ELSA INTERNATIONAL DELEGATION

REPORT

on the 6th Session

of the

Working Group on the

Patent Cooperation Treaty (PCT)

at the

World Intellectual Property Organization

(WIPO)

May 21st to 26th 2013

Geneva

The views and opinions expressed in this Report are the sole responsibility of the authors.

The Report is not intended to reflect views of ELSA.

INDEX

1. INTRODUCTION....................................................................................................................4

2. THE WIPO, THE PATENT COOPERATION TREATY (PCT) AND THE PCT

WORKING GROUP......................................................................................................................5

3.AGENDA....................................................................................................................................6

4.CONTENT OF THE SESSION...............................................................................................7

FIRST DAY – 21ST MAY.....................................................................................................................................7

SECOND DAY - 22ND MAY............................................................................................................................13

THIRD DAY – 23RD MAY...............................................................................................................................19

FOURTH DAY - 24TH MAY.............................................................................................................................22

Picture 1: the Plenary Room

1. Introduction

In May 2013 a group of four ELSA Members had the unique opportunity to be part of an ELSA

Delegation to the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland. We

attended the 6th Session of the Patent Cooperation Treaty (PCT) Working Group, which took place

from 21st to 24th May 2013 and we were able to experience the decision practice of the institution and

its work concerning the protection of intellectual property through patent law.

Our Delegation consisted of Eliana Rocchi from Italy (ELSA Milan), as the Head of the Delegation,

Serena Totino from Italy (ELSA Rome), Bogdan Ilea from Romania (ELSA Cluj-Napoca) and

Sebastian Plötz from Germany (ELSA Augsburg).

This report shall give a summary of the academic and political discussions and decisions of the 6th

Session of the Working Group and shall demonstrate how the WIPO and the Patent Cooperation

Treaty works in practice. Besides, we hope that the reports encourages ELSA Members to use the

advantages of the ELSA Network and actively participate as a Delegate for ELSA International. Based

on the experience, that we gained, we can only highly recommend the participation, because ELSA

Delegations are a unique chance to get rare insights in the every day work of international institutions.

Picture 2: the Elsa International Delegation

From left to right: Sebastian Plötz from Germany (ELSA Augsburg), Bogdan Ilea from Romania

(ELSA Cluj-Napoca), Eliana Rocchi from Italy (ELSA Milan), Serena Totino from Italy (ELSA Rome).

"Being selected as Head of Delegation for the 6th session of the Patent Cooperation Treaty working

group filled me with enthusiasm and sense of responsibility. I expected it to be a demanding task, but

also very satisfactory, and I was not disappointed.

I had fun meeting my colleagues and spend the work day and the free time together and I was very

positively impressed by their dedication, preparation and strong team spirit.

The documents and the materials I studied before leaving provided me with a lot of information that

not only was of great interest to me and important for understanding what was going on during the

session, but will also be very useful for my future career.

Witnessing the discussion during the working group, then, gave me a unique insight on how the

member states and the involved organizations cooperate and work together to develope a treaty, modify

it and make it work properly.

In conclusion this has been a very positive experience that I hope to repeat soon and I am thankful to

ELSA for offering me this opportunity."

- Eliana Rocchi –

"The Elsa delegation experience gave me the opportunity to live a diplomatic contest from inside.

There was no finction or ideal topic but just real discussion of the modifications to the pct system.

It was a good way to learn how to approach the others delegations and furthermore how the

international delegates discuss between them representing the interests of their own association or

Country.

Eventually it gave me the opportunity to work in a group with students that I did't know before and

with a different law background, that is always very exciting and useful for our future careers."

- Serena Totino -

"At the beginning my expectations were not really existing. My application was born out of a more

spontaneous decision just a couple of hours before the application deadline and primarily I decided to

apply for the WIPO Delegation, because the intellectual property rights are my area of specialization,

that I chose during my studies at the University of Augsburg. The special decision for the WIPO PCT

Session Delegation was completely random. It was simply the only delegation date, were I had free time

and nothing else to do. At the end my major expectation was to have a nice time, meet interesting

people and see the almighty WIPO I heard of and read about so many times before.

In retrospect it is hard to summarize my experience that I gathered from being a delegate. I think one

of the main points was the realization, that the session at the WIPO was more about politics and less

about creating workable and usable legislation. That sounds more harsh than it means, but most of the

time I had the impression, that the discussions were never really about objective arguments with a

neutral consideration of the pro's and contras of a subject to achieve the best result. Instead everyone

just tried to prevail their own goals with a lack of willingness to compromises. In my opinion that is not

a negative point, but I was impressed how hard and sometimes annoying it is, to achieve a progress of

the development of the PCT System under these circumstances. All in all it was a great experience and

it was definitely one of my ELSA Highlights."

- Sebastian Plötz -

"Hi, my name is Ilea Bogdan, and I am a 22 year old law student from Cluj-Napoca Romania. I started

my ELSA Career by joining my local group ELSA Cluj-Napoca, 2 years ago. After 6 months of being

an active member I decided to join my Local Board, so I ran for Vice President of Academic Activities.

I got ellected and I am proud to say I had a beautiful term along with 18 people that I had to

coordinate and lead. Not a long time ago I decided to join the National Board, so at the last Romanian

NCN I ran for Vice President for Academic Activities of ELSA Romania. I got ellected.

ELSA offers a lot of opportunities from local level to international level. Being an ELSA Delegate is

one of this honors you can achieve during your ELSA membership. The process isn’t difficult, and it

doesn’t take a lot of time.

I applied for an ELSA Delegation, and to be more specific to WIPO’s Patent Law Treaty Cooperation

comittee. For me, this Delegation offered me the chance to represent ELSA International at a new

level, as I did it with pride and glory. It has revealed to me so many opportunities, that only arose

because of the Delegation."

