PCT NEWSLETTER

www.wipo.int/pct/en

June 2019 | No. 06/2019

 

PCT Working Group

The twelfth session of the PCT Working Group was held in Geneva from 11 to 14 June 2019. Some of the main points discussed are summarized below.

Agreed changes to the PCT Regulations

The Working Group agreed to submit the following amendments to the PCT Regulations for approval by the PCT Assembly at its session in September/October 2019:

  • in the case of erroneously filed elements and parts in an international application, provisions to incorporate by reference the correct elements or parts (see document PCT/WG/12/9 and the Annex to the Summary by the Chair, document PCT/WG/12/24);
  • provision of a legal basis for the transfer via the International Bureau (IB) of fees collected by one Office for the benefit of another Office (see document PCT/WG/12/20);
  • a requirement for the International Preliminary Examining Authority to copy certain documents from its file to the IB, which the IB would make available to the public on behalf of the elected Office (see document PCT/WG/12/12);
  • provision of a legal basis for an Office to excuse delays in meeting a time limit due to the unavailability of any permitted electronic means of communication at that Office, such as unforeseen outages or scheduled maintenance (see document PCT/WG/12/17); and
  • provision of a legal basis for the correction or addition of indications in the request provided for in PCT Rule 4.11 during the international phase. Applicants will be able to submit a notice to the IB, within 16 months from the priority date, to correct or add an indication of the wish that the application be treated, in a designated State, as an application for:
  • a patent of addition, certificate of addition, inventor’s certificate of addition or utility certificate of addition; or
  • a continuation or a continuation‑in‑part of an earlier application

(See document PCT/WG/12/8)

Electronic services

The Working Group noted a document reporting on the various online services provided by the IB that can facilitate the processing of PCT applications in the international and national phases, and discussed the priorities for their future development (see document PCT/WG/12/10). 

The Working Group noted that the IB would cease to accept or send facsimile transmissions for communication in the PCT (see PCT Newsletter No. 05/2019), and would continue to work with Offices and user groups to ensure that they had effective and reliable means of communication with the IB, with appropriate safeguards in the event of failures (see document PCT/WG/12/23).

PCT fees

The Working Group noted a summary of the feedback to a consultation on issues relating to the introduction of PCT fee reductions for universities (see document PCT/WG/12/3).  It also discussed a document that set out options for implementation of the proposal by Brazil for fee reductions for university applicants made at the eleventh session of the Working Group (see document PCT/WG/11/18 Rev. (English) and 18 (other languages)), along with proposed amendments to the Schedule of Fees (see document PCT/WG/12/21).  The Working Group could not reach a consensus on any of these options.

The Working Group noted a progress report on the pilot that began in 2018 on netting of certain PCT fees to analyze the possibility of introducing a “netting structure” for PCT fee transactions between national Offices and the IB.  The progress report includes a summary of the responses to a survey of Offices that are either participating in netting, or had been invited to participate but had declined, along with an analysis of the financial impact of the pilot conducted by the Internal Oversight Division at WIPO (see document PCT/WG/12/19).  In view of the benefits to the IB and Offices shown in the pilot, the IB prepared a proposal to provide a legal basis in the PCT for fee transfers via the IB, which was accepted by the Working Group (see document PCT/WG/12/20).

The Working Group noted the provisional information concerning States expected to be included in the revised lists for the purpose of the fee reductions provided in items 5(a) and (b) of the Schedule of Fees, which will take effect from 1 July 2020.  The Working Group also agreed to recommend to the Assembly to maintain the criteria for determining the States on these lists, and that the Assembly should review the criteria again in five years’ time (see document PCT/WG/12/11).

Appointment as an International Searching and Preliminary Examining Authority (ISA/IPEA) and declaration by receiving Offices of competent ISAs/IPEAs

The Working Group discussed a proposal by India to remove the step of a receiving Office specifying the ISAs and IPEAs that are competent for searching and examining international applications filed with that Office, whereby applicants would instead be able to choose any Authority for international search (see document PCT/WG/12/18).  The Working Group invited the Delegation of India to prepare a document for the next session of the Meeting of International Authorities in early 2020, taking into account the comments made during the session and any further consultations on the proposal.

Training of examiners

The Working Group discussed the results of the annual survey on substantive patent training activities carried out by Offices, whether as a donor Office or a beneficiary Office, and agreed that future surveys should be carried out biennially, with the next survey taking place in 2021.  The Working Group also approved a proposal that the IB should carry out a one-time survey on policies of IP Offices with regard to e‑learning resources (see document PCT/WG/12/6). 

The Working Group noted a progress report regarding the development of a framework of technical competencies for substantive patent examiners and a learning management system, which is part of a project to improve the coordination of training of substantive examiners between beneficiary and donor Offices (see document PCT/WG/12/5).

Sequence listings

The Working Group noted a report by the European Patent Office as leader of the Task Force on Sequence Listing created by the Committee on WIPO Standards (see document PCT/WG/12/14).  The Working Group also noted a document discussing the implementation of WIPO Standard ST.26 for the filing of international applications on or after 1 January 2022, including preliminary draft modifications to the PCT Regulations and Administrative Instructions, and invited the IB to continue consultations on issues relating to the implementation (see document PCT/WG/12/13).

Other issues

The Working Group also noted reports concerning:

  • the twenty-sixth session of the Meeting of International Authorities Under the PCT (see document PCT/WG/12/2 and PCT Newsletter 03/2019);
  • coordination of technical assistance under the PCT (see document PCT/WG/12/22);
  • the Inventor Assistance Program (see document PCT/WG/12/4);
  • the monitoring by the IB of any international applications filed by individuals and entities that are subject to sanctions imposed by the UN Security Council (see document PCT/WG/12/7);
  • the PCT minimum documentation task force (see document PCT/WG/12/16); and
  • the operational phase of the third pilot project on collaborative search and examination between the IP5 Offices that began in July 2018 and will run for three years; in addition to English, applications in Chinese, French, German and Japanese can be accepted in the pilot depending on the main International Searching Authority.  Applications in Korean will also be accepted in the pilot at the beginning of the second year of operation (see document PCT/WG/12/15 and “Collaborative Search and Examination Pilot News”, below).

Summary and documents

The Summary by the Chair (document PCT/WG/12/24) is available from the same page as the working documents on the WIPO website at:

www.wipo.int/meetings/en/details.jsp?meeting_id=50410

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