permit the national law of any designated State to require verification, upon entry into the national phase, of any translation furnished under Rule 12.3 or 55.2.
20. Rule 19.4. The Assembly noted that the adoption of amendments of Rule 19.4(a) did not involve the making of any decision by the Assembly under Article 9(2).
21. Rule 47.3. In connection with the adoption of Rule 47.3(b), the International Bureau emphasized that it would be desirable to avoid having to send to every designated Office a copy of the international application in the language in which it was filed, whether or not the international application concerned had in fact entered the national phase. The International Bureau stated that it would seek to make arrangements with affected designated Offices so as to meet their particular needs in this regard, noting that the use of modern computer technology for the communication of documents between the International Bureau and designated Offices would facilitate solution of this problem in the future.
22. Rule 48.3. The Assembly noted that the International Bureau intended to have discussions with the International Searching Authorities and receiving Offices affected by the procedure under present Rule 48.3(b) with a view to its possible amendment, in the future, to make the procedure for preparation of translations under that Rule more similar to that to be followed under Rule 12.3.
Electronic filing of international applications
23. Rule 89bis. The Assembly noted, in relation to the question of what would be the legally determinative version of an international application filed in electronic form or by electronic means, that the Administrative Instructions would need to deal both with situations in which the electronic form of the international application was filed as the sole authentic version and also with those in which the paper version of the application may need to be referred to (for example, when evidence led to the questioning of the integrity of a document in electronic form and in cases where corruption of a document in electronic form had occurred).
24. The Assembly noted that the words "filed and processed" in Rule 89bis.1(a) were intended to cover all aspects of the filing and subsequent processing of international applications, including communications between Offices and authorities, and between applicants and Offices and authorities.
25. The Delegation of Japan, noting that the Japanese Patent Office had been the first to introduce a fully electronic filing procedure, stated, in relation to the provision of Rule 89bis.1(a) requiring any receiving Office to permit the filing of international applications on paper, that, although the Delegation did not oppose the inclusion of that requirement, the provision might need to be reviewed in the future.
26. The Assembly noted, in relation to the list contained in Rule 89bis.1(c) of subject matter areas which would need to be addressed in Sections of, or Annexes to, the Administrative Instructions in connection with the electronic filing of international applications, that the list was not intended to be exhaustive or comprehensive. It was clearly understood that all matters necessary for electronic filing and processing of applications may be governed by the Administrative Instructions even if not mentioned in the list of examples under Rule 89bis.1(c). The Assembly noted that it would be appropriate, in the future, to incorporate into the Regulations certain matters which would, in the first stages of implementation of electronic filing procedures, need to be dealt with in the Administrative Instructions.
27. The Assembly noted that Rule 89bis.3 would permit the scanning of, for example, a record copy or a demand, and transmittal to the International Bureau of the document so scanned in facsimile format, provided that the integrity and quality of reproduction from such documents in facsimile format were assured.
28. In response to comments by the Delegations of China and Kenya, the International Bureau emphasized that the needs of developing countries were being kept in mind in the context of the development of procedures for the filing and processing of international applications in electronic form and by electronic means, as well as in the context of developments discussed by the WIPO Working Group on Information Technologies for Intellectual Property, and that it was definitely the intention of the International Bureau to assist developing countries so that they would benefit from the advantages associated with electronic filing and processing of patent applications, including international applications under the PCT.
29. Rule 93.4. The Assembly noted that Rule 93.4 as amended would enable the storage of records and files on computer-readable media, such as optical or magnetic disks or in microform.
Priority claims and priority documents
30. Rules 17.2 and 76.4. The Assembly noted that, while the deletion from Rules 17.2(a) and 76.4 of references to certified translations of priority documents would have the effect that designated and elected Offices could no longer require the furnishing of certified translations of priority documents, those Offices could continue to require the furnishing of verified translations of priority documents (see Rule 51bis.1(d) as to the meaning of "verified").
Deposits of biological materials
31. Rules 13bis and 48.2. In adopting the proposed amendments of Rules 13bis and 48.2(a)(viii), the Assembly noted the statement made by the Delegation of Sweden in connection with the replacement of the word "microorganism" by the words "biological material" in those Rules. The Delegation indicated that, even though it was, in principle, in favor of the amendment, it could not take a position on it since the amendments to those Rules would necessitate an amendment of the Swedish national law. The Swedish Government had stated that any related amendments of the Swedish law would be deferred until a European Union Council Directive on Legal Protection of Biotechnological Inventions had been approved.
32. Rule 58bis.2. The Assembly noted the possible need for a review, at some later date, of the amount of the late payment fee fixed in Rule 58bis.2, if experience showed that payment of the preliminary examination and handling fees was being deferred in a significant number of cases.
Nucleotide and amino acid sequence listings
33. Rule 5.2. In adopting Rule 5.2(a), the Assembly noted that the envisaged common standard for the presentation of sequence listings in international applications would specifically exclude from its scope certain sequences, so that Rule 5.2(a) would not apply to them (for example, branched sequences or sequences with fewer than four specifically defined nucleotides or amino acids, among others).