- Bogdan Ilea -

2. The WIPO, the Patent Cooperation Treaty (PCT) and the PCT Working Group

The WIPO is one of the specialized agencies of the United Nations and was founded in 1967. Its aim

is the promotion of innovation and creativity for the economic, social and cultural development of all

countries, through a balanced and effective international intellectual property system. To achieve these

goals the WIPO provides services to obtain an easier protection for patents, trademarks, designs and

appellations of origins, helps with the development of international legal intellectual property

frameworks, builds technical infrastructure to share knowledge and simplify intellectual property

transactions and offers technical assistance and capacity building programs and activities for the

member states to support their economic development. The organization currently has 186 member

states, administers 24 international treaties and its headquarter is located in Geneva, Switzerland.1

One of these international treaties is the Patent Cooperation Treaty (PCT), concluded in 1970. The

treaty makes it possible for anyone, who is a national or resident of a PCT contracting State, to seek

patent protection for an invention simultaneously in each of a large number of countries by filing an

international patent application. The Treaty regulates in detail the formal requirements for any

international application. On application one of the major patent offices carries out an international

search with a listing of citations of published documents that might affect the patentability of the

invention, claimed in the international application. Additionally, the offices produces a preliminary and

non-binding, written opinion on whether the invention appears to meet the patentability criteria.

Both is communicated to the applicant, who can evaluate the content and decide to withdraw, to amend

the claims in application or to continue with the national phase. In the national phase the local patent

offices in the country, where the granting of the patent is desired, examines the application under the

national patent law and judges in a final decision about the patentability.2

This procedure has many great advantages. For example, Applicants have up to eighteen months more

to decide about the application, to appoint local patent agents, to prepare the necessary translations and

to pay the national fees. Additionally, the application in the Form prescribed by the PCT can not be

rejected on formal grounds by any PCT contracting State during the national phase. The international

search reports also reduces or eliminates the search and examination work of the local patent offices.3

At its 36. Session from 24. September to 3. October 2007 , the Assembly of all contracting States of

the Patent Cooperation Treaty, which deals with all matters concerning the maintenance and

development of the PCT Union and the implementation of the PCT, established a Working Group to

do preparatory work for matters which might require a submission to the Assembly. That involves for

1 http://www.wipo.int/about-wipo/en/

2 http://www.wipo.int/treaties/en/registration/pct/summary_pct.html 3 http://www.wipo.int/pct/en/treaty/about.html

example proposals for amendments of the Regulations under the PCT and many other matters of

interest to the PCT Assembly.4 - Sebastian Plötz -

3. AGENDA

1. Opening of the session

2. Election of a Chair and two Vice-Chairs

3. Adoption of the agenda (document PCT/WG/6/1 Rev.)

4. PCT statistics

5. ePCT (document PCT/WG/6/2)

6. Meeting of International Authorities under the PCT: Report on the Twentieth Session (document

PCT/WG/6/3)

7. PCT Kaizen (document PCT/WG/6/14)

8. Discussion of Expanded PCT 20/20 Proposals (document PCT/WG/6/15)

9. Mandatory Response to Negative Comments in the National Phase (document PCT/WG/6/16)

10. Formal Integration of the Patent Prosecution Highway into the PCT (document PCT/WG/6/17)

11. Mandatory Top-up Searches (document PCT/WG/6/18)

12. Mandatory Recordation of Search Strategy (document PCT/WG/6/19)

13. PCT Fee Reductions (document PCT/WG/6/10)

14. Coordination of Technical Assistance under the PCT (document PCT/WG/6/11)

15. Appointment of International Authorities (document PCT/WG/6/4)

16. Clarifying the Procedure Regarding the Incorporation by Reference of Missing Parts (document

PCT/WG/6/20)

17. Improving the Timeliness to Issue and Publish International Search Reports (document

PCT/WG/6/21)

18. Availability of Written Opinion by the International Searching Authority as of the Date of

International Publication (document PCT/WG/6/13)

19. Restoration of the Right of Priority (document PCT/WG/6/12)

20. Supplementary International Search (document PCT/WG/6/5)

21. Status Report on the Collaborative Search and Examination Pilot Project (document

PCT/WG/6/22)

22. Third Party Observations (document PCT/WG/6/6)

23. PCT Sequence Listing Standard (document PCT/WG/6/7)

24. PCT Minimum Documentation (document PCT/WG/6/9)

25. Revision of WIPO Standard ST.14 (document PCT/WG/6/8)

26. Other matters

27. Summary by the Chair

28. Closing of the session

4 http://www.wipo.int/pct-wg/en/

4. CONTENT OF THE SESSION

FIRST DAY - 21st MAY

Agenda item n. 1: Opening of the Session

The Director General, Mr. Francis Gurry opened the session welcoming all the Delegates and in

particular the Delegations of Brunei Darussalam and Panama who became new contracting parties of

PCT in 2012, and of Egypt who became an international searching authority and preliminary

examination authority under the PCT in 2013.

He furthermore announced that, at the beginning of May 2013, Saudi Arabia deposited its instrument

of accession becoming the 147th PCT Member State.

Agenda item n. 2: Election of a Chair and two Vice-Chairs

The Delegation of Belgium nominated Mr. Victor Portelli from Australia to Chair the Committee and

the Delegation of Brazil seconded the proposal.

Mr. Francis Gurry acknowledged the universal assent to the proposal and declared Mr. Victor Portelli

elected as Chair. There were no nominations for Vice-Chairs.

The Chair thanked Mr. Gurry, welcomed the Delegations and introduced himself, then moved to the

next agenda item.

Agenda item n. 3: Adoption of the agenda (document PCT/WG/6/1 Rev.)

The Chair asked if any Delegation wished to propose any change to the agenda and, seeing no flag,

declared the agenda adopted.

Mr. Claus Matthes, member of the Secretariat, said that there would have been a Summary of the Chair

as usual and proposed a new approach to be adopted for the current meeting or for the future. Namely

to have a summary report to be prepared by the Secretariat at the end of the meeting and to be

translated in six languages - instead of a full verbatim report to be translated in six languages - and, in

addition, to publish on the WIPO website an informal document, in English only, with the transcripts

of what was said on the floor.

The Chair thanked Mr. Matthes and opened the floor for opening statements. There were no opening

statements so the Chair moved to the next agenda item.

Agenda item n. 4: PCT Statistics (presentation here)

The International Bureau on PCT statistics presented the PCT Yearly Review 2013.

The Delegation of El Salvador asked to have the document in their language, given the importance of

the information provided.

Agenda item n.5: ePCT (document PCT/WG/6/2) (presentation here)

The International Bureau presented the ePCT system and the Chair opened the floor.

