The International
Patent System
PCT recent and future developments
Philippe Baechtold, Acting Director, PCT Operations Division,
WIPO
PCT Coverage
1978
Today
The International
Patent System
PCT Applications
Growth rate (%)
PCT applications
200,000
150,000
100,000
50,000
0
-4.8
.
15.5
11.0
14.7
17.4
17.0
20.5
18.3
17.5
13.9
22.1
16.1
2.0
4.4
6.4
11.5
9.4
6.9
2.1
5.8
11.0
7.1
5.1
1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013
International filing year
2013: 205,300 PCT
applications (+5.1%)
Forecasting +4% in 2014
Main PCT filing countries: 2013
The International
Patent System
International applications received
in 2013 by country of origin
1-9
10 - 99
100 - 999
1,000 - 9,999
10,000 - 60,000
Top 15 countries responsible for over 90% of IAs
No data
The International
Patent System
PCT International Searching Authorities
The ISAs are the following 19 Offices*:
■ Australia
■ Austria
■ Brazil
■ Canada
■ Chile (not yet operating)
■ China
■ Egypt
■ Finland
■ India
■ Israel
■ Japan
■ Republic of Korea
■ Russian Federation
* Office of filing decides
on which ISAs are
■ Spain
available
■ Ukraine (not yet operating)
■ United States of America
■ European Patent Office
■ Nordic Patent Institute
The International
Patent System
PCT Statistics: 2013
The International
Patent System
Top PCT Applicants 2013
() of published
PCT applications
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
Panasonic—JP (2881)
ZTE—CN (2309)
Huawei—CN (2094)
Qualcomm—US (2036)
Intel—US (1852)
Sharp—JP (1840)
Bosch—DE (1786)
Toyota—JP (1696)
Ericsson—SE (1467)
Philips—NL (1423)
Siemens—DE (1323)
Mitsubishi Electric—JP (1312)
Samsung Electronics—KR (1193)
NEC—JP (1190)
LG Electronics—KR (1170)
Fujifilm Corporation (1008)
Shenzhen China Star Optoelectronics—CN (916)
Sony—JP (915)
The International
Hitachi—JP (841)
Patent System
Nokia—FI (807)
Top University PCT Applicants 2013
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
University of California (US)
MIT (US)
Columbia University (US)
University of Texas (US)
Harvard University (US)
Johns Hopkins (US)
Korea Advanced Institute of Science and Technology (KR)
Leland Stanford University (US)
Cornell University (US)
Cal Tech (US)
University of Florida (US)
Postech Foundation (KR)
Seoul National University (KR)
Peking University (CN)
Nanyang Technical University (CN)
University of Tokyo (JP)
Isis Innovation Limited (GB)
University of Pennsylvania (US)
The International
University of Michigan (US)
Patent System
National University of Singapore (SG)
Some challenges the PCT faces
■ Maintaining the central role of the PCT
■ Building trust between patent offices, so duplicative
international phase and national phase processing can be
reduced
■ Improving the quality of international work products
■ Language issues
Asian language filings
Supplementary search
■ Developing countries (“how can we realistically benefit
from PCT?”)
Top 15 countries responsible for over 90% of IAs
Top 30 countries filed over 95% of IAs
The other 5% of filings are spread across over 110
countries
The International
Patent System
Recent PCT developments
■ Third Party Observation system
■ Indication of availability for license
■ PCT-PPH
■ Misleading
■ ePCT (later)
The International
Patent System
Third Party Observation System
■ Allows third parties to submit prior art observations
relevant to novelty and inventive step as to published
PCT applications
 Goal: Improve patent quality--give national offices (and PCT Authorities)
better/more complete information on which to base their decisions
■ Web-based system using in PATENTSCOPE or via
ePCT public services
■ Free
■ Submissions possible until the expiration of 28 months
from the priority date
■ Applicants may submit comments in response to
submitted observations until the expiration of 30 months
from the priority date
■ Anonymous submission of third party observations
possible
The International
Patent System
Indication of availability for license
■ PCT applicants can indicate that the invention disclosed in the
application is available for license
 How? By submitting a “licensing request” (see PCT Form PCT/IB/382)
directly to the IB
 When? At the time of filing or within 30 months from the priority date
 Cost? Free
 Applicants can file multiple licensing requests or update previously
submitted ones (within 30 months from the priority date) and such