34. Rule 86. In introducing its proposal (see document PCT/A/XXIV/7, paragraphs 12 to 19 and Annex II), the International Bureau drew attention to the decreasing number of subscriptions to the PCT Gazette (subscriptions had decreased by approximately 30% over the last 15 years), which was in contrast to the rapid growth in the number of international applications filed (an approximately 10-fold increase over the same period). The main reason seemed to be that information about international applications was increasingly available from other sources and in formats other than the Gazette in paper form currently published by the International Bureau. The proposal of the International Bureau was aimed at improving the availability of information about international applications, in particular in easily searchable electronic formats, such as CD-ROMs and on-line, while at the same time reducing the resources required for producing the printed paper version of the Gazette by merging publication of the bibliographic data, currently published in separate English and French versions of the Gazette, into a single bilingual Gazette without abstracts and drawings. Abstracts and drawings would, together with the bibliographic data, be published in future in electronic form in parallel with the paper form.
35. In introducing its proposal (see document PCT/A/XXIV/9), the Delegation of France indicated that information about international applications had to be available to everyone in both languages and in easily searchable form. Those requirements would be fulfilled by its proposal, which provided for two forms of the Gazette, one in paper form and the other in electronic form. Easy, low cost access to bibliographic information relating to published international applications would be provided through the paper version of the Gazette, while access to bibliographic information, abstracts and drawings in a modern, easily searchable format would be possible through the electronic version of the Gazette. The proposal would, moreover, ensure the equal treatment of languages.
36. The Assembly noted that reference in Rule 86.2(c) to the Gazette being "made accessible, in English and French at the same time," did not mean that publication of the information concerned had to occur on the same carrier in both languages.
37. The Assembly, in deciding that the amendments of Rule 86 would enter into force on January 1, 1998 (see paragraph 16(ii), above), did so on the understanding that, for practical reasons, it may not be possible for the new formats of the Gazette to be implemented from that date, in which case the International Bureau would continue to publish the Gazette in the present format for a short period after January 1, 1998, and the new formats would be introduced as soon as possible after that date.
International preliminary examination
38. Rule 53.7. The Delegation of the United States of America expressed its concern that the International Bureau's proposal for amendment of Rule 53.7 (see document PCT/A/XXIV/7, paragraph 23 and Annex III, pages 1 and 2), by which any demand for international preliminary examination would be considered as containing the election of all eligible States, would conflict with Article 31(4)(a). The Delegation suggested an alternative proposal (see document PCT/A/XXIV/8, page 11) whereby the International Preliminary Examining Authority would have discretion to decide in particular cases whether a demand could reasonably be construed as containing the election of all eligible States.
39. The International Bureau explained its view that, while Article 31(4)(a) required that the election of States be indicated in the demand, it did not specify how this had to be done, and that the Regulations could make suitable implementing provisions such as those proposed by the International Bureau, which would be particularly appropriate since most applicants, in practice, elect all eligible States. However, noting that its proposal did not find unanimous acceptance, the International Bureau withdrew it together with certain proposed consequential amendments of Rules 56.1(a), 60.1(a) and (b) and 60.2(b).
40. Rule 59.3. In connection with the adoption of Rule 59.3, the Delegation of the United States of America expressed its concern that the Rule, which provided for a demand for international preliminary examination to be accorded, as the date of filing, the date of its receipt by the "non-competent" Office or authority rather than the date of its actual receipt by the competent International Preliminary Examining Authority, may be inconsistent with Article 31(6)(a). The Assembly noted that, while Article 31(6)(a) required that the demand "shall be submitted to the competent International Preliminary Examining Authority," it did not specify by what route, and that Rule 59.3 followed, so far as the demand was concerned, a similar approach to that taken by present Rule 19.4 in relation to the international application itself and present Rule 56.1(f) in relation to a notice effecting a later election.
41. Rule 69.2. The Assembly noted that the calculation of time under Rule 69.2(ii) would commence only from the date on which both the demand had been received by the (competent) International Preliminary Examining Authority and the handling and preliminary examination fees had been paid.
42. Rule 94. The Assembly noted that access by third parties to the file of the international preliminary examination could, under Rule 94, be obtained only via the elected Offices for the application concerned. The question whether particular documents held in the file of a given elected Office would be treated as confidential would depend on the applicable national law and practice. As to the application of the amendments of Rule 94, see paragraph 16(iv), above.
ADOPTION OF NEW AMOUNTS OF CERTAIN PCT FEES
43. Discussions were based on document PCT/A/XXIV/5.
44. The Assembly fixed new, lower, amounts of the basic and designation fees, applicable from January 1, 1998, as appearing in the Schedule of Fees to the Regulations contained in Annex III to this report, and decided that the new amounts would apply only to international applications filed on or after January 1, 1998.
[Annex I] [Annex II] [Annex III] [Annex IV]
 References in this document to "Articles," "Rules" and "Sections" are, respectively, to those of the Patent Cooperation Treaty (PCT), of the Regulations under the PCT ("the Regulations") and of the Administrative Instructions under the PCT ("the Administrative Instructions"), or to such provisions as proposed to be amended or added, as the case may be.