The International Patent System PCT recent and future

The International Patent System PCT recent and future developments Philippe Baechtold, Acting Director, PCT Operations Division, WIPO

PCT Coverage 1978 Today The International Patent System

PCT Applications 2013: 205, 300 PCT applications (+5. 1%) Forecasting +4% in 2014

Main PCT filing countries: 2013 The International Patent System

International applications received in 2013 by country of origin Top 15 countries responsible for over 90% of IAs The International Patent System

PCT International Searching Authorities The 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 * Office of filing decides on which ISAs are ■ Spain available ■ Ukraine (not yet operating) ■ United States of America ■ European Patent Office The International ■ Nordic Patent Institute Patent System

PCT Statistics: 2013 The International Patent System

Top PCT Applicants 2013 () of published PCT applications 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12. 13. 14. 15. 16. 17. 18. 19. 20. Panasonic—JP (2881) ZTE—CN (2309) Huawei—CN (2094) Qualcomm—US (2036) Intel—US (1852) Sharp—JP (1840) Bosch—DE (1786) Toyota—JP (1696) Ericsson—SE (1467) Philips—NL (1423) Siemens—DE (1323) Mitsubishi Electric—JP (1312) Samsung Electronics—KR (1193) NEC—JP (1190) LG Electronics—KR (1170) Fujifilm Corporation (1008) Shenzhen China Star Optoelectronics—CN (916) Sony—JP (915) Hitachi—JP (841) Nokia—FI (807) The International Patent System

Top University PCT Applicants 2013 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12. 13. 14. 15. 16. 17. 18. 19. 20. University of California (US) MIT (US) Columbia University (US) University of Texas (US) Harvard University (US) Johns Hopkins (US) Korea Advanced Institute of Science and Technology (KR) Leland Stanford University (US) Cornell University (US) Cal Tech (US) University of Florida (US) Postech Foundation (KR) Seoul National University (KR) Peking University (CN) Nanyang Technical University (CN) University of Tokyo (JP) Isis Innovation Limited (GB) University of Pennsylvania (US) University of Michigan (US) National University of Singapore (SG) The International Patent System

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 q. Asian language filings q. Supplementary search ■ Developing countries (“how can we realistically benefit from PCT? ”) q. Top 15 countries responsible for over 90% of IAs q. Top 30 countries filed over 95% of IAs q. The other 5% of filings are spread across over 110 countries The International Patent System

Recent PCT developments ■ Third Party Observation system ■ Indication of availability for license ■ PCT-PPH ■ Misleading ■ e. PCT (later) The International Patent System

Third Party Observation System ■ Allows third parties to submit prior art observations relevant to novelty and inventive step as to published PCT applications q 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 e. PCT 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 The International Patent System

Indication of availability for license ■ PCT applicants can indicate that the invention disclosed in the application is available for license q How? By submitting a “licensing request” (see PCT Form PCT/IB/382) directly to the IB q When? At the time of filing or within 30 months from the priority date q Cost? Free q 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 The International Patent System

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=Xn. SShs. UHXss (Carl Oppedahl video) The International Patent System

PCT-PPH (2) JP Grant rate 1 st action allowance rate Average Pendency from PPH Request to First Office Action {months} Average Pendency from PPH Request to Final Decision {months} Average Number of Office Actions US KR CA 94 (71) 90. 3 87. 1 92 (53) (67. 5) (65) 63 19. 9 31. 16 42 (16) (17. 3) (10. 5) (4. 6) 2. 4 5. 2 3. 1 2. 0 (13) (18. 0) (13. 2) (15. 8) 4. 1 14. 1 6. 3 3. 8 (22) (29. 0) (19. 1) (35. 1) 0. 46 TBD 0. 78 0. 6 (1. 1) (2. 4) See http: //www. jpo. go. jp/ppph-portal/statistics. htm () = all applications (PPH and non-PPH) (1. 6) The International Patent System

PCT-PPH (3) Global Patent Prosecution Highway (GPPH) pilot began 6 January 2014, usingle set of qualifying requirements, and includes PCT reports Framework provisions: http: //www. jpo. go. jp/ppph-portal/globalpph. htm The International Patent System

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WIPO warnings http: //www. wipo. int/pct/en/warning/pct_warning. html WIPO 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 The International Patent System

Future PCT developments ■ Amended PCT Regulations—July 2014 ■ PCT/WG 2014 ■ Collaborative PCT searche ■ PCT further improvements The International Patent System

