FICPI/AIPLA Colloquium on Reform of the PCT: Nice 2002

1. FICPI/AIPLA Colloquium on Reform of the PCT: Nice 2002 David Tobin Commissioner of Patents, Registrar of Trade-marks and CEO of the Canadian Intellectual Property Office

2. Reform of the PCT • USPTO Proposal for Reform of the PCT supported by the PCT Assembly in October 2000. • First Stage of Reform – adoption and implementation by 2005. • Second Stage of Reform – longer term, comprehensive overhaul of entire PCT system • Objectives: • Simplification of system and streamlining of processes; • Cost reduction; and • Conform to PLT, where appropriate.

3. Additional Objectives … • Established by Committee on Reform of the PCT - May 2001: • Address workload while maintaining quality; • Avoid unnecessary duplication of work; • Maintain appropriate balance between applicants and third parties; • Expand PCT programs for technical assistance to developing countries; • Coordinate with SCP harmonization efforts; • Maximize use of modern information and communication technology; • Simplify and clarify Treaty and Regulations; and • Streamline distribution of provisions in Treaty and Regulations to gain increased flexibility.

4. What Have We Accomplished? • Recently adopted amendments to the PCT have satisfied many of the objectives: • Amendment of time limit for national entry from 20 to 30 months; • Relief in respect of missed time limits for entering the national phase; • Language(s) accepted for translation into language of publication; • Enhanced international search and preliminary examination system; • Automatic designation system; • Simplified procedures concerning filing of large applications containing sequence listings; and • Modifications to facilitate electronic filing and processing.

5. Where are we now? • Significant and important work has been accomplished in a relatively short period of time. • Full impact of amendments not yet known: • China and the Republic of Korea recently amended national law to comply with the 20 to 30 month modification; • Impact of enhanced search/exam system on Authority workload, national offices and applicants? • Many proposals currently under consideration for the next round are essentially housekeeping and limited to amendment of the Regulations under the PCT.

6. Next Steps … • Short Term: • Pause to reflect on accomplishments and assess impact after next round of amendments; • Within WIPO context focus on: • Substantive Patent Law Treaty (SCP); • International Search and Exam Guidelines (MIA); • Pursue creative and forward thinking, in consultation with private sector, on further reform options; • Holistic approach to development of international patent system (WIPO Patent Agenda);

7. Bilateral / Multilateral Initiatives • During period of reflection, attempt to obtain deeper harmonization at a practical level by continuing bi/multilateral efforts on: • Quality Standards and Management Framework; • Cooperation on search and examination; • Mutual recognition or exploitation of search results and confidence building; • Modified Substantive Exam (Confirmation Patents); • Effective use of information technology – establishment of a digital library; • Reduction of workload would permit consideration of: • Additional searches; • Timely processing according to needs of applicants.

8. Next Steps (2) … • Medium Term: • Consider possible amendments to the Treaty: • True merger of Chapters I and II; • Many Rules arguably inconsistent with Treaty – risk to applicants in some jurisdictions; • Opportunity to simplify and clarify language and to achieve greater flexibility. • Must bear in mind timing, political will and transitional mechanism.

9. Conclusion • Canada satisfied with progress of reform initiative; benefits Offices, applicants and third parties. • Reflect on work done and assess full impact of modification of fundamental aspects of PCT system. • Continue cooperative efforts between Offices on non-statutory issues. • Consider possibility of amending the Treaty.