09th October, 2019
Michael Caine, Vice President of FICPI’s Study & Work Commission (CET), represented FICPI on 3 October 2019 at the WIPO Assemblies 2019 meeting held in Geneva. At the meeting Michael made a statement on behalf of FICPI expressing concerns in relation to the new PCT rules being introduced from 1 July 2020 which will result in the publication of erroneously filed elements and parts, albeit marked “erroneously filed”, as part of the official PCT publication. Under the new rules, if an attorney inadvertently uploads the wrong description and/or claims when filing a PCT application, the attorney will have an opportunity of incorporating by reference the description or claims of the priority application to remedy this error. The new rules were needed because some Authorities were not prepared to consider an element or part “missing” if something was uploaded in its place. In such circumstances the “missing” elements or parts provisions could not be used to allow incorporation by reference from the priority application. However, under the new rules the erroneous specification will published along with the specification incorporated by reference, effectively forming a “chimeric” specification. FICPI expressed the view that in the case of a clearly erroneous element or part, publication along with the correctly incorporated element or part does not serve the interests of any of the stakeholders. FICPI called on the PCT Working Group to consider new or alternative rules that will allow removal of such erroneous information. FICPI acknowledged that it may be possible to prevent publication of some erroneous information by utilising Rule 48.2(l). However, information removed from publication under this rule remains in the WIPO file. FICPI was thanked for its contribution and other user organisations were encouraged to put forward suggestions for improving the PCT system.
Michael Caine represented FICPI on 3 October 2019 at the WIPO Assemblies 2019 meeting held in Geneva.
In the morning there was a report on the activities of the SCP which highlighted the current work program, which includes Client-Attorney Privilege (CAP). After the report was presented a number of country and regional delegates made comments. With the sole exception of the Indian delegate, all delegates supported the SCP’s consideration of CAP. Very strong support for the work on CAP was given by the Finnish delegate (on behalf of the European Union) and the Japanese delegate. The strong support from Japan was encouraging since Japan is identified by Michael Dowling as a problem country for CAP in his recently published “History of the Privilege Project”. The Indian delegate indicated that WIPO should not be involved in ”norm setting” or “harmonisation”, and that CAP is a matter to be dealt with by rules of evidence.
Francis Gurry presented a new system that WIPO will trial for improving the manner in which meeting are run, particularly with respect to translations and video recordings of the meetings. This will substantially reduce the cost of putting on these meetings. Machine translations will be carried out in real time in several languages, and the video recordings will be well indexed and searchable using keywords. He provided a demonstration of the system which seemed very impressive. They will trial the system for two upcoming meetings. The translation tool has been trained on data obtained from previous meetings.
In the afternoon the meeting discussed the three PCT papers (as the PCT Assembly). The second paper was the one dealing with the PCT rule changes introducing the new rules for dealing with incorporation by reference from a priority application when an element or part is erroneously filed. Michael Caine made a statement on behalf of FICPI expressing concerns in relation to the new PCT rules being introduced from 1 July 2020 which will result in the publication of erroneously filed elements and parts, albeit marked “erroneously filed”, as part of the official PCT publication.
The text of the statement is set out below:
“FICPI believes that applicants should be permitted to correct very formal and obvious mistakes without losing substantive rights. In this regard, FICPI supports the objectives of the Patent Law Treaty (PLT), and welcomed the introduction of PLT-type provisions into the PCT. Clearly, those provisions added to the PCT were intended to serve the same purpose as the PLT, namely to make the patent system more user-friendly while preserving a proper balance between the interests of various stakeholders.
For FICPI, this extends to the substitution of erroneously filed elements or parts thereof with the correct element or part as contained wholly in one or more priority applications, provided that the requirements of Rule 20 are met, with certain safeguards, as indicated by FICPI at the workshop organised by the International Bureau in June last year. FICPI is concerned that the amendments to the PCT Rules proposed by the PCT Working Group to be considered at this meeting will not achieve the intended purpose of aligning practices with respect to the incorporation by reference of elements or parts to be found in a priority application, but will instead introduce further uncertainty and divergence of practices within Offices.
The increased use of ePCT increases the risk for incorrect documents to be uploaded from a computer. Accordingly, there is a need for a remedial provision. Of particular concern is the situation where the incorrect document is a different kind of document (e.g. a claim instead of a description) or is clearly related to a different invention. In such circumstances there will still be uncertainty as to whether the “element” of the subject application is missing or erroneously filed, even with the proposed rule changes. In the business world, if such a document was inadvertently sent to a party, it would be either returned by that party without keeping a copy, or all copies would be destroyed by the party. FICPI believes that it is appropriate for WIPO or a Receiving Office to take similar action, and does not support a process that would result in retaining such an incorrect document in WIPO’s database. In FICPI’s view, neither publishing the document marked “erroneously filed” as proposed, nor retaining the document unpublished in the WIPO file following a request under Rule 48.2(l), serves the interests of any of the stakeholders.
Therefore, FICPI believes it is appropriate for the International Bureau and the PCT Working Group to resolve this problem by introducing additional or alternative rule changes into the PCT Regulations, so as to achieve a better alignment between the various PCT Authorities with respect to the incorporation by reference of elements or parts to be found in a priority application. The incorrect document should be totally removed from the application, possibly by introducing a new rule to cover such removal.”
There were no other interventions in relation to these amendments to the PCT Rules. However, Michael Richardson, who works in the PCT legal section, formally thanked FICPI for its contribution and urged other user groups to suggest improvements to the PCT system.
While very few IP NGO’s were represented at the meeting on this day, Michael Caine took the opportunity to meet with Chen Wang of AIPLA, and she asked Michael to provide her with a copy of FICPI’s statement for consideration by AIPLA. Michael also met with Sylvie Strobel of the EPO, and Frances Roden of IP Australia.
During the Assembly is became clear that once a proposed rule change is recommended by the PCT Working Group, it will be very difficult to prevent the rule changes from being adopted. Accordingly it is important for FICPI, its associations, group and members to identify issues at an early stage and to do what we can in the PCT Working Group to alert them to our concerns.