The Delegation of Australia said that its office had great use of ePCT and that it was important to see

which offices could actually use it.

The Delegation of El Salvador said that it understood that the described project was a pilot that would

have been used for no longer than two years and that it would cooperate in the project. Then it said

that it had some concern about the languages, like the Delegation of the Republic of Korea, and it

considered very useful to have all the languages available by the end of the year. The Delegation also

added that, as a receiving office of a developing country, it had to verify the electronic capability

needed, so it asked to have clarified what type of capacity was necessary in order to understand if its

office was already in a position to use the ePCT system.

Mr. Michael Richardson, for the PCT International Cooperation Division, said that the ePCT is a fully

working system that should not be expected to go away, so the only reason of it being a pilot was that

they did not have the confidence of being able to give the entire capability necessary for full service.

Then he said that they understood the importance of having the system available in all the languages

and they would deliver that possibility. He also clarified that all the electronic capability needed was a

web browser and internet connection, plus a scanner for receiving documents by paper.

The Delegation of Israel said that its country had tested the ePCT system and already started to use it

with great satisfaction and it stated that it was necessary to expand the use of ePCT among countries.

The Delegation of Japan wished to procede with ePCT development, but said that it was necessary to

consider its compatibility with the already existing systems.

The Delegation of China also said that it was looking forward to the implementation of ePCT system

and hoped the Chinese interface would be available soon.

The Delegation of USA expressed some concern with the collection of fees that are due to be paid in

two offices since it could result in a wrong withdrawal if the payment made to one office is not timely

notifed to the other office. Furthermore the Delegation pointed out some difficulties they had in

obtaining documents that they were entitled to receive.

The Delegation of the European Patent Office (EPO) informed that they already started with another

system.

Agenda item n.6: Report on the Twentieth Session of the Meeting of International Authorities

under the PCT (document PCT/WG/6/3)

The Secretariat presented the report on the twentieth session of the Meeting of International

Authorities held in Munic on September 23th, noting that many item were also on the Working Group

agenda. It pointed out that on WIPO website was made available the Annual Quality Management

Report. The Secretariat then said that at the MIA was proposed to produce a PCT metric system for

which the first preliminary draft was discussed by the quality subgroup, and such document would be

made available for further consultation. Last it reported that at the MIA was also taken note of the

pilot project of the Swedish Patent Office.

The Delegation of Brazil stated that the PCT Working Group should have had more detailed

information regarding the report form MIA in order to have a more specific idea of what was

discussed in Munic, since the PCT Working Group had the adequate form for such discussion. It also

suggested that the meetings of the MIA should take place in Geneva for faciltate the participation of

the Geneva based mission.

Agenda item n. 7: PCT Kaizen (document PCT/WG/6/14 Rev.)

The Delegation of Japan introduced the PCT Kaizen (document here): first it explained that the word

"Kaizen" refers to Japanese philosophy of continuous improvement, then it noted that the number of

international patent applications filed under the PCT had increased so that the system became a global

infrastructure, but it still needed to be improved and for doing so it was important to develop a

common understanding of the future direction for a total maximization approach, since efforts made

by single parties of the PCT system for partial optimization might be insufficent.

The Delegation then made some proposals designed for implementing this concept.

- The first proposal, described in annex 2 of the document, involved measures for improving the

quality of the examination at the international phase. Japan suggested to establish a framework for

sharing the information between the offices to find the solutions together.

- The second proposal involved measures for promoting the linkage between the national and the

international phases: each IP office had implemented its own measures, so Japan proposed to share and

analyze these measures in order to improve the linkage between the two phases.

- The third proposal was to analyze the collaborative search and examination for refining it, since each

ISA should take responsibility but collaborative search and examination could allow to achieve higher

quality ISR and it would make possible to share expertise.

- Then the Delegation stressed the necessity of sharing intelligence on PCT for the purpose of

informative statistics that would help improving the PCT process, in a cooperative management

approach.

- The final proposal involved measures for creating IT infrastructure.

The Chair opened the floor on the paper.

The Delegation of EPO welcomed the Japanese Patent Office (JPO) document and agreed with the

concept that statistical approach is essential to better understand the functioning of the PCT system

and that the data must be available. It stressed that the PCT metric framework developed by EPO had a

lot in common with PCT Kaizen so it looked forward to collaborating with JPO.

The Delegation of India thanked the JPO for the very interesting proposal and said that it would like to

reflect on it in the next session of the PCT Working Group.

The Delegation of El Salvador said that it shared the Kaizen philosophy since its national office is

certified as an ISO 9000, so it is familiar with this kind of work.

The Delegations of Israel and Australia and the Representative of Japan Intellectual Property

Association (JIPA) recognized the importance of improving the quality of the search and examination

at the international phase and of providing feedback to examiners.

The Delegation of USA appreciated the document and noted that many of the proposals are also

included in the joint UK / US proposal on PCT 20/20 (document PCT/WG/6/15). The Delegation

then questioned to what extent the offices and authorities would be expected to modify their processes

and systems to meet the Kaizen model and asked if JPO had concrete examples on the type of actions

they propose to be taken under the concept of Kaizen. Last, USA welcomed the third proposition and

encouraged the Working Group to explore its feasibility.

The Delegation of China supported the JPO proposals to the extent that they do not affect the

national phase procedures, then said that it would have liked to collaborate with JPO as it was

interested in making the system more efficient for applicants and more attractive for users.

The Delegations of UK and Republic of Korea suported the JPO proposals and welcomed their

development.

The Delegation of Austria suggested that the proposed that in the framework of feedback from the

designated offices to the international searching authorities should also be integrated the office of first

filing: not forcing it to use the PCT results, but just giving to it the possibility of using them.

The Delegation of Brazil said that the linkage between national and international phases should not be

mandatory, but a discretional decision of the national offices and the same should be said about the

fourth proposal: the decision whether to engage or not in sharing information should be a prerogative

of the national authority.

The Representative of the American Intellectual Property Law Association (AIPLA) reminded that the

PCT system was initially intended as a procedural treaty and stated that it was frustrating to see that a

search conduced in a state appeared to have no effect in relation to other states. So it stated that WIPO

needs to maintain an avantgard position.

