South Bulletin (Issue 41): 22 September 2009  

Nirmalya Syam

What is being proposed at the Patent Cooperation Treaty is the continuation of an approach towards a binding International Search and Examination for the granting of patents, with potentially serious effects on developing countries

The recent discussions in the World Intellectual Property Organization (WIPO) on reforming the Patent Cooperation Treaty (PCT) system based on a roadmap prepared by the WIPO Secretariat is an attempt to further a long term agenda of developed countries to completely overhaul the PCT system so that it can be used to facilitate the grant of patents without subjecting it to national search and examination procedures.

The proposed PCT reforms are designed to eliminate national search and examination in the name of reducing unnecessary duplication. This would essentially convert national patent offices to become rubberstamp authorities of the international search and examination work done by a few patent offices in developed countries.

Even if not all developing countries are PCT members, there are moves to induce more to join up. In many Economic Partnership Agreements (EPAs) that the European Union is seeking to enter into with developing countries, the latter are being required to join the PCT and the Patent Law Treaty (PLT). This article discusses the original intent of the PCT, how this has been gradually changed during the phase of PCT reforms from 2000 to 2007, and how the agenda is to facilitate further changes in accordance with the ultimate objective of PCT reforms.

The PCT of 1970

The PCT is a WIPO-administered treaty concluded in 1970, which now has 141 countries as parties. This Treaty provides patent applicants with the opportunity of filing an international patent application. Instead of filing separate applications in different countries, the applicant can file a PCT application with the International Bureau at the WIPO Secretariat or any national or regional patent office. The date of this international filing is deemed as the date of filing in all national offices.

Based on this application, national or regional offices that are designated by WIPO as International Search Authorities (ISA) conducts an international search for prior art and issues an International Search Report (ISR), and the application is made public 18 months from the date of filing. This was a mandatory process under the PCT system as originally devised.

Following the publication of the application and the issuance of the ISR, after the expiry of 20 months from the date of filing, the applicant had to transmit a copy of the application to a national office if he wishes to obtain a patent in that country, unless he exercises his option to further delay national entry for another 10 months by electing for an international preliminary examination on patentability by a WIPO-designated international examination authority. This option could be exercised only in respect of those countries which did not make reservations to chapter II of the PCT which provides for this additional international phase procedure. The international preliminary examination report (IPER) states whether the claims in the application meets the requirements of patentability i.e., novelty, inventive step and industrial application, as defined in the PCT Article 33.

Thus, the PCT did not seek to harmonize the international patent system leading to the grant of a global patent based on PCT applications. Rather, it sought to provide an easy, single-window international facility for filing applications instead of requiring applicants to go through the arduous process of filing multiple applications in several countries. Moreover, the ISR and IPER was designed to serve as an information tool to enable applicants to sense whether their applications are likely to be granted patents if they enter the national phase. The ISR and IPER were non-binding reports and do not prevent national offices from conducting their own search and examination processes to determine the patentability of the application based on their substantive criteria in their national laws. Thus, it respected the territorial differences in substantive standards of patent laws in different countries. This is made clear under Article 27.5 of the PCT. National offices could base their decisions on the ISR or IPER if they found them reliable, but were not bound to do so.

PCT Reforms

The process of PCT reforms was initiated since 2000-01 as an integral part of WIPO’s Patent Agenda initiative which sought to promote a globally harmonized patent system based on three pillars – a Substantive Patent Law Treaty (SPLT) harmonizing substantive patent law standards including criteria for novelty, inventive step and industrial application; conclusion of a Patent Law Treaty harmonizing formal procedures for patent applications at the national level, and reforming the PCT to make it suitable to a harmonized international patent system such that international patents can be granted based on PCT applications and PCT search and examination processes.

The original proposal for PCT reform was submitted by the United States which envisaged PCT reforms in two phases: a short-term phase involving amendments to PCT regulations rather than a revision of the Treaty; and the second phase involving substantive revision of the Treaty to facilitate the grant of a global patent based on PCT processes. Thus, its approach for realizing PCT reforms was based on the following milestones – adoption of the PLT in 2000, starting the process of PLT-based PCT reforms in 2000 and its implementation by 2005, followed by a complete overhaul of the PCT system.

To facilitate discussions on the first phase of the PCT reforms, the Assembly of the PCT Union established a Committee on Reform of the PCT in 2000 and on the recommendation of this Committee, a Working Group on Reform of the PCT was established in 2001. The Working Group held 9 sessions between 2001 and 2007 and carried out changes in PCT Regulations with significant implications.

The original PCT system today stands changed in the following manner: instead of conducting a simple international search, an ISA also provides a written opinion (WOISA) on the patentability based on the application along with the ISR. Based on this ISR/WOISA, the WIPO issues an International Preliminary Report on Patentability (IPRP Chapter I) if the applicant does not opt for an international examination under chapter II of the PCT. However, the IPRP remains confidential till the expiry of 30 months from the filing date because national entry is now deferred to 30 months instead of 20 months.

Thus, early national entry in 20 months that was possible under the original PCT is not possible now unless a country has made a reservation to that effect (many developing countries have made such reservations). If the applicant opts for international examination under Chapter II, an IPRP II is issued based on the ISR/WOISA (making international examination faster) followed by national entry in 30 months.

The PCT Regulations have also been amended in accordance with PLT provisions. For example, if international application is filed at a date after the priority period has expired but within 2 months of that date and the failure to file on time occurred in spite of due care or was unintentional, then the priority is restored. Originally, if a PCT application is filed 14 months after a national application on the same claims, the priority period of 12 months under the Paris Convention would be lost. The PLT provides for grounds for restoration of priority for late filing, and the PCT Regulation has been amended accordingly.

