1. The Working and Future of the PCT APAA Hong Kong, November 19, 2009

2. Outline PCT Status The Future of the PCT

3. PCT Status

4. =PCT Albania Algeria Angola Antigua and Barbuda Armenia Australia Austria Azerbaijan Bahrain Barbados Belarus Belgium Belize Benin Bosnia and Herzegovina Botswana Brazil Bulgaria Burkina Faso Cameroon Canada Central African Republic Chad Chile China Colombia Comoros Congo Costa Rica Côte d'Ivoire Croatia Cuba Cyprus Czech Republic Democratic People's Republic of Korea Denmark Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland France, Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea Guinea-Bissau Honduras Hungary Iceland India Indonesia Ireland Israel Italy Japan Kazakhstan Kenya Kyrgyzstan Lao People’s Dem Rep. Latvia Lesotho Liberia Libyan Arab Jamahiriya Liechtenstein Lithuania Luxembourg Madagascar Malawi Malaysia Mali Malta Mauritania Mexico Monaco Mongolia Montenegro Morocco Mozambique Namibia Netherlands New Zealand Nicaragua Niger Nigeria Norway Oman Papua New Guinea Peru Philippines Poland Portugal Republic of Korea Republic of Moldova Romania Russian Federation Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tomé e Principe Senegal Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan Swaziland St. Kitts and Nevis Sweden Switzerland Syrian Arab Republic Tajikistan Thailand (24 Dec. 2009) The former Yugoslav Republic of Macedonia Togo Trinidad and Tobago Tunisia Turkey Turkmenistan Uganda Ukraine United Arab Emirates United Kingdom United Republic of Tanzania United States of America Uzbekistan Viet Nam Yugoslavia Zambia Zimbabwe 142 PCT States

5. PCT Statistics Jan to August ’09 WIPO believes there may be a potential fall of between 5 and 10% overall in 2009

6. International applications received in 2009 by country of origin (Jan-Aug.) US: -15% CN: +20% GB: +6% JP: +11% China overtakes France

7. The active ISAs are the following 14 patent offices: –Australia –Austria –Brazil –Canada –China –Finland –Japan –Republic of Korea –Russian Federation –Spain –Sweden –United States of America –European Patent Office –Nordic Patent Institute Appointed but not yet acting: India Appointed at the 2009 PCT Assembly: Egypt and Israel The PCT International Searching Authorities

8. Appointments of Egyptian Patent Office and Israel Patent Office as ISAs/IPEAs Amendments to the Regulations: –Supplementary international search—amending Rules 45bis.1, 45bis.2, 45bis.3, 45bis.5, 45bis.6, 45bis.9, and 96.1 concerning limitations and conditions an SISA can set in its agreement, and refunds of SIS fees Entry into force: July 1, 2010, applying to any IA for which SIS request is made on or after July 1, 2010 –Form of amendments—amending Rules 46.5 and 66.8 and the proposed addition of new Rule 70.2(c-bis), requiring applicants to indicate the basis for amendments in IA as filed Entry into force: July 1, 2010, applying to any IA where amendment is made on or after July 1, 2010 Outcome of the 2009 PCT Assembly (1)

9. Modifications of Assembly Directives on Establishment of Equivalent Amounts of Certain Fees (and relevant Rules) Amendments of ISA/IPEA Agreements Good support for PCT Roadmap, but still concerns by developing countries and NGOs,and great interest in studies to be provided for next WG –fear that this process will be used to achieve stealth harmonization of substantive patent law Outcome of the 2009 PCT Assembly (2)

10. Trilateral offices will begin a pilot project in January 2010 in which positive PCT search reports and written opinions will be a basis for Patent Prosecution Highway requests in the Trilateral offices –Announced formally at the November 2009 Trilateral Conference in Kyoto PPH and the PCT

11. Practical PCT developments Private file inspection –Document upload system pilot under way Digital Access Service for priority documents PCT webinars New resources for PCT applicants –PCT Caselaw database now available PatentScope ® enhancements –Full file contents available for IAs filed on or after 1 Jan. 2009 –National phase entry data now for 36 offices (Singapore and Viet Nam recently added—includes CN, JP, NZ, PH, KR, SG, VN) –Searchable national collections in new interface for public testing ARIPO, Korea, Singapore, South Africa, Cuba, Mexico, Vietnam, Israel, PCT, All 10 query language choices, 10 interface language choices, customizable settings, integration of GoogleTranslate, graphical results –PatentScope search interface in Japanese, and text searchable in Japanese and Korean

12. PatentScope ®

13. Certain national collections now searchable via PatentScope ®

14. The Future of the PCT

15. A PCT Vision for the Future (1) Realizations in late 2008: –Significant discussions multinationally about reduction of duplication of work and increasing patent office worksharing- -and when you look at the founding PCT documents and the vision of its founders, the PCT was created to do just that –PCT can and should be used more effectively in order to help it contribute more fully to solutions to the problems facing the international patent system –PCT is not currently reaching its potential: NOT because of legal deficiencies because the International Authorities are not using it as intended –PPH’s existence proves that worksharing and confidence are possible Wrote a paper setting out a “PCT Roadmap”

16. A PCT Vision for the Future (2) Thus, Offices of PCT member States (in particular, ISAs and IPEAs) should: –Fully implement their PCT obligations including the obligation to make their PCT workproducts as good as or better than their national workproducts –Minimize duplication within Offices –Minimize duplication between Offices –Ensure that practices, fee structures and workproducts encourage work-sharing and duplication reduction –Be encouraged to withdraw the incompatibility notifications between PCT and national law/practice which were designed to only be temporary measures (some 150 of these currently)

17. A PCT Vision for the Future (3) The PCT should be made more useful and attractive by –Reviving IPE (“Chapter II”) devise appropriate national phase incentives for use and for its effective use –such as fee incentives, PPH effect, or both tied to positive IPRPs allow for submission of third party observations include top-up searches to find secret prior art have all IPEAs issue at least one WO before any negative IPRP –Building on SIS and moving towards collaborative/multi- Office PCT search and examination

18. A PCT Vision for the Future (4) Discuss with member states: –Incentives to encourage PCT applicants to make full use of the PCT international phase (resolving defects, amending to resolve potential patentability issues, etc.), for example: Fee reductions Accelerated/simplified national processing

19. Procedural background: –23 February 2009: informal discussions with Heads of Offices of 20 biggest PCT Offices, including all ISAs –2 March 2009: informal discussions with certain user organizations and representatives of some of largest PCT filers –16-18 March 2009: Meeting of International Authorities –4-8 May 2009: PCT Working Group –September 2009: PCT Assembly, noting the WG’s discussions –2010 Working Group A number of countries/groups have already begun to implement… A PCT Vision for the Future (5)

20. Studies for the IB to do: –background of need to improve PCT functioning, problems, challenges, causes, options, etc. (“why did we propose the PCT Roadmap?”) –fee reduction criteria for small and medium-sized enterprises (SMEs) –eligibility criteria for 90% fee reductions The PCT and Green Technologies Looking forward to the next PCT WG (June 14-18, 2010)

21. Questions?