The Delegation of Brazil said that global dossiers are crucial national office prerogative, while the

Delegation of Australia supported the proposition regarding the global dossier

Agenda item n. 8: Discussion of Expanded PCT 20/20 Proposals (document PCT/WG/6/15)

The Delegation of UK thanked the USA for the cooperation in preparing this document for the

improvement of the PCT system, then said that it would have welcomed any specific comments on the

proposals included in the document, but it would have prefered general comments at the current stage.

The Delegation of Brazil asked for clarifications on the document.

The Delegation of Mexico said that, regarding the reduction of fees for national facilities, Mexico was

already applying a reduction so that an additional 50% reduction would have been too big a discount.

The Representative of EPO expressed concerns about the modification of the rule n. 20.

The Delegation of India said that some rules needed to be replaced since the objective of PCT was and

should remain to facilitate the process of applications, not to facilitate interested offices outside the

PCT system. It also suggested that the Secretariat could attempt to integrate the proposals included in

document PCT/WG/6/15 (Expanded PCT 20/20) with those in document PCT/WG/6/14 (PCT

Kaizen) since they were similar in nature.

The Delegation of Sri Lanka said that it needed more time to evaluate the ideas contained in the

proposal under examination.

Agenda item n. 9: Mandatory Response to Negative Comments in the National Phase

(document PCT/WG/6/16)

The Delegation of USA introduced the document, result of a joint UK / USA work.

The Delegations of Sweden, Canada and EPO supported the proposal completely.

The Delegations of Singapore, South Africa and China stated that they would not have made the reply

mandatory.

The Delegation of Korea expressed concern about the rule 51 ter, where the designated office could

impose a sanction without prior informing the applicant and the Delegation of USA responded that

that was covered by paragraph c.

The Delegation of Canada said that the proposal might take some time for its implementation. It also

wondered what kind of sanction were contemplated by rule 51 paras b and c: if it could be something

different than a fee. Last the Delegation said it had few drafting suggestions to make in a later moment.

The Delegations of Germany and Switzerland were also skeptical about the sanction part, since the

sanctity of national law should remains intact, so they suggested that to the words: “Failure to submit a

response under paragraph (a) may result in the imposing of an appropriate sanction” should have been

added: “if the national law provides for such sanction”. The Delegation of Chile also expressed

concern about the sanctions compulsory nature and the implementation of it.

The Representative of EPO said that it could be made mandatory a reply, but should be left to the

offices authonomy to decide weather or not they want to comminate a sanction and in what case there

should be a second reply. It also pointed out that with regard to the practical experience the applicants

often file applications that contains errors and have to file substantive amendments, so it said it would

be wrong to speak of errors in the objections.

The Delegation of Denmark said that, thinking of its uses, it was divided between advantages and

disadvantages of rule 51. It added that if such a rule was implemented it would be important to set a

time limit.

The Delegation of Japan stressed that PCT Kaizen promoted linkage between national and

international phase and said that it should be left to WIPO to consider a sanction as an option. On the

issue of the measures taken by each different office the Delegation proposed to exchange information

and discuss the various experiences of mandatory responses and reactions.

The Representative of the Asian Patent Attorney Association (APAA) disagreed with the proposal

The Representative of the African Intellectual Property Organization (OAPI) said that such regulation

was not convincing, mostly considering the many differences between the different offices.

The Representative of the Federation of Industrial Property Attorneys (FICPI) said that the proposal

would lead to a regression in quality of the PCT procedure, art. 28 sais in fact that a PCT applicant is

allowed to take changes once, so it would be contrary to the allowance given to the applicants.

The Representative of AIPLA expressed the concern that it could increase the burden for applicants,

with particular regard to smaller businesses which are the majority and would suffer the most if asked

to give a detailed response relevant to each national law, when dealing with the designated offices at the

national phase entry. They could be not ready or be contingently missing the evidence for such a

response, which would otherwise only be required later on.

Agenda item n. 10: Formal Integration of the Patent Prosecution Highway into the PCT

(document PCT/WG/6/17)

The Delegation of USA introduced the document, resulted from a joint work with UK. On behalf of

UK, USA submitted the proposal in the annex of the present document.

The Chair opened the floor for comments.

The Delegation of Brazil said that it was looking forward to further discussing the issue, but it added

that it was needed to take into account the diversities of the legal frameworks and evaluate the possible

impact on the preservation of sovereignty from the reuse of work by other offices. It also stressed that

it was due consideration to the comparative benefits to resident and non resident applicants, and to

large, medium and small enterprises. It also stated that Brazil understanding was that such a change in

the PCT rules would not suffice for including formally the PPH in PCT system: it could be considered

a Diplomatic conference if necessary. Last, it expressed concern over possible effects on the quality of

national processing as a result of accelerated search and examination, in accordance with the

Delegation of India.

The Delegation of Canada supported the PPH agreement and said that it was concerned about the risk

of an increased number of PPH requests seriously affecting the workload of national offices, so it

proposed an additional amendment of the proposed regulation, namely to introduce words that

allowed an office to suspend such, giving previous advise.

The Representative of EPO was supportive of this proposal in principle, since it granted benefits for

both applicants and offices: it would help offices with their work and applicants would benefit from

identical treatment. It added that in its practical experience this accelerated processes were not used by

many and they were not affecting the work much and that it was needed to work intensively on the

quality of the PCT product.

The Delegation of Australia supported the development of a truly plurilateral system. It expressed

concern over the fact that the current wording would limit the number of applications since it limited

the time that would be available to the applicant. It pointed out that in the australian procedure the

process cannot be expedite unless requested.

The Delegations of Switzerland and South Africa supported this proposal but could not offer an

accelerated procedure, so they expressed reservation on this proposal.

The Delegation of Republic of Korea declared itself fully available, but said that it would be better to

put both criteria required by this provisions in rule n. 52.

The Representative Third World Network (TWN) stated that it was important to keep in mind that the

designated offices should focus on the quality of the national procedures rather than on their efficiency.

The Representative of the Institute of Professional Representatives before the European Patent Office

(EPI) supported the formal integration of PPH PCT saying that it would be first of all beneficiary to

both applicants and offices, and secondly it would guarantee the maximum possible quality. The EPI

added that it did not agree with the inclusion of a fee which was discriminative against universities and

similar entities.

