The 13th session of the Patent Cooperation Treaty (PCT) Working Group was unusual in terms of its format and agenda. Because of the Covid-19 pandemic, the session was firstly postponed and then shifted from May 2020 to October 2020.
Unusually, this PCT Working Group meeting was held in a hybrid format, which meant that some of the participants (mostly all WIPO officials) were located directly in the WIPO conference room, and other participants took part remotely, online.
The majority of participants, including the Chair of the session Ms. Cheng Dong (China) and both Vice-Chairs: Ms. Rekha Vijayam (India) and Mr. Charles Pearson (USA) took part remotely. I also had to give up my trip to Geneva and took part remotely.
There were over 100 participants, including observers from AIPPI, AIPLA, APAA, EPI, FICPI, JPAA and JIPA.
Due to the difficult situation, the Agenda was significantly shortened and contained only six substantive items in addition to the usual six formal items (see Annex 1). Accordingly, the working time of the session was reduced to two hours a day.
WIPO Director General Mr. Daren Tang opened the session with a welcome address.
All the Agenda items were prepared by the International Bureau of WIPO; Mr. Michael Richardson, Director, PCT Business Development Division acted as Secretary to the Working Group.
Immediately after adoption of the Agenda, the Working Group started with discussion of item 4 “Implementation of WIPO Standard ST.26 in the PCT” (document PCT/WG/13/8). As it was proposed by the International Bureau, implementation of WIPO Standard ST.26 in respect of international applications filed on or after January 1, 2022, will require amendments to the PCT Regulations to be adopted by the PCT Assembly, to enter into force on January 1, 2022, and modifications to be made to the Administrative Instructions.
The main amendments reflect two issues:
- It will no longer be possible to file a sequence listing on paper or in an electronic format other than an XML file.
- It will no longer be required to repeat language‑dependent free text contained in the sequence listing in the main body of the description. In order to allow this text to be viewed and used effectively in the appropriate context, any translations required should be presented within a complete sequence listing. In certain cases, it will be possible to include the language‑dependent free text in two language versions within a single sequence listing.
Representatives from Patent Offices of China, USA, Germany, Great Britain, Japan, EPO, Russia, India supported the proposals of the IB.
As a result of the discussion.
The Working Group approved the proposed amendments to Rules 5, 12, 13ter, 19 and 49 of the Regulations, with a view to their submission to the Assembly for consideration at its next session in the first half of 2021.
Extending PCT time limits in extraordinary circumstances
Item 5 of the Agenda “Strengthening PCT Safeguards in Case of General Disruption”
(document PCT/WG/13/10) appeared to be the most disputed and controversial topic of the 13th session. It was discussed for several hours within the first, third and fourth days. The document proposed for consideration was submitted by the initiative group consisting of the European Patent Office, France, Switzerland and the United Kingdom.
According to the opinion of the authors of the proposal, the PCT System provides sophisticated safeguards which protect applicants’ rights, including the restoration of the priority right, the excuse of delays or the extension of time limits under numerous circumstances. However, the Covid-19 emergency has shown that there are some limitations and room for further improvement. The EPO proposes to amend the PCT Regulations by introducing a new Rule 82quater.3 which would explicitly allow an Office to extend PCT time limits in the case of extraordinary circumstances for a defined period. A requirement would be that the State in which the Office is located is facing a general disruption due to, for instance, an epidemic. Besides some amendments should be implemented in the Rule 82quater.1 (a) and (d). The proposed text is attached to the Report as Annex 2.
Though the International Bureau has unequivocally supported this project, representatives from many countries pointed out the need to clarify and improve some provisions of the document. The most frequently criticised of the provisions of the new Rule was: 82quater.3 Extension of Time Limits due to General Disruption, namely “Any time limit extended under this paragraph may be extended up to the first day following the end of the disruption”.
Such a requirement seemed to many delegations to be too strict. On the other hand, several delegations, and first of all the USPTO, insisted that there was no need for extensive amendments in PCT Rules, since the current legislation is sufficient and the practice obviously showed that almost all Patent Offices had successfully overcome the pandemic difficulties. At the same time, the proposed wording of the new Rule seemed to the USPTO delegation not clear and correct enough. After first part of the discussion, the initiative group proposed several small amendments to the wording, but they were rejected by the USPTO.
As a conclusion of the discussion, it was decided that:
The Working Group expressed support for the principle of providing for better safeguards for applicants and Offices in cases of general disruption outside their control and:
invited the European Patent Office, France, Switzerland and the United Kingdom to submit a revised proposal to the next session of the Working Group, taking into account the comments made by delegations; and
requested the International Bureau, in cooperation with the Member States, to assess the experiences of Offices in the implementation of the Interpretative statement and Recommended Patent Cooperation Treaty (PCT) Practice Changes in light of the COVID-19 Pandemic that it issued on April 9, 2020 and to submit a report to the next session of the Working Group.
Supplementary international search
The next Item 6 of the Agenda “Review of the Supplementary International Search System”
(document PCT/WG/13/4 Rev.) caused a lively discussion. While a number of delegations from China, France, Russia, etc., as well as EPO declared support of the system as being useful for definite groups of applicants, some other countries, primarily from Scandinavia, questioned its usefulness as being in little demand, but requiring considerable financial and human cost.
As a conclusion, the Working Group agreed to recommend that the Assembly adopt the following decision:
“The PCT Assembly, having reviewed the supplementary international search system in 2012, 2015 and 2021, decided:
“(a) to invite the International Bureau to continue to monitor the system and report to the Meeting of International Authorities and the Working Group on significant developments; and
“(b) to review the system again at a time to be recommended by the International Bureau, or on request by a Contracting State, but no later than 2027.”
All other items of the Agenda, namely
Item 7 “PCT Minimum Documentation: Status Report” (document PCT/WG/13/12)
Item 8 “Coordination of Patent Examiner Training” (document PCT/WG/13/6 Rev.)
Item 9 “Coordination of Technical Assistance Under the PCT” (document PCT/WG/13/7 Rev.)
did not require any real discussion or disputes and the Working Group just noted the contents of these documents.
Further, the International Bureau informed that the 14th session of the Working Group was tentatively scheduled to take place in May/June 2021.
Official WIPO Report of the session is not established yet.
FICPI’s view and involvement
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