FICPI met with WIPO on 11 October 2021 to discuss in detail a number of PCT and SCP related topics. The meeting was convened because there was insufficient time during FICPI’s annual meeting with WIPO held in June 2021 to discuss these topics in sufficient detail.
The FICPI representatives at the meeting were:
- Michael Caine: Vice President CET
- Kim Finnilä: Assistant Report General CET
- Vladimir Rybakov: Member of CET-3
The WIPO representatives at the meeting were:
- Matt Bryan: Director, Patent Cooperation Treaty Legal and User Relations Division
- Matthias Reischle-Park: Deputy Director, PCT Legal Division
- Tomoko Miyamoto: Head, Patent Law Division
- Hanna Kang: Legal Officer, PCT legal and User Relations Division
- Michael Richardson: Director, PCT Business Development Division
The following PCT topics were discussed:
- Recent changes to the PCT
>WIPO requested that FICPI communicate recent changes to the PCT to FICPI membership, the main changes being adoption of a new sequence listing standard, discontinuation of PCT-SAFE, the new Eurasian ISA/IPEA and changes to excuses for delay in meeting time limits:
>Hanna Kang explained in some detail the new WIPO standard ST 26 developed for sequence listings and how it differed from the previous standard ST 25. Hanna advised that sequence desktop tools are available for download from the WIPO Standards website: https://www.wipo.int/standards/en/sequence/index.html and that webinars entitled WIPO ST.26 Introduction, WIPO Sequence, WIPO Sequence Validator and WIPO ST.26: Advanced are available in multiple languages at: https://www.wipo.int/meetings/en/topic.jsp?group_id=330&items=20. The new standard would apply to applications filed after 1 July 2022. FICPI members are requested to provide any positive or negative feedback on the tools and the new standard to the FICPI secretariat which will be passed on to WIPO.
>Michael Richardson explained that WIPO will cease supporting PCT-Safe, and that offices and applicants are now to be encouraged to start using ePCT. He also discussed the work being done by WIPO with offices to facilitate the processing of applications using ePCT as well as the handling of fee payments.
>Matthias Reischle-Park advised that the WIPO Assemblies in October 2021 approved the Eurasian Patent Office becoming the 24th international authority (ISA/IPEA) from the middle of 2022. This will provide an alternative for those filing in the Russian language.
>Matthias also explained the new rule changes to take effect from 1 July 2022 to provide an excuse for missed time limits in the case of an epidemic. The new rule 82quater.3 allows offices in such circumstances to provide general extensions of time limits of up to two months. Rule 82quater.1 was also amended to allow offices in particular circumstances to waive the need for evidence supporting extension request.
- Figures in colour
>There was general agreement between WIPO and FICPI representatives that applicants should be allowed to submit drawings in colour. Michael Richardson explained that most national and regional offices were in support of allowing drawings to be submitted in colour. The main problem appears to be prioritising the amendment of laws and IT systems that would allow for such colour drawings.
- PCT filing requirements and ePCT national phase entry (FICPI resolutions)
>We had a brief discussion of the FICPI’s resolutions on PCT national phase requirements and ePCT national phase entry.
In accordance with FICPI’s resolution the current focus of WIPO is in assisting offices to introduce simplified processes for national phase entry that rely on the bibliographic information and documentation held by WIPO, rather than requiring applicants to submit this information and documentation at national phase entry. The Indian Patent Office was mentioned by WIPO as an office that was introducing such a facilitated national phase entry system. While the initially proposed ePCT national phase entry system is not being actively progressed at the present time, the new WIPO fee netting system being introduced could overcome one of the problems identified with the original proposal, that being the difficulty in processing fee payments. We again mentioned the importance of locally qualified agents to facilitate national phase entry, and pointed out that any ePCT national phase entry system that could be initiated remotely without a local agent or a fee payment would, in effect, simply extend the current 30/31 month period for national phase entry resulting in additional national phase entry applications for which fees would ultimately not be paid. This would create uncertainty for 3rd parties and additional work for offices in processing these unwanted applications.
The following non-PCT topics were discussed:
- FICPI position on B+ harmonisation topics (share with WIPO)
>Tomoko Miyamoto commenced the discussion of work carried out by or under the observation of WIPO relating to substantive patent law harmonisation. Michael Caine gave a brief overview of FICPI’s work in the area of substantive law harmonisation, particularly in relation to the work of Group B+. Michael also mentioned that FICPI had noted with interest that a paper relating to prior user rights was presented at the last SCP meeting for consideration at the upcoming SCP meeting in December 2021, and further mentioned that FICPI had developed a position on prior user rights that FICPI was happy to share with WIPO.
- FICPI position on draft MLA developed by core Group of Group B+ and connection to work in SCP
>Kim Finnilä briefly mentioned FICPI’s work with Group B+ in relation to the draft multilateral agreement on client patent attorney privilege, noting that WIPO was also observing the work of Group B+ in this area. This lead to a discussion of the work of the SCP in gathering information and views, and a forum for discussion, on important patent related topics, including CAP, and that this provides a great resource for countries wishing to take the initiative to improve their IP laws.