The Chair asked that the countries that used the PPH PCT system provide information how it works.

Agenda item n. 11: Mandatory Top-up Searches (document PCT/WG/6/18)

The Delegation of UK said that the proposed amended rule provided an additional level of flexibility.

The Delegation of Australia did not support top-up searches.

The Delegations of Canada, Germany, France, Norway and Sweden and the Representative EPI,

instead, supported the inclusion of top-up searches.

The Representative of EPO generally supported the concept of having top-up searches, as it was a

table for a voluntary approach, but it said that the words of many passages might have been in need for

harmonization and proposed some alternative wording. It also drove the attention of the Secretariat on

the fact that there were many places in the guidelines where it could have been useful to make some

amendaments.

The Delegation of Japan recognized that top-up search are important, but echoed EPO concerns. It

stressed that it was needed further consideration on the amendments.

The Delegation of China stated that top-up searches could make international search and preliminary

process more complete, but it was better to edit the words in order to see it as an optional rather than a

mandatory procedure.

The Secretariat asked whether the Working Group wanted to submit something to the 2013 Assembly

(stressing that in such case it needed to work quickly) or it wanted to work on it in the future.

The Delegation of UK said that they preferred to trying progress with this item in the current Working

Group

The Delegation of the United States Patent and Trademark Office (USPTO), instead, was in favour of

the immediate submission.

The Chair noted that it was decided that the Working Group provide drafting on this issue to circulate

in this session.

- Eliana Rocchi -

▬

SECOND DAY – 22nd MAY

Agenda item n. 12: Mandatory Recordation of Search Strategy. Document submitted by UK

and U.S.A. (document PCT/WG/6/19)

The delegation of UK presented the proposal that has the aim to modify the International Search and

the Preliminary examination Guidelines, in order to transmit a copy to the International Bureau (IB).

The goal is to minimize the amount of time requested for examining and improve efficiency of that

search in order to avoid duplication.

The Chair opened the floor, after a brief summary of the proposal, saying that UK and USA proposed

that International Search Authority (ISA) provide whatever search documentation they have so other

offices can see what examiners had done in a specific search.

The Delegation of Japan declared that this proposal contributes the quality of search and the sharing

of the information and that it could not have supported the proposal if it became mandatory. It added

that it is not systematically possible to record the strategy by all the ISA.

The Delegation of Canada extremely supported the proposal.

The Delegation of Australia supported the maximization of the search strategy because it increases the

confidence in transparency and pointed out that since the 2 October 2012 Australia provided to

actualize the proposal that they strongly encourage in order to establish a standard format.

The Delegation of Israel declared that it would be interesting to open the report to the applicants.

The Delegation of China noted that the report should be available to the public, because it increases

the level of transparency. It also said that was necessary to define the minimum requirements before

anything could be made mandatory.

The Delegation of the Federation of Russia declared that the basis should be voluntary and open to

the public. There is not enough experience yet, the search history is not equal and it is not possible to

include that in the report: it could be confusing for the public that does not know the real process, that

is why only successful search has to be included. Sometimes the historical search takes several pages

and it could be confusing for the public and not understandable. Indeed, the offices need time to get

prepared.

The Delegation of Finland said that it supported the proposal as it could increase the confidence in

search report and it will be more useful for the offices.

The Delegation of El Salvador noticed that it would be important to increase the transparency. The

Delegation also supported the mandatory nature of this recording but proposed an interim period

before it became mandatory.

The Delegations of Chile, South Africa, Denmark and Norway supported the proposal because they

deemed it to be particularly interesting for offices, valuable for the applicants and extremely useful.

The Representative of the European Patent Office (EPO) declared that only few offices provide such

strategy so it would be best to continue working on a common format. In accordance with Japan and

China, stated that strategy could be useful and so could be the definition of minimum requirements.

The Representative of Japan Patent attorneys Association (JPAA) appreciated this publication.

The Representative of American Intellectual Property Law Association (AIPLA) suggested that sharing

the strategy would be important for transparency, but it had to be strictly on voluntary basis.

The Chair noticed that a common template should be agreed between all the International Authorities,

taking into account the utility of different types of information, appropriate presentation for easy

understanding, usefulness of users and a cost-benefit analysis of any work which would be required.

The International Bureau observed that, as an interim measure for the International Authorities, an

arrangement could be offered where to search strategies sent electronically could be assigned one or

two codes at the choice of ISA. The one currently used automatically would make the search strategy

available to the public from the date of the international publication, but an alternative code could be

used to make the strategies not available on Patentoscope but visible through ePCT only to the

applicant and to national Offices.

The Delegation of UK noticed that a lot of International Searching Authorities (ISA) already started to

use it. Nevertheless, it said that it should not be mandatory and agreed with more flexibility.

The Representative of EPO said that from the discussion at MIA in February 2013, it was understood

that no format was needed for the sharing of strategies, indeed for making it useful it was essential

some definition of strategy agreed with the ISA. The Delegation added that some more time and

experience was needed for developing such strategy.

The Delegation of USA said that it should be defined a format, but it is important to share the work

done on it in order to properly prepare for the MIA and enter it with a potential format prepared.

The Delegation of Japan agreed with EPO, but added that Japan did not currently have the format for

such strategy to be provided to the public so they wished to contribute to this matter at the next MIA.

Agenda item n. 13: PCT Fee Reductions (document PCT/WG/6/10)

The Secretariat suggested to split this document into two parts: the small and medium enterprise fee

reduction and the fee reduction for developing countries. Then the document should be divided in four

issues: the research institutes, the potential impact of fee reduction on PCT income and on the entire

organization, the way of introducing this fee reduction in a financially sustainable way, the influence on

patent filing behavior.

The Delegation of Belgium said that efforts were welcomed for more easily accessible system, because

it was necessary to be practical. It added that the influence on filing behaviour is modest and it is

difficult at the current stage to predict the potential benefits.

The Delegation of Barbados indicated that it was necessary to find a workable solution to this issues.

The matter had to be address in a financial contest and a feasible criteria had to be determined for the

search institutes and the universities.

The Delegation of El Salvador noticed that the IB had conducted some studies but there were not

specific positions and definitions on it.

