VZCZCXYZ0005
RR RUEHWEB

DE RUEHGV #0415/01 1551132
ZNR UUUUU ZZH
R 041132Z JUN 09
FM USMISSION GENEVA
TO RUEHC/SECSTATE WASHDC 8476
INFO RUCPDOC/DEPT OF COMMERCE WASHINGTON DC

UNCLAS GENEVA 000415 
 
SIPDIS 
 
SECSTATE FOR EEB; IO/T 
COMMERCE FOR USPTO 
 
E.O. 12958: N/A 
TAGS: ECON KIPR WIPO
SUBJECT: WIPO Patent Cooperation Treaty (PCT) Working 
Group, Second Session 
 
¶1. SUMMARY:  At the Second Session of the Patent 
Cooperation Treaty (PCT) Working Group, delegates mainly 
discussed proposals to make the operation of the PCT more 
efficient.  In addition, the form of amendments, 
eligibility criteria for reductions in certain fees, 
equivalent amounts of certain fees, and an international 
form for national phase entry were discussed.  Despite 
general support for further work on PCT reform, 
developing countries clearly signaled that more outreach 
and explanations of proposed changes are needed, and that 
significant changes to the PCT are out of reach at this 
time.  END SUMMARY 
 
The Future of the PCT: under study 
---------------------------------- 
¶2. The Second Session of the Patent Cooperation Treaty 
(PCT) Working Group was held in Geneva from May 4 to May 
8, 2009.   The main document, ?the Future of the PCT,? 
and related documents on PCT reform stimulated lively 
discussion.  The document suggested means to improve the 
efficiency of the PCT without changing the treaty.  Some 
of the additional PCT reform proposals, including of the 
United States, suggested taking a broader approach and to 
consider revising the treaty.  Many developing countries 
complained that, although other Offices and users had 
been consulted, they had not been, and that they had been 
given insufficient time to review the proposals.  In 
addition, they indicated that the lack of availability of 
the document in Spanish hindered their ability to 
consider the document. 
 
¶3. India, China and the African Group insisted throughout 
the meeting that before work could be done on how to 
improve the operation of the PCT, a study should be 
conducted into the sources of problems within the 
international patent system.  In addition, they 
questioned the meaning of ?unnecessary duplication,? 
suggesting that for developing countries a certain amount 
of duplication should be more tolerable.  China and India 
expressed concern with specific text in the ?Future of 
the PCT? that suggested that their authority to apply 
additional requirements of patentability would be 
limited.  China indicated that they perform a more 
complete search of prior art in the national stage, 
because they search more Chinese language documents in 
the national stage than in the international stage.  In 
addition, China mentioned that they have a requirement of 
the source of a genetic resource, and they should be able 
to enforce such a requirement.  India mentioned Article 
3(d) of their patent law as imposing an additional 
requirement of patentability, and that the PCT does not 
preclude such an additional requirement. 
 
¶4. The International Bureau (IB) indicated that the 
?Future of the PCT? does not contemplate changing the 
framework of the PCT, or seek to harmonize substantive 
patent law.  In addition, the IB pointed to provisions of 
the PCT that clearly provide that nothing in the treaty 
or regulations to the treaty limits the freedom of 
Contracting States to prescribe substantive conditions of 
patentability as it desires.  Even given this repeated 
explanation, India and others continued to express 
suspicion of an objective to harmonize patent laws and to 
force Contracting Parties to accept decisions on 
patentability of International Searching Authorities. 
 
¶5. Ultimately, the Working Group agreed that the relevant 
PCT bodies should continue their work to improve the PCT. 
 
¶6. In addition, the Working Group agreed that future work 
on improving the PCT system should be informed by a study 
that will be performed by the IB.  The study will 
identify the existing problems and challenges facing the 
PCT system and define and clarify concepts such as 
?duplication of work,? and ?unnecessary actions.?  The 
study should be prepared and submitted to the Working 
Group at least two months before the next Working Group 
meeting. 
 
Other Issues 
------------ 
¶7. As to access to the PCT, it was agreed that the 
relevant PCT bodies should prepare proposals to increase 
access to the PCT for independent inventors and/or 
natural persons, small and medium sized enterprises, 
universities and research institutions, in particular 
from developing and least developed countries. 
 
¶8. The following were agreed upon and will be sent to the 
 
PCT Assembly at its next session, subject to drafting as 
agreed during the meeting, and possible further drafting 
changes to be made by the Secretariat: 
 
-- Form of amendments, the proposed amendments of the 
Regulations set out in the Annex to document PCT/WG/2/9; 
 
-- Establishment of equivalent amounts of certain fees, 
amendments of the Regulations as set out in Annex I to 
document PCT/WG/2/2, amendments to the Directives of the 
Assembly set out in Annex II to document PCT/WG/2/2 and 
amendments to Article 11 of the Agreements between the 
International Bureau and Offices in relation to their 
functioning as International Searching and Preliminary 
Examining Authorities as set out in Annex III to document 
PCT/WG/2/2,; and 
 
-- Supplementary international search, the proposed 
amendments of the Regulations set out in the Annex to 
document PCT/WG/2/10. 
 
¶9. As to the eligibility criteria for reductions in 
certain fees, the Working Group agreed to request the 
Secretariat to carry out studies requested by the 
delegations of Barbados and Singapore, and to present 
those studies to the next session of the Working Group. 
 
¶10. As to presentation of revisions to international 
applications, further consultations will be made by 
circulars. 
 
¶11. As to the international form for national phase 
entry, there was no consensus for further work on this 
proposal. 
 
¶12. Delegates were unable to complete the adoption of the 
report by the end of the meeting on Friday, May 8, 2009. 
Accordingly, the Working Group agreed a draft report of 
the present session would be circulated for comments and 
adoption by correspondence subsequent to the meeting. 
 
¶13. The United States delegation included Karin Ferriter 
(USPTO) and Charles Pearson (USPTO). 
 
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