3 Procedural Issues Relating to the PCT International
Application System(*)
The globalization of economic activities has led to an increase in not only the utility of international
applications (PCT international applications) under the Patent Cooperation Treaty (PCT) as a means to
obtaining a patent right on an international basis, but also in the number of PCT international applications
received by the Japan Patent Office (JPO) acting as a receiving office. However, while there is a great need for theuse of PCT international applications among the Japanese users, critical opinions have been voiced on various
issues related to the procedures.
The purpose of this research study is to provide basic material for examining any amendment to the rules or
improvement in operation so that the PCT international application system can continue to operate functionallyand to enable users to utilize the PCT international application system strategically through research,organization and analysis of the actual conditions of use of PCT international application system. Moreover, thisbasic material is intended to be used for examining any approaches to the relevant offices of foreign states as wellas organizations such as WIPO. In particular, Japanese companies and patent firms were surveyed thoughquestionnaire and interviews, while foreign intellectual property offices and companies were also surveyed
through interviews. Based on the results of these surveys, examinations were conducted by the Research Study
Committee.

I

Introduction

1

Background to the Examination

The globalization of economic activities has
led to an increase in not only the utility ofinternational applications under the Patent
Cooperation Treaty (PCT) (hereinafter referred
to as the "PCT international application") asmeans to obtaining rights on an international
basis, but also in the number of PCT international
applications received by the Japan Patent Office(JPO) acting as a receiving office.
However, while there is a great need for theuse of PCT international applications among theJapanese users, critical opinions have been voiced
by such users on various issues such ascomplicated procedures for fee payments,
inconvenience in the use of online filing software,annoyance with the frequent fee revision,difficulty in obtaining PCT national phase entry
information and insufficient information on
procedural practices.
Moreover, the Japanese government has
recently suggested in its Global Intellectual
Property Initiative and Intellectual Property
Strategic Program that the number of competentinternational searching authorities should be
increased to improve convenience in filing PCTinternational
applications.
Therefore,
thismomentum to improve the functions of PCTinternational applications must be maintained tosupport international intellectual property
activities by Japanese users. It is of no small
significance that the opinions would be collectedfrom users of Japan, which receives the second
largest number of PCT international applicationsof any country—a number that is still
growing—and that approaches would be made toforeign patent offices and organizations, including
the International Bureau of the World Intellectual
Property Organization (WIPO).
At the same time, operation of the PCTInternational Application System by the Japan
PatentOfficeshouldbe
improvedbyunderstanding the issues found in its business
operations. This can be achieved by comparing
the business operations of other foreign
intellectual property offices and the JPO acting as
the receiving office, designated/elected office,international searching authority or international
preliminary authority, from the viewpoint ofoffering user-friendly services.
Against this background, this research study
was conducted to prepare basic materials to be
used for the following three purposes, throughsurveys, organization and analysis of the actual
usage of PCT international applications: (i)examination of amendment of rules to enable
users to utilize the PCT international application
system; (ii) examination of any possible
operational improvements to enable the offices(*) This is an English translation of the summary of the FY2012 JPO-commissioned research study report on the issues
related to the industrial property rights system.
●

IIP Bulletin 2013 Vol.22

1 ●and organization of foreign states to continue
operating the PCT international application
system in a functional manner; and (iii)examination on the approaches to be made toforeign offices and organizations, including WIPO.
2