The Delegation of Algeria on behalf of the African Group noticed that it is necessary more balance

for the system, because of the differences of the economic backgrounds: there is not the same access.

It added that the IB had to define more details and statistic impact. They suggest a pragmatic approach

to be more inclusive.

The Delegation of Chile said that for the time being it did not have enough information about the

impact of fee reduction and that it endorsed such an approach in principle: small and medium

enterprises, universities and research institutes were encouraged to resort to the PCT system while

avoiding any negative impact.

The Delegation of India noticed that further studies and further proposals needed to be done and

supported Algeria on behalf of the African Group and El Salvador in encouraging more input from

the Secretariat in order to decide the eligibility criteria and have a more clear picture before deciding,

but stated that the impact for developing countries was positive.

The Delegation of Japan added that the companies that are not eligible for the fee reductions should be

taken into consideration.

The Delegation of Brazil agreed that it is important to have more information.

The Secretariat concluded that the most difficult issue was about the difference between small and

medium size enterprises, because they do not identify themselves when they apply, unlike the

Universities.

The Delegation of Algeria underlined that a global vision of the cost, more pragmatism and a

comparison between the developing Countries and the not developing ones was necessary.

The Secretariat answered that such a study was not possible even if in principle it was doable because it

was too intensive. Then he introduced the second part of the proposal: fee reduction for applicants for

least developing Countries.

The Delegation of Barbados said that the criteria of the size of Countries should be taken into

consideration.

The Delegation of Republic of Korea proposed a maximum number of applications for fee reduction

and a multi step reduction.

The Delegation of USA supported the reduction to applicants of certain Countries and a periodical

review of the eligibility criteria.

The Delegations of India and Brazil said that such a measure is very important for developing

Countries, but clearer information was required for the next session.

The Delegation of Algeria agreed with the Delegation of India and asked what was the aim of this

differentiation between developing and already developed Countries. It added that the number of the

applications was a criteria not really fair, because it did not take into account the Countries that had

more need of fee reductions.

The Delegation of El Salvador said that looking at the second part of the study, it was in favor of the

proposal, in line with Barbados. It also agreed with the Delegation of India that it would be interesting

to see this document discussed in next session with more documents and solid information.

The Delegation of Republic of Korea underlined the burden of cost for the IB to keep enhance the

quality provided.

The Chair summarized that the way forward was not clear: a number of Countries asked more time

more information, for discussion in the next group, on the other hand, a number of Countries asked

what the ultimate aim was. However the fee reduction system was clear and useful. The Secretariat

could not come out with a miracle in absence of inputs. He encouraged the Member Countries to work

with the Secretariat to a concrete proposal.

Agenda item n. 14: Coordination of Technical Assistance under the PCT (document

PCT/WG/6/11)

The Secretariat introduced the document on technical assistance activities aimed at developing and

strengthening national and regional IP institutions through the provision of modernization services.

The Delegation of Brazil said that the document is a good start for a better collaboration, but the

activities provided by PCT should be implemented.

The Delegation of Belgium noticed that there is need of this technical assistance, but the PCT and

WIPO assistance should not be separate.

The Delegation of Algeria on behalf of the African Group said that the proposal was good and useful

but more clarification is necessary about the par. 3 of the document: about the reference made to the

IP Committee to the WIPO Standards Committee.

The Secretariat specified that the technical assistance is not limited to PCT. It has to be a Member State

decision to start such a discussion.

Agenda item n. 15: Appointment of International Authorities (document PCT/WG/6/4)

The Secretariat introduced the paper saying that the goal was to create a single ISA.

The Delegations of Federation of Russia, Switzerland and France observed that a review was required

for an high quality of the PCT. It added that the new requirements did not affect the existence of the

already appointed ISA and proposed that the working group task the IB with the reviewing of the

requirements and the procedure for appointment of international authorities.

The Delegation of Republic of Korea and the Representative of EPO supported the proposal.

The Delegation of USA noticed that the number of filing continues to rise year by year. In order to

continue this increase, the IB has to reform the requirements, without affect the already existing ISA.

The Delegation of Japan said that new requirements are required, but it is important to be careful on

the fairness between the already appointed ISA e the new ones.

The Delegation of China generally supported the document, but said that, on the other hand, the

quality is important and the service has to be convenient and accessible worldwide.

The Delegations of Hungary, Denmark and Norway did not support the Russian delegation’s proposal,

because it is not fair to limit the new criteria at the new ISA.

The Delegation of Chile noticed that the requirements already established are enough, but if there are

problems with the rules currently in place then it is important to review this procedure.

The Delegation of Australia said that a careful study should be undertaken before considering

maintaining competence.

The Delegation of Brazil supported the revision of requirements but said that it needed to discuss

what criteria would guarantee a better quality and it preferred to have this discussion here in the PCT

Working Group.

The Representative of AIPLA observed that the mandatory searches may be mandatory but without

disclosure the quality would start to slip.

The Chair observed that in the short term it is not possible to procede with a reform of the

requirements because of the contrast of many Delegations. He noted that there was consensus on

reviewing the criteria.

Agenda item n. 16: Clarifying the Procedure Regarding the Incorporation by Reference of

Missing Parts (document PCT/WG/6/20)

The Delegations of EPO and Switzerland noticed a divergence in practice in case full specification

(description and claim) was wrongly filed: the current legal framework makes it very clear that the

description could be missing a part but not all of the description.

The Delegation of USA disagreed because the second set of claim was not supported, it had already

been brought to attention and the Working Group already noted that and asked that claim contained all

necessary elements. It added that par. 7 was unclear and the Working Group specifically decided to

amend it.

The Delegation of Japan said that the proposal should have been discussed together with the proposals

of UK and USA. It said that modifying the guidelines was enough, without any change to the PCT.

The Delegation of UK agreed with the amendment of receiving guidelines, but said that it could not

agree with any amendment that would imply incorporation by reference.

The Delegation of Canada shared the UK and USA interpretation rules.

The Representative of AIPLA supported USA because the incorporation by reference is an important

part.

The Chair observed that the EPO should consider to work with the Delegation of USA.

