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TWN Info Service on Intellectual Property Issues (July10/02)
6 July 2010
Third World Network

 
Augment national patent search and examination capacity – South
Published in SUNS #6947 dated 18 June 2010

Geneva, 17 Jun (TWN) -- The third session of the World Intellectual Property Organization's Patent Cooperation Treaty (PCT) Working Group heard many developing countries rejecting outright suggestions about increasing the reliance of national patent offices on international search and examination reports (ISER) issued by International Search Authorities (ISAs).
 
The PCT Working Group was meeting this week to discuss the reform of the PCT system.
 
Improving the quality of international search and examination reports to enable the reliance on such reports by national patent offices to determine the patentability of an invention is a central theme of a study prepared by the WIPO Secretariat on "The Need For Improving the Functioning of the PCT System".
 
The study, which also contains recommendations for improving the PCT system, is a key agenda item at the week-long session of the PCT Working Group, which began on Monday.
 
The PCT is a system that allows an applicant to seek patent protection for an invention simultaneously in many countries by filing an "international" patent application. The application is then subjected to an "international search" carried out by offices designated as ISAs and optionally followed by a preliminary examination performed by an International Preliminary Examining Authority (IPEA).
 
There are two phases to the system: the first phase is the international phase, while the second phase is the national and regional phase, wherein different procedures for filing, search and examination of patent applications usually exist. This adds to the checks and balances of the patent system, ensuring that only patents of "quality" suitable to the level of development are granted.
 
Egypt, on behalf of the Development Action Group (DAG) of PCT Member States, said that it did not "favour the principle of automatic validity of international search and examination reports" nor that a national patent office was under any obligation to accept automatically any report by another national patent office.
 
It added that such an approach "only freezes a divisive situation rather than contribute to the better integration and operation of the overall PCT system" and that it would not be productive to insist that international authorities should rely on ISER produced by them even in the national phase "merely for the sake of creating a 'perception of quality' across the system".
 
[The DAG is a like-minded group composed of 20 developing countries that was launched at the recent fifth session of the Committee on Development and IP (CDIP).]
 
Developing countries pointed to the need to augment the capacity of national patent offices to conduct as comprehensively as possible a search and examination for every patent application, and for this purpose, facilitate the provision of technical assistance.
 
The developing countries also pointed to other deficiencies in the WIPO study, in particular, the failure to address the root causes of the overloading of the PCT system (i. e., increase in patent applications which is not reflected by actual innovation and which leads to a backlog in patent search and examination); failure to review the extent to which the PCT system has contributed to facilitating access to technical know-how for developing countries; and the failure to address adequate disclosure in patent applications to fulfill the promise of transfer of technology that developing countries were supposed to derive from the PCT system.
 
Preparation of the study by the WIPO Secretariat was agreed to following a stormy PCT Working Group session in May 2009, which saw the Secretariat, the developed countries and the users of the patent system (mainly from developed countries) aggressively push for the endorsement of a road-map prepared by the Secretariat titled "The Future of the PCT" (PCT/WG/2/3). (See SUNS #6698 dated 12 May 2009).
 
The road-map contained recommendations that promoted coordination in such a manner that the work of a few patent offices designated as ISAs determines the outcomes of the national patent examination by raising a presumption of validity of patent applications examined by the ISAs; recommended that search done by the ISA during the international phase of a patent application should not be repeated at the national level when the same application enters the national phase before the same office; and suggested the removal of reservations to PCT Articles and Rules made by Members in the exercise of their rights under the PCT.
 
At that session, developing countries voiced concerns that the road-map would lead to harmonization of patent applications and search and examination procedures, and sought more time to study the need for, and content of, such reform, resulting in the deferment of consideration of the road-map.
 
It was also agreed that the PCT bodies should continue to improve the PCT within the existing legal framework of the treaty "without limiting the freedom of contracting states to prescribe, interpret and apply substantive conditions of patentability and without seeking substantive patent law harmonization or harmonization of national search and examination procedures".
 
It was further agreed that the Secretariat would prepare an in-depth study that would include the following elements: outlining the background of the need to improve the functioning of the PCT system; identifying the existing problems and challenges facing the PCT system; analyzing the causes underlying the problems; identifying possible options to address the problems; evaluating the impact of the proposed options; and defining and clarifying concepts such as "duplication of work", "unnecessary actions" etc.
 
Egypt, on behalf of the DAG, referred to the DAG's Guiding Principles, which point out that the WIPO Development Agenda contributed to challenging the universal applicability of "one size fits all IP protection models" or the advisability of the harmonization of laws leading to higher protection in all countries irrespective of the levels of development. It added that the DAG had noted that WIPO should pursue a "development compatible" approach, one that is driven by the different levels of development and varying interests and priorities of Member States.
 