Method of this Research Study(1) Examination by the Committee
With an aim to examine the procedural
issues relating to the PCT international
application system on the basis of technicalexamination, analysis and advice regarding thisresearch study, a research study committee
consisting of five members, including chairman
Mr. SHIMOMICHI Teruhisa (patent attorney),industrial
experts
andpracticians,wasestablished and discussions were held on threeoccasions.
(2) Research on Domestic and International
Documents
Research, organization and analyses wereconducted on documents valuable for this researchstudy by using books, academic papers, leadingcases, research study reports, council reports,
database information and information from theInternet, etc.
(3) Domestic Questionnaire Survey
In relation to this research study, aquestionnaire was sent to 1,033 corporations and
104 patent firms that are using the PCTinternational application system in Japan. (Thequestionnaire was sent to the respondents on June
29 and the last person received the data on August1.) Out of these 1,137 targets in all, 574 responded(response rate 50.5%).
(4) Domestic Interview Surveys
Based on the results of the questionnaire
surveys conducted in Japan, interview surveys wereconducted with 13 corporations and 7 patent firms
with respect to any requests or possible
improvements related to this research study (fromOctober to November).
(5) Overseas Interview Surveys
Interview surveys were conducted with theUnited States Patent and Trademark Office(USPTO), European Patent Office (EPO), KoreanIntellectual Property Office (KIPO), and StateIntellectual Property Office of the People's
Republic of China (SIPO), with respect to thecondition of business operations and view of each●country. (SIPO provided its answer in writing.) At
the same time, questionnaire surveys were carriedout with the Russian Federal Service forIntellectual Property (Rospatent) and Controller
General of Patents, Designs and Trademarks(CGPDTM), to gain reference information.
Moreover, interview surveys roughly equivalent to
the domestic interview surveys were conductedwith six companies, two each from the UnitedStates, Europe and South Korea. The answers
obtained from the USPTO have not been publishedin this report as they were provided on condition
that they would not be disclosed.

Ⅱ State of Use of PCT International
Application System
1

Actual Usage
Applications

of

PCT

International

Examinees are required to take a multiple
number of subjects in the short-answer
examination
under
the
patentattorneyexamination system; and some of the examinees
passed the short-answer examination eventhough their test scores vary greatly from one
subject to another. Meanwhile, despite the factthat there are many treaties related to industrial
property rights, the scope of the examination
related to this topic is unclear. The number ofrelated treaties is expected to rise. Since the2000
revision,theexamination
subject
specifically on the topic of treaties has beenabolished. However, there has been a call toresume discussion of this subject. Furthermore,some of the optional subjects of the essay
examination are currently chosen by no one or bya very small number of examinees. There havebeen concerns about the fairness of oral
examination. Its pass rate has been on the decline.
While the 2000 and 2007 revisions haveintroduced a system of partial exemption of
examination subjects, the system has become
increasingly complicated.
Based on the results of the questionnaire
survey, the interview survey, and the overseas
survey, the committee discussed the introductionof a threshold system to reject examinees who do
not meet the minimum test score requirement forany examination subject, transformation of theoptional examination subjects of the essay
examination into a short-answer examination, an
increase in the number of questions contained in
the short-answer examination, the introduction of
a compulsory essay examination specifically on
2 ●IIP Bulletin 2013 Vol.22

treaties, the abolishment of the oral examination
and a review of the paper examination, a review ofthe provision concerning the exemption of
examination subjects, the evaluation of practicalskills, and the evaluation of foreign language
skills.
2

Training System

Many respondents mentioned, as thestandard for selecting the patent application route,that elements such as the number of countries towhich the patent application is to be filed, theparticular countries to which the patentapplication is to be filed (i.e., whether or not
those countries are part of the PCT), and theavailable time for the application. The PCT route
was selected if the patent application was
intended to be filed with many countries. Or it
was selected if a certain amount of time was
required for the results of an experiment or test
to become available or for the decision to be madeon the necessity to obtain rights or on the
country where the PCT international application
was to enter the national phase. In addition, many
respondents answered that their companies are
inclined to file more patent applications withforeign patent offices in connection with advanced
globalization through business expansions or thatthey are actively filing PCT international
applications.

Ⅲ State of Implementation of PCT
International Application
Procedures
The questionnaire survey revealed thatmany users were dependent on patent firms forthe entire procedure, i.e., 84%. More than half ofsuch users reasoned that the procedures were too
heavy a burden on them. Others mentioned
reasons such as "the security available by leaving
the procedures to experts" and "complicated filingprocedures." This suggests the necessity to
examine systems and operations with fewer
burdens on the users. On the other hand, an
overwhelming majority of applicants (i.e., 80% ormore) who answered that they conducted theprocedures themselves mentioned cost reduction
as the reason, while about 25% reasoned thatthey needed to grasp the practical procedures.
Meanwhile, the interviews conducted withdomestic companies showed a trend wherecompanies used different means in accordancewith the characteristics of the case, i.e., thecompanies used patent firms even if they had
conducted the filing procedures.