Amended PCT Regulations—July 2014 ■ 2 sets of amendments approved by PCT Assembly 2013 q Amend PCT Rules 66 and 70 to require IPEAs to conduct top-up searches during IPE q Delete PCT Rule 44 ter and amend PCT Rule 94 to make WO/ISA available to the public via PATENTSCOPE at international publication Ø 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 The International Patent System

PCT/WG 2014 ■ Review of revised US/UK “ 20/20” proposals ■ ■ ■ ■ q Limited Ch. I amendments q Self-service changes q Simplifying withdrawal q Mandatory response to negative written opinion q Formal PCT integration of PPH q International/national phase linkage q National 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 The International Patent System

Collaborative PCT Search ■ PCT past discussions q PCT Collaborative Search (and Examination) were important elements of initial “PCT Roadmap” proposal presented at the 2009 PCT WG q Most recent status reports at 2013 PCT MIA (PCT/MIA/20/4) and 2013 PCT WG (PCT/WG/6/22 Rev. ) ■ 2 nd IP 5 pilot q In very large % of pilot cases (from 40% to almost 90%), collaboration between examiners resulted in new citations in ISR q 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 ■ 3 rd pilot q Being planned The International Patent System

e. PCT The International Patent System

What is e. PCT? ■ 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 ■ e. PCT-Filing - Web-based filing of PCT applications (since October 2013) ■ Applicants can conduct many PCT transactions electronically with the International Bureau The International Patent System

26 e. PCT for Offices ■ Hosted servers allow any RO to offer e. Filing ■ 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 q. Multilingual interface q. Improved tools and workflow q. Designated Office functions The International Patent System

e. PCT – 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 then q. Contact WIPO to notify the role, account name and owner (we check) q. Accounts are named and must be used accordingly The International Patent System

e. PCT 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

29 e. PCT for Applicants ■ e. Filing 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 q Multilingual interface q XML/docx filing The International Patent System

e. PCT modes ■ e. PCT private services q Authentication using both a WIPO User Account (username and password) and a digital certificate q Access to full range of services and functions q Access to PCT applications filed as of January 1, 2009, including before publication ■ e. PCT public services q Only a WIPO User Account (username and password) is required q Limited functionality (document upload and third party observations) for all PCT applications regardless of filing date The International Patent System

e. PCT-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) The International Patent System

e. Ownership of PCT applications ■ Right to access and manage a PCT application in e. PCT ■ Process is automatic when using e. PCT-Filing q. Access rights can be pre-assigned ■ If e. PCT-Filing is not used, additional steps are required to take e. Ownership The International Patent System

Types of Access Rights ■ e. Owner q. Complete control over all aspects of the PCT application ■ e. Editor q. Can do everything except assign access rights ■ e. Viewer q“Look” but don’t “Touch” ■ Full history of all access rights modifications is available The International Patent System

Some working features ■ Workbench ■ ■ q List of all PCT applications to which you have access (e. Owner, e. Editor, e. Viewer) File View q Access to the PCT file maintained by the International Bureau (documents plus up-to-date bibliographic data) Notifications q Preferences and filters My history q All actions that a user has performed in e. PCT Portfolios q User-defined personal folders for filing and grouping PCT applications The International Patent System

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

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 The International Patent System

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 The International Patent System

Some statistics Offices: ■ 42 different offices connected; 6000+ documents uploaded (covering initial filings, pdocs, subsequently filed documents and search related documents) ■ 9000+ IAs accessed ■ 16000+ documents accessed Applicants: ■ 12000+ users connected (with higher percentage on public services (document upload)) ■ 450000+ docs downloaded, 28000+ docs uploaded ■ 23000+ IAs accessed in private services ■ 700+ IAs filed with e. PCT Filing The International Patent System

Future e. PCT developments (1) ■ Aiming for fully hosted RO service by end 2014 ■ User interface in all PCT languages ■ Progressive extension of e. PCT-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) The International Patent System

Future e. PCT developments (2) ■ Single specification document ■ Additional draft options q. Declarations q. Third Party Observations in e. PCT public services ■ Same day corrections for e. PCT filings ■ National phase entry function through e. PCT could be added (PCT WG next week) ■ Last but not least: e. PT The International Patent System

The International Patent System Thank you! philippe. baechtold@wipo. int