Patent Cooperation Treaty PCT Update 2012 National Seminar

Patent Cooperation Treaty (PCT) Update 2012 National Seminar on the Occasion of Start of Operation as an International Searching and Preliminary Examination Authority July 2, 2012 Li Maor Consultant, Division for Certain Countries in Europe and Asia

2 What’s New in 2012 Update on PCT membership and statistics PCT rule changes e. PCT Licensing Third party observations Office to office feedback PCT-PPH PATENTSCOPE Future PCT changes / improvements

3 The PCT in 1978

4 The PCT Today

5 146 PCT Contracting States Albania Algeria Angola Antigua and Barbuda Armenia Australia Austria Azerbaijan Bahrain Barbados Belarus Belgium Belize Benin Bosnia and Herzegovina Botswana Brazil Bulgaria Burkina Faso Brunei Darussalam (24 July 2012) 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 Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland France Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea-Bissau Honduras Hungary Iceland India Indonesia Ireland Israel Italy Japan Kazakhstan Mozambique Namibia Kenya Netherlands Kyrgyzstan New Zealand Lao People’s Dem Rep. Nicaragua Latvia Niger Lesotho Nigeria Liberia Norway Libya Oman Liechtenstein Panama (7 September 2012) Lithuania Papua New Guinea Luxembourg Peru Madagascar Philippines Malawi Poland Malaysia Portugal Mali Qatar Malta Republic of Korea Mauritania Republic of Moldova Mexico Romania Monaco Rwanda Mongolia Russian Federation Montenegro Saint Kitts and Nevis Morocco Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tomé e Principe Senegal Serbia Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan Swaziland 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

6 Countries not yet PCT Contracting States Afghanistan Andorra Argentina Bahamas Bangladesh Bhutan Bolivia Burundi Cambodia Cape Verde Democratic Republic of Congo Djibouti Eritrea Ethiopia Fiji Guyana Haiti Iran (Islamic Republic of) Iraq Jamaica Jordan Kiribati Kuwait Lebanon Maldives Marshall Islands Mauritius Micronesia Myanmar Nauru Nepal Pakistan Palau Paraguay Samoa Saudi Arabia Solomon Islands Somalia South Sudan Suriname Timor-Leste Tonga Tuvalu Uruguay Vanuatu Venezuela Yemen (47)

7 Update on PCT International Authorities (17) (International Search and Preliminary Examining Authorities) • Australia • Japan • Austria • Republic of Korea • Brazil • Russian Federation • Canada • Spain • China • Sweden • Egypt (not yet operating) • United States of America • Finland • European Patent Office • India (not yet operating) • Nordic Patent Institute (Denmark, Iceland, Norway) • Israel (operational since 1 June 2012)

PCT Applications CN: +33. 4% JP: +20. 9% CA: +8. 3% KR: +8% US: +8% CH: +6. 8% FR: +4. 8% SE: +4. 1% DE: +4. 1% RU: +17. 8% BR: +15. 6% IN: +13. 1% +10. 7% in 2011 almost 182, 000 international applications 8

9 International applications received in 2011 by country of origin

10 International applications received in 2011 by country of origin (cont. )

11 Top PCT Applicants (2011) 1. ZTE--CN (2826) 2. Panasonic--JP (2463) 3. Huawei--CN (1831) 4. Sharp--JP (1755) 5. Bosch--DE (1518) 6. Qualcomm--US (1494) 7. Toyota--JP (1417) 8. LG Electronics--KR (1336) 9. Philips--NL (1148) 10. Ericsson--SE (1116) 11. NEC--JP (1056) 12. Siemens--DE (1039) 13. Mitsubishi Electric--JP (834) 14. BASF--DE (773) 15. Samsung Electronics--KR (757) 16. Nokia--FI (698) 17. IBM--US (661) 18. HP--US (591) 19. 3 M--US (563) 20. Hitachi--JP (547)

Israel and the PCT 12 Party to PCT since June 1, 1996 In 2011: 1, 452 PCT applications filed with Israel as country of origin #16 by number of applications filed #15 by receiving Offices (1, 062 filed) Significant users among Universities Hebrew University of Jerusalem Tel Aviv University Examples of PCT users: Technion Research and Development Foundation, Ltd. Teva Pharmaceutical Industries, Ltd. Ramot at Tel Aviv University Ltd. Yeda Research and Development Co. Ltd.

