Patent Cooperation Treaty (PCT): latest developments

WIPO studies:2013 Global Innovation Index

2011 World Intellectual Property Report: the Changing Face of Innovation

Matthew Bryan, Director, PCT Legal Division, WIPO

August 2013

PCT Coverage Today

=PCT

Albania

Algeria

AngolaAntigua and BarbudaArmenia

Australia

Austria

Azerbaijan

Bahrain Barbados

Belarus

Belgium

Belize

Benin

Bosnia and Herzegovina

Botswana Brazil

Brunei DarussalamBulgaria

Burkina Faso

Cameroon

Canada

Central African Republic

ChadChileChina Colombia Comoros Congo

Costa RicaCôte d'IvoireCroatiaCubaCyprusCzech RepublicDemocratic People's Republic of KoreaDenmarkDominicaDominican RepublicEcuadorEgyptEl SalvadorEquatorial Guinea EstoniaFinlandFrance,

GabonGambiaGeorgia GermanyGhana GreeceGrenadaGuatemalaGuinea

Guinea-Bissau HondurasHungaryIcelandIndiaIndonesiaIran (Islamic Republic of)

(4 Oct. 2013)Ireland IsraelItalyJapanKazakhstanKenyaKyrgyzstanLao People’s Dem Rep.Latvia Lesotho LiberiaLibyan Arab JamahiriyaLiechtenstein LithuaniaLuxembourgMadagascar

MalawiMalaysiaMaliMaltaMauritaniaMexicoMonacoMongoliaMontenegroMoroccoMozambiqueNamibia NetherlandsNew ZealandNicaraguaNigerNigeriaNorwayOmanPanamaPapua New GuineaPeruPhilippines

PolandPortugalQatarRepublic of Korea Republic of MoldovaRomaniaRwandaRussian FederationSaint LuciaSaint Vincent and the Grenadines San MarinoSao Tomé e PrincipeSaudi Arabia (3 Aug. 2013)SenegalSerbiaSeychellesSierra 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

148 PCT States

Countries not yet in PCTAfghanistanAndorraArgentinaBahamasBangladeshBhutanBoliviaBurundiCambodiaCape VerdeDemocratic Republic of

CongoDjiboutiEritreaEthiopiaFijiGuyanaHaiti

IraqJamaicaJordanKiribatiKuwaitLebanonMaldivesMarshall IslandsMauritiusMicronesiaMyanmarNauruNepalPakistanPalauParaguaySamoaSolomon Islands

SomaliaSouth SudanSurinameTimor-LesteTongaTuvaluUruguayVanuatuVenezuelaYemen

(45)

PCT Applications 2012

0

20000

40000

60000

80000

100000

120000

140000

160000

180000

200000

78 80 82 84 86 88 90 92 94 96 98 00 02 04 06 08 10 12

194,400 PCT applications

+6.6% in 2012

NL: +14%CN: +13.6%KR: +13.4%FI: +13.2%JP: +12.3%

87.3% fully electronic

Forecasting +3.8% in 2013

0

10,000

20,000

30,000

40,000

50,000

60,000

US JP DE CN KR FR GB CH NL SE IT CA FI AU ES

International applications received in 2012 by country of origin

Top 15 countries responsible for 92.7% of IAs filed in 2012

• 507,400 national phase entries estimated in 2011 (+ 4.2%)• 431,800 (about 85%) of NPEs are from non-resident applicants, making PCT NPEs responsible for 54.9% of all non-resident patent applicationsfiled worldwide in 2011

PCT National phase entries—total

• USPTO most preferred DO for National Phase Entries; had highest growth among the IP5 Offices (+7.3%)

• Brazil (+12.6%) and India (+9.8%) had highest growth rates among top 10 Offices

PCT National phase entries 2011—by target DO

Top PCT Applicants 20121. ZTE Corporation—CN (3906)*2. Panasonic—JP (2951) 3. Sharp—JP (2001)4. Huawei—CN (1801)5. Bosch—DE (1775) 6. Toyota—JP (1652)7. Qualcomm—US (1305)8. Siemens—DE (1272)9. Philips—NL (1230)10. Ericsson—SE (1197)11. LG Electronics—KR (1094)12. Mitsubishi Electric—JP (1042)13. NEC—JP (999) 14. Fujifilm Corporation (891)15. Hitachi—JP (745) 16. Samsung Electronics—KR (683)17. Fujitsu—JP (671)18. Nokia—FI (670)19. BASF—DE (644) 20. Intel—US (640)

() of publishedPCT applications

*Almost 18 IAs/working day

Top University PCT Applicants 20121. University of California (US)2. MIT (US)3. Harvard University (US)4. Johns Hopkins (US)5. Columbia University (US)6. University of Texas (US)7. Seoul National University (KR)8. Leland Stanford University (US)9. Peking University (CN)10. University of Florida (US)11. Cal Tech (US)12. Korea Advanced Institute of Science and Technology (KR)13. Cornell University (US)14. University of Tokyo (JP)15. Yonsei University (KR)16. Isis Innovation Limited (GB)17. Tsinghua University (CN)18. Kyoto University (JP)19. University of Michigan (US)20. Purdue University (US)

Recent PCT developments

America Invents Act (AIA) Simplification for PCT3rd Party Observation system

Indication of availability for licenseePCT

ePCT: future improvements (1)Web-based electronic filing of new PCT applications Currently in pilot with RO/IB Aiming at Q3/2013 for opening up for RO/IB filing Aiming to have even better validations than PCT-SAFE

Aiming for fully hosted RO service by end 2014

Further online actions Prepare and submit Chapter II Demand online Request to indicate availability for licensing, etc.

