Canada OPICCIPO Office de la propriété intellectuelle du Canada Un organisme d’industrie Canada Canadian Intellectual Property Office An Agency of Industry Canada FICPI/AIPLA Colloquium on Reform of the PCT: Nice 2002 David Tobin Commissioner of Patents, Registrar of Trade-marks and CEO of the Canadian Intellectual Property Office

Canada 2 Reform of the PCT USPTO Proposal for Reform of the PCT supported by the PCT Assembly in October First Stage of Reform – adoption and implementation by Second Stage of Reform – longer term, comprehensive overhaul of entire PCT system Objectives: Simplification of system and streamlining of processes; Cost reduction; and Conform to PLT, where appropriate.

Canada 3 Additional Objectives … Established by Committee on Reform of the PCT - May 2001: Address workload while maintaining quality; Avoid unnecessary duplication of work; Maintain appropriate balance between applicants and third parties; Expand PCT programs for technical assistance to developing countries; Coordinate with SCP harmonization efforts; Maximize use of modern information and communication technology; Simplify and clarify Treaty and Regulations; and Streamline distribution of provisions in Treaty and Regulations to gain increased flexibility.

Canada 4 What Have We Accomplished? Recently adopted amendments to the PCT have satisfied many of the objectives: Amendment of time limit for national entry from 20 to 30 months; Relief in respect of missed time limits for entering the national phase; Language(s) accepted for translation into language of publication; Enhanced international search and preliminary examination system; Automatic designation system; Simplified procedures concerning filing of large applications containing sequence listings; and Modifications to facilitate electronic filing and processing.

Canada 5 Where are we now? Significant and important work has been accomplished in a relatively short period of time. Full impact of amendments not yet known: China and the Republic of Korea recently amended national law to comply with the 20 to 30 month modification; Impact of enhanced search/exam system on Authority workload, national offices and applicants? Many proposals currently under consideration for the next round are essentially housekeeping and limited to amendment of the Regulations under the PCT.

Canada 6 Next Steps … Short Term: Pause to reflect on accomplishments and assess impact after next round of amendments; Within WIPO context focus on: Substantive Patent Law Treaty (SCP); International Search and Exam Guidelines (MIA); Pursue creative and forward thinking, in consultation with private sector, on further reform options; Holistic approach to development of international patent system (WIPO Patent Agenda);

Canada 7 Bilateral / Multilateral Initiatives During period of reflection, attempt to obtain deeper harmonization at a practical level by continuing bi/multilateral efforts on: Quality Standards and Management Framework; Cooperation on search and examination; Mutual recognition or exploitation of search results and confidence building; Modified Substantive Exam (Confirmation Patents); Effective use of information technology – establishment of a digital library; Reduction of workload would permit consideration of: Additional searches; Timely processing according to needs of applicants.

Canada 8 Next Steps (2) … Medium Term: Consider possible amendments to the Treaty: True merger of Chapters I and II; Many Rules arguably inconsistent with Treaty – risk to applicants in some jurisdictions; Opportunity to simplify and clarify language and to achieve greater flexibility. Must bear in mind timing, political will and transitional mechanism.

Canada 9 Conclusion Canada satisfied with progress of reform initiative; benefits Offices, applicants and third parties. Reflect on work done and assess full impact of modification of fundamental aspects of PCT system. Continue cooperative efforts between Offices on non-statutory issues. Consider possibility of amending the Treaty.