The Working Group also discussed proposals by the WIPO Secretariat for revision of the PCT and making greater use of international search and examination reports. In 2002, the Secretariat proposed that instead of revising the PCT through a standard treaty revision mechanism provided under Article 60 of PCT, the PCT may be revised by terminating the existing treaty and simultaneously concluding a new treaty or by concluding a new treaty and phasing out the existing treaty (PCT/R/WG/3/3).

It was considered by the Working Group that though relevant, the proposal was premature and can be considered at a later stage. It must be noted that this was at a time when the adoption of the Substantive Patent Law Treaty was a distinct possibility. In keeping with the buoyant spirit from the possibility of the adoption of the SPLT, the WIPO Secretariat proposed in 2003 the adoption of protocols to the PCT under which national offices will rely on PCT search and examination reports for grant of patents in most cases (PCT/R/WG/5/9). However, as the SPLT faced stringent opposition from developing countries in WIPO and discussions on the SPLT became dormant, these proposals also received less attention and the mandate of the Working Group expired without any progress on these issues.

Revival of discussions on PCT Reforms: The New Working Group

In 2007, the Assembly of the PCT Union constituted a Working Group to discuss matters that need to be submitted to the Assembly. Most commonly this involves matters of amendment of the PCT Regulations. So far the Working Group has held 2 sessions.

In its first session, the Secretariat submitted a proposal for enhancing the value of PCT search and examination to ensure that national offices rely on those reports in their work and in most cases grant patents based on those reports, thus reducing unnecessary duplication of work (PCT/WG/1/3). This was a reintroduction of the 2003 proposal mentioned above (PCT/R/WG/5/9) with an important distinction that it did not propose any new protocol but suggested amending the regulations to this effect. 

This document called for work sharing between national offices and the international search and examination authorities and drew attention to such work sharing arrangements as the Patent Prosecution Highway (PPH) that have bilaterally been established between US and Japanese patent offices (many other national offices are now a part of PPH).

The PPH is a system outside the PCT. Under this system an application filed in one PPH office (say USPTO) is automatically deemed as filed in other PPH offices (JPO, EPO, etc). The search and examination by the USPTO then is relied upon by the other PPH offices for grant of patent. In the second session of the Working Group in 2009, the WIPO Secretariat presented a roadmap for PCT Reforms with the objective of reducing unnecessary duplication, eliminating reservations to the PCT and establishing a high presumption of validity for international search and examination reports.

This was accompanied by a US proposal for comprehensive PCT reforms by developing a system under which an international search and examination report produced through work sharing between major patent offices becomes automatically binding on all national offices unless they are specifically rejected within a stipulated time (say 6 months). Developing countries vehemently opposed these proposals and hence these proposals were not recommended for adoption by the Assembly of the PCT Union. However, this issue is most likely to confront developing countries again in the PCT Working Group in future.

Consequences of PCT Reforms

Following their entry to the PCT, patent offices in developing countries have been flooded with a massive number of PCT applications which are predominantly filed by foreigners. The extended deferral of national phase entry under the PCT system, which is 30 months unless a country has a specific reservation, means that till the expiry of 30 months the local innovators are not sure whether to go ahead with their innovations because if the PCT applicant decides to enter national phase after 30 months and a patent is granted, the local innovator may be held liable for patent infringement.

If the PCT applicant does not pursue a national patent after 30 months, then the local innovation is delayed substantially. Many countries made reservations to chapter II of PCT to ensure early national entry in 20 months as originally stated in Chapter I (Article 22). Some countries have therefore, made reservations to the change which delays national entry under chapter I to 30 months. The proposals in the Roadmap seek to eliminate these reservations by making States committing to do so within stipulated time frames.

Secondly, PCT reforms seek to make international search and examination de facto binding on national offices. It seeks to commit national offices to rely on international search and examination reports and not to conduct search and examination in the national phase on the ground that they are unnecessary and duplicative.

It needs to be noted here that national search and examination processes not only ensure more effective scrutiny of patent applications (because standards of patentability differ in countries and PCT search and examination, and PCT search and examination is based on prior art which is publicly disclosed in a written form and hence does not take into account traditional knowledge which may not be disclosed in written form) but also national procedures provide for pre-grant opposition mechanisms which is an important tool for safeguarding against the grant of bad patents.

Moreover, increased reliance on PCT search and examination for grant of national patents will also increase the burden of post grant opposition and litigation, which may not be very feasible for generic companies and SMEs particularly in developing countries and LDCs.

During the discussions during the last session of PCT Working Group, the WIPO Secretariat tried to assure the developing countries that the reforms as envisaged in the roadmap were not designed to undermine the right of national offices to apply their own substantive criteria of patentability and conduct national search and examination procedures in that regard. Rather, the proposals in the roadmap sought to streamline the system to make it more effective by amending the PCT Regulations and not the Treaty.

However, it needs to be remembered that what has been proposed in the PCT Working Group reflects previously suggested reforms for overhauling the PCT system such as those in the original US proposal of 2000. Indeed, what has been proposed in the roadmap is a revival of earlier proposals by the WIPO Secretariat to the previous Working Group on Reform of the PCT.

Therefore, the proposals in the roadmap for PCT reform must be viewed in context and developing countries should consider the long term development and innovation policy implications of this strategy of incremental reforms aimed ultimately to a global harmonized system that is not in their interests.

Nirmalya Syam is an officer of the Innovation and Access to Knowledge Programme, South Centre. He can be contacted at: This e-mail address is being protected from spambots. You need JavaScript enabled to view it .