1. PCT Working Group Meeting Report First Session, May 26-30, 2008 Shigeyuki Nagaoka Patent Committee, Japan Group

2. 1. Introduction The PCT reform discussion continued over seven years and ended last year The PCT assembly held in 2007 agreed that a working group should be convened as necessary to discuss further modification of the system including any amendment of the PCT regulation before directly going to the PCT Assembly Participants: 50 member states 6 intergovernmental organizations 9 international NGOs including the APAA 3 national NGOs 2

3. 2. Working Group Session Agenda (A) Proposal by Israel (B) Enhancing the value of int’l search and preliminary examination (C) Filing and processing sequence listing under the PCT (D) Physical requirements of the international application (E) Criteria of addition of languages of publication under the PCT (F) Supplementary international search (G) Transmittal of the international application (H) Proposals by the USA with respect to missing elements/parts (I) Proposals by the USA with respect to obvious mistake rectification (J) Art. 14 (K) Proposals by the USA regarding the extraneous matter (L) Proposals by the USA with respect to amendment of claims (M) Proposals by the EPO: claim fee (N) Proposals by the EPO, JPO and USTPO for modification to the PCT administrative instructions: common application format (O) Other matters 3

4. (A) Proposal by Israel i. Timeliness of the international search and examination ii. International Form for National Phase Entry iii. Establishment of criteria for the addition of a new PCT publication language (see Agenda E) iv. Simplifying the processing of computer program listings (see Agenda C) v. Reevaluation of the PCT Rule 11 (see Agenda D) 4

5. (A-i) Timeliness of the Int’l Search and Examination Background and Proposal ○ One ISA provides ISR after 30 months from the priority date ○ Applicants in Israel want to extend the national phase entry deadline 6 months because they receive ISR so late Discussion ○ Most delegations did not support the proposal because 6- month extension is not the solution ○ The issue of late establishment of ISR should be discussed in the context of how to improve ISR qualities Conclusion ○ The MIA will take care of this issue 5

6. (A-ii) International Form for National Phase Entry Proposal ○ A standardized form for national phase entry would be convenient for applicants ○ Use of the standardized form is not mandatory Discussion ○ Some national offices may use there own forms that are different from a standardized form ○ This will confuse applicants Conclusion ○ Further consideration should be given to the possibility of providing streamlined means for entering the national phase ○ IB will study this matter 6

7. (B) Enhancing the Value of Int’l Search/Preliminary Exam Background ○ Major patent offices want to reduce their work load ○ They are now proposing new schemes under the Paris Convention such as PPH and New Route ○ PCT system has mechanisms that may be used for work load reduction and work sharing ○ Yet, the PCT system is not used to its full capacity ○ One reason is because Offices do not trust each other ○ Enhancing the value of international search and preliminary examination is the key issue in the PCT system 7

8. Discussion & Conclusion (1) Contents of ISR, Written Opinion and IPER ○ Offices should collaborate in an efficient manner to improve prior art search quality ○ Language problems are slowly reducing with improving machine translations ○ EPO will develop the PCT quality framework ○ There is a lack of consistency in ISR and written opinion among Authorities ○ The written opinion should also mention a clarity issue and a supporting issue (description requirement) ○ The form of IPER is too rigid and does not allow examiners to address all issues ○ In the Chapter II procedure, applicants are not given sufficient opportunities for a real dialog with the examiner ○ IB will study these issues and submit recommendations to the working group at its next session 8

9. (2) Necessity of amendment without filing demand ○ Should applicants be able to make an amendment to the description and drawings during Chapter I? ○ No benefits would be gained by permitting such amendments (3) Availability and use of Information ○ It would be helpful to DO if information on national phase processing including search and examination results are available from a centralized database ○ Patentscope Ⓡ is now providing such information (4) JPO’s best practice ○ “Parallel Processing” of national and international applications ○ A same examiner will prepare ISR + written opinion for a PCT application and OA for a national application 9

10. (C) Filing and Processing of Sequence Listings Proposal ○ No to accept “mixed mode” sequence listings when a PCT application is filed in paper ○ No page fee for a sequence listing filed in ST.25 text format ○ Page fee for a sequence listing filed in ST.25 image format ○ To clarify an acceptable electronic document format for the filing of sequence listings ○ To these ends, the Administrative Instructions should be amended Conclusion ○ The WG agreed to amend the Administrative Instructions 10