Ⅳ Issues and Needs Related toProcedural Aspects of PCT
International Application System
Against the JPO
1

3Advantages of PCT

While the PCT route must be selected due toits advantages, 80% of the questionnaire
respondents mentioned, as an advantage, the time
available until they decide on the necessity toobtain rights or the country in which the relevant
PCT international application should enter thenational phase. Moreover, as it was also clarified
in the interview surveys, almost 40% of
respondents mentioned, as an advantage of PCT,
that patent applications could be filed in Japanese.
4

Disadvantages of PCT

The standard for selecting the Paris route
must be one of the disadvantages of PCT. Some ofthe examples of such disadvantages would be thecomparatively expensive costs if there were aparticularly small number of countries in which apatent application entered into a national phase orif the applicant expected to obtain the rightpromptly.
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IIP Bulletin 2013 Vol.22

Online Procedures

Currently, more than 90% of PCT
applications are filed online, and it is likely thatthe top priority for the procedural aspect of PCT
applications is to find solutions to issues related
to online filing. Although there are two software
programs available for online filing with the JPO,
i.e., a domestic online filing software and
PCT-SAFE, there is a great need for automaticreflection of the latest fees and automatic version
upgrades for both software programs, both ofwhich are taking precedence over other needs. At
the same time, there are increasing demands fordomestic online filing software to be compatible
with filing in English, which can be recognizedfrom the fact that 60% of the users of PCT-SAFE
answered that the use of PCT-SAFE was for filing
patent applications in English. Nevertheless, withrespect to the filing in English via PCT-SAFE,
many users showed strong dissatisfaction withthe limited character types available in relation to
the conversion of special characters.
Meanwhile, although the JPO may be
3 ●required to take some steps with respect to its
system, it is an important issue in terms ofimproving PCT international applications’procedural convenience to allow online filing ofinterim documents. In the domestic interview
surveys, some respondents commented that theywanted online procedures equivalent to that fornational filing procedures. This means that it isnecessary to make online procedures available forprocedural documents for which the users areshowing high demands.
2

Payment of Fees

Summing up the complaints about fee
payments as being troublesome due to thedifference in payee or payment method and othersimilar answers that were stated in the space forother options, the questionnaire survey revealed
that more than 80% of respondents had demands
for improvement in the procedures for payment offees. It was also confirmed by the domestic
interview surveys that many of respondents
hoped for such improvements. Specifically, what
is required for improvement is the unification of
the payee, utilization of a prepayment system forevery fee to be paid in relation to PCTinternational applications, and simplification ofprocedures, such as attaching the documents atthe time of payment. Examinations are required
to enable users to pay any fee through a single
method.
3

Method forDocuments

SubmissionofPriority

As a result of the questionnaire survey, it
was clarified that more than 70% of respondents
requested that the receiving office send priority
documents as the means to submitting priority
documents to the International Bureau of WIPO.
Submission of priority documents using the
WIPO Digital Access Service (DAS) only
accounted for 9% of the total submission, and thedomestic interview surveys also showed thatmany of the respondents had never used DAS.
When asked about reasons for dissatisfaction with
DAS, or their reasons for not using it, many
respondents
mentioned
thetroublesome
development of the internal system and theinconvenience faced before starting to use it, as
well as the wasted time, which means that they
avoided introducing DAS in the first place. It is
expected that DAS will become a simpler andeasier-to-use system in the future, and further●

efforts will be made to make the method of its use
widely known.
4

Matters to Which the Transitional
Measures under the PCT Regulations
Shall Be Applied

About 33% of respondents expected to use asystem in which the applicant would be able topreserve the international filing date for aninternational application that has missing parts orelements by correcting it by reference of themissing part or an element from an earlier
application. In the sense of increasing the optionsof relief for the applicants, etc., it may be
worthwhile to introduce this system.
Restoration of right of priority may beallowed based on the following criteria: (i) due
care has been taken; or (ii) the failure wasunintentional. Including the answers preferring
the latter, which is a more relaxed criterion, forthe system, about 60% of respondents expected
to use the system of restoration of priority rights.
Although deliberations are necessary to establish
a reasonable standard, it would be worthwhile tointroduce this system as part of relief measures.
5Standard for Selecting the International
Searching Authority When Filing PCTInternational Applications in English

