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In all started with second session the Patent Co-Operation Treaty (PCT) Working Group meeting the in May this year (Read all the reports here) where PCT reform was mooted. The aim of the reform was to provide a more effective PCT system which avoids the need for duplication of work. In spirit, this reform mooted by the PCT is the need for the hour. With increasing backlog in the national patent offices and inadequate resources leading to delayed grants which has a negative impact on technology and the economy, such a reform should be blessing.

As per the proposed reform, (as per PCT/WG/2/11 )

  1. More than one Authority (say A & B) reviews the Patent Application and gives a comprehensive search report.

  2. Another authority (say C) now Performs combined international/national examination using: their own search results; search reports from the previous authority A & B;

  3. Authority C now acts like a Examination body receiving response from applicant.

  4. Authority C also allows for and prior art submissions by 3rd parties before issuing patentability report.

  5. If the report is positive then it automatically qualifies for a patent in the member country, unless the member country issues a notice of refusal.

Though all the member nations acknowledged the need for a stronger PCT to reduce duplication of work, there was no consensus on the proposal and it has been decided to further discuss on the proposal. However certain sections of the community have already started crying foul even before the reforms could take any shape. The generic Indian Companies in particular are up in arms against any such idea being mooted.

One such editorial on Economic Times can be read here and subsequent analysis of the editorial by SpicyIP can also be read here. The most recent article on Economic Times comes from the Dr.Y.K.Hamied, Chairman & MD, Cipla Ltd (here) warns the Indian Govt not succumb to the WIPO pressure (Looks more like Cipla pressurizing the government)

Basically the Indian Generic community has two major issues.

Afraid of possible amendment to the Patentability, especially Section 3(d)

Their first concern is that the PCT reforms would force India to accept the examination made by other Authority other than India and thus limiting the freedom of India to apply substantive conditions of patentability. Generic Pharma companies worry that this would force India to grant patents for incremental inventions which otherwise was not be possible under section 3 (d) of the Indian Patent Act. The generic industries which survive by manufacturing such drugs would be the most affected by this.

However this issue was addressed by WIPO in their summary of the Chair (PCT/WG/2/13) para 5 which reads

The Meeting agreed that the relevant PCT bodies should continue their work to improve the PCT. The Meeting agreed that the PCT system can and should function more effectively, within the existing legal framework of the Treaty provisions

– to deliver results which meet the needs of applicants, Offices and third parties in all Contracting States;

– without limiting the freedom of Contracting States to prescribe, interpret and apply substantive conditions of patentability and without seeking substantive patent law harmonization or harmonization of national search and examination procedures.”

Further WIPO itself has condemned a news report in pharmabiz which made its stand clear stating

there is not – and never has been – any consideration at WIPO of what your article describes as a “global patenting system” which would “dilute the sovereignty of developing nations in determining patentability of applications for inventions and do away with flexibilities granted under the TRIPS Agreement”

More on the PharmaBiz report and WIPO’s clarification can be read from SpicyIP here.

Afraid of possible amendment to the Patent process, especially Pre-grant opposition proceedings

India is one of the very few counties who have two opposition proceeding. India Patent Act allows for a full fledged pre-grant opposition proceeding, including bi party hearing before the Controller. This has been used, rather abused, by the generic companies to the maximum extent for successfully delaying the grant of Patent. The proposed reform to PCT procedure takes into account the majority of member countries (as they have a single opposition (Post Grant)) and provides for 3rd parties observation.

The report adopted by the working group (PCT/WG/2/14) in its para 58 would clarify the PCT stand on this matter

In response to a query by one delegation as to whether it was intended that International Authorities be required to respond to third party observations, the Secretariat stated that, while the details of any system allowing for the submission of third party observations were still to be discussed, there had been no intention that such responses be mandatory. In this context, several delegations stated that more discussions were needed on the possible details of such system, including whether the applicant should be entitled to comment on any such third party observations and the possible need for translations of such observations. One delegation stated that it wished to reserve its position on the proposal to set up a system allowing for the submission of third party observations, noting the possible impact on the pre-grant opposition system existing under its national law.

It is rather obvious which was the delegation (Indian) who had reserved its comments noting the pre-grant opposition under its laws. Though one may not be a big fan of Section 3(d) or the existing pre-grant opposition proceedings, we believe WIPO would not be a forum to sort out national issues therefore let us have some faith on the Indian Delegation to come up with the best for the country position.

So Generic companies stop complaining and start inventing!

Patently Yours