News

AIPPI Continues to Attend WIPO´s PCT Working Group Meeting in Geneva

by Gastón Richelet & Robin Keulertz (PCT – Standing Committee)

As has been the case for the past years, members of AIPPI´s PCT Committee will attended the upcoming meeting of WIPO´s PCT Working Group this June in Geneva.

The PCT Working Group was established at the 36th Session of the PCT Assembly in 2007. Its basic function and responsibility is to do preparatory work for PCT-related matters that must be submitted to the WIPO Assembly. The main portion of this work involves studying proposals for amendment of the Regulations and guidelines under the PCT. However, other matters of interest to the Assembly are also within the scope of its functions.

This article will provide an overview of a typical PCT Working Group meeting, to illustrate the types of topics and processes involved. The 11th Session of the Working Group took place between June 18 and 22, 2018. John Osha from the AIPPI Bureau and Robin Keulertz from the PCT Committee attended the meeting on behalf of AIPPI.

Several issues were discussed during last year´s meeting, and many of them continue to be under study for this year’s meeting.

During the first day, deliberations took place in connection with possible fee reductions for universities and SMEs. Several opinions and studies concerning this matter were put forward. In the end it was agreed that it was not clear whether or not a fee reduction would result in an increase of filings by universities.

A more practical issue was deeply discussed during the second day of the meeting: dealing with erroneously-filed elements and parts of patent applications. During this day John Osha delivered a presentation at a workshop on this rare occurring but highly problematic topic.

All user groups agreed that correction should be available in the case of erroneous filings, and that there should not be a different result for an erroneously filed part or element versus a missing part or element.

However, there were different opinions regarding whether an explanation had to be provided as to why the error or mistake had occurred. Also, there were diverse views in connection with the need for the corrected portions to be published with or in replacement of the erroneous one.

Other topics discussed during last year´s WIPO´s PCT Working Group included PCT online services and the use of the XML format, third party observations after five years of practice, international applications linked to United Nations Security Council sanctions and fee reductions for certain applicants from certain countries, notably developing and least developed countries

This year´s Session, the 12th, will take place between June 11 and 14, 2019 in Geneva. As was the case last year, the AIPPI PCT Committee will be represented.

The following are some of the most relevant topics that will be studied on the occasion of this meeting:

PCT Statistics

PCT Online Services

International Applications Linked to UN Security Council Sanctions

PCT Fee Policy to Stimulate Patent Filing by Universities

Criteria for Fee Reductions to Certain Applicants from Certain Countries, Notably Developing and Least Developed Countries

Training of Examiners

Incorporation by Reference of Missing Elements or Parts

Sequence Listings

PCT Minimum Documentation: Status Report

PCT Collaborative Search and Examination: Status Report

The Working Group analyzed some of these topics during last year´s session. Building on the work already done, further discussions will take place in Geneva this year.

Other more technical matters and administration issues will also be dealt with. The full agenda and all the related documents for this year´s meeting can be accessed and are available in the official United Nations languages at: https://www.wipo.int/meetings/en/details.jsp?meeting_id=50410.

All AIPPI members are invited to provide comments on any PCT issues that the Working Group is currently working on. Also, we welcome suggestions on additional matters or hot topics any AIPPI member would like us to consider.

Further news will follow once this year´s WIPO´s PCT Working Group meeting has taken place and the corresponding reports have been prepared and issued.