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Patent Cooperation Treaty (PCT) Introduction and Future Developments Oslo, October 2013

Patent Cooperation Treaty (PCT) Introduction and Future Developments Oslo, October 2013. Claus Matthes Director, PCT Business Development Division. Using the traditional patent system to seek multinational patent protection.

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Patent Cooperation Treaty (PCT) Introduction and Future Developments Oslo, October 2013

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  1. Patent Cooperation Treaty (PCT) Introduction and Future Developments Oslo, October 2013 Claus Matthes Director, PCT Business Development Division

  2. Using the traditional patent system to seek multinational patent protection Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention: - multiple formality requirements - multiple searches - multiple publications - multiple examinations and prosecutions of applications - translations and national fees required at 12 months Some rationalization because of regional arrangements: ARIPO, EAPO, EPO, OAPI File applications abroad 0 (months) 12 File application locally

  3. The PCT─ 1970 • Basic idea: simplify the procedure for obtaining patent protection in many countries, making it more efficient and economical for: • users of the patent system: makes available a filing tool for applicants for foreign patent filings; and • patent offices: makes available a tool for effective processing of patent applications by offices of PCT Member States willing to exploit work done by others

  4. PCT Basics • Filing Tool for applicants: • Only one application filed, containing, by default, the designation of all States (for every kind of protection available) and usual priority claim(s) • Has the effect of a regular national filing (including establishment of a priority date) in each designated State: the international filing date is the filing date in each designated State • Filed in one language • Filed with one Office • One set of formality requirements • Delays national processing until 30 months from priority date • International reports improve basis for decision making

  5. PCT Basics • Work sharing tool for Offices: • Central formality checking • Central international publication • International search report (ISR) • International Preliminary Reports on Patentability (preliminary, non-binding opinion on novelty, inventive step (non-obviousness) and industrial applicability • Chapter I • Chapter II

  6. Fees for: --translations--Office fees--local agents Fees for: --translations--Office fees--local agents Traditional patent system vs. PCT system File applications abroad (months) 12 0 Traditional File local application Enter national phase International publication (months) PCT 0 12 16 18 22 28 30 File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability File local application

  7. The PCT System Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Typically a national patent application in the home country of the applicant

  8. The PCT System Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Typically filed in same national patent office--one set of fees, one language, one set of formality requirements--and legal effect in all PCT States

  9. The PCT System Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Report on state of the art (prior art documents and their relevance) + initial patentability opinion

  10. PCT International Searching Authorities The ISAs are the following 18 offices: • Australia • Austria • Brazil • Canada • China • Chile (not yet operating) • Egypt • Finland • India (October 15, 2013) • Israel • Japan • Republic of Korea • Russian Federation • Spain • Sweden • United States of America • European Patent Office • Nordic Patent Institute

  11. Prior art for international search • Prior art: • everything which has been made available to the public, • anywhere in the world, • by means of written disclosure, • which is capable of being of assistance in determining that the claimed invention is or is not new and that it does or does not involve an inventive step, • provided the making available to the public occurred prior to the international filing date. • PCT Minimum Documentation (Rule 34)

  12. Example: PCT International Search Report Symbols indicatingwhich aspect of patentability the document cited is relevant to (for example, novelty, inventive step, etc.) The claim numbersin your application towhich the document isrelevant Documents relevant to whether or not your invention may be patentable

  13. Example: PCT Written opinion of the International Searching Authority Reasoning supporting the assessment Patentability assessment of claims

  14. The PCT System Disclosing to world content of application in standardized way Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability

  15. The PCT System Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Request an additional patentability analysis on basis of amended application

  16. The PCT System Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Additional patentability analysis, designed to assist in national phase decision-making

  17. The PCT System Express intention and take steps to pursue to grant in various states Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability

