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World Intellectual Property Organization: Nonbinding Recommendations for Improvement of Patent Cooperation Treaty

(June 30, 2010) Members of the World Intellectual Property Organization (WIPO), at a meeting of the WIPO Patent Cooperation Treaty (PCT) Working Group held on June 14-18, 2010, endorsed nonbinding recommendations to improve the Treaty's functioning that are set forth in a 66-page report prepared by the WIPO Secretariat. The aim of the measures is to help national patent authorities “unclog a global backlog of patent applications while at the same time improving the quality of patents granted.” (Daniel Pruzin, Intellectual Property: WIPO Members Endorse Guidelines to Improve Patent Cooperation Treat, WTO REPORTER (June 25, 2010),

The PCT was adopted on June 19, 1970, was amended or modified several times, and has been in force from April 1, 2002. (Patent Cooperation Treaty (PCT), (last visited June 28, 2010).) The Treaty

makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an 'international' patent application. Such an application may be filed by anyone who is a national or resident of a PCT contracting State. It may generally be filed with the national patent office of the contracting State of which the applicant is a national or resident or, at the applicant's option, with the International Bureau of WIPO in Geneva. (Summary of the Patent Cooperation Treaty (PCT) (1970), WIPO, (last visited June 28, 2020).)

The PCT also “regulates in detail the formal requirements with which any international application must comply.” (Id.)

The report, The Need for Improving the Functioning of the PCT System, is divided into six chapters. It covers, among other topics, the PCT system as originally envisaged, the PCT's performance record, existing problems and challenges facing the PCT and analysis of their causes, development agenda recommendations, and identification of possible solutions and evaluation of their impact. Problems for which the report proposes solutions include backlogs in patent offices, timeliness of the international review process, the quality of granted patents and of international search reports for patent applications, creating incentives for applicants' efficient use of the system, skills and manpower shortages in offices, access to effective search systems, and the cost and accessibility of patent protection. (Pruzin, supra; WIPO, THE NEED FOR IMPROVING THE FUNCTIONING OF THE PCT SYSTEM (hereinafter Report), PCT/WG/3/2 (May 5, 2010),

On the question of the applications backlog, estimated to be 4.2 million worldwide, “WIPO has increasingly raised the alarm” and also “expressed concern that too many invalid patents are granted, even by the most advanced examining offices,” two trends that have negatively impacted the PCT's functioning. (Pruzin, supra.) “The backlog is a cancer in the system, and almost certainly causes a reduction in innovation and R&D,” according to WIPO Deputy Director-General James Pooley. (Id.) Over the last ten years, the number of pending applications at most large patent offices is said to have at least doubled, but the waiting time for processing applications reportedly varies “considerably,” depending on the recruitment and training of new examiners. Thus, China's State Intellectual Property Office “has actually decreased average processing time since 2004 despite the number of applications pending having risen by a factor of around three in the same time … . The average processing time in the United States Patent and Trademark Office, on the other hand, has risen greatly.” (Id.; Report, supra, at 27.)

In regard to searches, Pooley stated that consistency of quality among patent offices carrying out the searches is the “main issue,” based on users' reports on variations in that quality. Aside from recommending the need to improve the international search reporting, WIPO Members also endorsed certain practical steps for near-term implementation that the WIPO will undertake with governments, e.g., “finding ways to make search and examination reports available to other national patent offices where a PCT applicant is seeking protection.” (Pruzin, supra.)

Although WIPO Members approved the report, they did not formally endorse a specific plan for better compliance with PCT obligations or a U.S. proposal calling for comprehensive reform of the PCT system. Developing countries expressed concerns about any plan that might lead to an international agreement on substantive patent harmonization, a goal of industrialized countries including the United States. (Id.) Instead of calling for comprehensive reform, the WIPO report urged “simple changes” in existing PCT regulations and forms to make the international reports more useful to all stakeholders: “[f]or example, allowing third parties to comment on pending applications, and making national search reports available, could improve the quality of PCT work,” the report states. (Id.; Report, supra, at 4.)