Respondents
who
have
filed
PCT
applications with the JPO as a receiving office inEnglish have done so mainly for the following two
reasons: (i) the applicant had originally prepared
the description in English; or (ii) the applicant
intended to request that the EPO conduct aninternational search. A large percentage of
respondents mentioned as the reason for
designating EPO as the International Searching
Authority when filing PCT international
applications with the JPO as a receiving office inEnglish, their plans for having the applicationenter the national phase of a country within the
EPO's jurisdiction or high reliability in English
document searches. The filing of applications inEnglish, which have a multiplicity of uses, may be
expected to increase due to the acceleration of
the applicant's movement of right acquisition on
an international basis. Yet, even greater focus
shall be placed on the necessity to carry out
searches of English documents as an
International Searching Authority, as well as on
the efforts to support acquisition of international
4 ●IIP Bulletin 2013 Vol.22

rights, such as the preparation of an international
search report in English.
6

Expansion of Competence of the JPO as
International Searching Authority

Applicants who filed PCT international
applications with receiving offices of foreigncountries, including Asian countries, seem toselect the International Searching Authority inlight of the quality, promptness and language ofthe international search. However, the price of
the international search fee also seems to a big
reason for making such selection. The domestic
questionnaire surveys showed that there weremany demands for the JPO to serve as acompetent international search authority withrespect to international applications received byreceiving offices of Asian countries. At the sametime, as the advantages available by having the
JPO prepare international search report werementioned in the interview surveys conductedwith the patent office and companies in the
United States, it would be beneficial for theinternational society if the JPO responded tothese requests around the world, including
throughout the Asian region, as one of the JPO's
possible contributions to the international society.

Ⅴ Issues and Needs in theProcedural System of PCT
International Applications
1

Regarding the Utilization of Work
Products of and Opportunities ofAmendment at the International Phase

Taking into account that 61% of respondents
used the international search report to determine
the necessity to obtain rights at the relevant
designated countries, while about 25% of
respondents used the international search reportas a reference for evaluating the relevant PCTinternational application, most users of PCTinternational
applicationareutilizing
international search reports.
Meanwhile, 60% of respondents answeredthat they basically do not make amendments
under Article 19 of the PCT. Among the
respondents who used international search
reports to determine the necessity to acquire
rights in the relevant designated countries, 55%of them answered that they would not makeamendments under Article 19 of the PCT. Taking
into account the results of the domestic interview●

IIP Bulletin 2013 Vol.22

surveys, there seems to be a strong trend toward
avoiding amendments at the international phasebecause only claims can be amended under
Article 19 of PCT and the final decisions are leftto each country's office.
According to the results of the questionnaire
survey, 70% of respondents (including 13% of the
respondents that did not know the system itself)
answered that they do not use informal comments.
Almost the same results were obtained in thedomestic interview surveys. While informal
comments were used to attach any kind of opinion
to the application, many respondents were of theopinion that they hardly felt any advantage inusing them. The same opinions were heard in theinterviews conducted with foreign companies. To
make the system of informal comments effective,
it seems that a framework to promote the use of
the system is necessary.
Under the current system, while the JPO is
receiving about 38,000 international applications,the requests for international preliminary
examination it receives are relatively small, i.e.,
about 2,200 requests. Moreover, 58% of
respondents answered that they basically do not
request international preliminary examinations.
The most common case where international
preliminary examination was requested was when
it was necessary to make amendments under
Article 34 of the PCT, which accounted for 31% of
the total cases. The ratio of requests forinternational
preliminary
examination
byuniversities was higher than that of companies
and corporations, and some opinions were offeredthat this fact was due to the reason that at least
the major claim should be patentable in order to
use the foreign patent application support system
offered by the Japan Science and Technology
Agency (JST).
Based on the above-mentioned viewpoints, it
was found that while the applicants are aware of
the usefulness of the international search report
and written opinions, they do not uniformly makeamendments at the international phase on thecondition that the determinations to be made at
the national phase of each designated country
where the applicants intend to acquire rights vary.
However, some of the designated countries are
more likely to take into consideration theinternational
work
products,
especiallyinternational search reports, at the national phase.
Thus, the amendments to be made at theinternational phase have a certain significance inthat sense, and international work products suchas international search reports and written
5 ●opinions may play more than a minor role.
2