13 PCT International Searching Authorities The ISAs are the following 17 offices: Australia Austria Brazil Canada China Egypt (not yet operating) Finland India (not yet operating) Israel (as of June 1, 2012) Japan Republic of Korea Russian Federation Spain Sweden United States of America European Patent Office Nordic Patent Institute

14 PCT Rule Changes 2012 Entry into force on July 1, 2012 (1) Inclusion of Chinese patent documents in the PCT minimum documentation (amended Rule 34) (2) New Rule 82 quater (force majeure) Excuse of delay in meeting PCT time limits by offices where a time limit could not be met due to war, revolution, civil disorder, strike, natural calamity, etc. Case by case determination by offices The Rule does not apply to the 12 month priority period the time limit for entry into the national phase

15 e. PCT WIPO online service that provides secure electronic access to the files of PCT applications maintained by the IB For PCT applications filed as from 1 January 2009 Secure access via e. PCT private services requires a WIPO user account and valid digital certificate Access via e. PCT public services for online document upload requires only a basic WIPO user account Future online web filing of new PCT applications Extension of e. PCT for use by interested Offices More information: https: //pct. wipo. int/e. PCT January 2012 edition of the PCT Newsletter

16 e. PCT (2) – Main Features Up-to-date bibliographic data and status information View processing status of documents Uploaded documents are immediately visible in the file view Automatic generation of a signed cover letter for uploaded documents to comply with PCT Rule 92. 1 requirement Manage access rights Download individual documents or packages Secure messaging for contact with WIPO Processing Team Leave private notes invisible to the IB and not appearing as part of the application file History of actions taken Customizable notification preferences (e-mail warnings) Online actions for withdrawals (PCT applications and priority claims) and Rule 92 bis changes

17 e. PCT (3) – Future Improvements Online web filing of new PCT applications NOT currently possible to file PCT applications using e. PCT Further online actions, e. g. , withdrawal of Demand, designations and/or elections, request to indicate availability for licensing, etc Third party observations Extension of e. PCT to interested Offices in their various capacities (RO, ISA, SISA, IPEA, DO, EO)

18 e. PCT (3) – Future Improvements Big picture (WIPO’s vision): Would like to create a consistent service and electronic interface for all applicants across the entire PCT system, irrespective of which office performs which function Applicants can interact through this system with all PCT Offices and Authorities Easier for all offices to access and process PCT applications and related documents Communication/transmission between all PCT offices and authorities via this system Fully functional demo version: https: //pctdemo. wipo. int/epct

19 PCT Online Document Upload Existing online document upload (separate from e. PCT) to be decommissioned in July 2012 Document upload integrated in e. PCT WIPO User Account (public or private) required to use e. PCT document upload

20 Sign-up Now for e. PCT https: //pct. wipo. int/e. PCT video tutorials

21 Licensing Indications Applicants can indicate the availability of a PCT application for licensing New Form PCT/IB/382 “Request for indication of availability for licensing purposes” Available as from January 1, 2012 Can be submitted at any time prior to the expiration of 30 months from priority The licensing-related information will be published in the application bibliographic data searchable in PATENTSCOPE

22 Third Party Observations (1) System to allow third parties to submit observations during the international phase indicating why they think the invention is either not new or not inventive If member states agree, could be expanded to permit observations on clarity and sufficiency of disclosure Limited to the international phase Objective is to provide national Offices with the most complete information possible on which to base their decisions

23 Third Party Observations (2) Qualifying applications: ü published PCT application ü within 28 months from priority date ü fewer than 10 observations have been made on that IA ü 3 rd party has not yet made an observation on that IA ü 3 rd party enters up to 10 citations, briefly indicates how they are relevant, and preferably uploads copies of the patent documents cited ü free of charge ü identification of submitter required, but can opt to not have identification disclosed to applicant, national offices and public ü all submitted observations which pass WIPO review are made available on PATENTSCOPE ü third party-uploaded documents not available via PATENTSCOPE but available to IAs/DOs/EOs

24 Third Party Observations (3) Main Features Web-based system using web-forms in PATENTSCOPE Free-of-charge Third party identity may be withheld from the applicant or the public Submissions possible until the expiration of 28 months from the priority date Third-party supplied documents will not be available via PATENTSCOPE but will be made available to International Authorities and national Offices

25 Third Party Observations (4) Role of the International Bureau checks that observation is not obviously “spam” accepts the observation into the public file or requests modifications if there are obvious errors notifies the applicant of submission of observations, and invites applicant to respond if desired makes observations publicly available as separate document in PATENTSCOPE sends to DO/EOs compilation of all observations per document together with any cited documents, and applicant responses Expected launch in July 2012 (TODAY!)

26 Office to Office Quality Feedback System being developed that would allow national Offices to provide quality-related feedback to International Authorities (ISA/IPEA/SISA) Offices providing feedback would upload a file to the International Bureau using PCT Electronic Data Interchange (PCT-EDI) Feedback will then be communicated by the International Bureau to the International Authority concerned

27 PCT-PPH (1) Patent Prosecution Highway originally conceived as a bilateral agreement between two patent Offices Accelerated patent prosecution in the office of second filing based on the work product of the first office PCT-PPH is an expansion of the original PPH whereby accelerated patent prosecution may be available on the basis of positive PCT work products, e. g. , written opinion, IPRP Ch. I or Ch. II http: //www. wipo. int/pct/en/filing/pct_pph. html

