Implications of the Reservation under Article 64.1 of Chapter II
- Introduction
Uruguay has decided to accede to the Patent Cooperation Treaty (PCT), a significant step towards integration into the international patent protection systems.
The corresponding deposit will become effective on 7 October 2024 and three months later the system will be operational in our country, thus Uruguay will become an eligible jurisdiction for the entry and receipt of PCT applications.
However, this accession has been given under the Reservation of Article 64.1 of Chapter II of the PCT, which has several relevant implications for Uruguayan applicants and the national patent system, which will be analysed below.
- Context of the PCT Chapter II Reservation
Article 64 of the PCT allows Member States to make reservations to Chapter II, which regulates the international preliminary examination procedure. This provision stems from the original rules of the Treaty, but has become less and less relevant due to the evolution of the PCT system and reforms in national patent systems, which have provided alternatives that reduce the need for international preliminary examination.
In the early days of the PCT, apart from the international search report (Chapter I), the only additional source of technical information available to applicants was the International Search Report (Chapter II).
However, the Chapter II mechanism remains an additional safeguard for applicants, allowing them another optional instance to enhance the potential for success of the patent application filed.
Some countries initially had reservations about Chapter II, due to the novelty of the system and uncertainties about its operation, or because of national laws that did not provide for substantive examination of patent applications. However, these reservations were eventually withdrawn. The last reservation to Chapter II was withdrawn in 1997, and currently no PCT Member State maintains a reservation in force on this Chapter.
- Implications of the Reservation for Uruguay
By acceding to the PCT with the reservation to Chapter II, Uruguay will become the only country with such a reservation among the future 158 Contracting States. This could generate a negative perception among users of the system and other Member States.
In practice, the reservation would mean that Uruguayan applicants would not be able to use the international preliminary examination procedure, which represents a competitive disadvantage and a form of self-discrimination against Uruguayan nationals.
For example, a Uruguayan small or medium-sized enterprise (SME) that receives a negative international search report and a written opinion under Chapter I of the PCT would not be able to opt for international preliminary examination to amend its application and improve its chances of obtaining a patent.
It should be noted that this additional option can be crucial to speed up the prosecution of the application in the national phase and is especially valuable in the framework of agreements such as the Patent Prosecution Highway (PCT/PPH), for which a positive report is required.
Therefore, even though, as mentioned above, the importance of Chapter II has diminished due to the issuance of the written opinion together with the international search report in Chapter I, preventing Uruguayan nationals from having recourse to this option could limit their ability to take full advantage of the benefits of the PCT system.
- Final Considerations
The current reality shows that there is no connection between making a reservation to Chapter II and the protection of domestic industries. Indeed, no State has made use of this reservation for that purpose, while doing so could weaken the competitive position of Uruguayan applicants in the international arena.
In conclusion, the big question that arises with the Reservation is whether it really brings any tangible benefit or whether, on the contrary, it limits the access of Uruguayan citizens to key tools of the PCT system.