Regarding Supplementary International
Search and Collaborative International
SearchAccording to the domestic questionnaire
surveys, 75% of respondents answered that they
had no intention of using the system ofsupplementary international search, with lessthan 10% of respondents showing their intention
to use the system. Moreover, in the domestic
interview surveys, opinions were given such thatthe number of available supplementary searchauthorities was too small or that additional
searches were less necessary. Given that there
are few needs for a supplementary international
search that would serve as the second opinion forinternational search at the international phase,further improvements are expected to be made in
the system of supplementary international searchitself.
On the other hand, though positive opinions
were obtained from about 80% of respondents forthe use of collaborative international search,
many such opinions were given with conditions
regarding fees or other conditions such thattranslations would not be required. Therefore,
upon introducing this system in practice, theissues of language and cost burden would carryweight. In the domestic interview surveys, while
there remained some problems in language orfees, many respondents showed their interests inthe system on condition that the quality of searchwould be improved by the collective search by
offices of several countries, and such searchwould have a certain impact on the national phase
to be conducted in such countries. These results
show the expectation toward the international
search report, which is the first work productobtained at the international phase of the PCTinternational application system, to be respected
to a certain degree in the examination at thenational phase, and further expectations for ahigh-quality international search report using thecollaborative international search system at an
early stage of the international phase.
3

Needs forDrawings

Introduction

of

Color

Under the current PCT international
application system, drawings are to be submitted
in black and white in principle. Although the JPO
does not allow online submission of color●

drawings, about half of the respondents to thequestionnaire survey expressed their desire forthe introduction of color drawings. Nevertheless,unless color drawings become acceptable by atleast every receiving office, international
searching authority and international preliminary
examination authority, not to mention theInternational Bureau of WIPO, full acceptance ofcolor drawings under the PCT international
application system may cause unfairness between
an applicant who files his/her application with acountry where color drawings are accepted and an
applicant who files his/her application with acountry where color drawings are not accepted.
Therefore, the introduction of color drawings to
the PCT international application system should
be made with the right timing, allowing for sometime to closely examine the conditions of PCT
contracting states and international organizations.
4

Plans for Utilization of a Third-party
Observations System

According to the domestic questionnaire
survey, nearly 50% of respondents showed theirpositive intentions toward the use of a third-party
observations system. Thus, the JPO is expected
to take measures to make the procedures to use
the system widely known and thereby realize
future utilization of the system. At the same time,measures such as the harmonization of thehandling of provided information in theexamination as well as the dissemination of thesystem by the International Bureau of WIPO aftercollecting information on the utilization method ofeach country should be useful.

Ⅵ Issues and Needs Concerning
Provision and Acquisition ofInformation
1

Regarding the Method for Collecting
Information on the PCT International
Application System

While more than 80% of respondents
obtained information on procedural practices, etc.
through the JPO and WIPO websites, the second
major case for obtaining such information was atseminars and training sessions. This shows that,in addition to publication on websites, holding
seminars and training sessions in a timely manneris also important for making information known.
In the domestic interview surveys, criticalcomments were made that the JPO's website
6 ●IIP Bulletin 2013 Vol.22

posed difficulties in obtaining the target
information or finding any updates. As many
respondents referred to WIPO's website andespecially some utilized WIPO's PCT Applicant's
Guide, such guide is expected to be improved for
confirmation or research on systems of othercountries.
2

Regarding PCT Application National
Phase Entry Information

As a result of bringing in a new system to the
PCT international application system where aninternational application shall, in principle, bedeemed to have designated all the PCTcontracting states, it became more difficult tograsp or search states in which the international
application entered the national phase. In thisregard, while 60% of universities, incorporated
foundations, incorporated administrative agency
or patent firms answered that they did not obtainthe national phase entry information of otherapplications, only 25% of the companies did so.
The most popular method used by the companies
to obtain national phase entry information was
the Patentscope service provided by WIPO. As
the same answer was obtained in the interview
surveys conducted with foreign companies, WIPO
is expected to improve its capability of collecting
information from the designated offices. Whilethe information on the PCT national phase entry
into Japan is promptly provided to WIPO, in Japan,such information is provided in two categories:
publication and domestic republication. According
to a questionnaire survey conducted with respect
to the significance of the domestic republicationof the PCT international application, 60% of
respondents answered that such domestic
republication should be made in the form of abulletin as with the case of other publications, andnearly 90% of respondents answered that
information on such domestic republication isnecessary. It was clarified from the interview
surveys that these answers were based on thepresent situation where information provided in
the form of a bulletin is retrieved as a database
information source, and the item of domestic
republication of the PCT international application
is incorporated in the search system. Accordingly,
many of the respondents expressed theirconcerns that if the information on such domestic
republication was not provided in the form of abulletin, such information would be missed fromthe relevant search system.