requests may be revoked by the applicant at any time, that is, also after
30 months from the priority date
■ Submitted licensing indications made publicly available after
■
■
international publication of the application on PATENTSCOPE
under “Bibliographic data” tab with a link to the submitted
licensing request itself
International applications containing such licensing indication
requests can be searched in PATENTSCOPE
Most use thus far from universities/research institutions
The International
Patent System
PCT-PPH (1)
■ Accelerated national phase examination based on positive work
■
product of PCT International Authority (written opinion of the ISA
or the IPEA, IPRP (Ch I or II))
MANY individual PCT-PPH pathways: information on the PCT
Website: http://www.wipo.int/pct/en/filing/pct_pph.html
■ PCT-PPH user experience/strategy:
http://www.youtube.com/watch?v=XnSShsUHXss (Carl Oppedahl video)
The International
Patent System
PCT-PPH (2)
Grant rate
1st action allowance
rate
Average Pendency
from PPH Request
to First Office Action
{months}
Average Pendency
from PPH Request
to Final Decision
{months}
Average Number of
Office Actions
JP
US
KR
CA
94
90.3
87.1
92
(71)
(53)
(67.5)
(65)
63
19.9
31.16
42
(16)
(17.3)
(10.5)
(4.6)
2.4
5.2
3.1
2.0
(13)
(18.0)
(13.2)
(15.8)
4.1
14.1
6.3
3.8
(22)
(29.0)
(19.1)
(35.1)
0.46
TBD
0.78
0.6
(1.1)
(2.4)
See http://www.jpo.go.jp/ppph-portal/statistics.htm
() = all applications (PPH and non-PPH)
(1.6)
The International
Patent System
PCT-PPH (3)

Global Patent Prosecution Highway (GPPH) pilot began 6 January 2014,
using single set of qualifying requirements, and includes PCT reports

Framework provisions: http://www.jpo.go.jp/ppph-portal/globalpph.htm
The International
Patent System
The International
Patent System
The International
Patent System
WIPO warnings
http://www.wipo.int/pct/en/warning/pct_warning.html
WIPO continues various efforts concerning such
notifications, including:




keeping the warning page up to date with newly submitted examples
WIPO letters to offices requesting assistance and cooperation
WIPO letters to IP associations requesting that all clients be warned
WIPO letters to banks doing business with the entities behind these
notifications
 working with government agencies in countries where these entities are
based
Help us by making complaints to appropriate consumer
protection authorities in your country and/or state/locality
The International
Patent System
Future PCT developments
■ Amended PCT Regulations—July 2014
■ PCT/WG 2014
■ Collaborative PCT searche
■ PCT further improvements
The International
Patent System
Amended PCT Regulations—July 2014
■ 2 sets of amendments approved by PCT Assembly 2013
 Amend PCT Rules 66 and 70 to require IPEAs to conduct
top-up searches during IPE
 Delete PCT Rule 44ter and amend PCT Rule 94 to make
WO/ISA available to the public via PATENTSCOPE at
international publication
 These amendments to the PCT Regulations will enter into
force July 1, 2014, for demands for IPE filed on or after
that date, and for applications filed on or after that date,
respectively
The International
Patent System
PCT/WG 2014
■ Review of revised US/UK “20/20” proposals
■
■
■
■
■
■
■
 Limited Ch. I amendments
 Self-service changes
 Simplifying withdrawal
 Mandatory response to negative written opinion
 Formal PCT integration of PPH
 International/national phase linkage
 National phase fee reductions
Appointment of International Authorities
Collaborative international search
Color drawings
Amend Schedule of Fees (delete PCT-EASY fee reduction)
Revision of ST.14
Third party observations report & changes
Fee reductions
The International
Patent System
Collaborative PCT Search
■ PCT past discussions
 PCT Collaborative Search (and Examination) were important elements
of initial “PCT Roadmap” proposal presented at the 2009 PCT WG
 Most recent status reports at 2013 PCT MIA (PCT/MIA/20/4) and 2013
PCT WG (PCT/WG/6/22 Rev.)
■ 2nd IP5 pilot
 In very large % of pilot cases (from 40% to almost 90%), collaboration
between examiners resulted in new citations in ISR
 In vast majority of pilot cases, examiners perceived significant
improvement in quality as a result of collaboration, and would trust
search and examination results produced via collaboration in
national/regional phases
■ 3rd pilot
 Being planned
The International
Patent System
ePCT
The International
Patent System
What is ePCT?