Agenda item n. 17: Improving the Timeliness to Issue and Publish International Search

Reports (document PCT/WG/6/21)

The delegation of EPO introduced their paper observing that the timeliness is an important aspect of

quality: three months from the receipt of the search copy of the report by ISA or nine months from

the priority date. It proposed a review of the rule 42.1 to give more flexibility to the ISA: 18 months

for publication of A1.

The Delegation of Australia noticed that this extension would not necessarily improve timeliness. The

use of the e-PCT should be more useful.

The Delegation of Japan said that it would have liked to further continue the discussion and it needed

to obtain information from users in order to value the convenience.

The Delegation of USA supported EPO and added that USA Patent Office had already improved their

performance.

The Delegation of China noticed that more flexibility is necessary for ISA, the new 17 months are very

close to the first limit.

The Delegation of Germany supported the proposal of amendment.

The Representative of EPI noticed that there was a lot of pressure on the office. The limit at 18

months leaved little time to the applicants to decide the publication. It did not support the proposal

because there would have been less time for applicants (and for the procedure) to consider possible

withdrawal of application.

The Delegation of EPO noted that there was no consensus on the rule change and stressed the need to

continue working on it. It welcomed the proposals of IB and of the floor on possible ways to improve

timeliness.

Agenda item n. 18: Availability of Written Opinion by the International Searching Authority as

of the Date of International Publication (document PCT/WG/6/13)

The Secretariat introduced the paper saying that the written opinion should be made available to the

public from the Patentoscope, since the international publication date, independently of the day of

demand, otherwise the public had to wait untill the national phase.

The Delegation of Usa fully supported the proposal and observed that it is necessary to set the IB in

line with others international institution that already use this system.

The Delegations of UK, Israel, Sweden, Canada, Finland, Germany, Australia and Japan supported the

proposal because it reduces the duplications and improves transparency.

The Chair approved the deleting of PCT Rule n.44 ter and the reference to that rule in Rule 94.1.

Agenda item n. 19: Restoration of the Right of Priority (document PCT/WG/6/12)

The Secretariat introduced the proposal saying that an important safeguard procedure had been

introduced in 2007. The applicants could request to receive a fair number of comments from offices,

but there was still work to do on the document’s publication on the website. It added that a questionary

was sent to 38 offices to receive feedback.

The Delegations of Sweden, Switzerland and El Salvador supported the conclusion.

The Delegations of USA, Spain and Japan indicated that they expected to be able to withdraw their

notifications of incompatibility under the rules relating to restoration of the right of priority.

The Representative of APAA offered to provide guidance.

The delegations of China and Mexico said that there are some incompatibilities with national law. They

added that the document and the related information would be useful in their discussion with the

national authorities concerning the possible amendment of their national laws.

The Secretariat concluded saying that the guidelines will be available on the web site.

The Chair noticed the full consensus and closed the session.

- Serena Totino -

▬

THIRD DAY – 23rd MAY

Agenda item n. 20: Supplementary International Search (document PCT/WG/6/5)

The International Bureau presented the document PCT/WG/6/5, the decision of the PCT Assembly

in its 43rd Session and the discussion of the 20th Session of the Meeting of International Authorities to

the Working Group for a discussion on the development of the Supplementary International Search.

The service started in 2009 and allowed additional searches to be performed during the international

phase, in addition to the search prepared by the International Searching Authority that was chosen by

the applicant.5 Although the service was requested by applicants, the the demand from applicants

remained low since the introduction.

The Representatives of APAA and FICPI and the delegation of Israel stated that the cost of the

service and a lack of awareness of the system by the applicants were most probably causes for the low

uptake of the system.

The Delegation of EPO stated that no Authority with an Asian language was participating in the

system and the participation of the four Asian offices could be vital for the system.

Some Delegations, like the Delegation of Japan, whose offices acted as an International Searching

Authority, stated that they supported the system, but were not able to offer the service due to high

administrative workload reasons.

The Delegation of China referred to the State Intellectual Property Office who was actually interested

in the service and was considering the possibility of offering the service in the near future.

The Chair summarized that the Working Group agreed on continuing the monitoring of the system.

Agenda item n. 21: Status Report on the Collaborative Search and Examination Pilot Project

(document PCT/WG/6/22)

One of the results of the 3. Session of the PCT Working Group were recommendation on how the

PCT System and its function could be improved in the future. To achieve this, a Pilot Project was

started with the objective, to allow examiners from different Authorities in different regions and

different languages to work together on one PCT application for a higher quality of the international

search report and the written opinion.

The Representative of EPO presented an evaluation of the second pilot project of this Collaborative

Search and Examination (CS&E) and the following discussion of the Working Group was based on

that document PCT/WG/22 Rev. that was revised by the Korean Intellectual Property Office (KIPO).

The second project was of a larger scale and designed based on the lessons learned during the first

pilot project in May 2010.

The Representatives of EPO and KIPO stated that the pilot project produced very promising

preliminary results concerning the efficiency, the quality and the positive feedback of the examiners.

Nevertheless the quantitative data was still in the evaluation phase, but it was going to be published

later. They also mentioned that they were planning a third phase of the pilot including the usage of the

system through applicants, supported with sufficient resources and the availability of an IT-Tool for the

Usage.

5 http://www.wipo.int/pct/en/newslett/2008/12/article_0002.html

The Delegation of USA welcomed the report and stated that it would continue monitoring the pilot

and its possible third phase with great interest.

The Representatives of FICPI and AIPLA stated that they were excited about the progress, but

worried about the costs of the service in the future.

The Delegation of EPO answered that the project was still not mature enough to see what was

appropriate for such a product and pointed on the current evaluation phase of the second pilot project

of the CS&E.

Agenda item n. 22: Third Party Observations (document PCT/WG/6/6)

The International Bureau presented the document PCT/WG/6/6 with a status report about the launch

in July 2012 and the current usage of the PCT third party observation service to the Working Group.

The service offered everybody the possibility to upload up to 10 files with a brief comment, how this

could be relevant to the criteria of novelty and inventive step of a current application.

The Delegation of EPO stated that the service appears to be useful and senseful.

The Delegations of Chile, Australia and China agreed with the proposal of the EPO and mentioned

their full support of the third party observation service.

The Delegation of the USA welcomed that no abuse of the service had occurred yet.

The Delegation of Chile stated that a more detailed review of the service was needed once there was

some more experience with international applications in the national phase which had been subject of

third party observations.