  18. The PCT

  19. The PCT in 1978

  20. PCT Coverage Today

  21. 148 PCT States =PCT Albania Algeria Angola Antigua and Barbuda Armenia Australia Austria Azerbaijan Bahrain Barbados Belarus Belgium Belize Benin Bosnia and Herzegovina Botswana Brazil Brunei Darussalam Bulgaria Burkina Faso Cameroon Canada Central African Republic Chad Chile China Colombia Comoros Congo Costa Rica Côte d'Ivoire Croatia Cuba Cyprus Czech Republic Democratic People's Republic of Korea Denmark Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland France, Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea Malawi Malaysia Mali Malta Mauritania Mexico Monaco Mongolia Montenegro Morocco Mozambique Namibia Netherlands New Zealand Nicaragua Niger Nigeria Norway Oman Panama Papua New Guinea Peru Philippines Poland Portugal Qatar Republic of Korea Republic of Moldova Romania Rwanda Russian Federation Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tomé e Principe Saudi Arabia (3 Aug. 2013) Senegal Serbia Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan Swaziland • St. Kitts and Nevis • Sweden • Switzerland • Syrian Arab Republic • Tajikistan • Thailand • The former Yugoslav • Republic of Macedonia • Togo • Trinidad and Tobago • Tunisia • Turkey • Turkmenistan • Uganda • Ukraine • United Arab Emirates • United Kingdom • United Republic of Tanzania • United States of America • Uzbekistan • Viet Nam • Zambia • Zimbabwe Guinea-Bissau Honduras Hungary Iceland India Indonesia Iran (Islamic Republic of) (4 Oct. 2013) Ireland Israel Italy Japan Kazakhstan Kenya Kyrgyzstan Lao People’s Dem Rep. Latvia Lesotho Liberia Libyan Arab Jamahiriya Liechtenstein Lithuania Luxembourg Madagascar

  22. Countries not yet in PCT 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)

  23. PCT Applications 2012 NL: +14% CN: +13.6% KR: +13.4% FI: +13.2% JP: +12.3% 194,400 PCT applications +6.6% in 2012 87.3% fully electronic Forecasting +3.8% in 2013

  24. Trends in PCT filing

  25. International applications received in 2012 by country of origin Top 15 countries responsible for 92.7% of IAs filed in 2012

  26. PCT National phase entries—total 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 applications filed worldwide in 2011

  27. PCT National phase entries 2011—by target DO (1) 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

  28. PCT National phase entries 2011— by target DO (2)

  29. Top PCT Applicants 2012 • ZTE Corporation—CN (3906)* • Panasonic—JP (2951) • Sharp—JP (2001) • Huawei—CN (1801) • Bosch—DE (1775) • Toyota—JP (1652) • Qualcomm—US (1305) • Siemens—DE (1272) • Philips—NL (1230) • Ericsson—SE (1197) • LG Electronics—KR (1094) • Mitsubishi Electric—JP (1042) • NEC—JP (999) • Fujifilm Corporation (891) • Hitachi—JP (745) • Samsung Electronics—KR (683) • Fujitsu—JP (671) • Nokia—FI (670) • BASF—DE (644) • Intel—US (640) *(…) of published PCT applications

  30. Top University PCT Applicants 2012 • University of California (US) • MIT (US) • Harvard University (US) • Johns Hopkins (US) • Columbia University (US) • University of Texas (US) • Seoul National University (KR) • Leland Stanford University (US) • Peking University (CN) • University of Florida (US) • Cal Tech (US) • Korea Advanced Institute of Science and Technology (KR) • Cornell University (US) • University of Tokyo (JP) • Yonsei University (KR) • Isis Innovation Limited (GB) • Tsinghua University (CN) • Kyoto University (JP) • University of Michigan (US) • Purdue University (US)

  31. Top Government/Research Institution PCT Applicants 2012 • Commissariat a l’Energie Atomique et aux Energies Alternatives (France) • Fraunhofer-Gesellschaft zur Forderung Der Angewandten Forschung e.v. (Germany) • Centre National de la Recherche Scientifique (CNRS) (France) • China Academy of Telecommunications Technology • Institute of Microelectronics of Chinese Academy of Sciences (China) • Mimos Berhad (Malaysia) • Institut National de la Sante et de la Recherche Medicale (INSERM) (France) • Electronics & Telecommunications Research Institute of Korea • Agency of Science, Technology and Research (Singapore) • Consejo Superior de Investigaciones Cientificas (CSIC) (Spain) • United States of America, represented by the Secretary, Department of Health and Human Services • National Institute of Advanced Industrial Science and Technology (Japan) • Council of Scientific and Industrial Research (India) • Korea Research Institute of BioScience and Biotechnology • Nederlandse Organisatie voor Toegepast-Natuurwetenschappelijk Onderzoek Tno (Netherlands) • Max Plank Institute (Germany)

