PCT Update 2015
November 12, 2015
Mr. Quan-Ling Sim
PCT Outreach and User Relations Section
2
Outline
Membership and statistical update 2014
Decisions of the PCT Assembly October 2015
ePCT
Certain PCT features and other matters
Future development of the PCT System
Information and training
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
Pakistan
Palau
Paraguay
Samoa
Solomon Islands
Somalia
South Sudan
Suriname
Timor-Leste
Tonga
Tuvalu
Uruguay
Vanuatu
Venezuela
Yemen
(45)
6
ISA/IPEA status (1)
Twenty one (21) Offices currently hold the status as an
ISA/IPEA
Singapore started operating as an ISA, SISA, and IPEA
as from 1 September 2015
Supplementary search fee: CHF 1,571
Accepted languages: English and Chinese
Scope of documentation: PCT minimum
documentation, and at least the documents in English
and Chinese held in its search collection
7
ISA/IPEA status (2)
The Visegrad Patent Institute (VPI) was appointed by the
PCT Assembly in October 2015
Czech Republic, Hungary, Poland, Slovakia
Notional commencement date of 1 July 2016
Ukraine (appointed in 2013) not yet operational
8
PCT Applications (2014)
214,500 applications
250000
4.5 % increase over 2013
200000
150000
100000
50000
0
78
80
82
84
86
88
90
92
94
96
98
00
02
04
06
08
10
12
14
9
Filings by country of origin (2014)
Examples of increases in
certain national Offices
70000
CN: +18.7 %
US: +7.1 %
UK: +9 %
60000
50000
40000
30000
20000
10000
0
US
JP
CN
DE
KR
FR
GB
NL
CH
SE
10
Fields of technology (2014)
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
11
Top PCT Applicants (2014)
1. Huawei (CN) – 3442
11. Samsung (KR) – 1381
2. Qualcomm (US) – 2409
12. Toyota (JP) – 1378
3. ZTE (CN) – 2179
13. Bosch (DE) – 1371
4. Panasonic (JP) – 1682
14. Sharp (JP) – 1227
5. Mitsubishi Electric (JP) – 1593
15. NEC (JP) – 1215
6. Intel (US) – 1539
16. LG Electronics (KR) – 1138
7. Ericsson (SE) – 1512
17. Shenzhen (CN) – 1086
8. Microsoft (US) –1460
18. Fujifilm (JP) – 1072
9. Siemens (DE) – 1399
19. United Technologies (US) – 1013
10. Philips (NL) –1391
20. Hitachi (JP) – 996
PCT Union Assembly
October 5-14, 2015
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Entry into force on 1 July 2016
Request by applicants to omit confidential and private
information
Transmittal by the receiving Office to the International
Bureau of documents supporting requests for the
restoration of the right of priority
Force majeure for generalized IT failures
Languages of correspondence in ePCT to include all ten
publication languages
14
Entry into force on 1 July 2017
Receiving Offices to forward earlier search and/or
classification results to the ISA
Designated Offices to send timely information to the IB
concerning national phase entries, national publications,
and grants (Offices encouraged to comply earlier if
possible)
15
Other decisions
Took note of a report on the review of the
Supplementary International Search system; next review
in 2020
Deferred discussion on currency “hedging” to guard
against loss of income
http://www.wipo.int/meetings/en/details.jsp?meeting_id=
36343
ePCT for Applicants
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ePCT (1)
The global portal for managing PCT applications
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
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ePCT public services (2)
Create a WIPO User Account using the WIPO Accounts
service
 https://pct.wipo.int/wipoaccounts/ePCT/public/register.jsf
Documents (PDF format) can be uploaded to the IB for all
PCT applications held in the IB’s electronic system – a
practical alternative to fax and paper; e-mail should NOT be
used for submitting documents
User Guide for Document Upload available
 http://www.wipo.int/export/sites/www/pct/en/epct/pdf/transit
ion__to_epct_for_document_upload.pdf
19
ePCT private services (3)
http://pct.wipo.int/epct
Obtain/Upload a “supported” certificate for additional
authentication
WIPO digital certificate
EPO digital certificate (smart card)
JP SECOM digital certificate
Note: USPTO digital certificates are NOT supported
20
ePCT best practices (4)
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, Article 19
amendments, etc.
Prepare documents electronically and sign them using a
text string signature, e.g., / John Smith /
Print to PDF and submit file in ePCT
21
Future developments (5)
Progressive extension of ePCT-Filing to other
receiving Offices
Support alternative filing methods in ePCT-Filing,
e.g., download package
Extension of online payment function to other types of
fees post-filing
Template in ePCT public services for preparing
requests under Rule 92bis
Certain PCT features and other
matters
23
WIPO Pearl
Launched in September 2014
Multilingual terminology portal which gives access to scientific
and technical terms derived from patent documents
Available in all ten PCT languages
Helps to promote accurate and consistent use of terms across
different languages and makes it easier to search and share
scientific and technical knowledge
All content validated with reliability scores
Integrated with PATENTSCOPE
Further details can be found at:
www.wipo.int/wipopearl/search/home.html
24
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
Length of text permitted for observations has been
increased
Additional arguments may be uploaded as PDF
documents, e.g., where formulae are required
Submissions possible until the expiration of 28 months
from the priority date
25
Licensing
Upon request, 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
Free of charge
26
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, RU,SE, SG and XN
27
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
28
PCT Direct (1)
New service offered by the
EPO since 1 November 2014, and
Israel Patent Office (ILPO) since 1 April 2015
During the PCT procedure, applicants can address
patentability issues raised in the search opinion established
by the EPO or ILPO for the priority application
29
PCT Direct (2)
Aims at improving the efficiency and quality of the
procedure before the ISA by allowing the applicant to file
informal comments on the earlier search
Further details can be found on the EPO website:
http://www.epo.org/law-practice/legal-texts/officialjournal/2014/09/a89.html
Further details can be found on the ILPO website:
http://index.justice.gov.il/En/Units/ILPO/Departments/PC
T/News/Pages/PCTDirect.aspx
30
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
Examples of such misleading invitations can be viewed
on our website at the following link:
http://www.wipo.int/pct/en/warning/pct_warning.html
31
Arbitration and Mediation Center Fee
Reductions
Independent and impartial body that offers alternative
dispute resolution options for the resolution of
commercial disputes between private parties (time and
cost efficient alternatives to litigation)
25% lifetime reduction on AMC’s registration and
administration fees where at least one party to the
dispute has been named as an application or inventor in
a published PCT application (no relationship to the
dispute is required)
Fee calculator
http://www.wipo.int/amc/en/calculator/adr.jsp
Future developments of the
PCT system
33
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
34
Examples of matters considered by the
PCT Working Group
Agenda of May 2015 meeting
 23 documents, available in the 6 official UN languages
 http://www.wipo.int/meetings/en/details.jsp?meeting_id=35
593
Summary by the Chair:
 http://www.wipo.int/edocs/mdocs/pct/en/pct_wg_8/pct_wg_
8_25.pdf
Information and training
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PCT information and training
PCT Highlights
http://www.wipo.int/pct/en/highlights/index.html
PCT Newsletter http://www.wipo.int/pct/en/newslett/
Learn the PCT videos http://www.wipo.int/pct/en/training/index.html
PCT Distance Learning Course in all ten PCT languages
http://www.wipo.int/pct/en/distance_learning/index.html
PCT Webinars http://www.wipo.int/pct/en/seminar/webinars/index.html
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
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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
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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