pct update matthew bryan director, pct legal division wipo 21 st tutors meeting 11 june 2010...

PCT Update

Matthew Bryan

Director, PCT Legal Division

WIPO

21st Tutors Meeting

11 June 2010

Strasbourg

PCT Today and Tomorrow

PCT Update

PCT Trends and Challenges

Recent PCT Developments

Future of the PCT


PCT Trends and Challenges


More countries…

PCT Trends


=PCT

AlbaniaAlgeriaAngolaAntigua and BarbudaArmeniaAustraliaAustriaAzerbaijanBahrain BarbadosBelarusBelgiumBelizeBeninBosnia 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


More countries…More applications… (and note where the growth is coming from)

PCT Trends


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 2009


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%


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%


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)


More countries…More applications… (and note where the growth is coming from)More ISAs

PCT Trends


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


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 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 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


Recent PCT Developments


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 phase

take into account the growing linguistic diversity in the prior art

Recent PCT legal developments (1)


Supplementary International Search

(months)

File PCTapplication

120 30

International search report

& written opinion

16 18

Internationalpublication

(optional)File

demand forInternational

preliminary examination

File localapplication

Enternationalphase

22 28

(optional)International preliminary report on

patentability

19

Request for Supplementary

International Search

Supplementary Search Reports

established


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


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 amending

instead of replacement sheets of affected claims

Entry into force: July 1, 2009



Preconverted files for electronic filing

Restoration of priority

Missing parts

Failure to timely enter national phase

Outcome in State of Florida v. Federated Institute for Patent and Trademark Registry and Bernd Taubert, Dec. 2009



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)



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


fee reduction criteria for 90% reduction for small and medium-sized enterprises (SMEs)

Third party observations Color drawings



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


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


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 of African 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


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 it will be expanded into the other languages (keyword translation 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


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

KIPO/USPTO agreement to include two-way PPH effect based on positive PCT opinions/reports SIPO/USPTO agreement to include two-way PPH effect based on positive PCT opinions/reports UK Patent Office (announced May 28)

PPH and the PCT


Trilateral offices have recognized PCT as a powerful vehicle for worksharing

Now IP5 using PCT as basis for PPH

B+

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)


ICC paper

Agreed 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)


Future of the PCT


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

pct update matthew bryan director, pct legal division wipo 21 st tutors meeting 11 june 2010...

Documents

tomorrowtop pct applicants

tomorrowpct statisticsfall

tomorrowpct updatepct

lg electronics

samsung electronics

country of originthe

country of origin china

jp1891 huawei