WIPO Director Gives PCT Update

TAMPA. November 21, 2008. Director of the Patent Cooperation Treaty (PCT) legal division at the World Intellectual Property Organization (WIPO) in Geneva, Switzerland gave a presentation on PCT at the University of South Florida. Matthew Bryan reported that 139 countries are currently PCT members. Some countries that may join soon include:

• Chile: PCT passed in the Chilean Congress which means Chile has only 1-2 months to accede to the treaty.
• Thailand: officials report they are close to making a decision.
• Jordan: final stage is possible.
• Peru: currently obligated by trade agreements to join PCT.
• Panama: currently seeking PCT admission.

There are 13 active PCT searching authorities. For applications originating in the United States, there are four (4) searching authorities:

1. United States Patent & Trademark Office (USPTO)
2. European Patent Office (EPO)
3. Korean Intellectual Property Office (KIPO)
4. IP Australia (IPAU) (effective Nov. 1, 2008)

Bryan reported excellent anecdotal feedback from KIPO searches, both in timeliness and quality.    

Japan and Korean file all their PCT applications in XML format which greatly facilitates processing the publication over the U.S. PDF format which is far less structured. Bryan reported that the USPTO admitted its ABX experiment in XML-based submissions was a gross failure due to its haphazard handling of equations and scientific notation frequently needed in patent applications. Bryan indicated that talks with Microsoft and OpenOffice have yielded some hope that these organizations will create tools for U.S. applicants to reliably submit PCT applications in XML format. However, nothing definite is currently planned.

As of January 1, 2009, new PCT amendments will permit Korean and Portuguese PCT applications to be published in those languages respectively. An English abstract and search report will also be published. By far the most significant new feature of PCT will be the Supplementary International Search (SIS).

Currently, the PCT search specification calls for searching 140 technical journals, 40 million patents and other references. The search is conducted in the native languages of the International Searching Authority (ISA). However, as noted above, U.S. applicants can only use one of four ISAs while 13 ISAs exist world-wide. Consider if a U.S. applicant may believe that the Russian ISA may provide meaningful search results not available from KIPO or EPO ISAs. Effective January 1, 2009, a PCT applicant may choose to have more than one search done. The PCT applicant would pay the normal ISA's search fee and the SIS would be a "language based" search which takes into account the growing linguistic diversity in prior art. In addition to the normal ISA search fee, WIPO would charge an administrative fee for facilitating the SIS.

A 19 month deadline exists for requesting a SIS. If the main ISA search is not done by 22 months, the SIS will proceed. The ISA carrying out the main search cannot be used for the SIS. For unity of invention issues, a SIS may be conducted on the secondary invention while the main ISA search is performed on the main invention. The Supplementary International Search Report (SISR) is issued 28 months from the priority date.

No opinion will be written in the SISR. Only a list of prior art references with their relevance (i.e., "X", "Y", and the like). The SIS search is retroactive for priority dates back to January 1, 2007 or applications before the 19 month priority term. SIS availability is not currently guaranteed and subject matter may be limited. The status of SIS available by ISA is as follows:

• Austria: planned sometime in 2009
• Australia: under consideration
• Brazil: no decision
• Canada: no intention to participate
• China: under consideration
• EPO: planned January 1, 2010
• Spain: previously opposed but new director may reconsider
• Japan: no intention to participate – opposed philosophically
• Finland: planned for January 1, 2010
• India: no intention to participate
• Korea: under consideration
• Nordic Patent Institute: planned for January 1, 2009
• Russian: planned January 1, 2009
• Sweden: planned January 1, 2009 (1,000 search limit)
• United States: no intention due to current workload

Amendments to Claims: As of July 1, 2009, replacement sheets for amendments will not be accepted. A full set of all new claims must be submitted.

Working Document Attachment: PCT applicants may now submit documents in pre-converted form (i.e., Microsoft Word prior to making into a PDF). These pre-converted files are attached to the PCT submission. If the PDF file has a problem, the PCT applicant has 30 months from the priority date to correct using the pre-converted attached file. For U.S. PCT information, applicants may contact Charlie Pearson or Mike Mees at the USPTO.

Future Plans for WIPO/PCT:

• Currently working on a private file inspection system like USPTO's PAIR system.
• Document upload system for post-filing submissions.
• PCT distance learning course (available soon).
• Comprehensive PCT survey.
• Further efforts on PCT to improve search quality, particular that the of the United States which is admittedly poor due to its outsourcing and insufficient quality control.
• Digital access service for priority documents for PCT and outside PCT. A WIPO database is connected to all other major patent offices. Applicants will receive a security code form the 1^st office filing and will be able to simply click a button for the priority documents to be electrically transferred to the necessary office.
• Full text search in Japanese (already available in English, French, German, Spanish and Russian).
• Cross-lingual search using terminology database.
• Machine translation of claims with possible one-click ordering of human translation.
• National patent collections for developing countries such as South Africa, Mexico and the like. WIPO may help scan and/or host national patent databases.
• Reviewing minimum PCT documentation – list of non-patent literature needs updating.
• PCT solution for color drawings.
• EPO proposing extra claim fees. WIPO not on board at this time.

Practice Tip:

Bryan indicated that for a withdrawal of a PCT application technically either the International Bureau (IB) or the Receiving Office (RO) can accept a petition (having all the inventors' signatures). However, Bryan cautioned against sending it to the RO. There is often a delay and the RO does not send the withdrawal in time for the IB to halt publication. He suggested always sending to the IB and making the withdrawal conditioned on the IB's ability to keep the application from publication (at least 2 weeks are needed prior to publication).