Against this background, Egypt, on behalf of the DAG PCT Members, said that it had an interest in the reform and the improvement of the functioning of the PCT, adding that it favoured deepening the analysis and continuing the debate on the reform of the PCT within the parameters agreed at the last PCT Working Group. It underlined the need to ensure that the PCT reform does not entail any harmonization of patent law, in substance or in practice, including as stipulated under Article 27 (5) of the PCT.
 
On the WIPO study, Egypt said that the problems in processing international applications pointed out by the study was of concern, i. e., where an increasing number of applications on the one hand, and inadequate manpower and capacity in offices, on the other, have led to unsustainable backlogs and increased possibility of the grant of invalid patents.
 
Egypt also pointed out that the study clearly mentions that the ISER are not of a quality on which national patent offices can fully rely on and thus it was more important to focus on reviewing and improving the quality of international search and examination work before asking national patent offices to rely on them more than they currently do. It agreed that there was a need to focus on improving the quality of ISER and in this context, it welcomed the decision to conduct a review through the quality sub-group which would report to the fourth session of the PCT Working Group.
 
Egypt made clear that it did not "favour the principle of automatic validity of international search and examination reports" nor did it consider that a national patent office is under any obligation to accept automatically any report by another national patent office.
 
It said: "We do not favour this approach that only freezes a divisive situation rather than contribute to the better integration and operation of the overall PCT system." It added that "it would not be productive to insist that international authorities should rely on ISER produced by them even in the national phase merely for the sake of creating a 'perception of quality' across the system".
 
"Instead, we need to explore the root causes as to why international authorities are unable to conduct search and examination to a level of quality that their facilities permit," it said.
 
Egypt also stressed on the need to address the causal problems leading to the backlog in search and examination in order to come out with sustainable, long-term solutions. It said that the reason behind the flood of patent applications which seems to far exceed the level of actual innovation in the world needs to be addressed. In this context, it requested the WIPO Secretariat to undertake a follow-up study on the elements that have not been addressed in the present study, such as an analysis of the root causes of the overloading of the PCT system.
 
Egypt further stressed that an effective long-term and sustainable resolution of the problems of backlogs and quality would require augmenting the capacity of offices to conduct as comprehensively as possible search and examination for every patent application in a timely manner. This would require enhanced support for Offices, especially in developing countries, which must be provided in accordance with the provisions of the PCT and the recommendations of the Development Agenda, it added.
 
It referred to Article 51 of the PCT, which calls for the setting up of a Committee on Technical Assistance, which has not been established so far, stressing that this Committee should be set up to enable the Secretariat to look at technical assistance requirements comprehensively and address them in a focused manner. It also said that the Secretariat could, in a follow-up study, comprehensively look into how the Secretariat can facilitate the provision of technical assistance as mandated by the PCT treaty, rather than just leaving it to the big IP offices to provide assistance bilaterally.
 
Egypt further said that while the study acknowledges that the PCT has been reformed in the applicants' interests, issues that are critical from the viewpoint of developing countries, such as whether and how well the PCT has been contributing to facilitating access to technical know-how for developing countries as mandated by the Treaty, has never been reviewed or addressed by the PCT Working Group and these issues have also been sidelined in the present study. It called for this aspect to be addressed in a follow-up study.
 
The promise of transfer of technology through adequate disclosure in patent applications was the primary benefit that developing countries were supposed to derive from the PCT system, Egypt said. However, this important issue has not been addressed in the present study. Even procedural ways of improving disclosure in patent applications through practical measures such as streamlining the application forms etc, have not been explored, it added.
 
Egypt thus called for the follow-up study to assess how well the PCT system is functioning from the viewpoint of "sufficiency of disclosure", adding that this was a critical issue from the perspective of maintaining the right balance between the holders of rights and the public interest.
 
Thailand, on behalf of the Asian Group, also raised many points similar to that of the DAG, in particular, on the need to take practical remedial measures to address the slew of patent applications that seems to far exceed the level of actual innovation in the world, such as suitable disincentives and differentiated fee structures to discourage poor quality patent applications.
 
On the issue of reviving the Committee on Technical Assistance, Thailand called for a follow-up study on how to facilitate technical assistance as mandated by the PCT and in particular, whether the current treatment of this issue under the remit of the Committee on Development and Intellectual Property (CDIP) sufficiently addresses the needs and concerns of the developing countries for technical assistance, and make recommendations on the need for, and feasibility of, setting up a separate Committee on Technical Assistance.
 
Brazil said that if the PCT reform leads to better quality in the support that it offers to national patent authorities, then the reform process would be in the interest of all countries. It added that it supported a technical discussion leading to a better and smoother operation of the PCT system and that such a discussion may include topics such as: the need for comments by third parties and written reports before a final opinion is issued on a patent application; contemplation of the extension of the so-called international phase; and the need for more comprehensive and detailed information on search strategies.
 
