The WIPO-run PCT is the backbone of the international patent system, allowing inventors to file a single application in one language and gain the benefit of potential protection in 142 countries, with the option of waiting up to 30 months to decide which markets justify the expense of pursuing national patents. Since its introduction in 1978, users have increasingly embraced the PCT, where annual filings have increased from a few hundred to over 150,000.

So we must be doing something right; and indeed, surveys demonstrate that users are very pleased with the system and the value that it delivers. But WIPO has renewed its focus on customer service across all of its sectors, and so we search constantly for new ways to improve the PCT's efficiency and ease of use. This emphasis is reflected in quite a number of recent enhancements and collateral services, which will be detailed in this article. But the major thrust of our current efforts has been on enhancing quality.

A key component of the PCT system is the search and examination reports that are prepared for each application and provided to the applicant in time to influence the 30-month decision on whether (and where) to go forward. This work is done by one of a number of national or regional patent offices acting as International Authorities (IAs). The underlying concept is that this work product from the international phase can later be useful to the offices chosen by the inventor in the national phase. The success of this concept depends on reports of the highest possible quality, so that national patent offices will be comfortable in relying on them, and not duplicate the international phase efforts when conducting any additional search and examination. The advantage of this approach remains even when a different standard of patentability is applied in the national phase, because the underlying analysis of the prior art remains relevant.

Navigating the Roadmap

Although the IAs generally do a very good job, there have been problems with reports coming in on time and at the necessary level of quality. Last year, WIPO's director-general, Francis Gurry, prepared a PCT Roadmap that identified the need for improvement of the system. If consistently high quality and timeliness could be achieved, not only would users benefit, but so would the global patent system. It was time for the PCT to deliver on its original promise as a worksharing tool, helping to reduce backlogs.

While misunderstandings about the nature of the Roadmap proposal prevented its adoption at the 2009 meeting of the PCT Working Group (WIPO's convocation of member states with interest in the functioning of the PCT), its message was not lost on the major patent offices acting as IAs. Those offices, both individually and within plurilateral groups such as the IP5 (consisting of Europe, the US, Japan, China and the Republic of Korea), took to heart the Roadmap's recommendations and began to implement them.

The PCT received another big boost in January 2010, with the beginning of PCT-PPH, a pilot project of another group, the Trilateral (EPO, USPTO and JPO). The Patent Prosecution Highway had initially been launched several years before as a way for pairs of patent offices to cooperate in sharing work product. Under a bilateral PPH agreement, where at least one claim in the patent application has been found patentable in a first office, the application could be submitted to a second office where it would receive fast-track examination of corresponding claims. Under PCT-PPH, this same idea has been applied to claims which are the subject of a favorable search and/or examination under the PCT. In the first few months of operating the PCT-PPH pilot, the USPTO has received over 100 requests for expedited processing.

New routes for the PCT

This idea is so compelling that it has been adopted by countries outside of the Trilateral. This year the Republic of Korea entered into an agreement with the US to give PPH treatment to PCT applications that have received favorable reports by the other country acting as an IA. One attorney reports that, after scouring his pending cases for favorable reports from KIPO, he was able to get allowance from the USPTO a mere eight days after the petition for PPH treatment was granted (this was in a case where the projected time to first office action had been 22 months)! On May 28, the UK announced that it would accept applications for a PPH-style accelerated examination based on positive PCT reports. So PPH, previously limited to a very small group of countries, may be emerging as a genuinely multilateral approach to worksharing through the PCT, to the benefit of all applicants.

Meanwhile, at the annual Meeting of International Authorities (MIA) in February 2010, the process of improving the PCT moved ahead substantially, with the creation of a quality sub-group that is tasked with identifying metrics for measuring quality of PCT reports on a consistent and objective basis among offices. Measuring quality in a transparent way will naturally operate to focus attention and increase compliance by the IAs with their obligations.