11. Proposal by Israel ○ To accept “mixed mode” computer program listings when a PCT application is filed in paper ○ To apply the same fee reduction to the computer program listing filed in the mixed mode as a sequence listing ○ The Administrative Instructions should be amended Conclusion ○ No support ○ The computer program listing is different from the sequence listing ○ The mixed mode is not machine-readable 11

12. (D) Physical Requirements of the Int’l Application (D-i) Color Drawings Background and Proposal ○ Color drawings should be accepted for good understanding of the invention ○ Drawings should also be published in color ○ Rule 11 should be amended for these purposes Conclusion ○ IB will invite the ST.22 Task Force of the Standards and Documentation Working Group of the Standing Committee on Information Technologies (SCIT/SDWG) to make recommendations on technical standards appropriate for color photographs and drawings in patent and trademark applications 12

13. (D-ii) OCR Proposal ○ Rule 11 should be amended in order to facilitate optical character recognition (OCR) of PCT application documents Conclusion ○ IB will submit a report to the SCIT/SDWG (D-iii) Rule 11 Proposal ○ Some contents of Rule 11 should be moved to the Administrative Instructions because it will give RO a greater freedom in handling PCT applications Conclusion ○ No support for this proposal ○ However, IB will develop proposals for modifying the RO Guidelines in relation to the physical requirements, taking into account an increasing number of electronic filing 13

14. (E) Criteria for Addition of Languages of Int’l Publication Background and Proposal ○ Some conditions should be placed on future PCT publication languages because there must be a proper balance between the interests of different users ○ IB proposed three criteria: ① At least one ISA must accept a new publication language ② The combined number of applications which are first filed in that language in all Offices which accept that language must reach a certain number of all first filings worldwide, for example, 20,000 per year ③ Adequate machine translation tools must be publicly available for translation into at least English 14

15. Discussion ○ The required application number “20,000” is too high ○ Instead of the application number, the filing trend and/or percentage may be used ○ If too many languages become publication languages, third parties cannot monitor all PCT applications Conclusion ○ A draft paper about criteria for the addition of new PCT publication languages will be submitted to the PCT Assembly, taking into account the above-mentioned discussion 15

16. (F) Supplementary International Search Background and Proposal ○ Rule 45bis that governs the fee refund in some occasions such as when a PCT application is withdrawn is unclear Conclusion ○ Rule 45bis.2(d) and 45bis.3(d) will be amended These provisions govern the fee refund when the PCT application is withdrawn or considered withdrawn or when the supplementary search request is withdrawn or considered not to have been submitted ○ Also, Rule 45bis.3(e) will be amended This provision governs the fee refund when the ISA finds that carrying out the search is excluded by a limitation or condition, for example, as to the subject matter for which supplementary search will be carried out by that ISA 16

17. (G) Transmittal of Int’l Application & Related Documents Background and Proposal ○ Transmission of a search copy and other documents from RO to ISA is sometime late ○ There is an established link (called “PCT Electronic Data Interchange (EDI) communication link) between RO and IB ○ Use of the existing EDI communication link may solve the document transmission delay Discussion ○ Use of the existing infrastructure (i.e., EDI communication link) is costless whereas providing a new service is costly Conclusion ○ IB will automatically send the PCT application document and other documents to the ISA through the EDI communication link 17

18. (H) Proposals by USA: Missing Elements and Parts Background and Proposal ○ Current Rule 4.18, in combination with Rule 26bis, allows an applicant to use “incorporation by reference” without identifying which application is in fact incorporated ○ Rule 4.18 should be amended in a manner to force an applicant to uniquely identify which application is incorporated, in the PCT request Discussion ○ As long as “incorporation by reference” is used, there would always be uncertainty ○ However, the period of uncertainty is short (i.e., 14 months) and would not materially affect DO, RO and third parties Conclusion ○ IB will further study this matter 18

19. (I) Proposals by USA: Rectification of Obvious Mistakes Proposal ○ Rule 91.1(d) should be amended to permit the contents of the PCT request to be taken into account for the purpose of considering whether mistakes in the description, claims and drawings are obvious and rectifiable Discussion ○ Correcting any word in the description based on a request is generally not permitted in a national application ○ If a mistake in the description is an obvious mistake, current Rule 91 already gives a chance of rectification ○ The PCT Reform WG denied, in the 7 th Session, the use of the request and abstract for obvious mistake rectification Conclusion ○ No agreement was reached 19