It said that the WIPO study does not draw a clear distinction between the issue of quality of patents (which is linked to patentability criteria under Article 27.1 of the TRIPS Agreement), and quality in the technical procedures used in the examination of patent applications. The first set of questions relates to substantive legal issues and should remain outside the purview of the current debate on the PCT reform, it added.
 
It also pointed out that the study does not say much about "sufficiency of disclosure", which is critical to maintaining the right balance between the rights of rights-holders and the public interest.
 
Brazil cautioned that the study may lead to a perception that PCT Members are split permanently between those that are international search and examination authorities and those that are not, with the former producing top-quality examinations within the PCT system, whereas the latter mostly validate the work of the authorities, as it would have little, if any, capacity for conducting substantive examination of patents. Brazil stressed that it did not favour such an approach.
 
It further said that it did not consider that a national patent office is under any obligation to accept automatically any report by another National Patent Office. It also said that the study could have commented on capacity-building for developing countries in the area of patent examination. It pointed out that the study should examine the reasons for the increasing number of patent applications, with a focus on the proliferation of patent applications that do not comply with the necessary inventive step, and on business models based on patent filing.
 
India pointed out that not only had there been a considerable increase in the number of PCT applications, but that the majority of them were of foreign origin from the perspective of the developing countries, adding that the trend was of concern, as it indicates a lesser use of the PCT system by a majority of WIPO Members. Thus, statements in the study that the system was successful need to be re-examined and addressed adequately, especially in the context of the Development Agenda recommendations, it added.
 
India said that the focus should be on improving the quality of international reports, adding that wide acceptance is actually a positive externality of an efficient system. It further said that the stress should be on improving the quality of ISER reports without persuading national Offices to rely on those reports for the sake of creating a perception of quality.
 
It added that the study would have been much richer had it tried to address the development concerns and focused on solutions for improving the search and examination capacity of national Offices, rather than adopting a persuasive approach to rely on PCT products, stressing that this requires mainstreaming of the Development Agenda in all aspects of the work on improving the PCT.
 
On the issue of the backlog of patent applications, India said that the most effective long-term and sustainable resolution to the problems of the backlog of applications rests with the augmentation of the capacity of Offices to conduct comprehensive search and examination. It also stressed on the need to introspect and understand the reason behind the increase in patent applications, many of which are of poor quality. A sustainable model to address the flood of applications and their timely disposal calls for a comprehensive analysis of the situation, India said, and suggested that the Secretariat further delve into this matter.
 
It called for a more direct intervention in the form of enhancing technical assistance to Patent Offices to augment human resources and build capacity, adding that the Secretariat can definitely play a very important role in strengthening this multilateral approach rather than leaving National Offices to seek bilateral/plurilateral assistance. It also supported operationalizing the Committee on Technical Assistance.
 
India further said that technology transfer, although recognized as an objective in the Preamble of the PCT, has not been given due consideration by the PCT Working Group. It called for this issue to be addressed, as the development of WIPO Members was linked to the timely transfer of emerging technologies.
 
It also welcomed the proposal for the establishment of a third-party observation system on an informal basis but limited to and relevant for the establishment of the International Search Report, Written Opinion and the International Preliminary Report on Patentability.
 
Indonesia said that all processes relating to the Working Group should be Member-driven and should incorporate the views and concerns of all Member States, recognizing also the important role of the Secretariat in facilitating this collaboration.
 
Indonesia pointed to the need to focus on how WIPO can assist national Offices, particularly in developing countries, to strengthen their capacity and bolster their human resources for conducting effective high-quality search and examination of applications in a timely manner, adding that there should not be an overwhelming focus on how duplication of work can be eliminated through work-sharing without addressing the issue of how to ensure a balance between the applications being received and the capacity of offices to handle those efficiently and effectively.
 
Indonesia also reiterated that any moves towards patent harmonization would not be acceptable to it.
 
Iran also said that the result of PCT reform should not lead to any harmonization of patent law or harmonization of national search and examination procedures.
 
As with many other developing countries, Iran also said that the issue of dissemination of technical information should be further elaborated in the future process. It added that the study does not elaborate on practical challenges to deal with technology transfer, particularly on access to technologies that can be used freely by developing countries without seeking a license.
 
It encouraged the Secretariat to increase activities pertaining to capacity-building to IP offices in particular to explore practical and affordable ways for national Offices to develop online searching capabilities and ensure their access to effective search systems.
 
It said that the study emphasizes the betterment of the actual quality of international reports and that quality improvement of such reports could help applicants to arrange their strategies on the next steps. IP offices, in examining the patentability of a claim, could consider these reports "as a subsidiary and complementary means for their examination, taking into account their national patent laws," it added.
 
Deliberations are presently on-going in the PCT Working Group and are expected to be finalized on Friday. + 

 


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