Harmonisation: are we one step closer?

The Patent Cooperation Treaty (PCT) is strategically selected and increasingly used by patent applicants around the world to file patent applications in multiple countries. According to the 2008 edition of the World Patent Report, published by the World Intellectual Property Organisation, the number of international patent applications filed via the treaty in 2007 was estimated to be approximately 158,000, representing a 5.9% increase on the previous year. The United States is the biggest user of the PCT system, with approximately one-third of all treaty filings in 2006 originating there.

This trend is explained, at least in part, by: 

• the expanding number of countries that are now members of the treaty; 
• the changing innovation hubs around the world, including China; and 
• the increasing internationalisation of patent activity.

However, the increasing number of applications filed via the treaty has led to increasing pressure on the international search and examination authorities responsible for examining international applications and providing international search reports, written opinions and international preliminary reports on patentability. Without the concurrent expansion of resources, including training more examiners, there is inevitably a backlog of international applications and pressure on the quality of examination conducted by the international search and examination authorities.

On 25th July 2008 the Australian Patent Office (IP Australia) and the US Patent and Trademarks Office (USPTO) announced an agreement whereby IP Australia will act as an international search and examination authority for international patent applications filed with the USPTO via the treaty. This agreement follows the completion of a pilot project between the two offices in which Australian patent examiners from various technical areas worked with their counterparts in the USPTO to search and examine treaty applications, thereby gaining an insight into USPTO search and examination procedures.

Therefore, pursuant to the agreement, US filers of international applications can now choose IP Australia to conduct the initial search and examination of their application. IP Australia currently acts as an international search and examination authority for 17 countries, including New Zealand, Singapore, India, Malaysia and Korea. This experience, together with the fact that the examination will be conducted in English, is likely to appeal to US filers of international applications.

The agreement is another step towards harmonising practices between IP Australia and the USPTO. It is also an initiative to reduce the backlog of international applications at the USPTO (which received approximately 50,000 treaty applications in 2007) and improve efficiency by taking a more consistent approach to search and examination, in both the international and national phases. For example, if the search and examination of US-filed treaty applications undertaken by IP Australia is consistent in approach and quality with that of the USPTO, it should lead to greater efficiency when the application is examined before the USPTO in the national phase. 

As with all pilot projects, there will be challenges in scaling up, but the agreement is a positive initiative to reduce backlogs to the benefit of the patent applicants.