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PCT – Today and TomorrowAustralia 2010IPTA
Sydney May 24Perth May 25Adelaide May 26Melbourne May 27Brisbane May 28
Matthew BryanDirector, PCT Legal Division
WIPO
PCT Today and Tomorrow
PCT – Today and Tomorrow
PCT Trends and ChallengesRecent PCT DevelopmentsFuture of the PCT
PCT Today and Tomorrow
=PCT
AlbaniaAlgeriaAngolaAntigua and BarbudaArmeniaAustraliaAustriaAzerbaijanBahrainBarbadosBelarusBelgiumBelizeBeninBosnia and HerzegovinaBotswana BrazilBulgariaBurkina FasoCameroonCanadaCentral African RepublicChadChileChina Colombia Comoros Congo
Costa RicaCôte d'IvoireCroatiaCubaCyprusCzech RepublicDemocratic People's
Republic of KoreaDenmarkDominicaDominican RepublicEcuadorEgyptEl SalvadorEquatorial Guinea EstoniaFinlandFrance,
GabonGambiaGeorgia GermanyGhana GreeceGrenadaGuatemalaGuinea
Guinea-Bissau HondurasHungaryIcelandIndiaIndonesiaIreland IsraelItalyJapanKazakhstanKenyaKyrgyzstanLao People’s Dem Rep.Latvia Lesotho LiberiaLibyan Arab JamahiriyaLiechtenstein LithuaniaLuxembourgMadagascar
MalawiMalaysiaMaliMaltaMauritaniaMexicoMonacoMongoliaMontenegroMoroccoMozambiqueNamibia NetherlandsNew ZealandNicaraguaNigerNigeriaNorwayOmanPapua New GuineaPeruPhilippines
PolandPortugalRepublic of Korea Republic of MoldovaRomaniaRussian FederationSaint LuciaSaint Vincent and
the Grenadines San MarinoSao Tomé e PrincipeSenegalSerbiaSeychellesSierra LeoneSingaporeSlovakiaSloveniaSouth AfricaSpainSri LankaSudanSwaziland
St. Kitts and NevisSwedenSwitzerlandSyrian Arab RepublicTajikistan ThailandThe former Yugoslav
Republic of Macedonia TogoTrinidad and Tobago TunisiaTurkeyTurkmenistanUgandaUkraineUnited Arab EmiratesUnited KingdomUnited Republic of TanzaniaUnited States of AmericaUzbekistanViet NamZambiaZimbabwe
142 PCT States
PCT Today and Tomorrow
More countries…More applications… (and note where the growth is coming from)
PCT Trends
PCT Today and Tomorrow
PCT Statistics
0
20000
40000
60000
80000
100000
120000
140000
160000
180000
78 80 82 84 86 88 90 92 94 96 98 00 02 04 06 08
fall of 4.5% overall in 2009fall of 4.5% overall in 2009fall of 4.5% overall in 2009fall of 4.5% overall in 2009
PCT Today and Tomorrow
0
5,000
10,000
15,000
20,000
25,000
30,000
35,000
40,000
45,000
50,000
US JP DE KR CN FR GB NL CH SE IT CA FI AU IL
International applications received in 2009 by country of origin
China overtakes France for the first time (and files only 120 less than KR)
US: -11.4%
JP: +3.6%
DE: -11.2%
KR: +2.1%
CN: +29.7%
PCT Today and Tomorrow
0
200
400
600
800
1,000
1,200
1,400
1,600
ES DK AT BE IN NO SG RU BR IE ZA TR NZ LU MY MX
International applications received in 2009 by country of origin–the next 16
Of note: ES: +2.4%DK: +3.8%AT: +12.4%BE: -8.7%IN: -28.9%SG: +5.5%RU: -29.1%NZ: -26.5%MY: +6.3%MX: -13.1%
PCT Today and Tomorrow
Top PCT Applicants 20091. Panasonic--JP(1891) 2. Huawei--CN (1847) 3. Bosch—DE (1586) 4. Philips--NL (1295) 5. Qualcomm--US (1280) 6. Ericsson--SE (1240) 7. LG Electronics--KR (1090) 8. NEC--JP (1069) 9. Toyota--JP (1068) 10. Sharp--JP (997) 11. Siemens--DE (932) 12. Fujitsu--JP (817) 13. BASF--DE (739) 14. 3M--US (688) 15. Nokia--FI (663) 16. Microsoft--US (644) 17. Samsung Electronics--KR (596) 18. NXP—NL (593) 19. Mitsubishi Electric--JP (569) 20. HP--US (554)
PCT Today and Tomorrow
Examples of Australian PCT Applicants 2009
1. Cochlear Limited2. Commonwealth Scientific and Industrial
Research Organization3. Silverbrook Research PTY Ltd4. University of Queensland5. Bluescope Steel Limited6. University of Sydney
PCT Today and Tomorrow
More countries…More applications… (and note where the growth is coming from)More ISAs
PCT Trends
PCT Today and Tomorrow
The ISAs are the following 17 offices:
AustraliaAustriaBrazilCanadaChinaEgypt (not yet operating)FinlandIndia (not yet operating)Israel (not yet operating)JapanRepublic of KoreaRussian FederationSpainSwedenUnited States of AmericaEuropean Patent OfficeNordic Patent Institute
PCT International Searching Authorities
PCT Today and Tomorrow
More countries…More applications… (and note where the growth is coming from)More ISAsA definite trend towards increased worksharing based on international phase work
As proposed in Roadmap, consistent with vision of PCT foundersPPH-PCTEtc.