28 PCT-PPH (2) JPO statistics (Jan-June 2011) Average pendency from PPH request to final decision Non-PPH: 33. 4 months PPH: 7. 4 months PCT-PPH: 3. 5 months Grant rate Non-PPH: 58. 1% PPH: 68. 3% PCT-PPH: 93. 6%

29 PCT-PPH (3) USPTO statistics (Jan-June 2011) Average pendency from PPH request to final decision Non-PPH: 33. 5 months PPH: 11. 6 months PCT-PPH: 5. 5 months Grant rate Non-PPH: 47% PPH: 89% PCT-PPH: 96%

30 PCT-PPH (4) “Using PCT-PPH to get US patents faster”—Carl Oppedahl http: //www. youtube. com/watch? v=Xn. SShs. UHXss Discussions under way to develop a uniform (plurilateral) scheme “PPH 2. 0” designed to streamline and simplify the multitude of co-existing bilateral PPH arrangements

31 PATENTSCOPE (1) National/regional patent collections in PATENTSCOPE (28) Argentina, Brazil, Chile, Colombia, Costa Rica, Cuba, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Israel, Kenya, Mexico, Morocco, Nicaragua, Panama, Peru, Republic of Korea, Russian Federation including USSR, Singapore, South Africa, Spain, Uruguay, Viet Nam, ARIPO, EPO, LATIPAT More than 10 million national and regional patents and applications searchable, including 2 million published PCT applications On-the-fly translations of PCT descriptions and claims (and patents in national collections) in 52 languages via Google Translate Special tool for Korean to English applications Machine translation tool for titles and abstracts (cut/paste) En/Fr, Fr/En, En/Cn, Cn/En currently Kr/En, Jp/En coming soon

32 PATENTSCOPE (2) New customizable interface for those creating free account Can save settings (such as default interface and length of search list), save queries, download result list, etc. National phase information from 43 countries + 3 IGOs CLIR (Cross-Lingual Information Retrieval) Allows you to search a term or phrase and its variants in English, French, German, Japanese, Spanish, Chinese, Korean, Russian and Portuguese while entering query in only 1 language Search PATENTSCOPE on your smartphone http: //www. wipo. int/patentscope/search/mobile/index. jsf

33 PATENTSCOPE (3) Corpus of English/French PCT titles and abstracts (20 years of data) available for purchase, or free for research purposes 8 million parallel segments/170 million words Will contribute to improving quality of machine translation systems for patent documents Other language pairs planned

34 Future PCT Changes / Improvements Color drawings e. PCT Collaborative search and examination Pilot project between the EPO, KIPO and USPTO on the co-production of the ISR and the Written Opinion for PCT applications Sequence listing standard

PCT Goals (1) 35 Improve quality of PCT workproducts ü Work with ISAs to improve quality of ISR/WO ü Third party observation system ü O 2 O quality feedback mechanism ü Collaborative search, in cooperation with IP 5 ü Enable search strategy sharing between PCT authorities Further improve PCT user experience ü Encouraging Offices to withdraw incompatibilities ü Indication of willingness to license ü Priority Document Access Service ü e. PCT ü Color drawings ü PCT-PPH Improve PCT-related infrastructure, in the interests of applicants and Offices ü facilitate sharing of national, regional and international reports ü increase in PATENTSCOPE coverage, as well as new features and contents

PCT Goals (2) Collaborative PCT Search 36 WIPO’s position: collaborative search should be part of the future of the PCT past discussions ü PCT Collaborative Search (and Examination) were important elements of initial “PCT Roadmap” proposal presented at the 2009 PCT WG 2 nd IP 5 pilot is ongoing (USPTO/EPO/KIPO), and WIPO following closely ü 2 nd pilot scheduled for completion summer 2012 The only real question is how to implement this into the PCT

37 PCT Working Group 2012 (1) America Invents Act Some PCT Rule changes (estimated entry into force 1 January 2013) Inventor will no longer need to be named as applicant for the US Collaborative projects between some offices provision of training and access to databases to offices from developing countries Fee reductions For certain applicants from developing countries and LDCs (SMEs, universities, research institutes) New discussion paper to be prepared for the PCT Working Group in 2013

38 PCT Working Group 2012 (2) Further proposals for improvement: (1) Availability of the Written Opinion at 18 months (2) Color drawings As part of international applications filed in electronic form (3) PCT Minimum Documentation Discussion of definition and extent Creation of a task force of the International Authorities (4) Introduction of a top-up search Requiring IPEAs to perform during Chapter II examination Prior art available after establishment of the search report To be discussed again in more detail at the next Working Group in 2013

39 PCT Resources More information on the PCT resources website: www. wipo. int/pct PCT Information Service Telephone: (+41 -22) 338 83 38 Facsimile: (+41 -22) 338 83 39 E-mail: pct. infoline@wipo. int Seminars Distance learning course Webinars

40 THANK YOU! Li. maor@wipo. int