■ Online portal that provides PCT services for both
applicants and Offices
■ Provides secure and direct electronic access
to/interaction with PCT applications maintained by the
International Bureau
■ Available since May 2011
■ ePCT-Filing - Web-based filing of PCT applications
(since October 2013)
■ Applicants can conduct many PCT transactions
electronically with the International Bureau
The International
Patent System
26
ePCT for Offices
■ Hosted servers allow any RO to offer eFiling
■ Role-based security – users can be assigned
RO/ISA/IPEA roles; local administration option
■ Browser-based Office systems allow any RO to offer
electronic processing
■ Some procedural services for ISA/IPEAs
■ 2014 - 2015 Development highlights
Multilingual interface
Improved tools and workflow
Designated Office functions
The International
Patent System
ePCT – Portal (Offices only)
■ Operational Accounts - RO/ISA user
 one per RO/ISA Officer
 use to browse applications
 upload urgent documents (and other (all)
documents (no PCT-EDI))
■ Create a WIPO account with certificate then
Contact WIPO to notify the role, account name and
owner (we check)
Accounts are named and must be used accordingly
The International
Patent System
ePCT Portal Office functions
Offices
RO/ISA/IPEA File inspection
(office, applicant and IB)
RO - Transmit new IA to IB
RO/ISA - Upload documents to IB
RO - Create PCT RO forms
RO/ISA – Office Actions
29
ePCT for Applicants
■ eFiling compatible with interoperability protocol (can file to
any RO with conventional servers)
■ Flexible, secure access rights model
■ All main IB functions supported (except pdocs originally
supplied on paper)
■ Transmission of documents to other participating Offices
(browser or PCT-EDI delivery)
■ Integration with DAS
■ 2014 - 2015 Development highlights
 Multilingual interface
 XML/docx filing
The International
Patent System
ePCT modes
■ ePCT private services
 Authentication using both a WIPO User Account
(username and password) and a digital certificate
 Access to full range of services and functions
 Access to PCT applications filed as of January 1, 2009,
including before publication
■ ePCT public services
 Only a WIPO User Account (username and password) is
required
 Limited functionality (document upload and third party
observations) for all PCT applications regardless of
filing date
The International
Patent System
ePCT-Filing
■ Web-based filing of PCT applications filed in any
language
■ Real-time validation of data against the electronic
processing system of the International Bureau
■ Available to all PCT applicants
■ For filings with RO/IB and other participating Offices
■ Request form can be prepared in all PCT languages
(except for Arabic which will be added in the future)
■ Specification in PDF format (text-based formats coming
soon)
The International
Patent System
eOwnership of PCT applications
■ Right to access and manage a PCT application in ePCT
■ Process is automatic when using ePCT-Filing
Access rights can be pre-assigned
■ If ePCT-Filing is not used, additional steps are required
to take eOwnership
The International
Patent System
Types of Access Rights
■ eOwner
Complete control over all aspects of the PCT
application
■ eEditor
Can do everything except assign access rights
■ eViewer
“Look” but don’t “Touch”
■ Full history of all access rights modifications is available
The International
Patent System
Some working features
■ Workbench
 List of all PCT applications to which you have access
(eOwner, eEditor, eViewer)
■ File View
 Access to the PCT file maintained by the International
Bureau (documents plus up-to-date bibliographic data)
■ Notifications
 Preferences and filters
■ My history
 All actions that a user has performed in ePCT
■ Portfolios
 User-defined personal folders for filing and grouping PCT
applications
The International
Patent System
Actions
■ “Actions” can be submitted to the International Bureau
and to the IPEA (Chapter II demand))
The International
Patent System
Upload Documents
■
■
■
Documents (PDF) can be uploaded for all PCT applications that are available in
the electronic processing system of the International Bureau
Simple, secure alternative to sending documents by mail or fax
Types of document selectable for upload depend on the recipient selected
The International
Patent System
Time Line
■ Date and time in Geneva, Switzerland, is displayed at
the top of the screen to facilitate awareness of deadlines
■ Graphical representation of PCT time limits
■ Summary of key dates
■ E-mail alerts for most of these time limits can be set up
in Notification Preferences
The International
Patent System
Some statistics
Offices:
■ 42 different offices connected; 6000+ documents
uploaded (covering initial filings, pdocs, subsequently
filed documents and search related documents)
■ 9000+ IAs accessed
■ 16000+ documents accessed
Applicants:
■ 12000+ users connected (with higher percentage on
public services (document upload))
■ 450000+ docs downloaded, 28000+ docs uploaded
■ 23000+ IAs accessed in private services
■ 700+ IAs filed with ePCT Filing
The International
Patent System
Future ePCT developments (1)
■ Aiming for fully hosted RO service by end 2014
■ User interface in all PCT languages
■ Progressive extension of ePCT-Filing to other interested
Offices in their various capacities (RO, ISA, SISA, IPEA,
DO, EO)
■ EFS-Web mode for filings with RO/US
■ ‘Cloning’ of PCT applications
■ Real-time online credit card payment to the International
Bureau
■ Text-based formats for the specification (currently limited
to PDF)
The International
Patent System
Future ePCT developments (2)
■ Single specification document
■ Additional draft options
Declarations
Third Party Observations in ePCT public services
■ Same day corrections for ePCT filings
■ National phase entry function through ePCT could be
added (PCT WG next week)
■ Last but not least: ePT
The International
Patent System
The International
Patent System
Thank you!
philippe.baechtold@wipo.int