PCT Update 2014
November 2014
Mr. Quan-Ling Sim
Head, PCT Outreach and User Relations Section
2
Outline
Membership and statistical update
Decisions of the PCT Assembly
ePCT
Certain PCT features and other matters
Future development of the PCT System
Information and training
3
MEMBERSHIP AND
STATISTICAL UPDATE
4
PCT Contracting States (148)
5
Countries not yet PCT Contracting States
Afghanistan
Andorra
Argentina
Bahamas
Bangladesh
Bhutan
Bolivia
Burundi
Cambodia
Cape Verde
Democratic Republic of Congo
Djibouti
Eritrea
Ethiopia
Fiji
Guyana
Haiti
Iraq
Jamaica
Jordan
Kiribati
Kuwait
Lebanon
Maldives
Marshall Islands
Mauritius
Micronesia
Myanmar
Nauru
Nepal
(Membership of the United Nations is 193 countries)
Pakistan
Palau
Paraguay
Samoa
Solomon Islands
Somalia
South Sudan
Suriname
Timor-Leste
Tonga
Tuvalu
Uruguay
Vanuatu
Venezuela
Yemen
(45)
6
International Authorities
National Institute of Industrial Property (Chile) was
appointed an International Searching and Preliminary
Examining Authority (ISA/IPEA) by the PCT Assembly in
October 2012
Chile has started operating as an ISA/IPEA as from
22 October 2014
Twenty Offices now hold this status including most
recently Ukraine (2013) and Singapore (2014)
7
PCT Applications (2013)
250000
205,300 applications
200000
5,1 % increase over 2012
150000
100000
50000
0
78
80
82
84
86
88
90
92
94
96
98
00
02
04
06
08
10
12
8
Filings by country of origin (2013)
60000
Examples of increases in
certain national Offices
50000
CN: +15.6 %
US: +10.8 %
SE: +10.4 %
40000
30000
20000
10000
0
US
JP
CN
DE
KR
FR
GB
CH
NL
SE
9
Fields of technology (2013)
Electrical Engineering
35.56%
Chemistry
22.67%
Mechanical Engineering
19.31%
Instruments
15.98%
Other fields
6.48%
0
20000
40000
60000
PCT applications
80000
10
Top PCT applicants (2013)
1. Panasonic--JP (2881)
2. ZTE--CN (2309)
3. Huawei--CN (2094)
4. Qualcomm--US (2036)
5. Intel--US (1852)
6. Sharp--JP (1840)
7. Bosch--DE (1786)
8. Toyota--JP (1696)
9. Ericsson--SE (1467)
10. Philips--NL (1423)
11. Siemens--DE (1323)
12. Mitsubishi Electric--JP (1312)
13. Samsung --KR (1193)
14. NEC--JP (1190)
15. LG Electronics--KR (1170)
16. Fujifilm --JP (1008)
17. Shenzhen--CN (916)
18. Sony--JP (915)
19. Hitachi --JP (841)
20. Nokia--FI (807)
11
DECISIONS OF THE PCT
ASSEMBLY
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Decisions of the PCT Assembly (1)
Appointment of the Intellectual Property Office of
Singapore (IPOS) as an ISA/IPEA
Effective from a future date to be notified by the Office
Adopted a modified procedure for the appointment of
future International Authorities
13
Decisions of the PCT Assembly (2)
Restoration of the right of priority (after 1 July 2015)
Amendment of PCT Rules 49ter and 76
In cases of early national phase entry, restoration
requests are to be made within 1 month from
receipt of entry request
Copy of General Power of Attorney (after 1 July 2015)
Amendment of Rule 90.5(d)
Legal basis that allows the International Bureau to
require a copy of a general power of attorney to
process a withdrawal
14
Decisions of the PCT Assembly (3)
Editorial correction of rule reference in PCT Rule 90.3
concerning agents and common representatives
Schedule of fees
Reduction for PCT-EASY filings discontinued as from
1 July 2015
New means for determining the 90% filing fee
reduction for natural persons from certain States
based on a combined criteria of income and
innovation
15
ePCT
THE GLOBAL PORTAL FOR MANAGING PCT
APPLICATIONS
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ePCT Private Services
Full suite of functions with authenticated access
Login with WIPO user account and digital certificate
Management of secure access rights between
associates
Online access to PCT applications
“Actions” to conduct PCT transactions
Web filing (ePCT-Filing) with participating receiving
Offices including RO/IB, RO/AT, RO/SE
17
ePCT Public Services
Limited range of functions
Non-authenticated access
Login via WIPO user account
Submission of post-filing documents
Third party observations
18
Practical Tips
Use ePCT private services
Digital certificates for authentication are available
free-of-charge from WIPO
Use Actions to conduct transactions such as Rule 92bis
changes, filing of Chapter II demands, etc.