Most recently, at this year's PCT Working Group meeting in June, the member states embraced a set of recommendations drawn from the Roadmap, all of which should have a direct and positive bearing on the value to users of the PCT system. In addition to reinforcing the continuing push for more consistency in reports and the sharing of search strategies, the meeting adopted a plan for encouraging and enabling feedback from the national offices to the IAs concerning how the reports were used, or not, in the national phase. IAs were also asked to recognise, as much as possible, the value of their own work when one of their own reports comes back to them in the national phase, making at most a so-called top-up search. IAs were encouraged to cite documents from a wide range of sources, and to provide sufficient explanation of the relevance of cited documents, so that the applicant (and later the national offices) could appreciate their importance.

The focus was not entirely on the IAs, however, as national offices were encouraged to make national phase reports, with links to citations, available through WIPO's Patentscope on-line system. And all member states were encouraged to review and withdraw where possible their notifications of incompatibility with the PCT Regulations, to increase the system's predictability and ease of use.

Another approved quality-related initiative will be a pilot system for third party submissions (known as observations) following international publication. Initially limited to prior art references, the test may later be expanded to encompass other issues of validity.

More directly relevant for applicants was the meeting's recommendation to continue a review of the level of fees charged for different types of applicants, with a view towards making the system as broadly accessible as possible. In the same vein, it was agreed to consider changes in procedure that would make the PCT simpler for applicants to use, including a full review of the PCT Applicant's Guide.

Recognizing that the PCT system serves its widest community of users by making available information about expired or abandoned patents, WIPO was also asked to work on improvements to the Patentscope database (containing information on the more than 1.7 million international applications filed since 1978), to make patent status information more easily searchable. The meeting also suggested that WIPO explore a system for promoting the dissemination of technology, through an indication by applicants of their willingness to license their inventions. Additional requested studies will examine how successful the PCT has been in enabling technology transfer and in providing technical assistance to offices in developing countries.

At the same meeting, the Working Group improved the regulations dealing with correction of obvious mistakes. And discussion continued on ways to accommodate the need for color drawings in some applications.

All of these activities should lead to a better, more user-friendly environment for those who use the PCT. But there's more that we've been doing already to enhance user value. For example, in response to customer demand, we have implemented Supplementary International Search, which allows a second international search report, typically from an IA with a different language base and therefore access to more relevant citations. As of July 1 2010, the EPO has agreed to become part of this system, which will become even more effective once an Asian IA joins, something that we anticipate in the near future.

Speaking your language

We have been working on increasing our PCT training offerings, with particular emphasis on distance learning and webinars. Users now have the ability, regardless of their location, to receive free training at their desktop – and to get it any one of 10 different languages.

Speaking of languages, WIPO continues to improve the tools that are available for using the PCT system. Patentscope has been recently upgraded, and now offers access to full file content of published PCT applications, with regularly updated national phase entry data for 43 offices. Perhaps most exciting is our very recently introduced cross-lingual search"tool, which allows a user to enter a search query in one language and have it automatically translated into others (currently English, French, German, Spanish and Japanese), for more thorough and effective searching. You can try a beta version of this product on our website by using this link: http://www.wipo.int/patentscope/search/en/clir/clir.jsp

Our Digital Access Service now allows users to request WIPO to retrieve a priority document from the service, rather than having to provide a certified copy. As of this year, users can also employ the private file inspection service to upload any post-filing documents (that would normally go to WIPO, not to an IA).

WIPO has also been working to protect its customers from unscrupulous companies that prey on patent applicants by sending them official-appearing but bogus invoices. Literally millions of dollars have been lost through these schemes. In addition to posting on our website examples of the fraudulent forms, we have also been cooperating with local authorities who are willing to attempt to stem this practice. Last December, for example, we provided expert testimony in a case in Florida resulting in a civil judgment that we hope will set an example for other authorities to follow.

We recognize that all users of the PCT system are important customers. We hope you are pleased not only with the service you are now receiving, but with the improvements we have planned. And we certainly welcome your input.

James Pooley

US lawyer James Pooley joined WIPO as deputy director-general for patents on December 1 2009 from Morrison & Foerster. His responsibilities include the PCT, the Standing Committee on the Law of Patents, and innovation promotion and technology transfer.