A PROPOSAL THAT COULD RADICALLY CHANGE THE PCT

In this second entry of my new personal blog I’m going to deal with a proposal that India has put forward at the MIA 2019 (Meeting of International Authorities 2019). Although this blog is targeted at patent professionals, perhaps it is wise to remember what the PCT is, just in case there is a newcomer to the world of patents among the readers.

The PCT (Patent Cooperation Treaty) was signed in Washington in 1970. This treaty regulates a preliminary procedure that facilitates the filing of patent applications in various member states, which represent a high percentage of the Member States of the United Nations. The PCT is by no means a unified patent granting procedure. The final decision whether to grant or deny a patent is up to each sovereign state, which will apply its own national patent granting procedure. The PCT makes it easier for applicants to decide  whether or not to enter the national phase in two ways: in the first place it extends the deadline for claiming the priority right from 12 to 30 or 31 months (depending on each state) from the first filing date (that’s why some patent professional ironically say that in Spanish PCT means (“Para Comprar Tiempo” – To buy time) and second, it provides the “ISR”  (International Search Report) which includes an exhaustive analysis of the State of the Art regarding the subject matter of the patent application.

PCT member States

The International searching and International Preliminary Examining Authorities play a vital role in the proper functioning of the PCT. Nowadays, the acting International Searching and examining Authorities are:

AT Austrian Patent Office
AU Australian Patent Office
BR Instituto Nacional de Propiedad Industrial de Brasil
CA Canadian Intellectual Property Office
CN National Intellectual Property Administration, PRC (CNIPA)
EG Egyptian Patent Office
EP European Patent Office
ES Spanish Patent and Trademark Office
FI Finnish Patent and Registration Office
IL Israel Patent Office
IN Indian Patent Office
JP Japan Patent Office
KR Korean Intellectual Property Office
RU Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation).
SE Swedish Patent and Registration Office
US United States Patent and Trademark Office (USPTO)
XN Nordic Patent Institute
XV Visegrad Patent Institute
TR Turkish Patent and Trademark Office
SG Intellectual Property Office of Singapore
UA State Intellectual Property Office of Ukraine
CL National Institute of Industrial Property of Chile

And the Intellectual Property Office of Philippines was also appointed International Authority in 2017. Therefore, the total number of National and Regional Patent Offices appointed as International searching and International preliminary examination offices is 23. In order for a National or Regional Patent Office to be appointed International Authority, it must comply with the requirements laid out in rule 36 from PCT, which can be summarized as 100 full-time patent examiners with the linguistic and scientific qualifications needed to carry out prior art searches in the so called PCT minimum documentation (Rule 34), access to such documentation and a quality management system.

I still remember when the SPTO (Spanish Patent and Trademark Office) was appointed International Authority in the mid-1990’s. The number of International Searching Authorities or ISA’s then was very low, around 9, an elite group. A far cry from today, when it’s difficult to call the present group an exclusive one.

All the International Authorities listed above have been provided with a link to their functioning agreement with WIPO (World Intellectual Property Organization). Those agreements establish the amount of fees, the receiving offices they cater for and their work languages.

For instance, the Chilean INPI can be designated as International Searching Authority (ISA) by the receiving offices of any country from Latin America or the Caribbean and can work either in English or in Spanish. The Egyptian Patent Office can be designated by any African, Asian or Arab country. The Contracting States to the European Patent Convention are constrained by the so called “protocol on centralization” which states that the contracting states to the European Patent Convention can only act as International Searching Authorities for the receiving offices of adjacent contracting states and for the receiving offices of non-contracting states with the same official language, as long as this is not an official language of the European Patent Office. Because of that, the SPTO (Spanish Patent and Trademark Office) can be designated as International Searching Authority by the receiving offices of Spanish speaking countries, including Spain and by its adjacent countries. As of the 1st of January 2018 the SPTO carries out searches in English as well, if the search copy is filed in that language.

Competent Authorities for Colombia

According to what’s been said hitherto, the International searching Authorities that can be designated by an applicant will be determined by the agreement with WIPO of the receiving office. For instance, Colombia, as a receiving office, lists Austria, the European Patent Office, the Russian Federation, Brazil, Chile and Spain as possible International Searching Authorities.

The Indian proposal suggests a radical change in the PCT based on the following reasoning: “In today’s world, research and production are widely spread across many countries involving a great level of collaboration among countries.  The businesses are also transnational with multiple partners for research, production, marketing etc.  The need for patenting and the choice of Authority are decided by the applicants based on various factors”. That’s why the Indian Office proposes that any applicant can designate the International Authority he wishes, independently of their nationality, country of residence or receiving office.

Since initially there might be some administrative difficulties, it is suggested that in a first phase, the free choice is only possible for those PCT patent applications filed at the International Office.  This would prevent some applicants from using this alternative: those applicants whose countries of residence or nationality have implemented a defense vetting on first filings. Anyway, if this measure were adopted, language of search would become the main limiting element

Anyway, WIPO is an organization of the United Nations, and all decisions must be taken by consensus, so it is not easy for all kinds of proposals to make progress. Nevertheless, if the proposal were adopted, it would mean a radical change in the PCT.

En español

Leopoldo Belda-Soriano

Proofread by Ben Rodway

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