The Chair noted that there was a consent by the Working Group on improving the service in the future

for example through occasionally requested optional notifications of the existence of the service.

Agenda item n. 23: PCT Sequence Listing Standard (document PCT/WG/6/7)

The Representatives of EPO presented the document PCT/WG/6/7 with the report on the work of

the Task Force on the preparation of a new WIPO standard on the presentation of nucleotide and

amino acid sequence listings using Extensible Markup Language (XML). The Task Force was created by

the committee on WIPO Standards (CWS) at its first session in 2010. The Delegation also confirmed

that the draft new standard is expected to be finalized in summer 2013 and ready for adoption by the

CWS in 2014.

The delegations of USA and Japan supported the development of the new standard.

The Chair noted that complete plenary assembly agreed on the contents of the documents and

supported the proceeding.

Agenda item n. 24: PCT Minimum Documentation (document PCT/WG/6/9)

The International Bureau presented the Document PCT/WG/6/9 that contained a progress report of

task force about the issues currently under discussion and the preparation of a detailed draft of all

technical specifications for the amendment of PCT Rule 34 to automatically include the national patent

documentation of any PCT Contracting State as a part of the PCT Minimum Documentation. The

PCT Minimum Documentation is defined by the WIPO as the minimum requirement of data sources

for patent collections used to search for prior art documents for the purpose of assessing novelty and

inventiveness.6 Every International Searching Authority must prove that it has access to the PCT

Minimum Documentation Standards.

The Delegation of China pointed out the importance of an effective search in order to increase the

quality of the international searches and therefore said that the technical specifications should include

commonly used standards without producing costs and workload for importing the data and avoiding

duplications in the databases.

The Delegations of USA and El Salvador supported the proposal, but they emphasized that the

possible resulting costs should be considered highly.

The Representatives of EPO stated that they already handed in some extensive feedback to the task

force.

Agenda item n. 25: Revision of WIPO Standard ST. 14 (document PCT/WG/6/8)

The International Bureau reported to the Working Group about the outcome of the discussions on a

proposal for the revision of WIPO Standard 14 at the 3. Session of the CWS and updated the plenary

assembly on the on the current status of the task force which was established to prepare that proposal.

The main goal of the proposal was an harmonization of WIPO Standard 14 with the International

Standard ISO 690:2010 (Information and documentation – Guidelines for bibliographic references and

citations to information resources) and followed the requests for a revision of the category codes

provided in paragraph 14 of WIPO Standard 14 that were stated during the 2nd Session of the CWS.

The task force especially brought up the question about the time for International Searching

Authorities to implement the new citation categories as an important factor.

The Delegations of USA and Chile supported a short, clean and firm transmission of the category

codes.

The Delegations of Canada, Japan, Australia and the Representatives of EPO considered that before

discussing the details of the transition period, it would be necessary to consider whether the proposal

of a revision of the category codes was acceptable to everyone.

Agenda item n. 26: Other Matters: Paper No. 3 by Brazil: Promoting the use of Chapter II of

PCT to improve Patent Quality PCT/WG/6/23/Annex II

The Delegation of Brazil introduced its proposal to amend the provisions about the request of

International Preliminary Reports on Patentability (IPRP). The IPRP gives the applicant the

opportunity to evaluate the chances of obtaining patents in the elected Offices before incurring the

6 http://ep.espacenet.com/help?locale=en_EP&method=handleHelpTopic&topic=pctminimum

expense and trouble of entering the national phase.7 At the moment the applicant decides under the

current rules whether he wants to request an IPRP or not. The proposal wanted to change that rule in

order to allow national offices to request an IPRP under special circumstances. This more frequent use

of PCT Chapter II shall increase the quality of applications entering the national phase.

The Delegation of Chile stated that there was not enough time to read the paper in advance and the

changes have the potential to overload the complete PCT System. It has to be ensured that the changes

would not have any negative effect. The Delegation reminded that the topic needs to be discussed in

the next meetings of the Working Group again.

The Delegation of USA said that it only agreed on the basic concept of the document. Nonetheless it

preferred fee reductions and acceleration instead of an increased use of IPRP under Chapter II.

The International Bureau mentioned that the proposal may not be compatible with the PCT, but the

International Bureau would like to work together with Brazil to assess the legal limitations and other

available options in this regard.

The Representative of AIPLA had the same opinion about the potential of an infringement of the

PCT by the proposal.

The Delegation of Brazil answered that they will discuss the possibilities with the International Bureau

and present a revised proposal in the next session of the Working Group.

The Chair noted the decision of the Plenary Assembly on the position that the topic needs to be

discussed more in depth in the next Working Group meeting.

- Sebastian Plötz -

▬

FOURTH DAY – 24th MAY

Agenda item n. 27: Summary by the Chair

The Chair presented the summary from his notes. All the present member states were called upon

making final ratifications regarding the observations from the working group. Several concerns were

raised by the member states, concerning some of the articles adopted from the working agenda, and it

was decided to modify such articles.

The working group adopted agenda items number 4, 5, 6 and 7.

Aproval of agenda item 8 was voted in favor by all member states. Several delegation made

observations regarding the form of some sentences, the ones from the EPO, USA and Brazil were

successful.

Agenda items 9, 10, 11 and 12 were foted in favor by all member states.

7 http://www.wipo.int/pct/en/guide/ip10.html

Agenda item number 13 made the delegation of Algeria intervene with several comments, but the

Chair explained that its comments were not useful regarding the changing form of the text.

Agenda item 14, 15, 16, 17, 18, 19 were agreed by the working group.

Agend item number 20 made the EPO delegation to bring up an intervention regarding para numer 88,

with the mention that the text has already been standardized.

Agenda items number 21, 22, 23, 24 and 25 were approved by the Working Group.

The Delegation of Brazil took the floor about paragraph 116 and the Chair corrected it.

The Delegation of Canada stated that para 115 should contain the words: "designated office". The

Working Group agreed once more on the proposed changes and moved on.

Agenda items number 26 and 27 were put to vote, and both of the items passed.

The working session ended at 13:10 PM.

- Bogdan Ilea -

Picture 3: the Chairman of the Session, Mr. Victor Portelli, and the ELSA Delegation.