PCT Trends
PCT Today and Tomorrow
PCT Challenges (1)(not in any particular order)
Trying to keep PCT from being politicized like other parts of WIPO’s workBuilding trust between patent offices, so duplicative international phase and national phase processing can be reducedQuality of international work productsLanguage issues
supplementary search and PatentScope™ toolsDeveloping countries (“how can we realistically benefit from PCT?”)
Top 15 countries responsible for 92.1% of IAs published in 2009Top 32 countries filed 96% of IAs in 2009The other 4% of filings are spread across 110 countries
PCT Today and Tomorrow
PCT Challenges (2)
Making PCT accessible to applicants of all types from all Contracting States (for example, SMEs)Helping PCT users stay abreast of new developments and strategiesUnscrupulous companies/individuals who want to mislead PCT applicants into paying unrelated and unnecessary fees
PCT Today and Tomorrow
Supplementary international search:give applicants option to request one or more supplementary (language-based) searches from participating ISAs in addition to the main PCT search help users by reducing likelihood of new prior art in national phasetake into account the growing linguistic diversity in the prior art
Recent PCT legal developments (1)
PCT Today and Tomorrow
Supplementary International Search
(months)
File PCTapplication
120 30
International search report
& written opinion
16 18
Internationalpublication
(optional)File
demand forInternational
preliminaryexamination
File localapplication
Enternationalphase
22 28
(optional)International preliminary report on
patentability
19
Request for Supplementary
International Search
Supplementary Search Reports
established
PCT Today and Tomorrow
Supplementary International Search: Authorities
NPI—Jan. 1, 2009RU—Jan. 1, 2009SE—Jan. 1, 2009—limitation to 1000 Supp. Searches/yearFI—Jan. 1, 2010EPO—July 1, 2010, limited initially to several 100s/year and increased if needed up to several 1000s/year by 2013
AT—under considerationAU—under considerationBR—not yet decidedCA—no intention to offer in near futureCN—under considerationES—no intention, but signs of possible reevaluationIN—unknownJPO—no intentionKR—under considerationUS—no intention in near future due to workload
PCT Today and Tomorrow
Form of amendments—amendments to Rules 46.5, 66.8 and 70.2, requiring applicants to indicate the basis for amendments in IA as filed
Entry into force: July 1, 2010 , applying to any IA regardless of IFD where amendment is made on or after July 1, 2010
Complete set of amended claims required when amendinginstead of replacement sheets of affected claimsEntry into force: July 1, 2009
Recent PCT legal developments (2)
PCT Today and Tomorrow
Preconverted files for electronic filingRestoration of priorityMissing partsFailure to timely enter national phaseOutcome in State of Florida v. Federated Institute for Patent and Trademark Registry and Bernd Taubert, Dec. 2009
Recent PCT legal developments (3)
PCT Today and Tomorrow
Studies being presented by the IB:background of need to improve PCT functioning, problems, challenges, causes, options, etc. (“why did we propose the PCT Roadmap?”)
