the international patent system pct recent and future developments philippe baechtold, acting...

The International Patent System

PCT recent and future developments

Philippe Baechtold, Acting Director, PCT Operations Division, WIPO


PCT Coverage

1978

Today

PCT Applications

2013: 205,300 PCT applications (+5.1%)

Forecasting +4% in 2014

. 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

-4.8

5.8 11.0 7.1 5.1

0

50,000

100,000

150,000

200,000

PCT

appl

icat

ions

199019911992199319941995199619971998199920002001200220032004200520062007200820092010201120122013

PCT applications Growth rate (%)

International filing year


Main PCT filing countries: 2013


International applications received in 2013 by country of origin

Top 15 countries responsible for over 90% of IAs

1 - 9 10 - 99 100 - 999 1,000 - 9,999 10,000 - 60,000 No data


PCT International Searching AuthoritiesThe 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■ Spain■ Ukraine (not yet operating)■ United States of America■ European Patent Office■ Nordic Patent Institute

* Office of filing decides on which ISAs are available


PCT Statistics: 2013


Top PCT Applicants 20131. Panasonic—JP (2881)2.2. ZTE—CN (2309)ZTE—CN (2309)3.3. Huawei—CN (2094)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 Electronics—KR (1193)14. NEC—JP (1190)15. LG Electronics—KR (1170)16. Fujifilm Corporation (1008)17.17. Shenzhen China Star OptoelectronicsShenzhen China Star Optoelectronics—CN (916)—CN (916)18. Sony—JP (915)19. Hitachi—JP (841) 20. Nokia—FI (807)

() of publishedPCT applications


Top University PCT Applicants 20131. University of California (US)2. MIT (US)3. Columbia University (US)4. University of Texas (US)5. Harvard University (US)6. Johns Hopkins (US)7. Korea Advanced Institute of Science and Technology (KR)8. Leland Stanford University (US)9. Cornell University (US)10. Cal Tech (US)11. University of Florida (US)12. Postech Foundation (KR)13. Seoul National University (KR)14.14. Peking University (CN)Peking University (CN)15.15. Nanyang Technical UNanyang Technical University (CN)niversity (CN)16. University of Tokyo (JP)17. Isis Innovation Limited (GB)18. University of Pennsylvania (US)19. University of Michigan (US)20. 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 IAsTop 30 countries filed over 95% of IAsThe other 5% of filings are spread across over 110

countries


Recent PCT developments

■ Third Party Observation system

■ Indication of availability for license

■ PCT-PPH

■ Misleading

■ ePCT (later)


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


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


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)

http://www.wipo.int/pct/en/filing/pct_pph.html

http://www.youtube.com/watch?v=XnSShsUHXss


PCT-PPH (2)JP US KR CA

Grant rate 94

(71)

90.3 (53)

87.1 (67.5)

92 (65)

1st action allowance rate

63(16)

19.9(17.3)

31.16(10.5)

42(4.6)

Average Pendency from PPH Request to First Office Action {months}

2.4(13)

5.2(18.0)

3.1(13.2)

2.0(15.8)

Average Pendency from PPH Request to Final Decision {months}

4.1(22)

14.1(29.0)

6.3(19.1)

3.8(35.1)

Average Number of Office Actions

0.46(1.1)

TBD(2.4)

0.78 0.6(1.6)

See http://www.jpo.go.jp/ppph-portal/statistics.htm

() = all applications (PPH and non-PPH)

http://www.jpo.go.jp/cgi/cgi-bin/ppph-portal/statistics/statistics.cgi

http://www.jpo.go.jp/ppph-portal/statistics.htm


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

http://www.jpo.go.jp/ppph-portal/globalpph.htm


WIPO warnings

http://www.wipo.int/pct/en/warning/pct_warning.htmlWIPO 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

http://www.wipo.int/pct/en/warning/pct_warning.html


Future PCT developments

■Amended PCT Regulations—July 2014

■PCT/WG 2014

■Collaborative PCT searche

■PCT further improvements


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


PCT/WG 2014■ Review of revised US/UK “20/20” proposals

Limited Ch. I amendmentsSelf-service changesSimplifying withdrawalMandatory response to negative written opinionFormal PCT integration of PPH International/national phase linkageNational 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


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


ePCT


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


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 interfaceImproved tools and workflowDesignated Office functions

26


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 thenContact WIPO to notify the role, account name and

owner (we check)Accounts are named and must be used accordingly

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


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 interfaceXML/docx filing

29


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


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)


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


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


Some working features

■ WorkbenchList of all PCT applications to which you have access

(eOwner, eEditor, eViewer)

■ File ViewAccess to the PCT file maintained by the International

Bureau (documents plus up-to-date bibliographic data)

■ NotificationsPreferences and filters

■ My historyAll actions that a user has performed in ePCT

■ PortfoliosUser-defined personal folders for filing and grouping PCT

applications


Actions

■ “Actions” can be submitted to the International Bureau and to the IPEA (Chapter II demand))


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


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


Some statisticsOffices:

■42 different offices connected; 6000+ documents uploaded (covering initial filings, pdocs, subsequently filed documents and search related documents)

■9000+ IAs accessed

■16000+ documents accessedApplicants:

12000+ users connected (with higher percentage on public services (document upload))

450000+ docs downloaded, 28000+ docs uploaded23000+ IAs accessed in private services700+ IAs filed with ePCT Filing


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)


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


Thank you!

[email protected]

the international patent system pct recent and future developments philippe baechtold, acting...

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