2007/11/181 PCT in 2007 Takao Ochi Member of Patent Committee November 18, 2007 APAA PATENT COMMITTEE ADELAIDE, AUSTRALIA I PCT Reform II WIPO Assembly

2007/11/182 PCT reform (April 23-26, 2007) Topics Topics (1) Declaration of the source of genetic resources and traditional knowledges in patent applications (2) Supplementary international searches (3) International Search: Use of results of earlier national search (4) Publication of international applications in multiple languages (5) Other matters

2007/11/183 (1) Declaration of the source of genetic resources and traditional Knowledges in patent applications ・ omission from the agenda ・ omission from the agenda (2) Supplementary International Searches ・ JPO strongly opposed to the concept of the supplementary search ・ JPO strongly opposed to the concept of the supplementary search system in view of sound development in the PCT system system in view of sound development in the PCT system

2007/11/184 (i) go beyond the function of the existing national or regional search in the context of the objectives of international search (i) go beyond the function of the existing national or regional search in the context of the objectives of international search (ii) ISA should outsource a part of the search if need be (ii) ISA should outsource a part of the search if need be (iii) result in opacity or unclearness on the responsibility of the international search report (iii) result in opacity or unclearness on the responsibility of the international search report

2007/11/185 (iv) lead to unbalanced system by forcing a specific authority to have much burden by the reason of language with which the Authority is familiar for locating prior art documents (iv) lead to unbalanced system by forcing a specific authority to have much burden by the reason of language with which the Authority is familiar for locating prior art documents (v) waste of the PCT budget, ambiguous legal ground, lack of quality assurance, lowering of morale for the quality of search, etc (v) waste of the PCT budget, ambiguous legal ground, lack of quality assurance, lowering of morale for the quality of search, etc

2007/11/186 ➣ Spain opposed because of going against the philosophy of PCT ➣ Majority Supported ➣ APAA interested in the supplementary international search system but is concerned that even the existing ISAs had a split view on this matter and as long as the Authorities lacked consensus on this matter, good search result could not be expected and therefore it is necessary to have reached consensus among all ISAs before taking the matter up in broader PCT bodies interested in the supplementary international search system but is concerned that even the existing ISAs had a split view on this matter and as long as the Authorities lacked consensus on this matter, good search result could not be expected and therefore it is necessary to have reached consensus among all ISAs before taking the matter up in broader PCT bodies

2007/11/187 ➣ Conclusion Unclear of whether to send the proposal to the PCT Assembly Unclear of whether to send the proposal to the PCT Assembly ➣ PCT Assembly Proposed by France and Adopted Proposed by France and Adopted Enter into force on January 1, 2009 Enter into force on January 1, 2009 ➣ Opacity Which ISA participates? Which ISA participates? What Limitation? What Limitation?

2007/11/188 Supplementary International Search Priority Date PCT Application International Search Report (R42.1) w/Written Opinion Request For SIS To IB w/Translation (R45bis.1) 1 Fee Payment To IB (R45bis.2 & 3) (Supplementary Search Fee & Handling Fee) Supplementary Search Report (R45bis.7) National Entry

2007/11/189 (3) Use of results of earlier national search by office other than office acting as ISA ➣ Applicant can request the ISA to take into account, in carrying out the international search, not only the results of an earlier search carried out by that ISA but also the results of an earlier search carried out by another ISA or national Office ➣ Applicant can request the ISA to take into account, in carrying out the international search, not only the results of an earlier search carried out by that ISA but also the results of an earlier search carried out by another ISA or national Office ➣ Left to the discretion of ISA whether to take the result of an earlier search into account as well as reduction of the search fee ➣ Left to the discretion of ISA whether to take the result of an earlier search into account as well as reduction of the search fee ➣ Enter into force on July 1, 2008 ➣ Enter into force on July 1, 2008

2007/11/1810 (4) Publication of international applications in multiple languages ➣ Divergences in opinion ➣ Divergences in opinion ➣ Not send to the PCT Assembly ➣ Not send to the PCT Assembly

2007/11/1811 (5) Other matters International Publication International Publication ➣ Approved amendment to R 29.1 to clarify prevention of international publication by way of express withdrawal received by IB prior to completion of technical preparation for international publication ➣ Approved amendment to R 29.1 to clarify prevention of international publication by way of express withdrawal received by IB prior to completion of technical preparation for international publication

2007/11/1812 Restoration of the right of priority Restoration of the right of priority ➣ Approved amendment to R26bis.3(d) allowing a receiving office to grant an additional time limit of two months from the expiration of the time limit under R26bis.3(e) (two months from the expiration of the priority period) for payment of the fee for restoration of the right of priority. ➣ Approved amendment to R26bis.3(d) allowing a receiving office to grant an additional time limit of two months from the expiration of the time limit under R26bis.3(e) (two months from the expiration of the priority period) for payment of the fee for restoration of the right of priority. No Future Work in the reform of the PCT No Future Work in the reform of the PCT

2007/11/1813 PCT Assembly (September 24-October 3, 2007) 1. Korean and Portuguese included as International Publication Languages Languages ➣ Total 10 Language ( Arabic, Chinese, English, French, German, Japanese, ➣ Total 10 Language ( Arabic, Chinese, English, French, German, Japanese, Russian, Spanish, Korean and Portuguese) Russian, Spanish, Korean and Portuguese) ➣ Apply to application on or after January 1, 2009 ➣ Apply to application on or after January 1, 2009

2007/11/ The Indian Patent Office and the Brazilian National Institute of Industrial Property Appointed as ISA and IPEA ➣ Total 15 Offices (Australia, Austria, Canada, China, Finland, Japan, the Republic of Korea, the Russian Federation, Spain, Sweden, the United states of America, the European Patent Office, the Nordic Patent Institute, the Indian Patent Office and the Brazilian National Institute of Industrial Property) ➣ Total 15 Offices (Australia, Austria, Canada, China, Finland, Japan, the Republic of Korea, the Russian Federation, Spain, Sweden, the United states of America, the European Patent Office, the Nordic Patent Institute, the Indian Patent Office and the Brazilian National Institute of Industrial Property) ➣ Enter into force on January 1, 2009 ➣ Enter into force on January 1, Supplementary International Searches ➣ Enter into force on January 1, 2009 ➣ Enter into force on January 1, 2009

152007/11/18 Thank you!! ありがとうございました。 Takao Ochi