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IIP Bulletin 2013 Vol.22

Ⅶ Needs for PCT International
Application System for Its
Further Utilization
Surveys were also carried out on items suchas the systems and operations newly proposed at
the PCT working groups of WIPO. Although these
items are mere proposals of the contracting statesand include items that lack materiality or
feasibility, it is possible that discussions will beheld for future introduction of such items.
Therefore, it should be worthwhile to grasp theideas of these items from the viewpoint of thesystem users for future discussions on the
introduction of these items.
A questionnaire survey was conducted on
the following seven items.
*
Disclosure of search record*
Formal integration of Patent Prosecution
Highway into the PCT*
Making the written opinion of theinternational searching authority available tothe public at the time of international
publication*
Preparation of international search report
and written opinion after international
publication*
Additional search at the time of international
preliminary examination*
Accelerate processing option in theinternational phase for an additional fee(accelerated examination)*
Modification of document category ininternational search report
Among these items, there were highdemands for the items “Disclosure of searchrecord" and "Formal integration of patent
prosecution highway into the PCT"; more thanhalf of the respondents expressed their hopes orpreference for these items to be realized. On theother hand, while more than 80% of respondents
deemed the item "Making the written opinion of
the international searching authority available tothe public after international publication"
preferable or worth considering, the same ratio of
respondents deemed the item "Preparation ofinternational search report and written opinion
after international publication" preferable or
worth considering. Moreover, some of the items
showed difficulty in univocally capturing theusers' needs.

Ⅷ Conclusion
In this research study, the focus was mainly
7 ●placed on understanding the state of use of the
PCT international application system in Japan andexamining mainly the procedural issues found in
relation to the PCT international application
system.
During this research study, discussions were
held on improving the PCT application system on
an international basis, such as at the 5th sessionof the PCT working group, and moreover, theInternational Bureau of WIPO began providing a
new online system called ePCT, where various
procedures and case management can be madeonline. These movements led to an assumptionthat rapid development of new tools or majorchanges in the system are to be made withrespecttointercommunication
or
data
communication between the users and patentoffice or the International Bureau of WIPO andmultiple patent offices. Moreover, as discussions
are held in the patent offices of other countries toprovide cooperation to WIPO with respect toePCT, there is an increasing necessity to holddiscussions at the JPO to flexibly respond to thechanges in the environment.
Furthermore, in light of Japan’s situation,
efforts had been made to improve convenience inthe procedures of the PCT international
application system in conjunction with thisresearch study. For example, in October 2012, a
new system was introduced where, even if there
are any missing parts or elements in aninternational application that claims priority, theapplicant can preserve the international filingdate if he/she corrects the international
application by reference of the missing parts orelements from an earlier application, and thereby,
the application of the provision of transitional
measures pursuant to the Regulations under the
PCT is withdrawn. In addition, at the current
Patent System Subcommittee under theIntellectual Property Policy Committee of theIndustrial Structure Council, not only the
introduction of the system of restoration ofpriority rights is discussed but also matters wereput on the agenda such as allowing international
filing fees to now be paid by patent revenue
stamps or in advance. These situations lead to
expectations
thatconveniencewillbedramatically improved for PCT international
application procedures at the JPO.
This research study clarified that many
Japanese users have strong desires for aneasy-to-use payment procedure for fees anduser-friendly online application software asmeans to resolving the procedural issues related●

to the PCT international applications. Moreover,regarding the issues for the overall PCT
application system, there were demands onmatters such as the expansion of PCT application
national phase entry information as well as
additional
mechanisms
forprovisionof
information on the practices of designatedcountries. Therefore, discussions are expected tocontinue in order to improve the procedural
issues and problems found in the PCTinternational application system through thisresearch study. Also, further deliberations are
expected to be held on matters requiring
discussions and arrangements on an international
basis at international forums mainly at WIPO to
improve the procedural convenience of thesystem users.
(Senior Researcher: Shuichi TAMURA)

8 ●IIP Bulletin 2013 Vol.22