Prepare documents electronically and sign them using a
text string signature, e.g., / John Smith /
Print to PDF and submit file in ePCT
19
CERTAIN PCT FEATURES AND
OTHER MATTERS
20
WIPO Pearl
Multilingual terminology portal which gives access to
scientific and technical terms derived from patent
documents
Developed in-house by PCT translation experts
Available in all ten PCT languages
Helps promote accurate and consistent use of terms
across different languages making it easier to search
and share scientific and technical knowledge
All content validated with reliability scores
Integrated with PATENTSCOPE
21
Third Party Observations
Online system that allows third parties to submit and
characterize prior art relevant to novelty and inventive
step
Limited to the international phase
Copies of citations should be included
Length of text permitted for observations has been
increased
Additional arguments may be uploaded as PDF
documents, e.g., where formulae are required
22
Licensing
PCT applications may be highlighted as being available
for license on PATENTSCOPE
On-line action in ePCT
Form PCT/IB/382
Can be submitted at any time prior to the expiration of 30
months from the priority date
Effective means of advertising and identifying potential
licensees
23
Supplementary International Search
Optional feature of the PCT System
Performed by a different International Authority
Useful for searches in different language collections
In some instances, can also be used to search subject
matter not searched by the original International
Searching Authority, e.g., methods of medical treatment
Service provided by AT, EP, FI, SE, RU and XN
24
PCT-PPH
Accelerated national phase processing on the basis of a
positive PCT product
Introduction of Global Patent Prosecution Highway
(PPH) pilot in January 2014
Single set of qualifying requirements that simplifies
the existing PPH network so that it is more accessible
to users
Includes PCT work products
Links
http://www.wipo.int/pct/en/filing/pct_pph.html
http://www.jpo.go.jp/ppph-portal/index.htm
25
PCT Direct
New service offered by the European Patent Office
(EPO) as of November 1, 2014
Provides a link between a PCT application filed with
RO/EP and an earlier-filed priority application searched
by the EPO
During the PCT procedure, applicants can address
patentability issues raised in the priority application
before ISA/EP
Further details can be found on the EPO website
(http://www.epo.org/law-practice/legal-texts/officialjournal/2014/09/a89.html)
26
Misleading WIPO Invitations
WIPO has issued warnings regarding misleading
invitations for payment of fees
Be vigilant and don’t be deceived by invitations which
look similar to those issued by WIPO
Bring to the attention of WIPO and to consumer
protection authorities instances of misleading invitations
http://www.wipo.int/pct/en/warning/pct_warning.html
27
Arbitration and Mediation Center Fee
Reductions
25% fee reduction for the Arbitration and Mediation
Center (AMC) where at least one party to the dispute
has been named as an application or inventor in a
published PCT application
Fee calculator
http://www.wipo.int/amc/en/calculator/adr.jsp
28
FUTURE DEVELOPMENT OF
THE PCT SYSTEM
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PCT Working Group
Technical committee that meets on an annual basis
Discusses a range of policy, operational, and legal
matters
Some of the work results in proposals to amend the PCT
Regulations which are submitted to the PCT Assembly
for decision
30
Examples of matters considered by the
PCT Working Group (1)
ePCT developments
Color drawings
Fee reductions for small and medium-sized enterprises,
universities, not-for-profit research institutes
Coordination of technical assistance
Transmission of search and classification data to ISAs
by receiving Offices
Availability of non-patent literature databases
Incorporation by reference procedure
PCT 20/20 improvements
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Examples of matters considered by the
PCT Working Group (2)
Transmission of electronic search copies (eSearchCopy)
Revision of WIPO Standards and interface with the PCT
Liberalization of the right to practice before the receiving
Office of the International Bureau
Formal integration of PPH into the PCT
Excuse provisions for failures in electronic
communications
Time zones used for electronic filing
32
INFORMATION AND TRAINING
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PCT Information and Training
PCT Brief
PCT Newsletter
Learn the PCT video series
PCT Distance Learning Course in all ten PCT languages
PCT Webinars
Free updates on developments in PCT procedures
Available on request for companies or law firms
On-site PCT seminars and training sessions
Annual advanced PCT seminar at WIPO in October
34
Need more information?
PCT Resources
http://www.wipo.int/pct/en/
PCT Information Service
Telephone: (+41-22) 338 83 38
Facsimile: (+41-22) 338 83 39
E-mail: pct.infoline@wipo.int
35
Recording and Survey
Today’s webinar and slides will be available for
download from the PCT webinar page over the next few
days:
http://www.wipo.int/pct/en/seminar/webinars/index.html
Survey on today’s webinar presentation