20. (J) Proposals by USA: Processing Under Art. 14(4) Proposal ○ Rule 29.4 and RO Guidelines should be amended to eliminate any inconsistency with respect to Art. 14(4) ○ The current Guidelines can accord a new filing date although Art. 14(4) does not permit such according Discussion ○ Art. 14(4) is applied only when a PCT application contains all elements under Art. 11(1)(iii) ○ If “incorporation by reference” is used, Art. 14(4) is never applied Conclusion ○ Rule 29.4 will be amended such that an applicant can submit an argument within 2 months from the notification ○ The applicant’s argument may include a confirmation of incorporation by reference in accordance with Rule 20.6 ○ Regarding the inconsistency between Rule 29.4 and Art. 14(4), IB will study how Receiving Offices should behave 20

21. (K) Proposals by USA: Extraneous Matte r Background and Proposal ○ Handling of “extraneous matter” is unclear ○ A new rule should be provided to clarify how to treat “extraneous matter” The “extraneous matter” is a document other than a request, description, claims, abstract and drawings Discussion ○ If a new rule is provided, it will encourage applicants to file extraneous matter ○ RO Guidelines should be amended to deal with this problem Conclusion ○ RO Guidelines will be modified such that the RO should invite the applicant to clarify the situation within a certain time limit and the RO will disregard the extraneous papers if no clarification is given 21

22. (L) Proposals by USA: Claim Amendment Background and Proposal ○ When an applicant makes Art. 19/34 amendments, he has to submit replacement sheets ○ A plurality of replacement sheets often confuse examiners in DO Discussion ○ Users don’t want to always submit a complete set of claims ○ Examiners and third parties should compare the entire set of original claims with the entire set of new claims ○ Examiners want to have a complete set of new claims Conclusion ○ The proposed amendments to Rules 46.5 and 66.8 will go to the PCT Assembly this year 22

23. (M) Proposals by EPO: Claim Fee Background and Proposal ○ The page fee is not a sufficient deterrent to filing large applications ○ Many national patent system has a claim fee ○ Including too many claims in a single application is an abuse of the PCT system ○ EPO made two proposals: ① To permit the “claim fee” in the same way as in EPO ② To allow ISA to limit the search to one independent claim per category: EPO relies on Article 6 Discussion ○ Mega-applications are creating some problems ○ Rule 6.1: An applicant can present a reasonable number of claims in consideration of the nature of the invention 23

24. ○ A severe sanction such as withdrawal of the PCT application may be introduced if an applicant fails to pay a claim fee ○ Article 6 simply stipulates that claims shall be clear and concise. Thus, the requirements of Article 6 are met as long as independent claims are understandable. Conclusion ○ IB will make a further proposal on the claim fee ○ There was little support for the proposal to limit the international search to one independent claim per category ○ The suction such as withdrawal of the PCT application is harsh ○ The EPO will prepare a more detailed proposal 24

25. (N) Proposals by JPO/EPO/USPTO Background and Proposal ○ Trilateral Offices developed a common application format (CAF) for use in Paris Convention Route applications ○ This CAF should also be used in PCT applications because it will be beneficial for both users and offices ○ The Administrative Instructions should be modified in line with CAF Discussion ○ Many applicants do not use headings in the description ○ In fact, Rule 5.1(c) indicates that the headings are optional Conclusion ○ There was no support for the proposed changes to the Rules and Administrative Instructions 25

26. (O) Other matters There is a concern about the ever-increasing complexity of the PCT Regulations ○ Becoming complicated is a natural result of the reform because the rule changes have been made within the existing PCT framework Another WG meeting will be convened to do preparatory work if such a need arises, rather than submitting the matter straight to the PCT Assembly This WG meeting is not the continuation of the PCT Reform 26

27. 3. Related Topics  Nordic Patent Office ○ Denmark, Iceland and Norway Patent Offices established a Nordic Patent Office ○ Nordic Patent Office started its operation from January 1, 2008 ○ It operates only as ISA and IPEA ○ In the last 6 months, Nordic Patent Office handled about 50 PCT applications ○ Will operate as a supplementary ISA from January 1, 2009 (see MIA Report April 2008 for more information) Russian Patent Office and Austrian Patent Office will also function as supplementary ISA from January 1, 2009 EPO will join from January 1, 2010 Thailand joined Paris Convention and will join PCT soon 27

28. THANK YOU ! Shigeyuki Nagaoka Fujimura Patent Bureau S-nagaoka@fujipat.com 28