PPH Agreements to Leverage PCT Reports on Patentability

Francis Gurry, WIPO Director General

Last month a two-day international symposium sponsored by WIPO concluded with broad agreement on the need to pool efforts at the international level to address the problem of backlogs in patent applications at patent offices around the world.  In 2007, the last year for which complete worldwide statistics are available, unprocessed patent applications around the world reached 4.2 million, and that number continues to grow according to WIPO.  The Director General of WIPO, Mr. Francis Gurry, explained at the symposium that the main challenge of the future for patent offices around the world is to promote coordinated international action to enhance efficiency of operations and encourage dissemination of best practices in modernizing the infrastructure, operations and management of  the world’s various patent offices. WIPO hinted that work sharing could be enhanced through the Patent Cooperation Treaty (PCT) and Patent Prosecution Highway (PPH) agreements, with new pilot projects to come on line in early 2010.  According to Gary Smith, of the PCT Learning Center and a former member of the United Nations diplomatic corps who served as the Director of the Patent Cooperation Treaty at WIPO, “this will be a considerable inducement to those applicants wishing to obtain patent protection in the growing list of countries participating in the PPH.”

Work sharing for prosecuting patent applications was suggested at the WIPO Symposium as a solution to existing inefficiencies and PPH projects were extensively discussed. It was concluded that the PCT should serve as the backbone for work sharing in relation to patent prosecution to support existing bilateral PPH agreements. Representatives of the Trilateral Offices (i.e., the European Patent Office, Japan Patent Office and United States Patent and Trademark Office) attending the Symposium all agreed in principle to integrating PCT work products, specifically the PCT international preliminary reports on patentability, into their ongoing PPH projects that are set to start in early 2010.

According to Smith:

The PCT search report with written opinion as well as the preliminary examination report (IPRP II) will soon become entry points to the Patent Prosecution Highway. It is expected that the Trilateral Offices will announce very soon the decision to implement this new program in the three offices, starting with pilot projects early next year. It has been a major shortcoming of the PPH to not allow the PCT to become an entry point since most applicants wishing to internationalize their inventions use the PCT system.

At the close of the WIPO Symposium, Director General Francis Gurry referred to recently published data that explained that not only is there a staggering 4.2 million patent applications constituting a worldwide patent backlog, but that the backlogs have grown on average at a rate of 8.7% over the past five years. “This is unsustainable,” Mr. Gurry said.  “We have moved beyond consciousness of the need to address unsustainable processing of patent applications to action.”  Further signaling that changes to the PPH that leverage the strengths of the PCT are virtually imminent.

The new initiatives for work sharing were announced at the Symposium include the Vancouver group (Australia, Canada, and UK) project for mutual exploitation of search and examination documents; and a Latin American project to exchange search and examination data on patents and trademarks involving nine partners (Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname, and Uruguay in partnership with the Inter-American Development Bank). Mr. Gurry explained that more agreements are welcome and encouraged, and vowed that WIPO would provide technical assistance in developing a common platform to ensure global compatibility and interoperability of any new initiatives.

According to Smith, “this new PCT/PPH linkage should result in an environment where patent offices will be better able to share scarce examining resources to help reduce the large and growing backlogs of pending applications.”

Despite likely being Unconstitutional, in order to keep in line with FTC endorsement guidelines that go into effect on December 1, 2009, allow me to point out the obvious; namely that the PCT Learning Center is an advertiser on IPWatchdog.com. I personally believe this issue to be an important one that patent attorneys should know about, and prepare for in advance by discussing with their clients the appropriate usage of the PCT moving forward. The PCT Learning Center did not ask me to write this article, but to help put this into perspective I asked Gary Smith for information so I could appropriately articulate the importance of the PCT becoming more integrated with PPH agreements.