WIPO’s Patent Cooperation Treaty (PCT) Working Group is meeting from 10 June 2014 to 13 June 2014. Among the hot topics of discussion is a paper tabled by the United Kingdom and the United States on Formal Integration of the Patent Prosecution Highway into the PCT. The basic ask of the UK/US proposal (PCT/WG/7/21) is to amend the regulations of WIPO’s PCT Regulations and Administrative Instructions to formally integrate the Patent Prosecution Highway (PPH) into the PCT system.
Kenya, on behalf of the Africa Group, delivered the following statement in response to the UK/US proposal.Africa Group Statement on the Formal Integration of PPH system to PCT
Thank you Mr. Chairman for giving me the floor. The African Group would like to thank the delegations of the United Kingdom and United States of America for their proposal as contained in document PCT/WG/7/21.
We note that while the proposal aims at improving the operations of the PCT system, it is the understanding of the African Group that the discussions surrounding the PPH system were supposed to be part of experience sharing on the operations of the system.
We note that the system is still being used in a limited manner by a limited number of countries through bilateral and plurilateral arrangements.
The African Group is therefore of the view that the current proposal for the formal integration of the PPH system to the PCT is premature since it presupposes the existence of the following conditions which we consider critical for its success:
Firstly, that all national patent offices have the same capability and expertise to undertake search and examination;
Secondly, that all patent examiners can evaluate the contents of the opinion or report of International Search Authorities or International Preliminary Examination Authorities including the criteria used in coming up with those opinions or reports without further search and examination;
Thirdly, that the patent examiners can automatically identify any gaps that may be inherent in those opinions or reports and only need to undertake further search and examination to address those gaps;
Fourthly, that in cases where shortcomings are identified; the designated office has the flexibility to suggest amendments on the said opinions or reports which can be taken on board by the International Search Authority or International Preliminary Examination Authority.
The Group believes that the above conditions have not been met. In this regard, the Group is of the firm opinion that the starting point of any meaningful cooperation in this area would be to bring all national patent office’s capabilities and expertise to more or less the same level. This can be done through technical assistance and cooperation as provided for under Article 51 of the PCT Treaty. We note that since the adoption of the Treaty, the Committee on Technical Assistance is yet to be established and the discussions on technical assistance in CDIP are still deadlocked. There is need therefore to operationalize this committee as a starting point to this process.
Furthermore, we note that the proposal seeks to introduce at the request of the applicant, an expedited processing and examination based on the written opinion or report of the international search authority or International Preliminary Examination Authority. This goes counter the priorities of the national offices as it grants preferential treatment to foreign applicants over the national applicants. We note that the patent system has a role in meeting national policy objectives, and the national patent laws ensure that these objectives are met through the incorporation of the necessary flexibilities. We note this proposal is likely to undermine these flexibilities and objectives.
We note that for the PCT system to be able to work well, all offices should have search and examination capabilities and expertise. In this regard, if the PPH system is integrated to the PCT when most national offices especially those in developing countries have not developed capabilities and expertise in search and examination, it will have a negative impact on the eventual development of those capabilities especially for those offices where the PCT applications form the bulk of the patent applications.
In this regard, the Group prefers the continuation of exchange of experiences on the use of this system until such a time that the full impact of the system can be ascertained and all national patent offices would have developed full capabilities to undertake comprehensive search and examination.
I thank you.