  32. The PCT─ 1970 to today *

  33. The PCT─ 1970 to today

  34. Certain PCT Advantages The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which: • 1. postpones the major costs associated with internationalizing a patent application • 2. provides a strong basis for patenting decisions • 3. harmonizes formal requirements • 4. protects applicant from certain inadvertent errors • 5. evolves to meet user needs • 6. is used by the world’s major corporations, universities and research institutions when they seek international patent protection

  35. PCT Challenges • Improving the quality of PCT international phase work products • Building trust between patent offices, so that duplicative international phase and national phase processing can be reduced • Language issues • 33% of applications filed in Chinese, Japanese and Korean • Helping developing countries benefit from the PCT • 15 countries responsible for 92.1% of IAs published in 2011 • Making PCT accessible to applicants of all types from all Contracting States (for example, SMEs) • Helping PCT users stay abreast of new developments and strategies

  36. The PCT─ 1970 to today • PCT extremely successful as filing tool • Harmonization of formal and procedural requirements (beyond PCT) • National and regional laws • Patent Law Treaty (PLT)

  37. The PCT─ 1970 to today • However: PCT not as effective as work sharing tool in practice for addressing national quality of examination and (for some Offices) backlogs • PCT allows offices to re-use earlier work (international reports) in a way which increases quality or reduces the amount of work needed to achieve same level of quality • actual extent to which this is done is a decision of the office or State concerned as a matter of policy and efficiency

  38. The PCT─ Work Sharing Tool • Expectation was: “flying start” for offices, work should be “rather in the nature of completing, checking and criticizing than starting from scratch in complete isolation” • Reality is: many Offices do start “from scratch” • Perhaps not in complete isolation, but …

  39. PCT Roadmap • Needed: change in approach of offices vis-à-vis the PCT system, including a review of national procedures and practices and of what kind of incentives are set to use the system in a way which is beneficial to all

  40. PCT Roadmap • Improve quality and consistency of international reports: • The better the quality of the tools (reports), the better for all Contracting States: tools allow them to deal more effectively with requirements of their national laws • The smaller the national examining capacity, the bigger the importance of quality tools

  41. PCT Roadmap • Improve quality and consistency of international reports: • Further improve quality management systems of IAs • Chapter 21 of PCT S&E Guidelines • Develop quality metrics for measuring usefulness • Management of work sharing requires metrics which establish • what can be re-used and • its quality • Collaborative metrics study on ISR characteristics

  42. PCT Roadmap • Improve quality and consistency of international reports: • Explore collaborative search and examination • Collaboration or sharing of final products? • Pilot project (EPO, KIPO, USPTO) • Third party observations system • Since July 2012 • Set up quality feedback system for offices • To come • Record search strategies • Pending standardization: making available of search strategies on PatentScope

  43. PCT Roadmap • Improve quality and consistency of international reports: • Use of standardized clauses in reports • Improve explanations of relevance of cited documents • Modification of PCT S&E Guidelines • Extend opportunity for dialogue with examiner during international preliminary examination

  44. PCT Roadmap • Improve timeliness of actions in international phase • Create incentives for applicants to use system efficiently • encourage high quality applications and early correction of defects and filing of amendments • Improve training for Offices, better coordination • notably for examiners in developing country Offices • Improve access to effective search systems • affordable access to online search systems

  45. PCT Roadmap • Improve access to national search and examination reports • PatentScope • WIPO Case • Assist Offices in digitizing national patent collections

  46. PCT Roadmap • Where do we stand? • significant progress towards implementing recommendations endorsed by Member States • Major achievement of the process to be seen in more general terms: • Recognition of importance of PCT work product quality • Importance of appropriate integration of PCT work products into national patent granting procedures • Role of PCT in improving the functioning of the international patent system as a whole

  47. PCT Roadmap • Role of the PCT in effective dissemination of technical information • Greater understanding of concerns and needs of Contracting States in relation to the quality of international applications and PCT work products • Greater understanding of capacity of Contracting States, to perform their own effective search and examination • greater understanding of the needs for continued technical assistance for developing and least developed countries in this regard

  48. PCT Roadmap • Clearly: more work needed! • Focus: • Quality • Collaboration • Technical assistance • Both applicant and Office driven arrangements • Work sharing not (yet) a universally agreed concept …

  49. ePCT • Online portal that provides PCT services for both applicants and offices • Available since May 2011 • Provides secure and direct interaction with PCT applications maintained by the International Bureau • Applicants may now conduct most PCT transactions electronically

  50. ePCT Overview (*) feature which would be dependent on level of participation by other Office

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