Examples of the 32 IB recommendations in the study:– ISAs should continue to seek ways to effectively
search documentation in other than their officials languages—by technical means and trials of collaborative search
– Offices offering training in searching and examination should coordinate their efforts
– Review level of PCT fees with Contracting States to seek innovative solutions so that certain classes of applicants are not excluded
– Offices should review compatibility of law and practice with Regulations and Administrative Instructions
Looking forward to the next PCT WG (June 14-18, 2010) (1)
PCT Today and Tomorrow
Looking forward to the next PCT WG (June 14-18, 2010) (2)
Examples of the 32 IB recommendations in the study (cont.):
− DOs and EOs should share national search and examination results− ROs and IB should help applicants to minimize filing-related defects− IAs should give priority to international phase work− IAs should continue to work on actual and perceived quality− IAs should share search strategy information for the benefit of DO examiners− IAs should issue one WO before establishing “negative”IPRP.− States should consider national/international incentives to encourage better applications and resolution of defects in international phase
PCT Today and Tomorrow
fee reduction criteriafor 90% reductionfor small and medium-sized enterprises (SMEs)
Paragraph replacementThird party observationsColor drawings
Looking forward to the next PCT WG (June 14-18, 2010) (3)
PCT Today and Tomorrow
Recent Practical PCT developments (1)
Private file inspectionDocument upload system available to all PCT users as of Jan. 18, 2010
www.wipo.int/pctdb/en/Examples: notices of withdrawal, Art. 19 amendments, Rule 92bis requests, SIS requests, informal comments on WO/ISA, general correspondence for IBLimitations: 1) IB must have received Record copy
2) only post-filing documents for the IB--NOT filings of IAs
Email notificationsUp to now have been able to request (from IB and participating offices) email copies of notifications in addition to paperFrom Jan. 1, 2010, can request email onlyStrongly recommended to opt for email only once sufficient experience has been gained with paper/email parallel receipt of notifications
PCT Today and Tomorrow
Recent Practical PCT developments (2)Priority documents
Digital Access Service (DAS)Starting Jan. 1, 2010, IB can retrieve pdocs through DAS for use with PCT IAsThus, applicant can request IB to retrieve pdoc from DAS instead of providing a certified copy, if:
– Document has been added to DAS by participating office– Applicant has used DAS web portal
(https://webaccess.wipo.int/priority_documents/en/) to give IB access to the document
Currently 7 participating offices (AU, ES, GB, IB, JP, KR, US)If filing on paper, check relevant box on request form in Box No. IVIf filing electronically (PCT-SAFE and PCT-EASY): attach a letter requesting IB to retrieve pdoc using DAS—software will be updated soon to include this featureIf previously filed, send letter to IB before expiration of 16 months from priority, requesting retrieval via DAS
PCT Today and Tomorrow
Recent Practical PCT developments (3)PCT webinarsNew version of PCT-SAFE software (April 1, 2010)New resources for PCT applicants
PCT Caselaw database now availableText-searchable decisions from national courts and regional administrative bodies, with abstracts and references added by IB
PatentScope® enhancementsFull file contents available for IAs filed on or after 1 Jan. 2009National phase entry data now for 43 offices (recent addition ofAfrican Regional Intellectual Property Organization (ARIPO), Belarus, Hungary, Malaysia and the Eurasian Patent Organization (EAPO), Searchable national collections in new interface for public testing
ARIPO, Korea, Singapore, South Africa, Cuba, Mexico, Vietnam, Israel, PCT, All10 query language choices, 10 interface language choices, customizable settings, integration of GoogleTranslate, graphical results
PCT Today and Tomorrow
Recent Practical PCT developments (4) PatentScope® enhancements (cont.)
In addition to full file contents, national phase entry data from 43 offices and searchable national collections--Cross-lingual search in PatentScope available in beta for public testing
Denominated «CLIR » (Cross-Lingual Information Retrieval)Enter a search query in either EN, DE, ES, FR or JP and itwill be expanded into the other languages (keywordtranslation based on textual analysis of large bodies of titles)
– Input query– Identify domains for query from 30+– Identify synonyms– Get expanded query in all possible languages
Working on CN, PT and RU languagesGUI under developmenthttp://www.wipo.int/patentscope/search/en/clir/clir.jsp
PCT Today and Tomorrow
Trilateral offices began pilot project on January 29, 2010—in which positive PCT written opinions and IPRPs will be a basis for Patent Prosecution Highway requests in the Trilateral offices
USPTO: 45 requests received so far under PCT/PPH (as of mid-April)EPO: 0 JPO: ?
Other offices—not part of PPH-PCT pilot—are offering PPH or PPH-like effect based on positive PCT reports
Expansion KIPO/USPTO agreement (announced in Guilin, China April 16) to include two-way PPH effect based on positive PCT opinions/reports. Implementation date unknown UK Patent Office (planned announcement in June)
PPH and the PCT
PCT Today and Tomorrow
Trilateral offices have recognized PCT as a powerful vehicle forworksharingB+
Despite being originally convened to pursue substantive harmonization outside of WIPO, B+ now is working on a PCT agenda
The meeting of Group B+ Working Group II, 3rd session, being held in Washington, DC May 18 is:
– Removal of PCT reservations/incompatibilities– Enhancing PCT Chapter II procedure and top-up Search– Reduction of work duplication– Collaborative International Search and Preliminary
Examination
Convergence on the PCT (1)
PCT Today and Tomorrow
ICC paperAgreed position paper of ICC Commission on IP
PCT “preeminent vehicle for work-sharing on global patent applications”Pursue “early, coordinated comprehensive search”PPH must stay compatible with PCT
Convergence on the PCT (2)
PCT Today and Tomorrow
Higher quality PCT searches and examinationsvia ISA/IPEA quality management efforts and increased emphasis on means for evaluating quality, 3rd party submissions, top-up searches, etc.
PPH/PCT and its ramifications (and other incentives for applicants to resolve as much as possible within the international phase)Revitalized Chapter IIMore uniformity in application of PCT due to removal of incompatibilities and reservationsContinued focus on practical-level developments to enhance the PCT user experience (for example, PatentScope™enhancements, etc.) and the PCT infrastucture as a platform for practical worksharing and accessing of relevant informationCollaborative international search and examination
The Future of the PCT
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