Multilingual interface (eventually 10 languages)

Extension of ePCT to interested Offices in their various capacities (RO, ISA, SISA, IPEA, DO, EO) has started, including hosting on behalf of offices, and 2-way communication

ePCT: future improvements (2)

Offer centralized real-time credit card transactions for all fee types and all authorities

National phase entry function could be added to ePCT Opt-in for DOs Applicant would select from among participating DOs, upload any

necessary documents and add any bib. data not already available to IB

Local counsel could be fully involved Would not initially include fee payment facility, but this could be

added in the future Positive reaction at Feb. 2013 IP5 meeting

Recent PCT developments

America Invents Act (AIA) Simplification for PCT3rd Party Observation system

Indication of availability for licenseePCTWIPO AMC fee reduction for PCT users Misleading invitations

Recent PCT developments

America Invents Act (AIA) Simplification for PCT3rd Party Observation system

Indication of availability for licenseePCTPCT-PPHWIPO AMC fee reduction for PCT users Misleading invitationsPCT Working Group 2013

PCT Working Group May 21-24 (1)

USPTO/UK--Mandatory response to negative comments in the national phase (PCT/WG/6/16)USPTO/UK-- Formal integration of PPH into PCT (PCT/WG/6/17)USPTO/UK-- Mandatory top-up search in Ch. II (PCT/WG/6/18)USPTO/UK-- Mandatory recordation of search strategies (PCT/WG/6/19)Other USPTO/UK “20/20” proposals: Self-service Rule 92bis changes and priority claim corrections Limited Chapter I corrections to claims Simplified withdrawal without signatures within limited period Formally integrate collaborative search into PCT Incorporate Global Dossier into PCT

Availability of Written Opinion of ISA as of publication date (PCT/WG/6/13)Requirements and procedures of appointment of International Authorities (PCT/WG/6/4)PCT Fee Reductions (PCT/WG/6/10)Restoration of the Right of Priority (PCT/WG/6/12)Evaluation Report of 2nd Collaborative Search/Exam pilot (PCT/WG/6/22)

PCT Working Group May 21-24 (2)

PCT Minimum Documentation (PCT/WG/6/9)

PCT Sequence Listing Standard (PCT/WG/6/7)

Revision of WIPO Standard ST.14 (PCT/WG/6/8)

Updates: Supplementary International Search 3rd party observations ePCT

Quality (PCT/MIA/20/3) Report from the Quality Subgroup Matters Arising from Report from the Quality Subgroup Future Quality-Related Work

PCT Working Group May 21-24: Outcomes

2 sets of amendments forwarded to PCT Assembly 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

If approved by PCT Assembly in October, 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

Many of the proposals discussed will be revised for further discussion next year

Future PCT developments

Further work on all remaining WG proposals: Fee reductions Appointment of ISAs/IPEAs US/UK 20/20 proposals Etc.

Collaborative search

WIPO’s position: collaborative search should be part of the future of the PCTPCT 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 2012 PCT MIA (PCT/MIA/19/4) and 2012 PCT

WG (PCT/WG/5/9)

2nd IP5 pilot—preliminary views of EPO (as example) In 87% of cases, feedback from USPTO and KIPO examiners resulted in

addition of citations to ISR, and in 27% resulted in amendments to WO-ISA In 92% of cases, lead examiner (EPO) perceived the final products (ISR and

WO-ISA) improved as a result of collaboration; in more than 1/3 of cases, significant improvement

In 70% of cases, EPO examiners (as peer examiners) would trust both search and exam results produced collaboratively

In 30% of cases, complementary examination would be required at EPO due to differences in patent law (e.g., medical use, method of treatment, etc.)

Collaborative PCT Search

PCT training options

PCT Distance learning course content available in the 10 PCT publication languages

PCT Webinars

providing free updates on developments in PCT procedures

upon request also for companies or law firms

Video- and teleconferences

In-person PCT Seminars and training sessions

For further information about the PCT, see

http://www.wipo.int/pct/en/

For general questions about the PCT, contact the PCT Information Service at:

Telephone: (+41-22) 338 83 38

Facsimile: (+41-22) 338 83 39

E-mail: pct.infoline@wipo.int

matthew.bryan@wipo.int

PCT Resources/Information

WIPO Studies

WIPO strategic goal: “World reference for IP Information and Analysis”

WIPO Chief Economist’s office issuing interesting and important IP-related studies 2 Examples:

2013 Global Innovation Index 2011 World Intellectual Property Report: “The Changing Face of

Innovation”

www.globalinnovationindex.org

OverviewUnlike primary resources, capacity to innovate can be acquired

GII 2013 ranks innovation performance of 142 countries, representing 95% of the world’s population and 99% of the world’s GDP—global reference/action tool on innovation for researchers, and public/private decision makers

As a benchmark for policy makers, GII helps identify targeted policies, good practices, and other levers to foster innovation, with country profiles indicating areas of strengths and weaknesses

UN Secretary-General Ban Ki-moon, at launch of 2013 report, said that innovation is “at the heart of addressing the interlinked challenges of global development,” citing reliance on traditional biomass energy sources, high rates of youth unemployment, and challenges of food security as evidence of the clear need for innovation

GII: multi-stakeholder effort

Co-published by Cornell University, INSEAD and WIPO

Four Knowledge Partners: Booz & Company, the Confederation of Indian Industry, du, and Huawei

Independent statistical audit by the Joint Research Centre of the European Commission

International advisory board

A tool for action around 84 metrics

GII 2013 rankings – Top 10

1. Singapore

2. Hong Kong (China)

3. United States of America

4. United Kingdom

5. Sweden

6. Finland

7. Switzerland

8. Denmark

9. Canada

10. Netherlands

1. Switzerland

2. Netherlands

3. Sweden

4. United Kingdom

5. Malta

6. Luxembourg

7. Iceland

8. Finland

9. Israel

10. Germany

Input Sub-IndexOutput Sub-Index

1. Mali

2. Moldova, Rep.

3. Guinea

4. Malta

5. Swaziland

6. Indonesia

7. Nigeria

8. Kuwait

9. Costa Rica

10. Venezuela, Bolivarian Rep.

1. Switzerland

2. Sweden

3. United Kingdom

4. Netherlands

5. United States of America

6. Finland

7. Hong Kong (China)

8. Singapore

9. Denmark

10. Ireland

Efficiency Ratio GII

Australia in GII 2013#19 overall (between KR and FR), up 4 places from 2012, in the group of “Leaders”

Examples of Strengths: 9th: Rule of Law 9th: Assessment in reading, math and science 4th: Ease of getting credit 3rd: Ease of starting a business 2nd: School life expectancy, years 7th: Research and development 5th: QS University ranking 3rd: Knowledge workers 7th: Knowledge-intensive employment, % 9th: Online creativity

Examples of Weaknesses: 77th: Communications, computer & info services exports 74th: R&D financed by abroad 74th: Communications, computer & info services imports

GII 2013 – some key mesages

Innovation is a global game

Innovation is a mindset Requires identification and mobilization of multiple resources and

engagement of many stakeholders

Innovation divide persists, though room for cautious optimism as some economies are demonstrably learning and rapidly improving their innovation capabilities

Local dynamics of innovation are critically important

Metrics are useful Provide commonly accepted tool to monitor/identify priorities

Core ingredient in innovation is talent Even more important than investment, research and cooperation

R&D expenditure is growing

Source: WIPO estimates, based on data from UNESCO Institutefor Statistics, Eurostat and OECD, September 2011

Demand for IP rights has grown

Source: WIPO Statistics Database, October 2011

Sound patent institutions are crucial

Patent institutions perform the essential tasks of

ensuring the quality of patents granted

providing balanced dispute resolution

Unprecedented level of patenting has put these institutions under considerable pressure

In 2010, there were an estimated 5.17 million of unprocessed patent applications

Knowledge markets based on IP rights are on the rise, though still nascent

Source: WIPO based on data in Athreye and Young (2011)

University and PRO patenting is on the rise

Source: WIPO Statistics Database, June 2011

Patents can facilitate specialization and learning

Studies have shown that patent-based knowledge markets enable firms to specialize, allowing them to be more innovative and efficient at the same time

Patents allow firms to control which knowledge to guard and which to share so as to maximize learning – a key element of open innovation strategies

Online availability of patent documents has created new catch-up opportunities for technologically less developed economies

Public policies have encouraged the commercialization of scientific knowledge

Public-private knowledge exchanges occur through a number of channels

Almost all high-income countries have institutional frameworks to incentivize commercialization

Patenting by universities and public research organizations (PROs) and subsequent commercial development of their inventions through technology transfer offices (TTOs)

Several low- and middle-income countries have pursued similar policies

Examples of additional findings

Geography of innovation has shifted/is shifting, although high-income countries still dominate global R&D spending

Innovation process is increasingly international in nature

Innovation appears to have become more collaborative and open, which can benefit firms and society

IP ownership has become even more central to business strategies

Patent portfolio races complicate cumulative innovation processes

Innovators and IP owners are experimenting with new IP policies and practices, such as defensive publication, IP donations, collaboration with universities and patent pools